EU courts can overreach in foreign patent disputes: the arm is very long and not confined to infringement

In its awaited decision in the BSH v Electrolux case (Case C-339/22), the Court of Justice of the European Union (CJEU) ruled on 25 February 2025 that:

• A Member State's court seised of jurisdiction by the defendant's domicile pursuant to Brussels Regulation Article 4.1 may hear claims for patent infringement covering that Member State, other EU Member States, and third States outside the EU, for example the UK and Turkey. The decision is consistent with the Unified Patent Court (UPC) Düsseldorf Local Division's decision in Fujifilm v Kodak (28 January 2025).
• When hearing a claim for infringement of a patent to a third State on this basis, the court of an EU Member State may hear and determine a defence raised of invalidity, provided no ruling is made for the amendment of the register in the third State. The reservation of exclusive jurisdiction provided by Brussels Regulation Article 24.4 does not apply in respect of patents to third States. The CJEU's reasoning for interpreting Article 24.4 in this way included its decision in Case C-399/21 IRnova v FLIR, a 2022 ruling in a patent entitlement dispute (involving patents granted in China and the US) that Article 24.4 did not apply for reasons including that the provision only operated in respect of EU Member States.
• When hearing a claim for infringement of a patent to another EU Member State (again on the basis of domicile of the defendant), the court still has jurisdiction over the claim for infringement even where the defendant challenges, by way of defence, the validity of that patent to another Member State. However, an actual ruling on the validity of the patent to another Member State is, pursuant to Article 24.4 within the exclusive jurisdiction of the courts of that other Member State; the court seised of the infringement claim does not have jurisdiction over a counterclaim for revocation.
• Although the dispute in the BSH v Electrolux case concerned different designations of a European patent, the provisions of the Brussels Regulation upon which the ruling is founded, the rulings made by the CJEU and the CJEU's supporting reasoning are not limited to European patents.

The CJEU's judgment invites criticism from academia, foreign courts and diplomatic channels. It expansively opens the door to international litigants engaging in forum shopping, imaginative cross-border litigation strategies and obtaining and deploying antisuit injunctions from foreign courts. It also undermines to an extent the business case for litigating in the UPC, which already consistently applied the findings of the CJEU twice (Mul-T-Lock v. IMC Créations, Paris Local Division, 21 March 2025, UPC_CFI_702/2024 and Dainese S.p.A v. Alpinestars S.p.A, Milan Local Division, 8 April 2025, UPC_CFI_792/2024).

For the full discussion please read on below.

On 25 February 2025, the Court of Justice of the European Union (CJEU) handed down its long-awaited decision in Case C-339/22 BSH v Electrolux.

The judgment notably modifies the system of jurisdiction operating in the EU in respect of both intra-EU and international patent disputes. Where the court of an EU Member State is seised of jurisdiction by the defendant's domicile, it may hear and determine claims for infringement of patents to other EU Member States, even where validity is challenged (although no ruling may be made on the validity of a patent for another Member State). Such a court may also hear and determine claims for infringement of patents granted by third States (like the UK, Turkey, the USA and China), and in that context also make determinations on questions of validity raised by way of defence, although no direction may be made to the administrative authority responsible for maintaining the national register of the third State concerned.

The CJEU's judgment is consistent with, but also broader than, the 30 January 2025 ruling made by the Unified Patent Court (UPC) Düsseldorf Local Division (LD) in Fujifilm v Kodak.

The BSH v Electrolux case reached the CJEU by a reference made by the Svea Court of Appeal, Sweden. BSH Hausgeräte (BSH) had sued the Swedish company Electrolux for infringement of BSH's European patent designations covering Austria, France, Germany, Greece, Italy, the Netherlands, Spain, Sweden, Turkey and the United Kingdom. The claims for infringement of non-Swedish designations of BSH's European patent were made in the Swedish Court pursuant to Brussels Regulation Article 4.1, which provides that, "Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State".

The questions referred to the CJEU concerned the operation of the EU's Brussels Regulation on jurisdiction and the enforcement of judgments in civil and commercial matters. Specifically, the interpretation of Article 24, which provides:

'The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:

The questions asked of the CJEU about the interpretation of Article 24.4 were variously directed to the claims made for infringement of patents to other EU Member States and those made in respect of third States. The CJEU's rulings on each are considered in turn below.

The scope of the Brussels Regulation Article 24.4 exception in a cross-border claim for infringement of a patent of another EU Member State

The CJEU first focused on how Brussels Regulation Article 24.4 operates when a claim for patent infringement is made against a defendant in a court of their Member State of domicile which (pursuant to Article 4.1 of the Brussels Regulation) includes a claim for infringement of a patent granted in another Member State.

The CJEU observed that, as the Advocate General (AG) had opined, it is in the interest of the patentee, who believes that their European patent has been infringed by the same defendant in several Member States, to concentrate all of its infringement actions before one single national court, and to obtain injunctions and overall compensation in one single forum. The CJEU said that the solution had the advantage of avoiding, inter alia, the risk of divergent decisions.

We note for the reader that the domicile-based jurisdiction of a court provided by Article 4.1 of the Brussels Regulation is subject to any exclusive jurisdiction set under other provisions. Article 24.4 provides for exclusive jurisdiction in proceedings concerned with the registration or validity of a patent to the courts of the Member State in which the registration has been made (or deemed to have taken place). The exception provided by Article 24.4 is not limited to "European" patents; and it applies to "trade marks, designs or other similar rights required to be deposited or registered" too.

The questions first addressed by the CJEU, although addressed to Article 24.4, went to how an infringement claim made in the court of the defendant's Member State of domicile (pursuant to Article 4.1) in respect of a patent to a different Member State would be impacted by a challenge to the validity of the asserted patent made by way of defence.

The CJEU ruled that a Member State's court, when seised pursuant to Article 4.1 of the Brussels Regulation of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction over the claim for infringement (of a patent for another Member State) even where the defendant challenges, by way of defence, the validity of that patent (to another Member State). However, an actual ruling on the validity of the patent to another Member State is, pursuant to article 24(4) within the exclusive jurisdiction of the courts of that other Member State. (Therefore, the court seised by Article 4.1 would not have jurisdiction to hear a counterclaim for revocation made against a patent of another EU Member State. A counterclaim would need to be filed in the courts of the Member State of the patent).

This ruling is a notable departure from the practice long adopted under the Brussels Regulation and earlier iterations of the EU's system of jurisdiction. The long-standing practice was explained in the CJEU's decision in C-4/03 GAT v Luk, which reserved the issue of validity of a patent to the courts of the Member State of grant/designation, whether the issue was raised by way of an action or as a defence. The result was that patent infringement and validity disputes were heard and determined, almost exclusively, in the courts of the Member State of each patent, on a state-by-state basis. The CJEU's ruling in BSH v Electrolux overturns the approach explained by the Court in GAT v Luk, giving the reservation of exclusive jurisdiction provided by Article 24.4 a much narrower scope.

In Case C-616/10 Solvay v Honeywell, the CJEU nuanced the position taken in GAT v Luk for preliminary relief. Under Brussels Regulation Article 35, a party may seek, in one Member State, a preliminary injunction having effect in one or more Member States even if another Member State's court has jurisdiction on the substance of the matter. The CJEU in Solvay held that Article 35 would not be outweighed by the exclusive jurisdiction set by Article 24.4 where validity issues were raised because the court seised of the request for a preliminary injunction would not issue a final decision with respect to the validity of the asserted patent. The court seised with the request for a preliminary injunction could nonetheless refuse to issue a preliminary injunction if, in its opinion, a reasonable, non-negligible possibility existed that the patent invoked would be declared invalid by the competent court.

The CJEU's ruling in BSH v Electrolux would not seem to impact the approach explained in Solvay v Honeywell. Indeed, the Court in BSH v Electrolux drew analogy with the reasoning in Solvay v Honeywell and explained that the court seised of an infringement action may, where appropriate, stay the proceedings, enabling it to take account, for the purposes of the infringement action, of a decision given by the court seised of the action seeking a declaration of invalidity.

However, the CJEU's ruling in BSH v Electrolux now enables cross-border claims for patent infringement and final relief. It does so by enabling the bifurcation of patent disputes between, on the one hand, the courts of the defendant's Member State of domicile (which may consider a defence of invalidity but not make a ruling as to invalidity in respect of a patent to another Member State), and on the other hand, the courts of the Member State of the patent (which have exclusive jurisdiction to determine, definitively, a question of validity or registration of the patent concerned). Questions of invalidity and infringement of the same patent may therefore be addressed by the courts of different Member States. The court seised of the infringement claim pursuant to Article 4.1 is not required automatically to stay the proceedings (under Article 30) where a question of validity arises. Whether the threshold condition of a reasonable, non-negligible possibility of the patent being declared invalid by the court of the other Member State arises would be subject to the assessment of the court hearing the infringement case.

Questions arise as to how this new regime will operate practice, in the context of courts of different Member States operating in different territorial jurisdictions according to different procedural rules and traditions. There is no mechanism provided by the Brussels Regulation by which the court of one Member State may refer an invalidity question to court of the state of grant/designation. It will be up to the defendant to bring a revocation claim before each court, and for the parties to keep the various courts involved informed of proceedings ongoing elsewhere.

The CJEU's decision in BSH v Electrolux also provides competition for the UPC. Like the UPC, a court in a Member State can now, pursuant to the Brussels Regulation, hear and determine claims for patent infringement in respect of other Member States, even where invalidity defences are raised. But unlike in the UPC, each validity challenge will be considered separately, according to the laws and practices of the Member State of the patent (or European patent designation) concerned and in the courts of that Member State. Hence a risk for a patentee bringing a claim in the UPC – of a single invalidity determination – is mitigated.

Additionally, although the BSH v Electrolux case concerned a European patent, different parallel designations of which were being asserted by BSH in the Swedish court, there is nothing in the CJEU's reasoning to suggest that its interpretation of the Brussels Regulation in the context of cross-border patent disputes would apply differently in the case of different national patents being asserted against the same defendant pursuant to Article 4.1. Nor is there anything else that could provide basis for different treatment of European patents.

The European patent system enables applicants to deploy a single pooled examination process in the European Patent Office for the participating states chosen ("designated") by the applicant, such that a "European patent" is granted consisting of a bundle of national designations. The system – specifically founding treaty the "European Patent Convention" (EPC) - makes no provision for cross-border jurisdiction in respect of questions of infringement or validity of a European patent's different national designations, each of which constitutes a distinct property right governed by the laws of the state for which it is designated (deemed granted). States participating in the EPC include the EU Member States, the EEA States (Iceland, Liechtenstein, Norway), Switzerland and several outside the European single market area including the UK and Turkey.

The jurisdiction of the UPC, on the other hand, is limited by its founding treaty to European patents. Following the CJEU's decision in BSH v Electrolux, the scope for cross-border patent infringement litigation in courts of EU Member States therefore appears broader than in the UPC, and with reduced concentration of validity determination.

The scope of any exception from domicile-based jurisdiction pursuant to Article 4.1 Brussels Regulation in respect of the validity of a patent to a third State

Even more strategic was a question impacting the jurisdictional reach of courts of EU Member States in respect of patents to third State.

The CJEU was not asked to rule on whether, pursuant to the Brussels Regulation, any court of an EU Member State could assert or accept jurisdiction in respect of a claim for infringement of a patent to a state outside the EU.

However, in view of doubts raised by the Swedish court on the subject, the CJEU expressed the view that under the general rule laid down in Brussels Regulation Article 4.1, the courts of the Member State in which the defendant is domiciled have, in principle, jurisdiction in an infringement action brought against that defendant by the holder of a patent granted or validated in a third State. The CJEU ruled that that jurisdiction, by virtue of the general rule, extends to the question of the validity that third State patent raised as a defence in the context of that infringement action.

The CJEU's rationale for reaching that conclusion drew upon its 8 September 2022 judgment in Case C-399/21 IRnova v FLIR Systems, following a different reference from the Svea Court of Appeal, Sweden. That case was a patent entitlement dispute between two Swedish domiciled companies involving inventions that IRnova contended had been made by its employee, at the very least as a co-inventor, and for which protection had been sought by FLIR in international patent applications, subsequently supplemented by European, US and Chinese patent applications. The question that arose was whether Brussels Regulation Article 24.4 operated to reserve the dispute in respect of the patents granted in third States away from the Swedish Court. The CJEU's conclusion was that it had already held, in C-281/02 Owusu v Jackson, that the Brussels Regulation applied where there existed an international element to the dispute. The dispute between IRnova and FLIR concerned the existence of a better right to inventions, which fell within the scope of 'civil and commercial matters' for the purposes of the Brussels Regulation. The dispute did not constitute proceedings 'concerned with the registration or validity of patents' and the patents concerned were not granted in a Member State. Therefore the reservation of exclusive validity contained in Article 24.4 did not operate.

In the BSH v Electrolux case, the CJEU was asked whether the exception provided by Article 24.4 of the Brussels Regulation confers exclusive jurisdiction upon the courts of third states in proceedings concerned with the registration or validity of patents to such third States.

The CJEU noted that, as the AG observed, the regime laid down by the Brussels Regulation, like the acts which preceded it, "is a system of jurisdiction internal to the European Union, which pursues objectives specific to it, such as the proper functioning of the internal market and the establishment of an area of freedom, security and social justice".

Against this background, the CJEU ruled that Article 24.4 must be interpreted as "not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State".

In other words, the CJEU's reasoning was that, while the Brussels Regulation is a system of jurisdiction internal to the EU, it understands Article 4.1 to operate to confer domicile-based jurisdiction on a court of an EU Member State to hear claims for infringement of a patent for a State outside the EU, but Article 24.4 not to "confer" any jurisdiction on the courts of the same third State in respect of the assessment of the validity of that same patent.

The CJEU ruled, therefore, that the court of an EU Member State seised pursuant to Article 4.1 with domicile-based jurisdiction in a claim for infringement of a patent to a third State has jurisdiction to hear and rule upon a defence of invalidity raised in respect of the third State patent, subject to any exception provided elsewhere in the Brussels Regulation or by bilateral convention.

No such exception arose in the present case, in particular because Turkey was not a party to the Lugano Convention and the European Patent Convention "does not contain any provision expressly defining or restricting the jurisdiction of the courts of the parties to that convention in cross-border disputes relating to the European patent".

That said, the CJEU then acknowledged that it was necessary to determine whether the jurisdiction, based on Article 4.1, of a court of a Member State to rule on the issue of the validity of a patent granted or validated in a third State where raised as a defence to an infringement claim, was restricted "by general international law", including "the principle of non-interference, according to which a State may not interfere in cases which essentially come within the national jurisdiction of another State". The grant of a patent is "an exercise of national sovereignty" and so according to the principle of non-interference "only the courts of the third State in which a patent is granted or validated have jurisdiction to declare that patent invalid by a decision that may cause the national register of that State to be amended as regards the existence or content of that patent".

The CJEU said that by contrast, a court of a Member State seised by domicile of the defendant of a claim for infringement of a patent to a third State does have jurisdiction to rule on the issue of validity raised by way of defence "given that the decision of that court sought…is not such as to affect the existence or content of that patent in that third State, or to cause its national register to be amended". That decision "has only inter partes effects, that is to say, a scope limited to the parties to the proceedings". Under "no circumstances" could the decision of the domicile-seised court include a direction to the administrative authority responsible for maintaining the national register of the third State concerned.

Therefore, the CJEU ruled that if a court of a Member State is seised, on the basis of Article 4.1, of an action alleging infringement of a patent to a third State and a question as to the validity of that third State patent is raised by way of defence, the court has jurisdiction, also pursuant to Article 4.1, to rule on that defence, provided that the decision does not cause the national register of the third State to be amended.

The CJEU's ruling is consistent with the legal position taken by the UPC LD Düsseldorf in the Kodak v Fujifilm case. In that case the UPC, as a court under Brussels Regulation, considered that it had jurisdiction over a claim for infringement of a UK designation of a European patent. As the German designation of the European patent was held invalid by the LD, there was a risk of revocation of the UK designation, hence the LD determined that the claim for infringement of the UK designation could not succeed.

Enforcement issues, devaluation and other concerns

The CJEU's decision in BSH v Electrolux modifies at the highest level the system of jurisdiction operating in the EU in respect of both intra-EU and international patent disputes.

The decision is likely to be viewed by the courts of third States as an exertion of extraterritorial overreach. In particular, it has always been the international norm that the courts of one sovereign state are not competent to adjudicate on a claim for infringement of, or about the validity of, a patent granted by and for the territory of another sovereign state. This is for a number of important reasons.

Patent actions, although appearing on their face to be disputes between two parties, in reality also concern the public. A finding of infringement is a finding that a monopoly granted by the state is to be enforced, invariably with the result that the public have to pay higher prices than if the monopoly did not exist or was found not to be infringed. Different sovereign states have different legal systems with different tests for the assessment of infringement of the patents they award and different tests for the award and quantification of relief preliminary to and following a finding of infringement. For example, when a court in the UK is faced with a request by a patentee for an interim injunction to restrain infringement of a patent to a pharmaceutical product, the court may require, as a condition for the award of the relief sought, an undertaking from the patentee to compensate the NHS in the event the interim relief is later found wrongly to have been granted. On the approach asserted by the CJEU in the BSH case, financial protection for the public health system in the UK could be subverted by a foreign court imposing a preliminary injunction on a foreign domiciled defendant, backed up by coercive financial penalties for non-compliance in the UK.

It is also in the interest of the public that a patent, if invalid according to the laws of the granting state, be removed from the register, rather than shielded by an inter parties determination in another jurisdiction and left in place for the patentee to enforce against other competitors.

None of these points was recognised by the CJEU, despite the AG recognising that "a state only has the sovereign power to regulate trade in its territory" and therefore the location of the defendant's domicile could not serve as justification for the courts in the state of domicile to interfere in the domestic affairs of a third State. The AG explained that that could be seen as a breach of the principle of sovereign equality, and the Brussels regime must be interpreted consistently with that principle. In legislating the Brussels regime in its modern form, the EU legislature had not meant to impose a comprehensive solution on the issues of disputes closely connected to third states.

Against this background, consequences of the CJEU's ruling will likely include the following:

First, well informed defendants in the EU will be preparing antisuit injunction strategies to counter the threat of courts in EU Member States (or the UPC) asserting jurisdiction in respect of a patent granted by a third State. While intra-EU antisuit injunctions were banned by the CJEU's judgment in Case C-159/02 Turner v Grovit, the courts of non-EU (and non-EEA) states are by definition not bound by the CJEU's rulings and remain free to deploy antisuit injunctions to address overreach by foreign courts.

Second, cross-border enforcement in a third State of a judgment of court in the EU awarding relief for patent infringement in respect of that third State would prove extremely challenging. There is no international mechanism for enforcement of such a judgment. The 2019 Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters expressly does not cover intellectual property, reflecting the international norm described above.

In the UK, for example, there is no procedural mechanism for the enforcement a foreign judgment purporting to award an injunction into the UK to restrain patent infringement, and an attempt to enforce a damages award could be expected to be challenged and blocked on jurisdictional grounds. Attempts to coerce compliance by the imposition of punitive financial penalties on the defendant domiciled in the EU Member State could be expected to draw criticism at the diplomatic level aligned with the criticism of courts in China seeking to overreach in respect of patent disputes in the EU.

Third, patentees can be expected to test and push the development of procedural mechanisms available in national courts and the UPC by which a hook domiciled-defendant could secure seisure of the chosen court in respect of infringement claims in other States, against wider defendants and, potentially, wider products/processes than form the subject of the dispute with the hook defendant.

Fourth, the new approach to the interpretation of Brussels Regulation Article 24 enables patentees to claim against a domiciled defendant, in a single court in an EU Member State, for patent infringement on a pan-European (and wider) basis while keeping determination and resolution of validity issues within the courts of the state of each asserted patent. This changes the business case for UPC litigation. The UPC's founding treaty expressly limits the UPC's jurisdiction to European patents; and UPC validity determination takes the form of a single procedure for UPC states.

A conclusion must be that the CJEU's ruling in BSH v Electrolux sets aside widely recognised basic principles of international law to comply with what looks like a political agenda. The Court's justification is internally inconsistent and threatens international dispute. It is unlikely to remain unchallenged, although the UPC already consistently applied the findings of the CJEU twice (Mul-T-Lock v. IMC Créations, Paris Local Division, 21 March 2025, UPC_CFI_702/2024 and Dainese S.p.A v. Alpinestars S.p.A, Milan Local Division, 8 April 2025, UPC_CFI_792/2024).

For information on this subject, please get in touch with Marianne Schaffner, Mathilde Grammont or Ailsa Carter.