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UPC_CFI_263/2023 - ORD_591040/2023 – Parallel revocation at the UPC and opposition before the EPO – Stay of proceedings refused

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The patent relates to an apparatus for cold chain monitoring of perishable goods and a method for cold chain monitoring of perishable goods by way of an adaptative sensor.

Brief outline of the case

A revocation action against EP 3 414 708 has been filed at the Paris Section of the Central Division (PSCD). The action was only filed against claim 1.

In the course of the revocation action, the proprietor requested a stay of the proceedings before the UPC in view of parallel opposition proceedings before the EPO.

The stay of proceedings before the UPC was refused.

The proprietor’s point of view

The proprietor argued that a stay of the current proceedings is appropriate, having regard to the fact that the opposition proceedings subsumes the revocation action, since the patent at issue was validated for France, Germany and United Kingdom and, therefore, has a wider territorial scope than the revocation action and that this action has been filed in respect of the apparatus claim only, whereas the opposition has been filed in respect of the apparatus and the method claims.

Parallel proceedings before ‘EPO’ and the UPC may result in a procedural inefficiency, since the grounds for the revocation action are substantially the same as for the opposition proceedings.

The panel’s decision

In its decision, the panel held that, according to Art 33(10) UPCA the Court may stay its proceedings when a rapid decision may be expected from the EP’. This provision has been implemented by RoP 295(a) UPC.

While it is not disputed that an opposition to the patent at issue has been lodged before the EPO, the plaintiff in revocation has argued that a rapid decision in such proceedings is not expected.

The panel noted that the RoP UPC do not give any guidance in order to establish when a decision is to be considered as ‘rapid’ for the present purposes.

Criterions to be applied for deciding a stay

It seems appropriate that the Court, requested to stay the proceedings, shall weight up the opposing interests of the parties and, in particular, the interest in having a decision by the UPC in an appropriate time and the interest in avoiding costs for parallel proceedings.

In doing so, the Court shall take into account the expected date of the decision before the EPO, as well as before any national authority, and consider whether an order of stay the proceedings until that date would cause an unjustifiable harm to the right to access to justice of the claimant who has lodged its claim before the UPC or not.

In carrying out the assessment on the existence of an unjustifiable harm that would derive from the order of stay the proceedings, the Court has to take into consideration also the expected date of its judgement.

Indeed, while it seems convenient to order the stay of the proceedings where the proceedings before EPO or any national authority is near to the end and the proceedings before the UPC has just begun, the opposite must be said where these factual circumstances are not existing.

According to the panel, the mentioned criterion represents a proper implementation of the discretionary power assigned to the Court, as is appears to be respectful of the principles of proportionality, flexibility, fairness and equity (see, Preamble 2 and 4 of the RoP).

It must be added that the fact the ‘EPO’ opposition has a wider territorial scope and – allegedly – a wider substantive scope than the current proceedings shall not be taken into consideration for the present purposes, because it could lead to a disproportionate limitation of the right to access to justice of the claimant, where compared to the interest of avoiding the inefficiency deriving from parallel proceedings.

Application to the present case

In the case at hand, there is not a concrete proof of the date in which the ‘EPO’ decision on the opposition will be issued.

The proprietor has observed that, in the experience of its representatives, the EPO decision has to be expected in 9-10 months, but this argument is not supported by any evidence.

The absence of a concrete expectation for a EPO decision in the near future, evaluated together with the expected date of the current proceedings, that can be estimated in approximately one year since the lodging of the claim, as provided for by Preamble 7 ‘RoP’, leads this panel to the conclusion that the requirement of the ‘rapid decision’ of the EPO proceedings is not fulfilled.          

It follows that, given the factual circumstances at hand, the request submitted by the proprietor, defendant in the revocation action, has to be rejected.

Since a consistent interpretation of the requirement for allowing the request for stay of the proceedings and of term ‘rapid decision’ mentioned in Article 33 (10) ‘UPCA’ is needed, it is appropriate to grant leave to appeal to this order


It does not come as a surprise that a stay of the proceedings has been refused. The reason d’être of the UPC is to deliver quick decisions in first instance, the aim being one year.

It will have to be seen if the present order will be appealed, or what the CoA will say in this matter.

In view of the inherent delays of the opposition procedure before the EPO, a decision of an OD within one year is not really feasible, even when accelerating the opposition procedure as has been decided by the EPO.  

As more than a significant number of decisions of OD are set aside by the boards of appeal of the EPO, a final result will still need some time.

As long as the decisions of the UPC and of the EPO are not contradictory, no problems have to be expected.

It is an aim, often expressed by supporters of the UPC, and recently by a judge at the CoA, that the EPO should follow the case law of the UPC. Nothing is more uncertain, as the position of the UPC vis-à-vis the EPO is not different from that of a national court. I do not see non-UPC contracting states accepting such a supremacy.

Contrary decisions between the EPO and the UPC

If the decisions are contradictory, then problems are inevitable.

If the patent is revoked at the EPO, but maintained, either as granted or in amended form at the UPC, the UPC decision will be obsolete.

If the patent is revoked at the UPC but maintained at the EPO, the proprietor will be deprived of a valid patent, be it as granted or as amended.

If the patent is maintained at the EPO and before the UPC, the form in which it will be maintained might be different before both instances. It could be sometimes to the benefit of the proprietor, sometimes to the benefit of the opponent/infringer.

In all those cases, one party, either the opponent/infringer or the proprietor will suffer damages. Who will be held responsible for those damages?

In case of parallel opposition and revocation proceedings the only viable solution appears to be that each party at the UPC to file a deposit or a guarantee covering those possible damages.

Stand of the opposition proceedings

The patent has been opposed in totality under Art 100.

Summons to OP have been issued on 02.02.24. The OP is to be held by ViCo on 24.10.24. Following the summons the proprietor has filed 13 AR.

The hearing before the UPC=OP is scheduled for 21.06.2024.

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2 replies on “UPC_CFI_263/2023 – ORD_591040/2023 – Parallel revocation at the UPC and opposition before the EPO – Stay of proceedings refused”

Doubting Thomassays:

Question: if the EPO decides to maintain the patent but the UPC decides to revoke it, which EPC Member States would be obliged to accept the UPC’s revocation decision? Presumably all EU Member States, due to recast Brussels II. But what about non-EU states?

Avatar photoDaniel X. Thomassays:

@ Doubting Thomas

You raise an interesting question, and I confess being unable to give an answer.

I am however not convinced that the UPC’s decision would be applicable to all EU states as the UPC’s reach should in principle be limited to its contracting states.

For this reason alone, the EP would most probably still remain valid in non-EU states in which it has been validated.

However, I cannot see a proprietor having managed to maintain its patent after an opposition before the EPO simply accepting the destruction by the UPC of an asset, when the final word on the validity of said asset lies with the EPO and not with the UPC.

One objection could be that different prior art is used in the different fora. I do however think that in the end, any prior art cited in one forum will be used at the other forum and vice-versa, even if the opponent is not involved in the UPC proceedings. As the proceedings before the UPC are faster than before the EPO, the relevant prior art will mostly be available first at the UPC.

By revoking a patent eventually maintained by the EPO, I am inclined to think that the UPC is then liable for damages according to Art 5 UPCA. Another possibility could be, but I doubt it, the application of Art 22 and 23 UPCA.

One way to cover such damages would be to render the execution of the UPC’s revocation decision subject to a deposit whilst the opposition is still running. In the case of both the UPC and the EPO decide revocation, the deposit could be released. In case of contradictory judgements, and maintenance of the patent, infringement could still be present and the proprietor should recover the damages caused by the decision of the UPC.

One way to avoid such a delicate situation would be to stay the proceedings, until a final decision in opposition is given by a board of appeal of the EPO. But this is not to the liking of the UPC and its proponents.

The best way to avoid the problems above, is to wait until the end of the opposition period at the EPO before starting any action, be it infringement or nullity, before the UPC.

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