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Easing into the Unitary Patent – EPO Practice Points

Once Germany ratifies the Agreement on a Unified Patent Court (UPCA), there will be a 3-to-4-month period until the UPCA comes into force and the Unitary Patent system starts. During this period, the EPO will make available to recipients of Intentions to Grant two optional transitional measures:

  • you may submit an early request for unitary effect, or
  • you may request a delay in issuing the decision to grant.

Assuming that you want your application to become a European Patent, which of these two options you choose depends on when your deadline is for responding to the Intention to Grant.

“The deadline is after the date of entry into force of the UPCA.”

Consider submitting an early request for unitary effect. Then, once the UPCA comes into force, the granted patent application will become a Unitary Patent as if you’d opted-in normally.

This early request must include a translation of the whole patent application into one of the official languages of the EPO. If the application is in English, the translation must be French or German; if the application is in French or German, the translation must be English. There is no official fee for submitting a request.

“The deadline is before the date of entry into force of the UPCA.”

Consider requesting a delay in issuing the decision to grant. This will prevent the patent application from being granted before UPCA comes into force.

Specifically, this request will have the EPO issue the Decision to Grant later than they would have such that the date on which the mention of grant is published (i.e., the date on which the application is officially “granted”) is after the UPCA enters into force. This way, the application will not miss out on unitary effect.

For further information, take a look at our previous blog posts (here, here, and here), and feel free to get in touch with Paul Dakers at paul.dakers@tlip.co.uk or your usual TLIP attorney.