A guide to the UPC and the UP - Flipbook - Page 412
What Costs can be Recovered?
Reasonable and Proportionate
20-43 Only those legal costs and other expenses which are considered reasonable and proportionate
can be recovered. 104 The RoP give no details as to how the Court is to assess a party’s costs
against this standard, 105 but in United Video Properties v Telenet, 106 the CJEU stated that, in
considering the issue of reasonableness, factors such as the subject matter of the proceedings,
the sum involved and the work to be carried out to represent the client has to be taken into
consideration. It is suggested that, in addition to these factors, the complexity of the litigation
should also be taken into account.
20-44 In assessing proportionality, the CJEU said this: 107
“it must be stated that Article 14 [Enforcement Directive] provides that the legal costs to be
supported by the unsuccessful party must be ‘proportionate’. The question of whether those
costs are proportionate cannot be assessed independently of the costs that the successful party
actually incurred in respect of the assistance of a lawyer, provided they are reasonable within
the meaning [set out] above. If the requirement of proportionality does not imply that the
unsuccessful party must necessarily reimburse the entirety of the costs incurred by the other
party, it does however mean that the successful party should have the right to reimbursement
of, at the very least, a significant and appropriate part of the reasonable costs actually incurred
by that party.”
Legal Costs
20-45 The UPCA refers to the recovery of legal costs, a concept that includes, according to the CJEU,
“amongst others, the lawyer’s fees”. 108 In the context of the UPCA, the legal costs will be those of
the lawyers who represent the parties before the Court in the sense of art.48(1) UPCA and the
costs of patent attorneys with litigation certificates, as identified in art.48(2) UPCA. 109
20-46 The costs incurred by in-house lawyers or patent attorneys who represent a party before the
Court are not excluded and therefore should be recoverable in the same way as those of
external lawyers and patent attorneys are recoverable. However, any application to claim such
costs will have to make it clear that the costs relate to legal advice and representation before
the Court rather than work done in the role of the client, that is, for example, finding
information to support or defend a claim.
20-47 The UPCA identifies in art.48(4) that the representatives of the parties may be assisted by
patent attorneys who have no litigation certificate and that, although such attorneys cannot
represent parties before the Court, they can speak at the hearings. 110 It appears from the CJEU’s
answer to the second referral question in United Video Properties v Telenet, 111 that such costs can
be reimbursed as part of the “other expenses” mentioned in art.14 Enforcement Directive and
69(1) UPCA provided that the costs are closely and directly linked to the judicial proceedings
(see next section).
104
105
106
107
108
109
110
111
art.69(1) UPCA and r.152(1) RoP.
There are individual exceptions to this general statement in relation to expenses due to witnesses and experts
and rates for party experts, interpreters and translators. See paragraphs 20-50 to 20-63.
(C-57/15), at [25].
(C-57/15), at [29].
(C-57/15), at [22].
See chapter 23 (Legal Representation, Privilege and Code of Conduct) paragraphs 23-01 to 23-13.
The suggestion to make it clear that compensation for representation would cover the cost of a patent attorney
assisting pursuant to art.48(4) UPCA was rejected by the Expert Group of the Preparatory Committee.
(C-57/15), at [39].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 402
