With the creation of the Unified Patent Court both for “bundled patents” (so-called classic European patents) as well as for “patents with unitary effect” (so-called unitary patent), every owner of a bundled patent will wonder whether his patent should be subject to the responsibility of the Unified Patent Court or of the Infringement Courts and Invalidity Courts which were previously responsible. Without a so-called “opt-out”, the classic European patent can be assigned to either the one jurisdiction or the other, depending on the patent owner’s or the invalidity plaintiff’s choice. With a single invalidity action against the European patent and the decision for the Unified Patent Court by the plaintiff, the patent owner runs the risk that the European patent is revoked in one single step for all members of the Agreement on the Unified Patent Court where the European patent is effective.
1. Unified Patent Court
The Unified Patent Court will be responsible for the following proceedings:
Actions for actual or threatened infringements
- Actions for declaration of non-infringement
- Actions for provisional and protective measures and injunctions
- Actions for revocation
- Actions for damages or compensation
- Actions against decisions by the European Patent Office (EPO).
Proceedings concerning “unitary patents” will exclusively be led before the Unified Patent Court, unlike in case of “classic European patents” which fall within the responsibility of the Unified Patent Court “or” the national courts, depending on the patent owner’s, the infringer’s or the invalidity plaintiff’s choice.
2. Unitary patent (Patent with unitary effect) Initially, the new unitary patent is a classic European patent application. As before, it is subject to the examination and grant proceeding at the European Patent Office without a decision as to unified effect or classic bundle effect being required.
Only within one month after the communication regarding the grant of the patent can a request for unified effect be filed. In case the request is permissible, the European patent unfolds a unified effect for all participating member states of the Agreement on the Unified Court. The resulting unitary patent is then subject to the jurisdiction of the new Unified Patent Court.
3. Classic European patent
a) Competence
Many patent owners are currently not aware of the fact that at the moment, after entry into force of the Agreement on the Unified 
Court, all active classic European patents automatically become subject to the jurisdiction of the new Unified Patent Court which is competing with national courts, as long as this is not explicitly excluded. As long as the patent owner does not file a declaration with the EPO (so-called “optout”) that he does not want his classic patent to fall within the responsibility of the Unified Patent Court, a third party can file a revocation action “at his discretion” either before the new Unified Patent Court or, as hitherto, before a national court.
b) Danger of a revocation action before the Unified Patent Court In case that a third party files a revocation action before the Unified Patent Court and the latter declares the classic bundle patent null and void to its full extend, the bundle patent will be cancelled in all member states of the Agreement on the Unified Patent Court for which it was designated.
4. Opt-out as a precautionary matter
a) Opt-out
In order to avoid the danger of a central revocation action before the Unified Patent Court, a declaration of “optout” before the EPO is necessary for classic European patents. The classic European patent will then exclusively fall within the responsibility of national infringement and revocation courts. The opt-out can be declared within a transition period of seven years after entry into force of the agreement. The transition period can be extended to a maximum of 14 years.
b) Advantage opt-out
A third party will be forced to attack the patent in every single national state that was designated in order to achieve a broad revocation of the classic European patent. That means high expenditures of time and costs for the plaintiff so that for tactical reasons, a revocation action will first of all only be raised in one country. In case of a revocation, the patent only becomes void in this single country and remains in effect in the remaining designated countries for the time being. Due to the different jurisdiction of national courts, the revocation in one country furthermore does not cause the revocation in another country. Moreover, due to the high costs, the plaintiff will only concentrate on those countries which are economically interesting for him or on the country where there is a pending infringement action.
c) Withdrawal of the opt-out
A withdrawal of the opt-out is possible at any time, provided no action before a national court is pending. The rescission from the withdrawal is called opt-in. 5. Recommendations Due to the fact that at the beginning, there will not be any settled case law of the Unified Patent Court and that therefore, there will be a certain legal uncertainty for the patent owner, we recommend to request the opt-out at least for the economically strongest classic European patents of your or your client’s current patent portfolio. A waiting time of at least approximately three years after entry into force of the European Agreement on the Unified Patent Court is advisable to see how the jurisdiction, quality and efficiency of the court develops. The EPO will raise a fee for requesting an opt-out, however, this is likely to remain within a manageable range. Besides the opt-out option, there is furthermore the possibility of circumventing the unitary patent system by registering national patents. Another advantage in this regard is that national patents are not subject to the unitary patent system even after the transition period of seven years.
| Opt-out: –> the classic European patent falls exclusively within the responsibility of national courts Requirements: – no pending action against the European patent before the patent court – against payment of a fee – request to be filed at the latest one month before expiration of the 7-year transition period No opt-out: –> depending on the infringer’s or invalidity plaintiff’s choice either – Unified Patent Court or – national court is responsible for actions for revocation or actions for determination of noninfringement –> depending on the patent owner’s choice either – Unified Patent Court or – national court is responsible for actions for infringement of the patent, actions for provisional measures, damages or compensation Opt-in = withdrawal of the opt-out –> depending on the choice: Unified Patent Court or national courts responsible Requirements: – no pending action before national courts – against payment of a fee – request to be filed at the latest one month before expiration of the 7-year transition period |
*Agreement on the Unified Patent Court = not yet in force, currently ratified by: Belgium, Denmark, France, Malta, Austria,
Sweden; countries participating in the legal system: 25 EU member states, except Poland, Spain and Croatia
Dipl.-Biotechnol. Vanessa Bockhorni (Patent Attorney)
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