Can I delay my request for unitary effect to include Romania?

On 31 May 2024, the Government of Romania deposited its instrument ratifying the UPCA (Unified Patent Court Agreement) with the Council of the European Union. This means that Romania’s accession will take effect on 1 September 2024, i.e. on the first day of the fourth month after the deposit of the ratification instrument.

From that date onwards, the Unitary Patent system will cover 18 EU Member States, and a second generation of Unitary Patents will thus be launched. However, the territorial coverage of a given generation of Unitary Patents does not extend to Member States that ratify the UPCA after the EPO has registered unitary effect. In other words, the wider territorial coverage will not apply retroactively to Unitary Patents registered by the EPO prior to 1 September and so the first generation of Unitary Patents will not extend to the territory of Romania.  

To benefit from the broader coverage offered by the second generation of Unitary Patents, users can request a delay in the registration of unitary effect (see notice from the EPO dated 5 June 2024, OJ EPO A61). They must expressly request this delay together with their request for unitary effect, preferably in the annotation field of the online request form (Form 7000) but otherwise under separate cover. When the EPO receives a request for unitary effect accompanied by a request for a delay in registration, it will process the request for unitary effect but, if it takes a positive decision on this request, it will not register the unitary effect until early September 2024. It will not inform the requester whether the request for a delay has been accepted. 

A request for a delay in registration can be withdrawn by sending a written communication to the EPO as long as the request for unitary effect is still being processed by the Unitary Patent Protection Division. If a request for a delay is withdrawn, the standard procedure for examining and registering the request for unitary effect will resume.  

As a reminder, 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 and must meet the requirements provided for in the Rules relating to Unitary Patent Protection.