Stay – the ‘default’ position for UK courts pending an EPO opposition?
16 April 2014
In the recent case of IPCom GmbH & Co Ltd v HTC Europe Ltd and others  EWCA Civ 1496, the Court of Appeal upheld a decision to refuse a request to stay proceedings in light of pending opposition proceedings before the EPO. The length of time typical opposition proceedings may remain pending was thought to be unsatisfactory to achieve a balance of justice for the parties.
In reaching the decision in IPCom, the Court of Appeal reviewed the guidelines for staying proceedings set out in the leading case which was Glaxo Group Ltd v Genentech Inc  EWCA Civ 23. These were set with the aim of achieving a balance of justice for the parties. The main factor to be considered was the likely time taken to reach the respective decisions. Another consideration was to prevent duplication of a decision taken elsewhere.
The revised guidelines from IPCom are largely consistent with those laid out in Glaxo, with the addition of an important consideration that the default position is now to award a stay. The burden is thus placed on the resisting party to justify why a stay should not be granted. Although the likely time delay is still an important factor, there is no absolute time period specified. Instead, the aim of achieving a balance of justice is kept in mind when assessing the likely time delay on a case by case basis. In this case, for an EPO opposition, the time delay was thought to be too long as opposition proceedings usually take several years before a final decision is made.
The outcome of this case seems to be that in the event of UK proceedings coinciding with proceedings overseas, where the co-pending proceedings is an EPO opposition which is not well advanced, the default position is to award a stay. However, it is likely that the balance of justice will still be found to lie in pushing on with UK proceedings and refusing a stay. It will be interesting to see how this plays out in practice.
Advanced Engineering Group