In a recent decision, the CJEU confirms that holders of European patents can consolidate their claims of patent infringement across multiple EU and non-EU states at a single court. In this article, we look at the important ramifications this has for enforcement strategies in Europe, both through national courts and the Unified Patent Court (UPC).
By way of a decision issued on 25th February 2025 (C‑339/22), the CJEU has clarified that long-arm enforcement of European patents across multiple EU Member States and even non-EU states is possible from a single EU Member State Court against an infringer domiciled in that state, even if the validity (which the CJEU confirms remains a matter for individual states) of the patents have been challenged.
This has important implications for patent litigation in individual national courts, but also confirms the reasoning given in the recent decision of the UPC in Fujifilm v Kodak (discussed in our previous article), by which the UPC ruled it had jurisdiction to hear an infringement action in respect of the UK part of a European patent.
This landmark development will surely make EU courts, and in particular the UPC, an even more attractive forum for patent holders, who will be able to enforce their patents broadly across Europe. Just a week after the CJEU’s decision was issued, Genevant Sciences and Arbutus Biopharma brought two actions at the UPC seeking to enforce patents in a number of countries, including non-UPC and non-EU countries.
Factual Background
The case was referred to the CJEU from the Swedish national court, where BSH Hausgeräte GmbH (BSH) had brought an action against Electrolux, seeking an injunction and damages under European patent EP1434512. The European patent in question was validated in both EU Member States (Austria, France, Germany, Greece, Italy, the Netherlands, Spain, and Sweden) as well as in non-EU Member States (Türkiye and the United Kingdom) referred to as ‘third States’.
As part of its defence, Electrolux challenged the patent’s validity, asserting it to be invalid in all states, and asserted that because the validity of the patent was challenged, the Swedish court was no longer competent to rule on infringement under the non-Swedish parts of the European patent in accordance with the provisions of the Brussels I bis Regulation.
Brussels I bis Regulation
The Brussels I bis Regulation (BR) is a key piece of EU legislation which determines the courts of European Union Member States that have jurisdiction in cases with an international element.
Article 4(1) of the Brussels I bis Regulation states that ‘subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State’. It was under this article that the Swedish court had jurisdiction to hear infringement under all parts of the European patent.
According to Article 24(4) Brussels I bis Regulation, Member State Courts retain exclusive jurisdiction in ‘proceedings concerned with the registration or validity of patents, trademarks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence’.
Article 27 Brussels I bis Regulation provides: ‘Where a court of a Member State is seized of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it has no jurisdiction.’
The Case before the Swedish Courts
At the first instance court in Sweden (Patent- och marknadsdomstolen/Patent and Commercial Court), Electrolux successfully argued on the basis of Articles 24(4) and 27 of the Regulation, where the claims relating to the non-Swedish parts of the Patent should be dismissed, since an invalidity defence in respect of those parts had been raised.
BSH appealed this decision to the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patent and Commercial Court of Appeal, Sweden), and that court in turn referred the following questions to the CJEU:
- Is Article 24(4) of [the Brussels I bis Regulation] 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 the answer to Question 1 affected by whether national law contains provisions, similar to those laid down in the second subparagraph of Paragraph 61 of the [Law on patents], which means that, for a defence of invalidity raised in an infringement case to be heard, the defendant must bring a separate action for a declaration 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?
CJEU’s Ruling
The First and Second Questions – Member State Courts retain jurisdiction to rule on infringement of a patent in other Member States, but do not have jurisdiction to adjudicate validity of a patent in another Member State
The CJEU Regarding questions (1) and (2), the CJEU has confirmed that the EU Member State Court of the defendant’s domicile does not have the jurisdiction to hear an invalidity defence raised by the defendant with respect to a patent granted in another Member State.
Nevertheless, the CJEU confirms that the Member State Court retains its jurisdiction to hear the infringement action in respect of infringements in other States.
The CJEU also makes clear, however, that Member State Court cannot disregard the fact that an invalidity case has been brought in other Courts. The CJEU notes the possibility of a stay in infringement proceedings by the Member State Court if there is a reasonable, non-negligible possibility that the patent is declared invalid. This would allow the Member State court to take into account the findings of another court.
The CJEU concluded that questions (1) and (2) could be answered by ruling that Article 24(4) of the Brussels I bis Regulation ‘must be interpreted as meaning that a court of the Member State of domicile of the defendant which is seised, pursuant to Article 4(1) of that regulation, of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity.’
The Third Question – Member State Courts may consider infringement under patents in third States, and may rule on the validity of those patents, although this cannot have the effect of revoking the patent in that State
Regarding the third question, the CJEU confirmed its decision in IRnova (C399/21) that Article 24(4) of the Brussels I bis Regulation (which deals with the intra-EU court jurisdiction) ‘does not apply to a court of a third State [i.e. a non-EU State] and, consequently, does not confer any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated in that State’.
The CJEU did, however, note that in order to meaningfully address the issues at hand, it was still necessary to determine, where a Member State Court, on the basis of Article 4(1), deals with an alleged infringement of a patent granted or validated in a third State in which the issue of the validity of that patent is raised as a defence, whether that Member State Court has jurisdiction to rule on that defence (i.e. the validity of the patent in the third State).
The CJEU noted that for patents granted in a third State, it is only the courts of the third State which would be able to issue a decision which would cause the patent to actually be amended or revoked in that State (i.e. affect the existence or content of the patent, or its existence on a national register of that State).
Nevertheless, the CJEU ruled that a Member State Court would have jurisdiction to make a ruling on the question of validity of the Patent in a third State, if invalidity is raised as a defence. However, this ruling on the question of validity would only be insofar as it is part of the defence to the infringement action, and so the consequence of such a ruling would be limited: The CJEU noted in the Member State Court’s decision on the invalidity defence in principle only has inter partes effect, i.e. the scope is limited to the parties to the proceedings. That is to say, the CJEU confirmed that the effect of a decision on such a defence would not be such as to affect the existence or content of that patent in that third State, or to cause its national register to be amended.
Consequently, the CJEU ruled that Article 24(4) of the Brussels I bis Regulation ‘must be interpreted as not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. If a court of a Member State is seised, on the basis of Article 4(1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4(1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended.’
Impact – Multiple Options for Consolidation of Patent Infringement Actions
This decision is a significant one. It confirms that claimants can consolidate claims related to infringement of European patents at a single Member State Court, where the alleged infringer is domiciled in that Member State. It also confirms that the Member State Court will not lose its jurisdiction if the validity of the patent is challenged.
Furthermore, it confirms that Member State Courts can consider infringement of European patents in non-EU countries and consider invalidity defences.
Of course, in the context of patent litigation, the European court system encompasses not only the national courts of the individual member states but includes also the UPC. Article 71b(1) of the Brussels I bis Regulation stipulates that the UPC has jurisdiction where, under Brussels I bis, the national court of a UPC Contracting Member State party would have jurisdiction.
Thus, where an alleged infringer is domiciled in an UPC Contracting Member State, then the UPC would have jurisdiction to hear infringement in respect of national parts of a European patent for non-UPC Contracting Member States, be they EU states (such as Poland or Spain), or third States (such as the United Kingdom or Switzerland).
Indeed, this approach was followed even before this decision of the CJEU was issued. In January, the Düsseldorf Local Division (LD) of the UPC in Fujifilm v Kodak, held that it had jurisdiction to consider infringement under the United Kingdom part of a European patent on the basis that the alleged infringer was domiciled in Germany.
The decision related to a UPC action brought by Fujifilm against Kodak for the infringement of a European patent in force in both Germany and UK. The asserted patent was found to be invalid, and therefore the German part of the European patent was revoked. The Court acknowledged that it did not have jurisdiction to revoke the UK part of the patent, but held also that it could not find the infringement action to be successful in respect of the UK, on the assumption that its invalidity finding on the German part of the patent would apply also to the UK part of the patent.
The LD’s reasoning in that case in fact drew heavily on the opinions of the Advocate General prepared ahead of this CJEU decision, and would appear to be consistent with the CJEU’s reasoning in this case – the UPC (operating with the same jurisdiction as a Member State Court) felt that it had jurisdiction to rule on infringement of the UK part of the European patent. The UPC also ruled on the invalidity defence in respect of the UK part of the European patent, although this did not have the effect of revoking the UK part of the patent. This is entirely consistent with the ruling of the CJEU in this case.
Whilst the UPC had already indicated it felt that it had long arm jurisdiction, the confirmation on the reasoning brought by the CJEU may well encourage more users of the UPC system to seek to use the court to enforce their European patents outside of UPC-contracting Member States. Indeed, only one week on from the CJEU issuing its decision, Genevant Sciences and Arbutus Biopharma announced that they had initiated patent infringement actions against Moderna in respect of mRNA vaccine technology. This included two UPC actions. According to the patentees’ press release, the UPC actions ‘seek relief for: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, Slovenia, Spain, Sweden, Switzerland/Liechtenstein, and Turkey’. Whilst the specifics of the case are not yet known (and will not be known until decisions of the UPC are made public), it is notable that Genevant and Arbutus are seeking to use the UPC to enforce their patents across both UPC and non-UPC states.
Some commentators have also suggested that the CJEU’s reasoning could apply equally even to patents granted in non-EPC States, for example those granted by the United States or elsewhere. It remains to be seen whether the UPC or Member State Courts would feel able to decide on the infringement of such patents. The extent of protection conferred by a European patent is harmonised through Article 69 EPC, and a decision on infringement of one part of a European patent should, at least in principle, apply equally across all EPC States. The extent of protection conferred by a patent granted in a non-EPC State, however, will be governed by the national law of that State, such that even if the claim wording of a non-EPC patent was identical to that of a European patent, it might nevertheless confer a different extent of protection. Ultimately, a decision on infringement of a patent in a non-EPC State (e.g. the USA) would necessarily require the UPC or Member State Court to apply the national law of that State. It remains to be seen whether or not EU Courts would go this far.
Outlook
With the clarification now provided by the CJEU in this decision, cross-border relief will undoubtedly gain renewed attention from users of the European patent system.
For alleged infringers domiciled in the EU, this raises the prospect of claimants enforcing multiple national parts of a European patent (including parts validated outside the EU) in the national court system where they are domiciled, or at the UPC if they are domiciled in a UPC-contracting Member State.
For claimants, this decision brings further strategic considerations for any European enforcement strategy as well as further reducing the potential costs of enforcing European patents across a broad territorial scope. By consolidating their infringement claims in a single action, claimants will be able to pursue remedies for infringements in all EPC States where their patents are in force through a single action in a single Court. Given the UPC’s goal of issuing its decisions on infringement within twelve months, and now with the possibility of extending infringement actions even to non-UPC states, the UPC looks to be an even more attractive forum for potential claimants seeking rapid, wide-spread enforcement of their European patent rights.
