No Official Fee to Opt Out of the UPC – confirmed

February 2016

The Preparatory Committee for the UPC has agreed the Rules on Court fees and recoverable costs for the UPC.  The biggest change, and welcome news for proprietors of existing EP patents and applications is that no fee will be payable in order to opt out of the jurisdiction of the UPC.  Many have lobbied that this should have always been the case, and will welcome this news.  

The Preparatory Committee had made a commitment that the fees for both the opt-out and its withdrawal would be set to reclaim administrative costs only and that the UPC would not profit from either of these.  Recognising that the administration burden of opting out rests almost entirely with the applicant and also that any cost to the Court associated with the opt-out is related to processing the fee, the fee has been removed in the final agreed version of the UPC fees here. 

Court fees have also now been set, with the maximum ceiling for recoverable costs for proceedings with values of more than €50 million being capped at €2 million.  The provisions for seeking reductions have been set at reimbursement, wholly or partially, of and fixed and value-based fee.  Interesting the “test” for who can apply for a reimbursement remains the same; it has been speculated that non-practising entities could benefit from this arrangement.

This update was prepared by Martyn Fish, Partner in our Leeds office.

If you would like further advice on this or any other matter please contact Martyn or your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.