During the UPC's seven year transitional period, which began on 1 June 2023, a choice of forum is provided between the UPC and the national courts of the UPC participating countries for actions concerning non opted out European Patents.
This allows different actions concerning the same non-opted out European Patent and the same parties to be filed in a national court and the UPC concurrently.
There has been a long-standing question, however: can the UPC and national courts host parallel proceedings on the same cause of action, in respect of the same European patent and the same parties. For example, if a national revocation action concerning one national part of the European patent bundle is started first, must a later UPC revocation action on that bundle have that national part of the patent carved-out?
This question arises because of 'lis pendens' rules in Articles 29 to 32 Brussels I Regulation (recast). These are intended to avoid duplicative actions in EU member state courts on the same European patent part and the risk of the conflicting decisions that may result.
This question remains largely to be resolved. However, at least in one respect, the Paris Section of the Central Division has provided some clarity.
The Paris Section has held (Mala Technologies v Nokia Technology App_8708/2024, UPC_CFI-484/2023, (2 May 2024)) that the lis pendens provisions do not apply when a national action (in this case a German Federal Court of Justice nullity action) has been started before the UPC came into force (even though in this case a pending appeal of the Federal Court's decision post-dates the start of the UPC).
In other words, a UPC action can continue with all parts of a European patent, including the national part at issue in the national proceedings, provided those national proceedings started before 1 June 2023.
