A guide to the UPC and the UP - Flipbook - Page 404
Fees for Applications for Provisional Measures
20-13 As can be seen from table 20-2, only a fixed fee of €11,000 is payable for applications
for provisional measures; but when an infringement action is commenced on the merits
a further fixed fee of €11,000 is payable in addition, where applicable, to a value-based fee.
Fees for Counterclaims for Revocation
20-14 As can be seen from table 20-2, the fixed fee for a counterclaim for revocation is expressed as
being the same as the fee for the infringement action, subject to a cap of €20,000, being the fee
for a revocation action. Therefore, where no value-based fee has been paid in the infringement
action because the value of the action was considered to be lower than €500,000, the fee
payable for the counterclaim for revocation would be €11,000. The fee will increase in line
with that paid by the claimant in the infringement action but whatever value-based fee is paid
by the claimant, the fee for the counterclaim for revocation will never exceed €20,000. This is
demonstrated in table 20-4. Table 20-4 only sets out the fees paid up to an action valued at
€3,000,000 since the cap is reached once an action is valued at over €1,500,000.
Table 20-4: Fees for Counterclaim for Revocation (Court of First
Instance and Court of Appeal)
Value of action
Fixed fee for
infringement action
Value-based fee for Fee for counterclaim
infringement action for revocation
Up to and including €500,000
€11,000
€0
€11,000
Up to and including €750,000
€11,000
€2,500
€13,500
Up to and including €1,000,000
€11,000
€4,000
€15,000
Up to and including €1,500,000
€11,000
€8,000
€19,000
Up to and including €2,000,000
€11,000
€20,000
Up to and including €3,000,000
€11,000
€26,000
€20,000
Determining the Value of the Action
20-15 Despite the difficulty in predicting the sum of remedies claimed and therefore the
compensation due to the claimant in a patent action, establishing the value of the action is not
intended to take too much time or become a mini-trial. According to the Guidelines, it should
“be as simple as practicably possible”. 32
20-16 Broadly speaking, the value of a patent infringement action is based on a royalty calculation.
The Guidelines do not exclude the use of other types of valuation, such as a valuation based on
the claimant’s loss of profits, or the profits made by the defendant but it is suggested that
because of their complexity, these methods are not used during the initial stages. 33
32
33
para.I.1 Guidelines.
paras I.1 and II.1.a)(1) and (2) Guidelines.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 394
