A guide to the UPC and the UP - Flipbook - Page 28
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The third group entitled to compensation for translation costs are non-profit organisations,
universities and public research organisations. 43 The non-profit organisations, according to
r.8(2)(c) Unitary Patent Rules, are those defined in art.2(1)(14) EU Regulation No. 1290/2013. 44
Thus, non-profit legal entities are legal entities which due to their legal form are non-profit
making or which have a legal or statutory obligation not to distribute profits to their
shareholders or individual members.
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There is no definition at EU level of universities and public research organisations. According to
para.5 of the explanatory notes to r.8 Unitary Patent Rules, 45 whether organisations fall into this
category will need to be decided by the EPO. Of course, in doing so, the EPO will need to take
into account the national law of the Member State in which the university or public research
organisation has its residence or principal place of business.
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If a patent has multiple proprietors, compensation will only be granted if each proprietor is an
SME, a natural person, a non-profit organisation, a university or a public research organisation.
Request for Compensation
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Procedurally, the request for compensation has to be filed together with the request for unitary
effect. In other words, no compensation for translation costs will be paid if it is not for the
purpose of registering the unitary effect of the patent. 46
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The request for compensation for translation costs has to contain a declaration that the
proprietor of the European patent is an entity, or a natural person as defined in r.8(2) Unitary
Patent Rules. 47 The EPO currently does not plan to require the proprietor to provide supporting
documents about this status and also plans not to formally verify the veracity of the
declaration. It may however conduct spot checks before granting compensation.
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However, in the examination of the request and grant of compensation, the EPO may invite the
patent proprietor to provide evidence that it fulfils the requirements if the EPO has reasons to
doubt the veracity of the declaration filed under r.9 Unitary Patent Rules. 48 Should the EPO find
that the compensation was granted on the basis of a false declaration, the patent proprietor
has to pay – together with the next renewal fee falling due – an additional fee composed of the
amount of the compensation paid and an administrative fee. 49
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The EPO will examine the request for compensation and will inform the patent proprietor
whether the request has been granted or rejected. 50
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The level of compensation is defined in r.11 Unitary Patent Rules. It states that the
reimbursement of translation costs is to be made up to a ceiling as required by art.5(1)
Translation Regulation and paid in the form of a lump sum. The ceiling is fixed on the basis
of the average length of a European patent and the average translation cost per page. The lump
sum will be €500. 51 The administrative fee the patentee has to pay should it turn out that a false
declaration has been made is 50 per cent of the €500 lump sum. 52
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46
47
48
49
50
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r.8(2)(c) Unitary Patent Rules.
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2013:347:0081:0103:EN:PDF [Accessed 5 April 2023].
https://www.epo.org/law-practice/legal-texts/official-journal/2016/05/a39.html.
r.9(1) Unitary Patent Rules.
r.9(2) Unitary Patent Rules.
r.10(3) Unitary Patent Rules.
r.10(4) Unitary Patent Rules.
r.10(1) Unitary Patent Rules.
art.4(1) Rules relating to Fees for Unitary Patent Protection.
art.4(2) Rules relating to Fees for Unitary Patent Protection.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 18
