January 13, 2026
Introduction
A recent decision from the UPC Court of Appeal provides valuable procedural guidance beyond the core issues of damages and costs. The ruling clarifies the Court’s expectations regarding requests for a stay of proceedings and reinforces the legal responsibilities of active market participants.
Facts and Procedural History
The case (UPC_CoA_8/2025) concerns a patent infringement action brought by Oerlikon (Plaintiff and patentee) against Bhagat Textile Engineers (Defendant). Oerlikon is the owner of European patent EP 2 145 848 with unitary effect. Oerlikon accused Bhagat of infringing this patent by exhibiting a corresponding machine at the ITMA trade fair in Milan. At first instance, Bhagat neither contested the infringement nor the validity of the patent but requested a stay of the infringement proceedings pending the outcome of a parallel case where the patent’s validity was being challenged by a third party. The Milan Local Division rejected the stay and found in favor of Oerlikon. Bhagat filed an appeal.
Decision of the Court of Appeal
The Court of Appeal partially overturned the decision of the first instance. The award of provisional damages was set aside, but the appeal was rejected on all other points, including the first instance court’s handling of the stay request and cost allocation. Due to the partial success of both parties, the costs of the appeal were apportioned equitably.
Key Findings of the Court on Procedural Strategy
Stay of Proceedings (R. 295(m) RoP): The first instance court had rejected the infringer’s request to stay the infringement proceedings. The reasoning was that the infringer himself had not contested the validity of the patent in the present case, either by filing a counterclaim for revocation or by intervening in parallel invalidity proceedings.
Prohibition of Passive Reliance: The decision establishes that a party cannot request a stay based on a validity challenge it is not actively pursuing itself. A defendant in an infringement action cannot passively wait for a third party’s action to resolve the issue of patent validity.
Procedural Advice and Implications
Strategy for Seeking a Stay: A defendant in an infringement case cannot expect to be granted a stay pending a parallel validity challenge unless they actively challenge the patent’s validity themselves. The most direct path is to file a counterclaim for revocation.
This article is intended for general informational purposes only.
Authors
Dr. Klaus Platzer
Mingyan Xi