Euro-Counsels

Patent disputes in Europe are grounded on a complex system, with major differences from one European country to another. We will briefly study procedures of infringement and validity of patents in France, England and Germany.

In England and Wales, the claimant can chose to introduce the proceedings before any County court, or before the Royal Courts of Justice. This is subject to the amount of claims at stake, and the complexity of the case. However, the first seized court will not necessarily be the one that will examine the case. The majority of the cases will be transferred automatically before the court where the defendant has its domicile, if he files a defense.

The case can be transferred to another court for some other reasons. This will depend of claims filed by other parties, and of the judge in charge of the case.

The High court of justice is organized in three divisions (Queen's Bench Division; Chancery Division; Family Division), which deal with various types of cases. Within the chancery division exists a patent division, which has exclusive jurisdiction for the procedures relating to patent infringement.

In Germany, contrary to France, the questions of patent counterfeiting and validity are subject to distinct procedures, before two independent courts. The civil courts (Landgerichte in first degree, and Oberlandesgerichte in appeal) are qualified only for counterfeit appraisal, not for validity of patents.

The latter concerns the Patent Federal Court (Bundespatentgericht) in first degree, and the Patent Federal court in appeal (Bundesgerichthof). Under the provisions of the German civil procedure Code (ZPO), the place of jurisdiction, ratione loci, corresponds to the defendant's residence. For a company or a legal person, the domicile shall be the place where the head office is located.

For patent validity, the Brussels Convention of 27 September 1968 (implemented in the Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters), states in its article 22 that the competent courts for such actions are : “the courts of the Member State in which the deposit or registration has been applied for”.

In a decision rendered the 13 July 2006, the European Court of Justice in the case C-539/03 (Roche Nederland BV vs. Primus/Goldberg) has decided that the rule of the exclusive competence “ could not prevent at least a partial fragmentation of the patent proceedings, since, as is frequently the case in practice and as is the case in the main proceedings, the validity of the patent would be raised indirectly making pan-European litigation almost impossible from now on.

This rule on the place of jurisdiction cannot be derogated even by a contract between the parties.