ES WHITE PAPER

The Unitary Patent (UP)A new instrument for EPC applicants as an additional option besides theclassical EP patent
June 2023

With the European patent with unitary effect (unitary patent or UP, for short), another option for protecting technical inventions is now available in many participating EU member
states since 1 June 2023, complementing the European bundle patent (EP patent).
The central contact point for obtaining a unitary patent will be the European Patent Office(EPO), before which the examination procedure leading to the unitary patent will follow the
known practice for the EP patent. However, there will be changes from grant onwards, inparticular with regard to validation, maintenance and jurisdiction.
This White Paper introduces the most important innovations in the European patent system due to the introduction of the unitary patent and shows owners of European patentapplications and patents options for action in the run-up to the start of this system as well
as future design options concerning the EP/UP patent portfolio strategy.

PART 1BACKGROUNDEUROPEAN BUNDLE PATENT (EP PATENT) AND UNITARY PATENT (UP)With the establishment of the independent authority of the European Patent Office (EPO), the European Patent Convention (EPC) of 1973 made it possible for the first time to obtain patent protection
in several European countries with a single application through a so-called European bundle patent(EP patent). At that time, 16 member states participated in this system. The EPC now offers an enormous scope with 38 member states (in comparison to 27 EU member states).
However, today, the EP patent is still subject to fragmentation in that it breaks down into its nationalparts upon grant. EP patents must therefore be validated and maintained individually in each country
in which they are to take effect. Disputes must also be fought out before the respective national
courts. The more territorial scope is sought, the more time-consuming and costly this becomes.
Now, after decades of negotiations in many EU member states, patent protection with unitary effectis finally being created with the unitary patent. The legal basis for the new unitary patent is also the
EPC. Application, opposition, limitation and appeal procedures will therefore continue to follow thefamiliar EPC rules. However, once granted, the new unitary patent (UP) will have a genuinely unitaryeffect in all participating member states. The maintenance of the unitary patent will also be carriedout with a single annual fee for all countries, which, in comparison with the EP patent, can significantly
reduce costs as well as effort.
LEGAL FRAMEWORKThe most relevant regulations comprise the Agreement on a Unified Patent Court (UPCA), the Rulesof Procedure of the Unified Patent Court, and relevant EU Regulations. Following the deposit of Germany’s instrument of ratification in February 2023, the UPCA has now entered into force on 1 June
2023. From this date, patents with unitary effect can be applied for in all participating member states
and the Unified Patent Court will also have jurisdiction over European bundle patents.

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THE (DYNAMIC) TERRITORIAL SCOPE OF A UNITARY PATENT
Unlike the EP patent, the unitary patent can only have effect in EU member states that participate in
the enhanced cooperation within the EU in the field of patent protection and have ratified it in parliament. Of the current (post-Brexit) 27 EU member states, 17 participating member states are initiallyinvolved in the unitary patent protection (in dark blue in the diagram below). Only for these states aunitary patent can be obtained immediately upon the start of the system. Spain and Croatia do notparticipate in the enhanced cooperation. If further EU member states ratify (example: for Ireland thisis expected soon), or if further present or future EU member states support the enhanced cooperation,
the territorial scope of protection of the unitary patent will grow accordingly. However, this does not
apply retroactively to unitary patents already applied for / granted.

!

The territorial scope of protection of the unitary patent is determined by the EU member
states participating in the system at the time of filing the application for a unitary patentand is thus dynamically variable.

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PART 2DECISIONS – EVEN BEFORE THE START OF THE SYSTEM
It should be noted that the Unified Patent Court, which has also been newly established, will haveexclusive jurisdiction for unitary patents. However, this newly established international court will centrally rule not only on questions of infringement and validity of unitary patents, but also on classical
European bundle patents. This extended jurisdiction of the new court also for EP patents can be ruledout with an “opt-out”.
THE OPT-OUT
The “opt-out” refers to a request procedure by which a classical EP application or an EP patent iswithdrawn from the jurisdiction of the future Unified Patent Court, so that the IP right remains – as atpresent – subject to national jurisdiction in the member states of the EPC. There is no opt-out for aunitary patent.
An opt-out can be declared during the entire term of the EP right. The possibility to opt out will bepossible during a prolongable transitional period of initially 7 years. After the transitional period, theUnified Patent Court will have exclusive jurisdiction over both, the EP patent and the unitary patent.

!

An opt-out can be obtained for 7 years after the start of the new system for classical EP
applications and EP patents. There is no opt-out for a unitary patent.

The opt-out request is to be filed with the Unified Patent Court via the so-called Case Management
System (CMS) of the Unified Patent Court. This is not to be confused with the EPO system of thesame name.
For granted EP patents, it should be noted that the opt-out request must be filed uniformly for all
validated parts. Thus, the principle of “all-or-nothing” applies. No fee is to be charged by the authority for the opt-out. The opt-out only becomes effective upon entry in the register.
The opt-out becomes effective for all applicants/owners collectively. For jointly held IP rights, coordination must therefore take place in advance. For licensed EP rights in particular, it is appropriate
to coordinate the opt-out strategy between the holder and the licensee(s).

!

The opt-out is to be requested via the CMS of the Unified Patent Court. It applies whollyto all validated parts and also to all applicants/owners of the respective EP right.

Once validly declared and registered, the opt-out removes all validated parts of an EP bundle patent
from the jurisdiction of the Unified Patent Court and accordingly from a central invalidity attack. At thesame time, however, by opting out (unless revoked), one loses the possibility of obtaining titles centrally for all participating member states in case of an infringement. The decision for or against an opt-

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out therefore depends on the circumstances of the individual case. In our White Paper about theUnified Patent Court, we outline reasons that can generally speak for or against an opt-out.
If the opt-out request is for an EP right, the request should be declared immediately. This is because
as soon as an action has been brought before the Unified Patent Court concerning an EP right, theopt-out is no longer available. A “lock-in” occurs and the jurisdiction of the Unified Patent Court canno longer be waived. It is therefore advisable to develop an appropriate strategy and make opt-out
decisions in a timely manner.

!

Whether an opt-out is appropriate or advisable depends on the circumstances of the individual case. It is advisable to think at all times until the expiration of the transitional
period about your individual opt-out strategy in the context of the current EP patent portfolio (including supplementary protection certificates). We will be happy to advise you on
this at any time, because opt-out strategies are as individual as your patent portfolio and its
purpose.

UNITARY PATENT, EP BUNDLE PATENT OR BOTH?
The application and examination procedure for a unitary patent before the EPO is identical to thefamiliar procedure of an EP application.
To obtain a unitary patent, a “request for unitary effect” must be filed with the EPO within one monthfrom the date of publication of the mention of the grant of the EP patent in the European Patent
Bulletin, for which a separate form (7000) will be available.
During a transitional period of at least six years up to a maximum of twelve years (depending on thequality of the machine translations then available), a full text translation will be required within the
1-month period mentioned. If the language of the proceedings is French or German, this is a fulltranslation of the patent specification into English. If the language of the proceedings is English, a fulltranslation of the patent specification into (any) other official language of the EU (i.e. not necessarily
an official language of the EPO) is required. After the end of the transitional period, reliance will beplaced solely on high-quality machine translations provided by the EPO, which will then further reducetranslation costs.
If all the requirements associated with the unitary effect request are fulfilled, the EPO registers theunitary patent. More precisely, it enters the unitary effect into the register for unitary patent protection. The EPO remains responsible for the unitary patent as the central office for receiving renewal
fees.
The unitary patent can be financially attractive, even without the participation of the UK. Calculated
over the full term, a unitary patent is cheaper than maintaining the national parts of an EP patent forthe participating states where validation has been most frequent so far, i.e. DE, FR, IT and NL. The
more UP states are of interest, the cheaper the new system will be in comparison. The simplified ruleof thumb is “more than three”.

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Use our unitary patent calculator to calculate and compare annuities for your individual
validation strategies.
NOTE: For unitary patents, there is no selective dropping of individual member states. Therefore,
the country portfolio cannot be thinned out over the years, which is currently often part of an adaptive
portfolio strategy for EP patents.

!

The rule of thumb: “More than three”. Calculated over the full term, a unitary patent ischeaper if validity is sought in more than three of the participating countries.

FILING STRATEGY OF THE FUTURE
Within a patent family, it will be possible to obtain both a classical EP patent and a unitary patent. The
figure below illustrates how portfolio diversification can be achieved – and what impact this has on
jurisdiction.
In general, the smartly coordinated filing of EP divisional applications is likely to become more important.
With regard to (parallel or priority-establishing) national applications, the introduction of the unitary
patent also results in innovations that may have an influence on future strategies. For example, Germany will no longer provide for a prohibition of double protection for national patents in relation to
the unitary patent. DE patent and unitary patent can therefore coexist, whereby the property rights
will be subject to different jurisdictions (national or Unified Patent Court). Just in the event of a dispute
will it have to be decided in which jurisdiction the dispute is to be brought forward.
For the filing strategy, this means that DE IP rights may increasingly be maintained and filed in parallel.
It is also to be expected that other states besides Italy will reopen the “national PCT route”. From astrategic point of view, it may then be advisable for PCT applicants to initiate corresponding national
phases from the PCT application in parallel with the EP application.
At the same time, it should be considered already at the filing stage which filing strategy is mosteffective to obtain protection for non-UPC states of interest, i.e. when and how effectively and favourably protection can be obtained for non-EU (GB, CH/LI, etc.) and for non-participating states (ES,PL). Possible strategies are presented in Part 3.

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!

In addition to the decision between EP patent and unitary patent for the participating states,
the handling of non-participating states as well as the possibilities of parallel national IP
rights, which are still subject to national jurisdictions, must also be considered for future
filing strategies.

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PART 3QUESTIONS & ANSWERS ON THE UNITARY PATENTQ

When is it going to start?

A

The system started on 1 June 2023 when the UPCA entered into force.

Q

To the point: When is a unitary patent worthwhile from a cost perspective?

A

Rule of thumb: From a purely economic point of view, a unitary patent can already be
profitable from a UP validation scope of more than three participating member states(for example DE, FR, IT, NL).
To the extent that it is part of your past practice to strategically thin out the portfolio over
the years, the costs should be compared more closely, as there is no “selective dropping” of individual validations in selected states for unitary patents and thus no reduction
in costs over the years.
For the transitional phase, it must also be borne in mind that at the moment a full texttranslation must still be filed when applying to the EPO for a unitary patent. As soon as
this translation requirement is removed by machine translations provided by the EPO,
the unitary patent system will become even more attractive from a cost perspective.
In many cases, due to parallel US applications or, for example, parallel German national
applications, full texts already exist when the unitary patent is applied for and only need
to be adapted at low cost.
Use our unitary patent calculator to compare the profitability of the unitary patent interms of renewal fees!

Q

What needs to be considered in terms of validity?

A

Unitary patents are subject to the exclusive jurisdiction of the Unified Patent Court. Thismeans that enforcement of the patent is possible centrally, but at the same time apossibly non-valid patent is also exposed to the risk of a central invalidity attack.
Important positions on the courts of the Unified Patent Court are filled by experienced
judges from France and Germany. One can therefore expect a high quality of jurisprudence.
However, by its very nature, there is no case law history for the completely new system.
For the initial phase, we therefore advise that the UP protection is supplemented by flanking protection (divisional applications; national applications), especially in the case of valuable patent families. In return, the higher costs associated with obtaining patent protection allow more flexibility in enforcement and contract drafting.

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In this respect, it is attractive that Germany will lift the double protection prohibitionin the relationship of a national DE patent and a unitary patent. Parallel maintenance of
the DE patent (which will continue to be subject exclusively to German jurisdiction) anda unitary patent will therefore be possible.

Q

Opt-out YES: What needs to be considered?

A

Bear in mind (see Part 2 above) that from the effective start, an action before the Unified
Patent Court will mean that an opt-out is no longer possible. An opt-out should therefore
be declared as soon as possible, in order to prevent a lock-in through legal action.
An opt-out declared for an EP application will remain effective for the subsequent EP
patent. The opt-out will remain effective for the full term of an EP right. A one-time withdrawal of the opt-out will be possible, but not an arbitrary opt-out opt-in.
As the system has started, the following considerations should be made and discussions
initiated now in a timely manner in order to define a pool of opt-out IP rights:
For which EP applications and/or EP patents should an opt-out be declared?
To decide this, each IP right should be considered and discussed separately:
1. Are there co-applicants? Then the opt-out strategy must be discussed together
in good time, as an opt-out is only possible for all of them together.
2. Should licence agreements concerning the EP right to be opted out be taken into
account? The legitimate interests of licensees should be taken into account by the
proprietor as well as already existing agreements with regard to the coming optout possibilities.
3. Are attacks on the legal status of EP patents likely or already pending? After the
opt-out decision, it is important to ensure that the necessary steps are taken in atimely and legally effective manner to avoid pitfalls in the new system.
4. Self-execution or opt-out by representative? In the case of self-execution, the
new CMS system of the Unified Patent Court must be dealt with and mastered(see here: https://cms.unified-patent-court.org/login). In the case of opt-out byagent, timely coordination and transmission of lists of EP rights for which an optout is to be made is of central importance.
5. Finally, the question arises as to how the respective decision and legally effective
execution of the opt-out is to be documented internally in order to avoid uncertainties regarding the question of responsibility at a later date.

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Q

Opt-out YES: How does it work, from when, for how long, from when is it effective?

A

Procedure•

Login to the CMS system of the Unified Patent Court (not EPO!)•

Account and authorisation (2-factor authentication) are required, but the smart
card system of the EPO will not be available, no requirement of an agent for optout•

https://cms.unified-patent-court.org/login
Use of individual opt-out Application Programming Interface (APIs) possible:
https://www.unified-patent-court.org/sites/default/files/opt-out_api_instructions_v.1.0.pdf•

Attention, at the moment there is no automated opt-out (list upload) foreseen!

When•

At all times and in principle, for the full term of the EP right, as long as no lockin has occurred by filing a lawsuit.

•

The Unified Patent Court will maintain a public list of EP rights for which an optout has been declared.

!

The opt-out only becomes effective upon registration, not upon application!

Feel free to contact us if you need support for larger opt-out series.

Q

Consequences of an incorrect opt-out?

A

An incorrect opt-out declaration or the ineligibility of the opt-out declaration may lead tothe opt-out being deemed invalid. As a result, the exclusive jurisdiction of the Unified
Patent Court remains for the EP IP right.
In principle, an incorrect opt-out declaration can be corrected. However, this is only possible from the time of registration.
The effectiveness of an opt-out can be challenged before the Unified Patent Court.

Q

Opt-out NO, unitary patent NO: What to do?

A

If you do not wish to make use of the unitary patent for your applications pending grant
and at the same time wish the Unified Patent Court to have jurisdiction for the EP patents
arising or already existing, no additional steps deviating from the previous grant practice
are required.

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Q

How do I apply for a unitary patent?

A

Unlike the opt-out, the “request for unitary effect” to obtain a unitary patent is made to
the EPO.
From the date of publication of the mention of the grant of the EP patent in the European
Patent Bulletin, the aforementioned “request for unitary effect” must be filed with the
EPO within one month in order to obtain a unitary patent, for which the EPO will provide
a separate form 7000.
The application shall be made in the language of the case.
During a transitional period, a full text translation will still be required within the 1-month
period – if the language of the proceedings is French or German, a full translation of thepatent specification into English, or, if the language of the proceedings is English, a fulltranslation of the patent specification into (any) other official language of the EU (not the
EPO).
The unitary patent will then be given its own document code “C”.
The request only becomes effective on the date of registration. Before registration, theIP right is treated as a classical EP patent. Therefore, until the unitary effect is registered,
the filing of a translation may be required to assert a claim for compensation in Germany –as before.

Q

Unitary patent YES: What about a DE property right? Double protection?

A

Germany will lift the double protection prohibition in the relationship between the DE
patent and the unitary patent. This will allow a national patent to be maintained in parallelwith the unitary patent. This should be considered for current grant procedures as well
as for future filing strategies.
Targeted filing strategies can therefore benefit from both systems. The DE IP right will
always be subject to the exclusive jurisdiction of the German national courts.

Q

Unitary patent YES: What about non-participating states? GB, CH, ES etc.?

AIf, in parallel to the unitary patent, protection is also sought for non-EU states and nonparticipating EU states, there are several possibilities. This can be seen from the overview
in part 2.3 above. First of all, for the applications already pending, in addition to the optionof the unitary patent, there will still be the option of an EP patent which can be validated
for the non-participating states.
What is the right filing strategy of the future will depend heavily on your current filingpractice, especially the priority post-filing scheme.

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For a PCT-based filing strategy, nationalisation can be done directly from the PCT
phase. Some countries that had/have closed national routes are expected to reverse this.
In general, EP divisional applications will play an even more important role in the futurefor optimal protection and enforcement of your portfolio in Europe, in order to make thebest use of the advantages and disadvantages of both the Unified Patent Court and national jurisdictions.

Feel free to contact us if you would like to discuss and adapt your future registration
strategies individually.

Q

Licence agreements = exclusive licences? What is important?

A

In most cases, current licence agreements will not yet include provisions on the unitary
patent and the Unified Patent Court. However, the new possibilities offered by the unitary
patent and the Unified Patent Court will have an impact here as well. Also in view of thediversification of the European patent landscape, the drafting of licence agreements
should therefore be adapted.
For example, under the UPCA regime, exclusive licensees can enforce a patent without
the consent of the proprietor unless the licence agreement provides otherwise. Ordinary
licensees will not have this right unless the licence agreement provides otherwise.

!

For future contract drafting, you as licensor as well as licensee should urgently provide
for corresponding regulations, if this is not already implemented.

Q

What about the applicable law for a unitary patent as intellectual property right?

A

According to Article 7 of EU Regulation 1257/2012, a Unitary Patent as part of the property, e.g., in the context of transfers or licensing purposes, is subject to that national lawof the state, where the Applicant had its residence / domicile at the time of filing of theapplication.
In case of several Applicants, the residence / domicile of the first mentioned Applicant isdecisive. This may also be of relevance for future filing strategies. In case the residence /domicile of the first mentioned Applicant is outside of a participating member state, theresidence / domicile of the second Applicant is decisive.
In case no Applicant / Proprietor has / had its residence / domicile within a participating
member state, German national law will be applicable (as place where the European
Patent Office has its headquarter, cf. Art. 7(3) Regulation (EU) 1257/2012).
It can thus prove useful to have an entry in the Register for unitary patent protection(which is an integral part of the European Patent Register) showing “a place of businesson the date of filing” in cases where an Applicant, when filing a European patent application or international application under the PCT designating or electing the EPO (Euro-PCT

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application), did not have a residence or principal place of business in one of the participating Member States within the meaning of point (a) Art. 7(1) Regulation (EU)
1257/2012, for example where the Applicant had its residence or principal place of business in the United States of America or Switzerland (see Rule 16(1)(x) Unitary Patent
Regulation of the EPO). Providing information on such a “place of business on the dateof filing” is voluntary.

Q

Where can I find more official information on obtaining a unitary patent?

A

The EPO will continue to be responsible for obtaining, maintaining (renewal fees) andadministering the unitary patent.
The EPO's “Guide to the Unitary Patent” (2nd ed., 2022) provides valuable guidance on
the procedure for obtaining a unitary patent at the EPO following the grant of a European
patent under the EPC, as well as on the further procedures for unitary patents, e.g. inconnection with the compensation of translation costs or with the registration of declarations of willingness to license, and gives an overview of the rules on the payment of
renewal fees for unitary patents:
https://www.epo.org/law-practice/unitary/unitary-patent/unitary-patent-guide.html
According to the EPO, the guide is currently under revision, but already provides a very
good overview in its current version.

Your contact persons at Eisenführ Speiser are always available for further individual
strategic advice. Please do not hesitate to contact us!

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