Parallel National Revocation and Discretionary Stays: The Paris Local Division
The Paris Local Division clarifies that an application for provisional measures does not establish the date a court is seised for the merits, while refusing to stay proceedings in favour of a parallel national revocation action.
When a patent proprietor secures provisional measures at the Unified Patent Court, a defendant might attempt to derail the subsequent infringement action on the merits by swiftly filing a national revocation action and asserting a jurisdictional conflict. In UPC-CFI-0001901/2026, the Paris Local Division confronted exactly this procedural maneuver when a defendant lodged a preliminary objection under Rule 19 RoP regarding a supplementary protection certificate for the multiple sclerosis drug fampridine. The resulting order clarifies how the timing of provisional measures interacts with the Brussels I recast Regulation and demonstrates the court's reluctance to halt its own rapid proceedings.
Does an application for provisional measures establish the date a court is seised for the merits?
The core chronological dispute turned on when the Unified Patent Court was formally seised. The claimants, Merz, argued that their July 2025 application for provisional measures meant the local division was seised well before Viatris filed its April 2026 national action at the Paris Tribunal Judiciaire. The judge-rapporteur explicitly rejected this premise. The order establishes that an application for provisional measures and an action on the merits are two distinct proceedings, each governed by specific rules and pursuing different objectives. Consequently, the local division held that the infringement action was introduced on 28 May 2026, making the national court the first seised.
Why did the Paris Local Division reject the lis pendens objection under Article 29 BR I recast?
Even though the Paris Tribunal Judiciaire was seised first chronologically, the judge-rapporteur found that the strict requirements of Article 29 of the Brussels I recast Regulation did not apply. This provision mandates a stay only where proceedings involve the same cause of action. The judge-rapporteur noted that the national court was asked to rule on the revocation of SPC 033, a declaration of non-infringement, and an application for a compulsory licence. In contrast, the local division was tasked solely with an infringement action. Because the core of each action differs and they do not share identical aims, the identity requirement for mandatory lis pendens was absent.
How did the judge-rapporteur exercise discretion over related actions under Article 30 BR I recast?
Having dismissed the mandatory stay argument, the court acknowledged that the two cases were indeed related under Article 30 of the Brussels I recast Regulation. Both disputes involved the same parties, the same supplementary protection certificate, and identical facts relating to the marketing of the generic product Fampridine. However, Article 30 only provides that a court may stay proceedings. The judge-rapporteur declined to exercise this discretion, heavily weighing the institutional mandate for speed. The order highlights that the court aims to deliver decisions within twelve months, with an oral hearing expected by May 2027. The national timeline, conversely, remains dependent on the parties' conduct.
What role did the defendant's procedural conduct play in refusing the stay?
The court took a highly critical view of the defendant's litigation strategy when assessing the proper administration of justice. The judge-rapporteur observed that Viatris had referred the matter to the national court only after the provisional measures proceedings had concluded before the local division. Furthermore, the defendant had withdrawn its appeal before the Court of Appeal. The judge-rapporteur reasoned that granting a stay under Rule 295 RoP would unduly delay the infringement action. The judge-rapporteur also noted that if the national court eventually revokes SPC 033, any injunction granted in the present dispute would simply cease to have effect, thereby mitigating the risk of irreconcilable judgments.
What must practitioners anticipate when running parallel national revocation actions after this order?
Defendants seeking to leverage national revocation actions to stall infringement proceedings face a narrower path. This order confirms that filing a national action between an application for provisional measures and the corresponding infringement action does not automatically trigger a mandatory stay under Article 29 BR I recast. Furthermore, the court may actively use its own rapid procedural timeline as a justification to refuse discretionary stays under Article 30 BR I recast and Rule 295 RoP. Proprietors can proceed with infringement actions knowing that local divisions may prioritize their own twelve-month schedule over pending national revocation actions, provided the causes of action remain legally distinct.
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Further Reading
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