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Rule 295: Stay of proceedings

Court of Appeal - Luxembourg (LU), Order dated 30/04/2025, Juul Labs, Inc. (Case/ Registry number: App_20180/2025, ORD_20264/2025)
Example of decision on stay of revocation appeal proceedings pending accelerated EPO opposition outcome: "4. Pursuant to R. 295(a) RoP, and in accordance with Art. 33(10) UPCA, the Court may stay proceedings 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.
5. The terms “rapid decision” and “rapidly” in these provisions must be interpreted inter alia in the light of the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings (CoA, order on 28 May 2024, APL_3507/2024, UPC_CoA_22/2024, Carrier vs Bitzer).
[...] 8. The Boards of Appeal has accelerated their appeal proceedings in view of the UPC proceedings and summoned to oral proceedings for 17 October 2025. The decision without reasons will be announced at the end of the oral proceedings and the written decision with the reasons will be published some time thereafter.
9. In view of this, the decision of the Boards of Appeal can be expected to be issued soon after the possible date for an oral hearing before the Court of Appeal (rapidly). There are no pending infringement proceedings or other circumstances that would balance against a stay. To the contrary, it is Juul Labs – who has a primary interest in a swift decision on appeal – who requested a stay. In addition, NJOY has agreed to the requested stay.
10. Juul Labs’ application to stay the appeal proceedings shall be granted."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 29/04/2025, Roche Diabetes Care GmbH v. Tandem Diabetes Care Europe B.V., Tandem Diabetes Care, Inc. (Case/ Registry number: ACT_831/2025, ORD_20415/2025)
Example of decision on request to stay cost decision proceedings due to pending appeal: "5. That being stated, the Court observes that the mere circumstance of a pending appeal against the decision on the merits does not constitute a sufficient reason to order the stay of the proceedings for cost decision. A different conclusion would imply that the unsuccessful party could unduly obtain a deferral of the order to pay costs simply by lodging an appeal against the decision on the merits, and this does not appear reasonable, leading to an unjustified sacrifice of the successful party’s right to a prompt settlement of costs.
6. Furthermore, the Court observes that the defendants do not allege any risk pertaining to the applicant’s inability to repay the sums received as costs of the proceedings in the event of a reversal by the Court of Appeal of the ruling issued on this point by the Court of First Instance.
7. The defendants highlight that a decision on costs could be overturned by the potential upholding of the appeal on the decision on the merits and that would result in a useless and possibly wrong bank transaction and in extra unnecessary proceedings and Court expenses. This circumstance, in the Court’s view, does not constitute a fact capable of imposing a different assessment of the request for stay, given that the restitution of the sums paid does not entail particularly burdensome activities, especially for the recipient of the reimbursement who is only required to communicate the bank account details, nor, in any case, does it interfere with the administration of justice.
8. It follows that the respondents’ request for stay must be dismissed."

Court of Appeal - Luxembourg (LU), Order dated 28/04/2025, Juul Labs, Inc. (Case/ Registry number: App_14082/2025, ORD_16754/2025)
Example of decision on stay of revocation appeal proceedings in view of imminent EPO opposition outcome: "Pursuant to R. 295(a) RoP, and in accordance with Art. 33(10) UPCA, the Court may stay proceedings 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.
[...] The terms “rapid decision” and “rapidly” in these provisions must be interpreted inter alia in the light of the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings (CoA, order on 28 May 2024, APL_3507/2024, UPC_CoA_22/2024, Carrier vs Bitzer).
[...] In view of this, the decision of the Boards of Appeal can be expected to be issued before or just after, in any case rapidly, in relation to the possible date for an oral hearing before the Court of Appeal. There are no pending infringement proceedings or other circumstances that would balance against a stay. To the contrary, it is JuuL Labs – who has a primary interest in a swift decision on appeal – who requested a stay. In addition, NJOY has agreed to the requested stay.
[...] Juul Labs’ application to stay the appeal proceedings shall be granted."

Court of First Instance - Munich (DE) Local Division, Order dated 31/03/2025, JingAo Solar Co., Ltd. (Case/ Registry number: ORD_8454/2025, App_7618/2025)
Example of decision on UPC–EPO synchronisation : "Rule 295(a) RoP clearly shows the RoP’s aim of synchronising proceedings before the UPC with those before the EPO. This applies in general and in particular with regard to ROP 30. However, such synchronisation can only work if it is possible to introduce claim versions amended by the EPO into (infringement) proceedings before the UPC. If such amendments are possible under Rule 30, it must also be possible to amend the claims of the infringement action accordingly."

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 06/09/2024, Celltrion Inc. v. Novartis AG, Genentech, Inc. (Case/ Registry number: ACT_18551/2024, ORD_50565/2024)
Example of decision on stay of proceedings relating to applications for provisionnal measures: "Rule R. 295 RoP (stay of proceedings) refers to actions and is therefore not applicable to applications for provisional measures."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 21/08/2024, Ballinno B.V. v. KINEXON SPORTS & MEDIA GMBH (Case/ Registry number: App_43845/2024, ORD_43896/2024)
Example of decision on stay of revocation proceedings: "An appeal against the denial of provisional measures does generally not justify a stay of revocation proceedings pursuant to Rule 295(m) RoP. Rule 295(m) RoP must be applied and interpreted in accordance with the principle according to which proceedings must be conducted in a way which will normally allow the final oral hearing at first instance to take place within one year."

Court of Appeal - Luxembourg (LU), Order dated 28/05/2024, Carrier Corporation / BITZER Electronics A/S (Case/ Registry number: UPC_CoA_22/2024, ORD_25123/2024)
Example of decision on the rejection of a request for a stay of the revocation proceedings: “3. 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 Convention on the Grant of EP and the UPCA allow third parties to challenge the validity of a patent in both opposition and revocation proceedings and allow them to initiate revocation proceedings while opposition proceedings relating to the same patent are pending.
4. The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. Firstly, decisions in which the UPC and EPO issue different rulings on the revocation of a European patent are not irreconcilable. Where one body upholds the patent and the other revokes it, the latter decision will prevail. Secondly, the interests of harmonising decisions on the validity of a European patent can be promoted by ensuring that the body that decides last can take the decision of the body that decides first into account in its decision. That means that the interests of harmonisation in general do not require a stay by the UPC where it can be expected that the UPC will issue its decision first.
5. Pursuant to Article 33(10) UPCA and Rule 295(a) RoP, an exception to the principle that the Court will not stay revocation proceedings pending opposition proceedings applies when a rapid decision may be expected from the EPO. The terms “rapid” and “rapidly” in these provisions must be interpreted in the light of the principles set out above and the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings. The term “may” in Article 33(10) UPCA and Rule 295(a) RoP means that the Court has a discretionary power to stay the proceedings when a rapid decision may be expected from the EPO. Whether or not a stay is granted depends on the balance of the interests of the parties.
6. 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. Rule 298 RoP provides that the Court may stay its proceedings “in accordance with Rule 295(a) RoP” pending accelerated opposition proceedings. Therefore, in that situation the same criterion applies, namely the requirement of Rule 295(a) RoP that the decision in the opposition proceedings may be expected to be given rapidly. Obviously, acceleration is relevant to the assessment, since the pace of the proceedings determines when the decision of the EPO can be expected. Acceleration as such is however not sufficient for establishing the expectation of a rapid decision within the meaning of Rule 295(a) RoP.”

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 08/01/2024, Carrier Corporation / BITZER Electronics A/S (Case number UPC_CFI_263/2023, ORD_591040/2023)
Example of decision which sets the criteria to be taken into account to establish the opportunity to stay the proceedings before the UPC where the same patent is also the subject of proceedings before the EPO or a national authority: “It seems appropriate that the Court, requested to stay the proceedings, shall weight up the opposing interests of the parties and, in particular, the interest in having a decision by the Unified Patent Court in an appropriate time and the interest in avoiding costs for parallel proceedings. 13. In doing so, the Court shall take into account the expected date of the decision before the ‘EPO’ (as well as before any national authority) and consider whether an order of stay the proceedings until that date would cause an unjustifiable harm to the right to access to justice of the claimant who has lodged its claim before the Unified Patent Court or not. 14. In carrying out the assessment on the existence of an unjustifiable harm that would derive from the order of stay the proceedings, the Court has to take into consideration also the expected date of its judgement.”

Court of First Instance - Munich (DE) Central Division - Section, Order dated 20/11/2023, ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE v HELIOS K.K, OSAKA UNIVERSITY (Case number UPC_CFI_80/2023, ORD_579547/2023)
Example of decision rejecting the request for suspension of CUP proceedings in the event of parallel EPO proceedings: “In exercising Court’s discretionary power on the basis of Article 33(10) UPCA in connection with Rule 295 sub a RoP, the Court has to assess the relevant facts and circumstances and has to take into account the interests of both parties. Where the interests of the parties do not align, the Court has to weigh up the interests upon deciding a request to stay proceedings. It is for the party requesting a stay to bring forward reasons why staying proceedings is appropriate in a specific case. Nevertheless, especially where it comes to weighing the interests of parties, it is up to all the parties to bring forward why a stay of proceedings would or would not be in their interest. Furthermore, in exercising its discretionary power the UPC must observe the principles 5 of proportionality, flexibility, fairness and equity (Preamble 2, 4 and 5 RoP, also see Order in Preliminary Objection App_572915/2023, case ACT_551308/2023, CD Paris Seat, dated 13 November 2023, par. 80).”
“It is in the view of the Court doubtful whether a decision that - at the time of issuing the present order - is expected in just over three months with notification of the decision and the grounds expected some months thereafter can be considered as a “rapid decision” for the purposes of Art. 33 (10) UPCA. However, this does not need to be clarified conclusively. Even if this is assumed in favour of the Defendants, who are requesting the stay, in the present case the interests of the Claimant in continuing the proceedings currently outweigh the interests of the Defendants in a stay, as discussed below.”