Under the UPCA and its Rules of Procedure (“RoP”), various scenarios can lead to the suspension or “stay” of the proceedings before the UPC pending the outcome of those before another court or administrative body, or before another UPC division. During its first year of operations, the UPC has had the opportunity to adjudicate the appropriateness of staying proceedings in a number of such scenarios. The conclusion of these cases is that the UPC will not easily suspend.
Scenario 1: UPC vs EPO – Article 33(10) UPCA and Rule 295 RoP
Pursuant to Article 33(10) UPCA “a party shall inform the Court of any pending revocation, limitation or opposition proceedings before the European Patent Office, and of any request for accelerated processing before the European Patent Office”, in which case “the Court may stay its proceedings when a rapid decision may be expected from the European Patent Office”. This principle is essentially repeated in Rule 295(a) RoP, according to which the UPC may stay proceedings “where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office … where a decision in such proceedings may be expected to be given rapidly”.
The most authoritative UPC decision on this topic thus far is the Court of Appeal order of 28 May 2024 in Carrier v Bitzer[1]relating to a patent for an adaptive sensor sampling of a cold chain distribution system. In this case, the alleged infringer had filed a notice of opposition with the EPO on 28 June 2023 and a revocation action before the Paris seat of the UPC Central Division the next day. In turn, the patentee, on 1 December 2023, lodged a Rule 295(a) request at the UPC to stay the proceedings pending the outcome of the EPO opposition proceedings, in which the hearing date had meanwhile (and despite the patentee’s request that the EPO accelerate the proceedings) been set for 25 October 2024. The hearing date in the UPC revocation action was scheduled for 21 June 2024.
The Court of Appeal rejected the request to stay and thereby the various arguments adduced by the patentee, based on the following key considerations:
- The basic principle of Article 33(10) UPCA and Rule 295(a) RoP is that the UPC does not stay revocation proceedings pending opposition proceedings;
- The only exception to that principle applies when a rapid decision may be expected from the EPO. The term “rapid” must be interpreted strictly in view of (i) the principle that no stay is the rule, (ii) the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings, (iii) the fact that the term “may” in Article 33(10) UPCA and Rule 295(a) RoP necessarily means that the UPC has a discretionary power to stay or not to stay, whereby the balance of both parties’ interests must be taken into account;
- The mere fact that the revocation proceedings before the UPC relate to a patent which is also the subject of opposition proceedings before the EPO is therefore not sufficient to allow a stay of proceedings, as it is inherent to the system that the two proceedings can coincide;
- Similarly, the mere fact that a request to accelerate the opposition proceedings has been filed or that the EPO has granted such request, is not sufficient to stay revocation proceedings before the UPC;
- Finally, the principle of avoiding irreconcilable decisions also does not require that the UPC always stay revocation proceedings pending opposition proceedings, since decisions in which the UPC and EPO issue different rulings on the revocation of a European patent are not irreconcilable: Where one body upholds the patent and the other revokes it, the latter decision will prevail.
These principles seem to have been applied consistently in other (earlier or later) cases.[2] Particularly the following decisions offer interesting guidance.
Firstly, the Nordic-Baltic Regonal Division[3] confirmed that Rule 295(g) RoP is not merely an alternative to Rule 295(a) RoP to obtain a stay. Pursuant Rule 295(g) RoP the UPC can order a stay “pursuant to Rule 118”. According to subparagraph b this rule, if, while infringement proceedings before a local or regional division are pending, an opposition is pending before the European Patent Office, the local or regional division “may stay the infringement proceedings pending … a decision of the European Patent Office and shall stay the infringement proceedings if it is of the view that there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision … of the European Patent Office where such decision of the European Patent Office may be expected to be given rapidly”. The party requesting the stay had argued that, since the requirement that the EPO decision is to be expected rapidly, only features in the second part of the sentence (i.e. in the “shall stay” part), the UPC was also entitled to suspend the infringement case before it when no rapid decision from the EPO was to be expected. The Court rejected this argument stating that since Rule 118 is titled “Decision on the merits” and is placed in the RoP chapter governing the oral procedure, it only applies during the oral procedure and cannot be used as a standalone legal basis for staying proceedings during the written procedure. A similar reasoning was offered in relation to the boilerplate provision of Rule 295(m) RoP, according to which a stay may be ordered “in any other case where the proper administration of justice so requires”. The Court held that none of these provisions can supersede Article 33(10) UPCA and Rule 295(a) RoP, which are the only ones offering a legal basis for a stay when parallel proceedings at the EPO are pending. Since those provisions require a rapid decision from the EPO on the horizon and since this was not the case here, the request for suspension was rejected.
Next, the discretionary power to stay proceedings when a rapid decision from the EPO is expected, still leads to some divergence. In a Court of Appeal order of 30 April 2025 a stay was granted where the EPO opposition appeal proceedings had been accelerated and an EPO decision was expected shortly after the scheduled UPC hearing. The Court emphasised that such a stay remains an exceptional measure, justified only when a rapid EPO decision is clearly foreseeable and no other factors militate against it[4]. Conversely, however, a Nordic-Baltic Regional Division order declined to stay proceedings even though the EPO opposition hearing was scheduled just one day after the UPC hearing, deciding instead to proceed and merely require the parties to inform it of the EPO outcome. [5]
The red thread throughout all of these decisions is nonetheless that under Article 33(10) UPCA and Rule 295(a) RoP, a stay remains exceptional, granted only when an EPO decision is genuinely imminent and the circumstances clearly justify it.
Scenario 2: UPC vs non-UPC court proceedings – Articles 71c and 30 Brussels I Regulation (recast)
Another scenario that may occur is one where the jurisdiction of the UPC is contested by means of a preliminary objection. In those circumstances, the UPC may either have to decline jurisdiction, or, in case of connexity, stay the proceedings before it (Article 71c of the recast Brussels I Regulation and the reference therein to Articles 29 to 31 of the same Regulation). Since the present article only deals with stay of proceedings, we will only deal with the latter scenario, which was the subject of an order of 2 May 2024 by the Paris seat of the UPC Central Division in a revocation action brought by Nokia against a European telecom patent held by an Israeli company called Mala.[6]
Pursuant to Rules 19(1)(a) and 48 RoP, Mala contested the competence of the UPC on the ground that a revocation action was first filed with the German Federal Patent Court and that the UPC therefore needed to decline jurisdiction in favor of the German court, or at least stay the proceedings because of connexity. The German revocation action was indeed filed on 29 April 2021, but was dismissed on 18 July 2023, subsequently to which an appeal was filed with the German Federal Court of Justice on 15 January 2024. Meanwhile, on 15 December 2023, Nokia had filed the UPC revocation action.
Article 71c(2) of the recast Brussels I Regulation contains a temporal requirement, however, as it states that “Articles 29 to 32 shall apply where, during the transitional period referred to in Article 83 of the UPC Agreement, proceedings are brought in the Unified Patent Court and in a court of a Member State party to the UPC Agreement”. According to Mala this was merely a clarification and not a limitation, i.e. that Articles 29 to 32 also and not only applied during the transitional period.
The UPC rejected this interpretation and held that Articles 29-31 of the Brussels I Regulation (recast) do not directly apply to the UPC, i.e. do not directly determine the relationship between cases before the UPC and before national courts. Instead, they only apply provided the criteria of Article 71c are met. Since one of those criteria is that the earlier case must be brought during the transitional period (which commence on 1 June 2023) and since the revocation action before the German Federal Patent Court was filed before that period commenced, no stay of proceedings based on connexity with the German case can be obtained at the UPC. The preliminary objection was therefore rejected.
A similar issue was addressed in NanoString v Harvard. In that case, the temporal condition under Article 71c(2) Brussels I Recast was fulfilled, yet the Court refused to stay, noting that the UPC proceedings were already advanced, involved multiple national designations, and required timely legal certainty. This decision confirms that, also under this scenario, a stay remains discretionary rather than automatic, even when parallel national litigation is pending[7].
Scenario 3: UPC revocation proceedings vs UPC appeal on preliminary objection – Rule 21.2 RoP
In that already mentioned Mala v Nokia case, Mala appealed the first instance division’s decision to reject the preliminary objection and, at the interim conference, requested that the main trial (i.e. the revocation action) be stayed pending a final decision (incl. reference to the CJEU) had been issued.
Pursuant to Rule 21(2) RoP, “if an appeal is lodged [against the decision on the preliminary objection], proceedings at first instance may be stayed by the judge-rapporteur or the Court of Appeal on a reasoned request by a party”.
This request was declared inadmissible by the UPC Court of Appeal by order of 21 June 2024 on the ground that “the statement of appeal and grounds of appeal in which Mala submitted its request do not constitute a reasoned request, since Mala did not set out the reasons why the revocation proceedings should be stayed. Mala did not submit any arguments in this respect”. It was held that the arguments presented by Mala at the interim conference cannot remedy the lack of reasoning in its written statement. The key take away of this decision is therefore that a reasoned request to stay proceedings must be made in the statement of appeal and the absence thereof cannot be remedied at the interim conference.
However, the Court of Appeal went on to comment – obiter – that, even if the request were admissible, it lacked merit because, similar to the principle under Rule 295 RoP, the main proceedings are not stayed pending the decision of the Court of Appeal on an order rejecting a preliminary objection, since proceedings before the Court of First Instance must as far as possible continue unhindered by any (procedural) appeals.[8] The Court of Appeal held that it may only grant a stay under exceptional circumstances, having regard to the relevant circumstances of the case, such as the stage of the revocation proceedings before the Court of First Instance, the stage of the appeal proceedings and the interests of the parties.
This approach was reaffirmed by the Court of Appeal in March 2025, when the Court again rejected a request to stay first-instance proceedings following an appeal on jurisdiction, confirming that such appeals have no automatic suspensive effect and that a stay remains an exceptional remedy[9].
Scenario 4 – Stay of infringement proceedings pending outcome of (appeal in) revocation action
A further scenario in which proceedings before the UPC can be stayed is when a counterclaim for revocation is referred to the central division by the local or regional division hearing the infringement claim. To that end, Article 33(3)(b) UPCA stipulates that “the local or regional division concerned shall, after having heard the parties, have the discretion either to: … (b) refer the counterclaim for revocation for decision to the central division and suspend or proceed with the action for infringement”.
Thus it was held by the Munich Local Division that when both parties unanimously request a stay of the infringement proceedings pending the outcome of the appeal against the revocation decision, the proceedings should be stayed pursuant to Rules 37.4 and 295(m) RoP.
In GlaxoSmithKline v Pfizer, the Düsseldorf Local Division applied Article 33(3)(b) UPCA in an infringement case with a counterclaim for revocation referred to the Milan Central Division. Despite both parties agreeing to the referral, the Court decided to proceed with the infringement action, noting that a stay under Rule 37.4 RoP requires a clear likelihood of invalidity, which could not be assessed at such an early stage. The judges nevertheless left open the option to revisit the issue later, reflecting a pragmatic approach to case management[10].
Scenario 5 – Stay of proceedings in case of insolvency (Rule 311.1 RoP – Article 41(3) UPCA)
Pursuant to Rule 311.1, first sentence RoP the UPC shall stay the proceedings before it for up to three months if a party is declared insolvent under the law applicable to the insolvency proceedings. According to the Court of Appeal, this rule is, however, not absolute, in the sense that it must be interpreted in accordance with Article 41(3)[11] UPCA. On that basis, the Court rejected an application to stay the proceedings in a case[12] where one of the parties had requested protection against its creditors in the US under US law (Chapter 11 Bankruptcy Code)[13]. The Court not only questioned (but left it undecided) whether the opening of Chapter 11 proceedings is tantamount to a declaration of insolvency within the meaning of Rule 311.1. It also declared that it would not be compatible with the principles of procedural economy and cost efficiency to suspend a case in which all procedural steps and all costs have already been incurred. To that end, the Court held, events that only occur after the conclusion of the oral hearing (such as a potential declaration of insolvency) should no longer to be taken into account in the decision-making process and can thus also not lead to a stay of proceedings.
This was similarly observed by the Hamburg Local Division, in June 2025, where two defendants were declared insolvent. The Court applied Rule 311.1 RoP and granted a three-month stay of the entire proceedings, confirming that insolvency does not automatically suspend UPC cases but, once established, requires a mandatory temporary stay. The Court further clarified that the stay covers all defendants and extends to related procedural obligations, such as providing security for costs[14].
[1] Court of Appeal, 28 may 2024, UPC_CoA_22/2024.
[2] Paris Central Div., 2 may 2024, UPC_CFI_484/2023; Paris Central Div. , 25 april 2024, UPC_CFI_361/2023; Munich Central Div. 20 november 2023, UPC_CFI_80/2023; Nordic-Baltic Regional Div. , 20 august 2024, UPC_CFI_380/2023.
[3] Nordic-Baltic Regional Div., 20 august 2024, UPC_CFI_380/2023.
[4] Court of Appeal, 30 april 2025, UPC_CoA_5/2025.
[5] Nordic-Baltic Regional Div., 11 december 2024, UPC_CFI_380/2023.
[6] Paris Central Div. 2 may 2024, UPC_CFI_484/2023.
[7] Munich Central Div., 17 october 2024, UPC_CFI_252/2023.
[8] The court here expressly referred to the Court of Appeal 19 June 2024, UPC_CoA_301/2024 A similar reasoning was also applied by the Paris Seat of the UPC which, in an order of 25 April 2024, had held in unambiguous terms that “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” (Paris Central Div., 25 april 2024, UPC_CFI_361/2023.
[9] Court of Appeal, 31 march 2025, UPC_CoA_170/2025.
[10] Düsseldorf Local Div. 4 march 2025, UPC_CFI_468/2024 and UPC_CFI_687/2024.
[11] “The Rules of Procedure shall guarantee that the decisions of the Court are of the highest quality and that proceedings are organised in the most efficient and cost effective manner. They shall ensure a fair balance between the legitimate interests of all parties. They shall provide for the required level of discretion of judges without impairing the predictability of proceedings for the parties”
[12] Court of Appeal, 26 february 2024, UPC_CoA_335/2023.
[13] Such proceedings aim to reorganize and restructure a company by drawing up a reorganization plan, which must be accepted by the creditors and confirmed by the court.
[14] Hamburg Local Div., 26 june 2025, UPC_CFI_525/2024.
