Postponement of unitary patent to June 1, 2023
Many applicants had hoped for the possibility to apply for unitary patents from spring 2023. Due to technical problems, this is now delayed until probably June 1, 2023, as the President of the Court of Appeal of the Unified Patent Court (UPC) and the Chairman of the Administrative Committee of the UPC recently announced. The technical issues lie in the fact that so far there are hardly any possibilities for users of the new system to gain access to the so-called electronic case management system (CMS) of the EPC. However, this access is a basis for taking actions against the EPG.
Opt-out requests for unitary patents
These actions include, in particular, the declaration of opt-out requests for unitary patents. Opt-out requests serve to withdraw European patents validated and in force within the jurisdiction of the EPC from the jurisdiction of the EPC. As a reminder, the EPC's jurisdiction currently covers the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. Later extension to up to 25 EU member states is possible.
To give patent owners sufficient time to declare an opt-out for their existing (old) patents, it is planned that corresponding applications can already be submitted via CMS during the sunrise period. The sunrise period refers to a three-month period before the entry into force of the Agreement on the Unified Patent Court, i.e., now a period starting on March 1, 2023.
How to obtain a unitary patent?
The way to obtain a unitary patent is to file a normal European patent application with the European Patent Office (EPO). This application is first examined by the EPO. If a unitary patent is desired, a "request for unitary effect" can be filed within one month after publication of the grant notice in the European Patent Bulletin (Article 97 EPC), starting June 1, 2023.
To give applicants, the freedom to keep the decision for unitary patents open before June 1, 2023, a transitional arrangement is provided. Originally, this was to take effect from the start of the sunrise period – according to the current reading, only from March 1, 2023.
Postponement of the notice of grant for unitary patents
In order not to disadvantage applicants for unitary patents, the European Patent Office has announced that, despite the delayed start of the sunrise period, the transitional regulation will enter into force as early as January 1, 2023. This specifically regulates the possibility to file an early request for unitary effect in response to a communication under Rule 71(3) EPC (intention to grant) or to request a postponement of the publication of the notice of grant. For the case of the early request for unitary effect, after the date of entry into force of the Agreement on the Unified Patent Court, i.e., only from June 1, 2023, the unitary effect will be automatically registered. For the case of the request for postponement of the publication of the notice of grant, the publication will be postponed and will take place on or immediately after the date of entry into force of the Agreement. Only then will the period of one month begin within which the application for unitary effect must be filed if a unitary patent is desired.
Thus, as early as January, applicants will have the opportunity to keep open the decision for or against a unitary patent beyond June 1, 2023.
In total, the following preparatory measures for the unitary patent will be available to patent applicants and patentees on the following dates:
- From January 1, 2023: early application for unitary effect.
- As of January 1, 2023: Request for postponement of publication of the notice of grant
- From March 1, 2023: Declaration of an opt-out (start of the sunrise period).
We are happy to assist you with questions regarding the unitary patent, requests for unitary effect, request for deferral of publication of the notice of grant or declaration of an opt-out.
Talk to us and contact us for further information at:
Phone: +49 (0)611 / 341568-0
Fax: +49 (0)611 / 341568-11
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Author: Dr. Michael Schmid