During the transitional period, owners of European Patents have the choice whether to assert their patents at the Unified Patent Court (UPC) or at national courts. Patentees can also decide for new patent applications whether to apply for a Unitary Effect, which triggers the competence of the UPC. While the UPC provides many advantages, for many patent owners this decision will be based on financial considerations. This was not lost on the creators of the UPC, which is why they consciously decided on rather low court fees and rather high cost reimbursements. Both make the UPC a very attractive venue for patent infringement actions.
UPC: Court fees and cost reimbursement
I. Court fees
The court fees for any infringement-related actions at the UPC consist of a fixed fee plus a value-based fee.
The following table published in the Rules on court fees and recoverable costs shows the fixed fees which constitute the minimum fees for each such action:
For actions with a value in dispute of up to €500,000, only the fixed fee applies. For actions with a value in dispute of more than €500,000, the following additional value-based fees are due:
For other procedures and actions at the UPC, which are not infringement-related, only the following fixed fees are due:
These numbers are rather low compared to actions at national courts, which makes actions at the UPC very attractive for patent owners.
What is noteworthy is that cost decisions are not automatically appealable. They require a request for leave for appeal, which already triggers a court fee of €1,500. If the appeal is allowed, an additional fee of €1,500 is due for the decision on the appeal. This likely intends to prevent parties from challenging cost decisions for minor amounts. On the other hand, this rather high court fee seems justified in view of the high potential compensation that can be claimed.
For small and medium-sized entities (SMEs) with less than 50 employees and a yearly revenue of less than €10 million, the court fees are further reduced to 60% of the amounts shown in the tables above.
In case of a withdrawal of the complaint or a settlement, the court fees are reduced depending on the timing of the termination as follows:
- Until the end of the written procedure - 60% reduction
- Until the end of the interim procedure - 40% reduction
- Until the end of the oral hearing - 20% reduction
II. Recoverable costs
Like most European national systems, the UPC provides cost reimbursement claims for the successful party of an action (Art. 69 UPCA). The unsuccessful party must, generally, bear the reasonable and proportional legal costs and expenses incurred by the successful party. Unlike in the German national system, the successful party can request reimbursement for their actual costs, not only for statutory fees. The cost reimbursement claims are only limited as follows:
In exceptional circumstances, the respective ceiling can be raised or lowered upon request of one of the parties.
III. Cost comparison with national actions in Germany
Below, we will present two scenarios to illustrate the differences of the court fees and reimbursable costs between actions at the UPC and at German courts.
- infringement action with a value in dispute of €1 million
- invalidation action with a value in dispute of €1.25 million
German national actions
In the German system, the infringement action and the invalidation action would run independently at different courts with individual values in dispute. The court fees and recoverable costs are determined for each action separately based on the respective value in dispute as shown in the following table.
At the UPC, the invalidity action would be raised as a counterclaim for revocation. The value in dispute for the counterclaim is set by the court and can be up to 150% of the value in dispute for the infringement action. For the recoverable costs, the values in dispute of the infringement action and the counterclaim for revocation are added. The following table shows the resulting court fees and recoverable costs.
- infringement action with a value in dispute of 5 million euros
- invalidity action with a value in dispute of 6.25 million euros
German national actions
The comparison shows that the court fees of actions at the UPC are significantly lower than at the German national courts. At the same time, the potential cost reimbursement claims in case of a successful action are significantly higher at the UPC than in the German national actions, again providing an incentive for a patent owner to choose the UPC as the venue.
IV. Value in dispute
The differences in court fees between the UPC and national courts might, to some extent, be reduced by the value-based fee. At the UPC, the value in dispute should reflect the objective interest of the plaintiff, preferably determined based on a license analogy, alternatively on the plaintiff’s lost profit or the infringer’s profit. Given the broader scope of the action at the UPC, these determination methods must cover a broader territory and it can therefore be expected that the value in dispute of an UPC action is higher than that of comparable national actions, where the plaintiff’s commercial interest is limited to the territory of the national action.
With respect to court fees and cost reimbursement, the founders of the UPC have created a system that is very attractive for plaintiffs. This is one of many reasons why the UPC is set up to become a key venue for patent litigation once it starts.
For more information about the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC page.