UPC Declines to Stay Revocation Action in Spite of Pending National Revocation Action

Ahead of the opening of the UPC, there was uncertainty regarding when the UPC would decline jurisdiction or stay proceedings in view of pending national proceedings. On 17 October 2024, the Central Division (Munich Section) of the UPC delivered the latest decision addressing this issue, deciding not to stay a revocation action brought at the UPC in spite of a pending revocation action in Germany.

During the transitional period of the UPC, where the same or related proceedings are brought before the UPC and a national court, the provisions of Articles 29 to 32 of the Brussels I recast Regulation (relating to lis pendens and related actions) apply. In the present case, despite both parties agreeing to submit to the jurisdiction of the Central Division at the oral hearing, the jurisdiction issue was examined of the Court’s own motion.

The Central Division held that Article 29 (and, by extension, Article 31) of the Brussels Regulation does not apply, because the claimant in the UPC revocation action (NanoString Technologies Europe Limited) is a different legal entity to the claimant in the German revocation action (NanoString Technologies Germany GmbH). This approach is in accordance with the case law of the CJEU, and with the approach of the UPC Court of Appeal in Mala Technologies/Nokia Technologies.

Article 30 of the Brussels Regulation provides the UPC with the discretionary power to stay proceedings where a “related action” is pending before a national court. In the present case, the Central Division decided not to exercise its discretionary power to stay proceedings in view of the specific circumstances of the case. The circumstances considered include: that both parties involved had requested that the UPC issue a decision; that the proceedings at the UPC were already at an advanced stage (the oral hearing had been concluded); and that French and Dutch validations of the patent were still in force (in addition to the German validation subject to the German revocation action).

This outcome differs from that of the UPC Court of Appeal in Mala Technologies/Nokia Technologies, in which, on the basis of Article 30 of the Brussels regulation, it was held that a UPC revocation action should be stayed until the conclusion of a German revocation action. However, the circumstances in Mala Technologies/Nokia Technologies deviated in important aspects from those of the present case. For instance, in Mala Technologies/Nokia Technologies only the German validation of the patent-in-suit remained in force, and the German revocation proceedings were at a more advanced stage than the UPC proceedings.

In other actions (e.g. Philips/Belkin and Dexcom/Abbott), the UPC has decided not to invoke Article 30 of the Brussels Regulation to stay proceedings in view of pending German proceedings, citing the fact that the German courts will take longer to issue a decision than the UPC.

Generally, it seems that the UPC will be reluctant to stay proceedings on the basis of Article 30 of the Brussels Regulation, but may do so where the relevant circumstances indicate that a stay of proceedings is in the interest of improved procedural economy.