- within Transport and Privacy topic(s)
1. Key takeaways
Security for costs under Art. 69(4) UPCA can only be ordered against the applicant who is initiating proceedings. Never in the applicant’s favour.
An “applicant” is defined as the person who initiates legal proceedings by filing an application. This one-directional mechanism ensures that the party brought involuntarily into proceedings is protected against unrecoverable costs.
At first instance, the infringement claimant cannot request that the defendant and counterclaimant provides security for costs (Art. 32(1)(d) UPCA).
A counterclaim for revocation is a direct consequence of the infringement action brought by the claimant. Ordering the defendant and counterclaimant to provide security would unduly prejudice the defendant’s ability to defend itself.
In appeal proceedings, only the respondent may request security for costs, as the appellant is the applicant (Art. 69(4) UPCA).
This applies even where the respondent was the claimant at first instance. Where both parties appeal, each may only request security for costs in respect of the other party’s appeal. The same principle applies in the case of a cross-appeal.
If defendant can demonstrate a manifest error in the CFI decision only defendant may request security for costs in the appeal proceedings, even if claimant also files an appeal.
The correctness of the impugned decision is generally presumed. Only where the appellant demonstrates that the CFI’s factual findings or legal considerations are untenable on summary assessment may the usual rule be reversed, allowing the defendant to seek security for the appeal costs.
Conclusion of infringement proceedings does not render a pending counterclaim for revocation or related cost security requests inadmissible (R. 265.2 RoP).
A counterclaim for revocation has autonomous existence. Under R. 265.2 RoP, second sentence, withdrawal of the main action has no effect on any counterclaim, and this principle extends to ancillary requests such as security for costs in those proceedings.
Once the CFI has issued a cost decision under R. 150 RoP et seq., a request for security for those same costs becomes inadmissible.
Objections to the CFI’s cost order may only be raised through an application for leave to appeal. The security for costs mechanism cannot serve as a parallel means to secure costs already determined and awarded by the CFI.
2. Division
Court of Appeal
3. UPC number
UPC_CoA_21/2026
4. Type of proceedings
Appeal proceedings (applications for security for costs and stay of proceedings)
5. Parties
Appellant: Suinno Mobile & AI Technologies Licensing Oy
vs.
Respondent: Microsoft Corporation
6. Patent(s)
EP 2 671 173
7. Jurisdictions
UPC
8. Body of legislation / Rules
Art. 69(4) UPCA, Art. 32(1)(d) UPCA, Art. 41(3) UPCA, Art. 42 UPCA, Art. 52(1) UPCA, R. 9.3(a) RoP, R. 150 RoP, R. 158 RoP, R. 265.2 RoP, R. 295(m) RoP, R. 311 RoP, R. 355 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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