Merz Pharma France v Viatris Santé (CFI, 15 October 2026)

Dhenne Avocats · 17 October 2026

Our analysis

Summary

By an order of 15 October 2026 (UPC_CFI_1901/2026 and UPC_CFI_3259/2026), the Paris Local Division, sitting as a full panel presided over by Camille Lignières, referred Viatris Santé’s counterclaim for revocation to the Paris Central Division, in the dispute concerning Merz’s patent EP 2 377 536 and SPC No. 13C0033, and proceeded with the infringement action.

Question

Where the defendant itself seeks referral of its counterclaim and a stay in favour of a national court, how should the local division exercise its discretion under Article 33(3)(b) UPCA?

Decision

Viatris sought a stay of its counterclaim pending a final French ruling on jurisdiction over the revocation of the SPC, referral of the counterclaim to the central division and continuation of the infringement action, with an immediate decision (Rules 37.2 and 264 RoP). Merz did not object to referral provided the proceedings were not delayed. An order of 30 July 2026 had already refused a stay under Rule 295(b) and (m) RoP, noting that stays between the UPC and national courts fall under Article 31 UPCA read with Articles 29 and 30 of Regulation (EU) No 1215/2012. The new element was the counterclaim filed on 11 September 2026, which in Viatris’s view created lis pendens with the revocation action against the same SPC pending before the Paris Judicial Court between the same parties. The panel referred the counterclaim to the central division, competent for SPC validity under Annex II, which will also rule on the stay. The infringement action continues before the local division. The order may be appealed under Rule 220.2 RoP.

Key points for practice

• Alleged lis pendens between the UPC and the Paris Judicial Court over the validity of an SPC travels with the counterclaim to the central division, the local division confining itself to the bifurcation choice.
• A patentee consenting to referral may make its consent conditional on the infringement timetable being preserved.

Provisions applied

Rules of Procedure

Rules 37.2, 37.5, 220.2 and 264 RoP

UPC Agreement

Article 33(3)(b) UPCA and Annex II

Related decisions

• Merz Pharma France v Viatris Santé, 30 July 2026, the judge-rapporteur’s order refusing the first stay.
• Merz Pharmaceuticals v Viatris Santé, Court of Appeal, 27 April 2026, an appeal decision between the same groups.

Prepared by Dhenne Avocats from the official decision, consulted on 17 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.