5. Strategic Considerations

5.1    Application Procedure

The unitary effect of Unitary Patents will clearly simplify matters. It will allow the applicant to assess the effects of patent protection in the participating member states on the basis of only one legal regime. Also the patent administration will be considerably simplified: instead of administering a number of patents, there only will be a single patent to be administered with deadlines being surveyed and annual fees being paid in time.

Also the reduced translation requirements will bring fundamental simplification compared to the current status in a number of EPC states.

Whether in the future it is advisable to apply for Unitary Patents, "classical" European patents or national patents (or in Germany utility patents) is of course also a question of costs. The EPO has adopted the "true top 4" level according to which renewal fees are based on the sum of the renewal fees currently paid for the four most frequently validated EU member states (Germany, France, United Kingdom and the Netherlands). Speaking purely financially, this makes the Unitary Patent attractive for:

  • Applicants who currently validate in four or more countries,
  • Applicants who currently validate in fewer than four countries, but who expect that the reduced administration costs compensate for increased renewal fees,
  • Applicants who currently validate in fewer than four countries, but who wish to acquire broader protection.

 

5.2    Court Proceedings

5.2.1    The Need for a Decision with regard to "classical" European Patents

It is a complex task to balance the pros and cons of national jurisdiction on the one side and of the Unified Patent Court on the other side.

This will become very clear already during the transitional period of art. 83 par. 1 AUPC. This art. provides that lawsuits before the national courts have no exclusive effect on lawsuits before the Unified Patent Court and vice versa.

Such an exclusive effect exists only with regard to the opt-out or opt-in declaration in accordance with art. 83 paras. 3 and 4 AUPC respectively; an opt-out or opt-in declaration is blocked if a lawsuit (patent infringement action or revocation action) is already pending before a national court or the Unified Patent Court. However, if no opt-out or opt-in declaration is given, there is an alternative competence between the Unified Patent Court and national courts for matters based on "classical" European patents, i.e. during the transitional period lawsuits with regard to "classical" European patents may be filed with either the national courts or the Unified Patent Court.

The patent owner may for example decide to file a patent infringement action with a national court (for example with the Regional Court of Düsseldorf in Germany) which then is answered by the defendant with a revocation action before the central division of the Unified Patent Court. This might happen quite frequently.

The possibility of a forum shopping following from art. 83 par. 1 AUPC for patent infringement and revocation actions forces the proprietor of European patents already now to consider the pros and cons of each court system.

5.2.2    Pros and Cons of the Unified Patent Court System (Opt in or opt out?)

So what are the pros and cons?

Court proceedings under the Unified Patent Court system will tend to be easier and more cost effective since only a single patent infringement action and only a single revocation action, if any, is to be filed instead of a number of respective national court proceedings. Consequently, court costs and attorneys fees will be reduced.

The decision for the Unitary Patent and the Unified Patent Court will furthermore have the huge advantage that effective patent protection can be obtained for a number of states in which currently no effective enforcement of patents is possible.

At the moment, only in a handful of European states patent litigation is commenced: The judgments of national courts are limited to the respective national territory. It would theoretically also be possible that, e.g., before a German court one litigates the infringement a French patent. However, since the decision "GAT/LuK"  of the European Court of Justice this possibility is practically barred. The introduction of the Unified Patent which will be enforced in one single court proceedings for all participating member states will have the effect that in a wide range of European Union member states for the first time ever patent protection will effectively be enforced.

The most striking disadvantage of the Unitary Patent will clearly be that it can be nullified with one single revocation action. The patent owner "raises the stakes" if he makes a decision for the Unitary Patent and the Unified Patent Court system.

A further disadvantage of filing a patent infringement action with the Unified Patent Court lies in art. 63 par. 1 AUPC: Under German law, the patent owner has a mandatory claim for injunctive relief in case of patent infringement. Under the AUPC, it is in the discretion of the Unified Patent Court to grant injunctive relief. It remains to be seen which aspects the Unified Patent Court will consider in its discretionary decision. However, it is not unlikely that collecting companies as well as other non-practicing entities will have to face an additional hurdle for obtaining injunctive relief. There is an ongoing discussion whether non-practicing entities shall be entitled to monetary relief only. The same applies for owners of standard-essential patents.

A further important issue will be how local and regional divisions will handle counterclaims for revocation of patents, i.e. whether they will transfer such counteractions or whether they will hear both, the patent infringement action and the revocation action. It is widely expected that the local divisions domiciled in Germany, which will comprise experienced German patent judges, will transfer revocation actions to the central division. If this should become common practice for the local divisions in Germany, it could possibly become equally attractive to file patent infringement actions with a local division of the Unified Patent Court in Germany as with a national German patent court. However, the assessment of the pros and cons in this respect also depend on the quality and speediness of decisions of the central division. It might well be that it remains more attractive to keep on filing patent infringement actions with the national German patent courts rather than with the Unified Patent Court since the former procedure often awards the plaintiff the advantage of being able to enforce a judgment of first instance long before patent validity has been assessed by the German Federal Patent Court.

And finally the biggest obstacle for the Unitary Patent to overcome might be the uncertainty how the new patent regime and the new courts will prove themselves. The question whether the users will gain confidence in the Unified Patent Court system will depend in the first place on whether it will be possible to recruit highly qualified judges and to establish a body of high quality decisions. We will follow up this interesting future development.