BSH V ELECTROLUX (C-339/22)
In a decision which has sent shockwaves across the European patent community, the CJEU has this week expanded upon the cross-border long-arm jurisdiction of the Courts of EU Member States.
In brief, the CJEU has confirmed that:
- a Court in an EU Member State where a defendant is domiciled has jurisdiction to hear infringement claims, and grant cross-border injunctions, in respect of foreign patents (both those granted in EU and non-EU territories) - even where the defendant has, in defence, challenged the patent’s validity.
- however, national EU Courts retain exclusive jurisdiction over invalidity of patents granted in their jurisdiction, such that if an invalidity counterclaim is brought before the Court hearing the infringement claim, it must decline to make a finding on the validity of the same patent. Instead, the defendant must bring separate revocation proceedings in the country in which the patent is granted. In this scenario, the Court hearing the infringement claim has discretion (but no obligation) to stay its proceedings pending the outcome of the separate revocation action.
- in relation to ‘third country’ (such as UK) patents, EU Courts can determine validity, but the validity decision will only have inter partes effect; in other words, it will “affect neither the existence nor content of the patent in that third country nor result in any amendment to the national register of the third country.”
Whilst more in-depth commentary in respect of this decision will follow, perhaps the most astonishing aspect of the decision is that EU Courts now appear to have wider jurisdictional reach over ‘non-EU’ patents than they have with respect to ‘EU’ patents. This is particularly surprising to UK lawyers who have for the last few years been navigating UK’s exit from the EU.
This ruling no doubt has wide-reaching consequences, with the potential to reshape cross-broader litigation and associated litigation strategies, opening up the door for further forum shopping across venues in Europe. The CJEU’s decision, interestingly, builds upon the UPC’s recent decision on long-arm jurisdiction in Fujifilm v Kodak (see commentary on this decision here). Yet the UPC may now face competition from Courts in the EU with respect to the ability to order pan-European relief. Various question marks remain, however – including as to the enforceability and status of decisions rendered by EU Courts in third countries.
We will explore these issues further in our more detailed commentary to come.
