Short Summary
Qualcomm Incorporated filed an application seeking reimbursement of court fees after the Court of First Instance of the Unified Patent Court closed its action against a European Patent Office decision, which had been rectified during the proceedings. The Court had previously closed the case under R. 91.2 RoP without ordering reimbursement. The Court dismissed Qualcomm's subsequent application, holding that it could not review its own previous order on the same subject-matter, and noted that the order could be appealed.
Detailed Summary
This case concerns an application by Qualcomm Incorporated for reimbursement of court fees filed pursuant to R. 370.11 of the Rules of Procedure (RoP) of the Unified Patent Court.
Background: On 19 July 2024, Qualcomm Incorporated filed an application (App_42538/2024) before the Court of First Instance of the UPC, Paris Central Division, seeking annulment of a decision of the European Patent Office (EPO) in carrying out tasks referred to in Art. 9 of Regulation (EU) No 1257/2012. The patent at issue was EP3516914, owned by Qualcomm. On 13 August 2024, the EPO notified the Court under R. 91(1)(b) that the contested decision dated 10 July 2024 had been rectified in accordance with the order or remedy sought by Qualcomm. By an order dated 13 September 2024, the Court closed the case pursuant to R. 91.2 RoP and held that there was no particular reason to order full or partial reimbursement of the fee for the action.
Applicant's Request: On 23 September 2024, Qualcomm filed a generic application (App_52964/2024) requesting, mainly, total reimbursement of the fee paid; subsidiarily, reimbursement of 60% of the fee; and further subsidiarily, reimbursement of 25% of the fee. Qualcomm argued that under R. 91.2 RoP in combination with R. 370.11 RoP, the Court should consider reimbursement without reference to a claimant's request or activity, noting that the contested decision had been rectified in accordance with the request, that no rule requires mentioning particular circumstances to obtain reimbursement other than prevailing in the proceeding, and that the proceeding had been closed before the closure of the written procedure and handled by a single judge.
Court's Reasoning: The Court, presided by Judge Florence Butin, examined the applicable provisions. R. 91.2 RoP provides that where the court is informed that the contested decision has been rectified, it shall inform the Claimant that the action is closed and may order full or partial reimbursement of the fee. R. 370.11 RoP requires a reasoned application for reimbursement. R. 370.9 RoP provides that fixed and value-based fees may be reimbursed, including 25% if the action is heard by a single judge (R. 345.6) and 60% if settled before closure of the written procedure. The Court reasoned that while R. 370.11 allows an application to be filed at a later stage, the Court of First Instance cannot review its previous order on the same subject-matter and decide differently. The Court further noted that the decision was taken by a single judge without possible panel review, and that the order could be appealed.
Decision: The Court dismissed the application for reimbursement pursuant to R. 370.11 RoP and stated that an appeal may be brought against the present order pursuant to R. 220(b) RoP. The order was issued on 24 October 2024.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Paris (FR) Central Division - Seat. Understanding the court's reasoning in Qualcomm Incorporated (Application for Reimbursement of Court Fees) vs Ex Parte is valuable context for structuring arguments or assessing risk in similar proceedings.
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