New Costs Rules for IPEC

Rolls Building
Author Boggling2019 Licence CC BY-SA 4.0 Source Wikimedia Commins

Jane Lambert

On 1 Oct 2010, the Patents County Court was overhauled by a new set of rules and practice directions which I discussed in New Patents County Court Rules on 31 Oct 2010.  One of the main planks of the new rules was that the costs that could be recovered in an action before that court were to be limited to £50,000 for the trial and £25,000 for an account of profits and an inquiry.  The costs for steps in the litigation were also capped by a scale that I mentioned in my article.

The Patents County Court was abolished by the Courts and Crime Act 2013 and replaced by the Intellectual Property Enterprise Court ("IPEC") (see Jane Lambert What does the Intellectual Property Enterprise Court mean for Litigants in the North West? 12 Oct 2013 IP Northwest). The new court inherited the rules and practices of the Patents County Court including the overall and scale costs caps which I set out in my 2010 article.

All that has changed with The Civil Procedure (Amendment No. 2) Rules 2022 (SI 2022 No 783 (Leg 8). The costs rules that had applied since 1 Oct 2010 were governed by Section 1V of Part 45 of the Civil Procedure Rules.  Reg 17 (1) (b) omits the entries for Section 1V in the table of contents and reg 17 (7) omits the Section from CPR Part 45.   Reg 18 (2) inserts a new Section VII into CPR Part 46:

“VII SCALE COSTS FOR CLAIMS IN THE INTELLECTUAL PROPERTY ENTERPRISE COURT

Scope and interpretation
46.20.—(1) Subject to paragraph (2), this Section applies to proceedings in the Intellectual Property Enterprise Court.
(2) This Section does not apply where—
(a) the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process; or
(b) the claim concerns the infringement or revocation of a patent or registered design or registered trade mark the validity of which has been certified by a court or by the Comptroller-General of Patents, Designs and Trade Marks in earlier proceedings.
(3) The court will make a summary assessment of the costs of the party in whose favour any order for costs is made. Rules 44.2(8), 44.7(b) and Part 47 do not apply to this Section.
(4) ‘Scale costs’ means the costs set out in Table A and Table B of the Practice Direction supplementing this Part.

Amount of scale costs
46.21.—(1) Subject to rule 46.22, the court will not order a party to pay total costs of more than—
(a) £60,000 on the final determination of a claim in relation to liability; and
(b) £30,000 on an inquiry as to damages or account of profits.
(2) The amounts in paragraph (1) apply after the court has applied the provision on set off in accordance with rule 44.12(a).
(3) The maximum amount of scale costs that the court will award for each stage of the claim is set out in Practice Direction 46.
(4) The amount of the scale costs awarded by the court in accordance with paragraph (3) will depend on the nature and complexity of the claim.
(5) Subject to assessment where appropriate, the following may be recovered in addition to the amount of the scale costs set out in Practice Direction 46 – Costs - Special Cases—
(a) court fees;
(b) costs relating to the enforcement of any court order; and
(c) wasted costs.
(6) Where appropriate, VAT may be recovered in addition to the amount of the scale costs and any reference in this Section to scale costs is a reference to those costs net of any such VAT.

Summary assessment of the costs of an application where a party has behaved unreasonably
46.22. Costs awarded to a party under rule 63.26(2) are in addition to the total costs that may be awarded to that party under rule 46.21."

Para 11.1 of the Part 46 Practice Directions inserts a new Table A  for each stage of a claim up to the  determination of liability;

Table A

Stage of a claim	Maximum amount of costs
Particulars of claim	£9,000
Defence and counterclaim	£8,000
Reply and defence to counterclaim	£7,000
Reply to defence to counterclaim	£3,500
Attendance at a case management conference	£6,000
Making or responding to an application	£4,000
Providing or inspecting disclosure or product/process description	£6,000
Performing or inspecting experiments	£3,000
Preparing witness statements	£8,000
Preparing experts' report	£9,000
Preparing for and attending trial and judgment	£20,000
Preparing for determination on the papers	£5,500

There is also a new Table B for scale costs for each stage of an inquiry as to damages or an account of profits.

Table B

Stage of a claim	Maximum amount of costs
Points of claim	£4,000
Points of defence	£4,000
Attendance at a case management conference	£5,000
Making or responding to an application	£3,000
Providing or inspecting disclosure	£3,000
Preparing witness statements	£6,000
Preparing experts' report	£7,000
Preparing for and attending trial and judgment	£10,000
Preparing for determination on the papers	£3,000”.

The new costs provisions are mentioned in para 4.1 of the updated Intellectual Property Enterprise Court Guide which was published on 12 Oct 2022.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page at other times.