1. Introduction
As explained in the first document in this series, which deals with the limits of the jurisdiction of the Unified Patent Court ('UPC') to hear disputes relating to classic European patents validated in States that are not party to the Agreement on a Unified Patent Court ('UPC Agreement' or 'Agreement') or to supplementary protection certificates granted in those States, the court does not have jurisdiction over the validity of such rights. This is because Article 24(4) of the Brussels Ia Regulation[1] provides that "exclusive jurisdiction, regardless of the domicile of the parties", "in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence", shall rest with "the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an intenational convention deemed to have taken place". As the Court of Justice has held - judgment of 8 September 2022, IRnova, C399/21, EU:C:2022:648, para. 36 -, this exclusive jurisdiction stems from the fact that those courts are closely linked in fact and law to the register and are best placed to adjudicate on cases where the validity of the right concerned, or even the existence of the deposit or registration, is in dispute.
This exclusive jurisdiction under Article 24(4) of the Brussels Ia Regulation has recently been interpreted by the Court of Justice ('CJEU') in its judgment of 25 February 2025, C339/22, BSH/Electrolux, ECLI:EU:C:2025:108. This ruling has a significant impact on the praxis of the Unified Patent Court and the application of its long arm, leading to undesirable results, as explained below.
2. The CJEU judgment of 25 February 2025, BSH/Electrolux
The dispute in which the preliminary ruling was made concerned the owner of a European patent validated in various EU Member States and in Turkey, who brought proceedings against a Swedish company before a Swedish court for acts of infringement in all the countries where the European patent was validated. However, the defendant raised the plea of invalidity of that European patent, and the Swedish court asked the CJEU whether, as a result of that and in accordance with Article 24(4) of the Brussels Ia Regulation, that meant that it no longer had jurisdiction to hear the infringement action.
Although the dispute underlying the judgment was not brought before the UPC, the interpretation of the CJEU in the BSH/Electrolux judgment is equally applicable, since said court is equivalent to the national courts of the contracting states party to the UPC Agreement.
2.1. The state of the matter prior to the judgment in BSH/Electrolux
In its judgment in BSH/Electrolux, the CJEU began by recalling that a court of a Member State may hear infringement proceedings relating to a patent of another Member State, which is merely a manifestation of the international jurisdiction based on the defendant's domicile, as established in Article 4(1) of the Brussels Ia Regulation. On that basis, the CJEU emphasises that the exception to that rule laid down in Article 24(4) of the Brussels Ia Regulation (granting exclusive jurisdiction to the courts of the State which granted the patent to rule on its validity) applies whether the validity is raised by way of an action or as a defence
This is expressly provided for in Article 24(4) of the Regulation, which follows the case law of the CJEU in its judgment of 13 July 2006, GAT, C-4/03, EU:C:2006:457. It should be recalled that the 1968 Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (Article 16) did not clarify whether exclusive jurisdiction to rule on the validity of intellectual property rights also extended to cases where the issue was raised as a defence, and that it was the CJEU in the GAT judgment (para. 25) which clarified that the exclusive jurisdiction provided by that provision should apply "whatever the form of proceedings in which the issue of a patent's validity is raised, be it by way of an action or a plea in objection, at the time the case is brought or at a later stage in the proceedings". Consequently, there is now no doubt that where the courts hearing the infringement proceedings are not those of the State in which the intellectual property right was applied for, registered or deemed to have been registered, those courts cannot examine the validity of the right, even with mere inter partes effects.
However, neither the CJEU in its judgment in GAT nor, subsequently, Article 24(4) of the Brussels Ia Regulation clarify what should happen to the infringement action once the invalidity has been raised, by way of an action or as a defence. In his conclusions in the GAT case, delivered on 16 September 2004 (EU:C:2004:539, para. 46), the Advocate General pointed to three possibilities: "The court judging the infringement can transfer the case completely, it can stay the proceedings
The interpretation of the CJEU in the BSH/Electrolux judgment affects the UPC
until the court of another Member State with jurisdiction [...] rules upon the validity of the patent, or it can deal with the case itself where a defendant acts in bad faith." However, the CJEU did not address this issue, giving rise to divergent solutions by national courts. Thus, in the praxis of the United Kingdom (while it was part of the European Union), it was considered [for example, in the case of Coin Controls Limited v Suzo International (UK) Limited and others (1997) F.S.R. 660] that the court hearing the infringement action must declare itself incompetent, whereas in the Netherlands, the Supreme Court (Judgment of 30 November 2007, Case C02/228HR and C02/280HR, ECLI:NL:DH:2007:BA9608) held that the claimant must be given the opportunity to withdraw its claim and that, if it does not do so, the court must stay the infringement proceedings until the foreign court with jurisdiction has given a final decision on the question of validity
2.2. The CJEU's interpretation in the BSH/ Electrolux judgment
a) On this important question, the CJEU now states, in its judgment in BSH/Electrolux (para. 52), that "a court of the Member State of domicile of the defendant which is seised, pursuant to Article 4(1) of that regulation, of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity". It is therefore emphasised that the court retains jurisdiction to hear the infringement proceedings because, otherwise, jurisdiction would be left in the hands of the defendant, who would simply have to raise the plea of invalidity. The court refers to its judgments of 15 November 1983 (Duijnstee, 288/82, EU:C:1983:326, paras 22 and 23) and of 8 September 2022 (IRnova, C399/21, EU:C:2022:648, para. 48), in which it already emphasised the possibility for a court to hear actions for infringement of a foreign patent, but which did not address the specific case of a plea of invalidity of such patents.
This conclusion of the CJEU in its judgment in BSH/Electrolux, to
The BSH/Electrolux judgment requires a defendant who wishes to defend himself against an infringement action to bring an action for a declaration of invalidity
the effect that the court hearing the infringement action retains jurisdiction even if a plea of invalidity of the intellectual property right is raised before it, or even if an action for invalidity of the intellectual property right is brought before the courts with exclusive jurisdiction in another State, is equally applicable to the UPC when it is hearing an infringement action relating to a classic European patent validated in a non-contracting state (or to a supplementary protection certificate granted in one such state). In fact, there are already decisions in which the UPC has stated that "the UPC (as well as the National Court) does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent" (Order of the Milan Local Division of 8 April 2025, UPC_CFI_792/202, although no action or defence of invalidity was brought or raised in that case).
b) On the basis that the court before which the infringement proceedings have been brought retains jurisdiction to hear the infringement proceedings, even though the question of the validity of the intellectual property right has been raised, the CJEU considers that the court may exercise that jurisdiction and hear the infringement proceedings or, if it considers it appropriate, stay the infringement proceedings until the invalidity proceedings have been adjudicated on. The CJEU states in this regard (para. 51 of the judgment in BSH/ Electrolux) that its interpretation "does not mean that the court of the Member State in which the defendant is domiciled that is seised of the infringement action should disregard the fact that an action for a declaration that the patent granted in another Member State is invalid has been duly brought by that defendant in that other Member State. If it considers it justified, in particular where it takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid by the court of that other Member State that has jurisdiction (see, by analogy, judgment of 12 July 2012, Solvay, C-616/10, EU:C:2012:445, paragraph 49), the court seised of the infringement action may, where appropriate, stay the proceedings, which allows it to take account, for the purpose of ruling on the infringement action, of a decision given by the court seised of the action seeking a declaration of invalidity." As can be seen, the CJEU seeks to justify this conclusion by referring to its Solvay judgment, which concerned provisional, including protective, measures even though the BSH/Electrolux case concerns infringement proceedings.
c) Another novelty of the BSH/Electrolux judgment is that it develops the conclusion reached in the previous judgment of 8 September 2022, IRnova, according to which the exclusive jurisdiction of the courts of the State of grant or registration of the patent to rule on its invalidity or validity does not apply where the patent in question has not been granted or validated in a Member State of the European Union but in a third State (such as Turkey or, following Brexit, the United Kingdom).
Therefore, in these cases where the patent has been granted in a State outside the European Union, since Article 24(4) of the Brussels Ia Regulation does not apply, the court of the Member State which, by virtue of the defendant's domicile, has jurisdiction to hear actions for infringement of that third State's patent, may examine the validity of the patent by way of defence (provided that the third country is not a member of the Lugano Convention[2], there is no bilateral agreement between that country and the European Union to the contrary, or no proceedings are pending before a court of that third country).
However, the court hearing the infringement proceedings may not make a declaration of invalidity that would result in the cancellation of the patent with erga omnes effect. According to the CJEU (para. 73 of the BSH/ Electrolux judgment), the principle of non-interference between States, which is inherent in international law, means that "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". On the other hand, the court of the Member State of the defendant's domicile before which an action for patent infringement has been brought and in which, by way of defence, the invalidity of a patent granted or validated in a third State is raised, has jurisdiction to rule on that question, since the decision of that court on that issue cannot affect the existence or the content of the patent in that third State or entail the modification of the national register of that State.
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