UPC_CoA_237/2025;UPC_CoA_328/2025;UPC_CoA_5/2025 – Juul v NJOY

Expert Commentary

Return of court fees and legal costs Facts 1. The Paris Central Division revoked Juul’s patent. 2. Juul appealed. The Court of Appeal stayed the proceedings pending the outcome of the opposition proceedings pending before the Board of appeal (BoA) of the EPO. The Opposition Division (OD) had already revoked the patent. 3. The Board of Appeal of the EPO confirmed the decision of the OD. 4. NJOY requested the Court of Appeal to dismiss the appeal as there was no need to adjudicate (R. 360 RoP) while Juul applied for permission to withdraw the appeal (R. 265 RoP), to which NJOY consented. 5. Having found an agreement on reimbursable costs in first instance, the parties asked the Court of Appeal to rule only on the recoverable costs for the appeal. The Court of Appeal 1. R. 265 RoP is also applicable on appeal. Accordingly, as Juul had consented to the withdrawal of the appeal, this is accepted. 2. The new refund provisions (50% - instead of 60% - in case of withdrawal before the end of the written proceedings) are only applicable to cases started after 31 December 2025. 3. Juul argued that NJOY should bear the costs of the appeal because no infringement claim was ever brought against it and the revocation was unnecessary as they could just have awaited the outcome of the ongoing opposition. NJOY started the proceedings 6 months after the OD had already issued its preliminary opinion that the patent was invalid. 4. This line of argument fails. In principle, the party who withdraws an appeal has to pay the costs, being considered as the unsuccessful party. An exception is if the patentee has not given cause to start the action and, immediately after the start of revocation proceedings, not only surrenders the patent but also files a request for revocation with the EPO and timely pays the corresponding fee. 5. The Court orders: a. Juul to pay the recoverable costs incurred by NJOY on appeal; b. the return of 60% of the court fees paid by Juul. Comment 1. As a patentee, if you want to avoid the costs of a revocation action, you have to surrender your patent immediately (see above under 4). 2. On the other hand, if you want a patent revoked but also want to get your legal costs back even in case the patentee immediately surrenders its patent, it is advisable to send the patentee first a letter setting out the reasons why their patent is considered invalid and invite them to surrender their patent within f.i. four weeks. 3. The court fees have been revised but the revision only applies to new cases started in 2026. Personally, I am not in favor or returning fees as I have said before. Going from 60% to 50% is already a small step in the right direction. If the same step is taken every three years, I will achieve my goal in 15 years, which is not so long considering, as it took 65 years to get from the first proposal for a European patent court to the UPC!

Full Decision Text

UPC Court of Appeal Unified Patent Court UPCCoA237/2025 Einheitliches Patentgericht Juridiction unifiée du brevet Decision of the Court of Appeal of the Unified Patent Court issued on 9 January 2026 regarding an application to withdraw the appeal pursuant to R. 265 RoP and an Application for reimbursement of Court fees (R. 370.9 RoP) HEADNOTE R. 370.9 (b) RoP has been amended from 1 January 2026, providing for reimbursement of court fees with 50 % in case of the withdrawal of an action before the closure of the written procedure instead of, as previously, 60 %. The entry into force provides that amendments shall enter into force on 1 January 2026. The amendments apply only to those actions and applications filed after 31 December 2025. KEYWORDS Court fees, reimbursement APPELLANT (AND DEFENDANT BEFORE THE COURT OF FIRST INSTANCE) Juul Labs International, Inc., San Francisco, USA (hereinafter ‘Juul Labs‘) represented by European Patent Attorney Bernhard Thum, Thum & Partner, Munich, Germany, and by representatives from Bardehle Pagenberg, Munich, Germany RESPONDENT (AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE) NJOY Netherlands B.V., Amsterdam, The Netherlands (hereinafter ‘NJOY‘) represented by attorney‐at‐law Dr. Henrik Holzapfel, McDermott Will & Schulte, Düsseldorf, Germany PATENT AT ISSUE EP 3 430 921 PANEL AND DECIDING JUDGES Panel 2 Rian Kalden, presiding judge and legally qualified judge Ingeborg Simonsson, legally qualified judge and judge‐rapporteur Patricia Rombach, legally qualified judge Wiem Samoud, technically qualified judge Andrea Scilletta, technically qualified judge IMPUGNED DECISION OF THE COURT OF FIRST INSTANCE Central Division Paris, 17 January 2025, revocation action UPCCFI316/2023 LANGUAGE OF THE PROCEEDINGS English SUMMARY OF FACTS AND PARTIES’ REQUESTS 1. NJOY brought an action for revocation of the patent at issue against Juul Labs before the Central Division Paris. The Central Division revoked the patent at issue with effect for the territories of Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden and ordered Juul Labs to bear the costs of the proceedings. 2. Juul Labs appealed. The Court of Appeal ordered a stay of the revocation proceedings before the UPC until the rendering of the final decision in the parallel proceedings, where the Opposition Division of the EPO had revoked the patent at issue on 10 September 2024, a decision which Juul Labs had appealed. On 20 October 2025 the Boards of Appeal of the EPO dismissed the appeal. 3. In view of this, NJOY lodged an application with the Court pursuant to R. 360 RoP. NJOY requested that the appeal be dismissed, and in the alternative, that the revocation action be disposed of by way of order. In addition, NJOY requested that Juul Labs be ordered to bear the costs of the proceedings. 4. Juul Labs in turn lodged an application pursuant to R. 265 RoP and is requesting the Court to permit the withdrawal of its appeal. In the alternative, Juul Labs requests the revocation action to be disposed by way of order according to R. 360 RoP. If the withdrawal request is permitted by the Court, Juul Labs requests a partial refund of the appeal fee. Additionally, Juul Labs requests that NJOY be ordered to bear the costs of the proceedings. Juul Labs sets forth that NJOY initiated the revocation action without any provocation or legitimate cause, well aware of the pending and parallel EPO opposition proceedings. 5. NJOY has replied that it consents to the withdrawal of the appeal. NJOY requests that Juul Labs be ordered to bear the costs of the appeal; in the alternative be ordered to bear the costs of the first instance proceedings and the appeal. 6. The parties have both informed that they have concluded a settlement regarding the recovery of costs from the first instance proceedings so that the decision on costs to be rendered by the Court only relates to the appeal proceedings. REASONS Conditions for permitting the withdrawal 7. As long as there is no final decision in an action, a claimant may apply to withdraw his action. The Court shall decide the application after hearing the other party. The application to withdraw shall not be permitted if the other party has a legitimate interest in the action being decided by the Court (R. 265.1 RoP). 8. This applies also to withdrawals of appeals (CoA, order of 5 July 2024, CoA234/2024, 10x Genomics vs Curio Bioscience, para 9). 9. The application to withdraw the appeal is admissible since there is no final decision in the action in view of the pending appeal, and the Court of Appeal is responsible for deciding on the permissibility of the application for withdrawal (CoA, 15 January 2025, UPCCoA637/2024, UPCCoA638/2024, UPCCoA639/2024, Avago vs Tesla and CoA, 15 January 2025, UPCCoA629/2024, UPCCoA631/2024, and UPCCoA632/2024, Avago Technologies International Sales vs Tesla Germany and Tesla Manufacturing Brandenburg). 10. In view of NJOYs’ consent, it cannot be considered to have a legitimate interest in the actions being decided by the Court, and the application to withdraw the appeal can be permitted. Reimbursement of Court fees 11. In the event of the withdrawal of the action (R. 265 RoP), the party obliged to pay the Court fees shall receive a refund of 60 % in accordance with R. 370.9(b)(i) RoP if the action is withdrawn before the written proceedings have been concluded. R. 370.9 (b) RoP has been amended from 1 January 2026, providing for reimbursement of court fees with 50 % in case of the withdrawal of an action before the closure of the written procedure. The entry into force provides that amendments shall enter into force on 1 January 2026. The amendments apply only to those actions and applications filed after 31 December 2025 (see page 4 of the AdminComm Amendment of the table of court fees and other related changes to the Rules of Procedure and Guidelines). In this case, the application was filed before this date, which makes the previous rule applicable. Reimbursement is to be ordered in accordance with this provision. Cost decision 12. Juul Labs’ request that NJOY shall be ordered to bear the costs of the appeal proceedings is unsuccessful. 13. According to Juul Labs, NJOY started a revocation action which was without merit from the beginning, but also objectively unnecessary. Juul Labs never made any infringement allegations against NJOY, and NJOY could have awaited the outcome of the pending EPO opposition proceedings and, in the event that an infringement action was brought, joined those EPO opposition proceedings accordingly. Those proceedings were already in an advanced stage at the time NJOY lodged its revocation action on 11 September 2023, six months after the Opposition Division had issued its preliminary opinion. NJOY was fully able to monitor those proceedings through the EPO’s online file inspection system, and based its revocation action on the same grounds that, according to the preliminary opinion, would either a) lead to a retroactive revocation of the patent in suit or b) render its own attacks baseless. 14. This line of argument fails. As a general rule, in case of a withdrawal of an appeal, the appellant shall be considered to be the unsuccessful party who shall bear the costs (as referred to in R.151(d) RoP) incurred in relation to the appeal proceedings (10x Genomics vs Curio Bioscience, para 13). 15. An exception to the general rule of Art. 69 (1) UPCA that the unsuccessful party must bear the reasonable and proportionate legal costs and other expenses incurred by the successful party may apply if a claimant files a revocation action without the patent holder having given rise to the action and the patent holder surrenders the patent immediately at the beginning of the proceedings. For this rule to apply, it is generally necessary that within the time limit for filing a defence to revocation the patent not only holder surrenders the patent but within the same time period also files a request for revocation of the patent pursuant to Art. 105a EPC with the European Patent Office and pays the required fee within that time period (CoA, order of 26 March 2025, Stäubli Tec vs Respondents, UPCCoA‐290/2024). 16. This exception does not apply. Juul Labs defended its patent in the first instance proceedings. There is furthermore no reason to extend the case‐law to a situation such as the present one. 17. Juul Labs, being the unsuccessful party, shall be ordered to bear the costs for the appeal proceedings. DECISION I. The Court of Appeal permits the withdrawal of the appeal 237/2025 and declares the proceedings closed. II. Juul Labs is ordered to bear the reasonable and proportionate legal costs and other expenses incurred by NJOY for the appeal proceedings. III. The Court of Appeal orders that 60 % of the appeal Court fees be refunded to Juul Labs. Issued on 9 January 2026 Rian Kalden, legally qualified judge and presiding judge Ingeborg Simonsson, legally qualified judge and judge‐rapporteur Judges Patricia Rombach, legally qualified judge Wiem Samoud, technically qualified judge Andrea Scilletta, technically qualified judge

Key Holdings

• New refund provisions (50% instead of 60%) apply only to cases started after 31 December 2025.
• R. 265 RoP (withdrawal) is applicable on appeal, and withdrawal was accepted with consent.
• The party withdrawing an appeal generally pays the costs, being considered the unsuccessful party.
• To avoid costs of a revocation action, a patentee must immediately surrender the patent and file a corresponding EPO revocation request.

Tags

• Appeal
• Costs
• Court Fees
• Withdrawal

Related Cases

• UPC_CoA_523/2024 – Docket Navigator v Sumi Agro and Syngenta
• UPC_CoA_917/2025 – Merz v Viatris
• UPC_CoA_891/2025 – Centripetal v Palo Alto Networks
• UPC-COA-0000894/2025 – Windhager Handelsgesellschaft m.b.H. v bellissa HAAS GmbH
• UPC_CoA_012/2026 – Amazon v Interdigital