EPO to Allow Deferral of Grant Starting 1 January 2023

With the upcoming UPC in mind, the President of the European Patent Office (EPO) decided that as of 1 January 2023 applicants at the EPO will be able to request a delay in the issuance of a European patent. The request will lead to a delay of the mention of the grant until the date of entry into force of the Agreement on a Unified Patent Court, or until shortly thereafter.

This decision repeals a previous decision dated 22 December 2021, which allowed a request of a delay in the decision to grant from the moment that Germany deposits its instrument of ratification of the UPC Agreement. In other words, the EPO has now provided a fixed date instead of a relative one, because it is not 100% sure when Germany will deposit its instrument. It is very much welcomed that the EPO has decided to set up this specific date.

The request for delay will only be available for European Patent applications for which a communication under Rule 71(3) EPC (an ‘intention to grant’) has been issued and for which the applicant has not yet approved the text. The request can be withdrawn at any time.

After requesting the delay, a response to the Rule 71(3) EPC Communication must still be filed within the usual four-month period. To obtain unitary protection, a separate request for unitary effect must be filed. An early request for unitary effect will be available as soon as Germany ratifies the UPC Agreement, which is expected to happen at the beginning of next year. But what is even more sure, is that a delay in grant can be requested from then on.