On 14 November 2022, the EPO provisionally published a decision of the president of the EPO concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC. The decision will become official in the next issue of the Official Journal of the European Patent Office, and is expected to go into effect on 1 January 2023. The decision was also accompanied by a notice indicating that applicants will also be able to file early requests for Unitary effect starting on 1 January 2023. The decision and notice outline the EPO’s efforts to encourage early adoption of the upcoming Unitary Patent scheme.
Why has the EPO made these announcements?
Although the EU Regulations Nos. 1257/2012 and 1260/2012 setting up the Unitary Patent will apply from the date of entry into force of the UPC Agreement (currently expected for 1 April 2023), the EPO has committed to facilitating the introduction of the Unitary Patent system by accepting requests for Unitary effect prior to this date of entry into force.
However, the EPO may only register the Unitary effect for a European patent granted on or after this date of entry into force. Thus, the EPO has committed to allowing a Unitary effect to be sought, even though it is not yet fully available.
Additionally, a request for Unitary effect must be made within one month from mention of publication of the grant of the European patent in the European Patent Bulletin, and a normal request for Unitary effect would not be possible until the UPC Agreement comes into force.
These time constraints pose major obstacles to many potential early adopters of the Unitary Patent scheme because they exclude patents that are granted too early and force owners of patents granted less than one month before the entry into force of the UPC Agreement to scramble to request Unitary effect.
Why file an early request for Unitary effect?
An early request for Unitary effect allows a party to inform the EPO that Unitary effect is sought as soon as it becomes available.
For example, a normal request for Unitary effect in respect of a patent granted three weeks prior to the entry into force of the UPC Agreement could only be filed during approximately the first week that the UPC Agreement is in force. Likewise, a normal request for Unitary effect in respect of a patent granted one day less than one month prior to the entry into force of the UPC Agreement would need to be filed on the very first day that the UPC Agreement is in force.
On the other hand, an early request for Unitary effect would ensure that the EPO already is aware that Unitary effect is sought for the patent in question on the first day that the EPO is able to register Unitary effect.
How does an early request for Unitary effect work?
Prior to entry into force of the UPC Agreement, it would only be possible to file an early request for Unitary effect.
The early request for Unitary effect may only be filed starting on 1 January 2023, and only in respect of European patent applications for which a Rule 71(3) EPC Communication has been despatched.
Once the UPC Agreement enters into force, it will only be possible to file a normal request for Unitary effect.
Why delay grant?
Delaying the grant allows applicants to wait for the availability of the Unitary Patent, as a request for Unitary effect can only be filed within a very short time frame (within one month from mention of the publication of the grant of the European patent in the European Patent Bulletin). If the patent is granted more than one month prior to the entry into force of the UPC Agreement, then it cannot have Unitary effect.
Requesting a delay in granting the patent also serves as a simpler, less expensive alternative to procedural techniques that applicants may currently be tempted to use to delay grant (e.g., not responding to a communication under Rule 71(3) EPC and later requesting further processing of the application, or disapproving the text intended for grant).
How does delaying grant work?
The request to delay grant may be filed for any pending application as of 1 January 2023.
The applicant can withdraw the request to delay grant at any time.
It is important to note that a request to delay grant is independent from a request for unitary effect. The request for unitary effect would therefore need to be filed separately from the request to delay grant, and according to its own timeline.
This means that if an applicant requests a delayed grant, then it will still be necessary to file a separate normal request for Unitary effect within one month from the grant of the European patent (i.e., from the mention of publication of grant of the European patent in the European Patent Bulletin), or else to file a separate early request for Unitary effect in order for the European patent to become a Unitary Patent.
However, there is no obligation to request Unitary effect if requesting delayed grant.
Nevertheless, requesting delayed grant ensures that the patent will only be granted after the Unitary Patent becomes an available option for the applicant.
Ultimately, why choose a Unitary Patent?
Starting 1 January 2023, applicants will thus have the option of either seeking a “classic European patent” (with a validation process and a set of annuities for each chosen Member State), or a “Unitary Patent” (with a single validation process and a single set of annuities for several Member States at the same time).
Additionally, once the Unitary Patent becomes available, patentees and applicants will also have the option of obtaining a Unitary Patent, provided that the request for Unitary effect is filed within one month from the grant of the patent, and the patent in question adheres to all relevant requirements.
Many factors may be weighed when choosing the right option for a patent. For instance:
- Depending on the Member States where a protection is sought, the Unitary Patent may be less expensive than a “classic” European patent (e.g., relaxed translation requirements, less expensive annuities, reduced administrative expenses).
- From a logistic perspective, the Unitary Patent will require fewer formalities and deadlines (formalities should be performed before the EPO, not before multiple national PTOs).
- In terms of enforcement, the Unitary Patent will fall within the exclusive jurisdiction of the UPC. By doing so, the patent holder can thus “lock” the patent into the UPC system (which is not possible for a “classic” European patent during the transitional period, as the latter may also be concurrently enforced before national courts under certain conditions). The only counterpart for the patent holder is that the option to enforce the Unitary Patent before national courts is not available.
In any case, it is important to note that at the beginning of this new system, the Unitary Patent will cover 17 out of the 39 Member States of the EPO (including France, Italy, the Netherlands, and Germany as soon as they deposit the ratification instrument of the UPC Agreement in order to trigger the entry into force of the new system). Seven other Member States may join the system later on, as they signed the UPC Agreement but have not ratified it yet, but these States would not be covered by any Unitary Patents granted prior to their eventual ratifications. Lastly, the other States (especially, the UK, Spain, Norway, and Poland) will not be covered by the Unitary Patent. Obtaining protection in the States that are not covered by the Unitary Patent can still only be done via the “classic” validation process.
To learn more about the UPC and the Unitary Patent, please access our dedicated web page, Unified Patent Court.
Client Alert 2022-381
