Date: 21 January 2022
We reported last month that the Unified Patent Court is imminent (the relevant article can be found here) and it has been announced on 19 January 2022 that the Protocol on provisional application (PPA) has begun. This allows for serious preparation and, in particular, provides for a budget and authorizes expenditure.
The President of the EPO has announced that the period of provisional application of the UPC Agreement is expected to last 8 months, giving the clearest signal yet that the anticipated start will be in September this year. The announcement says “If Germany for example deposits its instrument of ratification on 20 May 2022, the UPCA would enter into force on 1st September 2022.”
Moreover, President Campinos has also introduced a procedure for deferring the grant of European patents until after the Unitary Patent system has begun, so as to allow applicants the opportunity to have their applications granted with unitary effect from the start.
This provision will be available as of the date Germany deposits its instrument of ratification of the UPCA.
From that date (which is not yet set), grant can be deferred by filing a form (for which there is no fee) alongside approval of the text that accompanies the Notice of Intention to Grant under Rule 71(3) EPC.
Accordingly, over the next few months, as we approach expected ratification by Germany, applicants will wish to consider whether to press ahead with grant of their European patents or to defer grant in expectation of the benefits of unitary effect. Given that there is a usual four month period for reply to a communication under Rule 71(3), notices of intention to grant that issue now will have due dates that fall after 20 May 2022. Thus, the option to defer is one that can be considered for present applications. Moreover, due dates for response to communications under Rule 713) can be extended in various ways, so the option applies to these cases also.*
Also announced is an ability to register for unitary effect in advance of the start of the system. A key purpose is to prevent any pre-emptive third part action for revocation before a national court that would prevent later registration of unitary effect. This advance ability to register for unitary effect will also be available after ratification by Germany.
The Unitary Patent has pros and cons. Its benefits are somewhat diminished now that the UK is no longer a party to the scheme. From a cost point of view, it is modelled to cost about the same in renewal fees as a traditional patent validated in four EPC states. The Unified Patents Court will co-exist as a patent litigation forum alongside the national courts of Germany and the UK, so businesses will need to be aware of the possibilities of being sued for patent infringement from different directions.
Our litigation team in Germany, which comprises litigation lawyers and patent attorneys, stands ready to file suit before the UPC as soon as our clients require and to defend against complaints filed against clients and their patents.