ITCiCo Spain v Bayerische Motoren Werke (CFI, 29 April 2025)
| Date | 29 April 2025 |
|---|---|
| Court | CFI |
| Division | Paris (FR) Central Division - Seat |
| Type of action | Application For Costs |
| Case number(s) | ACT_6322/2025 |
| Registry reference | ACT_6322/2025 |
| Parties | ITCiCo Spain S.L. v. Bayerische Motoren Werke Aktiengesellschaft |
| Language | English |
Official decision (PDF) · UPC registry entry
Dhenne Avocats represents claimants and defendants in European patent disputes before the Unified Patent Court, including the Paris divisions.
Dhenne Avocats · 10 October 2026
Our analysis
Summary
By order of 29 April 2025 (UPC_CFI_98/2025, App_6322/2025, ORD_20395/2025), Judge Catallozzi, presiding judge and judge-rapporteur of the Paris Central Division, rejected an application by Bayerische Motoren Werke for a cost decision against ITCiCo Spain covering only ITCiCo Spain’s unsuccessful application to set aside a decision by default. That decision, given on 16 September 2024 in revocation action UPC_CFI_412/2023, had revoked EP 2 796 333 in its entirety and ordered ITCiCo Spain to bear the costs. The order lays down a simple rule of method for costs applications.
Question
May the costs incurred in opposing an application to set aside a decision by default (Rule 356) be the subject of a separate application for a cost decision?
Decision
No. Such an application is an internal procedural remedy that does not call for its own decision on costs: those costs are to be claimed in the cost proceedings for the main action, as the order of 9 January 2025, which dismissed ITCiCo Spain’s application without ruling on costs, and the order of 31 March 2025, which refused to rectify it, had already indicated (paragraphs 2 to 6). Here, BMW’s work, comments and a rejoinder on the validity of service, had already been taken into account in the cost decision of 21 April 2025 (ORD_19001/2025), which satisfied the claim. The application, for EUR 15,731, was therefore rejected (paragraphs 7 and 8).
Key points for practice
- Practical point: costs incurred in defending a decision by default should be included in the application for a cost decision in the main action, a separate application will fail.
Provisions applied
- Rules of Procedure
- Rules 151 and 356
- Case law cited
- No decision in another case is cited, the order refers to earlier orders in the same proceedings.
Related decisions
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.
Decisions in the same proceedings
Going further
Lexicon: Unitary patent, Local and central divisions (UPC).
Dhenne Avocats blog: The Transitional Period and the UPC: Coordinating Two Judicial Orders.
Publications by Matthieu Dhenne: Four Questions That Decide a UPC Market Entry, Pleading the Long Arm: What a UPC Statement of Claim Must Carry Beyond Jurisdiction (Kluwer Patent Blog).