In the past we reported the ruling concerning Unipharm’s Opposition to IL 195087 to Novartis. On winning the Opposition, Unipharm filed a request for costs.
OVERVIEW OF OPPOSITION
The patent published for opposition purposes on 31 October 2012, and Unipharm submitted their Opposition on 3 January 2013, and a statement of case on 26 February 2013. The Applicant amended the application on 26 June 2013, and as no opposition to the amendments were submitted by Unipharm or by the public, the amendments were allowed. There was an intermediate attempt to have the case thrown out that Novartis lost, where costs of 5000 Shekels were awarded to Unipharm on 24 February 2014.
On 24 February 2017, an oral proceeding took place. The Opposer submitted their summation on 24 August 2016, and the Applicant submitted their summation on 30 November 2016; response to which was filed on 20 December 2016.
In a ruling of 21 February 2017, the Opposition was accepted and the application was rejected.
Following Unipharm winning the Opposition proceeding, they submitted a request for costs, asking for 311,217 Shekels as follows:
- Refund of 2000 Shekels filing fee for filing opposition
- 5000 Shekels previously ruled against Unipharm for unsuccessful interim proceeding consisting of trying to get the Opposition thrown out
- 5000 Shekels awarded against Opposer in decision of 28 July 2015 regarding getting some of the evidence struck from the record
- 34,392 Shekels for interim proceedings
- 72,549 Shekels for preparing for cross-examination and attending hearing
- 108,980 Shekels for summation
- 48,296 Shekels for analyzing and responding to Applicant’s summation
- 35,000 Shekels for preparing the request for costs
The request for costs was supported by an Affidavit from CEO Mr Zebulun Tomer.
In the early stages of the Opposition, Unipharm was not represented. Mr Zebulun Tomer filed the Opposition himself and only after filing a statement of case, was Adv. Adi Levit employed. Mr Tomer additionally requested costs for his own time, but did not elaborate.
The Applicant alleged that the costs requested were not justified and were exaggerated. Applicant also alleged that a lot of the costs, such as costs incurred in trying to get evidence struck from the record, were not refundable.
The Commissioner’s authority to rule costs is based on Section 162b of the Israel Law of Patents 1967:
The Commissioner has the authority to rule reasonable costs and to decide which of the parties will pay the costs and how they will be paid.
As ruled by the Supreme Court in Bagatz 9891/05 Tnuva vs. The Authority for Imports pd. 60(1) 600, 615 30 June 2005, the costs award considers circumstances, the amount of work performed, particularly in submissions and preparing evidence, complexity, stage reached, equitable behavior of the parties, and so on.
Costs are not intended to be refund of all expenses laid out, so that, for the winning party, it would be as if they never laid out money. Sometimes a party does NOT receive full costs: See IL 13433 Smithkline Beecham Corporation (SKB) vs. Teva Pharmaceuticals ltd., 30 May 2005.
Furthermore, to the extent that costs appear extraordinary, the amount of details required to substantiate the claim for costs that is required is more. See Opposition to IL 153109 Unipharm vs. Mercke Sharp & Dohme Corp., 29 March 2011.
The Commissioner does not consider that Unipharm’s submission was sufficiently detailed with regards to attorney fees incurred. Submitting invoices that do not detail the work done is insufficient. There is no detail regarding the attorney’s hourly rate and the number of hours worked. The Commissioner also does not consider the costs requested were reasonable when considering the specific case.
However, the winning party is entitled to recoup costs. Since the applied for costs were insufficiently detailed, the Commissioner estimated costs, basing himself on the Tnuva and other rulings.
After doing his calculations and estimations, etc., the Commissioner ruled 200,000 Shekels + VAT as appropriate costs for the legal work undertaken.
Dr Tomer’s Costs
Citing the appropriate precedents, including Opposition IL 173788 Unipharm vs. Lundbeck, IL 166621 Unipharm vs. Neurocrine Biosciences Inc., etc., the Commissioner ruled that Unipharm’s CEO’s time could not be charged to the Applicant.
Refunding costs of Opposer for Application to have Evidence Struck from Record
It has been established that one does not charge a party for costs that opposing party incurred in interim procedures that were rejected – See Opposition to IL 141762 Unipharm vs. Novartis, 21 June 2013.
As to the previous issued ruling of 25 April 2014 that Novartis should pay 5000 Shekels costs to Unipharm for failed attempt to have opposition thrown out, the Commissioner considered this sum as outstanding, but that there was no need to readdress the issues.
The Commissioner thus ruled that Novartis should pay 2000 Shekels legal fees and 200,000 Shekels + VAT costs to Unipharm.
Opposition by Unipharm against ILL 195087 to Novartis, Ruling re Costs by Asa Kling 7 May 2017