EPO revises proposed unitary patent renewal fees
The European Patent Office (EPO) has revised its proposed renewal fees for the unitary patent, making them cheaper under two models.
In documents dated May 7 but which have only recently come to light, the EPO has suggested two structures—‘True’ Top 4 and ‘True’ Top 5.
The EPO previously put forward two proposals in March: Top 4 and Top 5.
Under those models, between the third and fifth years of renewal the fees would be based on the EPO’s internal renewal fees (IRF), while from years to six to nine there would be a slow transition to higher fees.
After the tenth year of renewal, the fee structures would be based on the total cost of renewal in either the top four or five most popular jurisdictions in Europe for filing European patents.
The cost of the Top 5 proposal was based on the top four countries (Germany, France, UK and the Netherlands) plus Switzerland, which was the fifth highest filer. That proposal also included a reduction of 25% for small to medium-sized enterprises (SMEs) between the second and ninth year.
Under ‘True’ Top 4, as well as after year ten, the cost of renewing a patent between the second and ninth year would be based on the costs in the top four jurisdictions. The EPO’s IRF fees would not apply between years three and five.
It means that, under the new proposal, the cost of renewing a unitary patent over 20 years would be €35,555 ($39,700), a decrease of more than €2,000 compared to the previous proposed price of €37,995.
Under ‘True’ Top 5, the renewal costs would be €41,995, compared to €43,265 under Top 5. For SMEs, the cost of renewing unitary patents over 20 years under the new proposal would be €40,403, down from the previous €41,265.
In the documents, the EPO said it was responding to concerns that “charging IRF level in the initial years would discourage applicants from opting for unitary patents rather than for traditional European patents validated in just a few states”.
Wouter Pors, partner at law firm Bird & Bird, said the fees need to be high enough to ensure the EPO balances its budget but also low enough to be attractive for right owners to file unitary patent applications.
“Patent owners would welcome the ‘True’ Top 4 proposal as this would ensure that unitary patent renewal fees are competitive with jurisdictions such as the US and Japan,” he added.
But Ulrich Blumenröder, partner at law firm Grünecker, said that while he welcomes lower unitary patent fees, the EPO is “missing the real issue” of litigation costs.
According to Blumenröder, the price of litigation in the Unified Patent Court (where unitary patents will be litigated) will “alter the landscape” of litigation.
“Whether the unitary patent is cheap or expensive is of little relevance,” he added.
The EPO said that the select committee of its supervisory body, the Administrative Council, is meeting next week and it will be in a better position to comment on the issue of renewal fees afterwards.
