How are renewal fees affected by the Unitary Patent?

Renewal fees for Unitary Patents will be payable to the EPO on an annual basis.  The fee will be due at the end of the calendar month of the anniversary of the filing date.  Renewals may still be paid up to 6 months late, but a surcharge will apply.

The cost of renewals under the UP system was set at the cost of the top 4 countries in which European patents were validated in 2015 (Germany, France, UK, and the Netherlands).  This makes the Unitary patent attractive from a cost perspective if you compare it to the renewal fees which would be due for each country where multiple countries have been selected under the old system.

Individual renewal fees will still be payable for countries not covered by the UP system and it may not be worth filing a Unitary Patent if the patent proprietor only wants to validate in fewer than 3 participating EU countries.

Once Unitary protection is selected, there is no option to drop countries as the patent matures, so this is also worth considering if you originally only planned to validate your European patent in very few countries. Therefore, if the patentee is only really interested in a few participating countries over the threshold, it might be best not to file a Unitary Patent.

For a mid-sized validation programme, the national validation route (i.e. the current system) might still be more attractive from a cost point of view and will have the flexibility for litigation and renewal purposes.

What are the Benefits and Drawbacks of the Unitary Patent System?

Benefits Drawbacks
  • Reduced translation costs.
  • Reduced renewal fees if you normally validate in 5 or more contracting member states
  • The UP will cover 17 countries (more as other countries ratify).
  • All UP’s will fall under the jurisdiction of the Unified Patent Court, and this will make litigation more straight forward.
  • UPC will have greater powers against alleged infringers and can award costs against the losing party.
  • If renewal is normally only sought in 3-4 countries, then the UP system will be more expensive during the lifetime of the patent
  • For any EU country that has not ratified the agreement at the time of grant, patents will still need to be validated under the current system
  • You cannot opt out of the jurisdiction of the Unified Patent Court if you have an UP
  • A UP must continue to be renewed in all participating countries. You cannot selectively remove countries.
  • Revocation of a patent at the UPC applies to all participating countries
  • The new UPC is as yet untested, and it may take time to build case law

Preparation is key

It is important that any company with European Patents and licensing agreements, talks to their IP professional about the potential implications of keeping their patent within the jurisdiction of the UPC or opting out. The decision will need to be based on factors such as the strength of the individual patent, the market, competition and budget.

Disclaimer: This article is intended to explain new knowledge to our readers and to be used only as a brief guide. The information at the time of writing has been summarised by our Professional team based on information available to them and the EPO. To receive IP Advice for specific actions on existing Patents or new before considering whether or not to opt out of UPC please get in touch with our legal team. Every patent will have different parameters to consider and it is prudent to get legal advice moving forwards to ensure the right level of protection remains in place.

Want to find out More?

Feel free to contact our attorney team to answer any of your questions.

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