The Unitary Patent (UP) system, together with the Unified Patent Court (UPC), is soon to come into effect, but what will you need to do to secure unitary patent protection across 25 participating EU Member States, and how can you prepare for the new system?
The application process
The examination and grant of UPs will be administered by the European Patent Office (EPO) under the European Patent Convention (EPC). The examination procedure for all European patents will involve the same application and examination procedures as are currently in place. Therefore, the application for and examination of both European patents and UPs will follow the same examination procedures as normal, including the direct European application route and International (PCT) applications entering the European regional phase.
Once a European patent has been granted, the proprietor can validate the European patent in individual EPC Contracting States and obtain a bundle of national patents in each of those states, as is the current procedure to bring a European patent into force. After the start of the UP system, once the European patent has been granted, the proprietor can alternatively file a request for unitary effect at the EPO to obtain a UP and have uniform patent protection across 25 participating EU Member States.
UP requirements
To be eligible for registration as a UP, the European patent must have been granted with the same set of claims in respect of all the 25 participating EU Member States - it is therefore important not to withdraw the designation of any of the 25 participating Member States during examination.
There will be no official fee for the filing or examination of the request for unitary effect, but the request for unitary effect must be filed within 1 month of the grant of the European patent.
During a 6-year extendable transitional period, the request for unitary effect of an English language European patent must also contain a translation of the specification into any other official language of the EU, which should not be carried out by automated means.
Applicants should therefore consider whether a UP is of interest at the intention to grant (pre-grant) stage of the examination procedure to allow time for translation and a request to be completed in due time.
It will also be possible to voluntarily designate "a place of business on the date of filing" for applicants that did not have a residence or principal place of business in one of the participating Member States e.g. applicants from the USA or the UK. If such an applicant does not have and does not designate a place of business in one of the participating Member States, German law will apply to the treatment of the UP as an object of property.
Early request for a UP
It will be possible to file requests for unitary effect before the start of the UP system - from 01 January 2023 up to the start of the UP system - for European applications for which a Notice of Intention to Grant (under R.71(3) EPC) has been issued, in which case, unitary effect will be registered once the UP system starts and the requirements for registration of unitary effect have been met.
If an applicant is certain that a UP is of interest, from 01 January 2023, an early request for unitary effect can be filed at the time of (or soon after) responding to the Notice of Intention to Grant, so long as the request is filed before the start of the UP system.
Delayed grant of a European patent
It will also be possible to request a delay in the grant of a European patent - from 01 January 2023 up to the start of the UP system - for European applications for which a Notice of Intention to Grant (under R.71(3) EPC) has been issued and up to the day of approval of the text intended for grant. This will make a European patent eligible for unitary effect by delaying the grant of the European patent until after the start of the UP system.
If an applicant receives a Notice of Intention to Grant with a response deadline on or after 01 January 2023 and a UP is of interest, a request to delay the grant of the European patent can be filed from 01 January 2023 (and before) responding to the Notice of Intention to Grant, so long as the request is filed before the start of the UP system. A request for delay can be withdrawn at any time.
If an applicant has a Notice of Intention to Grant with a response deadline before 01 January 2023 and a UP is of interest, the approval of the text intended for grant can be extended by not responding to the Notice of Intention to Grant, allowing the application to be deemed withdrawn, and reinstating the application with no loss of rights by responding to the Notice of Intention to Grant and paying an official further processing penalty fee (of EUR275) within 2-months of the deemed withdrawal. Disapproval of the text intended for grant can result in a further Notice of Intention to Grant being issued (hopefully) after 01 January 2023. However, disapproval must include reasoned amendments/corrections to the text intended for grant and admission is at the discretion of the examining division.
What you need to know...
For all applicants, the European patent grant procedure will remain unchanged. For proprietors choosing to validate the European patent, the national validation process remains unchanged.
For proprietors wanting a UP, a request must be made within 1 month of the grant of the European patent and will require a translation of the specification into an official language of the EU.
Applicants receiving a Notice of Intention to Grant (under R.71(3) EPC) should consider whether a UP is of interest and, if yes, can consider extending the approval of the text intended for grant until after 01 January 2023. After that date, applicants can either delay grant and/or request a UP early.
This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:
2. What is the Unified Patent Court?
3. How to Apply for a Unitary Patent
5. Register for Unitary Patent Protection
7. What Rights Are Afforded by a Unitary Patent?
8. UPC Opt-Out
9. Opposition, Appeals and Validity of Unitary Patents
10. Will the Unified Patent Court Affect SPCs?
13. Ireland and the Unified Patent Court
14. No More Fooling Around: April 1st is UPC Launch Date
15. Unified Patent Court Costs
16. Validity Actions at the UPC
17. Assignments and Licenses Under the Unitary Patent System
18. The UK and the Unified Patent Court
19. Delay to Start of UPC Sunrise Period
