STÄUBLI TEC-SYSTEMS v Respondents (CoA, 26 March 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 26 March 2025 (UPC_CoA_290/2024, APL_31428/2024), the Court of Appeal (Judges Kalden, presiding, Simonsson, Rombach, rapporteur, Roselinger and Schenk) confirmed that Stäubli Tec-Systems must bear the costs of its revocation action against EP 3 170 639, which became devoid of purpose after the proprietors surrendered the patent. The Court held that a claimant who brings a revocation action without the proprietor having given cause bears the costs if the proprietor surrenders at the very start of the proceedings. The decision encourages contact with the proprietor before any revocation action, especially where new prior art is relied on.

Facts and procedure

Stäubli had written to the proprietors on 29 November 2022 and 24 January 2023 setting out grounds of invalidity, and they had replied on 9 January and 15 February 2023. Eight months later, on 18 October 2023, Stäubli brought a revocation action before the Paris Central Division based in part on a prior art document (A13) never raised before. In their defences, the proprietors, whose names do not appear in the published decision, acknowledged the claim and surrendered the patent with retroactive effect, then filed on 15 January 2024 a request for revocation with the EPO under Article 105a EPC, the revocation being published on 28 February 2024. Both sides having declared the proceedings devoid of purpose, the Central Division closed them by order of 23 May 2024 (Rule 360) and ordered Stäubli to bear the costs. Stäubli appealed. The hearing took place on 20 February 2025.

The applicable law

Article 69(1) UPCA places costs on the unsuccessful party, subject to exceptions on grounds of equity (Article 69(2)). Under Meril v Edwards, a decision under Rule 360 does not displace those principles, which also apply where the patent is surrendered after the action is filed (paragraphs 19 to 21). Article 105a EPC allows the proprietor to request the EPO to revoke its patent.

Question

Who bears the costs of a revocation action that becomes devoid of purpose because the proprietor surrenders the patent shortly after it is filed?

Decision

The appeal was dismissed. Equity may require a claimant to bear the costs of an action brought against a party that gave no cause for it, and the same applies to a revocation action (paragraphs 24 and 25), the merits need not, as a rule, be examined (paragraphs 26 and 27). The proprietors had given no cause: they had engaged with Stäubli’s arguments, eight months of silence suggested the matter was closed, and A13, unrelated to the art previously discussed, might have led them to accept invalidity had it been put to them. Stäubli could reasonably have been expected to present it before suing, the shared interest in avoiding unnecessary costs prevailing. The risk of an opt-out did not justify skipping that step, there being no sign that the proprietors were considering one (paragraphs 28 to 34).

A surrender is made « at the very start » when it falls within the time limit for the defence to revocation. Since a declaration to the claimant alone has no erga omnes effect, the proprietor must as a rule also file the Article 105a EPC request and pay the fee within that period, and the surrender must operate retroactively (paragraphs 35 to 38). Here the request was filed on 15 January 2024, after the period expired on 8 January 2024, the Court nonetheless treated the surrender as timely on equitable grounds, since the proprietors could not have known of that requirement and the delay caused Stäubli no additional costs (paragraphs 39 to 44). Stäubli bears the costs of the appeal, and the value of the appeal was set at EUR 100,000.

Key points for practice

• A revocation action brought without prior contact, on prior art never disclosed to the proprietor, exposes the claimant to costs if the proprietor surrenders at once.
• To benefit from the exception, the proprietor should as a rule surrender and file an Article 105a EPC request, with the fee paid, within the time limit for the defence.
• The risk of an opt-out does not in itself excuse the absence of prior contact.
• Practical point: before bringing a revocation action, a claimant would be well advised to put new prior art to the proprietor and allow time for a response.

Provisions applied

Agreement on a Unified Patent Court

Art. 69(1) to (3)

Rules of Procedure

Rules 61, 118(5) and 360

European Patent Convention

Art. 105a

Directive 2004/48/EC

Art. 14

Case law cited

Meril Life Sciences v Edwards Lifesciences, Court of Appeal, 4 October 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.