Short Summary
Stäubli Tec-Systems GmbH filed a revocation action against European Patent EP 3 170 639 at the Central Division Paris. The former patent proprietors immediately acknowledged the revocation and surrendered the patent ex tunc. The Court of First Instance ordered Stäubli to bear the costs, finding that Stäubli introduced new prior art for the first time in the revocation action without prior warning. On appeal, the Court of Appeal dismissed Stäubli's appeal, confirming that Stäubli must bear the costs of both the first instance and appeal proceedings.
Detailed Summary
This case concerns a revocation action filed by Stäubli Tec-Systems GmbH against European Patent EP 3 170 639 before the Central Division Paris of the Unified Patent Court. The two unnamed respondents were the former patent proprietors of the patent in suit.
Prior to the action, the parties engaged in correspondence. The former patent proprietors sent a 'justification request' asking Stäubli why it considered itself entitled to use the patent. Stäubli responded on November 29, 2022, asserting the patent's lack of validity and requesting the former patent proprietors to confirm the matter was resolved by January 9, 2023, failing which Stäubli reserved the right to take further legal steps. The former patent proprietors disputed the invalidity arguments and suggested seeking an out-of-court settlement, possibly through a license. Stäubli replied on January 24, 2023, stating it had no interest in license negotiations and proposed treating the matter as resolved, while warning that if evidence of alleged infringement emerged, it would recommend court action.
On October 18, 2023, approximately eight months later and without prior notice, Stäubli filed a revocation action. Notably, Stäubli relied on prior art, including document A13, that had not been part of the pre-litigation correspondence. In their responses filed on November 16, 2023, November 20, 2023, and January 16, 2024, the former patent proprietors acknowledged the revocation action and declared their surrender of the patent ex tunc in all contracting states. They had previously declared surrender before national patent offices and filed a request for revocation under Art. 105a EPC with the European Patent Office on January 15, 2024. The revocation was published in the European Patent Bulletin on February 28, 2024.
Both parties declared the main proceedings moot and requested a decision under R. 360 RoP. Stäubli sought costs against the former patent proprietors, while the former patent proprietors sought costs against Stäubli.
The Court of First Instance (Central Division Paris) found the revocation action had become moot due to the surrender and ordered Stäubli to bear the costs. The court reasoned that Stäubli had introduced significant new prior art (document A13) for the first time in the revocation action, and the former patent proprietors could plausibly argue they would have surrendered earlier if this prior art had been disclosed during pre-litigation correspondence. The court found that Stäubli had not given the former patent proprietors an ultimatum to surrender before filing the action, and that principles of fair and equitable procedure could affect cost allocation when a revocation action contains new prior art prompting immediate surrender.
On appeal, Stäubli argued that the former patent proprietors should bear the costs because they had surrendered the patent, placing themselves in the position of the losing party under Art. 69(1) EPGÜ. Stäubli contended it was not obligated to disclose all evidence in advance and that the former patent proprietors had not surrendered immediately at the beginning of the proceedings.
The Court of Appeal established two key legal principles: (1) An exception to the general 'loser pays' rule of Art. 69(1) EPGÜ can apply when a plaintiff files a revocation action without the patent proprietor having given cause for it and the patent proprietor immediately surrenders the patent at the beginning of the proceedings; and (2) For this exception to apply, the patent proprietor must generally, within the deadline for responding to the revocation action, not only declare the surrender but also file a request for revocation under Art. 105a EPC with the EPO and pay the required fee, with the surrender being declared ex tunc.
Applying these principles, the Court of Appeal found that while the former patent proprietors technically filed the Art. 105a EPC request on January 15, 2024, which was 8 days after the deadline for responding to the revocation action (January 8, 2024), equity justified treating this as timely. The court reasoned that the former patent proprietors could not reasonably have been expected to know about these specific requirements at that time, they had timely announced their intention to surrender, and the short delay did not cause additional costs to Stäubli.
The Court of Appeal dismissed Stäubli's appeal, ordered Stäubli to bear the costs of the appeal proceedings, and set the value of the appeal proceedings at €100,000.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in Stäubli Tec-Systems GmbH vs Former Patent Proprietors (EP 3 170 639) is valuable context for structuring arguments or assessing risk in similar proceedings.
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