Unified Patent UP vs Classic EP Patent or National EP Patent Decision B Unified Patent Court UPC vs NonEPC G for beginning of transitional period E for end of transitional period Lighthashed blue ID: 1002659
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1. 1Filing StrategiesDecision AUnified Patent (UP) vs. Classic EP Patent (or National EP Patent)Decision BUnified Patent Court (UPC) vs. Non-EPCG for beginning of transitional periodE for end of transitional periodLight/hashed blue for non-defaultAllowed EP ApplicationClassic EP Patent1. Validate & maintain centrally, except for UK, CH, etc.2. Validate & maintain separately3. Litigate in UPCUPClassicUPCNon-UPC4. Litigate in UPC or local courtsE5. Litigate in local courts6. Litigate in UPCABG
2. Decision FactorsGeneral/ProsecutionPatent value (key v. incremental)Industry (CS/EE v. bio/pharma)Applicant type (large v. SME)Application Type (existing, pending, divisional, UP, national)Geographical scope (few v. many states)LitigationEnforcement Injunction (SEP, specific products)Invalidity challengeTransactionLicensing (existing contracts, rights of licensee)Ownership (assignments, co-owners)2
3. 3Requesting a Unitary Patent: Pros:Wide territorial coverage (up to 24 EU countries) by filing a single request for unitary effect up to 360 million people covered (vs. 330 million people in the US) One single renewal fee to be paid at the EPOwill reduce costs of obtaining broad patent protection in EuropeReduces the number of registrations for transfers & licensesOne single patent to enforce and defend Cons:When revoked, a Unitary Patent will be revoked in all the contracting EU Member StatesOpt-out from exclusive competence of UPC would not be available for Unitary PatentsUnitary effect would not allow selection of a subset of countries to be abandonedPotentially more expensive if only narrow coverage is needed Unitary Patent – Pros/Cons
4. Example* of validation costs over a 15-year period: Classic strategy vs. UP strategyEP Validations: Classic vs UP strategy4NARROW filing rangeClassic Narrow Validation(DE, FR, GB)UP + GBCOSTS3 official annuity fees (DE + FR + GB)Service fees for annuity fee payment2 official annuity fees (UP + GB)Service fees for annuity fees paymentFull translation of the patent requiredCentralized revocation can be avoided by opting outUPC or National courts availableSelective abandon of countries allowedWide coverage (up to 24 MS + GB)Limited coverage compared to UP approachNo opt out possible, i.e. possible central révocationNo selective abandon of countries Higher annual feesTranslation costsCOSTSDE + FR + GBUP + GBTranslation0,00 €3 750,00 €Official annuity fees (6th to 20th year)24 182,00 €40 439,00 €Validation fees0,00 €0,00 €Service fees for annuity fees payment2 700,00 €1 800,00 €TOTAL COSTS26 882,00 €45 989,00 €NARROW filing range + 19 107 € over 15 years per EP patent for UP validation strategy (+71%)*NotesUnitary Effect requires full translation of the EP patentAssumption: translations of 25000 words (spec. + claims)EP patent grant procedure takes about three to five yearsAssumption: EP application granted in the 5th year Validation fees including validation service fees & publication feesService fees for annuities payment is deemed to be invoiced 60€Narrow ValidationsNarrow Unitary Protection strategy217 Million427 MillionGDP = 9 Trillion €GDP = 14 Trillion €
5. Example* of validation costs over a 15-year period: Classic strategy vs. UP strategyEP Validations: Classic vs UP strategy5COSTSNARROW + NL*UP + GBTranslation440,00 €3 750,00 €Official annuity fees (6th to 20th year)35 082,00 €40 439,00 €Validation fees325,00 €0,00 €Service fees for annuity fees payment3 600,00 €1 800,00 €TOTAL COSTS39 447,00 €45 989,00 €*NotesUnitary Effect requires full translation of the EP patentAssumption: translations of 25000 words (spec. + claims)EP patent grant procedure takes about three to five yearsAssumption: EP application granted in the 5th year Validation fees including validation service fees & publication feesService fees for annuities payment is deemed to be invoiced 60€5G intermediate includes ES: Full translation requiredINTERMEDIATE filing range + 6 542 € over 15 years per EP patent for UP validation strategy (+16%)INTERMEDIATE filing rangeClassic Intermediate Validation(DE, FR, GB + NL) UP + GBCOSTS4 annuity fees (DE + FR + GB + NL)Claim translation (NL)Validation costsService fees for annual fees payment2 annuity fees (UP + GB)Service fees for annual fees paymentFull translation of the patentCentralized revocation can be avoided by opting outSelective abandon of countries as time passesWide coverage (up to 24 MS + GB)Limited coverage compared to UP approachNo opt out possible, i.e. possible central revocationTranslation costs during the transitional periodNo selective abandon of countries 235 MillionIntermediate Unitary Protection strategy427 MillionGDP = 14 Trillion €GDP = 9.5 Trillion €Intermediate Validations
6. Example* of validation costs over a 15-year period: Classic strategy vs. UP strategyEP Validations: Classic vs UP strategy6COSTSINTERMEDIATE + ES + IT + SEUP + GB + ES Translation8 520,00 €3 750,00 €Official annual fees (6th to 20th year)52 711,00 €45 355,00 €Validation fees1 826,00 €621,00 €Service fees for annual fees payment6 300,00 €2 700,00 €TOTAL COSTS69 357,00 €52 426,00 €*NotesCalculation based on one example of a broad filing range coverage (INTERMDEDIATE + ES + IT + SE)Unitary Effect requires full translation of the EP patentAssumption: translations of 25000 words (spec. + claims)EP patent grant procedure takes about three to five yearsAssumption: EP application granted in the 5th year Validation fees including validation service fees & publication feesService fees for annuities payment is deemed to be invoiced 60€BROAD filing range - 16 931 € over 15 years per EP patent for UP validation strategy (- 25%) **Parallel national filings (e.g.; DE, FR) could be further considered when allowedBROAD filing rangeClassic Broader Validation(DE, FR, GB, NL + at least 2 additional countries)UP + GB + ESCOSTSAt least 6 annuity fees (DE + FR + GB + NL + 2 new countries)Claim translations (e.g.; NL, SE) and full translation (e.g.; IT, PL, ES)Validation costsService fees for annual fees payment3 annuity fees (UP + GB + ES)Service fees for annuity fees paymentFull translation of the patentCentralized revocation can be avoided by opting outSelective abandon of countries as time passesWide coverage (up to 24 MS + GB + ES)Only one full translation (requested during the transitional phase)Lower annuity feesLimited coverage in comparison with UP approachCosts for the full patent translationsLarge number of indiividual registrations required (for transfers or licences)No opt out possible, i.e. possible central revocation No selective abandon of countries along the way351 MillionGDP = 13 Trillion €Broad ValidationsBroad Unitary Protection strategy474 MillionGDP = 15 Trillion €
7. 7Being subject to the competence of the UPC: Pros:Pan‐European enforcement – A single, uniform infringement action sufficesHigh-quality judges – The court includes technical judges for different artsTime efficiency – A 1st instance decision is to be obtained within ~12 monthsLanguage advantage – Litigation is conducted in English for patents in English Cons:Central revocation any time during lifetime of a patentComplexity UnpredictabilityUnified Patent Court – Pros/Cons
8. Revocation Actions before the UPCWithin nine months from grant: Opposition proceedings before the EPO and revocation actions before the UPC could be brought against the same patent. After nine months and during the transitional period: Each national patent could be challenged in the UPC or national courts. On the date the UPC Agreement comes into force: The German prohibition on double patenting will be amended to only apply to EP patents that have been opted out of the EPC. 8
9. EPO Opposition v. UPC Revocation9OppositionRevocationTimingFiled within 9 months from grant, starting after end of 9 monthsAnytime during life of patentGeographical Scope39 European statesPresently 17 European statesGroundsAdditionally, lack of entitlement and national prior artsExpert evidencePossible but unusual for an expert to be summoned to the oral hearingExperts can be cross-examinedAppealBoard of Appeal in MunichCourt of Appeal in LuxemburgFees840 Euros20,000 EurosRecoverable costsBy winning party