Litigation fee to be introduced for contested IPO proceedings

"Structure of patent fees reviewed in Intellectual Property Office consultation announced today", a press release from the United Kingdom's Intellectual Property Office today, reveals various measures that form part of the IPO's consultation process which is intended

"to keep fees at a level which ensures that innovative businesses and individuals in the UK (and beyond) can access and enjoy the benefits of the IP system".

One such measure is the introduction of a litigation fee for contested patent proceedings at the Intellectual Property Office. The consultation process is available both as a PDF document and in Word. Proposal 5 relates to the litigation fee and goes as follows:

"Proposal 5: Increases in Patent litigation fees

41. The fee we charge for launching inter partes patent proceedings before the comptroller is currently £50. There are two reasons why we believe this fee to be disproportionately low.

42. First, these proceedings involve very substantial work for the IPO, including (in most cases) holding one or more hearings before a senior Hearing Officer, who then writes and issues a decision. Such proceedings tend to be more resource-intensive than other statutory services which currently have higher fees (such as patent search or examination).

43. Second, it does not seem consistent if the fee for such work, which results in a binding determination of the issues in dispute, is set to be significantly lower than the £200 fee payable to obtain a non-binding opinion on patent validity or infringement.

44. Mindful of these points, and of the Gowers recommendation that we must better match our fees to our costs, we are therefore proposing a substantial new fee relating to patent proceedings before the comptroller of £350. This reflects the significant resources that the IPO devotes to its patents litigation function. However, it would also maintain fees for litigation at a significantly lower level than those payable when taking forward litigation at the Patents Court – thus continuing to ensure that the IPO is a demonstrably lower-cost forum than the courts for resolution of certain patent disputes.

45. In most cases, a fee at this level would not enable us to cover our costs, but it is recognised that to raise the fee to a level where costs to the IPO were fully recovered would be inconsistent with the approach taken by the Patents Court, and would also risk denying certain users of the patents system access to the IPO as a forum for dispute resolution.

46. We propose to retain the current £50 fee for launching proceedings, but to introduce the further £350 fee at a later stage. This would be payable by the claimant after the defendant has filed a counter-statement, and so at the point where it has become clear that proceedings are contested. Failure to pay the fee would mean the proceedings were taken to be withdrawn. This would mean that uncontested actions would only attract a fee payable by the claimant of £50, recognising the reduced IPO costs. It would also ensure that uncontested inventorship actions (the most common way of addressing wrongly-mentioned inventors) remain accessible, as would uncontested revocation actions, which it is in the public interest to encourage as an affordable way of removing invalid patents from the Register.

Q5: Do you think the proposed increase in litigation fees would affect the way that businesses and individuals maintain, challenge or defend patent rights?".

Comments and responses can be emailed to the IPO and should arrive by 12 October 2009.