European Union: The (Cross) Border Is Closed: ECJ Rules on Patent Injunctions

Europe, while often considered one territory from a commercial viewpoint, cannot be viewed so simply from the IP perspective. Patents (and other IP rights) are national rights. This is the case even for European patents, which provide a common prosecution procedure and on grant produce a bundle of national patents that each exist separately under the law of the relevant European country. The result of this is that patents in Europe must, prima facie, be enforced on a country-by-country basis. Understandably, some patentees would prefer to be able to enforce their patents across Europe with just one proceeding.

For many years now, some courts, led by the Dutch, have been trying to find a way of providing cross-border relief in patent actions. However, whether such measures are permissible—and if so, under what circumstances—has long been clouded in uncertainty. The decisions of the national courts have varied from country to country and even from court to court.

With two decisions of July 13, 2006, the European Court of Justice ("ECJ"), which on questions from national courts provides clarification on matters of European-wide law, has, in ruling on cross-border injunctions in patent actions in Europe, provided much-needed certainty.

There is no specific legislation for cross-border injunctions. The legal basis for cross-border actions is the Brussels Regulation (although the cases were decided under its predecessor, the Brussels Convention, which in all material respects is the same). Effectively, this governs jurisdiction over matters amongst the courts in Europe. Article 2 of the Brussels Convention provides that persons domiciled in a Contracting State of the Brussels Convention ("Contracting State") shall, whatever their nationality, be sued in the courts of that State. Article 6 of the Brussels Convention is an exception to this rule and provides that a defendant domiciled in a Contracting State may also be sued in another Contracting State if he is one of a number of defendants and one of the defendants is domiciled there. Based on this provision, there have been attempts to sue several defendants domiciled in different countries in one proceeding for patent infringements committed in the respective countries.

In the primary decision, Roche v Primus, the ECJ has now decided that it is not possible to sue several infringers domiciled in different countries for patent infringements committed in these countries jointly before the courts of one country where one of the infringers is domiciled, even if the infringers belong to the same group of companies and have acted in an identical or similar manner in accordance with a common policy elaborated by one of them. Given the way most businesses operate in Europe, this decision ends the possibility of getting cross-border relief in most situations. (The remaining, and very limited, possibility for cross-border relief is discussed at the end of this article.)

The ECJ also decided a second case, GAT v LuK, in which it held that the courts of the country where a patent was granted have exclusive jurisdiction to decide on the validity of that patent, regardless of whether the invalidity is raised in an invalidation suit or as an objection in an infringement proceeding.

Roche v Primus (C-539/03)

The patent holders, Drs. Primus and Goldenberg, brought an infringement action in the Netherlands against Roche Nederland BV and named eight other companies in the Roche group (those domiciled in the U.S., Belgium, Germany, France, the U.K., Switzerland, Austria, and Sweden) as co-defendants on the grounds that these eight companies infringed the patent in other jurisdictions.

The eight non-Dutch companies contested the jurisdiction of the Dutch court. The Dutch Supreme Court (Hoge Raad) stayed the proceedings and referred two questions to the ECJ for determination:

i. Is there a connection as required for the application of Article 6(1) of the Brussels Convention between a defendant (for example, Roche Nederland BV) with its registered office in the state of the court in which the patent infringement action is brought (for example, the Netherlands) and various defendants (for example, the eight other Roche group companies) with registered offices in other contracting states (for example, Belgium, Germany, France, etc.) that are alleged to infringe the patent in other European jurisdictions?
ii. If the answer to (i) is no, when would such a connection exist and what are the relevant factors to establish this? The specified examples were membership of the same group, acting on the basis of common policy, and whether the alleged infringing acts are the same.

Having reviewed the case law on Article 6 of the Brussels Convention, the ECJ addressed the first question, finding that for the connection required for Article 6 to apply, it must be expedient to determine the actions together in order to avoid the risk of irreconcilable judgments that could result from separate proceedings. This connection did not exist in the case of alleged patent infringements committed by different defendants in different countries. The answer to the first question was therefore no.

In explaining the decision, the ECJ stated that even if the concept of the risk of "irreconcilable judgments" was to be understood in its broadest sense as the risk of "contradictory decisions," there was no such risk where individual patent infringement actions were brought in different countries (for example, in Germany under the German patent, in the U.K. under the U.K. patent, in France under the French patent) in respect of infringing acts committed in the respective countries. The factual situation for each of these actions is different because the defendants are different and the alleged acts of infringement are different, so there could be no risk of "irreconcilable judgments."

It is immaterial that European patents are granted through a centralized procedure. Once granted, a European patent takes effect as a national patent in each of its designated States and is governed by the national law of that designated State. For example, a European patent that designates Germany and the U.K. will on grant take effect as separate German and U.K. patents, governed by the laws of Germany and the U.K. respectively. Therefore, the ECJ said, infringement actions, albeit that they are against a centrally granted European patent, must be brought in each individual country, as the granted European patents are subject to the respective laws of each individual country.

This applies even where the defendant companies belong to the same group or have acted in accordance with a common policy. Although there was recognition of the procedural economy of consolidating actions before one court, this was rejected, as the advantages were limited and there were further risks involved. Permitting consolidation in these circumstances would lead to a number of potential venues for the action, which would undermine the predictability of jurisdictional rules and the principle of legal certainty. Last, but by no means least, it would encourage forum shopping.

Each of the scenarios put forward in the second question was rejected as not being sufficient to establish the necessary connection for Article 6 to apply. Further, the ECJ held that if the court seized on the proceedings was required to adjudicate on whether a sufficient connection existed, it would in effect be adjudicating on the substance of the case before it could establish whether or not it had jurisdiction.

Finally, the ECJ addressed a practical issue. The advantages of a consolidated action were limited, even if the court before which it was brought did feel able to accept jurisdiction. There would inevitably be at least a partial fragmentation of the proceedings, as issues on the validity of the patent would be raised either by way of a revocation action or by counterclaim in the infringement proceedings. Under Article 16(4) of the Brussels Convention, proceedings for the validity of a patent can take place only in the jurisdiction in which that patent is registered. This is confirmed by the GAT v LuK decision.

The result is that Article 6(1) does not apply in patent infringement proceedings involving companies in different Member States in respect of acts committed in those different Member States, even if the companies are part of the same group or have acted in accordance with a common policy: no pan-European injunctions for patent infringement.

GAT v LuK (C-4/03)

GAT (a German company) brought an action against LuK (a German company) in Germany seeking a declaration of noninfringement in respect of LuK’s French patents and the revocation of those French patents.

The Regional Court (Landgericht) of Düsseldorf considered that it had international jurisdiction to decide both the declaratory and nullity actions in respect of those French patents. The Landgericht dismissed GAT’s action and held the French patents at issue to be valid.

Article 16(4) of the Brussels Convention states that in proceedings concerning the registration or validity of patents, the courts in which the registration has been applied for, has taken place, or is deemed to have taken place under the terms of an international convention shall have exclusive jurisdiction. So the Higher Regional Court (Oberlandesgericht) of Düsseldorf stayed the appeal and referred to the ECJ the question whether Article 16(4) concerns all proceedings relating to the registration or validity of a patent, including proceedings where the invalidity is raised by way of counterclaim to an infringement action, or whether it applies only to nullity suits.

The ECJ clarified that Article 16(4) refers to proceedings relating to the validity, existence, or lapse of a patent or an alleged right of priority by reason of an earlier deposit but does not apply to proceedings where validity is not disputed by the parties, i.e., in infringement actions where the validity of the patent is not challenged. However, in practice, validity is frequently raised as a counterclaim to an infringement action and may also be raised in tandem with a declaratory action seeking a declaration of noninfringement.

The purpose of Article 16 is to ensure that jurisdiction rests with the court that is closely linked to the proceedings in fact and law. For patent validity, this means the court where the patent takes effect. Indeed, this is particularly important in the field of patents where a number of countries have set up a system of specific judicial protection, as it ensures that patent validity cases are dealt with by specialized courts (for example, the German- and U.K.-designated Patents Courts). Further, exclusive jurisdiction is also justified because patents necessitate the involvement of the national administrative authorities.

Therefore, the ECJ held, this exclusive jurisdiction to hear nullity actions should apply regardless of the form of proceedings in which the issue of a patent’s validity is raised, whether by way of counterclaim to an infringement action or by a nullity action.

The ECJ’s rationale was as follows:

First, to allow a court seized of an infringement action also to decide validity undermined the binding nature of the jurisdictional rule set out in Article 16(4).

Second, circumventing Article 16(4) would mean that the number of potential jurisdictions was increased, thereby undermining the predictability of the rules of jurisdiction laid down by the Brussels Convention and the principle of legal certainty.

Third, to allow it would increase the risk of conflicting decisions, which the Brussels Convention seeks specifically to avoid.

Finally, the ECJ addressed an argument put forward by LuK that a judgment of (for example) a German court affecting the validity of (for example) French patents could apply only between the parties to the action (for example, LuK and GAT). The ECJ found that if this approach was followed, its effect would be to lead to contradictory decisions and distortions that would undermine the equality and uniformity of rights and obligations arising from the Brussels Convention.

The Result of These Rulings

While it is important that the ECJ in its decisions has defined the limits of cross-border injunctions and the decisions serve the desired goals of harmonization of procedural rules and the predictability of legal decisions, it is regrettable that actions against several infringers in various EU Member States (particularly where they are part of the same group) cannot be brought together in one proceeding. It is hoped that these decisions will spur on the Commission and national governments in Europe to introduce a cross-border enforcement procedure for European patents.

As touched on above, cross-border injunctions remain possible in limited circumstances. In particular, where a single entity is domiciled in a European country, it can be sued in that country for patent infringement wherever it should occur in Europe. In practice this will be of very limited help. Given standard business practices, it will be rare for there to be one (and only one) desired defendant across Europe. Moreover, following the GAT decision, the defendant needs only to put validity in issue, and the proceedings from "foreign" jurisdictions won’t be able to proceed.

In practice, the cross-border injunction for patent infringement is effectively dead. Accordingly, for the time being at least, patents in Europe will have to be enforced mostly on a country-by-country basis.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions