Delaying grant of a European Patent to obtain a Unitary Patent

About the author: 

Kate Hickinson is a partner and patent attorney in our Manchester office. Kate handles all types of chemical subject matter and has considerable experience and expertise in the pharmaceutical area having worked in-house at AstraZeneca for several years. Kate is experienced in working with clients to help them to identify the best ways to protect their inventions.

In the pharmaceutical area, Kate has experience filing and prosecuting patent applications directed to new chemical entities, chemical processes, formulations, solid forms and combination therapies, as well as experience of SPCs and data exclusivity.

With 1 October 2022 being the possible start date of the Unitary Patent system, applicants achieving allowance of their European patent applications in the coming months may wish to delay grant so as to obtain a Unitary Patent (UP).

Obtaining a UP from a European application

European applications will continue to be filed and prosecuted at the European Patent Office (EPO). Upon grant of the European application, a patentee wishing to obtain a Unitary Patent will request unitary effect so as to obtain a single Unitary Patent covering all participating member states. A request for a Unitary Patent can be filed provided that the patent is granted with the same set of claims in relation to all participating member states, and the request must be filed at the EPO within one month of the date of grant.

Therefore, if the Unitary Patent system does start on 1 October 2022, patents granted from 1 September 2022 could be converted into Unitary Patents.

The final stages of the grant process begin with a communication under Rule 71(3) EPC from the EPO indicating the text on which the patent is to be granted. The applicant has a four-month period to complete grant formalities, including approving the text and obtaining claims translations. Grant of a patent usually occurs about 5 to 6 weeks after approval of the text for grant by the applicant. Taking account of these timelines, patent applications for which a communication under Rule 71(3) EPC is issued in early April 2022 could grant on a date which allows them to be converted into a Unitary Patent, if the applicant makes use of the full periods of time for taking the relevant actions at the EPO.

Possible actions to take to delay grant now

It is not definite that the Unitary Patent system will start on 1 October 2022 and until we have certainty on the start date, applicants who want to obtain a Unitary Patent may wish to take further actions to delay grant in order to ensure that this option remains achievable.

  • A current option for delaying grant of a patent is to fail to respond to the communication under Rule 71(3) EPC. The application will be deemed withdrawn but further processing for the response can be used to reinstate the application. This option could delay grant by around 2 to 3 months if the whole further processing period is used.
  • Another option is to file amendments and disapprove the text for grant in response to the communication under Rule 71(3) EPC. If the amendments are accepted, another Rule 71(3) communication will be issued setting another 4 month period for response. There is a small risk with this approach that an Examiner could reopen examination, but such circumstances are rare and if only minor amendments are made then this should not present a problem. Consideration may also be taken of applications for which responses to official communications may be filed in the coming months. It may be desirable to file such responses at the end of the necessary period should the applicant expect the next communication to be a communication under Rule 71(3) EPC.
  • Divisional applications may also be used to ensure that an application is pending to enable a Unitary Patent to be pursued.

 

Transitional measures offered by the EPO

Delaying grant to obtain a Unitary Patent

In order to prevent the above actions being required, the President of the EPO has announced that it will, for a temporary period, be possible to formally request a delay to the grant of a European patent until the Unitary Patent system has begun. This temporary period will begin on the date that Germany deposits its instrument of ratification of the UPC agreement and will end on the date that the UPC agreement comes into force. As the UPC agreement will come into effect on the first day of the fourth month after Germany deposits the instrument of ratification, this temporary period will last between 3 and 4 months and could begin in June or July 2022.

In order to request the delay, it will be necessary for the applicant to have received a communication under Rule 71(3) EPC but not yet have approved the text for grant. The request for delay will require the filing of a form at the EPO, which form must be filed before or on the same day as the approval of the text for grant. It will be possible to withdraw a request for the delay of grant at any time.

Early request for a Unitary Patent

It will also be possible during the temporary period to file an early request for a Unitary Patent on any application for which the EPO has issued a communication under Rule 71(3) EPC, such that the request may be filed before grant. In this case, the applicant must also ensure that grant does not occur before the UPC agreement enters into force (as this would invalidate the request for a Unitary Patent). Thus, applicants filing an early request for a Unitary Patent should also file a request to delay grant at the EPO.

Summary

Until we know the date upon which the Unitary Patent system will start, we do not know for how long we need to delay grant in order to enable an applicant to request a Unitary Patent. This will become clearer once Germany deposits its instrument of ratification and it becomes possible to use the EPO to formally delay grant.

Please get in touch with your normal advisor or Kate Hickinson if you would like to discuss whether or how to delay grant of your current European patent applications.

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