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The Unified Patent Court: fees for opting out and opting back in


13th May 2015

Hot on the heels of the Decision of the Court of Justice of the European Union to reject Spain’s objections to the Unified Patent Court, and with it the Unitary Patent, the Preparatory Committee for the Unified Patent Court has now issued a consultation on fees. The full details can be found here. Comments may be filed to the Committee until 31 July 2015.

As well as making proposals for fees for substantive actions before the Court, the proposals include a suggested €80 opt-out fee, and a €80 fee for withdrawal of the opt-out.

When the Unified Patent Court comes into being, it will have jurisdiction not only for cases relating to new Unitary Patents, but also to national validations of European Patents in countries which are subject to the Unified Patent Court. This means that if you have a European patent granted today, and you validate this in the UK and Germany, a third party could file a revocation action against the patent before the Unified Patent Court in due course. You would also be able to sue for infringement before the Unified Patent Court. This would replace the current arrangement in which actions for revocation or infringement would need to be done on a country by country basis.

However, there is the option for patent owners to opt out of the Unified Patent Court for national validations of a European patent, and indeed for national validations of patents based on European patent applications filed within at least seven years of the Court coming into being. For any patents for which the opt-out has been made, it will be possible for the patent owner to opt in at a later date, should it be desirable to make use of the Unified Patent Court. Patent owners may take the view that opting out to begin with – to ensure that third parties cannot make use of the Unified Patent Court to seek to revoke the patent throughout Europe – and then opting in if a central infringement action is considered desirable – gives the best option.

The latest proposals give an indication of the cost to avoid the Unified Patent Court – €80 per patent family – and the cost if you later want to opt back in. The opt-in costs are insignificant compared to the costs of initiating an infringement action. However, the opt-out cost of €80 per family may be significant for current applicants and owners who want to take the precaution of avoiding actions before the Unified Patent Court but without knowing whether such actions will ever be started.

As well as opt-out and opt-in costs, consultation suggests levels of fixed Court fees for substantive actions such as actions for infringement and declarations for non-infringement is €11,000, and an additional fee dependent upon the value of the action. The value added fees start from an additional €2,500 where the value of the action exceeds €500,000 to an additional €220,000 where the value of the action exceeds €30 million. The cost for a revocation action under the proposal would be €20,000, with no added value fee.

The consultation actually includes two proposals – the second differing from the first in that there are provisions for exception of the value additions for small and medium enterprises, non-profit organisations, universities etc.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

Author
Steve Howe
Partner
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Would you like to know more? You can talk to Steve Howe who will be able to help. Call +44 (0)20 7539 4449

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