As you may already know, the Unified Patent Court (UPC) has announced on 5 December 2022, the postponement of the sunrise period to 1 March 2023 and the entry into force of the UPC to 1 June 2023. This means that the Unitary Patent (UP) system will become operational only on 1st June 2023.

However, the European Patent Office (EPO) has introduced two transitional measures applicable to European patent applications having reached the final phase of the grant procedure so that such applications can benefit the advantages of the UP system as soon as it comes into force.

Maybe you missed this one, but when you were counting down on New Years’ Eve, you were about to enter the UP era! Indeed, the starting date of EPO transitional measures was set to 1st January 2023.

This article aims at briefly explaining such transitional measures and their interests for the applicants.

FIRST MEASURE: EARLY REQUEST FOR UNITARY EFFECT

The first transitional measure allows an applicant to file a request for unitary effect before the start date of the UP system, so that a European patent will have a unitary effect as soon as the UP system comes into effect (1st June 2023 as mentioned previously).

It is now possible to request unitary effect early for any pending European patent application for which a communication under Rule 71(3) EPC has been issued.

Therefore, should you receive a Rule 71(3) notification in the upcoming days/weeks, you can early request the unitary effect of your European patent.

Provided that the request fulfils the EPO’s requirements, the EPO will register the European patent as a Unitary Patent once the UP system has come into effect, and will notify the applicant of the date of this registration.

The possibility to file early requests will only be available until the start date of the Unitary Patent system. After 1st June 2023, such early request will not be available anymore.

Please also note that this early request has no impact on the date of grant. Since a patent granted before 1st June 2023 cannot benefit from the Unitary effect, a request for postponement (measure 2 discussed here below) should be considered for European patent applications for which the publication of the mention of the grant of the European patent could take place before 1st June 2023.

SECONDE MEASURE : DELAYING THE GRANT

The second transitional measures allows an applicant to request for a delay in issuing the decision to grant a European patent.

This will make a European patent eligible for Unitary Patent protection that would otherwise have been granted before the start of the new system.

In other words, it is now possible to request for a delay in issuing the grant decision so that the grant will become effective only after the UP System comes into force.

Therefore, should you receive a Rule 71(3) notification in the upcoming days/weeks, you can request this delay of grant.

Request for a delay in issuing the decision can only be filed until the start date of the Unitary Patent system.

WHICH MEASURE IS THE BEST OPTION FOR MY EUROPEAN PATENT APPLICATION?

The advantage of this second measure compared to the first measure is that you do not have to worry about the real date of grant as it is delayed after the UP system will come into effect.

Another advantage of this measure is that it gives you more time to think about it, as there is no obligation to request unitary effect once your European patent has been granted.

The drawback is that you have to later request the unitary effect when the patent is granted. In other words, it is another deadline to monitor.

In addition, the grant postponement may raise issues regarding your global IP strategy (enforcement, opposition period, licensing deals, etc.).

Depending on your strategic goals, the best option may be measure 1 or measure 2, and such decision may not be the same for all your European patents.

Should you have any doubt on the best option for your own European patents, do not hesitate to contact our IP Experts.

Find all our articles on intellectual property on our blog #IPBoardingPass.

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