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 transitional measures for the introduction of Unitary patents will begin on January 1, 2023. From this date onwards, applicants for European patents who have received a Rule 71 (3) EPC communication from the European Office (EPO) will have the option to file an early request for unitary effect or request a delay in the decision to grant a European patent. Additionally, from March 1, 2023, applicants for European patents will have the right to opt-out from the UPC.
1. Early Request for Unitary Effect
Under the transitional measures, applicants for European patents can file an early request for unitary effect. This will allow the EPO to register unitary effect immediately after the UPC system begins on June 1, 2023. The request must be submitted using either EPO form 7000 (request for unitary effect) or EPO Online Filing 2.0.
If the proceedings of the European patent application were conducted in German or French, an English translation of the full specification (description, claims, and figures) must be included with the request. If the proceedings were conducted in English, a translation of the full specification into either German or French must be provided.
Once a valid request for unitary effect is filed, the EPO will automatically register unitary effect upon the start of the UPC and communicate the date of registration of the Unitary Patent.
2. Request for Delay in Issuing the Decision to Grant
Separate from the early request for unitary effect, the transitional measures also allow applicants for European patents to request a delay in issuing the decision to grant. This request must be made using EPO form 2025 (request for a delay) and will be made available on the EPO website in due course. The request must be filed before the approval of the text intended for grant, although a request filed on the same day as the approval will likely be considered valid.
If a request is made to postpone the publication of the notice of grant, the publication will be delayed until the date of entry into force of the Convention or immediately after. Following the publication, there will be a one-month period in which the request for unitary effect can be filed if a unitary patent is desired.
This request ensures that a European patent remains eligible for the UPC system and prevents applicants from missing opportunities to obtain a Unitary patent during the transitional phase.
3. Request for Opt-Out from the UPC
Starting from March 1, 2023, applicants for European patents can also file a declaration of an opt-out from the UPC. This opt-out request removes European patents from the jurisdiction of the UPC, allowing applicants to receive national parts of the patent instead of a Unitary patent for participating countries. The UPC’s jurisdiction currently includes Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
It’s important to note that the Unitary patent will only have an effect in EU member states that have ratified the Unified Patent Court Agreement (UPCA) and are participating in the United Patent Regulation at the time of registration. Currently, the following EU states are not eligible for a Unitary patent: Spain, Poland, Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia
Additionally, the Unitary patent does not apply to EPC member states that are not eligible to be signatories of the UPCA, including Iceland, Norway, Turkey, Switzerland, Serbia, Albania, Macedonia, and the United Kingdom (UK).
In summary, after January 1, 2023, applicants for European patents will have the following transitional measures available:
- A) early request for unitary effect of a European patent
- B) request for a delay in issuing the decision to grant
- C) declaration for opt-out from the UPC (after March 1, 2023)
Update (March 8, 2023):
The EPO has now made available the official form 2025 for applicants to request a delay in issuing the decision to grant. This form can be used to submit the request and ensure that the decision to grant the European patent is postponed.