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The importance of getting unitary patent fees right

Emma Barraclough

Journalists know that most officials tend to downplay potential problems. So when both the president of the EPO and its head of patent law and international affairs acknowledge the difficulties in agreeing a fee structure for the unitary patent, we know they really mean it

Benoit Battistelli and Margot Frohlinger (pictured, right) have separately spoken about the challenge facing member states. Today representatives of those member states who have signed up to the unitary patent system meet in Munich to begin the tricky task of deciding how much the EPO should charge users for granting a UP and maintaining it for 20 years.

In principle it should be a fairly straightforward exercise: the EPO needs to estimate how much it will cost to examine applications for the UP and maintain a register of rights, and then factor in a few extra considerations: not cheap enough to prompt a deluge of applications, not pricey enough to put off applicants altogether.

It needs to decide how to balance front-loading and back-loading – whether to make the unitary patent cheap to apply for but expensive to maintain, particularly in the latter part of its life when a maintained patent has proved its commercial worth.

The decision makers, however, have an additional issue to consider. They need to decide what cut member states will receive from the renewal fees payable on unitary patents. Article 13 of the EU Regulation on the unitary patent concerns “distribution” of fees: the principle is that the EPO keeps 50% of renewal fees and the other 50% is shared around national offices based on “fair, equitable and relevant criteria”.

The Regulation says this requires consideration of the number of patent applications; the size of the market (while ensuring that each participating member state gets something); and compensation to those participating member states whose official language is not English, French or German, where patenting levels are low, and which joined the EPO relatively recently.

That offers plenty of scope for politicking and horse trading between members of the EPO. Few IP owners are likely to mind much how they do it (“they should do what they want,” one patent attorney told me this week). But they do care about the overall level of fees that will be levied on unitary patents. Many would-be users are adopting a wait-and-see approach to the new system – the danger is, of course, that this could result in lots of people waiting and very little to see.

An attractive fee structure is important to win over unitary patent sceptics. Although member states may be tempted to set the fees high to ensure that they get a decent cut of whatever distribution arrangement they finally agree, there could be very little take-up. If so, a lot of energy will have been spent with little to show for it.


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