Discover new possibilities for your European Patent Portfolio

If you decide protection in the form of the Unitary Patent, protection need not be requested in individual countries. This saves costs in some arrangements, in particular for translations and annual maintenance fees. Our cost calculations for the maintenance fees can be found here HERE. On the other hand, there is a slightly higher risk for patent proprietors: a Unitary Patent can be invalidated by a single successful nullity action launched before the UPC for all countries in which it is valid. A so-called “Opt-out” from the jurisdiction of the UPC is not possible.

If you have not done anything so far, your European Patent portfolio automatically falls under the jurisdiction of the UPC as from 1 June 2023. Thus, the UPC is responsible for all of your granted European Patents, during a 7-year transition period alongside the national courts. If you do not want this, you must take action and request to opt-out from UPC jurisdiction for each of your European patents. Until 1 June 2030 (which will possibly be extended to 2037), proprietors of nationally validated parts of European Patents can “opt-out” of the exclusive competence of the UPC, as long as no action has already been brought before the UPC. After the opt-out, the national court systems and the Brussels Regulation become responsible. The opt-out is only possible for “classically” validated European patents, i.e. it is not an option for a unitary patent.

When considering filing an opt-out, it is advisable to update the patent registers to show the correct owner is mentioned. The ownership of a patent can change, for example, by company takeovers, mergers or name changes. Only the actual patent proprietors can request a valid opt-out, although they need not be registered as proprietors in the official register in order to do this.

A general prohibition of double protection in Germany prevents the existence of a German patent and a European Patent covering the same invention. With the start of the Unitary Patent System, double protection is available with a national German Patent in combination with either a nationally validated European patent (“bundle” patent without opt-out) or a unitary patent (European patent with unitary effect). This has clear advantages: obtaining flanking protection with a national German property right serves as useful insurance should a nullity action be filed against the corresponding European patent before the UPC. In addition, an additional property right which can be used specifically before German infringement courts would be obtained in the patent portfolio for improved enforcement options.

It is important to pay attention to your competitors and take note as to where they are filing and obtaining granted patents. Patents held by competitors can constitute a substantial risk for your production and distribution within the EU: such risks can, however, be readily assessed and confirmed by so-called Freedom-to-Operate analyses (FTO). If potentially problematic patents or applications are identified, it may be advisable to deposit protective letters at the Unified Patent Court. A protective letter is a precautionary defence against an expected attack and is very useful for preventing surprise injunction decisions without having had the opportunity to comment on the case.