UPC-series: Stay or not to stay – this is the question

While structuring the UPCA, Member States agreed on the existence of parallel proceedings before the EPO and the UPC. Furthermore, Article 33(10) UPCA indicates that in case of anticipation for a rapid decision on behalf of the EPO, the UPC may stay its proceedings. The word “rapid” used in the aforementioned Article means real expectation of a decision within the near future. There is no reference that the decision needs to be final, so that the only factor that plays a role is the time factor. Article 33(10) is also supplemented by Rule 295(a) RoP. Order CFI 80/2023 of the Central Department of Munich, related to the ASTELLAS vs. Healios K.K case, tried to determine what exactly “rapid” means.

The defendants made a request to stay the proceedings before UPC, given that the patent in dispute is also subjected to pending oppositions proceedings before the EPO. The oral proceedings before the EPO are scheduled on the 4th of March, when the appealable decision is also expected to be issued. It should be noted that the Court holds its discretion (may stay) in staying the proceedings.

The Court relied on the fact that the decision could be easily appealed. This raises the question whether the decision of the EPO needs to be final or not. The order dives into two case scenarios. First scenario is referring to EPO not revoking the patent. Thus, the aim of the defendant will be to save litigation costs, but this does not constitute an adequate reason for the UPC to grant the staying of proceedings. Second scenario is about EPO indeed revoking the patent. In this case it would be likely to have two different conflicting decisions.

This reasoning in combination with the extremely concrete possibility for the decision of the EPO to be appealed and have a final decision in 2028, drove the Central Division in Munich to reject the application to stay the proceedings for the time being. The UPC decided to continue the action (at least) until its interim conference, which will be held on 14th of March, which is after the outcome of the opposition.

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