PAPST LICENSING v European Patent Office (CoA, 9 February 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 9 February 2026 (UPC_CoA_8/2026), given in German by a standing judge, the Court of Appeal dismissed the appeal of PAPST LICENSING GmbH & Co. KG against the Paris Central Division’s decision upholding the EPO’s refusal to register unitary effect for EP 3 327 608. The patent, which derives from a divisional application in a chain going back to a 2005 Euro-PCT application, does not designate Malta, which joined the EPC in 2007. The Court held that Art. 3(1) of Regulation 1257/2012 rules out unitary effect for a patent that does not cover one of the participating Member States. The outcome closes the unitary route for patents from older families that predate Malta’s accession.

Facts and procedure

The divisional application was filed on 11 December 2017, its parent chain goes back to a Euro-PCT application of 31 July 2005. The patent was granted on 16 April 2025 for thirty states, but not Malta. The EPO’s Unitary Patent Protection Division refused unitary effect on 10 November 2025 under Art. 3(1) of the Regulation and Rule 5(2) of the Rules relating to Unitary Patent Protection. Seised under Art. 32(1)(i) UPCA and Rule 97, the Central Division dismissed the action on 30 December 2025.

The applicable law

Art. 3(1) of Regulation 1257/2012 makes unitary effect conditional on a European patent granted with the same set of claims for all participating Member States. Art. 18(2) limits that effect to the states in which the UPC has exclusive jurisdiction on the date of registration. Malta has ratified the UPCA and is therefore a Contracting Member State (paragraph 13). Art. 76(2) EPC prevents its designation from being added retroactively (paragraph 14).

Question

Can a European patent that does not designate a participating Member State, because that state was not party to the EPC when the original application was filed, obtain unitary effect for the remaining states?

Decision

No. Papst argued that « granted for all participating Member States » refers only to states that could be designated (paragraph 16). The Court held that reading to be contra legem: an interpretation, however broad or consistent with a higher rule, cannot override clear wording (paragraphs 17 and 18). The wording of Art. 3(1) and recital 7, which stress uniform protection, preclude registration of a patent that does not designate one of the participating states (paragraphs 19 and 20). Recital 4 has no binding force and cannot prevail over the operative provisions (paragraphs 21 and 22). Proportionality cannot justify a contra legem application, and any procedural error by the Central Division would make no difference (paragraphs 23 and 24). Art. 18(2), an exception that produces successive generations of unitary patents with differing territorial scope, does not alter Art. 3(1) or allow Malta to be carved out (paragraphs 26 to 29), the arguments under Arts 17(2) and 21 of the Charter fail (paragraphs 25 and 30). The proposed questions for the CJEU are irrelevant or rest on a contra legem reading, so no reference was made (paragraphs 43 to 46). Each party bears its own costs (paragraphs 47 and 48).

Key points for practice

• Unitary effect requires the patent to cover every participating Member State at grant. The legal impossibility of designating a state creates no exception.
• The recitals of Regulation 1257/2012 inform interpretation but cannot contradict a clear operative provision.
• The Court of Appeal declines to refer to the CJEU where the answer follows from the wording.
• Practical point: for families whose original application was filed before 1 March 2007, the unitary route is closed and conventional national validation must be planned.

Provisions applied

Regulation (EU) No 1257/2012

Art. 3(1) and Art. 18(2) and (6), recitals 4 and 7

Agreement on a Unified Patent Court

Art. 32(1)(i) and Art. 66(2)

Rules of Procedure

Rules 97 and 98

European Patent Convention

Art. 76(2)

Case law cited

CJEU, 19 June 2014, C-345/13, Karen Millen Fashions

Related decisions

• PAPST LICENSING v EPO, 30 December 2025, Central Division decision upheld on appeal.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.