Cross Border IP Disputes

Cross-Border Jurisdiction
Over Intellectual Property

Rights Disputes – an
Overview
Patrick Wautelet
Outline
I. Private International Law - A refresher

II. Litigating IP Disputes – An Introduction
III. Litigating IP Disputes – Exclusive Jurisdiction
IV. Litigating IP Disputes – Consolidation of
Complex Disputes
V. Litigating IP Disputes – Suing At the Place of
Infringement
VI. Litigating IP Disputes – Parallel Proceedings
First session : Private
international law in a
nutshell
I. What is at stake?
• Private international law deals with

cross-border situations involving
'private' law
• 1st element : cross border nature (no
definition – intuition)
• IP-rights are today very often (but
not always) cross-border
• Example 1 : portfolio of patent rights

for new family of drugs developed by
various companies of a pharma group
headquartered in Belgium/UK/
Germany but held by Irish subsidiary
for tax reasons... (or by a Belgian
subsidiary? See Law of April 27th, 2007 relating
to ‘patent royalties deduction' that allows Belgian
companies to deduct 80% of patent royalties
from their taxable income).
• What if infringement of the patents by

a French competitor?
• What if Irish subsidiary grants a
licence on patent to Italian company,
which does not pay royalties?
• Example 2 : dispute over the sale by

an auction house in Paris of a couple
of works by Salvatore Dali : who is
entitled to the resale right under
Directive 2001/84?
• When he died, Salvador Dalí left five
heirs at law. He also appointed the
Spanish State as sole legatee by will.
Those rights are administered by the
Fundación Gala‑Salvador Dalí
• Directive 2001/84 :
– Art. 1(1) : ‘Member States shall provide, for the benefit of the author of
an original work of art, a resale right, to be defined as an inalienable
right, which cannot be waived, even in advance, to receive a royalty
based on the sale price obtained for any resale of the work, subsequent
to the first transfer of the work by the author.’
– Art. 6(1) : ‘The royalty provided for under Article 1 shall be payable to
the author of the work and, subject to Article 8(2), after his death to
those entitled under him/her
• Dali case : dispute between legal heirs

(children) and Dali Foundation concerning
payment of resale rights
• Directive leaves it to MS to determine who are
the heirs
• Under French law : for the purpose of directive,
heirs are legal heirs, to the exclusion of
legatees and successors in title (see art. L.
123‑7 of the IPC)
• Under Spanish law : resale right are granted to
whoever is entitled to estate under civil law
• Dali case : should we apply Spanish or

French law?
• In the same line : infamous Mein

Kampf, authored by A. Hitler :
copyright held by the State of Bayern
(because at the time of his death,
Hitler was domiciled in Munich – his
entire estate went to Bayern)
• May State of Bayern attempt to limit or
prohibit publication of the book in
Japan? (copyright held by Bayern will
terminate on December 31st, 2015 –
70 years after death of 'author')
• For some questions, national laws converge

• E.g. duration of copyright : common standard of
'life + 70 years'
– Art. 1 of Directive 2006/116/EC of 12 December
2006 on the term of protection of copyright
– Belgian law : art. 2 § 1 Copyright Act 1994
– French law : art. L-123-1 Code de la propriété
intellectuelle
– US law : § 302 Copyright Act (Title 17 US Code))
• For other questions, difference in

national law
• E.g. do authors have a 'moral' right on
their work and what is the scope/effect
of this right? Can the author's heirs
exercise the moral rights? Can the
moral rights be contracted out? ―›
major difference between 'European'
approach and US approach
• Moral rights : art. 6bis Bern Convention :

« Independently of the author’s economic
rights, and even after the transfer of the
said rights, the author shall have the
right to claim authorship of the work and
to object to any distortion, mutilation or
other modification of, or other derogatory
action in relation to, the said work, which
would be prejudicial to his honor or
reputation” ―› no mention of right of
first divulgation...
• Implementation Bern Convention in the US :

“The existing U.S. Law includes various
provisions of the Copyright Act and Lanham Act,
various state statutes, and common law
principles such as libel, defamation,
misrepresentation and unfair competition which
have been applied by courts to redress author's
invocation of the right to claim authorship or the
right to object to distortion”
• Compare with detailed provisions on moral rights under French

law (artt. L-121-1 ff Code de de la propriété intellectuelle)
– Art. L-121-2 : 'Droit de divulgation' (“L'auteur a seul le droit de
divulguer son oeuvre. ... il détermine le procédé de divulgation
et fixe les conditions de celle-ci”.)
– Art. L-121-4 : droit de repentir (“Nonobstant la cession de son
droit d'exploitation, l'auteur, même postérieurement à la
publication de son oeuvre, jouit d'un droit de repentir ou de
retrait vis-à-vis du cessionnaire.”)
– Etc.
• Example 3 : Warner Brothers Inc. v

Christiansen (ECJ, Case 158/86) :
Danish citizen buying James Bond
movie in the UK (on a videocassette)
and renting the cassette in DK. Under
English law (at that time), owner of the
work has no right in the rental of the
work, while under Danish copyright
law, owner may authorize / refuse
rental + collect royalties when
cassette is rented.
• 2nd element : private international

law deals with cross-border
situations involving 'private' law - as
opposed to 'vertical' relations dealt
with by international law
e.g. : can the holder of a copyright
bring proceedings against a
company operating a search engine
which archives copies of web-sites
featuring copyrighted materials?
• The mere fact that a public authority is involved

in the proceedings does not exclude the
application of private international law rules
e.g. : proceedings brought by a third party to
obtain that a patent be declared void; end result
of the proceedings will be a decision ordering that
the register be modified to record the annulment
of the patent
II. Three questions
• 1st question : jurisdiction

• Not prescriptive or enforcement
jurisdiction, but adjudicatory jurisdiction
(in which circumstances may a court
entertain proceedings relating to a dispute
which has some connection with foreign
country(-ies))
• e.g. can a French company holding a
German patent seize a court in Germany
to get injunction + damages against a
Belgian company allegedly infringing the
patent?
II. Three questions

• e.g. can an English company bring
proceedings in Belgium against a Belgian
company in order to claim ownership of a
European Patent application (not yet
granted) filed by the Belgian company,
even if the cooperation agreement
concluded between the 2 parties (and
which plaintiff alleges defendant has
breached by filing the application)
provides for the jurisdiction of English
courts?
II. Three questions

I. In Europe : Brussels I Regulation (44/2001)
in civil and commercial matters (in force
since 01/03/2002)
II. Hierarchy of rules of jurisdiction : from
domicile of the defendant (art. 2) to the the
court chosen by parties (art. 23)
III. Very important role of the ECJ : abundant
case law, directly relevant for IP-disputes
(e.g. Roche case)
II. Three questions
• 2nd question : applicable law

I. Basic idea : Courts do not always
apply their own law, but may apply
foreign law in given circumstances
II. Which law applies? 'Conflict of laws
rules' (e.g. a patent is governed by
the law of the country which granted
the patent)
II. Three questions

I. Determination of applicable law
becomes moot if there is a
harmonised uniform set of rules for
the protection of ip-rights
II. Large number of important
conventions in IP-law. However,
these conventions do not introduce a
complete uniform set of rules
II. Three questions

• e.g. 1896 Bern Convention on Copyright :
Convention does not introduce a
harmonised uniform statute on copyright.
What it does is i) establish a system of equal
treatment (= rules of international protection
granting protection, under the national law of
a Contracting state, to authors / works of
another Contracting State), ii) provide strong
minimum standards for copyright law (=
guidelines for the provisions of the national
copyright statutes)
II. Three questions

• e.g. harmonization of copyright law in
the EU :
- Directive 91/250/EEC of 14 May 1991 on the legal
protection of computer programs
- Directive 2006/116/EC of 12 December 2006 harmonizing
the term of protection of copyright – ensuring a single
duration for copyright and related rights in the EU, i.e. 70
years from the death of the author/post mortem auctoris
- Directive 2004/48/EC ... of 29 April 2004 on the
enforcement of intellectual property rights ('IP Enforcement
Directive')
II. Three questions

e.g. harmonization of copyright law in the
EU :
- Directive 2001/29/EC ... of 22 May 2001 on the harmonisation of
certain aspects of copyright and related rights in the information
society (Information Society Directive)
Various Directives, but at the end of the day

only a 'piecemeal harmonization' : no
comprehensive 'EU law on copyright'
II. Three questions

In the absence of a harmonized substantive law,
harmonization can concern conflict of laws rules:
e.g. law applicable to a contract whereby holder of a
patent grants a licence to another party to use the
patent to manufacture a product : applicable law
determined on the basis of the same rules in 27 EU
Member States thanks to the Regulation 593/2008
('Rome I' Regulation)
II. Three questions
• 3rd question : Foreign

judgments
I. What is the value in Belgium of a
judgment issued by a court in the
UK?
II. Can foreign judgment be used to:
1. Attach assets (enforcement)
2. Preclude further litigation (res
judicata effect)
II. Three questions
• Side questions:
I. Service of process / taking evidence
abroad
II. Legalization of foreign documents
III. Possibility to request information on
foreign law from foreign authorities
IV. Etc.
III. Where do we find the answer?
• No IP-specific regime except in a

few cases: e.g. international rules
I. Article 5-II Bern Convention : “the extent of protection, as
well as the means of redress afforded to the author to
protect his rights, shall be governed exclusively by the laws
of the country where protection is claimed”
II. Article 16 EU Regulation 40/94 on Community Trade Mark :
law applicable to the transfer, or pledging (or other rights
in rem) of a community trade mark
• No IP-specific regime except in a

few cases: e.g. European rules
I. Article 22-2 Brussels I Regulation (specific rule of
jurisdiction in relation with disputes regarding the validity
of registered IP rights)
II. Art. 8 of the Rome II Regulation (Reg. 864/2007) : “The law
applicable to a non-contractual obligation arising from an
infringement of an intellectual property right shall be the
law of the country for which protection is claimed »
• No IP-specific regime except in

a few cases: e.g. European
rules
I. European Patent Convention : see the Protocol on
Jurisdiction and the Recognition of Decisions in
Respect of the Right to the Grant of a European
Patent, of 05.10.1973 – specific rules of jurisdiction
aimed at disputes relating to the « the right to the
grant of a European patent in respect of one or more
of the Contracting States”
• No IP-specific regime except

in a few cases: e.g. national
rules
I. Article 93 Belgian Code of PIL (law
applicable to intellectual property rights)
II. Article 79 Belgian 1994 Copyright Act
(national treatment afforded to foreigners
holding copyrights)
• In majority of cases :
application of general rules
of private international law
in the absence of a specific
IP-regime
• Distinction between national

and international rules
I. Int'l rules : e.g. Brussels I
Regulation (harmony)
II. National rules : e.g. Code PIL 2004
(no harmony; importance of
jurisdiction)
Litigating IP-disputes :
1/Introduction
I. The starting points
• Basic situation : cross-border disputes

relating to IP-rights
e.g. infringement proceedings brought by
a French group of companies against
Belgian company allegedly infringing
French, Belgian and Dutch patents by
bringing products on these markets ―›
where should proceedings be brought?
• Basic situation : cross-border disputes

relating to IP-rights
e.g. infringement proceedings brought
Belgian company holding copyright on
famous comic strip against book
published in France by a French company,
alleging that reproduction in book of parts
of comic strip constitutes an infringement
of copyright
• Proceedings cannot be brought before

a ‘global’ or ‘European’ court – no such
court to deal with cross-border IP-
disputes
• Plans to introduce such central court
system : only aim at patents and at
present unclear whether these plans
will ever become reality
• Most realistic project : European Patent Litigation

Agreement (EPLA)
• System currently put in place by European Patent
Convention :
– Possibility to challenge the validity of the patent
before EPC organs (during limited timeframe : 9
months opposition period starting with publication of
the mention of the grant of the European patent in
the European Patent Bulletin– see art. 99 EPC)
– After such period has lapsed, no central court system
to deal with infringement
– In addition, art. 64(3) EPC specifically provides that
“Any infringement of a European patent shall be dealt
with by national law”
• Infringement is therefore within the

province of national courts
• Difficulties arose in the application of
rules of jurisdiction whose goal is to
allocate jurisdiction to national courts
(rules of jurisdiction were not drafted
specifically for IP-disputes; main
difficulty is that if there is a bundle of
patents coming in from one EPC
application, not always possible to have
one single court looking at all patents
concerned by infringement)
• Solutions?
– Either draft new rules of jurisdiction,
specifically tailored for IP-disputes
(see e.g. the work of the CLIP-group
and the ALI IP Project)
– Or create a new institutional
framework
• 2003 Draft Agreement : creation of a

'European Patent Judiciary (EPJ), with :
– 'European Patent Court' competent to
decide on infringement relating to
patents of EPO member states and
including a 'European Patent Court of
Appeal'; and
– an 'Administrative Committee'
• EPLA : victim of Europe's difficulty to

agree on a unified patent regime...
• It appears that EPLA is not dead and
could still be revived – if put in place, it
would provide a framework for both
EPC patents and European patents...
• In any case, this would only cover
patents, not other IP-rights...
• Hence necessary to allocate

jurisdiction to courts of one State
I. A primer on litigation strategy
• Which national court? Relevant considerations

I. How fast can one obtain a judgment? (see kort
geding proceedings under Dutch law vs proverbial
lack of speed of Italian courts)
II. Home court advantage vs ease of enforcement
III. Expertise of some jurisdictions (specialized IP
courts in England, Germany and Netherlands)
IV. Issue of costs ('loser pays it all'-rule?)
II. Arbitration : an alternative?
• Keep in mind, however, an alternative

solution : arbitration of intellectual property
disputes
• Arbitration : consensual method of dispute
resolution based on and recognized by the
law
• Arbitration : (preferred?) method of settling
international commercial disputes ―› due to
confidentiality, expertise and neutrality of
arbitrators (relative advantages)
• Why shouldn't this also apply to IP-disputes?
• Arbitration is not well regarded in IP-world

I. Sometimes because of ignorance of the mechanism
II. Sometimes for irrational reasons (“who are these
arbitrators anyway? Will they not split the baby in 2??”)
III. Sometimes for valid reasons (large company with huge
IP-portfolio does not want these assets to be submitted
to a one layer-proceedings, without any possibility to
appeal).
• In infringement cases, lack of

arbitration agreement between parties
can constitute an obstacle to arbitration
―› lack of arbitration agreement
(arbitration : consensual method of
dispute resolution)
• For other IP-disputes : there may be a
problem of arbitrability (may the
dispute be referred to arbitration? Is a
State willing to limit the monopoly of its
courts and accept the possibility that
private actors settle disputes?)
• For some IP-disputes, no issue of arbitrability

• 1) Disputes relating to contractual aspects of
IP-rights : arbitrability is not an issue, e.g. :
1. Dispute relating to payment of royalty fees due under
a patent license agreement
2. Dispute relating to IP 'rep's and warranties' following
acquisition of a company (seller guaranteing that
target is legitimate owner of certain IP rights –
compensation sought by the buyer if this appears not
to be true)
3. Dispute relating to duty of disclosure of certain know-
how under a patent licence agreement, licensee
demands sanctions for failure to provide the necessary
know-how
• 2) No issue of arbitrability for disputes

relating to ownership of IP-rights, e.g.
1. joint development agreement, one
party claims sole ownership of a
patent
2. Dispute between employee and
employer regarding ownership of a
patent
• For other disputes relating to IP rights,

issue of arbitrability may arise (in
some countries), e.g.
I. No arbitration of disputes relating to
moral right derived from a copyright
(e.g. France) – but other issues
relating to copyright may be
referred to arbitration
II. Validity of patent rights – may
arbitrator rule on the validity of a
patent?
• Disputes relating to the validity of patent – in some

countries, deemed to be inarbitrable. Why?
• 1st argument : a patent is an administrative act issued by a
public authority, it is inconceivable that private persons - be
they invested with the confidence of the parties to a dispute
- should decide on the validity of a title delivered by the
public authority...
• 2nd argument : patents are registered in public records
which serve to inform the public about the existence of
exclusive rights, a decision to update / modify these records
cannot be taken by a private party...
• 3rd argument : patents are monopolies

which may be used by the owner
against all third parties. As such, any
decision on such monopoly should be
have the authority to bind third parties
―› arbitration is a consensual process,
arbitral award only binds the parties
and does not work erga omnes
• In some countries, these arguments have not convinced

and States have allowed IP disputes to go to arbitration
• E.g. Belgium, art. 51 and 73 § 6 in fine of the 1984 Patent
Act : disputes relating to patents (including disputes
relating to validity) may be referred to arbitration (« Les
dispositions du présent article ne font toutefois pas
obstacle à ce que les contestations relatives à la propriété
d'une demande de brevet ou d'un brevet, à la validité ou
à la contrefacon d'un brevet ... ainsi que celles relatives
aux licences de brevets autres que les licences
obligatoires soient portées devant les tribunaux
arbitraux. »)
• Disputes relating to validity : difficulty

remain
• If arbitrators may rule on validity, lack of
erga omnes authority of arbitral awards
may cause difficulty
• Possible solution? Arbitrators only rule
on possibility for a party to use the
patent against other party to the
arbitration process ('opposabilité') of the
patent and not on validity as such –
patent remains valid and may be
opposed to other parties
• If validity of patent remains 'off limit'

for arbitrators, additional difficulty is
that many IP-disputes will concern
both contractual and validity aspects
(e.g. dispute between licensor and
licensee, licensor requests payment of
royalty fee, licensee challenges validity
of the patent to avoid payment of fees
―› can arbitrators decide on the two
aspects of the dispute or should they
stay the proceedings until issue of
validity has been decided by court?)
• By and large, arbitration can offer

valuable alternative (if considered with
due care for advantages and
drawbacks) for many IP-disputes
• See in particular arbitration services
offered by WIPO arbitration and
mediation center (www.wipo.int/acm/)
―› WIPO rules
III. Which court?
• Where to find the rules? (in

Europe) : Brussels I Regulation
(44/2001)
I. Rules of jurisdiction in civil and
commercial matters
II. In addition : recognition and
enforcement of foreign judgments
III. Rules need to be read together with
case law of the ECJ (limited number of
cases directly related to IP; other cases
also directly relevant)
IV. The first hurdle : actionability of foreign IP
rights
• Key principle in IP-law : territoriality
I. Territoriality expresses the link

between the country which granted
the IP-right and its territory – IP-rights
as ‘local monopolies’
II. Protection can only be sought for the
territory for which the monopoly was
granted
III. Idea of territoriality is stronger for IP-
rights created through registration
(e.g. patents)
IV. The first hurdle : actionability of foreign IP rights
• Territoriality : IP-rights have “no

operation beyond the territory of
the State under whose laws it is
granted and exercised” (Potter
v. The Broken Hill Proprietary
Company Ltd., [1906] CLR 476
at 494)
• Consequences of territoriality principle

I. Can the court of State A pass a judgment
on the IP-right granted by State B? Or is
territoriality of rights matched with
territoriality of procedure?
II. Classic view : enforcement of IP rights
(and certainly patent rights) can only be
sought in the country where the right
was created. The courts of that country
have jurisdiction to decide all issues
regarding the IP right
• Consequences of territoriality principle
I. Question is very much

relevant for IP-rights created
through registration (e.g.
patents)
II. Question less relevant for
copyright
• « The enforcement of foreign patent rights was

traditionnally viewed as a major threat to the
legal independance and territorial scope of patent
rights. Patent litigation was dominated by the
widely accepted theory that territorially confined
rights are necessarily enforced in each of the
jurisdictions under whose legal system they arose.
As a result, national courts have been more than
reluctant to adjudicate on the infringement of
foreign patents. » (M. Pertegás Sender, Cross-
border enforcement of patent rights, OUP, 2002,
at p. 1).
• e.g. TGI Paris, 4 May 1971 (RCDIP 1974

110) : French company brings
proceedings against 2 Swiss
companies, alleging infringement of a
French patent (on a watch)
• Swiss defendant claims that matter
should be brought before the Swiss
courts which are 'natural judge' for the
dispute (since the counterfeited
watches were manufactured in
Switzerland)
• e.g. TGI Paris, 4 May 1971 (RCDIP 1974 110) : « ...

l'octroi d'un brevet nécessaire à l'exercice des droits
de l'inventeur est un acte de concession émanant des
pouvoirs publics dont l'intervention détermine ... la
solution des conflits de lois en la matière; qu'un
service public ne pouvant fonctionner que selon les
lois qui l'instituent, les litiges nés de ce
fonctionnement à l'occasion de la délivrance d'un
brevet français sont nécessairement de la
compétence des juridictions françaises assurant le
maintien de l'ordre public interne qui prime... toutes
autres considérations »
• L.A. Gear Inc. c Gerald Whelan & Sons,

F.S.R. 670 (High Court of Justice (Ch Div.) -
May 24, 1991) : « ... Equally, in my view, it
would probably not be possible for all the
disputes between these two parties to be
heard and determined in the Irish courts.
As I have said, the United Kingdom trade
mark has no effect outside the United
Kingdom. The Irish courts cannot therefore
hear and determine an action for
infringement of that trade mark...”
• Issue is not so much one of

jurisdiction (in the sense of
adjudicatory jurisdiction) as
one of ‘actionability’ or
‘subject matter jurisdiction’
• Comp. situation of court
faced with a valid arbitration
agreement or a defense
based on sovereign immunity
• If territoriality is accepted, issue of

jurisdiction is moot : IP-rights are only
enforced in the jurisdiction under
whose legal system they arose
• Consequence ―› unique rule of
jurisdiction : courts of the country
under whose legal system IP-right
was created
• Courts in the US / UK
traditionally attached to the
doctrine of territoriality and
its consequences
• In England, series of rulings
which have, however,
discarded the rule of non
actionability of foreign IP-
rights
• Pearce v. Ove Arrup Partnership Ltd v. Others [1997] 2

WLR 779 : claimant, an architect, was suing for
infringement of copyright in architectural drawings.
Claimant alleged that a copyright under Dutch law had
been infringed by the defendants (i.e. : i) a firm of civil
engineers established in the UK, which was alleged to
have been party to the infringement of the copyright by
assisting in the design or construction of a building - the
Kunsthall - in Rotterdam) domiciled in the Netherlands
and the UK; ii) two firms established in the Netherlands)
when designing a building in Rotterdam
• Could the English court exercise jurisdiction over a Dutch
IP-right?
• Pearce v. Ove Arrup Partnership Ltd v. Others : the

Court applied Article 2 of the 44/2001 Regulation
(since one of the defendants was established in
England) and Article 6(1)
• Judge Lloyd : this jurisdiction could be exercised even
though the claim related to an ip-right which had been
granted by a foreign State. Deciding otherwise would,
according to the judge, « impair the effectiveness of
the Convention by frustrating the operation of the
basic rule in Article 2 » ―› recognition of possibility to
decide on foreign IP-rights but only because forced to
in order to respect primacy of EU law...
• This ruling was repeated for foreign patents in later

rulings : Coin Controls Ltd. v. Suzo International (UK)
Ltd. and Others, [1997] 3 All ER 45 and Fort Dodge
Animal Health Ltd and Others v. Akzo Nobel NV and
Another, [1998] FSR 222
• In Coin Controls, claimant was the owner of identical
UK, German and Spanish patents for a coin-dispensing
machine. The defendants, including one domiciled in
the UK, were accused of infringement in the countries
covered by the patents. The Court held that
proceedings for infringement of foreign patents may
be brought in England where the UK and foreign
patent claims are identical.
• Evolution in UK courts : non actionability rule

abandoned primarily because applying it would
bring too severe a limitation of the rules of
jurisdiction provided by the Brussels I
Regulation.
• Does this mean that the non-actionability rule
remains valid when the Brussels I Regulation
does not apply? In order to answer this
question, one must look at the justifications
given to support the non-actionability rule in
other contexts
• In order to find out why refusal to decide

disputes on foreign IP-rights, compare with
other situations:
I. Can the courts of State A decide on the validity of
corporation created under the law of State B?
II. Can the courts of State A decide on the validity of a
marriage celebrated by State B?
III. Can the courts of State A decide on validity of
transfer of immovable located in State B?
IV. Can the courts of State A decide on the enforcement
of a contract governed by the law of State B?
• Compare with:
I. French case law which refuses
application of Art. 14-15 French Civil
Code to disputes relating to foreign
immovable – French courts have no
jurisdiction in respect of such foreign
immovables
II. English case law relating to foreign
corporation : also non actionable
• Recent US example : Voda v. Cordis Corp.

(Court of Appeals, 01.2.2007) : Dr. Jan Voda, a
cardiologist who invented and patented a
catheter for coronary angioplasty, brought
proceedings in the Federal District court for
the Western District of Oklahoma against
Cordis Corp., a US corporation, alleging that
Cordis infringed his U.S. patents. Voda
ultimately obtained a large damages award
from the trial court based upon Cordis’ willful
infringement of his U.S. patent. Voda also
sought, however, to assert patents on the
same invention that he had procured in
Britain, Canada, France, and Germany.
• Jurisdiction of the court (in the sense of

‘venue’ : territorial jurisdiction) could
not be challenged : the plaintiff was a
resident of Oklahama and the
defendant was established in Florida
• But quaere infringement of the foreign

patents?
• Court of Appeals : no jurisdiction

because it is impossible for a US court
to exercise jurisdiction over foreign
patents…
• Critical review of the arguments used

by the court
• 1st argument : Court reviewed the

Paris Convention for the Protection of
Industrial Property (1883)
• Although the Convention contains no
express provision allocating jurisdiction
to hear patent infringement claims,
Court finds that one could nonetheless
infer a “general principle” according to
which one jurisdiction should not
adjudicate the patents of another ―›
weak argument
• 2nd argument : Patents are territorial in

operation. Therefore no action will lie
in Belgium for the infringement in
France of a French patent...
• 2nd argument : Patents are territorial in

operation. Therefore no action will lie in
Belgium for the infringement in France of a
French patent...
• Answer : confusion between scope of
operation of patent and rules of jurisdiction.
Scope of application may be purely
territorial, rules of jurisdiction are not
necessarily build on territorial concepts (or
at least not on same classic concept of
territoriality – e.g. rule of jurisdiction based
on agreement between parties)
• 2nd argument : Patents are territorial in operation.

Therefore no action will lie in Belgium for the
infringement in France of a French patent...
• E.g. : French company holds a French patent,
alleges that it is infringed by a Belgian company
which sells products in France; scope of operation of
patent : no difficulty, infringing acts in France; rule
of jurisdiction : what if parties agree that the matter
should be settled by a Swiss court? ―› no direct link
between scope of operation and rule of jurisdiction
• 3rd argument : Court also held that

“Permitting our district courts to exercise
jurisdiction over infringement claims based
on foreign patents in this case would
require us to define the legal boundaries of
a property right granted by another
sovereign and then determine whether
there has been a trespass to that right”
• Argument is in fact that “assuming
jurisdiction over Voda’s foreign patent
infringement claims could prejudice the
rights of the foreign governments »
• Question : could sovereignty of foreign

State be breached if courts pass a
judgment on a foreign patent (or
trademark or utility model, etc.)?
• What is sovereignty (comity) – concept
of the same nature as territoriality
(everybody feels what is at stake,
difficult, if not impossible to give a
precise definition – open ended concept
whose content can vary according to
time and opinions of author...)
• Patent disputes (and other ip-disputes)

are in the end private disputes between
companies or private individuals. They
may involve rights which have been
sanctioned by a public body. This does
not, however, confer on the patent right
a dimension of sovereignty
• Will Minister of Foreign Affairs ever react
if foreign court passes a judgment on a
local IP-right?
• Compare with:
I. Can the courts of State A decide on the
validity of corporation created under the law
of State B?
II. Can the courts of State A decide on the
validity of a marriage celebrated by State B?
III. Can the courts of State A decide on validity of
transfer of immovable located in State B?
IV. Can the courts of State A decide on the
enforcement of a contract governed by the
law of State B?
• Argument of sovereignty : certainly

a distinction should be made
between dispute relating to the
validity of the foreign IP-right and
disputes relating to other aspects
(such as infringement or purely
contractual disputes where patent is
the object of the contract) ―› in the
first case, argument of sovereignty
may be raised, in the other cases,
much less relevant
• Offspring of argument of sovereignty : may

court of State A modify the patent register
of State B, when it decides a dispute in
relation to patent issued by State B and
decides that this patent is not valid?
• No infringement of sovereignty : State B
decides on its own whether it will respect
judgment of State A and adapt its patent
register / documents following judgments
issued by courts of State A
• Last argument : Court of Appeals in Voda v.

Cordis held that « Patents and the laws that
govern them are often described as complex.. . ..
As such, Cordis U.S. and one of the amicus curiae
assert, and Voda does not dispute, that the foreign
sovereigns at issue in this case have established
specific judges, resources, and procedures to help
assure the integrity and consistency of the
application of their patent laws. Therefore,
exercising jurisdiction over such subject matter
could disrupt their foreign procedures”.
• Criticism of argument :
I. Complexity is certainly inherent to cross-border cases
– is it more difficult to appreciate foreign patent law
than foreign divorce law? Application of foreign law is
nothing new - applying foreign law is always more
difficult than applying the home law... Should this
mean that courts should never decide disputes which
entail the application of foreign law?
II. There is a trend towards harmonisation of IP-law (at
least on the level of general principles)
III. Patent litigation is very much fact intensive
• Criticism of argument : in fact, argument of

convenience and not of principle
• If litigation on a bundle of national patents relating
to the same invention : passing a judgment on
foreign patent will not substantially burden the
court, only add some difficulty (because it is true
that the scope of protection of patents can be
different according to the national law – e.g. literal
or broad reading of patent claims). This additional
difficulty must be weighed against the benefit of
having all disputes between parties adjudicated by
one single court (and no piecemeal litigation).
• Overal conclusion :
I. In its generality, doctrine of non-
actionability of foreign IP-rights cannot be
justified; justification only exists for some
types of disputes (mainly in relation with
validity of IP-rights). Distinction between
infringement proceedings and validity issue.
When the dispute is not focused on the
validity, why should there be a limitation on
the possibility for courts to decide disputes
relating to non local IP-rights?
• Overal conclusion :
I. Even for disputes in relation with validity,
arguments in favor of non actionability are
more of convenience than of principle ―›
hence, non-actionability may be too radical a
solution
II. Drawbacks of non-actionability pale when
compared with advantages offered by rule of
actionability (mainly : avoidance of piecemeal
litigation). Also : tailor the rules of jurisdiction
to allocate jurisdiction to the best placed
court
2/exclusive jurisdiction
PIL of IP - 2010 96
I. Exclusive jurisdiction in general
• Art. 22 Brussels I Regulation confers

exclusive jurisdiction (monopoly of
jurisdiction) in a series of cases (dispute
over title to immovables, over the validity
of a company, etc.)
• Rationale of exclusive jurisdiction:
I. Courts designated by article 22 are
best placed to adjudicate upon dispute
(applicable law, proximity with facts
underlying dispute)
II. Sovereignty issue (States are jaleous...)
PIL of IP - 2010 97
• Monopoly granted by Art. 22 Brussels I Regulation

confirms the erosion, if not altogether the
disappearance of the old doctrine based on the
strict territoriality of proceedings relating to IP,
according to which all categories of proceedings
relating to an IP-right should exclusively be
submitted mentioned above should be submitted
to the jurisdiction of the country where the right
had been created (see previous session)
• Erosion even more visible since exclusive
jurisdiction rule has been established as an
exception from general rule based on the domicile
of the defendant (Art. 2)
PIL of IP - 2010 98
Monopolies of jurisdiction are effectively protected

by a series of measures:
• Choice of court clauses are prohibited (even after
the dispute has arisen) (art. 23-5° Regulation)
• Duty for the court to verify its jurisdiction sua
sponte and decline jurisdiction if the case
belongs to the exclusive jurisdiction of another
court (art. 25 Regulation)
• Duty for the court at enforcement stage to verify
application of Article 22 and deny enforcement /
recognition in case of violation of Article 22 (art.
35-1° Regulation)
PIL of IP - 2010 99
II. Exclusive jurisdiction in IP-disputes
• Art. 22(4) concerns disputes relating to “registration

or validity” of some IP-rights (i.e. patents, trade
marks, designs or similar rights requiring to be
deposited or registered)
• Exclusive jurisdiction of the courts of the MS where
registration or deposit took place (for European
patent applications : since each 'bundle patent'
must be thought as an independent fraction of the
same European patent, resort to local jurisdiction)
• Prima facie : simple rule, allocating exclusive
jurisdiction to the MS under whose laws IP-right was
created
PIL of IP - 2010 100

Other rules of exclusive jurisdiction in IP-matters:

• Art. 55 Regulation 40/94 on Community Trademarks :
exclusive jurisdiction of Office for Harmonization in the
Internal Market for nullity of a Community Trademark
(but art. 92 : Community Trademark courts also have
jurisdiction over counterclaims for nullity of a
trademark)
• Art. 81 of Regulation 6/2002 on Community designs :
Community design courts have exclusive jurisdiction for
actions for a declaration of invalidity of Community
design and for counterclaims of invalidity of a
Community design raised in connection with
infringement actions
PIL of IP - 2010 101

• Question : what is reach of exclusive

jurisdiction under art. 22? What is scope of
exclusive jurisdiction of the State under whose
laws the IP-right was created?
• First element : ECJ in Duijnstee (case 288/82) :
claim by the bankruptcy liquidator of a Dutch
company against the former manager of the
company, to transfer the patents applied for or
granted in 22 countries. These patents covered
an invention which the manager had made
while employed by the company
PIL of IP - 2010 102

• ECJ : the terms 'proceedings

concerned with the registration or
validity of patents' should not received
an interpretation based on the national
law of one Member State but should
rather be regarded as an
« independent concept intended to
have uniform application in all the
Contracting States »
PIL of IP - 2010 103

ECJ in Duijnstee:
• The notion of proceedings concerned with
registration and validity should cover the
“proceedings relating to the validity,
existence or lapse of a patent or an
alleged right of priority by reason of an
earlier deposit”
• Court's reasoning is to limit application of
Art. 22(4) to cases were there is a direct
link with the activities of the intellectual
property office as public service.
PIL of IP - 2010 104

ECJ in Duijnstee:
• Liquidator's claim did not concern either
the validity of the patents, nor the legality
of their registration since the outcome of
the case depended exclusively on the
question whether the manager or the
insolvent company was entitled to the
patent
• This question should be determined on
the basis of the legal relationship between
the manager and the company
PIL of IP - 2010 105

• Article 22(4) has therefore no application in

disputes concerning the right to a patent
but which must be determined on the basis
of a legal relationship between the parties
concerned. This is the case e.g. for
disputes about ownership of a
patent/trademark (or similar IP-right)
• e.g. : disputes relating to the ownership of
a right (see Article 9 of the Dutch Wet
uitvindingsoctrooien or the
'Vindikationsklage' o § 8 of the German
Patentengesetz)
PIL of IP - 2010 106

• According to Mssrs. Fawcett and

Torremans (1st ed., OUP, at p. 61), “A
dispute over the ownership of a patent
etc. does not concern either the
registration of the patent or its validity,
as required under Article 16(4) [Article
22(4) of the Regulation]”
PIL of IP - 2010 107

Other category of disputes

• Contractual disputes relating to patents
or trademarks – disputes relating to the
contractual arrangements made over a
right (e.g. a dispute between a licensee
and a licensor on the payment of
royalties) : no application of Article 22(4)
in this case
• Infringement dispute : no difficulty if the
dispute relates exclusively to
infringement of a right
PIL of IP - 2010 108

III. Exclusive jurisdiction in IP-disputes :
mixed claims
Difficulty if issue of validity is raised on

the occasion of a dispute relating to the
(alleged) infringement of a right:
• Either as a defence (cannot be
addressed separately from plaintiff's
main claim)
• Or as a counterclaim (is not an integral
part of the action initiated by the
plaintiff, it is a claim for a separate
judgment against the plaintiff; it must be
addressed separately as a matter of
procedure)
PIL of IP - 2010 109
mixed claims
Difficulty exacerbated by difference in

language versions of Art. 22(4):
• In the English version, exclusive jurisdiction
applies to proceedings that are « concerned
with » validity or another issue for which
there exists an exclusive jurisdiction, the
other language versions refers to
« proceedings which have as their
object. . . » : English version broader?
• French version : « en matière d'inscription
ou de validité des brevets, marques, dessins
et modèles, etc. »
PIL of IP - 2010 110

mixed claims
One of the instruments to guarantee

enforcement of monopoly of jurisdiction :
duty to examine jurisdiction (Art. 25)
• Duty for the court to examine its jurisdiction
ex officio / on its own motion and to decline
jurisdiction if the dispute belongs to
exclusive jurisdiction of another court
• Duty only exists of the dispute is “principally
concerned with a matter” which falls under
exclusive jurisdiction of another court
PIL of IP - 2010 111

mixed claims
Article 25 : Duty to examine jurisdiction -

differences between language versions:
I. French version : « Le juge d'un Etat
membre saisi à titre principal d'un litige
pour lequel une juridiction d'un autre Etat
membre est exclusivement compétente en
vertu de l'article 22, se déclare d'office
incompétent » (not « of a claim which is
principally concerned with... », but « is
seized as a main claim of a claim over
which the courts... »)
PIL of IP - 2010 112

mixed claims
Art. 25 : Duty to examine jurisdiction -

differences between language versions:
I. German version also different (“Das
Gericht eines Mitgliedstaats hat sich von
Amts wegen für unzuständig zu erklären,
wenn es wegen einer Streitigkeit
angerufen wird, für die das Gericht eines
anderen Mitgliedstaats aufgrund Artikel 22
ausschliesslich zuständig ist »)
PIL of IP - 2010 113

III. Exclusive jurisdiction in IP-disputes : mixed
claims
• Art. 25 : Dutch version also different

(“... waarbij een geschil aanhangig is
gemaakt met als inzet een vordering
waarvoor krachtens artikel 22 een
gerecht van een andere lidstaat bij
uitsluiting bevoegd is...”)
• Case law of national courts did not
follow the same pattern (partially
because of difference between
language versions of Art. 25)
PIL of IP - 2010 114

IV. Review of case law of Member States
• English courts : broad view of Article 25 - a court

is required to decline jurisdiction whenever the
issue of validity is raised, be it as a mere defence
to oppose infringement proceedings
• High Court : Coin Controls v. Suzo International
(UK) Ltd. and Ors., [1997] 3 All ER 45 - claimant
was the owner of identical UK, German and
Spanish patents for a coin-dispensing machine;
defendants, including one domiciled in the UK,
were accused of infringement in the countries
covered by the patent – defense of invalidity
PIL of IP - 2010 115

• Coin Controls : (Judge Laddie)

I. Principally concerned means 'not arising
incidentally' ...
II. Defense of invalidity is not incidental, because:
« something which is a major feature of the
litigation is not incidental and is therefore a matter
with which the action is principally concerned »
III. Hence, court declines jurisdiction over the
invalidity defense and the court also declines to
rule on infringement of foreign patent because
« infringement and validity of patents are so
closely interrelated that they cannot for
jurisdiction purposes be separated »
PIL of IP - 2010 116

• Fort Dodge : (Fort Dodge Animal Health Ltd. and

Others v. Akzo Nobel N.V. (1998) IIC vol. 29, 927) :
infringement action before Dutch court against (i.a.)
3 English companies; these companies bring
proceedings in England seeking revocation of the
patent (before the English Patents Court)
• Case concerned primarily request for injunction
against Dutch proceedings in that these
proceedings dealt with infringement of UK patent
• Court of Appeal : question referred to ECJ, but Court
also held that...
PIL of IP - 2010 117

• Fort Dodge :
• Court of Appeal confirms view of Judge
Laddie, holding that “when questions
of infringement and validity both arise,
it is invariably not possible to conclude
there is infringement without validity
being determined. . . It follows that the
split contemplated in the Jenard Report
between actions for infringement and
proceedings concerned with validity
cannot always be made”
PIL of IP - 2010 118

• Result of the interpretation adopted by

English courts : broad interpretation of art.
22(4) leads English courts to decline to rule
on the validity of the foreign patent, even if
only raised as a defence. Courts also
refused to decide on the infringement of
foreign patent based on the view that
infringement and validity are inseparable
• As a consequence, infringement part of the
dispute is effectively in limbo (in practice,
this part of the dispute is effectively
'frozen')
PIL of IP - 2010 119

• Could it be that the attitude of English

courts is at least in part influenced by
the old doctrine of non actionability of
foreign ip rights?
PIL of IP - 2010 120

• Dutch courts : another reading of Article

22(4); if the defendant claims the
invalidity of a patent as a defence, the
issue should be regarded as incidental
matter which did not affect the court's
competence
• This is only different if cancellation
proceedings have been initiated in the
country of registration. In effect, courts
considered that issues of infringement
of a patent and validity of the patent
were separable
PIL of IP - 2010 121
• German courts : assumed likewise

jurisdiction over infringement of a
foreign patent even when its validity
was challenged in the framework of
the infringement action
PIL of IP - 2010 122

• Belgian courts : mixed picture; some courts considered

that issues of infringement and validity were
inseparable
• Röhm v. DSM (Civ. Bruxelles, 12 May 2000, Röhm v.
DSM, I.R.D.I. 2002, 321), claim for a declaration that
the European patent held by the defendant was not
valid and that further, plaintiff's products did not
infringe the said patent. The European patent had
been granted for several countries (Belgium, Austria,
Sweden, Germany, Denmark etc.) - court takes the
view that validity and infringement are not separable
PIL of IP - 2010 123

• Röhm v. DSM : the court held that « nu het octrooi

voor elk van de verdragsluitende staten waarin het gelding
heeft krachtens het Europese Octrooiverdrag moet aanzien
worden als een afzonderlijk nationaal octrooi, elke vraag
naar inbreuk of niet-inbreuk verknocht is met de vraag naar
de geldigheid van het octrooi. . . de enige uitzondering zou
voorliggen wanneer eisende partijen uitdrukkelijk zouden
stellen de geldigheid niet te betwisten, derwijze dat enkel de
inbreuk het voorwerp van het geschil zou uimaken. . . dat er
geen inbreuk kan zijn indien het octrooi nietig is; dat
dienvolgens de vraag naar de geldigheid van het octrooi
noodgedwongen eerst moet onderzocht worden alvorens de
rechter de vraag naar inbreuk of declaratie van niet-inbreuk
kan onderzoeken »
PIL of IP - 2010 124

V. The ECJ : GAT v LUK
• ECJ case C-4/03, GAT (Gesellschaft für

Antriebstechnik GmbH & Co. KG)/LuK (Lamellen
und Kupplungsbau Beteiligungs KG),
preliminary ruling by Oberlandesgericht
Düsseldorf
• Dispute between two German companies in
motor vehicle technology regarding the alleged
infringement of French patents. GAT had made
an offer to Ford, with a view to winning a
contract for the supply of mechanical damper
springs. LuK alleged that the springs offered by
GAT infringed two French patents which it held.
PIL of IP - 2010 125

• The alleged infringer did not wait until the

patent holder brought proceedings. GAT
sought a declaration of non infringement
before the Düsseldorf District Court. GAT
also alleged that if its products were found
to be in violation of the French patents, this
should not have any consequence, as the
patents were either void or invalid
• Landsgericht held that it had jurisdiction to
decide this side issue. At the appeal level,
the court, however, referred the question
to the ECJ.
PIL of IP - 2010 126

• Opinion of AG Geelhoed (in sept. 2004, 2 years

before the ruling...). Geelhoed suggested 3 possible
readings of Art. 22(4):
I. Art. 22(4) only applies where the validity of the patent
constitutes the object of the principal claim;
II. Second reading : the issue of validity and the issue of
infringement cannot be separated, hence Art. 22(4)
should also apply in infringement proceedings if validity is
raised;
III. Final reading, only the court of the place of registration
has jurisdiction to decide on the validity, other questions
fall outside the scope of Art. 22(4)
PIL of IP - 2010 127

• ECJ : « the exclusive jurisdiction

provided for by [Article 22(4)] . . .
should apply whatever the form of
proceedings in which the issue of a
patent's validity is raised, be it by way
of an action or a plea in objection, at
the time the case is brought or at a
later stage in the proceedings ».
PIL of IP - 2010 128

• Justification?
I. The courts of the MS in which the patent was
granted, are best placed to adjudicate upon cases in
which the dispute concerns the validity of the
patent;
II. the risk of « multiplying the heads of jurisdiction »,
which raises the sceptre of inconsistent judgments
III. Court also considered and rejected the argument
that an incidental decision on invalidity would only
have effect between the parties and therefore would
not be irreconcilable with Article 22(4)
PIL of IP - 2010 129

• Criticism? Are the courts of the MS in

which the patent was granted, really
best placed to adjudicate upon cases
in which the dispute concerns the
validity of the patent?
I. A distinction can be made according to
the origin of the patent : a 'purely'
national patent does not give rise to the
same concerns as national patents
stemming from one European patent
application.
PIL of IP - 2010 130

• Criticism? Are the courts of the MS in which the

patent was granted, really best placed ?
I. If various 'pure' national patents (but unlikely that
different national patents coexist for the same
invention...) : argument that courts of place of
registration are better placed to hear validity issue is
not unreasonable - if the courts of State A examine the
validity of a patent granted by State B, the courts will
apply the law of State B. This will be more difficult than
applying the lex fori
II. Bear in mind, however, that patent law follows the
same structure; application of foreign law is hence not
impossible
PIL of IP - 2010 131

• Criticism? Are the courts of the MS in which the patent

was granted, really best placed?
I. If patents at stake are progeny of one single European patent
application, argument that courts of MS which granted the
patent are better placed, is less convincing
II. Validity issue will indeed be governed by the same rules, i.e.
rules of the European Patent Convention. It is true that the
application of these rules (which are relevant for validity) by
national courts may lead to diverging results. Fact remains,
however, that the rules on which validity argument must be
appreciated, are not different for the different versions of the
European patent
PIL of IP - 2010 132

• Criticism? Are the courts of the MS in which the patent

was granted, really best placed?
I. Whatever the case (European patent or purely national
patent), disputes relating to the validity will in fact turn in
fact mostly on technical knowledge which will made up the
bulk of the evaluation. This knowledge is not better
accessible in the State where the patent was granted. See
Kur : « whether a patent is valid or not depends on a
evaluation of the technical state of art at the relevant priority
date. To assert that the courts in the country of registration
have better access to that knowledge, which is universal by
its nature, simply makes no sense » (A. Kur IIC 7/2006, 844
at p. 848).
PIL of IP - 2010 133

• Criticism? Inconsistent judgments? The fear is

that if the courts of State A may issue a ruling
on the alleged infringement of a patent granted
by State B, including on the validity defense,
this judgment may come in conflict with a
judgment issued by the courts of State B
• Concern for inconsistent judgments is
understandable given that Regulation 44/2001
allows for automatic recognition of judgments
in all MS (automatic extension of res judicata in
all States)
PIL of IP - 2010 134

• However, isn't risk of inconsistent judgments limited

precisely because of res judicata effect of jugdment
issued by the courts of State A? This judgment will
bind courts of State B on issue of validity
• Caveat : res judicata limited to other disputes between
the same parties and same object. Further, is there res
judicata effect if issue of validity of patent has been
dealt with incidentally by courts of State A? But even if
technically there is no res judicata, it will be difficult
for courts of State A to ignore the judgment on validity
in future proceedings
PIL of IP - 2010 135

• Concern then becomes that if

judgment of State A is binding on the
courts of State B, infringement
proceedings could be used to
circumvent Art. 22(4)
PIL of IP - 2010 136

VI. Patent litigation after GAT v LUK
• If a court is only seized of infringement question, it

may still issue a cross-border decision (and decide e.g.
on patents issued in various other countries) –
provided it has jurisdiction in respect of the
infringement question (e.g. based on Art. 5§3)
• As soon as the validity of a foreign patent is put in
issue (defense, counter-claim, etc.), Art. 22(4) applies
and the court should decline jurisdiction, even if the
invalidity issue was only incidental
• No longer possible to make a distinction between the
situation where the issue of validity is raised as a
defence and as a counterclaim
PIL of IP - 2010 137

• Obligation for the court seized of issue of

validity of a foreign patent, to decline
jurisdiction : only in respect of issue of
validity
• Court may continue examination of the
proceedings in so far as they concern local
patent (and deal with infringement and
validity thereof)
• What happens to infringement
proceedings in respect of foreign patent?
Stay proceedings? Decline jurisdiction?
Transfer proceedings?
PIL of IP - 2010 138

• What happens to infringement proceedings

in respect of foreign patent?
• Court may not decline jurisdiction in respect
of infringement claim in relation to foreign
parent (jurisdiction is still there)
• Court may not transfer proceedings to
foreign court in order for the latter to deal
with infringement issue together with
validity issue – no legal basis for such
transfer. If foreign court deals with
infringement, it is only if parties have seized
it (and it has jurisdiction under the
Regulation...)
PIL of IP - 2010 139
• What happens to infringement proceedings in

respect of foreign patent?
• First possibility : stay proceedings in respect of
infringement claim in relation to foreign patent –
impossible to go ahead with the infringement
without looking at the validity issue. How the stay
should be ordered (e.g. 'renvoi au rôle' –
'ajournement à une audience ultérieure'), is a
matter for local rules of procedure.
• E.g. Coin Controls v. Suzo International (UK) Ltd.
and Ors., [1997] 3 All ER 45 – English court could
continue looking at both validity and infringement
of UK patent, but could not look at validity of
German and Spanish patents and hence stay
proceedings on infringement of these patents
PIL of IP - 2010 140
• Difficulty : if proceedings are stayed

until validity issue is resolved by
foreign court, this prevents any other
infringement proceedings from being
brought in court seized of validity issue
(lis alibi pendens) – and this maybe for
years...
PIL of IP - 2010 141

• Hence, second possibility : plaintiff may

request the court to strike out the
proceedings in relation to infringement of
foreign patent (advantage : plaintiff may
initiate new infringement proceedings in
country where patent registered)
• E.g. Coin Controls v. Suzo International (UK)
Ltd. and Ors., [1997] 3 All ER 45 – English
court could continue looking at both validity
and infringement of UK patent, but could
not look at validity of German and Spanish
patents and hence strike out proceedings
on infringement of these patents
PIL of IP - 2010 142
• How the court should strike out the

proceedings, is a matter for local rules of
procedure (e.g. 'désistement d'instance')
• Strike out and not dismiss the proceedings
(because if proceedings are dismissed –
e.g. 'désistement d'action' -, difficult for
plaintiff to launch new infringement
proceedings in country of patent – res
judicata of dismissal)
• What if defendant resists striking out of
proceedings?
PIL of IP - 2010 143

• Consequences for the court seized of the validity

I. What may court seized of infringement proceedings do with the
infringement part? No transfer, no declining jurisdiction, stay or strike
out
II. What may Art. 22(4) court - seized of validity of the IP-right – do? May
this court also decide on infringement, once validity issue is cleared?
III. It could be that Art. 22(4) court does not have jurisdiction to deal
with infringement (e.g. based on art. 5(3))
IV. No rule of ancillary jurisdiction under Brussels Regulation – court
should examine its jurisdiction for each claim separately, and cannot
take jurisdiction for 'related actions' (but see suggestion of Prof.
Nuyts)
PIL of IP - 2010 144

• Cross-border infringement proceedings

remain possible under the form of
request for declaration of non-
infringement by the alleged infringer,
before the court of the patent holder
(unlikely that the patent holder will
raise validity issue...)
PIL of IP - 2010 145

• Cross-border proceedings probably also remains

possible if court is only seized of a request for
preliminary measures (e.g. so-called 'kort geding')
• When ordering provisional measures, court does
not indeed need to address issue of validity of
foreign patent in details; if the court is satisfied
that there is a good case prima facie of
infringement, court may grand the request after
cursory review of the validity issue – which does
not bind the court deciding on the merits (see e.g.
Court The Hague Bettacare Holding / H3
21.09.2006)
PIL of IP - 2010 146

• Quaere whether ECJ's ruling could be read as allowing court

seized of infringement proceedings to go ahead with
infringement proceedings (both of local patent and foreign
patent) and to dismiss validity issue on the basis of
assumption that patent is valid until a court has found
otherwise...
• See HR in Gat v Luk (1st ruling) : « De enkele omstandigheid
dat er serieuze aanwijzingen bestaan dat het ingeroepen
buitenlandse gedeelte van een Europees octrooi nietig is,
behoeft de Nederlandse rechter niet te weerhouden van een
oordeel omtrent een gestelde inbreuk op dat octrooi door
een partij te wier aanzien [hij] rechtsmacht bezit , nu een
eenmaal verleend octrooi geldigheid bezit zolang het niet is
nietig verklaard of vernietigd » (HR 13.07.2006)
PIL of IP - 2010 147

• Quaere whether the court seized of infringement

proceedings may examine the strength of the validity issue
in order to distinguish between genuine validity concerns
and abusive validity concerns
• AG Geelhoed made a reference to this argument in his
conclusions (at § 46: “The court judging the infringement can
... deal with the case itself where a defendant acts in bad
faith ») and national courts had already made qualification
for bad faith argument of validity (e.g. Fort Dodge Animal
Health et al. 1998 FSR 222 : “...when there is a bona fide
challenge to the validity of a ... patent...”)
• ECJ has, however, not commented on this point in GAT...
PIL of IP - 2010 148

• Abuse of rights : two questions :

I. Is there room under the Regulation for
doctrine of abuse of jurisdiction? (see ECJ
Chen and Centros where the Court does not
exclude the possibility of a doctrine of abuse
of right – but these cases concerned abuse
of a substantive right, not abuse of a rule of
jurisdiction; comp. however with Gasser
where the ECJ excluded abuse of right from
Regulation...)
PIL of IP - 2010 149

• Is there room under the Regulation for

doctrine of abuse of jurisdiction? One
thing is sure : one cannot argue that
abuse of right is a purely procedural
matter, not dealt with by the
Regulation and that Member States
hence enjoy complete freedom to
regulate this issue
• If a caveat is made for abuse of right, it
should be made on a European level
PIL of IP - 2010 150

• Abuse of right
I. Second question : when is there abuse? Is it
enough e.g. that the defendant (alleged
infringer) has never raised the issue of validity
during discussions between parties before the
patent holder issued proceedings? Is it enough
that the alleged infringer did not raise the
validity issue in first instance, but only in
appeal? What if the defendant merely alleges
that there is an issue of 'validity' but does not
substantiate the argument?
PIL of IP - 2010 151

• When is there abuse of right ? Can we say there is

abuse if the defendant raises the question of invalidity
at a very late stage? Should the court then look at
whether the patent is 'prima facie' valid? It is possible
to determine whether by all appearances a patent is
valid? What if the defendant has already recognized
expressly or impliedly the validity of the patent (or
trademark/design) – e.g. because the dispute involves
a parallel importer or the existence or scope of a
license?
• Could court of a MS use national rule of procedure to
bar a defendant from relying on the invalidity,
because for example this argument has been raised at
a late stage?
PIL of IP - 2010 152

• The 'Swiss' solution?

• Eurojob SA v Eurojob AG (Handelsgericht
Zurich, 23.10.2006) : Swiss court stayed its
proceedings because defendant had raised the
issue of validity of a EU trademark. However,
the court also indicated to defendant that it
should bring proceedings regarding the validity
(or lack thereof) of the trademark before the
OHIM in Alicante within a certain time limit – 6
weeks – otherwise, court would continue to
hear the infringement claim
PIL of IP - 2010 153

• The 'Swiss' solution? Question : what if defendant fails

to bring proceedings or does not pursue these
proceedings? Can the Swiss court resume its
proceedings or does Art. 22(4) still prevents the court
from hearing the infringement claim (is there a denial
of justice in that case?)
• Is it feasible to impose to defendant raising the validity
issue to bring validity proceedings in all MS concerned
(in Eurojob, defendant only had to bring validity
proceedings before OHIM in Alicante – what if dispute
concerns 8 different national versions of same patent?
PIL of IP - 2010 154

• In practice – the 'test' solution

I. Court of country A seized of infringement
proceedings in relation to patent of country A,
B and C, must decline jurisdiction over validity
issue in relation to patents of B & C, this may
also impact infringement of patents of B & C
II. Patent holder decides to pursue proceedings
over patent A (both validity and infringement)
in A, in order to obtain a 'test judgement' ―›
decision used in other countries?
PIL of IP - 2010 155

• In practice – the 'test' solution

I. May decision obtained in country A be
used as res judicata in other countries,
dealing with infringement of other
national patents?
II. May decision obtained in country A be
used in order to form the basis for
settlement discussions with patent
infringer?
PIL of IP - 2010 156

• In practice – drawbacks of the 'test' solution

I. Level of protection of patent holder is reduced –
only obtains direct protection for local patent –
infringement of foreign patents is put on hold,
sometimes for long
II. Discussions on settlement could be protracted and
sometimes not reasonable to engage in settlement
discussions even if based on a positive ruling
obtained in 'test' country (if infringement is clear –
mala fide infringer)
PIL of IP - 2010 157

Alternative solution : the CLIP-solution

• Add a new proviso in Art. 22(4) : “The
provisions under lit. (a) do not apply
where validity or registration arises in
a context other than by principal claim
or counterclaim. The decisions
resulting from such proceedings do not
affect the validity or registration of
those rights as against third parties »
PIL of IP - 2010 158

Alternative solution : the ALI solution

• § 213 of the ALI project provides that
I. « (2) Except as provided in subsection (3), a proceeding
brought to obtain a declaration of the invalidity of a
registered right may be brought only in the State of
registration »
II. « (3) An action to declare the invalidity of the registration of

rights arising in multiple States may be brought in the State
or States in which the defendant is resident, but the effect
of the judgment on rights registered in States other than
the forum will be limited to the parties to the action »
PIL of IP - 2010 159

Alternative solution : the merits of the CLIP / ALI-

solution
• Practical consequences of the limitation of the
effects of the decision of the court : is it realistic to
provide that the decision of the court seized of the
infringement, on the validity, will be limited inter
partes? The rationale is that this limitation will
avoid that the court seized of the infringement will
encroach upon the exclusive domain of the court
having jurisdiction under Art. 22(4). But in
practice, will this court not in any case be tempted
to take into account the decision on (in-)validity?
PIL of IP - 2010 160

• Ruling of ECJ in GAT v Luk does not affect

litigation of other IP-rights
• Community Trade Mark and Community Design
Regulation allow court seized of infringement,
to rule on the validity or revocation of the right
(art. 96(1° Community Trade Mark Regulation
and art. 83 Community Design Regulation)
• Proviso : i) court seized of infringement must
inform relevant Community Office and ii) court
may (discretion) stay the proceedings (but
then : require the defendant to submit and
application for declaration of invalidity to the
Office)
PIL of IP - 2010 161

3/Consolidation of complex
disputes
PIL of IP - 2010
I. Why and when consolidate?
• Classic scenario : plaintiff brings proceedings against

several defendants who are allegedly involved in the
infringement of one or several patent
• E.g. Coin Controls v. Suzo Int. (UK) Ltd [1997] FSR 660 –
High Court of Justice, Judge Laddie : action by the holder
of identical national (UK, Germany and Spain) patents
against multiple defendants - an English company which
sold the product in England; a Dutch company which
made the products; a Spanish company which sold the
products in England, Spain and Germany and a German
company which sold the products in Germany
PIL of IP - 2010
• Reverse scenario : plaintiff brings

proceedings requesting a declaration
of non infringement against several
defendants, each holding a national
patent for a similar product
• Yet other scenario : several plaintiffs
(same corporate group) bring
proceedings against several
defendants (same corporate group or
not)
PIL of IP - 2010
• Other scenario 'single defendant cases'

but multiple infringements committed
by the same infringer, consolidation is
also necessary
PIL of IP - 2010
• Why consolidate?
– Procedural economy (IP-disputes
are fact-intensive, why let several
judges study the file?)
– Fear of inconsistent judgments
PIL of IP - 2010
• Basic rule : domicile of the defendant

(art. 2 Reg. 44/2001)
• Is consolidation possible?
• Art. 2 basis for consolidation if single
defendant and multiple infringement
• What about multiple defendants
cases?
PIL of IP - 2010
II. Art. 6 in general as a basis for
consolidation
• Art. 6 Brussels I Regulation deals with

various cases of complex jurisdiction
• Four cases of complex jurisdiction:
I. Multiple defendants
II. Third party proceedings (action on a
warranty or guarantee)
III. Counter-claim
IV. Action relating to a contract may be
combined with an action relating to rights
in rem in an immovable property located in
the same country
PIL of IP - 2010
II. Art. 6 in general as a basis for
consolidation
• Rationale of Article 6 Brussels : avoid piecemeal

litigation
• Art. 6 attempts to strike a balance between
procedural economy (one set of proceedings)
and preserving other rules of jurisdiction
(mainly domiciliary principle – art. 2) by
allowing consolidation in some cases and
provided some requirements are met
e.g. in case of third party proceedings, third party may
be called in guarantee “unless [the third party
proceedings] were instituted solely with the object of
removing him from the jurisdiction of the court which
would be competent in his case »
PIL of IP - 2010
III. Multiple defendants in cross-border IP
litigation
• In 'multiple defendants cases' (several

defendants are allegedly liable for the
infringement) : art. 6(1) offers only
possibility to consolidate
PIL of IP - 2010
litigation
• Art. 6(1) : plaintiff may elect to bring

proceedings before the court of the
domicile of one of the defendants
• No possibility to use art. 6(1) and bring
proceedings before the court of the place
of the harmful event or any other court
• No other possibility to consolidate claims
before the same court – Brussels I
Regulation does not provide for a 'related
action' mechanism (related actions : art.
28 only allows a negative consolidation)
PIL of IP - 2010
litigation
• Temptation of art. 6(1) : plaintiff brings

proceedings before the courts of the
domicile of one of the defendants at
his choice (e.g. plaintiff brings an
action in contract against defendant A
and an action in tort, which is totally
unrelated to the first action, against
defendant B...). If this were possible, it
is obvious that Art. 6(1) could lead to
abuses or at least surprising results
PIL of IP - 2010
litigation
• Hence requirement in Art. 6(1) : there

must be a connection between the
various claims.
• At first requirement did not appear in
the 1968 Brussels Convention.
Requirement was added by ECJ in
Kalfelis - action in contract and in tort
by an investor against a German bank
and a Lxbg bank following loss
incurred on investment.
PIL of IP - 2010
litigation
• ECJ in Kalfelis : “The principle laid down in the Convention

is that jurisdiction is vested in the courts of the State of
the defendant's domicile and that the jurisdiction provided
for in Art. 6 (1) is an exception to that principle. It follows
that an exception of that kind must be treated in such a
manner that there is no possibility of the very existence of
that principle being called in question. That possibility
might arise if a plaintiff were at liberty to make a claim
against a number of defendants with the sole object of
ousting the jurisdiction of the courts of the State where
one of the defendants is domiciled »
PIL of IP - 2010
litigation
• Holding of ECJ in Kalfelis : “there must be

a connection between the claims made
against each of the defendants »
• Requirement is now as follows in the text
: « provided the claims are so closely
connected that it is expedient to hear
and determine them together to avoid
the risk of irreconcilable judgments
resulting from separate proceedings »
(test is inspired by Art. 28 – related
actions)
PIL of IP - 2010
litigation
• Existence of a sufficient connection

between various claims is linked to
“risk of irreconcilable judgments
resulting from separate proceedings”
• When is there a risk of inconsistent
judgments
PIL of IP - 2010
litigation
• There are in fact two versions of the

test of irreconcilable judgments in the
Regulation :
I. Strict version – judgments are
irreconcilable if they contain
mutually exclusive legal
consequences (e.g. proceedings 1 :
contract is void and proceedings 2 :
contract must be performed)
PIL of IP - 2010
litigation
• Broad version – (accepted by ECJ in

Tatry in 1994 for application of Article
28 (3) - related actions) : judgments are
irreconcilable if “separate trial and
judgment would involve the risk of
conflicting decisions, without
necessarily involving the risk of giving
rise to mutually exclusive legal
consequences » (e.g. in proceedings 1,
A is ordered to pay 150 and in
proceedings 2, B is ordered to pay 50)
PIL of IP - 2010
litigation
• Question : when is there a sufficient

connection in IP-disputes?
• Various angles to consider the
requirement of a connection : whether
or not there is a link, can be looked at
from two perspectives
PIL of IP - 2010
litigation
• Focus on the link between the defendants

(e.g. is there a common action of the
defendants as joint tortfeasors? One
company manufactures the products, the
other sells them; it would be different in
case of a chain of separate acts of
distribution, with each link acting
independently, e.g. purchaser A in country
X buying from seller B in country Y, which
bought from seller P in country Z)
PIL of IP - 2010
litigation
• Focus on the link between the various claims :

I. One patent, various tortfeasors (manufacturer and
distributor of products which allegedly infringe the same
patent)
II. One patent, various tortfeasors acting independently
(companies not part of the same group, each one of
them manufacturing products which are said to infringe
the patent)
III. Claim based on the existence of several independent
national patents (company A alleges that company B
infringes its German patent in Germany and its Belgian
patent in Belgium)
PIL of IP - 2010
litigation
• Courts of various Member States have

adopted different readings of Article
6(1) and in particular of the Kalfelis
proviso when dealing with IP disputes
• Some courts have shown a greater
willingness than other courts to accept
jurisdiction based on Article 6(1)
• Discussion focused specifically on
proceedings relating to national
versions of the same European patent
PIL of IP - 2010
litigation
• Fort Dodge (C.A. England 1997) : A

Dutch company, Akzo Nobel BV owned a
basket of patents, all derived from an
application prosecuted through the EPO
relating to canine vaccines. In particular it had
Dutch and United Kingdom patents which
were to all intents and purposes identical.
Akzo brought proceedings against a group of
companies (Fort Dodge – companies from the
UK, Netherlands and various other countries)
which was also making and selling canine
vaccines.
PIL of IP - 2010
litigation
• Fort Dodge (C.A. England 1997) : Akzo

brought ex parte application before Dutch
courts, seeking relief against Fort Dodge for
infringement of its Dutch patent in the
Netherlands and its English patent in the UK
• Fort Dodge brought proceedings in England
before the Patents Court in England to revoke
Akzo's UK patent
PIL of IP - 2010
litigation
• Question : is there a sufficient

connection between the various claims
to justify application of Article 6(1)?
Court of Appeal considers that there is
no sufficient connection.
PIL of IP - 2010
litigation
• According to the Court, action relating to a UK patent and

a Dutch patent are « actions relating to two different
national rights. True they stem from the same patent
application and similar rules of construction will be
applicable, but the rights given by those patents are
national rights limited in territory to the State in which
they are registered and the ambit of the monopolies will
not necessarily be the same as amendment is possible.
There is no risk of irreconcilable judgments because a
judgment on infringement in the UK will depend upon a
national right having effect only in the UK. The same
applies to a judgment on the Dutch patent ».
PIL of IP - 2010
litigation
• Dutch courts at first more sensitive to

the need to concentrate proceedings
before one court and thus holding that
the fact that the various national patents
originate from one European patent
application constitutes as such a
sufficient connection (Chiron Corp. v.
Akzo Pharma Organon Technika-UBI)
• Court of Appeal of The Hague refined its
case law in Expandable Grafts v. Boston
Scientific (1998)
PIL of IP - 2010
litigation
• Expandable Grafts : Court held that in

principle, there is no connection
between the claims since factual and
legal identity between the various
claims is not sufficient to confer the
required degree of connection under
Article 6(1)
PIL of IP - 2010
litigation
• However, if the defendants are part of the

same group of companies and are acting
together on the basis of a common policy
and the alleged infringing acts of the
various defendants are the same or
virtually the same, the court of the place
where the policy originates can exercise
jurisdiction over all defendants ('spider in
the web'). Court should therefore look for
the relevant head office / decision making
centre of the group of companies
PIL of IP - 2010
litigation
• Expandable Grafts :
I. Pro : bold intepretation of Art. 6(1), in line
with how patent portfolio's are managed
today (compare with the 'old fashioned'
approach of Regulation, still based on the
'domicile' of companies...)
II. Con : sometimes difficult for the court to
identify the spider in the web; quaere if
there is no real spider?
PIL of IP - 2010
litigation
• The spider of the web doctrine was

later expanded (in the Eka Chemicals
AB v. Nalco Europe case) : the court
held that the Dutch company does not
need to be the 'head spider'. It is
sufficient that it controls the European
subsidiaries (even if it is controlled by
the US parent company)
PIL of IP - 2010
litigation
• ECJ in Roche v. Primus (2006) :

I. Primus and Goldenberg, two American
scientists, bring proceedings in the
Netherlands against 9 companies of the
Roche group (among which Roche BV)
alleging infringement of a European patent
(covering immuno-assay kits...)
II. Application of Article 6(1)? Is there a risk of
irreconcilable judgments?
PIL of IP - 2010
II. Multiple defendants in cross-border IP
litigation
• ECJ : « no risk of irreconcilable decisions being given

in European patent infringement proceedings
brought in different Contracting States involving a
number of defendants domiciled in those States in
respect of acts committed in their territory »
• Why? Because « In order that decisions may be
regarded as contradictory, it is not sufficient that
there be a divergence in the outcome of the
dispute, but that divergence must also arise in the
context of the same situation of law and fact »
PIL of IP - 2010
litigation
• And : « in the case of European patent

infringement proceedings involving a
number of companies established in
various Contracting States in respect of
acts committed in one or more of those
States, the existence of the same
situation of fact cannot be inferred,
since the defendants are different and
the infringements they are accused of,
committed in different Contracting
States, are not the same »
PIL of IP - 2010
litigation
• ECJ further points to the fact that patents

originating from EPO patent application are
« governed by the national law of each of
the Contracting States for which it has
been granted » (ECJ refers to Art. 64(3) of
the Munich Convention according to which
any action for infringement of a European
patent must be examined in the light of the
relevant national law in force in each of the
States for which it has been granted)
PIL of IP - 2010
litigation
• Conclusion : « Any diverging decisions could not,

therefore, be treated as contradictory»
• ECJ adds that the fact that defendant companies
belong to the same group and have acted in an
identical or similar manner in accordance with a
common policy elaborated by one of them does not
influence outcome, because i) the legal situation
would still be different, so divergences would not
amount to contradiction, and ii) Court fears difficulty
of application in practice of the 'spider in the web'
test
PIL of IP - 2010
II. Multiple defendants in cross-border IP
litigation
• ECJ : refers to the « predictability of the

rules of jurisdiction » and the « principle of
legal certainty » which could be
undermined. Court favours protection of
defendant above considerations of
procedural economy
• Lesson to be drawn from Roche : it is clear
that ruling of ECJ applies also to
infringement of national patents (risk of
irreconcilable decisions is even weaker, at
least if one adopts the ECJ's reading of this
test).
PIL of IP - 2010
litigation
• Aftermath of Roche : exercise of cross-border

jurisdiction over multiple defendants still possible?
Court seems to have closed the door to application of
Art. 6(1) to patent infringement proceedings (ECJ went
further than rejecting the 'spider in the web' doctrine; it
took away possibility to apply Art. 6(1) altogether in
case of infringement by multiple defendants)
• Consequence : piecemeal litigation (reinforcing the
consequences of GAT v LuK) and making it difficult to
consolidate proceedings / issue a joinder of claims
PIL of IP - 2010
litigation
• Aftermath of Roche : it may still be possible

to use Art. 6(1) and join several defendants
before the domicile of the 'head-defendant'
if the role of company at the center of the
web is not limited to decision-making, but
also involves acts of infringement (such as
shipping the products to its subsidiaries)
since in that case the 'spider' is also
personally liable for the infringement jointly
with the national subsidiaries
PIL of IP - 2010
litigation
• Aftermath of Roche : Düsseldorf District

court has held that there is a “close
connection” between defendants who
committed the alleged patent infringement
in complicity (One member of the board of
directors of an English company is
domiciled in Germany. The directors and
the English company can be sued for an
alleged infringement of the U.K. and the
German part of EP either before an English
or German court)
PIL of IP - 2010
litigation
• Evaluation of Roche : is reasoning of the

ECJ convincing? Is there indeed no risk of
irreconcilable judgments if courts of
different MS rule on national version of
the same patent application?
• Undeniable that in the spider in the web
situation, the factual situation is the
same (affiliated companies act according
to a common strategy devised by one
central office)
PIL of IP - 2010
litigation
• What about legal divergences? European

patents are indeed subject to the law of the
country for which they are granted, but
these laws are not fully autonomous
instruments. Contracting States must
comply with the content of the EPC. For
patent infringements, see art. 69 EPC and
Protocol guiding application
• AG had been more nuanced and argued that
art. 69 only concerned the content of the
patents and does not affect the legal scope
of the claims
PIL of IP - 2010
litigation
• Art. 69-1° : “The extent of the protection

conferred by a European patent or a
European patent application shall be
determined by the terms of the claims.
Nevertheless, the description and drawings
shall be used to interpret the claims
• In fact, even though national law will come
into play to a certain extent, the legal
assessment of what constitutes the object of
the alleged infringement will be the same in
all MS
PIL of IP - 2010
litigation
• Conclusion : it can be regretted that

the ECJ has given priority to strict
application of domiciliary principle over
and above considerations of
procedural efficiency (consolidation).
Spider in the web doctrine seemed a
balanced and pragmatic approach to
multiple defendants litigation (even
though it does generate a certain
amount of uncertainty)
PIL of IP - 2010
suing at the place of
infringement
PIL of IP - 2010
I. Introduction
• Basic rule under the Brussels I

Regulation : court of the domicile of the
defendant (art. 2)
• Rationale : defendant must be protected
since has not asked to be bothered by
court proceedings… (disputed : is there a
‘natural’ defendant?)
• This rule is of a general nature (no limit
as to the nature of the dispute – caveat :
exclusive jurisdiction)
PIL of IP - 2010
I. Introduction : the jurisdictional
landscape in Europe
• ECJ has always attempted to

preserve prevalence of Art. 2
(interpretation of other rules of
jurisdiction should not go too far
to avoid putting domiciliary
principle at risk
• Specific definition of the domicile
of a natural / legal person (artt.
59/60 Regulation)
PIL of IP - 2010
landscape in Europe
• Plaintiff may not want to

bring proceedings before the
defendant's court – which
would give the latter a 'home
court' advantage
• Brussels I Regulation also
offers other possibilities in
terms of jurisdiction
PIL of IP - 2010
landscape in Europe
• Besides Art. 2, the Brussels I

Regulation also provides for other
rules of jurisdiction :
I. Rules of exclusive jurisdiction (art. 22 –
specifically art. 22(4) relating to patents,
trade marks, designs and similar rights)
II. Article 23 : possibility for parties to decide
which court has jurisdiction (limited use in
patent disputes; potential role in IP-contracts)
III. Rule aimed at avoiding splitting up of disputes
(art. 6 : multiple defendants)
PIL of IP - 2010
landscape in Europe
• Article 5 of the Brussels I

Regulation (44/2001)
I. Optional rule of jurisdiction : exists next to article
2, at the option of the plaintiff (“may also be
sued . . .”)
II. Article 5 aims at specific disputes : several
headings (contracts, torts, maintenance, etc.)
III. Rationale of Article 5 : jurisdiction granted to a
court with a close link to the dispute (e.g. in
contractual matters, jurisdiction granted to the
court of the place where the contract was or
should have been performed)
PIL of IP - 2010
landscape in Europe
• Art. 5 (3) Brussels I Regulation

(and Lugano Convention) :
possibility to sue at the place of
infringement?
• Art. 5(3) : proceedings may be
brought « ... in matters relating
to tort, delict and quasi-delict, in
the courts for the place where
the harmful event occurred or
may occur”
PIL of IP - 2010
landscape in Europe
• Next to the Brussels I Regulation,

specific rules of jurisdiction in
particular instruments which could
help reach the same result, e.g. :
I. Art. 93(5) Regulation 40/94 on Community Trade
Mark : proceedings may be brought « in the court
of the Member State in which the act of
infringement has been committed or
threatened »
II. Art. 82(5) Regulation 6/2002 on Community
Designs
PIL of IP - 2010
II. Article 5(3) : jurisdiction over matters
relating to a delict
• Scope of application
I. Aims at disputes relating to torts
(very wide)
II. Autonomous meaning of the phrase
(ECJ, Kalfelis v. Bankhaus Schröder
Münchmeyer Hengst & Co, case
189/87, ECR [1988] 5565). Article
5(3) should not be confined to case
where there is an action “in tort”
under national law
PIL of IP - 2010
II. Article 5(3) : scope of application
• e.g. an action brought by a shareholder

against the directors of a company,
claiming the directors have acted in
violation of their duty of care or any other
fiduciary duty owed to the company, may
be, as a matter of national law, subject to
a specific regime put in place by rules of
corporate law, so that it is seen, again as a
matter of national law, as not in tort. For
the purposes of Art. 5(3), one should,
however, disregard the characterisation
given by national law
PIL of IP - 2010
• General definition given by the ECJ : “all

actions seeking to establish the liability
of the defendant and which are not
related to a contract in the meaning of
article 5(1)”
• Mutual exclusivity : it is necessary to
determine first whether the claim made
relates to a contract according to the
autonomous meaning of Article 5(1); it
is only if this is not the case that one
may examine whether the claim falls
under Art. 5(3)
PIL of IP - 2010
II. Art. 5(3) : scope of application
• If infringement issue put forward while

there is a contractual relationship
beween parties (rare occurrence),
application of art. 5(3°)?
PIL of IP - 2010
• Still some uncertainty on the exact

scope of Art. 5(3)° e.g. quid of a
pauliana? Quid of pre-contractual
liability?
• But greater number of IP-disputes clearly
fall under Article 5(3). In fact, disputes
relating to IP-rights and specifically in
infringement cases: ‘breeding ground’
for actions based on tort
• Only exception : contracts relating to IP-
rights (license, etc.)
PIL of IP - 2010
• No doubt that Art. 5(3) may be used if

claims seeks to establish liability for
personal injury or damage to physical
property but also for damage to
intangible property (e.g. reputation – IP
rights)
• At one point doubted whether Art. 5(3)
could be used in action to prevent
threatened infringement (original
version of Art. 5(3) referred to courts for
the place where the harmful event “has
occurred”)
PIL of IP - 2010
• ECJ in Henkel (C-167/00, § 46) has made clear that

art. 5(3) could be used for preventive action
(according to ECJ, the rationale of art. 5(3) is
«equally relevant whether the dispute concerns
compensation for damage which has already
occurred or relates to an action seeking to prevent
the occurrence of damage »)
• Wording of Art. 5(3) adapted in the Regulation to
make clear that this provision can also be applied
to prevent future harm (“ . . . where the harmful
event occurred or may occur . . .”)
PIL of IP - 2010
• Logic consequence of application of

Art. 5(3) to preventive action : art.
5(3) may also be relied on when an
action is brought, not for damages
(i.e. monetary compensation), but
also for injunctive relief (by
definition, preventive action cannot
seek compensation for damage
which has not yet occurred)
PIL of IP - 2010
• e.g. ECJ, 1 October 2002, Verein für

Konsumenteninformation v. Karl Heinz
Henkel, case C-167/00 : Austrian
consumers association brings
proceedings against a German
businessman who organized
‘commercial day-trips’ and thereby
used contracts that contained clauses
unfair for the consumers. The
businessman claimed that Art. 5(3) did
not apply since there was no damage
in Austria.
PIL of IP - 2010
• e.g. ECJ, 1 October 2002, Verein für

Konsumenteninformation v. Karl Heinz Henkel:
ECJ : the association and the businessman had
not entered into a contract. The businessman
may have concluded some contracts with the
consumers, but not directly with the plaintiff. The
association actually acted based on a special
legislation which granted it the right to sue in the
name of consumers. The Court concluded that
Art. 5(3) not only covers actions where damages
for individual damage is sought, but also
collective actions where a ‘collective’ damage is
complained of
PIL of IP - 2010
• Application of art. 5(3) to IP-disputes:

I. No doubt about application to claim for
damages as a compensation for the
economic harm caused by infringement
II. Claims directly related to claim for
compensation (e.g. claim for
accounting) : also covered
PIL of IP - 2010
• Application of art. 5(3) to IP-disputes:

I. Quaere action for restitution of profits
obtained through infringement? Liability of
defendant is still the starting point of such
claim – application of art. 5(3) warranted
II. Quaere application of Article 5(3) in case of
'contributory' infringement? (manufacture /
sale by a company of part of a product
under a patent, with the knowledge that
such component has been especially made
for use in the infringement of a patented
invention)
PIL of IP - 2010
II. Art. 5(3) : scope of application
• What about application of art. 5(3) to non-

infringement actions? i.e. action by which
a plaintiff seeks to establish that no
infringement has been committed
(declarative action)?
• Such actions have been used in litigation
strategy (e.g. so-called torpedo's)
• See hereunder for treatment of this
question
PIL of IP - 2010
III. Article 5(3) : interpretation
• As an exception to the domiciliary rule

(i.e. Article 2 of the Regulation), Art.
5(3) may not be construed too broadly
• According to the ECJ, provisions which
allow a defendant to be sued, against
his will, in a member state other than
that of his domicile, must be construed
narrowly (ECJ, Kalfelis v. Bankhaus
Schröder Münchmeyer Hengst & Co,
case 189/87, ECR [1988] 5565)
PIL of IP - 2010
• Consequence of the narrow

interpretation by the ECJ :
no accessory jurisdiction
―› if a court has jurisdiction
under Art. 5(3), it may not
on that basis also rule on a
contractual aspect of the
claim
PIL of IP - 2010
• Narrow interpretation does not mean that art.

5(3) is ‘toothless’ : when it is applicable, one
can use all the possibilities of art. 5(3):
I. Application of Article 5(3) even in case of denial of
infringement : denial of the existence of a tort does not
deprive the court from its jurisdiction. It would be too
easy for the defendant to escape the jurisdiction of the
courts under Article 5(3) by arguing that there is in fact
no infringement. It is up to the court having jurisdiction
under Article 5(3) to decide whether it has jurisdiction
PIL of IP - 2010
III. Art. 5(3) : interpretation
• When it is applicable, one can use

all the possibilities of art. 5(3):
I. Article 5(3) can also be applied to culpable
inaction by a defendant (although in that
case it may not always be easy to locate the
place of the harmful event : enquire where
the action should have been taken)
II. Art. 5(3) can also be applied to prevent
future harm (wording adapted : “ . . . where
the harmful event occurred or may
occur . . .”)
PIL of IP - 2010
IV. Art. 5(3) : which court has jurisdiction ?
• Art. 5(3) refers to the courts of the country “where

the harmful event took place”
• In most cases, the application of Article 5(3) does
not raise difficulty:
e.g. a Belgian pedestrian is knocked over by a car driven by
an Italian citizen in Trier (Germany) and treated in a hospital
in Trier : there is no doubt that the harmful event occurred
in Germany.
e.g. a fire destroys somebody’s house in Paris, the fire has
been set by a pedestrian recklessly throwing his cigarette
bud. The pedestrian is a US citizen residing in Belgium.
Harmful event : France
PIL of IP - 2010
• Place of the “harmful event” : very wide

concept, what could it mean in the IP-
context?
• Can inspiration be found in specific
provisions applicable to some IP-rights?
See Art. 93(5) Community Trade Mark
Regulation 40/94 and Art. 82(5) of the
Community Design Regulation 6/2002,
which refer to the place where “the act of
infringement has been committed or
threatened”
PIL of IP - 2010
• If that reading is followed, art. 5(3) would have to be

read as leading to the court of the place of infringement
• Application of Article 5(3) would not raise specific
problems if place of infringement can be easily localized
• e.g. registration of a domain name using a trademark
belonging to another company : if company B, established in
the Netherlands, registers a domain name 'Trademark.be'
with the competent authorities (Belgian DNS), where can the
company Trademark, a company established in Belgium,
bring proceedings? (Brussels, 4 December 2004, J.T., 2005,
338)
PIL of IP - 2010
• However, in many cases, place of infringement can

be either difficult to localize (e.g. infringement on
line) or not limited to one single place (e.g. for
trademark, infringement is the reproduction, use
or dissemination of the right – what if all 3
elements take place in different countries?)
• Further, is the place of infringement the only
relevant element to determine jurisdiction under
Art. 5(3)?
PIL of IP - 2010
V. Art. 5(3) : application in complex cases
• Hence, need to look closely at art. 5(3) in

complex infringement cases
• Application of Art. 5(3) raises difficulty if:
 Harmful event cannot be easily localized
 There are several harmful events (or harmful
event is a sequence of events)
 Can I also sue at the place where the damage
occurs?
 Can I bring an action for a declaration that
there is no infringement?
PIL of IP - 2010
V(1).What if place of harmful event
cannot be easily localized?
• Place of harmful/causal event : what is it in

relation to infringement of an IP-right?
• ECJ : it is the place « at the origin of that
damage » (ECJ, Bier, § 25)
• In most cases, this will be the place where the
infringement is committed
• In some cases, the infringement can easily be
identified and localized (e.g. French company
produces in France a product which it sells in
France, and allegedly infringes French patent
held by a Swiss company)
PIL of IP - 2010
• Place of harmful/causal event : more

difficult in the causal event is not a
material/physical fact
• What if e.g. causal event is an oral
declaration, made on the telephone?
PIL of IP - 2010
• See case of Alfred Dunhill Ltd. v. Diffusion Internationale de

Maroquinerie, [2002] I.L.Pr 13 (QB, 1 February 2001) : Dunhill, an
English company enters into contracts for manufacture and supply of
travel goods, to be distributed under its brand name, with French
company. French company procures fabric for the travel goods from
an Italian company. The fabric proved to be unsuitable, and Dunhill
brought proceedings in England for rescission of the supply contract
and damages, alleging that misrepresentations had been made as to
the quality of the fabric. Dunhill argues that there is jurisdiction
under Art. 5(3) in England because alleged misrepresentations as to
the quality of the fabric were made by telephone or fax from Italy or
France and received in England (with one face to face meeting in
Italy
PIL of IP - 2010
• In Dunhill, the court held that the event that caused the
harm for the purposes of Article 5(3) was the making of
misrepresentations in Italy and France
• According to the court, the place where the harmful event
occurred was where the misstatement originated. It was
there that the negligence, if not every element of the tort,
was likely to have taken place and for that and other
reasons the place from which the misstatement was put
into circulation was as good a place to found jurisdiction
as the place where the misstatement was acted on, even
if receipt and reliance were essential parts of the tort
PIL of IP - 2010
• The Dunhill case illustrates

– The difficulty of localizing the causal
event when the event is immaterial /
non-physical
– The temptation of a national court to rely
on the applicable law (in this case the lex
fori) in order to identify the relevant
elements of the tort (causal event) and
localize them
PIL of IP - 2010
• ECJ has, however, stressed that the law applicable

to the tort is not relevant at all when applying Art.
5(3)
• See Shevill case : in a case of defamation, it was
argued that the place of the causal event could
only be the place where the newspaper was
communicated to the public, since this was a
crucial element for the existence of defamation
under English law
• ECJ : no relevance at all, clear separation between
issue of jurisdiction and issue of applicable law;
elements of Art. 5 (3) should be determined
autonomously (§ 40)
PIL of IP - 2010
• It remains that in some case, it will be very

difficult, if not impossible to localize the
place of the causal event
• Two series of cases where it is difficult to
localize the place of the causal event
– Cases where the infringement is in fact a
sequence of events taking place in
different countries (so-called 'multi-
events tort')
– Cases involving infringement on line
PIL of IP - 2010
• Cases where the infringement is in fact a sequence of

events taking place in different countries
• In most cases, infringement of an IP-right will be made
out of several steps : e.g. copying a patent protected
work, producing the infringing product, advertising and
selling the product, etc.
• If the various constituting steps take place in one single
jurisdiction, no difficulty of international jurisdiction
• Difficulty arises in cases where there is multi-State
dissemination of the various infringing steps
PIL of IP - 2010
• e.g. what if the allegedly infringing product was made in

Spain and then imported in Belgium? What if the infringing
product is designed and produced in Italy, but displayed at a
trade show in Belgium? Would this be sufficient to say that
the harmful event occurred in Belgium?
• See Court of Appeal Paris, case Ideal Clima SpA and Others v.
SA Ideal Standard (Gaz. Pal., 1982, somm., 378), holding in a
copyright case that this was indeed sufficient to create
jurisdiction under Article 5(3). See also Mölnlycke AB and
another v. Procter & Gamble Ltd. and others, [1992] 1 WLR
1112 : English court found it had jurisdiction to hear a claim
brought because allegedly infringing products (nappies) were
marketed in England
PIL of IP - 2010
• Difficulty is not specific to IP-cases - could also happen in defamation

cases
• Seminal case : Shevill v. Presse Alliance SA, C-69/93 [1995] ECR I-415 :
plaintiff, a UK national residing in France, alleged that a French newspaper
had published an article about an operation by a French drug squad at a
bureau de change in Paris where she worked. According to claimant, the
article was defamatory, because it suggested that the business was
involved in drug-trafficking network. Copies of the newspaper were sold
outside France, some were sold in England (a very limited number).
Claimant brought proceedings in England – because defamation is rather
easy to demonstrate under English law. The plaintiff argued that the
courts of England had jurisdiction because the newspaper was also sold in
the UK.
PIL of IP - 2010
• In Shevill, dissemination of the various

elements making up the causal event
– Newspaper article written in France;
– Newspaper published in France;
– Newspaper sold and read in England
PIL of IP - 2010
• In Shevill, the ECJ held that:

– Defamation is a tort; no reason to think
that another solution should be
contemplated for other 'immaterial' torts,
such as infringing IP-rights
– The place of the harmful event : the place
where the publisher of the defamatory
publication is established, but ECJ added
that this is because this is 'the place where
the harmful event originated and from
which the libel was issued and put into
circulation' (§ 24)
PIL of IP - 2010
• What should we infer from Shevill in

relation to infringement of IP-rights as a
sequence of events disseminated in
various States?
– That the causal event is the place of
establishment of the alleged infringer?
– Or that this is only the case when an
important or the most important part of
the causal event also took place where
the alleged infringer is established?
PIL of IP - 2010
• Debate is still on-going about this

difficult question
• e.g. Prof. Nuyts : “in infringement
matters, the causal event lies within the
territory where the infringing material
originates, was issued or sent, which
normally should coincide with the place
where the alleged infringer is
established” (“Suing at the Place of
Infringement...”, at p. 112)
PIL of IP - 2010
• If infringing material is produced in State

where alleged infringer is established,
probably better to hold that the causal event
took place in that State, even though product
is sold in other State
• If alleged infringer is established in State A
and allegedly infringing material is produced
and offered for sale in State B, probably
better to hold that causal event takes place
in State B, even though the whole infringing
process is masterminded from State A
PIL of IP - 2010
• Solution to the difficulty : art. 2-202 CLIP Principles?

• “(1) In disputes concerned with infringement of an intellectual
property right, a person may be sued in the courts of the State
where the alleged infringement occurs or may occur.
• (2) For the purposes of paragraph 1, an infringement occurs in
a State where the intellectual property right exists, provided
that (a) the defendant has substantially acted or has taken
substantial preparatory action to initiate or further the
infringement, or (b) the activity by which the right is claimed
to be infringed has substantial effect within, or is directed to,
the territory of that State.”
PIL of IP - 2010
• Another difficulty : on line infringement (mostly for

trademark and copyright – rarely for patents). Where does
the infringement takes place if copyrighted work (e.g. a
book) is copied on a server in the Netherlands by a US
company, and displayed on a webpage accessible by
anyone anywhere?
• Seminal example : video's posted on YouTube, with
copyrighted songs (recorded during concerts or on TV) – is
infringing act the creation and management of the
platform (US), the posting of video by a user (anywhere)
or the fact that another user watches the video from
home/office computer (anywhere)?
PIL of IP - 2010
• Similar difficulty in case of infringement of a

copyright by (satellite) broadcasting . Where
is the place of the harmful event? See
Fawcett & Torremans at pp. 159-160 : « it is
exceedingly hard to say where the act of
infringement occurred when there is a whole
sequence of events between the original
uploading (input) of information and its
eventual display in the screen in another
country »
PIL of IP - 2010
• Caveat : not all internet cases are difficult...

• e.g. Case Liberty Voyages.com (Court of Appeal of Brussels,
2.12.2004, Benelux Liberty TV, I.R.D.I., 2005, 197; Ing. Cons.,
2004, 537) : a Belgian company active in the travel industry has
registered a trademark (Liberty tv.com) with the Benelux
Trademark Office. The company has also registered the domain
name liberty-tv.com. The company brought proceedings in
Belgium against a Swiss company, which ran a travel agency in
Switzerland under the name Liberty Voyages. The Swiss
company also ran a web-site under the name www.liberty-
voyages.com, which was only accessible in French. The travel
agency was a purely local business (offering travel services only
to and from Swiss airports, invoicing clients exclusively in Swiss
francs, etc). The Belgian company complained about the
infringement of its trademark
PIL of IP - 2010
• The Court of Appeal examined its jurisdiction under Art. 5-3 of

the Lugano Convention (similar to Art. 5-3 of the Brussels
Regulation). The court first noted that the operation of Art. 5-3
in internet-related cases proved difficult (« La mise en oeuvre
des critères de rattachement précités en ce qui concerne les
litiges relatifs à l'usage du réseau de communication mondial
Internet, notamment par l'enregistrement et l'exploitation d'un
nom de domaine, entraîne des difficultés particulières liées au
fait que le réseau est fondamentalement accessible à tous et en
tout point du monde, en sorte qu'il existe potentiellement un
point de rattachement à chacun des ordres juridiques avec
lequel la connexion est créée lors de la consultation d'un site »)
PIL of IP - 2010
• The Court referred to the rationale of Art. 5-

3, i.e. the existence of a close link between
the court and the dispute at hand. In the
case at hand, the court found that the
infringing act was the registration of the
domain name with reference to the
trademark Liberty and the use of this
domain name to run a web-site. The Court
accepted that the place of the harmful event
was located in Switzerland since it was there
that the defendant was established and ran
its activities
PIL of IP - 2010
• The Court the noted that the defendant's

activities were strictly confined to Switzerland
and that the defendant had never undertook
any commercial steps in Belgium or in the
Benelux. Hence the fact that the defendant
used a .com web-site could not be considered
sufficient to say that the harmful event also
took place in Switzerland (« le fait que l'intimée
se serve d'un mode de communication
aisément accessible sur le territoire du Benelux
ne permet pas de localiser l'événement causal
sur ce territoire »)
PIL of IP - 2010
• In any case, avoid the temptation to read in

Art. 5(3) the possibility to bring proceedings
in local courts 'because the web-site can be
viewed there'...
• e.g. TGI Paris, (3rd Ch.), 14 Sept. 2004 : use of
'Synergie' for temp work agency by Canadian
company on web-site offering temp work
services; claim by Adecco which uses similar
brand for its services; do French courts have
jurisdiction (case under French rules of
jurisdiction – Brussels I Regulation not
applicable...)
PIL of IP - 2010
• TGI Paris holds that “Dès lors que l'élément dénominatif de la

marque 'Synergie' se trouve intégralement reproduit sur les pages
de sites internet canadiens qui proposent des services de travail
temporaires similaires à ceux visés par l'enregistrement de la
marque opposée, il en résulte un risque de confusion évident dans
l'esprit du consommateur normalement attentif qui peut être amené
à penser que la société Synergie est associée à la société Adecco,
son principal concurrent; Il ne saurait être valablement soutenu que
ces sites ne sont pas destinés à la clientèle française dès lors que les
pages sont accessibles depuis le territoire français à partir du moteur
de recherche « Google », qu'elles sont en langue française et qu'elles
n'excluent nullement le consommateur français des offres
proposées »
PIL of IP - 2010
• In online cases, place of the harm also raises

difficult issues... (see hereafter)
PIL of IP - 2010
• For online infringements : see solution suggested by CLIP Principles

• “In disputes concerned with infringement carried out through
ubiquitous media such as the Internet, the court whose jurisdiction is
based on Article 2:202 shall also have jurisdiction in respect of
infringements that occur or may occur within the territory of any
other State, provided that the infringement has no substantial effect
in the State, or any of the States, where the infringer is habitually
resident (Article 2:102) and (a) substantial activities in furtherance of
the infringement in its entirety have been carried out within the
territory of the country in which the court is situated, or (b) the harm
caused by the infringement in the State where the court is situated is
substantial in relation to the infringement in its entirety »
PIL of IP - 2010
• Last resort solution : ECJ has held in Réunion

européenne that if it proves impossible to
identify the place where the event giving
rise to the damage occurred, then Art. 5(3)
must be interpreted to mean that it only
allocates jurisdiction to the courts of the
country where the damage occurred (see
hereafter for this second limb of art. 5(3))
PIL of IP - 2010
V(2).May I also sue at the place where
I suffer damage?
• What if the place of infringement can be easily

localized, but it appears that the damage is suffered
in a different MS?
• Situation arose in a seminal (non IP) case : ECJ
Handelskwekerij GJ Bier v. SA Mines de Potasse
d’Alsace, case 21/76, ECR [1976] 1735 : French
industrial concern discharged polluted waste in the
Rhine waters, with the unfortunate result that when
this water was used to irrigate the flowers grown by a
Dutch company in the Netherlands, the crop
perished. The Dutch market-gardener sought to seize
the Dutch courts. The question arose where the
harmful event was considered to have occurred.
PIL of IP - 2010
V(2).May I also sue at the place
where I suffer damage?
• In Bier, the ECJ Court held that Art.

5(3) “must be understood as being
intended to cover both the place
where the damage occurred and the
place of the event giving rise to it”.
This decision showed considerable
‘jurisdictional generosity’ towards the
plaintiff.
PIL of IP - 2010
• The Bier solution only applies

where there is, at the outset, a
separation between the place
where the damage occurred and
the place of the harmful event
giving rise to it.
PIL of IP - 2010
• Application to IP-litigation : damage is

often financial loss, i.e. loss of sale of
infringed products
• Where is this damage sustained? May
Bier formula be applied?
• e.g. infringement of a Belgian patent by a
company based in Belgium, Dutch owner of
the patent complains that its turnover
declined in Belgium : can the patent owner
bring proceedings in the Netherlands, where it
feels the financial loss?
PIL of IP - 2010
• If patent owner may bring proceedings in

the place where damage suffered / is felt,
will this not always lead to proceedings in
its home jurisdiction (forum actoris)?
• ECJ has brought some nuances to the Bier
formula, which may restrict the possibility
for patent owner to sue in its home
jurisdiction
PIL of IP - 2010
• Nuances brought by ECJ to Bier-

formula
a) ECJ in Dumez France S.A. v. Hessische
Landesbank, Case C-220/88, [1990] ECR I-49 :
place of damage refers only to the damage,
which is the immediate consequence of the
harmful event. Damage done to indirect victims
should not be taken into consideration (French
parent company complaining of damage
suffered following insolvency of German
subsidiary as a consequence of withdrawal by
German bank of financial support)
PIL of IP - 2010
• Nuances brought by ECJ to Bier-formula

b) ECJ in Marinari/Lloyds Bank, C-364/93 ECR [1993] I-2179 :
claim brought by a claimant domiciled in Italy against an English
bank, after the confiscation of promissory notes from the claimant
had taken place. The claimant argued that the damage had
occurred in Italy, on the ground that the diminution of his
patrimony had taken place there. ECJ : no jurisdiction, where
physical damage has been done in a particular place, the later
financial consequences of it were not capable of being seen as
the damage relevant for the Bier principle.
PIL of IP - 2010
V(2).May I also sue at the place where
I suffer damage?
• Taking this case law into consideration,

probably not possible for the Dutch
owner of Belgian patent to bring
proceedings before Dutch courts
– Turnover declined, loss felt in the
books of the company in the
Netherlands
– This loss is the consequence of the
lost sales in Belgium, sales which
were not achieved on Belgian market
due to infringement
PIL of IP - 2010
• Financial loss as a consequence of IP-

infringement : important to look for the
immediate consequence of the harmful
event, where does the infringement directly
produce its harmful effect and not where is
that effect felt by the victim
– Copyright : financial loss occurs where
copies of the infringed product are sold
or otherwise distributed to the public
– Trademark : financial loss occurs where
the sign is used in support of marketing
or offering the product
PIL of IP - 2010
• What about online infringement – where is the damage

suffered?
• Ruling by the French Court of Cassation in 2003 - the
Cristal case (French Cass., 9.12.2003, Société
Castellblanch / Société Champagne Louis Roederer, RCDIP,
2004, 632) : French champagne house brings proceedings
against Spanish producer who advertises for its Cavas on a
web-site, using the same name (Cristal)
• Cassation : the damage occurred at least in part in France
because the website can be accessed from France (but
jurisdiction limited to damage suffered in France according
to Shevill formula)
PIL of IP - 2010
• Cass. : “Attendu qu'en matière de contrefaçon, quel que soit le

procédé utilisé, l'option posée par l'article 5,3 ... doit s'entendre en
ce que la victime peut exercer son action soit devant la juridiction
de l'Etat du lieu d'établissement de l'auteur de la contrefaçon,
compétente pour réparer l'intégralité du préjudice qui en résulte,
soit devant la juridiction de l'Etat ... dans lequel l'objet de la
contrefaçon se trouve diffusé, apte à connaître seulement des
dommages subis dans cet Etat ; qu'en admettant la compétence
des juridictions françaises pour connaître de la prévention et de la
réparation de dommages subis en France du fait de l’exploitation
d’un site internet en Espagne, la Cour d’appel qui a constaté que ce
site, fût-il passif, était accessible sur le territoire français, de sorte
que le préjudice allégué du seul fait de cette diffusion n’était ni
virtuel ni éventuel, a légalement justifié sa décision »
PIL of IP - 2010
• Ruling of French Court of cassation adopts very wide reading

of 'damage' : there is damage in France if a web-site can be
accessed from France, without any further need to
demonstrate that the web-site has indeed been effectively
accessed from France and without any need for a further link
with France (such as that the web-site was aimed at French
public, hosted on a French domain name etc.)
• French Court of cassation was concerned that at the stage of
jurisdiction, reasoning should be kept as light and easy as
possible, without opening a debate on the existence and
location of damage (which would burden the examination of
jurisdiction and in any case need to be examined at the
merit)
PIL of IP - 2010
• Most important nuance: Shevill

• as far as the place where the damage
occurred was concerned, that place was
where the publication was distributed and
where the victim claims to have suffered
injury to his reputation – but claimant was
only entitled to sue in England to the extent
that she complained of the sale of the
newspaper sold in England, since the
damage had, to that extent only, occurred in
England
PIL of IP - 2010
• E.g. Commercial Court of Ghent, 2 January 2003, T.G.R.,

2003, 38 : A Belgian company bought a consignment of
handbags from an Italian wholesaler and sold them on to
a Japanese buyer. The Japanese buyer claimed that some
of the bags were counterfeits and demanded repayment
from the Belgian supplier. The Belgian company sued the
Italian manufacturer of the handbags in tort (the Belgian
company did not buy the handbags directly from the
manufacturer) in Belgium, arguing that the Italian
manufacturer was responsible for the counterfeits
PIL of IP - 2010
• Did the harmful event take place in Belgium : no

decided the court, the causal event did not occur in
Belgium, since the counterfeit was committed in Italy
• Did the damage occur in Belgium? Court : the initial
damage in this case was incurred by others. The
damage suffered by the Belgian company merely
took the form of the refund paid to the Japanese
company on taking back the counterfeit goods. This
damage was therefore an indirect consequence of
the damage originally suffered by another person
―› no jurisdiction in Belgium
PIL of IP - 2010
V(3).What if claim seeking a
declaration of non-infringement?
• Difficulties of application of Article 5(3) : IV. Application of

Article 5(3) to proceedings seeking a declaration of non-
infringement
- action for a declaration of non-liability : serves to dispel
uncertainty over alleged infringement, but also to pre-empt an
action for infringement (choosing the favorable forum)
- action for declaratory relief to be distinguished from action for
future relief, action ad futurum (harm not yet caused – heavier
burden of proof)
- procedural requirements ('Feststellungsinteresse' – 'intérêt') –
hostility of courts
PIL of IP - 2010
• Supreme Court of Sweden (Högsta Domstolen), 14

June 2000, Flootek, IIC, 2001, 231 : art. 5(3) cannot
be used to justify declaratory relief because no harm
or harmful event at stake and the action for a
negative declaration does not provide scope for a
determination of the plaintiff's potential liability to
the defendant for damages
• Court of Appeal of Brussels (8th Ch.), 20 February
2001, Glaxo Wellcome/Hoffman La Roche : no
jurisdiction based on Art. 5(3) to entertain an action
for a negative declaration
PIL of IP - 2010
• Hague Court of Appeal, 22 January 1998, Evans

Medical / Chiron, EIR, 1998, 61 (« la nature
exceptionnelle de la compétence du lieu du fait
dommageable posée à l'art. 5(3) de la
Convention de Bruxelles ne laisse pas place à
une interprétation qui tendrait à faire entrer
dans ses prévisions une action ayant pour objet
de faire dire et juger qu'un fait qui ne s'est pas
encore produit ne porte pas atteinte à des
droits de brevet. Une telle interprétation
limiterait à l'excès le champ de la règle de
principe de l'article 2 de la Convention »)
PIL of IP - 2010
• Italian Supreme Court (case B.L. Macchine

Automatiche v. Windmoller & Holscher KG,
19.12.2003) : art. 5(3) implies that a harmful
event has occurred or may occur, while in a
declaratory action for non-infringement, the
plaintiff contends that no tort has occurred
or may occur. Although an action for
declaration of non-infringement may be
envisaged as the mirror image of an action
for infringement, it is not true with regard to
rules of jurisdiction
PIL of IP - 2010
• Some courts have retained jurisdiction under

art. 5(3) for declaratory actions for non-
infringement, but only in respect of their
national patent or designation of a European
patent (see Court of Appeals Brussels,
Röhm Enzyme v. DSM)
PIL of IP - 2010
• It is true that action for declaration of non infringement

does not correspond to the definition of the scope of Art.
5(3) given by ECJ in Kalfelis : action seeking « to
establish the liability of the defendant »
• There are, however, good reasons to take a nuanced
approach to such actions
• 1st reason : Actions for negative relief are not as such
offensive or aggressive. There are perfect legitimate
reasons why a litigant could seek to obtain such a
declaration (widely used in insurance matters)
• Procedural requirements can help sort out abusive
actions
PIL of IP - 2010
• 2nd reason : No place for a literal reading

of Art. 5(3) according to which this
provision is only concerned with the
liability of the defendant and cannot be
applied when the relief sought is that
there is no liability on the part of the
plaintiff. This assumes that plaintiffs are
'naturally' plaintiffs and that defendants
are 'naturally' defendants. Such
determinism is not justified
PIL of IP - 2010
• 3rd reason : ECJ has allowed the use of the parallel

provision for contract (Ar. 5(1)) to obtain a declaration
that the contract is void (see the case Gubisch /
Palombo). Prima facie, there is no reason to uphold a
different interpretation of Art. 5(3)
• Likewise, ECJ has ruled that for the proper application
of the lis alibi pendens rule (art. 27), an action
seeking a declaration that a party is not liable for a
loss « has the same cause of action and the same
object » as a positive action (ECJ, Tatry)
PIL of IP - 2010
• 4th reason : Policy arguments : no reason

to deny the application of Art. 5(3) in
this context. Rationale of Art. 5(3) :
substantial connection that is deemed to
exist between court and the harmful
event. If the courts seised of action for a
negative declaration are the courts of
the place where the allegedly infringing
products are put on the market, why
deny application of art. 5(3)?
PIL of IP - 2010
• Conclusion : no good reason to afford a

different treatment to actions seeking to
establish that no infringement has taken
place
• If there are difficulties, should be
handled on the basis of procedural
requirements (protecting against
abusive actions) or possibly a European
wide principle of Fraus omnia corrumpit?
PIL of IP - 2010
Litigating cross-border IP-
disputes : Parallel
proceedings
PIL of IP - 2010
I. Parallel procedings in general
• Brussels I Regulation leaves ample room for

concurrent proceedings – basic scenario is that
each party initiates proceedings before court of the
domicile of the other party (art. 2). Other scenarios
are also possible
• In fact, concurrent proceedings are even easier

with Brussel Regulation because:
I. Level playing field – no need to undertake extensive
research on national rules of jurisdiction to identify courts
with potential jurisdiction over the case
II. Guarantee of obtaining enforcement of judgment – no
need to worry about enforceability of the judgment
PIL of IP - 2010
• Brussels I Regulation should be

concerned about concurrent
proceedings, because :
I. Waste of judicial resources (which are

scarce) – what about the waste of parties'
resources?
II. Risk of conflicting judgments (worst case
scenario in the European judicial area,
given the near absolute possibility for
judgments to circulate within 27 MS)
PIL of IP - 2010
• How can Brussels I Regulation cope with

concurrent proceedings? Various solutions:
I. Establish a hierarchy of rules of jurisdiction – higher
rule has priority over a lower rule ? (quaere if
jurisdiction of both courts is based on Art. 2...)
II. Establish a qualitative assessment of both
proceedings, in order to give priority to one set of
proceedings over the other? What test should be
used to distinguish the 'best' proceedings?
III. Make it possible for the courts involved to discuss the
proceedings of which they are seized and allocate
the case to the most appropriate court? (quaere if
courts do not reach a solution?)
PIL of IP - 2010
• How does Brussels I Regulation cope with

concurrent proceedings? Strict mechanism based
on the priority in time. Priority is given to the
court first seized, in two stages:
I. In a first stage, court second seized should stay its
proceedings
II. As soon as court first seized has found that it has
jurisdiction, court second seized should decline
jurisdiction (and dismiss the case, with or without costs
= issue for national law)
III. Negative version of consolidation of proceedings - no
real 'transfer' of the case from one court to the other –
court second seized simply stops its proceedings,
without sending the matter to the other court
PIL of IP - 2010
• It is obvious that Art. 27 only applies in

the relations between MS
• If one of the courts seized is located
outside the EU : application of the
national law of the courts concerned ?
(e.g. in Belgium, art. 14 of Code of
Private International Law : 'permissive'
version of the lis alibi pendens rule)
PIL of IP - 2010
• ECJ has given a broad reading of lis alibi

pendens rule
• e.g. Tatry case : Dutch courts exercise
jurisdiction based on the Regulation and
English courts take jurisdiction based on a
specialized convention, the Arrest
Convention (International Convention for the unification
of certain rules relating to the arrest of sea going ships,
Brussels, 10 May 1952)
• ECJ : when a specialized convention
contains certain rules of jurisdiction but not
provision as to lis alibi pendens, Art. 27 of
the Regulation should apply
PIL of IP - 2010
• Numerous issues arising out of the priority in time,

among which how should one determine which
court is first seized?
• Old solution : reference to the national law of each
court concerned (ECJ Zelger Salinitri 1984) –
created difficult situations if discrepancies between
the various national laws
• Art. 30 Regulation : autonomous definition of the
time at which a court is deemed to be seized,
linked with the issue of service of process
• Other (side) issue : what if court second seized declines
jurisdiction, but ruling is challenged in appeal? What should
court first seized do?
PIL of IP - 2010
• Next to lis alibi pendens mechanism, Ar. 28 of

the Regulation also creates a rule for so-called
'related actions'
• Rule is much less demanding : court second
seized “may” stay its proceedings –
consolidation is left to the discretion of the
court second seized. Weak nature of this
mechanism has certainly had an impact on the
interpretation of Art. 27 by ECJ – tempted to
give a broad interpretation of lis alibi pendens
rule in order to ensure that parallel or related
proceedings are dealt with
PIL of IP - 2010
II. Parallel procedings in IP-disputes
• Two issues must be addressed :

I. When are proceedings parallel or
concurrent for the application of Art.
27?
II. What about abuse of lis alibi
pendens? Is the rule of Art. 27
absolue or can it be nuanced in
special cases?
PIL of IP - 2010
II. Parallel procedings in IP-disputes
• Classic example :
Patent holder A plans to sue his competitor B for
the infringement of the English part of a EP in
England. Before being sued in England however, B
files an action in a jurisdiction where he hopes
proceedings will only progress very slowly, with
the aim of obtaining a declaration that he does not
infringe the English and other national parts of A's
EP. A counterattacks with proceedings in England
as planned
PIL of IP - 2010
II. Parallel procedings in IP-disputes :
identity of proceedings
• When are proceedings parallel?

• Art. 27 refers to a double test : identity
of parties and identity of 'cause of
action'
• Autonomous meaning of these concepts
(important in the light of restrictive
approach to lis alibi pendens in some
Member States, where a very formalistic
approach is taken – e.g. no lis alibi
pendens if divorce proceedings in two
countries are not based on the same
ground...)
PIL of IP - 2010
• Identity of parties
I. Identity does not depend on procedural position of
parties (A v. B in MS1 and B v. A in MS2)
II. If only partial identity of parties, court second seized
should only decline jurisdiction to the extent to
which the parties are also parties in the action
previously started – remainder of the proceedings
may continue
PIL of IP - 2010
• Identity of parties : example of Tatry (C-406/92 – The

Tatry/The Maciej Rataj) : contamination with diesel of a
cargo of soya bean oil aboard the vessel Tatry from
Brazil to Rotterdam and Hamburg
• Three groups of cargo owners, various proceedings :
first proceedings by the shipowners against two groups
of cargo owners (group 1 and 3) in the Netherlands,
seeking a declaration that they were not liable or not
fully liable for the alleged contamination
• Then came an (unsuccessful) attempt by the cargo
owners to arrest the ship in Hamburg...
PIL of IP - 2010
• Finally, proceedings in rem in England against

shipowners by group 2 and 3 of cargo owners for
payment of damages for the loss suffered
• ECJ : if only partial identity, application of lis alibi
pendens leaves possibility for the court second seized
to keep the case in so far as parties are not identical
• Consequence : fragmentation of proceedings. ECJ
refers to the possibility to consolidate proceeding
under Article 28 (related actions) : not entirely
satisfactory since Dutch proceedings may continue in
respect of group 2...
PIL of IP - 2010
• Identity of dispute
I. Language versions of the Regulation differ : French,
Dutch and majority of versions distinguish between
same 'cause' ('oorzaak') and same 'object'
('onderwerp'), while English and German versions
only refer to same 'cause of action' / 'Anspruch'. ECJ
in Gubisch (1987) : majority of language versions
should be followed
PIL of IP - 2010
• Identity of dispute : ECJ adopts a broad

reading of the identity of disputes:
• Gubisch (1987) : first action to obtain
the enforcement of a sales contract
and second action to obtain that the
same contract be declared void ―› ECJ
finds that the two proceedings have
the same cause of action
PIL of IP - 2010
• Reasoning of the Court in Gubisch

(1987) : « it is apparent that the action
to enforce the contract is aimed at
giving effect to it and that the action
for its rescission or discharge is aimed
precisely at depriving it of any effect.
The question whether the contract is
binding therefore lies at the heart of
the two actions » (§ 17)
PIL of IP - 2010
• Lessons from Gubisch : ECJ stays clear

from a formalistic approach looking
only at words used or legal basis
(unworkable given cross-border
dimension)
• ECJ focuses instead on the substance
of the two proceedings. Substantial
approach combined with broad reading
inspired by concern for irreconcilable
judgments
PIL of IP - 2010
• In fact concern for irreconcilable judgments is

paramount in Gubisch : it is the only support
offered by ECJ for its ruling... (see § 18 : “If ... the
questions at issue concerning a single international sales
contract were not decided solely by the court before which
the action to enforce the contract is pending and which was
seised first, there would be a danger for the party seeking
enforcement that ... a judgment given in his favour might
not be recognized ... There can be no doubt that a
judgment given in a ... State requiring performance of the
contract would not be recognized in the state in which
recognition was sought if a court in that state had given a
judgment rescinding or discharging the contract »)
PIL of IP - 2010
• After Gubisch, one can already wonder

if there is any room left for related
actions (art. 28 Regulation 44/2001)...
PIL of IP - 2010
• Identity of dispute : ECJ later confirmed

broad reading of the identity of
disputes
• ECJ in Tatry : action for a declaration
of non-liability for damages by the
shipowner (in the Netherlands) and
then an action for payment of
damages by the cargo owners in
England
PIL of IP - 2010
• ECJ in Tatry : the 'cause of action'

comprises the facts and the rule of law
relied on as the basis of the action
• An action for a declaration of non-
liability and an action for damages
have the same cause of action
• ECJ in Tatry : the 'object of the action'
means the end the action has in view
PIL of IP - 2010
• Court finds that actions share the same object

“since the issue of liability is central to both
actions”. Court adds that “the fact that a party
seeks a declaration that he is not liable for loss
implies that he disputes any obligation to pay
damages”
• Court adds that the “fact that the plaintiff's
pleadings are couched in negative terms in
the first action whereas in the second action
they are couched in positive terms by the
defendant, who has become plaintiff, does
not make the object of the dispute different »
PIL of IP - 2010
• Application to IP disputes – distinction

between several scenarios
• First scenario : action in Belgium relating to
infringement of a Belgian patent and action in
the Netherlands relating to infringement of a
Dutch patent, both covering the same
invention (but patents do not originate from
same EPO application)
• Second scenario : idem, but the two patents
are issued from the same EPO application.
Unchallenged that there is identity in the
sense of Art. 27
PIL of IP - 2010
• Third scenario : actions relating to

various national versions of the same
patent, in one country an action for
infringement, and in the other, an
action for a declaration of non
infringement
• Fourth scenario : an action for
infringement and in another court, an
action aiming to obtain a declaration
that the patent is void
PIL of IP - 2010
curbing abuses of lis alibi pendens?
• Abuses of lis alibi pendens ? Torpedo's...

• Scenario : alleged infringer initiates proceedings,
seeking a declaration of non infringement, before a
court not known for its swiftness (e.g. Italy and
Belgium), in the hope of dragging proceedings (and
forcing other party to settlement)
• Patent holder is barred from seeking relief
(declaration of infringement and damages) before
any other court since both actions are deemed to
have the same cause of action in the sense of Art.
27
PIL of IP - 2010
Reaction to torpedo's?
• Can court second seized disregard lis alibi
pendens if it thinks that the court first seized
has manifestly no jurisdiction? See LG
Düsseldorf 19 Dec 2002
• Ruling contravenes basic principle of
European judicial area, i.e. that each court is
the sole judge of its jurisdiction
• Principle confirmed by Art. 35 of the
Regulation (no review of the jurisdiction of
the court of origin in the framework of
recognition/enforcement proceedings, except
in special cases)
PIL of IP - 2010
• ECJ confirmed principle of monopoly of court seized in
Overseas Union Insurance (27 June 1991, case C-351/89)
• Court explained that “in no case is the court second seised in a
better position than the court first seised to determine
whether the latter has jurisdiction” Court added that “Either
the jurisdiction of the court first seised is determined directly
by the rules of the [Regulation], which are common to both
courts and may be interpreted and applied with the same
authority by each of them, or it is derived, by virtue of Article
4 of the [Regulation], from the law of the State of the court
first seised, in which case that court is undeniably better
placed to rule on the question of its own jurisdiction »
PIL of IP - 2010
• Under the scheme of the Regulation, it
is therefore forbidden for a court
second seized to 'second guess'
jurisdiction of the court first seized.
The only action possible is stay the
proceedings until the court first seized
has ruled on its jurisdiction
PIL of IP - 2010
II. Parallel procedings in IP-disputes : curbing
abuses of lis alibi pendens?
• Other possible route : craft a caveat to the strict
lis alibi pendens rule in case it appears that the
court first seized will not issue a judgment in a
reasonable time
• Legal basis : obligation on all MS to abide by the
reasonable time requirement of Article 6 ECHR?
• E.g. : TGI Paris 28 April 2000 – General Hospital v.
Bracco : US company holding a European patent
initiates proceedings in France against French
and Italian company for infringement
PIL of IP - 2010
• General Hospital : Italian defendant raises lis alibi pendens,
proceedings have been brought in Italy one month earlier...
• Court first verifies whether the two proceedings relate to the
same dispute. It finds that they have the same cause of
action since the two actions relate to the same claims of the
patent
• Court finds, however, that the two proceedings do not share
the same purpose/object since one is for a declaration of non
infringement and the other for damages... Ruling cannot be
sustained on that point
PIL of IP - 2010
• General Hospital : Court also finds that it
cannot stay its proceedings based on Art.
28 since there was an abuse of right: « ...
the defendant intended to use the recourse
to European law on civil procedure to block
the infringement action filed against it in
France by filing an action for a negative
declaration in Italy for the purpose of
determining that the part of the European
patent valid in that country was not
infringed. »
PIL of IP - 2010
urbing abuses of lis alibi pendens?
• General Hospital : Court adds that “It cannot be
seriously disputed that this abuse of European law
on civil procedure constitutes a circumvention of
this law, since its main objective is to prevent
conflicting decisions being rendered by the courts
of two contracting states in identical or related
matters. In contrast, it is not the aim of European
law on civil procedure to permit a party knowingly
to block proceedings for several years, even if
such is to its own advantage ».
PIL of IP - 2010
• Case law of ECJ makes it, however, abundantly

clear that there is no room for an exception of
abuse of right in application of lis alibi pendens
mechanism
• In Gasser (C-116/02), ECJ rejected the abuse of
right argument. No derogation from Art. 27 where,
in general, the duration of the proceedings before
the courts of the MS in which the court first seised
is established is excessively long. Reason: mutual
trust of the MS to each other's legal systems and
judicial institutions
PIL of IP - 2010
• See also ECJ C-158/02 – Turner : prohibition of

anti-suit injunctions. Art. 27 is to be interpreted as
precluding the grant of an injunction whereby a
court of a MS prohibits a party to proceedings
before it from commencing or continuing legal
proceedings before a court of another MS, even
where that party is acting in bad faith with a to
frustrating the existing proceedings. Reason:
mutual trust; no undermining of the jurisdiction of
a court from one MS to determine a case by the
jurisdiction of a court from another MS
PIL of IP - 2010
• Is there still some room left for the

abuse of right argument with regard to
the limited duration of patents?
PIL of IP - 2010

Cross Border IP Disputes

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Cross Border IP Disputes

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Cross-Border Jurisdiction

Over Intellectual Property

I. Private International Law - A refresher

• Private international law deals with

• Example 1 : portfolio of patent rights

• What if infringement of the patents by

• Example 2 : dispute over the sale by

• Dali case : dispute between legal heirs

• Dali case : should we apply Spanish or

• In the same line : infamous Mein

• For some questions, national laws converge

• For other questions, difference in

• Moral rights : art. 6bis Bern Convention :

• Implementation Bern Convention in the US :

• Compare with detailed provisions on moral rights under French

• Example 3 : Warner Brothers Inc. v

• 2nd element : private international

• The mere fact that a public authority is involved

• 1st question : jurisdiction

• 1st question : jurisdiction

• 1st question : jurisdiction

• 2nd question : applicable law

• 2nd question : applicable law

• 2nd question : applicable law

• 2nd question : applicable law

• 2nd question : applicable law

Various Directives, but at the end of the day

• 2nd question : applicable law

• 3rd question : Foreign

• No IP-specific regime except in a

• No IP-specific regime except in a

• No IP-specific regime except in

• No IP-specific regime except

• Distinction between national

• Basic situation : cross-border disputes

• Basic situation : cross-border disputes

• Proceedings cannot be brought before

• Most realistic project : European Patent Litigation

• Infringement is therefore within the

• 2003 Draft Agreement : creation of a

• EPLA : victim of Europe's difficulty to

• Hence necessary to allocate

• Which national court? Relevant considerations

• Keep in mind, however, an alternative

• Arbitration is not well regarded in IP-world

• In infringement cases, lack of

• For some IP-disputes, no issue of arbitrability

• 2) No issue of arbitrability for disputes

• For other disputes relating to IP rights,

• Disputes relating to the validity of patent – in some

• 3rd argument : patents are monopolies

• In some countries, these arguments have not convinced

• Disputes relating to validity : difficulty

• If validity of patent remains 'off limit'

• By and large, arbitration can offer

• Where to find the rules? (in

• Key principle in IP-law : territoriality

I. Territoriality expresses the link