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Applying for a patent

Supporting users in an early uptake of the Unitary Patent

After the recent finalisation of the necessary ratification procedures by EU member states the Unitary Patent system is expected to start in the second half of 2022. This means that the Agreement on a Unified Patent Court (UPCA) will enter into force, and that the two EU Regulations setting up the Unitary Patent [1] will apply [2]. This also means that the secondary legal framework for the Unitary Patent will enter into force, in particular the Rules relating to Unitary Patent Protection, which formally entrust the EPO with the administration of the Unitary Patent [3].

With a view to supporting users in an early uptake of the Unitary Patent, the EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure. These measures will be made available ahead of the entry into force of the Unitary Patent system, as of the date of deposit of Germany's instrument of ratification of the UPCA. Pursuant to Article 89(1) UPCA [4], this date lies between 3-4 months before the entry into force of the UPCA and will be communicated on the EPO's website. If Germany for example deposits its instrument of ratification on 20 May 2022, the UPCA would enter into force on 1st September 2022. On the same day, the two Regulations setting up the Unitary Patent would become applicable, as well as the Rules relating to Unitary Patent Protection.

The two transitional measures are interrelated but separate from a procedural perspective. They will be available for European patent applications for which a communication under Rule 71(3) EPC has been despatched, i.e. which have reached the final phase of the grant proceedings. Once the examining division has decided that a European patent can be granted it must inform the applicant of the text on the basis of which it intends to do so (so-called "IGRA" - Intention to GRAnt). This text is communicated to the applicant by despatching the communication under Rule 71(3) EPC. In this communication, the applicant is invited to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings within a period of four months, which is non-extendable. If the applicant pays the fee and files the translations within this period, he will be deemed to have approved the text intended for grant.

Early request for unitary effect

The first transitional measure will enable applicants to file early requests for unitary effect already before the start of the Unitary Patent system. This will allow the EPO to register unitary effect immediately at the start of the system, provided all corresponding requirements are met. The EPO will allow early requests for unitary effect as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.

If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable or reject the request. It is to be noted that requesters will receive a communication concerning the result of their request for unitary effect at the earliest a few days after the publication of the mention of the grant of the relevant European patent in the European Patent Bulletin following the start of the Unitary Patent system. The EPO will however inform requesters about formal deficiencies already before the entry into force of the Rules relating to Unitary Patent Protection, giving them the possibility to make corrections in due time.

Where an early request for unitary effect is filed before Germany deposits its instrument of ratification of the UPCA and/or if a Rule 71(3) EPC-communication has not been despatched, it cannot be treated as a request for unitary effect. The applicant will be informed about this and will be able to resubmit the request once the conditions are met. Please note that the possibility to file early requests will only be available until the start date of the Unitary Patent system.

Please note that a request for unitary effect should preferably be filed online. Form UP 7000 (request for unitary effect) will be made available in both Online Filing (eOLF) and Online Filing 2.0. When using web-form filing, it is highly recommended to use Form 7000 which will be provided on the EPO's website. The request for unitary effect can also be filed in person, by postal services or by fax in which cases it is also strongly recommended to use Form 7000, reading the explanatory notes carefully before completing it.

Request for a delay in issuing the decisions to grant a European patent

The second transitional measure will provide the possibility for the applicant to request a delay in issuing the decision to grant a European patent after despatch of a communication under Rule 71(3) EPC by the Office and before approving the text intended for grant. This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system, and will avoid that applicants miss opportunities to obtain a Unitary Patent in the transitional phase.

The background to this measure is that Unitary Patent protection may only be requested for any European patent granted on or after the date of application of Regulation (EU) No 1257/2012 [5]. Under the EPC, the decision to grant a European patent takes effect on the date on which the mention of the grant is published in the European Patent Bulletin [6]. At an applicant's request, the EPO will delay issuing its decision to grant a European patent so that the mention of the grant is published in the European Patent Bulletin on or immediately after the start date of the Unitary Patent system. A valid request thus makes a European patent eligible for Unitary Patent protection.

The EPO will allow requests for a delay in issuing the grant as of the date Germany deposits its instrument of ratification of the UPCA. Moreover, a request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text. 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. The request for delay must be filed using a dedicated request form provided by the EPO (Form 2025) which will be made available on the EPO's website in due course. A request not meeting these requirements will be deemed not to have been filed. Please note that requests for a delay in issuing the decision can only be filed until the start date of the Unitary Patent system.

Examples

In order to facilitate and illustrate these two transitional measures, two examples are provided below with fictitious dates. In both examples, it is hypothetically assumed that Germany deposits its instrument of ratification of the UPCA on 20 May 2022. The UPCA would in such a case enter into force on the first day of the fourth month after this deposit, i.e. on 1 September 2022. This corresponds to the date on which the two Regulations establishing the Unitary Patent would become applicable and on which the whole Unitary Patent system would become operational.

Example 1: Early request for unitary effect

Figure1

(click to enlarge)

In this example, it is assumed that applicant A receives the communication under Rule 71(3) EPC (IGRA) from the EPO on 21 April 2022. This means that the applicant could fulfil the requirements under Rule 71(3) EPC until 1 September 2022 (four months plus the 10 days provided for under Rule 126(2) EPC). Applicant A fulfils the requirements under Rule 71(3) EPC on 3 August 2022. According to the EPO's publication workflow, this means that the mention of the grant of the European patent would be published in the European Bulletin on 7 September 2022.

Applicant A would be eligible to file an early request for unitary effect as of 20 May 2022, which is the date of the deposit of Germany's ratification instrument, until the end of the period of provisional application on 31 August 2022. The EPO would then examine this request and register unitary effect very soon after the publication of the mention of the grant of the European patent in the European Patent Bulletin if all requirements are met.

Example 2: Request for a delay in issuing the grant decision

Figure2

(click to enlarge) 

In this example, applicant B receives the communication under Rule 71(3) EPC (IGRA) on 18 February 2022 and could thus meet the requirements under Rule 71(3) EPC by 28 June 2022. Applicant B would be eligible to file a request for a delay in issuing the decision to grant as soon as Germany has deposited its ratification instrument of the UPC Agreement, i.e. on 20 May 2022. The applicant may however wait with the filing of such a request until the end of the four-month period provided in Rule 71(3) EPC.

If the EPO receives the request for a delay of grant in due time and all requirements are met, it will postpone the publication of the mention of the grant of the European patent until 7 September 2022, which is the first publication day after the start of the Unitary Patent system. Applicant B could then file a request for unitary effect within one month after the publication of the grant, in other words until 7 October 2022. Alternatively, the applicant could have filed an early request for unitary effect from 20 May 2022 until 31 August 2022.

Further information:



[1] Regulations (EU) No 1257/2012 and (EU) No 1260/2012

[2] Article 18(2) Regulation (EU) No 1257/2012 and Article 7(2) Regulation (EU) No 1260/2012.

[3] Decision of the Select Committee of the Administrative Council of 15 December 2015 adopting the Rules relating to Unitary Patent Protection (SC/D 1/15), Article 2.

[4] Article 89(1) UPC reads as follows: This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth instrument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest.

[5] Article 18(6) Regulation (EU) No 1257/2012.

[6] Article 97(3) EPC.