< Back to latest news & events

UPC

Unitary Patent Renewal Fees – proposed figures revealed

March 2015

Ever since the prospect of a Unitary Patent for Europe became a reality, the subject of cost has been hotly debated. Will a Unitary Patent save me money? But with so many unknowns, the question has been like a puzzle.

According to various sources, we could have the first piece in the puzzle, with the EPO having made a proposal on the level of renewal fees. In a document “Proposals for the level of renewal fees for European patents with unitary effect”, (which we’ve yet to see a copy of) submitted by the President of the EPO to the Select Committee of the Administrative Council for their opinion, the EPO has come up with the following proposal:

To meet the requirements set out in Article 12 of the Regulation on the Unitary Patent, the EPO has allegedly proposed the following structure for setting unitary patent renewal fees:

  • years 3 to 5: the level of the EPO’s internal renewal fees (IRF) [these are the fees payable to the EPO for pending patent applications currently]
  • years 6 to 9: a transitional level between the IRF level and the year 10 level
  • from year 10, a level equivalent to the total sum of the national renewal fees payable in the states in
    which European patents are most frequently validated (TOP level)

Furthermore, based on this, two specific proposals are made – one where the Year 10 onwards level is based on current renewal fee levels for FOUR European countries (TOP 4 level) and one where the Year 10 onwards level is based on current renewal fee levels for FIVE European countries (TOP 5 level) but with a reduction for certain categories of patentees, namely SMEs, natural persons, non-profit organisations, universities and public research
organisations.

Based on these proposals, the cost of obtaining a UP would be more expensive than current filing strategies, if for example patentees usually validate in 3 or less states. And of course, given that it will not be possible to be selective as to EP countries which are maintained throughout the life of the patent, there is no option to scale down costs towards the end of the patent term.

We still need more pieces in the puzzle to get the full picture on whether a UP will save money in the long run.

Latest updates

Seminar on Incorporating Trade Secrets into your IP Strategy

HGF is hosting a Seminar on Incorporating Trade Secrets into your IP Strategy which will be followed by networking, apero, and snacks. The Seminar will be held on Wednesday, 10th …

Read article

PRESS RELEASE – HGF strengthens European presence with three new Partners in France and Germany

HGF is pleased to announce the arrival of three new partners, further strengthening its European presence. Two partners will be joining the firm’s fast-growing French practice, and one will join …

Read article

Regulatory Exclusivity for
Medicinal Products in Europe

Video overview: New Medical Products 8 years of data exclusivity, followed by 2 years of market exclusivity. +1 year market exclusivity possible for a new indication showing significant clinical benefit. No exclusivity granted for new formulations or routes of …

Read article

Added Matter - Part 2

Video overview: Pre- and Post-Grant Amendments are governed by Articles 123(2) & 123(3) EPC respectively Before grant, amendments can broaden the claim scope as long as the resulting claim is …

Read article

Added Matter - Part 1

Video overview: What is Added Matter? Added matter occurs when an amendment introduces content that goes beyond what was originally disclosed in the application as filed (Article 123(2) EPC). EPO …

Read article

Patenting Polymorphs at the EPO

Video overview: Novelty and Inventive Step Prior art must necessarily lead to the claimed polymorph to be novelty destroying Watch out for inherent disclosures in prior art—methods may implicitly produce …

Read article

Antibodies

Video overview: EPO Requirements for Antibody Applications The EPO Guidelines (G-II, 6) provide a standardised framework for antibody-related patent issues. Antibodies can be defined by various aspects, including but not …

Read article

Description Amendment Requirements at EPO

Video overview: At the final stage of prosecution, the EPO increasingly insists each patent description must align with the allowed claims to improve clarity and eliminate inconsistencies. However, this strict …

Read article