• Gottfried Schüll

EU filing strategies for standard essential patents (SEPs) under the UPC

Using the German legal system to avoid risks

The Unitary Patent Court (UPC) will open its doors on June 1, 2023. The new court system brings many advantages for patent holders. Anyone applying for protection under the new unitary patent (UP) with a European patent will receive protection in 17 EU countries. The costs are about the same as those for the four most important countries under the previous system. The savings compared to conventional application in all 17 EU countries separately add up to a low six-figure euro sum. Therefore, at least for holders of standard essential patents (SEPs) who only collect fees under SEP licensing programs in those EU countries where protection exists, a UP is clearly recommended.

A look at the scope based on the EU population figures highlights the potential of the new unitary patent: one UP covers approximately 300 million people. These include the three most populous EU countries, Germany (84 million), France (68 million), and Italy (60 million), as well as the Netherlands (18 million), Belgium (12 million), Sweden (10 million), Portugal (10 million), Austria (9 million), Bulgaria (6.5 million), Denmark (5.8 million), Finland (5.5 million), Lithuania (2.8 million), Slovenia (2.1 million), Latvia (1.9 million), Estonia (1.3 million), Luxembourg (0.65 million), and Malta (0.52 million). Other EU member states such as Spain, Poland, Romania, Greece, the Czech Republic, Hungary, Slovakia, Ireland, Croatia, and Cyprus have not yet joined the UPC. Until they do, these countries must still be named separately when applying for a UP. Should all EU member states join the UPC in the future, a UP would cover approximately 450 million people. The granting of patents in non-EU states that cannot join the UPC, such as the United Kingdom or Turkey, must also be applied for separately if required.

Simultaneous protection for SEPs: combination of UP and German patent

SEPs must be viewed separately with regard to the UPC: these special patents, which protect indispensable technologies in numerous industries, have a comparatively high probability of being enforced in patent infringement proceedings. The UPC will always be responsible for such proceedings resulting from a UP – but its practice is currently unknown. For SEP holders, this could mean a huge risk and could discourage them from choosing a UP. There is an alternative: considering the above-mentioned cost advantages offered by the UP, SEP holders can apply for a UP+ patent, in other words a UP plus an identical German national patent for each SEP. A German patent ensures simultaneous protection under the German legal system, which is considered the most successful in the world when it comes to effectively protecting ownership of inventions for innovative companies.

The good news is the German legislator allows precisely this simultaneous protection by a UP and a completely identical German patent. This means that SEP holders can avoid risks, as they can rely on the UPC and the national German patent court system at the same time. This simultaneous protection makes particular sense for SEPs regularly enforced in infringement proceedings: it allows a choice between the protection of innovation by the new UPC and the extremely well-established German national courts.

Seven years for strategic decisions

For such simultaneous German SEPs, it is possible to defer the examination procedure for seven years after filing to reduce costs. The fees for filing and maintaining a German simultaneous patent application to ensure access to the national courts in Germany would then amount to approximately 1,000 euros, including a simple machine translation. If the simultaneous UP is granted, SEP holders can then still decide whether the German simultaneous patent should also be submitted for granting after or before the examination deferred for seven years expires. In the meantime, they gain further insights into the practice of the UPC, which may help them in making their decision.