1. Key takeaways
Stay of proceedings is possible even if no final decision in Opposition is expected
Pursuant to Art. 33(10) UPCA and R. 295(a) RoP, the Court may stay proceedings relating to a patent which is also the subject of opposition proceedings before the EPO where a rapid decision may be expected from the EPO. These provisions do not require that a final decision of the EPO may be expected rapidly. The Court may stay proceedings under Art. 33(10) UPCA and R. 295(a) RoP where it can be expected that the Opposition Division of the EPO will give its decision rapidly, even if it is likely that such a decision will be appealed.
Preventing conflicting decisions by stay of proceedings
A stay pursuant to Art. 33(10) UPCA and R. 295(a) RoP is one of the mechanisms available to the Court to deal with parallel infringement and opposition proceedings. In particular, it serves to prevent conflicts between its decisions in infringement proceedings and the decisions issued by the EPO in opposition proceedings. Unlike decisions in parallel revocation proceedings and opposition proceedings, which are not irreconcilable (Court of Appeal 28 May 2024, APL_3507/2024, UPC_CoA_22/2024, Carrier/BITZER, paragraph 25), decisions in parallel infringement and opposition proceedings may conflict. Such conflicts may arise in particular if the EPO revokes a patent during opposition proceedings that formed the basis for an order of the Court in infringement proceedings. Such conflicts should, in principle, be avoided, even if the EPO's decision is appealable and its effects are suspended pending appeal. A stay of infringement proceedings pursuant to Art. 33(10) UPCA and R. 295(a) RoP can be used to achieve that purpose.
Court's discretionary power to stay proceedings
The Court is not required to stay proceedings if a final or non-final rapid decision may be expected from the EPO. Art. 33(10) UPCA and R. 295(a) RoP provide that the Court "may" do so. The word "may" means that the Court has a discretionary power. Whether or not a stay is granted depends 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. In this context, the fact that the expected EPO decision is not a final decision and is likely to be appealed is just one of several factors that may be taken into account.
No disregarding of new legal arguments in appeal proceedings
Pursuant to R. 222.2 RoP, the Court of Appeal may disregard "requests, facts and evidence" which were not submitted by a party during the proceedings before the Court of First Instance. This wording makes it clear that the rule does not apply to legal arguments. R. 222.2 RoP therefore does not prevent a party from submitting a new legal argument on appeal, provided that the argument is based on the facts and evidence submitted to the Court of First Instance.
2. Division
Court of Appeal
3. UPC number
UPC_CoA_511/2024
4. Type of proceedings
Infringement Action
5. Parties
Appellants (Defendants in the main proceedings before the Court of First Instance)
- MERIL LIFE SCIENCES PVT LIMITED
- MERIL GMBH
- SMIS INTERNATIONAL OÜ
- SORMEDICA, UAB
- INTERLUX, UAB
- VAB-LOGISTIK, UAB
Respondent (Claimant in the main proceedings before the Court of First Instace)
1. Patent(s)
EP 3 769 722
2. Body of legislation / Rules
Art. 33(10) UPCA and R. 295(a) RoP; R. 222.2 RoP
UPC_CoA_511-2024-CoA-2024-11-21 Download
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
