01/02/2022
The EPO recently announced that they would be introducing two new transitional mechanisms that will assist applicants during the early uptake phase of the Unitary Patent. The announcement from the EPO can be found here. The first of these two mechanisms will allow applicants to delay the grant of a European Patent until the Unified Patent Court enters into effect. We have set out the details and implications of this first mechanism here.
The second mechanism will allow applicants to file an early request for a European patent application to take unitary effect after grant. This additional mechanism will be available for a temporary period starting as soon as Germany ratifies the UPC Agreement, and ending once the Agreement comes into force.
When the Unitary Patent system is up and running, applicants for a European patent will be set a deadline of 1 month after grant of the patent to file a request for unitary effect at the EPO. This is a relatively short deadline (compared to, for example, the 3 month term set by the EPO for validating a granted European patent nationally), and no extension will be available.
To assist applicants in the lead up to the start of the Unitary Patent system, the EPO will accept “early” requests for unitary effect. Such early requests can be filed after issuance of a notice of allowance issued in respect of a European patent application but prior to the official start of the Unitary Patent system. Provided the request meets the requirements for the registration of unitary effect, the EPO will register unitary effect once the Unitary Patent system has started. Such early requests for unitary effect will be allowed to be filed as of the date of deposit of the Federal Republic of Germany’s instrument of ratification of the UPC Agreement. Early requests filed before this date will not be treated as valid requests. Currently, it is expected that Germany will deposit their instrument of ratification in the latter half of 2022.
It is worth highlighting that applicants wishing to make use of this mechanism to file an early request for a Unitary Patent should ensure that the application does not grant before the entry into force of the UPC Agreement. In this regard, applicants can make use of the first transitional mechanism, that will delay the grant of the application until after the UPC Agreements comes into force. Filing an early request for unitary effect will not automatically cause the EPO to delay grant of the application.
As it stands, early requests for unitary effect will only be available during the transitional period, and the system will revert to the 1 month term once the UPC Agreement is in force. However, allowing applicants to make early requests, such as when responding to a notice of allowance, may be seen as more intuitive and procedurally more efficient. Therefore, there is a chance that the EPO will keep this temporary mechanism in place.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
