PHOENIX CONTACT v Industria Lombarda Materiale Elettrico (CFI, 5 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

Following a settlement, the Munich Local Division allowed the withdrawal of PHOENIX CONTACT’s infringement action on EP 3 602 692 and of the counterclaim for revocation brought by Industria Lombarda Materiale Elettrico and ILME, declared the proceedings closed, left each party to bear its own costs and ordered a 40% refund of court fees. The order is of interest for setting the value of the counterclaim at the value of the action plus 50%, in line with the Administrative Committee’s guidelines.

Question

How should the value of a counterclaim for revocation, which determines the fee due and the refundable amount, be set when the proceedings end by withdrawal?

Decision

The withdrawals, made before any final decision and with no legitimate interest of the other side in a decision, were allowed (Rule 265.1), absent any costs request, each party bears its own costs. Withdrawal before the close of the interim procedure entitles the parties to a 40% fee refund (Rule 370.9(b)(ii)).

The action was valued at EUR 750,000 and the counterclaim at EUR 1,125,000. The guidelines of 24 April 2023 do not bind the court, but their method was followed: revocation takes effect erga omnes and affects the general value of the patent, including the proprietor’s own use, which the 50% uplift reflects. The defendants, who owed a supplementary fee, therefore receive EUR 2,100.

Key points for practice

• The value of a counterclaim for revocation is not that of the action: the 50% uplift applies even where no other proceedings are pending.
• A negotiated withdrawal before the interim procedure closes may trigger a supplementary fee to be set off against the refund.

Provisions applied

Rules of Procedure

Rules 265 and 370.9

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.