March 1, 2016
By Philip L. Cupitt, Ph.D.; Leythem A. Wall
Europe’s new patent system, expected to come into force in 2017, consists of two parts. First, patent owners will have the option to apply for a European Patent with Unitary Effect (or 'unitary patent' for short) to avoid the costs of validating the patent in individual countries. It will remain possible to apply for a European patent under the current system, which requires validation in individual countries of choice. Second, a new court known as the Unified Patent Court (UPC) will be created to act as a single forum for disputes relating to unitary patents. The UPC will also have jurisdiction to hear disputes relating to European patents granted under the current system, although it will be possible for such patents to be opted out of the UPC's jurisdiction.
Following a public consultation launched in May 2015, the Preparatory Committee for the UPC agreed on the long-awaited Rules on Court fees and recoverable costs at its meeting on 24 and 25 February 2016. The Rules and list of fees can be found here.
Key aspects of the UPC fees include:
Guidelines for the determination of Court fees and the ceiling of recoverable costs of the successful party have also been published. These suggest approaches for valuation of actions such as infringement claims, claims and counterclaims for revocation, declarations of non-infringement, actions for compensation of license of right, and applications for interim relief. The Guidelines can be found here.
While it remains to be seen just how the Court will develop, it is clear that the UPC fees will be cheaper than the total of those for parallel litigation in multiple jurisdictions. The threat of recoverable costs (i.e., the ‘loser pays’ principle) may discourage weak cases, whilst partial reimbursements of fees may promote early settlement. Reduced fees will also be encouraging for small and micro-entities. However, compared to the European Patent Office (EPO) opposition fee, currently set at 775 EUR, the UPC revocation fee may seem disappointingly high.
To read more about the UPC, please visit finnegan.com/unifiedpatentcourt.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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