As we wait to see if the previously indicated start date for the sunrise period of the opening of the #UnifiedPatentCourt is the actual start date, the EPO has confirmed it will be introducing two transitional measures for users with European patent applications that have reached the final stage of the prosecution procedure, and where a text has been proposed for grant.
These two transitional measures will be available from 1 January 2023.
Delaying grant until the entry into force of the Unitary Patent system.
One transitional measure is that an applicant will be able to request to delay grant of a European patent when approving the text proposed for grant on or after 1 January 2023, so that the mention of grant falls on or after the date the Unitary Patent system enters into force.
If a R71(3) EPC Communication has been issued with a deadline for response of after 1 January 2023, and an approval response has not yet been filed, it will be possible to respond to the R71(3) approving the text for grant after 1 January 2023 and request delayed grant.
If a R71(3) EPC Communication has been issued with an outstanding deadline for response of before 1 January 2023, but an approval response has not yet been filed, then there are mechanisms to delay beyond this date that are available.
Of note – the request to delay must be filed on the same day as the approval of the text for grant and must be filed using a dedicated EPO form. A delay request that is filed and does not meet these requirements will be deemed not to have been filed.
Ask your usual contact at Boult if you want to take advantage of this transitional measure and need more information.
Filing an early request for unitary effect (i.e. a Unitary Patent)
The second transitional measure is that an applicant will be able to file an early request for a Unitary Patent from 1 January 2023 where a communication under R71(3) EPC (with the proposed text for grant) has been issued.
Once all the requirements for the registration of unitary effect are met the EPO will then register the patent with unitary effect as soon as possible after the Unitary Patent system enters into force.
Of note – the requirements for registration include that a European patent has been granted so, although the EPO notes don't specifically mention this, a response to the R71(3) EPC Communication approving the text for grant will also need to be filed during the sunrise period to get a Unitary Patent at the earliest possible date. BUT, remember, grant must take place AFTER the date the Unitary Patent system enters into force. So a request to delay grant (as per the other transitional measure) may also need to be filed.
Another requirement for registration is the filing of a full translation of the specification (into English if the language of proceedings before the EPO was French or German, or into another other official language of an EU member state if the language of the proceedings was English)
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.