Dr Vanessa Hill v Touchlight Genetics Limited & Ors

On withdrawal of an amendment application after a contested hearing, the successful respondents will ordinarily recover their costs in full under CPR r.44.2. A reduction requires clear findings identifying a proper reason to depart from that starting position.

Indemnity costs require conduct which takes the case out of the norm and is unreasonable to a high degree. A weak, optimistic or unsuccessful claim, or a party’s subsequent concessions, does not by itself meet that threshold. The court must avoid hindsight and should not discourage the prompt abandonment of misguided applications where withdrawal serves the overriding objective.

The claimant brought a patent entitlement action concerning inventions relating to synthetic DNA vectors. She applied to amend her pleadings shortly before an 11-day trial to introduce new causes of action and claims concerning 49 granted overseas patents.

The application was contested over two days. Before judgment was handed down, the claimant withdrew it, accepting that the proposed claims could not be accommodated within the existing trial timetable. The parties disputed whether the defendants should receive their costs in full, whether those costs should be payable on the indemnity basis, and the amount of any payment on account.

1. Costs of the amendment application. The defendants were the successful parties. The claimant had pursued the application through a two-day hearing and then withdrawn it, leaving the defendants to bear the expense of responding, preparing evidence and attending the hearing. The general rule under CPR r.44.2(2) therefore applied, and the defendants were entitled to their costs in full.
2. The claimant had not shown that the defendants’ late service of a lengthy skeleton argument caused procedural unfairness. She declined an adjournment, received additional time for submissions, addressed the authorities relied on, had specialist junior counsel available, and did not pursue the possibility of further written submissions. No arbitrary reduction in costs was justified.
3. On the amendment application, the burden lay on the claimant to show that the proposed claims were more than merely arguable and carried some degree of conviction, that the pleading was coherent and properly particularised, and that evidence established a factual basis satisfying the merits test: Kawasaki Kisen Kaisha v James Kemball Ltd [2021] EWCA Civ 33 at [18]. The claimant’s attempt to use three GOPs as specimens could not overcome the procedural consequences of adding 49 patents or amounting in substance to a split trial.
4. Indemnity costs. The claimant’s conduct was misguided in failing to engage adequately with the procedural obstacles, but it was not unreasonable to a high degree or sufficiently outside the norm for complex commercial proceedings. The court made no finding that the withdrawn claims were hopeless or without merit. The claim’s withdrawal, concessions made at the hearing, procedural irregularities and erroneous complaint about the defendants’ skeleton did not justify indemnity costs.
5. The defendants were therefore awarded their full costs on the standard basis, subject to detailed assessment if not agreed. Under CPR r.44.2(8), a payment on account of 65% of the defendants’ costs was ordered, reflecting the likely recovery with an appropriate margin for assessment.
6. As a postscript, the court indicated that the timing provisions in paragraph 14.7(a) of the Patents Court Guide should be revisited for heavy applications. Parties should co-operate to allow reasonable time to read and digest skeleton arguments where no prior directions have been made.