The request for unitary effect in pending EP application proceedings

With the Protocol on the Provisional Application of the Unified Patent Court Agreement (UPCA) in force since mid-January, the penultimate step towards the Unified Patent system has been achieved. From now on final preparations can be initiated such as appointing judges, implementing user-friendly IT systems and re-allocating court sections that were planned pre-Brexit for London. As soon as the signatory states consider the UPC operational, Germany will take the final step by depositing its certificate of ratification of the UPCA in Brussels. Four months later the UPC will enter into force. However, the Preparatory Committee estimates that the UPC likely will not come into force for about eight months. Not until then will the waiting for the European patent with unitary effect finally come to an end.

Meanwhile, applicants who receive notification of the EPO’s Intention to Grant may be concerned that they will not be able to request 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. In other words: the applicant could only file a request for unitary effect if the UPC comes into force within one month after publication in the European Patent Bulletin.

At first sight, applicants for a European patent 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and to file translations of the claims within four months – otherwise, the European patent application shall be deemed withdrawn.

Hence, the only possible approach to grant unitary effect to the European patent is to delay the publication in the European Patent Bulletin.

II.    The solution

Fortunately, the EPO became aware of that predicament and introduced a transitional measure to secure that patent applicants may request unitary effect.

Hereafter, applicants who receive the Intention to Grant notification and proceed according to Rule 71 (3) EPC may file a request for delay of grant. In this scenario, the EPO would delay the mention to grant in the European Patent Bulletin until the Unitary Patent system entered into force. The publication would be issued in the subsequent Bulletin.

However, applicants need to be aware of several aspects:

1. Applicants cannot file a request for postponement 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 postponement of the publication within a certain timeframe: It cannot be filed either before Germany has deposited its ratification instrument or after the Rule 71 (3) EPC period of four months. That said, if the preparations falter and Germany delays the deposit, this narrow timeframe will not suffice to grant unitary effect to applicants that receive the Intention to Grant notice soon.

3. The request for postponement does not comprise the request for unitary effect, which has to be filed within one month after publication of the mention to grant in the European Patent Bulletin.

4. As a second measure, the EPO introduced an “early request for unitary effect”: In case the four-month according to the law period under Rule 71 (3) EPC expires after entry of the UPCA into force, applicants may file a request for unitary effect already before the start of the UPC. That mainly affects applicants who receive the notice of the Intention to Grant after Germany has deposited its ratification instrument.

Authors: Martin Hackler and Dr. Ulrich Blumenröder