The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
Important Ruling by the Court of Justice of the European Union on Jurisdiction in Patent Infringement and Invalidity Actions
A recent judgement issued by the Court of Justice of the European Union on 25 February 2025 in connection with Case C-339/22 BHS Hausgeräte against Electrolux introduced new perspectives on the long-debated issue of court jurisdiction in actions concerning infringement and invalidity of the national parts of European patents.
In February 2020 the Germany company BHS Hausgeräte GmbH, holder of European patent No. 1434512 sued the Swedish company Electrolux AB before the Swedish Patent and Commercial Court for infringement of all the national parts of said European patent.
The key points raised by Electrolux in its defence were that the Swedish court had no jurisdiction in respect of national parts of said European patent other than the Swedish one (‘foreign patents’) and that according to Article 24(4)[1] of the Brussels I bis Regulation (Regulation (EU) No. 1215/2012) the infringement action is indissociable from the issue of the validity of the patents in question.
In its decision of 21 December 2020, the Swedish Patent and Commercial Court declared that it did not have jurisdiction to rule on the alleged infringements of EP national parts other than the Swedish part.
BHS appealed against said decision to the Swedish Patent and Commercial Court of Appeal, arguing that the courts of the State in which the defendant is domiciled have jurisdiction to rule on the infringement of all the national parts of the EP (including those in non-EU Member States like Turkey, as was the case here) even if said courts do not have jurisdiction to rule on an invalidity action brought against said patent. Electrolux, on its part, maintained its arguments set forth in the first instance.
The Swedish Patent and Commercial Court of Appeal, faced with different possible interpretations of Article 24(4) of the EU Regulation 1215/2012, referred the case to the Court of Justice of the European Union (CJEU) for a preliminary ruling.
The CJEU ruled as follows:
- When an action is brought before a court of the EU Member State of domicile of the defendant in respect of an alleged infringement of a patent granted or validated in another EU Member State, said court still has jurisdiction to hear the action where, within the context of said action, the defendant brings a counterclaim for invalidity of said patent, while the court of the EU Member State where the patent was granted retains its exclusive competence to rule on the validity issue.
- When an action is brought before a court of the EU Member State of domicile of the defendant in respect of an alleged infringement of a patent granted or validated in a third State and the validity of said patent is challenged as a defence, the EU court has jurisdiction to rule on such defence, as its decision does not affect the existence nor the content of the patent in said third State, nor causes any amendment to the patent register of said third state.
The above ruling constitutes a further fundamental aspect to be taken into consideration when litigating patents and stresses once again, if ever there was a need, the importance of carefully choosing whether, how, and where to litigate.
In that regard, over the course of nearly a century of activity, our firm has built a wealth of experience thanks to the work of highly qualified professionals, who also serve as court-appointed and party-appointed experts (CTU and CTP) before Italian courts.
This expertise is supported by internal procedures certified under the UNI EN ISO 9001:2015 standard, as well as, when necessary, by the contribution of carefully selected external partners, validated through years of experience in carrying out specialized assignments.
For any further information or assistance, please do not hesitate to contact us at email@interpatent.com.
[1] Article 24 states that ‘The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: […] (4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.’