Unpaid costs: an update

When the IPKat posted his original piece on the problems of collecting unpaid costs in IP opposition proceedings (here), he hoped for some thoughtful responses and he was not disappointed. Readers' comments, particularly that of Robert Cumming (Walker Morris), made for interesting reading. We all now have a better idea of the problem and, thanks to this blog's little survey (which you will find perched at the top of the home page side bar), we can see what readers regard as the preferred solutions.  With the first 100 votes cast, the preferred option appears to be to ask an opponent to give security for costs.  A monthly escalation of unpaid costs -- which was initially the front runner -- has stalled in second place, scarcely ahead of the third most-favoured option, the technically and politically more problematic solution of rendering a debtor's own IP rights (assuming he has any) unenforceable until he pays his outstanding costs.  Surprisingly, at least to this Kat, the "name-and-shame" option of listing non-payers' names until they cough up, has no support among IP practitioners and their clients at all.

Require security for costs
  41 (42%)
Make costs orders larger so that it's worth suing to recover them
  5 (5%)
Monthly escalation of unpaid costs
  23 (23%)
Use name-and-shame websites
  0 (0%)
Render their own IP unenforceable till they pay
  22 (22%)
Forgive them, for they know not what they do
  9 (9%)

There's still nearly two weeks till the poll closes -- and your opinion can still influence the outcome!
Unpaid costs: an update Unpaid costs: an update Reviewed by Jeremy on Friday, August 26, 2011 Rating: 5


  1. The logical solution to this problem would be to do away with the recovery of costs completely. If the patent system does not need this to "encourage" the filing of oppositions, why is it needed for TMs? How would the costs order be enforceable against a non-EU party? My understanding of international agreements is that a court order is required from the foreign jurisdiction before the national court will consider enforcement procedures and I strongly doubt that a costs order from OHIM meets the bill.

  2. I was surprised not to see the most obvious option: abolish costs in the UKIPO and OHIM. The award figures are still so low in most cases that collection often costs more than the award.

    The problem is even greater before OHIM.

    Does anyone decide not to oppose because of the fear of the costs award (as opposed to the costs actually incurred)?

    There are other means of dealing with vexatious opponents.


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