On 31 May 2024, Romania deposited its instrument of ratification of the Agreement on a Unified Patent Court (UPCA). As a result, Romania will formally accede to the UPC on 1 September 2024. European patents with unitary effect (“Unitary Patents”) will therefore extend to 18 EU member states from this date (rather than 17 states as at present in the so-called First-Generation Unitary Patents).
The full statement can be found here.
The European Patent Office has also announced provisions with immediate effect to allow for applicants for European patent applications to delay the registration of unitary effect in order to take advantage of Romania being available for inclusion later this year in Unitary Patents. The request for unitary effect must be filed within one month of the date of grant of the European patent. If an applicant wishes to delay the registration of unitary effect in order to include Romania then a simple statement to that effect can be included in the official EPO Form 7000, or under separate cover, where the request for delay is filed within the necessary one-month period for requesting unitary effect which is not affected.
https://www.epo.org/en/legal/official-journal/advance-notice-romania
This facility will only be available from now until the date on which Romanian ratification is effective, i.e., until 31 August 2024.
The territorial scope of existing Unitary Patents is not affected by this announcement. There will therefore be different generations of Unitary Patents in existence from now on. The first generation of Unitary Patents only include 17 states, but the second generation of Unitary Patents will include 18 states from 1 September 2024. Other EU member states not already part of the system may join in future.
Unless special considerations apply, applicants may therefore want to make use of the new provisions announced by the EPO to ensure that requests for unitary effect being filed now can take advantage of Romania’s accession.
If you have any questions, please contact your regular Kilburn & Strode advisor or Nick Bassil.