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Unitary patent renewal fees: revised proposal

Keltie LLP

K2 IP Limited

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IMG_8533A short while ago IPcopy reported on proposals from the EPO Select Committee in respect of the renewal fee levels for the unitary patent.

Readers may recall that the Select Committee proposed a unitary patent renewal fee structure comprising the EPO’s internal maintenance fees from years 2 to 5 (a new year 2 fee was proposed as part of the proposals), the renewal fees at a level equivalent to the sum of national renewal fees for years 10 and above and a bridging arrangement in years 6-9 between the amounts in the years 2 to 5 and 10+ regimes. Within this structure, two proposals were put forward, a TOP 4 proposal and a TOP 5 proposal (the latter of these having some concessions in the fees available for SMEs).

As reported elsewhere recently the EPO Select Committee has, following feedback, revised the unitary patent (UP) renewal fee proposals slightly. So, what’s changed?

The revised proposal (SC/18/15) indicates that a number of comments were received by the EPO indicating that the use of its own internal renewal fee amounts for the year 2-5 period was not supported.

As a consequence the EPO is now proposing what it refers to as the “true” TOP 4 and “true” TOP 5 proposals. Basically, the national renewal fee amounts for either the top 4 or top 5 most popular validation territories now form the basis of the proposed UP renewal fees from years 2 through 20. The 25% SME reduction in years 2 to 10 ( in the “true” TOP 5 proposal) and the 15% licences of right reduction still remain.

The new proposals will reduce (a bit) the amounts paid by users of the UP system in the first 10 years of a patent’s existence. The regime in years 10 and above remains unchanged.

The revised proposal has also been accompanied by another document (SC/19/15) which provides a comparison of fees and external costs between a traditional European patent and a Unitary patent. The costs of the various “true” TOP 4, TOP 5 and TOP 5 (SME) proposals are shown compared to the costs of validating and maintaining a range of traditional EP validations in 1, 2, 3, 4, 5, 6, 7 and 25 member states. These cost comparisons are also provided on the basis of a network of patent attorneys managing the renewals and a specialist validation/renewal firm managing the renewals.

The comparison is carried out on the basis of an EP patent that grants in year 4 (where the year 3 and 4 maintenance fees have been paid to the EPO) and where the specification is in English and comprises 20 pages of description and 4 pages of claims.

A couple of points occur to IPcopy:

  • Even with the revised proposals, the cost of obtaining a unitary patent for a patent owner that normally only validates in three member states still doesn’t seem that attractive, with some pretty large variances in the cumulative costs between the UP and traditional EP options.
  • Getting a patent to grant in year 4 seems to assume a very smooth prosecution path at the EPO. Given the number of “where’s my exam report?” chaser letters that IPcopy sees going out to the EPO one has to wonder whether the extra savings provided by the new proposals will really be seen for the average patent filer.

AIPLA

IPcopy also notes that the revised proposals have already received some negative comments from AIPLA in this letter to the EPO Select Committee.

AIPLA is concerned that the renewal fees, even in the revised proposal, are too high and in particular do not take account of the practice of selective abandonment of conventional EP patents that occurs through the patent life after grant. AIPLA note that the “true” TOP 4 proposal would still cost at least 3 times more over the life of a unitary patent compared to US patent renewals.

AIPLA suggests that a lower level than the “true” TOP 4 level is required and suggests a TOP 3 level or using a weighted average of the renewal fees in the most frequently selected 4th states rather than using the Netherlands as the 4th state. A UP renewal fee schedule that reflects the selective EP patent abandonment practice in later years is also suggested.

So, the renewal fee negotiations rumble on…….

Mark Richardson 26 May 2015


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