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Delaying Grant of a European Patent to obtain a Unitary Patent


28th Jan 2022

It is expected that the first Unitary Patents will be granted within the next year.

In view of this, many applicants of pending European applications may wish to delay the grant of their applications so as to be able to benefit from obtaining a Unitary Patent covering all countries participating in the Unitary Patent, alongside conventional national validations of the European Patent in other EPC countries.

Under the European system, when the examining division find a patent application to be in order for allowance, they issue a notice of allowance. This sets a four month term for the applicant to complete the grant formalities before the EPO. Once these grant formalities have been completed, the European application will proceed to grant, typically within two months.

If this grant date falls before the commencement of the Unitary Patent system, it would not be possible to obtain a Unitary Patent. Instead, national validations would be required in each country in which the patent is to be protected. However, if the grant can be delayed until after the commencement of the Unitary Patent system, a Unitary Patent would be available.

One way to delay grant of the European patent after this has been found in order for allowance is to request an amendment to the application in response to the notice of allowance. Where any amendment is requested, this must be considered by the examining division. If the amendment is considered allowable, a new notice of allowance will issue setting a new four month term. This will therefore delay grant by at least four months.

Requesting amendments, and requiring consideration of those by the examining division, is effective from an applicant’s perspective, but is burdensome to the EPO.

The EPO have therefore announced [EPO – Decision of the President of the European Patent Office dated 22 December 2021 concerning the forthcoming introduction of the Unitary Patent and the possibility of requesting a delay in issuing the decision to grant a European patent in response to a communication under Rule 71(3) EPC] their intention to allow applicants to request a delay to the grant of their patent so that grant does not occur until a Unitary Patent could be issued. A request for such delay will be able to be filed after the EPO issue a notice of allowance, but before the applicant response to this by completing the EPO grant formalities.

This request to delay the grant of a patent is not yet available as it is still not certain when the first Unitary Patents can be granted. However, it is understood that requests for delay can be filed once Germany has finally ratified the Unified Patent Court Agreement which is expected later in 2022.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Steve Howe
Partner
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