The international IP community is closely following the developments leading to the entry into force of the new patent system in Europe, which will include “unitary patents” (i.e. patents granted by the EPO but not requiring any validation in the various EU states) and the “unified patent court” (a single court that will issue decisions on validity and infringement having effect in several EU member states at once).

The latest and very important development took place on June 24, 2015. After several months of proposals, negotiations and debates regarding the amount of the renewal fees that will be due to the EPO after grant of a unitary patent, the Select Committee of the EPO Administrative Council (which is composed of 25 EU member states, the EPO, the European Commission as observer and other observers) has decided what that amount will be.

The reason why reaching this decision took so long is that the Select Committee had to ensure that the fees will be sufficiently low to be attractive to the users of the patent system while also generating sufficient resources for the administration of the new patent system. As a result, it was clearly very difficult to identify the most appropriate new renewal fees, not least because they have to be commensurate to the fact that their payment will lead to the unitary patent remaining in force in a territory covering 25 EU member states.

In their assessment, the Select Committee noted the lack of an actual correspondence between the size of the various national markets and the fees defined by the various EU member states. In fact, in some cases larger countries require relatively low renewal fees while smaller countries require relatively high renewal fees. In addition, it was considered that the new unitary patent will coexist with the current European patent, which owners tend to validate in only 3 to 4 European countries on average.

After having reviewed all the relevant data and statistics, on 24 June the Select Committee thus agreed on a proposal coming from the EPO. The EPO proposal is called the “True Top 4” proposal. With this proposal, the unitary patent will confer protection in the territory of 25 EU member states by paying a single yearly renewal fee which will correspond to the total sum of the renewal fees currently paid for the four most frequently validated countries by the owners of European patents. The four countries in question are Germany, France, UK and the Netherlands. According to the EPO, this proposal will entail a concrete cost saving to the user, which will be particularly relevant for SMEs and universities, while at the same time providing sufficient funds for the EPO and the EU member states.

Now that the amount of the renewal fees has been established, the next step will be the determination of the so-called “distribution key” of the income generated by the renewal fees due for the unitary patent, which income will have to be shared between the participating EU member states. A decision on the “distribution key” is currently expected before the end of 2015.

However, the amount of the post-grant renewal fees which has now been decided by the Select Committee should already allow current and future patent owners to assess whether the new unitary patent will in fact be a better solution in economic terms, depending on the average time during which such owners currently maintain their patents after grant and on the countries in which they currently validate their European patents.

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