Key takeaways
A revocation action becomes devoid of purpose once the patent has been finally revoked in EPO opposition proceedings
The Milan Central Division held that, once the Opposition Division had revoked the patent in its entirety and that decision had become final because no appeal was filed, the UPC revocation action no longer served any purpose and had to be disposed of under R. 360 RoP. A request to make that disposal conditional on a non-enforcement undertaking concerning divisionals fell outside the scope of R. 360 RoP.
In that situation, the revocation claimant is still the successful party for costs purposes
Although the Court did not itself decide the merits of revocation, the Court considered Neurocrine fully successful because the patent had in the meantime been entirely revoked. Spruce therefore remained the unsuccessful party and had to bear Neurocrine’s reasonable and proportionate costs. The Court rejected Spruce’s argument that equity required a different allocation because Neurocrine had opposed a stay and later filed additional invalidity material.
For a disposed revocation action, recoverable costs may still be set at a substantial portion of the ceiling
The Court emphasized that the ceiling for recoverable costs is generally based on a full procedure, but that UPC costs are heavily front-loaded. Since the written phase was already well advanced, the Court awarded 80% of the EUR 600,000 ceiling, i.e. EUR 480,000 in representation costs, plus EUR 8,000 in non-reimbursable court fees. It also allowed reimbursement of 60% of the court fee because the action was disposed of before closure of the written procedure.
Division
Central Division, Milan
UPC number
UPC_CFI_722/2025
Type of proceedings
Revocation action; application for disposal of the action; decision on costs; confidentiality application.
Parties
Claimant / Respondent:
Neurocrine Biosciences, Inc.
Defendant / Applicant:
Spruce Biosciences, Inc.
Patent(s)
EP 3 784 233
Jurisdictions
Place jurisdictions
Body of legislation / Rules
Art. 69(1) UPCA
R. 360 RoP
R. 370.9(b)(i) RoP
R. 262.2 RoP
