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UNITARY PATENT AND
UNIFIED PATENT COURT

www.bardehle.com

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CONTENTS

5
1. The patent-reform package
6		
1.1 Legal basis
6		
1.2 The legal instruments6			
1.2.1 The Regulation on the unitary ­patent (UPR)8			
1.2.2 The Regulation on the translation arrangements for the unitary patent (UPTR)
8
1.2.3 The Agreement on a Unified Patent Court (UPCA)  
8		
1.3 Entry into force and application of the provisions
9
2. The Unified Patent Court (UPC)9		
2.1 Organization
11
2.2 Competence
13
2.3 The judges of the UPC
132.3.1 Composition of the panels
14
2.3.2 Qualification and selection
14		
2.4 Procedure14			
2.4.1 Language of proceedings
14			
2.4.2 Rules of Procedure15			
2.4.3 Representation15		
2.5 Stages of the proceedings15			
2.5.1 First instance proceedings and timing15			
2.5.2 Appeal procedure – basic outline
16
2.6 Costs
18		
3. Patentees
18
3.1 Cost benefits of the unitary patent18			
3.1.1 Renewal fees18			
3.1.2 Validation
19			
3.1.3 The relevant comparison
20
3.2 National jurisdiction or Unified ­Patent Court
20		
3.3 The bundle patent – opt-out and opt-in

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The Agreement on a Unified Patent Court(UPCA) was signed on February 19, 2013. While
the two EU Regulations which are part of thereform package in addition to the Agreement
on a Unified Patent Court (UPCA) became
effective upon promulgation in January 2013,
the UPCA required the ratification by at least
13 member states, including France, Germany,
Italy (originally: the United Kingdom). BREXIT
was not the only stumbling block on thepath to the Unitary Patent. After the German
Act on the Ratification of the UPCA had
first been rescinded by the German Federal
Constitutional Court (FCC) in February 2020,the legislative process was re-initiated and thistime, the FCC gave permission, dismissing two
additional requests for a preliminary injunction.
This paves the way for an exciting joint projecton which the European Patent Community has
been working for decades.

UNITARY PATENT AND
UNIFIED PATENT COURT

Upon Austria’s ratification on January
18, 2022, the Protocol on the Provisional
Application of the UPCA became effective on January 19, 2022, establishing
the Unified Patent Court (UPC) as aninternational organization. During thecurrent preparatory phase which willend in fall 2022, the judges are appointed
and trained in particular. As soon as the
preparations are concluded, Germany
will deposit the instrument of ratification
for the UPCA and start the countdown.
During the sunrise period that will follow
and last at least three months, patentees
will have the possibility of withdrawing
their European patents from the jurisdiction of the UPC by means of an opt
out, before filing actions with the UPC
becomes possible. This period will befollowed by a further transitional period of at least seven years during which
national courts and the UPC will haveconcurrent jurisdiction, before the UPC
will have exclusive jurisdiction with5

respect to the infringement anddeclaration of invalidity of European
patents.
1. The patent-reform package
Various attempts to create a community
patent, i.e. a patent of the Union which
is self-contained in respect of grant andvalidity, have been made since the late
fifties of the last century and turned out
to be in vain. Over the decades, the maincontested issues were a common court
system and the language problem, whichis always a delicate question in Europe,in the present context regarding thequestion into which languages the patenthas to be translated.
One essential reason in favor of the present
reform package was the decision to link the new
EU title to the grant procedure before the EPO
in the simplest manner possible and make it an
option for applicants.

1. The patent-reform package

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1.1 Legal basis

1.1 Legal basis

1.2 The legal instruments
1.2.1 The Regulation on theunitary ­patent (UPR)

The creation of the unitary patent required three legislative acts which constitute the patent-reform package, that is― the Regulation on the unitary patent(hereinafter UPR),― the Regulation on the language regime forthe unitary patent (hereinafter UPTR),― the Agreement on a Unified Patent Court(UPCA).1

The two Regulations were published on December
31, 2012.2  The UPCA was signed by 24 of the then
27 EU States on February 19, 2013.3
1.2 The legal instruments
The unitary patent is not granted by an EU authority but by the EPO. The EPO is the executive
organ of the European Patent Organisation
which is an independent international organisation.
The unitary patent system has been realized bythree different legislative acts because there aredifferent legislative competences for the different subjects.

1

1.2.1 The Regulation on the unitary­patent (UPR)
The UPR governs in particular the creation,
the validity and the effects of the unitary
patent. Unitary patent protection is offered tothe applicant as an option which is an alternative to the traditional and well established
European bundle patent having the effect of anational patent in the designated Contracting
States. This option can be chosen at the end of
the grant proceedings. After publication of themention of the grant, the proprietor has one
month within which to decide whether theywant to file a request for unitary effect. If sucha request is not filed, the effect of the bundle
patent persists.
The unitary patent shall have a unitary character. It can only be limited, transferred or  
revoked, or lapse, in respect of all the states inwhich it has taken effect.
Notwithstanding the unitary character of theunitary patent, it may be licensed in respect of
the whole or part of the states in which it has
taken effect.
In order to maintain the unitary patent, renewal
fees have to be paid to the EPO. The amounts are
fixed by a Select Committee of the Administrative
Council of the EPO in which the states participating in the enhanced cooperation are represented.

OJ EPO 2013, 287.
Regulation (EU) No 1257/2012 of the European Parliament and the Council of December 17, 2012 implementing enhanced in
the area of the creation of unitary patent protection and Council Regulation (EU) No 1260/2012 of December 17, 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation
arrangements, OJ EU L 361 of December 31, 2012, p. 1 and p. 89.
3Out of the 26 countries participating in the enhanced cooperation for the time being, Poland has not signed so far. Spain is not participating in the enhanced cooperation. Italy signed the Agreement, although it decided to participate in the enhanced cooperation only later on.
2

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1.2.2 The Regulation on thetranslation arrangements forthe unitary patent (UPTR)
1.2.3 The Agreement on a
Unified Patent Court (UPCA)  
1.3 Entry into force andapplication of the provisions

On the one hand the UPR stipulates that theunitary patent shall provide uniform protection
and shall have equal effect in its whole territory, on the other hand the Regulation refers tonational law in respect of the acts against which
the patent provides protection. However, this»national« law is the law laid down in Article
25 et seqq. UPCA which is again common to theparticipating states. As a supplement, the UPR
confirms the principle of Unionwide exhaustion
as developed by the CJEU. This means that thepatentee cannot take action against the circulation of goods within the participating Member
States which have been placed on the market in
the Union by them or with their consent.
The UPR stipulates in detail which administrative tasks are entrusted to the EPO. Among
those are in particular administering therequests for unitary effect, keeping a Registerfor unitary patent protection as part of theEuropean Patent Register and the collecting anddistribution of renewal fees.
1.2.2 The Regulation on the translation
arrangements for the unitary patent(UPTR)The reform package does not entail any changes
for the grant procedure: The European patentapplication may be filed in any language; however, one version in one of the official languages
English, French, or German has to be filed at
any rate. Additionally, the claims must be filed
in all three official languages.

In case of an infringement dispute, the patentee
has to provide the alleged infringer at their request and choice a full translation of the unitary
patent in the language of the state of the alleged
infringement or the state of the alleged infringer’s domicile. In addition, the competent court
may require a full translation in the language
used in the proceedings before that court.
1.2.3 The Agreement on a Unified Patent
Court (UPCA)The UPCA establishes the Unified Patent Court
as a common court for the Member States to
the Agreement comprising two instances. The
Member States confer on the Court the exclusivecompetence for actions for the infringement andfor the declaration of invalidity of a European
patent (see item 2 for details).
1.3 Entry into force and application of theprovisions
Both regulations, UPR and UPTR, entered into
force on January 20, 2013.
The UPCA will become effective on the first dayof the fourth months after Germany depositedthe instrument of ratification. The ratification
by Germany - one of the three Member Stateswith most European patents - is an imperativerequirement of the UPCA to become effective(Italy replaced the United Kingdom after BREXIT). The other requirements, particularly theratification by at least thirteen Member States,
have already been met.

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Even after entry into force of the UPCA, theunitary effect of a unitary patent will be restricted to those Member States in which the Unified
Patent Court has acquired jurisdiction at thedate of registration of the unitary effect of therespective European patent.
This means that there will be no unitary effect forstates participating in the enhanced cooperation
which have not yet ratified the UPCA after its entry
into force. It cannot be assumed that all signatory
states will ratify the UPCA at the same time. Thus,
the patent-reform package will become applicablestep-by-step, depending on the state of ratification of the UPCA, and at the outset only for the 17
states if Germany is the next state to ratify.
2. The Unified Patent Court (UPC)
2.1 Organization

The Court of First Instance comprises
three types of divisions:― the central division,― local divisions set up upon request of a
Member State, and― regional divisions set up upon request of
two or more Member States

potential location for another section becauseof BREXIT, the Italian government suggested
Milan as a replacement. The competence within
the central division will be distributed based on
the main sections of the International PatentClassification; for instance, the section in Munich will be competent to hear cases regarding
section F (mechanical engineering, lighting,heating, weapons, blasting).
It is up to the signatory states to decide in whichstates local and regional divisions will be set up.
Not all states have finally made up their mind.4
Currently (updated in March 2022), Austria,
Belgium, Denmark, Finland, France, Germany, Italy, the Netherlands, and Portugal haveeach declared their willingness to set up local
divisions. In Germany, there will be four local
divisions, one each in Dusseldorf, Hamburg,
Mannheim and Munich. Sweden, Estonia,
Latvia and Lithuania have concluded an agreement on the creation of a Nordic-Baltic division
having its seat in Stockholm. Further local andregional divisions may be set up.
The seat of the Court of Appeal is Luxembourg. A third instance dealing only withquestions of law is not foreseen. Contested
questions of the interpretation of EU law haveto be clarified by preliminary rulings of theEuropean Court of Justice.

The central division will be located in Paris(France) and have a section in Munich (Germany). After London (UK) was eliminated as a4

An overview of confirmed court locations that is continuously updated is available at https://www.unified-patent-court.org/
locations.

2. The Unified Patent Court(UPC)
2.1 Organization

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2.2 Competence
The UPC has jursidiction over infringementcases and the question of validity regarding
European patents, i.e., unitary patents and“classic” bundle patents.
Within the Court of First Instance, the local
or regional division of the state of the alleged
infringement and those of the state of theresidence of the defendant are competent. If
the defendant has no residence in any Member

State, the central division is also competent.
The latter is also competent where there is no
local or regional division for the state in which
the infringement allegedly took place.
As a rule, only the central division is competent for actions for revocation and for declaration of non-infringement. A counterclaim forrevocation may be raised before the division before which an infringement action ispending; this may be a local, a regional or thecentral division.

2.2 Competence

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Having heard the parties, a local
or regional division may― proceed with both the action for
infringe- ment and with the counterclaim for revocation;― refer the counterclaim for revocation
to the central division with thepossibility of staying the proceedings; or― with the agreement of the parties,
refer the whole case to the central
division.

If the local or regional division proceedswith the revocation case itself, it is enlarged
by a technically qualified judge.
In case an action for revocation is pending
before the central division, a local orregional division remains competent fora subsequent infringement case. In
parallel, also the central division is competent. After an action for declaration of
non-infringement before the central
division, an action for infringement canbe brought before a local or regional
division with the consequence that theproceedings before the central division
shall be stayed.
If opposition or limitation proceedings
are pending before the EPO, the Court
may stay its proceedings, without being

obliged to do this. This means that –different from German law – opposition
proceedings do not block the possibilityof filing an action for revocation.

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2.3 The judges
2.3.1 Composition of the panels
Any panels of the UPC shall have a multinational composition and shall be chaired by a legallyqualified judge.
As a rule, the panels of the local and regional
divisions sit in a composition of three legallyqualified judges.
Upon request of a party, any panel of a local

or regional division requests the allocationof a technically qualified judge. It may makesuch a request of its own motion. The central
division sits in a composition of two legallyqualified judges of different nationality and atechnically qualified judge.
The Court of Appeal sits in a composition of
three legally qualified and two technicallyqualified judges. The judges may be fulltime or part-time judges. The latter will
be particularly significant for the settingup period.

CJEU
prelimiaryrulings on EU law

Court of Appeal
Luxemburg
2nd Instance

Court of First Instance

Local Divisions

Regional Divisions

Central Division
PARIS

for single states

for two or more states

IPC,

B, D, E,
G, H

MUNICH
IPC
F

2.3 The judges
2.3.1 Composition of thepanels14

2.3.2 Qualification andselection

2.3.2 Qualification and selection

2.4 Procedure

The Administrative Committee foreseen in the
UPCA decides on the appointment of the judges.
It takes its decisions on the basis of a list of
candidates established by an Advisory Committee comprising patent judges and practitioners
experienced in patent law and patent litigation.

2.4.1 Language of proceedings
2.4.2 Rules of Procedure

al languages. The majority of states will allow
the use of English as an additional language.
This takes into account that two thirds of theEuropean patents are granted in English.
With the agreement of the division, the parties may choose the language of the granted
patent. If the Court disagrees, the parties may
request that the case be referred to the central
division. The language of the proceedings
before the central division is the language ofthe granted patent.
Before the Court of Appeal, the language of theproceedings remains the same as in first instance proceedings, unless the parties agree on
the use of the language of the granted patent.

Judges shall ensure the highest standards ofcompetence and shall have proven experiencein the field of patent litigation. However, thenecessary experience may be acquired by training foreseen in the Statute. In accordance with
Article 19 UPCA, a training centre has been set
up for this purpose at Budapest. As usual in EU
institutions, the principle of geographical distribution is a very important selection criterion.
2.4 Procedure
2.4.1 Language of proceedings
As a rule, the language of proceedings before
a local or regional division is the official
language of the state hosting the division. The
respective state may allow the use of addition-

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The Agreement allows for some flexibility ifother language arrangements appear to beappropriate in particular situations.
2.4.2 Rules of Procedure
It is the task of the Administrative Committee
to adopt the Rules of Procedure of the UPC
on the basis of a broad consultation with thestakeholders. The 18th and final draft5 which
has taken the results of a public consultation
into account comprises some 382 Rules. Interalia, they are dealing with the different typesof actions, the different stages of the proceedings, the role of the judge rapporteur, the casemanagement by the judge rapporteur and thechairman, the means of evidence, the conductof oral proceedings, provisional measures,
appeals and fees.

https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf, last modified version: March 15, 201715

2.4.3 Representation
In proceedings before the UPC, parties haveto be represented by a lawyer. Representation
may be undertaken by lawyers entitled to act
before a court of a Member State or by European Patent Attorneys having appropriate qualifications such as a European Patent Litigation
Certificate.
2.5 Stages of the proceedings
2.5.1 First instance proceedings andtimingProceedings before the Court of First Instanceconsist of several stages. As a rule, the final
oral hearing should take place within one
year.
The first stage consists of written proceedings
in which normally two briefs from each side
are exchanged within a rather strict timetable.
The pleadings are to be submitted in electronic form, unless this is not possible for any reason. The written proceedings should normallynot exceed eight to nine months. This stage isconducted by the judge rapporteur.
The second stage is the interim procedure,
also conducted by the judge rapporteur. It
intends to comprehensively prepare the casefor the oral hearing and to clarify the position of the parties in respect of the contested
relevant main issues.

To this end, the judge rapporteur may holdan interim conference which may take place
as a telephone or video conference. This stage
should be finished within three months.
As the next step, the judge rapporteur summons the parties to the oral hearing and informs the presiding judge of the closure of theinterim procedure. From this point in time,
the presiding judge takes over the management of the case. The oral hearing takes place
before the panel and should be completed
within one day. The decision on the merits ofthe case should be given as soon as possible
after the oral hearing; in exceptional cases it
may be pronounced immediately after the oral
hearing. The written and reasoned decision on
the merits should be issued within six weeks
from the oral hearing.
2.5.2 Appeal procedure – basic outline
All final decisions and orders of the Court ofFirst Instance are subject to appeal. Any party
may appeal if it is adversely affected, i.e. if its
requests turned out to be unsuccessful. The
statement of appeal against a final decision
has to be filed within two months and thestatement of grounds of appeal within fourmonths of its notification. The appeal may
be based on points of law and points of fact.
New facts and evidence may only be introduced where the submission thereof could notreasonably have been expected during first instance proceedings. An appeal has no suspensive effect unless the Court of Appeal decides

2.4.3 Representation
2.5 Stages of the proceedings
2.5.1 First instance proceedings and timing
2.5.2 Appeal procedure - basic
outline16

2.6 Costs

otherwise on a party’s request. In principle,
the conduct of appeal proceedings
is similar to first instance proceedings.
Also in second instance the judge rapporteur
prepares the case for the oral hearing. At
the end of the proceedings, the Court ofAppeal takes a decision on the merits of thecase. In exceptional cases, the Court may
refer the case back to the Court of First
Instance.
According to the Rules of Procedure,
certain procedural orders are always
subject to appeal, others only if the Courtof First Instance grants leave. If a request
to grant leave is refused, a request for a discretionary review to the Court of Appeal
is available.

for revocation it is EUR 11,000. In addition,
the value based fee has to be paid, for thecounterclaim for revocation only up to
the ceiling of EUR 20,000. The amountfor the appeal fee is for most cases
EUR 11,000, plus the value based fee.
In accordance with Article 69 (1) UPCA, thelosing party has to pay “reasonable and proportionate costs and other expenses incurredby the successful party, unless equity requires
otherwise”. At the request of the winning party, the Court renders a cost decision. Different
from the court fees, costs for parties’ own
expenses and attorney’s fees are not calculated on the basis of the value of the action.
The main part will be the bill of the successful
party’s attorneys, in patent litigation usuallybased on hourly rates.

2.6 Costs
In proceedings before the UPC, court fees
have to be paid. These fees are comprisedof a fixed fee and a value-based fee. The
fixed fee for the infringement action, theaction for declaration of non-infringement
and some other actions and applications is
EUR 11,000. It is supplemented by the value
based fee which starts at EUR 2,500 for thevalue of action above EUR 500,000 and has
its maximum amount of EUR 325,000 for
the value of action above EUR 50,000,000.
For interim relief, including applications for
an interim injunction, there is a fixed fee of
EUR 11,000. The fixed fee for the revocation
action is EUR 20,000, for the counterclaim

There are two limits: First, the costs must be
reasonable and proportionate, and second,
Article 69 (1) UPCA in conjunction with table
for recoverable costs provides for a ceilingfor the costs to be paid by the losing party
for each instance of the Court proceedings.
The scale starts at recoverable costs up to
EUR 38,000 for the value of action up to
EUR 250,000 and ends at recoverable costs
up to EUR 2,000,000 for the value of action
above EUR 50,000,000.
This means that the litigation cost risk in the
UPC system will be much higher than before
most European national courts in national
litigation.

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already ratified AT, BE, BG, DE, DK, EE, FI, FR, IT, LT, LU, LV, MT, NL, PT, SE, SI
in the process of ratifying GR, RO
decided not to ratify/ outside enhanced cooperation ES, PL, HR
no steps for ratifying CY, CZ, HU, IE, SK
EPO member states outside EU

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3. Patentees
3.1 Cost benefits of the unitary
patent

3. Patentees
3.1 Cost benefits of the unitary patent3.1.1 Renewal fees
3.1.2 Validation

For the sake of clarity, it has to be notedin advance that the European bundle
patent will remain effective even if a request for unitary effect has been filed for― the Contracting States of the EPC which
are not EU Member States,― the EU Member States which are notparticipating in the enhanced cooperation, and― the participating Member States in which
the UPCA has not yet entered into force.

For all three groups of states, only the traditional bundle patent remains applicable.
Thus, no cost benefits can arise for thesestates. Switzerland and Spain, as well as theUK, belong to the first and second group.
The potential benefits for the third group aredetermined by the successive ratifications of
the UPCA.
3.1.1 Renewal fees
It is apparent that the unitary patent will
significantly simplify the payment of annuities.
Presently, all Contracting States of the EPC
require the annual payment of renewal fees.
A plurality of formal requirements is applicable. Such requirements differ from country

6

to country, (may) change on a regular basis
and pertain to types of payment, accounts oramounts of fees or specific rules of representation for payments, for example.  In contrast, asingle renewal fee is payable to the EPO for theunitary patent.
The calculation of future renewal fees is basedon the »True Top 4« model.6 It is based on theprinciple that the renewal fees for the unitary
patent should correspond to the total sum of
renewal fees currently paid for the four mostfrequently validated countries (DE, FR, NL,
UK). So far, the Brexit has not yet been considered as a reason for recalculating the renewal
fees. The amounts start at EUR 35 for the 2ndyear, exceed the threshold of EUR 1,000 after
the 9th year and end at EUR 4,855 for the
20th year. Over the whole term they sum up to
EUR 35,555. For the first ten years the total is
EUR 4,685.
3.1.2 Validation
As compared to a traditional bundle patent,
costs of validation may be eliminated withthe unitary patent. Such costs are comprisedof the costs of translation, costs of the required representation by a national representative, and fees for the filing with thenational Office.
Pursuant to Article 6 UPTR, a full translationof the granted patent has to be filed with the
EPO during the transitional period of at least
six and no more than 12 years (see item 1.3.2).

For the amounts in detail, see the schedule of renewal fees in Art. 2 RFees for Unitary Patent Protection, OJ EPO 2016, A 40

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3.1.3 The relevant comparison
Thus, the patentee has to ask themselves twoquestions: in which countries can I achievesavings and for which countries do I need protection.
In this respect the fact that 50% of granted European patents are only validated in up to three
EU Member States needs to be considered first.
First of all, these will be the countries with thehighest number of existing granted patents, thatis Germany, France and the United Kingdom.
No translation is required for these countries
pursuant to the London Agreement. However,for a unitary patent a translation has to be filed
during the transitional period in all cases, asmentioned above. Thus, for patents validated inthese countries, the unitary patent actually leads
to an increase of the translation costs.
What also needs to be taken into account is thefact that the United Kingdom will be excluded
from the Unitary Patent because of BREXIT. Applicants that seek protection there will
have to pay for the costs of validation and therenewal fees. They amount to GBP 720 for thefifth through tenth year, to GBP 2;050 for thefifth through 15th year and to GBP 6,640 for thefifth year through the expiry of the patent. Thismeans that BREXIT considerably minimizes
the advantages of the Unitary Patent in terms ofrenewal fees.
In contrast, about 1,000 patents are annuallyvalidated in all EU Member States, with esti-

mated validation costs exceeding EUR 32,000.
It is obvious that a proprietor who needs sucha broad territorial protection will achieve greatcost benefits with the unitary patent. This applies even at the outset, when the patent­-reform
package will only be applicable in 17 Member
States at the outset.
Thus, while the cost assessment is rather
clear for about half the granted European
patents, the circumstances of the individual
case have to be examined for the majorityof the remaining ones, i.e. the individualinterest in broad protection, the present
requirements of translation in considerationof the London Agreement and the status of
ratification of the UPCA.
For the renewal fees too, it has to be taken into
account that the European patent has beenvalidated in some 50 % of the cases only in up
to three countries, whereas the proprietor of
the unitary patent has to pay the equivalent
for four countries. In this respect, the question
arises whether the users of the European patent
system attribute an added value to the unitary
patent and whether they are willing to pay more
for it (see item 5).
Finally, the proprietor’s obligation to pay thefull single renewal fee for the whole life of theunitary patent has to be taken into account,whereas the bundle patent allows decreasing
the financial burden during the term of thepatent by allowing it to lapse in individual
designated states.

3.1.3 The relevant comparison

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3.2 National jurisdiction or
Unified ­Patent Court
3.3 The bundle patent –opt-out and opt-in

3.2 National jurisdiction or Unified­Patent Court
For the patentee, the route to the UPC has theadvantage that they can enforce the unitary patent and the European bundle patent in one single
procedure with effect in all states for which the
UPCA has entered into force. While this increases
the economic impact of the patent, it implies atthe same time the indispensable risk that the patent may be invalidated in one single procedurefor its whole territory, be it in isolated revocation
proceedings, be it in infringement proceedings
in which a counterclaim for revocation has beenraised (“all eggs in one basket”).
Establishing local and regional divisions serves the
purpose of integrating existing systems. This is particularly true for France, Germany, and the Netherlands, where experienced patent judges work andthese resources are especially used by the provisionin the UPCA according to which local divisions in acountry with more than 50 patent cases per year sit
in a composition with two judges from this country
and one judge from another country.
To a large extent, it is within the control of thepatentee before which local division litigation
takes place. They generally have the choice
between the residence of the defendant and theplace of infringement.
The plaintiff, however, can hardly expect judges
coming from their national jurisdiction with which
they are familiar to attend the central division. At
the central division, the principle of geographicaldistribution of staff will have a significant effect.
While judges from countries with experienced national patent courts will mainly work in local andregional divisions, the central division will primarliy be comprised of judges from other countries.
This may have the consequence that more judges
from other countries will sit in the central division.
3.3 The bundle patent – opt-out
and opt-in
A transitional arrangement which only applies
to bundle patents and not to unitary patents is
intended to increase acceptance by the users. During the transitional period, there is a concurring
jurisdiction of the national courts. In addition, theapplicant or patent proprietor may exclude theexclusive jurisdiction of the UPC up to one month
before the end of a transitional period (opt-out).
Attention has to be drawn to the fact that the jurisdiction of the UPC is not limited to European
bundle patents granted after the entry into forceof the UPCA. Rather, it also comprises patents
granted before and valid for the States in which
UPCA has become effective.
Thus, at the entry into force of the UPCA, thepatentee has to check their whole portfolio ofEuropean patents as to whether they want to
exclude the jurisdiction of the UPC. No fee ispayable for the opt-out.
An opt-out declaration can be submitted withina transitional period of seven years which can beextended up to 14 years.

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Both, opt-out and opt-in (i.e. withdrawing the optout), are subject to the requirement that no action
has been filed yet at the court which had jurisdiction
until the relevant declaration. Accordingly, a patent
proprietor may file a declaration of opt-out for thetime being, assuming that they can withdraw thisdeclaration if they eventually come to the conclusion that they want to make use of the advantages
resulting from the enforcement of the patent before
the UPC with effect to all UPCA states. However, an
alleged infringer may file an action for revocationor for declaration of non-infringement at a national
court before the proprietor declares an opt-in.
Patentees considering the unitary patent not
attractive (yet) in respect of the renewal fees andthe obligatory translation have to consider how
to react to the jurisdiction of the UPC for bundle
patents. A further possibility in addition to opt-out
is escaping the UPC by filing national applications.
In this context, a remarkable increase of German
patent applications filed in recent years by Japa-

nese and US applicants may be noted. This may
be interpreted as an indication of a renaissanceof the national patent systems. However, it has
to be taken into account that a definite decision
between the alternatives of a national patent andthe national court on the one hand and a European patent and the UPC on the other hand is notnecessary before the transitional period has lapsed
and an opt-out is no longer possible.
Patentees choosing the unitary patent with the
obligatory exclusive jurisdiction of the UPC
who don’t want to lose access to national courts
may consider filing utility models in Germany.
They offer cost-efficient protection which can beobtained quickly, within a few weeks from filingat present. However, utility models are only
available for products, not for processes. In thefield of biotechnology, utility models are expressly excluded. The shorter term of utility models isof different relevance, depending on the different
life cycles of products in different technical fields.

© 2022 BARDEHLE PAGENBERG Partnerschaft mbB
BARDEHLE PAGENBERG Partnerschaft mbB, Patentanwälte Rechtsanwälte is a partnership of patent attorneys and attorneys-at-law
registered at Amtsgericht München, Partnership Registry No 1152.
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All rights reserved. No part of this publication may be reproduced,
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Nothing in this publication constitutes legal advice.
BARDEHLE PAGENBERG assumes no responsibility for information
contained in this publication or on the website www.bardehle.com anddisclaims all liability with respect to such information.
03/2022

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