MSG Maschinenbau v EJP Maschinen (CFI, 11 October 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 11 October 2024 (UPC_CFI_300/2023, CC_597425/2023), the Munich Local Division (panel 2, presided by U. Voß) drew the consequences of the final revocation of EP 3 225 320 B1 by the EPO Board of Appeal on 4 July 2024 (T 367/23): it permitted MSG Maschinenbau to withdraw, declared EJP Maschinen’s counterclaim for revocation devoid of purpose and ordered the claimant to bear all costs. Each party recovers 60% of its court fees (EUR 6,600).

Question

How are costs allocated after withdrawal and the counterclaim becoming devoid of purpose, and does Art. 69(3) UPCA allow some defence costs to be disallowed as unnecessary?

Decision

Withdrawal is permitted, the defendant having shown no legitimate interest against it (paragraph 10). Art. 69(3) UPCA only covers separable measures that were unnecessary from the outset (paragraphs 16 to 19): addressing an accused embodiment is legitimate defence (paragraphs 20 and 21), and the counterclaim, allowed alongside opposition (Art. 33(8) and (10) UPCA), is not a separable measure (paragraph 22). The revocation disposes of the counterclaim under Rule 360 RoP (paragraphs 30 to 33), the claimant, which would not have succeeded, bears its costs (paragraphs 36 to 38). The 60% refund is granted for the counterclaim by analogy with Rule 370.9 RoP (paragraphs 39 to 42).

Key points for practice

• Final revocation by the EPO is an event that renders the counterclaim devoid of purpose, on the application of a single party.
• Practical point: a defence addressing every accused embodiment and a counterclaim run in parallel with opposition are not unnecessary costs under Art. 69(3) UPCA.

Provisions applied

Agreement on a Unified Patent Court

Arts. 33(8) and (10), 41(3) and 69(1) and (3)

Rules of Procedure

Rules 150, 152.2, 265, 295(a), 350.5, 351.3, 360 and 370

Case law cited

Düsseldorf Local Division, 6 August 2024, UPC_CFI_87/2024, The Hague Local Division, 1 May 2024, UPC_CFI_379/2023, Court of Appeal, 4 October 2024, UPC_CoA_2/2024, Munich Local Division, 19 December 2023, Stäubli Tec-Systems, Paris Central Division, 16 May 2024, Astellas Institute for Regenerative Medicine, Munich Central Division, 23 July 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.