A guide to the UPC and the UP - Flipbook - Page 206
states that the Court may stay proceedings where it is seized of an action relating to a patent
which is also the subject of opposition or limitation proceedings including subsequent appeal
proceedings before the EPO (or a national authority), where a decision in such proceedings may
be expected to be given rapidly. 311 This provision would apply to the possibility of staying both
infringement and revocation proceedings before the Court. Secondly, r.295(g) RoP refers to
r.118 RoP which specifically relates to the possibility of staying infringement proceedings during
the oral procedure. In essence r.118(2) RoP states that a local or regional division may:
– Render a decision under a condition subsequent that the patent is not held wholly or
partially invalid; 312 or
– Stay the infringement proceedings pending a decision of the EPO and shall stay them
if there is a high likelihood that the patent will be held invalid and that decision will
be given rapidly. 313
11-167 It is hoped that the Court will not stay its proceedings (except in exceptional circumstances)
and that the quality and persuasive authority of their judgments will convince the EPO not to
deviate from the Court’s decisions. In the generally undesirable situation that the revocation
proceedings are stayed in favour of the EPO and the infringement proceedings carried forward,
it is useful to remember that pending a final decision on validity, the defendant in infringement
proceedings is offered considerably more protection under the Court regime than before
certain national courts. The additional protection may include:
– The Court may render its decision on the merits of the infringement claim, including its
orders, on the basis of a condition subsequent pursuant to art.56(1) UPCA that the patent is
not held to be wholly or partially invalid by the final decision in the revocation procedure or a
final decision of the EPO; 314
– The enforcement of a decision or order may be subject to the provision of security; 315 and
– Where an enforceable decision or order of the Court is subsequently varied or revoked,
the Court may order the party which has enforced such decision or order to compensate
the defendant for the injury caused by the enforcement. 316
11-168 For further information on revocation proceedings before the Court see chapter 9 (Revocation
(Nullity) of Unitary Patents (and European Patents Subject to the Court) – Substantive Law).
311
312
313
314
315
316
Similarly, this provision provides for a possible stay where there are opposition or limitation proceedings pending before a
national authority, i.e. a national patent office.
r.118(2)(a) RoP. Where the Court has made such order, any party may apply to the local or regional division within 2 months
following a final decision of the Court or the EPO as the case may be on the validity of the patent for orders consequential on
such final decision (r.118(4) RoP). See chapter 14 (Oral Procedure) paragraphs 14-50 to 14-64, and figure 14-1.
r.118(2)(b) RoP. R.118(2) RoP also provides for a possible conditional decision or a stay pending a decision in revocation
proceedings between the same parties before the central division.
r.118(2)(a) RoP.
art.82(2) UPCA and r.118(8) RoP. See chapter 19 (Enforcement) paragraphs 19-46 to 19-64.
r.354(2) RoP. See also chapter 19 (Enforcement) paragraphs 19-65 to 19-71.
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A Guide to the UPC and the UP 196
