A guide to the UPC and the UP - Flipbook - Page 425
20-105 The Court can also order that either or both parties provide adequate security to cover costs
incurred by or to be incurred in the proceedings by the Court, 187 the exception being where
the parties have already supplied deposits for witnesses’ and experts’ expenses. 188
20-106 Before any order for security is made, the Court must allow the parties an opportunity to
be heard. 189 The order must indicate that it may be appealed. 190
20-107 These rules mirror the practice in jurisdictions where a defendant may apply for security
as to costs. In Germany, in contrast, it is the court that demands security from the claimant
before a provisional measure is granted.
Worked Example
20-108 There follows a simple example (figure 20-1) of the way in which costs liability might be borne
by a claimant and defendant in a case where the value of the action is €11 million and the
recoverable cost ceiling is €800,000. In the example, a patentee files an application for a
provisional injunction, but the Court does not make such an award as it takes into consideration
the contents of the protective letter filed by the defendant. The patentee then commences an
infringement action and the defendant counterclaims for revocation of the patent. The
defendant succeeds on all issues at first instance and makes an application for a cost decision.
20-109 The Court fees for the provisional injunction application are calculated separately from the
main proceedings and are due to the defendant as the party prevailing in the main
proceedings. The defendant’s total costs are greater than the ceiling of €800,000 and therefore
the patentee is ordered to pay the defendant €800,000. For simplicity, the costs of the separate
costs proceedings have not been shown in figure 20-1, but in practice they should be included.
20-110 In the example, the patentee appeals the decision at first instance and succeeds on all issues.
The patentee then applies for its costs of the action at first instance and at appeal. Again, the
patentee’s costs at first instance exceed the ceiling of €800,000 and therefore its costs are
capped at this sum. The patentee’s costs of the appeal are under the ceiling and are, assuming
they are reasonable and proportionate, paid in full. The defendant must pay both these sums
and repay the €800,000 paid to it for its costs at first instance. The example does not go to
consider the costs of any determination of damages.
187
188
189
190
r.159 RoP.
rr.180(2) and 181(1) RoP.
r.158(2) RoP.
rr.158(3) and 220(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 415
