Bayerische Motoren Werke v ITCiCo Spain (CFI, 16 September 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 16 September 2024 (UPC_CFI_412/2023, ACT_585518/2023, ORD_51965/2024), the Paris Central Division (P. Catallozzi, presiding and judge-rapporteur, T. Zhilova, D. Otten-Dünnweber) granted Bayerische Motoren Werke Aktiengesellschaft’s (BMW) request for a decision by default and revoked European patent EP 2 796 333, held by ITCiCo Spain S.L., in its entirety, the patentee having filed no Statement of Defence.

The decision deserves attention because the panel goes beyond recording the default and checks for itself, claim by claim, that the facts put forward justify revocation. Default therefore does not lead to automatic revocation: revocation rests on a reasoned review of validity.

Facts and procedure

The revocation action was filed on 6 November 2023 and served on 25 November 2023 (paragraph 9). The defendant sought an extension of the time limit for its defence to 29 February 2024, which the judge-rapporteur refused by order of 9 February 2024 (paragraphs 4 and 5). BMW requested a decision by default on 2 February 2024 (paragraph 6). ITCiCo filed no defence and no request. The patent concerns a system that checks whether a driver actually responds to a speed warning: positioning, a speed limit database, comparison with thresholds, warning signals and compliance means comparing speed at two points in time (paragraphs 13 to 17).

The applicable law

Rule 355 RoP makes a decision by default subject to three conditions: a request from the claimant, a default by the defendant, such as failing to take a step within the time limit (paragraph 7), and facts that justify the remedy sought. Service must have been effected properly, under the internal law of the defendant’s State or by actual service in accordance with Chapter 2 of the Rules (paragraph 8). On the merits, novelty is assessed under Art. 54(2) EPC (paragraph 23).

Question

May a decision by default be issued where some annexes were not enclosed on service, and do the facts alleged justify revocation of the patent?

Decision

Service on 25 November 2023 is accepted, as the defendant did not challenge that date when it sought an extension (paragraphs 9 and 10). The absence of 39 annexes does not invalidate service, since the Statement of claim itself was sufficient, in line with the Court of Appeal’s order of 13 October 2023 (paragraph 11). The panel exercises its discretion to issue the decision, having regard to the non-defaulting party’s right to a speedy procedure (paragraph 12).

On the merits, the panel defines the skilled person as a university-trained engineer with several years of practical experience (paragraph 18) and reads the two compliance alternatives as two outcomes of a single check, both of which the system must be able to produce (paragraph 20). It then maps each feature of claim 1 onto US 2011/0267205 (D9), published on 3 November 2011: GPS receiver, speed-by-street database, threshold test, warning, closure of the violation record as a compliance signal, notification to a central server and timer (paragraphs 27 to 39). Claim 1 lacks novelty, as does claim 8 (paragraph 40). The dependent claims fall for lack of novelty or inventive step over D9 combined with D11 to D14 (paragraphs 41 to 67), the remaining grounds being absorbed (paragraph 68). The patent is revoked for all Contracting Member States in which it had effect, the defendant bears the costs (paragraph 70) and the value of the action is set at EUR 1,000,000 (paragraph 71).

Key points for practice

• A defendant’s default does not relieve the panel of a full validity review, feature by feature.
• Service without some annexes remains valid where the Statement of claim itself was delivered.
• The value of the action reflects the number of UPC States covered, the market and the remaining life of the patent (paragraph 71).
• Practical point: a patentee facing revocation whose extension request is refused must file its defence in time, or face a reasoned revocation based solely on the claimant’s case.

Provisions applied

Rules of Procedure

Rules 271, 277, 355 and 356

European Patent Convention

Art. 54(2)

Case law cited

Sanofi-Aventis Deutschland v Amgen, Court of Appeal, 13 October 2023 (UPC_CoA_320/2023)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.