When the Unified Patent Court comes into being, the Court will have exclusive jurisdiction for infringement and validity matters for all Unitary Patents. The default position is that the Court will also have jurisdiction for any national validations of conventional European patents, including those that have already been granted. However, owners of European patents and patent applications will have the option to ‘opt out’ so that jurisdiction for infringement and validity matters for these rights can continue to be with national courts. If a patent owner has opted out, they will be able to ‘opt in’ to the Unified Patent Court at a later date.
The expectation was that many patent owners would like to opt out initially so as to prevent third parties bringing a revocation action before the Unified Patent Court which could potentially result in the revocation of all national validations of a European Patent. In this way, if a patent owner wished to bring an infringement action, the patent owner could then decide whether to keep the opt out in place and bring actions before national courts, or opt in and bring the action before the Unified Patent Court.
One of the concerns about opting out (and potentially opting back in later) was the cost of this.
In the proposals on fees made by the Preparatory Committee for the Unified Patent Court last year, an official fee of €80 to opt out (per patent family), with a further official fee of €80 to opt back in, had been proposed. However, the Preparatory Committee have now agreed the Rules on Court Fees and have decided that there should be no official fee for opting out – or for opting back in.
The rules on court fees, also set out the other court fees. For most actions (infringement, counterclaim for infringement, declaration for non-infringement, action for compensation for licence of right), there is a fixed fee of €11,000 with additional fees based on the value of the action. The value based elements ranges from €2,500 for actions having a value of more than €500,000 to €325,000 for actions having a value of more than €50m. The fixed fee for a revocation action is €20,000.
Small and micro enterprises will be able to obtain a 40% reduction in these fees.
There is also the possibility of reimbursements of part of the fees. If the action is heard by a single judge, there can be a 25% reimbursement. Reimbursements are also available If the action is withdrawn or settled early. These reimbursements can be as much as 60% where the action ends before the end of the written proceedings, 40% if this happens before the end of the interim proceedings, or 20% if this happens before the end of the oral procedure.
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 any action in reliance on it.