In a landmark decision, the Court of Appeal of the Unified Patent Court (UPC CoA) has ruled that, in the case of an unannounced action, the claimant must bear the costs of the proceedings if the defendant gave no cause for bringing the action and immediately acknowledged the claim. By representing the defendants, RGTH contributed to the resolution of a legal issue that had previously remained unsettled.
Waiver of patent rights following a surprise revocation action
The appeal proceedings were preceded by a revocation action filed by the claimant Stäubli on 18 October 2023 against two former co-proprietors of European patent 3 170 639. The action came as a complete surprise to the defendants, as they had not been informed in advance of the intention to file the action and therefore had no opportunity to waive the patent before the proceedings were initiated.
The two defendants, represented by Daniel Hoppe (law firm BONABRY) and by Thomas Schart and Dr. Christoph Bartels (RGTH), decided to waive the patent. The defence therefore argued consistently that the successful claimant must bear the costs of the proceedings, as the defendants had given no cause for the action and had immediately acknowledged it. The claimant appealed against a corresponding decision of the UPC Central Division in Paris.
UPC Court of Appeal confirms the first-instance decision
As with all appeal cases relating to Unitary Patents, the proceedings were decided by the Court of Appeal of the Unified Patent Court (UPC CoA) in Luxembourg. On 26 March 2025, the Court confirmed the contested first-instance decision.
In the view of the UPC CoA, the claimant should have informed the patent co-proprietors prior to filing the action and requested them to waive the patent. As a legal dispute would not have been necessary in this way, the UPC CoA ruled that the claimant must bear the procedural costs.
UPC appeal case: RGTH contributes to the resolution of a previously unsettled legal issue
For proprietors of Unitary Patents and European patents, this decision is of particular significance, as there had previously been no statutory regulation of this issue in the UPCA (Agreement on a Unified Patent Court). While Section 93 of the German Code of Civil Procedure clearly provides that the claimant must bear the procedural costs if the defendant has given no cause for bringing an action, this question had remained open with regard to Unitary Patents. The decision reflects the fundamental approach of the UPC to resolving patent disputes more quickly, efficiently, and with unitary effect across the EU. At the same time, the confirmation of the first-instance UPC decision provides patent proprietors with legal certainty that, in the event of a revocation action, they will not have to bear procedural costs in addition to losing the patent.
Unified Patent Court: legal certainty for proprietors of European patents
The Unified Patent Court (UPC) has had jurisdiction since July 2023 as a common court system for all disputes relating to European patents with unitary effect (Unitary Patents) as well as European patents. As a cornerstone of a centralized and optimized European patent system, the UPC is intended to help simplify and accelerate proceedings, thereby providing patent proprietors with greater legal certainty across all Member States. UPC decisions have unitary effect in all 18 EU Member States that have currently ratified the UPCA.
RGTH: We represent your rights in relation to Unitary Patents and European patents
Whether you require support with patent filing or competent advice in patent disputes, the patent attorneys at RGTH advise patent proprietors on all matters relating to Unitary Patents and European patents. With our many years of experience and in-depth industry expertise, we represent your interests before the UPC.
Disclaimer: The information provided above does not constitute legal advice. No guarantee is given as to its accuracy or completeness.