A guide to the UPC and the UP - Flipbook - Page 109
6-90
If the central division does not deliver its decision before the oral hearing of the infringement
action in a bifurcated case, the local or regional division has yet another opportunity to consider
the issue of whether to grant a stay or whether to deliver a decision on the merits under a
condition subsequent that the patent is not held to be wholly or partially invalid by the final
decision in the revocation proceedings. 122
Revocation action followed by infringement action (art.33(5) UPCA)
6-91
Lodging a revocation action before the central division does not stop a patentee from bringing
an infringement action against that same party in relation to the same patent before any local
or regional division of its choice. Where there is identity of parties, the panel initially appointed
in the central division is obliged to stay all further proceedings pending a decision of the panel
hearing the infringement action, unless the parties agree otherwise. 123 It is then the panel in the
local or regional division seized with the subsequent infringement action that decides how to
proceed under art.33(3) UPCA 124 but, when exercising its discretion, the panel must take into
consideration how far the revocation action in the central division has advanced. 125
Infringement Action followed by another Infringement Action (art.33(2) UPCA)
6-92
6-93
Where an action, being one of those listed below, is pending before a division of the Court
of First Instance, no action of the same type may be brought by the same parties in relation
to the same patent before any other division:
–
Actions for actual or threatened infringement;
–
Actions for provisional and protective measures;
–
Damages claims or claims for compensation derived from
the publication of a patent application;
–
Actions for the use of the invention prior to the grant of the patent
or relating to the right based on prior use of the invention; and
–
Claims for compensation for licences of right.
In the event that an action between the same parties in relation to the same patent is brought
before several different divisions, the division first seized is competent for the whole case and
any division seized later must declare the action inadmissible. In this way, the rules differ from
those in the Brussels I Regulation (recast) on lis pendens and related actions where the Court
first seized has precedence and later seized courts stay or decline their actions.
DNI followed by infringement action (art.33(6) UPCA)
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122
123
124
125
126
An action for a DNI that is pending before the central division must be stayed once an
infringement action relating to the same patent is brought before a local or regional division
provided that the patentee (or exclusive licensee) starts the infringement action within three
months of the date on which the DNI action was initiated. If the action is brought any later,
there is no automatic stay. Instead, the presiding judges of the central division and the local or
regional division concerned must consult on the future progress of proceedings, including the
possibility of a stay of one of the actions if the proper administration of justice so requires. 126
r.118(2) RoP.
r.75(3) RoP.
paragraph 6-85.
r.75(4) RoP.
r.76(3) referring to r.295(f) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 99
