The EPO has announced that its transitional measures for Unitary Patents (UP) will start on 1 January 2023.

From that date, applicants who have received a communication under rule 71(3) EC (intention to grant) may file:

• an early requests for unitary effect and/or
• a request for a delay in issuing the decision to grant a European patent.

The measures are applicable until the entry into operation of the UP system and UPC, which is expected to be on 1 April 2023.

The two transitional measures are interrelated but separate from a procedural perspective.

1. Early request for unitary effect

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.

If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable (already before grant) or reject the request for unitary effect.

The request should be filed using dedicated EPO Form 7000 and thus include the required translation.

2. Request for a delay in issuing the decision to grant a European patent

This transitional measure allows the applicant to delay grant of a European patent in order to make it eligible for Unitary Patent protection.

A request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.

A request for delay filed can be filed on the same day as the approval of the text intended for grant. The request for delay must be filed using dedicated EPO form 2025.

The European patent office (EPO) announced earlier this week the starting date of its transitional measures relating to unitary patent protection.

As of 1 January 2023, patent applicants will be able to:

• file early requests for unitary effect; and
• file requests for a delay in issuing the decision to grant a European patent.

These two measures – announced in December 2021 – were introduced to support an early uptake of the Unitary Patent by the users. Cautiously, the EPO initially considered that these measures would only apply after Germany would have effectively ratified.

With this announcement the EPO hence anticipates the German ratification, following the lead of the Unified Patent Court, who declared that it will open its doors on 1^st April 2023 (see implementation roadmap)

The transitory measures are applicable until the entry into operation of the Unitary Patent Protection system.

Philippe OCVIRK, Partner & European patent attorney

The European patent with unitary effect (unitary patent) will be introduced on 1st April 2023. It is an optional protection, which can be obtained upon the grant of a European patent.

On same date, the Unified Patent Court will open its doors.

Legal framework

The unitary patent is created by two EU regulations issued in 2012, which were adopted through the route of enhanced cooperation between a number of “participating” EU member states (25 to date).

The application of the regulations depends on the entry into force of the Agreement on a Unified Patent Court (UPC) of 19 February 2013 which establishes a specialized patent jurisdiction with pan-European competence.

The protocol on provisional application of the UPC Agreement entered into force on 19 January 2022.

The regulations will enter into force on the first day of the 4th month after the ratification of the UPCA by Germany, expected in December 2022.

As shown in the below timeline, the system will go live on 1 April 2023.

A unitary patent

The unitary patent provides uniform protection and produces identical effects in all participating member states. It can only be limited, transferred, revoked or lapse in respect of all of them.
A single maintenance fee will be payable annually to the EPO (total cost less than €5000 over the first 10 years).

Territorial scope

Initially the unitary patent will cover the 17 countries which have ratified the UPC Agreement: Austria, Belgium, Bulgaria, Germany, Denmark, Estonia, Finland, France, Italy, Lithuania, Latvia, Luxembourg, Malta, Netherlands, Portugal, Sweden and Slovenia.
Any participating member state (currently 25) can ratify and join the system. This does not affect the coverage of European patents for which unitary effect was previously registered.

Obtaining unitary effect

On grant of the European patent, the patent owner will have the choice between a unitary patent or classical validation of his patent in his countries of interest. The two protections coexist.

The request for unitary effect must be submitted by the owner to the European Patent Office within one month of the mention of the publication of the grant of the European patent. No fee is required.

Unitary effect can only be obtained for a European patent filed on or after 01.03.2007, and which has the same set of claims for all participating member states.

Translations

The new system abolishes translations by relying on high quality machine translations.
For a transitional period of 6 to 12 years, an English translation will have to be provided if the patent is granted in French or German. If the patent is granted in English, a translation will have to be provided in another EU language.

Transitional measures

Two measures have been announced by the EPO. As from 1 January 2023 it will be possible to:

• file an early request for unitary effect ; and
• delay the grant of the European patent.

Opt-out

The UPC will have jurisdiction over European patent litigation in general. During a transitional period of 7 years, the owner of a patent (or application) will have the possibility to opt out from the exclusive jurisdiction of the UPC by notifying their opt-out to the Registry (except for unitary patents), so that litigation can be brought before a national court.

A sunrise period of 3 months will allow patentees to file their opt-outs in advance.

Practical considerations

The creation of the unitary patent and the UPC is imminent and will considerably change the European patent system.
It is time for patent holders to review their portfolios, and determine which applications will be validated by the classical route or transformed into a unitary patent. Questions of delaying the examination procedure and of the opt-out should be raised.

Philippe Ocvirk, Partner | European patent attorney

Click this link to download our notice on the Unitary Patent.

The unitary patent package is expected to go live in spring 2023. It is based on two pillars:

• a new unitary patent right known as the European patent with unitary effect (in short ‘Unitary Patent’), which is created by EU instruments; and
• a new court, the Unified patent court (UPC), which is competent for all European patents. 

Office Freylinger will regularly inform their clients and associates about this new system.

Click this link to read our notice on the Unitary Patent.

It is important for patent applicants and owners to get acquainted with the pros and cons of the new system.

Please contact your usual Freylinger attorney for any information on the UP system or to discuss your IP strategy.

Philippe Ocvirk