Possible Reasons You Might Want National Validations of an EP Patent
1. Flexibility is paramount
The national validations of an EP patent offer you the opportunity to allow the patent to lapse in certain countries while remaining in force in other countries. The unitary patent is an “all or nothing” patent for which you will have to pay a renewal fee (equivalent to the rate for four countries) for every year in which you want the patent to remain in force. With national validations of an EP patent, you can stop paying renewal fees for one or more countries, trimming your renewal fee cost, for example towards the end of the patent term.
2. Protection in one country is enough
An EP(UK) patent will protect you against a competitor who carries out all of the steps of the claimed method in the UK or who supplies or offers to supply in the UK means, relating to an essential element of the invention, for putting the invention into effect in the UK.
3. Translations may not be an issue
Validating an EP patent nationally in small number of certain countries, such as the UK, France and Germany only, only does not require any translations beyond the claims translations needed for grant (which are also needed for a unitary patent).
4. A renewal fee rate equivalent to four countries may be too high
The unitary patent is likely to be more expensive than national validations of an EP patent if you only want to cover three or fewer countries. The national validations of an EP patent also offer flexibility for dropping one or more countries as discussed above.
5. Unitary patents must be litigated in the UPC
You may wish to avoid the UPC for any of the reasons discussed below. You may be particularly interested in avoiding central revocation by the UPC and this can only be done by opting out national validations of an EP patent.
6. Flexibility with regards to licencing and royalties may be important
Having different patents in different European countries may offer some advantages when it comes to licensing to different companies and setting different royalty rates.
7. There is currently no unitary SPC
SPCs (Supplementary Protection Certificates) cover marketed pharmaceutical products and are usually highly valuable. Although there are proposals for a unitary SPC, the system may not be in place by the time the unitary patent is available. SPCs will continue to be available via national validations of an EP patents.