Concurrent patent proceedings: to stay or not to stay?Print publication
The issue before the Court of Appeal in IPCom GmbH & Co Ltd v HTC Europe Ltd and others  was the approach to be taken by national courts in patent proceedings where the validity of the same patent was also being considered at the European Patent Office (EPO).
EPO decisions take precedence over national decisions where the two conflict. National proceedings are often completed before EPO proceedings. Where this happens, and the EPO decision is at odds with the earlier national decision, the national decision is undermined – defeating the purpose of the proceedings. Logically therefore, staying the national proceedings pending the EPO decision makes sense – save that EPO proceedings can be very long, and parties will often not have the luxury of time to play with.
In this case, the UK court had upheld the validity of the patent in issue. After the UK decision, the EPO ruled that the patent was invalid for added matter (i.e. the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent). The patentee, IPCom, appealed. Almost two years later, the EPO Board of Appeal held that the objections to validity were overcome by amendments to the claims and referred the amended claims back for consideration of novelty and inventive step. HTC applied for IPCom’s UK action against it for infringement (and its counterclaim for revocation) to be stayed pending the outcome of the EPO proceedings. The application was refused.
HTC’s appeal was dismissed and the Court of Appeal took the opportunity to recast the guidance it had given previously, in Glaxo Group Ltd v Genentech Inc , on the question of whether UK national revocation proceedings should be stayed pending the outcome of EPO opposition proceedings. The guidance may be summarised thus:
- the discretion to order a stay is “very wide indeed” but must be exercised with reference to the specific facts of the case
- the discretion belonged to the Patents Court not the Court of Appeal and the appeal court should be slow to interfere with the judgment of the Patents Court
- there was an inherent tension, and possibility of concurrent proceedings, within the European patent system
- the default option was to order a stay and it was for the party opposing the stay to show why it should not be granted
- an important factor affecting the exercise of discretion was the extent to which the refusal of a stay would irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court intended to confer. For instance, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which would not then be repayable if the patent were revoked, this would be a factor militating in favour of the grant of a stay. This could, however, be overcome if the patentee were prepared to given an undertaking to return any such money if the patent were later revoked
- a stay could be refused where there was evidence that commercial certainty could be achieved at a considerably earlier date in the UK proceedings than in the EPO proceedings
- it was also relevant to take into account that resolution of the UK proceedings might promote settlement
- consideration should be given to the length of time it would take each set of proceedings to reach a conclusion, and the prejudice that would be suffered by the parties from delay. The public interest in achieving prompt resolution of the dispute was also relevant.
Whilst granting a stay will be the default option, the Court of Appeal is clearly well aware of the problems caused to business by protracted EPO proceedings and this is a factor that will weigh significantly for the Patents Court when considering an application for a stay. However, perhaps the single most important element to take from the guidelines is that patentees seeking to resist a stay may find their prospects of succeeding in doing so enhanced by the giving of an undertaking to repay any compensation should the patent later be revoked in the EPO proceedings.
  EWCA Civ 1496
  EWCA Civ 23