King & Wood Mallesons

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Court of Appeal recasts guidance on stays of English patent actions

The Court of Appeal has recast the guidance concerning the circumstances in which the English Court should stay patent proceedings before pending the outcome of related EPO proceedings. In the case in question (IPCom v HTC), HTC was seeking a stay of patent infringement and validity proceedings (due to be heard in December 2013), pending the outcome of EPO proceedings. The Patents Court judge had refused a stay but, following the Supreme Court’s comments in Virgin v Zodiac that the guidance on stays should be revisited, had granted HTC permission to appeal.

The Court of Appeal has confirmed that the default position is that English infringement and/or revocation proceedings should be stayed pending the outcome of EPO proceedings and it is for the party resisting the stay to persuade the court that a stay should not be granted. As before, the likely timescale of the two sets of proceedings remains an important factor in the court’s decision whether to grant or refuse a stay, although the revised guidance no longer describes this as carrying any more weight than the other factors. Instead, the Court of Appeal has added the caveat that delay is not a standalone factor and the court must consider the prejudice any party will suffer because of that delay, as well as issues relating to certainty or lack of certainty for the parties and more broadly.

An important factor introduced into the guidance is the extent to which refusal of a stay will irrevocably deprive a party of any part of the benefit provided by the concurrent jurisdiction of the European Patent Office and national courts — if allowing the case to proceed before the English court may allow the patentee to obtain monetary compensation that might not be repayable if the patent is subsequently revoked, this must now be considered as a weighty factor in favour of a stay (although the patentee may offer undertakings to repay)…

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