The UP Select Committee of the EPO adopted the Rules relating to Fees for Unitary Patent Protection on 15 December 2015.
Summary – The three principal Unitary Patent cost components are prosecution and validation, translation and renewal fees.
Because the Unitary Patent (UP) is a European Patent (EP), the prosecution costs will be the same as a conventional EP. There will be no fee for validation as a UP. A translation by the applicant into one other language will be required.
The level of the renewal fees probably will be a major factor in deciding whether to validate an EP as a UP or as national patents. The UP renewal fee schedule was tentatively set by the Select Committee on 24 June 2015. That decision accepted the EPO President’s “True TOP 4” proposal, which provides fee levels corresponding to the equivalent of the renewal fees which have to be paid for the four countries (other than Italy—see below) out of the twenty-five EU participating member states in which European patents are currently most often validated. Those countries were France, Germany, Netherlands and United Kingdom. Now, following Brexit, UK will no longer participate in the Unitary Patent; therefore, we expect that the EPO Select Committee will reconsider the fee schedule.
These topics are each discussed in detail below.
Prosecution & Validation – Because the “Unitary Patent” is a “European patent with unitary effect,” all of the proceedings and related costs in the European Patent Office up to grant of a European Patent will be the same as for a conventional European Patent. Once the mention of the grant is published by the EPO, after the UP procedure comes into effect, we expect that the applicant will be able to validate the European Patent as a Unitary Patent in the states then participating in the UP system by simply checking a box on an EPO form and complying with the translation requirement. The EPO has announced that there will be no UP validation fee. That should provide a savings as compared with validation in individual states.
Translation –During a transitional period of up to 12 years from the start of the UP system, one “full translation” will be required in connection with Unitary Patent validation:
where the language of proceedings at the European Patent Office (EPO) is French or German, the patent proprietor will have to provide a translation of the European Patent into English; or
where the language of proceedings at the EPO is English, the patent proprietor will have to provide a translation of the European Patent into any official language of the European Union.
Providing such a translation could be more expensive as compared with validation in states who participate in the London Agreement, in which a specification in English suffices, but compliance with the UP translation requirement very probably will cost less than the translations required to obtain broad territorial coverage in all of the UP participating states by conventional validation of the European Patent in the national patent offices.
Interested persons have suggested two cost-saving strategies for UP translations:
Where the language of EPO proceeding was English, as most are, and the patent proprietor validates in any EU member state not then participating in the UP system and requiring a full translation (such as Italy and Spain), the translation for that non-participating state can be used to satisfy the UP transitional translation requirement; and
It has been suggested that the “full translation” requirement could be provided at very little cost by attaching a machine translation of the specification into one of the three EPO working language to the translation of the claims, which is required for all European patents, and filing that as the “full translation.” The regulation does not provide for EPO examination of this translation and, in any event, requires that the patent or a translation be provided in the language of the proceedings at the time of litigation. Critics of this proposal have pointed out Recital 12 in the preamble the translation regulation, which says “Such translations should not be carried out by automated means and their high quality should contribute to the training of translation engines by the EPO. They would also enhance the dissemination of patent information.” Those critics raise the question of whether the UPC might refuse to enforce a Unitary Patent for failure to submit a full human translation at the time of validation. That strikes us as extreme, especially because human translations are increasingly machine-aided and because a copy of a Unitary Patent or a translation in the language of the proceedings will be required at the time of litigation. However, until there is a ruling accepting this procedure, we recommend that a human translation be used to satisfy the transitional UP translation requirement.
Renewal Fees –The EPO is supported by fees and, under the present arrangement, it must share 50% of the renewal fees (annuities) with the member states. The UP regulation provides that a single set of renewal fees will be set by the EPO Select Committee of UP participating states. As a result, a tension in several directions exists among (1) the EPO (which must fund its UP costs primarily with UP renewal fees), (2) the larger member states who may see a reduction in fee income, (3) other member states that are hoping for increased fee income, (4) the EU Commission (which wants an effective EU patent system) and (5) the users, who must pay the fees. It appeared at first that the renewal fees schedule might be comparable to an average of national renewal fees in six to eight participating states. User groups and professional representative associations strongly objected. (See Background of the Renewal Fees)
At its meeting on 15 December 2015, the Select Committee adopted for sets of rules, including the Rules relating to Fees for Unitary Patent Protection. They include a renewal fee schedule, which is the EPO President’s “True TOP 4” proposal. It provides fee levels closely corresponding to the sum of the renewal fees which have to be paid for the four countries out of the twenty-five EU participating member states in which European patents are currently most often validated other than Italy. The previously agreed fees were not increased after Italy joined the UP scheme.