Central Division
Paris Seat
ORDER
of the Court of First Instance of the Unified Patent Court
Central division (Paris seat)
issued on 31 March 2025
concerning the generic procedural applications Nos. App_3752/2025
and 3753/2025
UPC_CFI_412/2023
HEADNOTES: 1. The circumstances contemplated by Rule 356 ‘RoP’ (clerical mistakes, errors in
calculation, obvious slips) all consist of a discrepancy between the judge’s intended decision and its
material representation, provided that this can be deduced from a comparison between the part
affected by the error and the considerations contained in the reasoning. These kinds of errors are
the ones that do not concern the identification and evaluation of the relevant elements of the case
and the subsequent formation of the judgment, but rather the external expression of the judgment
itself.
2. The application to set aside the decision by default constitutes an internal procedural remedy and,
as such, is not suitable for giving rise to a decision on the merits and, therefore, does not require a
decision on the obligation to bear the associated costs. Consequently, the costs incurred by the
successful party in this step can be claimed and assessed within the proceedings for a cost decision
related to the main proceedings which concluded with the decision by default.
KEYWORDS: rectification of decisions and orders; decision by default; procedure for cost decision.
APPLICANT:
Bayerische Motoren Werke Aktiengesellschaft - Petuelring 130, 80809 München, Germany
represented by Johannes Lang, Bardehle Pagenberg Partnerschaft mbB
RESPONDENT:
ITCiCo Spain S.L. - C/Pau Piferrer 17, 07011, Palma de Mallorca, Spain
represented by Robin Hayes, Whitney Moore LLP
PATENT AT ISSUE:
European patent n° EP 2 796 333
PANEL:
Panel 2:
Paolo Catallozzi Presiding judge and judge-rapporteur
Tatyana Zhilova Legally qualified judge
Dörte Otten-Dünnweber Technically qualified judge
DECIDING JUDGE:
This order has been issued by the panel.
SUMMARY OF FACTS AND PARTIES’ REQUESTS:
1. On 24 January 2025 the applicant filed an application requesting to rectify the order of 9 January
2025 (no. ORD_58414/2024) to supplement it by ordering that the defendant also bears the
costs of the proceedings for the application to set aside the Court’s decision by default. In the
alternative, the applicant requested the Court to order by way of separate order that the
defendant also bears the costs of the proceedings for the application to set aside the Court’s
decision by default and, in the further alternative, to confirm by way of separate order that the
decision in principle on the obligation to bear the legal costs of the Court’s decision by default
extends also to the costs of the proceedings for the application to set aside that decision.
2. Despite a request to do so, the respondent did not file any written comment.
GROUNDS FOR THE ORDER
Rectification of decisions and order and lack of assessment of the obligation to bear costs of the
proceedings.
3. On 16 September 2024 this panel issued a decision by default (no. ORD_51965/2024) upon the
request of the applicant in the revocation action concerning the patent at issue, registered as
No. ACT_585518/2023 UPC_CFI_412/2023, and revoked the patent in its entirety with regard to
the territories of the Contracting Member States for which it had effect at the date of the filing
of the revocation action. Hence, the panel ordered that the costs of the proceedings shall be
borne by the defendant.
4. The respondent filed an application pursuant to Rule 356 of the Rules of Procedure (‘RoP’)
requesting the Court to set aside the decision by default. This application was dismissed by order
issued by the panel on 9 January 2025 (no. ORD_58414/2024), which contains no provision
regarding the obligation to bear the legal costs associated with the examined application.
5. The applicant argues that the absence of the decision in principle on the obligation to bear the
legal costs “seems to be an obvious slip in the order” as Article 69 (1) of the Unified Patent Court
Agreement provides that the unsuccessful party is ordered to bear the legal costs and the
corresponding request was filed by the party.
6. Pursuant to Rule 353 ‘RoP’ the Court may, by way of order, rectify clerical mistakes, errors in
calculation and obvious slips in the decision or order. According to this panel the circumstances
contemplated by Rule 353 ‘RoP’ (clerical mistakes, errors in calculation, obvious slips) all consist
of a discrepancy between the judge’s intended decision and its material representation and this
discrepancy must be deduced from a comparison between the part affected by the error and the
considerations contained in the reasoning, from which it can be inferred that the error is due to
an oversight or a lack of attention.
7. These kinds of errors are the ones that do not concern the identification and evaluation of the
relevant elements of the case and the subsequent formation of the judgment, but rather the
external expression of the judgment itself. As such, they can be rectified through an
administrative-type intervention that restores the correspondence between what the judgment
intended to declare and what it formally declared.
8. It follows that an error subject to rectification is solely that consisting of a mere oversight by the
judge which has resulted in the non-expression or inaccurate expression of a judgment that was,
however, already formed and can be inferred from the context of the ruling. Errors that
constitute the expression of a lacking or at least deficient judgment do not fall into this category.
9. Hence, errors which occur when the obligation to bear legal costs is not addressed in the
operative part of the decision cannot be considered as clerical errors – and as such, rectifiable
pursuant to Rule 353 ‘RoP’ – where no useful elements for its assessment can be gleaned even
from the reasoning.
10. Indeed, the rectification of decisions or order is possible only in cases where there is no logical
inconsistency between the reasoning and the operative part of the decision and not where an
interpretative activity of the actual decision would be necessary.
Application to set aside a decision by default and costs of the proceedings.
11. It may be added that in the Unified Patent Court's procedural system, the cost allocation occurs
upon the decision on the merits and, if applicable, a decision for the determination of damages,
which identifies the party or the parties liable for such costs [see Rule 118 (5) ‘RoP’]. For these
purposes, a “decision on the merits” must be understood as a decision that concludes litigation
proceedings, that is proceedings where the ascertainment of a right is sought by one party
against another and is capable of producing the effects of res judicata on conflicting subjective
positions and from which a situation of the defeat of one party with respect to another may
arise, justifying the award of costs (see Paris CD, order issued on 8 January 2025,
UPC_CFI_189/2024).
12. Rule 356 (1) ‘RoP’ allows the defaulting party to lodge an application to set aside the decision by
default. This application constitutes an internal procedural remedy – also referred to as an
objection by Article 37 of the Statute of the Unified Patent Court – available to the party against
whom a decision by default has been issued, allowing them to prevent it from becoming final
and concluding the proceedings at first instance. This is achieved by asserting the reasons
justifying the failure and, consequently, demonstrating the absence of the prerequisites for the
decision by default.
13. As an internal proceeding of the main proceedings, it is not suitable for giving rise to a decision
on the merits and, as such, does not require a decision on the obligation to bear the associated
costs. The fact that this phase occurs after the issuing of a decision on the merits is irrelevant for
this purpose, as it does not constitute an autonomous proceeding but rather serves the sole
function of stabilizing and rendering final the first-instance decision. It follows that the costs
incurred by the successful party in this step can be claimed and assessed within the proceedings
for a cost decision related to the main proceedings which concluded with the decision on the
merits, namely the decision by default.
ORDER
The panel,
having regard to Rules 150 and 356 ‘RoP’,
rejects the application filed by Bayerische Motoren Werke Aktiengesellschaft on 24 January 2025.
Issued on 31 March 2025.
The Presiding judge and judge-rapporteur
Paolo Catallozzi
The legally qualified judge
Tatyana Zhilova
The technically qualified judge
Dörte Otten-Dünnweber
Tatyana
Zhilova
Signature
numérique de
Tatyana Zhilova
Date : 2025.04.01
17:52:16 +02'00'
Dörte Dr.
Otten-
Dünnweber
Digital
unterschrieben von
Dörte Dr. Otten-
Dünnweber
Datum: 2025.04.01
22:08:08 +02'00'
Paolo
Catallozzi
Firmato digitalmente
da Paolo Catallozzi
Data: 2025.04.02
09:05:05 +02'00'
ORDER DETAILS
Order no. ORD_15677/2025 in ACTION NUMBER: ACT_585518/2023
UPC number: UPC_CFI_412/2023
Action type: Revocation Action
Related proceeding no. Application No.: 3752/2025
Application Type: Generic procedural Application