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EPO assists users in advance of unitary patent

With the unitary patent expected before the end of 2022, the European Patent Office (EPO) has recently published information for applicants to help them prepare (OJ EPO 2022, A4, A5, and A6).

As the Protocol on Provisional Application has recently entered into force, we are now in a Provisional Application Period for preparatory work on the Unified Patent Court (UPC) and Unitary Patent at the EPO.

At the Unified Patent Court, the preparatory work will include the recruitment of judges and the completion of a requisite electronic case management system. It is anticipated that only when these preparations are well advanced will Germany deposit its instrument of ratification, initiating a final preparation stage of three to four months before the UPC enters into force. As the Provisional Application Period is planned to last at least eight months, the unitary patent could be in force by the autumn.

EPO assisting users in advance of unitary patent - timeline of UPC implementation

When this happens, applicants will have the option to obtain a unitary patent from their European patent application (filed at the EPO) by filing a request for unitary effect within a month of the grant date.

It is important to note that only European patents granted on or after the date the UPC enters into force will be eligible for unitary effect. Applicants wishing to get a Unitary Patent will therefore have to explicitly request that the EPO delays the decision to grant to ensure that the decision issues on or after the UPC date.

To assist applicants, the EPO will allow delays to grant in order to allow Unitary Patents to be sought in advance.

Requests for delay of grant

 The EPO will not delay applications automatically. Instead, applicants will be required to file an explicit request for delay of grant. Requests for delaying grant are not currently available and will only become available in the three to four months of the final preparation stage (OJ EPO 2022, A4-A5).

A request for delay of grant will be accepted for pending European patent applications intended for grant (i.e., for which a communication under Rule 71(3) EPC of intention to grant has been issued but not yet approved by the Applicant). A request will not affect the response to the communication under Rule 71(3) EPC, which will have to be filed as usual. A request will merely delay the publication of the decision to grant until on or after the date that the UPC enters into force to allow the unitary effect to be registered.

Early requests for unitary effect

During the final preparation stage, the EPO will further accept early requests for unitary effect (OJ EPO 2022, A6). Any early request for unitary effect filed before the final preparation stage will however be refused by the EPO and the applicant will be invited to resubmit their request later.

An early request for unitary effect will be accepted for pending European patent applications intended to be granted, (i.e., for which a communication under Rule 71(3) EPC of intention to grant has been issued). The unitary effect of the European patent will be registered once the UPC has entered into force.

It is worth mentioning that if a decision to grant a European patent is issued before the entry into force of the UPC, no unitary effect can be registered regardless of an early request for unitary effect being filed — hence the importance of concurrently requesting a delay of grant of the patent.

These provisions of the EPO will cease to have effect on the date that the UPC enters into force, at which stage applicants will have to file a normal request for unitary effect at the EPO within a month of the publication of the European patent grant.

For more information and answers to frequently asked questions about the unitary patent, visit our new dedicated webpage.

We recommend that you speak to our experts ahead of unitary patent implementation so that we can help you form a plan best suited to your individual needs. Talk to your usual Murgitroyd contact or our dedicated team at unitarypatent@murgitroyd.com.

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Laurence Bibow

Senior Patent Attorney
Dublin City