Juul Labs International v NJOY Netherlands (CoA, UPC_CoA_5/2025, 9 January 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

The Court of Appeal allows Juul Labs International, Inc. to withdraw its appeal (UPC_CoA_5/2025) against the decision of the Paris Central Division of 5 November 2024 (UPC_CFI_309/2023), which had revoked EP 3 498 115 at the request of NJOY Netherlands B.V. for twelve Contracting Member States. In the meantime, the EPO Boards of Appeal had upheld the revocation of the patent on 17 October 2025. The Court orders Juul Labs to bear the costs of the appeal and refunds 60% of the appeal court fees. On the same day it ruled to the same effect, in separate decisions, on appeals UPC_CoA_237/2025 and UPC_CoA_328/2025 between the same parties. The Court declines to shift costs onto a revocation claimant who did not wait for the outcome of the opposition.

Question

May an appellant withdrawing after the EPO has finally revoked the patent have the costs of the appeal borne by the respondent, on the ground that the revocation action was unnecessary while the opposition was pending?

Decision

The conditions of Rule 265.1 RoP apply to the withdrawal of an appeal. Since NJOY consented, it has no legitimate interest in a decision and the withdrawal is permitted (paragraphs 7 to 10). As the application was lodged before 31 December 2025, former Rule 370.9(b)(i) RoP applies: 60% of the appeal fees are refunded (paragraph 11). A withdrawing appellant is, as a rule, the unsuccessful party (paragraph 14). The exception to Art. 69(1) UPCA, recognised where the proprietor immediately surrenders the patent and requests revocation under Art. 105a EPC within the time limit for the defence, does not apply because Juul Labs defended its patent at first instance (paragraphs 15 to 17).

Key points for practice

• A proprietor who defends its patent before the UPC while an opposition is pending bears the costs of the appeal if it withdraws after revocation by the EPO, and cannot blame the revocation claimant for not waiting (paragraphs 12 to 17).
• The fee refund rate turns on whether the application to withdraw was lodged before or after 31 December 2025 (paragraph 11).

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1)

Rules of Procedure

Rules 151, 265.1, 360 and 370.9

European Patent Convention

Art. 105a

Case law cited

10x Genomics v Curio Bioscience, Court of Appeal, 5 July 2024, UPC_CoA_234/2024, Avago v Tesla, Court of Appeal, 15 January 2025, UPC_CoA_637/2024, 638/2024 and 639/2024, Avago Technologies International Sales v Tesla Germany and Tesla Manufacturing Brandenburg, Court of Appeal, 15 January 2025, UPC_CoA_629/2024, 631/2024 and 632/2024, Stäubli Tec, Court of Appeal, 26 March 2025, UPC_CoA_290/2024.

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.