Bananas Split? – Unified Patents Court Costs Provisions for Revocation

The Unified Patents Court has its own newly-drafted procedural rules, different from those in national courts.

The court is now producing a steady output of decisions, and parties are dealing with the costs consequences. This is not straightforward, especially where costs are split between the parties. This can happen for example when a patent is maintained in amended form.

We provide a guide below to recovering costs in a revocation action.

Where is the law set out?

– Unified Patent Court Agreement Article 69

– UPC rules Chapter 5, rules 151-157

– Scale of ceilings for recoverable costs

What are the principles?

– The general rule is that the unsuccessful party bears the successful party’s costs.

– In case of partial success, the court may apportion costs to reflect this.

– Recoverable costs include reasonable and proportionate legal costs and other expenses incurred by the successful party.

– There is a ceiling on recoverable costs for representation based on the value of the dispute. In cases of partial success, the ceiling value is allocated according to the apportionment.

– The ceiling may be adjusted (up or down) in the interest of fair access to justice.

– Court fees and other expenses are not subject to the ceiling.

– A different decision may be made on costs for equitable reasons.

When and how is a decision made on the allocation of costs in principle?

A decision on the allocation of costs in principle is included in the substantive decision (rule 118.5 UPC).

This is likely to be a straightforward “winner takes all” if the patent is maintained unamended, or is revoked. However, where the patent is maintained in amended form, the rules for “partial success” apply.

A costs split by percentage will be indicated. For example, if the patent is amended but the patent proprietor is considered to be the overall winner, the decision might indicate that costs are to be borne 75% by the applicant for revocation, and 25% by the proprietor.
This percentage costs split is a different approach from that taken by the courts in England and Wales. Here, partial success is typically reflected by a discounted percentage on the overall winner’s recoverable costs, or alternatively by an issue-based costs order.

What does a cost split mean in practice?

In the example above, the 75%/25% costs award would mean as a starting point that:

– the (overall) winning party recovers 75% of its representation costs up to a value of 75% of the ceiling from the (overall) losing party.

– the losing party recovers 25% of its representation costs up to a value of 25% of the ceiling from the winning party.

– the overall winning party pays 25% of the court fees, and the overall losing party pays 75% of the court fees.

This is subject to adjustment under the principles set out above, and also does not include other costs such as experts.

It is important to note that this can mean that there is a net payment of costs from the winning party to the losing party, if the losing party has significantly higher costs.

How does a party recover its costs?

The winning party (and the losing party also, in the event of split costs) must bring separate proceedings for a cost decision, providing an indication of the costs requested. The deadline is one month from the date of the substantive decision.

What guidance does the case law give?

The case law guidance is limited at present.

The UPC is a new court, so there have been relatively few decisions on costs. It seems that in many cases costs are settled between the parties before the stage of reaching a published costs decision: UPC case papers other than decisions are not routinely available to the public.

In Roche Diabetes Care GmbH v Tandem Diabetes Care, Inc. (Paris Central Division) the court confirmed that a pending appeal against the decision on the merits is not sufficient reason to stay costs proceedings.

In MSG Maschinenbau GmbH v EJP Maschinen GmbH (Munich Local Division) the court confirmed that costs incurred in the costs proceedings themselves are generally reimbursable.

In Arvato Netherlands B.V., Digital River Ireland Ltd (Lisbon Local Division) it was confirmed that travel expenses for the representatives and parties (flights, accommodation and transport to the airport) were recoverable.

It is not clear yet whether different divisions of the UPC take different approaches, for example by reflecting the procedures of national courts.

What next?

Looking ahead, further case law is expected to clarify how costs are assessed. However, concerns about the complexity of the system remain. Willem Hoyng, who was involved in drafting the UPC rules, commented informally:

As a member of the drafting committee of the Rules of Procedure, I have in vain protested against this complicated cost system. The only concession which was made was that costs proceedings are not a strict necessity and that costs can be decided together with the decision. I hope that in the future representatives agree on costs and/or that there will be a more efficient system

UPC Unfiltered, by Willem Hoyng – UPC decisions week 9, 2025 – Hoyng Rokh Monegier

Whom can I contact for advice?

If you have questions about this issue or other UPC matters, please contact Anna Hatt, Matt Dixon or Catherine Jewell at Beck Greener LLP. We will be happy to help!