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court fees in order to reward certain kinds of behaviour that reduce the Court's workload (basically if the action is withdrawn or settled early; or if a single judge is used), while the second provides exemption from the value-based fee for SMEs, non-profit organisations, universities,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
[R.207.8]
(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 secretariat@unified-patent-court.org , 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.