What Happens When your European Patent Application is allowed?
Once your European patent application is allowed there begins a grant and validation procedure and you have to make some decisions regarding the type of patent you want to be granted as well as the countries in which it is to be valid and the courts that are to have jurisdiction.
Type of Patent – unitary or national patents or a mixture.
Your European application may be validated as a unitary patent, meaning it is a single patent bundle valid in seventeen of the European Union states: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.
The European application may also be validated as separate national patents. This is the only option for those countries that are not part of the unitary patent.
For countries covered by the unitary patent you choose whether you prefer a separate national patent or a unitary patent. If you want your patent to be validated in both unitary patent states and non-unitary patent states then you can choose separate national patents for all the states you want or you can choose a unitary patent plus national patents.
Example: You want the UK, France, Germany, Italy and Spain.
France, Germany and Italy are part of the unified patent, the UK and Spain are not.
You have two options.
Option 1: Separate national patents for UK, France, Germany and Spain.
Option 2: Unified Patent, plus national patents for UK and Spain.
The advantage of option 2 is that you get 15 other European Union countries for free.
Which Courts, European Patent Court or National Courts?
The European “Unified Patent Court” (UPC) decides all issues relating to the unitary patent, and its decisions are effective in its member states. For national patents the UPC is also the default option, meaning that decisions can be taken with respect to all the EU states. This is good if you are suing an infringer, but is not good if someone else is trying to invalidate your patent. Accordingly, unless there is some likelihood that you will be suing anyone in the near future, we recommend opting out of the UPC for your national patents. The opt out can always be cancelled if you need to sue someone in the UPC.
Further considerations for opting out of UPC: You want to avoid the risk of centralized revocation on key Patents protecting an important product, fundamental to a particular technology, patents that are licensed and/or otherwise vulnerable to a validity attack. However the stronger the Patent, the advantages of using the UPC infringement proceedings may perhaps outweigh the potential disadvantage of risk of centralized invalidation action. This advantage is of higher importance in industry fields where infringement proceedings are more common (engineering or electronics, etc.) and lesser where such proceedings are less common (chemical industry etc.). Also, you may want to avoid your opponent from attacking you on their “home court” by forcing the proceedings via UPC (which may be considered “neutral ground”). Further dilemma – avoid the uncertainty of an untested forum vs. speed of litigation in the UPC.
For further information, please consult with your attorney.
Disclaimer: The information provided on this webpage does not constitute legal advice and is intended for general informational purposes only. Information on this webpage may not reflect the most up-to-date legal developments or other information. The webpage contains links to other third-party websites for convenience purposes only. Ehrlich Group assumes no responsibility or liability for any errors or omissions in the content of this page.