Today, the ECJ issued the long-awaited judgment in BSH v Electrolux. As expected in our last post, the court has taken a major step to clarify the approach to patent infringement actions in the EU. It is now official according to the ECJ that EU member state courts have jurisdiction to rule on foreign patents and grant cross-border injunctions against a defendant domiciled in an EU member state. That applies to patents granted or validated in other EU member states and also to patents granted or validated in third countries, in either case even if the defendant raises the foreign patent’s invalidity as a defence.
However, to avoid a clash between infringement proceedings and foreign validity proceedings in the EU, the ECJ emphasised that the court hearing the infringement case might stay its infringement case until the validity question is decided. According to the ECJ that should be the case if there is a reasonable and not negligible chance that the foreign patent will be declared invalid by the competent court in said jurisdiction. That rule applies according to the ECJ if the foreign patent is a patent granted or validated in another EU member state which has exclusive jurisdiction to rule on the validity of patents validated or granted in the respective EU member state according to Art. 24(4) Brussels I bis Regulation.
The ECJ is much less clear on how EU member state courts should deal with validity defences concerning patents granted or validated in a country outside the EU. It indicates that the same approach as for EU state patents applies under the corresponding provisions of the Lugano Convention and any bilateral treaties. It also indicates the possibility of a stay where validity proceedings were already underway when the infringement case began. Beyond that, though, is the Swedish court free to decide on the validity of the Turkish patent as between the parties insofar as that is necessary for the infringement case pending in Sweden or should the Swedish court at least consider staying the case until a Turkish court decides on the validity of the Turkish patent? That remains unclear.
It will also be up to EU member state courts to clarify under which circumstances one will have to assume “reasonable chances” that a foreign validity attack will be successful, and what type of discretion they retain to continue the infringement action in such cases.
Whether the flexibility that BSH v Electrolux grants EU member state courts will really lead to legal certainty will remain a big question mark.
As indicated in our recent blogpost, what is clear is that this judgment will allow EU member state courts to compete with the new Unified Patent Court (UPC) in certain cross-border cases, at least where a defendant domiciled there is infringing in multiple countries. A patent holder in such a case has the option to seek a cross-border injunction from a national EU member state court without risking the invalidation of several parts of his EP in one joint validity case as with the UPC, but with a greater risk of a stay.
