Provisional Cross-Border Jurisdiction in Patent Cases according to the CJEU in Solvay

Richard Ebbink (Brinkhof): Provisional Cross-Border Jurisdiction in Patent Cases according to the CJEU in Solvay. Eerdere publicaties hier en hier.

"This is a fresh attempt at establishing the impact of the Solvay decision on the interpretation of the relevant articles of the Brussels Regulation (EU Regulation 2001/44). (...) The gist of the Solvay/Honeywell decision therefore is the following:

1) The basic rule is that the infringement court has no jurisdiction to treat a cross-border nullity defense, also in preliminary proceedings;

2) However, Article 31 may provide a jurisdictional basis in preliminary proceedings, even for cross-border relief.

3) But, cross-border relief in preliminary proceedings must be denied if there is a reasonable, non-negligible possibility that the competent foreign court will nullify the patent.

All of this based on the assumption that if the national court does just this (“in these circumstances”), it will “not in any way prejudice” the decision to be taken on the substance by the competent foreign court.

Ratio: Obviously a PI decision is not a decision on the merits. That would not stop Article 22-4 from reaching through, however. It would seem that the trigger for the application of Article 31 rather is the practical procedural circumstance that the PI court will apply what may be called a more or less marginal review of the foreign nullity arguments brought to its attention. A review only to find out if they could reasonably serve their purpose. The PI judge should stay away from going into, let alone from writing an opinion on, the substance of the foreign arguments. To do otherwise would be in contravention of the special scope of Article 22-4 of the Brussels Regulation.

This is a European rule: For Dutch lawyers the Solvay test is new. So far, in The Hague the test for granting or not granting national or cross-border PI relief in patent matters was that in case there was a serious, not to be neglected chance that the national or foreign patent would be nullified, relief would be denied. Traditionally, Dutch Courts have taken this review very seriously and their decisions would contain several pages discussing the foreign nullity arguments. That traditional Dutch test is no longer in line with the European test set out in Solvay for cross-border proceedings."

Lees het volledige artikel hier.