December 9, 2022Client Alert

European Patent Office Transitional Measures Not Affected by Delay of Unified Patent Court

As previously reported, the Unified Patent Court (“UPC”) go-live date has been delayed two months and will now take full effect on June 1, 2023, with the Sunrise Period starting March 1, 2023. Despite this delay, the transitional measures put in place by the European Patent Office (“EPO”) will not be affected.  This means that i) early requests for a Unitary Patent for existing European patents and ii) requests for delay of grant of European patent applications will still be accepted starting on January 1, 2023.

The first transitional measure permits applicants to file requests for unitary effect before the start of the Unitary Patent system, which will allow the EPO to register unitary effect as soon as the UPC system begins operations (assuming the related requirements are met).

The second transitional measure enables applicants to request a delay in issuing the decision to grant a European patent after receiving the notice of acceptance from the EPO under Rule 71(3) EPC, and before approving the text intended for grant. If the request is approved, the grant of the European patent will occur “immediately after” the date that the Unitary Patent system takes effect, making a European patent eligible for Unitary Patent protection.

If the UPC is further delayed for some reason, there likely will be a significant backlog of accepted European patent applications with delayed grant dates. Provided below is an updated timeline. 

It is important to determine whether Unitary Patent effect is desired for your existing European patents and patent applications. The annuities associated with a Unitary Patent, compared to current country-by-country annuities, may make a Unitary Patent desirable depending on your company’s overall patent goals and strategies in Europe. We can assist you in making these decisions.

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