Unified Patent Court (UPC): Opt-Out Strategy for Granted European Patents and European Patent Applications

Posted on June 4, 2023 by Dr. Dirk Franke

The Unified Patent Court (UPC) is a central European court, which has become competent for granted European patents and European patent applications.

For a transitional period of 7 to 14 years, the granted European patents will remain within the jurisdiction of national courts (in Germany: the regional courts for infringement proceedings and the Federal Patent Court for nullity proceedings), if an opt-out request is filed with the UPC. In the absence of an opt-out request, the unitary patent court will be competent.

Requirements of the opt-out request:

The opt-out request is subject to the following conditions:

  • The opt-out request can only be filed for active European patents, for active European patent applications and for European patents which have expired.
  • The opt-out request can only be filed as long as no infringement proceedings or nullity action has been brought before the UPC.
  • The opt-out request can only be filed electronically by the patent owner or his authorized representative using the secure communication platform of the UPC. The UPC will not loose competence before the request has been entered into the patent register.
  • The opt-out request can only be filed once. If the request is withdrawn, the patent will remain permanently in the competence of the UPC.

Advantages/Disadvantages of an Opt-Out Request:

Owners of European patents should weigh the following advantages and disadvantages against each other before filing an opt-out request:

Benefits of an Opt-Out Request

  • Due to the sole competency of a centralized court in the EU, there is a risk of losing patent protection in all participating EU validation countries in one decision, if the UPC determines that the European patent is null and void. For a European bundle patent, on the other hand, national courts in all validation countries have to decide individually.
  • There is so far no established case law or established procedural rules for the Unified Patent Court. Hence, all proceedings before the UPC are subject to a high degree of uncertainty.
  • Because the opt-out request can be withdrawn, there are more options available, if there are concerns that infringement proceedings are imminent. If an opt-out request has already been withdrawn, the scope of options is reduced accordingly.

Disadvantages of an Opt-Out Request

  • Through a centralized procedure at the UPC, a uniform decision may be obtained for all participating validation countries, so that parallel procedures before national patent courts and thus procedural costs can be avoided.
  • In case of a shared patent ownership, the consent of all patent owners must be obtained prior to filing an opt-our request.
  • If license agreements have been concluded for the European patent, an agreement must be reached with the licensees.

Our Opinion:

The owners of European patents and European patent applications should consider making use of the opt-out request while this option is still available. The above advantages and disadvantages should be weighed against each other before making a desicion.

For unitary patents, on the other hand, no opt-out request can be filed.

Foto: © MPD01605, [CC BY-SA 2.0]

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Unitary Patent System: Start of the Transitional Measures on January 1, 2023

Posted on January 11, 2023 by Dr. Dirk Franke

The President of the Court of Appeal of the Unified Patent Court (UPC) and the Chairman of the Administrative Committee of the UPC recently announced that the transitional measures for the introduction of the Unitary patents will start on January 1, 2023. As of this date, all applicants for European patents having received a Rule 71 (3) EPC communication from the European Office (EPO) may file an early request for unitary effect or a request for a delay in issuing the decision to grant a European patent. Moreover, from March 1, 2023 on applicants for European patents will have the right to opt-out from the UPC.

1. Early request for unitary effect

The transitional measures enable applicants for European patents to file an early request for unitary effect, which will allow the EPO to register unitary effect immediately after the start of the UPC system (intended starting date: June 1, 2023). The request has to be filed using the EPO form 7000 (request for unitary effect) or via EPO Online Filing 2.0.

If the language of the proceedings of the European patent application was German or French, an English translation of the full specification (description, claims and figures) must be submitted together with the request. If the language of the proceedings was English, a translation of the full specification into either German or French language must be submitted together with the request.

If a request for unitary effect is validly filed, the EPO will automatically register unitary effect once the UPC has started and will communicate the date of the registration of the Unitary Patent.

2. Request for a delay in issuing the decision to grant a European patent

Procedurally independent from the early request for unitary effect, the transitional measures also enable applicants for European patents to file a request for a delay in issuing the decision to grant a European patent. The request has to be filed using the EPO form 2025 (request for a delay) and will be available on the EPO website in due course. The request has to be filed prior to the approval of the text intended for grant. However, a request filed on the same day as the approval of the text intended for grant will most likely be considered to have been validly filed.

In the event of a request to postpone the publication of the notice of grant, the publication will be postponed and will be made on or immediately after the date of entry into force of the Convention. After the publication, the period of one month starts, within which the request for unitary effect can be filed, if a unitary patent is desired.

The request will make a European patent eligible for the UPC system that would otherwise have been granted before the start of the new system and will avoid that applicants miss opportunities to obtain a Unitary patent in the transitional phase.

3. Request for Opt-out from the UPC

In addition to the two requests under the transitional measures, applicants for European patents may file – from March 1, 2023 – a declaration of an opt-out (start of the sunrise period) from the UPC.

An opt-out request is used to remove European patents that are valid and in force within the jurisdiction of the UPC from the jurisdiction of the UPC. In this case, the applicants for European patents will receive a bundle of national parts of a European patent instead of a Unitary patent for those countries that are participating in the UPC system. The UPC’s area of ​​responsibility currently affects the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

The Unitary patent will only ever have an effect in the EU member states that have both ratified the Unified Patent Court Agreement (UPCA) and are taking part in the United Patent Regulation at the time that the particular United patent is registered. Currently, the following EU states cannot be covered with a Unitary patent: Spain, Poland, Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.

Moreover, the Unitary patent will also not apply in all EPC member states which are not eligible to be signatories of the UPCA: Iceland, Norway, Turkey, Switzerland, Serbia, Albania, Macedonia and the United Kingdom (UK).

4. Summary

In summary, the applicants for European patents will have the following transitional measures after January 1, 2023:

  • A) early request for unitary effect of a European patent
  • B) request for a delay in issuing the decision to grant
  • C) declaration of an opt-out (after March 1, 2023)

Update (March 8, 2023):

The request for a delay in issuing the decision to grant can be filed with the EPO form 2025, which has now been provided by the EPO.

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EUIPO: Discrimination of Applicants and Proprietors Based on Their Place of Business or Nationality

Posted on May 26, 2022 by Dr. Dirk Franke

In the case of a requested registration of a change of ownership of a registered EU trademark we noted that the European Union Intellectual Property Organisation (EUIPO) is now apparently discriminating customers in the proceedings based on the place of business, the registration or the nationality of the customer.

On April 20, 2022, we filed a request with the EUIPO to register a transfer of ownership from a company based in the European Union, which we have represented for many years, to a company registered in the Russia Federation. Together with the request, we filed documents proving the entitlement of the Russian company to the EU trademark: the EU company including all tangible and intangible assets was bought by the Russian company. We did not receive any notifications by the EUIPO for about four weeks. On May 18, 2022, we filed a short letter reminding on the filed request.

On May 19, 2022, we received a telephone call from a First Line officer of the EUIPO Information Center. The First Line officer informed us that our request could not be processed, because an “internal communication” ordered him that all transfer requests filed in the name of, or to the benefic of companies having a place of business, a registration or a nationality in the Russian Federation should be suspended or kept “pending to take action”. In other words, our request could not be processed.

We were informed that the reason provided in the internal communication was that the interest of non-Russian applicants and proprietors in the European Union (EU) should be protected in view of the ongoing military conflict in Ukraine.

We discussed the case with the First Line officer in some detail, informing him also that the rule of law should be applied, and there should at least be given a legal basis for the suspension, i.e. the law or rule should be provided and a detailed reason should be given, why the law or rule is applicably in the present case. The EUIPO officer responded that he could not provide a legal basis besides the internal communication and that he is only following the orders. He did not have any further information. Further, we asked the officer why the EUIPO believes that the interest of non-Russian applicants and proprietors can be affected by a registration of a transfer, which is non-constitutive and only to correct the register, and how there can be a connection between the registration process and the conflict in Ukraine, but we did not receive an answer.

Moreover, the EUIPO First Line officer noted that it is unclear how long the suspension would take effect.

We have filed a status request on the processing of our request for registering the transfer. This status request is currently still “pending”.

Our comments:

In our opinion, it is very remarkable that the EUIPO is apparently discriminating applicants and proprietors of EU trademarks and designs based on their place of residence, registration or nationality. In our opinion, customers at the EUIPO trust that the law will apply equally to them, independent from their place of business and other non-relevant factors. We do not know of any other cases at the EUIPO or any national trademark office in Europe, wherein a request was not processed, simple because the customer had the “wrong nationality”.

Moreover, the proprietor or applicant of a EU trademark is generally not a party in the military conflict in Ukraine. In the specific case, the company is operating internationally and only happens to have a place of business in Russia and a subsidiary in Czech republic after the merger.

It is very remarkable, that the suspension was based on an “internal communication” at the EUIPO, without giving a legal basis or a law, which was applied. The representatives of the proprietor were only informed by phone, and without a written decision following the conversation.

Foto: © MPD01605, [CC BY-SA 2.0]

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GPTO: Increase of Official Fees on May 1, 2022 and July 1, 2022

Posted on April 2, 2022 by Dr. Dirk Franke

The German Patent and Trademark Office (GPTO) will increase on May 1, 2022 and July 1, 2022, respectively, the annuity fees for patents and supplementary protection certificates (SPCs).

Annuity fees can be paid one year in advance at the GPTO. Therefore, it is possible for applicants or proprietors to make use of the still lower annuity fees, if the official fees for the upcoming year are paid before May 1, 2022 or July 1, 2022, respectively.

1. Annuity Fees for Patents

The fee increase for patent applications and patents at the GPTO are summarized in the following table. The fees for the 3rd and 4th patent year (70 EUR) will not be not changed.

Annuity fee for patent yearFee until June 30, 2022 (EUR)Fee on July 1, 2022 (EUR)
37070
47070
590100
6130150
7180210
8240280
9290350
10350430
11470540
12620680
13760830
14910980
151,0601,130
161,2301,310
171,4101,490
181,5901,670
191,7601,840
201,9302,030

2. Annuity Fees for SPCs

The fee increase for supplementary protection certificates (SPCs) at the GPTO are summarized in the following table.

Annuity fee for SPC yearFee until April 30, 2022 (EUR)Fee on May 1, 2022 (EUR)
12,6502,920
22,9403,240
33,2903,620
43,6504,020
54,1204,540
64,5204,980
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Merry Christmas and a Happy New Year!

Posted on January 1, 2022 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2022!

Foto: © Pedro, [CC BY 2.0]

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Merry Christmas and a Happy New Year!

Posted on December 29, 2020 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2021!

Foto: © Heather Cowper, [CC BY 2.0]

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BREXIT: Implications for EU Trademarks and EU Designs

Posted on November 9, 2020 by Dr. Dirk Franke

The United Kingdom (UK) withdrew from the European Union (EU) on January 31, 2020 and is now in a transition period, wherein registered EU trademarks (EUTMs) and registered EU designs (RCDs) remain in force in the UK. However, the transition period will end on December 31, 2020.

This article explains the implications of the ending of the transition period and the BREXIT for EUTMs and RCDs.

1. Registered EU Trademarks and EU Designs

All registered EUTMs and RCDs will be treated by the UK Intellectual Property Office (UKIPO) as national trademark and design registrations and will become comparable UK rights. The comparable rights will be entered into the UK register automatically and free of charge. The date of application, the date of registration and any applicable priority or seniority dates of the comparable rights will be the same as for the EU rights.

The UKIPO will not issue new certificates for the comparable UK rights. However the UK rights will be treated as fully independent national IP rights, which can be challenged, assigned, licensed and renewed (see below). The UK trademark registrations will retain its EUTM registration number, but will be prefixed with “UK009”, so that it will be identifiable a a comparable UK right. The UK registered designs will retain the 9-digit RCD number and will be prefixed with “9”.

All international design registrations under the Hague Agreement designating the EU, wherein the EUIPO has confirmed protection of the design to the WIPO will be included into the UK register as comparable international designs designating the UK. The registration will retain its international registration number, but will be prefixed with “8”, so that it will be identifiable a a comparable UK international registration.

Any proprietor of an EUTM or RCD can declare that he would like to opt-out from the above provisions. In this case, the EUTM and RCD will not take effect in the UK. However, if a trademark has been used in the UK by the registered proprietor or with the consent of the registered proprietor, it is not possible to opt-out. The same applies to any trademark or design which has been assigned, licensed or if there are pending proceedings based on the comparable UK rights. The time limit for filing a opt-out request will close on January 1, 2021.

2. Filed EU Trademark Applications and EU Design Applications

All EU trademark and design applications with a filing date given by the EUIPO will have to be re-filed at the UKIPO. The new UK application will retain the original filing date and priority date (if applicable) of the EU applications, as long as the UK application is filed within 9 months beginning with the date of the end of the transition period.

At this time, the UKIPO has given no information on the application process of the comparable UK trademark or design applications derived from the EU trademark or design applications.

3. Pending EU Trademark Oppositions

At this time, the UKIPO has given no information on how pending EU trademark oppositions will be treated in the UK after the end of the transition period. The same applies to pending cancellation and invalidity proceedings.

It is assumed by practitioners that the comparable UK rights will in most cases share the fate of the EU rights, i.e. if the EU rights are invalidated by the EUIPO in the opposition, cancellation or invalidity proceedings, the UK rights will also be considered invalid by the UKIPO, and the date of invalidity in the UK will be the same as in the EU.

4. Renewal of Registered EU Trademarks and EU Designs

The comparable UK rights will receive the same renewal date as the EUTM or RCD. If a proprietor of a EUTM or RCM wants to maintain the comparable UK rights, a separate renewal fee will have to be paid at the UKIPO.

In cases where the comparable UK right is due for renewal within the six months after the end of the transition period, a renewal reminder from the UKIPO will be sent to the proprietor. The proprietor will be given a further six month period for the comparable UK right to be renewed in the UK.

Where a renewal date of a registered EUTM or RCD falls after the end of transition period, an early payment of the renewal fee at EUIPO on a date prior to the end of the transition period will have no effect in respect of the comparable UK right. The comparable UK right will have to be renewed separately at the UKIPO.

Foto: © Tim Reckmann, [CC BY 2.0]

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Corona: Closures and Extensions of Time Limits at Patent and Trademark Offices

Posted on April 5, 2020 by Dr. Dirk Franke

In the following table, closures and extensions of time limits at the most important patent and trademark offices are summarized (as of April 21, 2020):

CountryTwo letter codeStatusNotification
CanadaCAExtension of time limits until May 1, 2020March 29, 2020
ChinaCN––
EPOEPExtension of time limits until May 4, 2020March 15, 2020
EUIPOEUExtension of time limits until May 4, 2020March 26, 2020
GermanyDE––
ItalyITExtension of time limits until April 3, 2020March 9, 2020
JapanJP–April 9, 2020
SpainESExtension of time limits until further noticeMarch 17, 2020
WIPOWO––
United KingdomGBExtension of time limits until further noticeMarch 27, 2020
USA US––

Some patent and trademark offices have extended only some time limits while other time limits are not extended. For instance, the German Patent and Trademark Office (GPTO) has extended the time limits set by the office in the granting and registration proceedings, while time limits not set by the office, e.g. opposition periods and the time limits for paying fees, are not extended. It is highly recommended to verify with a patent attorney if extensions apply to individual time limits. In case of any doubts, it should be assumed that no extension of the time limits will be granted by the office and that time limits have to be observed.

All information disclosed in this article may not be accurate, may be not be relevant any more or may be only the personal opinion of the author. Please contact a representative in the individual country to receive up to date information and check if up to date information are published on the websites of the patent and trademark offices in the relevant countries. In particular, at the current Corona situation information may change on a daily basis.

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Merry Christmas and a Happy New Year!

Posted on January 1, 2020 by Dr. Dirk Franke

We wish all our readers a Merry Christmas and a Happy New Year 2020!

Foto: © Jason Mrachina, [CC BY-NC-ND 2.0]

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German Patent and Trade Mark Office: The German Trade Mark Law Modernization Act (MaMoG) took effect on January 14, 2019

Posted on March 20, 2019 by Dr. Dirk Franke

The German Trade Mark Law Modernization Act (MaMoG) took effect on January 14, 2019. This law implements the 2015 EU Trade Mark Directive in Germany. This has the following practical implications for those applying for German trade marks.

1. Introduction of certification marks

So-called certification marks are being introduced in §§ 106a-h MarkenG (German Trade Mark Act). The purpose of these certification marks, for example, is to provide quality seals and similar quality marks with access to trade mark protection in Germany. An essential characteristic of certification marks is that those applying for this mark as per § 106b MarkenG may not themselves carry out a business involving the supply of the goods and services of the kind certified. The market introduction of certified products should only be carried out by third parties. The use of the certification mark is supposed to ensure the public that the certified product exhibits material, method of production, quality, accuracy or other characteristic properties (§ 106b MaMoG).

Similar to the application for a collective trade mark, those applying for a certification mark must submit regulations of use that exactly define the criteria for the awarding of the mark.

2.  Elimination of the graphical representation requirement

The range of signs suitable for protection has been expanded with the change to § 8 MarkenG. Instead of the previous criterion for graphical representation, it is now sufficient that the sign can be depicted in the register so that the German Patent and Trade Mark Office (DPMA) and the public “can clearly and uniquely identify the object of protection.” Thus signs that previously were rejected due to the strict requirement for graphical representation now have access to trade mark protection in Germany. Examples of this include olfactory marks and multimedia marks.

However, it is currently unclear which additional mark types can be practically entered and in what way the previous graphical representation of marks can be replaced for registration.  Another problem is that the Madrid Protocol or Madrid System also retains the requirement for graphical representation so that an international expansion of protection of these types of marks to other countries appears not to be possible via international registration.

3.  Official expiration and invalidity proceedings

Along with cancellation proceedings based on absolute grounds for refusal and cancellation proceedings due to expiration, starting May 1, 2020, cancellation proceedings will also be possible before the DPMA due to relative grounds for refusal, i.e. opposition due to a situation involving a conflict. Until then, cancellation due to a situation involving a conflict could only be obtained by submitting a so-called cancellation permission complaint before district courts after the expiration of the opposition period.

Therefore, the period before this regulation goes into effect on May 1, 2020 should be used by the DPMA to create organizational measures for the implementation of the new cancellation proceedings.

4. Changes to opposition proceedings

The opposition proceeding is also being modified so that an opposition can now also be based on one or more earlier trade marks or trade mark applications. In addition, a so-called “cooling-off” phase is being introduced similar to the European opposition proceeding.  The opposing parties then have the opportunity to reach an agreement for resolving the conflict situation in a non-official manner within this min. 2-month period. The official proceeding is then only conducted after the “cooling-off” phase if no agreement has been reached.

The proof of use now has to be provided for the last 5 years before registration of the contested mark. The previous “roaming” time period of non-use of five years until the decision of the Opposition department has been discontinued.

5. Deadline changes in the proceeding

Deadlines for renewing marks after 10 years are being adjusted to the harmonized deadlines in Europe. In future, the deadline for renewal after the 10-year interval will expire on the exact day and not at the end of the month as in the past.

The 5-year grace period for use will now commence immediately on the day after no further opposition can be filed against the trade mark.

6. Increase in official fees

Lawmakers are taking the opportunity of this reform to adjust several DPMA fees to rising administrative costs. The base rate for the opposition proceeding is being raised from EUR 120 to EUR 250. In addition, there will also be an additional fee in the amount of EUR 50 for each additional earlier mark upon which the opposition is based.

The fee for the implementation of the invalidity proceeding due to absolute grounds for refusal as per § 50 MarkenG is being raised from EUR 300 to EUR 400. The fee for the implementation of the invalidity proceeding due to earlier rights as per § 51 MarkenG will also be EUR 400. If the application as per § 51 MarkenG is based on more than one earlier right, then this fee is increased by EUR 100 for each additional asserted right.

EUR 50 will be charged for the registration, modification or cancellation of a trade mark license as per § 30 Par. 6 Clause 1, 2 or 3 MarkenG.

7.  Our assessment

In general, the changes to the MarkenG with regards to a European harmonization of trade mark proceedings should be welcomed. The cooling-off phase in the trade mark opposition proceeding, in particular, has already proven itself in practice before the European Union Intellectual Property Office (EUIPO).

The opportunity to carry out cancellation proceedings starting May 1, 2020 due to relative grounds for refusal even after the expiration of the opposition period is also very welcome.

Cancellation permission complaints before district courts were very costly up until now due to the requirement of representation and the court costs for the opposing parties. By comparison, the DPMA also has a high degree of competence in its Opposition departments in the implementation of two-party trade mark proceedings so that these cancellation proceedings can be performed directly before the DPMA with a good cost-performance ratio.

Translation from the original article (DE->EN) was kindly provided by Mr. David Gamertsfeld.

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