BSH Hausgeräte: A Game-Changer in Cross-border Patent Litigation
The author of this post is Lydia Lundstedt, who is an Associate Professor and Senior Lecturer at Stockholm University and Linköping University. In the interest of transparency, the author makes known that she previously wrote an expert legal opinion on behalf of BSH Hausgeräte.
On 25 February 2025, the Grand Chamber of the Court of Justice of the European Union (CJEU) rendered its long-awaited judgment in BSH Hausgeräte (C-339/22), on international jurisdiction over cross-border patent infringement disputes under Regulation (EU) No 1215/2012 (Brussels I bis). The CJEU ruled as follows.
First, a Member State court with jurisdiction under Article 4, based on the defendant’s domicile, over the infringement of a patent registered in another Member State, does not lose its jurisdiction when a defendant challenges the validity of that patent. In accordance with the clear wording of Article 24(4), however, that Member State court may not rule on the invalidity of that patent, “irrespective of whether the issue is raised by way of an action or as a defence”.
Second, a Member State court with jurisdiction under Article 4, based on the defendant’s domicile, over the infringement of a patent registered in a non-member State, may rule on the invalidity of that patent, when the issue is raised as a defence in an infringement action.
This judgment is a game-changer for the litigation of cross-border patent disputes in Europe because it allows right holders to consolidate all their claims in a single forum. In addition, the judgment may have implications beyond patent disputes. See here for a brief synopsis of the facts and the questions referred, here and here for a review of Advocate General (AG) Emiliou’s first and second opinions, and here for Pietro Franzina’s report on the judgment.
The Infringement Court does not Lose its Jurisdiction
The general rule in Article 4 gives jurisdiction to the courts of the Member State where the defendant is domiciled. The CJEU noted, however, that Article 4 is “subject to” exceptions, one of which is Article 24(4), which grants exclusive jurisdiction to the courts of the Member State for which a patent is granted, for proceedings involving its registration or validity. The CJEU stated that Article 24(4)’s wording is clear that it applies irrespective of whether registration or validity is raised as an independent action or as a defence in an infringement action. The CJEU reiterated therefore that a Member State court may not indirectly rule on the invalidity of that patent, but must declare that it does not have jurisdiction in accordance with Article 27. Recalling its judgment in GAT (C-4/03), the CJEU noted that Article 24(4) is justified by the fact that national authorities are involved in granting patents, and specialized courts (which often deal with patent cases) are best placed to adjudicate disputes about patent validity and registration.
That said, the CJEU clarified that a Member State court does not lose its jurisdiction over an infringement action, notwithstanding that “the examination of such an action does involve a thorough analysis of the scope of the protection conferred by that patent”. Recalling Duijnstee (288/82) and IRnova (C 399/21), the CJEU explained that this is because Article 24(4) only covers validity and registration.
The CJEU stated that this interpretation followed from the scheme of the regulation because otherwise, the exception in Article 24(4) would eat up the general rule in Article 4 on the defendant’s domicile. Indeed, the defendant almost always challenges the validity of the patent in an infringement dispute. The CJEU explained that this also followed from the regulation’s objective of legal certainty because otherwise a defendant might, possibly at any stage of the proceedings, torpedo an infringement action by raising an invalidity defence. The CJEU explained further that this interpretation satisfied Article 24(4)’s objective of ensuring the exclusive jurisdiction of the courts of the Member State of registration, which are best placed to adjudicate validity issues, without going beyond what is necessary to achieve that objective. Lastly, the CJEU recognized that its interpretation meant that infringement and invalidity might be litigated in different Member State courts, and suggested that a Member State court seized of the infringement action could stay the proceedings if there was a reasonable, non-negligible possibility of that patent being declared invalid by the court of the Member State for which the patent was registered.
Article 24(4) on Exclusive Jurisdiction is not Directly or “Reflexively” Applicable
The CJEU held that it follows from the wording of Article 24(4) that it applies to Member States and, as conformed in IRnova, does not apply to non-member States. Indeed, the CJEU observed that the Brussels I bis Regulation “is a system of competence internal to the European Union which pursues objectives specific to it, such as the proper functioning of the internal market and the establishment of an area of freedom, security and justice.”
The CJEU recalled that the Brussels I bis Regulation applied when a legal relationship had an international element, and that this could be due to the subject matter of the proceedings being located in a third country. According to the CJEU, jurisdiction based on Article 4 encompassed infringements of third country patents as well as invalidity defences raised in the context of that infringement action.
However, the CJEU observed that Article 4’s jurisdiction could be limited by rules set out in the regulation that give effect to the EU and Member States’ treaty obligations (e.g. the 2007 Lugano Convention and agreements between a third State and a Member State concluded before the date of entry into force of Regulation (EC) No 44/2001). In addition, the CJEU noted that Articles 33 and 34 of the regulation permitted Member States to defer to the jurisdiction of the courts of third States under certain circumstances when the proceedings were lis pendens in a third State.
Beyond that, the CJEU held that international law, which is part of EU law, limited the rules in the Brussels I bis Regulation. Referring to Owusu, C 281/02, the CJEU recalled that it is not contrary to international law for a Member State court to adjudicate a dispute which has a connection to a third State, when jurisdiction is based on the defendant’s domicile. When exercising such jurisdiction, however, the CJEU held that a Member State court must observe the principle of non-interference. Consequently, the CJEU held that Member State court decisions must not affect the existence or the content of patents registered in third States, recalling that “the grant of a national patent is an exercise of national sovereignty.” However, the CJEU held that a Member State court may make an inter partes ruling on the validity of a patent granted in a third State when invalidity is raised as a defence in an infringement action, since such a ruling does not affect the existence or content of that patent.
A Game-changer for European Cross-border Patent Litigation
This decision will likely make Europe an attractive forum for the litigation of cross-border patent disputes. Indeed, the judgment enables right holders to consolidate claims for the infringement of patents registered in all Member States before a single Member State court without risking that defendant will “torpedo” the action by a spurious invalidity defence. Granted, the infringement case may be stayed pending the outcome of a serious invalidity action brought in the courts of the Member State for which the patent is granted, but the infringement jurisdiction remains with the court of the defendant’s domicile, which leads to procedural economy.
De lega ferenda, the EU legislator might consider removing the language in Article 24(4) that codified GAT (i.e. “irrespective of whether the issue is raised by way of an action or as a defence.”), to allow Member State courts to make inter partes rulings on the validity of patents registered in other Member States.
As Advocate General Emiliou stated in his 22 February 2024 opinion, the “unfortunate [GAT] decision” goes beyond what is necessary to fulfil Article 24(4)’s objective of sovereignty. The language in Article 24(4) creates a paradox: a Member State court cannot rule on the validity of patents granted in other Member States, even though harmonization under the European Patent Convention (EPC), certain EU laws (e.g. the Biotech Directive 98/44/EC), and shared legal principles make them well-placed to do so. However, the same court can rule on the validity of patents from non-member States, where the lack of harmonization makes them less suited for such decisions.
Although BSH Hausgeräte concerned the third State, Türkiye, which, as a member of the EPC, has harmonized its patent law in accordance with the Convention, there is nothing in the judgment to suggest that it does not apply to third States in general, e.g. USA and China. That said, as more Member States become contracting parties to the Unified Patent Court Agreement (UPCA), the attractiveness of such an amendment to Article 24(4) declines. This is because the Unified Patent Court (UPC), as a court common to the contracting Member States, has jurisdiction to rule, with erga omnes effect, on the validity of patents registered in contracting Member States. Article 24(4) prohibits, however, the UPC from ruling on the validity of patents registered in Member States that are not contracting parties to the UPCA.
Another aspect of the judgment that makes patent litigation attractive in Europe is that the right holder can also consolidate infringement claims concerning patents registered in non-member States before the Member State courts where the defendant is domiciled, and that court can make an inter partes ruling on patent validity. In the recent ruling from the Düsseldorf Local division of the UPC in Fujifilm v Kodak (UPC_CFI_355/2023), the UPC avoided the question whether it had jurisdiction to adjudicate the revocation of a UK European patent, but confirmed its jurisdiction over the infringement action concerning this patent. Following BSH Hausgeräte, it is now clear that the UPC can adjudicate the validity of the UK patent in the context of the infringement action, but may not purport to invalidate or alter the content of the patent with erga omnes effect.
This jurisdiction can be limited pursuant to a treaty obligation. Indeed, Article 22(4) of the 2007 Lugano Convention, which is interpreted consistently with GAT, prevents the Member State courts and the UPC from making inter partes rulings on the invalidity of Swiss, Icelandic and Norwegian patents.
Although the subject matter jurisdiction of the UPC is limited to European (EPC) patents (Article 1 UPCA), the subject matter jurisdiction of national Member State courts covers also national patents, both national patents registered in Member States (e.g. a Swedish national patent) and in third States (e.g. USA and China). This means that the courts of the non-contracting Member States to the UPCA and the courts of the Member States during the transitional period (see Article 83 UPCA) might compete with the UPC. Compared to other important patent jurisdictions, such as the USA, which does not accept jurisdiction over foreign patent infringement disputes even when invalidity is not raised (see Voda, M.D. v Cordis Corp, 476 F. 3d 887 (Fed Cir 2007), the Member State courts’ jurisdiction is quite broad.
While the judgment refers to jurisdiction under Article 4, based on the defendant’s domicile, there does not seem to be any reason why the judgment would not also apply to jurisdiction based on Article 7(2) or Article 8(1). One can envision a situation where a defendant domiciled in a Member State commits a harmful act in another Member State, that gives rise to patent infringement in a third State, see Wintersteiger (C-523/10). One can also envision a situation where proceedings are brought against two companies, domiciled in different Member States, before a court of one of those Member States, for separately infringing the same national part of a European patent, see Solvay (C-616/10). There does not seem to be anything in international law that would limit the EU’s exercise of jurisdiction is such a scenario.
Implications Beyond Patent Disputes
Geert van Calster opines that the judgment’s reasoning likely extends to the other subject matters of exclusive jurisdiction in Article 24. I assume he means, for instance, that the fact that immovable property is located in a third State does not prevent a Member State court, with jurisdiction under Article 4, based on the defendant’s domicile, from making an inter partes ruling on title, in an action for damages for trespass. The same court however lacks jurisdiction to alter the title registration of immovable property located in a third State with in rem effect.
That said, it should be noted that Article 24(4) differs from Article 24(2) and perhaps the other rules in that article, as Article 24(4) does not allow a Member State court to make an inter partes ruling on validity for patents granted for other Member States. In contrast, a Member State court exercising jurisdiction on the basis of domicile, is not prevented under Article 24(2), from making an inter partes ruling on the validity, nullity or the dissolution of companies that have their seat in another Member State, or the validity of the decisions of their organs (see BVG (C-144/10)).
Looking ahead, a significant question is whether BSH Hausgeräte has broader implications for how the CJEU may be expected to rule on whether Member State courts may give effect, under national law, to third State choice of court agreements, when the Member State court has jurisdiction under Article 4. Following the CJEU’s reasoning in BSH Hausgeräte and its judgment in Coreck Maritime (C-387/98), Article 25 does not apply to choice of court agreements referring to the courts of third States.
Moreover, the CJEU indicated recently in Società Italiana Lastre (C-537/23) that such agreements were “contrary to the Brussels Ia Regulation” because they were inconsistent with regulation’s “objectives of foreseeability, transparency and legal certainty”. Thus, BSH Hausgeräte and Owusu might be understood to mean that Article 4 is mandatory unless another rule in the regulation (e.g. Articles 33–34 or Article 73) or a norm of international law limits this jurisdiction. Indeed, an argument can be made that the EU intentionally refuses to give effect to third State choice of court agreements outside of its treaty obligations, e.g. 2005 Hague Convention on Choice of Court Agreements.
That said, the situations involved in Articles 24 and 25 are not completely congruent as Article 25 raises the issue of party autonomy, which is arguably a fundamental right. Moreover, to require Member State courts to disregard third State choice of court agreements when they have jurisdiction on the basis of Article 4 would upset what has long assumed to be a question within the discretion of the Member States (see Arnaud Nuyts, Study on Residual Jurisdiction Review of the Member States’ Rules concerning the “Residual Jurisdiction” of their courts in Civil and Commercial Matters pursuant to the Brussels I and II Regulations (3 September 2007) para 96).
The answer to this question is reserved however for another day and another judgment by the CJEU.