- within Litigation and Mediation & Arbitration topic(s)
- in United States
1. Key takeaways
A claimant must bear costs if itunnecessarily initiates a revocation action against a defendant who has not given cause and surrenders the patent immediately at the beginning of the proceedings (Art. 69 (1), (2) UPCA)
The CoA held that the principles of equity required that the prevailing claimant had to bear the costs even if the defendant is technically “unsuccessful” by surrendering the patent as the defendant did not give cause for the action. In particular, the defendant had not threatened to assert the patent against the claimant; pending litigation between the parties based on other patents cannot be considered a thread of litigation based on a different patent. Also it cannot be generally considered a cause for action if EPO opposition proceedings are pending and the defendant has not yet responded to the opposion or has not surrendered its patent following the opposition. (In the present case, the revocation acion was filed less than four weeks after notification of the oppsion. Procedural steps, like changing representatives or requesting time extensions in the opposition proceedings, do not automatically prove an intent to defend the patent, especially when assessed at the time the revocation action was lodged.
A patent surrender is made timely (“immediate”) if declared within the time limit for filing the Defence to revocation (R. 49 RoP), allowing for disposal of the action (R. 360 RoP)
The defendant met this requirement by applying for disposal on the final day of the deadline for its Defence to the revocation, having surrendered the patent to the EPO one day prior.
2. Division
Court of Appeal
3. UPC number
UPC_CoA_861/2025
4. Type of proceedings
Appeal against a cost decision in a revocation action
5. Parties
Appellant (Defendant at first instance): FUJIFILM Corporation
Respondent (Claimant at first instance): Kodak, S.A.
6. Patent(s)
EP 4 082 804
7. Jurisdictions
UPC
8. Body of legislation / Rules
Art. 69(1) UPCA, Art. 69(2) UPCA, R. 49 RoP, R. 360 RoP, Art. 105a EPC
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.
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