Key takeaways
Security for costs can only be requested by defendants, not claimants, in infringement or revocation actions
According to Art 69 (4) UPC Agreement (UPCA), at the request of the defendant, the court may order the claimant to provide adequate security for the legal costs and other expenses incurred by the defendant which the claimant may be liable to bear. The right to request security for costs is deliberately limited to defendants to protect them from insolvent claimants. This restriction applies even if the claimant becomes a defendant in a counterclaim for revocation.
Rules of Procedure cannot override the UPCA’s express limitations
Even though Rule 158 RoP refers to “a request by one party”, the UPCA prevails in case of conflict, and thus only defendants may request security for costs. This reinforces the principle that the RoP cannot expand the Court’s powers beyond what is explicitly stipulated in the UPCA.
No legal basis in the Enforcement Directive for claimants to request security for costs
The Enforcement Directive’s provisions on security are designed to protect defendants, not claimants, reinforcing the UPCA’s approach.
Allowing claimants to request security for costs in response to a counterclaim would unreasonably limit the defendant in its defense
While a counterclaim for revocation is a separate action, it is inherently linked to the infringement action. Allowing security for costs for claimants in response to a counterclaim would unduly restrict defendants’ ability to defend themselves.
Division
Court of Appeal
UPC number
UPC_CoA_393/2025, APL_20694/2025
Type of proceedings
Appeal against an order for security of costs; originally main infringement action with counterclaim for revocation
Parties
Appellant (and Defendant before the Court of First Instance): AorticLab srl
Respondent (and Claimant before the Court of First Instance): Emboline, Inc.
Patent(s)
EP 2 129 425
Jurisdictions
UPC
Body of legislation / Rules
Rule 158 RoP
Art. 69(4) UPCA
Art. 32(1)(d) UPCA
Directive 2004/48/EC (Enforcement Directive)
Rule 355 RoP
