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 2026

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

Nokia, represented by a team from Bird & Bird, adjudged to have made fair offer to Asus and Acer in UK SEP dispute
Azhar Sadique and Kane Ridley, who founded the London office in 2023, are now both working in legal tech and AI-related roles, while another UK-based lawyer has also left
Partner Pierre Pérot rejoins the firm he left in 2022 alongside another returning lawyer, associate Camille Abba
Vaping dispute, in which Stobbs and Brandsmiths are the representatives, tested how the UK's Human Rights Act can apply to injunctions restraining unjustified threats
An AI platform being sold for £40m, and lateral hires involving law firms Womble Bond Dickinson and Cadwell Thomas were among the top talking points
With the London Annual Meeting behind us, we look back at some of the lessons learned this week and ahead to what 2027 will bring
In-house counsel aren’t impressed with law firms’ international networks, but practitioners say they are crucial for business
Publication of the UPC’s annual report and adoption of the procedural rules of the Patent Mediation and Arbitration Centre were also among major developments
With the INTA Annual Meeting drawing to a close, we asked attendees for their top tips on how to close business after a meeting
Senior UK judges discussing the impact of AI on the judiciary, and the role of in-house IP lawyers during corporate transactions and carve-outs were among the top talking points
Gift this article