After a five month Brexit induced wobble the unitary patent system appears to be heading toward lift off and is once again figuring in the plans of some patent owners.

Indeed, in the last week, IPcopy was asked whether a currently pending European patent application would be eligible for unitary patent status or if there was a risk it might grant before the system goes live.

In this post we take a quick look at what makes a European patent eligible for unitary effect on grant and how the unitary patent system timescale matches up with the European patent process.

Is it eligible?

The unitary patent system is expected to go live in December 2017. Once the system goes live, unitary patents will be available to European patent applications that grant with the same claim set for all unitary patent member states. Most pending European patent applications will therefore have the option of benefiting from “unitary effect” option on grant.

However, there are a few exceptions.

Different Sets of Claims. If, for some reason, a European patent application grants with different claim sets for different participating Member states then a unitary patent cannot be obtained and the patent owner will need to validate their granted patent in the traditional manner¹.

The Malta issue. As covered a while ago on IPcopy, the fact that Malta only joined the European Patent Convention in 2007 puts a limit on those EP patent applications that can benefit from unitary effect. Malta is part of the unitary patent system. Therefore, European patent applications that were filed prior to Malta being part of the EPC will not be able to grant with the same claim set for all unitary patent member states. The upshot of all this is that European patent applications with a filing date prior to 1 March 2007 cannot make use of the unitary patent option on grant.

Designation States. These days there is a single designation fee for European patent applications which designates all available states. Prior to 1 April 2009 however it was possible to designate a subset of the available designation states since there was also a per country designation fee². So, for applications filed prior to this point it will be necessary to check which states were actually designated. If 6 or fewer designation fees were paid, then the unitary patent option will not be available on grant. Additionally for all cases filed post 1 March 2007 it will also be necessary to check that no designations (relating to unitary patent participating member states according to EU Reg 1257/2012) were withdrawn during prosecution.

Will it grant too early?

Assuming a European patent application passes the eligibility points above then the next thing to consider is when grant is likely to occur.

The current timetable for the start of the unitary patent system envisages the first unitary patents rolling off the production line at the beginning of December 2017.

When a European patent examiner is ready to approve a case he will issue a Rule 71(3) Communication which sets a 4 month period for reply. Once a reply has been filed a patent owner might expect a 4-6 week turnaround before the EPO actually grants the patent.

So if you receive a rule 71(3) communication around late June 2017 onwards (and the unitary patent timetable holds) then eligible European patent applications should have the option to request unitary effect³.

Check in with your European patent attorney if you receive a rule 71(3) communication in this timeframe and are interested in unitary patent protection.

What happens if I receive a rule 71(3) communication before late-June 2017?

If your European patent application receives a rule 71(3) communication earlier than late June 2017 then it is fairly easy to delay the application moving to grant for enough time to allow the unitary patent option to come into play.

Essentially, if amendments to the specification are made in reply to a rule 71(3) communication then the Examiner will issue a new 71(3) communication⁴. This new 71(3) communication will be given a further 4 month period to reply and this should be sufficient to delay grant of the application until the unitary patent system is up and running.

Further details on the rule 71(3) process can be found in IPcopy’s earlier post here.

If you’ve just received a rule 71(3) communication and you think the unitary patent system is of interest then speak to your patent attorney about means to delay grant.

What happens if the Unitary patent timetable slides?

In order for the unitary patent system to get up and running, the main action that is required is the ratification of the UPC Agreement by the UK and Germany.

Both countries are expected to take the required action by mid-May. If there is going to be any slippage in the timetable for delivering the unitary patent system it should become clear that this is going to happen around mid-May.

Depending on the nature of any potential delay it is possible that the rule 71(3) reissue process described above may be enough to delay grant long enough for the system to come online. For longer delays it might be necessary to look at other options such as requesting extensions to exam response periods, using the further processing process (though this would incur some fees) or manufacturing the reissue of the rule 71(3) communication more than once (though this might not sit well with the EPO).

Brexit

No article these days would be complete without some discussion of Brexit and it is noted that it will likely be some time before the nature of the UK’s departure from the EU is known. Without the current unitary patent system being rejigged in some way the UK will not be able to stay in the system post EU exit. Until this is resolved therefore the uncertainty that Brexit brings may keep many patent owners away from selecting unitary patents when their European patent applications make it to grant.

Again, if you want to discuss any of these issues then drop a line to your patent attorney.

Mark Richardson 5 April 2017 

¹ Article 3 of the unitary patent regulation – http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:361:0001:0008:EN:PDF

² It was only once an applicant paid for 7 designated states that all states became designated in the application.

³ If the communication issues late June then the 4 month period will take you to late October. A further 4-6 weeks for grant to be processed should then get you over the line. Rule 71(3) communications issued from late July 2017 onwards should be able to get over the December 2017 start line without relying on the 4-6 week lag to process grant of an application.

⁴ assuming the amendments are not substantial enough that the Examiner wants to re-open examination and assuming you do not waive a further rule 71(3) communication. If this option is used therefore it is safest to make some fairly trivial amendments, e.g. correcting obvious spelling errors.