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.