Unitary Patent applications can be secured as from 1 January 2023

Europe is moving closer to the launch of the European Patent with Unitary Effect (so-called “Unitary Patent”). Unitary patents are an entirely new type of intellectual property right, but the prosecution of these patents will be carried out by the European Patent Office (EPO) as for traditional European patents. The difference being that, within one month after grant, the applicant can file a request for unitary effect which would convert the newly granted European patent into a Unitary Patent. Of course, in addition it will still need to be validated as a traditional patent in the countries of choice that do not participate in the Unitary Patent Regulation.

Such unitary effect can be requested for European patents that are granted on or after the effective date of Regulation (EU) No 1257/2012 implementing enhanced cooperation in the area of the creation of Unitary patent protection (the “UP Regulation”, art. 18(6)). That effective date depends on the ratification by the German government of the Unified Patent Court (UPC) Agreement.

Although big leaps have been taken into that direction indeed (the effective date being 1 April 2023 per the latest roadmap), meanwhile patents continue to proceed to grant as European patents even though their applicants may have preferred requesting unitary effect.

In view hereof the EPO has taken certain transitional measures.

• On 22 December 2021 the President of the EPO issued a decision and notice allowing applicants a right to request that the issuance of the decision to grant a European patent be delayed until on or immediately after the date of entry into force of the UPC Agreement and the UP Regulation. A validly filed request for delay will ensure that the European patent will later be eligible for registration as a Unitary patent.
• By way of separate notice also dated 22 December 2021, the President of the EPO also allowed the filing of early requests for designation of unitary effect. Allowing such requests for unitary effect before Unitary patents can even be obtained is said to be aimed at facilitating the introduction of the Unitary patent system.

Now, the President of the EPO has issued a decision dated 11 November 2022 to allow such requests for delayed grant as of 1 January 2023. On the same day, the EPO notified applicants that early requests for unitary effect can be applied for as from the same date.

Both transitional measures will be available for European patent applications for which an intention to grant communication has been despatched under Rule 71(3) EPC but which has not yet been accepted by the applicant. Requests for delay of grant should be made using the EPO Form 2025. This is not a request for unitary effect, which must be made by a separate request (preferably using form UP 7000).

Comments

For European patent applicants wishing to obtain Unitary Patent protection, the aforementioned initiative by the EPO marks 1 January 2023 as an important date.

It shows that the EPO is relatively confident that the sunrise period will start on 1 January 2023 and the UPC will open on 1 April 2023 (in line with the current roadmap by the UPC).

Sure, the decision to allow request for delayed grant as from1 January 2023 does not directly help applicants whose European patents are granted prior to that date. Such applicants would indeed not be able to file a request for delay (or early UP designation) and would as such be prevented from obtaining unitary effect. However, the decision by the EPO makes clear that the exclusion is limited to those patents that will have issued until 6 weeks from now. Moreover, even patent applications for which the EPO has issued an intention to grant (so-called Rule 71(3) EPC communication) and could be issued before that day, may still require further review, for instance in case amendments or material corrections are required. In such case, applicants can file a requesting for amendment or corrections under Rule 71(6) EPC, which would likely take the examination of the European patent application beyond the date of 1 January 2023. As such, getting clear guidance from the EPO that requests for delay may be filed as from that date, may turn out to be quite useful in practice when prosecuting European patent before the EPO.

An alternative but more expensive option may be to file a divisional application for that pending European patent application, pursuant to Article 76 EPC, and file a request for unitary effect once that divisional application proceeds to grant. However, that might be part of the patent strategy anyway, as it would allow for having a Unitary patent, which is always subject to the jurisdiction of the Unified Patent Court, and an almost identical traditional patent at the same time, which can be validated in a limited number of countries, pruned as desired and litigated in the national courts during the transitional period of at least 7 years.

Under the UP Regulation, requests for unitary effect must be made within a period of 1 month after grant of the European patent at issue. This is not a long time. If the EPO, upon formal examination of the request in view of the Rules relating to Unitary patent protection, establishes that the requirements for the registration of unitary effect are not met, the EPO will invite the applicant to correct the deficiencies if applicable or reject the request for unitary effect. The EPO has communicated that it will inform early applicants about formal deficiencies already before the effective date of the UP Regulation. As such, early requests for unitary effect may provide for a slightly bigger safety cushion allowing applicants more time to make necessary corrections, which may be useful when filing applications for the first time in this new legislative framework