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The President of the European Patent Office has decided that applicants will soon be able to request, at the EPO, a delay in the issuance of a European patent until entry into force of the Unified Patent Court (UPC) Agreement, which will make “Unitary” Patents available based on a granted European patent (see also the accompanying EPO notice on the decision).
A “Unitary” Patent will be a single patent right obtainable (as of right) based on a granted European patent that will have effect in the territories of participating countries. The participating countries are currently 17 of the EU member states. It will be possible for applicants to obtain protection in these 17 countries by filing a single request for a Unitary Patent once their European patent has granted. This will remove the requirement to “validate” the patent in each of these countries separately. Any post-grant litigation of a Unitary Patent will also be heard before a central court, the Unified Patent Court (UPC).
A Unitary Patent will however not cover all of the 44 countries in which protection can be obtained via the European patent system. Many countries, such as the United Kingdom, Spain, Ireland and Switzerland, will not be participating in the Unitary Patent (or the UPC). In these non-participating countries, it will still be possible to validate a granted European patent as usual in order to obtain national patent protection, in addition to filing a request for a Unitary Patent.
The decision of the EPO President to allow applicants to delay grant of their European patents until the UPC Agreement comes into force will therefore allow applicants to take advantage of the Unitary Patent system without worrying that their patent will grant before it can qualify for the Unitary Patent. The procedural implications of the EPO President’s decision are considered below.
When a European application is deemed to be in allowable form by the EPO, a “communication under Rule 71(3) EPC” issues. This communication sets a 4-month deadline for the applicant to (a) approve the text proposed for grant, (b) pay the grant and printing fees, and (c) file translations of the claims into the two languages of the EPO other than the language of proceedings. Once an applicant has completed these acts, the EPO subsequently issues a “decision to grant” the patent, typically within a period of 4-6 weeks. The decision to grant sets the date of grant of the patent, which is typically a further 4-6 weeks after the date of the decision to grant.
Currently, an applicant is not able to request a delay either in the issuance of the decision to grant, or in the eventual grant date of the patent once the decision to grant has issued.
The decision of the EPO President will allow applicants, for a temporary period, to request that the issuance of the decision to grant be delayed such that the patent will grant after the UPC Agreement comes into force. This temporary period will begin on the date that Germany deposits its instrument of ratification of the UPC Agreement (which will happen when the member countries are satisfied that the UPC is ready to begin operations, probably in autumn 2022), and will end on the date that the UPC Agreement enters into force. As the UPC Agreement will enter into force on the first day of the fourth month after the deposit of Germany’s instrument of ratification, this temporary period will last between 3 and 4 months.
During the temporary period, an applicant will be able to request a delay in the issuance of the decision to grant in pending cases where (i) a communication under Rule 71(3) EPC has been issued by the EPO but (ii) the applicant has not yet approved the text proposed for grant. If the request for delay is filed on the same day as the text proposed for grant is approved, the request will be considered valid. The request for delaying the issuance of the decision to grant will have to be filed on a special form that will be made available for this purpose by the EPO. A request for delay can be withdrawn at any time. [It will also be possible during the temporary period to file an “early” request to obtain a Unitary Patent itself – see our news item on this separate development here for further details.]
It is important to note that filing a request to delay issuance of the decision to grant does not affect the 4-month time limit for responding to the communication under Rule 71(3) EPC. Applicants will still need to approve the text proposed for grant, pay the grant and printing fees, and file the necessary claims translations, before the end of the 4-month time limit, even if a request to delay the subsequent issuance of the decision to grant has been filed.
Between now and the deposit of Germany’s instrument of ratification, applicants may wish to consider employing other strategies to delay grant. For example, rather than approving the text proposed for grant in response to a communication under Rule 71(3) EPC, amendments to the text could instead be requested. This would normally result in a new communication under Rule 71(3) EPC issuing, which would set a new 4-month term for response. The EPO’s further processing procedure can also be used to further delay matters, if necessary. We can provide strategic advice on the options available for delaying grant during this period for a given patent application.
You can find out more details about the Unitary Patent and the Unified Patent Court here and you can register for our 1 March 2022 webinar “How and When to Prepare for the Arrival of the Unitary Patent” here.
For more information contact your usual J A Kemp adviser.