We anticipate the Unitary Patent system starting at the end of 2022 or early 2023. When the Unitary Patent system runs, you can apply for a unitary patent at EPO. That is necessary within one month after a grant of a European patent.
The EPO has recently announced two new transitional measures. They apply to European patent applications that reached the grant procedure’s final phase. These measures have not come into effect yet. They will be made available within the temporary period, from the date of deposit of Germany’s instrument of ratification of the UPC Agreement, i.e., 3-4 months before the actual start of the UP/UPC system.
We expect Germany to deposit their instrument of ratification in the second half of 2022. These measures will end on the date the UPC Agreement enters into force. If a Unitary patent is attractive for application, you should consider these two measures.
First measure – early request for unitary effect
This new EPO procedure will allow applicants to file early requests for unitary effect. It will be possible before the start of the Unitary Patent system. If one meets the requirements for the registration of a unitary patent within the early filed request, the EPO will register the unitary effect once the system starts. Otherwise, EPO will invite the requester to correct the deficiencies. Although if it is not applicable, they will reject the request. The EPO will inform requesters about formal defects before the entry into force of the UP system. They will give them the possibility to make corrections in due time.
They will not treat early requests for Unitary Patent (filed before Germany will deposit their instrument of ratification) as valid requests. Also another necessary condition for filing an early request for a unitary patent is that they have already dispatched communication under Rule 71(3) EPC (intention to grant) for that European patent. In other words, they must reach the European patent in the final phase of the grant proceedings.
Second measure – request for a delay in issuing the grant decision
An applicant who will file an early request for a unitary patent should ensure that they do not have a grant for the European patent application before the entry into force of the UPC Agreement. If they issue the European patent before the force of the UPCA, you cannot register a unitary patent request. Filing an early request for a unitary patent will not automatically cause EPO to delay the grant of the application. So it will be crucial to file an explicit request for the grant delay. It will ensure that they delay the issuance of the decision to grant a European patent so that the European patent Bulletin publishes the mention of the grant. Or, immediately after the date of entry, into force of the UPCA. That is to allow the registration of unitary effect for that European patent.
It is not possible to file a request to delay the grant yet. But it will become available when Germany deposits its instrument of ratification of the UPCA. Also, the application must have received the communication under Rule 71(3) EPC (intention to grant). But the text for a grant must not have been approved.
Therefore applicants who will file early request for unitary effect they should also file request for a delay in issuing the grant decision.
As it was mentioned these two new EPO procedures cannot be requested yet, so if the unitary patent is important for applicant some other options for delay are available now like using further processing procedure also request an amendment to the application in response to the notice of allowance, etc.
Early requests for Unitary Patent: Contact
Feel free to contact us if you have any questions about these two new transitional measures. We will help you with them or any other inquiry related to Unitary patent system.
