Unitary Patent and UPC fees

József Tálas

Unitary Patent Fees

• AIPLA commented on original in March• Revised proposal on 7 May 2015• True TOP 4 and true TOP 5• From year 2 onwards through to year 20• True TOP 5 offers 25% reduction for SMEs

from years 2 to 10

Unitary Patent Fees comparison

Fees payable over 20 years• TOP 4 - €37,995 • True TOP 4 – €35,555• TOP 5 – €43,625• True TOP 5 – €41,955• EPO internal – €23,855• 25 Member States – €158,621

Unitary Patent Fees

• No decision at latest Select Committee meeting on 26-27 May

• “some member States [are] not yet able to take a concrete position on these proposals”

• Next meeting to be held on 23-24 June

Unified Patent Court Fees

• Public consultation on fee structure for the Unified Patent Court

• Deadline 31 July• www.unified-patent-court.org

Unified Patent Court Fees

• Alternative proposal for exemption and/or reimbursement system for incorporating Article 36 (3) of UPC Agreement into Rules of Procedure

• Only one fee level

Unified Patent Court Fees

• Fixed fees and value-based fees for initiating a number of different proceedings

• Fixed fee: €11,000 (mainly)• Value-based fee• N/A if value ≤ €500k, otherwise: • €500k < value ≤ €750k = €2,500• value > €30,000k = €220k

Unified Patent Court Fees

How to calculate the value?Draft rule 370 (5) • “shall reflect the objective interest pursued by

the filing party at the time of filing the action” and

• “in deciding on the value, the Court shall in particular take into account the guidelines laid down in the decision of the Administrative Committee for this purpose”

Unified Patent Court Fees

Some other fees:• Opt-out €80 / patent• Revocation €20,000 (no value)• Provisional measure €11,000 (no value)

Unified Patent Court Fees

Alternative options for incorporating Article 36 (3) of the UPC Agreement

1)Reimbursement depending on behaviour of parties (for anyone) OR

2)Exemption from value-based fee for SMEs

PLUS: Reduced fee should amount of fees payable endanger economic existence of company

Unified Patent Court costs cap

• Only for costs of representation• Based on value of proceeding • Ceiling for recoverable costs of representation

per instance and per party is €50,000 in cases up to €250,000 in value

• Highest amount of €3million in cases in excess of €50,000,000 in value

Thank you for your attention!jozsef.talas@sarandpartners.hu