Options for patent proprietors and applicants

There are no changes in the procedure of filing and examination before the EPO (pre-grant phase); also the course of opposition proceedings remains unchanged. Only after grant, there will be the option for patent proprietors to register the newly granted European patent as a unitary patent, that is the proprietor must file a "request for unitary effect" at the EPO to obtain a unitary patent. If no such request is filed, the patent becomes a "classical" European patent, i.e. a bundle of national patents with certain validation requirements in some states.

For those countries that do not participate in the unitary patent system, the patent is still granted as a bundle of national patents, even if unitary effect is requested for the participating states.

Unitary patent

Within a short period of one month from the publication of the mention of the grant of a European patent, patent proprietors may choose to register the granted patent as a unitary patent (i.e. file a request for unitary effect). For the participating EU Member States, the patent will then become an single legal entity falling under the exclusive jurisdiction of UPC. In parallel, the same European patent can be validated in one or more states not participating in the unitary patent system.

Nationally validated European patents

The existing system to obtain a bundle of national patents will still be available, i.e. after grant of a European patent, patent proprietors can select individual EPC Contracting States for validation.

National patent/utility model

It will always be possible to apply for national patents in the various European states before the respective patent offices. Some member states, e.g. Germany and France, have changed their law to explicitly allow for, at the same time, patent protection by a unitary patent/nationally validated EP patent granted by the EPO as well as a national patent granted by the national patent office (filed via the PCT or the Paris Convention route). Also, at least in Germany, the possibility to file a divisional national utility model application derived from an EP patent application remains available.

Transitional period – Option to opt out

The Unified Patent Court (UPC) has exclusive jurisdiction for unitary patents and for European patents without unitary effect. For unitary patents, there is no possibility to opt out from the jurisdiction of the UPC, whereas for European patents without unitary effect, proprietors have the option of opting out from the jurisdiction of the UPC during a transitional period of initially seven years (which may be extended up to a maximum 14 years), as long as no action has been filed in the UPC system. During the transitional period, the opt-out can be withdrawn (one time).

There are several possibilities to combine national patents and utility models, unitary patents and "classic" European patents to adapt your patent portfolio to your individual needs. Risk minimization may include to additionally prosecute a divisional application as a "classic" European patent, to file national patent applications in parallel or to filed divisional national utility models.