The Court of Justice of the European Union (CJEU) issued a decision significantly expanding the capabilities of both the Unified Patent Court (UPC) and the national courts in EU Member States to issue cross-border injunctions and adjudicate on patent infringement acts in countries (seemingly) outside their respective jurisdiction. Case C-339/22 (CJEU, Grand Chamber Feb. 25, 2025) ECLI:EU:C:2025:108.

Background

German company BSH Hausgeräte GmbH owns a European patent that is validated in several EU Member States and non-EU countries such as Turkey. BSH sued Swedish company Electrolux AB before a Swedish court for infringement of all national parts of the European patent (including the Turkish part).

Electrolux argued that the parts of the patent validated outside Sweden were invalid and that the Swedish court accordingly lacked jurisdiction to rule on these infringement claims. Electrolux relied on Article 24(4) of Regulation (EU) 1215/2012, the Brussels I bis Regulation, which confers exclusive jurisdiction for questions of patent validity on the courts of the state where a patent is registered.

The Swedish court of first instance declared that it did not have jurisdiction to rule on infringement of any non-Swedish parts of the patent. BSH appealed, and the Swedish Court of Appeal referred key questions to the CJEU about the interplay between Articles 4(1) and 24(4) of the Brussels I bis Regulation. Article 4(1) of the Regulation grants the courts of EU Member States general jurisdiction over all infringement actions committed by a person or company domiciled in their territory (regardless of where the infringement occurred). One of the relevant questions in this case was whether, in light of Article 24(4) of the Regulation, the court hearing the patent infringement action loses jurisdiction when an invalidity defense is raised.

Long-Arm Jurisdiction and Invalidity Defense

The CJEU clarified that Article 24(4) of the Regulation must be interpreted narrowly. According to the CJEU, the “validity of patents” mentioned in Article 24(4) of the Regulation only pertains to validity challenges that would lead to the annulment of the patent with effect erga omnes. Such erga omnes validity proceedings must still be brought before the courts of the forum of registration (e.g., the German Federal Patent Court in the case of the German part of a European patent). However, the CJEU considers that Article 24(4) of the Regulation does not apply to an inter partes invalidity defense raised in patent infringement litigation. Consequently, according to Article 4(1) of the Regulation, a court of an EU Member State in which the infringement case is being heard can decide on patent infringements in another EU Member State or in a third (non-EU) country and does not lose its jurisdiction if an invalidity defense is raised. Patent proprietors can therefore obtain cross-border injunctions in national courts of EU Member States (as well as before the UPC, even in states that do not take part in the UPC), and the courts remain jurisdictionally competent even if the infringer imposes an invalidity defense.

Where a third country outside of the European Union is concerned (e.g., the United Kingdom, Switzerland, or Turkey), the EU infringement court may even have jurisdictional competence to rule on an invalidity defense with inter partes effect. This means that a defendant can obtain a decision dismissing the infringement action on the basis of its invalidity defense (but not resulting in the patent being revoked in whole or in part, as there is no erga omnes effect of such invalidity decision).

Practical Implications

This decision marks a shift from the CJEU’s previous jurisprudence, according to which a cross-border injunction was blocked if the defendant raised an invalidity defense. The decision will also have significant implications for global patent litigation strategies:

• Defendants cannot simply escape the forum chosen by the patentee by raising an invalidity defense. They may still file a separate nullity action in the country in which the patent or the relevant national part of a European patent is registered, but the EU infringement court will retain jurisdiction over the question of whether the defendant infringed the patent.
• Patent proprietors can sue any defendant based in the European Union for patent infringement in any country (potentially worldwide) before the national courts of domicile. The question of patent infringement would then have to be decided on the basis of the applicable foreign law. This could require multinational litigation teams and expert opinions on foreign law (on matters such as claim construction) as well as possible uncertainty as to how an EU national court might interpret and apply foreign law, such as US or Chinese law. At least in principle, the CJEU’s decision allows EU courts to rule on patent infringement cases globally.
• The owner of a non-opted-out European patent can now sue any defendant domiciled in a UPC contracting state for patent infringement, even with regard to infringing acts in European Patent Convention states that are not part of the UPC system (e.g., Spain or Turkey). There is already precedent on this issue (published even before the CJEU decision) in the decision of the UPC Local Division Düsseldorf of January 28, 2025, in the case UPC_CFI_355/2023. Here, the UPC recognized its long-arm jurisdiction regarding the alleged infringement of a European patent in the United Kingdom, even though an invalidity defense was raised and even though the United Kingdom is not part of the UPC system.
• While the CJEU granted extensive jurisdiction to national courts and the UPC, it accepted that the infringement court must consider a nullity action in another EU Member State, which may lead to a stay of the infringement proceedings – in particular where the national court sees a “reasonable, non-negligible possibility of that patent being declared invalid” in the pending nullity action. As a result, defendants may have to file multiple nullity actions simultaneously before national courts if a patent owner decides to bring an action for patent infringement in several countries before only one national court. This could exert significant pressure on the defendant, which would have to advance considerable corresponding legal costs.

Practice Note: The CJEU decision strengthens the UPCs power to rule on allegations of infringement occurring in non-UPC countries. However, it also allows national courts in the EU to compete with the UPC in certain cross-border cases, particularly where a defendant domiciled in one country infringes in several countries. In its ruling, the CJEU confirmed the long-arm jurisdiction of both the national courts in the EU Member States and the UPC, and confirmed that raising an invalidity defense does not remove the jurisdiction of the infringement court.

A patent proprietor now can seek a cross-border injunction from a national court in the European Union without the risk of having several parts of its asserted European patent invalidated in a single counterclaim for revocation as in the UPC, but with a greater risk of a stay of infringement proceedings. Accordingly, the UPC has become an even more attractive venue for patent owners but could face additional competition from national courts. Patent proprietors will now be able to choose between EU national courts and the UPC when bringing infringement actions concerning multiple national designations and seeking cross-border injunctions, which translates into increased forum shopping possibilities. The CJEU’s decision may also lead to parallel proceedings in multiple jurisdictions, increasing the complexity of litigation for both parties.

This is where the UPC offers less costly and faster decisions. Because the CJEU confirmed the UPC’s competence to adjudicate on infringement issues related to European patents validated in non-UPC countries (such as the United Kingdom, Spain, Switzerland, and Turkey), the UPC is the more attractive option, especially for patentees with global patent portfolios. Overall, the CJEU’s decision strengthened the role of the UPC in European patent litigation but also introduced new dynamics that may influence cross-border patent litigation strategies.

The decision strengthens the relevance of EU-based courts in global patent litigation and underscores the need for cross-border strategies. Only time will tell whether non-EU courts will also affirm long-arm jurisdictions.