Lavoix - Blog UPC

In an order dated 8 January 2024, the Paris Central Division interpreted for the first time article 33 (10) of the Agreement concerning the stay of proceedings in the event of parallel proceedings likely to challenge the validity of the patent before the EPO.

Such a stay may be decided by the UPC “when an rapid decision may be expected from the European Patent Office“.

This article is completed by Rule 295(a).

In this case, an opposition was filed with the EPO by BITZER on 28 June 2023, together with a request for the procedure to be accelerated on 1 November 2023. On 29 June 2023, BITZER brought an action for invalidation of the patent at issue against CARRIER, the day after the opposition was filed before the EPO. On 20 November 2023, CARRIER filed its statement of defense. On 1 December 2023, it asked the UPC to stay the proceedings in view of the opposition proceedings pending before the EPO. On 15 December 2023, BITZER objected to this request for a stay of proceedings, considering that the EPO’s decision would not be handed down rapidly.

In response to this request for a stay of proceedings, the Paris Central Division first notes that the applicable legislation does not provide any guidelines for interpreting the term “rapid”. The UPC must therefore balance the interests at stake, on the one hand to obtain a decision from the UPC within a reasonable time (i.e. independently from the EPO), and on the other hand to avoid additional costs for the parties.

The UPC then points out that a stay of proceedings seems obvious when the parallel proceedings justifying such a measure are ending, while the proceedings before the UPC have only just begun.

It considers that there is no certain date for the EPO opposition decision, although it can be expected within 9 to 10 months.

In rejecting the request for a stay of proceedings, the UPC considers that:

  • There is no certain date for the EPO opposition decision;
  • The expected delay of 9 to 10 months for a decision by the EPO, compared to the delay of one year for the proceedings initiated before the JUB, is not sufficient to consider that the decision will be handed down rapidly.

The Central Division points out that this order is subject to appeal because of the need for a consistent interpretation of Article 33(10) of the Agreement and Rule 295(a).

Reference of the order: UPC, Paris Central Division, 8 January 2024, CARRIER v. BITZER, 263/2023

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