No-one likes paying renewal fees but in order to keep your patents in force they must be paid. With the major exception of the USA, almost every country requires renewal fees to be paid annually. That means that, in addition to the cost of the fees themselves, renewing even a moderately sized patent portfolio is an administrative burden. There are many specialist renewal fee reminder services available and I would always recommend using one of them. Of course, their services come at an additional cost.
One of the trumpeted benefits of the Unitary Patent is a potential reduction in the cost and complexity of renewing European patents. This newsletter looks at the changes and asks whether the actual benefits live up to the promise.
The pre-UPC renewal regime
Taking into account the extension and validation states, a European patent can be granted in up 45 states (exact number depending on the filing date). Pre-UPC, a proprietor had no choice but to pay renewal fees separately in each of the 45 territories in which a patent was required. This system remains in place for existing portfolios of patents. One advantage is that it allows cost savings to be made during the later stages of a patent’s life by dropping the payment of renewal fees in less important states.
When the UPC system enters into effect on 1 June 2023, the system of separate national renewals is retained UNLESS the proprietor requests “unitary effect” within 1 month of grant. If that is done, the separate national renewal fees in UPC-participating states are replaced by a centrally-payable single renewal fee in respect of the UPC-participating states.
Initially, this means Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Other states are expected to become UPC-participating states in due course but it is important to note that, if the above list of countries expands during the post-grant life of a specific patent, the renewal arrangements pertaining to that patent at the time of grant continue. In non-participating states, the familiar payment of separate national renewal fees continues.
Notable absences from the list of UPC-participating state are the UK, Poland and Spain - all countries with large populations in which European patents are often validated.
The Unitary renewal fees
The central UPC renewal fees are given in the table below.
As you can see, renewing a European patent with Unitary effect is not cheap. Whether or not it represents good value to you depends on if you want a patent in all 17 countries covered. If you need a patent in, say, France, Germany and the Netherlands only (or in those states alongside non-UPC-participating states like the UK and Spain) then the classic renewal route will be cheaper.
Assistance from Abel + Imray
Abel + Imray will shortly be changing its practice when reporting the Notice of Allowance of a European patent (the “Rule 71(3) EPC2 communication). A table will list the UPC-participating countries relevant to that case and provide advice on the relative merits and costs of the national versus Unified validation and renewal routes for that case.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. Get in touch if you would like to discuss your IP strategy or related matters.
Tim Hewson Of Counsel