CJEU rules on cross-border interim relief in patent proceedings
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In the case of Solvay SA v Honeywell Fluorine Products Europe BV and others (Case C-616/10 12 July 2012) the Court of Justice of the European Union (CJEU) has found that the rules regarding exclusive jurisdiction under the EU Jurisdiction Regulation (the "Regulation") do not prohibit courts of a member state granting cross-border interim injunctions in patent proceedings.
Solvay is a Belgian company, and the proprietor of a European Patent for the preparation of 1, 1, 1, 3, 3 - pentafluoropropane. In March 2009, Solvay brought an action in the Netherlands for the infringement of the national parts of the patent, as in force in several countries across Europe, against Honeywell companies in Belgium and the Netherlands. Solvay accused the Honeywell companies of committing infringing acts across Europe and filed an application against the Defendants seeking a cross-border interim injunction to prohibit infringement until a decision had been reached in the main proceedings.
In the interim proceedings in the Netherlands the Defendants challenged the invalidity of the national parts of the patent, but chose not to contest the jurisdiction of the Dutch courts to hear the interim and main proceedings. The key issue for the Dutch Court was whether it could grant an interim injunction against the Dutch company and the Belgian companies obliging them to cease infringement of the patent in Member States other than the Netherlands. The Court stayed the proceedings and referred questions regarding jurisdiction in relation to cross border interim relief to the CJEU.
EU Jurisdiction Regulation
Under Article 6(1) of the Regulation, a defendant can be sued together with a defendant in another jurisdiction where "the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgements resulting from separate proceedings."
Article 22(4) then gives exclusive jurisdiction to the member state in which the intellectual property in question is registered. Despite this exclusive jurisdiction provision, Article 31 provides that national courts may order provisions and protective measures even if under the Regulation the courts of another member state have jurisdiction as to the substance of the matter.
The CJEU decided that national courts must determine whether claims in different jurisdictions are closely connected enough to be heard together under Article 6(1). It then determined that Article 22(4), read alongside Article 31, does not prevent a national court from issuing cross-border interim relief. The national court, when granting interim relief, would not make a final decision on the validity of the patent and therefore there was no risk of irreconcilable judgments.
In the cases of Roche v Primus (C-359/03) and GAT (C-4/03) in 2006, the CJEU significantly reduced the scope for acquiring cross-border injunctions in relation to patent proceedings. However, this case can be distinguished from those previous decisions, which did not address the availability of interim injunctions where the validity of the patent is not yet challenged. In addition, the defendants in Roche v Primus were infringing the European patent only in the country in which they were based whereas, in this case, the Dutch company was allegedly infringing the patent in the Netherlands and Belgium. This increases the risk of irreconcilable judgments if the Belgian companies were to be sued before the Belgian courts based on the same facts.
The result is that in cases with more than one defendant in different member states, a national court may grant pan-European interim relief in proceedings for the same infringement of the same national part of a patent granted by the European Patent Office. This can be a useful tool for patent litigators to obtain injunctive relief in urgent cases where infringements are occurring in more than one EU state. However, as soon as the validity of the patent is challenged in the Courts of the state where the patent is registered, cross-border proceedings will inevitably be impeded pursuant to the exclusive jurisdiction rules under Article 22(4).
Aneesh Patel, Solicitor in the IP and Technology Dispute Resolution Group at Field Fisher Waterhouse LLP