1. Introduction
Recently, a discussion with colleagues brought up a highly representative question:
For a non-opted-out European patent (EP), where infringement proceedings have already been commenced before the UPC, can the defendant simultaneously file a counterclaim for revocation before the UPC and a separate revocation action before a national court? Would the national court stay its proceedings because the UPC was first seised? Conversely, if the defendant first files a revocation action before a national court and only later files a counterclaim for revocation before the UPC, could this be used strategically to delay the UPC infringement proceedings?
This question reflects an important procedural coordination issue during the UPC transitional period:
How Articles 29 and 30 of the Brussels Ibis Regulation apply in parallel proceedings before the UPC and national courts.
2. Parallel Jurisdiction during the UPC Transitional Period
Under the Unified Patent Court Agreement (UPCA), traditional European patents that have not been opted out remain subject to concurrent jurisdiction during the transitional period.
This means that:
patentees may choose to bring infringement actions before the UPC; and
where disputes arise concerning the validity of the relevant national part of the patent, the possibility of parallel proceedings before national courts may still arise during the transitional period.
Accordingly, parallel UPC and national proceedings are not uncommon during the transitional period. The key issue is therefore less whether national courts are automatically excluded, and more how parallel proceedings should be coordinated, including whether a stay is appropriate and which forum should proceed first.
3. The Brussels Ibis Framework: Articles 29 and 30
(1) Article 29: Lis Pendens (Strict Application)
Article 29 of the Brussels Ibis Regulation applies where:
the parties are the same;
the cause of action is the same; and
the object of the proceedings is the same.
Where these requirements are met, the court second seised must generally stay or decline jurisdiction.
In UPC infringement / national revocation scenarios, however, this threshold is usually difficult to satisfy:
infringement and revocation actions differ in both cause of action and object; and
affiliated group companies do not automatically qualify as the “same parties.”
As such, Article 29 has limited room for application in UPC parallel patent disputes.
(2) Article 30: Related Actions (Discretionary Coordination)
By contrast, Article 30 is of greater practical significance.
Article 30(1) provides:
“Where related actions are pending in the courts of different Member States, any court other than the court first seised may stay its proceedings”.
Two points are critical:
the wording is “may stay,” not “must stay”; and
the provision functions as a procedural coordination mechanism rather than a rigid first-to-file rule.
Accordingly, the mere existence of parallel proceedings does not automatically require a stay. Whether proceedings should be stayed depends on the degree of overlap and the procedural stage of each forum.
4. Lessons from BPatG 7 Ni 2/25
The German Federal Patent Court (BPatG), in case 7 Ni 2/25, recently addressed the relationship between UPC proceedings and national revocation actions.
The case involved a practical issue highly relevant to current UPC practice: where a non-opted-out EP patent was already subject to UPC infringement proceedings and the defendant had filed a counterclaim for revocation before the UPC, could the German national court still proceed with a revocation action concerning the German designation?
The BPatG’s basic position was relatively clear:
the UPC being first seised does not automatically exclude parallel national jurisdiction; and
national courts do not lose jurisdiction over the national part of the patent simply because UPC proceedings are already pending.
At the same time, the case also illustrates that, where a UPC counterclaim for revocation and a national revocation action proceed in parallel, the procedural coordination mechanism under Article 30 of the Brussels Ibis Regulation has practical relevance.
Whether a national court should stay its proceedings still depends on case-specific factors such as the degree of overlap, procedural progress, and considerations of procedural economy.
In this respect, the BPatG’s reasoning is broadly consistent with the UPC’s later approach in Mala v Nokia: Article 30 is designed to coordinate proceedings, rather than to establish a simple first-to-file system.
5. Mala v Nokia: The UPC’s Approach to Judicial Discretion
The UPC Court of Appeal in Mala v Nokia provided important guidance on the application of Articles 29 and 30 during the UPC transitional period.
(1) Article 29 Did Not Apply: Different Parties
In that case:
the German revocation action was brought by Nokia Solutions; and
the UPC revocation action was brought by Nokia Technology.
Although both entities belonged to the Nokia group, the UPC held that:
they were not the same legal entity; and
their interests were not indissociable.
Accordingly, Article 29 did not apply.
(2) Article 30 Applied: High Degree of Overlap
The UPC found that:
both proceedings concerned the validity of the German part of the same patent;
the invalidity grounds substantially overlapped; and
there was a real risk of inconsistent decisions.
Accordingly, the proceedings qualified as related actions.
(3) Why the UPC Granted a Stay: Procedural Progress Matters
The stay was not granted merely because the German proceedings had been filed first.
Rather, the decisive factors were:
the German proceedings had already progressed through first instance and were pending before the BGH;
the UPC proceedings were still at an early first instance stage;
waiting for the German final decision would not cause excessive delay; and
a stay would promote procedural economy.
This confirms that the UPC’s Article 30 analysis focuses on coordination and efficiency rather than formal filing sequence alone.
6. Can Defendants Use National Revocation Actions to Delay UPC Infringement Proceedings?
In theory, defendants may attempt to:
file a revocation action before a national court first;
later file a counterclaim for revocation before the UPC; and
seek a stay under Article 30.
In practice, however, the room for such a strategy appears limited. In my view, there are several reasons for this.
(1) Article 30 Only Provides Discretionary Relief
As discussed above, Article 30 uses the wording “may stay” rather than “must stay.” Accordingly, the UPC is under no obligation to stay proceedings simply because a national court was first seised.
(2) The UPC Prioritises Centralised Adjudication and Procedural Efficiency
The UPC system is designed to provide centralised adjudication of both infringement and validity. Routine stays would not sit comfortably with that institutional objective.
(3) Practical Timing Constraints Matter
In UPC proceedings, defendants typically need to complete the following within a relatively short procedural window:
preparation of the Statement of Defence;
preparation of a counterclaim for revocation; and
consideration of parallel national revocation proceedings.
Accordingly, pursuing national proceedings within the same timeframe often involves significant practical burdens. Even where a national revocation action is filed first, it may not meaningfully outpace the UPC proceedings.
7. Conclusion
Based on the above cases and analysis, during the UPC transitional period, national courts do not automatically lose jurisdiction merely because the UPC was first seised. Conversely, the UPC will not automatically stay proceedings simply because a national court was first seised.
The application of Article 30 of the Brussels Ibis Regulation is, in essence, a procedural coordination mechanism. In practice, the decisive factors are often:
the degree of overlap between the proceedings;
the relative procedural stage of each forum; and
considerations of procedural economy and efficiency.