The Court of Appeal (CoA) of the UPC issued a key decision clarifying how the UPC deals with parallel proceedings issues during the UPC’s transitional period. The Mala v Nokia case sets a precedent for future cases.
In this case, Nokia Technology GmbH had filed a revocation action before the UPC late 2023 while the validity of the German (and sole) part of the European patent at issue was pending before the Bundesgerichtshof in an action another Nokia entity had previously filed.
Mala raised a preliminary objection and requested the Central Division (CD, Paris seat) to decline its jurisdiction, or to stay the proceedings pending the outcome of the German proceedings. By decision of 2 May 2024, the CD had dismissed Mala in their preliminary objections ruling that the provisions set under Articles 29 to 32 of Brussels I Recast Regulation were not applicable in accordance with Article 71c (2) of this Regulation as the German revocation action had been initiated prior to the start of the transitional period.
By decision of 17 September 2024, the CoA quashed the CD decision and held that:
- Articles 29 to 32 of Brussels I Recast Regulation aim at reducing the risk of conflicts between decisions and the possibility of parallel proceedings. Hence, Article 71c (2) must be interpretated as meaning that Articles 29 to 32 must apply when proceedings about a same patent are brought before a national court and before the UPC, even though the national proceedings were brought prior to the start of the transitional period.
- In the present case, the CD was not required to (and was found right not to) decline its jurisdiction because the claimants (i.e. Nokia Solutions in the German procedure, Nokia Technology in the UPC procedure) cannot be held as the same party, although the cause of action is identical.
- Under Article 30 of Brussels I Recast Regulation, the CD should have stayed the UPC proceedings until final decision in the German procedure.
- The CoA sets as a principle that national revocation proceedings must be distinguished from opposition proceedings. Oppositions can be filed in parallel to UPC revocation actions but the UPC refuses to stay a revocation action pending a decision of the EPO (see CoA, Carrier v. Bitzer, 28 May 2024, ORD_25123/2024, UPC_CoA_22/2024 and other decisions1).
- Furthermore, in the Mala v Nokia case, the CoA held that the circumstances required the stay of the UPC revocation proceedings: identical patent, claimants being affiliates of the same holding company (i.e. Nokia Corp), German appeal proceedings at a late stage not implying an excessively long stay (see for a contrary decision: Munich LD, Philips v. Belkin, 13 September 2024, UPC_CFI_390/2023) and reduced costs possible in case of a settlement.
Access the full decision (CoA, Mala Technologies Ltd. v Nokia Technology GmbH, 17 September 2024, APL_26889/2024, UPC_CoA_227/2024).
Footnotes
- CD, Munich, Astellas Institute for Regenerative Medicine v. Helios & Osaka University, 20 November 2023, ORD_579547/2023, UPC_CFI_80/2023; CD, Paris, Toyota Motor v. Neo Wireless, 24 April 2024, ORD_18484/2024, UPC_CFI-361/2023; Nordic-Baltic, RD, Meril v. Edwards Lifesciences, 20 August 2024, ORD_16663/2024, UPC_CFI_380/2023 ↩︎
About the author(s)
Marianne is an Intellectual Property lawyer in Paris. She is a recognised trial lawyer in national pan-European and international patent, trademark, and trade secrets disputes in the electronics and telecommunications, pharmaceutical, chemistry, and consumer products sectors.
Mathilde is an intellectual property senior associate, who focuses her practice in multiple areas, including patents, trademarks, designs, trade secrets, copyright, both in litigation and non-litigation matters.
Alexis Augustin is a principal associate specialized in industrial property registered at the Paris Bar.
