1. Key takeaways
Prevailing claimant to exceptionally bear costs
An exception to the general rule of Art. 69 (1) UPCA, which requires the unsuccessful party to bear the reasonable legal costs and expenses of the successful party, applies if a claimant files a revocation action without the patent holder prompting it and the holder surrenders the patent immediately at the beginning of the proceedings.
For this rule to apply, the patent holder must surrender the patent and request its revocation under Art. 105a EPC within the time limit for filing a defense to revocation, including paying the required fee.
Patent holders did not give rise to cause for action
The patent holders were not convinced of the lack of validity based on the Claimant's pre-court assertions and prior art but did engage in discussion. It was not unlikely that a new piece of prior art, presented only in the revocation statement and unrelated to earlier submissions, would be examined and potentially lead to an acknowledgement of the lack of validity. Therefore, at the time the action was filed, the patent holders' conduct did not give the Claimant reason to believe they couldn't secure their rights without filing a revocation statement.
It was reasonable for the claimant to contact the patent holders before filing and present the new prior art. The risk of an opt-out didn't prevent this, and there was no indication the patent holders would opt out to block the revocation action.
Immediate declaration to surrender the patent
A declaration of surrender is made immediately at the beginning of the proceedings if it falls within the defense filing period. Generally, a request for patent revocation under Art. 105a EPC must also be filed with the European Patent Office within the defense filing period, along with the required fee. It remains to be left open whether declarations of surrender to national patent offices are sufficient. The surrender must apply to both the past and future (ex tunc).
2. Division
Court of Appeal
3. UPC number
UPC_CoA_290/2024
4. Type of proceedings
allocation of costs
5. Parties
Appellant (Claimant in the main proceedings): Stäubli Tec-Systems GmbH, Germany
Respondents (Defendants in the main proceedings): redacted
6. Patent(s)
EP 3 170 639
7. Body of legislation / Rules
Rule 360 RoP, Art. 69 UPCA
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
