In the words of the AG, this new Opinion provides him with “a rare opportunity to expand on certain aspects of my reasoning in that regard”. We have previously reported on the first Opinion of AG Emiliou in this case (read here) and on the substance of the hearing of 14 May 2024 (read here).

At the background is a Swedish action in which patent holder BSH brought an action claiming damages for patent infringement against Electrolux not only on the basis of parts of a European patent validated in EU Member States, but also on the basis of a part validated in a non-EU Member State (Turkey). Electrolux challenges the validity before the Swedish court of all these foreign parts. The Swedish court has inter alia asked the CJEU whether “Article 24(4) of the [Brussels I bis Regulation] [is] to be interpreted as being applicable to a court of a third [State], that is to say, in the present case, as also conferring exclusive jurisdiction on a court in [Turkey] in respect of the part of the European patent which has been validated there”.

In his first Opinion, the AG opined – briefly put – that the exception of Article 24(4) should be construed narrowly with respect to the validity of EU Member State patents, meaning that if the alleged infringer raises an invalidity defence with respect to a patent in another EU Member State, the Court does not lose competence to decide on the infringement action. Although this Court could not adjudicate the validity of this patent, nothing prevents that Court from ordering under circumstances a cross-border injunction on a preliminary basis in the existing proceedings on the merits or in separate preliminary infringement proceedings. Our earlier report on this opinion is available here.

In his new Opinion, the AG opines that Article 24(4) is not applicable in respect of the validity of Third State patents but that Courts, where they have jurisdiction under another rule of the Brussels I bis Regulation, are “entitled to not adjudicate” on that issue if it concerns a claim for invalidity. This suggest that it is thus up to the discretion of the Courts to decide on the issue of the validity of Third State patents. A circumstance that may play a role within the context of the discretion the Court, is the “denial of justice” in the respective Third State. The AG mentions in this respect that Courts have “a degree of flexibility to take into account the circumstances of each individual case and, where appropriate, to exercise that jurisdiction where the parties would not receive a fair trial before the courts of the third State involved, in order to avoid a denial of justice”. However, even without “denial of justice” concerns, the AG seems to leave open the possibility for Courts to decide on the issue of the validity of Third State patents where Courts consider it appropriate.

Finally, if invalidity of the Third State patent is raised merely as a defence in an infringement action and not as a claim for invalidity, it would – according to the AG – not be contrary to customary international law if Courts decide on this defence as a “preliminary or incidental question”, since the respective decision will have inter partes effects only. This is precisely the reason why the AG considered GAT/LuK an “unfortunate decision” in his first Opinion. In this case, it was ruled in general terms by the CJEU that the respective rule of exclusive jurisdiction “concerns all proceedings relating to the (…) validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection”. A few years later, the legislature codified this judgment in Article 24(4). If this judgment was not codified, he would have advised the CJEU to overturn it and to declare that the respective rule of exclusive jurisdiction does not apply where invalidity is raised in infringement proceedings by way of defence.

We believe that if the opinions of the AG are followed by the CJEU, this would extend the possibilities for cross-border relief even beyond the type of cross-border relief traditionally allowed by the Dutch courts as set out in our earlier report in this case (read here). In particular for patents in Third States, but under circumstances also for patents in other EU Member States, Courts could then even issue cross-border injunctions on the merits if Courts are competent to hear the matter on the basis of the Brussels Regulation. So it will be very interesting to see whether the CJEU follows AG Emiliou's opinion.

Authored by Stefan Dusault, Gertjan Kuipers and Ruud van der Velden.