Case Law
Rule 295: Stay of proceedings

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.”