Reasons to choose national validations
National validation may provide more flexibility and lower risk compared to a UP. For some applicants, the broad geographical coverage available via a UP will also not be of interest and national validation will remain a cost-effective alternative to a UP.
Less easy for third parties to attack
A UP is vulnerable to a central revocation action before the UPC which could lead to loss of the patent in all participating countries. In contrast, national validations can be opted out from the jurisdiction of the UPC during an initial 7 year transitional period, with the effect that third parties seeking to attack patent rights throughout Europe could need to challenge multiple national validations separately in different national courts. The increased cost and complexity of national validity actions could act as a deterrent to challenge by third parties compared to a UP. Patent proprietors may also prefer to have validity decided by national courts with known traditions/case law, compared to greater uncertainty associated with challenge under a new court system.
If central enforcement of opted out national validations subsequently becomes of interest, it is also possible to withdraw an opt out so long as no national proceedings have commenced. Thus, an opt out may be made initially to prevent challenge of validity via the UPC, while still keeping open the option of central enforcement via the UPC at a later stage.
Flexibility of renewal costs
Pursuing national validations of a European Patent allows for the opportunity to allow the patent to lapse in certain countries while remaining in force in other countries, which may be useful in a scenario where a patentee may ultimately wish to prune coverage down to only a small number of countries. The Unitary Patent is in contrast an “all or nothing” patent for which you will have to pay a renewal fee (equivalent to the rate for 4 countries) for every year in which you want the patent to remain in force.
A Unitary Patent may be more expensive than a modest national validation programme
If validation in one or two countries provides sufficient coverage, the UP is likely to be more expensive in terms of renewal fees and validation costs; validating a European Patent nationally in certain countries, such as the UK, France and Germany, does not require any translations beyond the claims translations needed for grant (which are also needed for a UP). The UP requires one full translation into a second European language.
Flexibility with regard to transfer, licensing and royalties may be important
A UP can only be assigned as a whole and thus does not allow for flexibility to assign part of a patent (e.g. an individual country) to another party. Having separate national validations in different European countries may also offer some advantages when it comes to licensing to different parties in different countries. If a UP is licenced to different parties in different countries, it would be prudent to include in any license agreement a clause relating to which parties can bring an enforcement action and thereby risk a counterclaim for invalidity (which would be effective for all countries) in a UPC infringement action. Agreement on such a clause may be difficult to reach.