Last week saw the London meeting of the joint CIPA/IPO/IP Federation event relating to the consultation on court fees for the Unified Patent Court. Earlier this week IPcopy posted our notes on the event. Today we have some further notes gleaned from the Q&A session that followed the main event.
- The draft Guidelines relating to the valuation of an action will be published shortly though it was unclear whether this would happen before the consultation ends
- There is an EU definition of what constitutes an “SME”. Head on over here for more details.
- There is currently a referral to the CJEU (C57/15) on the issue of caps on recoverable costs. This did not seem to be regarded as an issue however. I think that this matter had been considered in the context of the Patents County Court (as was).
- The UK was fairly isolated on the issue of the opt-out fee. The EPO had suggested 100 Euros and this figure had been backed by Belgium. However, this figure, and presumably the actual proposed figure of 80 Euros, ere regarded as a little spurious.
- There will be a fairly swift review of the UPC fees once the system is up and running.
- The rules and consultation do not deal with the issues of VAT and interest on fees.
- There’s an open question as to how actions with multiple parties on one or both sides might be handled. How will a cost cap scheme work in this environment?
- Mr Justice Birss suggested that the issues of costs should be aired early on but it was also noted that the interim conference is 9 months into the action. It was suggested that the court could give early guidance on this issue during an action.
- Richard Vary questioned whether arbitration would take off. Richard pondered why, if you could get the other party to the arbitration table, you wouldn’t then push for arbitration at the ICC and make the arrangement global in nature.
- A question was raised why universities, some of whom can be (i) wealthy and (ii) litigious, qualify for help under the consultation proposals. The answer seems to be because they are named in the same breath as SMEs within the UPCA (article 36.3 UPCA).
Mark Richardson 2 July 2015
As far as I know there will not be guidelines on the valuation of a UPC action. This was discussed, but no decision was made. It may be left to the judges to decide, once the Court is operational.
Thank you for your comment Wouter
I note that the IPKat article on the same consultation event states the following: “Guidelines are being developed on the assessment of the value for the value based fee; these are not yet published but may be in due course; the main intention is that the case is valued on a reasonable royalty basis, and that the valuation should relate to the whole action”. (http://ipkitten.blogspot.co.uk/2015/06/consultation-event-on-court-fees-for.html)
So it seems we have recorded similar statements. I’ve tried to check the video for more information but this doesn’t seem to be working at the moment unfortunately.