Associate Professor of Law, New York Law School / Law Student, New York Law School
Jurisdictional rules governing choice of forum in patent litigation in the European Union are inconsistent and inefficient. Once a patent is granted by the European Patent Office, it is issued as national European patents in the countries where patent protection is sought. Claims of infringement must be brought in the countries where the plaintiff seeks relief, and challenges to validity can only be brought in the country that issued the patent.
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This system can result in duplicative filing in national courts and presents a risk of inconsistent judgments. The European Patent Litigation Agreement and the Community Patent Regulation aim to establish a Europe-wide patent litigation system with uniform rules for patent owners operating across European borders. Nonetheless, both proposals have encountered obstacles and, for now, patent litigants must navigate the jurisdictional redundancies associated with the current system.
The Mechanics of a Broken System
Council Regulation (EC) No. 44/2001, called the "Brussels I Regulation," governs the allocation of jurisdiction and the recognition and enforcement of foreign judgments in international disputes of a civil or commercial nature brought in EU member states. The principal basis of jurisdiction under the Regulation is domicile. Article 2 of the Brussels Regulation provides that "persons domiciled in a Member state shall, whatever their nationality, be sued in the courts of that member state." Defendants may also be sued where the misconduct occurred. Article 5(3) provides that "a person domiciled in a member state may, in another member state, be sued . . . in matters relation to tort, delict, or quasi delict, in the courts for the place where the harmful event occurred or may have occurred."
The territorial basis of these jurisdictional rules can complicate cross-border patent disputes. For example, when a national court exercises jurisdiction based on the location of the tort under Article 5(3), that court only has the authority to pass judgment on acts of infringement within its territory, and, as a result, a patent owner would be required to sue in every country in which infringement occurred. A patent owner can, however, avoid duplicative litigation by bringing its claim in the national courts of the state in which the infringer is domiciled. Those courts can not only hear disputes about the defendant's infringement of domestic and foreign patents occurring in that member state, but also disputes about the defendant's infringement in other countries. As long as the defendant does not question the validity of the patent (discussed below), the court has authority under Article 2(1) of the Brussels Regulation to decide on the infringement of foreign patents abroad and any resulting injunction will have cross-border effect. [footnotes omitted]