NEC v TCL Deutschland (CFI, 24 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 24 January 2025 (UPC_CFI_487/2023, EP 2 645 714), Panel 2 of the Munich Local Division permitted, following a settlement and a licence agreement, the withdrawal of four TCL companies’ counterclaims for revocation and of TCL Deutschland’s counterclaim for a FRAND licence offer in NEC’s infringement action. It declared the proceedings closed and refunded 60% of the fees for each counterclaim. The order holds that a FRAND counterclaim attracts its own fee, applying Rule 370 by analogy.

Question

Does withdrawing a counterclaim for a FRAND licence offer entitle the counterclaimant to a full refund of the fee, on the footing that no fee was due for such a counterclaim?

Decision

The withdrawals were permitted, as the other party had no legitimate interest in a decision (Rule 265.1, paragraphs 8 and 9). Since they occurred before the written procedure closed, 60% of the fees were refunded (Rules 370.9(b)(i) and 370.11, paragraphs 12 and 13), namely EUR 12,000 for revocation and EUR 9,000 for the FRAND counterclaim. A full refund was refused (paragraph 14). The FRAND counterclaim, which seeks a specific licence offer, is not listed in Rules 370.2 to 370.5 and is neither an infringement action nor an infringement counterclaim (paragraph 17), Art. 32(1)(a) UPCA governs jurisdiction only (paragraphs 18, 19 and 24). The gap being unintended, and the counterclaim being an independent action going beyond a licence defence, Rule 370 applies by analogy (paragraphs 21 to 23).

Key points for practice

• A counterclaim for the determination of a FRAND licence offer attracts its own fee, separate from that of the infringement action.
• Practical point: withdrawing it before the written procedure closes yields a 60% refund of that fee, not full repayment.

Provisions applied

Agreement on a Unified Patent Court

Art. 32(1)(a), Art. 36(2) and (3), and Art. 70(1) and (2)

Rules of Procedure

Rules 15, 26, 53, 80.3, 265, 370.2 to 370.5, 370.9(b)(i) and 370.11

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.