UPC revokes patent through a decision by default

In a decision issued on 16 September 2024 by the Paris Central Division of the Unified Patent Court (UPC), BMW secured a decision by default against ITCiCo Spain S.L. in a revocation action. The Court’s ruling to revoke ITCiCo’s patent came after ITCiCo failed to meet procedural deadlines and BMW presented strong invalidity arguments.

1. Failure to Submit a Defence on Time

ITCiCo was formally served BMW’s statement of claim on 25 November 2023, according to the Case Management System (CMS), although postal records show the claim was delivered as early as 23 November 2023, giving ITCiCo two extra days. Instead of submitting a defence, ITCiCo requested an extension of time on the last day of the two-month deadline of 25 January 2024. BMW applied on 2 February 2024 to have ITCiCo’s extension request rejected and, at the same time, requested a decision by default.

2. Unsuccessful Extension Request

ITCiCo requested an extension for filing its defence, citing difficulties with the Court’s Case Management System (CMS) and issues with its legal representation. However, the Court rejected this request on 9 February 2024, noting that ITCiCo had provided insufficient evidence to support these claims. ITCiCo also argued that certain appendices/exhibits were missing from the statement of claim, but the Court ruled that the absence of appendices was irrelevant because, under Rule 271, a statement of claim is valid if it allows the defendant to grasp the core issues of the case, even without the exhibits. The appendices were considered evidentiary and not crucial for understanding the case and, therefore, should not have prevented ITCiCo from preparing a defence. The court also noted that requesting an extension only on the due date, especially when it was apparent to ITCiCo that they were not in a position to file their defence, did not comply with the principle of fairness that must guide the procedural activities of the parties.

3. Conditions for a decision by default

A decision by default can be granted under Rule 355 when:

• The defendant fails to take necessary procedural steps within the deadline.
• The claimant requests the decision.
• The claimant’s facts justify the remedy sought.

In this case, ITCiCo failed to act within the time limits. At the same time as requesting the rejection of ITCiCo’s extension request, BMW also argued that the independent claims of ITCiCo’s patent lacked novelty, specifically citing a US prior art that closely resembled the system described in ITCiCo’s patent. The grounds for invalidity, particularly the allegation of lack of novelty, were accepted by the panel. As a result, the Court found that the conditions for a default ruling were met and decided to revoke the patent in its entirety.