Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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Below are decisions of between 30 June 2025 and 2 July 2025. The website of the UPC is down from 3 July 2025 until 8 July 2025. The decisions of 3 July 2025 onwards will be covered in next week’s UPC Unfiltered.
30 June 2025
Local Division Düsseldorf, Roche v Tandem
UPC_CFI_504/2023
Return of fees
Background
Infringement and revocation case in which the oral hearing took place on 9 April 2025.
The date for the decision was set for 22 May 2025, but was rescheduled to 5 June 2025.
In the meantime, on 23 May 2025, the claimant and defendants 1 and 2 informed the Court they had reached a settlement. In the end, all parties (6 defendants) reached a settlement and all parties asked to get 20% of the court fees back based on R. 370.9(c) RoP.
Decision
The Court refused the request for fee reimbursement. The Court held that the oral procedure is considered closed after the oral hearing, which means there is no entitlement to a 20% fee reimbursement. Even if one were to interpret this differently, the exception in R. 370.9(e) RoP would apply, allowing the Court to refuse reimbursement due to exceptional circumstances.
Comment
- This decision is absolutely correct. The Court had, in fact, done more work then in a normal case. It had prepared the judgment: this would have concluded their work, but now the Court was confronted with requests in order to effectuate several settlements!
- I have previously noted that in such situations, it would be advisable for clients not to request a reimbursement of fees (assuming clients are aware that such reimbursement rights exist).
- It is hoped that the practice of fee reimbursements (which the Drafting Committee of the Rules of Procedure never recommended) will be abolished quickly. If a party chooses to initiate litigation, they have committed to paying the court fees. These court fees are generally a small percentage of the total representation costs. The same applies to a defendant filing a counterclaim for revocation. If a party genuinely cannot afford the fees, there is always the option to request the Court for a fee waiver.
- The fact that after the oral hearing the oral procedure is closed reinforces the rule that a party cannot file any submission or document after the oral hearing. The Court should always refuse such submission or document. The only exception is if the Court would specifically ask for it (and of course give the other party the opportunity to comment). This falls under the category of parties contacting a judge by phone without participation of the other party. Also judges should never call a party without the other party participating to the call and a party who is nevertheless called by the judge should make sure he asks the judge to have the other party participating. We are in the UPC and it is irrelevant if such practices are allowed in national systems.
1 July 2025
Court of Appeal, Easee v Visibly
UPC_CoA_542/2025; UPC_CoA_526/2025
Stay of proceedings