ニュース＆リソース

UPC Roadmap: prosecution options to consider as we approach sunrise

The Unified Patent Court (UPC) and unitary patent (UP) system as expected to start on 1 June 2023. This will also begin a transitional “sunrise” period on 1 March 2023.*

Here, we set out three options which will become available once the sunrise period begins, followed by a discussion of tactics for applications which are already close to grant.

Option 1 – Filing an early request for unitary effect

Applicants wishing to take advantage of the system from the outset will be able to file an early request for unitary effect in the sunrise period. This will only apply to patent applications for which a Rule 71(3) EPC (acceptance) communication has been despatched.

As with any request for unitary effect made once the system is fully up and running, an early request must be accompanied by a full translation of the specification (for an English-language filing, the requirement is for translation into any other official language of an EU member state).

Then, provided that all requirements are met – including that the patent be granted only on or after the system is in effect, which may necessitate a separate request under Option 2 below – the EPO will register unitary patent effect when the system starts.

Option 2 – Requesting a delay in issuing the decision to grant

Under the incoming system, only a relatively short time (one month) is made available after grant to request unitary effect. As a second transitional measure in the sunrise period, the EPO will give the holder of an accepted European patent application the option of requesting the EPO to delay issuing the decision to grant until after the unitary patent system is up and running. The intention is to make a European patent eligible for unitary patent protection which otherwise would not have been (as a result of granting too early for a valid unitary effect request to be made).

An applicant wishing to take this delayed grant option must make the necessary request before approving the text intended for grant. The EPO will then delay publication of the mention of grant until the unitary patent system starts, at which point the applicant can make an eligible request for unitary effect in the normal way.

Option 3 – Opting out of UPC jurisdiction

Options 1 and 2 will assist early adopters of the UPC and unitary patent systems. On the other hand, proprietors of already-granted European patents, who may be concerned by the potential risk for central revocation of their validations of that patent in UPC states, will have the option to “opt out” of UPC jurisdiction within the sunrise period. Although opting out will still be possible after the UPC has begun, this would then only be possible where no action has already begun at the UPC. As an action (notably, a revocation action) may be started without warning by a third party from any time after the UPC has become effective, opting-out in the sunrise period, before the UPC is in effect, will prevent the risk of being unwittingly “locked in” to UPC jurisdiction.

Tactics for pending accepted patent applications

Parties who want a unitary patent should note that Options 1 and 2 above will only become available once the sunrise period begins. What action might be taken, then, to try to get applications into the sunrise period where the deadline for filing a response to the acceptance communication under rule 71(3) EPC is before the sunrise period begins?

If an acceptance response approving the text for grant is filed before sunrise begins, requesting delayed grant will not be an option. Grant would almost certainly occur too soon, before the system has started and hence before a request for unitary effect can be validly requested. There are two approaches an applicant might take.

Firstly, the applicant could request the issuance of a second acceptance communication, based on an amendment or correction to the accepted specification. The change could be minor e.g. correcting any trivial spelling error which might have been picked up but ignored so far in prosecution. Or, for example, an unobjectionable formal change might be made, such as revising the background section to reference an additional prior art document, or perhaps adding a further reference numeral or two into the claims.

Provided that the revision is unobjectionable, the applicant will then be issued with a second acceptance communication. This in turn would set a new response deadline falling after the sunrise period has begun, at which point Options 1 and 2 above would become available.

Alternatively, the applicant could use the “further processing” procedure to delay their full acceptance response until after sunrise has begun.

To do this, the applicant should refrain from filing a full response to the acceptance communication by the existing acceptance deadline. The EPO would then deem the application withdrawn, but would give the applicant the automatic right to restore the application (provided that applicable further processing fees are paid) within a further two month period under the “further processing” procedure. Therefore, assuming that sunrise begins as planned, further processing could be used to enable delayed grant to be validly requested after sunrise has begun and before the full acceptance response is finally filed.

If taking the further processing option, it would be preferable to pay the grant fee and any excess claims fees due by the initial acceptance deadline (i.e. before sunrise has begun), and to omit only the filing of the usual claims translations. Taking this approach would significantly reduce fees due under the further processing procedure, bring the costs closer to those of making amendments and requesting a new acceptance communication.

The further processing option has the advantage that it will allow applicants to control the timing of filing a response approving the text for grant and leading to grant of the patent as the next step. It therefore avoids the possibility that the EPO will be slow to issue a new acceptance communication or even not agree with the proposed changes.

If you have any questions on any of the topics discussed in this note, please contact nicjones@mskpatents.com.

* The first paragraph of this article was changed in January 2023 to update the expected start date of the UPC and UP system.