European patent strategy
European patent strategy: Unitary Patent, validation or both
Deciding to file in Europe is only the first step. What your protection is worth depends on the choices that follow: which countries, a Unitary Patent or national validations, whether to stay under the Unified Patent Court, and how long you keep paying for each country. I am Loek Steffanie, European Patent Attorney, and I help companies from outside Europe make those choices.
Several of these choices have a fixed deadline, and some cannot be undone once that deadline has passed. Below I go through each one, with the questions I ask to settle it.
Which countries to cover: start from your market and your competitors
My guide to European patent protection covers the first questions: where you sell and where your competitors manufacture. For strategy, I look at the same map from two sides: what this patent protects in your own business, and where a competitor would go to stay out of its reach.
- Where the value chain narrows. In chemistry, a competing product is often made in a handful of plants and then sold across many countries. Coverage in the countries of production and of your largest customers can reach most of the market.
- Where a gap would invite a competitor. If you leave out a country with a large chemical industry, a competitor can produce there and ship to every country you skipped.
- Where you can act on it. A patent pays off in countries where you would actually take action against an infringer, because that is where your customers or your competitor's assets are.
- Where a licensee or buyer will look. A licensee or acquirer values coverage in the markets they serve, which may be wider than your own.
I make this choice for each patent. A patent on your core product may deserve wide coverage, while a process improvement used in one plant may only need a few countries.
Timing matters as well. Until grant, a European application keeps all member states of the European Patent Organisation open. After grant you decide where the patent takes effect, and once the validation deadlines have passed you cannot add a country. Dropping one later is always possible: you stop paying its renewal fee.
Unitary Patent, classic validation or a combination
After grant, you choose how your European patent takes effect. Each option below has its own deadlines, so it helps to have your answer ready before grant.
A Unitary Patent for the participating EU countries
You request unitary effect within one month after the mention of grant is published. The patent then becomes one right with the same scope in all participating countries, kept in force with one renewal fee to the EPO. It can only be transferred, revoked or allowed to lapse as a whole, but you can license it for only some of those countries.
Classic validation in the countries that count
You validate the European patent country by country, only where it pays off, for example in Germany, France and the Netherlands. Each country has its own renewal fees and, in some cases, translation requirements. In UPC countries, the patent falls under the Unified Patent Court unless you opt it out.
A Unitary Patent plus classic validation
You request unitary effect for the participating EU countries and validate the same patent in the classic way where the Unitary Patent does not reach, such as the UK, Switzerland, Spain or Türkiye. For companies that sell across Europe, this is often the practical answer.
Unitary Patent countries: what is covered and what is not
A Unitary Patent currently covers 18 EU countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia and Sweden.
Spain and Croatia stay outside the system. Poland, Ireland, Greece, the Czech Republic, Hungary, Slovakia and Cyprus take part in the EU's enhanced cooperation behind it but have not ratified the Unified Patent Court Agreement, so a Unitary Patent does not cover them today. Non-EU members of the European Patent Organisation, such as the UK, Switzerland, Norway and Türkiye, are outside the Unitary Patent altogether.
The list of countries is fixed when your Unitary Patent is registered. If another country joins later, your existing Unitary Patent does not extend to it.
One practical point for companies that prosecute in English: during a separate transitional period for translations, the request for unitary effect must come with a full translation of the patent into one other official EU language. That translation is for information only and has no legal effect.
On cost, the EPO set the Unitary Patent renewal fee at the combined level of the national renewal fees in the four countries where European patents were most often validated in 2015. If you only need two or three of the participating countries, compare carefully: classic validation may cost less to maintain, and it lets you drop countries one at a time.
UPC opt-out: keeping a classic European patent out of the Unified Patent Court
Since June 1, 2023, the Unified Patent Court has heard infringement and validity cases for the participating EU countries. A Unitary Patent always falls under it. A classic European patent does too, in the UPC countries where it has effect, unless you opt it out. These are the rules that matter for the decision:
- Who can opt out. The proprietor of a classic European patent or the applicant for a published European application, and the holder of a supplementary protection certificate based on it. If there are several owners, they must file jointly.
- All countries at once. An opt-out covers every country for which the patent was granted. You cannot opt out Germany and keep France under the UPC.
- The deadline. The transitional period runs for seven years from June 1, 2023, so until mid-2030, and can be extended by up to seven years. You file the opt-out with the court's Registry no later than one month before that period ends. It takes effect once it is entered in the register.
- Not once a UPC case has started. As soon as someone brings an action about your patent before the UPC, an opt-out is no longer possible.
- Withdrawal. You can withdraw an opt-out at any time, unless an action about the patent has already been brought before a national court.
- No opt-out for a Unitary Patent. If an opted-out application is later granted as a Unitary Patent, the opt-out is treated as withdrawn.
During the transitional period, a case about a classic European patent that is not opted out can also still be brought before a national court. So the opt-out decides whether the UPC can hear the case, not whether national courts can.
Central enforcement or central revocation: the trade-off at the UPC
Say you hold a patent on a polymer for packaging film, with its characteristic parameters set out in the claims. Your customers are in Germany, Belgium and Italy, and a competitor launches a comparable polymer.
With a Unitary Patent, or a classic patent that is not opted out, one action at the UPC, instead of three national cases, can lead to an injunction covering all UPC countries where your patent has effect. Expect the competitor to counterclaim for revocation in that same case. If the counterclaim succeeds, you lose your protection in all those countries at once.
With an opted-out classic patent, the competitor has to attack your patent before national courts, country by country. That costs them more time and money, and if your patent falls in one country, it still stands in the others. An opposition at the EPO, on the other hand, always hits your patent in every country, whichever form you chose.
Which way to go depends on the strength of your claims and on how important the invention is to your business. A patent on your core product, backed by convincing comparative data, is better placed to survive a central attack, and then a single enforcement action works in your favor. If validity is less certain, spreading the risk can be the wiser choice. My page on how the EPO handles chemical patents explains why that data carries so much weight.
Renewal fees after grant: which countries are still worth paying for
A large part of the cost of a European patent comes after grant, year after year. These decisions keep it in check.
Renewal fees rise every year
Renewal fees increase over the life of the patent. A country that is cheap to keep in year five costs noticeably more in year fifteen. That makes your country list something to revisit regularly.
Review when the market changes
The first review comes before grant, when you choose between a Unitary Patent and validation. After that, I review the list when something changes: a product that sells in fewer countries than planned, a competitor that moves production, or a market you leave. The question each time is whether a country is still worth keeping.
Dropping countries later
With classic validation you can let a patent lapse country by country: you simply stop paying the renewal fee there. A Unitary Patent can only lapse as a whole. If you expect to narrow your coverage later, take that difference into account when you choose at grant.
Divisional applications as a strategic tool
A divisional application is a new application split off from a pending European application. It keeps the filing date and priority of the parent, provided it stays within what the parent disclosed as filed. You can file one while the parent is pending, which, if the parent proceeds to grant, means up to the day before the mention of grant is published.
Strategically, a divisional keeps the door open. You can let the parent proceed to grant with the claims the examiner accepts, while you pursue broader or different claims in the divisional. If a competitor launches a product after your filing date, a pending divisional lets you direct claims at that product, within the limits of your original disclosure.
A divisional has its own fees, including renewal fees for the years that have already passed since the parent was filed. So I advise filing one when there is a concrete reason, such as claims you still want or a competing product you need your claims to reach. Make that decision before the parent is granted, because after that the option is gone.
Third-party observations and opposition against a competitor's patent
A patent strategy also covers the patents of others. Once a competitor's European application is published, anyone can send the EPO observations on its patentability, for example by pointing to prior art the examiner has not seen. The person who files them does not become a party to the proceedings.
You have nine months from the mention of grant to file an opposition. The opposition applies to the patent in all countries where it has effect, so one procedure at the EPO can revoke or narrow a competitor's patent across Europe. After those nine months, an attack means court proceedings: before national courts, or at the UPC if the patent falls under it.
This only works if you know which competitor patents matter. A freedom-to-operate analysis shows which patents stand in the way of your launch, and a validity search gathers the prior art for observations or an opposition. For oppositions and disputes, I work with the team at Novacon IP.
Unitary Patent and UPC: questions from companies outside Europe
It is a European patent granted by the EPO for which unitary effect has been registered at your request. Instead of separate national patents, you hold a single right in the 18 EU countries that currently take part, with one renewal fee to the EPO and one court, the UPC, for disputes. The request has to reach the EPO within one month after the mention of grant is published, so I put that choice on the agenda well before grant.
It does not cover any country outside the EU, such as the UK, Switzerland, Norway and Türkiye. Within the EU, Spain, Poland, Ireland and Croatia are among the countries it does not reach today. For those markets you validate the same European patent in the classic way, and at Patents4Business I check your country list against both systems before grant.
That depends on how robust your claims are and how much of your revenue comes from UPC countries. An opt-out shields a patent with weak spots from a single central revocation action, but while it stands, it also rules out one injunction covering all those countries. I would not put the decision off, because once someone starts a UPC action concerning your patent, the opt-out is no longer available.
Not always. With only two or three participating countries on your list, classic validation can be cheaper to maintain. I run the numbers for both against your actual country list, including the countries you may want to drop later, before you decide.
Partly. You can withdraw an opt-out, unless a case about the patent has already been brought before a national court, and with classic validation you can drop countries along the way. The request for unitary effect has a fixed deadline, though, and a Unitary Patent can only lapse as a whole. That is why I settle the form before grant and keep the country list under review afterwards.
Is your European patent close to grant?
Bring the countries you have in mind and the names of your main competitors. In a strategy call we work out which form fits your patent, whether an opt-out makes sense and which countries are worth paying for.