The Preparatory Committee released the agreed rules relating to UPC court fees last week. The main reported piece of news relating to the publication of the fees seems to have been the removal of the 80 Euro opt-out (and withdrawal of opt-out) fee. However, there are a number of other changes in the rules which are summarised below. For reference the Rules document can be found here and the Guidelines for the determination of Court fees and the ceiling of recoverable costs of the successful party can be found here.

Rule 370 – Court fees

• Fees for other counterclaims under Art 32(1)(a) UPCA have been removed from the list as it was deemed unclear what it applied to and when.
• Fees for application for and withdrawal of opt-out has been removed. It was noted in the explanatory note that the admin burden for registering the opt-out rests almost entirely with the applicant. Regardless of the reasoning provided in the note there are likely to be a number of happy people out there who took exception to the idea of having to pay to opt-out of something that had not asked for.
• Fees for appeals. Appeals on revocation actions and counterclaims for revocation are not subject to value-based fees. Appeal fees have also been moved into their own section.
• Multiple parties and patents – if an action has more than one claimaint/more than one defendant or concerns a plurality of patents then only one fixed fee or value based fee applies.
• The previous consultation document contained two proposals, one which was aimed at rewarding certain types of behaviours and one which was aimed at SMEs. There was no clear consensus in the responses to the consultation and so a third option is provided in the current document comprising support for reimbursements in certain cases (early settlement, withdrawal, use of single judge) as well as a 40% reduction on all court fees at first instance and appeal for micro and small entities.

Changes to Fees

The proposal contains fees which have been pitched at a level that is expected to allow the court to be self-financing after the end of the transitional period. The fee levels are apparently as low as they can go while still enabling the court to function.

The value-based fees have been tweaked slightly to include two more values of action at the top end of the scale. Previously the value based fees contained a number of levels upto 30 million Euros. Now an additional level has been added of upto 50 million Euros and are capped (at 325,000 Euros) for actions valued above 50 million Euros.

The fee for an application for an order to freeze assets has been reduced.

Recoverable costs

The area of recoverable costs was a difficult one to agree in light of differing approaches in different Member States. A compromise has been provided.

The Guidelines for the determination of court fees and recoverable cost ceiling state that the method of determining value-based fees should be “as simple as practically possible” and the most practicable method is viewed as a valuation based on an appropriate licence fee (either the claimant’s existing rate, an accepted industry rate or a rate determined by the Court). Loss of profits or defendant’s profits may be applied in some cases but are generally regarded as being too complex.

Mark Richardson 7 March 2016