UPC_CFI_1738/2025 – Schnell v Progress

Court
Local Division Milan
Date
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Cost decision Facts 1. Application for costs by Schnell on 28 November 2025. 2. Answer of Progress on 11 December 2025: a. we have appealed the decision on the merits; b. appeal of a revocation decision has suspensive effect (Art. 74(2) UPCA); c. this means that request is untimely; d. application for costs has to be dismissed or alternatively stayed. The JR 1. Schnell’s argument that the suspensive effect only affects the decision as to the revocation of the patent cannot be accepted as this is an arbitrary limitation by the provision’s wording (“an appeal against a decision on actions or counterclaims for revocation (…) shall always have suspensive effect”). 2. JR disagrees with the Local Division Paris (cf. Decision of 29 April 2025, Roche v. Tandem, UPC_CFI_831/2025) on cost proceedings being independent from the appeal proceedings against the first instance decision on the merits. 3. Filing for costs was not untimely because it was done before Progress appealed. 4. JR decides to stay the cost proceedings. Comment 1. Two contradictory decisions of Local Divisions. 2. In my opinion, the decision of the JR is based on a too (and unnecessarily) literal reading of Art. 74(2) UPCA. 3. There is no reason for a different outcome on an application for costs in infringement proceedings and in revocation proceedings. 4. This would also lead to a situation in which the party who is successful in defending its patent in the counterclaim for revocation but unsuccessful in its claim for infringement, would have to pay costs for the infringement case while its claim for costs in the revocation case would be suspended. 5. Moreover, as the JR recognized, it leads to complicated situations due to the 1 month term for an application for costs and the 3 month term for an appeal. The cost procedure may be underway and then interrupted by an appeal. 6. It is very clear that suspensive effect is due to the nature of the revocation of a patent (a declaration of right) while in general all other decisions in the UPC are immediately enforceable. Conclusion: Gold medal for Local Division Paris but the ultimate decision is for the Court of Appeal!

Full Decision Text

COURT OF FIRST INSTANCE MILAN LOCAL DIVISION UPC CFI no. 1738/2025 ORDER delivered on 10.2.2026 APPLICANTS 1) AWM s.r.l. - SS. 13 Pontebbana, Km. 146 33010 Magnano in Riviera (UD), Italy 2) Schnell s.p.a. - via Sandro Rupoli, 2, zona Ind. San Liberio 61036 Colli al Metauro (PU), Italy both represented by Cristina Schiavone and Federico Manzella, Manzella & Associati, via dell’Indipendenza 13, 40121, Bologna, Italy, and by Paolo Creta, Elisa Viotto and Francesco Ricotta, Studio Legale Costa-Creta, piazza di Porta Ravegnana 1, Bologna, Italy RESPONDENT Progress Maschinen & Automation AG - Julius‐Durst‐Strasse 100, 39042, Brixen, Italy represented by Markus Gangl and Florian Robl, Patentanwälte Torggler & Hofmann GmbH & Co KG, Wilhelm‐Greil‐Straße 16, 6020 Innsbruck, Austria DECIDING JUDGE This decision has been issued by presiding judge and judge rapporteur Pierluigi Perrotti LANGUAGE OF PROCEEDINGS English SUBJECT-MATTER OF THE PROCEEDINGS Application for a cost decision UPC CFI no. 1738/2025 2 of 4 SUMMARY OF FACTS AND PARTIES’ REQUESTS On 28.11.2025 AWM s.r.l. and Schnell s.p.a. filed an application for cost decision pursuant to R. 150 RoP regarding the infringement action and the counterclaim for revocation UPC CFI no. 178/2024 and no. 432/2024. They requested that the Court ordered Progress to pay to the applicants all the legal and tech- nical costs by them incurred in the first instance proceedings, including also costs for represen- tation in the present proceedings. On 11.12.2025, Progress filed a response to cost request, pointing out that on the same date, 11.12.2025, it had lodged an appeal against the decision of the Court of First Instance. Article 74(2) UPCA provided that an appeal against a decision on a counterclaim for revocation always had suspensive effect. Consequently, the application under R. 150 RoP had been filed by AWM and Schnell in an untimely manner. The respondent therefore requested the Court to dismiss the application for a cost decision or, alternatively, to stay the present proceedings until the appeal between the same parties had been decided. The applicants opposed the request to stay. They pointed out that R. 150 RoP did not require that the first instance decision was final. A previous decision by the Court of First Instance had also already clarified that there was complete independence between the proceedings for deter- mining costs and the appeal proceedings initiated against the first instance decision on the mer- its (see UPC CFI no. 831/2025, CD Paris, 29 April 2025). Furthermore, Art. 74(2) UPCA only applied to the part of the decision that concerns the revo- cation action or the counterclaim for revocation actions and did not involve the part of the decision in which legal costs have been settled. GROUNDS FOR THE ORDER Regarding the effects of an appeal, Article 74(2) UPCA introduces the general rule that “an appeal against a decision on actions or counterclaims for revocation and on actions based on Article 32(1)(i) shall always have suspensive effect” The applicants propose a restrictive interpretation of this provision. According to their interpretation, the automatic suspensive effect provided by law would be limited solely to the provisions of the decision relating strictly to the validity of the patent. This interpretation would exclude any suspensive effect relating to other points of the decision, in- cluding those relating to legal costs. However, this interpretation cannot be accepted, as it introduces an arbitrary limitation not con- templated by the provision’s wording. UPC CFI no. 1738/2025 3 of 4 Art. 74(2) UPCA clearly references appeals against decisions on actions or counterclaims for revocation, without further limitations. Therefore, the filing of an appeal has an automatic sus- pensive effect that applies to the decision in its entirety, including the parts relating to legal costs. In this case, Progress documented that, on December 11, 2025, it filed an appeal against the Court of First Instance decision to uphold applicants’ counterclaim for revocation. The Court of First Instance ordered the revocation of the European patent EP 2726230 B1 in all Contract- ing Member States where the patent was in effect. Progress’ appeal is registered as UPC CoA no. 921/2025 and is still pending. Filing this appeal triggered the suspensive effect provided in Article 74(2) UPCA, which is mandatory and automatic for decisions on counterclaims for revocation. This effect extends to the entire decision, including the point at which the Court of First Instance ruled that Progress, as the unsuccessful party, should pay the legal costs. Currently, the legal basis put forth by AWM and Schnell to support their claim for legal costs is ineffective. These circumstances do not render the request inadmissible due to untimely submission. It is undisputed that Progress had not yet lodged an appeal on the date the application for a cost decision was submitted. Furthermore, R. 150 RoP provides a one-month term for filing an ap- plication for a cost decision, which is clearly shorter than the two-month term set for appealing a decision of first instance. Therefore, the simultaneous pendency of the two proceedings is normal, even in the specific case under consideration, which is characterized by the aforementioned automatic suspensive effect provided for in Art. 74(2) UPCA. Nevertheless, it is possible to reasonably and efficiently coordinate the two proceedings through suspension in this particular situation. In accordance with the general principles of flexibility, fairness, proportionality, and equity, and in application of the provisions of R. 295(c) and (m) RoP, the present proceedings are stayed until the Court of Appeal issues its final decision in proceedings UPC CoA no. 921/2025, or until the appeal proceedings conclude by any means other than a decision on the merits. For the sake of completeness, the Court acknowledges the previous case law cited by the appli- cants (UPC CFI No. 831/2025, CD Paris, 29.4.2025), from which the Court respectfully devi- ates. It should be noted that the aforementioned decision did not consider the applicability of Article 74(2) UPCA at all. Other case law not referred to by the parties is also relevant (see UPC CFI No. 131/2025, LD Brussels, 2.5.2025). In this order, after a thorough review of the current regulations, the Court determined that it was permissible to stay the proceedings for cost determination, even in cases UPC CFI no. 1738/2025 4 of 4 where the automatic and mandatory suspensive effect stipulated in Article 74(2) UPCA does not apply. ORDER The Court stays these proceedings until the judge-rapporteur is notified that the UPC Court of Appeal has issued a judgment on the merits in the appeal proceedings no. 921/2025 or until the same dispute is otherwise terminated. The interested party is ordered to inform the judge-rapporteur of the Court of Appeal’s decision on the merits or of the termination of the dispute by any means other than a decision on the merits issued by the UPC Court of Appeal. Milan, 10 February 2026. Pierluigi Perrotti judge-rapporteur

Key Holdings

  • An appeal against a revocation decision has suspensive effect on cost proceedings related to that decision (Art. 74(2) UPCA).
  • Cost proceedings are not independent from appeal proceedings against the first instance decision on the merits.
  • An application for costs is not untimely if filed before an appeal is lodged.
  • Cost proceedings can be stayed pending an appeal on the merits of the case.
  • There is a conflict between Local Divisions regarding the independence of cost proceedings from appeal proceedings on the merits.

Tags

  • Costs
  • Appeal
  • Suspensive Effect
  • Revocation
  • Procedure

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