Strategic considerations
The introduction of the Unitary Patent System paves ways for taking many different routes towards a European patent strategy.
Patent law and jursidiction
Multiple different choices can be made with regard to the nature of the patent right and with regard to the jurisdiction.
With regard to the nature of the patent rights, the Unitary Patent (UP) will coexist with national patents and utility models as well as with traditional European bundle patents.
Regarding jurisdiction, traditional European bundle patents can be kept in the jurisdictions of the established national courts by means of the opt-out or can be made accessible to the new Unified Patent Court (UPC). However, UPs will be in the jurisdiction of the UPC and national patents and utility models will remain in the jurisdiction of the national courts.
The UP can be combined with national patents or utility models, which allows to have the same technology be handled by different jurisdictions for the same states.
The UP can also be combined with traditional European patents, such as UP for the participating EU member states and traditional European patents for the non-participating EU member states and for non-EU EPC member states.
Instead of UPs, national and traditional European bundle patents remain available also for the participating EU member states.
On top of that, European divisional applications can be treated differently compared to their parent application, which allows for additional strategic options in terms of which patent right to choose and which jurisdiction to select for the same technology.
General information on the choice of patent law
To shine some light on which patent right to choose, please note the following general information. However, the exact choice depends on the particular case and should be made only after obtaining personal legal advice.
National patents and utility models enable to have the technology treated within the established national courts also beyond the end of the transitional period after which all European patents would fall in the jurisdiction of the UPC, unless opted-out beforehand during the transitional period. The securing of access to the national courts be established via the national rights in parallel with European or Unitary Patents by way of claiming priority, parallel national phase entries or parallel national filings.
For EPC states not participating in the new Unitary Patent System, the traditional European bundle patent would still be the choice in parallel with national patent rights. The traditional European bundle patent is also the choice for the participating EU member states when the patent strategy is to be kept as in the past, namely validate in several EPC states and manage national parts of the European bundle patent individually. This may be the choice for important patents, for which products and/or license agreements are available. This choice is also cheaper than the Unitary Patent when only up to 3 or 4 EPC states are to be validated and also makes sense when future dropping of individual national parts of a European patent is of interest. European bundle patents can be opted-out to avoid a combination of the disadvantages of the respective systems: Even though validation in several states has been performed, allowing for a central attack at the UPC and loss in all validation states at the same time by not opting out. Strong European bundle patents can be made subject to the UPC to contribute to jurisprudence of the UPC, while keeping the risk of a central revocation low.
The Unitary Patent has the potential to save costs, because the costs associated with payment of renewal fees and validation for multiple validation states can be avoided. However, the UP will only bring cost savings if one would otherwise validate the European patent in four or more EPC states. The more states one normally validates and the longer the lifetime, the larger the cost saving are with the UP. However, no dropping of validation states is possible for the UP, so that the costs savings also come with a loss in some of the strategic options. The UP might provide cost savings in case litigation cases in several different countries are expected. However, the UP has the risk of a central attack and loss of the UP in all states at once.
Thus, national patents and utility models may be combined with European or Unitary Patents, whereas the exact choice of the two types of European patent rights depends on various factors. We will be happy to advise you on finding the “right fit” to you.
