Unitary EU Patent - Update August 2015

As we have previously described, implementation of the proposed unitary EU patent depends on ratification of the Unified Patent Court (UPC) Agreement by thirteen member states of the EU, provided that those thirteen include the UK, France and Germany.

Portugal is now in line to become the eighth country to ratify the Agreement, following Austria, Belgium, Denmark, France, Luxembourg, Malta and Sweden. Further ratifications, including that of Germany, are expected in the not too distant future. 

We predicted before the recent UK general election that a Conservative government, committed to holding a referendum on the UK’s continued membership of the EU before the end of 2017, might result in delay to ratification by the UK. We remain sceptical as to whether the UK will ratify the UPC Agreement until the outcome of that referendum is known. The UKIPO has indicated that, notwithstanding the timetable for the referendum, preparations for British ratification will continue and are expected to be completed some time in 2016. However, we note that they have stopped short of saying that ratification will then occur. 

In other developments, the last of a number of legal challenges to the proposed new system raised by Spain has been dismissed. Italy has now, contrary to the position it previously took, announced its intention to participate in both the unitary patent and unified patent court.

It now seems that the only EU countries that will definitely not be included in the unitary patent, if and when the system finally comes into operation, are Spain and Poland. 

There has also been progress on the difficult question of the annual renewal fees payable to keep a unitary patent in force. The EPO has adopted the so-called “True Top 4” proposal, in which the renewal fees are based on the combined annual renewal fees for the four countries in which the greatest number of European patents are validated at present, namely the UK, France, Germany and the Netherlands. This is as good an outcome as patent proprietors could have hoped for, and means that the renewal fees payable in the early years of the lifetime of a unitary patent will be quite reasonable (less, in fact, than the annual maintenance fees of a still-pending EPO application). In the later years, however, the cost of the all-or-nothing renewal of a unitary patent will be considerable: rising from about EUR3000 to around EUR5000 (approximately US$3300 to US$5500) per year over the final five years of the patent’s lifetime. Particularly for patent proprietors that qualify as small or micro entities in the US, that is several times greater than the cost of renewing a corresponding US patent.

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