We are expecting the Unitary Patent to become an available option in the next few years, allowing applicants to obtain a single Unitary Patent covering all countries of the European Patent Convention who have signed up fully to the Unitary Patent system.
One of the issues that may help dictate whether patent owners decide to obtain a Unitary Patent or to obtain separate national validations will be the relative cost. The EPO Select Committee has now confirmed their recommendation for the costs of renewal fees, providing a little more clarity on what the total likely costs of the Unitary Patent will be. See below for more information.
Obtaining A Unitary Patent
Whether applicants want to obtain a Unitary Patent or separate national validations, the first stage will be to file a European patent application at the European Patent Office (EPO), paying the filing, search, examination and designation fees, and annual maintenance fees up to grant. When the EPO accepts the application, it will be necessary to file translations of the claims (to give an English, French and German version of the claims) and to pay the EPO grant and printing fees. The EPO will then grant a European Patent. Up to this point, the costs will be identical whether applicants wish to obtain a Unitary Patent or conventional national designations.
Once the Unitary Patent is available, on grant of a European Patent, applicants will be able to elect to obtain a Unitary Patent covering all countries that are party to the Unitary Patent system. To do this, they will need to file a translation of the entire specification into a second European language, and pay an official fee to the EPO (the cost of which has yet to be confirmed).
In contrast, if applicants decide to validate the patent nationally as they do now, the cost of translation is avoided if they only require protection in countries party to the London Agreement.
After grant, it is necessary to pay annual renewal fees. Where a patent is validated nationally, renewal fees are paid annually for each national validation. For a Unitary Patent, there will be a single annual fee payable covering all countries. Although not a final and binding decision, the Select Committee of the EPO recently endorsed a proposal that the renewal fees for a Unitary Patent should be based on the renewal fees for renewal of a patent in the UK, France, Germany and the Netherlands. This means that the Unitary Patent renewal fee will be €315 for the 5th year (assuming that the patent has been granted by then), increasing for each subsequent renewal to €1175 for the 10th year and €4855 for the 20th year.
An alternative proposal had been to have higher basic renewal fees, but to give a discount to SMEs, universities etc. It seems that this alternative has been dismissed in favour of lower fees for all.
What does this mean for applicants? If you are only interested in your patent covering three countries, it will be cheaper to validate nationally rather than obtain a Unitary Patent. If you want protection in four countries, the renewal cost is likely to be the same whichever route you take, whilst if you want protection in five or more countries, then the renewal fees will be cheaper if you obtain a Unitary Patent.
However, in this case, you should be aware that if you obtain a Unitary Patent, you cannot later reduce the number of countries covered by it to reduce renewal costs. For example, if you validate your patent in six countries, and a few years later decide that the renewal fees are too high and that you only need protection in two countries, you could elect to not renew the patent in the four countries that you are not interested in to reduce costs. In contrast if you have a Unitary Patent, with the single annual renewal fee, your choices are simply to pay the full renewal fee and keep your rights in all countries, or not pay the renewal fee and lose your rights.
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.