UPC Legal Compass: CJEU widens European cross-border litigation (C-339/22)

The Court of Justice of the European Union's (CJEU) recent decision (C-339/22) marks significant development in cross-border patent litigation in the EU. The ruling clarifies jurisdictional boundaries for handling infringement and validity challenges, providing both opportunities and challenges for patent holders and defendants.

Before the most recent decision, the prevailing understanding, largely based on the 2006 GAT v LuK decision, was that a challenge to the validity of a patent in one jurisdiction would effectively stop infringement proceedings in other jurisdictions.

The CJEU has now overturned that established precedent. The court held that Article 24(4) of the Brussels Ibis Regulation (Regulation (EU) No 1215/2012) doesn't stop a court in one member state from hearing an infringement action relating to a European patent validated in another member state, even if the defendant challenges the validity of the patent in that other member state.

Key implications

• More discretion on infringement: EU courts can now hear and continue with infringement actions on national validations of European patents validated in other EU jurisdictions, even if validity is challenged.
• Focus on the Brussels Ibis Regulation (Art. 24 (4)): Art. 24 (2) Brussels Ibis Regulation only applies to EU member states but not to third-party states, like the UK.
• Consequence for validity assessment: Can a national court/the UPC consider invalidity challenges in pending infringement proceedings with respect to national validations in other jurisdictions?
• The UPC or a national court must not hear invalidity defences – neither in the form of an invalidation action nor in the form of an inter partes defence – if it's a national validation in another EU jurisdiction.
• The UPC or a national court can consider an inter partes invalidity defence for a European Patent validated in a non-EU country but doesn't have the authority to invalidate the patent.

Strategic implications

The CJEU ruling enhances the option for both patent owners and defendants. But the distinction whether the infringement claim relates to a national part of an EP in an EU or non-EU member state is crucial with respect to validity challenges. In fact, the defendant can leverage invalidity in the infringement case only if it's a national validation in a non-EU country.

This is only relevant for proceedings on the merits as Art. 24 (4) Brussels Ibis Regulation isn't applicable to preliminary injunction proceedings, which is why the infringement court can consider invalidity challenges with a view to national validations in EU member states.