STOCKHOLM REGIONAL DIVISION Law and Practice Contributed by: Peter Kenamets, Fredrik Lüning and Linnéa Hedström, Lind Edlund Kenamets Intellectual Property AB
infringers and, more specifically, the possibility of consolidating claims of patent infringement across multiple EU and third states within a sin - gle infringement proceeding. The authors’ interpretation of the CJEU’s rulings suggests that they open the door for enforce - ment of patents in multiple EU member states and even third states through a single national court in an EU member state against an infring - ing party domiciled in that state. This holds true even when the validity of the patents is chal - lenged. This development enables patent hold - ers to seek injunctions covering multiple jurisdic - tions through a single legal action, potentially encompassing a vast geographical area. One of the primary intended advantages of the UPC is the ability for a patent holder to obtain an injunction through a single court process against an infringer that spans a wide geographi - cal area, encompassing multiple states. How - ever, the CJEU’s above-mentioned decisions indicate that such a possibility already exists via national courts, potentially reducing the attractiveness of the UPC in favour of national courts. This is particularly relevant consider - ing that a national court’s jurisdiction could, in certain scenarios, be even more extensive than that of the UPC. For instance, a national court’s jurisdiction includes hearing actions concerning infringement of national patents, and may even extend to national patents granted by a non-EPC state. By contrast, the UPC’s jurisdiction is more narrowly defined in this respect, dedicated solely to European patents (and, of course, European patents with unitary effect). There is also another point to consider in this context. It is well known that the national Ger - man patent litigation system has long been popular among patent holders, owing to various
factors. One such factor is the so-called “injunc - tion gap”, which refers to the separation of infringement and invalidity proceedings between different courts, often resulting in the infringe - ment issue being resolved months or even years before the validity issue. While this aspect of the German system has faced criticism, it has also been strategically utilised by patent holders. The potential to separate the infringement issue from the validity issue has been highly attractive for patent holders. The authors interpret the CJEU’s statements in BSH Hausgeräte and IRnova as strongly empha - sising the principle of the defendant’s domicile forum and that it applies unconditionally. Con - versely, the principle of exclusive jurisdiction for the courts of the state of registration in mat - ters of validity is emphasised as an exception that must be interpreted narrowly. The fact that the validity of a patent is routinely challenged is something that the court of the defendant’s domicile must simply accommodate when adju - dicating the infringement issue. For example, the domicile court may, where appropriate, stay the infringement proceedings if it considers it justi - fied. This implies that the CJEU envisions a clear sep - aration between infringement and invalidity, not only between different courts (as in the German national court system) but also between differ - ent states. This separation between infringe - ment and invalidity could allow patent holders to create circumstances where an injunction gap becomes possible, at least for patents issued in states covered by the Brussels I Recast Regu - lation (and/or the Lugano Convention); ie, not “third states” according to the terminology of the CJEU in BSH Hausgeräte.
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