AG Opinion on “Solvay”: cross-border interim measures in patent disputes
In a globalized world, cross-border disputes in the field of patents are on the rise. Many times a patent registered by a company in several States is infringed by one competitor or by several companies belonging to the same group. In such cases, the most cost-effective solution consists on trying to concentrate the actions for infringements in one jurisdiction. In Europe, Regulation 44/2001 (Brussels I Regulation) allows to sue a company that has infringed a patent in multiple states before the courts of the Member State where the defendant is domiciled. However, in situations where the infringement in multiple countries was committed by multiple companies belonging to the same group that possibility is constrained by the interpretation given by the CJUE of Art. 6.1 R. 44/2001 in its Judgement of 13 July 2003, C-539/03, “Roche Nederlanden”. In those cases, an action against each one of the infringers must be filed either before the courts of the Member State where they are domiciled or before the courts of the place where the infringement took place.
The possibility to concentrate is also encumbered by the fact that when defendants challenge the validity of the patent, the only courts that can know about that question are those of the Member State(s) where the patents are registered (Art. 22.4). According to the CJUE (Judgement of 13 July 2006, C-4/03, “GAT”), this rule of jurisdiction applies both when the validity is questioned by way of an action or by way of an exception.
The recent Advocate General Opinion of 29 March 2012, C-616/10, “Solvay”, may introduce some flexibility on the strict interpretation of the R. 44/2001. It is to be seen whether the Court will follows the Opinion. Solvay has filed an action before the courts of the Netherlands against two subsidiaries of Honeywell (one with domiciled in the Netherlands and the other in Belgium) for the infringement of a European patent in Belgium and the Netherlands. In addition, Solvay lodged an interim claim against both defendants, seeking provisional relief in the form of a cross-border prohibition against infringement for the duration of the main proceedings. The defendants raised the defence of invalidity of the national parts of the patent concerned in the interim proceedings. The Dutch court decided to stay the proceedings and refer to the CJUE a preliminary ruling on the interpretation of Art. 6.1 and Art. 22.4 R. 44/2001.
In relation to the first provision, the Advocate General follows the existing case law: Art. 6.1 “applies in an action for infringement of the European patent involving several companies established in different Member States when the actions relate separately to acts carried out in the same Member State and infringe the same national part of a European patent governed by the same law”. This is an obstacle for the effective enforcement of patent rights: when companies belong to the same group carried out acts of infringement in different Member State that infringe different national part of a European patent, Art. 6.1 is not applicable so the concentration of the actions is not possible.
In relation to the interpretation of Art. 22.4, the Advocate General introduces an improvement to the existing case law: “the rule of exclusive jurisdiction [in Art. 22.4] is not applicable when the validity of a patent is raised only in interim proceedings, in so far as the decision likely to be adopted at the end of the proceedings has no final effect”. The decision is to be welcome at least at this point: it means that the Dutch court will be able to judge whether the foreign patent is valid or not in order to assess whether to adopt the interim measure or not. Unfortunately, the door opened by the CJUE is very small: in cases where the validity is raised in the interim proceeding and the main proceedings, “GAT” case law still applies. Furthermore, in the case at hand the interpretation is useless because the court does not have jurisdiction to hear about the infringement of the patent in Belgium allegedly committed by the Belgian subsidiary.
In Salvador Ferrandis & Partners we are following two legislative works which may introduce some changes in the existing situation of cross-border patent disputes. The first is the revision of the Brussels I Regulation, where the European Commission envisages a modification of Art. 6. The second is the establishment of a unitary patent protection in the EU, accompanied with a Unified Patent Court. The adoption of both text will certainly facilitate the protection of patents in the European Union in international disputes.
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