The Unified Patent Court (UPC) Preparatory Committee has published the rules on UPC court fees and recoverable costs together with guidelines for determining the value-based court fees and recoverable costs for the successful party. The individual fees are listed in the rules and discussed further below. However, it is notable that the level of the fees is significantly higher than that for EPO procedures, such as opposition, which therefore remains an extremely attractive option for those wishing to cost effectively attack a patent.
The fixed fee for an infringement action or a counterclaim for infringement is €11,000. In addition, a value-based fee is payable for actions exceeding a value of €500,000. These fees are capped at €325,000 for actions with a value of more than €50 million. The value-based fees are assessed by the claimant and payable with the fixed fee.
A revocation action will have a fee of €20,000. For comparison the opposition fee at the EPO is a significantly more modest €785.
Small enterprises and micro-enterprises are entitled to a 60% fee reduction if they meet the criteria set out in section 8 of the rules.
The fees will be partially reimbursed if the action is heard by a single judge (25%), if the action is withdrawn (60%, 40% or 20% depending upon the stage at which the withdrawal takes place) or if the parties reach a settlement (60%, 40% or 20% depending upon the stage at which the settlement is reached). There is also the possibility of fee reimbursement where the amount payable threatens the economic existence of a party who is not a natural person.
The ceiling of recoverable costs is set according to the value of the action. If the value is up to €250,000 the ceiling is €38,000. For actions where the value is more than €50 million the ceiling is €2 million. There is, however, provision for raising the ceiling to an extent in particularly complex cases or lowering the ceiling if the applicable level of recoverable costs would threaten the economic existence of a party. Costs are rarely awarded in EPO opposition proceedings.
The UPC Preparatory Committee considers that the fee levels represent the lowest that will enable sustainability of the court. However, in view of the significantly higher costs of revocation actions as compared to EPO opposition proceedings, together with the broader territorial application of an EPO opposition (which covers all EPC contracting states rather than only the EU states), the EPO opposition procedure is likely to remain the first port of call for attacking a recently granted European Patent (1) Revocation proceedings before the Unified Patent Court provide a further opportunity to challenge validity and have the advantage that they can be brought at any time during the life of the patent.
Boult Wade Tennant’s attorneys are vastly experienced in EPO opposition proceedings and in an excellent position to plan a revocation strategy in view of the additional options that may now be available. If you would like further information on the new system please do not hesitate to contact Matthew Spencer or your usual Boult Wade Tennant advisor.
(1) An opposition must be filed within nine months of grant.