Two transitional procedures have been put in place to support applicants:

1. request for a delay in issuing the decision to grant a European patent; and
2. early request for unitary effect.

These measures will be available from the date on which Germany deposits its instrument of ratification of the UPC Agreement (UPCA) until the date on which the UPCA comes into force. They will also require applicants to have received a communication under Rule 71(3) EPC (an allowance communication).

The EPO provides some helpful examples of how the new procedures will work including timelines on its website. More information is set out below.

Request for a delay in issuing the decision to grant a European patent

Unitary patent protection may only be requested for a European patent granted on or after the date on which the Unitary Patent Regulation (Regulation (EU) No 1257/2012) comes into force.

At an applicant's request, the EPO will delay issuing its decision to grant a European patent so that the mention of the grant is published in the European Patent Bulletin on or immediately after the start date of the unitary patent system. A valid request therefore makes a European patent eligible for unitary patent protection and means that applicants will not miss an opportunity to obtain a unitary patent.

In order to qualify for the delay and for the request to be valid, the application must have received a Rule 71(3) Communication (an allowance communication) but the text intended for grant must not have been approved. Requests filed at the same time as the approval of the text intended for grant or with amendments or corrections under Rule 71(6) EPC will be valid. In the case of a subsequent communication under Rule 71(3), a request validly filed in respect of an earlier communication under Rule 71(3) will remain effective.

The EPO will allow requests for a delay in issuing the grant from the date Germany deposits its instrument of ratification of the UPCA. This is dependent on the completion of various administrative tasks and is expected at the earliest to be mid-May 2022.

If a communication under Rule 71(3) has recently issued on a case with a response deadline in May 2022, applicants may wish to consider whether to delay the allowance procedure to enable them to make use of the UP.

In order to obtain a UP, a separate request for unitary effect must be filed with the EPO. Early requests are possible as set out below.

Early request for unitary effect

Once the unitary patent system comes into force, there will be a period of one month from grant (publication of the mention of the grant of the relevant European patent in the European Patent Bulletin) in which to file a request with the EPO that the patent has unitary effect (Rule 6, Rules relating to Unitary Patent Protection).

A new EPO procedure will allow applicants to file early requests for unitary effect from the date on which Germany deposits its instrument of ratification of the Agreement on a Unified Patent Court, until the UPC and UP actually come into force.

If the requirements for the registration of unitary effect are met with the early-filed request, the EPO will register the unitary effect once the system starts and communicate the date of this registration. Otherwise, it will invite the requester to correct the deficiencies if applicable or reject the request. The EPO will issue a communication concerning the result of the request for unitary effect at the earliest a few days after the publication of the mention of the grant of the relevant European patent in the European Patent Bulletin following the start of the unitary patent system. The EPO will inform applicants of any formal deficiencies in their requests already before the entry into force of the Rules relating to Unitary Patent Protection to allow any required corrections to be made.

An early request for unitary effect filed before Germany deposits its instrument of ratification will not be effective.

The filing of an early request for unitary effect does not imply that the EPO will delay issuing the decision to grant a European patent, which can only occur upon explicit request as set out above.

Effectively therefore, after the date of German ratification, applicants can respond to a communication under Rule 71(3) EPC by requesting a delay in issuing the decision to grant so that the Unitary Patent becomes available to them. Applicants can also submit an early request that the European patent be treated as having unitary effect during the period starting on the date of German ratification but before the UP actually comes into force.

We will continue to monitor the progress of the UP and the UPC and further updates will be provided on our website http://www.dyoung.com/upandupc. If you have any queries regarding the UP or UPC, please do contact your usual D Young & Co representative or email us at mail@dyoung.com.

Useful links

• Decision of the President of the EPO dated 22 December 2021 concerning the 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: http://dycip.com/epo-decision-22dec21-up
• EPO notice dated 22 December 2021 concerning the 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: http://dycip.com/epo-notice-22dec21-up
• EOI notice dated 22 Dec concerning the forthcoming introduction of the unitary patent and the possibility to file early requests for unitary effect: http://dycip.com/epo-notice-22dec21-up-early-requests
• EPO – supporting users in an early update of the unitary patent: http://dycip.com/epo-up-early-update-support