This is particularly attractive for patents which are likely to be infringed by larger competitors across a multitude of markets, where the “long arm” jurisdiction of the UPC might be helpful for enforcement. However, the sword cuts both ways: the cost of centralised protection is a centralised risk of revocation, meaning patent proprietors litigating before the UPC run the risk of a successful counter-claim for revocation costing them all patent rights in all UPC territories.

Under the UPC agreement all European patents are under the jurisdiction of the UPC, unless, during a transition period, opted out of the UPC. However, this transition period is presently intended to end in 2030 (although it may be extended for another seven years). Patent proprietors who wish to continue avoiding the UPC whilst retaining protection in Europe may be wondering how to do so in a post-transition world.  

In this article, we consider several strategic filing options for avoiding the UPC, based on obtaining the national patents for UPC countries, because the UPC only applies to European patents granted by the EPO.

The Patent Cooperation Treaty (PCT)

Administered by the World Intellectual Property Organization (WIPO), the PCT functions similarly to the EPO’s classic European patent, granting an applicant corresponding national applications and rights from a single filing of a PCT application. Applicants can designate any number of the 159 contracting states as designated states for which they would like patent protection, but the national applications must still be prosecuted before the designated offices. A PCT application can be filed at any receiving office, and fees are paid for transmission and international filing (in the order of roughly €1,500, depending on the receiving office. An international search is carried out by an international searching authority (ISA), such as the EPO (which charges €1,885 for an international search).

The EPO can also be a designated office for a regional phase from the PCT application, but if the goal is to avoid getting a unitary patent, then designating the relevant member states’ national offices directly from the PCT application may be the approach to take post-transition. However, some territories in Europe will not accept national applications designated from a PCT application: the PCT-EPO guidelines Part A Chapter VI 2.2 recites: “The national law of a number of EPC contracting states stipulates that only a European patent may be obtained for these states on the basis of an international application. The countries which close off the route to a national patent in this way are Belgium (BE), Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Latvia (LV), Lithuania (LT), Monaco (MC), Montenegro (ME), Malta (MT), Netherlands (NL), San Marino (SM) and Slovenia (SI).”  

If you were to file an international application and attempt to designate a country such as France, you would instead need to go to the EPO, and post-transition that means you’d end up with a unitary patent.

Paris Convention (priority)

If national protection in the states with closed national routes is the goal, it would be possible to file a national application individually in those states rather than designate them from an international filing. If you need time to decide where exactly you want the protection, you may want to take advantage of the Paris Convention right to claim priority.

Under the Paris Convention, 181 contracting states agree to provide nationals of other contracting states with the same protection given to the state’s own nationals. On the basis of an application filed in one of the contracting states, the applicant can claim priority in other states for a period of 12 months. In other words, any subsequent applications in that period count as being filed on the same date as the priority application.

Fortunately, all of Belgium (BE), Cyprus (CY), France (FR), Greece (GR), Ireland (IE), Latvia (LV), Lithuania (LT), Monaco (MC), Montenegro (ME), Malta (MT), Netherlands (NL), San Marino (SM) and Slovenia (SI) are signatories to the Paris Convention. However, filing a national application with each national office will have national fees, as outlined by the table below. 

For the countries that do not permit national patents to be obtained from a PCT application, the official fees are relatively low compared to other jurisdictions. Note that these countries do not have separate examination fees, and in most cases do not carry out substantive examination prior to grant.

For comparison, the official fees at the EPO include a filing fee of €135, a search fee of €1,595, an examination fee of €2,010 and a grant fee of €1,135 (in addition, there will be pre-grant renewal fees to be paid).

This, of course, overlooks another cost: your patent attorneys (sadly, not all of us are in it purely for the love of the game). European qualified attorneys are not qualified in the national law of every single contracting state of the EPO, meaning that separate national filings would require the patent proprietor to hire a number of attorneys to cover all jurisdictions of interest, which can quickly add complexity and cost to a multi-country filing strategy. In addition, the European patent system allows proprietors to reduce the costs associated with translation by using the London Agreement, but filing nationally means paying for a complete translation into the relevant national language.

Strategic selection of particular states within the European continent – the largest markets for the relevant patent proprietor, for instance - might be a better approach than attempting to get coverage in every member state.

Having patent protection in only key markets might be sufficient to deny or at least deter competitors. However, if you’re relying on one or two national patents, the spectre of revocation does not seem significantly larger than in the UPC. The question for patent proprietors to ask themselves is how many states are national patents needed in for the risk to be preferable to a single unitary patent, and how much is that going to cost?

Further information and support

If you have any queries about UPC strategy, unitary patents or alternative filing routes, please contact us.

Our qualified UPC representatives can draw on extensive EPO and patent prosecution experience to help assess the options and shape a litigation strategy that fits your commercial objectives.

We also offer extensive unitary patent and UPC resources, including webinars and practical guidance, to help you keep pace with this evolving system: www.dyoung.com/upandupc 

Useful link

PCT-EPO guidelines Part A, Chapter VI 2.2: https://dycip.com/epo-pct-national-route