The President of the Court of Appeal of the Unified Patent Court (UPC) and the Chairman of the Administrative Committee of the UPC recently announced that the transitional measures for the introduction of the Unitary patents will start on January 1, 2023. As of this date, all applicants for European patents having received a Rule 71 (3) EPC communication from the European Office (EPO) may file an early request for unitary effect or a request for a delay in issuing the decision to grant a European patent. Moreover, from March 1, 2023 on applicants for European patents will have the right to opt-out from the UPC.
1. Early request for unitary effect
The transitional measures enable applicants for European patents to file an early request for unitary effect, which will allow the EPO to register unitary effect immediately after the start of the UPC system (intended starting date: June 1, 2023). The request has to be filed using the EPO form 7000 (request for unitary effect) or via EPO Online Filing 2.0.
If the language of the proceedings of the European patent application was German or French, an English translation of the full specification (description, claims and figures) must be submitted together with the request. If the language of the proceedings was English, a translation of the full specification into either German or French language must be submitted together with the request.
If a request for unitary effect is validly filed, the EPO will automatically register unitary effect once the UPC has started and will communicate the date of the registration of the Unitary Patent.
2. Request for a delay in issuing the decision to grant a European patent
Procedurally independent from the early request for unitary effect, the transitional measures also enable applicants for European patents to file a request for a delay in issuing the decision to grant a European patent. The request has to be filed using the EPO form 2025 (request for a delay) and will be available on the EPO website in due course. The request has to be filed prior to the approval of the text intended for grant. However, a request filed on the same day as the approval of the text intended for grant will most likely be considered to have been validly filed.
In the event of a request to postpone the publication of the notice of grant, the publication will be postponed and will be made on or immediately after the date of entry into force of the Convention. After the publication, the period of one month starts, within which the request for unitary effect can be filed, if a unitary patent is desired.
The request will make a European patent eligible for the UPC system that would otherwise have been granted before the start of the new system and will avoid that applicants miss opportunities to obtain a Unitary patent in the transitional phase.
3. Request for Opt-out from the UPC
In addition to the two requests under the transitional measures, applicants for European patents may file – from March 1, 2023 – a declaration of an opt-out (start of the sunrise period) from the UPC.
An opt-out request is used to remove European patents that are valid and in force within the jurisdiction of the UPC from the jurisdiction of the UPC. In this case, the applicants for European patents will receive a bundle of national parts of a European patent instead of a Unitary patent for those countries that are participating in the UPC system. The UPC’s area of responsibility currently affects the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
The Unitary patent will only ever have an effect in the EU member states that have both ratified the Unified Patent Court Agreement (UPCA) and are taking part in the United Patent Regulation at the time that the particular United patent is registered. Currently, the following EU states cannot be covered with a Unitary patent: Spain, Poland, Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
Moreover, the Unitary patent will also not apply in all EPC member states which are not eligible to be signatories of the UPCA: Iceland, Norway, Turkey, Switzerland, Serbia, Albania, Macedonia and the United Kingdom (UK).
In summary, the applicants for European patents will have the following transitional measures after January 1, 2023:
- A) early request for unitary effect of a European patent
- B) request for a delay in issuing the decision to grant
- C) declaration of an opt-out (after March 1, 2023)
Update (March 8, 2023):
The request for a delay in issuing the decision to grant can be filed with the EPO form 2025, which has now been provided by the EPO.