Unitary patent – Delaying grant and requesting early effect

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 decisions 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.

Unitary patent transitory measures set to start on 1.01.2023

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 1st 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 unitary patent package – a major change in the patent landscape in Europe.

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

UPC ahead!

UPC ahead!

Following Austria’s ratification with the General Secretariat of the Council of the European Union, the  Protocol on Provisional Application of the UPC Agreement has entered into force today, 19 January 2022.

As announced by the UPC Preparatory Committe (here):

This event marks the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organisation.

More information coming soon.

Philippe OCVIRK

Unitary patent package – almost there?

The German Federal Government deposited on 27 September Germany’s instrument of ratification of the Protocol on the Provisional Application (PPA) of the Unified Patent Court Agreement (UPCA).

This is a decisive step on the way to the establishment of the Unitary Patent package, which consists of the new European unitary patent (granted by the EPO) and the setting up of the Unified Patent Court.

The provisional application is required to establish the legal capacity and organizational capability of the UPC. During the PAP phase, the governing bodies of the Court will be assembled, budget and IT systems as well as finalization of the recruitment of the judges of the Court. The Preparatory Committee foresees that approximately eight months will be required to conclude all the work that needs to be done during the PAP.

Germany’s ratification of the PPA comes after several years of doubt, during the examination of the Agreement by the German Federal Constitutional Court (FCC). Following the decision of the FCC published in July this year the German law for the ratification of the UPCA and its Protocols was signed by the President and published in August allowing Germany now to proceed with ratification.

Germany’s ratification enables the PPA to come into force (and therefore the provisional application period to start) as soon as two more countries ratify the PPA or otherwise consent to be bound by the provisional application of certain UPCA provisions.

One of those countries is very likely to be Slovenia (which is hosting in Ljubljana one of the seats of the UPC Mediation and Arbitration Centre). Slovenia’s legislation ratifying the PPA came into force on 24 September 2021 when it was published in Slovenia’s Official Gazette although the Council of the EU has not yet recorded the deposit of the instrument of ratification.

Austria is also expected to ratify the PPA shortly.

Further signs of activity on this topic:

–       An overview of the state of play for entry into effect of the unitary patent package was due to be addressed during the Competitiveness council on 29 September 2021;

–       The Select Committee (dealing with the Unitary  patent) of the EPO Administrative Council will meet on 14 October 2021.

Alexander Ramsay, Chair of the UPC, estimates that the UPC will start operations around mid-2022.

Philippe Ocvirk

UK to ratify the Unified Patent Court Agreement

Today at the EU’s Competitiveness Council meeting in Brussels, the UK announced that it is proceeding with preparations to ratify the Unified Patent Court Agreement.
This puts an end to the uncertainty period that started with the Brexit vote back in June this year.

The Unified Patent Court will be competent for classic European patents and have exclusive jurisdiction for the new European patent with unitary effect (Unitary Patent).
The Unitary Patent is an EU wide patent that can be requested at the grant stage of the conventional European patent. The Unitary Patent Court will permit EU-wide enforcement of European patents, making them more valuable.

Ratification by 13 countries is required for the new system to start, including France, Germany and the United-Kingdom. Today, 11 countries have ratified (AT, BE, BG, DK, FI, FR, LU, MT, NL, PT, SE), and 4 are ready to ratify – including the UK. Germany is reportedly ready for ratification.

With this good news, entry into force of the Unitary Patent system may again be expected in 2017.

Philippe Ocvirk

Luxembourg approves the Unified Patent Court Agreement

On 18 March 2015, the Luxembourg Parliament approved the Agreement on the Unified Patent Court (UPC). Upon signature by the Grand Duke and ratification, Luxembourg will join the 6 EU states that are already formally in the game (Austria, Belgium, Denmark, France, Malta and Sweden).

The creation of the Unified Patent Court is a major evolution for patent enforcement. It will be competent for infringement and nullity actions for both classical European Patents and European Patents with unitary effect. A patentee will thus be able to enforce his rights in all the member States though a single court action.

Luxembourg is in the heart of the new system: the Court of Appeal of the UPC and the Courts’ Registry will be located in Luxembourg. Of course, the Court of Justice of the European Union (CJEU) is also located in Luxembourg, and will have the final say on any points of European law referred by the Unified Patent Court.

Furthermore, Luxembourg is centrally located between the Paris and Munich sections of the Central Division of the UPC, and the Munich and The Hague offices of the European Patent Office.

Philippe OCVIRK