Landmark CJEU decision extends the options for European cross-border patent infringement disputes
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Landmark CJEU decision extends the options for European cross-border patent infringement disputes

The CJEU has issued a landmark decision in BSH Hausgeräte vs Electrolux (C-339/22), opening the door to European cross-border patent infringement disputes in the national courts. The CJEU’s ruling clarifies that:

  • An EU Member State court of a defendant's domicile has jurisdiction to hear an infringement action with respect to a patent granted in another Member State, irrespective of whether the defendant has raised an invalidity defence.
  • An EU Member State court of a defendant's domicile has jurisdiction to assess an invalidity defence with respect to a patent granted in a non-EU state with inter partes effect.

The decision has been much-anticipated and confirms the availability of cross-border injunctions in proceedings before courts of EU Member States and the UPC.

The CJEU also clarified a number of practicalities. Following Advocate General Emiliou’s first opinion, the CJEU noted that the court of the Member State in which the defendant is domiciled may stay the infringement proceedings, pending the outcome of any invalidity action taking place in another Member State and for which a patent granted in that other Member State is part of the infringement action. The court could, for example, stay proceedings if it considers that there is a reasonable possibility of the patent being declared invalid by the court of that other Member State.

The decision is in agreement with the UPC’s Düsseldorf Local Division’s decision in Fujifilm vs Kodak (UPC_CFI_355/2023), which we reported on in our news item here. In that decision, the UPC ruled that it has jurisdiction over infringement actions concerning the UK part of a European patent, at least when the defendant is domiciled in a Contracting Member State.

Following the issuance of the CJEU’s decision, commentators have speculated that we may see applications for anti-suit injunctions at non-EU courts, to prevent parties bringing disputes at EU courts relating to patents granted for non-EU states.  Such applications may aim to avoid conflicting proceedings arising between courts of non-EU and EU states over the same patent. In particular, it seems likely that a UK court may be open to issuing an anti-suit injunction against proceedings brought at the court of an EU Member State which were initiated after proceedings had already commenced at the UK court.

The decision is considered in further detail in our briefing.