The EPO’s Unitary Patent adjusted fee proposal
29 May 2015
On 7 May 2015, the President of the European Patent Office, Benoît Battistelli, submitted an adjusted proposal for the renewal fees of the Unitary Patent for review by the Select Committee of the Administrative Council.
The document, found here, begins with a brief discussion of the previous proposal.
The first option in the previous proposal was for the renewal fees to replicate the current EPO fees during the early years (years 3-5) of a patent’s/patent application’s life, and then to transition them such that from year 10 onwards they are at a TOP4 level (i.e. equivalent to the sum of the renewal fees in the 4 most frequently validated countries).
The second option in the previous proposal was similar to the first, however, a TOP5 level was suggested from year 10 onwards with a 25% renewal fee reduction for particular entities e.g. natural persons, SMEs, Universities and non-profit organisations.
In response to committee meetings and comments from delegations, the adjusted proposals have opted to forgo use of the EPO fees during the early years. Instead, the new proposals use a “true” TOP4 or TOP5 level in which the renewal fees match those of the most popularly validated countries from year 2 onwards. Again, a TOP5 level would come with a 25% fee reduction for particular entities. It has also been proposed that a further 15% reduction in fees is applicable when the proprietor offers a license of right.
On 20 May 2015, the American Intellectual Property Law Association (AIPLA) published a letter in response to the new proposals, found here. In the letter, the President of the AIPLA, Sharon Israel, praises the adjustment of the proposals, however, she does not believe that this is enough. Ms. Israel argues that the current TOP4 proposal would cost at least three times that of a US patent over its life, and that fees this high could act to deter use of the Unitary Patent system from the outset.
Ms. Israel goes on to suggest that a TOP4 level weighted by the frequency of designation may be preferable. However, it is clear from the letter that the ideal scenario would be a TOP3 level.
The outcome of these proposals and discussions will have a major effect on the eventual success, or lack thereof, of the Unitary Patent system. Further updates will follow as information becomes available to us. In the meantime, please do follow the links above for more information.
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© Withers & Rogers LLP, May 2015