Opinion of Advocate General Emiliou delivered on 22 February 2024.

• Jurisdiction: European Union
• Date: 22 February 2024
• Court: Court of Justice (European Union)

Provisional text

OPINION OF ADVOCATE GENERAL

EMILIOU

delivered on 22 February 2024(1)

Case C‑339/22

BSH Hausgeräte GmbH

v

Electrolux AB

(Request for a preliminary ruling from the Svea hovrätt (Svea Court of Appeal, Stockholm, Sweden))

(Reference for a preliminary ruling – Area of freedom, security and justice – Judicial cooperation in civil matters – Jurisdiction and the recognition and enforcement of judgments in civil and commercial matters – Regulation (EU) No 1215/2012 – Exclusive jurisdiction – Proceedings concerned with the validity of patents – Article 24(4) – Scope – Infringement proceedings – Invalidity of the patents allegedly infringed raised as a defence – Consequences on the jurisdiction of the court seised of the infringement proceedings – Patent registered in a third State – ‘Reflexive effect’ of Article 24(4))

I. Introduction

1. The present request for a preliminary ruling of the Svea hovrätt (Svea Court of Appeal, Stockholm, Sweden) concerns the interpretation of Regulation (EU) No 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. (2)

2. By its questions, the referring court seeks clarification, first, about the jurisdiction of the courts of the Member States of the European Union, under that regulation, to hear actions concerned with the infringement of patents registered in other Member States, particularly where the validity of the patents allegedly infringed is challenged by the opposing party. As I will explain in this Opinion, significant uncertainty surrounds that question as a result, notably, of an ambiguous decision delivered by the Court a long time ago, namely the judgment in GAT. (3) The present reference provides the Court with the opportunity to confirm one of several possible readings of that decision.

3. Secondly, the Court is invited to clarify whether Member State courts have jurisdiction to hear proceedings concerned with the validity of patents registered in third States. In that respect, the Court will have to address the delicate and long-standing issue of whether certain rules of the Brussels I bis Regulation apply to ‘external’ situations in the same way as they apply to ‘intra-EU’ conflicts of jurisdiction, or have a ‘reflexive effect’, as will be explained in this Opinion.

II. Legal framework

A. International law

4. The Convention on the Grant of European Patents, which was signed in Munich (Germany) on 5 October 1973 and entered into force on 7 October 1977, in the version applicable to the facts in the main proceedings (‘the EPC’), establishes, as stated in Article 1, ‘a system of law, common to the Contracting States, for the grant of patents for invention’.

5. Article 2(2) of the EPC provides that ‘the European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State’.

B. The Brussels I bis Regulation

6. Article 4(1) of the Brussels I bis Regulation states that ‘subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State’.

7. Article 24 of that regulation, entitled ‘Exclusive jurisdiction’ provides, in its paragraph 4:

‘The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:

…

(4) in proceedings concerned with the registration or validity of patents …, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for [or] has taken place …

Without prejudice to the jurisdiction of the European Patent Office under [the EPC], the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State’.

C. Swedish law

8. Paragraph 61, second subparagraph, of the Patentlagen (1967:837) (Patents Law) provides that ‘if an action concerning patent infringement is brought and the person against whom the action is brought claims that the patent is invalid, the question of invalidity may be considered only after an action to that effect has been brought. The court shall order the party claiming that the patent is invalid to bring such an action within a specific period’.

III. Facts, national proceedings, the questions referred and the procedure before the Court

9. BSH Hausgeräte GmbH (‘BSH’) is the holder of European patent EP 1 434 512, protecting an invention related to vacuum cleaners, granted for (and accordingly validated in) Austria, France, Germany, Greece, Italy, the Netherlands, Spain, Sweden, Türkiye and the United Kingdom.

10. On 3 February 2020, BSH brought an action against Aktiebolaget Electrolux (‘Electrolux’), a company registered in Sweden, before the Patent- och marknadsdomstolen (Patents and Market Court, Sweden). That action is based on Electrolux’s alleged infringement of EP 1 434 512 in the various States for which it had been granted. In that context, BSH seeks, inter alia, an injunction prohibiting Electrolux from continuing to use the patented invention in all those States and damages for the harm caused by that unlawful use.

11. In its statement of defence, Electrolux contended that the Patent- och marknadsdomstolen (Patents and Market Court) should dismiss that action to the extent that it concerns the Austrian, French, German, Greek, Italian, Netherlands, Spanish, Turkish and UK parts of EP 1 434 512 (‘the foreign patents’). In that respect, Electrolux pleaded, inter alia, the invalidity of the foreign patents.

12. Furthermore, Electrolux argued that, in the light of that defence, the Swedish courts have no jurisdiction to hear and determine the infringement proceedings to the extent that the foreign patents are concerned. In that respect, the infringement proceedings should be regarded as ‘concerned with the … validity of patents’ within the meaning Article 24(4) of the Brussels I bis Regulation and, pursuant to that provision, the courts of the different Member States where those patents have been validated are exclusively competent to hear the case in so far as ‘their’ patent is concerned.

13. In response, BSH submitted that the Swedish courts have jurisdiction to hear the infringement proceedings pursuant to Article 4(1) of the Brussels I bis Regulation, as Electrolux is domiciled in Sweden. Article 24(4) thereof is not applicable, since the action brought by BSH is not, in itself, ‘concerned with the … validity of patents’ within the meaning of that provision. Moreover, pursuant to the second subparagraph of Paragraph 61 of the Patentlagen, where the defendant pleads, in such infringement proceedings, that the patent is invalid, the court seised must order him or her to bring a separate action to that effect before the competent courts. In this case, Electrolux should thus bring separate invalidity proceedings before the courts of the different States for which the foreign patents were granted. In parallel, the Patent- och marknadsdomstolen (Patents and Market Court) could determine the infringement matter in a provisional judgment and then stay proceedings pending a final judgment in the invalidity proceedings. Finally, with respect to the Turkish part of EP 1 434 512, BSH submitted that Article 24(4) of the Brussels I bis Regulation is, in any case, not applicable to patents issued by third States and therefore it cannot have any bearing on the jurisdiction of the Swedish courts.

14. By decision of 21 December 2020, the Patent- och marknadsdomstolen (Patents and Market Court) dismissed the action in respect of the infringement of the foreign patents. While, at the moment of bringing the proceedings, the Swedish courts had jurisdiction to hear the action under Article 4(1) of the Brussels I bis Regulation, Article 24(4) of that regulation became applicable when Electrolux pleaded the invalidity of those patents as a defence. Under that provision, the courts of other States have exclusive jurisdiction to consider the validity issue, and as that issue is crucial for the outcome of the infringement action brought by BSH, the national court declared that it lacked jurisdiction over the proceedings to the extent that the foreign patents are concerned. That court also declined jurisdiction with respect to the Turkish patent, taking the view that Article 24(4) expresses an internationally accepted principle of jurisdiction, whereby only the courts of the State that granted a patent can adjudicate its validity.

15. Subsequently, BSH filed an appeal against that decision before the Svea hovrätt (Svea Court of Appeal, Stockholm), maintaining that Article 24(4) of the Brussels I bis Regulation does not apply to actions for infringement of patents. Nevertheless, because Electrolux pleads invalidity as a defence, jurisdiction is distributed: the Swedish courts have jurisdiction under Article 4(1) to rule on the infringement matter, while the validity issue must be determined by the courts of the States of registration under Article 24(4). The Swedish courts are also competent with respect to the Turkish patent on the basis of Article 4(1) of that regulation. Indeed, the jurisdiction of the State where a defendant is domiciled is a recognised principle in international law. Electrolux maintained, for its part, that Article 24(4) applies to infringement proceedings in which invalidity is pleaded as a defence. The Swedish courts have no jurisdiction over the proceedings as a whole, since the infringement and validity issues cannot be separated.

16. It is in those circumstances that the Svea hovrätt (Svea Court of Appeal, Stockholm) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Is Article 24(4) of [the Brussels I bis...