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UPC – Bayerische Motoren Werke Aktiengesellschaf v. ITCiCo Spain S.L. – Strict approach to time extension requests

03 Oct 2024

Jennifer McDowell

Pinsent Masons

Bayerische Motoren Werke Aktiengesellschaf v. ITCiCo Spain S.L., UPC Court of First Instance, Paris (FR) Central Division, 16 September 2024, Case no. UPC_CFI_412/2023

The UPC has again taken a strict approach to deadlines, with the Paris Central Division (CD) denying ITCiCo’s request for an extension of time to file a defence and issuing a decision by default revoking the patent in issue. The Court emphasised that expeditious decisions are an aim of the UPC Agreement. The Court ordered costs of 1,000,000 euros to be borne by ITCiCo as the unsuccessful party.

Background of the case
On 6 November 2023, Bayerische Motoren Werke (“BMW”) filed a revocation action against ITCiCo’s European Patent No. 2796333 (‘EP’333). On 25 January 2024, ITCiCo requested an extension of time to file their statement of defence, pleading the absence of the 39 annexes cited in the statement of claim when the claim was served.

The Court ruled that the lack of annexes at the time of service was not relevant, as Rule 271 of the UPC Rules of Procedure (‘RoP’) permits a statement of claim to be served without annexes as long as the claim alone enables the defendant to understand the subject-matter and cause of action, which in this case it did. Furthermore, the Court pointed out that ITCiCo did not argue that the annexes were indispensable for understanding the claim brought against them. As a result, the request for an extension of time was denied and on 2 February 2024, BMW requested a decision by default.

Grounds for decision by default
Under Rule 335 RoP, the Court has a discretion to issue a decision by default where:

(i) the claimant makes the request,

(ii) the defendant fails to take a step within the time limit foreseen in the RoP or set by the Court, or the party which was duly summoned fails to appear at an oral hearing, or the time limit for the defence to the claim has expired and it was established that the service of the claim was effected in sufficient time to enable the defendant to enter a defence, and

(iii) the facts put forward by the claimant justify the remedy sought and the procedural conduct of the defendant does not preclude to give such decision.

The Court concluded that the facts put forward by BMW justified the remedy sought and that the non-defaulting party was entitled to a speedy procedure without delay. As a result, the Court granted BMW’s request for a decision by default.

Revocation decision
The Court went on to examine the patent at issue. EP’333 relates to a speed detection system for a vehicle and to compliance monitoring where the system provides a warning to a vehicle based on the location and current speed.

The panel concluded that the grounds for invalidity raised by BMW against EP’333 and addressed by the panel, namely lack of novelty and/or lack of inventive step based on disclosure in the prior art, were well-founded. As a result, the Court granted the revocation action filed by the claimant and declared EP’333 revoked in its entirety with regard to the territories of the Contracting Member States for which it had effect.

Conclusion
The key take-away from this decision is that the UPC takes a strict approach to time extension requests and is willing to exercise its discretionary powers to issue a decision by default in the interest of expeditious decisions.

The deadline of two months to provide a statement of defence to a revocation action is short. An application for an extension to the time limit needs to be made well in advance of the deadline and a party should include strong evidence supporting their position. In the case of missing annexes, the party would need to show that those annexes were indispensable to understanding the subject-matter and the cause of action of the claim.

The order can be found here.