In its judgement, the ECJ dealt with the interpretation of Article 24(4) of Regulation (EU) No 1215/2012 (Brussels Ia Regulation) in the context of patent infringement proceedings in which the validity of the patent is raised as a defence. The judgment clarifies the international jurisdiction of the courts in such cases, in particular where the patent has been validated in several Member States and/or a third country.

The facts of the case: BSH (Germany) sued Electrolux (Sweden) in a Swedish court for infringement of a European patent validated in several EU Member States and Turkey. Electrolux denied infringement and argued that the patents in question were invalid.

Questions referred for a preliminary ruling: The Swedish court referred three questions to the ECJ on the interpretation of Article 24(4) of the Brussels Ia Regulation:

• Does a court that has jurisdiction for patent infringement under Article 4(1) of the Regulation lose its jurisdiction if the validity of the patent is contested? Or does the court only have jurisdiction to decide on validity?
• Is it relevant whether national law requires a separate invalidity action?
• Does Article 24(4) of the Regulation also apply to courts of third countries (here: Turkey)?

The decision of the CJEU:

Questions 1 and 2: A court of the Member State in which the defendant is domiciled (Article 4(1)) retains jurisdiction to decide on the infringement, even if the defendant raises the validity of the patent as a defence. However, the courts of the Member State in which the patent was granted have exclusive jurisdiction to decide on the validity of the patent. A national provision requiring a separate action for revocation does not affect this interpretation.

Question 3: Article 24(4) of the Brussels Ia Regulation does not apply to courts of third countries. However, where an action for infringement of a patent granted or validated in a third country is brought before a court of a Member State on the basis of Article 4(1) and the validity of the patent is raised as a defence, that court is in principle competent to rule on that defence.

Important quotations:

“Article 24(4) of Regulation No 1215/2012 must be interpreted as meaning that, where an action for infringement of a patent granted in another Member State has been brought on the basis of Article 4(1) of that regulation before a court of the Member State in which the defendant is domiciled, that court retains jurisdiction to rule on that action if, in the course of those proceedings, the validity of the patent is contested by the defendant, whereas jurisdiction to rule on that validity lies exclusively with the courts of that other Member State.” (point 1 of the judgement)

“Article 24(4) of Regulation No 1215/2012 must be interpreted as meaning that it does not apply to the courts of a third country and thus does not confer on them exclusive or any other jurisdiction to rule on the validity of a patent granted or validated by that country. Where an action for infringement of a patent granted or validated in a third country is brought before a court of a Member State on the basis of Article 4(1) of this Regulation and the validity of that patent is pleaded as a defence, that court shall have jurisdiction under Article 4(1) to rule on that defence and its decision in that respect shall not affect the existence or the content of that patent in that third State or have the effect of amending the national register of that patent.” (point 2 of the decision formula)

The courts of the Member State in which the patent was granted shall have exclusive jurisdiction, irrespective of the domicile of the parties. (point 54)

Significance and implications:

The judgment clarifies the rules on jurisdiction in patent disputes within the EU. It confirms that a court at the defendant’s domicile (Article 4(1)) remains competent to decide on patent infringement, even if the validity of the patent is contested. This allows plaintiffs to concentrate their infringement actions in one place and to obtain global remedies. At the same time, it preserves the exclusive jurisdiction of the courts of the patent-granting state to decide on the validity of the patent. It also clarifies the treatment of patents in third countries. Here, the court of the defendant’s domicile retains jurisdiction, but with the restriction that its decision may not affect the validity of the patent in the third country.

Practical implications:

• Patent infringement actions can still be brought before the courts of the Member State where the defendant is domiciled, even if the validity of the patent is contested.
• Courts need to be aware of their limited jurisdiction over the validity of patents granted in other Member States or third countries.
• Companies need to carefully plan their litigation strategy in patent disputes to ensure that they approach the right courts and take into account the relevant jurisdictional rules.
• For patents validated in third countries, additional aspects of international law and bilateral agreements need to be considered.

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