I. BSH vs Electrolux- Case C-339/22, February 2025 – CJEU
This case ruled on the jurisdiction of European courts where the validity of a patent in an infringement case is raised as a defence.
According to the CJEU, national courts maintain jurisdiction in infringement cases where defendants are domiciled in EU territory, irrespective of whether validity of foreign patents is raised as a defence. This case seems to follow another recent UPC case in which similar questions were considered but this time relating to the jurisdiction of the UPC to hear infringement cases relating non-EU sovereign countries and none-UPC members such as the UK (see comments on this UK relevant case below – (UPC_CFI_355/2023).
Turning to the BSH v Electrolux case: BSH filed a claim against Electrolux (a Swedish company) in Sweden. BSH asserted that Electrolux infringed EP1434512 validated in Turkey among other European countries. BSH also requested an injunction and damages in respect of all validated countries.
Electrolux counterclaimed lack of validity of the patent and notably that the court had no jurisdiction because in view of Article 24(4) of the Brussels Regulation, if invalidity was raised, the national court would lose jurisdiction over the infringement case.
According to Article 4(1) Brussels I Regulation (Regulation 1215/2012) a person domiciled in a member state can be sued in the court of that member state – irrespective of their nationality.
The Swedish court of appeal referred questions to the CJEU:
- 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 i.e. Turkey?
CJEU ruled against Electrolux, stating that Article 24(4) should be strictly interpreted as an exception to the general rule of Article 4(1). That is, CJEU agreed that whilst national courts cannot rule on the validity of foreign patents (how could they, if local patent law must be used when considering validity), they can continue hearing infringement claims, with the option to stay proceedings if there is a reasonable chance or possibility, that the patent might be invalidated in its country of registration by its national court (quite how the question of reasonable chance or possibility of validity of a foreign patent is going to be assessed to any meaningful extent by a foreign court, when national IP legal provisions must strictly be used, is another matter!).
According to the CJEU pursuant to Article 4(1) – the court in which the defendant is domiciled is the place to rule on patent infringement, in a case where the patent was validated in a different EPC state and even if the validity of the patent is contested.
Importantly, the CJEU confirmed the exclusive jurisdiction of the courts of the patent-granting state to decide on the validity of the patent in suit.
The CJEU also decided that EU courts which also include the UPC, could look at the question of validity of European patents in non-EU countries to determine infringement issues. However, these same EU courts will not be able to rule on validity of the patent in that third country.
II. UPC finds that it has jurisdiction to consider infringement in the UK (UPC_CFI_355/2023)
With Brexit, the UK chose to leave the EU and thus participation in the UPC. This meant therefore, on the face of it, that the UPC should have had no reach (direct or indirect) in for instance UK IP related matters.
However, as per the recent case, where European patents granted by the EPO and may be validated within both UPC and non-UPC states such as the UK could, nevertheless, be considered by the UPC. That is, UPC_CFI_355/2023, has opened the door for the UPC to have jurisdiction over the UK with respect to infringement actions.
In more detail, UPC_CFI_355/2023 concerns EP 3594009 B1 (Fujifilm) which was validated in both DE and UK. The owner brought an infringement action against three German Kodak entities (none of the defendants were UK domiciled) and the defendants naturally filed for revocation of the patent. The defendants further challenged the jurisdiction of the Düsseldorf Local Court division to even hear a claim for the UK which should be a matter UK courts only – one would have thought an entirely natural objection especially in view of Brexit.
However, the Düsseldorf Local Division considered whether the UPCA (Article 34 or Article 31 along with the Brussels Ibis Regulation (Regulation 1215/2012)) gave it jurisdiction to consider a case of UK infringement – a matter for UK courts only and somehow determined that it did have jurisdiction to decide on UK infringement matters.
It is a concerning development that an EU court can use EU law to take decisions concerning infringement of a patent that is not a product of EU law, in a country that is not only not an EU member state, but in fact demonstrably through democratically held referendum chose to leave the EU and not be part of the UPC.