UPC_CoA_237/2025 – Juul v NJOY

Expert Commentary

Stay of proceedings Background Juul’s patent has been revoked by the Central Division in Paris. Juul appealed and asked for a stay until the decision of the Board of Appeal in opposition proceedings. NJOY agrees. The Court of Appeal (“CoA”) The CoA refers to R. 295(a) RoP (Court can stay when a decision in opposition proceedings is given rapidly) and to R. 298 RoP (stay is possible if opposition proceedings are “accelerated”). The CoA refers to its decision in Carrier v Bitzer (see Hoyng, Case Law Court of Appeal of the UPC 2023-2024, p. 37). The CoA contacted the Board of Appeal, which stated that the hearing will be on 20 October 2025. The CoA calculated (as the grounds of appeal had not yet been lodged in the appeal proceedings) that the decision of the CoA could be expected around the same date. The CoA states that there are no pending infringement proceedings or other circumstances which plead against a stay; on the contrary, the patentee Juul agrees Stay granted. Comment An important decision for representatives: the fact that parties agree does not necessarily mean that a stay is granted. That is a very important and, in my opinion, fully understandable message. The UPC promises rapid decisions, also on appeal. It is not up to only the parties to decide on stays or, for that matter, on extensions, as there is a general interest in decisions within a reasonable period. In the case of a revocation action, that is even clearer as it is an actio popularis: it is in the general interest to have certainty about which exclusive rights must be respected. The same is true, however to a lesser extent, for infringement actions which define the scope of such exclusive rights. In this case the decision is understandable as it is very well possible (especially as the patent has already been revoked in first instance) that a lot of double work would be done for nothing if the Board of Appeal would revoke the patent. Moreover, there are no infringement proceedings pending and parties agree. So, in this case, there are very clearly (exceptional) circumstances, but the general rule remains valid: in principle, no stays, not even in so-called “accelerated” opposition proceedings, which in general are not so accelerated, although the EPO is improving. As to the latter: why can the 9-month opposition term not be shortened to three months? The prosecution of a patent is fully transparent, and competitors can therefore start doing prior art searches, etc., even before the grant. So three months seems more than enough to draft a decent opposition. If the long terms for response are also shortened, then it should be possible (with enough manpower at the EPO) to truly shorten opposition proceedings. The UPC shows that it is possible with hard-working, capable judges and representatives, many of whom by now understand that extensions, etc., are something of the past!

Full Decision Text

UPC Court of Appeal UPC_CoA_237/2025 APL_13193/2025 App_14082/2025 ORDER of the Court of Appeal of the Unified Patent Court issued on 28 April 2025 regarding stay of proceedings (R. 295 RoP) Headnote: In an action for revocation, where both parties agreed to a stay, the appeal proceedings have been stayed pending the outcome of parallel opposition proceedings before the EPO Boards of Appeal, where the opposition proceedings could be expected to result in a final decision before or just after, in any case rapidly, in relation to the possible date for an oral hearing before the Court of Appeal. Keyword: Stay of proceedings (R. 295 RoP), parallel opposition proceedings APPELLANT (AND DEFENDANT BEFORE THE COURT OF FIRST INSTANCE) Juul Labs International, Inc., San Francisco, USA (hereinafter ‘Juul Labs‘) represented by European Patent Attorney Bernhard Thum, Thum & Partner, Thum, Mötsch, Weickert Patentanwälte, Munich, Germany, and by representatives from Bardehle Pagenberg, Munich, Germany RESPONDENT (AND CLAIMANT BEFORE THE COURT OF FIRST INSTANCE) NJOY Netherlands B.V., Amsterdam, The Netherlands (hereinafter ‘NJOY‘) represented by attorney‐at‐law Dr. Henrik Holzapfel, McDermott Will & Emery, Düsseldorf, Germany, and other representatives from that firm PATENT AT ISSUE EP 3 430 921 1 PANEL AND DECIDING JUDGES Panel 2 Rian Kalden, presiding judge and legally qualified judge Ingeborg Simonsson, legally qualified judge and judge‐rapporteur Patricia Rombach, legally qualified judge Wiem Samoud, technically qualified judge Andrea Scilletta, technically qualified judge IMPUGNED DECISION OF THE COURT OF FIRST INSTANCE Central Division Paris, 17 January 2025, revocation action ACT_571808/2023, UPC_CFI_316/2023 LANGUAGE OF THE CASE English THE APPLICATION 1. NJOY brought an action for revocation of the patent at issue against Juul Labs before the Central Division Paris. The Central Division revoked the patent at issue with effect for the territories of Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden. 2. Juul Labs has appealed. With reference to parallel opposition appeal proceedings before the EPO Boards of Appeal, Juul Labs has also applied for a stay of the proceedings. Juul Labs has set forth that the parallel proceedings have been accelerated, with scheduling of the oral proceedings for 20 October 2025. 3. NJOY has agreed to a stay of the proceedings. REASONS 4. Pursuant to R. 295(a) RoP, and in accordance with Art. 33(10) UPCA, the Court may stay proceedings where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly. 5. The terms “rapid decision” and “rapidly” in these provisions must be interpreted inter alia in the light of the relevant circumstances of the case, such as the stage of the opposition proceedings and the stage of the revocation proceedings (CoA, order on 28 May 2024, APL_3507/2024, UPC_CoA_22/2024, Carrier vs Bitzer). 6. It can be added that pursuant to R. 298 RoP, second sentence, the Court may of its own motion or at the request of a party stay its proceedings in accordance with R. 295(a) pending the outcome of accelerated proceedings before the European Patent Office. 2 7. The present appeal concerns an action for revocation. It is in an initial stage where the Statement of appeal was lodged on 17 March 2025, the Statement of grounds of appeal would ordinarily be expected on 19 May 2025, and the Statement of response in the second half of August 2025. Application of the normal two month notice period in R. 239.2 RoP for summoning to an oral hearing would place the hearing in the Court of Appeal around the second half of October 2025. 8. The Court of Appeal has been in contact with the Boards of Appeal, and has received confirmation that their appeal proceedings have been accelerated in view of the UPC proceedings and that oral proceedings, although not yet summoned, are planned for 20 October 2025. The decision without reasons will be announced at the end of the oral proceedings and the written decision with the reasons will be published some time thereafter. 9. In view of this, the decision of the Boards of Appeal can be expected to be issued before or just after, in any case rapidly, in relation to the possible date for an oral hearing before the Court of Appeal. There are no pending infringement proceedings or other circumstances that would balance against a stay. To the contrary, it is JuuL Labs – who has a primary interest in a swift decision on appeal – who requested a stay. In addition, NJOY has agreed to the requested stay. 10. Juul Labs’ application to stay the appeal proceedings shall be granted. ORDER A stay of the revocation proceedings before the UPC is ordered until such time as the EPO Boards of Appeal has given a final decision in the opposition proceedings or those proceedings are otherwise concluded. The parties shall inform the Court of Appeal forthwith about the outcome of the parallel proceedings. Issued on 28 April 2025 Rian Kalden, presiding judge and legally qualified judge Patricia Rombach, legally qualified judge Ingeborg Simonsson, legally qualified judge and judge‐rapporteur Wiem Samoud, technically qualified judge Andrea Scilletta, technically qualified judge

Key Holdings

• Stay of proceedings granted pending EPO Board of Appeal decision.
• Agreement of parties alone is insufficient for a stay.
• No pending infringement proceedings cited as factor.

Tags

• Opposition Proceedings
• Revocation
• Stay of Proceedings

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