Unitary Patent (UP) and

Unified Patent Court (UPC):

Green Light for Europe’s
Historic Patent Reform
Dr. Christoph Eisenmann

Munich/Taiwan, April 29, 2022

© 2022 VOSSIUS www.vossius.eu München • Düsseldorf • Berlin • Basel

Patents in Europe – Today

Granting Procedure Post Grant

National National
Patent Offices patents (NP)

European Bundle of
Patent Office national
patents (EP)

2
Patents in Europe – Today

Granting Procedure Post Grant

National National
Patent Offices patents (NP)

European Bundle of
Patent Office national
patents (EP)
- National validation requirements
- Litigation: country by country

3
Patents in Europe – Tomorrow

Granting Procedure Post Grant

National National
Patent Offices patents (NP)

European Bundle of
Patent Office national Unified
Patent
patents (EP) Court
(UPC)
European Unitary system
Patent Office patent (UP)

4
Patents in Europe – Tomorrow

Granting Procedure Post Grant

National National
Patent Offices patents (NP)

European Bundle of
Patent Office national Unified
Patent
patents (EP) Court
(UPC)
European Unitary system
Patent Office patent (UP)

- No validation required
- Centralized litigation

5
Unitary Patent Package – Legal Basis

Unified Patent Court (UPC) Unitary Patent (UP)

• UPC-Agreement (UPCA) • European Union Regulations:
• Protocol to the UPCA on provisional – “Unitary Patent Regulation”
application (PPA) (Regulation (EU) No. 1257/2012)
– “Unitary Patent Translation Regulation”
• Protocol on Privileges and Immunities of (Regulation (EU) No. 1260/2012)
the UPC (PPI) – “Recast Brussels I Regulation”
• Secondary legislation (Regulation (EU) No. 1215/2012)
• Rules of Procedure of the UPC on jurisdiction in civil and commercial disputes
• Rules on Court fees and recoverable costs • European Patent Office:
• Rules on the European Patent Litigation – Rules relating to Unitary Patent Protection (UPR)
Certificate – Rules relating to Fees for Unitary Patent
Protection (RFeesUPP)
– Budgetary and Financial Rules (BFR)
– Unitary Patent Guide
• National laws adapted
– e.g., IntPatÜG in Germany

6
Current Status & Expected Timeline

• UPC-Agreement (UPCA)
• Signed by 24 EU member states (all except Spain, Poland, and Croatia)
• Ratified by 17 EU member states so far (counting Germany)
• Will enter into force on the 1st day of the 4th month after Germany deposits its instrument of ratification
• Protocol on provisional application of the UPCA
• Entered into force on January 19, 2022  provisional application phase has started
• Institutional, organizational and financial provisions of the UPCA become provisionally applicable in order to allow preparing the functioning of the Court
• Preparatory Committee estimates: about 8 months required to complete last preparations:
• Selection and appointment of judges
• Completion of IT and case management systems
• Finalization and adoption of secondary legislation (Rules of Procedure, Rules on Court Fees etc.)
• Adoption of budget
• Sunrise period to opt out European bundle patents from the competence of the UPC
(presumably 3 months before UPC starts; precise date to be announced)

7
UPC & Unitary Patent – Territorial Coverage

8
UPC & Unitary Patent – Territorial Coverage

9
UPC & Unitary Patent – Territorial Coverage

10
UPC & Unitary Patent – Territorial Coverage

11
How to Obtain a Unitary Patent

• A formal request (“request for unitary effect”) must be filed with the EPO after the
grant of a European patent
• Within a period of 1 month after grant of a European patent
Much shorter than the usual 3-month deadline for national validations
• Registration of the unitary effect by the EPO is constitutive for the unitary patent
• Substantive requirements:
• Patent must be granted with the same claims in respect of all participating member states
• Grant date must be on or after the date of entry into force of the UPCA
• Formal requirements:
• No fee
• Request must indicate the patent proprietor/s, the patent number, and the representative
• Must be filed in the language of the proceedings (in deviation from usual EPO practice)
• During a 6-year transitional period (extendible up to 12 years):
Translation of the complete patent (description, claims, and drawings) must be filed
• If the patent is in English: complete translation into any of the other 23 official languages of the
European Union (regardless of whether the respective EU member states participate in the UPC)
• If the patent is in French or German: complete translation into English

12
How to Obtain a Unitary Patent

• A formal request (“request for unitary effect”) must be filed with the EPO after the
grant of a European patent
• Within a period of 1 month after grant of a European patent
Much shorter than the usual 3-month deadline for national validations
• Registration of the unitary effect by the EPO is constitutive for the unitary patent
• Substantive requirements:
• Patent must be granted with the same claims in respect of all participating member states
• Grant date must be on or after the date of entry into force of the UPCA
• Formal requirements: replace national validation requirements
• No fee
• Request must indicate the patent proprietor/s, the patent number, and the representative
• Must be filed in the language of the proceedings (in deviation from usual EPO practice)
• During a 6-year transitional period (extendible up to 12 years):
Translation of the complete patent (description, claims, and drawings) must be filed
• If the patent is in English: complete translation into any of the other 23 official languages of the
European Union (regardless of whether the respective EU member states participate in the UPC)
• If the patent is in French or German: complete translation into English

13
How to Obtain a Unitary Patent

• Relevance of the required translation of the complete patent?

• “The text of such translations shall have no legal effect and shall be for information
purposes only.” (Article 6(2) of the Unitary Patent Translation Regulation)
• Will be published by the EPO
• When determining damages in case of infringement of a unitary patent, the UPC may
consider whether the infringer acted without knowing that he infringed the patent before
being provided with a full translation (Article 4(4) of the Unitary Patent Translation
Regulation)  the translation could potentially still become relevant
• If national validation in Spain is intended, a Spanish translation of the complete
patent is required, which can also be used for the unitary patent
• For obtaining unitary patent, the translation must be ready within 1 month from grant!
(legal remedy available)
• For national validation in Spain, the translation must be filed within 3 months from the
date of grant (extendible by 2 months)
• After the transitional period:
• No translations required for obtaining a unitary patent
• (Only in case of a dispute, the alleged infringer and/or the UPC can request a full
translation of the unitary patent)

14
How to Obtain a Unitary Patent

• The request for unitary effect and the conventional national validation in the
UPC states are mutually exclusive
• If the unitary effect is registered, the corresponding European patent does not take effect
as a national patent in the UPC states
• National validation in the non-UPC states is unaffected by the registration of a
unitary patent
• e.g., Spain, Poland, the United Kingdom, Switzerland, Turkey etc.

15
Obtaining a Unitary Patent – What Can Possibly Go Wrong?

• What if the request for unitary effect is not filed at all?

• A request for reestablishment of rights can be filed (but only within 2 months from expiry
of the 1-month period for requesting unitary effect – i.e., within 3 months from grant)

• What if the request for unitary effect is filed after the 1-month time limit?
• The EPO will reject the request
• But: The EPO will first issue a communication announcing the intended rejection and
inviting the patent proprietor to comment (in order to safeguard the right to be heard)
• A request for reestablishment of rights can be filed (but only within 2 months from expiry
of the 1-month period for requesting unitary effect – i.e., within 3 months from grant)

• What if the request for unitary effect is timely filed – but fails to comply with any of
the formal requirements, including the requirement to file a complete translation?
• The EPO will issue an invitation to correct the deficiencies within a non-extendable period
of 1 month
• If the deficiencies are not corrected, the EPO will reject the request
• Reestablishment of rights is specifically excluded; no legal remedies before the EPO
• An action against the EPO can be filed at the UPC

16
Obtaining a Unitary Patent – What Can Possibly Go Wrong?

• Who at the EPO decides about requests for unitary effect?

• The new “Unitary Patent Division” of the EPO (in the composition of 1 legally trained
examiner)
• Identical to the existing Legal Division (merely “wears a different hat”)
• Routine tasks can be performed by formalities officers

17
With a little help from your friends at the EPO…

• “Supporting users in an early uptake of the Unitary Patent”

• But…
– such requests may only be filed once Germany has deposited its instrument of ratification (which triggers
the start of the UPC)
– A specific new form must be used for requesting a delay in issuing the grant decision

18
Choice between Unitary Patent and European Bundle Patent
Currently available National validation Unitary patent
UPC states (approx. total costs) (approx. total costs)
• Validation costs AU (Austria) 12,900 €
BE (Belgium) 275 €

Exemplary case: BG (Bulgaria) 6,700 €

European patent, in English, DE (Germany) 175 €

granted with 210 pages DK (Denmark) 1,500 € 250 €

(complete translation
EE (Estonia) 8,100 €
already available)
FI (Finland) 2,000 €
FR (France) 275 €
(translation costs and or
official fees strongly depend IT (Italy) 8.200 €
on length of granted patent) LT (Lithuania) 1,200 €
5,500 €
LU (Luxembourg) 275 € (with complete
translation;
LV (Latvia) 1,100 €
required only during
MT (Malta) 550 € transitional period)
NL (Netherlands) 1,400 €
PT (Portugal) 8,500 €
SE (Sweden) 1,800 €
SI (Slovenia) 1,000 €
All 17 current UPC states 55,950 € 250 € / 5,500 €

19
Choice between Unitary Patent and European Bundle Patent
Currently available National renewal fees Unitary patent renewal fees
UPC states (total costs, years 5 to 20) (total costs, years 5 to 20)
• Renewal fees AU (Austria) 13,964 €
BE (Belgium) 5,880 €
BG (Bulgaria) ~ 7,600 €
- Combined total costs for
DE + FR + NL (years 5-20): DE (Germany) 14,230 €
33,426 € DK (Denmark) ~ 7,700 €
EE (Estonia) 6,406 €
FI (Finland) 9,600 €
- Combined total costs for 36,470 €
unitary patent (years 5-20): FR (France) 6,996 €
36,470 € IT (Italy) 7,820 €
LT (Lithuania) 5,420 €
LU (Luxembourg) 3,968 €
LV (Latvia) 6,190 €
MT (Malta) 3,530 €
NL (Netherlands) 12,200 €
PT (Portugal) 8,125 €
SE (Sweden) ~ 7,660 €
SI (Slovenia) 6,308 €
All 17 current UPC states ~ 133,597 € 36,470 €

20
Choice between Unitary Patent and European Bundle Patent

• Conclusions on costs
• Interest in Germany and France but no other UPC states  bundle patent more cost-
effective
• Interest in at least 4 UPC states  unitary patent often more cost-effective
• Interest in any of the UPC states Austria*, Bulgaria, Estonia, Italy, or Portugal
 unitary patent usually more cost-effective
• National validations in these UPC states require a full translation of the patent
(* in case of Austria: unless the patent is in German)
• Interest in Spain (not a UPC state)  national validation requires a complete Spanish
translation  can be used for a unitary patent

21
Opposition Proceedings and Revocation Actions
• No changes regarding opposition proceedings before the EPO

• In relation to unitary patents, a centralized revocation action with the Unified

Patent Court may be brought in lieu of or parallel to opposition proceedings
before the EPO

• In relation to traditional EP bundle patents (unless opted out), a centralized

revocation action with the Unified Patent Court may be brought in lieu of or
parallel to opposition proceedings before the EPO (during a transitional period,
national invalidation actions in parallel to opposition proceedings only if allowed
by national law)

22
Effects of the Unitary Patent

• Unitary Patent Regulation (Regulation (EU) No. 1257/2012)

• Unitary patent shall provide uniform protection and shall have equal effect in all
participating Member States

• Unitary Patent may only be limited, revoked or lapse in respect of all participating
Member States

• Territorial gaps for prior use rights and licensing (may be licensed in respect of only
one or only part of the participating Member States)

23
Uniform Protection: important exceptions

Art. 28 UPCA - Right based on prior use of the invention

Any person, who, if a national patent had been granted in respect of an invention,
would have had, in a Contracting Member State, a right based on prior use of that
invention or a right of personal possession of that invention, shall enjoy, in that
Contracting Member State, the same rights in respect of a patent for the same
invention.

(10) Unitary Patent Regulation (Regulation (EU) No. 1257/2012)

Compulsory licences for European patents with unitary effect should be governed by
the laws of the participating Member States as regards their respective territories.

24
Rights conferred by the Unitary Patent

Art. 25 UPCA - Right to prevent the direct use of the invention

A patent shall confer on its proprietor the right to prevent any third party not having
the proprietor's consent from the following:
(a) making, offering, placing on the market or using a product which is the subject
matter of the patent, or importing or storing the product for those purposes;
(b) using a process which is the subject matter of the patent or, where the third party
knows, or should have known, that the use of the process is prohibited without the
consent of the patent proprietor, offering the process for use within the territory of
the Contracting Member States in which that patent has effect;
(c) offering, placing on the market, using, or importing or storing for those purposes a
product obtained directly by a process which is the subject matter of the patent.

25
Rights conferred by the Unitary Patent

Art. 26 UPCA - Right to prevent the indirect use of the invention

(1) A patent shall confer on its proprietor the right to prevent any third party not
having the proprietor's consent from supplying or offering to supply, within the
territory of the Contracting Member States in which that patent has effect, any person
other than a party entitled to exploit the patented invention, with means, relating to
an essential element of that invention, for putting it into effect therein, when the third
party knows, or should have known, that those means are suitable and intended for
putting that invention into effect.
(2) Paragraph 1 shall not apply when the means are staple commercial products,
except where the third party induces the person supplied to perform any of the acts
prohibited by Article 25.
(3) Persons performing the acts referred to in Article 27(a) to (e) shall not be
considered to be parties entitled to exploit the invention within the meaning of
paragraph 1.

Art. 27 UPCA: Limitations to the effect of UP (non-commercial purposes etc.)

26
Rights conferred by the Unitary Patent

Arts. 25-27 UPCA identical to, e.g., §§ 9-11 PatG

Art. 64 (1) EPC - Rights conferred by a European patent

A European patent shall, subject to the provisions of paragraph 2, confer on its
proprietor from the date on which the mention of its grant is published in the
European Patent Bulletin, in each Contracting State in respect of which it is granted,
the same rights as would be conferred by a national patent granted in that State.

UP is EP  Scope of protection must be identical!

 Certain modifications in national law envisioned to harmonize provisions (e.g. in BE
regarding acts done for experimental purposes).

Claim construction???

27
Rights conferred by the Unitary Patent

Nothing to be found about claim construction in UPCA!

Art. 69 (1) EPC – Extent of protection:

The extent of the protection conferred by a European patent or a European patent
application shall be determined by the claims. Nevertheless, the description and
drawings shall be used to interpret the claims.

Protocol on the Interpretation of Article 69 EPC:

2. For the purpose of determining the extent of protection conferred by a European
patent, due account shall be taken of any element which is equivalent to an element
specified in the claims.
 Basis for doctrine of equivalents.
However: huge discrepancies between different national courts so far!

28
Rights conferred by the Unitary Patent

Nothing to be found about claim construction in UPCA!

Art. 69 (1) EPC – Extent of protection:

The extent of the protection conferred by a European patent or a European patent
application shall be determined by the claims. Nevertheless, the description and
drawings shall be used to interpret the claims.

Protocol on the Interpretation of Article 69 EPC:

2. For the purpose of determining the extent of protection conferred by a European
patent, due account shall be taken of any element which is equivalent to an element
specified in the claims.
 Basis for doctrine of equivalents.
However: huge discrepancies between different national courts so far!
U = The Unknown!

29
New Court System

• Unified Patent Court (UPC) with two instances:

Court of First Instance + Court of Appeal

• Court of First Instance

 Local (or Regional) Divisions in participating member states
(in Germany: Düsseldorf, Mannheim, Munich, and Hamburg)
 Central Division with seat in Paris and section in Munich (mechanical engineering);
Paris and Munich will initially assume the responsibilities of the originally foreseen
London section (chemistry) until possible creation of a new section (Milan? Amsterdam?
Madrid?)

• Court of Appeal in Luxembourg

• Potential referrals to the CJEU concerning construction of EU law

30
Unified Patent Court

Court of Appeal CJEU

Luxembourg Luxembourg
Referral (request for preliminary ruling)
Appeal

Local Division Regional Division Central Division

E.g. in Germany: For a group of Member States, Paris Munich ???

Munich, Mannheim, so far only Sweden – North Baltic
Dusseldorf, and Hamburg

31
Competences of the local/regional and central divisions

• Local/Regional Division:
• Infringement Actions (either at the local/regional division where the infringement took place or at the
residence of the defendant)
• Actions for provisional and protective measures and injunctions (like evidence preservation actions or
preliminary injunction proceedings)
• Counterclaims for revocation of patents
• Actions for damages or compensation
• Actions relating to the use of the invention prior to grant or prior use rights
• Actions for compensation for licenses (when notice of willingness to license has been registered)

• Central Division:
• Actions for declarations of non-infringement (to be stayed if infringement actions is filed within three
months after initiation of the action for declaration of non-infringement)
• Actions for revocation of patents (if an infringement action is pending on the same patent between
the same parties, only a counter-claim for revocation within the infringement suit is admissible; a
standalone revocation action is not admissible in this case)
• Actions concerning decisions of the EPO in carrying out the tasks relating to Unitary Patents and EP
Patents relating the Unified Patent Court System

32
Judges

• Pool of judges with multinational composition (including part-time judges)

• Composition of the Divisions
 Local/Regional Division: 3 legally qualified judges, possible allocation of a technically
qualified judge; for Local Divisions:
 < 50 cases in three consecutive years on average: one local judge
 ≥ 50 cases in three consecutive years on average: two local judges
 Central Division: 2 legally qualified judges and 1 technically qualified judge (2 legally
qualified judges from different nations; not necessarily nationals of the state hosting
the Central Division)
 Court of Appeal: 3 legally qualified judges and 2 technically qualified judges

33
Language Regime in Court Proceedings

• Local/Regional Divisions: official language of the member state hosting the division
(Art. 49(1) UPCA) or an official EPO language if designated by that member state
(Art. 49(2) UPCA); the claimant can choose the language. The judge-rapporteur may
order, however, that judges may use the official language of the member state in
the oral hearing and deliver any decision in that language, accompanied by a
certified translation into the designated language.

• Alternatively: the language of the patent if agreed by parties and approved by the
court panel; if the panel does not agree, parties may request that the case be
referred to the Central Division.

• Central Division: language of the patent

• Appeal proceedings: language of first instance proceedings or language of the

patent if parties agree

34
Proceedings before the UPC

Infringement proceedings with

counter claim for revocation
Defendant’s rejoinder regarding
Plaintiff‘s infringement, validity and
Statement of claim: Reply brief: facts and reply amendments
facts and evidence evidence regarding regarding
regarding non-infringement infringement
infringement and revocation and validity
(Rule 13) (Rules 23 - 25) as well as
amendments
(Rule 30)

Termination of Hearing
3 2 Oral hearing
the interim of wit-
Months Months proceedings nesses
Filing of
lawsuit

Month 0 1 2 3 4 5 6 7 8 9 10 11 12

Written procedure Interim procedure Oral hearing

35
Interim Procedure – Rules 101-110 RoP

• Aim: preparation of the oral hearing (identify main issues,

clarify position of the parties, establish schedule for further
proceedings, …) and exploration of possibility to settle (104
RoP)
• Interim conference held in court, by telephone or video
conference
• Key person of interim procedure: Judge Rapporteur (case
management, legally qualified judge designated by presiding
judge)
• Interim procedure to be completed within three months (101.3
RoP)

36
UPC – “Moderate” Court Fees

• For infringement action: Combination of fixed court fee (usually EUR 11,000) and value-based
fee from EUR 2,500 (value: 500,000 EUR to 750,000 EUR) up to EUR 325,000 (value > 50
million EUR)

• For counterclaims for revocation: Same fee as the infringement action (including the
value-based fee), however with a maximum limit of EUR 20,000

• For independent revocation action: Fixed court fee (EUR 20,000)

• For application for provisional measures: Fixed court fee (EUR 11,000)

• Principle of remuneration: Unsuccessful party shall bear the successful party’s reasonable and
proportionate legal costs and other expenses up to a ceiling (Art. 69 (1) UPCA)
• Legal costs shall include representation costs
• Ceiling (per instance) from 38,000 EUR (< 250,000 EUR) up to EUR 2,000,000 (> 50 million EUR)
• High degree of discretion for the court to determine recoverable fees (principles of equity apply)

37
Jurisdiction and Decisions

In the long term: exclusive jurisdiction of the UPC relating to both the UPs and EPs in respect of
• Infringement
• Declaration of non-infringement
• Actions or counterclaims for revocation
• Actions for provisional and protective measures
• No jurisdiction for national patents and utility models

Transitional period: Remaining national jurisdiction for EPs beside the jurisdiction of the UPC
• Transitional period of 7-14 years
• Possibility to exclude the exclusive jurisdiction of the UPC by “opt out” (Art. 83 (3) UPCA)

38
Excursus: duration of transitional period

Art. 83 UPCA - Transitional regime

(1) During a transitional period of seven years after the date of entry into force of this Agreement, an
action for infringement or for revocation of a European patent or an action for infringement or for
declaration of invalidity of a supplementary protection certificate issued for a product protected by a
European patent may still be brought before national courts or other competent national authorities.
(5) Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a
broad consultation with the users of the patent system and a survey on the number of European patents
and supplementary protection certificates issued for products protected by European patents with
respect to which actions for infringement or for revocation or declaration of invalidity are still brought
before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On
the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to
prolong the transitional period by up to seven years.

39
The New Court System in the long term

Granted Patent Court

National National
patents courts

European Unified
patent Patent
Court (UPC)

Unitary patent UPC

40
Enforcement options for Unitary Patents (UPs) – Exclusive jurisdiction

• Only one option: exclusive competence of the UPC

• UPCA shall apply to any UP (Art. 3 (a) UPCA)
• UP shall provide uniform protection and shall have equal effect in all
participating Member States (Art. 3(2) UP – Regulation (EU) No. 1257/2012)
• Revocation of the Unitary Patent results in invalidation for all participating
Member States (Art. 3(2) UP – Regulation (EU) No. 1257/2012)
• Infringement decision with unitary effect for all countries having ratified the
UPC-Agreement
• Territorial gaps for prior use rights, exhaustion and licensing

41
Enforcement options for Unitary Patents (UPs) – Exclusive jurisdiction

• Only one option: exclusive competence of the UPC

• UPCA shall apply to any UP (Art. 3 (a) UPCA)
• UP shall provide uniform protection and shall have equal effect in all
participating Member States (Art. 3(2) UP – Regulation (EU) No. 1257/2012)
• Revocation of the Unitary Patent results in invalidation for all participating
Member States (Art. 3(2) UP – Regulation (EU) No. 1257/2012)
• Infringement decision with unitary effect for all countries having ratified the
UPC-Agreement
• Territorial gaps for prior use rights, exhaustion and licensing

Does also apply to European Patents after transitional period, unless opted out!

42
The New Court System during the transitional period

Granted Patent Court

National National
patents courts

European Unified
patent Patent
Court (UPC)
European National
patent Opt out
courts

Unitary patent UPC

43
Enforcement options for EPs – Alternative jurisdiction during transitional period

European “Bundle Patent”

Alternative jurisdiction pursuant to Art. 83 (1) UPCA

National Courts Unified Patent

Court (UPC)

Parallel actions, each

Action limited to
one national patent limited to national
patents

44
Enforcement options for EPs – Action before the UPC (Art. 3, 32 UPCA)

• Action for infringement, declaration of non-infringement and for revocation of

EPs shall be brought before the UPC
• UPCA shall apply to EPs which have not yet lapsed at the date of entry into force
of the UPCA (Art. 3 (c) UPCA)
• Revocation and infringement decisions effective in all Member States in which
the European patent is validated (Art. 34 UPCA)

• Pros:
− Centralized enforcement for all designated Member States before one court
(Art. 34 UPCA)
− Damages for all designated Member States
• Cons:
− Counterclaim for revocation with effect to all designated all designated
Member States possible

45
Enforcement options for EPs - Action before national/German Courts (Art. 83 (1) UPCA)

• Action for infringement and/or for revocation of EPs

• Pros:
• Advantages of national proceedings (experienced courts, reliable proceedings
and limited costs)
• Selective strategies / forum shopping
• Counterclaim for revocation is excluded in Germany because of the dual
system
• Cons:
• Territorial limitation of the judgement
• Centralized revocation action before the UPC still possible (unless an opt out is
filed)

46
Relation between national courts and UPC

• Proceedings before different courts involving the same cause of action between the
same parties shall be excluded (Articles 29 to 32 Brussels I Regulation (EU) No.
1215/2012)
• Articles 29 to 32 shall apply where during the transitional period referred to in Art.
83 (1) UPCA proceedings are brought in the Unified Patent Court and in a court of a
Member State party to the UPCA (Article 71 Brussels I Regulation (EU) No.
1215/2012)
• No blocking effect with provisional measures (Article 35 Brussels I Regulation (EU)
No. 1215/2012)

47
Excursus: Double Patenting

• No double protection by UP and EP

• Double protection by UP and national patent to be determined at national level

(Art. 139(3) EPC): will be possible in several Member States, e.g. Germany

• Parent and (slightly different) divisional patent for UP and EP (or vice versa)

48
Legal enforcement options for EPs – „opt out“ (Art. 83 (3) UPCA)

European “Bundle Patent"

„opt out“ option (Article 83 (3) UPCA)

National Court/Germany
UPC

Separate parallel
One Action limited Actions in other countries
to Domestic Patents each limited to Domestic
Patents

49
“Opt out” (Art. 83 (3) UPCA)

• Exclusive competence of the UPC is excluded for all EP designations upon entry of
the “opt out” declaration into the register
• Possibility to “opt out” is excluded if an action has already been brought before the
UPC prior to “opt out” registration
• “Opt in“ (reversal of opt out) is possible unless an action has been brought before a
national court before “opt in” registration
• Pros:
• Centralized revocation action is excluded
• Advantages of national proceedings (experienced courts, reliable proceedings and limited
costs)
• Selective strategies/forum shopping
• Counterclaim for revocation is excluded in Germany because of the “dual system”
• Cons:
• Territorial limitation of the judgement
• “Opt in” can be blocked by initiation of national actions

50
Opting out – more difficult than it seems?

- To be effective, an opt-out application must be filed in the name of all proprietors of an EP bundle patent in
all states (including all proprietors of any corresponding SPCs) – or, in the case of a pending EP application, in
the name of all applicants
- decisive are the true proprietors: “the person entitled to be registered as proprietor under the law of
each Contracting Member State … whether or not such person is in fact recorded in the register of
patents maintained in such Contracting Member State” (Rules 5(1)(a), 8(5)(a) RPUPCA);
- likewise, the true applicants are decisive: “the person entitled to be registered as applicant whether or
not such person is in fact recorded as such in the European Patent Register” (Rules 5(1)(a), 8(5)(b)
RPUPCA)
- the name of each proprietor or applicant must be indicated in the opt-out application (Rule 5(3)(a)
RPUPC)
- a declaration of entitlement must be filed for any person indicated in the opt-out application who is
not recorded as proprietor or applicant in the corresponding register (Rule 5(1)(a),(3)(a) RPUPC)

- For important cases to be opted out:

- verify ownership – which corporate entity is the “true” proprietor?
- ideally, clean up the relevant registers

- Practical option:
- file opt-out applications in the name of all registered proprietors (excluding any non-existent entities)
- double-check the indicated proprietors (and possibly correct the opt out) before taking any concrete
steps to enforce a specific patent

51
Opting out – more difficult than it seems?

- Opt-out application is effective only if it is registered before any action in respect of the EP bundle patent has
been commenced before the UPC
- file opt outs in the provisional application phase (sunrise period) to prevent possible early revocation
action before UPC

- An opt out can be reversed by filing an application to withdraw the opt out
- effective only if it is registered before an action in respect of the EP bundle patent has been
commenced before a national court of a UPC state

- EP bundle patent can be opted out to protect it against central revocation, and the opt out can subsequently
be withdrawn to use central enforcement via the UPC
- risk of third parties commencing national revocation actions that block the withdrawal of the opt out

If infringement or revocation actions have already been commenced in respect of an EP bundle patent
in a UPC state prior to the entry into force of the UPC system (even if no longer pending, or not
concluded), the patent can still be opted out – but it may not be possible to withdraw the opt out!
EP bundle patents already undergone litigation  better not opt out as matter of precaution?

- EP bundle patents under attack when UPC starts:

- risk of central revocation actions before the UPC (may not be stayed, to be concluded in 1 year)
- pending EPO opposition proceedings  consider opt out
- pending national revocation proceedings  opt out may be sensible – but could be final

52
Opting out – in practice

53
Opting out – in practice

54
Opting out – in practice

55
Opting out – in practice

56
Opting out – in practice

57
Opting out – in practice

58
Important Developments for Licensing under the UPC (1)

• Right to opt out (Art. 83(3) UPCA)

• Only proprietor can lodge application to opt out
• If exclusive licensee wishes to opt licensed patent out of UPC, he needs to rely
on the licensor (patent proprietor)
• Similarly, an exclusive licensee might wish an opted-out patent back into the
UPC system and wants a degree of control
• Prudent to now review existing licensing agreements to ascertain whether the
agreement offers flexibility to opt out and potentially back in
• Bringing action before the Court (Art. 47 UPCA)
• Proprietor and exclusive licensee can bring action before the Court in own right
• Non-exclusive licensee can bring proceedings when expressly permitted
• Without any agreement exclusive licensee can instigate proceedings without (!)
consent from licensor
• Licensing agreements should contain clear mechanism and set out responsibilities
and degree of control a licensee should have over prosecution, defense and/or
enforcement of licensed patent, also as to who will cover the costs

59
Important Developments for Licensing under the UPC (2)

• Potentially serious side-effect when licensee brings action for

infringement

• Under Art. 47(5) UPCA the validity cannot be contested where patent proprietor does
not take part in the proceedings

• Bring action against proprietor (Art. 47(5) UPCA)

• According to Rules 25.1(i) and 25.2 of the Rules of Procedure, the Court Registry shall
serve a copy of the counterclaim for revocation on the proprietor and make them part of
the proceedings.

• This means that actions brought by licensees can have serious consequences.

60
Conclusion – Points to consider and observe

• New option of obtaining a UP can significantly save validation and renewal

fees – however, there is no flexibility for a UP with respect to enforcement
or invalidation options – it has to be litigated before the UPC and can only
be enforced or revoked in one shot.
• During the transitional period of 7-14 years, traditional EP patents will be
the most flexible; however, costs for validation and renewal are high.
• A decision is to be made during this period whether to save money and opt
for a UP, but being part of the new system without alternative, or to spend
more money for obtaining an EP with more flexibility, incl. opt-out.
• After the transitional period, all EP patents that have not been opted out
will only be enforceable before the UPC.
• A granted EP cannot be transformed into a UP once the new system starts –
therefore potentially consider to delay the application proceedings.
• Check existing license agreements!

61
Choice between Unitary Patent and European Bundle Patent

• Factors to be considered (highly simplified):

• Confidence in UPC
• No confidence in UPC  choose bundle patent + opt out
• Value of the patent
• Very high value  take no risk (central revocation + lack of UPC case law)  choose bundle patent
• Strength (validity) of the patent
• High strength  patent defensible in possible central revocation action  choose unitary patent
• Low strength  do not take risk of central revocation  choose bundle patent
• Likelihood of multinational enforcement
• Enforcement in multiple UPC states likely  consider unitary patent (?)
• Costs / desired territorial coverage
• Validation costs (official fees, translation costs, and attorney’s fees)
• Renewal fees (official fees and attorney’s fees/service fees)
• Costs for potential transfers, changes of address etc.
 It depends on the desired territorial scope whether a unitary patent or a bundle patent
is more cost-effective

62
TO DO – a simplified road map for you and your clients

• Reach a (speculative?) decision as to whether or not to participate in new

system (yes, in full / partially on a case-by-case basis / no, not at all)
• If yes:
• No opt out
• Request unitary effect for all future grants
• Possibly file early requests for unitary effect for pending applications
• Possibly request delay in issuing decision (only available after German ratification)
• Possibly delay grant of pending applications and/or file divisional applications
• Check/revise license agreements

• If no:
• Opt out entire EP portfolio during sunrise period
• Verify ownership (at least for important cases) before sunrise period
• Ideally clean up the relevant registers
• No requests for unitary effect for future grants

63
TO DO – a simplified road map for you and your clients

• If partially:
• Review entire EP (patent) portfolio to split into EPs and UPs before sunrise period
• Opt out EPs during sunrise period
• Verify ownership for (at least important) EP cases before sunrise period
• Ideally clean up the relevant registers
• Possibly file early requests for unitary effect for pending applications (UP)
• Possibly request delay in issuing decision (UP)
• Possibly delay grant of pending applications (UP) and/or file divisional applications
• Check/revise license agreements for UP cases
• Regularly review EP portfolio for additional opt outs
• Regularly review opted-out EPs for potential opt in

• Additional considerations for pending applications:

• Take costs (validation and annuities) into account
• Important cases: consider divisional applications (EP/UP), parallel DE applications and/or
parallel utility models!

64
Thank you for your
attention
Contact: eisenmann@vossius.eu

65