Bionome Technology Limited v John Russell Clearwater

When assessing costs, guideline hourly rates may be exceeded only where the paying party is given a clear and compelling justification. London Band 1 rates already assume very heavy commercial work. The specialist, complex or commercial nature of litigation alone does not justify higher rates unless case-specific features warrant them. The court must assess the costs fairly by balancing the nature and conduct of the litigation, the sums claimed, the applicable guideline rates and the evidence available. A party’s failure to agree outstanding costs should not be given weight where the court has no explanation for that failure.

Following dismissal of an appeal from the Comptroller-General of Patents, Trade Marks and Designs, the parties agreed that the respondent should receive the appellant’s costs on the standard basis. They were unable to agree the amount, and the court proceeded with a paper-based summary assessment.

The respondent sought substantial costs for a one-day appeal, including rates approximately 25% above the London Band 1 guideline rates. The central issues were whether the respondent’s costs were reasonably incurred, whether the higher hourly rates were justified, and the appropriate total award after taking account of sums already paid into court.

1. The court considered it appropriate to determine the outstanding costs issue on paper. The Respondent’s Notice was reasonably brought because further evidence had been admitted and the issue it raised might have influenced the outcome if it had required determination.
2. The respondent’s counsel fees were reasonable in the circumstances, given the complexity and specialist nature of the dispute.
3. Following the guidance in Lappet Manufacturing Company v London Textile Industries [2022] EWHC 2158 (Ch) and Samsung v LG Display [2022] EWCA Civ 466, rates above the London Band 1 guideline rates required a clear and compelling justification. Those rates already assumed very heavy commercial work. It was insufficient to rely generally on the commercial or specialist nature of the case, including patent entitlement and trust issues.
4. No clear and compelling justification had been shown for rates significantly above the London Band 1 rates. The court also declined to place weight on the parties’ inability to resolve the remaining disputes, since it did not know why negotiations had failed.
5. Balancing the specialist nature of the dispute, the significant costs sought for a one-day appeal, the absence of comparative evidence from the appellant and the sums already paid out of court, the fair assessment was £202,000. After crediting £102,000 already paid, the appellant was ordered to pay £100,000 within 21 days, with judgment-rate interest from 14 February 2025.

• High Court (Patents Court): the appeal from the Comptroller-General of Patents, Trade Marks and Designs had previously been dismissed. The present judgment assessed the respondent’s consequential costs.
• Comptroller-General of Patents, Trade Marks and Designs: the underlying decision was appealed to the High Court; the citation of the Comptroller’s decision is not stated in the judgment.