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Sum of the parts

17 September 12

The jurisdictional difficulties arising from the fact that European patents are not truly pan-European in scope, as illustrated by a recent CJEU case

by Susan Snedden, Anoop Joshi

The recent decision of the Court of Justice for the European Union (“CJEU”) in Solvay SA v Honeywell Fluorine Products Europe BV (case C-616/10) illustrates the jurisdictional difficulties arising from the fact that European patents are not truly pan-European in scope.

Although European patents derive from a single central application to the European Patent Office, they comprise a bundle of separate national parts.

Their validity can be challenged centrally at the European Patent Office within nine months after grant (European Patent Convention, article 99(1)). After that, the validity of each national part of a European patent must be challenged separately in each member state (Council Regulation (EC) 44/2001, article 22(4)).

Jurisdiction in respect of European patent infringement proceedings is determined differently, on grounds such as the defender’s domicile. Consequently, a court asked to rule on infringement of a European patent may not be able to rule on its validity. This can pose a challenge where the defender claims the patent in suit is invalid.

Solvay had a European patent registered in 10 countries, but not the Netherlands or Belgium. Solway raised infringement proceedings in the Dutch court against one Dutch and two Belgian Honeywell companies. The infringing acts were occurring in all 10 countries in which the patent was registered. Jurisdiction was based on the Dutch Honeywell company’s domicile.

Solvay argued that the Dutch court had jurisdiction over the Belgian companies: article 6(1) of the Regulation provides that multiple defendants can be sued in the courts of the place where any one of them is domiciled, if the claims are so closely connected that it is expedient to hear them together to avoid the risk of irreconcilable judgments. Solvay also sought a cross-border interim injunction pending a final decision on infringement. As part of its defence, Honeywell argued that the patent was invalid. However, the Dutch court had no jurisdiction to determine this. It asked the CJEU to confirm:

(1) Was there a possibility of “irreconcilable judgments” so that article 6(1) gave it jurisdiction over the Belgian companies’ alleged infringement?

(2) Would article 22(4) apply to prevent it making an interim order, since invalidity, in respect of which it did not have jurisdiction, was raised as a defence?

Regarding question 1, the CJEU noted that there is only a risk of irreconcilable judgments where the same situation of fact and law applies in respect of each defender.

It ruled that it was for the national court to assess whether there was such a risk. Here, relevant factors were: (1) the defenders were each accused of committing the same infringing acts in respect of the same products; and (2) the infringements were committed in the same European states, so the same national parts of the European patent were at issue.

Regarding question 2, the CJEU noted that article 31 of the Regulation permits the granting of provisional orders, even where the courts of another member state have jurisdiction over substantive matters. As such, article 22(4) would not prevent courts granting interim orders under article 31, even where they would not be able to make a final decision on validity.

The Dutch court had advised that it would refuse to grant the interim order if there was a reasonable, non-negligible possibility that the patent would be ruled invalid by the court having jurisdiction. As such, the likely outcome of validity proceedings would have a bearing on whether the interim order would be granted.

This decision indicates a willingness to assist national courts in their efforts to overcome the jurisdictional challenges posed by European patents, where circumstances allow. However, many such difficulties could be avoided if a European patent was a single pan-European right, rather than a bundle of national parts.

For example, Community trade marks and Community registered designs are pan-European in nature. A single application results in the granting of a single, pan-European right, whose validity can be challenged in any court asked to rule on infringement.

Also, the legislation (Regulation (EC) No 207/2009 (Community trade mark); Regulation (EC) No 6/2002 (community designs)) provides that if jurisdiction is based on the defender’s domicile, the court may grant pan-European orders, whereas if jurisdiction is based on the location of the infringing acts, the orders must be limited to that member state.

If the law relating to European patents was structured in this way, their enforcement would be more straightforward.

Ideally, the proposed introduction of a European Unitary Patent (“UP”) would have resolved this issue. Once introduced, the UP will provide a holder with a single patent right which can be enforced in 25 of the 27 EU member states (Spain and Italy have opted out).

However, the current proposal is that validity and infringement proceedings will be heard separately. Validity proceedings will be heard by specialised Unified Patent Courts located in Paris, London, and Munich. Other national courts, such as those of Scotland, will be able to rule only on infringement. Thus, the enforcement of Europe-wide patents looks set to remain complex.

Susan Snedden, director; Anoop Joshi, solicitor, Intellectual Property & Technoilogy, Maclay Murray & Spens LLP

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