A Unitary Patent (UP) will be available only for European patents and patent applications with a date of grant falling on or after the date on which the Unitary Patent Court (UPC) fully enters into force. This is currently expected to be 1 April 2023 but could be delayed.

The UPC has a Sunrise Period before the full entry into force. This allows rights owners to have some interaction with the UPC, primarily to opt out their rights ahead of when litigation proceedings can be filed with the UPC. To mirror this Sunrise Period, during the same period, the European Patent Office (EPO) is providing a three-month window during which two transitional measures are available. These allow rights owners to obtain a UP for European patents and patent applications that are grant ed before or shortly after the full entry into force of the UPC and UP systems.

The two transitional provisions allow an early UP request (formally “an early request for unitary effect”) and a delayed grant (formally a “request for a delay in issuing the decision to grant a European patent”). These transitional provisions are set to be available from 1 January 2023 until the full entry into force of the UPC and UP systems. Should there be a delay in the full entry into force of the UPC and UP systems, the date from which the transitional provisions take effect is also likely to be postponed.

Early request for unitary effect

This will be available on all European patent applications on which a notice of allowance (referred to as a “communication under Rule 71(3) EPC”) has been issued. This availability will be limited to those European patent applications with a date of grant that falls on or after the full entry into force of the UPC and UP systems only. This means that this transitional provision will be available only for European patent applications on which the date of mention of grant is published in the European patent bulletin on or after the full entry into force of the UPC and UP systems.

To make use of this transitional provision a request for unitary effect that fulfils all the formal requirements will need to be filed during the Sunrise period. This means:

• The European patent must still have all UPC-ratified countries designated.
• The European patent must have the same claims in all UPC-ratified countries.
• A complete request for unitary effect is provided.
• A full translation of the specification into one official language of an EU country (when the specification is in English) or into English (when the specification is in French or German) is filed with the request for unitary effect.
• An authorisation of the representative filing the request for unitary effect is also filed.

The EPO are committing to reviewing the formal details of all requests for unitary effect before the end of the Sunrise Period to allow corrections to be made should any be needed. Assuming that there are no corrections to make or that all corrections are addressed satisfactorily, the EPO will register the unitary effect, creating a UP, once the UPC and UP systems fully enter into force and the mention of grant of the patent has been published.

This transition provision commits a right owner to proceeding with a UP, which may be difficult to reverse. As such, the transition provision should be used only when there is a high level of certainty that a UP is the right strategy to pursue. Proceeding with an early request for unitary effect does mean that the resulting UP will be among the first to be issued, allowing it to be enforced early and for litigation to move ahead quickly.

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

When there is less certainty about whether a UP is wanted, the second transitional measure may be of use. This is because it causes the grant of a European patent to be delayed until the UPC and UP systems fully enter into force, without committing the rights owner to then proceed with a UP.

This transitional provision will be available for any European patent application for which a response to the notice of allowance is still to be filed once the Sunrise Period starts. For this transitional provision to be of value, it is also assumed that a notice of allowance has been issued on the European patent application within about four months of the start of the Sunrise Period due to when responses to this communication are required.

To make use of this transitional provision a request to delay the grant must be filed at any time up to and including the time at which the notice of allowance is responded to. This is typically when it is confirmed that the intended text for grant is acceptable and the translations of the claims required at this stage of prosecution are filed.

As mentioned above, the advantage of this transitional provision is that it provides the option of pursuing a UP without committing the rights owner to proceeding with a UP if this is ultimately not wanted. On the other hand, this will delay the granting of the European patent, potentially causing further renewal fees to be payable to the EPO and delaying the process of validating the European patent in the countries of interest as well as delaying the ability to enforce the patent.

There is no “one size fits all” approach when it comes to whether to pursue a UP. We recommend you discuss available options and points that may affect the decision-making with your usual attorney at Gill Jennings & Every. Alternatively, you can contact us via gje@gje.com.