Court of Justice Rules on Exclusive Jurisdiction in Patent Infringement Litigation

The Grand Chamber of the Court of Justice has rendered today, 25 February 2025, its much awaited ruling on case C-339/22, BSH Hausgeräte.

The Court was requested to clarify the scope of Article 24(4) of Regulation No 1215/2012 (Brussels I bis) as regards disputes relating to the infringement of patent rights when the invalidity of a foreign patent is raised as a defence, and to address the issue of the potential “reflexive effect” of the latter provision in relation to patents registered in third countries.

The questions referred to the Court were presented and discussed by Lydia Lundstedt on this blog here, here (with reference to AG Emiliou’s first opinion) and here (concerning AG Emiliou’s second opinion).

The Scope of the Rule of Exclusive Jurisdiction inArticle 24(4)

In its ruling, the Court held, to begin with, 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.

Referring to its own ruling in GAT, the Court observed that where a court of the Member State in which the defendant is domiciled is hearing, pursuant to Article 4(1), an action alleging infringement of a patent granted by another Member State, in the context of which the defendant challenges, as its defence, the validity of that patent, that court “cannot establish, indirectly, the invalidity of that patent”, and must rather declare that it does not have jurisdiction, pursuant to Article 27, “as regards the issue of the validity of that patent, in the light of the exclusive jurisdiction of the courts of the Member State in which the patent is granted”.

However, the Court added, the question arises whether, in such a situation, the court of the Member State in which the defendant is domiciled still has jurisdiction to hear that infringement action or whether it must declare that it does not have jurisdiction in respect of any aspect of dispute relating to the patent granted by another Member State.

In this regard, the Court noted that the exclusive jurisdiction contemplated in Article 24(4) covers only proceedings “concerned with the registration or validity of patents”. As such, the provision does not concern, inter alia, patent infringement actions, although the examination of such an action does involve a thorough analysis of the scope of the protection conferred by that patent in the light of the patent law of the State in which that patent was granted. In other words, the exclusive jurisdiction rule in Article 24(4) concerns “only the part of the dispute relating to the validity of the patent”, with the consequence that a court of the Member State in which the defendant is domiciled, which has jurisdiction, under Article 4(1) of the Brussels I bis Regulation, in an action alleging infringement of a patent granted in another Member State, “does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent”.

Proceedings Regarding the Infringement of a Patent Granted in a Third State

The Court went on to consider the situation where a court in a Member State is seised of proceedings regarding the infringement of a patent granted in a third State. In this respect, the Court noted that Article 24(4) of the Brussels I bis Regulation does apply to a court of a third 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 by that State.

As a result,

if a court of a Member State is seised, on the basis of Article 4(1) of the 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.

The Court observed that the jurisdiction “in principle” of the courts of the Member State in which the defendant is domiciled which are seised of such a dispute over the part of that dispute relating to the validity of a patent granted in a third State “may be limited by special rules”, such as those laid down in Article 73 of the Regulation on the relationship with the 2007 Lugano Convention. Furthermore, in the circumstances referred to in Articles 33 and 34 of the Regulation, on extra-EU parallel litigation, a court of a Member State whose jurisdiction is based on Article 4 of the Regulation “may be prompted to recognise the jurisdiction of the courts of third States, by staying proceedings, or even terminating the proceedings before it, where proceedings are already pending before a court of a third State at the time when that first court is seised”.

That said, the Court observed, it is necessary to determine whether the jurisdiction, based on Article 4(1) of the Regulation, of a court of a Member State to rule on the issue of the validity of a patent granted or validated in a third State where that question is raised as a defence in the context of an infringement action brought before that court, is restricted by general international law.

In that regard, the Court recalled that the rules and principles of general international law “are binding, as such, upon the EU institutions and form part of the EU legal order”, and noted that, consequently, “a measure adopted by virtue of the powers of the European Union, such as the Brussels I bis Regulation, must be interpreted, and its scope limited, in the light of those rules and principles”.

Indeed, “the jurisdiction of the courts of a Member State, based on the fact that the defendant is domiciled in that Member State, to rule in a dispute which is connected, at least in part, because of its subject matter, with a third State, is not contrary to the international law principle of the relative effect of treaties”. Still, the jurisdiction of the court of the defendant’s domicile “must be exercised without infringing the principle of non-interference, according to which a State may not interfere in cases which essentially come within the national jurisdiction of another State”.

In the exercise of its powers, the Court explained, “a State may grant, validate and register intellectual property rights which, within that State, confer on their holder exclusive intellectual property rights, such as a patent”. One of the reasons why the rule now enshrined in Article 24(4) of the Brussels I bis Regulation confers exclusive jurisdiction on the courts of a Member State which has granted a patent to rule on disputes concerned with the registration or validity of that patent is that the grant of a national patent is an exercise of national sovereignty.

Based on the above remarks, the Court explained that, where a judicial decision annulling a patent affects the existence or, in the event of annulment in part, the content of those exclusive rights, only the courts having jurisdiction in that State may give such a decision: it follows from the principle of non-interference that “only the courts of the third State in which a patent is granted or validated have jurisdiction to declare that patent invalid by a decision that may cause the national register of that State to be amended as regards the existence or content of that patent”.

By contrast, the court of the Member State in which the defendant is domiciled which is seised on the basis of Article 4(1) of the Brussels I bis Regulation, of an infringement action in the context of which the issue of the validity of a patent granted or validated in a third State is raised as a defence, does have jurisdiction to rule on that issue if none of the restrictions resulting from Article 73 or Article 33 and 34 of the Regulation is applicable, given that the decision of that court sought in that regard “is not such as to affect the existence or content of that patent in that third State, or to cause its national register to be amended”.

That decision, the Court added, “has only inter partes effects, that is to say, a scope limited to the parties to the proceedings”. Thus,

where the issue of the validity of a patent granted in a third State is raised as a defence in an action alleging infringement of that patent before a court of a Member State, that defence seeks only to have that action dismissed, and does not seek to obtain a decision that will cause that patent to be annulled entirely or in part.

In particular, under no circumstances can that decision include a direction to the administrative authority responsible for maintaining the national register of the third State concerned.

— The EAPIL blog plans to host an analysis of the judgment in the coming days.