Stäubli TecSystems v Defendants (anonymised) (CFI, 16 May 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 16 May 2024 (UPC_CFI_372/2023, ACT_580824/2023), the Paris Central Division held that Stäubli TecSystems’ revocation action against EP 3 170 639 had become devoid of purpose, the (anonymised) proprietors having acknowledged the claim and surrendered the patent with retroactive effect in their statements of defence. It closed the proceedings (Rule 360 RoP), refunded 60% of the court fees to the claimant, set the value of the action at EUR 500,000 and the ceiling for recoverable costs at EUR 56,000, and ordered the claimant to bear the costs, as it had not raised before the action the prior art that led to the surrender.

Question

Who bears the costs of a revocation action closed by the proprietor’s immediate surrender of the patent, where the decisive prior art was raised only in the statement for revocation?

Decision

Rules 370.9(b)(i) and 370.9(c)(i) RoP apply by analogy to a surrender of the patent, hence a 60% refund (paragraph 3). On costs, Rule 118.5 RoP applies by analogy and Art. 69 UPCA allows a departure from the rule that the unsuccessful party pays (paragraphs 6.1 to 6.3). No prior warning is required before a revocation action, Rule 61.1 RoP not being transposable (paragraphs 6.5 to 6.7). However, the parties, who are competitors, had corresponded since 2022 and the proprietors acknowledged invalidity only in view of prior art A13, first cited in the statement for revocation. It would be inequitable to make proprietors who surrender at once in response to new prior art bear the costs, which therefore fall on the claimant (paragraphs 6.8 to 6.13).

Key points for practice

• Before bringing a revocation action, a claimant is well advised to put the prior art it regards as decisive to the proprietor: otherwise, an immediate surrender may leave it bearing the costs.
• Practical point: a surrender of the patent in response to the action gives the claimant the partial refund of court fees provided for withdrawal and settlement.

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1) to (3) and Art. 83(3)

Rules of Procedure

Rules 61.1, 118.5, 360, 370.8, 370.9(b)(i) and 370.9(c)(i)

Case law cited

Meril v Edwards Lifesciences, Munich Local Division, 19 December 2023 (ORD_577734/2023)

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.