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On 25 February 2025 the Court of Justice of the European Union (CJEU) issued a long awaited landmark judgment in the case BSH Hausgeräte GmbH v. Electrolux AB (C-339/22) providing for a structured approach towards invalidity defenses in cross-border infringement proceedings, in particular when based on European patents. It adds to the possibilities already offered for European patents by the recently erected and very efficient UPC (Unified Patent Court).
Background of the Case
The case arose when BSH Hausgeräte GmbH, a German company holding a European patent for vacuum cleaners that had been validated in several countries (Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom and Turkey) initiated infringement proceedings in Sweden against Electrolux AB, a Swedish company with its principal seat in Sweden. BSH sought to consolidate its patent enforcement strategy by bringing a single action against Electrolux for infringement in all jurisdictions where the patent was validated before the Swedish Court where Electrolux had its’ principal seat[1].
Electrolux, in its defense, challenged the validity of the patent and argued that the Swedish courts lacked jurisdiction to rule on infringement of the patent in foreign jurisdictions on the basis of Article 24(4) of the Brussels I-bis Regulation. This provision stipulates that exclusive jurisdiction for matters concerning the registration or validity of patents resides exclusively with the courts of the state where the patent is registered (e.g. for German patents exclusively the German courts have jurisdiction etc.).
Faced with these jurisdictional complexities, the Swedish court referred key questions to the CJEU for a preliminary ruling. As detailed in our newsletter of 30 October 2024, the Advocate General (AG) Emiliou issued two opinions suggesting a “middle road” approach, allowing national courts to hear cross-border infringement claims while deferring validity disputes to the respective national jurisdictions.
Key Findings of the CJEU’s Decision
- Jurisdiction over cross-border infringement claims
In line with the opinions of AG Emiliou, the CJEU upheld that EU national courts of the domicile of the defendant[2] retain jurisdiction to hear infringement claims concerning European patents validated in other EU Member States than the one of the domicile of the defendant. Even if the alleged infringer raises an invalidity defense, the court hearing the infringement claim can continue to do so but must refrain from ruling on the validity of foreign patents, as this falls within the exclusive jurisdiction of the national courts of the respective states where the patent is registered.
- Impact of an invalidity defence on infringement proceedings
Thus, if a validity defence is raised, this does not automatically preclude the infringement court from continuing its proceedings. In this sense, the ruling marks a shift from the CJEU’s GAT v. LuK decision of 2006. Under that precedent, a cross-border injunction was blocked if defendants challenged the validity of the patent-in-suit. However, where there is a reasonable, non-negligible possibility of the patent being declared invalid, the infringement court may stay the proceedings pending a decision on validity by the competent national court, balancing procedural efficiency with the rights of both parties.
- What about European patents validated in non-EU Member States (e.g. Turkey)
The CJEU confirmed that Article 24(4) of the Brussels I-bis Regulation does not apply to non-EU Member States, as AG Emiliou suggested in his opinion. Therefore, EU national courts can examine the invalidity defence raised for the patents validated in third party states provided no special rules prevent this (e.g. a bilateral treaty between the States involved). The decision on this defence will solely affect the parties but not the existence or the content of the patent as such of the third party state.
Conclusion
This ruling offers new possibilities in cross-border litigation, not only for European patents but also for all the other intellectual property rights. As regards European patents in particular, it adds to the possibilities that are also offered by the UPC across Europe.
At Gevers, we remain committed to providing strategic guidance on patent litigation in the EU, be it on a national level or relating to the UPC. If you have any questions regarding this ruling or wish to discuss how it may impact your patent enforcement strategy, please contact us with all your related queries.
[1] See article 4(1) of the Brussels I-bis Regulation.
[2] Companies and legal persons are domiciled where their statutory seat, central administration or principal place of business is located – see Article 63(1) of the Brussels I-bis Regulation.