Rule 295 – Stay of proceedings
Print this pageThe 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
Court of Appeal
IPPT20241121, UPC CoA, Meril v Edwards
Court of First Instance erred in refusing to grant the requested stay solely on the basis of its finding that a final decision in the opposition proceedings could not be expected rapidly (Art. 33(10) UPCA, R. 295(a) RoP). Stays on the ground of parallel EPO opposition proceedings are governed by the more specific provisions of Art. 33(10) UPCA, R. 295(a), R. 295(g) and 118.2(b) RoP. This case therefore does not qualify as an “other case” within the meaning of R. 295(m) RoP. Discretion to stay infringement proceedings in case of parallel EPO opposition proceedings (Art. 33(10) UPCA, R. 295(a) RoP). Only required that it can be expected that a decision of the EPO may be expected rapidly, not a final decision. The Court has a discretionary power to stay, depending on the balance of interests of the parties and the specific circumstances of the case, such as the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked in the opposition proceedings.
IPPT20240621, UPC CoA, Mala v Nokia
Reasoned request to stay proceedings must be in statement of appeal and lack thereof cannot be remedied at the interim conference (Rule 21.2 RoP). 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.
IPPT20240528, UPC CoA, Carrier v BITZER Electronics
No stay of revocation proceedings pending EPO opposition, appeal rejected. (Article 33(10) UPCA; Rule 295(a) RoP). Oral proceedings in the opposition is 25 October 202; scheduled date for the oral hearing in the revocation proceedings before the UPC is 21 June 2024. As a general principle, the Court will not stay proceedings. The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings. The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC.
Court of First Instance
IPPT20250115, UPC CFI, LD Milan, Dainese v Alpinestars
Instead of staying the proceedings, the deadline for the statement of defence and any counterclaims is extended to 27.2.2025 (R. 9 RoP, R. 295 RoP) because of oral hearing in the EPO appeals proceedings scheduled for 13 February 2025: allows for a more overall procedural efficiency, on one hand not staying this proceedings – in the power of the Court - and on the other hand waiting for the upcoming EPO’s decision. Possibility of further exchange of written pleadings (R. 36 RoP)
IPPT20250113, UPC CFI, LD Munich, 10x Genomics v Nanostring
Proceedings have been stayed as agreed by the parties until the date of the decision of the Opposition Division of the EPO (R. 295 RoP).
IPPT20250107, UPC CFI, LD Munich, Dyson v SharkNinja
Proceedings suspended at joint request of the parties (R. 295.d RoP)
IPPT20241211, UPC CFI, RD Nordic-Baltic, Edwards v Meril
No stay of proceedings (oral hearing at 16 January 2024) because of rapidly expected decision of EPO Opposition Division (17 January 2024) (Art. 33(10) UPCA, R. 295(a) RoP).It can be expected that the outcome of the opposition proceedings will be available before this Court issues its decision on the merits (even if the Court proceeds as planned with the oral hearing on 16 January 2025). Furthermore, it can reasonably be assumed that the future decision by the EPO Opposition Division will be subject to an appeal.
IPPT20241203, UPC CFI, CD Milan, Pfizer v GlaxoSmithKline
No stay of revocation action until final decision on Preliminary objection (R. 295 RoP). The question of the validity of the patent will have to be dealt with in the infringement action, so there is no disadvantage for the defendant to proceed with this revocation action.
IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO - II
Defendants unilateral request of 21 November to stay decision of 22 November rejected (R. 295(m) RoP).The defendants cannot invoke the requirement of the proper administration of justice […]. Rather, they have left the court in the dark, so to speak ‘until the last second’, as to whether a decision should be made or not
IPPT20241104, UPC CFI, LD Milan, Oerlikon v Bhagat
Patent infringement uncontested. No basis for staying the action for infringement because of pending revocation proceedings, where the defendant has not contested the validity of the patent nor the infringement (R. 295 RoP, R. 171(2) RoP).
IPPT20241029, UPC CFI, LD Düsseldorf, Dolby v HP
Suspension of the proceedings upon joint request of the parties (R. 295 RoP). The oral proceedings scheduled for 17 June 2025 (and, if necessary, 18 June 2025) shall be cancelled.
IPPT20241017, UPC CFI, CD Munich, Nanostring v Harvard
Court to examine its international jurisdiction of its own motion. The Court will not stay the related revocation action (Article 30 Brussel I recast, R. 295m RoP). The reasons listed, the interests of the parties and procedural economy outweigh the risk that UPC CoA and BGH proceedings may become pending in parallel (and the related risk of contradictory decisions).
IPPT20240925, UPC CFI, LD Düsseldorf, Sonic v Lenovo & Motorola
Stay of proceedings at joint request of the parties, with effect from 25 September 2024 until 15 November 2024 (R 295 RoP).
IPPT20240909, UPC CFI, LD Hamburg, Roche Diabetes v Tandem Diabetes
Request to stay infringement proceedings dismissed (R. 295 RoP). There is currently no reason to suspend the infringement proceedings, even though the interim hearing on the revocation action will take place on 11 September 2024 and the oral hearing on 6 November 2024. The outcome of the proceeding is uncertain in terms of time - it is not possible to predict when the Central Division Paris will issue a written decision - and the substantive outcome. Regardless of this, the decision would not bind the Local Division. In addition to this, the parties to the action for revocation are not identical to those of the infringement action and the counterclaim of revocation, so that a uniform decision affecting all parties cannot be issued in this respect either. The Defendant’s interest to (potentially) save litigation costs does not weigh up to the legitimate interest of Claimant in pursuing the infringement action.
IPPT20240906, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Order after interim conference (Rule 105.5 RoP). Request for stay and dismissal to be argued amd decided at oral hearing (Rule 295 RoP). Panel decided on 5 September 2024 that the oral hearing is not re-scheduled and that the question of a stay is to be argued and decided at the oral hearing. Requests to hear parties’ experts or appoint a court expert refused.
IPPT20240906, UPC CFI, LD Düsseldorf, Novartis v Celltrion
No stay of provisional measures proceedings pursuant to Rule 295 RoP. R. 295 RoP refers unambiguously to actions and is therefore not applicable to applications for provisional measures.
IPPT20240821, UPC CFI, CD Paris, Kinexon v Ballinno
Generally unjustified to stay revocation proceedings because of appeal against the denial of provisional measures (Rule 295(m) RoP). If the lodging of an appeal would suffice for a stay of proceedings, a party lodging an appeal against a decision rejecting provisional measures would have it in its hands to influence and alter the tight timeframe as provided for by the UPCA. Such a stay for an unpredictable time would be at odds with the aforementioned guideline of an oral hearing within one year and clashes with the Respondent’s legitimate interest in obtaining a decision by the UPC to determine its freedom to operate as soon as possible.
IPPT20240820, UPC CFI, RD Nordic-Baltic, Edwards v Meril - I
No stay of proceedings because a final decision in EPO opposition cannot be expected rapidly; notice of opposition filed on 7 March 2024 (Article 33(10) UPCA, Rule 295(a) RoP). Stay of proceedings because of pending EPO opposition is during the written procedure governed by Article 33(10) UPCA and Rule 295(a) RoP (containing the option to stay). Rule 118 RoP (containing an option to stay as well as an obligation to stay) only applies to the oral procedure. Although the general provision of Rule 295(a) RoP may in theory apply in certain situations where an EPO opposition is pending, Article 33(10) UPCA and Rule 295(a) RoP contain the more specific provisions. Stay of proceedings based on Article 33(3) UPCA in case of a counterclaim for revocation may be dismissed if bifurcation has not been proposed
IPPT20240729, UPC CFI, LD Munich, Amgen v Sanofi-Aventis
Infringement proceedings stayed at unanimous party request, pending appeal against the decision to revoke the patent in its entirety upon unanimous request of the parties (Rule 37(4) RoP, Rule 295(m) RoP).
IPPT20240724, UPC CFI, LD Paris, Seoul Viosys v Laser Components
Application to stay infringement proceedings pending a decision of the Paris Central Division in the revocation procedure rejected as unjustified (Article 33(4) UPCA, Rule 118(2)(b) RoP, Rule 295 RoP). Only partial identity of the parties, highly likely that the Central Division will not retain jurisdiction, state of the respective proceedings before the two divisions. The concept of "same parties", to be interprtetated by analogy with the rules of jurisdiction under the Brussels Regulation I bis Regulation
IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP).
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.
