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Journal of Intellectual Property Law & Practice Advance Access originally published online on January 31, 2008
Journal of Intellectual Property Law & Practice 2008 3(2):86-96; doi:10.1093/jiplp/jpm230
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© The Authors (2008). Published by Oxford University Press. All rights reserved

Practice Point

Should I stay or should I go?

Mark Shillito, Paul England and Rosie Patterson *

Legal context: The European Patent Convention inherently allows parallel revocation proceedings to take place in the EPO and the domestic patent courts. As a result, parties to UK patent proceedings frequently apply for a stay pending the outcome of proceedings in the EPO. There is commonly assumed to be a presumption in favour of this stay, so long as it does not amount to an injustice.

Key points: This article reviews the UK case law that has followed the Court of Appeal decision in Kimberly-Clark, to see if this presumption in favour of a stay is sustained. These cases show that, when deciding whether to order a stay, judges perform a balancing exercise of a number of considerations. In practice it appears that these considerations easily topple the presumption.

Practical significance: By providing a comparison of the considerations put before the courts in the past, this article seeks to aid practitioners in judging those factors likely to affect the success of a stay application. It also highlights the lack of authority at appellate level on whether it is lawful for patent courts not to order a stay.

Key Words: This article considers the principles of law guiding the often difficult decision as to whether UK patent revocation proceedings should be stayed pending the outcome of a concurrent EPO opposition. • The article explores the practical implications of the interrelationship between the EPO and the national courts with reference to the relevant case law. • A useful table displays the most influential arguments for and against a stay in a number of cases over the last years since the Kimberly-Clark decision.

* Herbert Smith, London.


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