Delaying grant & early requests for a unitary patent

A Unitary Patent can only be obtained for patents with a grant date after the UPC agreement enters force. Applicants who wish to take a Unitary Patent for applications getting close to grant could therefore be tempted to artificially delay prosecution to get a later grant date, or may feel hard-done-by if they receive a grant just before the relevant date.

To avoid such difficulties the EPO have now confirmed that from 1 January 2023 applicants can request that grant of their applications is delayed to a date at which a Unitary Patent can be obtained. At the moment that is expected to be 1 April 2023.

The delay can only be requested for applications on which a notice of intention to grant has been issued, but where the text for grant has not yet been approved. The request has to be filed using a new specific form, and must be filed on applications individually. No fee is payable. Requesting a delay does not affect the standard EPO grant process and so it is still necessary to file translations and pay the fees before the specified deadline. Requests filed before 1 January 2023 will be ignored, as will requests filed after the text for grant has been approved. The request can be withdrawn at any time.

Although the provision does not enter force until 1 January 2023 it is already relevant as applicants can choose to delay approving the text for grant (perhaps even using further processing) until after 1 January 2023 to allow a delay to be requested.

In a second notice the EPO have also announced that they will accept requests for unitary patents from 1 January 2023 for applications on which a notice of intention to grant has been issued. However, only patents with a grant date after the UPC Agreement enters force can receive a Unitary Patent. An early request does not delay grant and so this provision must be used in conjunction with the delay provisions discussed above. If the text for grant has been approved prior to 1 January 2023 it is not possible to delay grant, and it is likely the grant date will be before 1 April 2023, so a Unitary Patent could not be obtained. It is therefore important to consider delaying approving the text for grant where a Unitary Patent may be desired.