UPC denies stay of proceedings in cases with co-pending EPO opposition

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UPC denies stay of proceedings in cases with co-pending EPO opposition

Sponsored by

inspicos-400px recrop.jpg
clock-2777504.jpg

Jakob Pade Frederiksen of Inspicos says a Unified Patent Court decision not to stay a revocation action while a parallel EPO opposition proceeding takes place provides another indication of the court’s fast pace

When the Unified Patent Court (UPC) started operating on June 1 2023, future users of the court and patent practitioners awaited with interest how the court would apply rules 295(a) and 298 of the UPC’s Rules of Procedure (RoP). The rules lay down that the court may stay proceedings relating to a patent that is also the subject of opposition proceedings before the EPO where a decision in such proceedings may be expected to be given rapidly.

The Court of Appeal of the UPC has now provided a first indication of its future practice in this respect. In case CoA_22/2024, the Court of Appeal confirmed a decision of the Court of First Instance not to stay a revocation action pending the outcome of parallel EPO opposition proceedings concerning the same patent.

In its ruling, the Court of Appeal held that the existence of parallel EPO opposition proceedings is not a sufficient reason to stay revocation proceedings before the UPC. The fact that the EPO proceedings were conducted at an accelerated pace was taken into account but not considered sufficient for the grant of stay.

The Court of First Instance subsequently decided on the merits of the case on July 29 2024 (case CFI_263/2023). Oral proceedings before the Opposition Division of the EPO (first instance) are scheduled for October 24 2024. The UPC revocation action and the EPO notice of opposition were filed on the same day, June 28 2023.

The case underlines that UPC proceedings run at a fast pace, and the UPC has sent a clear signal that parties should not expect a stay of proceedings on the mere ground that EPO opposition proceedings are in existence, even if such opposition proceedings are accelerated.

more from across site and SHARED ros bottom lb

More from across our site

Edward Russavage and Maria Crusey at Wolf Greenfield say that OpenAI MDL could broaden discovery and reshape how clients navigate AI copyright disputes
The UPC has increased some fees by as much as 32%, but firms and their clients had been getting a good deal so far
Meryl Koh, equity director and litigator at Drew & Napier in Singapore, discusses an uptick in cross-border litigation and why collaboration across practice areas is becoming crucial
The firm says new role will be at the forefront of how it delivers value and will help bridge the gap between lawyers, clients and tech
Qantm IP’s CEO and AI programme lead discuss the business’s investment and M&A plans, and reveal their tech ambitions
Controversial plans were scrapped by the Commission earlier this year after the Parliament had previously backed them
Lawyers at Spoor & Fisher provide an overview of how South Africa is navigating copyright and consent requirements to improve access to works for blind and visually impaired people
Gillian Tan explains how she balances TM portfolio management with fast-moving deals, and why ‘CCP’ is a good acronym to live by
In the eighth episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss IP Ability, a network for disabled people and carers active in the IP profession
The longest government shutdown in US history froze ITC operations, yet IP practices stayed steady as firms relied on early preparation and client communication
Gift this article