A guide to the UPC and the UP - Flipbook - Page 421
Procedure for Setting the Applicable Ceiling
Determining the Value of the Proceedings
20-84 As previously described in relation to determining the value of the action for the purpose of the
value-based Court fee, 161 the judge-rapporteur decides the value of the proceeding at the
interim conference for the purpose of applying the scale of ceilings for recoverable costs. 162
Although there is no explanation, the expression “value of the proceeding” is probably used in
relation to the rules on recoverable costs to distinguish it from the “value of the action” used in
relation to fixing the Court fee. This because there will be instances when the values are
different and the judge-rapporteur must give a value to both. 163
20-85 Where the parties pay fixed Court fees, for example, in revocation actions, no determination of
the value of the action will have been made in the statement of revocation. 164 Nevertheless, the
judge-rapporteur must determine the value of the proceedings for the purpose of setting the
applicable ceiling for recoverable costs. The judge-rapporteur will obviously have to call on the
claimant before the interim conference indicate the value of the proceedings and ask the
defendant if it disputes the value. The judge-rapporteur must take into consideration the
Guidelines for the determination of Court fees and the ceiling of recoverable costs in deciding
the value of the proceedings. 165
20-86 In the Guidelines, the Administrative Committee has set out how the value of such revocation
proceedings and counterclaims for revocation should be determined: 166
161
162
163
164
165
166
167
–
The value of a revocation action or of a counterclaim for revocation should be determined
having regard to the value of the patent to be revoked.
–
In the absence of relevant information:
–
the value of a revocation action may be assumed to be equal to the value of an
appropriate licence fee calculated on the basis of the turnover of the parties for the
remaining lifetime of the patent,
–
the value of the revocation counterclaim may be assumed as being equal to the value
of the infringement action 167 plus up to 50 per cent;
–
If the action concerns more than one patent, the value of each patent should be calculated
separately and the values determined should be added together to become the value of
the action; and
–
The value of the infringement action and the value of the revocation counterclaim
pending before the same division should be added together for determining the level of
recoverable costs.
See paragraphs 20-15 to 20-20. Recital 4 Scale of Recoverable Costs states that the RoP shall apply mutatis mutandis when
the Court decides on a request to alter the recoverable cost ceiling.
r.104(j) RoP.
rr.104(i) and 104(j) RoP.
rr.44 and 46 RoP.
r.104(j) RoP. See also Guidelines.
para.II.2.b)(1) to (4) Guidelines.
para.II.1.a) Guidelines. See paragraphs 20-15 to 20-23.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 411
