The Unitary Patent Transitional Measures

When the Unified Patent Court (UPC) eventually commences (currently delayed until 1 June 2023) it will be possible to obtain patent protection across UPC member states by requesting unitary protection as a Unitary Patent (UP).

In order to support users in an early uptake of the UP, the EPO are introducing two transitional measures before the UPC commences.  Information relating to the two transitional measures are provided here.  These are:

• Early request for unitary effect
• Request for a delay in issuing the decision to grant a European patent

Despite the delay to the UPC start date, the EPO has confirmed it intends to start its transitional measures on 1 January 2023 as originally planned.

These UP transitional measures will continue until the UPC commences.  If this date is any later, the EPO’s transitional measures will continue for longer.

Should I consider using one or both of the EPO’s UP Transitional measures?

Because of the longer transitional period, currently the only reliable way of getting a UP is to request that the EPO delay issuing the decision to grant a European Patent.  This is because a UP may only be requested for any European patent granted on or after the date of entry into force of the UPC Agreement (expected to be 1 June 2023).  Requesting the EPO delay issuing the decision to grant will ensure that the mention of the grant of the European patent is published in the European Patent Bulletin on or immediately after the date the UPC enters into force, and will therefore make a European patent (that would otherwise have been granted before the start of the UPC) eligible for Unitary Patent protection.

Practically speaking, this means that applicants can seek to delay grant of their European Patent from 1 January 2023, where they have received the text intended for grant, but have not yet approved the text for grant.  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.  A UP could then be requested at a later date (deadline dependent).

The risk associated with the other transitional measure (the early request for unitary effect) is that the EPO will still continue with issuing their decision to grant irrespective of the filing of the early request for unitary effect and, if the mention of the grant of the European patent is published in the European Patent Bulletin before 1 June 2023, the request for unitary effect is not validly filed.  The applicant will then have lost out on the option of obtaining protection via the UP (since the other transitional measure would no longer be available).

Recommendations:

If the applicant’s priority is to obtain UP protection over obtaining early patent protection, our recommendation is to request a delay in issuing the decision to grant a European patent.  However, the downside to requesting a delay in issuing the decision to grant is that the grant in non-UP countries will also be delayed.

If the applicant’s priority is to obtain patent protection at the earliest possible stage and if they are comfortable to validate on a national basis in the traditional way as a fall back (because the UPC is delayed and/or the EPO issue the decision to grant earlier than expected), our recommendation is to respond to the 71(3) communication as close to the UPC start date as possible and also file an early request for unitary effect.  This could still, however, mean that the mention of the grant of the European patent is published in the European Patent Bulletin BEFORE the date the UPC enters into force, making a UP not possible.

This article was prepared by HGF Partner Andy Camenisch