At Dehns, we have been eagerly awaiting the outcome of the application for a stay of the Unified Patent Court (UPC) revocation proceedings between Astellas and Healios.  The Court may stay proceedings pursuant to Article 33(10) UCPA and Rule 295(a) RoP in the case that there are opposition proceedings before the EPO where “a decision in such proceedings may be expected to be given rapidly”.  Which rapidly led to the question: just what is meant by “rapidly”?  Well, we now have one answer to this question.

An opposition had been brought by Astellas on 20 April 2022 against Healios’ patent, EP3056564, and Astellas subsequently brought a revocation action against the same patent before the UPC shortly after the Court opened its doors.  In their defence to the revocation claim of 13 September 2023, Healios requested a stay in view of the ongoing opposition proceedings.  Healios also submitted a separate procedural application for a stay on 29 September.  On 25 October 2023, Astellas submitted a response to the stay application, with a further back and forth occurring between Healios and Astellas on 1 and 6 November, respectively.  Astellas is seeking freedom to operate for its retinal pigment epithelium (RPE) cell product that is currently in clinical trials.

The Opposition Division had set a date of 4 March 2024 for oral proceedings, where a decision should be announced.  In its Grounds for the Order, the Court noted that there is no guidance on the meaning of the terms “rapid” or “decision” in either the Rules of Procedure or in the UPC Agreement.

Regarding “decisions”, the Court interpreted this term broadly so that it did not need to specifically refer to a final decision, i.e. at the end of an appeal.  So, the Court is of the view that proceedings may be stayed in view of any relevant decision from the EPO, provided such decision is expected rapidly.

Regarding “rapid”, the Court noted that there should be a “concrete expectation (i.e. a known date in time)” in the near future, ahead of an expected decision by the UPC.  In the present case, the Court does not view the outcome of the opposition oral proceedings on 4 March 2024, a mere three months away, to be rapid.  The Court also notes that the decision of the Opposition Division could be appealed and that a final decision may not be expected until mid-2028, indicating that a five-year stay would certainly be inequitable to Astellas.

The Court weighed up other factors such as product development time and the claimant’s legitimate interest in obtaining “commercial certainty”.  In this case, the Court considered that a stay would not be a proportional measure at this stage.

“To order a stay now would unduly and disproportionately hinder the Claimant’s access to this Court against its legitimate interests in pursuing this action.”

Bringing some relief for patentees, the Court also recognised the potential for conflict between decisions by the EPO and the UPC.  The Court had therefore chosen a date of 14 March 2024 for the interim conference so that the parties will be able to discuss the outcome of the EPO hearing ten days prior.  Interestingly, the Court indicated that the date of 25 June 2024 set for the oral hearing might later be postponed (e.g. if the written decision of the opposition division is not yet available) and/or a potential stay could be discussed again in view of the status of the EPO proceedings.

So, this is a clear indication that the UPC is keen to press on with revocation proceedings even where there is a parallel EPO opposition, meaning that defendants should not expect stay applications to be granted for the sole reason that there is a parallel opposition.  However, it is also clear that the UPC is willing to consider stays in certain circumstances, rather than ruling them out completely.  At Dehns, we shall certainly be watching closely for how the contours of Article 33(10) UCPA develop.

A link to the Court Order is found here.