LD Munich: The show must go on – even after a first-instance EPO revocation (UPC_CFI_714/2024)

In this order, the Munich Local Division (LD) of the UPC dealt with the question of whether UPC infringement proceedings should be stayed in view of parallel EPO opposition proceedings.

Shortly after the EPO issued a negative preliminary opinion on patentability, the alleged infringer requested a stay of the UPC proceedings. The LD refused this request, explaining that the purpose of a stay under Rule 295(a) RoP is to coordinate revocation proceedings pending in parallel before the EPO and the UPC, not only in terms of timing but also in substantive terms. A stay may be granted if a decision of the Opposition Division (OD) is imminent and a decision of the UPC is not expected before the OD’s decision.

But they also held that a stay is generally not justified where the UPC oral hearing takes place before the EPO OD’s oral hearing. In the case at hand, the LD thus decided not to stay the proceedings because the oral hearing before the UPC was scheduled before the oral hearing before the OD. The LD nevertheless gave the parties an opportunity to comment on the OD’s revocation decision after the hearing.

Another reason for not staying the proceedings was that, even after the OD had issued its decision, any final decision of the EPO Board of Appeal could not be expected in the short term.

The LD also allowed the patent proprietor to file the same auxiliary requests as those filed in the EPO opposition proceedings, although the defendants objected that they were late-filed. According to the LD, the amendment requests were occasioned by the communication from the EPO OD and therefore could not have been filed earlier, even with due care. Since the defendants were given an opportunity to comment on the amendment requests both in writing and orally, the LD saw no reason to reject those requests as late-filed.