A granted European patent provides the owner with a bundle of independent, national patent rights for those EU member states in which the patent has been validated. Once the period for the centralized procedure has passed, patents are generally enforced or revoked at a national level. In some national courts (for instance, the UK and the Netherlands), validity and infringement proceedings are commonly heard together, whereas other nations (notably, Germany) have separate courts to determine validity and infringement.
The European Patent Convention provides the central legal framework and sets out the substantive basis for determining ownership, patentability and infringement for European patents. The Protocol to Article 69 of the EPC provides some guidance; however, interpretation of substantive issues is left to the national courts. Although the goal is consistent interpretation throughout member states, individual national courts apply the principles differently.
This is unfortunate. A single European patent system could be of real benefit to patentees (and correspondingly disadvantageous to those who sail close to the patent wind). A single patent system also could streamline the time and cost of European patent litigation.
But, given the very real national differences in interpretation, when there are patents and relevant activity in a number of member states, forum shopping arises – not only for courts that may offer a favorable interpretation, but also for the possibility of cross-border injunctive relief. Another option is the use of slower moving forums to hold up infringement cases across Europe. The latter are commonly known as torpedo actions.
Article 2 of the Brussels Convention, which sets out rules for jurisdiction and enforcement of judgments across EU member states, holds that an entity should be sued in its country of domicile. There are also provisions regarding when a member state has exclusive jurisdiction over proceedings, one of those being determination of the validity of that national patent right (Article 16). Further provisions state that where there are related actions, another member state court must stay its proceedings until the court first seized of that matter has determined the issue at first instance. A national court may have jurisdiction over actions in another jurisdiction if there is a connection between the actions such that determining the actions together would avoid the risk of irreconcilable judgments.
In 2006, the Roche v Primus decision restricted pan-European injunctive relief by holding that, under the Brussels Convention, a national court had no jurisdiction over an entity not domiciled in that country and not infringing the relevant national patent.1 This ruling also held that only where there was the same legal and factual context would a risk of irreconcilable judgments arise, and only in that instance would a national court have jurisdiction over an entity domiciled in another member state and carrying out activity related to another member state’s patent.2
The Rome II Regulation, which came into force in January 2009, specifically provides that for non-contractual disputes, patent infringement should be determined in the jurisdiction in which the patent right lies. This is consistent with the exclusive jurisdiction to determine validity of the national right that a national court has under the Brussels Convention. In conjunction with the Roche v Primus decision, this regulation appeared to limit the opportunity to forum shop in cross-border litigation.
However, a recent reference from the District Court of The Hague to the Court of Justice of the European Union in Solvay v Honeywell may have revived opportunities for forum shopping in limited circumstances.3 Solvay alleged patent infringement by Dutch and Belgian defendants. The Dutch court held it had jurisdiction over the Dutch defendants in relation to infringement of the Dutch and foreign patents and held that to avoid irreconcilable decisions, it also had jurisdiction over the Belgian defendant. The Dutch court distinguished Roche v Primus by noting that the Solvay defendants were carrying out the same activity and infringing the same patent, whereas in Roche v Primus, the defendants’ activities related only to activity regarding their respective national patents. This case is ongoing. It may take as long as two years for the CJEU to indicate whether it agrees.
Torpedo actions are still being used as preemptive strikes. A potential defender thinking it may be sued in a jurisdiction where it may likely lose could preempt such an action by bringing a declaration of non-infringement in a more favorable court. If the potential defendant brings the lawsuit in a court with a backlog of cases and limited resources, that court will be “first seized” under the Brussels Convention; thus other jurisdictions are obliged to stay any proceedings involving the same cause of action until that first court has reached a decision at first instance. Belgium and Italy, where cases are notoriously slow to come to trial – about a year for Belgium and two to three years for Italy – have been used this way for many years, allowing a potential infringer to considerably extend market activity.
The ECJ/CJEU has made it clear that forum shopping is not to be used improperly, but also has stated that it is not going to do anything that would effectively halt it.
In sum, change is not in the wind. German Advocate General Juliane Kokott recently noted the incompatibility of a pan-European patent court with European law. Her comments illuminate the central issue: it looks as though potential defendants can go on making use of the current system for quite some time.
For more information, please contact Philippa Montgomerie and Shereen Johnson.
1 Roche Nederland BV v Primus, Case C-539/03, 2006 All ER (D) 186 (Jul.) CJEC (First Chamber).
3 Solvay S.A. v. Honeywell Fluorine Prods. Europe B.V., Case No. 09-2275, Dist. Ct. of The Hague (Netherlands) (Sept. 15, 2010).