FUJIFILM v Kodak (CoA, 17 July 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 17 July 2026, the Court of Appeal set aside the costs ruling of the Paris Central Division of 14 July 2025 and ordered Kodak, S.A. to bear the costs at both instances of the revocation action it had brought against Fujifilm’s EP 4 082 804. Because the patent was surrendered at the defence stage, the action was disposed of without a ruling on the merits. The Court held that a proprietor which gave no cause for the action and surrenders its patent immediately does not bear the costs. The ruling requires a revocation claimant to check, before suing, that the action is actually needed.

Facts and procedure

On 14 November 2024, Kodak Graphic Communications GmbH, another Kodak group company, filed an opposition against the patent at the EPO. On 23 December 2024, Kodak, S.A. brought a revocation action before the Paris Central Division. On 26 March 2025, Fujifilm declared surrender of the patent to the EPO and, the next day, the last day for its defence, applied for the action to be disposed of with costs against Kodak. Kodak joined the request for disposal but sought costs against Fujifilm. The Central Division disposed of the action and ordered Fujifilm to pay the costs. Fujifilm appealed. The parties agreed to a written procedure.

The applicable law

Article 69(1) UPCA places costs on the unsuccessful party, and Article 69(2) allows a departure on grounds of equity (paragraph 17). Under the Court’s case law, equity may require a claimant, even a successful one, to bear unnecessary costs caused by suing a defendant who gave no cause for the action, for example where no warning letter was sent and the defendant immediately undertakes to comply (paragraphs 18 and 19, Meril v Edwards). The same approach applies where the proprietor surrenders the patent after the statement for revocation is filed (paragraph 21, Stäubli v X). Disposal takes place under Rule 360.

Question

Where a revocation action is disposed of following surrender of the patent, who should bear the costs: the proprietor or the claimant?

Decision

Fujifilm had given no cause for the action: no threat, no warning letter and no communication concerning this patent, and pending litigation over other patents did not amount to a threat (paragraph 22). Fujifilm’s request for an extension of time, made after the action was filed, was irrelevant (paragraph 26). Kodak was therefore not entitled to assume that a revocation action was necessary (paragraph 28). It was not obliged to await the outcome of the opposition, since parallel proceedings are allowed. The only issue was who bears the costs upon immediate surrender (paragraph 29). Surrender is immediate if it falls within the time limit for the defence under Rule 49 (paragraph 30), which was the case, surrender having been declared on 26 March 2025 and the Article 105a EPC request filed in time (paragraph 31). Kodak, having brought the proceedings unnecessarily, bears the costs at first instance and on appeal (paragraph 32).

Key points for practice

• A proprietor that surrenders its patent within the time limit for the defence, without having threatened the claimant, may avoid costs even though the action is disposed of (paragraphs 30 to 32).
• A pending opposition filed by a company of the same group does not in itself make a revocation action necessary (paragraphs 22 to 28).
• Practical point: before bringing a revocation action against a patent that has never been asserted, a claimant would do well to invite the proprietor to surrender it, or to await the end of the period for responding to the opposition, failing which it may bear the costs of an immediate surrender (paragraph 24).

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1) and (2)

Rules of Procedure

Rules 49 and 360

European Patent Convention

Art. 105a

Case law cited

Meril v Edwards, Court of Appeal, 4 October 2024, Stäubli v X, Court of Appeal, 26 March 2025

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.