Article 61

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 5 June 2024 concerning Romania's ratification of the Agreement on a Unified Patent Court and the possibility of requesting a delay in the registration of unitary effect

1. Introduction 

Regulations (EU) No 1257/20121 and (EU) No 1260/20122 establishing the Unitary Patent system have applied since 1 June 2023, the date of entry into force of the Agreement on a Unified Patent Court3 (UPCA).4 These regulations implement an enhanced cooperation at European Union level which provides for Unitary Patent protection between the 25 participating EU Member States.5 Romania is among the EU Member States participating in the enhanced cooperation. Pursuant to Article 18(2) Regulation (EU) No 1257/2012 a European patent has unitary effect only in those participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration of unitary effect. Consequently, unitary effect will apply to Romania only from the date on which the ratification of the UPCA will take effect in Romania.

On 1 June 2023, when the Unitary Patent system was launched, the following 17 EU Member States had ratified the UPCA6 and were consequently territorially covered by a Unitary Patent ("first Unitary Patent generation"): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. 

2. Ratification of the Agreement on a Unified Patent Court by Romania

On 31 May 2024, the Government of Romania (RO) deposited its instrument of ratification of the UPCA with the Council of the European Union. The ratification will take effect on the first day of the fourth month after the deposit of the instrument of ratification, i.e. on 1 September 2024 (Article 89(2) UPCA).

As of this date, the Unitary Patent system will comprise the above-mentioned states, as well as Romania. Romania's accession to the Unitary Patent system will enable inventors to obtain uniform patent protection for the territory of 18 EU Member States, enhancing Europe's attractiveness for innovation. The business-friendly level of renewal fees payable for Unitary Patents to the EPO will remain unchanged.

3. Territorial scope of Unitary Patents

A Unitary Patent covers the territories of those participating Member States in which the UPCA has taken effect at the date of registration of unitary effect by the EPO.7 This means that any Unitary Patent registered as of the date of 1 September 2024 will cover the territory of 18 Member States (second Unitary Patent generation).

The territorial coverage of a given generation of Unitary Patents stays the same for their entire lifetime, irrespective of any subsequent ratifications of the UPCA after the date of registration of unitary effect. Thus, there will be no extension of the territorial coverage of Unitary Patents to other Member States that ratify the UPCA after the registration of unitary effect by the EPO.

4. Delay of registration of unitary effect

In order to allow users to benefit from the territorial scope of the second Unitary Patent generation covering Romania, the EPO will accept requests for a delay of the registration of unitary effect as of the date of the present notice. To benefit from the additional service, proprietors will need to expressly request the delay together with their request for unitary effect either in the annotation field of EPO Form 7000 (OLF or OLF2.0) or under separate cover.

If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection (UPR) are met, the EPO will postpone the registration of unitary effect, i.e. it will register unitary effect on or shortly after the date on which Romania's ratification of the UPCA has taken effect and communicate the date of this registration to the requester. It is reminded that the request for unitary effect must be filed with the EPO no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin (Rule 6(1) UPR).

The possibility to request a delay of the registration of unitary effect is only available until the date on which Romania's ratification of the UPCA has taken effect.