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Thirty Years of Experience with the Infringement Litigation1 Pierre Véron Introduction If IP litigation in To get a sense for the
magnitude of the problem, imagine a world in which a US patent, upon its
grant by the USPTO, explodes into 50 State Patents, with the courts in each
state having jurisdiction over the validity of the patents in their state,
and over infringement actions taking place within the borders of their state. Imagine further that these
courts operate on widely different time tables, applying very different
procedural rules. Not convinced yet that the situation
is, let’s say, challenging? Well, for good measure let us give every member
of the public the right to challenge the validity of any patent in court. No need
to show a special interest; the patent is there, and you do not think it should,
that is all you need. Do not like the prospect of patent infringement litigation
in 1
Previously published, in French, in the Journal du Droit International, 128
(2001) 805. Barrister, admitted
to the Courts of 431 432 Pierre Véron JPTOS To top this all off we give some states a court
that liberally issues preliminary injunctions, in some cases only weeks or
days after the complaint was filed. And, of course, they do this in a language
that only the members of the local bar can understand. Some of these
injunctions will be given cross border effect, and the courts of other states
will be required to enforce them. The main reason why the
situation is difficult to penetrate is that in recent years the boundaries of
the rules for jurisdiction and good faith and credit have been tested, pushed
back, and reined back in. Several times a core issue has been referenced to
the European Court of Justice ("ECJ"), only to see the issue taken
away from them because the parties settled. Professor Véron's article
has the merit of tracking the history of the evolving rules, providing much
needed explanation along the way. I had the privilege of
receiving a copy of the paper prior to its publication in the "Journal
du Droit International" in the Fall of 2001. It occurred to me that the article
would be very useful to US practitioners, if only it were written in English.
Professor Véron kindly gave me permission to translate this article to
English and to seek publication in a North American Journal. Koos Rasser Thirty Years of Experience
with the Because it lays down the
rules of the innovation game, intellectual property law is in essence
international. Technical innovations are
of interest to consumers world-wide: digital television, cellular telephones
and DVD's were distributed in many industrialised countries within a few
months’ time. Similarly, new drugs are released on the market in most
industrialised countries within a few years of each other. The monetary investment
necessary for the proper development of new technology is impressive2,
and can only be recouped through simultaneous exploitation in markets around
the world. Crossing borders means crossing
2 For a new drug the number frequently stated is
US$ 100 million. June 2002 Thirty
Years of Experience with the legal boundaries: legal
innovators must rely on protection for their innovations in many different
jurisdictions. As a result, the protection
of intellectual property has always had a strong international component. Historically, the
globalization effort first manifested itself in the procedures for obtaining
intellectual property rights : the Paris Convention for the Protection of
Industrial Property of March 20, 1883 ("the Almost a century later, the
European system made a major contribution to this movement by creating a
bundle of national patents, legally distinct but substantively identical,
obtained through a single application and granting process. This was the
object of the European Patent Convention signed in The next step - a single
European Community Patent for the entire European Union - has not yet been
made. The Luxembourg Convention of December 15, 1975 ("the Luxembourg
Convention") which provided for the Community Patent never entered into
force, primarily for language reasons. The European Commission recently
revived the idea of a Community Patent, this time by way of a Community
Regulation rather than a separate treaty, but it is still several years at
least from realization. The significant progress in
the internationalisation of the acquisition of intellectual property rights
has not been matched by a similar progress in the judicial enforcement of
those rights. The main reason is that, although States quite readily accept
encroachments on their sovereignty in the acquisition of rights, they are a
lot more sensitive to attacks on their sovereignty in the realm they consider
theirs only, that of dispensing justice. Hence, it wasn't until the
final quarter of the 20th century that the first efforts took place to
internationalize IP litigation. The Brussels Convention has
no doubt been the first instrument allowing for a true internationalization
of litigation. Signed on September 27, 1968, the EC Convention on
Jurisdiction and Judgments in Civil and Commercial Matters ("the Brussels
Convention") it deals with issues of jurisdiction, and the recognition
and execution of judgments in civil matters among the six countries that, at
the time, made up the 434 Pierre Véron JPTOS The first accomplishment of
the Brussels Convention was to put an end to isolationism in civil litigation
which, up to that point, had been common throughout For example, in the area of
intellectual property, and more specifically in patent infringement
litigation, French private international law could be summarized in one rule:
French courts had exclusive jurisdiction over the validity and infringement
of an intellectual property right granted by the French government or having
an effect on French soil. Reciprocity was hardly recognized in practice or in
theory, and French tribunals took no interest at all in the validity or
infringement of intellectual property rights granted or in effect in foreign
countries3. There could be no question
of: ·
either asking a foreign
court to prevent the infringement of a French IP right in France or elsewhere
even against a French subject; or ·
asking a French court to
enjoin the infringement of a foreign IP right in The signing of the Brussels
Convention in 1968 therefore marked the beginning of a cultural revolution. The history of this
revolution can be described, like that of many human undertakings, in terms
of the pendulum of history: advance and retreat. After a certain period of
incubation, the Brussels Convention was welcomed to the world of patent
infringement litigation (1), but
the later years of the nineties saw the development of a head wind to its use
in this area (2). 1.
Bringing the the realm of patent infringement litigation The history of the
application of the Brussels Convention to patent infringement litigation is
that of two worlds colliding: IP rights against private international law. Article 16(4) of the
Brussels Convention provides: "The following courts shall have exclusive
jurisdiction, regardless of domicile:… (4.) In proceedings concerned with the
registration or validity of patents, trade marks, designs, or other similar
rights required to be deposited or registered, the
3 Cass. Civ.
21 January 1936; S. 1937, p.81 - TGI Paris, 4 May 1971, Yema / Jenny: Rev.
Crit. DIP, 4
On the full scope of the problem see: M. Vivant “Juge et loi du brevet”:
Librairies Techniques, 1977 June 2002 Thrirty
Years of Experience with the courts of the Contracting State in which the
deposit or registration has been applied for, has taken place or is under the
terms of an international convention deemed to have taken place;" IP law experts had long
held the view that the courts of the country that granted the IP right had
exclusive jurisdiction over the validity of this title, as well as over any
infringement of the right. Adherents to this remain urged a broad
interpretation of Article 16(4), to maximise the exclusively granted to the State
which granted the right. Internationalists, on the
other hand, have advocated that Article 16(4) should be restrictively applied
so as to give proper scope to the wish to create an embryonic European
judicial space, the impetus behind the Brussels Convention. The former had the upper
hand: it took close to 15 years before European tribunals agreed to hear
cases concerning the violation of foreign intellectual property rights (1.1). This innovation was
subsequently incorporated into European judicial practice (1.2). 1.1 The innovation: the Dutch practitioners were
the first to ask their tribunals to enjoin infringement of intellectual
property rights that covered not only The Netherlands but also other
countries, when the infringing acts were committed by Dutch companies. (1.1.1) They used for this purpose a
specific form of summary proceedings called the kort geding. (1.1.2) 1.1.1 Injunctions have an extra-territorial effect The most famous case in this regard in This case did not, in and
of itself, deal with the application of the Brussels Convention. But it did cause
some concern for those opposed to the application of the Brussels Convention
in the realm of IP rights. An American company,
Lincoln Electric, accused a Dutch company Interlas of infringing its
registered trade mark
5 Hoge Raad,
24 November 1989: NJ 1992, 404 ; BIE 1991, 86. 436 Pierre Véron JPTOS The international
competence of the Dutch court was indisputable: under Article 2 of the
Brussels Convention, being the tribunal of the State in which the defendant
was domiciled, the Dutch court was competent to rule on the infringement of
the Dutch trade mark. The validity of the three marks was not in issue:
Article 16(4) of the Brussels Convention which reserves jurisdiction over
questions of validity to the tribunals of the State that granted the right,
therefore did not apply. The Dutch court was therefore competent to hear the
Belgian and But jurisdiction to hear
the matter was insufficient: in practice, the Dutch court needed power to
issue injunctions effective outside the The Dutch Supreme Court
gave an affirmative answer, worded as follows: "In order that the law, the nature of an
obligation or a judicial decision not produce a different result, each person
held to give, to do or not do something with respect to another person is so ordered
by the judge, on request of the person to whom the obligation is due. There is
generally no reason at all to assume that such an order cannot be given
because the case involves an obligation, provided for in a foreign law, which
must be fulfilled outside the "A more narrow view... does not have any
basis in law and would, in an era of ever increasing international contacts,
produce the following undesirable result: in the case of a violation of
international character, such as an encroachment upon IP rights and unfair
competition in several countries, or environmental pollution with a cross
border impact, the aggrieved Dutch party would be obliged to take legal action
in each country involved." This decision confirmed a
practice that had been well established in The Netherlands in trade mark
cases since the end of the 1970s7. It is unsurprising that the case law would
first develop in the area of trade marks: the distinctive mark is often
exactly the same in the different jurisdictions and (because trade mark law
is based on international conventions) is protected in
6
For thr full scope of this issue see S. Clavel, “Le pouvoir d’injonction
extraterritorial des juges pour 7
Mars / Venus June 2002 Thrirty
Years of Experience with the much the same way around
the world. Moreover, unlike patent litigation, the question of validity of
the Belgian and How would this fare in patent litigation? Patents pose a different
problem. The rules for patentability vary significantly from one country to
the next and in practice, an invalidity defense is almost always raised by
the alleged infringer. On the other hand, and
several decisions have made the point, the rise of the European Patent
overcomes some of the difficulties of isolationalism. Effectively, when a
European Patent is granted under the European Patent Convention it is
governed by the same conditions of validity and its contents are identical in
all designated European countries, even though legally using the vernacular, it
dissolves into a bundle of national patents. However, when there is an
infringement extending into several countries, it is regrettably still
necessary to engage in proceedings in all countries involved to seek
sanctions for the violation of the same right, subject to the same rules of
validity. It has long been recognized
that Article 16(4) only relates to the validity of IP rights and not to
infringement. The Jénard Report8 stated as much. But since, in practice, the
majority of defendants accused of patent infringement do challenge the
validity of the patent at issue, and since this question must be decided
first, Article 16(4) could, in fact, end up making it an illusion to seek
recourse from any court other than those of the State that has granted the
patent. Effectively, the patentee may create an impasse by commencing
proceedings before a court of a country other than the one which granted the
patent (e.g., the court of the domicile of the defendant, which has
jurisdiction pursuant to Article 2, or under Article 6 is one of the courts
having jurisdiction in the case of several defendants). The court with
jurisdiction over the infringement issue must stay the proceedings while
waiting for the courts of the State that granted the patent to decide the validity
issue. This outcome, mandated by
Article 16(4), is regrettable for two reasons: ·
it adds to the delay; and ·
it separates the issues of
validity and infringement which are, in general, intimately connected.
8 JOCE No. C59, 5 March 1979, page 38. 438 Pierre
Véron JPTOS How has the Dutch practice been able to
circumvent this obstacle? The answer is called kort geding ("summary proceedings"),
a procedural concept very similar to that of the French référé. 1.1.2. Kort
geding procedural practice Traditionally, French
courts have only reluctantly used référé
to prevent patent infringement . Dutch courts, in contrast, have made the kort geding their favorite sword: the
majority of patent and trade mark infringement proceedings in The Netherlands
are decided in summary judgment, and the confidence of the legal profession
in the correctness of the summary judgment decisions is such that summary
judgment orders are almost never followed by a trial on the merits. Importantly, in kort geding proceedings, it is not
possible to claim invalidity of the right invoked as an affirmative defence. Of
course, it is possible to challenge the validity of the patent [at the trial
on the merits]. But it is not possible to ask the kort geding judge to cancel the patent. Instead, the court
decides whether the appearance of the rights of the patentee, that is, the
appearance of validity and the appearance of infringement, are such that a
provisional order may be issued. It is from this vantage
point, that an important line of case law has developed, essentially before
the President of the Court of The Hague. Under Dutch law, the Court of the
Hague has exclusive jurisdiction over all patent matters in The Netherlands. Since 1992, the President,
under the appellate supervision of the Court of Appeals of How has this practice been
received in other European countries? Contrary to some predictions, it has
been approved, and imitated.
9 Vredo / Samson, Court of Appeals of Hemogram, Court of Appeals of 10 Rhône Poulenc Rorer / Pharmachemie, President
of the Court of The Hague, 5 January 1993. June 2002 Thrirty Years of Experience with the 1.2 Approval and parallel developments The Dutch practice has been
followed by tribunals of other countries that have had occasion to enforce
the cross border injunctions issued in The Netherlands (1.2.1). But more importantly, cross border injunctions
have been copied, which is the most sincere form of flattery (1.2.2). 1.2.1 Recognition by French tribunals of
decisions with cross border effect In Articles 31 and following
of the Brussels Convention set up a simplified enforcement procedure for
judgments within The first French decision
on this point was virtually unnoticed. It was a decision of January 25, 1989
of the Court of Appeal of Versailles11 that rejected an appeal
from an enforcement order of the President of the Court of Haarlem, which had
enjoined the company La Medicale Equipe from using the trade mark ADRAMYCINE
with respect to antibiotics in The Netherlands. The second decision was
issued by the Court of Appeal of Paris on January 28, 199412, and
confirmed a French order enforcing a decision of August 17, 1992 of the
President of the Court of The Hague prohibiting the company Eurosensory from
selling in France Braille reading devices that had been found to infringe a
European patent owned by the Tieman company. The patent designated both The
Netherlands and France. The Court of Appeals of
11 La Médicale Equipex / Farmitalia Erba,
unspublished. 12 Eurosensory / Tieman and Blind Equipment
Europe: RD propr. intell. 1995 No. 57, p.13. 440 Pierre
Véron JPTOS Second, the Paris Court of
Appeals decided that the original Dutch decision was not contrary to the
public interest in Since this decision in 1994
there appears to have been no other French decision on the topic of enforcement
in France of Dutch injunction decisions. Indeed, the two French decisions noted
above appear to be the only such ones issued in 1.2.2. Parallel developments in There have been
developments parallel to the Dutch cross border injunction in On February 1, 1994 the
Duesseldorf Landgericht found itself competent to rule on an infringement
request filed by a Dutch company against a German company based on a In another case, again from
the Duesseldorf Landgericht, on January 16, 1996, a German company was found
to have infringed a British patent13.
13 No. 4 0 193 / 87 and 4 0 5 / 95,
discussed in “Protection transfrontalière des brevets européens par D. Stauder et P. et M. Von Rospatt”: RID éco.
1999, p. 119. 14 Jan & Carlos, Crimat et al / Galeries Lafayette et
al. unpublished. June 2002 Thrirty
Years of Experience with the The first fully reasoned
French cross border injunction decision was issued on October 18, 1996 by the
4th Chamber B of the Court of Appeal in Paris15. Based on
unpublished earlier decisions, the Court declared itself competent to rule on
a copyright infringement case where a French company was selling infringing
software in More recently, the cartoon
character Asterix made an as yet unreported, contribution to the construction
of this judicial edifice. In a judgment of December 3, 1999, the Tribunal de
Grande Instance of Even the But it would not take long for the pendulum of
history to swing the other way. 2. Challenge to the use of
the The common law courts have
tended to consider the Dutch practice excessive and have criticised cross
border injunction tended to fight it at a conceptual level (2.1). But the legal profession in
other countries has decided to enter the battle on a procedural level (2.2).
15 Banco de Santander / Kortex International an
Agro Informatica y Communicaciones: PIBD 1997, 16 Pearce / Ove Arup Partnership Limited: IIC 1998,
vol. 29, p. 833. 442 Pierre
Véron JPTOS 2.1 Conceptual challenge of the use of the It is through a careful examination
of the Brussels Convention that a movement has developed challenging the "reckless"
Dutch case law. Three articles of the Convention in particular have been
considered: · English courts have put forward Article 16(4) on
exclusive jurisdiction (2.1.1); · The European Court of Justice has relied on
Article 5(3) on the forum delicti (2.1.2.);
and · Article 6(1) on the plurality of defendants has
been invoked by the Dutch judges themselves (2.1.3). 2.1.1 The interpretation by the English
courts of Articles 16(4) and 19 of
the As noted above Article
16(4) of the Brussels Convention grants exclusive jurisdiction over the
question of validity of
registerable IP rights to the courts of the country where the rights were
registered. This limits the general jurisdictional rules set out in Articles
2, 5 and 6. Exclusive jurisdiction under Article 16(4)only relates, however,
to the question of validity and not to
the question of infringement. Let us turn for a moment to
Article 19. The provisions of the Brussels Convention are in French and
English. Each version has equal force, but the French and English versions of
Article 19 have different meanings: "Le juge d'un Etat contractant, saisi á
titre principal d'un litige pour lequel une juridiction d'un autre Etat
contractant est exclusivement compétente en vertu de l'article 16, se déclare
d'office incompétent." (emphasis added) "Where a court of a Contracting State is seized
of a claim which is principally concerned with a matter over which the courts
of another Contracting State have exclusive jurisdiction by virtue of Article
16, it shall declare of its own motion that it has no jurisdiction." (emphasis
added) In summary, the position of
the English courts has been that in an infringement action the question of
validity of the patent in issue is, in general, an essential question, at
least as important as that of infringement; one can therefore say that any
infringement procedure "principally concerns" the question of
validity. June 2002 Thrirty
Years of Experience with the This reasoning was first developed by Mr. Justice
Laddie in the Coin Controls/Limited v
Suzo International ( The English Court of
Appeal, presided over by the Master of the Rolls, took the matter up not much
later, by deciding to refer a question of law to the European Court of
Justice. The question related to two cases that the court had grouped
together, if not formally joined, Fort Dodge
Animal Health Limited v Akzo Nobel NV [1998] FSR 222 and The position adopted by the
English courts is based on several reasons: ·
First, the English common
law traditionally requires that, for a judge of one State to have
jurisdiction over a tortious act committed in another State, the act must be
one that is prohibited in both England and the other State (the rule of "double
actionability"). The infringement of a German patent, for example, is
not prohibited by English law. This rule has only recently been abolished by
the Private International Law Act (1995), but judicial attitudes have been
slower to shift. ·
Second, the English text of
Article 19 ("principally concerned") is, regrettably, altogether
different from the French text ("saisi á titre principal"). The English
text can be understood as referring to the essential substance of the question
submitted to the court, whereas the French text evokes a purely procedural
mechanism: jurisdiction is based on principal title if it is not based on
incidental title. It is understandable that, even though the maximum "the
judge of the action is the judge of the exception"is part of their
procedural toolkit, the English courts could have decided that the question
of validity was a principal one, and not an incidental one, in patent
infringement litigation. ·
Finally, if English courts
have refused to involve themselves with the infringement of foreign patents,
perhaps it isn't only just because they consider themselves incapable of
doing so. It may be that they also want to express the idea that they would
rather not have foreign courts involving themselves in the infringement of
English patents. As our English friends are
fond of understatement, how should we interpret this careful phrase by Mr.
Justice Aldous (now a member of the Court of Appeal)?
17 26 March 1997: IIC 1998, vol. 29, p.804. 444 Pierre Véron JPTOS "I would not readily accept the task of
having to rule on the infringement of a foreign intellectual property right". Is his Honour also making
it known that he would not readily accept the decision of a foreign court
ruling on the infringement of an English intellectual property right? 2.1.2 The interpretation by the
European Court of Justice of Article 5(3) of the A second limitation on the
Dutch enthusiasm came from the interpretation that the European Court of
Justice gave to Article 5(3) of the Brussels Convention, having been given
dispositive jurisdiction by the (English) House of Lords in a case that had
nothing to do with intellectual property. It was the case Fiona
Shevill/Press Alliance decided on March 7, 1995 based on the conclusions of
two French Advocates-General, Messrs Marco Darmon and Philippe Léger18. Miss Shevill was a British
citizen living in The French newspapers
challenged the jurisdiction of the High Court, arguing that essentially all
of their distribution had been within
18 JDI 1996, p. 543 ; Rev. crit. DIP 1996,
p. 495. June 2002 Thrirty
Years of Experience with the The European Court of
Justice identified the problems posed by immaterial damages, which frequently
take place simultaneously within the territories of several States, and
formulated a sensible rule: when the
jurisdiction of a court is based solely on Article 5(3) of the Brussels
Convention because part of the damages are caused in the State where that
court sits, that court may only rule on compensation for the damages caused
in that State. In other words, the
European Court of Justice has given the following directives to victims of
immaterial damages suffered in several states: · If the party causing the damage is sued in the
State where it is domiciled, Article 2 of the Brussels Convention gives the
court the power to order compensation for all damage suffered. · If the party causing the damages is sued in a
court other than that of its domicile, and jurisdiction is founded only because some
damage was caused within that State, the court can order compensation only
for the damage suffered in that State. This decision has put a
sensible limit on the power of those courts that are inclined to order
injunctive relief too easily. Effectively, in this respect, the Shevill
decision means that it is certainly possible to ask the courts of the defendant's
domicile to rule on a complaint in a pan-Europe infringement case, but it is
not possible to ask a court of another State, based on the fact that some of
the infringing acts took place there, for measures that exceed the limits of
that court's territory. In this way, non-Dutch
defendants are still exposed to the rigors of the kort geding, but their exposure is only to an injunction within
the Dutch borders. Only companies incorporated in The Netherlands may still
face the difficulties of the Lincoln/Interlas cross border injunctions,
something that may not be appreciated by the big players of Dutch industry,
such as Akzo, Philips, Shell and Unilever, to mention a few. 2.1.3 The restrictive interpretation
by the Dutch judges of Article 6(1)
of the The third and last
development which conceptually challenged the adventurous nineties' case law
came from the Dutch courts themselves. Some practitioners, used to a slower
and more deliberate kind of justice, accused the Dutch courts of a kind of
judicial imperialism. In response the Court of Appeal 446 Pierre
Véron JPTOS of Several American companies,
owners of a European Patent covering most of the countries of They claimed, respectively,
that the English subsidiary was infringing the English part of the European
patent, the French subsidiary was infringing the French part of the same
patent, and so on for the eight other defendants. The case had been brought
before the Court of The Hague, but the only objective connection to this
Court was the alleged infringing acts of the Dutch company under the Dutch
portion of the European patent. Was this connection sufficient to drag all
ten defendants before the The Court of Appeal in Following this decision the
Dutch courts therefore no longer accept that, when one among a number of
defendants was a Dutch company, the plaintiff could join all co-defendants in
an infringement action. This practice is now only possible if the spider in
the center of the web is Dutch. In a decision of February
16, 200020, the President of the Court of The Hague reviewed a
similar case but where the spider in the center of the web was not domiciled
in the European Union, but in the
19 RD Prop. intell. 1999, No. 95. 20 Schimed / Medtronic, unpublished June 2002 Thrirty Years of Experience with the jurisdiction over the 2.2 Procedural challenge to the
use of the In addition to the
conceptual challenge against the use of the Brussels Convention in patent
infringement cases, aimed at limiting the powers of a court in a State which
was not at the same time the domicile of the defendant and/or the territory
for which the patent had been granted, the late nineties have seen the use of
procedural tools aimed at preventing certain tribunals from accepting
jurisdiction: the anti-suit injunction and
declaratory judgment actions of non-infringement. 2.2.1 Anti-suit injunction The common law has a
procedural device unknown to Continental European lawyers, the anti-suit
injunction21. English Courts recognize the right of parties to
English litigation to be protected from a second set of vexatious or
oppressive proceedings in a foreign court. This protection is in the form of
an injunction, under penalty of law, against filing or pursuing an action in
a foreign court if that action could have been brought in an English court. The
injunction is not issued against the foreign judge: it is issued against the
party threatening foreign litigation. This technique has been
used by English companies threatened with a kort geding hearing before the President of the Court of The Hague
where infringement of an English patent is in question (along with
infringement of a Dutch patent). The argument is that, consistent with the
prevailing view in
21 For a comprehensive discussion of the topic
refer to the presentation that Ms Sandrine Clavel gave to be research group of the International Law on
25 February 2000, “Les anti-suit injunctions en droit international”. 448 Pierre
Véron JPTOS This sovereignist claim was
almost successful in the English Court of Appeal decision of Ford, October
27, 199722. The Court found that a complaint of infringement of a
British patent belongs to the exclusive jurisdiction of the English courts. The
Court of Appeal added, however "we also concluded that the matter is not
"acte clair" (sic)." For this reason the English
Court of Appeal decided to refer the case on a question of law to the
European Court of Justice. Unfortunately for the development of private
international law, the parties settled, so the European Court of Justice will
not now rule on this issue. However, litigants from
common law countries have, tried to export the anti-suit injunction to the
courts of continental In a case dealing with a
patent for a vaccine against whooping cough23, the President of
the Tribunal of Brussels, having first found the court competent in a
preliminary ruling in référé on June 27, 1997, dismissed the patentee's complaint
on October 9, 199824, on the basis that the case lacked urgency as
the owner of the patent, on its part, had not brought a single action for an
injunction before another tribunal. A judge of the Tribunal de
Grande Instance in Fearing a Dutch decision in
kort geding likely to prohibit the
sale in These two decisions have
not had any significant follow up and it does not look like the anti-suit
injunction will be the ultimate weapon of the third millenium against cross
border injunction proceedings in infringement cases. Will the torpedoes be this
weapon?
22 Ford Dodge Animal Health / Akzo Nobel and 23 Smithkline Beecham / 24 June 2002 Thrirty Years of Experience with the 2.2.2 Declaratory judgment actions of non-infringement A second procedural
challenge against an oppressive use of the Brussels Convention has been the
filing of declaratory judgment actions of non-infringement. The law of many member
states of the Brussels Convention recognizes an action for a judgment that
the manufacture or sale of a product, or the operation of a process, does not
constitute infringement of a specific patent. In practice, for reasons discussed
below, the filing of such an action can delay or suspend a later infringement
action in a different court. In a playful way, the term "torpedo"
has been borrowed from the vocabulary of naval warfare for any strategy
allowing a company threatened by an infringement action to take the initiative
of an invalidity challenge of the patent or a declaration of non-infringement25. The filing of a declaratory
judgment action or a nullity action is not necessarily dilatory. To the
contrary, it is easy to imagine that a company taking the initiative to nip
the controversy in the bud by bringing the case to a single court acts
diligently and seeks to avoid the multiplication of procedures before several
different tribunals. The filing for a
declaration of non-infringement before an infringement action is brought is
likely to create a lis alibi pendens
situation. Article 21 of the Brussels
Convention provides: Where proceedings involving the same cause of action
and between the same parties are brought in the courts of different Contracting
States, any court other than the court first seised shall of its own motion
stay its proceedings until such time as the jurisdiction of the court first
seised is established. Where the jurisdiction of the court first seised
is established, any court other than the court first seised shall decline
jurisdiction in favour of that court. It follows from Article 21
that if another tribunal is first seized of a nullity action or a declaratory
judgment action of non-infringement a second court must disqualify itself
from an infringement action on the same patent against the same infringer
(or, if the jurisdiction of the first court has been challenged, suspend the
action until the jurisdiction challenge has been decided).
25 Mario Franzosi, Worldwide Patent Litigation
and the Italian Torpedos: EIPR 1997, p. 382. 450 Pierre
Véron JPTOS How has the competition
between declaratory judgment actions for non-infringement and infringement
actions been resolved: ·
in countries where the
declaratory judgment action has been filed; and ·
in countries where the
infringement action has been filed? Declaratory judgment actions for non-infringement
in countries where they were filed If some companies saw the
declaratory judgment action for non-infringement as a means to consolidate
the litigation of the alleged infringement of a patent in several European
countries, others have used it as a simple means to delay the infringement
action. For the latter reasons declaratory judgment actions of
non-infringement have sometimes been brought in courts whose docket load did
not allow them to handle the case speedily. But is it possible to start
a declaratory judgment action in any European court? Put differently, which
courts have territorial jurisdiction over such an action? When the defendant(the
owner of the patent) is not domiciled in a European country, the Brussels
Convention does not apply. This situation arises frequently, in practice,
because a very large portion (if not the majority) of patents in force in
Europe belong to applicants from outside Europe (essentially North America or
In these cases,
jurisdiction is defined by the private international law of the country where
proceedings are commenced. In But what is the situation
when the patentee is incorporated in a European country? As there are no provisions
in the Brussels Convention that specifically address this situation the
general provisions of the Convention apply: (a) the courts of the
domicile of the defendant (Article 2) or of one of the defendants (Article
6(1)); or (b) the courts of the
location where the illegal act took place (Article 5(3)); subject, of course,
to Article 16(4) on exclusive jurisdiction over actions aimed at the validity
of an IP right. June 2002 Thrirty Years of Experience with the The application of Article
2, which permits an action to be brought for declaratory judgment of
non-infringement before the tribunal of the defendant's domicile (that is, in
this procedural context, that of the patentee), does not raise any problems. In this respect it is
difficult to agree with the decision of the Civil Court of Brussels of May
12, 200026 which, curiously, declared itself incompetent to rule
on a request for declaratory judgment of non-infringement against a patentee
incorporated in This decision
notwithstanding, the courts of the domicile of the defendant are competent,
by virtue of Article 2 of the Brussels Convention, to rule on a request for
declaratory judgment of non-infringement. If we now consider Article
5(3) of the Brussels Convention, can we conclude that it permits an action to
be brought for declaratory judgment of non-infringement before the court of
the country covered by the patent at issue, or (if there are several) in one
of the countries covered by it? We might think that, inasmuch as a
declaratory judgment action is nothing but the mirror image of an infringement
action, the jurisdictional rules of one would also apply to the other. This would
mean that to the extent the courts of the place where infringement takes place
have jurisdiction over an infringement action under Article 5(3) of the Brussels
Convention, they also have jurisdiction over a declaratory judgment action of
non-infringement. This is not how the case
law has developed. On March 9, 1994 the
Tribunal of Salerno27 declined jurisdiction over a request for a
declaratory judgment of non-infringement of an Italian patent, owned by a
German patentee, on the basis that Article 5(3) of the Brussels Convention,
which formulates an exception to a more general rule, could not apply unless
an unlawful act had in fact taken place.
26 Röhl Enzyme GmbH / DSM, to date unpublished. 27 Cavi / Siemens unpublished. 452 Pierre
Véron JPTOS The Court of Appeal of the exceptional nature of the jurisdiction based
on the location of the illegal act, provided for in Article 5(3) of the
Brussels Convention leaves no room for an interpretation that would bring within
its provisions an action of judgment on a fact that has not yet taken place
and that does not relate to the rights of the patent. Such an exclusive interpretation
would overly limit the realm of the rule of principle expressed in Article 2
of the Convention. It follows from these
decisions that a declaratory judgment action of non-infringement may be
brought in the country of the patent, if the patentee is domiciled in When a court has accepted
jurisdiction over a declaratory judgment action, only part of the problem has
been solved. Next, the court must decide whether the applicable law permits a
ruling on the request. Not all national laws recognize an action for
declaratory judgment of non-infringement and the ones that do require that
certain conditions be met. Thus, for example, the
Tribunal de Grande Instance of (a) the potential infringer
must demonstrate industrial exploitation within a (b) the potential infringer
must notify the patentee of the plan for industrial exploitation, and not
receive a response within 3 months).
28 Evans Medical / Chiron: EIPR 1998, p. 61. 29 II, 8. - Yamanouchi / Biogen, 16 March 1999:
Dossiers Brevets, 1999, III 6. June 2002 Thrirty Years of Experience with the 2.2.2.2 The impact of a declaratory judgment of non-infringement in the country where an infringement action has
been filed. An action for declaratory
judgment of non-infringement is of interest only if it leads the tribunal
seized with the infringement action to send the case back to the court
hearing the declaratory judgment, under Article 21 of the Brussels
Convention. For the time being,
national courts have generally yielded to the obligatory character of the
provisions of Article 21 of the Brussels Convention on lis alibi pendens, be it sometimes with apparent regret. Article
21 is different from Article 22 on related actions: Article 21 leaves no room
for discretion on the part of the court seized with the later filed case: it
must stay its proceedings. The Landgericht of Dűsseldorf
stayed proceeding on February 27, 199830, awaiting a decision in
proceedings for a declaratory judgment of non-infringement that was pending
in Nevertheless, in a
different case the Landgericht of Duesseldorf made it quite clear on July 8,
199931 that, even though it had to stay the proceedings on the
merits in the infringement case, nothing in Article 21 of the Brussels
Convention prohibited it from ruling on a request for a preliminary injunction.
The court added, pointedly, that the fact that Article 21 prevented it
hearing the case on the merits was one of the circumstances to be taken into
account when weighing the interests of the parties, as is customarily done in
interlocutory injunction cases. A French court has taken a
position that is different than that of the courts of Finally, the
Oberlandesgericht of Dűsseldorf, in a decision of September 30, 199933
referred a question of law to the Court of Justice of the European
Communities before deciding whether or not it had to stay an infringement
30 31 General Hospital / Bracco and Byk Gulden. 32 TGI 33 JOCE No. C34, 5 February 2000, p. 11; W. Von
Meibon and J. Pitz: “The Belgian Torpedo has reached the ECJ” Patent World No. 118, December 1999, p.
10. 454 Pierre
Véron JPTOS action pending a decision
by the Belgian tribunals in an action for declaratory judgment of
non-infringement. In any event, the referred issue does not at all question
the principle of staying the proceedings. It relates to technical details of
the identity of the court seized with the first action, some of which are
specific to German civil procedure (which does not consider an action
formally filed until after certain formalities have been complied with). It appears, however, that
the Court of Justice will not now rule on this question: the case was taken
off its docket on April 6, 2000. Conclusion 30 years of using the
Brussels Convention in patent infringement proceedings can be summarized as
follows: ·
the courts of the continent
(at least those of The Netherlands, Germany and France) do not hesitate, in
particular in the context of preliminary injunctions of infringement, to rule
on infringement complaints based on patents granted for territories other
than where they sit, applying of course to these complaints the substantive
law of the country concerned; ·
the English courts have
resolutely remained outside this trend, reasoning essentially that an
infringement action on a foreign patent concerns in general the validity of
the right, for which the combination of Articles 16(4) and 19 of the Brussels
Convention exclude them from assuming jurisdiction; ·
these days, the more lively
debates no longer focus on these questions of principle, on which the
national case law is now well settled. Instead, they focus on the procedural
rules of their application: the choice of forum under Articles 5(3) and 6(1)
of the Brussels Convention and co-ordination of parallel proceedings brought
in several states on patents relating to the same invention (anti-suit
injunctions and declaratory judgment of non-infringement). A certain amount of case
law development can be expected on these procedural questions but it will not
modify in any fundamental way the principle pronounced in Article16(4) of the
Brussels Convention, that of exclusive jurisdiction a question of validity
for the courts of the State that granted a patent. No important changes can
take place without a fundamental change to the rules that are in force. No such change is on the
horizon for the general provisions of civil procedure. The proposed Community
Regulation on juridiction and the recognition and execution of decisions in
civil and commercial matters, wich June 2002 Thrirty Years of Experience with the was published on July 14,
1999 by the Europeen Commission, and scheduled to replace the Brussels
Convention, does not bring any important innovation to the questions discussed
in this paper34. The change may come from
the provisions in the area of patents. It could come, first of
all, from a protocol on the regulation of patent litigation for European
patents, which will be proposed in 2001 for signature by the Member States of
the EPO, and which would create an autonomous judicial system. It may also come from a
future Regulation on the Community Patent, the preparation of which was
announced by the European Commission in July 2000. In any event, the
interaction of these systems with the Brussels Convention is yet to be
developed. 34 See also “Innovations apportées dans le
contentieux de la propriété industrielle par le Règlement” No. 44/2001, 22
December 2000 : RD propr. intell. 2000, No. 121. |
Thirty Years of Experience with the Brussels
Convention in Patent
Infringement
Litigation1
Pierre Véron
Introduction
If IP litigation in Europe seems intractable, it is
because it’s just that.
To get a sense for the magnitude of the problem,
imagine a world in which a US patent, upon its grant by the USPTO, explodes
into 50 State Patents, with the courts in each state having jurisdiction over
the validity of the patents in their state, and over infringement actions
taking place within the borders of their state.
Imagine further that these courts operate on widely
different time tables, applying very different procedural rules.
Not convinced yet that the situation is, let’s say,
challenging? Well, for good measure let us give every member of the public the
right to challenge the validity of any patent in court. No need to show a
special interest; the patent is there, and you do not think it should, that is
all you need. Do not like the prospect of patent infringement litigation in Delaware?
Just bring a DJ action for non-infringement in Arkansas, no questions asked. No
need to demonstrate a reasonable apprehension of getting sued. You have a
product, they have a patent, you have standing; as simple as that. Of course,
the Delaware Court will have to wait for the Arkansas Court to decide the case,
and give full faith and credit to that decision.
1
Previously published, in French, in the Journal du Droit International, 128
(2001) 805.
Pierre Véron
Barrister, admitted
to the Courts of France President of the Association d ePropriété Industrielle
Professor at the Centre of International Studies of Intellectual Property
(“CEIPI”) of the Robert
Schuman University of Strasbourg
431
432 Pierre
Véron JPTOS
To top this all off we give some states a court
that liberally issues preliminary injunctions, in some cases only weeks or days
after the complaint was filed. And, of course, they do this in a language that
only the members of the local bar can understand. Some of these injunctions
will be given cross border effect, and the courts of other states will be
required to enforce them.
The main reason why the situation is difficult to
penetrate is that in recent years the boundaries of the rules for jurisdiction
and good faith and credit have been tested, pushed back, and reined back in. Several
times a core issue has been referenced to the European Court of Justice ("ECJ"),
only to see the issue taken away from them because the parties settled.
Professor Véron's article has the merit of tracking
the history of the evolving rules, providing much needed explanation along the
way.
I had the privilege of receiving a copy of the
paper prior to its publication in the "Journal du Droit International"
in the Fall of 2001.
It occurred to me that the article would be very
useful to US practitioners, if only it were written in English. Professor Véron
kindly gave me permission to translate this article to English and to seek
publication in a North American Journal.
Koos Rasser
Howrey Simon Arnold & White (London)
Thirty Years of Experience
with the Brussels
Convention in Patent Infringement Litigation
Because it
lays down the rules of the innovation game, intellectual property law is in
essence international.
Technical
innovations are of interest to consumers world-wide: digital television,
cellular telephones and DVD's were distributed in many industrialised countries
within a few months’ time. Similarly, new drugs are released on the market in
most industrialised countries within a few years of each other.
The
monetary investment necessary for the proper development of new technology is
impressive2, and can only be recouped through simultaneous
exploitation in markets around the world. Crossing borders means crossing
2 For a new drug the number frequently stated is
US$ 100 million.
June 2002 Thirty Years of
Experience with the Brussels Convention… 433
legal boundaries:
legal innovators must rely on protection for their innovations in many
different jurisdictions.
As a
result, the protection of intellectual property has always had a strong
international component.
Historically,
the globalization effort first manifested itself in the procedures for obtaining
intellectual property rights : the Paris Convention for the Protection of
Industrial Property of March 20, 1883 ("the Paris convention")
provided the first foundation for international recognition of the rights
obtained in each member State, through the so-called the right of priority.
This right extends the benefit of the first filing date in one of the member
States to all Convention countries.
Almost a
century later, the European system made a major contribution to this movement
by creating a bundle of national patents, legally distinct but substantively
identical, obtained through a single application and granting process. This was
the object of the European Patent Convention signed in Munich on October 5,
1973 ("the European Patent Convention").
The next
step - a single European Community Patent for the entire European Union - has
not yet been made. The Luxembourg Convention of December 15, 1975 ("the
Luxembourg Convention") which provided for the Community Patent never
entered into force, primarily for language reasons. The European Commission
recently revived the idea of a Community Patent, this time by way of a
Community Regulation rather than a separate treaty, but it is still several
years at least from realization.
The
significant progress in the internationalisation of the acquisition of
intellectual property rights has not been matched by a similar progress in the
judicial enforcement of those rights. The main reason is that, although States
quite readily accept encroachments on their sovereignty in the acquisition of
rights, they are a lot more sensitive to attacks on their sovereignty in the realm
they consider theirs only, that of dispensing justice.
Hence, it
wasn't until the final quarter of the 20th century that the first efforts took
place to internationalize IP litigation.
The
Brussels Convention has no doubt been the first instrument allowing for a true
internationalization of litigation. Signed on September 27, 1968, the EC Convention
on Jurisdiction and Judgments in Civil and Commercial Matters ("the Brussels
Convention") it deals with issues of jurisdiction, and the recognition and
execution of judgments in civil matters among the six countries that, at the
time, made up the European Economic Community.
434 Pierre
Véron JPTOS
The first
accomplishment of the Brussels Convention was to put an end to isolationism in
civil litigation which, up to that point, had been common throughout Europe.
For
example, in the area of intellectual property, and more specifically in patent
infringement litigation, French private international law could be summarized
in one rule: French courts had exclusive jurisdiction over the validity and
infringement of an intellectual property right granted by the French government
or having an effect on French soil. Reciprocity was hardly recognized in
practice or in theory, and French tribunals took no interest at all in the
validity or infringement of intellectual property rights granted or in effect
in foreign countries3.
There could
be no question of:
·either asking a foreign court to prevent the
infringement of a French IP right in France or elsewhere even against a French
subject; or
·asking a French court to enjoin the infringement of
a foreign IP right in France or elsewhere, even against a French subject4.
The signing
of the Brussels Convention in 1968 therefore marked the beginning of a cultural
revolution.
The history
of this revolution can be described, like that of many human undertakings, in
terms of the pendulum of history: advance and retreat. After a certain period
of incubation, the Brussels Convention was welcomed to the world of patent
infringement litigation (1), but the
later years of the nineties saw the development of a head wind to its use in
this area (2).
1.Bringing the Brussels Convention
into
the realm of patent infringement litigation
The history
of the application of the Brussels Convention to patent infringement litigation
is that of two worlds colliding: IP rights against private international law.
Article
16(4) of the Brussels Convention provides:
"The following courts shall have exclusive
jurisdiction, regardless of domicile:…
(4.) In proceedings concerned with the registration
or validity of patents, trade marks, designs, or other similar rights required
to be deposited or registered, the
3 Cass.
Civ. 21 January 1936; S. 1937, p.81 - TGI Paris, 4 May 1971, Yema / Jenny:
Rev. Crit. DIP,
1974.
4 On the full scope of the problem see: M. Vivant
“Juge et loi du brevet”: Librairies Techniques, 1977
- J. Foyer and M. Vivant, “Le droit des brevets”: PUF 1991.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 435
courts of the Contracting State in which the
deposit or registration has been applied for, has taken place or is under the
terms of an international convention deemed to have taken place;"
IP law
experts had long held the view that the courts of the country that granted the
IP right had exclusive jurisdiction over the validity of this title, as well as
over any infringement of the right. Adherents to this remain urged a broad
interpretation of Article 16(4), to maximise the exclusively granted to the State
which granted the right.
Internationalists,
on the other hand, have advocated that Article 16(4) should be restrictively
applied so as to give proper scope to the wish to create an embryonic European
judicial space, the impetus behind the Brussels Convention.
The former
had the upper hand: it took close to 15 years before European tribunals agreed
to hear cases concerning the violation of foreign intellectual property rights
(1.1). This innovation was
subsequently incorporated into European judicial practice (1.2).
1.1 The innovation: the Netherlands practice
Dutch
practitioners were the first to ask their tribunals to enjoin infringement of
intellectual property rights that covered not only The Netherlands but also
other countries, when the infringing acts were committed by Dutch companies. (1.1.1) They used for this purpose a
specific form of summary proceedings called the kort geding. (1.1.2)
1.1.1 Injunctions have an extra-territorial effect
The most famous case in this regard in Lincoln v
Interlas5
This case
did not, in and of itself, deal with the application of the Brussels
Convention. But it did cause some concern for those opposed to the application
of the Brussels Convention in the realm of IP rights.
An American
company, Lincoln Electric, accused a Dutch company Interlas of infringing its
registered trade mark LINCOLN with respect to welding equipment. The trade mark
was registered in The Netherlands, Belgium and Luxembourg, and infringement was
occurring in all three jurisdictions. Lincoln Electric asked the Dutch court
not only to stop the infringement of the Dutch trade mark, but also to stop
infringement of the Belgian and Luxembourg registrations in those countries.
5 Hoge
Raad, 24 November 1989: NJ 1992, 404 ; BIE 1991, 86.
436 Pierre
Véron JPTOS
The
international competence of the Dutch court was indisputable: under Article 2
of the Brussels Convention, being the tribunal of the State in which the
defendant was domiciled, the Dutch court was competent to rule on the
infringement of the Dutch trade mark. The validity of the three marks was not
in issue: Article 16(4) of the Brussels Convention which reserves jurisdiction
over questions of validity to the tribunals of the State that granted the
right, therefore did not apply. The Dutch court was therefore competent to hear
the Belgian and Luxembourg infringement actions as well.
But
jurisdiction to hear the matter was insufficient: in practice, the Dutch court
needed power to issue injunctions effective outside the Netherlands. In other
words, can the court of one country enjoin the infringement of an IP right of
another country, a decision which by definition assumes an extra-territorial
effect?6
The Dutch
Supreme Court gave an affirmative answer, worded as follows:
"In order that the law, the nature of an
obligation or a judicial decision not produce a different result, each person
held to give, to do or not do something with respect to another person is so ordered
by the judge, on request of the person to whom the obligation is due. There is generally
no reason at all to assume that such an order cannot be given because the case
involves an obligation, provided for in a foreign law, which must be fulfilled
outside the territory of The Netherlands."
"A more narrow view... does not have any basis
in law and would, in an era of ever increasing international contacts, produce the
following undesirable result: in the case of a violation of international character,
such as an encroachment upon IP rights and unfair competition in several
countries, or environmental pollution with a cross border impact, the aggrieved
Dutch party would be obliged to take legal action in each country involved."
This
decision confirmed a practice that had been well established in The Netherlands
in trade mark cases since the end of the 1970s7. It is unsurprising that the case law would first
develop in the area of trade marks: the distinctive mark is often exactly the
same in the different jurisdictions and (because trade mark law is based on
international conventions) is protected in
6 For thr full scope of this issue see S. Clavel,
“Le pouvoir d’injonction extraterritorial des juges pour
le règlement des litiges privés internationaux: thése dactylographiée”,
December 1999.
7 Mars / Venus
- J. Foyer and M. Vivant, “Le droit des brevets”: PUF 1991.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 437
much the
same way around the world. Moreover, unlike patent litigation, the question of
validity of the Belgian and Luxembourg trade marks (which was beyond the reach
of the Dutch court hearing the infringement action) is not always part of trade
mark litigation.
How would this fare in patent litigation?
Patents
pose a different problem. The rules for patentability vary significantly from
one country to the next and in practice, an invalidity defense is almost always
raised by the alleged infringer.
On the
other hand, and several decisions have made the point, the rise of the European
Patent overcomes some of the difficulties of isolationalism. Effectively, when
a European Patent is granted under the European Patent Convention it is
governed by the same conditions of validity and its contents are identical in
all designated European countries, even though legally using the vernacular, it
dissolves into a bundle of national patents. However, when there is an
infringement extending into several countries, it is regrettably still
necessary to engage in proceedings in all countries involved to seek sanctions
for the violation of the same right, subject to the same rules of validity.
It has long
been recognized that Article 16(4) only relates to the validity of IP rights
and not to infringement. The Jénard Report8 stated as much. But since, in practice, the
majority of defendants accused of patent infringement do challenge the validity
of the patent at issue, and since this question must be decided first, Article
16(4) could, in fact, end up making it an illusion to seek recourse from any
court other than those of the State that has granted the patent. Effectively,
the patentee may create an impasse by commencing proceedings before a court of
a country other than the one which granted the patent (e.g., the court of the
domicile of the defendant, which has jurisdiction pursuant to Article 2, or
under Article 6 is one of the courts having jurisdiction in the case of several
defendants). The court with jurisdiction over the infringement issue must stay
the proceedings while waiting for the courts of the State that granted the
patent to decide the validity issue.
This
outcome, mandated by Article 16(4), is regrettable for two reasons:
·it adds to the delay; and
·it separates the issues of validity and infringement
which are, in general, intimately connected.
8 JOCE No.
C59, 5 March 1979, page 38.
438 Pierre
Véron JPTOS
How has the Dutch practice been able to circumvent
this obstacle?
The answer
is called kort geding ("summary
proceedings"), a procedural concept very similar to that of the French référé.
1.1.2. Kort geding procedural practice
Traditionally,
French courts have only reluctantly used référé
to prevent patent infringement . Dutch courts, in contrast, have made the kort geding their favorite sword: the
majority of patent and trade mark infringement proceedings in The Netherlands
are decided in summary judgment, and the confidence of the legal profession in
the correctness of the summary judgment decisions is such that summary judgment
orders are almost never followed by a trial on the merits.
Importantly,
in kort geding proceedings, it is not
possible to claim invalidity of the right invoked as an affirmative defence. Of
course, it is possible to challenge the validity of the patent [at the trial on
the merits]. But it is not possible to ask the kort geding judge to cancel the patent. Instead, the court decides
whether the appearance of the rights of the patentee, that is, the appearance
of validity and the appearance of infringement, are such that a provisional
order may be issued.
It is from
this vantage point, that an important line of case law has developed,
essentially before the President of the Court of The Hague. Under Dutch law,
the Court of the Hague has exclusive jurisdiction over all patent matters in
The Netherlands.
Since 1992,
the President, under the appellate supervision of the Court of Appeals of The
Hague, has issued several orders in summary proceedings enjoining acts of
infringement of Dutch patents and their foreign equivalents9.
The jurisdiction of The Hague has become attractive: French plaintiffs now use
the court top commence proceedings against the defendants domiciled in The
Netherlands, seeking injunction to prevent infringement of French IP rights
that do not have an equivalent in The Netherlands10.
How has
this practice been received in other European countries? Contrary to some
predictions, it has been approved, and imitated.
9 Vredo /
Samson, Court of Appeals of The Hague, 16 January 1992: BIE 1993 / 9 - Philips
/
Hemogram, Court of Appeals of The Hague, 4 June
1992: IER 1992 / 44.
10 Rhône
Poulenc Rorer / Pharmachemie, President of the Court of The Hague, 5 January 1993.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 439
1.2 Approval and parallel developments
The Dutch
practice has been followed by tribunals of other countries that have had
occasion to enforce the cross border injunctions issued in The Netherlands (1.2.1).
But more importantly, cross border injunctions have
been copied, which is the most sincere form of flattery (1.2.2).
1.2.1 Recognition by French tribunals of decisions
with cross
border effect
In France, approval
has essentially come from those French tribunals that have been asked to enforce
decisions made by Dutch courts enjoining French defendants, in France, from
infringing French IP rights.
Articles 31
and following of the Brussels Convention set up a simplified enforcement
procedure for judgments within Europe. A decision of a superior court of a
signatory State will be enforced in France following an order issued by the
President du Tribunal de Grande Instance of the [French] region where the order
is to be executed. This enforcement order is issued in ex parte proceedings:
the defendant will not be heard, except on appeal to the Cour d'Appel. The Cour
d'Appel can only deny the enforcement in the limited cases addressed in Article
27 of the Brussels Convention.
The first
French decision on this point was virtually unnoticed. It was a decision of
January 25, 1989 of the Court of Appeal of Versailles11 that
rejected an appeal from an enforcement order of the President of the Court of
Haarlem, which had enjoined the company La Medicale Equipe from using the trade
mark ADRAMYCINE with respect to antibiotics in The Netherlands. The second
decision was issued by the Court of Appeal of Paris on January 28, 199412,
and confirmed a French order enforcing a decision of August 17, 1992 of the
President of the Court of The Hague prohibiting the company Eurosensory from
selling in France Braille reading devices that had been found to infringe a
European patent owned by the Tieman company. The patent designated both The
Netherlands and France.
The Court
of Appeals of Paris rejected Eurosensory's arguments. First, it decided that
the appeal filed in The Netherlands against the original injunction should not
prevent immediate enforcement of the original injunction in France.
11 La
Médicale Equipex / Farmitalia Erba, unspublished.
12 Eurosensory
/ Tieman and Blind Equipment Europe: RD propr. intell. 1995 No. 57, p.13.
440 Pierre Véron JPTOS
Second, the
Paris Court of Appeals decided that the original Dutch decision was not
contrary to the public interest in France. In doing so, it rejected Eurosensory's
argument maintaining that in France it would not be permissible to execute an
interlocutory injunction granted in a référé
if no case on the merits had been filed, just as no measure akin to an
interlocutory injunction can be issued by the President of a French tribunal if
no case on the merits had been filed (Art. L 615-3 of the French Statute on
Intellectual Property).
Since this
decision in 1994 there appears to have been no other French decision on the
topic of enforcement in France of Dutch injunction decisions. Indeed, the two
French decisions noted above appear to be the only such ones issued in Europe. Perhaps
the merits of the Dutch cross border injunction have been so clear to European practitioners
that they have not tried to challenge them?
1.2.2. Parallel developments in Germany
and France
There have
been developments parallel to the Dutch cross border injunction in Germany and France.
On February
1, 1994 the Duesseldorf Landgericht found itself competent to rule on an
infringement request filed by a Dutch company against a German company based on
a United Kingdom patent. The patentee sought to prevent export to Great Britain
of conveying equipment alleged to infringe the patent from being exported to
the United Kingdom.
In another
case, again from the Duesseldorf Landgericht, on January 16, 1996, a German
company was found to have infringed a British patent13.
France did
not stay protected from this judicial current: on June 19, 1995 an order in référé by the President of the Commercial
Court in Paris enjoined the French and Italian defendants in that case from
infringing a design patent in France as well as in Italy14. The
reasoning of this decision with respect to the cross border aspect of the
injunction is, however, sparse.
13 No. 4 0 193 / 87 and 4 0 5 / 95, discussed
in “Protection transfrontalière des brevets européens
par D. Stauder et P. et M.
Von Rospatt”: RID éco. 1999, p. 119.
14 Jan &
Carlos, Crimat et al / Galeries
Lafayette et al. unpublished.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 441
The first
fully reasoned French cross border injunction decision was issued on October
18, 1996 by the 4th Chamber B of the Court of Appeal in Paris15. Based
on unpublished earlier decisions, the Court declared itself competent to rule
on a copyright infringement case where a French company was selling infringing
software in Spain. The court found infringement based on Spanish copyright law.
More
recently, the cartoon character Asterix made an as yet unreported, contribution
to the construction of this judicial edifice. In a judgment of December 3, 1999,
the Tribunal de Grande Instance of Paris (3rd Chamber, 2nd Section) considered
itself competent to hear a request for an injunction against the former
publishers of the Asterix works to prevent the distribution in England of the
adventures of the famous Gaul. Even though the case concerned British
territory, and was directed against two English publishing houses, the tribunal
found itself competent based on Article 6(1) of the Brussels Convention because
one of the publishing houses was established in France.
Even the United
Kingdom which, as we shall see, did not give the warmest of welcomes to the
judicial current coming from The Netherlands, still had to follow it, at least
in the area of literary and artistic property, where the exception of Article
16(4) of the Brussels Convention does not apply. On March 7, 1997 the English
High Court considered itself competent to rule on an infringement claim
concerning architects' drawings which had been used by a British engineering
company to build a development in The Netherlands16.
But it would not take long for the pendulum of
history to swing the other way.
2. Challenge to the use of
the Brussels Convention
in patent infringement litigation
The common
law courts have tended to consider the Dutch practice excessive and have
criticised cross border injunction tended to fight it at a conceptual level (2.1).
But the
legal profession in other countries has decided to enter the battle on a procedural
level (2.2).
15 Banco de
Santander / Kortex International an Agro Informatica y Communicaciones: PIBD
1997,
III 221 ; Gaz pal 18 - 20 january 1998, p. 54.
16 Pearce /
Ove Arup Partnership Limited: IIC 1998, vol. 29, p. 833.
442 Pierre Véron JPTOS
2.1 Conceptual challenge of the
use of the Brussels Convention in patent litigation
It is
through a careful examination of the Brussels Convention that a movement has
developed challenging the "reckless" Dutch case law. Three articles
of the Convention in particular have been considered:
·English courts have put forward Article 16(4) on
exclusive jurisdiction (2.1.1);
·The European Court of Justice has relied on Article
5(3) on the forum delicti (2.1.2.); and
·Article 6(1) on the plurality of defendants has
been invoked by the Dutch judges themselves (2.1.3).
2.1.1 The interpretation
by the English courts of Articles 16(4) and
19 of the Brussels Convention
As noted
above Article 16(4) of the Brussels Convention grants exclusive jurisdiction
over the question of validity of
registerable IP rights to the courts of the country where the rights were
registered. This limits the general jurisdictional rules set out in Articles 2,
5 and 6. Exclusive jurisdiction under Article 16(4)only relates, however, to
the question of validity and not to the
question of infringement.
Let us turn
for a moment to Article 19. The provisions of the Brussels Convention are in
French and English. Each version has equal force, but the French and English
versions of Article 19 have different meanings:
"Le juge d'un Etat contractant,
saisi á titre principal d'un litige pour lequel une juridiction d'un autre Etat
contractant est exclusivement compétente en vertu de l'article 16, se déclare
d'office incompétent." (emphasis added)
"Where a court of a Contracting State is seized
of a claim which is principally concerned with a matter over which the courts
of another Contracting State have exclusive jurisdiction by virtue of Article
16, it shall declare of its own motion that it has no jurisdiction." (emphasis
added)
In summary,
the position of the English courts has been that in an infringement action the
question of validity of the patent in issue is, in general, an essential
question, at least as important as that of infringement; one can therefore say
that any infringement procedure "principally concerns" the question
of validity.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 443
This reasoning was first developed by Mr. Justice
Laddie in the Coin Controls/Limited v
Suzo International (UK) Limited17.
The English
Court of Appeal, presided over by the Master of the Rolls, took the matter up
not much later, by deciding to refer a question of law to the European Court of
Justice. The question related to two cases that the court had grouped together,
if not formally joined, Fort Dodge Animal
Health Limited v Akzo Nobel NV [1998] FSR 222 and Boston Scientific/Cordis.
The
position adopted by the English courts is based on several reasons:
·First, the English common law traditionally requires
that, for a judge of one State to have jurisdiction over a tortious act
committed in another State, the act must be one that is prohibited in both England
and the other State (the rule of "double actionability"). The
infringement of a German patent, for example, is not prohibited by English law.
This rule has only recently been abolished by the Private International Law Act
(1995), but judicial attitudes have been slower to shift.
·Second, the English text of Article 19 ("principally
concerned") is, regrettably, altogether different from the French text ("saisi
á titre principal"). The English text can be understood as referring to
the essential substance of the question submitted to the court, whereas the
French text evokes a purely procedural mechanism: jurisdiction is based on
principal title if it is not based on incidental title. It is understandable
that, even though the maximum "the judge of the action is the judge of the
exception"is part of their procedural toolkit, the English courts could
have decided that the question of validity was a principal one, and not an
incidental one, in patent infringement litigation.
·Finally, if English courts have refused to involve
themselves with the infringement of foreign patents, perhaps it isn't only just
because they consider themselves incapable of doing so. It may be that they
also want to express the idea that they would rather not have foreign courts
involving themselves in the infringement of English patents.
As our
English friends are fond of understatement, how should we interpret this
careful phrase by Mr. Justice Aldous (now a member of the Court of Appeal)?
17 26 March 1997: IIC 1998, vol. 29, p.804.
444 Pierre
Véron JPTOS
"I would not readily accept the task of having
to rule on the infringement of a foreign intellectual property right".
Is his
Honour also making it known that he would not readily accept the decision of a
foreign court ruling on the infringement of an English intellectual property
right?
2.1.2 The
interpretation by the European Court of Justice of
Article 5(3) of the Brussels Convention
A second
limitation on the Dutch enthusiasm came from the interpretation that the
European Court of Justice gave to Article 5(3) of the Brussels Convention,
having been given dispositive jurisdiction by the (English) House of Lords in a
case that had nothing to do with intellectual property.
It was the
case Fiona Shevill/Press Alliance decided on March 7, 1995 based on the
conclusions of two French Advocates-General, Messrs Marco Darmon and Philippe
Léger18.
Miss
Shevill was a British citizen living in Paris, where she worked with a currency
exchange office. The office had been subject to an investigation by the
anti-drug brigade. The French press reported on the police raid and, in its
commentary, mentioned Miss Shevill in terms that she considered less than
flattering. She decided to sue for defamation. In the meantime, , Miss Shevill
returned to England. She considered it more expedient to sue the French
newspapers before the English courts than before the French tribunals. But the
French newspaper had head offices in France and Article 2 of the Brussels
Convention identified a priori the
French courts as having jurisdiction. Miss Shevill's English lawyers relied on
the fact that the French papers that carried the allegedly defamatory articles
had been distributed in England (be it only in London railway stations and
airports). They invoked Article 5(3) of the Brussels Convention, which gives
jurisdiction to the courts of the place where the harm was caused. Proceedings
were commenced against the French newspapers in the English High Court,
claiming compensation for all the damages alleged by Miss Shevill.
The French
newspapers challenged the jurisdiction of the High Court, arguing that
essentially all of their distribution had been within France and that the
distribution on English soil had been only marginal. The newspapers claimed
that the French courts had exclusive jurisdiction, as the place of the
defendant's domiciles.
18 JDI 1996,
p. 543 ; Rev. crit. DIP 1996, p. 495.
June 2002 Thrirty Years of Experience with the Brussels
Convention… 445
The
European Court of Justice identified the problems posed by immaterial damages,
which frequently take place simultaneously within the territories of several
States, and formulated a sensible rule: when
the jurisdiction of a court is based solely on Article 5(3) of the Brussels
Convention because part of the damages are caused in the State where that court
sits, that court may only rule on compensation for the damages caused in that
State.
In other
words, the European Court of Justice has given the following directives to
victims of immaterial damages suffered in several states:
·If the party causing the damage is sued in the
State where it is domiciled, Article 2 of the Brussels Convention gives the
court the power to order compensation for all damage suffered.
·If the party causing the damages is sued in a court
other than that of its domicile, and jurisdiction
is founded only because some damage was caused within that State, the court can
order compensation only for the damage suffered in that State.
This
decision has put a sensible limit on the power of those courts that are
inclined to order injunctive relief too easily. Effectively, in this respect,
the Shevill decision means that it is certainly possible to ask the courts of
the defendant's domicile to rule on a complaint in a pan-Europe infringement
case, but it is not possible to ask a court of another State, based on the fact
that some of the infringing acts took place there, for measures that exceed the
limits of that court's territory.
In this
way, non-Dutch defendants are still exposed to the rigors of the kort geding, but their exposure is only
to an injunction within the Dutch borders. Only companies incorporated in The
Netherlands may still face the difficulties of the Lincoln/Interlas cross
border injunctions, something that may not be appreciated by the big players of
Dutch industry, such as Akzo, Philips, Shell and Unilever, to mention a few.
2.1.3 The restrictive
interpretation by the Dutch judges of Article
6(1) of the Brussels Convention dealing with a plurality of defendants.
The third
and last development which conceptually challenged the adventurous nineties'
case law came from the Dutch courts themselves. Some practitioners, used to a
slower and more deliberate kind of justice, accused the Dutch courts of a kind
of judicial imperialism. In response the Court of Appeal
446 Pierre
Véron JPTOS
of The
Hague issued on April 23, 1998 an important decision known as the jurisprudence
of the "spider in the web"19.
Several
American companies, owners of a European Patent covering most of the countries
of Europe, had sued in the Court of The Hague all the European subsidiaries of
another American company, accusing them of infringement. One of the
subsidiaries was a Dutch company which gave the plaintiffs the right to sue in
The Netherlands. Since Article 6(1) of the Brussels Convention gives the
plaintiff the right, if there is a plurality of defendants, to bring the case
before the court of the domicile of one of them, the patentees sued all the "sisters"
of the Dutch subsidiary of the American company before the Court of The Hague.
They
claimed, respectively, that the English subsidiary was infringing the English
part of the European patent, the French subsidiary was infringing the French
part of the same patent, and so on for the eight other defendants. The case had
been brought before the Court of The Hague, but the only objective connection
to this Court was the alleged infringing acts of the Dutch company under the
Dutch portion of the European patent. Was this connection sufficient to drag
all ten defendants before the Dutch Court?
The Court
of Appeal in the Hague decided that Article 6(1) of the Brussels Convention
only allowed the patentee to combine multiple actions before the courts of the
place where the decision was made to market the infringing product, being the
decision making center of the group of companies concerned. This has been
described as the spider in the center of the web.
Following
this decision the Dutch courts therefore no longer accept that, when one among
a number of defendants was a Dutch company, the plaintiff could join all
co-defendants in an infringement action. This practice is now only possible if
the spider in the center of the web is Dutch.
In a
decision of February 16, 200020, the President of the Court of The
Hague reviewed a similar case but where the spider in the center of the web was
not domiciled in the European Union, but in the United States. The Brussels
Convention did not apply. Nevertheless, the question was resolved by applying a
solution that was basically similar. The President assumed
19 RD Prop.
intell. 1999, No. 95.
20 Schimed
/ Medtronic, unpublished
June 2002 Thrirty Years of Experience with the
Brussels Convention… 447
jurisdiction
over the US company on the basis of a provision of Dutch international private
law very similar to Article 14 of the French Civil Code . But he decided that,
with respect to this company (the American spider) he could only review the
facts of alleged infringement committed in The Netherlands.
2.2 Procedural challenge
to the use of the Brussels Convention in patent infringement litigation
In addition
to the conceptual challenge against the use of the Brussels Convention in
patent infringement cases, aimed at limiting the powers of a court in a State
which was not at the same time the domicile of the defendant and/or the
territory for which the patent had been granted, the late nineties have seen
the use of procedural tools aimed at preventing certain tribunals from
accepting jurisdiction: the anti-suit injunction and declaratory judgment actions of non-infringement.
2.2.1 Anti-suit injunction
The common
law has a procedural device unknown to Continental European lawyers, the
anti-suit injunction21. English Courts recognize the right of
parties to English litigation to be protected from a second set of vexatious or
oppressive proceedings in a foreign court. This protection is in the form of an
injunction, under penalty of law, against filing or pursuing an action in a
foreign court if that action could have been brought in an English court. The injunction
is not issued against the foreign judge: it is issued against the party threatening
foreign litigation.
This
technique has been used by English companies threatened with a kort geding hearing before the President
of the Court of The Hague where infringement of an English patent is in question
(along with infringement of a Dutch patent). The argument is that, consistent
with the prevailing view in England with respect to Articles 16(4) and 19 of
the Brussels Convention, infringement litigation of an English patent principally concerns the validity of
that patent. The English courts therefore have exclusive jurisdiction over the
case and any infringement litigation before a Dutch court is of necessity vexatious and oppressive, because in the
eyes of the English court, the Dutch court cannot have jurisdiction.
21 For a
comprehensive discussion of the topic refer to the presentation that Ms
Sandrine Clavel gave
to be research
group of the International Law on 25 February 2000, “Les anti-suit
injunctions en droit
international”.
448 Pierre
Véron JPTOS
This
sovereignist claim was almost successful in the English Court of Appeal
decision of Ford, October 27, 199722. The Court found that a
complaint of infringement of a British patent belongs to the exclusive
jurisdiction of the English courts. The Court of Appeal added, however "we
also concluded that the matter is not "acte clair" (sic)."
For this
reason the English Court of Appeal decided to refer the case on a question of
law to the European Court of Justice. Unfortunately for the development of
private international law, the parties settled, so the European Court of Justice
will not now rule on this issue.
However,
litigants from common law countries have, tried to export the anti-suit
injunction to the courts of continental Europe. Because the anti-suit
injunction is unknown to European civil law, applicants put a different label
on the claims seeking a ruling that they were "authorised" to pursue
the commercialization of the product that was alleged to infringe..
In a case
dealing with a patent for a vaccine against whooping cough23, the
President of the Tribunal of Brussels, having first found the court competent in
a preliminary ruling in référé on June 27, 1997, dismissed the patentee's complaint
on October 9, 199824, on the basis that the case lacked urgency as
the owner of the patent, on its part, had not brought a single action for an
injunction before another tribunal.
A judge of
the Tribunal de Grande Instance in Paris came to the same result, be it for
different reasons, in an order of August 11, 1997.
Fearing a
Dutch decision in kort geding likely
to prohibit the sale in France of devices for vascular surgery, the would-be
defendants brought an action asking for "authorization" to pursue
sales in France. The judge responded dryly that "there is no provision in French law allowing a judge to "authorize"
the commercialization of a product by a party while a procedure is pending,
with all the consequences that such an authorization implies".
These two
decisions have not had any significant follow up and it does not look like the
anti-suit injunction will be the ultimate weapon of the third millenium against
cross border injunction proceedings in infringement cases.
Will the
torpedoes be this weapon?
22 Ford
Dodge Animal Health / Akzo Nobel and Boston Scientific / Cordis.
23 Smithkline
Beecham / Connaught.
24 Boston Scientific
/ Expandable Grafts Partnership.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 449
2.2.2 Declaratory judgment actions of non-infringement
A second
procedural challenge against an oppressive use of the Brussels Convention has
been the filing of declaratory judgment actions of non-infringement.
The law of
many member states of the Brussels Convention recognizes an action for a
judgment that the manufacture or sale of a product, or the operation of a
process, does not constitute infringement of a specific patent. In practice,
for reasons discussed below, the filing of such an action can delay or suspend
a later infringement action in a different court.
In a
playful way, the term "torpedo" has been borrowed from the vocabulary
of naval warfare for any strategy allowing a company threatened by an
infringement action to take the initiative of an invalidity challenge of the
patent or a declaration of non-infringement25.
The filing
of a declaratory judgment action or a nullity action is not necessarily
dilatory. To the contrary, it is easy to imagine that a company taking the
initiative to nip the controversy in the bud by bringing the case to a single
court acts diligently and seeks to avoid the multiplication of procedures
before several different tribunals.
The filing
for a declaration of non-infringement before an infringement action is brought
is likely to create a lis alibi pendens
situation.
Article 21
of the Brussels Convention provides:
Where proceedings involving the same cause of action
and between the same parties are brought in the courts of different Contracting
States, any court other than the court first seised shall of its own motion
stay its proceedings until such time as the jurisdiction of the court first
seised is established.
Where the jurisdiction of the court first seised is
established, any court other than the court first seised shall decline
jurisdiction in favour of that court.
It follows
from Article 21 that if another tribunal is first seized of a nullity action or
a declaratory judgment action of non-infringement a second court must
disqualify itself from an infringement action on the same patent against the
same infringer (or, if the jurisdiction of the first court has been challenged,
suspend the action until the jurisdiction challenge has been decided).
25 Mario
Franzosi, Worldwide Patent Litigation and the Italian Torpedos: EIPR 1997, p.
382.
450 Pierre
Véron JPTOS
How has the
competition between declaratory judgment actions for non-infringement and
infringement actions been resolved:
·in countries where the declaratory judgment action
has been filed; and
·in countries where the infringement action has been
filed?
Declaratory judgment actions for non-infringement
in countries where they were filed
If some
companies saw the declaratory judgment action for non-infringement as a means
to consolidate the litigation of the alleged infringement of a patent in
several European countries, others have used it as a simple means to delay the
infringement action. For the latter reasons declaratory judgment actions of
non-infringement have sometimes been brought in courts whose docket load did
not allow them to handle the case speedily. Belgium and Italy are the courts
that have the reputation of being the most over-burdened courts in Europe.
But is it
possible to start a declaratory judgment action in any European court? Put
differently, which courts have territorial jurisdiction over such an action?
When the
defendant(the owner of the patent) is not domiciled in a European country, the
Brussels Convention does not apply. This situation arises frequently, in
practice, because a very large portion (if not the majority) of patents in force
in Europe belong to applicants from outside Europe (essentially North America
or Japan).
In these
cases, jurisdiction is defined by the private international law of the country
where proceedings are commenced. In France (and the situation appears to be the
same in the large majority of European civil law countries) the private international
law always allow a French company to resort to the French courts for a
complaint directed against a non-European. Thus, it is always possible for a
European company to play the domicile card by using its home court to bring a
declaratory judgment action for non-infringement against an American or
Japanese patentee.
But what is
the situation when the patentee is incorporated in a European country?
As there
are no provisions in the Brussels Convention that specifically address this
situation the general provisions of the Convention apply:
(a) the
courts of the domicile of the defendant (Article 2) or of one of the defendants
(Article 6(1)); or
(b) the
courts of the location where the illegal act took place (Article 5(3));
subject, of course, to Article 16(4) on exclusive jurisdiction over actions
aimed at the validity of an IP right.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 451
The
application of Article 2, which permits an action to be brought for declaratory
judgment of non-infringement before the tribunal of the defendant's domicile (that
is, in this procedural context, that of the patentee), does not raise any
problems.
In this
respect it is difficult to agree with the decision of the Civil Court of
Brussels of May 12, 200026 which, curiously, declared itself
incompetent to rule on a request for declaratory judgment of non-infringement
against a patentee incorporated in Belgium to the extent it involved the
non-Belgian parts of a European patent. It did so with reference to Article
16(4) of the Brussels Convention, finding that it did not have any jurisdiction
to rule on the question of infringement of a patent of another country. Nobody had
ever maintained that the question of infringement, if totally divorced from any
validity issue, could trigger the exclusive jurisdiction of the State that granted
the right.
This
decision notwithstanding, the courts of the domicile of the defendant are
competent, by virtue of Article 2 of the Brussels Convention, to rule on a
request for declaratory judgment of non-infringement.
If we now
consider Article 5(3) of the Brussels Convention, can we conclude that it
permits an action to be brought for declaratory judgment of non-infringement
before the court of the country covered by the patent at issue, or (if there
are several) in one of the countries covered by it? We might think that,
inasmuch as a declaratory judgment action is nothing but the mirror image of an
infringement action, the jurisdictional rules of one would also apply to the
other. This would mean that to the extent the courts of the place where
infringement takes place have jurisdiction over an infringement action under
Article 5(3) of the Brussels Convention, they also have jurisdiction over a
declaratory judgment action of non-infringement.
This is not
how the case law has developed.
On March 9,
1994 the Tribunal of Salerno27 declined jurisdiction over a request
for a declaratory judgment of non-infringement of an Italian patent, owned by a
German patentee, on the basis that Article 5(3) of the Brussels Convention,
which formulates an exception to a more general rule, could not apply unless an
unlawful act had in fact taken place.
26 Röhl
Enzyme GmbH / DSM, to date unpublished.
27 Cavi / Siemens unpublished.
452 Pierre
Véron JPTOS
The Court
of Appeal of The Hague came to the same conclusion several years later, on
January 22, 199828:
the exceptional nature of the jurisdiction based on
the location of the illegal act, provided for in Article 5(3) of the Brussels
Convention leaves no room for an interpretation that would bring within its
provisions an action of judgment on a fact that has not yet taken place and
that does not relate to the rights of the patent. Such an exclusive interpretation
would overly limit the realm of the rule of principle expressed in Article 2 of
the Convention.
It follows
from these decisions that a declaratory judgment action of non-infringement may
be brought in the country of the patent, if the patentee is domiciled in Europe,
only if that country is also the domicile of the defendant (or one of the
defendants, if there are several). It is not impossible that this jurisdictional
solution may have to be reconsidered after the Community Regulation No 44/2001
scheduled to replace the Brussels Convention enters into force . Effectively the
new text of Article 5(3) states as a basis for jurisdiction not only the location
of an illegal act that has in fact taken place, but also the location where an
illegal act has been threatened.
When a
court has accepted jurisdiction over a declaratory judgment action, only part
of the problem has been solved. Next, the court must decide whether the
applicable law permits a ruling on the request. Not all national laws recognize
an action for declaratory judgment of non-infringement and the ones that do
require that certain conditions be met.
Thus, for
example, the Tribunal de Grande Instance of Paris has stated on two occasions29
that Article L615-9 of the French Industrial Property Code requires that two
threshold conditions must be met prior to a declaration of non-infringement:
(a) the
potential infringer must demonstrate industrial exploitation within a Member State
of the European Union (the simple importation into Europe is not an industrial
exploitation if the product is manufactured outside Europe); and
(b) the
potential infringer must notify the patentee of the plan for industrial
exploitation, and not receive a response within 3 months).
28 Evans
Medical / Chiron: EIPR 1998, p. 61.
29 Boston Scientific
/ Expandable Grafts Partnership and Julie Palmaz, 23 october 1998; Dossiers
Brevets 1999,
II, 8. -
Yamanouchi / Biogen, 16 March 1999: Dossiers Brevets, 1999, III 6.
June 2002 Thrirty
Years of Experience with the Brussels Convention… 453
2.2.2.2 The impact of a declaratory judgment of non-infringement
in the country where an infringement action has
been filed.
An action
for declaratory judgment of non-infringement is of interest only if it leads
the tribunal seized with the infringement action to send the case back to the
court hearing the declaratory judgment, under Article 21 of the Brussels
Convention.
For the
time being, national courts have generally yielded to the obligatory character
of the provisions of Article 21 of the Brussels Convention on lis alibi pendens, be it sometimes with
apparent regret. Article 21 is different from Article 22 on related actions:
Article 21 leaves no room for discretion on the part of the court seized with
the later filed case: it must stay its proceedings.
The
Landgericht of Dűsseldorf stayed proceeding on February 27, 199830,
awaiting a decision in proceedings for a declaratory judgment of
non-infringement that was pending in Belgium. In the same case the Tribunal of The
Hague issued the same decision on April 29, 1998.
Nevertheless,
in a different case the Landgericht of Duesseldorf made it quite clear on July
8, 199931 that, even though it had to stay the proceedings on the
merits in the infringement case, nothing in Article 21 of the Brussels
Convention prohibited it from ruling on a request for a preliminary injunction.
The court added, pointedly, that the fact that Article 21 prevented it hearing
the case on the merits was one of the circumstances to be taken into account when
weighing the interests of the parties, as is customarily done in interlocutory
injunction cases.
A French
court has taken a position that is different than that of the courts of Dűsseldorf
and The Hague. This tribunal32 concluded that the infringement case
before it did not have the same object as the declaratory judgment action of
non-infringement that was before an Italian court. The Cour d'Appel of Paris, to
which this judgment was appealed, will have to ponder this question.
Finally,
the Oberlandesgericht of Dűsseldorf, in a decision of September 30, 199933
referred a question of law to the Court of Justice of the European Communities
before deciding whether or not it had to stay an infringement
30
Connaught / Smithkline Beecham: 4 0 127 / 97.
31 General Hospital
/ Bracco and Byk Gulden.
32 TGI
Paris, 3rd Chamber, 3rd Section, 28 April 2000.
33 JOCE No.
C34, 5 February 2000, p. 11; W. Von Meibon and J. Pitz: “The Belgian Torpedo
has reached
the ECJ”
Patent World No. 118, December 1999, p. 10.
454 Pierre
Véron JPTOS
action
pending a decision by the Belgian tribunals in an action for declaratory
judgment of non-infringement. In any event, the referred issue does not at all question
the principle of staying the proceedings. It relates to technical details of
the identity of the court seized with the first action, some of which are
specific to German civil procedure (which does not consider an action formally
filed until after certain formalities have been complied with).
It appears,
however, that the Court of Justice will not now rule on this question: the case
was taken off its docket on April 6, 2000.
Conclusion
30 years of
using the Brussels Convention in patent infringement proceedings can be
summarized as follows:
·the courts of the continent (at least those of The
Netherlands, Germany and France) do not hesitate, in particular in the context
of preliminary injunctions of infringement, to rule on infringement complaints
based on patents granted for territories other than where they sit, applying of
course to these complaints the substantive law of the country concerned;
·the English courts have resolutely remained outside
this trend, reasoning essentially that an infringement action on a foreign
patent concerns in general the validity of the right, for which the combination
of Articles 16(4) and 19 of the Brussels Convention exclude them from assuming
jurisdiction;
·these days, the more lively debates no longer focus
on these questions of principle, on which the national case law is now well
settled. Instead, they focus on the procedural rules of their application: the choice
of forum under Articles 5(3) and 6(1) of the Brussels Convention and co-ordination
of parallel proceedings brought in several states on patents relating to the
same invention (anti-suit injunctions and declaratory judgment of
non-infringement).
A certain
amount of case law development can be expected on these procedural questions
but it will not modify in any fundamental way the principle pronounced in
Article16(4) of the Brussels Convention, that of exclusive jurisdiction a
question of validity for the courts of the State that granted a patent. No
important changes can take place without a fundamental change to the rules that
are in force.
No such
change is on the horizon for the general provisions of civil procedure. The
proposed Community Regulation on juridiction and the recognition and execution
of decisions in civil and commercial matters, wich
June 2002 Thrirty
Years of Experience with the Brussels Convention… 455
was published
on July 14, 1999 by the Europeen Commission, and scheduled to replace the
Brussels Convention, does not bring any important innovation to the questions discussed
in this paper34.
The change
may come from the provisions in the area of patents.
It could
come, first of all, from a protocol on the regulation of patent litigation for
European patents, which will be proposed in 2001 for signature by the Member
States of the EPO, and which would create an autonomous judicial system.
It may also
come from a future Regulation on the Community Patent, the preparation of which
was announced by the European Commission in July 2000.
In any
event, the interaction of these systems with the Brussels Convention is yet to
be developed.
34 See also “Innovations apportées dans le
contentieux de la propriété industrielle par le Règlement” No. 44/2001, 22
December 2000 : RD propr. intell. 2000, No. 121.