Serious Steps towards the Unitary Patent – new options for Applicants

Quick Summary of the Unitary Patent System

Current system: presently, under the European Patent Convention (EPC), a granted European Patent has to be validated in individual member states. Practically speaking, this involves costs for every chosen jurisdiction, and these costs scale with the amount of member states that were selected. Because each resulting patent is a national patent, its fate is independent. This means that for each jurisdiction, the local patent can remain in force, or be invalidated.

Unitary Patent system: with a Unitary Patent, all participating states are covered by a single patent instead (and national validations can then still be used to separately cover any non-participating states, when desired). The centralized procedure can represent a cost saving when broad coverage is sought. Perhaps more importantly, this also means that the fate of the patent will now be the same in all participating states: it is in fact a single, unitary patent. As an advantage, an injunctions won at the UPC can be enforced across all participating states, obviating the need for seeking an injunction in every individual jurisdiction. This mirror has two sides, because a successful revocation action could similarly lead to a loss of patent protection in multiple countries.

What will happen next?

The Protocol on Provisional Application is now in force. The actual UPC Agreement itself will enter into force on the first day of the fourth month after Germany has deposited their instrument of ratification. Germany will likely strategically delay this deposit as follows: after the provisional application period has progress to such an extent that a proper functioning of the UPC can be concluded, they are expected to finalize their deposit. It is expected that the UPC will enter into force in the second half of 2022.

What new options are now available?

To support Applicants in the early uptake of the Unitary Patent, the EPO has implemented two new options for Patent Applications that are close to grant, that is: for which an ‘intention to grant’ (a communication under Rule 71(3) EPC) has been issued. These options will become available from the date Germany has deposited its instrument of ratification (so about four months before the UPC enters into force). The two transitional measures are as follows:

Early request for unitary effect: Applicants interested in a Unitary Patent can file an early request for unitary effect before the official start of the Unitary Patent system. When such a request is filed, the EPO will register the unitary effect immediately at the start of the system, assuming that all other requirements for grant are met. Once the UP system enters into full force, this option will no longer be available: regular requests will then become the norm.

• This new option appears to be designed for allowing a smoother achievement of unitary effect, because it enables pre-registration for Applications that could already have qualified. The implementation of this option mitigates the risk of a stampede of requests reaching EPO in the days after the official start of the UP system.

Request for a delay in issuing the grant decision: the second transitional measure provides the option to request a delay in the actual grant of your European Patent. Only patents granted after the UP system enters into full force can become Unitary Patents but once the Applicant has agreed to the proposed text, the moment of actual grant is out of their hands. The requested delay will thus ensure that such pending applications can still be eligible for Unitary Patent protection, where they might otherwise have been granted too soon.

• The second of the two new options is a welcome one indeed as it helps avoid uncertainty and possible unfairness for such Applications. NLO has been vocal in calling for such a moratorium over the last years and it is a relief to see it sensibly implemented. This promises to be a useful tool for those interested in benefiting from the UP system and should assist in avoiding the need for other delaying tactics.

Your choices

The decision on whether to participate in the new system and the extent to which you do so, depend on several considerations as described above. What is an efficient single patent to the one, may be an unwieldy single basket to the other. There is no straightforward “one size fits all” strategy: the best option will vary from case to case. Your advisors at NLO are closely monitoring the Unitary Patent developments. To get the best advice for your situation, we recommend you discuss your strategic options with your contact person at NLO.