UPC Transitional Measures
09 December 2022
The Unified Patent Court Agreement (UPCA) is currently set to come into force on 1 June 2023. In preparation, the EPO’s transitional measures for supporting early uptake of the Unitary Patent will start on 1 January 2023.
These transitional measures are available for European patent applications for which a communication under Rule 71(3) EPC (Notification of Intention to Grant) has been issued.
The transitional measures allow applicants to:
• file an early request for unitary effect; and
• request a delay in issuing a decision to grant a European patent.
Early request for unitary effect
Filing an early request for unitary effect means that the EPO will register unitary effect of the patent as soon as possible after the Unitary Patent system enters into force, providing that the formal requirements for the registration of unitary effect have been met by this time.
An early request for unitary effect can be filed from 1 January 2023, or from the date on which a communication under Rule 71(3) EPC is received, if that is later. A request for unitary effect may be made up to one month after publication of the mention of grant of the European patent in the European Patent Bulletin.
Note that an early request for unitary effect will not delay the grant of the European patent: this must be requested separately if publication of the mention of grant might otherwise occur before the Unitary Patent system comes into effect.
Request for a delay in issuing the decision to grant
A request for a delay in issuing the decision to grant a European patent will delay the grant of a European patent until after the start of the Unitary Patent system. Unitary Patent protection will only be available for European patents that are granted after the Unitary Patent system has come into effect, so it is important to request this delay if a Unitary Patent is desired.
A request for a delay in issuing the decision to grant can be filed from 1 January 2023, as long as the text intended for grant has not been approved before the date on which the request is made. The request for delay must be filed by the end of the period for responding to the communication under Rule 71(3) EPC. A response to the communication under Rule 71(3) EPC must also be filed by the end of this period, in addition to the request for delay.
Requesting a delay in the issuance of the decision to grant will not, by itself, result in a Unitary Patent. A request for unitary effect must be made separately, either as an early request before the start of the Unitary Patent system, or within one month of publication of the mention of grant of the European patent in the European Patent Bulletin.
What actions should you take if you have received a communication under Rule 71(3) EPC?
If the deadline for responding to the communication is before 1 January 2023:
A request for a delay in issuing the decision to grant cannot be made before the 1 January 2023. If you are interested in obtaining a Unitary Patent, you will need to delay grant of your European patent in another way, for example, by requesting amendments in response to the communication under Rule 71(3) EPC instead of approving the text intended for grant.
If the deadline for responding to the communication is after 1 January 2023 but before 1 June 2023:
A Unitary Patent may be obtained by requesting a delay in issuing the decision to grant before approving the text intended for grant and requesting unitary effect.
If you are unsure whether you want a Unitary Patent, we would recommend that you request a delay in issuing the decision to grant, but delay the filing of a request for unitary effect until you have decided whether a Unitary Patent suits your requirements.
Grant cannot be delayed once the text intended for grant has been approved, so if you approve the text intended for grant without requesting delay, it may then be too late to change your mind and request unitary effect.
