European patents, Unitary Patents and Unitary Patent Court
In addition to the national patent system, there has also been a European patent system since the 1970s. This system provides for two protection options. One is the European patent, which enables applicants to individually design the territorial scope of protection. The other one is a new European patent with unitary effect, referred to as "Unitary Patent" and to be introduced soon.
The European patent
The European Patent Office (EPO) with headquarters in Munich carries out an autonomous European patent grant procedure. This procedure is based on the European Patent Convention ( EPC) , which comprises 39 contracting states, including all 27 EU member states as well as non-EU member states, such as Switzerland, Norway and Turkey. Patents granted on the basis of the EPC are referred to as “European patents”. After completion of a single procedure for the filing and grant of patents, the European patent has the same effect in each EPC contracting state for which it has been granted. In addition, it is subject to the same provisions as a national patent granted in that state.
Disputes before national courts
Anyone may file an opposition with the EPO against the grant of a patent by the EPO within nine months of the publication of the grant. A European patent is revoked if it lacks important requirements for its grant, such as novelty. The patent may also be partially revoked. It is possible to lodge an appeal against the decisions of the EPO’s examining and opposition divisions.
Enforcement or revocation of the European patent with effect in Germany has so far been governed by national law. This means that the enforcement or revocation has to be asserted in Germany before German courts. European patents granted by the EPO with effect in Germany can be challenged, for example, by an action for revocation before the Federal Patent Court. The precondition is that there are no pending European opposition proceedings or that oppositions can no longer be filed. The action may be based on the same grounds as in the case of an opposition at the EPO.
A new option for patent protection – the European Unitary Patent
Since 1 June 2023, in addition to national and European patents, there is a new option to protect inventions in the EU: the European patent with unitary effect (referred to as "Unitary Patent"). For the first time at EU level, there will then be uniform patent protection, including a unified court system.
In contrast to the European patent, which provides protection in up to 39 contracting states to the EPC, the unitary patent offers uniform protection only in those EU member states that have ratified the Agreement on a Unified Patent Court ( UPCA) of 19 February 2013, including in Germany. To date, 17 member states have joined the new unitary patent system. More states will be able to accede to the agreement in the years to come.
Once the grant procedure is completed, applicants can file the request for entry of the unitary effect in the register within one month of publication of the mention of the grant in the European Patent Bulletin. It is not the national patent offices, but the EPO which is directly competent for the Unitary Patent. For example, applicants pay renewal fees for the maintenance of their Unitary Patent directly to the EPO.
The Unitary Patent is thus another protection option for inventions – in addition to the national German patent and the European patent.
Detailed information on the new unitary patent system and the participating EU member states can be obtained from the EPO ( Unitary Patent Guide).
Legal disputes before the Unified Patent Court
As of 1 June 2023, legal disputes relating to the new Unitary Patent will be heard by the Unified Patent Court (UPC), the new court specialised in patents. The legal basis of the unified patent court system is the UPCA.
The court is competent solely for legal disputes concerning Unitary Patents including, for example, infringement and revocation actions and requests for interim injunctions, but also (except for the following exceptions) for legal disputes concerning European patents.
The UPC’s rulings have direct uniform effect in all of the participating member states. The court consists of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance comprises a central division located in Paris, a section in Munich, four local chambers in Germany and further local or regional chambers in the participating member states.
Opt-out: Holders of existing European patents may remain in the previous court system
For a transitional period of seven years, which can be extended by up to a further seven years, revocation and infringement actions concerning European patents can also continue to be brought before the respective competent national courts. Moreover, proprietors or applicants of a European patent filed or existing before 1 June 2023 or newly granted on or after that date can reject the exclusive jurisdiction of the UPC, provided that no action has yet been brought before the UPC. The opt-out declaration must be received by the UPC at least one month before the end of the transition period. In the case of an opt-out, the respective national courts continue to be competent for legal actions.
There are specific Rules of Procedure that govern proceedings before the UPC; and there is also a separate schedule of fees for payments to the European Patent Office.
Further details can be found on the EPO website
Possibility of double protection both at the DPMA and the EPO
In future, applicants will have the option of double protection in Germany from the date of entry into force of the UPCA. Consequently, applicants will be able to file both a European patent/a Unitary Patent with the European Patent Office and a national patent with the DPMA for the same invention and to obtain all of these patents. With a European patent, double protection is possible only if no opt-out has been filed for this European patent.
Unitary Patent or German patent?
So far, protection for many European patents has only been claimed in one to three countries (almost always including Germany). Less than ten percent of all European patents are validated in more than five countries. Thus, from a strategic point of view, the less expensive protection limited to Germany may often be fully sufficient. You can find out more about the advantages of a German patent.
Double protection may offer benefits particularly in the event of a legal dispute. For example, if a Unitary Patent is revoked by the UPC, protection in Germany will be maintained based on the national patent. Under certain conditions, however, this double protection is subject to a restriction when asserting claims before German courts (also referred to as “objection to double demands”; see also Notice of the president No. 6/22).
However, provided that a European patent has already been granted and no opt-out has been filed, the possibility of obtaining double protection exists only for national patents granted after the entry into force of the UPCA. In order to keep the possibility of such double protection open for applicants, the DPMA provides the following transitional measures to patent applicants: (i) a request for extension of current time limits for replying to office actions and (ii) a request for deferment of the decision on the application (see Notice of the president No. 6/22).
German utility model as supplement
Furthermore, applicants can have a German utility model split off from a European patent application with effect for Germany, thus obtaining protection more quickly – even if a patent is revoked at the European level.
Last updated: 1 June 2023