Regulations (EU) No 1257/2012 and (EU) No 1260/2012^[ 1 ] setting up the Unitary Patent will apply from the date of entry into force of the Agreement on a Unified Patent Court (UPCA).^[ 2 ] By decision dated 22 December 2021,^[ 3 ]
the President of the European Patent Office (EPO) has given European
patent applicants the possibility to request that the issuance of the
decision to grant a European patent be delayed so that the mention of
the grant is published in the European Patent Bulletin on or immediately
after the date of entry into force of the UPCA (i.e. on or after the
date of application of the above-mentioned EU Regulations) in order to
allow the registration of unitary effect for that European patent.

This decision will enter into force on the
date of deposit of the Federal Republic of Germany’s instrument of
ratification of the UPCA pursuant to Article 84 UPCA. This date lies
between three and four months before the entry into force of the UPCA^[ 4 ]
and will be communicated on the EPO’s website. The decision will apply
to all pending European patent applications. It will cease to have
effect on the date of entry into force of the UPCA, i.e. on the date of
application of the above-mentioned EU Regulations.

This notice provides information on the
exercise of this temporary possibility to request a delay of grant in
view of the forthcoming introduction of the Unitary Patent, and on its
practical implications.

A. Form of the request for delay

The request for delay must be filed on FORM 2025 provided by the EPO. Otherwise, it will be deemed not to have been filed. FORM 2025 should preferably be filed online.

B. Admissibility of the request for delay

A request for delaying the issuance of the decision to grant a European patent may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.^[ 5 ] Any request that does not meet these requirements will be deemed not to have been filed.

This means that applicants can file a
request for delay, as long as they have not yet approved a text for
grant communicated to them under Rule 71(3) EPC.
A request for delay filed on the same day as the approval of the text
intended for grant will be considered to have been validly filed.
Applicants requesting reasoned amendments or corrections under Rule 71(6) EPC in response to a communication under Rule 71(3) EPC
may at the same time file a request for a delay of grant. Any such
request filed after receipt of their approval of the text for grant will
be deemed not to have been filed.

A request for delay has no effect on the four–month period for replying to the communication under Rule 71(3) EPC. Applicants
must therefore still file a reply to this communication within the
applicable time limits. Otherwise, the European patent application will
be deemed to be withdrawn under Rule 71(7) EPC, even if a delay of grant has been validly requested.

In the case of a subsequent communication under Rule 71(3) EPC, a request validly filed in respect of an earlier communication under Rule 71(3) EPC will remain effective.

The examining division may resume
examination at any time during the period the decision to grant is
delayed, e.g. if third party observations so require.

Please note that a request for delay can
only be filed as from the date of entry into force of the
above-mentioned decision of the President. Any request filed before that
date will be deemed not to have been filed.

A request for delay can be withdrawn at any time.

C. Obtaining a Unitary Patent: separate request for unitary effect

In order to obtain a Unitary Patent, a
separate request for unitary effect must be filed with the EPO. Detailed
information on how to obtain a Unitary Patent can be found in the
Unitary Patent Guide available on the EPO website.

A validly filed request for delay will
ensure that the European patent is granted on or after the date of
application of Regulation (EU) No 1257/2012. The granted European patent
will then be eligible for registration as a Unitary Patent.

In order to facilitate the introduction of
the Unitary Patent system, the EPO will also allow the filing of
requests for unitary effect already as of the date of deposit of the
Federal Republic of Germany’s instrument of ratification of the UPCA.
Such early requests for unitary effect may only be filed for European
patent applications in respect of which a communication under Rule 71(3) EPC
has been despatched. For further information please see the Notice from
the European Patent Office dated 22 December 2021 concerning the
forthcoming introduction of the Unitary Patent and the possibility to
file early requests for unitary effect.

^[ 1 ] See OJ EPO 2013, 111 and 132.

^[ 2 ] See OJ EPO 2013, 287.

^[ 3 ] Decision of the President of the European Patent Office dated 22
December 2021 concerning the forthcoming introduction of the Unitary
Patent and the possibility of requesting a delay in issuing the decision
to grant a European patent in response to a communication under Rule 71(3) EPC.

^[ 4 ]
The UPCA will enter into force on the first day of the fourth month
after the deposit of the instrument of ratification of the Federal
Republic of Germany (see Article 89(1) UPCA).

^[ 5 ] It is to be noted that the date of despatch of the communication under Rule 71(3) EPC is the relevant date here, not the date of notification of that communication.