Back to national filings? A little help for sceptics of the unitary patent

Published on: 09 December 2013
by Dr. Malte Köllner, Head of Dennemeyer Foreign Filing

Whether justified or not – that remains to be seen – there are concerns that the enforcement of unitary patents will be far slower, more expensive and more unpredictable than has been the case with patents in Germany up to now. Some sceptics are already advising their clients to avoid European patents and revert to national filings. Whether or not this makes sense will be briefly clarified here.

Is it really advisable to file nationally again within Europe? After all, the objective of this approach is to keep the German or other national infringement courts for litigation. However, in the Agreement on a Unified Patent Court (UPC) there are a few relevant regulations concerning this question.

Once a European patent has been granted, the validity of the unitary patent can be requested for all states of the EU that have ratified the UPC up to that point, meaning those for which the UPC agreement and the EU regulation[1] are in effect. This request must be submitted to the EPO - together with a translation[2], at least for the time being - within one month following the mention of grant (Art. 9 Sec. 1 g), Regulation (EU)).

But that is only an option. You don’t have to do it. You can stay with the “classic” European patent and validate traditionally[3]. You will do this anyway if you only want protection for a few countries, since the unitary patent will only pay off if there are four or five countries or more, the exact number of countries depends on the office fees, which are still under discussion.

Now, the unified patent court system is also valid for “classic” European patents (Art. 32 tog. with Art. 2, letters e), f) and g), UPC Agreement). That is precisely what makes up the compulsory nature of the new court system.

However, it is possible to choose to opt out under Art. 83, Sect. 3, UPC. You can declare before the Registry of the court that you wish to stay with the old court system. And this can be done up to one month prior to the end of the transitional period pursuant to Art. 83, Sect. 1 or 5 UPC (Art. 83, Sect. 3 UPC).

And you can even declare this opt-out for European patent applications (Art. 83, Sect. 3, Sentence 1 UPC)!

This means you can still file an application(!) for a European patent several years from now, until shortly before the transitional period expires, and still keep the old court system for this patent application all the way to the end of the life of the patent.

Now you have to exercise a bit of caution with "classic" European patents that have already been granted. If an infringement case is brewing, the potential infringer can force the patent proprietor into the new system by taking legal action. That's because the opt-out opportunity is available only as long as no litigation is pending (see above, Art. 83, Sect. 3, Sentence 1 UPC): "Unless an action has already been brought before the Court.”. So in a situation like this you have to take the first step yourself; if you want to stay with the old court system, then you have to opt out on time. In such a situation it is risky to wait until the end of the transitional period.

Of course this situation doesn’t exist for new applications. This means that the opt-out should be requested without delay for all already granted European patents and still pending European patent applications. For all new European patent applications filed in the future it would be best to opt at an early date as well, for instance as soon as the file number is known. And this procedure can be pursued up to one month before the end of the transitional period.

Therefore, at least for the next seven years and probably much, much longer, for instance for the next 10 years, it will be possible to keep the previous way of handling European patent applications. If the ratification process is drawn out, say, for seven more years, and if the transitional period of seven years is extended by another seven years (Art 83, Sect. 4 UPC), then we are talking here about three times seven years.

The opt-out can be withdrawn at any time (Art 83, Sec. 4 UPC). You could call that an opt-in. The proprietors retain all possibilities for choosing a court. And this is a clear advantage of European filings over national filings: No one who files nationally can choose the opt-in, not even if the new court system proves to be very useful. That is only possible for European applications.


[1] By EU regulation we mean Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012, implementing enhanced cooperation in the area of creation of unitary patent protection.

[2] Recitals 12 and 13 as well as Art. 6 of Regulation (EU) No 1260/2012 of the Council of 17 December 2012, implementing enhanced cooperation in the area of creation of the unitary patent protection with regard to the applicable translation arrangements

[3] Recital 26, Regulation (EU)