Early request for Unitary Patent possible from January 1st, 2023
The European Patent with unitary effect (“Unified Patent”) will be introduced soon. The final missing ratification is expected to be deposited by Germany in December.
The unitary patent enables patent protection in many European states. Presently 17 states have ratified the agreement and will participate in the Unitary Patent scheme, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden, see https://www.epo.org/law-practice/unitary/unitary-patent.html.
The Council Regulation No 1257/2012 (hereafter “Unitary Patent Regulation”) sets out the details of the unitary patent.
Before deciding whether to apply for the Unitary Patent, it should be kept in mind that it is not possible to opt-out from the exclusive competence of the Unified Patent Court (UPC) for the Unitary Patents according to §83(3) of the UPC Agreement.
When the UPC Agreement enters into force, a request for obtaining a Unitary Patent has to be filed within no later than one month after the mention of the grant published in the European Patent Bulletin.
In order to give applicants the possibility to obtain Unitary patent protection for EP applications, the EPO has published two transitional measures, which have been updated in order to have now a fixed starting date, namely January 1st; 2023.
Request for delay of grant
For applications for which a notification under Rule 71(3) EPC has been issued, the applicant may file a request for delay of grant until the entry into effect of the Unitary Patent from January 1st, 2023 ongoing.
No agreement on the text proposed for grant must have been given yet by the applicant in response to the Rule 71(3) EPC communication. A request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed.
Early requests for unitary effect
In order to facilitate obtaining Unitary Patent protection, from January 1st, 2023 ongoing until the entry into force of the UPCA, the EPO will accept early requests for unitary effects, thus giving applicants the possibility to shift administrative work for unitary protection to before the effective date of entry of the Unified Patent.
Early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.
EP applications eligible to these requests
As in end of December the time limit for a response to the Rule 71(3) EPC communication is extended due to EPO closure dates, it is possible to file the above request for delay of grant for EP application for which the said communication has been issued on or after August 14, 2022, and for which no response to the said communication has been filed yet.
For any further questions, Lavoix is at your disposal.
This IP Alert is for information purposes only and does not constitute legal advice.