Unified Patent Court (UPC) and Unified Patent system – updates on “Protocol on Provisional Application of the UPC Agreement”

Please note this article was updated on 28 January 2022.

The Preparatory Committee of the Unified Patent Court has announced the entry into force of the
Protocol on Provisional Application (PPA) of the UPC Agreement, following the recent ratification by Austria.

www.unified-patent-court.org/news/austria-closes-loop-protocol-provisional-application-upc-agreement-has-entered-force
 
The PPA does not specify when the system will start, but we are now in the Provisional Application Period (PAP) during which the EPO and the new UPC can create the structures and processes necessary for implementation. Once everything is ready, then the formal notice of ratification of the UPC Agreement by Germany will be announced, along with the start date. The notice from the UPC Preparatory Committee indicates that the set-up phase will last at least 8 months. It would seem, therefore, that a start date later in 2022 is still possible, as previously announced.

The EPO has also published details of the certain steps in its implementation of the Unitary Patent system (see Report (1) below). This includes announcement of the introduction of a new mechanism to delay the issue of the decision to grant a European patent, so that the mention of grant can occur after the date of the entry into force of the UPC Agreement, and also a procedure for filing an “early request” for unitary effect (see Notices (2) and (3) below). This “deferral” mechanism will commence three to four months before the overall system commences, just as soon as ratification of the UPC Agreement by Germany occurs. The delay mechanism will exist only up until the date of entry into force of the UPC Agreement. The procedure for applicants to file an “early request” for unitary effect allows such requests to be filed in the 3 month “sunrise” period before the entry into force of the UPCA (where a deferral request may also be necessary to keep the application pending so that grant occurs after the entry into force of the UPCA).

In other words, for applicants who strongly desire to obtain a European patent with unitary effect, the so-called “Unitary Patent”, it will be possible to delay grant of a pending European patent application in order to take advantage of the new system after it starts. The request for delay will need to be made using the specified official form EP 2025. The request will only be able to be made on applications for which an official communication under Rule 71(3) EPC (Notice of Intention to Grant) has issued, but no approval of the text proposed for grant has been filed. A response to the Rule 71(3) EPC communication will still need to be made within the normal time period for a reply (see the Notice (3) and the associated Decision (4) below). The “early request” for unitary effect is to be made on the official form UP 7000.

Now that implementation of the UPC Agreement seems closer, it seems possible that some applicants may wish to consider slowing down progress of their European patent applications in order to take advantage of having their patent grant under the new Unitary Patent system. However, this will need to be balanced against the general desire to secure early grant, and the slight continuing uncertainty about whether implementation of the new system will be achieved without any further delays, e.g. due to relocation of the London seat of the Central Division of the court.
 
See:

1. 24th and 25th meetings of the Select Committee of EU Member States participating in the enhanced cooperation on Unitary Patent Protection (Munich, 14th October 2021 and 16 December 2021) www.epo.org/about-us/governance/communiques.html

2. Notice from the European Patent Office dated 22 December 2021 concerning the forthcoming introduction of the Unitary Patent and the possibility to file early requests for unitary effectwww.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20220119a.html

3. Notice from the European Patent Office dated 22 December 2021 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20220119.html

4. Decision of the President of the European Patent Office dated 22 December 2021 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPCwww.epo.org/law-practice/legal-texts/official-journal/president-notices/archive/20220119.html 

If you have questions about this update, feel free to contact Nick or Peter directly.