UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
fees are not dependent on how many patents or defendants there are. 8.3 Responsibility for Paying the Costs of Litigation Whilst the claimant is required to pay the court and trial fees, each party is responsible for pay- ing its own attorney fees and expenses during the proceedings until there is a final decision. Generally, costs follow the event, and the losing party is required to reimburse the prevailing party for the litigation costs. These costs include court fees, expenses and attorney fees. The court has a general discretion under Part 44 of the Civil Procedure Rules as to the amount of costs to be ordered, the manner in which they are paid and when they are to be paid. As stated in 6.1 Rem- edies for the Patentee , the court will take into account any more discrete issues on which the parties have been successful or unsuccessful, settlement offers from either party, the conduct of the parties throughout the litigation, and the reasonableness of the costs of either party. The successful party may recover proportionate and reasonable costs (which equate to around 60%–70% of their costs) if they win on all issues raised in the litigation or on an “indemnity basis” if the losing party has conducted itself unrea- sonably (which equates to around 70%-80% of their costs). In any award of indemnity costs, the court will take into account factors such as any discrete issues that the ultimate winner may have lost on, as well as any settlement offers from either party. The court will also consider either party’s conduct throughout the litigation and can address unreasonable or improper con- duct in its award of costs. On 1 January 2024, a GBP500,000 cost cap on liability and GBP250,000 on quantum was
introduced to patent cases dealt with under the shorter trials scheme procedure of the High Court, which is a streamlined procedure for pat- ent litigation intended for smaller-scale patent disputes. There is a cap of GBP60,000 on recoverable costs for a final determination on liability and GBP30,000 on quantum in the IPEC, a specialist list of the Chancery Division of the High Court. It was established to deal with claims of less value, which are shorter and less complex. 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property As mentioned in 5.3 Settling the Case , the Courts of England and Wales encourage and may require parties to disputes of any kind, including intellectual property disputes, to actively engage in ADR procedures. This is a requirement in the Civil Procedure Rules, and parties may be expected to raise the option of ADR even before the commencement of tradi- tional legal proceedings in the courts. Although the most common option to resolve large-scale patent disputes is through the courts, certain forms of ADR are still utilised. The most common forms of ADR used in patent disputes include arbitration and mediation. The need to arbitrate disputes is often written into patent licences, whereby related disputes should be settled through the procedure of an agreed and accredited arbitration forum.
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