Boult Wade Tennant
UPC » EPO announces transitional measures for the Unitary Patent to encourage an early uptake

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)

Again, ask your usual contact at Boult if you want to take advantage of this transitional measure and need more information.

Relevant sectors
Aerospace
  • Commercial aviation
  • Defence and security
  • Space and satellites
  • Unmanned aerial vehicles
Artificial Intelligence and Machine Learning
Automotive
  • Autonomous vehicles
  • Electric vehicles
  • Engines
Biotechnology
  • Antibody engineering
  • Antibody manufacture and formulation
  • Bioinformatics
  • Biosimilars
  • Drug delivery
  • Gene editing (e.g. CRISPR)
  • Genomic and molecular tools and methods
  • GM crops
  • Immuno-oncology (e.g. checkpoint inhibitors; modified T cells)
  • Next generation sequencing
  • Nucleic acid synthesis
  • Personalised medicine/disease biomarkers
  • Recombinant protein production and purification
  • Stem cell therapies
  • Supplementary protection certificates (SPCs)
  • Synthetic biology
  • Therapeutic antibodies
  • Vaccinology (e.g. viral vectors; mRNA vaccines)
  • Women’s health products
Chemicals
  • Agrochemicals
  • Catalysts
  • Dispersions and colloids
  • Lubricants
  • Polymers and plastics
Communications and Networks
  • Cloud computing
  • Internet of things (IOT)
  • Oceanography, marine
  • Wired and wireless networks
Computing and Software
  • Artificial intelligence and machine learning
  • Bioinformatics
  • Blockchain and distributed ledgers
  • Communications and networks
  • Computer games
  • Data and software security, cryptography and digital rights management (DRM)
  • Data management and storage, databases and data compression
  • Digital assistants, virtual assistants and software agents
  • Fintech and adtech
  • Machine vision
  • Metaverse, virtual reality (VR) and augmented reality (AR)
  • Motor capture
  • Multimedia, audio/video processing and animation
  • Natural language processing
  • Quantum computing
  • Robotic process automation
  • Search engines
  • Signal processing
  • Software applications and systems, mobile applications, user interfaces
Consumer Goods and Retail
  • Anti-counterfeit devices
  • Beauty
  • Fashion
  • Health, fitness and sport
  • Household goods
  • Luxury goods
  • Moda
  • Retail
Electronics and Electrical Devices
  • Computer and IT architecture and system design
  • Medical devices
  • Optics
  • Restaurants and bars
  • Robotics
  • Scientific instruments
  • Semiconductor devices
  • Testing systems, control systems, signal processing
  • Travel and leisure
  • Wearable tech and human interfaces
Energy and Green Technologies
  • Biofuels
  • Clean air
  • Fuel cells and battery technology
  • Renewables and recycling
  • Solar power
  • Water, oil and gas, nuclear, fusion, fission
  • Wind turbines
Food and Beverage
  • Beverages
  • Nutrition
  • Retail
Industrial Manufacturing and Processing
  • Packaging
  • Polymers and plastics
  • Printing tech
  • Additive manufacturing
  • Coatings
  • Construction
Materials
  • Advanced materials
  • Composite materials
  • Metallurgy and alloys
  • Nanotechnology
Medical Devices and Diagnostics
  • Artificial intelligence
  • Devices
  • Diagnostic instruments
  • Digital health
  • Drug delivery
  • Immuno-oncology
  • In vitro diagnostics
  • Medtech
Pharmaceuticals
  • Diagnostics
  • Drug delivery
  • Generic market entry
  • Medicinal chemistry
  • Methods of production and synthesis
  • Personalised medicine/disease biomarkers
  • Pharmaceutical formulations
  • Pharmaceuticalsceutical formulations
  • Polymorphs
  • Small molecule pharmaceuticals
  • Supplementary protection certificates (SPCs)
Trade Marks
  • Consumer goods
  • Cosmetics and perfumery
  • Financial services
  • Mechanical engineering
  • Mechanical products
  • Services
  • Telecommunications