Merz Pharma France v Viatris Santé (CFI, 30 July 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 30 July 2026, the Paris Local Division dismissed Viatris Santé’s preliminary objection in the infringement action brought by three Merz companies on the basis of French supplementary protection certificate No. 13C0033, derived from EP 2 377 536. Viatris had asked the UPC to decline jurisdiction in favour of the Paris Judicial Court or, failing that, to stay the proceedings. The order is a useful guide to how the UPC deals with a national court seised first of a revocation and non-infringement action concerning the same right.

Question

Must the UPC decline jurisdiction or stay its proceedings, on grounds of lis pendens or related actions (Articles 29 and 30 of Regulation 1215/2012) or under Rule 295, where the defendant has previously brought an action for revocation of the SPC and a declaration of non-infringement before the Paris Judicial Court?

Decision

The objection was filed in time and was admissible. The Paris Judicial Court, seised on 16 April 2026, was seised before the UPC merits action of 28 May 2026, the separate and now closed provisional measures proceedings did not fix the date of seisure. Article 29 nevertheless did not apply, since the actions lacked the same subject matter and cause of action: infringement on one side, revocation, non-infringement and a compulsory licence on the other. The actions were related, but Article 30 is discretionary: the UPC expected to rule before the national court (oral hearing by May 2027 at the latest), Viatris had itself chosen the national forum and withdrawn its validity challenge before the Court of Appeal, and a stay would unduly delay the proceedings. A stay under Rule 295(b) and (m) was refused for the same reasons. Costs were reserved for the main proceedings.

Key points for practice

• A national action for revocation and non-infringement does not share the subject matter of a UPC infringement action: Article 29 lis pendens does not apply, and relatedness under Article 30 does not compel a stay.
• An earlier application for provisional measures before the UPC does not count as seisure for the merits action.

Provisions applied

Agreement on a Unified Patent Court

Arts 31, 32(1)(a), 60(8), 62(5), 63(1) and 83

Rules of Procedure

Rules 19.1(a), 20.1, 21.1, 220.2 and 295(b) and (m)

Regulation (EU) No 1215/2012

Arts 29, 30, 31(2) and 32

Other provisions

French Intellectual Property Code, Art. L. 615-9

Case law cited

Merz Pharmaceuticals v Viatris Santé, Court of Appeal, 27 April 2026, Mala v Nokia, Court of Appeal, 17 September 2024, Aylo v Dish, Court of Appeal, 3 September 2024, CJEU, 12 March 2026, Winderwill, C-516/24

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.