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No. 26
September 2012
International Association for the Protection of Intellectual Property
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EU Court confirms Dutch approach to cross-border injunctions
John Allen, NautaDutilh, Amsterdam, Netherlands

With this judgment, the Court revisits its judgments in Roche/Primus and GAT/LuK of 2006, in which the Court significantly reduced the scope of the cross-border injunctions. At that time it was not uncommon in The Netherlands that defendants were ordered to cease an IPR infringement in The Netherlands as well as in other EU jurisdictions at the risk of having to pay substantial penalties to the IPR owner. In Solvay/Honeywell (Case-616/10), the Court again broadens the application of these injunctions.

In this case, Solvay sought provisional relief against several Honeywell companies from different Member States in the form of a cross-border prohibition against a patent infringement. Under Article 6(1) of the European Regulation (EC) No. 44/2001 on Jurisdiction in civil and commercial matters, co-defendants from different jurisdictions may be brought before the court where any one of them is domiciled, provided the claims are so closely related that it is expedient to hear and rule over them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.

In the Roche/Primus case, the Court had ruled that this co-defendant rule is not applicable in patent litigation because, based on the European Patent Convention, these patents are governed by the national law of each of the contracting states for which it is granted and any infringement must be examined in the light of the relevant national law which may lead to irreconcilable judgments. In Solvay/Honeywell the Court distinguishes Roche/Primus, ruling that the co-defendant rule may be used where each of the defendants is separately accused of the same infringement in the same countries because separate proceedings may lead to 'irreconcilable judgments'.

But what happens if, based on Art. 22(4) of the Regulation, the defendants challenge the validity of the foreign patent and another court has exclusive jurisdiction: should the first court decline jurisdiction on the requested provisional injunction to infringe even though this first court does not make a final decision on the validity of the patent invoked but only makes an assessment as to how the court having jurisdiction under Art. 22(4) would rule?

In the GAT/LuK-case (C-4/03), the Court decided that the principles of exclusive jurisdiction should apply independently from the form of the proceedings, be it by way of an action or a defence, at the time the case is brought or at a later stage in the proceedings. But to allow courts, other than those of the State in which a particular patent is issued, to rule indirectly on the validity of that patent would multiply the risk of conflicting decisions, which the Regulation specifically seeks to avoid.

Therefore, the Court held in Solvay/Honeywell that, in a situation where the infringement court does not give a final ruling on validity (but only provisionally assesses the chance that a patent may be invalid), Art. 22(4) does not prevent the infringement court from issuing a provisional injunction to infringe with cross-border effects.

Comments:

The Court of Justice of the EU appears to be sensitive as to what courts in The Netherlands have been trying to achieve absent a centralised patent litigation system in Europe: sensible, fast and effective patent litigation in Europe.
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