The European Unitary Patent System and Unified Patent Court

News & Commentary on Fees

Opt-out fee reduced to zero

The Preparatory Committee has published the Rules on Court fees and Recoverable Costs for the UPC (subject to “legal scrubbing”). A significant change is that the opt-out fee has been reduced to zero (from €80), so the only cost of opting out patents is now the administrative burden. 

The Committee has confirmed that Court fees will consist of a fixed fee element (eg. €11,000 for an infringement action) and for claims over €750,000, an additional value-based element calculated by reference to the value of the action (eg. €26,000 for a €4m claim). Some claims and applications will only attract fixed fees (eg. €20,000 for revocation claims).

The Committee has also agreed a scale of ceilings for recoverable costs (ranging from €38,000 to €2m depending on the value of  the action). Guidelines for assessing the value of the action have also been published which suggest that, “The most practicable method, in most cases, will be a valuation based on an appropriate licence fee. ”

 

TOP 4 fees proposal endorsed

The Select Committee of the Administrative Council of the EPO endorses, with the required ¾ majority, the European Patent Office’s “True Top 4” proposal

opt-out fee: €80 per patent

The Preparatory Committee’s consultation document sets the proposed “opt-out” fee at €80 per patent. The same fee applies to a subsequent withdrawal of an opt-out. This fee is not intended to generate profit and is intended to cover administrative costs only. Although the fee is per patent and not per designation, patentees with large portfolios will need to evaluate the cost of excluding their patents from the jurisdiction of the UPC in light of the value of the patents in question. The Preparatory Committee has not given any indication that the fee may be reduced for bulk opt-outs (or withdrawals of opt-outs).

Renewal fees proposals

President of the EPO proposes (to the Select Committee) 2 options for renewal fees for European patents with unitary effect. The proposals are designed to be attractive to users whilst also ensuring a balanced EPO budget.

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Priya Nagpal