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Infringement Action followed by Revocation Action (arts 33(3) and (4) UPCA)
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If an infringement claim has been brought before a local or regional division, a counterclaim
for revocation may only be brought in the division where the infringement action is pending. 114
After hearing the parties, the local or regional division then has the discretion
to do one of four things: 115
–
Keep both aspects of the case;
–
Bifurcate the action, referring the counterclaim to the central division and proceeding
with the infringement claim;
–
Bifurcate the action, referring the counterclaim to the central division and suspending
the infringement claim; or
–
If the parties agree, refer the entire case to the central division.
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The panel of the local or regional division will decide how to proceed as soon as practicable
after the closure of the written procedure or, if appropriate, will take a decision before the
written procedure is closed. The parties are given an opportunity to be heard, after which the
panel must set out in its order brief reasons for its decision. 116 Where the panel decides to keep
both aspects of the case, the judge-rapporteur shall, if a technically qualified judge is not
already allocated to the panel, request that the President of the Court of First Instance allocate
such a judge. 117
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If the panel decides to bifurcate the proceedings, r.37(4) RoP restricts the discretion granted
to the panel under art.33(3) UPCA in that the panel must stay the infringement proceedings
pending a final decision in the revocation proceedings if there is a high likelihood that, in the
final decision, the relevant claims of the patent will be held to be invalid on any ground.
Suggestions to replace the “high likelihood” criterion with “reasonable likelihood” or “on the
balance of probabilities” were rejected by the Expert Group of the Preparatory Committee. 118
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In all other situations, a stay of the proceedings is not excluded per se. When exercising its
discretion, the panel will take into account all relevant circumstances of the case such as
whether there is a need to progress quickly with the infringement action, whether bifurcation
leads to a possible change of language and the costs that may need to be incurred, any effect
on the duration of a hearing if both issues are heard together 119 and past and future use of
Court resources. 120
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Where the panel decides not to stay the infringement proceedings despite referring the
revocation claim to the central division, the central division is obliged to accelerate the validity
proceedings and the judge-rapporteur of the panel of the central division must endeavour to
set a date for the oral hearing of the revocation action prior to the date of the oral hearing of
the infringement action. 121
114
115
116
117
118
119
120
121
art.33(4) UPCA. This only applies to a counterclaim or a revocation action between the same parties
in relation to the same patent.
art.33(3) UPCA.
r.37 RoP.
art.18(3) UPCA and r.37(3) RoP.
“Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p.70.
The Court must endeavour to hear a case in one day (r.113(1) RoP).
Taking into account criteria other than a high likelihood that the patent’s scope will not remain as it is deviates from the
treatment which German national courts use in coming to a decision whether to stay the infringement action pending the
outcome of the separate nullity action.
r.40(b) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 98
