What 52% tells us about the Unitary Patent discussions
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

What 52% tells us about the Unitary Patent discussions

There’s lots of good stats in the UK IPO’s excellent Corporate Plan 2014-17. One of the most revealing is that more than half of its income comes from European patent renewals

Yes, that’s right: the UK IPO makes more money from renewing EP(UK) patents than from all its other activities put together. According to the Office’s three-year plan, published this month, EP (UK) renewals are expected to bring in just over £42 million ($70 million) – that is 52% of total income – in 2014-15.

This will not be news to patent owners, particularly those who have to pay the extensive renewal fees for each member state in which their European patent is designated. There’s also no reason to think the UK is exceptional – I expect most European offices make a similar proportion of their income from EP renewals, if not more (though they may not be as transparent about it).

But it is worth thinking about as the 25 EU member states that have signed up to the Unitary Patent haggle over the fees to be charged.

Unlike European patents, Unitary Patents will be renewed centrally at the EPO. You might think therefore that little or no money will be distributed to national offices. But the EU Regulation specifically sets out that 50% of fees will be distributed to national offices based on “fair, equitable and relevant criteria”.

That was the result of a political compromise. And you can see why: if applicants switch away from European patents to Unitary Patents in large numbers, that will leave a big hole in the income of many national offices.

My understanding is that the UK’s position is that change is inevitable, and the system should be designed to offer value to users rather than revenue to national offices, even if that means a big drop in revenue. The Corporate Plan in fact notes that the Unitary Patent may have an effect on demand towards the latter part of the three-year plan.

But that will not be true of other offices in Europe.

And that tension explains why discussions over the renewal fees are still continuing, and we do not yet have any light on what they will be. As EPO President Benoit Battistelli told us last year, keeping fees down while trying to maintain national office revenues is “like trying to transform a circle into a square”.

But as we have argued before (Unitary Patent figures don’t add up; The importance of getting Unitary Patent fees right, Patent practitioners call for cost clarity), if the price of a Unitary Patent isn’t right, there’s no good reason why applicants should use it.

more from across site and ros bottom lb

More from across our site

The full list of finalists has been revealed and the winners will be presented on June 20 at the Metropolitan Club in New York
A team of IP and media law specialists has joined from SK Schwarz alongside a former counsel at Sky
The Irish government has delayed a planned referendum on whether Ireland should join the Unified Patent Court, prompting concern about when a vote may take place
With more than 250 winners recognised during the ceremony, there are many reasons to be positive about the health of the IP industry in EMEA
Practitioners say the USPTO’s latest guidance has some helpful clarifications and is a good reminder of the importance of checking AI outputs
Susanne Schmidt discusses why trademarks are more than 'just a name' and why she would choose green farming as an alternative career
The former head of life sciences at Kramer Levin has joined Orrick, a firm that hopes to grow in the sector
Lionel Martin of August Debouzy and Kristof Neefs at Inteo share how they prevailed in a UPC Court of Appeal case surrounding access to documents
Counsel say ‘strange’ results have increased their reliance on subscription-based search platforms, but costs are not being shifted onto clients yet
The firm was among multiple winners at a record-breaking 2024 ceremony held in London on April 11
Gift this article