Patent case may affect jurisdiction rules for all registered IP rights

In Gesellschaft für Antriebstechnik mbH v Lamellen und Kupplungsbau Beteiligungs KG, Advocate General Geelhoed has opined that raising the invalidity of a patent as a defence in an infringement case may deprive the court of its jurisdiction. The European Court of Justice (ECJ) decision in this case may have an impact on other registered IP rights.

The opinion stems from a dispute between two German companies, Gesellschaft für Antriebstechnik mbH (GAT) and Lamellen und Kupplungsbau Beteiligungs KG (LuK). LuK contended that GAT was infringing several of LuK's French patents. In response, GAT brought an action for a declaration of non-infringement to the District Court of Dusseldorf.

As LuK was domiciled in Germany, the court accepted jurisdiction pursuant to the domicile principle of the Brussels Convention, which was still applicable when the case was brought to court. The same principle is now laid down in Council Regulation 44/2001, which replaced the Brussels Convention on March 1 2002.

The court rejected the non-infringement action and held that GAT was infringing LuK's French patents. It also rejected GAT's defence that the patents were invalid. The court was competent to rule on the patents' validity because French law, which does not provide for specialized IP courts, was applicable. Under German law, however, the court would not have had jurisdiction as validity issues fall within the exclusive jurisdiction of the German Patent Court.

On appeal, GAT questioned whether the district court had jurisdiction in relation to the invalidity defence, since the Brussels Convention provides in Article 16(4) (now Article 22(4) of the regulation) an exception to the domicile principle for registered IP rights. According to Article 16(4), proceedings relating to the registration or validity of registered IP rights are exclusively reserved to the courts with the jurisdiction of registration (ie, French courts in the present case). However, the appellate court found that the scope of the exception was unclear and referred the case to the ECJ.

In his opinion, Geelhoed considered three possible interpretations:

• Article 16(4) only applies to stand-alone attacks on the validity of a patent.
  
  
• All questions relating to the validity and infringement of a patent fall within the scope of Article 16(4).
  
  
• Article 16(4) applies whenever a court is requested to determine the validity of a patent, including during infringement proceedings in which an invalidity defence is raised. However, in proceedings exclusively dealing with infringement issues, Article 16(4) does not apply.

Geelhoed favoured the third option, as the first option bore the risk of deferring decisions on the validity of the patent and the second option appeared to be a clear violation of the wording and meaning of Article 16(4).

In practice, however, the difference between the second and third options is rather marginal. In most cases, the alleged infringer does not only base its defence on infringement issues, but also questions the validity of the patent. Should the ECJ follow Geelhoed's opinion, an alleged infringer could then deprive a court from its jurisdiction by raising the invalidity defence. In the case of a European patent, various national courts would then have to rule on the validity of the patent first, before an injunction blocking the use of the patent across the EU could be issued.

As Article 16(4) applies to all registered IP rights, the ECJ's decision may also have an impact on trademarks, in particular where national laws allow alleged infringers to raise invalidity as a defence. However, litigation in the field of copyright law or the law of unregistered design rights would remain unaffected.

Geelhoed's opinion could be seen as a setback to the effectiveness of the European system of IP rights by increasing the number of proceedings - and thereby litigation costs - necessary to stop an infringer.

The opinion does not give any guidance as to how Article 16(4) should be interpreted in a legal system, such as Germany, where an invalidity defence cannot be raised within an infringement proceeding. It is therefore desirable that the ECJ give a more straightforward decision on the interpretation of Article 16(4).

Mathias Zintler, Freshfields Bruckhaus Deringer, Hamburg