UPC decides to bifurcate proceedings in Merz vs Viatris over SPC for Fampyra

The dispute between German pharmaceutical company Merz and generics manufacturer Viatris over the multiple sclerosis drug Fampyra continues to unfold across multiple forums. Late last week, the UPC Paris local division rejected a preliminary objection filed by Viatris under Rule 19 of the Rules of Procedure (case ID: UPC-CFI-1901/2026). Viatris had sought either a stay of proceedings or a declination of jurisdiction in favour of the Judicial Court Paris.

At the centre of the dispute is French SPC 13C0033, based on EP 2 377 536, which covers a dosing regimen for fampridine. Merz markets the drug, which aims to improve walking ability in multiple sclerosis patients, under the brand name Fampyra. The SPC expired on 25 July 2026. As a result, the proceedings will now essentially focus on whether the provisional measures were validly granted, and on determining whether damages should be ordered.

The panel, chaired by presiding judge Camille Lignières and comprising legally qualified judges Carine Gillet and Samuel Granata, as well as technically qualified judge Rainer Friedrich, dismissed Viatris’ objection in its entirety.

Order of proceedings

The parties disagreed on which court had been seised first. Merz argued that its earlier application for provisional measures at the UPC Paris local division, filed on 31 July 2025, should count as the starting point for the merits proceedings. Viatris, in turn, pointed to its own revocation and non-infringement action filed at the Judicial Court Paris on 16 April 2026, before Merz filed its infringement action on the merits at the UPC on 28 May 2026.

The Paris local division sided with Viatris on this point, finding that an application for provisional measures constitutes a distinct proceeding from an action on the merits. Accordingly, the French national court was the first to be seised in relation to the merits.

However, the UPC held that Article 29 of the Brussels I recast Regulation on lis pendens did not apply, as the two proceedings do not concern the same cause of action.

The result of this decision is a bifurcation of the case. While the French national court will rule on revocation, a declaration of non-infringement and, in the alternative, a compulsory licence claim, the UPC is seised with an infringement action.

Related actions but no stay

The Paris local division did accept that the two cases qualify as “related actions” within the meaning of Article 30 of the Brussels I recast Regulation, since they involve the same parties, the same SPC and the same underlying facts concerning the marketing of Viatris’ generic fampridine product. Nevertheless, Article 30 grants the court discretion rather than obliging it to stay proceedings.

In exercising this discretion, the judges emphasised the UPC’s objective of delivering decisions within twelve months. With the statement of defence due on 11 September 2026 and an oral hearing anticipated by the end of May 2027, the panel considered it highly likely that the UPC would rule before the national court. The court also noted that Viatris had itself referred the matter to the national court following the earlier UPC provisional measures proceedings and had withdrawn its validity challenge before the UPC Court of Appeal.

Should the Judicial Court Paris subsequently revoke SPC 033, Viatris would be able to market its generic product regardless of any UPC injunction, as such an injunction would then cease to have effect. On these grounds, the court also rejected Viatris’ alternative request for a stay under Rules 295(b) and (m) of the Rules of Procedure.

An appeal against the decision is possible.

Background to the dispute

The order is the latest chapter in an extended battle over Fampyra. Merz, which acquired the rights from Biogen in January 2025 after original patent holder Acorda filed for bankruptcy in 2024, is defending fampridine patents across multiple jurisdictions. In February 2025, the German Federal Court of Justice upheld both EP 536 and the related EP 1 732 548, overturning earlier revocations by the Federal Patent Court.

Merz initially failed at first instance at the UPC Paris local division in autumn 2025, when the court rejected its preliminary injunction request against Viatris for lack of urgency. In April 2026, however, the UPC Court of Appeal overturned that decision, granting a PI against Viatris and prohibiting the sale of Fampridine Viatris in France until the SPC expires. It was the first-ever UPC case concerning an SPC.

In Germany, Merz obtained preliminary injunctions against eight generics manufacturers at Munich Regional Court based on the German SPC derived from EP 536, while four further companies provided voluntary cease-and-desist declarations.

A&O Shearman vs Schertenleib

Merz relied once again on a team from A&O Shearman led by Paris-based partners Laëtitia Bénard and Charles Tuffreau, who have represented the pharmaceutical company throughout the UPC proceedings. Elise Romelly and Morgan Torchy also worked on the case.

Bénard previously led the successful appeal before the UPC Court of Appeal and also acts for Merz alongside Munich-based partner Stephan Neuhaus in the German proceedings.

Paris IP boutique Schertenleib continues to represent Viatris, with partner Marc Lauzeral as main representative at the UPC, assisted by Fiora Feliciaggi.

Name partner Denis Schertenleib meanwhile focuses on the part of the case playing out at the French national court. The firm regularly acts for the generics company in high-profile pharmaceutical disputes, including cases against Bayer concerning Nexavar and against Biogen concerning Tecfidera.