ECJ Limits Cross-Border Patent Jurisdiction

According to Marta Pertegás & Charles Gielen in "Cross-border patent enforcement : back to square one?," circulated by Professor Hal Wegner on July13, 2006, the European Court of Justice (ECJ) officially condemned pan-European cross-border jurisdiction practice in two patent rulings released that same day. "The long awaited judgments in GAT v. Lamellen and Roche v. Primus," write the authors, "substantially limit the possibility for centralising infringement claims on foreign patents before a single national court."

The Oberlandesgericht (Higher Regional Court) Düsseldorf had stayed GAT's appeal and referred the following question to the Court of Justice for a preliminary ruling on the effect of the Brussels Convention:

"Should Article 16(4) of the Convention . . . be interpreted as meaning that the
exclusive jurisdiction conferred by that provision on the courts of the Contracting State in which the deposit or registration of a patent has been applied for. . . only applies if proceedings . . . are brought to declare the patent invalid or are proceedings concerned with the validity of patents . . . where the defendant in a patent infringement action or the claimant in a declaratory action . . . pleads that the patent is invalid or void and that there is also no patent infringement for that reason. . . .?

The ECJ ruled as follows:

"Article 16(4) ... is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection."

According to Jeremy Phillips of the Queen Mary Intellectual Property Research Institute, University of London,

This ruling . . . means that only a French court tribunal can rule on the
validity of a French patent. The ruling does not mention jurisdiction in respect
of infringement, however, since Article 16(4) is not applicable to them. It also
confirms that the exclusivity of jurisdiction is the same, whether the party
challenging the validity brings proceedings to invalidate the patent or merely
raises the patent's invalidity as a defence to an infringement action.

However, Pertegas and Gielen see broader implications for these decisions:

The judicial reluctance of the European Court of Justice severely curtails the trend toward the centralization of patent infringement litigation in European jurisdictions. The ECJ has perhaps evidenced that cross-border enforcement of patent rights is hard to rime with the current jurisdictional framework. Cross-border litigation in patent disputes may be 'dead' under the 'Brussels' regime, yet today's judgments will hopefully accelerate the negotiation process towards a feasible alternative, either a Community patent or a European Patent Litigation Agreement (EPLA) .

In fact, during a July 12, 2006 public hearing in Brussels on the future patent policy in Europe, European Commissioner for Internal Market and Services Charlie McCreevy reportedly told the audience “I will go for one big last push for the Community patent.” Morover Intellectual Property Watch rep[orted on July 13 that

McCreevy is also ready to move forward now with the proposed European Patent
Litigation Agreement (EPLA), which also was on the agenda at the hearing. This
could mean the setting up a European patent court with jurisdiction to deal with
infringement and revocation actions concerning European patents, according to
the European Patent Organisation Working Party on Litigation which adopted
a declaration on the issue in 2003.

But, for now, Professor Wegner may be correct in surmising that, until a decision by the Federal Circuit in Voda v. Cordis Corp., Fed. Cir. App. No. 05-1238 (Newman, Gajarsa, Prost, JJ.), "the Japanese judiciary stands alone as the most progressive of the trilateral regions" in terms of transborder patent enforcement. "Radical changes in procedures within Japan make the Tokyo District Court the best (or worst) option in certain situations," he explains in his October 2005 paper on "Global Forum Shopping in the Wake of Voda v. Cordis and Trans-Border Patent Enforcement."