BSH v. Electrolux: extended jurisdiction of EU Member State courts in cross-border patent infringement and validity.
On February 25, 2025[1] , the Court of Justice of the European Union (“CJEU”) issued a landmark decision reversing its case law, the practical consequences of which are crucial: the court of the EU Member State in which the defendant is domiciled has jurisdiction to rule on acts of infringement of one or more foreign patents that he may have committed abroad.
The CJEU, asked to interpret Article 24(4)[2] of EU Regulation No.1215/2012 of December 12, 2012, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“Brussels I bis Regulation”), ruled that:
1. For patents issued by an EU Member State:
- The court of the Member State in which the defendant is domiciled has jurisdiction to hear an infringement action of a patent granted in another Member State, even when the defendant contests, by way of defense, the validity of that patent.
- This same court is not competent to rule on the validity of these foreign patents, even if invalidity is raised by way of defense.
- If a revocation action has been brought in another Member State, the court hearing the infringement action may decide to stay the proceedings, “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.” (paragraph 51).
2. For patents issued by non-EU States:
- The court of the Member State of the defendant’s domicile has jurisdiction to hear an action for infringement of a patent granted or validated in a third State.
- The same court is also competent to rule on the plea of invalidity of this patent granted or validated in a third State.
- The decision on the validity defense has only an inter partes effect and not an erga omnes According to the CJEU, the scope of this decision is “not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended.” (paragraph 76)
- For questions of stay of proceedings, lis pendens or connexity, it will be necessary to determine whether there is an agreement between the Member State of the court seized and the third State where proceedings are already pending, if such is the case.
The CJEU’s objective is clearly expressed: where a patent is infringed by the same defendant in several States, it is appropriate to enable him “to concentrate all of its infringement claims and to obtain overall compensation in a single forum, thus avoiding, inter alia, the risk of divergent decisions.” (paragraph 49).
This ruling comes just a few weeks after the Unified Patent Jurisdiction (“UPC”) declared[3] that it has jurisdiction to hear infringement cases involving the national parts of a European patent in States that have not ratified the Agreement on a Unified Patent Court (“UPCA”), provided that the defendant is domiciled in one of the States that have ratified the UPCA.
This new case law is a determining factor in legal strategies and forum selection when preparing patent infringement actions.
The UPC does not appear to be the only court able to examine cases of cross-border infringement, and the choice of the court of a Member State could be favorable for the holder of a European patent, by avoiding the risk of a counterclaim for revocation of his entire title, as is the case before the UPC.
The applications of these new principles will need to be carefully examined, in particular with regard to the practical and concrete issues they are likely to raise in terms of evidence, applicable law, recognition of decisions and their enforcement.
[1] CJEU, February 25 2025, C-339/22, BSH v. Electrolux, available here
[2] This article states: ” The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: […]
(4) 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, 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 international convention deemed to have taken place.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State;”
[3] LD Düsseldorf, 28 January 2025, UPC CFI 355/2023