A guide to the UPC and the UP - Flipbook - Page 204
No Jurisdiction or Action Manifestly Bound to Fail
11-160 Where it is clear that the Court has no jurisdiction to adjudicate on an action or of certain claims
within it or where the action or defence is, in whole or part, manifestly inadmissible or
manifestly lacking any foundation in law, the Court may, after giving the parties an opportunity
to be heard, give a decision by way of an order. 288
Absolute Bar to Proceedings in an Action
11-161 The Court may at any time, on the application of a party or of its own motion, decide that there
is an absolute bar to proceeding with an action after giving the parties an opportunity to be
heard, for example, because of the application of the principle of res judicata. 289
11-162 Orders in respect of these categories are made by the panel on the recommendation of
the judge-rapporteur. Where the decision is taken by the Court of First Instance, it may
be appealed.
Stay of Proceedings
11-163 Generally speaking, the regime in the UPCA and RoP sets out an aggressive timeframe for
dealing with patent cases. That being said, the RoP provide for a number of opportunities to
order a stay of proceedings. These grounds are bundled together into r.295(a) to (l) RoP which
provides that the Court may stay proceedings in the following circumstances:
– Where the Court is seized of an action and the patent in suit has been challenged in
opposition or limitation proceedings (including subsequent appeal proceedings) before the
EPO or a national authority, and a decision is expected rapidly; 290
– Where the Court is seized of an action relating to an SPC which is also the subject of
proceedings before a national court or authority; 291
– Where an appeal is brought before the Court of Appeal against a decision or order of the
Court of First Instance (i) disposing of the substantive issues in part only; or (ii) disposing of
an admissibility issue or a preliminary objection; 292
– At the joint request of the parties; 293
– Where, in an infringement action, a defendant counterclaims for revocation and the panel of
the local or regional division decides to bifurcate the proceedings, referring the revocation
action to the central division; 294
– Where a revocation action or DNI action before the central division is followed by an
infringement action; 295
288
289
290
291
292
293
294
295
r.361 RoP.
r.362 RoP.
r.295(a) RoP. For a discussion of stays of proceedings pending oppositions at the EPO, see paragraphs 11-163 to 11-165.
r.295(b) RoP.
r.295(c) RoP. This rule is couched in different terms to r.223 RoP relating to applications for suspensive effect. Despite this, it
would appear sensible to follow the procedure set out in r.223 RoP. See chapter 21 (Procedure before the Court of Appeal)
paragraphs 21-21 to 21-31.
r.295(d) RoP.
r.295(e) RoP referring to r.37 RoP which sets out the procedure to be applied with respect to art.33(3) UPCA. See chapter 6
(Jurisdiction, Competence and Forum Shopping) paragraphs 6-85 to 6-90.
r.295(f) RoP refers to rr.75 and 76 RoP which set out the procedures to follow under arts 33(5) and (6) UPCA respectively. See
chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraphs 6-91 and 6-94.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 194
