Unitary Patent validations and those all important deadlines

Unitary Patent validations

A Unitary Patent may be obtained by applying to the EPO in the usual way and then at the grant stage requesting validation of a Unitary Patent within one month of the grant date. This contrasts with the typical three-month deadline for validating in individual member states.

Within this one-month deadline, the Unitary Patent request needs to be filed and the appropriate translation of the specification should be provided. If the patent was prosecuted in English, it must be translated into any other official language of the EU. If the patent was prosecuted in French or German, it must be translated into English.

The one-month deadline is short. This is exacerbated by the fact that there is no extension available for the one-month deadline. That said, if the Unitary Patent request is filed within the one-month deadline, but without the translation, the EPO will issue a communication, setting a further one-month deadline for filing the translation. This further one-month deadline for filing the translation is also non-extendable.

What happens if you miss the deadline?

If the initial one-month deadline to file the Unitary Patent request has been missed and a Unitary Patent is still required, then the only option is to apply for re-establishment. To be successful, applicants will need to show that the failure to file the UP request was “despite all due care required of the circumstances”, which is the standard test applied by the EPO. However, in a significant departure from typical European practice, the deadline for requesting re-establishment is two months from the end of the initial one-month period and not within two months of the removal of the cause of non-compliance.

Now, if the initial one-month deadline has been missed, one option would be to simply follow the traditional route of validating in individual countries to avoid the cost and uncertainty of re-establishment. However, if Unitary Patent protection is important, then a request for re-establishment will need to be filed.

What happens if re-establishment is unsuccessful?

Most UPC countries have or will have safety net provisions that allow applicants to late validate in the event that a UP request is refused. However, these safety net provisions won’t apply in all cases or for all countries. For example, the safety net in the Netherlands will not apply to an unsuccessful re-establishment request and will only apply in cases where the Unitary Patent request was filed within the one-month deadline, but was subsequently refused.

Therefore, if filing a request for re-establishment, we recommend filing precautionary validations alongside the request for re-establishment. If the re-establishment is successful, then the relevant member states should deem such precautionary validations not to have taken effect. If, on the other hand, the re-establishment request is unsuccessful, then the Unitary Patent has not taken effect and the individual validations should stand.

Key takeaways

We recommend making decisions about validation countries early, for example when the Rule 71(3) communication issues, and providing prompt instructions to secure a Unitary Patent.

However, if it is not possible to obtain the necessary translation within the initial one-month deadline, we advise filing the Unitary Patent request within the one-month deadline without the translation and then filing the translation within the period set by the EPO.

In the event that the one-month validation deadline has been completely missed and re-establishment is requested, we recommend filing precautionary validations alongside the request for re-establishment. We do not recommend relying on the safety net provisions, as these may not apply for particular member states.