Paying the Price in Undefended IPO Actions

Until recently, parties who won an undefended opposition, revocation or invalidity action before the UK-IPO were entitled to an award of costs.   

As part of its campaign to encourage parties to settle disputes, however, the IPO recently changed its cost rules so that parties who do not give prior notice of an intended action will lose their entitlement to costs if the rights are withdrawn or surrendered.

Where possible, sending prior notice is often not only good practice for the protection of costs awards, but can also save parties money. Sending prior notice may secure a withdrawal or surrender that enables a challenger to avoid the cost of preparing the actions at all.  

The IPO recognises that it may not always be possible to send reasonable prior notice, particularly in oppositions where the deadline is inextensible or in revocation actions where it is commercially vital to get the action on file. In such cases, the IPO has a discretion to consider granting costs despite the absence of notice.