Mala v Nokia (CoA, 17 September 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 17 September 2024 (UPC_CoA_227/2024), the Court of Appeal partly set aside the order of the Paris Central Division of 2 May 2024 and stayed the revocation action brought by Nokia Technology against Mala Technologies’ EP 2 044 709 until the German Federal Court of Justice (BGH) gives its decision in parallel national revocation proceedings. The court held that the lis pendens and related-actions rules of the Brussels I recast Regulation (Arts 29 to 32) apply, through Art. 71c(2), even where the national action was brought before the transitional period began. It declined, however, to decline jurisdiction, since the parties were not the same, and treated a request for a stay under Art. 30 as a preliminary objection under Rule 19. The order sets the framework for coordinating the UPC with national courts seised of the validity of the same national part of a European patent.

Facts and procedure

Mala’s patent has effect only in Germany. On 29 April 2021 Nokia Solutions and Networks brought a revocation action before the Federal Patent Court, which dismissed it on 18 July 2023 and upheld the patent. An appeal is pending before the BGH (X ZR 6/24), with no hearing date set (paragraphs 2, 3 and 5). On 15 December 2023 Nokia Technology, a company of the same group, brought a revocation action before the Central Division (paragraph 4). Mala lodged a preliminary objection asking the UPC to decline jurisdiction or, in the alternative, to stay the proceedings (paragraph 6). The Central Division rejected every request: on a literal reading, Art. 71c(2) excluded Arts 29 to 32 because the national action predated the transitional period, nor was a stay otherwise justified (paragraph 8). Mala appealed.

The applicable law

Arts 71a to 71c of Regulation No 1215/2012 govern the application of the lis pendens and related-actions regime between the UPC and the courts of the Member States during the transitional period under Art. 83 UPCA. Art. 29 requires a court to decline jurisdiction where the cause of action and the parties are the same. Art. 30 allows a stay of related actions. Art. 31 deals with exclusive jurisdiction. Rule 19 governs the preliminary objection.

Question

Do Arts 29 to 32 of the Brussels I recast Regulation apply where the national action was brought before the transitional period opened and, if so, must the UPC decline jurisdiction or may it stay the revocation action?

Decision

The court read Art. 71c(2) in the light of the aim of Arts 29 to 32, which is to minimise parallel proceedings and irreconcilable decisions: those provisions apply wherever proceedings are pending before both the UPC and a national court during the transitional period, even if the national action began earlier (paragraphs 12 to 16). Art. 29 requires the same parties: Nokia Technology and Nokia Solutions are distinct legal entities without indissociable interests, so the condition is not met (paragraphs 18 and 19). Art. 31 does not depart from that requirement (paragraphs 20 and 22). A request for a stay under Art. 30 belongs to the chapter on jurisdiction and calls for an early decision: it is a preliminary objection (paragraph 23). The principles developed for stays pending EPO opposition do not apply unconditionally to parallel national revocation proceedings (paragraph 25). A stay was justified by the near identity of the causes of action, both concerning the German part, by the close link between the two claimants, both subsidiaries of Nokia Corp., and by the more advanced stage of the German proceedings (paragraphs 26 to 30). A reference to the Court of Justice was unnecessary (paragraphs 32 and 33).

Key points for practice

• The Brussels I recast lis pendens and related-actions regime operates between the UPC and national courts even for national actions brought before 1 June 2023, provided they are still pending.
• Companies of the same group are not « the same parties » under Art. 29: the UPC will not decline jurisdiction, but their closeness weighs in the assessment of a stay.
• A request for a stay under Art. 30 must be made by way of a Rule 19 preliminary objection.
• Practical point: a proprietor facing a UPC revocation action while national proceedings on the same national part are well advanced should document the overlap of grounds, the links between the claimants and the national timetable in support of a stay.

Provisions applied

Agreement on a Unified Patent Court

Arts 3(c), 33(10) and 83

Rules of Procedure

Rules 19 and 295(m)

Regulation (EU) No 1215/2012

Arts 29, 30, 31, 71a, 71b and 71c

Case law cited

Carrier v Bitzer, Court of Appeal, 28 May 2024

Related decisions

• Nokia v Mala, 2 May 2024, Central Division order partly set aside.
• Mala v Nokia, 21 June 2024, earlier order of the judge-rapporteur on appeal.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.