Rule 223 – Application for suspensive effect

1. A party may lodge an Application for suspensive effect, in accordance with Article 74 of the Agreement.

2. The Application for suspensive effect shall set out:

(a) the reasons why the lodging of the appeal shall have suspensive effect;

(b) the facts, evidence and arguments relied on.

3. The Court of Appeal shall decide the Application without delay.

4. In cases of extreme urgency the applicant may apply at any time without formality for an order for suspensive effect to the standing judge [Rule 345.5 and .8]. The standing judge shall have all the powers of the Court of Appeal and shall decide the procedure to be followed on the application, which may include a subsequent written Application.

5. There shall be no suspensive effect for an appeal of an order pursuant to Rule 220.2, Rule 220.3 or 221.3.

Relation with Agreement: Article 74

Case Law

Court of Appeal

IPPT20211217, UPC CoA, Curio v 10x
Application to the standing judge for suspensive effect of an appeal because of extreme urgency (R. 223.4 RoP) rejected regarding an order to the defendant to provide € 200.000 security for legal costs of the claimant (R. 158 RoP, Art. 69(4) UPCA). Within the discretion of the standing judge to dismiss the application without hearing the respondent. Extreme urgency under R 223.4 RoP is clearly distinct from, and does not require the impugned order to be “manifestly wrong”, but the Court is not convinced that the CFI was manifestly wrong and whether the CFI has given a correct interpretation of R 158 RoP regarding Art. 69(4) UPCA will have to be decided by the Court of Appeal at the end of the appeal proceedings.

IPPT20241211, UPC CoA, Magna v Valeo
Suspension of provisional injunction to cover PI carveout for BMW supplies. The effect of the impugned order suspended insofar as the injunction covers the BMW 2 Series Gran Coupé car model (Article 74 UPCA, R. 223 RoP). From the Statements lodged by Magna it was therefore already clear that there were six car models already on the market or soon to be introduced on the market that were fitted with the attacked embodiment. The Court at First Instance could and should have deducted from the above mentioned documents – and if uncertain in the alternative should have asked Magna at the hearing which models should be included if such a list with exempted car models was going to be drawn up, and would thus have learned – that also the 2-series Grand Coupé should be on that list. It was obviously wrong not to correct the impugned order by adding the 2-series Grand Coupé to the list of exempted cars.  

IPPT20241121, UPC CoA, Magna v Valeo
The effect of the impugned order is suspended (Article 74 UPCA, R. 223 RoP). On the basis of Magna’s submissions, the Standing Judge of the Court of Appeal considers that Magna’s interest in maintaining the status quo exceptionally outweighs Valeo’s interest in the immediate enforcement.

IPPT20241114, UPC CoA, Magna v Valeo
The effect of the impugned order is suspended (Article 74 UPCA, R. 223 RoP) until the Court of First instance has decided on the request for correction, insofar as the exception to the injunction issued therein does not include the “BMW 2 Series Gran Coupé” model.

IPPT20241029, UPC CoA, Belkin v Philips
Manifest error of law that managing directors of a company are intermediaries within the meaning of Art. 63(1) UPCA solely on the basis of their function as managing directors. A managing director of a patent infringing company represents that company. This company cannot therefore be a ‘third party’ within the meaning of Art. 63 UPCA and Art. 11 of the Directive 2004/48. Suspensive effect of the appeal regarding the enforcement against de defendant’s managing directors (Article 74 UPCA, R. 223.1 RoP). Suspensive effect may be considered in particular if the order against which the appeal is directed is manifestly erroneous or if the enforcement of the contested decision would render the appeal largely redundant. A manifest violation of law exists if the factual findings and legal considerations prove to be unsustainable in the summary examination to be carried out or in case of violation of fundamental procedural rights such as the right to a fair hearing.  A request for suspensive effect must by itself, enable the Court of Appeal to decide, if necessary without further information  (R. 223.1 RoP). References to written submissions and documents in the first-instance case file are admissible, provided that these are identified in a sufficiently specific manner. 

IPPT20240819, UPC CoA, Sibio v Abbott
Manifestly erroneous that Ireland is a Contracting Member State of the UPC (Article 84.2 UPCA) and  thus cannot be considered to be covered by Abbott’s request for a preliminary injunction. The Court of First Instance therefore awarded more than was requested for, which is contrary to Art. 76 UPCA. Suspensive effect granted insofar as the impugned order extends to the territory of Ireland. Application for suspensive effect admissible (Rule 223 RoP, Article 74 UPCA). Not a requirement that a request for suspensive effect is lodged in a separate workflow in the Court’s case management system

IPPT20240726, UPC CoA, OrthoApnea
Request for suspensive effect of appeal, regarding a decision not to extend a time period and to allow amendment of infringement claim with equivalency, admissible but unfounded (Art. 74(1) UPCA, Rule 223 RoP, Rule 263 RoP). Parties submit their statements in the written procedure without knowing how their allegations will be assessed by the Court of First Instance or the Court of Appeal. That entails the risk that part of their allegations will not be relevant for the outcome of the case.

IPPT20240621, UPC CoA, Mala v Nokia
As a general rule, the main proceedings are not stayed pending an appeal because of the principle that proceedings before the Court of First Instance must as far as possible continue unhindered by any (procedural) appeals (Rule 223 RoP, Article 74 UPCA). A stay may be granted under exceptional circumstances, having regard to the relevant circumstances of the case, such as the stage of the revocation proceedings before the Court of First Instance, the stage of the appeal proceedings and the interests of the parties or if the impugned order were manifestly erroneous.

IPPT20240619, UPC CoA, ICPillar v ARM
No suspensive effect given to appeal from order to provide security (Rule 220 and 223 RoP, Article 74 UPCA) and request to expedite appeal rejected (Rule 9(3) RoP). Granting suspensive effect to an order pursuant to R.220.2 RoP, is possible under Article 74 UPCA notwithstanding R.223.5 RoP. Suspensive effect only to be given under exceptional circumstances. An example of such exceptional circumstances would be where the appeal is devoid of purpose or would render the appeal largely ineffective if the impugned order were not given suspensive effect, because the consequences of enforcement of the impugned cannot be effectively reversed if the order is later set aside (see UPC_CoA_407/2023, order of 6 November 2023; UPC_CoA_177/2024, order of 2 May 2024). Other exceptional circumstances that could justify suspensive effect would be where the impugned order is manifestly wrong (See UPC_CoA_2/2024, order of 18 January 2024). No suspensive effect given to appeal from order to provide security for costs. ICPillar not unable to comply with the order, nor would it lead to extreme detriment if it complies. 

IPPT20240502, UPC CoA, PMA v AWM
Suspensive effect given to appeal of restitution order (that that shall take place from 5 June 2024) to ensure that there is time to decide on the appeal before the impugned order is enforced (Article 74 UPCA). No decision on the costs since this order is not a final order or decision concluding an action (Rule 242.1 RoP).

IPPT20240118, UPC CoA, Meril v Edwards Lifesciences
Application to order suspensive effect to appeal of order to bear the (to be assessed) costs of the proceedings up to a maximum of € 200.000 dismissed (article 74 UPCA, Rule 223 (1) RoP). Admissible application: A decision under Rule 360 RoP by which the court has dismissed an action because there is no need to adjudicate on the merits and includes the decision on the costs of the proceedings is to be be regarded as a final decision within the meaning of Rule 220.1(a) RoP and not as a decision within the meaning of Rule 223.5 RoP. Application unfounded: Interest of the plaintiff regarding further costs for cost assessment procedure does not generally outweigh the interest of the successful party within the meaning of Rule 151 RoP in a quick decision on the costs of the proceedings. Suspensive effect also not justified because if there are errors in the appealed order, they are in any case not errors that led to a manifestly erroneous order.

IPPT20231106, UPC CoA, Ocado
Appeal from the order to grant a third party access to documents (Rule 262 RoP) shall have suspensive effect, to ensure that there is time to adjudicate Ocado’s appeal on the merits from the Order to grant a third party access to documents, which will be enforceable on 7 November 2023 and would make the appeal devoid of purpose. (Article 74 UPCA, Rule 223 RoP, Rule 262 RoP) Application ex officio handled as having extreme urgency by the standing judge (Rule 223(4) RoP).

Court of First Instance

IPPT20240729, UPC CFI, LD The Hague, Powell Gilbert v Abbott and Sibio
Public access to the register granted, applying criteria set forth in IPPT20240410, UPC CoA, Ocado v Autostore (Rule 262 RoP). Leave to appeal granted. From R. 220/224 RoP and 73 UPCA it might not be totally clear if and when an appeal of this order can be lodged, while it appears this should at any rate be made possible. To prevent an appeal to become meaningless, a term of 15 days before access is granted is to be observed (and unless no appeal is filed within that period).

IPPT20240408, UPC CFI, LD Milan, PMA v AWM
No access to written report and any other outcome of the measures to inspect premises and to preserve evidence and revocation of the measures to preserve evidence because applicant did not timely start proceedings on the merits (Article 60(9) UPCA, Rule 198 RoP, Rule 9(4) RoP). Restitution of all evidence gathered through the execution of the revoked measures is to take place from 05.06.2024 on, unless the Court of Appeal decides otherwise (Article 74 UPCA, Rule 223 RoP). It is quite clear that an appeal could not be effective if this Court’s order for the return of the evidence gathered were given immediate effect.