05 Dec The Unitary Patent system for granting European patents with unitary effect (Unitary patents) is intended to start on 1 June 2023.
The long-waited Unitary Patent system for granting European patents with unitary effect (Unitary patent), will finally become reality, as it is currently intended to start on 1 June 2023.
The Unitary Patent will make it possible to get patent protection in up to 25 EU Member States by submitting a single request to the EPO. They will build on European patents granted by the EPO under the rules of the European Patent Convention (EPC), so nothing will change in the pre-grant phase and the same high standards of quality search and examination will apply. After a European patent is granted, the patent proprietor will be able to request unitary effect, thereby getting a Unitary Patent which provides uniform patent protection in up to 25 EU Member States.
The Unitary Patent system is expected to start on 1 June 2023, as reflected on the UPC’s website. As the Unitary Patent system is inextricably linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and classic European patents, this means that on the same date the Agreement on a Unified Patent Court (UPCA) will enter into force, coupled with the two EU Regulations setting up the Unitary Patent (Regulations (EU) No 1257/2012 and (EU) No 1260/2012) will apply.
The initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period with an entry into force of the UPCA on 1 April 2023. However, the start of the Sunrise Period is postponed for two months, namely to 1 March 2023. The additional time is intended to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents.
Hence, as of 1 June 2023, proprietors of a granted European patent can make request for unitary effect at the EPO to obtain a Unitary Patent within one month after the date of publication of the mention of the grant in the European Patent Bulletin.
In addition to this, the new Unified Patent Court (UPC) will also have competence to centrally enforce and invalidate Unified patents (UPs), as well as validated European patents (EPs) via the classic European patent validation route in any of the participating to the UPCA member states. It must be borne in mind that it also applies to any already validated European Patents (EPs) in the participating countries where the classic European Patent was granted before the entry into force of the new Unified patent system. In case the proprietors of such already validated European Patents do not want to make use of the Unified Patent Court, as of the beginning of the Sunrise period on 1 March 2023, they can opt-out of the UPC’s jurisdiction in order to prevent them from being involved into the unknown UPC procedures and competency. It must be emphasized, that opt-out is not possible for a Unified Patent (UP), as Unified Patents are always subject to the jurisdiction of the UPC and cannot be opted-out.
In order for the applicant to benefit from the Unitary Patent, the EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure. These measures are available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023.
The two transitional measures are interrelated but separate from a procedural perspective. They will be available for European patent applications for which a communication under Rule 71(3) EPC has been despatched, i.e., which have reached the final phase of the grant proceedings. Once the examining division has decided that a European patent can be granted it must inform the applicant of the text on the basis of which it intends to do so (so-called “IGRA” – Intention to GRAnt). This text is communicated to the applicant by despatching the communication under Rule 71(3) EPC.
The first transitional measure will enable applicants to file early requests for unitary effect already before the start of the Unitary Patent system. This will allow the EPO to register unitary effect immediately at the start of the system, provided all corresponding requirements are met. The EPO will allow early requests for unitary effect as of 1 January 2023. Moreover, early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.
If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable or reject the request. It is to be noted that requesters will receive a communication concerning the result of their request for unitary effect at the earliest a few days after the publication of the mention of the grant of the relevant European patent in the European Patent Bulletin following the start of the Unitary Patent system. The EPO will however inform requesters about formal deficiencies already before the entry into force of the Rules relating to Unitary Patent Protection, giving them the possibility to make corrections in due time.
Where an early request for unitary effect is filed before 1 January 2023 and/or if a Rule 71(3) EPC-communication has not been despatched, it cannot be treated as a request for unitary effect. The applicant will be informed about this and will be able to resubmit the request once the conditions are met. Please note that the possibility to file early requests will only be available until the start date of the Unitary Patent system.
The second transitional measure will provide the possibility for the applicant to request a delay in issuing the decision to grant a European patent after despatch of a communication under Rule 71(3) EPC by the EPO and before approving the text intended for grant. This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system, and will avoid that applicants miss opportunities to obtain a Unitary Patent in the transitional phase.
The EPO will allow requests for a delay in issuing the grant as of 1 January 2023. Moreover, a request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text. A request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed. Please note that requests for a delay in issuing the decision can only be filed until the start date of the Unitary Patent system.
Under the regular regime after entry into force of the new unitary patent system, a Unitary Patent may be requested for any European patent granted on or after the date of entry into force of the UPC Agreement.
At present (December 2022), the Unitary Patent can only cover 17 of all 25 participating EU Member States (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxemburg, Malta, Netherlands, Portugal, Slovenia and Sweden), as the other EU countries (Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia) have not ratified the UPC Agreement yet.
The outstanding EU member states’ ratifications are likely to take place successively, so there may be different generations of Unitary Patents with different territorial coverage. The coverage of a given generation of Unitary Patents will stay the same for their entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect. In other words, there will be no extension of the territorial coverage of Unitary Patents to other Member States which ratify the UPC Agreement after the registration of unitary effect by the EPO.
Should you required additional information and assistance in registering unitary effect of your European patents at EPO or opt-out procedures before UPC, please do not hesitate to contact patent and trademark bureau K TAHTADJIEV, and we will be more than glad to assist you in this respect.
*Image and text sources: www.epo.org, www.unified-patent-court.org