Bionome Technology Limited v John Russell Clearwater

I have now been asked to perform a summary assessment of the costs following judgment in which I dismissed the appeal. The parties had already agreed that the Respondent should pay the Appellant’s costs on the standard basis. The parties requested and obtained a stay to allow negotiation following the handing down of that judgment. Unfortunately, they were not able to reach further accommodation.

Since the handing down of judgment the Appellant has changed solicitors, and the latest solicitors have recently come off the record. The present application for costs has been served directly on the Appellant but no response has been received. Prior to this I had invited the parties to agree to deal with the issue of costs on paper and I am satisfied that this remains an appropriate course. My decision is based on an application dated 4 July 2025 supported by the Third Witness Statement of Kevin Cordina of Simmons & Simmons, on behalf of the Respondent.

The original costs schedule provided to me and dated 13.02.2025 totalled some £353,417.37 (albeit that this included an estimate of the costs of the future consequential hearing, which has not taken place). Of this, £290,195.97 was sought in Mr Cordina’s witness statement. These totals included VAT. I queried this and was informed that VAT had been included in error as a result of “a miscommunication with the costs draftsman”. I accept that mistakes do happen, and also that, as an individual, it may have been that Mr Clearwater could not recover his VAT. But I consider it unfortunate that none of the experienced team of litigators advising Mr Clearwater had picked up this potentially significant error in the course of finalising Mr Cordina’s witness statement and the making of the application.

The revised costs schedule totals £241,945.64. This is still a very significant amount of money for a 1 day appeal from the Patent Office.

In his witness statement Mr Cordina addressed a number of issues, as follows.

First, he noted that the costs include the costs of the Respondent’s Notice which related to the alleged grant of an exclusive licence by the Appellant which it was said was contrary to the terms of the Collaboration Agreement. In the end I did not have to resolve these issues. However, I allowed the Respondent’s application to adduce further evidence and I commented that, if it had been necessary to deal with it, the existence of the exclusive licence may well have had an influence on the outcome of the Respondent’s Notice.

For these reasons I consider it was reasonable for the Respondent to bring the Respondent’s Notice and I will make no deduction for this.

Next, Mr Cordina argued that the appeal was complex and heavy, and pointed out that the Appellant had instructed “prominent IP King’s Counsel and a senior-junior commercial barrister of 14 years’ call”. The Respondent was content to rely on a senior junior. I consider that its counsel fees were reasonable in the circumstances.

Mr Cordina went on to explain that the Respondent had made efforts to ensure that its costs were proportionate, including by using junior solicitors to ensure that work was undertaken at an appropriate grade. However, he acknowledged that the rates claimed in the Statement of Costs exceed the current guideline hourly rates (London, Band 1). They do so, by roughly 25% in each category. He sought to justify this by reference to the specialist nature of the dispute, including issues of patent entitlement and trusts law. He is right that the case involved these issues, and in support he referred me to the decision of Adam Johnson J in another intellectual property case, Lappet Manufacturing Company v London Textile Industries [2022] EWHC 2158 (Ch) at [11]-[12].

However, I note that in that case the Judge was being asked to depart from the Nottingham Guideline rates based on the specialist nature of the dispute, not the London Band 1 rates. Further as Adam Johnson J noted in that case at [11], Males LJ has recently explained in Samsung v. LG Display [2022] EWCA Civ 466 as follows:

Bearing this guidance in mind, I do not consider that the Respondent in the present case has made a clear and compelling justification for claiming rates significantly in excess of the London Band 1 rates.

Mr Cordina submitted that in circumstances where the Respondent had been put to the cost and time commitment of contesting an unmeritorious appeal, and where the Appellant had failed to engage with the Court’s directions following the December Judgment to resolve the remaining areas of dispute (including the costs that are the subject of this application), the Respondent should be entitled to recover its full costs of the appeal as set out in the Statement of Costs.

I do not know why the parties were unable to resolve the outstanding disputes between themselves and I decline to place any weight on that point. I acknowledge the specialist nature of the dispute, but as noted above, the guideline rates are intended to encompass the sorts of complex cases arising daily in the Business and Property Courts. Further, I note that the overall sums sought by the Respondent are significant for a 1 day appeal. Nevertheless, I do not have the benefit of seeing the Appellant’s costs by way of comparison.

Balancing all of these factors, I therefore intend to apply a discount to the overall sum sought by the Respondent. Further, as recorded in the order made following the substantive judgment, the Respondent has already received the sum of £102,000 paid out of Court.

In all the circumstances I consider that a fair assessment is for the Respondent to be awarded £202,000 in total by way of costs. That means that the Appellant should pay the Respondent the outstanding sum of £100,000 within 21 days of the date of this decision. The judgment rate of interest on the outstanding sum shall apply from 14 February 2025, which is the date of the Consent Order awarding the Respondent its costs.