Honey, I stopped the infringement – European wide patent injunctions

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A recent decision by the Court of Justice of the European Union (CJEU) has opened up the possibility that a national court in one European country could possibly grant an interim protective measure potentially having effect across the whole of Europe, such as an interim interdict (injunction), in European patent infringement proceedings.  A European patent is a bundle of national patents which have to be enforced nationally in the relevant court of each country in which the patent has been validated as currently it is accepted broadly in the UK that it is not possible to enforce them on a European wide basis (in the sense in all countries in which the patent has been registered nationally).

This recent decision however indicates that in certain circumstances it may be possible for an interim injunction to be granted with pan-European effect.

A brief background

In the case of Solvay SA v Honeywell Fluorine Products Europe BV and others Solvay raised patent infringement proceedings in the Dutch court against 3 Honeywell companies for infringement of the national patents making up its European patent. One of the Honeywell companies was established in the Netherlands and the other two were established in Belgium. The alleged infringing activity was being carried out by both companies in relation to the same national patents which made up the European patent and which were registered in around 10 European countries (but significantly not in the Netherlands or Belgium in which these companies were based). In the course of the proceedings before the Dutch Court, Solvay sought a wide interim injunction in respect of all 10 countries in which the European patent was nationalised, to prevent the alleged infringing activity, pending the outcome of a full trial.  Honeywell then raised a counter argument that the European patent which it was claimed to infringe was invalid, even although it had not as yet raised a formal counterclaim seeking to invalidate the patent.

The issues raised and the CJEU’s decision

The case raised some interesting issues and various questions were referred to the CJEU for guidance. The 2 key questions which were answered were as follows:

  • Firstly, the CJEU accepted that there was in principle a risk of irreconcilable judgments if it was necessary to raise such interim infringement proceedings in both the Netherlands and Belgium. The situation here was that the Dutch and non-Dutch defenders were accused of the same allegedly infringing acts in respect of the same national patents, albeit in force in other member states. On this point, the CJEU ruled that the same national court could deal with such interim infringement proceedings where the court had jurisdiction against at least one defender. It is always up to the national court to determine if the claims are “so closely connected that it is expedient to hear and determine them together” but it makes sense to do so where the same national patents are in play.
  • Secondly and potentially of greater significance, could an interim injunction be granted and applied throughout Europe even although the defender counterclaimed that the alleged infringed patents were invalid? Honeywell would require to raise such invalidity proceedings in one of the countries in which the patent was registered and thus the Dutch Court had no jurisdiction to make such a substantive ruling on invalidity. Issues of validity have to be dealt with in the court of the member state in which the patent is registered in terms of the Brussels Regulation. Looking at the relevant competing provisions of the Brussels Regulation (Articles 22(4) and 31)  the CJEU ruled that as far as interim measures were concerned the Dutch court should not be prevented from granting such interim measures against infringement just because issues of validity were raised and which would in substance have to be dealt with by other national courts. It should be open to the Dutch court to make an interim assessment over how the court in another European country would rule on the issue of validity.  If the Dutch court considered that there was a ‘reasonable, non-negligible possibility” that the patent in suit would be declared invalid, then it should not grant the interim injunction. However, if there is no such risk, the Dutch court could in theory grant the interim injunction in all of the 10 countries in which the national patents were registered.

So what could this mean for owners of European patents?

This decision may be a welcome one for the owners of European patents because it confirms in principle at least that national Courts can rule on pan European patent infringement cases on an interim measure basis involving defenders which are based in different countries. This could in theory make enforcement of a European patent on an interim basis much more cost effective if it allows pan-European relief in respect of the infringement of the same national patents.  This is particularly so bearing in mind that often disputes resolve after such an interim measure is granted. Furthermore, the guidance means that alleged infringers of European patents cannot necessarily avoid such interim injunctions being granted simply by raising invalidity arguments where the initial assessment is that the attack has little or no prospects of success.

Does this apply to other areas of IP?

The Honeywell case only concerned interim infringement proceedings in relation to a European patent. However, there is authority for a similar application of this point of law in relation to infringement of a Community Trade Mark. In last year’s case of DHL Express v Chronopost the CJEU ruled that an injunction granted in one member state in respect of infringement of a Community trade mark can potentially have effect throughout the rest of Europe (albeit it would generally have to be demonstrated that there were infringing activities taking place across the whole of the Community as opposed to only in a few member states in which case the injunction would likely be limited to such member states). In addition the distinction is that trade marks can be registered and enforced Community wide, which is not the position with patents at present.

At the end of the day it remains to be seen how this guidance from the CJEU is applied nationally by the Dutch court and indeed by other national courts within Europe. Will it signal the start of pan-European interim injunctions in patent cases or be limited to the specific facts of this case? The potential seems to be there for the former but it is far from certain and in cases of urgency it may well be the case that patent owners may be wise to take action on a national basis.

The CJEU ruling also casts an interesting light on the ongoing political and professional debate about the establishment of the Unitary Patent and Unitary Patent Courts within Europe, hailed as the way to enforce patents on such a European wide basis.

Robert BuchanMark Cruickshank

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