The CIPA UP/UPC series continued in June with episode 5, “Getting Legal with the Unitary patent and how to get it” presented by Chris Mercer. A slightly belated IPcopy summary of the seminar follows…

As for the earlier entries in the series the opening of the seminar provided a recap of the basics of the unitary patent system. IPcopy won’t go over these again here but refers interested readers to our earlier posts on this lecture series here.

This seminar took a bit of a deeper dive into the rules and regulations relating to the unitary patent system and so, as well as references to the two unitary patent regulations (1257/2012 and 1260/2012) and the Unified Patent Court Agreement, we also got a look at the Rules relating to Unitary Patent Protection (UPR) and the Rules relating to Fees for Unitary Patent Protection. There was also some time spent looking at the EP Patent Register and the changes that are to be made there to accommodate European patents with unitary effect.

IPcopy has summarised some of the points that caught our eye:

1) EPO time periods – rule 132 EPC states that the minimum time period for an EPO time period is two months. According to Rule 20(4) UPR this time period has been reduced to one month. This is to allow the period for requesting unitary effect to be set at one month from grant.

2) Safety net – the request for unitary effect is to be made within one month from grant. Currently the selection of validation states is to be made within three months of grant. In the event that the request for unitary effect is rejected then it is likely that the standard validation periods will have expired. A number of member states are considering having a safety net to recover from a rejected request for unitary effect (see table below). It is noted that no safety net is needed in the UK as a granted EP patent is deemed to have effect in the UK and the only action that will be required will be the payment of the next renewal fee.

3) Renewal fees – renewal fees are generally calculated in line with current EPO practice but there are a couple of exceptions (see images below).

When unitary effect is requested and the request is allowed the EPO will write to confirm the date of registration to the requester (see rule 7(1) UPR).

In the event that the due date for renewal falls within 3 months of the date of (unitary effect) registration then the patent owner will be given three months from the rule 7(1) UPR date to pay the renewal fee without any additional fee. The standard 6 month grace period for paying the fee will run from the normal due date for the renewal fee – see Rule 13(4) UPR.

In the event that the due date for renewal falls between the grant date and the date of notification under rule 7(1) UPR then the renewal fee due date is postponed until the rule 7(1) date and may be paid within 3 months of this date without any additional fee. The 6 month grace period in this case then runs for 6 months from the postponed due date – see Rules 13(3) and 13(5) UPR.

4) European patents with unitary effect will be identified in the format EP-1234567-C0. Mock ups of how the EP patent register will appear are noted below (spot the error in the second screenshot*).

There will also be a “UP All documents” tab which will show unitary effect related documents.

Further Reading:

EPO Select Committee Documents – http://www.epo.org/about-us/governance/documentation/documentation.html

Mark Richardson 16 August 2017

*Germany, one of the required UPC participating states, is missing from the list of states in the screenshot.