23/11/2022
As we reported here, the Unified Patent Court (UPC) recently published their implementation roadmap. The roadmap set out the expected date of entry into force of the UPC Agreement as 1 April 2023.
In view of the recently published roadmap, the EPO has decided to adjust the start date of its transitional measures to 1 January 2023. Previously, these transitional measures were dependent on Germany depositing their ratification of the UPC Agreement. However, it appears as though the EPO has decided that the transitional measures are starting on 1 January 2023 irrespective of Germany’s ratification.
Therefore, from the 1 January 2023 patent applicant may carry out two actions:-
1. Patent applicants may file an early request for unitary effect; and
2. Patent applicants may request for a delay in issuing the decision to grant a European patent.
Early requests for unitary effect can be filed as of 1 January 2023. Early requests for unitary effect may only be filed for European patent applications where the text intended for grant (communication under Rule 71(3) EPC) has been despatched.
Also, from 1 January 2023 it is possible for an applicant to request that the issuance of the decision to grant of a European patent be delayed so that the mention of the grant is published in the European Patent Bulletin on or immediately after the date of entry into force of the UPC agreement, i.e., 1 April 2023 as things currently stand.
A validly filed request for delay will ensure that the European patent is granted on or after the entry into force of the UPC Agreement. The granted European patent will then qualify for registration as a Unitary Patent.
For a validly filed request for delay, the applicant must have received the text intended for grant (communication under Rule 71(3)) but they must have not yet approved the text at the time of requesting the delay. However, applicants can file the request for delay on the same day as approval of the text intended for grant. Further, applicants requesting reasoned amendments or corrections in response to the text intended for grant may at the same time file a request for a delay of grant.
This recent news, provides even more incentive to decide or at least think about whether you would like to be part of the UPC or not. As reported here, our European patent Attorneys will be competent to act before the UPC and will be able to assist you with any queries regarding the UPC.
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.
