In(k)control BV v. Esko-Graphics BV and Esko Software BV

This order was issued by the Local Division Brussels of the Unified Patent Court (UPC) on 16 September 2026 in case UPC_CFI_871/2026, concerning an application for security for costs under Rule 158 of the Rules of Procedure (RoP). The claimant, In(k)control BV, a Belgian SME and holder of European Patent EP 3 841 735, brought infringement proceedings against Esko-Graphics BV and Esko Software BV. The defendants, Esko, filed a request on 12 May 2026 seeking an order that In(k)control provide security for costs, primarily in the amount of €400,000 and alternatively €200,000. The procedure was suspended from 29 May 2026 and resumed on 3 September 2026 after the parties informed the court that no settlement could be reached.

Esko argued that the value of the dispute should be provisionally assessed at €2,500,000, comprising €1,000,000 for the infringement claim and €1,500,000 for its intended counterclaim for revocation of the patent, or alternatively €1,250,000 in a more conservative scenario. Esko also formally committed to bringing a counterclaim for revocation in its Statement of Defence. In(k)control, by contrast, argued that the value of the infringement claim should be €200,000, that no account should be taken of the not-yet-filed counterclaim for revocation, and that the ceiling of recoverable costs should be reduced by 50% to €19,000 under Article 2(2) of the Scale of Recoverable Costs, given its status as an SME.

The court, presided over by Judge-Rapporteur Samuel Granata together with legally qualified judges Marije Knijff and Daniel Voß, addressed several preliminary legal points. It held that Article 2(2) of the Scale of Recoverable Costs, which provides for adjustment of the ceiling on recoverable costs where the requesting party is unsuccessful, must also be taken into account when assessing an application for security, since the court assumes ab initio that the requesting party will be unsuccessful. The court further noted that the value of the dispute is definitively determined at the Interim Conference under R. 104(i) and R. 370.6 RoP, and that any assessment made in the context of a security application is provisional and non-binding.

On the merits, the court found that the conditions for requiring security were satisfied. It noted that In(k)control's own financial data revealed negative equity (€-6,031 in 2024 and €-823 in 2025), short-term debts of €91,095 consisting of a recoverable intercompany loan from its parent company Etivoet, a first modest profit of €5,208 in 2025, and carried-forward losses. The court observed that In(k)control's assets consisted primarily of the patent in suit, which would be reduced to virtually nothing if the patent were revoked. It further noted that In(k)control had indicated that Article 3:6 of the Belgian Companies and Associations Code applied, raising doubts about its continuity, and that no evidence of concrete support from the parent company had been provided. The court referred to similar decisions from the Central Division Milan and the Local Division Mannheim where security was maximised in comparable circumstances.

However, the court also considered that the ceiling on recoverable costs is a maximum and not necessarily reflective of actual costs incurred, and that Esko had not provided estimates of billable hours or hourly rates. Given the competitive rates of Belgian counsel in the UPC landscape, the court exercised its discretion to set the security at €75,000, an amount lower than Esko's primary and alternative requests but higher than In(k)control's offer. The court rejected In(k)control's argument that this amount would impermissibly restrict its right of access to the court under Article 47 of the EU Charter of Fundamental Rights or its ability to enforce its intellectual property rights under Article 41 of the TRIPS Agreement and Article 3.1 of the Enforcement Directive, finding that In(k)control had failed to demonstrate a concrete amount that would not impede such access. The court also noted that the status of SME does not in principle require a different approach to the maximum recoverable costs, though such reduction remains possible under Article 2(2) of the Scale of Recoverable Costs where conditions are met.

In its final order, the court took note of Esko's formal commitment to bring a counterclaim for revocation, ordered In(k)control to provide security in the amount of €75,000 within 21 days either by bank guarantee from an EU-licensed bank or by transfer to the UPC Registry account, and dismissed all other claims as unfounded.