From 1 January, the “transitional phase” also starts for companies in view of the entry into force of the Agreement on the Unified Patent Court. For example, anyone who has a pending patent application but accepted by the European Patent Office can request that the granting of the patent be “frozen” and postponed for a few weeks or a few months, waiting for the entry into force on 1 April 2023 Agreement on the Unified Patent Court.
The decision
This was established by the decision of the European Patent Office (EPO), taken on 11 November 2022 and announced on 14 and bringing forward to 1 January 2023 the possibility for holders of pending European patent applications to request a postponement of the grant pending the new regime.
The request – to be submitted using a form made available by the EPO itself – can only be filed after receiving the communication that the European Patent Office actually intends to grant the patent (“intention to grant”) and will allow the holders of pending patent applications to await the entry into force of the new regime and thus directly request the granting of a unitary patent, with effect in all member countries.
L’opt out
According to the currently envisaged roadmap, the entry into force will take place on 1 April 2023. Before this date, it will still be possible to exercise the so-called opt out of European patents already granted by the system and prevent them from being subject to the centralized jurisdiction of the new Court.
“It becomes even more urgent for the Italian company to adopt a patent strategy that takes into account the new system and the consequences that the choice of unitary protection or the opt out will have on the value and enforceability of its patents – explained Vittorio Cerulli Irelli, lawyer and partner of the Trevisan & Cuonzo law firm –. The time for choices is now and a strategic approach will be fundamental in this sense, taking into account the advantages and risks that the unitary option entails. The more structured customers are already investing heavily in this area, while we still perceive a certain lack of awareness on the part of the smaller Italian company».