The unitary patent indisputably has its advantages. There is a clear strategic interest in keeping open the option of unitary effect for your European patents for as long as possible.
To assist you in taking advantage of the unitary patent early on, the European Patent Office has set up transitional measures, which will be available once Germany has deposited its instrument ratifying the UPC Agreement.
TWO TRANSITIONAL MEASURES FOR PREPARING YOUR UNITARY PATENT APPLICATIONS
1 – Option of an early request for unitary effect
Through this measure, the EPO has decided to allow requests for unitary effect to be filed before entry into force of the Regulations on unitary effect for the European patent, in order for the unitary effect to be on register as soon as the new system is operational.
It will thus be possible for you to apply in advance for the unitary effect for your patent applications that have reached the final stage of grant – that is to say those for which the communication has been issued under Rule 71(3) EPC of the text which the EPO intends to use for grant the European patent – provided the term of one month after publication of the mention of the grant of the patent has not expired on the day of entry into force of the Regulations.
The theoretical example given below (source: EPO – modified assuming entry into force of the UPC Agreement in January 2023) illustrates the dual advantage of this measure:
- avoid missing out for your patents for which publication of the mention of grant is close to the date of entry into force of the unitary patent Regulations, and
- enable you to simultaneously handle several patents for which you require unitary effect.
Nevertheless, as the EPO has sole control of the publication of the mention for grant once the grant formalities have been carried out, it is uncertain for some patents whether the term of one month mentioned above will expire before or after the entry into force of the Regulations.
2 – Option of postponing the decision to grant a European patent
This is why the second measure has been provided, which enables you to request postponement of publication of the mention of grant until the day of entry into force of the UPC Agreement, giving you at least one month to apply for unitary effect, if you require it.
The postponement request must nevertheless be made before (or on the day) you file a favorable reply to the communication under Rule 71(3) EPC mentioned above, that is to say prior to your agreement on the text for finalizing grant.
The theoretical example below (source: EPO) shows the main advantage of this measure: to obtain unitary effect for your patent, even though it would be excluded in the normal way on account of being granted too soon.
Of course, these two measures may be combined to ensure unitary effect for your European patent subject to completing the grant formalities, which are still mandatory, prior to entry into force of the UPC Agreement.
In the following article: Prepare your EP patent applications while waiting for Germany to deposit its instrument ratifying the UPC agreement.
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