Belgian court issues first pan-European patent injunction
The author can be reached at Bruno.Vandermeulen@twobirds.com
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In an Order made on 14 September 2001, the President of the Brussels court of first instance issued, in summary proceedings, the first Belgian pan-European patent injunction. The injunction was based on a European patent covering a specially shaped toothbrush head, owned by a U.S. patent holder. The patent issued in July 2000 and is under opposition before the European Patent Office (EPO) as well as under attack before at least two national courts in the European Union. The twelve defendants were all part of a European-based, multinational consortium.
The decision confirms the view of the Belgian courts that European patents are to be considered prima facie valid for purposes of preliminary relief proceedings, and the court accordingly refused to consider the invalidity arguments put forward by the defendants. This conclusion was reinforced by the fact that at the time of the ruling, no national court in the designated states had invalidated the patent. The decision is unfortunately not very well reasoned on the issue of infringement. But it is most remarkable in that it contains a detailed analysis of article 24 of the Brussels Convention and the relevant case law of the European Court of Justice ("ECJ"), as well as arguments as to why a pan-European patent injunction should be available for European patents as a matter of principle. If confirmed by a higher court, it could announce an important shift in the Belgian position towards patent infringement litigation in a multi-jurisdictional context and open new perspectives for patent owners.
To justify its pan-European jurisdiction, the Brussels court combined arguments based on a decision of the ECJ of 17 November 1998 in Van Uden Martime vs. Deco Line. It also quoted from a decision of the Belgian Cour de Cassation of 3 September 1999 (reported in WIPR, November 1999). In the Van Uden case, the ECJ had held that the jurisdiction of a national judge to order preliminary measures under article 24 of the Brussels Convention is conditional, inter alia, on the existence of a real connecting link between the subject matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which these measures were sought. One year later, the Belgian Cour de Cassation, referring to the Van Uden decision, held that the Belgian procedure of "saisie description" was a preliminary measure in the sense of article 24 of the Brussels Convention and was not conditional on the existence of a patent in Belgium, but only on the condition that main proceedings had to be launched somewhere in the European Union after the saisie description had been completed. The Belgian Cour de Cassation had also explicitly stated that these main proceedings could be launched in courts of one or even more member states where the patent was applicable, and that article 24 of the Brussels Convention enabled the Belgian judge to issue preliminary measures in Belgium (i.e. the saisie description) for purposes of supplying evidence in foreign patent infringement proceedings.
In its decision of 14 September 2001, the Brussels court relied on the Van Uden case to hold that in summary proceedings, the "traditional" rules of jurisdiction under the rules of the 1968 Brussels Convention (articles 2, 6.1 and 5.3) did not apply, so that the domicile of the (co-) defendant or the place of the damage was not relevant. Nor do article 24 of the Convention or the case law of the ECJ contain any restriction on the jurisdiction of a national judge to order measures that would reach beyond his national territory, said the court. The only requirement was a "real connecting link" between the requested measure and the court where the measures were sought. This link was present, according to the court, by virtue of the existence of a "European" patent that was valid in all designated countries, and by the presence of identical allegedly infringing product in all these countries.
The court also relied on the earlier decision of the Belgian Cour de Cassation to hold that :
- article 24 of the Convention offers a procedural tool enabling a national court to issue preliminary measures which are independent from national (patent) laws, and therefore independent from territorial restrictions ;
- a national court has the power under article 24 to grant preliminary measures even if the main proceedings have to be conducted in the courts of more than one member state.
The court further stated that the injunction would continue to be in effect in all designated states unless and until a decision invalidating the (national) patent was given by a national court.
Curiously, the judge did not find it necessary to base his own jurisdiction upon any argument such as, for example, that the Belgian defendant was, in the words of the Dutch Court of Appeal in Boston Scientific, the "spider in the web" among the other defendants. In fact, he gave no justification at all for why the Belgian court was the most appropriate to assume jurisdiction.
It remains to be seen if this decision will withstand a test before the Brussels Court of Appeals. That court has earlier this year issued two decisions in which the territorial jurisdiction of the Belgian courts to issue cross border declaratory claims of non-infringement has been severely restricted. One of these decisions deals with article 24 of the Brussels Convention and rejects the proposal that a real connecting link exists in such disputes by virtue of the European patent, on the basis that a European patent is, after grant, not a uniform title but a bundle of national patents which exist independently from each other. Therefore, claims that are based on these various national patents are not connected, and decisions may therefore issue which may have a different result from a practical point of view, but which are not incompatible with each other from a legal point of view.
Subject to review by the Court of Appeal in Brussels, there are four suggestions which one can draw from the present decision :
- a preliminary patent injunction based on a European patent should, as a matter of principle, have a pan-European effect in all designated member states;
- such a pan-European injunction will automatically cease to have effect in all designated member states as soon as a national court has invalidated the patent in one designated state;
- however, such a preliminary injunction will not be granted by the Belgian court if either
- in at least one designated member state the patent has been declared invalid; or
- no infringement procedure on the merits is pending in the court of at least one designated member state.
If confirmed, even in a more restricted way than currently worded, this decision will no doubt encourage patent holders to seek preliminary relief against infringement notwithstanding opposition proceedings. It will also push defendants to launch national nullity proceedings long before the outcome of the centralized opposition procedure before the European Patent Office.