UPC: Is it finally here?

New temporary provisions at the European Patent Office relating to the Unitary Patent

The European Patent Office (EPO) issued 3 new notices on 19 January 2022 about the Unitary Patent.

They are:

1. 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) EPC
2. 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
3. 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 effect

In summary, there are 2 new temporary provisions. Neither is operational yet because the relevant period to which they apply has not started. The relevant period will begin on the date that Germany deposits its instrument of ratification of the Unified Patent Court (UPC) Agreement. This will happen when the member countries are confident the UPC will be functional upon entry into force (likely in the autumn of this year). The relevant period will end on the date that the UPC Agreement enters into force. The UPC Agreement will enter into force on the first day of the 4th month after the deposit of Germany’s instrument of ratification and so the relevant period for these temporary provisions will last between 3 and 4 months.

Delay in issuance

During the relevant period, it will be possible to request a delay in the issuance of the decision to grant in pending cases where (i) a communication under Rule 71(3) EPC has been issued by the EPO but (ii) the applicant has not yet approved the text proposed for grant. A request for delay filed on the same day as the approval of the text intended for grant will be considered to have been validly filed. A request may also be filed at the same time as requesting reasoned amendments or corrections in response to a communication under Rule 71(3) EPC. Filing a request to delay issuance of the decision to grant has no effect on the 4-month time limit for responding to the communication under Rule 71(3) EPC.

Early requests for unitary effect

During the relevant period, it will be possible to make an early request for a Unitary Patent on any application for which the EPO has issued a communication under Rule 71(3) EPC. The request will then take effect once the UPC Agreement is in force. In some cases, it may be necessary to also request a delay in issuance to ensure that the patent does not grant before the UPC Agreement enters into force.