A guide to the UPC and the UP - Flipbook - Page 29
Renewal Fees/Lapse
Renewal Fees
2-56
The renewal fees for Unitary patents as well as additional fees in the case of late payment will
have to be paid to the EPO. 53
2-57
This is in contrast to the present situation where, after grant, a European patent becomes a
bundle of national patents which means that annuities have to be paid to the national patent
offices for each designated country in which the patent is to be valid.
2-58
The fees are due in respect of the year following the year in which the mention of the grant
of the European patent, which benefits from unitary effect, is published in the European
Patent Bulletin.
2-59
The rule on the payment of renewal fees 54 is very similar to the rule defining the payment of
annuities to the EPO in the course of the examination proceedings. 55 In essence, the renewal
fee becomes due on the last day of the month containing the anniversary of the date of filing
of the European patent application which resulted in the Unitary patent.
2-60
If the renewal fee is not paid in due time, it may still be paid within six months provided that
an additional fee is also paid within that period. 56 According to art.2(1) Rules relating to Fees
for Unitary Patent Protection, the additional fee for belated payment of a renewal fee will be
50 per cent of the late-paid renewal fee.
2-61
If the renewal fee is still not paid within the additional six-month period, the EPO should
issue a communication under r. 20(2)(d) Unitary Patent Rules and r.112(1) EPC Implementing
Regulations 57 and will notify the proprietor of the Unitary patent of its loss of rights.
This communication is not a decision as such which allows bringing an action before the Court.
2-62
Should the patentee have unintentionally not paid the fee having taken all due care in the
circumstances to do so, a request for re-establishment of rights can be filed. 58
2-63
Alternatively, should it turn out that the EPO made a mistake and that the finding that there
was a loss of rights is inaccurate, the patentee may request an appealable decision under
r.112(2) EPC Implementing Regulations 59 and may start an action against such a decision before
the Court.
2-64
R.13 Unitary Patent Rules also provides special rules for certain circumstances relative to
the date of the communication of the registration of unitary effect under r.7(1) Unitary Patent
Rules. According to r.13(4) Unitary Patent Rules, a renewal fee falling due within three months
of the notification of the communication referred to in r.7(1) Unitary Patent Rules may still be
paid within that three-month term without the additional fee specified in r.13(3) Unitary
Patent Rules.
53
54
55
56
57
58
59
r.13(1) Unitary Patent Rules; see also recitals 17 to 21 Unitary Patent Regulation as well as arts 9(1)(e), 9(2) and 11 to 13
Unitary Patent Regulation.
r.13(2) Unitary Patent Rules.
r.51(1) EPC Implementing Regulations.
r.13(3) Unitary Patent Rules.
r.112(1) EPC Implementing Regulation states: “If the EPO notes that a loss of rights has occurred, without any decision
concerning the refusal of the European patent application or the grant, revocation or maintenance of the European patent,
or the taking of evidence, it shall communicate this to the party concerned”.
r.22 Unitary Patent Rules. See also paragraphs 2-76 to 2-80.
r.112(2) EPC Implementing Regulation states: “If the party concerned considers that the finding of the EPO is inaccurate,
it may, within two months of the communication under paragraph 1 [see fn.57], apply for a decision on the matter. The EPO
shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party”.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 19
