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08 November 2022
The Unitary Patent (UP) and Unified Patent Court (UPC) are expected to start on April 1, 2023. The system applies for countries in the ‘UP-space’ - initially 17 EU states, including the heavyweights Germany, France, and Italy, as well as Benelux countries and others.
How do I ensure that this is available for my patent application?
Unitary patent protection may be requested for any EP patent granted on or after the day when the UP system starts, i.e., presumably, on or after April 1, 2023. Unitary effect will not be available for patents granted before this date. Unitary effect will also not be available for patents granted on or after this date, but which do not contain the same claims for all 25 EU states that participated in the process leading to the creation of the UP system (i.e., all EU states except Spain and Croatia). This should be a small minority of patents.
Unitary patent protection will thus be an option for virtually every currently pending EP application, once it has been granted, and you need to consider and decide for which of your pending patent applications you will eventually desire unitary protection, as opposed to “classic” validation in one or more countries of the UP-space. Individual validations will of course remain necessary for countries outside of the UP-space.
The situation will be relatively simple for pending EP applications for which the Intention to Grant (Rule 71(3) EPC) communication has not yet been received. These applications are likely to proceed to grant only after April 1, 2023, when unitary effect can be requested for them post-grant. No UP-motivated action is presently required for these applications.
The situation is more complicated for pending EP applications for which the Intention to Grant communication has already been received, or will be received in relatively near future. Because the 4-month period to reply to this communication will then expire before April 1, 2023, an applicant who would timely comply with all pre-grant formalities runs the risk of a patent grant prior to April 1, 2023, which would render unitary protection unavailable for that granted patent.
Therefore, if you desire unitary protection for a pending EP patent application for which Intention to Grant communication has already been received, certain steps may need to be taken to delay grant until after April 1, 2023.
If the deadline to respond to the Intention to Grant (Rule 71(3) EPC) communication is before Germany deposits its instrument of UPCA ratification (expected mid-December 2022), an appropriate action may be to request minor reasoned amendments to the allowed text of the patent. This will prompt the issuance of a new Rule 71(3) EPC communication with a new 4-month period to reply, pushing the deadline well past mid-December 2022, and potentially even past the UP system start on April 1, 2023.
If the deadline to respond to the Intention to Grant (Rule 71(3) EPC) communication is after Germany deposits its instrument of UPCA ratification (expected mid-December 2022), the EPO will already provide transitional measures allowing applicants to request delay of grant until the UP system starts, and provide the possibility to make an early request for unitary effect registration.
The above considerations are illustrated in the flowchart below:
* UP-space states: currently Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Sweden (SE), Slovenia (SI)
** Expected date on which Germany may deposit its instrument of UPCA ratification
We at De Clercq & Partners can assist you with the process of obtaining unitary protection for your future granted EP patents.
I do not want unitary protection. Do I need to do anything?
If you do not desire unitary protection, but only wish for a “classic” EP patent, then your application can be prosecuted to grant and afterwards validated in individual UP-space EPC states (alongside any desired non-UP-space EPC states). This corresponds to the current procedure, which, if you have previously obtained a patent grant in Europe, you will be familiar with.
However, if you also wish to prevent that the granted “classic” EP patent falls within the competence of the Unified Patent Court (UPC), you may wish to opt-out the pending application prior to grant from the exclusive competence of the UPC. Even though opting-out is also possible after grant, this entails the risk that a third party files a central revocation action at the UPC before you request the opt-out or before the opt-out becomes effective. You will find practical considerations concerning such opt-outs on our website dedicated part on UP&UPC and the topic opt-outs and in our news section therein.
One possible moment to consider your preferences and request an opt-out could be at the pre-grant (Rule 71(3) EPC communication) stage, but in any event one must act before the end of the 7 (+7) year transitional period which allows an opt-out request. While the end of the transitional period is not a pressing concern now, it will become an important consideration as we approach April 1, 2030 (or April 1, 2037).
What about applications I will file in the future?
Because unitary protection is requested after the grant of an EP patent, you may be tempted to pay no attention to this issue when preparing a new patent application. There are, however, important questions to consider already at early stage.
First, because ownership of a Unitary Patent can only be transferred in respect of all UP-space countries, such transfer must be governed by a single legal framework. When there are two or more co-patentees, this will be the national law of the country of residence or principal place of business of the co-patentee mentioned first (insofar this place is in the UP-space). For example, if the residence of your organisation is in Belgium – which is a UP-space country – and you prefer the transfer of ownership of your later UP patent to be governed by Belgian law, you may want ensure that you are mentioned first in the list of co-applicants when the application is filed, so that in the granted patent you will be mentioned as first in the list of co-patentees.
Second, because the decision whether to request a Unitary Patent or a “classic” EP patent, and the decision whether to opt-out such “classic” EP patent from UPC competence (see above) will need to be taken at a later date, you may want to agree with your co-applicants already at an early stage on how (by whom) these decision will be made.
For EP applications where we are your representatives of record before the European Patent Office (EPO), we will seek your instructions whether to pursue unitary protection or “classic” validation, when reporting to you the Intention to Grant (Rule 71(3) EPC) communication received from the EPO. The period for responding will give you ample opportunity to consider and decide this. At the same time, we will inform you of the costs of UP vs. “classic” validation, to compare future renewal fee and validation costs for UP vs. renewals and validations in the individual states.
The decision to go for a Unitary Patent or a “classic” EP patent will depend not only on the related costs but also on whether you wish to end up before the Unified Patent Court (UPC) for the countries in question or not. You will find practical considerations concerning the pro’s and con’s of a Unitary Patent on our website in dedicated parts on UP&UPC.
If you have expressed interest in UP, but the deadline for replying to the Intention to Grant communication is so early that timely compliance with pre-grant formalities would lead to the patent being granted before UP goes live, we will propose that you use the above-mentioned procedural options to delay the grant until after April 1, 2023 in order to make the patent eligible for unitary protection.
If you are not interested in unitary protection and instead wish the patent to be classically validated in one or more of the UP-space and/or non-UP-space countries, we will seek your instructions on whether you also wish the patent to be opted-out from the competence of the Unified Patent Court. If yes, we can request the opt-out on your behalf before the application proceeds to grant.