EPO revealed: proposed unitary patent renewal fees

The European Patent Office (EPO) has submitted proposals covering the renewal fees for the forthcoming unitary patent, with lawyers claiming that the plans may price out small businesses.

Benoît Battistelli, president of the EPO, has produced a report called ‘Proposals for the level of renewal fees for European patents with unitary effect’, in which two fee structures are outlined.

He has sent the proposals to the select committee of the EPO’s supervisory body, the Administrative Council, and asked for its opinion on them.

According to the IPKat blog, Battistelli submitted two proposals, called ‘TOP 4’ and ‘TOP 5’.

The TOP 4 proposal would require patentees to start paying renewal fees in the second year of the patent. The renewal price would start at €350 and increase each year until the 20th year, when it would be €4,855.

By contrast, TOP 5, under which renewals would also start at €350 in the patent’s second year, would make renewal fees more expensive as they continue, reaching €5,500 in the 20th year.

However, the TOP 5 proposal would provide a 25% reduction for small and medium-sized enterprises (SMEs), non-profit organisations and universities between the second and tenth renewal years. After the tenth year, the reduction would stop and the renewal fee would be based on the renewal prices in the five most popular European countries for filing patents.

At the moment, the EPO starts charging patentees renewal fees from the third year after their European patent was filed up until it is granted. The fees start at €465 and reach €1,560 in the tenth year, after which they remain the same. Once a European patent is granted it must be validated in national jurisdictions (such as the UK and France), where local renewal fees will apply once the patent is approved.

Under the unitary patent system the pre-grant renewal fees will be the same as now, but patentees must later pay a central fee covering the countries signed up to the system.

But for some lawyers, the costs under both proposals would deter small businesses from filing for a patent.

Gwilym Roberts, partner at law firm Kilburn & Strode, said: “The figures will be a disappointment to many SMEs, who would find themselves paying for more countries than they might even want.

“It adds a cost disincentive to a proposal already struggling with uncertainty over the court system. This is not the way to attract waverers,” he added.

Richard Willoughby, partner at law firm D Young & Co, said that the EPO’s concern of balancing the budget “requires some scrutiny”.

He told WIPR: “We need more detailed information before we can judge whether TOP 4 is actually necessary to achieve a balanced budget.” Willoughby said that for the unitary patent to be a success it “simply has to be” financially attractive, but that so far both TOP 4 and TOP 5 “miss those two objectives by some way”.

Willoughby added: “If many industries, especially the big filing tech sectors, do not find the unitary patent financially attractive at the TOP 4 or TOP 5 level, I really do worry that the take-up will not be terribly good.”

The unitary patent will cover the 28 jurisdictions that have signed up to it. The associated Unified Patent Court, which will hear disputes related to the patent, will have specialised courts in London, Paris and Munich.

The EPO told WIPR it would respond to a request for comment on the proposals, but had not done so at the time of writing.