The ECJ on cross-border jurisdiction in patent infringement actions

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With its long-awaited decision in C-339/22 (BSH v. Electrolux), published on 25 February 2025, the Court of Justice of the European Union has provided important clarifications on cross-border patent infringement actions. According to the decision, the court of an EU country in which the defendant is domiciled has jurisdiction to rule on patent infringement committed in another EU or non-EU country even if a validity defence is raised. Furthermore, in the case of a non-EU country, the court may also have jurisdiction to rule on the validity defence with inter partes effect.

The case giving rise to the ruling was initiated in Sweden as the domicile of Electrolux, i.e. the defendant in the infringement action, pursuant to Article 4(1) of EU Regulation No. 1215/12 (the “Regulation”): “persons domiciled in a Member State shall … be sued in the courts of that Member State”. Under this provision, BSH had asked the Swedish courts to also rule on the infringement of non-Swedish designations of its European patent by Electrolux, including a non-EU (Turkish) designation.

Electrolux had, however, objected that these foreign portions of the patent were invalid and that, therefore, the Swedish court could not rule on their infringement, given the exception contained in art. 24(4) of the Regulation: “Regardless of the domicile of the parties (…) the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State ”, as well as of any national patent of that State. According to Electrolux, given this rule and considering that the infringement action would be indissociable from the issue of validity, and therefore would ultimately be a dispute “in proceedings concerned with the validity of patents”, only the national courts of the individual Member States where the European patent was validated would be competent to rule on the infringement of the relevant national portions.

The Swedish Industrial Property Court had accepted Electrolux's argument, stating that it had no jurisdiction to decide on BSH's claims. The Stockholm Court of Appeal, upon appeal by BSH, had instead referred the case to the ECJ for a preliminary ruling, which was issued with the judgment in question. Through the latter, the Court instead rejected Electrolux's defence, noting the following:

·       where the court of the Member State of the defendant's domicile is hearing, pursuant to Article 4(1) of the Regulation, an action for infringement of a patent granted or validated by another Member State, and the defendant challenges the validity of the latter, that court may not decide on the validity of the patent, in light of Article 24(4) of the Regulation;

·       however, Article 24(4) only concerns the part of the dispute relating to the validity of the patent and does not concern infringement actions, even though their examination involves an in-depth analysis of the protection conferred by the patent in the light of the law of the State in which the patent was granted or validated;

·       consequently, the court of the Member State of the defendant's domicile, which has jurisdiction, pursuant to Article 4(1), to hear an action for infringement of a patent granted or validated in another Member State, does not lose that jurisdiction merely because the defendant challenges the validity of the patent;

·       on the other hand, that court, if it considers that there is a reasonable possibility that the patent will be annulled by the competent court of another Member State, may stay the infringement proceedings, so as to take into account, in its decision, the decision issued by the court hearing the invalidity action.

The Court goes even further with regard to the infringement of the non-EU (Turkish) designation of the European patent in question. In particular, the ECJ states that:

·       Article 24(4) of the Regulation applies only to EU Member States, and therefore it does not confer on the judges of a non-EU State exclusive jurisdiction to rule on the validity of patents granted or validated in that State;

·       consequently, in principle, under Article 4(1) of the Regulation, not only (i) the courts of the Member State of the defendant's domicile have jurisdiction to hear an infringement action brought against the defendant by the proprietor of a patent granted or validated in a third State domiciled in another Member State; but even (ii) the jurisdiction of the court of the Member State thus seized extends to the issue of the (in)validity of the patent raised in that infringement action;

·       however, this jurisdiction in principle can be limited in three circumstances:

i)               if the third State is a contracting party to the Lugano Convention, according to which the courts of that State have exclusive jurisdiction to decide on the validity of a patent granted there;

ii)              if there is a bilateral convention concluded between a Member State and a third State according to which the courts of that third State have such exclusive jurisdiction;

iii)             if Articles 33 and 34 of the Regulation apply, which allow the court of a Member State to refer the matter to the court of a third State if proceedings between the same parties concerning the same or a related claim are already pending there;

·          in this case, none of these limitations appear to apply;

·       the jurisdiction of the Member State hearing the infringement action does not appear to be excluded, even by rules of general international law. In particular, his/her decision on the invalidity objection of the non-EU portion of the patent has effect only inter partes, does not affect the existence or content of the patent and does not determine its revocation, therefore it does unduly interfere in a case that essentially falls within the national jurisdiction of the third State;

·       consequently, if a court of a Member State is seized, pursuant to Article 4(1) of the Regulation, of an action for infringement of a patent granted or validated in a third State the validity of which is challenged, that court shall have jurisdiction to rule on that exception.

The Court's decision essentially ends up granting the judges of the Member States a broader jurisdiction over the patents of third States than over those of other Member States. Moreover, in relation to the former, the Court does not even suggest that the judge of the Member State seized of the infringement action should stay the judgment pending the decision of the third State on the (in)validity of the patent. It remains to be seen how the third States will react.

The above also has implications for the Unified Patent Court (UPC), which could be encouraged to decide infringement cases relating to non-EU portions of European patents (which the UPC has already done in the decision in UPC_CFI_355/2023 of the Local Division of Düsseldorf). On the other hand, the same applies to national courts, which could thus become more “attractive” than the UPC, by not involving the risk of a revocation of the patent in all states adhering to the UPC system.

Finally, the ECJ's decision could have repercussions on other industrial property rights other than patents (e.g. trademarks, designs, utility models), given that Article 24(4) of the Regulation also applies to them.