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.

Since favorable transitional measures – early request for unitary effect and postponement of the decision to issue – will be available as soon as Germany deposits its instrument of ratification of the UPCA, what strategy is best for patent applications currently in the final stage of prosecution?

Using available EPO procedure to prepare applications currently in the final stages of prosecution

These options, based on EPO procedure available during the grant formalities, allow you to delay your approval of the text and therefore publication of the mention of the grant. The hope is for a sufficient postponement to be able to benefit from the transitional measures.

• A first option would be to respond “late” to the notification under Rule 71(3) EPC, that is to say after the period of 4 months from notification, for example by paying fees but without agreeing to the text or filing the translations of the claims. A notification of loss of rights will be issued due non-observance of the deadline. A request for further processing within two months approving the text can then be filed.

Benefit: This option keeps the text of the request unchanged.

However, this requires the payment of a fee, with a time gain limited to just a little over two months. Is this sufficient for entry into force of the transitional measures?

• A second option, which at first glance seems more effective is, in response to the communication under Rule 71(3) EPC, to avail of the opportunity to correct the text proposed by the EPO for grant. This could be correction of some minor error (e.g. erroneous punctuation, spelling or grammatical error) or a deficiency in the text (e.g. summary of a prior art document cited during the proceedings). No official fee is incurred.

The EPO should then issue a new notification, starting a new period of 4 months.

While this option allows, without cost, a gain of 4 months, it nevertheless requires modifying the patent application and therefore presents a risk of reopening the examination procedure.

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In view of the undeniable advantages of the unitary patent, it may be important to postpone the grant of your patent applications currently in the final stages of the prosecution, to benefit from unitary effect. Existing EPO procedure but also transitional measures provided for this purpose are easily available strategic options. These can be combined.

There will then be time to decide whether or not the unitary effect and accompanying Unified Patent Court are of real benefit to your interests.

In the next issue: some provisions to assist you in the preparation of your EP patent applications for your EP patents to benefit, or not, from the unitary effect

By Fabien BAS, September 2022

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