Key takeaways
A stay of UPC proceedings pending a parallel EPO opposition is discretionary, even if a rapid decision of the EPO is expected
Pursuant to Article 33(10) UPCA and R. 295(a) RoP, 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. However, the term “may” in Article 33(10) UPCA and Rule 295(a) RoP means that the Court has discretion to refuse a stay if the balance of interests weighs against it. An unjustified delay is avoided if the non-binding EPO decision can be submitted to the UPC and considered later in the ongoing appeal proceedings without staying them.
Different outcomes from the UPC and EPO on validity are not “irreconcilable”. If one body revokes the patent and the other upholds it, the revocation decision prevails. Harmonization is achieved by the body deciding last considering the earlier decision.
Extensions of time periods according to R. 9.3 (a) RoP require exceptional circumstances and must be used with restraint, given UPC’s strict deadline regime
The need for the appellant to know the outcome of parallel EPO proceedings before filing its grounds of appeal is not an exceptional circumstance. The appeal is directed at the first-instance UPC decision, and parties can refer to the EPO’s preliminary opinion.
Aligning parallel revocation and infringement appeals is better achieved by hearing them together according to R.220.5 RoP, not by extending deadlines to file grounds of appeal
A request to align deadlines with a potential future appeal is premature. More efficient tools like hearing appeals together are preferred over extending deadlines, which would cause substantial and unjustified delay to the proceedings.
Division
Court of Appeal
UPC number
UPC-CoA-937/2025
Type of proceedings
revocation action
Parties
Appellant (Claimant in revocation action): bioMérieux UK Limited, Basingstoke, GB
Appellants (Claimants in counterclaim for revocation): bioMérieux Benelux BV, Amersfoort, Netherlands; bioMérieux SA, Marcy-l’Étoile, France; bioMérieux Deutschland GmbH, Nürtingen, Germany; bioMérieux Portugal, Lda., Linda-a-Velha, Portugal; bioMérieux Italia S.p.A., Florence, Italy; bioMérieux Austria GmbH, Vienna, Austria
Respondent (Defendant in revocation action and counterclaim for revocation): Labrador Diagnostics LLC, Carson City, Nevada, USA
Patent
EP 3 756 767
Body of legislation / Rules
Rule 295(a) RoP, Rule 9.3(a) RoP, Art. 33(10) UPCA
