In a landmark judgment today, the European Court of Justice (ECJ) held that EU member state courts are now allowed to rule on the infringement of non-EU patents, as well as award damages and injunctions, as long as the defendant is domiciled in that EU member state court (February 25, 2025 ip fray article).
The ruling (now available in English) clarifies the scope of Article 24(4) of Regulation No. 1215/2012 on jurisdiction in patent disputes. As ip fray reported earlier today, this means that as long as a defendant is domiciled in the territory of a court in an EU member state (or in UPCland), that defendant (and any properly joined co-defendant that aids and abets the infringement) may be ordered to pay damages and/or to cease the infringement even of a patent that is valid outside the territory for which the court is traditionally responsible, regardless of an invalidity defense having been raised, though the decision applies only inter partes and will not result in the deletion of foreign patents from another country’s patent register (or modification of claims).
In practice, this means two things:
- the UPC can order injunctions against defendants based in UPCland (or properly joined co-defendants) and/or award damages with respect to the non-UPCland parts (such as the UK and Turkish parts) of EPO-granted patents, and
- national courts in EU member states such as the Munich I Regional Court or The Hague District Court can order injunctions and/or award damages against such defendants with respect to foreign patents, which would even include (for example) U.S., Chinese or Brazilian patents.
Initial reactions to the ECJ ruling have already started flooding in and they are very mixed, to say the least. ip fray interviewed patent attorneys in the EU, U.K. and Asia on the ECJ’s ruling – and here is what they had to say:
‘Will revive cross-border patent litigation’
Dr. Roman Sedlmaier of IPCGS in Munich, who was counsel for BSH, told ip fray that the ruling is a “really significant decision that turns the whole patent litigation market on its head”. Since the ECJ’s Gat v. LuK decision in 2006 (PDF), patents could only be enforced nationally. But today’s ruling means patents that were “previously irrelevant because they could not be enforced there – for example, for purely practical reasons (countries in Africa or Central and South America/countries in Asia), can now be enforced in the EU, provided the defendant is domiciled in the EU,” he noted. Meanwhile, for patents granted outside the EU, the principle applies that the court of the defendant’s domicile can also decide on validity.
“This means that patents that were previously worthless now may have considerable value – this has a huge impact on the pharmaceutical and mobile phone industries in particular,” Dr. Sedlmaier added.
Mattias Malmstedt, who also helped litigate the case as a barrister in Sweden, said he is “delighted” that both the Advocate General and now the CJEU followed his team’s argumentation, adding:
“This case will for sure have a great impact on cross-border strategies in patent litigations.”
Thomas Becher at Hoffmann Eitle noted that there had been an initial wave of excitement among patent practitioners, triggered by national courts hearing infringement actions not only for their domestic IP, but also for “foreign” counterparts, and issuing injunctions for foreign territories. However, the wave subsided relatively quickly once GaT v. LuK came out (and was confirmed by Solvay SA v. Honeywell.
In Mr. Becher’s view, today’s decision will “revive” cross-border patent litigation:
“It will revive such litigation to an extent that national courts may well become competitors to the UPC, provided that the seat of the defendant is in one of the EU member states. Until very recently, the UPC seemed to have been the only forum in which a single action could potentially result in a cross-border injunction. It has now lost this unique selling point. With its decision, the court has added a layer of complexity to advising clients, be it patent owners or potential defendants.”
He added that patentees will enjoy that the court has put “another arrow in the cleaver”, for the defendants taking preventive action has become still more expensive.
Pinsent Masons partner Jules Fabre agreed that this decision will make the UPC an even more attractive venue for patentees, and that it “validates” the decision reached in Fujifilm v. Kodak last month (January 28, 2025 ip fray article).
‘Could lead to significant chaos’
In other jurisdictions, as noted in our earlier coverage of the ruling, some attorneys are not as “amused” by the ruling.
In China, for example, Dong Ning at GEN Law Firm believes the ruling is “astonishing” and that Chinese courts will certainly not welcome it. Chinese courts have already had jurisdictional conflicts with the UK and other courts over previous SEP disputes, so it’s hard to imagine that they would “tolerate EU national courts issuing injunctions or awarding damages based on Chinese patents”, he said.
Mr. Ning wondered if, in response, Chinese courts might claim jurisdiction over infringement on EU patents:
“If that were to happen, it would lead to significant chaos. I personally think this will bring many practical problems.”
These included:
- The proportion of Chinese patents declared invalid in invalidation proceedings is quite high; Chinese courts generally wait for the results of invalidation proceedings in patent infringement lawsuits and rarely grant preliminary injunctions.
- It’s doubtful whether all the EU national courts would exercise the same caution in issuing preliminary injunctions—not to mention that many of China’s rules differ from those of EU countries, such as the allocation of the burden of proof and punitive damages up to five times the actual damages.
- In case the defendant in the EU proceedings files a non-infringement declaratory judgment in a Chinese court, it would mean that Chinese and EU national courts would both be adjudicating infringement of the same Chinese patent, intensifying the conflict.
But Mr. Ning also acknowledged that the ruling provides an additional option for patentees. For example, Chinese companies lacking suitable EP patents now have the opportunity to assert Chinese patents against European competitors or the European subsidiaries of Chinese competitors before EU national courts, he said. However, he added, will the EU national courts be able to cope with large numbers of these cases? “In 2023 alone, Chinese courts accepted as many as 44,711 first-instance patent cases.
Another Chinese patent lawyer, speaking on the condition of anonymity, told ip fray that the ruling is a “breakthrough” as he is unaware of any country or region that has such a far-reaching injunction. He noted that the U.S. is known to exert extraterritorial jurisdiction in patent and trade secret cases but it is based on U.S. patents and trade secrets – not non-US rights. And the same goes for Chinese courts, he said.
The Chinese attorney believes the decision has “gone too far”, adding:
“It subverts the established principle that IP rights are territorial; so are the court’s ability to grant injunctions. This could prompt other countries to do the same. Then the world will be in disarray.”
Singh & Singh’s Ashutosh Kumar in India noted that while patents are “territorial in nature”, the way technologies are evolving and industries changing, patent disputes are increasingly becoming transnational. Courts across the world are therefore grappling to adapt their existing legal regimes to deal with such issues, he said.
However, Mr. Kumar added, while the ECJ’s recent ruling seems to be an attempt to do so, “whether and to what extent such one-stop shop dispute resolution mechanism would be practical and efficient, only time will tell”.
‘Could be bifurcation on steroids’
UK-based Gareth Williams at Marks & Clerk noted that while the recent UPC decision in Fujifilm v. Kodak provoked a lot of discussion regarding the long arm of UPC jurisdiction, in one sense it was “actually [an] unsurprising” decision. The UPC has jurisdiction to decide the infringement of EPO patents in non-UPC states, in line with Brussels Ibis Regulation, he said.
However, this latest ECJ decision potentially invites additional options for forum shopping in the selection of national courts where infringement is multinational, Mr. Williams said. He added:
“For UK companies enforcing their patents, it will be interesting to see whether potentially lower-cost jurisdictions are selected in preference to UK or UPC courts, particularly if non-EPO patents are in play.”
The ruling makes life easier for patentees, according to Dublin-based Peter FitzPatrick at Powell Gilbert (who mainly practices before the UPC and the English Courts). “There are a number of U.S. companies whose non-U.S. operations are run out of Ireland [and which] can now be sued here for global patent infringement,” he noted.
And, when it comes to suing on other EU member state patents, the defendant will have to bring parallel revocation actions in all relevant courts, he said, adding:
“It could be bifurcation on steroids.”
From a UK perspective, Mr. FitzPatrick said this ruling upholds the Fujifilm v. Kodak decision and that he expects that defendants sued in the UPC are likely to bring UK proceedings for revocation and/or seek DNIs.
He added:
“It will be interesting to see what the English judges make of this decision. We are sure to see applications for anti-suit relief.”