The Future of Patent protection in Europe
(… as of end 2022)

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With providing and acknowledging the legal framework for the Unitary Patent System, i.e. the EU regulations creating a European patent with unitary effect, the so-called Unitary Patent and the agreement establishing the Unified Patent Court, UPC, which will have jurisdiction over Unitary Patents and “classic” European patents, an additional route for patent protection has been opened.

Possible coverage via EPC:

Coverage via UPC:

Applicants will then have the choice between National patents, European patents and Unitary patents, the latter two having common examination and grant procedures at the European Patent Office, EPO; after grant a European patent can either be validated resulting in national parts of the patent and/or registration as a Unitary Patent can be requested (if certain requirements are met).

Comparison of present and future patent coverage available in Europe:

European Patent
Unitary patent
National Patents
Participation
38 + 6 countries
Individually selectable
17 countries (up to 24)
Unitary approach
Individual
selection
Territorial
adaptation
Possible
Not possible
Possible
Costs
(prosecution)
EPO fees
EPO fees
National fees
Costs
(renewals)
  • until grant one fee payable to the EPO
  • after grant individual renewal fees per country
  • until grant one fee payable to the EPO
  • after grant one fee (equivalent to fees for 4 countries, i.e., DE, FR, IT, NL)
    • Individual fees
    After grant
    proceedings
  • National validations + fees
  • National representatives
  • Translations
  • one request for unitary protection
  • one translation (EN, DE, or FR)
  • National fee
  • National representation
    • Litigation
  • National courts (risk of different outcomes);
  • after transition period (7y) also at UPC
  • Single supranational court (UPC) for enforcement & revocation proceedings;
  • Pan-European injunction
    • National Court
    Legal
    framework
  • European Patent Convention (EPC)
  • National Jurisdictions
  • European Patent Convention (EPC),
  • European patent with unitary effect / UPC agreement
    • National Jurisdiction

    “The UPC will be a common court of the participating member states with jurisdiction for infringement and revocation actions concerning patents granted by the EPO. This specialised court will make the Europe-wide enforcement of patents easier, offer greater legal certainty and reduce costs resulting from litigation in multiple jurisdictions.”

    (https://www.epo.org/news-events/news/2022/20220208.html)
    However, even in view of this enthusiastic official statement, it is clear that the Unitary Patent may not be the best choice for all applicants / inventions.

     

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    Comparison of present and future IP strategies available in Europe:

    Advantages / Disadvantages
    Actions:
    Unitary
    Patent
    Promising development:
  • Central and complete attack/injunction possible
  • Suitable for strong patents
  • Improved legal certainty
  • Simplified administration
  • Higher cost efficiency per country
  • Request within 1 month after decision to grant
  • Delay of decision to grant possible
    • Talk to us
    European
    Patent
    Established system for harmonised application procedure (bundle patent):
  • Reach into (in total) more countries
  • Validity/Enforcement of granted EP dependent on national jurisdiction
  • After transition period (at least 7 years) UPC will obtain jurisdiction for EP
  • During transition “Opt-out” possible to avoid jurisdiction of UPC
  • Option to opt-out from UPC competence
  • Review of patent portfolio
  • Opt-out to be requested on a single case basis by all applicants (PoA required)
    • Talk to us
    National
    Patent
    Known risks or necessities
  • Suitable if only few jurisdictions needed
  • Valuable products for whole European market (to avoid central attacks)
  • Potentially quicker prosecution than EPO (e.g. IT, BE, FR)
    • Talk to us
    Combination
    UP/EP
    Combination of Unitary patent & further EPC states to be validated
  • Reach into all countries
  • Cost effective approach
    • Talk to us
    Combination
    UP/EP or NP
    Unitary patent & EP Divisional (validated) or National Patent for separate states of exceptional importance (no exclusion of double protection)
    Talk to us

    The Unitary Patent package is not a substitute for national patents nor for the classical European patent, but an additional option for protecting of technical innovations in Europe and should be considered in your IP management strategy.

    As some of the effects of the Unitary Patent package become effective automatically, i.e., when no action is taken by the applicant, you should review your current portfolio and take the necessary steps.

     

    In case you need any help, please reach out : office@fleuchaus.com

    Michael Fleuchaus

    German and European Patent Attorney, European Trademark and Design Attorney

    Dr. Andrea Fleuchaus

    German and European Patent Attorney, European Trademark and Design Attorney

    Dr. Benjamin Grau

    German and European Patent Attorney, European Trademark and Design Attorney