A guide to the UPC and the UP - Flipbook - Page 276
Figure 14-1: Decisions of Local or Regional Divisions in Bifurcated Actions
No
Revocation action between same
parties or EPO opposition? (r.118(2))
Decision on the merits and orders made (r.118(1))
Yes
No
High likelihood relevant claims held
invalid in final decision? (r.118(2)(b))
Yes, action is before
central division
Yes, action is
before EPO
Final decision of EPO expected rapidly?
No
Yes
Court must stay infringement
proceedings pending outcome
Yes
Court exercises discretion to stay?
No
Decision on the merits and orders rendered under
condition subsequent that patent not held wholly
or partial invalid by final decision (r.118(2)(a))
If successful party intends to enforce,
decision on security (r.118(8))
14-62 Where the Court has a discretion there is no indication, under r.118(2) RoP, as to how it should
exercise that discretion. However, it is suggested that the Court will generally be reluctant to
grant a stay at this stage, particularly in situations where it has already made a decision to
proceed with an infringement action. 123 Furthermore, where the oral hearing has taken place,
both parties will have expended considerable time and cost in the outcome. Other factors
which the Court will bear in mind when exercising its discretion are whether there is a real and
pressing need for the relief claimed, the length of the delay before a final decision is reached by
the central division or the EPO, the prejudice that will be caused to the claimant by the delay
and lack of certainty and whether a decision will promote settlement and the chances that the
patent will be found valid.
14-63 In Germany, where there is very great experience in dealing with bifurcated cases due to the
split court structure, the defendant usually requests a stay at the oral hearing only on an
alternative basis. The defendant’s main argument will be one of non-infringement, but if that
argument is not successful and the Court finds infringement of the patent claims which are the
basis of the revocation action or opposition before the EPO, the defendant will request a stay.
Pursuant to German law, a decision on a stay is usually reasoned essentially by pointing out
why the court finds infringement but why it also considers the invalidity arguments to be
highly persuasive. But a claimant may waive the right to obtain such a reasoned decision 124
in order to avoid any negative prejudice being caused to the parallel invalidity proceedings.
14-64 At first glance, it might be argued that if the Court decides to grant a stay, it does not have
to render its decision on the merits 125 as the rules state that the Court, under r.118(2)(a) and
123
124
125
r.37(4) RoP.
Mes P, “Patentgesetz und Gebrauchsmustergesetz”, 4th edn, (Munich: C.H. Beck, 2015), § 139 para. 371.
That is, if the matter of the stay has progressed to the oral hearing rather than being decided at the interim stage.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 266
