European Union: European Intellectual Property Cat-and-Mouse: ECJ Clarifies Jurisdiction in Patent Disputes

Last Updated: 19 July 2006
Article by Duncan Bucknell

Take home

Can you sue a group of related companies for patent infringement across Europe in one consolidated proceedings in a single jurisdiction?

  1. No. A patentee must sue each infringer in their country of domicile pursuant to the patent(s) and law in force there.
  2. It does not matter that the alleged infringers are companies in the same group acting in an identical manner according to a common policy: C-539/03 Roche Nederland and Others.

In which jurisdiction can you claim or counter-claim for invalidity of an intellectual property right?

  1. To invalidate a French patent, you must seek revocation in France (and so on).

The Courts of the Contracting State in which a patent was applied for have exclusive jurisdiction in questions of patent validity irrespective of how those questions arise: C-4/03 GAT and Art 16(4) Brussels Convention.

Implications

It is now clearer than ever that cross-border injunctions in patent disputes do not comply with the Brussels Regime. In the past, such injunctions were commonly granted by the Courts in the Netherlands (and sometimes in Germany).

In the past, Dutch Courts have allowed infringement proceedings to be brought against a group of companies in different Contract States if the central policy had been determined by the Dutch defendant (the "spider in the web"). It is now clear that this practice does not comply with the Brussels Regime.

Comment

On Thursday 13 July 2006, the First Chamber of the European Court of Justice handed down two judgments which clarify the game of intellectual property cat-and-mouse that is played across the European Contracting States.

1 - C-539/03 Roche Nederland and Others.

The patent in suit was EP 131 627. The patentees, Drs Primus and Goldenberg had argued that Article 6(1) of the Brussels Convention applies in the present case to allow all of the infringement proceedings to be heard together.

(Article 6(1) basically states that where there is more than one defendant, then suit can be brought in the Contracting State of one of the defendants. Article 6(1) is an exception to Article 2 which states that a defendant domiciled in a Contracting State must be sued there in that State.)

Amongst other things, the Court stated:

  1. For Article 6(1) to apply there must be a sufficiently close connection so that it is expedient to determine the actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings: Case 189/87 Kalfelis [1988] ECR 5565, paragraph 12 (repeating the words of Article 22).
  2. For decisions to be contradictory it is not sufficient that there is a divergence in outcomes. The divergence must also arise in the context of the same situation of law and fact.
  3. The facts will not be the same in patent infringement proceedings where different companies are being sued, even if the impugned activity is the same.
  4. The legal situation will not be the same as the law to be applied varies in each state.
  5. To agree with the patentees would multiply the potential heads of jurisdiction, undermine the predictability of the rules of jurisdiction, and consequently undermine the principle of legal certainty, which is the basis of the Convention.
  6. The negative effects of such a decision damage would be even more serious if it provided the defendant a wide choice, thereby encouraging forum shopping which the Convention seeks to avoid and which the Court, in its judgment in Kalfelis, specifically sought to prevent.
  7. Even if a court seised by the defendant were able to accept jurisdiction, the consolidation of the patent infringement actions before that court could not prevent fragmentation of the patent proceedings as soon as validity is brought into question (which is commonly the case).

2 - C-4/03 GAT

This judgment applies to any proceedings relating to the validity, existence or lapse of a patent or an alleged right of priority by reason of an earlier deposit (see Case 288/82 Duijnstee [1983] ECR 3663, paragraph 19).

Given the wording of Article 16(4) of the Brussels Convention, it is quite likely that C-4/03 GAT will also apply to disputes relating to trade marks and designs.

Amongst other things, the Court stated:

  1. Article 16 seeks to ensure that jurisdiction rests with courts closely linked to the proceedings in fact and law.
  2. The Courts of the jurisdiction in which a patent was applied for are best placed to adjudicate a dispute concerning validity of the patent or the existence of a deposit or registration.
  3. The concern for sound administration of justice is all the more important in the field of patents since, given the specialised nature of this area.
  4. The issuance of patents necessitates the involvement of the national administrative authorities.
  5. To allow a court seised of an action for infringement or for a declaration that there has been no infringement to establish, indirectly, the invalidity of the patent at issue would undermine the binding nature of the rule of jurisdiction laid down in Article 16(4) of the Convention.
  6. To hold otherwise would enliven the possibility of circumventing Article 16(4) of the Convention and would have the effect of multiplying the heads of jurisdiction, undermine the predictability of the rules of jurisdiction, and consequently to undermine the principle of legal certainty, which is the basis of the Convention
  7. To hold otherwise would multiply the risk of conflicting decisions which the Convention seeks specifically to avoid (see, to that effect, Case C-406/92 Tatry [1994] ECR I-5439, paragraph 52).
  8. A judgment which falls foul of the provisions of Article 16 will not benefit from the system of recognition and enforcement under the Brussels Convention: See Article 19, first paragraph of Article 28 and second paragraph of Article 34.

Background

The Brussels Regime consists of the Brussels Convention, the Lugano Convention and the Brussels Regulation (Council Regulation (EC) No 44/2001 of 22 December 2000).

Article 6 of the Brussels Convention, which appears in Section 2 of Title II, entitled ‘Special jurisdiction’, states:

"[A defendant domiciled in a Contracting State] may also be sued:

(1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled;

…"

Article 16(4) of the Brussels Convention states:

"The following courts shall have exclusive jurisdiction, regardless of domicile:

4. in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place;.."

Article 18 of the Brussels Convention states:

"Apart from jurisdiction derived from other provisions of this Convention, a court of a Contracting State before whom a defendant enters an appearance shall have jurisdiction. This rule shall not apply … where another court has exclusive jurisdiction by virtue of Article 16."

Articles 64(1) and (3) of the Munich Convention provides:

"(1) A European patent shall … confer on its proprietor from the date of publication of the mention of its grant, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.

(3) Any infringement of a European patent shall be dealt with by national law."

The question to be determined by the ECJ in C-4/03 GAT was:

‘Should Article 16(4) of the Convention … be interpreted as meaning that the exclusive jurisdiction conferred by that provision on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place or is deemed to have taken place under the terms of an international convention only applies if proceedings (with erga omnes effect) are brought to declare the patent invalid or are proceedings concerned with the validity of patents within the meaning of the aforementioned provision where the defendant in a patent infringement action or the claimant in a declaratory action to establish that a patent is not infringed pleads that the patent is invalid or void and that there is also no patent infringement for that reason, irrespective of whether the court seised of the proceedings considers the plea in objection to be substantiated or unsubstantiated and of when the plea in objection is raised in the course of proceedings?’

The questions to be determined in C-539/03 Roche Nederland and Others were:

"(1) ‘Is there a connection, as required for the application of Article 6(1) of the Brussels Convention, between a patent infringement action brought by a holder of a European patent against a defendant having its registered office in the State of the court in which the proceedings are brought, on the one hand, and against various defendants having their registered offices in Contracting States other than that of the State of the court in which the proceedings are brought, on the other hand, who, according to the patent holder, are infringing that patent in one or more other Contracting States?

(2) If the answer to Question 1 is not or not unreservedly in the affirmative, in what circumstances is such a connection deemed to exist, and is it relevant in this context whether, for example,

– the defendants form part of one and the same group of companies?

– the defendants are acting together on the basis of a common policy, and if so is the place from which that policy originates relevant?

– the alleged infringing acts of the various defendants are the same or virtually the same?"

Thanks again to the IPKat for news of these cases.
Click here for the IPKat’s commentary.

© Duncan Bucknell 17 July 2006

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