A guide to the UPC and the UP - Flipbook - Page 418
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And is the case so exceptional that the winning party should pay the otherwise
unsuccessful party’s costs incurred in respect of that issue?
20-72 If the Court adopts a similar approach and considers costs on an issue-by-issue basis, it will
then have to convert it into a percentage order because of the requirement in art.1(4) of the
Administrative Committee’s decision relating to altering the applicable ceiling to correspond to
the proportion of success. 147
20-73 The Court is also required to consider whether one party has caused the Court and the other
party to incur unnecessary costs. This might happen, for example, if a party amends its pleading
to drop an issue which the other party has not only addressed in its pleading but has incurred
the costs of witnesses or experiments to prove. The Court may also have paid the expenses of
such witnesses which the first party will then be asked to reimburse.
20-74 Finally, it should be noted that the Court has a very wide discretion. It can therefore consider
the procedural conduct of the parties, although this is not mentioned specifically in art.69
UPCA and the Administrative Committee’s decision on the scale of recoverable costs.
Scale of Ceilings for Recoverable Costs
20-75 Once a decision has been taken as to which costs are recoverable, the applicable ceiling has to
be determined. The aim of the cost ceiling is to safeguard the losing party against excessive cost
burden. The Preparatory Committee has pointed out that the threat of such cost burden does
not emanate from costs incurred by the Court, the Court fees not being an unreasonable and
unpredictable factor, but rather from the expenses incurred by the other party, especially the
costs of representatives. For this reason, cost ceilings were considered appropriate.
20-76 Due to the fact that there is no common legal basis within the Contracting Member States as to
the question of what reasonable representation costs are, a wide range of values for the
ceilings was discussed during the drafting stages. The explanatory note to the consultation
document states that for a case with a value of up to €500,000 the ceilings discussed ranged
from €24,000 to €200,000 i.e., differing almost by a factor of 10. The ceilings eventually agreed
(table 20-6) were a middle course and the result of compromise. As such, it was felt that an
early review of the ceilings was called for with a view to possible amendment once it becomes
known how the judges will apply the cost recovery rules in practice. 148 The Administrative
Committee will therefore review the scale of recoverable cost ceilings within two years after
entry into force of the UPCA and thereafter every three years. 149
20-77 Somewhat confusingly, r.152(1) RoP and the decision of the Administrative Committee refer
respectively to “costs for representation” and “representation costs” rather than the expression
“legal costs and other expenses” which is found in art.69(1) UPCA. It may at first sight appear
that representation costs only cover a party’s legal costs as opposed to all other costs incurred
in running a patent action. This is reinforced by the list of matters which a successful party must
include in its application for a cost decision, namely “court fees and costs of representation,
of witnesses, of experts, and other expenses”. 150 If this were the case, then the ceilings of
recoverable costs, which apply to representation costs, 151 would only apply to legal costs.
This obviously cannot be correct since the ceiling on recoverable costs is stated to be an
absolute cap on recoverable representation costs and the last safeguard to be applied when
the Court makes its decision. 152 Further, the Expert Group of the Preparatory Committee
resisted a suggestion that the words “others expenses” be added to “costs of representation”
147
148
149
150
151
152
See paragraph 20-83.
recital 5 and art.3 Scale of Recoverable Costs.
art.3 Scale of Recoverable Costs.
r.151(d) RoP.
art.1(2) Scale of Recoverable Costs.
recital 1 Scale of Recoverable Costs.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 408
