Staying Proceedings at the Unitary Patent Court

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Under what conditions can the Unified Patent Court (UPC) stay a decision when opposition proceedings are pending in the European Patent Office (EPO)? That question faced the Central Division (Munich) of the European UPC in Astellas ./. Healios (Case No. UPC_CFI_80/2023). Under Article 33(10) UPCA and Rule 295 sub a RoP, the UPC has the discretion to stay proceedings pending the outcome of parallel EPO proceedings when a rapid decision is expected. However, what constitutes a “rapid” decision is determined case-by-case, considering the facts and circumstances, and must align with the interests of both parties involved​​.

The court decision concerned a revocation action against European patent EP 3056564. The claimant (Astellas) sought a declaration that the patent is invalid and requested its complete revocation. The defendants (Healios) requested the maintenance of the patent and, additionally, they requested a stay of proceedings in anticipation of the outcome of parallel opposition proceedings at the European Patent Office (EPO)​​.

The opposition against the patent has oral proceedings scheduled in the EPO for 4 March 2024. The decision from these proceedings is expected to be appealable, with a final decision from the EPO not anticipated before mid-2028. The defendants (Healios) argued that staying the UPC revocation action pending the outcome of the EPO opposition would be procedurally efficient for all parties involved​​.

The claimant (Astellas) opposed the stay, emphasizing the need for a swift decision on the patent’s validity to obtain clarity on their freedom to operate ahead of their product’s launch. They preferred the issue of validity to be determined in a judge-led forum, allowing for a thorough examination of both legal and technical issues, which differed from the EPO’s approach​​.

In assessing whether a decision can be considered “rapid” for the purposes of deciding on a stay of proceedings in the context of parallel EPO proceedings, the court considered several factors based on the legal framework and the specific circumstances of the case. These factors include:

  1. Concrete Expectation of Decision Date: There must be a known and specific date for the expected decision from the EPO, indicating that the decision will occur shortly. This expectation suggests that the decision will likely be delivered before a decision by the UPC is expected.
  2. Duration until the EPO Decision: The court evaluates how soon the EPO’s decision is expected. A decision that is expected in the immediate months can be more readily considered ‘rapid’ compared to one that is several years away.
  3. Likelihood of Appeal: The possibility that the first instance decision from the EPO might be appealed is a crucial factor. If an appeal is likely, it could significantly extend the duration until a final decision is reached, thus affecting whether the initial decision can be regarded as ‘rapid’.
  4. Interests of Both Parties: The court assesses the interests of both parties in relation to the timing of the EPO’s decision. It weighs the need for immediate judicial clarity against the procedural efficiency of awaiting the EPO’s decision.
  5. Overall Procedural Efficiency: Consideration is given to the procedural efficiency of staying proceedings in light of the anticipated EPO decision. This includes evaluating the resources and expenses involved at the early stage of the proceedings versus those expected in later stages.
  6. Technological Stakes and Investment: The court may also consider the technology involved in the patent and the investments made or required in relation to it. For instance, in cases where significant investment in product development is ongoing, there might be a greater need for a rapid decision.
  7. Commercial Certainty and Product Development Timeline: Especially relevant for the claimant, the court considers the urgency of obtaining commercial certainty for product development and market entry strategies.
  8. Potential for Conflicting Decisions: The risk of conflicting decisions by the EPO and the UPC if both cases proceed in parallel is a factor, as it is generally desirable to avoid such conflicts.

These factors collectively inform the court’s decision on whether to grant a stay of proceedings, balancing the need for judicial efficiency with the parties’ interests and the specifics of the case at hand.

In this specific case, the court found it doubtful whether the decision expected from the EPO could be considered “rapid” as required by Article 33(10) UPCA. It also considered the likelihood that the first instance EPO decision would be appealed, potentially prolonging the process. The court recognized the claimant’s legitimate interest in seeking clarity for its product development and found that the defendants’ interests in saving litigation costs did not outweigh the claimant’s interests. The court concluded that staying the proceedings would unduly and disproportionally hinder the claimant’s access to the court. As a result, the court rejected the request to stay proceedings and confirmed the date for an interim conference on 14 March 2024, allowing for future reassessment based on the EPO’s decision​​.

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