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Friday, 26 February 2016

BREAKING: No opt-out fees, as the UPC Preparatory Committee publishes decision on UPC court fees

The AmeriKat responding to her latest mobile reception
issue, but not to the welcome news of no UPC opt-out fees
The AmeriKat has been waiting for this day for a long time.  No, its not the day when she can get through an entire mobile phone conversation without someone losing reception, but the day when the UPC Preparatory Committee publishes the rules on UPC court fees and recoverable costs.

The UPC court fees rules are neatly set out in this document.  The Guidelines for determining the value-based fees and recoverable costs are set out in this document.  Although the AmeriKat has not had a chance to fully digest the provisions (which will be subject to follow-up report), she notes the following:
  • No opt-out fees.  The explanatory section of the rules document explains that this was one of the "few areas of clear consensus in consultation responses".  It continues: 
    "We now know much more detail as to how the proposed opt-out process will work and that the administration burden rests almost entirely with the applicant. We also know that any cost to the Court associated with the opt-out is related to processing the fee. There is no additional cost for the Case Management System to process opt-out requests if there is no fee. Requiring people to make payment generates costs for the court which would not be needed if there were no fee. So, removing the fee removes the cost; it also eliminates the problem of how to process payments particularly during provisional application and honours the commitment already made to only reclaim administrative costs for the opt-out."
  • Fixed Fees:  € 11,000 seems to be the number of the day for fixed fees.  It will cost €11,000 to sue for infringement, but €20,000 to commence a separate revocation action. It is €11,000 to counterclaim for invalidity.  The table on some of the fixed costs is below:
  • Value-based fees:  As set out in the Guidelines, the most practicable method for determining case value for an infringement action will be on an appropriate licence fee (although, the AmeriKat can already hear many saying "Impossible - we would never licence our patents to some parties!").   In those cases, a valuation based on the claimant's loss of profits or the defendant's profit's may be applied, but the document notes that this may bee too complex and could cause satellite litigation.  The additional value-based fees start at actions valued at and above €750,000 and are capped at €325,000 for those claims that are more than €50 million.  
  • Recoverable costs ceilings:  Although there is a question whether these include court fees, the maximum ceiling for recoverable costs for values of more than €50 million are capped at €2 million (cue every European patent litigator checking their costs budgets).  Parties may request a lowering of the ceiling, especially where cost recoverability may threaten the economic existence of a company.  

9 comments:

Anonymous said...

11K for a declaration of non-infringement seems a bit prohibitive. Hardly encouraging/enabling a 'clear-the-way' attitude. Good for patentees when infringers are small fry.

Sam Urai said...

Finally no opt-out fee. A truly inconspicuous measure to get rid of one of the various constitutional law problems which the ratification will inevitably run into in Germany. Let's see how the others can be dealt with, probably not as easily.

Anonymous said...

If Germany doesn't like it, it should go live on an island where its narrow mind will be welcome.

Anonymous said...

No reason to lose nerve here. Some will certainly prefer being called narrow-minded over abandoning constitutional principles and values. Rightly so.

Anonymous said...

I think they tried that once before.

Anonymous said...

Anon @ 00:14:00:

And if you don't like this, how about opting out on 23 June? No opt-out fee charged there either and you can afterwards continue on your ego trip, showing no respect for other countries and people having an opinion different from yours.

Anonymous said...

re comments of Sam Urai, 09:16, and 12:18 -

Some people appear not to grasp the hypocrisy shown here. One rule for Germany and another for the UK. Germany can have principles and protect its interests, but the UK is just a country of selfish xenophobes. Apparently. Well, it must be true, because the UK is not part of the European Clique.

G. Witter said...

I'm not sure whether this discussion is going in the right direction.

The good thing is that there will now be no fee for opting eligible patents out of the competence of a potential UPC, allowing their holders to decide freely whether they want to be part of that game or not - which is something the UPC proponents were desperately seeking to avoid.

For those in the know, it is quite apparent that the motivation for this step has little to do with "newly gained knowledge" about the opt-out process which, by the way, was designed by the very same people, but, from a legal standpoint, is more or less inevitable should a German ratification not be bound to fail from the outset.

Anonymous said...

Rather than being defensive, IP professionals in the UK need to recognise that their clients may well want or need to opt out of the UPC whether the UK is part of it or not.

The fact that their UK clients will still need or want patent protection in the EU should open their eyes to at least some of the economic facts of life.

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