Preparing for the Unitary Patent
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Preparing for the Unitary Patent

Sponsored by

inspicos-400px.png
christian-lue-8yw6tsb8tnc-unsplash.jpg

Jakob Pade Frederiksen of Inspicos P/S discusses the Unitary Patent and Unified Patent Court regime expected to enter into force by early 2023

The Unitary Patent (UP) and Unified Patent Court (UPC) regime is expected to enter into force in late 2022 or early 2023. Under the future system, patentees may request unitary effect for their patents in the 17 EU States currently participating to the system. Patents with unitary effect will not have to undergo country-by-country validation. 

The exact date of entry into force of the new system will be triggered by Germany’s depositing of its instrument of ratification of the Unified Patent Court Agreement. 

In preparation for the coming into existence of the new system, the EPO has implemented transitional measures applicable to European patent applications having reached the final stage of the grant proceedings. 

The measures will be available for European patent applications, in respect of which the EPO has issued its communication under Rule 71(3) EPC informing the applicant of the intention to grant a patent. 

The first transitional measure provides the possibility for applicants to file a request for unitary effect before the entry into force of the new system. Once the UP system has started, the EPO will register unitary effect. Requests for unitary effect cannot, however, be validly filed before Germany deposits its instrument of ratification, or before the communication under Rule 71(3) EPC has been issued.

The second transitional measure enables applicants to request a delay in the EPO’s issuing of the decision to grant a European patent until immediately after the entry into force of the  UP system. Patentees may thus benefit from unitary protection and hence avoid country-by-country validation in the 17 participating countries. However, only requests filed after the date of Germany’s depositing of its instrument of ratification will be allowed. 

In respect of cases, where time limits for replying to ‘office actions’, i.e., communications under Article 94(3) EPC, or time limits under Rule 71(3) EPC, are already running, applicants who wish to benefit from unitary protection may consider not lodging early replies with the EPO. Rather, applicants may wish to benefit from the full reply periods available in order to increase their chances of being able to benefit from the transitional measures.

 

 

Jakob Pade Frederiksen

Partner, Inspicos P/S

E: jpf@inspicos.com

 

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article