- with readers working within the Business & Consumer Services and Healthcare industries
- within Wealth Management, Insolvency/Bankruptcy/Re-Structuring and Employment and HR topic(s)
- with Inhouse Counsel
In the latest round of the Merz v Viatris dispute over the alleged infringement of Merz’s MS drug dosing regime patent (drug brand name Fampyra), the UPC Paris Local Division (Paris LD) has held that neither a PI application (brought at the UPC by Merz in July 2025) nor a combined revocation and DNI (brought by Viatris at the Paris Tribuanl Judiciare (national court) in April 2026) are the “same cause of action” for the purposes of Art 29 Brussels Regulation (BR) as the infringement action on the merits (brought by Merz at the UPC in May 2026): “… the actions in question cannot be considered to have the same subject matter since the core of each action differ and the actions do not have the same aims”. Thus the Paris LD held it was not obligated to stay or decline jurisdiction in favour of the national court.
In finding that the PI application (made by Merz against Viatris in July 2025) was not the same cause of action as the proceedings on the merits for infringement, the Paris LD held that an application for provisional measures (such as a PI application) and an action on the merits “are two distinct proceedings, each governed by specific rules and each pursuing a different objective”. The court noted that the PI action here is now closed and “[m]oreover, an application for provisional measures is not necessarily followed by the filing of an action on the merits.”
Although the Paris LD found the revocation and DNI brought in the national court by Viatris was "first in time" compared to the Merz application on the merits and the two were "related actions" under Art 30 BR , it chose not to exercise its discretion to stay the UPC proceedings or decline jurisdiction in favour of the national court action under this article either.
The Paris LD was confident that the UPC proceedings would be completed before the national court proceedings and assured the parties that any injunction could be unwound should the national court hold that the patent must be revoked. The fact that Viatris had dropped invalidity claims in the UPC PI application at the Court of Appeal stage appeared to add to the Paris LD’s view that no injustice was being done to Viatris in not exercising discretion under Art 30 to stay UPC proceedings in favour of the "first in time" national court proceedings brought by Viatris.
Viatris’ applications for a stay under various parts of Rule 295 UPC Rules of Procedure also failed, the Paris LD finding that to grant a stay was not in the interests of justice, citing the same reasoning as it had applied in not exercising its discretion under the Art 30 application.
Thus the dispute will now continue in a bifurcated fashion with the revocation and DNI action in the Paris national court and the infringement action in the Paris LD.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
[View Source]