A guide to the UPC and the UP - Flipbook - Page 436
21-22 However, the following appeals always have suspensive effect: 35
–
Appeals against a decision on actions or counterclaims for revocation; and
–
Appeals against a decision on actions concerning decisions of the EPO in carrying
out the administrative tasks referred to in art.9 Unitary Patent Regulation. 36
Effects of an Appeal Against Certain Orders
21-23 If a party decides to appeal against an order referred to in arts 49(5), 59, 60, 61, 62
or 67 UPCA, there are two points to note:
–
Firstly, an appeal against one of these orders does not have suspensive effect as it
“shall not prevent the continuation of the main proceedings”; 37 but
–
Secondly, the appeal against such an order triggers what could be called a quasi-suspensive
effect as it precludes the Court of First Instance giving a decision in the main proceedings
before the decision of the Court of Appeal concerning the order has been given. 38
Accordingly, the appeal against such orders should not delay the main proceedings as such,
but only delay the date of the delivery of the decision in the main proceedings. This link
between the appeal against an order on the one hand, and the decision in the main
proceedings on the other, is justified when the order could potentially have drastic effects
for the defendant. Nonetheless, there could be a further delay in cases where the appeal
is successful. For example, if an appeal is made in relation to an order regarding the use
of language before the Court of First Instance 39 it is reasonable to suppose that in the
event of a successful appeal the action will be referred back to the Court of First Instance
in the new language, in accordance with the decision of the Court of Appeal. 40 In cases
where any delay in the Court of Appeal could incur considerable wasted expenditure in
continuing the action before the Court of First Instance, the Court of Appeal has the
ability to expedite the appeal. 41
21-24 Appeals against orders other than those specifically mentioned above have neither a
suspensive nor a quasi-suspensive effect in the Court of Appeal. 42 A party is therefore
protected against attempts by the opposing party to delay the main proceedings by
filing appeals against interim procedural orders.
Scope of the Application for Suspensive Effect
21-25 Art.74 UPCA and r.223 RoP suggest that the legislator deemed it important that first
instance decisions and orders should be enforceable. This has an important bearing on
applications for suspensive effect, as the general enforceability of decisions and orders is
only lifted at the “motivated request” of a party. The obligation to demonstrate why an
appeal should have suspensive effect in the specific case and why that should prevail over
the other party’s interest in enforcement is on the applicant. The applicant will have to give
substantive reasons why enforcement of a decision or order should be suspended, for example
a party might seek to suspend the effect of an injunction if validity issues relating to the same
35
36
37
38
39
40
41
42
art.74(2) UPCA.
art.32(1)(i) UPCA.
art.74(3) UPCA and r.223(5) RoP.
art.74(3) UPCA.
art.49(5) UPCA.
art.75(1) UPCA and r.242(2)(a) and (b) RoP.
r.225(e) RoP.
r.223(5) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 426
