EPO issues guidance on achieving unitary patent status from day 1 of the UPC/UP system for European patent applications coming up to grant

With the Unified Patent Court (UPC) and unitary patent (UP) system now likely to commence towards the second half of 2022, the European Patent Office (EPO) has issued transitional measures aimed at ensuring that patents coming to grant close to the start of the new system are able to get unitary protection (ie UP status) from "day 1", including via a delayed grant mechanism.

The EPO, which is entrusted with the administration of the UP, has issued new guidance on transitional measures applicable to European patent applications. These measures apply to applications that have reached the final stages of grant procedure. The measures will come into effect on the date of deposit of Germany's instrument of ratification of the UPCA, i.e. 3-4 months before the actual start of the UPC/UP system.

The transitional measures will apply only once Germany has deposited its instrument of ratification and only in respect of applications that have received an intention to grant (IGRA) communication from the EPO under Rule 71(3) EPC. On receipt of the IGRA communication, applicants have a non-extendable 4 month period in which to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings. If the applicant pays the fee and files the translations within this period, he will be deemed to have approved the text intended for grant.

The purpose of the new measures is to allow those applying for patents which will grant on the start date of the UPC/UP system (Day 1) or shortly after, to select unitary status in advance, rather than waiting for the commencement of the new system to do so. Since Germany's deposit of its ratification of the UPCA itself creates a non-extendable timetable to commencement of the new patent system, this means that the EPO will be accepting unitary status requests during that fixed run-up period when the existence and start date of the new system is guaranteed.

Further, since some patents might just miss the opportunity to apply for unitary status in advance of Day 1 even with these arrangements because they would normally be coming to grant shortly before the new system commences, the transitional measures will also allow applicants for patents (which are already in receipt of an IGRA) to apply to the EPO to delay the grant decision, so that they come to grant only once the new system has started and so can get unitary status from Day 1. Unitary effect would otherwise not have been available if they have come to grant before that date.

In summary:

• The first measure – the early request for unitary effect - will enable applicants who have already received an IGRA, the 4 month response period of which would end on the start date of the UPC/UP system or later, to file early requests for unitary effect as soon as Germany deposits its ratification of the UPCA, and before the start of the UPC. This will allow the EPO to register unitary effect immediately at the start of the new patent system, provided all corresponding requirements are met.
• The second measure – the request for a delay in issuing the decision to grant a European patent - will provide the possibility, as soon as the Germany ratification deposit has occurred, for the applicant who has already received an IGRA communication from the EPO in relation to which the 4 month time period would run out before Day1, to request a delay in the EPO issuing the decision to grant a European patent. This will allow a European patent that would otherwise have been granted before the start of the new system and thus miss the opportunity for unitary effect, to have its grant delayed so that it will then become eligible for request for unitary effect at the start of the new system.

Without such measures, patentees would only be able to request unitary status for their newly granted patents within the first month of grant.  Those whose patents would have come to grant after Day 1, are being given the chance to request unitary status from Day 1 using these new procedures. Others whose patents were granted more than a month before Day 1 and would therefore miss out on this opportunity will now be able to do the same through the grant delay mechanism.

The full guidance issued by the EPO is available here with helpful examples of how these new transitional measures are intended to work including illustrative timelines.

These transitional measures should ease some of the timing difficulties that would otherwise have been present and may encourage uptake of the unitary effect option amongst those applying for European patents. In the words of EPO President António Campinos:

"With the start of the provisional application, the Unitary Patent will now become a reality. A cost-attractive patent, uniformly covering the territory of all participating EU member states will be available a few months from now. Thus, the patent system will more effectively support growth and innovation, help more efficiently to tackle challenges like the COVID-pandemic, and foster economic growth to overcome the current crisis."

For more on this development and the UPC and unitary patent in general, see our UPC & UP Hub.

Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues you should be considering in preparation for the UPC. Please contact us for further information.

Authors