Astellas v Healios (UPC_CFI_80/2023)
Decision date:
20 November 2023
Osborne Clarke summary
- Healios (defendants in the main proceedings) requested a stay of the main proceedings pending the outcome of parallel EPO opposition proceedings. Astellas' (claimant in the main proceedings) statement of grounds of revocation at the UPC were substantively identical to the EPO opposition filed. A final decision by the EPO was expected by mid-2028.
- According to Article 33(10) UPCA, the court may stay proceedings when a "rapid" decision is expected from the EPO. However, neither the UPCA nor the RoP define what is meant by "rapid" or what is considered as a "decision" in this context. In the absence of any guidance, the Munich CD held that what is considered "rapid" has to be determined on the basis of the facts and circumstances of each case.
- The Munich CD held that Article 33(10) UPCA should not be limited to "final" decisions of the EPO and therefore it is open to the court to stay proceedings awaiting any relevant decision from the EPO, provided that the decision is expected "rapidly". However, the court noted that if the first instance EPO decision is likely to be appealed and that appeal is likely to take a considerable amount of time, this is a factor that may be taken into account by the court when exercising its discretion. An approach later taken by the Court of Appeal.
- The parties agreed that a final decision from the EPO was not expected before mid-2028. If the proceedings were to be stayed as per Healios' request until the conclusion of the opposition proceedings, then the duration of the stay would be at least 5 years. This would not constitute a rapid decision for the purposes of Article 33(10) UPCA and Rule 296.3 RoP.
- The Munich CD found that Astellas had established that there was legitimate interest in pursuing the revocation action to obtain commercial certainty.
- The court rejected Healios' request to stay the proceedings but, in an attempt to mitigate the risk of conflicting decisions, agreed to approach the EPO Opposition Division to see if it would be feasible for the Opposition Division to render its written decision before 24 May 2024. If that was not feasible, then the court would consider postponing the oral hearing in the revocation action and/or staying the proceedings until the written decision was available. The court stated that this approach "sufficiently and fairly" took into account both the claimant's and the defendants' interests.
Issue
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