At the meeting of the Unified Patent Court (UPC) Preparatory Committee last week, the rules on court fees and recoverable costs were agreed. There are a number of key aspects to these and we will prepare a separate review. However, at first glance we would note that the opt out fee has been removed, meaning there will be no charge for opting conventional European patents out of the UPC regime. This is a fair result, in our view, not least because the cost of administering the opt out itself is negligible.
It is also interesting to note that both of the two options for fee reduction, which were in the original proposal, have been adopted (and not one rather than the other as was suggested before the consultation). This means that true SMEs will benefit from a substantial (40%) reduction in Unified Patent Court fees. The concern that this option might be abused by wealthy NPEs has been addressed by the introduction of a penalty should it transpire that a party claiming the SME reduction was not entitled to do so. In addition, there will be reimbursement for early settlement, although this also means the value based fee will have to be paid at the commencement of a case.
Overall, the fees are relatively high, including value based fees that range from €2,500 (for cases exceeding €500k up to €750k), to €325k for cases over €50m. Fortunately, there are no value based fees for invalidity actions, including in particular invalidity counterclaims. The latter is very much welcomed since otherwise, a value based fee would have amounted to a very substantial tax on a defence.
Full details can be found here (pdf): http://dycip.com/upcfeesandcosts.
The guidelines for case valuation can be found here (pdf): http://dycip.com/upcfeesandcostsguide.