Unitary Patent update

Wednesday 2 March 2016

2 March 2016

When the Unitary Patent (UP) comes into force, Applicants at the European Patent Office will have an additional option at the grant stage of paying a single validation fee to obtain a unitary right for the territory of the 25 Member States participating in the UP scheme. Once the UP option is available, an Applicant’s validation strategy will depend on a number of factors, not least the implication and cost of the Unitary Court and the implementation of any opt out provisions. However, cost is also likely to be an important factor.

As the UP will run alongside the existing classical validation in each member state, Applicants will need to assess the costs of continuing with their existing strategy of validating using classical validations against the costs of validating the UP. Here, Applicants will need to take into account the initial validation costs including translations, as well as the maintenance costs in renewal fees, assignment costs etc.

The EPO have up to now given very little detail on the likely level of UP renewal fees. Proposals are expected to be announced in the summer of 2015. However, a document reportedly submitted by the President of the EPO to the Select Committee of the Administrative Council for their opinion has given an insight into the possible levels and considerations being taken into account. If the recommendations are followed, the UP renewal fees will follow the existing EPO renewal fees for pending applications for the first five years, after which they will be intended to be set at a similar level as the combined renewal fees for the four or five most popular validations.

This will mean that Applicants looking to validate their granted European patent application in the most common countries of UK, Germany and France, will still see lower official fees through the classical route. Of course, as more countries are added to the validation strategy, Applicants will see a cost benefit in opting for the UP validation, especially when initial translation costs are factored in. However, whereas with the classical system, Applicants have flexibility to drop individual countries as the product matures, this flexibility is lost when opting for the single UP validation, which may disadvantage owners as the renewal fees are escalated towards the end of the twenty year term.

Whilst the President’s proposals therefore give Applicants a welcome insight in to the likely costs of UP renewal fees, certainty in a number of other considerations are needed before Applicants can reliably look to consider their future validation strategy.

Applicants will likely have plenty of time to consider their validation strategy - the UP is not widely anticipated to come into force now before 2017. Nevertheless, the select committees announcement expected this summer on which if any of the renewal fee proposals are adopted will be an important piece in the jigsaw puzzle of whether Applicants will adopt the UP in large numbers.

Appleyard Lees are experts in European patent practices, for more information contact Paul Misselbrook or a member of the Appleyard Lees team.

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