Discover new possibilities for your European Patent Portfolio

The new Unitary Patent is a genuine single right with unitary effect in all participating EU member states. The administrative costs will be lower for a Unitary Patent than for a bundle of national parts of a European patent. If patent protection is needed in more than 4 member states, annuities will also be reduced see our UP comparison calculator for annual fees.

According to Art. 142 of the EPC, the new Unitary Patent is a part of a European Patent – as granted by the EPO - with unitary effect in all participating member states. As such it may co-exist with other national or regional parts of the same European patent such as a Validation in Spain or the UK. The UK can still be covered by a European Patent. The patent owner can also choose between a Unitary patent on the one hand, and one or more national patents in the participating member states on the other hand. This opens new strategic possibilities to grow your patent portfolio.

The Unified Patent Court (UPC) is a new European court system. A decision rendered by the Unified Patent Court is valid in all 17 participating EU member states. The court of first instance consists of several local/regional divisions in various participating countries and a central division in Munich and Paris. The court of second instance is the Court of Appeal in Luxembourg. The European Court of Justice is responsible for any subsequent proceedings.

According to Art. 32 and 3 of the UPC Agreement, the UPC has exclusive competence for actions concerning (i) European patents if the owner has chosen to apply for Unitary Patents, and (ii) national parts of European patents (from participating member states) which have not yet lapsed at the time when the Agreement enters into force, and for European patent applications which are pending when the Agreement comes into force or are filed after that date for member states of the Agreement. 
 

If you do not take any action, your European Patent Portfolio will automatically become part of the new system. The UPC will gain exclusive competence over your European Patents on day 1 of the new system. If you disagree you must become active and choose the opt-out option for your European patents.

For a period of 7 (+7) years, the owners of national parts of European patents can opt out of the exclusive competence of the UPC as long as no action has yet been brought before the UPC. These patents are then still governed by the national court systems and the Brussels I Regulation, so the present system for these patents continues unchanged. The opt-out is only available for European Patents, not for Unitary Patents.

We recommend that you should consider the advantages and disadvantages of the new system before you decide whether an opt-out should be declared. If you would like to obtain advice on the opportunities and risks of the new system, get in touch with us!

In practice, the patent portfolio of any legal or natural person does often not show just one proprietor name and address as those changed in the course of the years, e.g. by acquisitions of other companies and their European Patents and European Patent applications. Whereas it is always recommendable to keep the proprietary register situation up-to-date, the “fathers” of the UPC Agreement and its procedural rules have fortunately foreseen the problems that any drifting apart of registered and factual ownership might entail. The Rules of the UPC, in this case Rule 5.1 (a) RoP, provide that where the legal or natural person lodging an application to opt-out is not recorded as the proprietor or applicant in the registers of patents maintained in each Contracting Member State in which the corresponding European Patent has been validated or, in case of a European Patent application, in the register of the European Patent Office, said legal or natural person or its representative shall lodge a declaration that said person is entitled to be registered in each Contracting Member State’s or the EPO’s patent register (Rule 5.3 (e) RoP).
 
Are you confused by the many rules? Here’s an Executive Summary:
 
1.    
There is no duty to bring the registered proprietorship situation up-to-date before lodging an opt-out, but it is highly recommendable.

2.    
At least, your European representative needs to have a written confirmation that the legal or natural person instructing the opt-out of a European Patent or Patent application is entitled to be registered as its owner, as the representative will have to provide said declaration.

3.    
Thus, care should be taken that any opt-out application will only be valid if filed by or on behalf of the factual proprietor, which, however, may be different from the registered proprietor.
 
 

The unitary patent and the unified patent court & jurisdiction are fast approaching with preparatory work for the establishment of the new Unified Patent Court already in full swing.
Everything now depends upon the deposit of Germany's instrument of ratification. This is expected in the autumn of 2022.
 
What should you be considering now, if you expect a European patent to be granted in the near future?
  
1.    
According to Rule 6(1) of the Implementing Regulations for the Unitary Patent Protection (Regulation (EU) 1257/2012), within one month from the date of publication of the mention of the grant of a European patent in the European Patent Bulletin, you may file a request for unitary effect of the patent in all, currently 17, EU member states which have acceded to the system of unitary patent protection.
 
This request must contain, among other things, a translation of the European patent as follows: 
- if the language of the proceedings before the European Patent Office is French or German, a complete translation of the patent specification into English, or
- if the language of the proceedings before the European Patent Office is English, a complete translation of the patent specification into any other official language of the EU, e.g. into German.
 
2.    
The above rule shall apply from the date of entry into force of the Agreement on the Unified Patent Court (UPC). This enters into force on the first day of the fourth month after the deposit of the 13th instrument of ratification according to Art. 89(1) UPC. The only thing currently missing is the deposit of Germany's instrument of ratification. This is expected in autumn of 2022, so that the UPC system will become effective at the beginning of 2023 at the latest.
 
3.    
In view of this schedule, and in order to give Applicants of European patent applications the possibility of obtaining unitary patent protection, the decision of the President of the European Patent Office of December 22, 2021, indicates that it is possible, after receipt of the communication according to Rule 71(3) EPC together with a printed copy of the documents intended for the grant of the patent (claims, description, drawing), to file a request for postponement of the decision of grant of a European patent. 
 
Please note: this request can only be filed from the date on which Germany has deposited the instrument of ratification of the UPCA pursuant to Art. 84 UPCA.
 
Since this is not expected until autumn 2022, our recommendation is as follows, provided that a notification according to Rule 71(3) EPC is expected now or in the near future:
  
Shortly before the expiry of the 4-month period for replying to the communication under Rule 71(3) EPC, file a reasoned request for (marginal) amendments or corrections to the documents intended for grant under Rule 71(6) EPC, so that a new communication under Rule 71(3) EPC is issued, again setting in motion a 4-month period for reply. This would gain a total of up to 8 months in the hopes that by then Germany has deposited the instrument of ratification and a request for postponement of the decision on grant of the European patent can be filed. 
 
4.    
It should be noted that the request for a delay in issuing the decisions to grant a European patent must be filed before the date, or at most on the same date, on which the consent to the documents sent with the communication under Rule 71(3) EPC and intended for the grant of the patent is declared. 
 
5.    
Moreover, according to the President's decision of December 22, 2021, it is also possible to file a so-called: early request for unitary effect from the date on which Germany has deposited the instrument of ratification of the UPCA. A prerequisite for this is also that a communication under Rule 71(3) EPC is available. 
 
In order to obtain this option, one should also consider filing a substantiated request for (marginal) amendments or corrections of the version of the European patent application intended for grant after receipt of the communication according to Rule 71(3) EPC, in order to gain another 4 months for a decision on the further prosecution of the application as a so-called "unitary patent". 
 
 
 
 

In principle, unitary effect for a European patent (i.e. a Unitary Patent) can only be requested for those European patent applications which are granted on or after the date of entry into force of the UPCA. The request for unitary effect may then be filed within one month from the date of publication of the mention of grant in the European Patent Bulletin. In order not to force applicants to artificially delay the grant of a patent, the European Patent Office (EPO) has decided on two transitional measures to obtain a Unitary Patent, which applicants can take during the final stage of the examination proceedings already before the start of the Unitary Patent system.

The transitional measures will be applicable for European patent applications for which a communication under Rule 71(3) EPC has already been issued on the date on which Germany deposits the instrument of ratification of the UPCA. On the first day of the fourth month after the deposit, the UPCA will enter into force and the Unitary Patent system will start. However, for all patent applications for which the time limit set in the communication under Rule 71(3) EPC expires before the date on which Germany deposits the instrument of ratification, the transitional measures will not be applicable.

1) Request for a delay in issuing the decision on grant

The first transitional measure is the possibility of requesting a delay in issuing the decision to grant (OJ EPO 2022, A4 and A5). This measure is useful if the expected date of grant would be before the start of the Unitary Patent system and the applicant would consequently miss the opportunity for Unitary Patent protection.

If the applicant has already received the communication under Rule 71(3) EPC, but has not yet indicated agreement with the text intended for grant, a request for a delay of the decision to grant may be filed. The request may be filed from the date on which Germany deposits the instrument of ratification of the UPCA until the start of the unitary patent system. The EPO will then delay the decision to grant until a date after the start of the Unitary Patent system, so that the applicant can file a (regular) request for unitary effect. The request for a delay of the decision and the agreement with the text under Rule 71(3) EPC may be filed or notified on the same day. The EPO will provide Form 2500 for this purpose.

2) Early request for unitary effect

The second transitional measure is the possibility to file an early request for unitary effect (OJ EPO 2022, A6). This measure is particularly useful if the date of grant will be after the start of the unitary patent system, but the agreement to the text intended for grant according to the communication under Rule 71(3) EPC is declared before the start of the Unitary Patent system. However, an early request for unitary effect may also be filed in addition to the request for a delay of the decision on grant (first transitional measure).

For applications for which the communication under Rule 71(3) EPC has already been issued, a request for registration of unitary effect can be filed before the start of the unitary patent system. The request may be filed from the date on which Germany deposits the instrument of ratification of the UPCA until the start of the unitary patent system. If the request contains deficiencies, the EPO will inform the applicant ahead of time and give him the opportunity to correct it. The EPO provides Form 7000 for filing the request. 

The EPO provides examples of both transition measures at the following link:
https://www.epo.org/applying/european/unitary/unitary-patent/transitional-arrangements-for-early-uptake.html
 

At present, the prohibition of double protection according to Art. II § 8 IntPatÜbkG (Act on International Patent Conventions) has prevented the same inventor or his legal successor (i.e. applicant) from obtaining double protection for the same invention by means of a German patent and a European patent claiming the same priority with effect in Germany. This will change with the start of the unitary patent system, i.e. with the entry into force of the UPCA (Agreement on a Unified Patent Court).

Once the new unitary patent system is in place, the prohibition of double protection will only apply to those European patents for which a so-called “opt-out” has been declared according to Art. 83(3) UPCA, i.e. granted European patents over which the Unified Patent Court (UPC) does not have jurisdiction. However, for nationally validated European patents (bundle patents) for which no opt-out has been requested and for European patents with unitary effect (unitary uatents), double protection will be possible.

Double protection has clear advantages:

1.    Flanking protection by a national German patent can serve as insurance in case of a possible nullity action against the corresponding European patent (bundle patent without opt-out) or unitary patent before the UPC.

2.    For enforcement purposes, there is an additional and valuable right in the patent portfolio that can be used specifically before German infringement courts. However, in terms of procedural law, the defense of double claiming pursuant to Art. II § 18 IntPatÜbkG, if infringement proceedings are already pending or have been decided before the UPC on the basis of a European patent (bundle patent without opt-out) or a unitary patent, will be available.

3.    The proven application strategy of first filing a national German application and subsequently a European application, can now result in double protection, should it not be possible to obtain a broader or different (aliud) scope of protection with the German patent compared with the European patent. 

Two transitional measures by the GPTO for a delay of the grant

Should a European patent have granted by the time the unitary patent system comes into force, double protection can only be obtained if the German patent is granted after the UPCA comes into force. In order to provide applicants with the possibility of benefitting from double protection based on German applications that are currently still in the examination procedure, the German Patent and Trademark Office (GPTO) has adopted two transitional measures to allow for deferment of the grant of a patent (see Communication No. 6/22 of the President of the GPTO: 
https://www.dpma.de/english/our_office/publications/notices_of_the_president/no_06_2022.html).

Provided that a request for examination under § 44 PatG (Patent Act) has already been filed, the applicant may file the following requests:

1)    Request for extension of the time limit: If a time limit set by the examining division for replying to a communication under §§ 44, 45 PatG has not yet expired, this time limit may be extended upon request.

2)    Request for deferment of the decision to grant: Provided that a time limit set by the examining division has been observed by replying to an communication under §§ 44, 45 PatG, the decision on the application may be deferred upon request. The request must be received by the GPTO before the decision to grant is issued.

These transitional measures apply until the start of the unitary patent system. The extension of the time limit and the deferment shall initially not exceed eight months and, if Germany has deposited the instrument of ratification under Art. 84 UPCA, four months. When filing the request, the GPTO is to be informed of the publication number of the corresponding European patent.