European Union: Delaying European Patent Grant To Enable Applicants To Obtain A Unitary Patent

Last Updated: 7 April 2017
Article by Karen Fraser

When will unitary patents become available?

Following the UK Government's announcement that it will ratify the Unified Patent Court Agreement, the Unitary Patent and Unified Patent Court (UPC) are expected to go live in December 2017, subject also to ratification of the UPC Agreement by Germany. Applicants will then have a choice between obtaining the "traditional" bundle of national patents that has always been available under the European Patent Convention (EPC), and a unitary patent on the basis of European patent applications granted by the European Patent Office. This applies to all newly filed European patent applications and to currently pending European patent applications, as long as they are granted after unitary patents become available and as long as they currently designate all participating states.

It is important to note that a unitary patent is not available if a European patent is granted before the Unitary Patent and UPC systems come into effect.

Which European patents can form the basis of UPs?

For a unitary patent to be available it needs to be granted with the same set of claims in respect of all member states participating in the Unitary Patent. In practice this means that unitary patents will not be available for:

  • European patent applications filed before 1 March 2007 (this being in view of Malta, a participating member state, becoming a member of the EPC only from this date so that European patent applications filed before 1 March 2007 could not have designed Malta),
  • any European patent applications that were filed before 1 April 2009, which do not designate all EPC member states, ie if the designation fees were paid for less than seven states (with the payment of seven designation fees being sufficient for designating all EPC member states), and
  • a European patent granted with different sets of claims for different participating states, irrespective of the designated states.

Why delay grant of currently accepted European patent applications?

Unitary patents will only be available to those European patents granted on or after the date of implementation of the Unitary Patent and UPC systems, currently projected to be December 2017. Therefore, for applicants desiring a unitary patent, it is important to take measures now to ensure that the patent is granted after this date.

Is there an official means for delaying grant?

There are no official means in place to delay the grant of a European patent as such. We have spoken with the EPO's Legal Division to try to establish if it is the EPO's intention to provide applicants with such a mechanism. Although no provision has been made so far, we have been advised that there are discussions taking place concerning this. However, we have also been informed that no such measures will be implemented before both the UK and Germany have ratified the UPC Agreement.

How can grant be delayed?

Given the sometimes slow speed of examination at the EPO, it is unlikely that delaying the prosecution of those applications that have not already been accepted will be necessary.

Delaying grant for those applications for which the EPO has already issued a communication pursuant to Rule 71(3) may, however, make sense. The time period set for responding to a communication under Rule 71(3) EPC is four months. Further processing can be used to extend this period by two to three months. Cumulatively this is, however, not enough to delay grant until December 2017.

If amendments to the text proposed for grant are requested, then a replacement communication under Rule 71(3) EPC can be issued by the EPO. This will set a new four month period for response, to which further processing can again be applied. This should be sufficient to delay grant of the application until December 2017.

Requested amendments may simply be accepted by the examiner and a replacement communication under Rule 71(3) EPC may be issued. However, should the examiner disagree with the requested amendments then examination will be re-opened. As such it is recommended that requested amendments are very minor in nature, preferably not relating to the substance of the application but rather to minor aspects of the form in which the application is presented. Correction of simple grammar seems preferable.

Should the date by which unitary patents become available slip, then amendments can be requested a number of times. Caution must, however, be exercised when doing so, especially if multiple requests are made in quick succession, as the EPO may view may such attempts as an abuse of procedure. Therefore, receipt of a communication under Rule 71(3) would signify the right time to assess if a unitary patent is desired, and if so to take steps to try to ensure that grant is delayed until after the expected go-live date in December 2017.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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