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

The deal could help Rouse gain a foothold in Australia and New Zealand for the first time
With a team of more than 80 patent lawyers and attorneys across 21 European offices, the firm is acting in some of the most high-profile UPC cases
Lippes Mathias has hired three partners and a counsel from Offit Kurman
External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Gift this article