How to select the european patent with the unitary effect (Unitary Patent)
Unitary Patent a unique protection for 17 states in Europe
With the recent ratification of Austria, the European Patent with unitary effect (“Unitary Patent”) will be introduced soon.
This title enables to get a patent protection by many European states. Presently 17 states have ratified the agreement and will participate with the Unitary Patent, 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. In particular it states that only a European patents having the same set of claims in respect of all the participating Member Sates shall be able to be selected as a Unitary Patent (Art. 3 of the Unitary Patent Regulation).
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.
Request has to be filed one months after publication of mention of grant
The Unitary Patents will be managed by the European Patent Office (EPO). For that purpose 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, see Art. 9 (g) of the Unitary Patent Regulation.
Within the same period, during a transitional period, a translation has to be filed, either an English translation for patents having the language of proceedings in French or German, or a translation into any other official language of the European Union where the language of the proceedings is English (see Article 6 of Council Regulation 1260/2012).
Definite enter into force of the Unitary Patent depends on the deposit of the UPC Agreement by Germany
Entry into force of the Unitary Patent Regulation depends on the entry into force of the UPC Agreement, see Art 18 of Unitary Patent Regulation. The UPC Agreement will enter into force on the first day of the fourth month after the deposit the final ratification, here the German ratification.
Even though Germany has already ratified the UPC Agreement, it has not yet deposited the ratification in order to enable the Unified Patent Court enough time for the preparation and the recruitment of the judges in the phase of the provisional application period, which has started mid of January.
When the State Parties are confident that the Court is functional, Germany will deposit its instrument of ratification of the UPC Agreement, which will trigger the countdown until this Agreement’s entry into force and set the date for the start of the UPC’s operations.
Thus, the definite enter into force of the Unitary Patent Regulation is unknown.
However, it is expected that it will enter into force mid 2022 to begin of 2023.
EPO proposes to delay proceedings and early request for the Unitary Patent after the deposit of the ratification of Germany
In order to give applicants the possibility to request the Unitary Patent for EP applications that are scheduled for grant between the deposit of the ratification of Germany of the UPC Agreement and the entering into effect of the Unified Patent, the EPO has just published in the Official Journal January 2022 decisions providing the Applicant with several new options.
a) For applications for which a pre-grant notification under Rule 71(3) of the European Patent Convention (EPC) has been issued, in which communication the EPO communicates to the applicant the text intended for grant, the applicant may file a request for delay of grant until the entry into effect of the Unitary Patent.
The request for delay of grant must meet several formal requirements: a corresponding form must be used and no prior agreement on the text proposed for grant must have been given yet by the applicant.
However, the applicant must still file a reply to the pre-grant communication according to Rule 71(3) EPC, i.e. pay the fees and file the translations of the claims. 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.
b) In order to facilitate obtaining the Unitary Patent, during the same period, 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 Unitary Patent Regulation. The EPO will inform about formal deficiencies already before the entry into force of entering into effect of the Unified Patent, giving an opportunity to make corrections in due time.
Although the EPO has already communicated about these procedural measures, both possibilities are not yet in force and will be only available until the entry force of the Unitary Patent Regulation (i.e. when Germany triggers the system).
In order to reach the period from which on the EPO proposes to delay the proceedings, the applicant may request, for applications that are still in examination and a response to an Office Action has to be filed, a request for extension of the time limit to the maximum time limit.
For communications according to Rule 71(3) EPC providing with the text intended for grant, this option is unfortunately not available, the four month time limit being non extendible (except through further processing which implies costs and risks).
However, if the applicant does not agree with the proposed text, or if minor corrections are still to be made, he can file a disagreement with EPO including the respective new proposal. The EPO will then issue a new communication according to Rule 71(3) EPC, provided that the new text complies with the provisions of the EPC, so that a new four months period according to Rule 71(3) EPC starts.
Depending on the time the EPO takes to emit the new communication and on the actual date of triggering of the unitary patent system by Germany, the applicant may then be able to use the new procedures to delay the grant and request the unitary effect.