3 June 2015

Unitary Patent Update

The implementation of the Unitary patent and Unified Patent Court is continuing. Jan Walaski discusses the latest developments.

With the rejection by the CJEU of the Spanish challenge to the Unitary Patent (5 May 2015), progress towards implementation of the Unitary patent and Unified Patent Court (UPC) continues apace.  Of particular interest is that the rejection of Spain’s challenge has caused the Italian government to shift its position; on 13 May, it released a statement announcing that joining the Unitary patent system was now a priority.

In other developments:

  • seven of the required thirteen countries have now ratified the UPC Agreement and a number of other countries are taking the necessary preparatory steps towards ratification
  •  a court fees consultation has been launched, proposing fee levels for actions such as infringement and revocation, as well as proposing the opt-out fee by which existing European patents can be excluded from the jurisdiction of the new court.  The consultation is open until 31 July 2015 and is available at UPC Fees Consultation 
  • a proposal for the single renewal fee payable after grant of a Unitary patent has been put forward for discussion

The renewal fee proposals have attracted particular interest: a balance needs to be struck between the interests of national patent offices in maximising their income and the interests of applicants in minimising the fees payable after grant.  There are currently two main proposals, referred to as True Top 4 and True Top 5, reflecting the cost of renewing existing patents in the top 4 (UK, France, Germany, Netherlands) and top 5 (as top 4 plus Sweden) validation countries.

If the True Top 4 proposal were to be adopted, it might be considered to be a reasonable trade-off for applicants who would normally validate in France, UK and Germany only, in that it would provide protection across many more European states.  This would particularly be the case if Italy, and perhaps ultimately Spain, were also to join the system.