G4/19 Decision: Double patenting is a ground for refusal before the EPO
The Enlarged Board of Appeal of the European Patent Office has made a decision on the G4/19 referral.
Measures are now well underway for the establishment of a Unified Patent Court (UPC) in Europe. The UPC will be a single court covering up to 25 countries and will have jurisdiction over the new European patent with unitary effect (Unitary patent). The UPC will also have jurisdiction over traditional European patents. However, for a transitional period, owners of traditional European patents can opt-out of the UPC on payment of a fee.
The successful take up of the UPC will depend in part on the cost of litigating and the preparatory committee for the UPC has recently issued a consultation document providing two alternative proposals for court fees and a scale of ceilings for recoverable costs. The consultation document is available here. Comments should be submitted by 31 July 2015.
Whilst the UPC will be welcomed by many, some European patent proprietors will be wary of being drawn into actions before the UPC during its early years and may prefer to opt-out. They will be particularly interested to learn that the proposed opt-out fee is 80€, with the same fee being set for subsequently withdrawing the opt-out. There is no discount for multiple opt-outs. Proprietors with a large number of European patents will face a significant cost for opting all their patents out but for many the proposed fee is likely to be considered a cost worth paying to shelter their patents from the initial uncertainly of the UPC.
The proposals include fixed fees for initiating actions/procedures which range from the 80€ opt-out fee up to 20,000€ for a revocation action. The fixed fee for an infringement action is 11,000€.