First through the door at the Unified Patent Court!

The Unified Patent Court (UPC) will very likely start its operations in April 2023, after a sunrise period which lasts from January to April. As I explained in an earlier blog post, the court will have exclusive jurisdiction in all disputes which relate to unitary patents. Additionally, during a transition period of at least seven years, the court will have shared jurisdiction in matters relating to European patents that (a) have been validated in UPC countries and (b) have not been opted out of from UPC jurisdiction.

The current UPC countries are shown in blue in figure 1. More countries are likely to join in the coming years.

From April 2023, European patent applications granted by the EPO can be put in force as unitary patents which covers all the blue countries.  The applicant can also validate the same European patent in any non-UPC country.  A single European patent application can thereby yield the patent family illustrated in figure 2: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).

There is no obligation to use the unitary patent. The applicant can still perform national validations in any EPC country just as before. The unitary patent is just an addition to the options that existed previously. But double patenting will be prohibited, so selecting the unitary patent according to figure 1 closes the possibility of national validation in UPC countries.

The sunrise period: Early request for unitary effect or postponement of grant

The request for a unitary patent must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin. Starting in January, extra measures may be used if your European patent application has recently (September 2022 – November 2022) received a Rule 71(3) communication from the EPO and if you want to put it in force as a unitary patent, or at least consider this possibility:

• If you already know you want a unitary patent, you can file an early request for unitary effect before the Rule 71(3) response deadline expires. The patent will be put in force as a unitary patent when the UPC system becomes operational in April 2024. You might even become the proud owner of the first ever unitary patent!
• If you want more time to think about it, you can, as you reply to the Rule 71(3) communication, request a delay to the patent grant. The grant will then be published in April 2024 (or later), and after that you will have one month to decide whether or not the patent should be put in force as a unitary patent.

Read more about the two transitional provisions (1) and (2) here.

Furthermore, if you currently have a Rule 71(3) communication with an open response deadline, you can postpone the grant of your patent in the usual way: by responding to the Rule 71(3) communication without approving the text intended to be granted. Submitting a minor correction or two will lead to a new Rule 71(3) communication being issued by the EPO, which in practice delays the grant process sufficiently to make this patent eligible for unitary effect.

UPC Annuities 

UPC translation requirements 

The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly does not make European patenting any simpler. Don’t hesitate to contact Boco IP’s patent attorneys if you have any questions about the unitary patent, the UPC or European patents. We are happy to help.

Thomas Carlsson is Boco IP’s partner and member of the board. He published the book Good Patent Applications in 2021.