The Unitary patent is inbound. Whilst the sunrise period for the opening of the Unified Patent Court has been delayed to, at present, 1 March 2023, the European Patent Office continues preparations for the Unitary patent. As of 1 January 2023, it is now possible to request a delay to grant of a European patent in order to take advantage of the Unitary patent option in due course.
The delay process does not alter the period for accepting the text for grant of the European patent upon receipt of the communication pursuant to Rule 71(3) EPC (intention to grant), and the grant and printing fees must be paid in the usual timeframe.
Unitary patent: delay to grant
The separation between the EPO procedure here and the start of the sunrise period here does raise some interesting questions for applicants needing to respond to their intention to grant between 1 January 2023 and 1 June 2023. Should the applicant accept the text for grant and request the delay? The logical answer would be ‘yes’, of course, since that provides the applicant with the option to utilise the benefits of the Unitary patent for an application which would otherwise grant sooner.
However, I intend to explore a specific as to why an applicant might want to think twice about this approach.
Unitary Patent – Claim Scope
One of the central features of the Unitary patent is that the scope of protection is identical across all participating Member States. In other words, your patent has the same scope in Germany as it does in Denmark, for instance. There is no scope for variation.
This is slightly at odds with the existing (classical) European patent, where it is permissible to have a discrete narrower scope of claim in a Member State in which there are prior national rights. Typically, this would be where there exists novelty-only prior art in that jurisdiction which was not validly citeable against the European application, but would have been on double patenting grounds in said Member State.
This approach under the classical European patent system allows the applicant to dance around problematic prior art, and is in keeping with the concept that the European patent is, in effect, a bundle of national rights wrapped together for convenience. The Unitary patent, is however, no such thing.
What should I do on grant for a Unitary patent?
So why is this relevant?
Let us presume that the applicant is aware of prior national rights in France, for argument’s sake, and has received an intention to grant from the European Patent Office that the application is allowable, but would require an amendment for France only to be valid in France.
The applicant has three options:
- Accept the text for grant as is, and request a delay. If a Unitary patent is then applied for on validation, the French prior art will render the Unitary patent invalid.
- Amend the text for grant to be valid in France, across the whole European patent, and request a delay. A valid Unitary patent can be obtained.
- Accept the text for grant without a request for delay, and submitting a France-only claim set. The applicant cannot obtain a Unitary patent, but the classical European patent is valid in all states.
The first option is clearly problematic, as the Unitary patent is invalid.
The second option creates a valid Unitary patent, but having conceded scope of protection due to the French prior art. There is therefore an unnecessary loss of rights elsewhere.
The third option gives the best scope of protection, but the applicant cannot make use of the advantages of the Unitary patent. C’est la vie.
Should I request a delay to grant?
So why do I raise this? This isn’t necessarily going to be a common problem, but it does show that decision to use the Unitary patent system isn’t necessarily just one which boils down to cost. The Unitary patent might save some applicants significant renewal fees over time, but if it comes at the cost of enforceability or breadth of protection, then that is a serious limiter.
As a final shameless plug, it’s also worth bearing in mind that since the UK is not participating in the Unitary patent process, there are stronger arguments for filing separately in the UK to a European application, thereby decoupling any UK filing from potential pan-EU scope restrictions. You might end up with your strongest rights in the UK then!
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