Summary of the ECJ Case

Court of Justice of the European Union (ECJ/CJEU)

25 February 2025

the entire webinar

Whether an invalidity defense deprives an Article 4 court of infringement jurisdiction and how jurisdiction applies to third-state patents.

• BCH owned European patents validated across multiple EU states and Turkey
• Sued in Sweden for injunction and damages covering Swedish and foreign validations, including the Turkish patent
• First instance declined foreign validations
• The Swedish appellate court referred three questions to the ECJ regarding Article 24(4):
  • Whether raising an invalidity defense deprives the infringement court (seized under Article 4) of jurisdiction over infringement, or only of jurisdiction over validity issues.
  • Whether national bifurcation regimes (e.g., Sweden/Germany) affect the answer.
  • How Article 24(4) applies when infringement concerns a third-state patent (e.g., Turkey).

• Brussels I Recast Articles 4: Persons or companies domiciled in an EU Member State shall be sued in the courts of that Member State (defendant’s domicile/headquarters).
• Brussels I Recast 7(2): In tort (including patent infringement), concurrent jurisdiction exists at the place where the harmful event occurred, in addition to Article 4.
• Brussels I Recast 24(4): Courts of the granting state have exclusive jurisdiction in proceedings “concerned with the validity” of patents and similar registered rights, whether raised as an action or defense. Applies to national patents and the national parts of European patents.

• Article 24(4) interpreted narrowly
• Courts seized under Article 4 retain jurisdiction over infringement despite invalidity defenses
• Validity of EU-granted foreign patents must be litigated in the granting state
• Infringement court may stay proceedings given a reasonable, non-negligible chance of invalidation
• For third-state patents, the Article 4 court may hear both infringement and validity defenses with inter partes effect
• National bifurcation regimes do not alter these rules
• Article 27 offers no transfer.

• Enables consolidation of multi-jurisdiction infringement at defendant’s domicile
• Curbs jurisdictional gamesmanship via late invalidity defenses
• Requires defendants to challenge EU patents’ validity in granting states
• Allows inter partes validity determinations for non-EU patents
• Establishes a long-arm principle affecting forum strategy.

• Consolidation at defendant’s domicile (Article 4):
  • Enables concentration of multi-jurisdiction infringement claims in a single EU forum, reducing risk of divergent outcomes and improving efficiency.
  • EU Member-State patents:
    • The Article 4 court can adjudicate infringement (including damages and injunctions).
    • Validity must be pursued before the granting state; defendants must file invalidity actions in those jurisdictions.
    • The infringement court may stay where there is a reasonable, non-negligible prospect of invalidation pending elsewhere.
  • Third-state patents:
    • The Article 4 court can hear both infringement and validity defenses, but any invalidity finding binds only the parties (inter partes).
    • Check Lugano and any bilateral treaties for jurisdictional limits.
• Article 7(2) alternative:
  • Claimants may instead sue where the harmful event occurred.
  • In that forum, infringement and validity jurisdiction will naturally align when infringement occurs in a state where the patent is granted, offering different tactical trade-offs.
• Legal certainty preserved:
  • Defendants cannot derail jurisdiction by raising late invalidity defenses.
  • No automatic transfer to courts of exclusive validity jurisdiction under Article 27.

• Status of the UPC under Brussels I Recast:
  • The UPC is treated as a national court for Brussels I Recast/Lugano purposes (per regulation amendments and UPCA Article 31).
  • It therefore benefits from the ECJ’s long-arm logic when:
    • The defendant is domiciled in a UPCA Member State.
    • The asserted patent is within UPC subject-matter jurisdiction (European patent not opted out; Unitary Patent).
• Internal venue determination:
  • UPC division choice follows UPCA Article 33 (location of infringement or defendant’s domicile).
• Practice alignment:
  • A Düsseldorf UPC decision (pre-ECJ judgment but consistent with the Advocate General’s view) recognized jurisdiction over the UK part of an EP.
• Limitations and forum dynamics:
  • The UPC cannot adjudicate non-EP national patents (e.g., purely Turkish, US, JP patents).
  • National courts may offer broader consolidation (including non-EP patents) than the UPC, potentially creating forum competition.
  • Patentees may weigh the UPC’s centralized revocation risk against national-court consolidation and the inability of those courts to revoke foreign EU patents in rem.