Key takeaways
It is permissible to make a counterclaim for revocation conditional upon a finding of infringement of the patent
The court relied on the Court of Appeal’s Clarification order of 16 July 2026 (UPC_CoA_40/2026, Emboline v. AorticLab), confirming that the procedural approach of making the decision on the revocation counterclaim dependent on an infringement finding is admissible.
The transition from an unconditional counterclaim for revocation to one dependent on an in-procedure condition (i.e., a finding of infringement by the court) still means that the counterclaim remains unconditionally limited pursuant to R. 263.3 RoP
The condition attaches only to the court’s decision on the merits of the counterclaim, not to its lodging. The counterclaim itself continues to be treated as unconditionally limited within the meaning of R. 263.3 RoP.
Where, in accordance with the counterclaimant’s request, no decision is rendered on the counterclaim for revocation, the counterclaimant must, in principle, bear the costs of the counterclaim for revocation
Since it fell within the defendants’/counterclaimants’ own sphere that no decision was reached on the counterclaim, the costs thereby incurred by the claimant were deemed unnecessarily caused within the meaning of Art. 69(3) UPCA, and were therefore allocated to the defendants/counterclaimants.
Division
Local Division Munich
UPC number
UPC_CFI_492/2025, UPC_CFI_1309/2025
Type of proceedings
Infringement action and (conditional) counterclaim for revocation
Parties
Claimant/Counter-Defendant: Papst Licensing GmbH & Co. KG
Defendants/Counterclaimants: Beijing Roborock Technology Co., Ltd.; Roborock Germany GmbH; Roborock International B.V.
Patent
EP 3 030 943
Body of legislation / Rules
R. 263.3 RoP, Art. 69(3) UPCA
