A guide to the UPC and the UP - Flipbook - Page 417
20-68 As a consequence, the costs of a technical advisor are not excluded per se; it depends upon the
tasks that they carry out. The CJEU considered that costs of “research and identification” related
to the issue of damages and were too remote. The CJEU’s reasoning was that if such costs were
considered to be part of “other expenses” under art.14 Enforcement Directive, that would
deprive art.13 Enforcement Directive of its practical effect. 143 Although not discussed by the
CJEU, the costs of a technical advisor searching for prior art before commencing a revocation
action should not be considered too remote as it directly and closely relates to the action.
However, it remains to be seen where the Court will draw the line.
Pre-action Costs
20-69 Pre-action costs are not mentioned in any of the rules, but again, provided they are directly and
closely related to the judicial proceedings, they appear not to be excluded, particularly in the
light of the comments made by the CJEU in the United Video Properties v Telenet 144 relating to
technical advisers. The costs relating to research and identification were excluded not because
they took place before proceedings were commenced, but because they did not show a close
and direct enough link to the proceedings, being relevant to the damages enquiry.
Exceptions to the General Rule
20-70 Art.69 UPCA and recital (1) of the Administrative Committee’s decision on the scale of
recoverable cost ceilings 145 makes it clear that the Court has complete discretion to alter the
general rule when required by equity to do so. Recital (1) states:
“Furthermore, in case of partial success or in exceptional circumstances, the Court may order
the parties to bear their own costs, or apply a different apportionment of cost, based on equity.
Unnecessary costs caused to the Court or the other party shall be borne by the party incurring
them, which means that even the successful party has to reimburse costs caused that are
deemed unnecessary by the Court. Only the recoverable costs established in compliance with
these principles is measured against the ceilings set forth in this Decision. There is a large
margin of appreciation for the Court when applying the safeguarding principles…”
20-71 The Court therefore is directed to consider, firstly, the question of whether equity requires
the costs to be apportioned according to the issues on which the (mostly) successful party
has succeeded and whether this requires a departure from the general rule. Although the UK
is no longer a Contracting Member State the experience of its courts in apportioning costs is
instructive. The courts in the UK apply a similar approach in that, as a general rule, the loser
pays the winner’s costs. But if the winner does not succeed on all issues, the court can also
take an issue-based approach, if appropriate, asking which of the various issues the overall
successful party lost and apportioning costs accordingly. The principles have been summarised
as follows: 146
–
The overall winner is likely, save in the most exceptional circumstances, to be entitled to
payment of all its costs which are not or cannot be allocated to a particular issue, which are
the general costs of the action; and
–
If costs are suitably circumscribable so that they can properly be allocated to issues upon
which the overall winner has nevertheless lost, there are two questions:
–
143
144
145
146
Should the winning party recover the costs of that issue?
(C-57/15), at [36].
See the quote in paragraph 20-67.
See Scale of Recoverable Costs.
Hospira UK Limited v Cubist Pharmaceuticals, LLC [2016] EWHC 2661 (Pat) at [5] referring to the approach set out in Monsanto v
Cargill No.2 [2007] EWHC 3113 at [2] to [9] which was subsequently approved by the Court of Appeal in MMI v Cellxion [2012]
EWHC Civ. 139.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 407
