Background

The background of this case is that BSH brought an action before a Swedish court against the Swedish company Electrolux for infringement of the national parts of a European patent validated in Austria, Germany, Spain, France, the United Kingdom, Greece, Italy, the Netherlands, Sweden and Turkey. Electrolux responded by arguing that these parts were invalid. Electrolux referred to Article 24(4) which provides, briefly put, that “in proceedings concerned with the registration or validity of patents…., irrespective of whether the issue is raised by way of an action or as a defence” the courts of the Member States in which registration of the patent has been applied for or has taken place “shall have exclusive jurisdiction”. In view of this article, Electrolux argued that since it has contended that the foreign parts are invalid, the Swedish court has no jurisdiction to hear the infringement claims relating to these foreign parts.

In first instance, the Swedish patent court agreed with Electrolux. In appeal, the appeal court (Svea Court of Appeal, Stockholm) decides to stay the proceedings and, inter alia, asks the following questions to the CJEU:

• “Is Article 24(4) of (the Brussels I bis Regulation [1]) to be interpreted as meaning that the expression “proceedings concerned with the registration or validity of patents … irrespective of whether the issue is raised by way of an action or as a defence” implies that a national court, which, pursuant to Article 4(1) of that regulation, has declared that it has jurisdiction to hear a patent infringement dispute, no longer has jurisdiction to consider the issue of infringement if a defence is raised that alleges that the patent at issue is invalid, or is the provision to be interpreted as meaning that the national court only lacks jurisdiction to hear the defence of invalidity?”
• “Is Article 24(4) of the [Brussels I bis Regulation] to be interpreted as being applicable to a court of a third [State], that is to say, in the present case, as also conferring exclusive jurisdiction on a court in [Türkiye] in respect of the part of the European patent which has been validated there?”

The opinion of AG Emiliou

In his opinion, AG Emiliou opines that Article 24(4) should be construed narrowly, meaning that if the alleged infringer raises an invalidity defence with respect to a foreign patent, the court seized does not lose competence to hear and determine the infringement action. This court however, cannot adjudicate the validity of the patent in question.

Notably, AG Emiliou mentions that he disagrees with the CJEU decision GAT/LuK. In this case, it was ruled in general terms by the CJEU that the respective rule of exclusive jurisdiction “concerns all proceedings  relating to the (…) validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection”.  A few years later, the legislature codified this judgment  in Article 24(4). AG Emiliou describes GAT/LuK as an "unfortunate decision". In his view, the Article ensures that deference is given to the sovereignty of the state of registration, while an invalidity decision in an infringement action – which only has inter partes effect – would in fact give deference to such state sovereignty. He goes further by stating that if the solution laid down in GAT/LuK stood on that ruling alone, he would have advised the CJEU to overturn it and to declare that the respective rule of exclusive jurisdiction does not apply where invalidity is raised in infringement proceedings by way of defence (to the extent that the judgment delivered would produce inter partes effects only).

Since GAT/LuK has been codified, AG Emiliou however proposes “practical guidelines for national courts” in a cross-border infringement case in which an invalidity defence is raised with respect to a foreign patent. A solution would be to stay the proceedings until the validity of the patent at issue has been determined by the court of the state of registration. AG Emiliou however notes that such stay should only be granted if it is proportionate and fair to do so, and those delays are ‘warranted’. A court should thus assess the seriousness of the invalidity challenge first, to limit ‘the possibility of infringers raising spurious defences as dilatory tactics’. Further, when a stay is granted, the court should set a deadline to bring invalidity proceedings in the state of registration. Moreover, AG Emiliou notes that for the duration of the stay, nothing prevents the courts from ordering provisional measures including, importantly, a preliminary injunction on the basis of foreign patents.

Regarding the question on the reflective effect of Article 24(4), AG Emiliou is of the opinion that this article does not apply with respect to the validity of a patent registered in a non-EU Member State. However, the courts of the Member States, where competent under another rule of that regulation, may not adjudicate that issue. 

Of course, it remains to be seen whether the CJEU will follow the opinion of AG Emiliou.

Comment

Courts in Europe have interpreted the exclusive jurisdictional rule contained in what is now Article 24(4) in differing ways. The interpretation that was applied by inter alia the German courts, i.e. that this rule does not apply when an invalidity defence is raised with respect of a foreign patent, has been rejected by the CJEU in GAT/LuK. However after this decision, national courts continued to apply other varying interpretations, namely (i) that once invalidity is raised, infringement claims on the basis of the foreign patent fall under the exclusive jurisdictional rule and the court seized loses jurisdiction (e.g. in the United Kingdom) or (ii) a narrow interpretation whereby the court seized does not lose jurisdiction (e.g. in the Netherlands). In his opinion, AG Emiliou favours the narrow interpretation of the jurisdictional rule.

If AG Emiliou were to be followed by the CJEU, the question is how courts will in practice deal with an infringement claim based on a foreign patent right of which the validity is disputed by the defendant. The practice adopted by specifically the Dutch courts, which appears to be in line in with the practical guidelines suggested by AG Emiliou, could provide a nice inspiration to courts of other Member States. In the Netherlands, it has been confirmed by the Supreme Court in Roche/Primus [2], that a Dutch court does not lose its jurisdiction to decide on infringement if validity of the foreign patent is disputed by the defendant. Upon request of the patentee the court may decide to stay the cross-border infringement claims on the merits until the competent foreign court has decided on validity. If the claimant does not request a stay in such scenario, the court has to reject the infringement claims on the merits. However, aside from the infringement claims on the merits, a patentee may also file preliminary infringement claims in separate proceedings or in the existing proceedings on the merits in the Netherlands. In line with the CJEU decision in Solvay/Honeywell,[3] it has been consistently held in Dutch case law that in deciding on cross-border preliminary relief claims on the basis of a foreign patent, a Dutch court has jurisdiction to hear such claims regardless of Article 24(4), as it will only assess the chances of an invalidity defence in the case on the merits, but will not actually adjudicate the validity of the foreign patent [4]. Not only does a Dutch court consider itself competent to hear such claims, it can also grant cross-border preliminary injunctions against foreign defendants if there are both Dutch and foreign defendants and the plaintiff relies on the same factual and legal grounds against all the defendants [5]. In view of this approach, the Netherlands remains a suitable forum for patentees to claim a cross-border preliminary injunction against both Dutch and foreign entities (possibly of the same group) before one court.

Finally under certain circumstances, Dutch courts are also competent in relation to cross-border preliminary relief claims on the basis of the Dutch general tort provision for facilitating, promoting, benefitting from or inducing patent infringement abroad (regardless of Article 24(4)). For example, it has been decided in a number of cases that the holder of a Marketing Authorization for a medicinal product can act unlawfully towards the patentee by allowing other entities to put a product on the market that is covered by a patent [6]. Dutch Courts have granted unlawful act injunctions in relation to such actions, and also cross-border for various European countries. If the marketing authorization holder of a product is located in the Netherlands, the patentee can thus bring a cross-border injunction claim against the marketing authorization holder in the Netherlands in order to try and prevent the marketing of the product in all of Europe regardless of whether a patent is in force in the Netherlands.

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[1] Regulation of the European Parliament and of the Council of 12 December 2012 (OJ 2012 L 351, p. 1) .

[2]  Dutch Supreme Court, 30 November 2007, LJN: BA9608  (Roche/ Primus).

[3] CJEU 12 July 2012, C-616/10, ECLI:EU:C:2012:445 (Solvay/Honeywell), par. 49.

[4] See inter alia recently District Court of The Hague 13 March 2024, ECLI:NL:RBDHA:2024:3939 (Essity/M.T.S). Other examples include: Provisions Judge of the District Court of the Hague, 15 June 2021, ECLI:NL:RBDHA:2021:6085 (Belparts/Belimo) and District Court of the Hague 7 June 2017, ECLI:NL:RBDHA:2017:6136 (Carl Zeiss/VSY),.

[5] This is particularly the case in a situation where the defendants are each separately accused of committing an infringement of the same national part of a European patent which is in force in another Member State by virtue of their performance of reserved actions with regard to the same product (CJEU 12 July 2012, C-616/10, ECLI:EU:C:2012:445 (Solvay/Honeywell)).

[6] Provisions Judge of the District Court of Utrecht 15 August 2012, ECLI:NL:RBUTR:2012:7331 (Boehringer/Teva), Provisions Judge of the District Court of The Hague 30 March 2016 (Novartis/Teva), Provisions Judge of the District Court of The Hague 29 September 2020, ECLI:NL:RBDHA:2020:13650 (Novartis/Mylan).