Third-Party Revocation Actions and Stays on Appeal: Two Orders Compared
The Court of Appeal clarifies that an advanced appeal will not be stayed merely because an uninvolved third party files a new revocation action at the central division. Two parallel orders highlight the strict limits of Rule 222.2 RoP.
The Court of Appeal has established that an infringement and revocation appeal will not be stayed merely because an uninvolved third party has subsequently filed a separate revocation action against the same patent before the central division.
Why did the appellants seek a stay based on a third-party revocation action?
In twin orders UPC-COA-0000110/2026 and UPC-COA-0000099/2026, the Court of Appeal addressed parallel requests to stay appellate proceedings. The dispute originated at the Düsseldorf local division, where QuantifiCare S.A. successfully asserted EP 3 156 843 against Canfield. The local division upheld the infringement action and dismissed Canfield's counterclaim for revocation in a decision dated 23 April 2026. Canfield appealed both findings.
During the advanced written phase of the appeal, a third party, Manteana Holdings SAS, filed a new revocation action against the same patent before the Paris central division on 24 August 2026. Relying on this development, Canfield requested a stay of the appeal under Rule 295(m) RoP, which permits a stay where the proper administration of justice so requires. They also invoked Rule 242.2(a) RoP in conjunction with Rule 118.2(b) RoP, a framework that allows a division to stay an infringement action when a revocation action is pending between the same parties before the central division. The appellants argued that the new validity attacks were highly promising and would ultimately lead to the patent being revoked.
How did the panel assess the requirement for special circumstances?
The Court of Appeal anchored its analysis in the fundamental mandate for efficiency. Citing the preamble to the Rules of Procedure, the panel reiterated that proceedings must be conducted in an efficient and cost-effective manner. A stay is only permissible if special circumstances justify the resulting delay.
The panel found that a revocation action filed by an uninvolved company does not constitute such special circumstances (reasons 10). The rule framework invoked by the appellants explicitly contemplates stays when a revocation action is pending between the same parties. Here, the third party Manteana was entirely separate from the appellate proceedings. Furthermore, the appellate review already encompassed the local division's dismissal of the revocation counterclaim. Because the Court of Appeal is tasked with reviewing the patent's validity based on the specific grounds raised by the appellant, there is no procedural justification to wait for a separate central division assessment initiated by a third party (reasons 11).
How does a stay request interact with the limits on late submissions?
A central pillar of the panel's reasoning concerned the strict boundaries of appellate review and the front-loaded nature of Unified Patent Court proceedings. Under Rule 222.2 RoP, the Court of Appeal has the discretion to disregard new requests, facts, and evidence, taking into account whether the party can justify why the submissions could not reasonably have been made during the proceedings before the Court of First Instance.
The Court of Appeal identified a risk of procedural circumvention. If the appeal were stayed to await the outcome of the central division action, the appellant might effectively benefit from new facts and evidence introduced by the third party. The panel held that granting a stay in these circumstances would undermine the strict requirements of Rule 222.2 RoP, as it would allow material into the appellate assessment that the appellant could no longer introduce directly (reasons 12).
What role did the procedural timeline play in the refusal?
The disparate procedural stages of the two actions provided a final, practical ground for refusal. The panel noted that the central division revocation action was only at the very beginning of the written procedure. In stark contrast, the appeal proceedings were already in an advanced written phase.
Consequently, a stay would lead to a long delay. The Court of Appeal concluded that there was no reason to stay an advanced appellate review until the central division reached a decision, nor until the third-party action was finally resolved (reasons 13 and 14).
What must practitioners anticipate when facing parallel third-party validity attacks?
The twin orders clarify the procedural independence of appellate proceedings from parallel actions before the Court of First Instance filed by third parties. Defendants cannot rely on a newly filed central division revocation action to stay an advanced appeal merely because the new validity attacks appear highly promising. The requirement for special circumstances to justify a delay sets a high bar that a third-party filing alone does not clear.
If an appellant wishes to rely on new validity arguments or prior art on appeal, they must independently satisfy the strict admissibility criteria of Rule 222.2 RoP. They cannot bypass this procedural filter by pointing to a parallel action filed by another entity. The Court of Appeal prioritized the conclusion of its own pending validity review over waiting for a central division decision, particularly because the appeal was already in an advanced stage.
Sources
Further Reading
Articles related to the topics covered above.
Defending Dependent Claims Without Amendment: The Court of Appeal on Rule 30 RoP
The Court of Appeal clarifies that defending granted dependent claims does not require a formal application to amend the patent. Proprietors must, however, explicitly substantiate which combinations they consider valid.
Unsubstantiated License Defenses and Accessory Liability: The Mannheim Local Division on EP 2 563 695 B1
The Mannheim Local Division clarifies the strict substantiation requirements for license defenses based on parallel national proceedings. The decision also applies the Philips v. Belkin standard to statutory corporate directors.
New Legal Arguments vs New Facts on Appeal: The Court of Appeal on Rule 222 RoP
The Court of Appeal clarifies the boundary between admissible new legal arguments and inadmissible late-filed evidence under Rule 222.2 RoP. Blanket references to first-instance prior art are also deemed insufficient.