In Europe, in proceedings concerned with the registration or validity of patents, Art. 16(4) of the Brussels Convention (now Rule 22(4) of the Brussels Regulation) confers exclusive jurisdiction on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place or is deemed to have taken place. However, the courts in different Contracting States have construed the scope of this provision differently in the context of patent infringement proceedings, in which the validity of patents is also in issue. This has led to some courts, for example the Dutch courts, being willing to grant pan-European injunctions whilst other courts, for example the English courts, have not been prepared to do so.
The question on the interpretation of Art. 16(4) arose in the case of Gesellschaft für Antriebstechnik mbH & Co. KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK). GAT and LuK were competitors in the field of car design. GAT applied to Ford-Werke AG for the award of a contract for the provision of a mechanical shock absorber. LuK claimed that GAT had infringed its French patents. GAT brought an action for declaration of non-infringement before the Landgericht in Düsseldorf, stating that LuK’s French patents were invalid. The Landgericht in Düsseldorf considered itself competent to rule on that case, basing that decision on a restrictive interpretation of Art. 16(4) of the Brussels Convention, and dismissed GAT’s action. GAT brought an appeal against that decision before the Oberlandesgericht in Düsseldorf. That Court decided to stay proceedings and referred the following question to the European Court of Justice (ECJ): does the exclusive jurisdiction of the courts of the Contracting State designated by Art. 16(4) only apply if proceedings are brought to declare a patent invalid, or can it also apply where the defendant in a patent infringement action, or the claimant in a declaratory action to establish that a patent is not infringed, pleads that the patent is invalid or a nullity and that there is also no patent infringement for that reason?
During the procedure before the ECJ, three different interpretations of Art. 16(4) were put forward by various intervening parties: (i) LuK and the German government supported a restrictive interpretation according to which the exclusive jurisdiction conferred by Art. 16(4) should only apply to proceedings that are brought to declare a patent invalid; (ii) the French and British governments argued in favour of a wide interpretation according to which issues relating to the validity and the infringement of patents cannot be dissociated so that the exclusive jurisdiction conferred by Art. 16(4) should also apply to patent infringement actions where the defendant pleads that the patent is invalid; and (iii) the Commission defended an intermediary interpretation according to which the exclusive jurisdiction conferred by Art. 16(4) should apply to all issues relating to the validity or nullity of a patent (whether these issues arise in proceedings seeking a declaration of invalidity of a patent or in a patent infringement action), all other issues (such as pure infringements issues and employee claims) raised in relation to the patent in the same proceedings being outside the scope of Art. 16(4) and, therefore, outside the scope of the exclusive jurisdiction conferred by Art. 16(4).
The Advocate General reviewed all three possible interpretations of Art. 16(4) and came to the view that the ECJ should adopt the intermediary interpretation for the following reasons.
The Advocate General rejected the restrictive interpretation of Art. 16(4) as such an interpretation would allow forum shopping. A claimant would be able to avoid the exclusive jurisdiction of the courts of the Contracting State designated in Art. 16(4) if, rather than starting invalidity proceedings in the courts of that Contracting State, the claimant started, in the courts of another State, a declaratory action to establish that the patent is not infringed on the basis that the patent in invalid or a nullity.
The Advocate General also rejected a wide interpretation of Art. 16(4). Despite the fact that it offered certainty, the construction was contrary to the wording of Art. 16(4). Art. 16(4) provides that the exclusive jurisdiction it confers should apply “in proceedings concerned with the registration or validity of patents”. The exclusive jurisdiction does not apply to all proceedings concerned with patents. Therefore, there is no basis to claim that the exclusive jurisdiction conferred by Art. 16(4) should also apply to patent infringement actions where the defendant pleads that the patent is invalid.
The Advocate General was of the view that the intermediary interpretation was entirely acceptable as it was compatible with the wording of Art. 16(4). The Advocate General was also of the view that the exclusivity conferred by Art. 16(4) should apply irrespective of the stage at which the question of validity is raised during the proceedings.
The Advocate General left open the question of what the court seized of the infringement action would do if the defendant filed a revocation action in another Contracting State. He suggested that the court seized could (i) transfer the whole infringement action to the court that is dealing with the revocation action, (ii) stay the infringement action until the question of validity has been decided by the court of the Contacting State that is competent under Art. 16(4) or (iii) deal with the whole action itself if it appears that the defendant has acted in bad faith. These observations raise more questions than are answered. For example, option (i) above appears to be inconsistent with the intermediary interpretation of Art. 16(4) which the Advocate General adopts.
What is clear, however, is that if the ECJ follows the Advocate General and adopts the intermediary interpretation of Art. 16(4), it will result in uncertainty with the risk of multiple proceedings as several courts will have jurisdiction to hear different issues. However, the Advocate General observed that multiple proceedings were inevitable in patent litigation, regardless of the interpretation that was adopted. The proprietor of a patent often owns several patents in various Contracting States which relate to the same product or process, which means that the courts of these various Contracting States will all have exclusive jurisdiction as soon as the defendant in a patent infringement action pleads that the patent is invalid.
The matter now awaits the ECJ’s ruling which, it is hoped, will also clear up the questions raised by the Advocate General’s opinion.
Also published in the October 2004 issue of WIPR.