A guide to the UPC and the UP - Flipbook - Page 401
20-07 A distinction is made between those actions where only a fixed fee is due and those actions
where a fixed fee may be combined with a variable value-based fee. The actions which may
attract a value-based fee are actions and counterclaims for infringement and actions which
are similar to infringement actions i.e., actions for a DNI and actions for compensation for
a licence of right. The Court also takes a second fee where an application is made to
determine damages and this may comprise both a fixed fee and a value-based fee.
A revocation action only attracts a fixed fee, as does a counterclaim for revocation.
20-08 The rationale behind the value-based fee is that users with a greater stake in the outcome
of the action should pay more. In the declaration attached to the UPCA, the Contracting
Member States stated that: 9
“Whilst all users of the Unified Patent Court should contribute to its financing, users having
more significant economic interests should provide a reasonable and proportionate
contribution to the functioning of the Court, on the basis of an additional value-based fee,
proportionate to the economic value of the case at stake in the specific procedure,
applicable above a pre-defined ceiling.”
20-09 The value-based fee is paid according to a scale but is only due when the value of the action
exceeds €500,000. This figure was considered appropriate by the Preparatory Committee on
the basis that it expected 25 per cent of actions filed at the Court to fall below this threshold.
The Preparatory Committee stated in the consultation document on fees that: 10
“The experience in Germany, one of the few Member States who operate a value-based system,
has shown that nearly one quarter of cases has a value of up to €250,000. As the EU-wide scope
of the UPC judgments will increase the value, we have doubled this amount to reach our
proposed threshold for the value-based fee.”
20-10 No distinction is made according to the type of patent in dispute (Unitary patent or
European patent) to ensure that holders of both types of patent have equal access to
the Court. Any difference in the Court fees will only result from the calculation of the
value of the action; the greater geographical protection of a Unitary patent may often
lead to a higher value of the action.
Before the Court of First Instance
Fixed Fees
20-11 Tables I and III to r.370 RoP (reproduced at tables 20-1 and 20-2) set out the fixed fees for
initiating various proceedings and applications. Table I (table 20-1) sets out the fixed fees
for actions where a value-based fee may also be payable. 11 Table III (table 20-2) sets out
the fixed fees for procedures and actions where no value-based fee is payable.
9
10
11
para.8 Declaration of the Contracting Member States concerning the preparations for the coming into operation of
the Unified Patent Court attached as an annex to the minutes of the signing of the Agreement on a Unified Patent Court,
19 February 2013, 6572/13 PI 28 COUR 12 available at
http://register.consilium.europa.eu/doc/srv?l=EN&f=ST%206572%202013%20INIT [Accessed 14 April 2023].
para.B.I.1 Preparatory Committee’s Explanatory Note to the Consultation Document: Rules on Court fees
and recoverable costs, May 2015.
There had been a suggestion in the consultation on fees and recoverable costs that other counterclaims pursuant
to art.32(1)(a) UPCA, such as counterclaims concerning licences should also attract a fixed fee, but this was removed
from table I following a consultation with the users since it was unclear as to what the fee related. See p.17 Explanatory
Note to the Preparatory Committee’s final draft – subject to legal scrubbing – Rules on Court fees and recoverable costs,
25 February 2016.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 391
