What is a stay of proceedings?

A stay of proceedings is a well-established legal tool that allows a judicial body to pause the process under certain circumstances, such as pending a related decision from a higher or parallel judicial body.

It is relatively uncommon for the Boards of Appeal or Divisions of the European Patent Office (EPO) to stay proceedings, although this can occur in rare cases, for example where there are ongoing entitlement proceedings in a contracting state or in view of a referral pending before the Enlarged Board of Appeal.

At the UPC, stays of proceedings are governed by Rule 295 of the Rules of Procedure (RoP). This provision allows the court to stay the proceedings relating to a patent or supplementary protection certificate (SPC) that is also subject to ongoing proceedings before the EPO or a national court, or where an appeal against the decision of a Court of First Instance (one of the Local or Central Divisions) is brought before the UPC Court of Appeal.

The UPC is generally reluctant to allow stays of proceedings

Broadly speaking, the UPC is keen to avoid stays of proceedings wherever possible.

For example, in NanoString v Harvard (ORD_598480/2023), Harvard requested a stay of proceedings, primarily in view of then-ongoing revocation proceedings against the German part of the patent in question. Although Harvard later withdrew its request, the Munich Central Division held that it would not exercise its discretionary power to stay proceedings anyway. In the Order, the Court noted that the proceedings were already at an incredibly advanced stage, with the oral hearings having been concluded, meaning that the “procedural economical benefits” of a stay were limited. The Court also observed that staying the UPC proceedings would deprive the parties of a decision within a reasonable time frame in respect of the national parts of the Patent that were still in force but not already the subject of national revocation proceedings.

Furthermore, in Roche v Tandem (ORD_28786/2024), the Hamburg Local Division held that the possibility that the UPC and EPO reach conflicting decisions in respect of the same patent is not enough to justify a stay of proceedings. In the Order, the Court held that revocation in either venue would prevail, and that conflicting decisions were therefore “not irreconcilable” and did not justify a stay of proceedings.

In fact, the Hamburg Local Division was keen to emphasise that the UPC’s default position should be against the grant of a stay since this would impede the UPC’s objective of ensuring that a final oral hearing takes place within a year of the onset of proceedings. The Court also highlighted that case management can be used to avoid the need for a stay, and that harmonisation between the EPO and UPC is best served by “ensuring that the body that decides last can take the decision of the body that decides first into account”.

The UPC is amenable to stays under certain circumstances, especially where all parties are in agreement

Notwithstanding the above, the UPC will grant a stay of proceedings in some instances.

For example, in the recent Juul v NJOY Court of Appeal decision (UPC_CoA_5/2025), the UPC was more amenable to a stay. In that case, Juul requested a stay in view of parallel proceedings before the EPO’s Boards of Appeal, and NJOY agreed. The Court considered that a rapid decision could be expected from the parallel proceedings, and that there were no concurrent infringement proceedings that would balance against a stay. The fact that Juul had requested the stay despite having a “primary interest” in a swift decision by the UPC Court of Appeal was also noted in the decision.

The agreement of parties is particularly powerful in convincing the UPC to grant a stay of proceedings, as demonstrated by the Milan Local Division in Dainese v Alpinestars (ORD_26013/2025). In that case, the Milan Local Division took a strong view, noting that the Court has no discretion over a stay of proceedings where both parties request it, especially where there are no parallel proceedings to balance against a stay. The Court acknowledged that this lack of discretion is despite the fact that Rule 295 RoP notes that the Court “may” grant the stay.

Other examples of cases where a stay of proceedings was allowed in view of unanimous agreement between parties include Esko v XSYS (ORD_28661/2025) and Amgen v Sanofi-Aventis (ORD_43914/2024), both at the Munich Local Division.

Instances of the UPC allowing a stay of proceedings despite disagreement between parties are rare, but do exist. For example, in Sanofi & Regeneron v Amgen (UPC_CFI_195/2025), the Düsseldorf Local Division granted a stay of the infringement proceedings at the request of Sanofi and Regeneron. The Court also decided to stay the counterclaim for revocation in view of a pending case at the UPC Court of Appeal concerning the parent patent, citing a high degree of similarity in at least the infringement cases. The Court also noted that it is “reasonable and fair that the Claimants [Sanofi and Regeneron] have a chance to present new legal arguments” should the parent patent be revoked on appeal, while Amgen would “have the stage of first instance to demonstrate why this case should be approached differently” to the parent appeal case should that decision go against them.

The UPC prefers flexible solutions

Instead of allowing stays, the UPC is tending towards a more pragmatic approach to harmonise cases with ongoing parallel proceedings, which is in keeping with the UPC’s keen focus on procedural economy and efficiency.

Returning to Dainese v Alpinestars, the Milan Local Division (in earlier decision ORD_1495/2025) granted a two-week extension to Dainese’s deadline for filing the defence to counterclaims for revocation and the reply to the statements of defence. This was in view of the oral hearing in appeal proceedings at the EPO concerning the same patent being scheduled for the same day. In the order, the court noted that the short extension provided a “flexible solution”, avoiding the need for an official stay of proceedings, facilitating “more overall procedural efficiency” and allowing the court to account for the decision of the Board of Appeal of the EPO.

In a further example of the UPC using extensions to align with proceedings at the EPO, the Munich Local Division in JingAo v Chint (UPC_CFI_425/2024) ruled that JingAo was entitled to introduce into UPC proceedings a dependent claim amended during opposition proceedings at the EPO. In view of this, Chint was granted an extension to the deadline to file a rejoinder, allowing it to react to this change.

Finally, while not related to ongoing EPO proceedings, a further example of the UPC’s pragmatic approach can be found in DexCom v Abbott (UPC_CFI_499/2023). Here, the Düsseldorf Local Division granted DexCom’s request for an extension to the deadline to file a rejoinder to the counterclaim for revocation, despite Abbott’s objections. Interestingly, the court saw the extension as “justified on the grounds of fairness and equity” since a prior deadline for Abbott had also been extended with the consent of DexCom.

Conclusions

In summary, although the UPC is keen to harmonise its proceedings with those at the EPO, it appears that the UPC will only use a stay of proceedings under very limited circumstances.

It seems that a lengthier stay of proceedings is generally considered by the courts to be at odds with the UPC’s aim of maintaining procedural economy and efficiency. Thus, the UPC tends to prefer more flexible and expedient solutions, such as short extensions of time.

The cases discussed also serve as a reminder of the benefits of maintaining a degree of communication with the opposing party in proceedings. In many instances, the UPC has been keen to highlight the power of case management in aligning the parties’ interests regarding deadlines and procedural matters. This is evident from the UPC’s willingness to grant stays and extensions where both parties are in agreement.

It is clear that, as the procedural landscape of the UPC continues to unfold, the interplay with parallel proceedings at the EPO will be an increasingly important practical and strategic consideration for practitioners and parties involved in disputes spanning the two jurisdictions.

The UPC is not allowing parallel proceedings before the EPO to impede its aim of reaching rapid decisions. Therefore, a party to such parallel proceedings should aim to maintain a degree of flexibility in its strategies wherever possible to account for the relatively short deadlines that can be set by the UPC.

Case details at a glance

Decision level: Munich Central Division
Citation: ORD_598480/2023
Parties: NanoString Technologies Europe Limited v President and Fellows of Harvard College
Date: 17 October 2024
Decision: dycip.com/UPC-ORD-598480-2023

Decision level: Hamburg Local Division
Citation: ORD_28786/2024
Parties: F Hoffman-La Roche AG v Tandem Diabetes Care (Inc and Europe BV) and VitalAire GmbH
Date: 09 September 2024
Decision: dycip.com/UPC-ORD-28786-2024

Decision level: Court of Appeal
Citation: UPC_CoA_5_2025
Parties: Juul Labs International Inc v NJOY Netherlands BV
Date: 30 April 2025
Decision: dycip.com/UPC-CoA-5-2025

Decision level: Milan Local Division
Citation: ORD_26013/2025
Parties: Dainese SpA v Alpinestars (SpA and Research SpA) and Motocard Bike SI
Date: 02 June 2025
Decision: dycip.com/UPC-ORD-2613-2025

Decision level: Munich Local Division
Citation: ORD_28661/2025
Parties: Esko-Graphics Imaging GmbH v XSYS (Germany GmbH, Prepress NV and Italia Srl)
Date: 16 June 2025
Decision: dycip.com/UPC-ORD-28661-2025

Decision level: Munich Local Division
Citation: ORD_43914/2024
Parties: Amgen Inc v Sanofi-Aventis (Deutschland GmbH and Groupe SA), Sanofi Winthrop Industrie SA and Regeneron Pharmaceuticals Inc
Date: 29 July 2024
Decision: dycip.com/UPC-ORD-43914-2024

Decision level: Düsseldorf Local Division
Citation: UPC_CFI_195/2025
Parties: Sanofi Biotechnologies SAS and Regeneron Pharmaceuticals Inc v Amgen (Inc, Europe BV, NV, GmbH, BV, SAS and SRL)
Date: 06 August 2025
Decision: dycip.com/UPC-CFI-195-2025

Decision level: Milan Local Division
Citation: UPC-CFI-472-2024
Parties: Dainese SpA v Alpinestars (SpA and Research SpA), Omnia Retail Srl, Horizon Moto 95, Zund.Stoff Ausburg and Motocard Bike Sl
Date: 15 January 2025
Decision (PDF): dycip.com/UPC-CFI-472-2024

Decision level: Munich Local Division
Citation: UPC_CFI_425/2024
Parties: JinAo Solar Co Ltd v Chint New Energy Technology Co Ltd and Astroenergy (Europe GmbH, GmbH, Solarmodule GmbH, Solar Netherlands BV) and Chint Solar Netherlands BV
Date: 31 March 2025
Decision: dycip.com/UPC-CFI-425-2024

Decision level: Düsseldorf Local Division
Citation: UPC_CFI_499/2023
Parties: Dexcom Inc v Abbot
Date: 20 November 2024
Decision: dycip.com/UPC-CFI-499-2023