Key Takeaways
Neither a Preliminary Objection nor the likelihood of an appeal against its rejection are relevant factors for the stay of the proceedings
Neither the fact that a Preliminary Objection has been lodged nor the likelihood of success of the appeal against the rejection of the Preliminary Objection are relevant
factors for deciding whether the proceedings should be stayed.
The Preliminary Objection and its appeal do not alter the timeframe as provided for by the UPCA and the RoP. The deadline-regime provided by the RoP was
established also in view of parties having to deal with Preliminary Objections. If the lodging of a Preliminary Objection would suffice for the stay of the proceedings, a party
lodging a Preliminary Objection were to suffice for the stay of the proceedings, a party lodging a Preliminary Objection would have it in its hands to influence and alter the tight timeframe as provided for by the UPCA.
The likelihood of success of the appeal against rejection of the the Preliminary Objection is also irrelevant for the decision about a stay of the proceedings.
Prospective decision in the Opposition proceedings before EPO does not lead to stay of proceedings
According to Article 33 (10) UPCA the Court may stay its proceedings when a rapid decision may be expected from the European Patent Office. Article 33(10) UPCA is
implemented in Rule 295 lett. a RoP. Based on the above provisions, the Court has discretion to stay proceedings (“may stay”) pending the outcome of parallel EPO opposition or limitation proceedings when a rapid decision is expected.
In the present decision, the CD Paris uses its discretion in denying the stay primarily because no ‘rapid decision’ in this sense is to be expected.
The CD Paris follows this convincing reasoning of the CD Munich decision no. 579547 of 20 November 2023, ACT_465342/2023, UPC_CFI_80/2023 and applies the same reasoning mutatis mutandis. In particular, the Munich Central Division has considered it to be doubtful whether a decision that was expected in just over three months with notification of the decision and the grounds expected some months thereafter would be considered as a “rapid decision” for the purposes of Art. 33 (10) UPCA.
Division
Central Devision Paris
UPC number
UPC_CFI-361/2023
Type of proceedings
Revocation action
Parties
Plaintiff: Toyota Motor Europe NV/SA
Defendant: Neo Wireless GmbH & Co. KG
Patent(s)
EP 3 876 490
Body of legislation / Rules
Art. 33 (10) UPCA; Rule 295 (a) RoP