UPC on staying parallel actions with the EPO

Like many national European courts, the Unified Patent Court allows for patent revocation proceedings to run in parallel to opposition and appeal proceedings in the EPO on the same patent. 

The UPC does, however, have a discretionary power (Article 33(10) UPCA) to stay those proceedings pending a “rapid decision” in the EPO proceedings. 

But, what do “rapid” and “decision” mean here?

In the Astellas v Helios case in the central division Munich, the court has now provided guidance on these terms and when the discretion will be exercised. In particular:

• What is “rapid” has to be determined based on the facts and circumstances of every case.
• The UPC may stay proceedings awaiting any relevant decision from the EPO – not just on appeal – provided such decision is expected rapidly.
• That an opposition decision is likely to be appealed, however, and that the appeal is likely to take considerable time, is a factor that may be taken into account.
• 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 those interests.
• The UPC must observe the principles of proportionality, flexibility, fairness and equity.

In the present case, the defendants sought a stay of patent revocation proceedings in the central division pending a decision from the EPO opposition division. The EPO decision was expected on 4 March 2024, with a written decision following a few months later. An appeal decision could be expected by mid-2028.

The court doubted that this could be considered a “rapid decision”.

The claimant also had a legitimate interest in pursuing the UPC revocation action to obtain commercial certainty about its product launch as early as possible, particularly given that it required significant and increasing investments over time. 

This outweighed the defendants’ interest in saving litigation costs. 

The court recognised, however, the possibility of conflicting decisions between the EPO and the UPC, including avoiding a UPC hearing on a patent that stands revoked by the opposition division. 

For this reason, in this case, the court decided to continue with the revocation action until the interim conference on 14 March 2024, where the outcome of EPO proceedings and their consequences for the timetable of the UPC revocation action could be discussed.

The court also hinted that it would be inclined to postpone the oral hearing and/or stay proceedings if the patent is revoked in its entirety by the opposition division, at least until it is known whether that decision is final. 

The issues raised in this decision will be familiar from some national patent courts when dealing with parallel EPO proceedings. But it is significant here that the “decision” in question is not necessarily a final one. In other words, the court may be influenced on whether to stay, at the interim stage or earlier, by the result of the EPO opposition stage. 

Although not at issue in this case, the same principles may be applied to UPC infringement cases in future.