In invalidity proceedings, just as in infringement proceedings, the losing party pays the court fees and reimburses the winning party for its statutory attorney fees and its disbursements, in particular travel expenses and translation costs. The reimbursement of the fees of the patent attorney and the attorney-at-law to the winning party follows a statutory fee regulation. This statute defines the attorney fees according to the so called “litigation value” fixed by the court. The litigation value also determines the court fees.
The litigation value is a measure of the general value of the patent. The Federal Patent Court and the Federal Court of Justice are independent from the infringement courts in fixing the litigation value. However, the litigation value in patent invalidity proceedings is regularly set to 125 % of the cumulated litigation values in patent infringement proceedings based on the same patent.
The cost risk of a party includes its own costs, the potentially reimbursable costs of the adversary, and the court fees. For typical litigation values between EUR 500,000 and EUR 5,000,000,
the reimbursable costs and the court fees of patent invalidity proceedings in the first instance ranges between EUR 40,000 and EUR 240,000. For (rarely fixed) higher litigation values the cost risk increases linearly, up to a cap of about EUR 1,300,000. The cost risk is about 30 % higher for the appeal instance than for the first instance.
Please note that our firm, as most other firms in the IP field, charges on an hourly basis. Depending on the actual work to be done, this can lead to the client’s own attorney fees being higher than the statutory attorney fees. Thus, since only the statutory fees are reimbursed in case of success, a certain amount of non-reimbursable costs may remain with the client, even if the case is won.
Non-EU plaintiffs may have to post a bond for the potential cost reimbursement to the defendant, if the defendant so requests. Therefore, non-EU plaintiffs may consider utilizing an EU affiliate to act as the party of the invalidity proceedings, or prepare for the posting of the bond. Our firm, in cooperation with our house bank, offers plaintiffs support in resolving this issue without resulting in a delay of the proceedings.