Home » UPC decisions » Central Division » Munich Central Division » CD Munich, 20 November 2023, order on request to stay revocation proceedings, UPC_CFI_80/2023

CD Munich, 20 November 2023, order on request to stay revocation proceedings, UPC_CFI_80/2023

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Key takeaways

Rule 295(a) RoP states that the court has discretion to stay proceedings pending the outcome of parallel EPO proceedings when a rapid decision is expected. Decision does not mean a final decision after, e.g., appeal proceedings subsequent to the opposition proceedings are concluded, but also includes any other relevant decision from the EPO. The likelihood of an appeal after an opposition may be taken into account by the Court when exercising its discretion to stay proceedings. Since an appeal may take several years, and if it is likely that the unsuccessful party will appeal, the Court can rule against a stay of revocation proceedings.

Rapid according to Rule 295 sub a RoP means that there should be a concrete expectation (i.e. a known date in time) for a decision which date should be in the near future such that it is clearly expected to be delivered before an expected decision by the UPC. The Court raised doubts whether a decision of the EPO in opposition proceedings expected in just over three months can be considered as expected to be given “rapidly”. However this question was left open by the Court.

Based on Article 33(10) UPCA in connection with Rule 295(a) RoP, the Court has to assess the relevant facts and circumstances and has to take into account the interests of both parties. If the interests of the parties do not align, the Court has to weigh up the interests upon deciding on a request to stay proceedings. To be able to do so, the Court needs to know the interests of both parties.

If a party will launch a product (several years) in the future, the commercial interest of the party in pursuing their revocation action against a Patent that may limit their freedom of operation establishes this party’s legitimate interest. The revocation proceedings allow the party to obtain at least some degree of commercial certainty. The fact that ongoing and significant investments over the course of product development are necessary further supports such legitimate interest. This interest is not outweighed by the interest of the party requesting the stay of such proceedings to save litigation costs (if the proceedings were stayed).

Staying revocation proceedings has an effect that time shall cease to run for the purposes of procedural periods (Rule 296.3 RoP). Were the Court to grant a stay of proceedings, the result is that the Court becomes unaccessible to a party pursuing a revocation action for the time of the stay. This must be weighed against the fact that conflicting decisions may be made by the EPO and the UPC. Likewise, parties’ and judicial resources should be allocated as effectively as possible.

Against this background, the Court decided that, even under the assumption that the decision of the EPO in opposition proceedings in just over three months were to be considered as “expeceted rapidly”, the interest of the Claimant to continue the proceedings would outweigh the Defendant’s interest in a stay. Hence, the Court decided against the stay.


Munich Central Division

UPC number


Type of proceedings

Revocation Action


Claimant (respondent request to stay): ASTELLAS INSTITUTE FOR REGENERATIVE MEDICINE

Defendants (Applicant request to stay): Healios K.K, Osaka University



Body of legislation / Rules

Rule 295(a) RoP, Rule 296.3 RoP, Art. 33(10) UPCA

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