As the UPC preparatory period begins, the EPO decides to accept UP requests before the full UPC agreement comes into force

On 18 January 2022, Austria became the thirteenth EU country to ratify the “protocol on provisional application” (PPA), bringing it into force 19 January 2022. The official period of practical preparation, the “provisional application period” (PAP), has now begun. As we explained here, this enables staff to be recruited and budgets to be established for the Unitary Patent Court (UPC). The PAP is expected to last about eight months.

Once this process is sufficiently advanced, Germany will ratify the UPC Agreement (UPCA), which will trigger a 3-4 month countdown until the UPCA finally enters force, the UPC opens its doors and Unitary Patents (UPs) start to be issued.

Also on 19 January 2022, the European Patent Office (EPO) announced an official mechanism that will allow an UP to be requested as soon as Germany ratifies the UPCA (even before it enters force), on European patent applications that are nearing grant. The EPO’s official notice and the underlying Decision of the President of the EPO can be found here. Once the UPCA has been ratified by Germany (which could happen in the next 4-5 months, if the PAP progresses as planned), applicants will be able to request an UP on cases where the EPO has issued a communication under Rule 71(3) EPC (proposing text for granting the European patent application). The President’s Decision provides a mechanism for the EPO to delay the actual grant date of the application until the UPCA enters force so that the UP can be issued.

Put simply, once Germany ratifies the UPCA, applicants will be able to reply to a Rule 71(3) communication by approving the text and requesting a UP. The UP request will delay the eventual grant date until after the UPCA comes into force.

This is good news for applicants who may want to obtain an UP, where the underlying European patent application is close to allowance, but where the grant proceedings would otherwise conclude before the UPCA finally enters force (presumably in the second half of 2022).