UPC rule changes accompany fees hike and may impact patent strategies

Mark Marfé and Ian Turner of Pinsent Masons were commenting after the updated rules came into force on 1 January 2026 alongside a new court fees structure, which includes an inflation-based rise in court fees but with reduced fees for SMEs.

Marfé said: “The UPC’s fixed court fees, which applied previously for patent infringement actions and counterclaims for infringement, actions for declarations of non-infringement and applications to determine damages, and actions for compensation for licences of right, have been increased by almost 33%. This is significant for court users, but the court made clear that this reflected the fact that the original fee proposals, which were in effect until this increase, had not been updated in line with inflation since they were prepared in 2016.”

“Of particular note for applicants is the fact that these fixed fees, in addition to the court’s value-based fee, will now also apply where patent owners seek provisional measures, such as preliminary injunctions, applications for preservation of evidence and orders for inspection of premises, as well as orders for freezing of assets, where the value of the action exceeds €500,000. This is an important change, reflecting perhaps the broad scope, particularly following rulings on the court’s long-arm jurisdiction, and the increasing use, of such measures before the UPC,” he said.

“However, the value-based fee will be waived for certain applications – for preservation of evidence; inspections; or freezing of assets – if an infringement action is pending at the UPC between the same parties and is based on the same patent,” Marfé added.

A value-based fee already applied to applications made to the UPC Court of Appeal – that fee has now been increased 10%.

Marfé said the changes could persuade more patent owners to launch UPC infringement actions instead of pursuing provisional measures.

“One of the advantages of the UPC is that it offers patent owners a chance to enforce against infringement on a cross-border basis via a single infringement action, as opposed to having to do so on a country-by-country basis,” said Marfé. “However, where those businesses suspect infringement but do not lodge an infringement action before the UPC, there is always a risk that they will lose control of where their claims of infringement are heard, if the suspected infringers raise their own action before another forum challenging the validity of the relevant patents.”

Turner agreed: “For some of those businesses, the introduction of a new value-based cost could now tip the balance towards commencing a UPC infringement action earlier than they might otherwise have done, rather than raising applications for provisional measures, and take advantage of tools made available in the UPC rules of procedure – such as the ability to obtain court orders requiring the alleged infringers to produce evidence to support their claims.”

Marfé said that the changes go wider than just the levels of the fees payable.

“Another change impacts the reimbursement of court fees: parties that withdraw an action before the closure of the written procedure can, from 1 January 2026, expect to obtain half those fees back – down from 60% previously,” Marfé said. “This is a key change of which businesses should be aware as, previously, refunds were also available when a case was settled, and disposed of other than by withdrawal, and if withdrawal occurred before the closure of the interim – at 40% – or oral – at 20% – procedure. Interestingly, however, use of the UPC’s new Patent Mediation and Arbitration Centre (PMAC) to settle proceedings, which is due to become operational later this year, will lead to a 65% reimbursement in the event of that use of PMAC results in a settlement or arbitral award being issued.”

Turner added: “The stricter rules on reimbursement and the court’s strict approach to amendments should serve to emphasise to litigants that it is important they prepare their case fully before filing. Overall, the refund provision has been simplified, which is helpful, but it is significantly less generous to users of the court. The message is clear – assess the written case and come to a compromise to allow for withdrawal before the written procedure closes or opt for the PMAC.”

Marfé said the higher reimbursement levels associated with use of the UPC’s PMAC is an interesting step, ahead of the centre’s opening: “The opening of the PMAC later in 2026 will be a pivotal moment for the UPC, promising an alternative, confidential, flexible, and potentially faster forum for resolving complex, multi-jurisdictional patent disputes.  The higher fee reimbursement levels where PMAC is used, resulting in settlement, appear to be aimed at encouraging litigants to engage with this forum. While we expect FRAND disputes and damages determinations to be considered by the PMAC, it will be interesting to see whether other litigants and sectors will embrace arbitration as a means to resolving their dispute.” 

The new rules and fees structure were considered in a recent case that came before the UPC Court of Appeal in a dispute between US-based Juul Labs International and NJOY Netherlands. The Court of Appeal confirmed in that case that the new rules providing for reimbursement of 50% of fees where there is withdrawal of an action apply only to those actions and applications filed after 31 December 2025. In the Juul v NJOY case, the application was filed before that date, so the earlier rules – providing for 60% reimbursement – applied. 

The UPC intends to review its fees again in 2028 – this also is reflected in the updated rules of procedure, which provide for the fees to be reviewed every two years.