EPO to Allow Applicants to File Early Requests to Obtain a Unitary Patent

The EPO has issued a notice explaining that, in the lead up to the entry into force of the Unified Patent Court (UPC) Agreement, which will make "Unitary" Patents available based on a granted European patent, it will be possible for applicants to file early requests for a European patent to take unitary effect after grant.

What is a "Unitary" Patent?

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.

How will I be able to obtain a Unitary Patent?

Once the UPC Agreement comes into force, it will be possible to obtain a Unitary Patent (covering the participating countries) by filing a request centrally at the EPO up to 1 month after the grant of the patent. The present intention is that the request will, initially at least, have to be accompanied by one translation of the whole patent (although this is subject to confirmation). For patents granted in English, the present intention is that this translation can be into any EU language.

The EPO will then examine the request for a Unitary Patent and, so long as the formal requirements are met, will enter the European patent into the register of Unitary Patents.

For any countries not participating in the UPC, it will be still be possible to use the normal validation procedure before each respective national patent office to obtain national patents. The deadline for completing the validation procedure in these countries will continue to be 3 months from the grant date of the European patent.

What are the transitional provisions outlined in the EPO’s recent notice?

The recent notice explains that, for a temporary period prior to entry into force of the UPC Agreement, the EPO will accept "early" requests for Unitary Patents, which will take effect once the UPC Agreement is in 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, it will be possible to request for a Unitary Patent on any application for which the EPO has issued a "communication under Rule 71(3) EPC". This is the communication issued by the EPO when a pending European application is deemed to be in allowable form.

It will not therefore be necessary during the temporary period to wait until the patent has granted to file a request for a Unitary Patent. It will, though, still be possible to file the request after the patent has granted (so long as the request is filed at the latest 1 month from the grant date).

Applicants should note, however, that if they wish to file an "early" request for a Unitary Patent, it is also important to ensure that the application does not grant before the entry into force of the UPC Agreement, as this would invalidate the request for unitary effect. The EPO President has separately decided that, during the same temporary period between Germany depositing its instrument of ratification of the UPC Agreement and the UPC Agreement coming into force, it will be possible to request a delay to the grant date of an application, to prevent it from granting before the UPC Agreement comes into force. This decision is discussed in more detail in our news item here. Applicants filing an "early" request for a Unitary Patent should therefore also file a request to delay the grant date of the application until after the UPC Agreement comes into force. The filing of an "early" request for a Unitary Patent alone will not delay the grant of the patent.

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.