Patents are national in character - a UK patent only covers the UK, a US patent the US, and so on.


A European patent, granted by the European Patent Office (EPO) in Munich, is not a pan-European patent as such, but comprises a bundle of national patent rights. So, an applicant to the EPO names the European countries in which he wants the patent to apply and, if the patent is granted, he ends up with a separate (albeit largely identical) patent in each of the countries he has named. A finding by one European court that a patent is invalid only invalidates that patent within the territory of that court, so pan-European patent litigation can be hugely complex and expensive, with separate proceedings sometimes needed in the key jurisdictions in which a patent is in force.



Two eagerly awaited cases that might have changed this landscape have recently been handed down by the European Court of Justice (ECJ): Primus v Roche (C-539/03) and GAT v LuK (C-4/03) (both 13 July 2006). Both cases arose from attempts by European courts to extend their reach in patent matters based on their interpretations of the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (the Brussels convention has been superseded by the Brussels regulation Council Regulation 44/2001, but that should not impact on the effect of these judgments). In its judgments, the ECJ not only confounded the attempts of European courts to extend their reach, but went even further than expected in forbidding the courts in EU territory from hearing multiple infringement actions involving patents and defendants in other territories.



The cases revolved around some key articles in the Brussels convention:



Article 2(1) states that persons domiciled in a contracting state shall, whatever their nationality, be sued in the courts of that state.

Article 6(1) gives an exception to article 2(1). In proceedings where there are multiple defendants, a defendant may be sued in the courts of the place where any one of them is domiciled. The exception means that where there are multiple defendants in an action, there should be one action in one court, rather than a multitude of different actions in different courts. In Kalfelis (Case 189/87; 1988 ECR 5565), the ECJ added that, for article 6(1) to apply, there must be a 'connection' between the different claims, 'of such a kind that it is expedient to determine the actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings'.





Article 16(4) gives a further qualifier to both articles 2(1) and 6(1). In proceedings concerned with the registration or validity of patents, trade marks, designs or other similar rights, the state where the right is registered has exclusive jurisdiction over the registration/validity of those rights. Part of the thinking behind article 16(4) is that since these rights create national monopolies, only the national court should have the right to uphold, modify or remove them.



In Primus, the claimant co-owned a European patent for certain immuno-assay kits. It commenced a patent infringement action in the Netherlands against Roche's Dutch subsidiary, and also against a number of other companies in the Roche group, including those in Belgium, Germany and the UK, for their alleged infringement of the equivalent patents in those countries. Jurisdiction over the non-Dutch defendants was claimed on the basis of article 6(1); since one of the defendants was domiciled in the Netherlands, all the defendants could be made parties to the Dutch litigation.



The Dutch courts have historically interpreted article 6(1) in the face of article 16(4) by developing a rule known as the 'spider in the web'. The rule holds that alleged patent infringers in more than one European country may all be sued before the court where the principal defendant - the spider in the web - is domiciled. This principal defendant could be the head office of a group of affiliated companies, or the company that co-ordinates the marketing of the allegedly infringing product. On this basis, the Dutch courts have, for some time, issued cross-border injunctions for the infringement of patents in other member states against defendants in those states.



Roche appealed, and the Dutch Supreme Court referred the matter of jurisdiction to the ECJ. The ECJ repeated Kalfelis - that for article 6(1) to apply there must be a connection between the different actions such that hearing the actions together would avoid the risk of irreconcilable judgments if the matters were heard in different courts. It said that where patent infringement cases are concerned, the fact that there would be different defendants and different patents meant that different judgments by different courts would not be irreconcilable, because they would be founded on different laws and facts. Therefore, there was no 'connection' between the actions for the purposes of article 6(1) - even if the defendants in other territories belong to the same group of companies or act on the basis of a common policy.



GAT was a dispute between two German companies working in the field of car design that were competing for a contract for the provision of mechanical shock absorbers. LuK claimed that GAT had infringed its French patent, and GAT applied to the Landgericht in Düsseldorf for a declaration of non-infringement of the French patent.



At first instance, the German court held that it had jurisdiction to hear the matter by reason of a narrow interpretation of article 16(4). It read article 16(4) to mean a national court should have exclusive jurisdiction only where proceedings are initiated to declare the patent invalid, but there would be no exclusive jurisdiction where infringement proceedings are brought and the defendant claims invalidity as part of its defence.



On appeal, the Higher Regional Court referred the interpretation of article 16(4) to the ECJ. The ECJ confirmed that all proceedings relating to the validity of a patent are the exclusive preserve of the courts of the country in which that patent is registered, whether raised by way of an original action or by way of a defence or counterclaim.



GAT confirms the practice of the UK courts, which have long refused to countenance actions concerning the validity of a patent in a different European member state. But the UK courts have allowed the theoretical possibility that if a multiple patent infringement action were brought without patent validity being put in issue - which is very rare - it might have jurisdiction to hear the case. Therefore, Primus goes further - a patentee faced with a host of infringing multinational subsidiaries across the European Economic Area may have no choice but to commence separate infringement actions in each of those countries.



In practice, the situation is not quite so bleak. Patent holders often start actions in those territories where a victory will make it hard for the alleged infringer to carry on elsewhere, such as the country where the alleged infringer has its headquarters or manufacturing base, or in the most lucrative European markets, such as Germany and the UK. But the rulings do highlight again how complex and expensive patent litigation across Europe can be. As Advocate-General Léger, who gave the preliminary opinion on Primus, said: 'This solution... seems unsatisfactory and... shows the limitations of the present system.'



For many years, there has been talk of radically overhauling the patents system in Europe. A new community patent was proposed, which would be truly pan-European and subject to the jurisdiction of a unitary Community Patents Court but, in the end, the commission's proposed model was universally rubbished, and negotiations ran into the sand. Alternative solutions have been proposed - such as a new European Patent Litigation Agreement - but without great urgency. It is hoped that these cases, and the problems they highlight, will spur on the overhaul the system so desperately needs.



By Richard Taylor, DLA Piper, Sheffield