On December 5, 2022, the Unified Patent Court (UPC) announced, that Germany will be asked to postpone depositing its certificate of ratification of the Unified Patent Court Agreement (UPCA) in Brussels to February 2023. Provided there are no further delays, the “Sunrise Period” will then start on March 1, 2023. The Unitary Patent System is then intended to start three months later, on June 1, 2023.
Meanwhile, applicants who receive notification of the EPO’s Intention to Grant may be concerned whether and, if so, when they may file a request for unitary effect. However, they can usually be relieved of this concern, although this is not self-evident according to the law.
I. The problem
Pursuant to Rule 6 (1) of the Rules relating to Unitary Patent Protection, applicants have to file the request for unitary effect within one month after the grant is published in the European Patent Bulletin. This period is non-extendable. At the same time, the applicant can only file a request for unitary effect if the Unitary Patent System has started prior to the publication of the mention of the grant in the European Patent Bulletin.
At first sight, applicants for a European patent (EP) in pending proceedings who intend to file a request for unitary effect will now hope for the EPO to take its time examining the application. However, that is not subject to the applicants’ influence – neither is the further procedure: the EPO notifying an applicant of its intention to grant the patent, initiates a strict timetable to be followed by the applicant, assuming that the applicant does not consider any amendments necessary. According to Rule 71 (3), (7) EPC, the applicant has to pay the fee for grant and publishing and to file translations of the claims within four months – otherwise, the EP application shall be deemed withdrawn.
Hence, the only possible approach to apply for a European patent with unitary effect (Unitary Patent) is to delay the publication in the European Patent Bulletin.
II. The solution
Fortunately, the EPO became aware of that predicament and introduced two so-called transitional measures to secure that EP applicants may request unitary effect. The EPO had already presented these measures in January 2022. Although based on the current schedule the Sunrise Period does not start until March 1, 2023, the EPO provides those transitional measures as of January 1, 2023.
If the mention of the grant in the European Patent Bulletin is likely to be published before the start of the Unitary Patent System (planned starting date: June 1, 2023), applicants may file a request for a delay in issuing the decision to grant. This particularly applies to applicants that have already received the Intention to Grant notification. In this scenario, the EPO would postpone the mention of the grant in the European Patent Bulletin until the Unitary Patent system enters into force.
However, in this case, applicants need to be aware of several aspects:
1. Applicants cannot file a request for a delay in issuing the decision to grant a European patent if they request amendments. In that case, they have to wait for the EPO’s decision on the amendments according to Rule 71 (3), (6) EPC. However, if the EPO gives its consent, the abovementioned proceedings repeat and applicants may file the request accordingly – unless the Unitary Patent has already entered into force in the meantime anyway.
2. Applicants must file the request for a delay in issuing the decision to grant a European patent within a certain timeframe: It cannot be filed after expiry of the four-month period according to Rule 71 (3) EPC or on a date later than the date of approval of the text intended for grant. That said, applicants who received the notification under Rule 71 (3) in September 2022 and have not yet approved the text need to act swiftly if they intend to request a delay in issuing the decision to grant.
3. The request also delays the grant of the European patent with effect for countries that are not member states of the Unitary Patent System.
4. The request for a delay in issuing the decision to grant a European patent does not comprise the request for unitary effect, which generally has to be filed within one month after publication of the mention to grant in the European Patent Bulletin.
The “second transitional measure” can be considered as complementary to the “request for a delay”.
Hereafter, applicants that receive an Intention to Grant notification prior to the start of the Unitary Patent system may file an “early request for unitary effect” prior to the mention of the grant in the European Patent Bulletin. The EPO will register the unitary effect after the Unitary Patent System enters into force. This ensures that the first EPs with unitary effect will be registered with the EPO as soon as the UPC becomes operational.
However, regardless of the request, the EPO only registers the unitary effect if the mention of the grant is published after the start of the Unitary Patent System. Hence, applicants need to ensure that the mention of the grant is published after the start of the Unitary Patent System.
In other words, one may consider filing the “early request” combined with the “request for a delay”, whereas an isolated “early request” has no additional benefit. Especially, making use of this second “transitional measure” is not mandatory. If such a request is not filed, then a regular request for a Unitary Patent may still be filed within one month after publication of the grant of the patent to obtain the unitary effect. In both cases, the unitary effect will take effect retroactively as from the date of publication of the grant of the European patent.