Mr. Weddigen, first a look at the figures: Even before the unitary patent existed, what was the ratio of German, European and worldwide patent applications at KIT in 2023?

Andreas Weddigen: As a rule, KIT applies for inventions for the first time nationally in Germany at the German Patent and Trade Mark Office or as a European patent application at the European Patent Office. For 2023, these are divided into 25 German and 18 European first-time applications with KIT as applicant or co-applicant.

From the filing date of a first application, applicants have the option of applying for the same invention in other countries within one year. Accordingly, 36 subsequent applications were filed in 2023 in addition to the 43 first applications mentioned above. These subsequent applications in turn comprise one subsequent application in Germany, ten European bundle applications (EP applications), eleven worldwide bundle applications (PCT applications) and fourteen country-specific applications, e.g. USA, China or Taiwan.

Since June 2023, it has been possible to apply for a European unitary patent. What is behind it and how does it differ from a national patent?

Andreas Weddigen: An application for a unitary patent always requires the grant of a European patent before the European Patent Office in Munich. Once granted, the patent must be validated in the European countries that are parties to the European Patent Convention, i.e. it must be converted into national patent law in order to be legally effective there.

With the introduction of the European Unitary Patent, it is now possible to validate not only national states individually, but also an entire group of EU states that have joined the Unitary Patent with one patent. There are currently 18 EU states in which the Unitary Patent has direct legal effect: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia and Sweden. It is quite possible that more will be added in the coming years.

However, the European Unitary Patent is only one of two pillars of the new patent system. The second pillar comprises the jurisdiction for Unitary Patents, which is provided by the Unified Patent Court (UPC). However, the jurisdiction of the UPC covers not only Unitary Patents, but in principle also all other European patents granted by the European Patent Office.

What are the advantages of the new European unitary patent and the newly established Unified Patent Court?

Andreas Weddigen: As already mentioned, the European unitary patent offers the particular advantage of obtaining protection for almost 20 EU member states with a single application. This saves costs, as the financial and organizational expenses for several national validations can be saved. A unitary patent must be available in English and one other official language of the participating EU states. This has a particularly positive effect on the necessary translation costs.

Another aspect is that the Unified Patent Court is now the central point of contact for the judicial enforcement and other patent disputes relating to European patents. It bundles disputes in patent matters - which not only reduces the administrative burden and costs, but also the risk of contradictory rulings by national courts in the validation states.

In summary, the European unitary patent system offers the prospect of ensuring uniform patent protection in key countries in the EU with reduced effort and increased legal certainty. A clear advantage for all parties involved.

How does the KIT benefit from this development? Or is the advantage greater for commercial enterprises?

Andreas Weddigen: The Unitary Patent will of course benefit patent proprietors who are dependent on not only being able to validate a European patent throughout the EU, i.e. in a large number of countries, but also to maintain it in these countries for as long as possible. As a rule, these are companies that market their products throughout the European market.

Research institutions are generally not commercially active themselves. They therefore benefit indirectly from the possibilities and advantages of the unitary patent system via their cooperation and exploitation partners. In addition, a unitary patent offers potential administrative savings compared to a large number of validations in individual states.

How has the unitary patent been used since its launch at KIT?

Andreas Weddigen: KIT is already using the option of applying for a unitary patent in nine individual cases out of a total of 37 European patents that have been granted since June 1, 2023. The decision is usually made in consultation with our licensed partners.

Do these cases have something in common that speaks in favor of a unitary patent?

Andreas Weddigen: We discuss whether the unitary patent is advantageous on a case-by-case basis with the applicant researchers. These are mostly individual cases, but they are usually already involved in the exploitation process. An application for a Unitary Patent from a European patent is particularly interesting if a large number of countries are to be validated, at least four of which can be covered by the Unitary Patent.

What are the reasons against the unitary patent in the decision case?

Andreas Weddigen: Despite the advantages in terms of cost and complexity, there are also arguments against applying for a unitary patent:

• All or nothing: The European unitary patent can only be applied for and maintained as a whole, i.e. uniformly for all 18 participating EU states. A subsequent territorial restriction or an application for a territorial part only is not possible. This of course considerably restricts a thinning out of the original patent portfolio, for example for reasons of cost savings, e.g. as a reserve patent or in the case of only low sales.
• Remis of the costs: The Unitary Patent is only worthwhile if it provides protection in many countries. The renewal fees of the Unitary Patent, which are based on the sum of the national renewal fees of the four countries with the highest number of applications, are comparatively moderate for the large territorial scope of protection. However, national validations are often cheaper than the Unitary Patent if protection is granted in only a few European countries.
• Gaps in the scope of protection: The European unitary patent system leaves out important countries such as the UK, Spain and Poland. These still require separate validation.

What advice do you give inventors at the KIT when it comes to deciding on the scope of protection?

Andreas Weddigen: Like any other patent, a unitary patent represents a territorial and temporally limited prohibition right. When deciding on the scope of protection, the benefits and costs should be carefully weighed up. The selection of the countries in which patent protection is necessary or advisable is decisive. A unitary patent is a particularly good option if protection in the selected countries can be achieved more cost-effectively with a unitary patent.