Unitary Patent strategies and options
The EU Unitary patent came into existence on 1 June 2023. We have a separate article that introduces the Unitary patent and summarises the factors to take into account when deciding whether to register a Unitary patent. In this article, we summarise various strategies which can be adopted following consideration of these factors.
This article assumes that the reader already has an understanding of the EU Unitary patent and that when a European patent is granted, for 17 EU countries (covering just under half of the population of Europe or about two-thirds of the population of the EU) the proprietor will be able to choose between either (A) registering a Unitary patent or (B) validating their European patent in their choice of the participating countries. For the remaining 21 European patent convention countries (and various validation states), the applicant will only have the option of validation in specific countries.
Patent applicants will need to think carefully about their own circumstances and priorities, and to consider cost information specific to their situation in order to make decisions. However, what sort of strategies can be adopted? We think the following options should at least be considered:
1. Unitary patent only
Some applicants for a European patent will register only a Unitary patent and not validate their patent in any of the countries which are not participating in the Unitary patent, attracted by the possibility of an injunction, damages, or royalties across a large geographical scope (covering almost 300 million people) and the simplicity of having a single registered right. This option will be particularly attractive to any applicant who wishes to avoid the possibility of having the validity of their patent challenged in any national European courts and who prefers that only the Unified Patent Court will have jurisdiction over most matters.
2. Unitary patent plus at least the UK
However, we expect that the vast majority of applicants who register a Unitary patent will also validate their patent in at least the United Kingdom (67.3 million population) and quite possibly one or more additional non-participating countries. We expect that the number of patents validated in Spain (47.5 million population) will increase; validation in Spain has been expensive enough to put off many applicants in the past but there is a requirement to file a translation when registering a Unitary patent and a Spanish translation could be used for both the Unitary patent and validation in Spain (assuming the patent is in English) which changes the equation.
3. UK, France and Germany
Some applicants will decide not to register a Unitary patent and instead to validate their patent in Germany, France and the United Kingdom, which was a very common strategy before the introduction of the Unitary patent and will remain a cost-effective and practical option, covering 218 million people. This strategy incurs lower costs than the registration of a Unitary patent and maintains the flexibility to abandon rights in one or two of these countries later in patent term, when renewal fees become large. Furthermore, this strategy has been commonplace for decades and has well-understood implications.
4. Avoiding the jurisdiction of the Unified Patent Court
Applicants who wish to avoid the risk of revocation actions being filed in the Unified Patent Court by third parties, challenging all of their rights across participating countries in a single reasonably quick and reasonably cost-effective legal action will need to decline to register a Unitary patent and instead validate their patent in a selection of European patent convention countries. This will usually include at least some of the countries participating in the Unitary patent (e.g. Germany and France) and so they will also have to file an opt-out of the jurisdiction of the UPC.
5. Planning ahead for when renewal fees are high
Applicants who wish to benefit from the broad geographical protection of the Unitary patent but also maintain some ability to reduce protection when renewal fees become very high, might register a Unitary patent and also validate in some important non-participating countries with the idea that they might later allow the Unitary patent to lapse but maintain the non-participating countries. The UK is usually an important non-participating country but applicants using this strategy would be well advised to consider validating in at least one non-participating country which is in the European Union country, such as Spain, Poland or Ireland, to maintain some protection in the EU if they allow their Unitary patent to lapse. In a variant of this strategy, the plan could be to maintain the Unitary patent and allow validations in non-participating countries to lapse later in the life of the patent. Nevertheless, Unitary patent renewal fees are high later in the life of a patent.
6. Direct national applications
A small fraction of applicants may decide to avoid reaching this decision point and to instead seek patent protection in direct national patent applications instead of through the European Patent Office, for example, they might file UK, German and French national patents. This strategy will appeal to those who most want to ensure that their patent rights are difficult for third parties to challenge, as the Unified Patent Court will not have jurisdiction and there is not even the risk of the regular European patent opposition procedure. However, it is difficult to make a financial case for this option due to the need to obtain translations of the entire patent into national languages (e.g. French, German) which is not required by the regular European patent application procedure. The arithmetic is different for patents written in French or German, however, as English translations will usually also be obtained for the purpose of seeking protection in the United States. Note that it is not possible to enter the national phase of the PCT in some important European countries (list on WIPO website).
7. Multiple strategies
Applicants with important inventions and a sufficient budget might consider using divisional or parallel patent applications to obtain multiple patents with different scope (e.g. one narrow, one broad) covering the same subject matter and use different strategies from this listed above for each. For example, a European patent with broad claims covering a specific product might be registered as a Unitary patent, for ease of enforcement, and a divisional European patent application with narrow claims might be validated in individual participating and non-participating countries, to make it difficult for third parties to revoke all patent protection or vice versa. Other variations can also be considered. Advice should be sought on issues such as double patenting before adopting these kinds of strategies.
8. But do consider individual circumstances
Of course, the decisions made will depend on commercial priorities and there will always be exceptions. A company working in wave energy converters may be more interested in validation in Portugal, the United Kingdom, Ireland and Norway, for example than in obtaining protection in Unitary patent participating countries. A company that has signed a license agreement in the past which refers to obtaining a Unitary patent will have little choice.
If you have any questions about the content of this article or are looking for assistance with European patent prosecution and Unitary patent registration, please do not hesitate to contact us.
Author: Alistair Hindle.