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What are the options for applicants interested in Unitary Patent, whose European patent applications have reached the final phase of the grant procedure?

Currently Unitary patent protection system is not in force yet. The whole intellectual property world now waits for Germany to deposit its instrument of ratification of the Agreement on a Unified Patent Court (UPCA). The deposit of the instrument of ratification is a reference point, from which the two transitional measures are introduced. The precise date will be communicated on the website of the European Patent Office (EPO). The UPCA along with the Unitary patent protection system will enter into force on the first day of the fourth month after this deposit. It is expected to happen in late 2022 or early 2023.

What options are there for applicants that have already received a communication under Rule 71(3) EPC and are interested in Unitary Patent? We suggest to wait until the end of the time limit for the reply, thereby gaining at least 4 months and 10 days. If the instrument of ratification will be deponed in this period, the applicant can decide either to file an early request for unitary effect, or file a request for a delay in issuing the decision to grant a European patent. By choosing the latter option additional time for deciding on whether to obtain a Unitary Patent can be acquired.

The advantages of the Unitary Patent include:

  • simpler, centralised procedure,
  • significantly more cost-effective route,
  • litigation in only one jurisdiction (United Patent Court),
  • registration of transfers, licences and other rights will be managed by EPO.

However, before deciding in favour of the Unitary Patent it has to be considered that the UPC’s rulings have effect in the territories of all the contracting Member States that have ratified the UPCA. If the patent will be revoked, the owner will lose rights in all the participating Member States. In addition, the patent may only be limited, transferred or lapsed, with respect of all the participating Member States as well. Moreover, the European patent will have to still be validated in those EPC contracting states whose territories are not covered by the Unitary Patent scheme.

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