Court of Appeal, March 26, 2025, allocation of costs, UPC_CoA_290/2024

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.

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.

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).