The UPC - How much will a UP cost?

As of 1 June 2023, the Unitary Patent (UP) system will come into effect. As a result, rather than granted European patents having to be individually validated and maintained in each country, patent proprietors will be able to request a single UP. At the time of writing, a UP will provide protection in the seventeen UPC participating Member States that have ratified the UPCA.

 

 

There are seven additional UPC participating Member States that have signed but not yet ratified the UPCA. If any of these states go ahead with ratification, UPs granted after ratification will additionally provide protection in those countries. In this article, we will examine the various fees and costs of the UP system, in particular in comparison to those of the classic system.

 

Pre-grant of a Unitary Patent

 

A UP may only be requested once a European Patent has been granted with the same set of claims in respect of all of the Member States that have agreed to enhanced cooperation for unitary patent protection. As such, there will be no impact on any fees or costs associated with the pre-grant phase. In addition, there will be no specific official fee associated with applying for a UP.

 

Post-grant of a Unitary Patent

 

As mentioned above, under the classic system a granted European patent must be individually validated and maintained in each country of interest. As such, there are substantial fees and costs associated with this process. For example, validation and renewal fees must be paid for each country, along with costs for translations of the claims or entire specification in others, as well as the costs for regional attorneys and potential revocation or infringement proceedings. We shall examine each relevant expense in turn.

 

Renewal fees

 

Rather than paying individual renewal fees in each country covered by the UP, patent proprietors will pay a single annual renewal fee to the EPO in euros via any of the EPO’s accepted methods (credit card, bank transfer, or debit from an EPO deposit account). Since fee payments to the EPO may be validly made by anyone, there will be no requirement to use a representative to pay renewal fees.

 

One of the aims of the UP system is to provide a business-friendly level of renewal fees. As such, the renewal fees for a UP have been calculated to correspond to the combined renewal fees for the four EPO Member States which were most often validated in 2015 – these being Germany, France, the UK and the Netherlands (note: the UK has since withdrawn from the UPCA, so the UP will not extend to the UK). Shown below is a table provided by the EPO comparing the renewal fees for a UP, as compared to the total of the 2020 renewal fees for each of the original 25 participating Member States:

 

Year	Unitary Patent (€)	25 Member States (€)
2	35	220
3	105	1,452
4	145	1,857
5	315	2,506
6	475	3,250
7	630	3,861
8	815	4,615
9	990	5,554
10	1,175	6,463
11	1,460	7,526
12	1,775	8,655
13	2,105	9,854
14	2,455	11,028
15	2,830	12,189
16	3,240	13,569
17	3,640	14,912
18	4,055	16,166
19	4,455	17,729
20	4,855	19,227
Total	35,555	160,633

 

From the above, it may be seen that the renewal fees of a UP are approximately one fifth the total sum of the corresponding regional renewal fees due under the classic European patent system for European patents validated in the original 25 Member States that agreed to enhanced cooperation for unitary patent protection (as noted above, the UK has since withdrawn from the UPCA). Since the base UP renewal fee is equivalent to the renewal fees for the four most common EPO Member States for validation, a UP is likely to represent a significantly more cost-effective option should a patentee wish to seek broad territorial coverage.

However, it is important to note that not all of the Member States that agreed to enhanced cooperation for unitary patent protection have ratified the UPCA. Currently, a UP will currently only extend to the 17 Member States in which the UPCA has been ratified (although this number will likely grow with time). A map indicating the current territorial coverage of a UP can be found here.

Further, it should be noted that it will not be possible to “prune” one or more participating Member States from a UP in order to reduce the cost of maintaining the UP. Finally, separate non-UP patents for the UK and other EPO Member States that are not (yet) covered by the UP will still be required. As such, if protection is desired in only a small number of EPO Member States, a UP may not necessarily provide the best value for money in terms of renewal fees.

 

Translation costs

 

For a classic European patent, there are differing translation requirements (and therefore, associated costs) depending on the countries in which the patent is validated. Some countries have no translation requirements, some require a translation of just the claims, and others require a translation of the entire specification. As such, there are significant translation costs for validating a classic European patent.

 

Under the UP system, no translation will be required after the transitional period of six years (although this may be extended up to 12 years). Until the end of the transitional period, a translation of the entire specification must be provided in English and either French or German. Since a translation of the claims into all three official languages of the EPO is already required for grant, the only additional cost during the transitional period will be the translation of the description into one other language.

In order to assist SMEs, natural persons, non-profit organisations, universities and public research organisations with the cost of translation, a €500 compensation scheme to cover the cost of translating the application is available.

The EPO estimates that the total cost (combining renewal fees and translation costs) for a UP over 12 years will be €11,260. This represents a 5% saving relative to an estimated €11,850 for a classic European patent validated in Germany, France, the UK and the Netherlands and maintained for the same period of time.

 

Revocation and infringement proceedings

 

Under the classic European patent system, revocation and infringement proceedings must be brought individually in each country that the granted patent is validated in. This can result in substantial overall costs, as well as legal uncertainty due to differences in national patent law.

 

Under the UPC, the validity and infringement of any UP will be decided by the Unified Patent Court (UPC), however opposition proceedings at the EPO will still be available for the usual 9 months after grant. As discussed in detail here, the official fee for revocation of a UP will be €20,000, with the same fee being required upon appeal. For infringement proceedings, the base fee will be €11,000, with additional value-based fees being required when the value of the action is greater than €500,000. A 25% reduction of these fees is available if the action is heard by a single judge, with a 40% reduction also being available for SMEs.

In contrast to EPO opposition proceedings, the costs of a revocation action at the UPC can be recovered by the winning party, with the amount depending on the value of the proceedings.

 

Summary

 

Due to the singular renewal fee and lack of translation costs, a UP provides a competitive alternative to a classic European patent validated and maintained in approximately four or more countries covered by the UP. Similarly, when either bringing revocation or infringement actions, the UPC should provide a cheaper forum than the multiple national actions required for a corresponding European patent validated in multiple countries. However, the potential cost savings should be weighed against the reduced flexibility offered by a UP and the risk of centralised revocation before the UPC.

If you have any questions about applying for a Unitary Patent, or about the UPC more generally, please get in touch with us – we will be happy to advise you.