The role of the European Patent Organisation
The European Patent Organisation is given various administrative tasks relating to European patents with unitary effect which are to be carried out in accordance with its internal rules. These include:
- Administering that part of the Register (which is kept by the EPO under the provisions of the European Patent Convention) in which unitary effect and any limitation, licence, transfer, revocation or lapse of a European patent with unitary effect will be registered;
- Translations; and
- Collecting and administering renewal fees.
Financial provisions relating to European patents with unitary effect
The principle with regard to expenses relating to European patents with unitary effect is that those expenses incurred by the EPO in carrying out its additional tasks given to it by the participating Member States should be covered by the fees generated by the European patents with unitary effect.
The renewal fees "shall be:
(a) progressive throughout the term of the unitary patent protection;
(b) sufficient to cover all costs associated with the grant of the European patent and the administration of the unitary patent protection; and
(c) sufficient, together with the fees to be paid to the European Patent Organisation during the pre-grant stage, to ensure a balanced budget of the European Patent Organisation."
The level of the renewal fees is also to be set, taking into account, among others, the situation of specific entities such as small or medium-sized enterprises ("SMEs"), with the aim of:
(a) facilitating innovation and fostering the competitiveness of European businesses;
(b) reflecting the size of the market covered by the patent; and
(c) being similar to the level of the national renewal fees for an average European patent taking effect in the participating Member States at the time the level of the renewal fees is first set.
This appears to imply that those who are not regarded as SMEs or have a valuable patent will pay more – according to some as yet to be determined criteria.
Perhaps acting as a cap on some fees, there is a provision that "In order to attain the objectives set out in this Chapter, the level of renewal fees shall be set at a level that:
(a) is equivalent to the level of the renewal fee to be paid for the average geographical coverage of current European patents;
(b) reflects the renewal rate of current European patents; and
(c) reflects the number of requests for unitary effect." Nevertheless only half the renewal fees will be retained by the EPO as there is a provision for paying 50% of the renewal fees to the participating Member States using what are to be "fair, equitable" criteria.
Financial provisions relating to the Unified Patent Court
The budget of the Unified Patent Court is to be financed by the Court's own financial revenues and, at least in the seven year (see footnote 1) transitional period following the coming into effect of the arrangements, by contributions from the Contracting Member States.
Court fees will consist of:
- A fixed fee; and
- A value-based fee above a "pre-defined ceiling".
The fees are to be fixed at such a rate as to ensure a right balance between the principle of fair access to justice, in particular for SMEs, micro entities, natural persons, non-profit organisations, universities and public research organisations and recognising the economic benefits to the parties concerned, and the objective of a self financing Court – and targeted support measures for SMEs and micro entities may be considered.
Overall position on financial provisions
Clearly, the more (or less) the new system is used, the lower (or higher) the fees will be – and the lower the fees for SMEs and patents which cover a smaller sized market, the higher the fees will be for others (especially, in the case of court proceedings which have a high value).
However, we can only wait and see what the level of usage is of the new system to determine what those fees may be over the long term.
- A short introduction to the Unitary Patent and the Unified Patent Court
- The Unitary Patent
- Translation and language arrangements
- The Unified Patent Court
- Situations where the permanent long term provisions will not apply (including transitional provisions and opt-out)
- How valuable will the new regime be to your business?
- Developments since signature of the Unified Patent Court Agreement
1. Possibly extendable by up to a further seven years
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.