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Is branching off utility models the better opt-out?

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The Unitary Patent Court, unitary patent, and questions of whether or not to opt-out have added a great deal of complexity to the European Patent System, which may lead some to wonder if the system has become an example of legal over-engineering. It is not only unknown how the UPC will handle litigation; the UPC and the unitary patent also have a direct influence on filing strategy.

There are many methods of obtaining protection for technological inventions in countries of the European Patent Convention. In this article, partner Michael Fischer looks at three typical filing approaches.

First group

Some applicants – let’s call them the “back to the roots” fraction – are neither interested in the UPC, or the patent with unitary effect, and may find the European Patent Office is too expensive. They may opt to “get back to basics,” and start filing national patent applications in major jurisdictions (for example, Germany, France and the UK). Less than 10% of European patents are validated in more than five countries.

Second group

Others – let’s call them “the undecided with big budget” fraction – rely on the European Patent Court system, but – at least for the time being – they do not want to bring all of their patents into the hands of the Unitary Patent Court. They file a European divisional patent application, opt-out the parent application, and opt-in the divisional patent application (or vice versa). This approach is quite expensive, given the fact that you have to retroactively pay all the renewal fees for your divisional patent application. You also have to pay claims fees for your parent application and your divisional application. Also consider that it may take some years until both European Patent applications come to grant – a time during which you have only limited protection. This approach is therefore slow and costly.

Third group

Let’s call our final group “the undecided with a smaller budget” fraction. They file a European patent application (which is opted-in) and branch off a German utility model. This is a cheaper and faster approach of opting out. Of course, the branched-off utility model expires after 10 years from the filing date, is only valid in Germany, and you need a German translation, if your EP patent application is in English.

However, based on the thorough search results of the EPO, it is often possible to draft valid claims which are then registered within 1-3 months. Once registered, the utility model is enforceable, and is under the jurisdiction of highly experienced German patent/utility model judges.

In addition, you do not have to pay renewal fees retroactively, there are no claims fees, and the filing fee is considerably lower – just 30 Euros. Moreover, no search and examination fees have to be paid for the utility model. This approach may also work in other countries, for example in Austria. The official fees of this approach are approximately only half the price of those of the second approach, since you get the utility model more or less as a free add-on (in terms of official fees).

All in all, branching off utility models from EP patent applications is not necessarily a “better” opt-out, but a “slimmer” opt-out which may be the right approach for some, especially those who want to utilise both systems (UPC and national) but have a limited budget. The UPC has pushed the long-underestimated utility models into the limelight. Utility models may finally get the attention they deserve and branching off utility models as a way of opting out may be the next big thing.

Michael Fischer