On 20 February 2001, the Brussels Court of Appeal handed down the first judgement on appeal in a so-called "Belgian torpedo" case. It is of importance since it contains the Belgian interpretation of the jurisdictional rules of the Brussels Convention in matters concerning cross border declaratory claims for non-infringement of European patents. It brings at last some clarity in the spur of litigation that commenced a couple of years ago before the Court of First Instance in Brussels.

The judgement confirms that the ability for plaintiffs to seize the Belgian court with jurisdiction over such cross border claims is extremely limited. Until recently, plaintiffs who feared being sued for patent infringement had gambled with such a procedure in an attempt to obtain protection against injunctive relief from other national courts. They relied on articles 21 and 22 of the Convention which require that a later seized court stay its proceedings in favour of an earlier seized court until the earlier has ruled upon its jurisdiction.

The case at hand concerned the Swiss-based pharmaceutical company Roche who filed a cross border claim for declaratory judgement before the Belgian court against the Wellcome Foundation, an English research foundation and patent holder, and three companies of the pharmaceutical Glaxo group in the United Kingdom, The Netherlands and Belgium respectively. The claim sought to nullify the Belgian counterpart of Wellcome's European patent no. 481.790 and a cross border declaration that the anti-cancer medicaments MABTHERA and HERCEPTIN did not infringe this European patent in all designated countries.

The judgement of the lower court was handed down on 8 June 2000 and has been reported in the September issue of Patent World 2000, p 12. In that case, the Brussels Court of First Instance held that it only had jurisdiction to rule upon the invalidity claim for the Belgian patent and the declaratory claim for non-infringement as far as the Belgian territory was concerned. It rejected jurisdiction for the cross border declaratory claims of non-infringement relating to the other territories designated in Wellcome's European patent.

The ruling of the Court of Appeal was eagerly awaited because, for the first time, the following issues arose before this Court.

  • Can a Belgian court ever have jurisdiction to rule upon a declaratory claim of non-infringement relating to a foreign patent?
  • Is the exception of Article 16.4 of the Brussels Convention relevant to such a declaration?
  • In what circumstances if any, would cross border jurisdiction be justified on the basis of Article 2 read in combination with Article 6.1 or on the basis of Article 5.3 of the Brussels Convention?

The Brussels Court of Appeal confirmed the decision rendered by the lower court, and gave clear directions which will likely prevent future misuse of the Belgian judiciary in patent claims.

Jurisdiction not declined on the basis of articles 16.4 and 19 Brussels Convention

In the first decision issued by the Brussels court of First Instance on such claims, the so called "Belgian torpedo" tactic was heavily criticised and excluded as a matter of principle by applying the ex officio exceptions contained in articles 16.4 and 19 of the Brussels Convention. That is, claims for (absence of) infringement are so inherently related to the validity of a patent - which is the exclusive jurisdiction of the national court under article 16.4 of the Convention - that the Belgian court must decline its jurisdiction for the cross border claims.

In the Roche / Glaxo case, this theory was not even touched upon by the court of first instance, nor by the court of appeal. The appeal court upheld the decision of the lower court that the cross border claim is not inextricably linked with the claim for invalidity of the Belgian part of the European patent, but is rather an extension of this claim beyond the Belgian borders, so that [the court] should investigate whether it has the necessary jurisdiction for that. It seems therefore that the Belgian courts do not exclude the principle of cross border jurisdiction for such claims, but will analyse such claims under the conditions set forth in the Brussels Convention.

No "sufficient link" as required by Article 6.1 of the Brussels Convention

The Court rejected its jurisdiction over the cross border claims of non-infringement on the basis of article 6.1 of the Brussels Convention. This article states that a person domiciled in a Member State may be sued where he is one of a number of defendants, in the courts of the place where any one of the defendants is domiciled.

The Court held that, to establish its jurisdiction, it should not limit itself to an examination of the literal content of the writ of summons, but should look at the evidence presented to it by the parties in the framework of the pleadings regarding jurisdiction. To determine whether jurisdiction is available the Court should make the following, double inquiry.

1) Has the plaintiff summoned the Belgian defendant with the sole purpose of being able to summon also the other defendant (i.e. the patent holder) before the same Belgian judge?

2) Assuming that the Belgian defendant was summoned before the Belgian court for good reasons, is there is a sufficient link between the claim introduced against the Belgian defendant and the claim introduced against the other defendants?

In the present case, the test failed at the first step. The Court considered that a claim for a declaration for non-infringement should be directed against those who hold and can exercise patent rights. Here, the Court found that the Belgian defendant, Glaxo Wellcome Belgium, was neither the patent holder nor a licensee under the patent and had therefore nothing to do with the dispute. It was artificially brought into the proceedings solely to "create" jurisdiction for the Belgian courts under articles 2 and 6.1 of the Convention.

The Court went on to consider the second stage of the enquiry. The Court held that there was not a "sufficient link" between (non) infringement proceedings in different jurisdictions to justify them being heard together. It based its findings on the Brussels Convention and the jurisprudence of the European Court of Justice (Kalfelis / Schröder).

These [cross border] proceedings always contain a separate claim concerning the validity and scope of protection of the patent in each respective territory, and the judgement regarding the nullity of the patent in Belgium and the declaration of non-infringement in Belgium does not have any implication for the same legal question in all the other countries designated in the European patent, each of them taken separately.

The fact that the cross border claim was based on a European patent was also considered irrelevant:

National patents, even if they originate from a European patent, exist independently from each other and are valid in each of the countries for which they are issued. According to article 64, 3° of the European Patent Convention their infringement should be examined according to national law. Even if this would lead to different judgements in the respective countries with regard to validity or scope of protection, these judgements are neither irreconcilable nor contradictory.

The fact that the Belgian defendant belonged to the same group of companies as the patent holder was also held to be irrelevant. Reference was made to the Dutch "spider in the web" doctrine but the Court distinguished this doctrine as follows:

In addition, it is not because all respondents are part of the same [group of companies] that this would create such a link that it is important to consider and judge the claims simultaneously.

If certain jurisprudence has judged that simultaneous consideration and judgement may be offered in the event of a concerted practice by various companies who belong to the same concern and who bring identical products on different national markets and who share a joint plan, then this jurisprudence related to cases where these companies were sued for patent infringement. The present case relates however to a claim for a cross-border declaratory judgement of non-infringement.

Jurisdiction on the basis of article 5.3 Brussels Convention excluded

The Brussels court made it very clear that no reliance should be made on a torts doctrine for claiming jurisdiction under article 5.3 of the Convention :

The [ECJ's] restrictive interpretation of article 5.3. does not allow alleged or potential patent infringers, who dispute the existence of such infringement whether or not already committed, to bring declaratory claims for non infringement, either before the judge of the domicile of the patent holder, or before the judge where the patent holder could sue him.


The most recent case law from the Brussels court in "Belgian torpedo" matters, now confirmed at appeal level, indicates that cross border jurisdiction for declaratory claims of non-infringement shall be accepted by the Belgian courts only in very precise and narrow circumstances. The speed at which the decisions issued also shows that the Belgian courts have curbed their reputation of being slow and ill adapted to cope with more complex claims such as in "torpedo" cases.

One may conclude from the Roche / Glaxo decision that a cross border claim for a declaration of non-infringement will most likely not succeed before a Belgian court, unless it is brought against a Belgian patent holder under article 2 of the Brussels Convention. Or unless it is brought against a Belgian subsidiary of a non-EC patent holder and sufficient links between the Belgian subsidiary and the various claims can be established.

By making these decisions, the Belgian courts have scrupulously applied the guidance given by the ECJ and have not excluded the possibility that they might one day accept European wide jurisdiction for a cross border declaratory claim of non-infringement. However, they have made it clear that their courts shall not serve as a safe harbour for mala fide infringers speculating on a slow judiciary.

First published in Patent World in April 2001.