Rule 295 – Stay of proceedings

The Court may stay proceedings:

(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly;

(b) where it is seized of an action relating to a supplementary protection certificate which is also the subject of proceedings before a national court or authority;

(c) where an appeal is brought before the Court of Appeal against a decision or order of the Court of First Instance:

(i) disposing of the substantive issues in part only;

(ii) disposing of an admissibility issue or a Preliminary objection;

(d) at the joint request of the parties;

(e) pursuant to Rule 37;

(f) pursuant to Rules 75 and 76;

(g) pursuant to Rule 118;

(h) pursuant to Rule 136;

(i) pursuant to Rule 266;

(j) pursuant to Rules 310 and 311;

(k) pursuant to Rule 346;

(l) to give effect to Union law, in particular the provisions of Regulation (EU) No 1215/2012 and the Lugano Convention;

(m) in any other case where the proper administration of justice so requires.

Case Law

IPPT20240425, UPC CFI, CD Paris, Toyota v Neo Wireless
Request to stay the proceedings rejected (Rule 295 RoP). Neither the fact that a Preliminary Objection has been lodged nor the likelihood of success of the appeal against the rejection of the Preliminary Objection are relevant factors for deciding whether the proceedings should be stayed. No rapid decision is expected from the EPO (Article 33(10) UPCA, Rule 295(a) RoP). In the current case, the date for the EPO opposition hearings has not even been set and is still unclear when the EPO will issue a decision. Claimant’s interest to continue the proceedings outweighs Defendant’s interest to stay the proceedings: (a) Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing this revocation action; (b) The balancing of interests also strikes in favour of plaintiff because the patent expires on 27 January 2025; (c) The fact that there is a danger of differing results between the UPCA proceedings and in the EPO proceedings does not lead to a different result.

IPPT20240108, UPC CFI, CD Paris, Carrier v BITZER Electronics
Rejected stay of revocation proceeding pending opposition proceedings before EPO (Rule 295(1)(a) RoP, Article 33 (10) UPCA). Requirement of “rapid decision” not fulfilled in the absence of a concrete expectation for a EPO decision in the near future evaluated together with the expected date of the current proceedings, that can be estimated in approximately one year since the lodging of the claim.

IPPT20231120, UPC CFI, CD Munich, Astellas v Healios

Revocation action currently not stayed because of rapid decision expected from the EPO, but continued at least until the interim conference which is to be held on 14 March 2024 (article 33(10) UPCA, Rule 295(a) RoP)). The Court finds that the Claimant has credibly established that it has a legitimate interest in pursuing this revocation action with the aim of obtaining (at least some degree of) commercial certainty in view of the Patent. Rapid decision expected from the EPO requires that there should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. Decision not limited to final decisions of the EPO.

IPPT20231113, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences

Preliminary objection concerning the competence of the Central Division because of a pending action before the Munich Local Division rejected: Meril Italiy is not the same party a Meril India or Meril Germany (article 33(4)UPCA, Rule 20 RoP). Risk that two divisions of the Court would decide on the same issue and that competitors would have two (or more) ‘shots’ at the same patent limited because local division discretionary power to refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement or with the agreement of the parties (article 33(3) UPCA). Moreover, the general tool offered by Rule 295(m) RoP may come at hand also in such a situation, pushing one of the Divisions to wait for the decision of the other Division and then decide accordingly on the validity issue.