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UPC_CoA_22/2024- Order of the CoA - Parallel revocation at the UPC and opposition before the EPO – Stay of proceedings refused by the CD Paris Section confirmed

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The CD-Paris Section had issued an order (ORD_591040/2023) refusing a stay of proceedings in view of a parallel opposition at the EPO. This order was commented in the present blog.

In an order issued on 28.05.2024, the CoA refused as well the stay of the proceedings.

The only difference in the outline of the case is that an appeal was filed by the proprietor on the refusal of the stay decided by the CD-Paris Section.  

In its decision, the panel of the CD Paris Section had 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.

In view of the present order of the CoA, the situation might be considered clarified.

The CoA decision

The CoA held that:

Art 33(10) UPCA and RoP 295(a) UPC must be applied and interpreted in accordance with the fundamental right to an effective legal remedy and a fair and public hearing within a reasonable time as guaranteed by Art 6 ECHR and, to the extent that European Union Law is concerned, Art 47 of the Charter.

These provisions must also be applied and interpreted in accordance with Art 41(3), 42 and 52(1) UPCA on the basis of the principles of proportionality, flexibility, fairness and equity.  (point 2 of the Preamble of the RoP).

In accordance with these principles, proceedings must be conducted in a way which will normally allow the final oral hearing at first instance to take place within one year whilst recognizing that complex actions may require more time and procedural steps, and simple actions less time and fewer procedural steps (point 7 of the Preamble of the RoP).

Case management must be organized in accordance with this objective (point 7 of the Preamble of the RoP). It follows that, as a general principle, the Court will not stay proceedings. Otherwise, the Court cannot ensure that the final oral hearing will normally take place within one year.

The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is not sufficient to allow an exception to the principle that the Court will not stay proceedings.

The EPC and the UPCA allow third parties to challenge the validity of a patent in both opposition and revocation proceedings and allow them to initiate revocation proceedings while opposition proceedings relating to the same patent are pending.

The principle of avoiding irreconcilable decisions does not require that the UPC always stay revocation proceedings pending opposition proceedings.

Firstly, decisions in which the UPC and EPO issue different rulings on the revocation of a European patent are not irreconcilable. Where one body upholds the patent and the other revokes it, the latter decision will prevail.

Secondly, the interests of harmonising decisions on the validity of a European patent can be promoted by ensuring that the body that decides last can take the decision of the body that decides first into account in its decision. That means that the interests of harmonisation in general do not require a stay by the UPC where it can be expected that the UPC will issue its decision first.

Pursuant to Art 33(10) UPCA and RoP 295(a) UPC, an exception to the principle that the Court will not stay revocation proceedings pending opposition proceedings applies when a rapid decision may be expected from the EPO.

The terms “rapid” and “rapidly” in these provisions must be interpreted in the light of the principles set out above and the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings.

The term “may” in Ar 33(10) UPCA and RoP 295(a) UPC means that the Court has a discretionary power to stay the proceedings when a rapid decision may be expected from the EPO. Whether or not a stay is granted depends on the balance of the interests of the parties.

The mere fact that the EPO has granted a request to accelerate the opposition proceedings is not sufficient to stay revocation proceedings before the UPC. RoP 298 UPC provides that the Court may stay its proceedings “in accordance with RoP 295(a) UPC” pending accelerated opposition proceedings.

Therefore, in that situation the same criterion applies, namely the requirement of RoP 295(a) UPC that the decision in the opposition proceedings may be expected to be given rapidly.

Obviously, acceleration is relevant to the assessment, since the pace of the proceedings determines when the decision of the EPO can be expected. 

Acceleration as such is however not sufficient for establishing the expectation of a rapid decision within the meaning of RoP 295(a) UPC.


The decision of the CoA does not come as a surprise. It was to be expected and I doubt very much that the present position of the CoA will ever change with time.

It is clear that the CoA will never budge on this. The timeliness advantage given to the UPC by its authors will be exploited up to the brim.  

We should also not forget that the RoP UPC have been concocted by a self-coopted group of lawyers,  judges and other interested parties. It is difficult not to think that their pecuniary interests were a good driver in order to end with the present RoP UPC. Only the short time of prcocedures before the UPC is a driver for the costs of the parties, and I am not saying anything about the fees of the UPC.

The CoA could not say bluntly that it could not care less about the acceleration of the procedure before the EPO, so it did not slam shut the door for a stay, but it is not far from it.

It is manifest that whether or not to decide a stay depends on the balance of the interests of the parties. I am inclined to say here that the CoA has first considered its own interests, as it denied the proprietor any interest in a stay.

The CoA makes it abundantly clear that, in the interests of harmonisation, it requires the EPO to follow the case law of the UPC. In view of the different time limits in the different procedures, the UPC will always decide first. This has nothing to do with harmonisation,, it is simply requesting supremacy  of the UPC over EPO.  

Why should a decision of the UPC prevail over a decision of the EPO? Interpretation when it comes to grant or validity, might be quite different as when it comes to infringement, at least as long as the EBA has not decided on the announced referral on the application of Art 69.

Claiming that therefore decisions of the UPC and of the EPO are not irreconcilable is quite daring.

One should first take into account the different respective contracting states and hence the different geographical reach.

On the other hand, a decision of revocation of EPO after appeal on opposition, does not give any other possibility to the UPC than to accept it, even in the absence of decision of revocation at the UPC.

The UPC might even have decided infringement, but with the revocation by the EPO, any infringement decision of the UPC will become irrelevant. It is thus not always the quickest deciding body which will prevail.

In my post on the order of the CD Paris Section, I mentioned the question of possible damages in case of irreconcilable decisions between the UPC and the EPO. The question remains.

It should not be forgotten, that it has always been the clear intention of the UPC supporters, that UPC decisions should prevail over those of the EPO and that the EPO should follow the case law of the UPC.

In this respect, I refer to my post of 30.11.2023EPO and UPC: Friends or Foes?” and the insistance upon this point of Sir Robin Jacob.

In order to avoid problems of irreconcilable decisions between the EPO and the UPC on validity, it might be better not to start a revocation action before the UPC in parallel with an opposition of the EPO. See also my post of 30.11.2023. By filing an opposition at the EPO a Damocles sword can be held over the proprietor claiming infringement.

Last but not least, what about the rule of law?

When looking at Art 9(1) UPCA it says that “Any panel of the Court of Appeal shall sit in a multinational composition of five judges (three LQJ and 2 TQJ)”. By taking a decision with only three LQJ but referring to Art 6 ECHR, the CoA makes a mockery of its founding text.

Where has it ever be seen that a court indulges itself in ignoring its founding text? This is not the first time that the UPC plays this game. I refer to the decision of the presidium of 2023 when it decided to amend ex-officio Art 7(2) UPCA.

The same applies to the later decision of the Administrative Council under Art 87(2) UPCA on the creation of the CD Milan Section.

Which international treaty on patents or new EU law occasioned this change?

And all those decisions have been taken in full ignorance of the VCLT.

But the CoA allows itself to invoke Art 6 ECHR! It really has nerves.

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4 replies on “UPC_CoA_22/2024- Order of the CoA – Parallel revocation at the UPC and opposition before the EPO – Stay of proceedings refused by the CD Paris Section confirmed”

francis hagelsays:

Dear Mr Thomas,

This is not to begin a new argument with you over the UPC. I would only like to make a couple of points.

One of the striking findings concerning the case law of the UPC as it develops is that the UPC courts are very concerned not just by meeting their objective of fast delivery of decisions but also by ensuring its case law is consistent. They fully understand that the predictability of their decisions is a key ingredient for the credibility of the UPC courts vis-à-vis potential users.

Against this background, recent decisions of the BOAs are worrying as they utterly disregard this concern and are headed in the opposite direction.

Two decisions, T 433/21 and T 196/22, refer to the concept of « non-coercive discourse » or « domination-free discourse » created by German philosopher Jurgen Habermas to justify the persistence of divergences between BOAs. These decisions were issued by different BOAs but the legal member involved is the same.

There is no question that Habermas is a highly respected philosopher, but frankly, the reference to his concepts is a very poor argument.

Another case in point is the referral 439/22 to the EBA regarding the application of Art 69 to claim interpretation for validity assessment.

What is striking in the referral is the lack of motivation for what would amount to a major distortion of Art 69, and for the reasons why it would be justified for the EPO to depart from the settled case law concerning claim interpretation during examination and opposition, other than compliance with Art 123(3). The referral does not even bother to explain what is « interpretation » under Art 69 (i.e. aimed at determining the extent of protection), and how it is to be distinguished from the necessary role of the description to gain understanding of the claim terms. In any event, I fail to see why the EPO should change its rule of interpretation to align with the UPC, the contexts being quite different.

It is also surprising that the referral, which relates to the very specific case in which the description includes a sentence presented as a “dictionary” for a term of the claims, does not even cite and discuss the existing case law on this specific situation. When BOAs had to address this issue, they felt no need for a referral.

As to the EBA referral regarding the adaptation of the description to the claims, the case has been at a standstill since December 2023.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

That we have different positions with respect to the UPC should not hinder a discussion about it.

It is nothing special when the UPC states that it will make efforts in order to insure that its decisions are predictable and that it is a key ingredient for the credibility of the UPC courts vis-à-vis potential users.

The real problem to me is the not negligible potential of irreconcilable decisions between the UPC and the BoA of the EPO. There is no apparent solution to this problem.

I am however at a loss to understand the relation between the UPC and the two decisions you quote, T 433/21 and T 196/22, with a reference to Habermas.

I commented T 433/21 and T 196/22 in my blog and I purposedly left out the reference to Habermas in both decisions. In both cases I do however find the decisions correct.

In T 433/21 it is correct to state that the EPO boards of appeal are not a Common Law jurisdiction, which allows for contradictory decisions to coexist. If the contradictions become too important to be easily overcome and the question is of general importance and possibly affects a large number of cases, the EPC offers a solution in Art 112 EPC in form of a referral to the EBA, either at the initiative of a board or of the president to the EPO.

A similar possibility exists at the UPC. According to Art 21(2) of the statute of the court and to RoP 238A UPC: “The panel to which the action has been assigned may refer it to the full Court of Appeal if the panel considers, on a proposal from the presiding judge, the case to be of exceptional importance and, in particular, where the decision in the action may affect the consistency and unity of the case law of the Court”.

The difference with the EPO is that the decision to refer is not mentioned in the UPCA as such, but only in the statute of the court and the RoP UPC which can be changed at any time by decision of the Administrative Committee of the UPC, cf. Art 40(2) resp. 41(2, second §) UPCA.

In T 196/22 it was held that OP (also be fore a first instance division), and court proceedings, are indeed not a forum where issues are discussed in whatever order until a solution agreeable to everyone has been reached. There is nothing surprising in this statement.

Here again a similar situation exists at the UPC. See Art 52(3) UPCA and RoP 111 UPC and especially RoP 111-113 UPC. At the UPCC, the oral hearing is not left at the convenience of the parties, but the presiding judge plays an important role in the management of the hearing. It goes even one step further as according to RoP 113.3 UPCA “During an oral hearing, the presiding judge can decide when the panel is sufficiently informed and thereby limit a party’s oral submissions”.

That on substantive issues boards or panels of the UPC might differ is part of life, but the EPC and the UPC have, independently of Habermas, built-in mechanisms avoiding too much diverging decisions to the substance.

Where I see problems with the boards, is the way they deal with procedural matters.

It has become a bit better with deletion of claims, but grouping of claims still remains a problem and carry over requests are the new problem. The boards are not even agreeing on the legal rule to apply. Some squeeze them out with Art 12(3+5) RPBA, some with Art 12(4+6) RPBA.

To me, any substantiated AR filed within the time limit under R 116(1) before an OD should be admitted in appeal. True carry over requests, which could not be dealt with due the decision on a higher request should not be subject of debates before the boards. That late filed requests, for instance during OP, and not admitted by the OD should not be admitted in appeal is manifest.

As far as T 439/22 is concerned, I note that there is actually no referral to the EBA under this reference. A look in the register of EP3076804 shows that a decision is to be expected on 01.07.2024. Until then, it is moot to discuss the quality or defects of a referral which does not even exist. After 01.07. the situation will be different.

In the case of EP 3 094 648 (T 56/21), there is indeed a standstill since December 2023. I have strong doubts that such a referral will ever be filed.

francis hagelsays:

I personally found extraordinary the reference to Habermas’ “non-coercive discourse” in T 433/21 and T 196/22 as an attempt to justify the persistence of divergence between BOAs. It is a sign that for some BOAs, independence vis-à-vis other BOAs is of such importance that it prevails over the concern about the predictability of the case law.

That you have not cited these references in your comments on your blog shows, to say the least, that we do not look at information through the same lens. It is very telling that I can find extraordinary a piece of information, and that for you it is not even worth sharing with the readers of your blog.

There is no direct link between these decisions and the UPC, I simply wanted to highlight the difference in priorities between the UPC and the BOAs.

As to the referral T 56/21 at standstill since December 2023, you say that a referral may never be filed. I find this vacuum rather strange. Is there not a procedure in place to document the status of the request for referral ? and which EPO body makes the decision ?

Avatar photoDaniel X. Thomassays:

You are certainly free in your opinion about some statements in decisions of the boards, and whilst I noted the references to Habermas in them, they were neither shocking for me at the time nor presently. I find it interesting that a board comes up with philosophical considerations when defending its independence. After all patents are not in a vacuum, but are part of society at large.
In your apparent shock state, you seem however to have forgotten one important aspect: whether you like it or not, the boards are independent and there is no hierarchy among them. They are actually only bound by the EPC and the interpretation of it by the EBA when it issues a G decision. They are not even bound by their own preceding decisions as their composition may vary.

I explained to you in my preceding reply, that in case of divergences, the EPC has provided a mechanism to stop those when they become too important. Furthermore in T 433/21, it was clearly explained that when a board intends to deviate from a G decision, it has to refer a new question to the EBA as required by Art 21 RPBA.

The best example that boards can have a different opinion is to be found in T 989/22, commented yesterday on my blog. In this decision the board found that the long line of case law about “seriously contemplating” according to which this concept can be taken into account for novelty, does belong to inventive step. It will have to be seen whether this decision remains a one-off or it is the beginning of a new line of case law.

You are free to hope that the UPC will be more aligned than the boards, but it is much too early to say that the UPC has different priorities than that of the boards of appeal.

We have at present too few decisions on the substance to see whether the various panels of the UPC are all aligned. When looking at the Hanshow case, it is clear that the position taken by the Munich LD was not of the liking of the CoA. It is only after a series of decisions of the CoA that we will be able to give a substantiated reply on this point. Even for the UPC, there are mechanisms allowing a better alignment of the various panels. You seem to ignore it.

You might find the standstill in T 56/21 and the following vacuum rather strange. I do not.

There is no mechanism to document the status of a request for referral, but to regularly consult the register. It is left to the board’s discretion to decide whether and when it refers a question to the EBA. Nobody can exercise any pressure on the boards. The president of the EPO may also refer questions to the EBA when he considers that case law is diverging.

As far as the question behind T 56/21 is concerned, a corresponding referral would most probably imply a production stop, mainly for DG1, but also for the boards of appeal. I therefore doubt that the president would file such a referral to the EBA. There is only a handful of decisions going against the adaptation of the description, so the topic is not a burning one. This why I am not optimistic about the filing of a corresponding referral.

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