The Period of Provisional Application of the UPC Agreement has Started

By Matthew Howell, Partner

Following our update earlier this month, we can now report that the Provisional Application Period of the UPC agreement started on 19 January 2022, after Austria deposited its instrument of ratification of the Protocol on Provisional Application of the UPC agreement on 18 January 2022.

Final preparations for the Unified Patent Court (UPC) can now start in earnest, and it is expected that these preparations will take at least eight months to complete. Once the Court is ready to open its doors Germany will deposit its instrument of ratification of the UPC agreement, heralding the dawn of a new era in the European patent system.

The European Patent Office has announced new transitional provisions that will allow applicants to:

  1. Request unitary effect early, for European patent applications for which a communication under Rule 71(3) EPC (notice of allowance) is issued in the period between Germany depositing its instrument of ratification and the date on which the UPC Agreement comes into effect (which will occur three to four months later). This will ensure that the patents arising from such applications will be registered as Unitary Patents (UPs) by the EPO as soon as the UPC has started.
  2. Request a delay in issuing a decision to grant a European patent, for applications for which a communication under Rule 71(3) EPC (notice of allowance) is issued in the period between Germany depositing its instrument of ratification and the date on which the UPC Agreement comes into effect. This will allow applicants to postpone grant of a European patent until it is possible to validate the patent as a Unitary Patent, rather than being limited to traditional individual national validations.

Further details of these transitional provisions can be found on the EPO’s website at EPO – Supporting users in an early uptake of the Unitary Patent.

We will issue further updates on developments in the UPC/UP, but please feel free to contact your usual HLK attorney or Matthew Howell (mhowell@hlk-ip.com) if you have any questions on this.