Date: 24 November 2022
The long-awaited Unitary Patent system at the European level in patent law is expected to enter into force on June 1, 2023. From that date it is expected that applicants for European patents will be able to obtain unitary effect when their patents are granted (Unitary Patents).
Until now, the only way to delay the grant of a patent and push it far enough into 2023 so as to be confident that it will issue when the system is in force has been to request amendments (e.g. minor formal edits) to the patent application documents intended for grant. Such tactics have been in play throughout 2022 in anticipation of the start of the new system. Throughout 2022, applicants for European patents for which grant is imminent have been second-guessing whether the system might begin in time for their granted patents to be Unitary Patents.
On November 14, 2022, the European Patent Office announced two transitional measures that applicants will be able to use as of January 1, 2023, to obtain Unitary Patent protection for such patent applications. The transitional measures are being introduced to support timely claiming of the Unitary Patent. See this link for the “sunrise period” for opting existing European Patents out of the jurisdiction of the new Court, which is a different matter and has a different start date.
Beginning January 1, 2023, applicants seeking a Unitary Patent be able to make an early request for unitary effect and, if necessary, can request deferral of the decision on grant.
The transitional measures announced for January 1, 2023, will apply until the unitary patent system takes effect.
The early request for unitary effect will allow applicants to request unitary effect for their European patent applications that are due to be granted before the start of the Unitary Patent system. This will allow the European Patent Office to begin registering unitary effect immediately upon launch of the system.
Early requests for unitary effect can only be filed for European patent applications for which a communication under Rule 71(3) EPC concerning the Office's intention to grant a European patent has already been issued.
Early requests for unitary effect filed before 1 January 2023 and/or filed before a communication under Rule 71(3) EPC has been issued cannot be treated as requests for unitary effect. In this case, the request must be filed as soon as the conditions for doing so are fulfilled.
The request for deferment of the decision on grant of the European patent may be filed after a communication under Rule 71(3) EPC has been issued by the Office and before the applicant has indicated his or her agreement with the version of the application intended for grant.
The request for deferment of the decision on grant results in a deferment of the publication of the mention of the grant of the European patent to a date after the Unitary Patent system comes into force. The (regular) request for unitary effect can be filed within one month after the publication of the grant of the European patent.
Our experts will be happy to answer any questions you may have about the new Unitary Patent system and the strategic options it offers patent applicants.
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