ICAEW.com works better with JavaScript enabled.

New law: Applicants for patents may want to defer grant of their patent until new unitary patents are available

Inventors with pending patent applications at the EPO, who may want their patents to operate as new unitary patents when granted, should take advice on whether and how they can defer the granting of their patents until the new unitary patent is available.

Legal Alert

This update was published in Legal Alert - May 2017

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Currently, inventors must maintain individual patents in each country in which they wish to do business and, if their patent is infringed, take legal action in the national court of the country where infringement is alleged. However, they can apply for a 'bundle' of multiple patents across every member state via the European Patent Office (EPO).

Under a new unitary patent regime introduced under the Unified Patent Court (UPC) Agreement, inventors applying for a patent at the EPO will, from December 2017, be able to choose whether to protect their invention through the current regime or as a unitary patent in all EU member states that have signed up to the regime. Most EU member states have done so.

It was widely supposed that the UK would not ratify the UPC Agreement, as membership of the EU is currently a pre-condition to being part of the proposed regime, and the UK will eventually cease to be an EU member state. However, businesses have been left uncertain what to do after the UK government announced that it will ratify the UPC Agreement -despite the UK vote to leave the EU.

Inventors who have a patent under consideration at the EPO who may prefer the unitary patent route in respect of it (and who will be entitled to do so under transitional rules), may need to take steps to defer the granting of their patent until December 2017. If the patent is granted before then, the unitary patent route for their patent will not yet be available.

Operative date

  • Now

Recommendation

  • Inventors with pending patent applications at the EPO who may want their patents to operate as new unitary patents when granted, should take advice on whether and how they can defer the granting of their patents until the new unitary patent is available

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.