EPO plans unchanged by UPC delay.

As reported here, the beginning of the sunrise period for the Unitary Patent and Unified Patent Court has been pushed back by two months to March 1, 2023 (and actual entry into force pushed back similarly to Jun 1, 2023).

The European Patent Office has announced that notwithstanding this change to the sunrise period at the UPC, its own plans for January 1, 2023 remain unchanged.

Therefore as and from January 1, 2023, any applicant who wishes to have the option of obtaining a Unitary Patent, and who has received a Communication under Rule 71(3) but not yet responded to this (i.e. the intention to grant and invitation to pay grant and printing fees), can take advantage of the following two transitional measures:

Delay grant of the European Patent: If the applicant files a request to delay grant, at the latest on the date that they approve the text for grant in response to the Rule 71(3) communication, the EPO will delay grant until shortly after the UPC goes live (in practice the date of grant will be delayed until June 7, 2023). This then allows the applicant the option to file a request for unitary effect on the granted patent, though they are not obliged to file such a request.
Early request for Unitary Effect: From January 1 to May 31, 2023, it will be possible to file an early request for unitary effect. However, as this is only valid for patents granted after June 1, 2023, this measure alone will not cause grant to be delayed (one must also request the delay of grant). Closer to the June 1 go-live date, we expect to see more of these requests being filed. Such a request must be accompanied by a full translation of the specification into another EU language (if the language of proceedings is English).

For applicants who have received a Communication under Rule 71(3), it is therefore important that they decide as soon as possible whether they would like to obtain a Unitary Patent, and if so, to file a request to delay grant after January 1 and no later than the date of approving the text for grant.

This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:

1. What is a Unitary Patent?

2. What is the Unified Patent Court?

3. How to Apply for a Unitary Patent

4. UPC Structure

5. Register for Unitary Patent Protection

6. UPC Operations

7. What Rights Are Afforded by a Unitary Patent?

8. UPC Opt-Out

9. Opposition, Appeals and Validity of Unitary Patents

10. Will the Unified Patent Court Affect SPCs?

11. Unitary Patent Costs

12. UPC Infringement Actions