OPES CORPORATION OY v REPUBLIC TECHNOLOGIES (UK) LIMITED

A party which has provisionally agreed search terms should not unilaterally limit the agreed searches because its initial results are extensive. It should seek the court’s determination if necessary and should first propose practical alternatives, such as exclusionary terms or an initial review by junior staff. A unilateral departure from the agreed approach may justify an immediate costs order against that party rather than costs in the case.

In this interlocutory costs judgment in patent proceedings, the defendant had provisionally agreed search terms with the claimant. After its initial searches produced a large number of documents, it elected to perform only searches of its own choosing. Although it told the claimant that it would apply to the court, it did not do so.

The issue was whether costs should be costs in the case or awarded immediately to the claimant.

1. The claimant was awarded its costs. The usual order of costs in the case was displaced exceptionally.

2. The defendant had proceeded incorrectly. Having provisionally agreed the search terms, it was wrong to make a unilateral decision to conduct only those searches it selected after concluding that the initial searches produced too many documents.

3. The defendant had indicated that it would apply to the court but did not make that application. The guidance of Marcus Smith J in Agents' Mutual v Gascoigne Halman Ltd [2019] EWHC 3104 (Ch), at [15], was apposite. The defendant should not simply have proceeded unilaterally with its preferred proposal.

4. Practical alternatives were readily available. As the defendant held the documents, it could have proposed exclusionary search terms. It could also have proposed at least a first-pass review by a substantially more junior member of staff. Its failure to take those steps justified an immediate costs order in the claimant’s favour.

not stated in the judgment.