1. Key takeaways
Regularly proceedings must be conducted in a way, which will allow the final oral hearing at first instance to take place within one year. As a general principle, the Court will not stay proceedings
Art. 33.10 UPCA and R. 295.a RoP must be applied and interpreted in accordance with the fundamental right to an effective legal remedy and a fair and public hearing within a reasonable time as guaranteed by Art. 6 ECHR and, to the extent that EU Law is concerned, Art. 47 of the Charter. These provisions must also be applied and interpreted in accordance with Art. 41.3, 42 and 52.1 UPCA on the basis of the principles of proportionality, flexibility, fairness and equity (point 2 of the Preamble of the RoP).
According to these principles, proceedings must be conducted in a way which will normally allow the final oral hearing in the first instance to take place within one year whilst recognizing that complex actions may require more time and procedural steps, and simple actions less time and fewer procedural steps (point 7 of the Preamble of the RoP). The Case management must be organized in accordance with this objective (point 7 of the Preamble of the RoP). It follows that, as a general principle, the Court will not stay proceedings. Otherwise, the Court cannot ensure that the final oral hearing will normally take place within one year.
Especially, the Court will not stay revocation proceedings solely because the patent at issue is also subject of opposition proceedings before the EPO
The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings. The Convention on the Grant of European Patents and the UPCA allow third parties to challenge the validity of a patent in both opposition and revocation proceedings and allow them to initiate revocation proceedings while opposition proceedings relating to the same patent are pending.
The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings. Firstly, decisions in which the UPC and EPO issue different rulings on the revocation of a European patent are not irreconcilable. Where one body upholds the patent and the other revokes it, the latter decision will prevail. Secondly, the interests of harmonising decisions on the validity of a European patent can be promoted by ensuring that the body that decides last can take the decision of the body that decides first into account in its decision. That means that the interests of harmonisation in general do not require a stay by the UPC where it can be expected that the UPC will issue its decision first.
xceptionally, if a rapid opposition decision may be expected from the EPO, the UPC may stay revocation proceedings
Pursuant to Art. 33.10 UPCA and R. 295.a RoP, an exception to the principle that the Court will not stay revocation proceedings pending opposition proceedings applies when a rapid decision may be expected from the EPO. The terms "rapid" and "rapidly" in these provisions must be interpreted in the light of the principles set out above and the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings. The term "may" in Art. 33.10 UPCA and R. 295.a RoP means that the Court has a discretionary power to stay the proceedings when a rapid decision may be expected from the EPO. Whether or not a stay is granted depends on the balance of the interests of the parties.
The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC. R. 298 RoP provides that the Court may stay its proceedings "in accordance with Rule 295(a) RoP" pending accelerated opposition proceedings. Therefore, in that situation the same criterion applies, namely the requirement of R. 295.a RoP that the decision in the opposition proceedings may be expected to be given rapidly. Obviously, acceleration is relevant to the assessment, since the pace of the proceedings determines when the decision of the EPO can be expected. Acceleration as such is however not sufficient for establishing the expectation of a rapid decision within the meaning of R. 295.a RoP
2. Division
Court of Appeals
3. UPC number
UPC_CoA_22/2024, first instance UPC_CFI_263/2023
4. Type of proceedings
Appeal proceedings against procedural order
5. Parties
Carrier Corporation
BITZER Electronics A/S
6. Patent(s)
EP 3 414 708
7. Body of legislation / Rules
Art. 33 (10) UPCA, Rule 295.a RoP, Rule 298 RoP, Art. 6 ECHR, Art. 47 EU Charter for Fundamental Rights, Art. 41 (3) UPCA, Art. 42 UPCA, Art. 52 (1) UPCA
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.