The CJEU confirms the multi-jurisdictional competence of EU courts in patent litigation

The CJEU decided the case of BSH Hausgeräte GmbH vs. Electrolux AB (C339/22), which concerned a multi-jurisdictional infringement action relating to a European patent. BSH, a German company, sued Electrolux, a Swedish company, in Sweden for infringement of a set of national patents derived from a European patent, including designations in several EU Member States (Germany, Spain, France, etc.) as well as in a non-EU state (Turkey). In turn, Electrolux challenged the validity of the national patents.

The Swedish court referred the following preliminary questions on international jurisdiction to the CJEU:

• whether a court hearing a patent infringement action loses its jurisdiction when a counterclaim for invalidity is raised, in light of the exclusive jurisdiction rule of the forum of registration (Article 24(4) of the Brussels I bis Regulation); and
• whether such exclusive jurisdiction extends by analogy (reflexive effect) to patents registered in non-Member States, such as Turkey.

The CJEU clarified that Article 24.4 of the Regulation – which grants exclusive jurisdiction over “the registration or validity of patents" to the courts of the Member State where the patent is registered, "irrespective the issue is raised by way of an action or as a defense" – must be interpreted restrictively. In an infringement dispute, if the defendant alleges the invalidity of the patent, the court hearing the infringement does not automatically lose jurisdiction over the main action.

In other words, the exclusive jurisdiction of Article 24.4 of the Regulation applies solely to the validity of the patent. However, it does not deprive a court that has jurisdiction based on the defendant’s domicile (Article 4.1 of the Regulation) of the power to hear the infringement action in the countries where the alleged infringement occurred.

Furthermore, the CJEU rejected the application of the so-called "reflexive effect" of Article 24.4 of the Regulation to patents granted in third countries. Consistent with its previous case law (IRnova, C399/21), the CJEU states that the exclusive jurisdiction rule set out in the Regulation does not cover patents granted outside the EU. Consequently, exclusive jurisdiction is not conferred on the courts of third countries (Turkey, in this case) in relation to the validity of such patents.

As a result, a court of a Member State with jurisdiction under Article 4.1 of the Regulation (by virtue of the defendant’s domicile) may hear the infringement action even where the validity of the patent is disputed in the same proceeding, with the limitation that any pronouncement on validity will only have inter partes effects ("the decision of that court sought in that regard is not such as to affect the existence or content of that patent in that third State, or to cause its national register to be amended").

This ruling reopens the possibility of cross-border patent litigation by allowing patent holders to bring infringement actions concerning multiple national designations of a European patent in a single jurisdiction, without a counterclaim for invalidity of a patent registered in another State resulting in a lack of jurisdiction.

With this significant decision, the CJEU strengthens the jurisdiction of EU courts in patent litigation, which could, in practice, intensify the competition among courts in different EU Member States to attract these particularly complex cases. It remains to be seen what developments will follow, including before the Unified Patent Court.