European Unitary Patent Update - Preparing for Commencement
After a period of quiet in relation to the Unitary Patent system, it looks like we may now finally be moving towards commencement. Patent owners should be planning what action to take in respect of their European portfolio. The following guidance is intended to assist you in navigating the options available..
Whilst there is still no confirmed commencement date, recent developments suggest that Germany could deposit their instrument of ratification of the Unitary Patent Agreement during the week before Christmas. In which case, the Unitary Patent system would enter into force on 1st April 2023.
Once the Unitary Patent system comes into effect, if an applicant wishes their pending European application to become a Unitary Patent in the ratifying European states, a request for unitary effect must be filed within once month of grant.
For existing granted European Patents, the Unitary Patent Court (UPC) will be the default Court of litigation in the Ratifying States unless the proprietor “Opts-out” of the UPC.
What does this mean for our clients? A few points for you to consider:
- A Unitary Patent can only be obtained for European applications that are pending at Commencement. The EPO has introduced two transitional measures, intended to assist applicant whose applications are in the grant phase around commencement, which will come into effect once Germany has depositing their instrument of ratification. The transitional measures will apply to European Patent Applications where a Rule 71(3) EPC Communication of Intention to Grant a Patent has been despatched.
- The first measure - Applicants may file early requests for unitary effect. The EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester.
- The second measure – the applicant may request a delay in issuing the decision to grant a European patent. The request must be filed after despatch of the Rule 71(3) EPC Communication of Intention to Grant a Patent, but before filing approval of the text intended for grant in response to this Communication. This will prevent the application being granted before commencement of the Unitary Patent system and allow the applicant to request unitary effect.
- For clients with existing European patents in Ratifying States, a request to “Opt-Out” of the jurisdiction of the Unitary Patent Court can be filed within the three-month period preceding commencement. Thus, this facility could be available from 1 January 2023.
There are specific requirements for requesting unitary effect and for filing an “Opt-Out”, so we suggest that you contact us urgently to discuss your portfolio of European patents and applications.
To discuss your European patent portfolio, contact your regular attorney or for more details, please refer to our previous blog which can be found here.