From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 8 May 2015

Preparatory Committee launches consultation on the UPC Fees

The Preparatory Committee has today launched a Consultation on the proposed fee structure for the Unified Patent Court.  The consultation document (pdf) provides two proposals for the basic structure of the Court fees (Rule 370), a table of fees, a scale of ceilings for recoverable costs, and an Explanatory Note.

The two basic proposals differ in how reduced court fees work - the first applies refund of court fees in order to reward certain kinds of behaviour that reduce the Court's workload (basically if the action is withdrawn or settled early; or if a single judge is used), while the second provides exemption from the value-based fee for SMEs, non-profit organisations, universities, and so on.  Both proposals provide for fees for the same types of action, namely:

(1.) Infringement action [R. 15]
(2.) Counterclaim for infringement [R. 53]
(3.) Action for declaration of non-infringement [R. 68]
(4.) Action for compensation for license of right [R. 80.3]
(5.) Application to determine damages [R. 132]
(6.) Appeal pursuant to Rule 220.1 (a) and (b) [R 228]
(7.) Other counterclaims pursuant to Article 32 (1) (a) UPCA

and, further:

(1.) Revocation action [R. 47]
(2.) Counterclaim for revocation [R. 26]
(3.) Application for provisional measures [R. 206.5]
(4.) Application for opt-out [R. 5.5]
(5.) Application for withdrawal of an opt-out [R. 5.8]
(6.) Action against a decision of the European Patent Office [R. 88.3, 97.2]
(7.) Application to preserve evidence [R. 192.5]
(8.) Application for an order for inspection [R.199.2]
(9.) Application for an order to freeze assets [R. 200.2]
(10.) Filing a protective letter [R. 207.3]
(11.) Application to prolong the period of a protective letter kept on the register
(12.) Interlocutory appeals [R. 220.1 (c)]
(13.) Application for leave to appeal [R. 221]
(14.) Request for discretionary review [R. 220.2, R. 228]
(15.) Application for rehearing [R. 250]
(16.) Application for re-establishment of rights [R. 320.2]
(17.) Application to review a case management order [R. 333.3]
(18.) Application to set aside decision by default [R. 356.2]

(The references to rules are to the 17th draft Rules of Procedure [pdf])

For actions in the first list, there is proposed a fixed fee (€11,000 for most of them), and then a value-based fee for actions that have a value of €500,000 or more, starting at €2,500 and culminating in €220,000 for cases with a value of more than €30 million.

Noteworthy fee figures in relation to the second list (in relation to which the value-based fee element is not proposed to apply) are:

  • Revocation action - €20,000
  • Counterclaim for revocation - same fee as the infringement action, subject to a limit of €20,000
  • Application for opt out, or application for withdrawal of opt-out - each €80.

So a defendant who wishes to resist an infringement claim by raising invalidity of the patent will face a substantial court fee.  Also, assuming that the opt-out figure is per patent, this will amount to a considerable sum for a portfolio of any significant size.  (The opt-out is to register with the court the opting out from the jurisdiction of the court of a classical European patent or application in accordance with Article 83(3) of the UPC Agreement, in order to ensure that actions in relation to that patent can only be heard in national courts; the withdrawal reverses that process and restores the competence of the UPC).

The final proposal sets the scale of recoverable costs - that is the maximum in costs award that can be obtained by the prevailing party from the losing party, depending on the value of the case.  It bears reproducing in full:

Coming from a UK background, this Kat feels that the Court fees are on the high side, but acknowledges that this was always to be expected since the UPC is meant to be self-financing, and these fees represent the only source of income for the Court.  The scale of recoverable costs seems reasonable, and will enable litigants to know where they stand with respect to financial risk, while enabling them to litigate cases at a cost proportionate to the issue.

Responses to the consultation are requested in English and to be sent electronically to the , and the deadline is midnight on the 31 July.  While readers are of course very welcome to comment here, the IPKat points out that comments to the Preparatory Committee will be more efficacious.


Anonymous said...

If someone infringes a (blatantly) invalid patent and gets sued by the patentee, can he defend himself only by filing an expensive counterclaim under Rule 26? Or could he raise invalidity of the patent as a defense against infringement?

Ah, Rule 25(1) gives the answer:
If the Statement of defence includes an assertion that the patent (or patents) alleged to be infringed is (are) invalid the Statement of defence shall include a *Counterclaim against the proprietor(s) of the patent (or patents) for revocation of said patent (or patents) in accordance with Rule 43.

So the defense of invalidity can only be raised by filing a counterclaim for revocation. If someone gets a patent on the wheel and sues a wheel manufacturer, the manufacturer will have to pay at least € 11,000 (and up to € 20,000).

(OK, he might be able to file an opposition at the EPO, or intervene in an ongoing opposition procedure. But for that it will often be too late. And would the UPC wait for the EPO to come to a final decision?)

What is the opt-out fee for potential infringers? Oh wait..

Anonymous said...

> OK, he might be able to file an opposition at the EPO, or intervene in an ongoing opposition procedure. But for that it will often be too late.

It might become a new service, i.e. chasing promising grants in a field and filing oppositions. Quality of opposition and appeal proceedings will have a decisive role, I guess.

Anonymous said...

As a patent professional with no patent litigation experience at all I would like to ask, are these fees normal?
They seem amazingly high. What is the comparison with national proceedings? Is the cost of launching proceedings or counter-proceedings as high in the national route?

Anonymous said...

What is the comparison with national proceedings?

I can't give a real answer, but recently I came across this Dutch judgment in a patent case.

Basically, Rovi sued Ziggo for infringement of EP 1244300 and Ziggo argues invalidity. The patent is declared invalid because of added subject-matter.

Ziggo claimed costs of € 151,033.80 and got the full amount awarded (in fact 2x € 75,516.90 as the court split it in half for the infringement part, half for the invalidity part, then awarded both).

That's a lot of money for what seems to be a relatively simple case, and this was just for The Netherlands (and only for the first instance, two more to go!). It seems there has also been litigation relating to this patent and family members of it in the UK and Germany (probably against other alleged infringers, though).

Compared to this, the UPC fees don't seem so bad after all... that is, after you've paid your and your opponent's lawyers.

Had Rovi won, it would have claimed costs of € 139,916.45. Ziggo had objected to this amount, but Rovi had not objected to Ziggo's amount. I don't know if the court would have reduced the costs awarded to Ziggo if Rovi had objected.

Last_Billygoat_Standing said...

It this yet more evidence of what appears to be a troll's charter?

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':