Legal Trainee Dr. Luna Karrer contributed to this article.
Earlier this year, the Court of Justice of the European Union (CJEU) issued a decision in BSH v. Electrolux (C-339/22) that could directly affect U.S. companies and their counsel. In particular, the Court held that courts of an EU member state can hear infringement cases involving patents granted outside the EU—even U.S. patents—when the defendant is based in the EU.[1] This applies even if the defendant raises the issue of the patent’s validity by way of defense. Prior to the ruling, there was uncertainty about jurisdiction in cross-border patent disputes—the CJEU has now clarified this issue unequivocally.
For U.S. attorneys, this means:
- Your clients based within the EU could soon face litigation in Europe over U.S. patents without a mechanism to send the case back to the U.S. if invalidity is raised as a defense. However, if, on the other hand, at the time the court of a Member State is seized, a dispute concerning the same claim or a dispute related to the patent infringement proceedings is pending before a court of a third country, the national court may also stay or discontinue the proceedings before it on the basis of Articles 33 and 34 Brussels I Regulation.
- European courts would probably now have to apply U.S. patent law and the corresponding interpretations when assessing issues relating to the infringement of a U.S. patent.[2]
- Close coordination between European and U.S. counsel will become a necessity in order to make sure any foreign litigation proceeds with a complete understanding of the U.S. framework.
The CJEU has laid the foundation for cross-border patent infringement proceedings before courts in European member states. It remains to be seen how these courts will handle such proceedings in the future.
What Happened in Europe
The case began when BSH (a German appliance company) sued Electrolux (a Swedish company) in Sweden for infringing a European bundle patent validated in multiple countries, including Turkey, which gave rise to the grant of national patents from those States. Electrolux argued that the Swedish court could not decide on infringement of the Turkish part of the patent, related to vacuum technology, because only Turkish courts could rule on its validity.
It ruled that the relevant provision of the Brussels I Regulation, which normally confers exclusive jurisdiction to courts of the country from where the patent issued, to hear questions of validity,[3] does not apply to patents in non-EU countries. Instead, jurisdiction remains with the court where the defendant is domiciled (here, Sweden).[4] In other words, the Brussels I Regulation does not prevent a court of an EU Member State from examining the objection of invalidity of a patent granted in a third country without, however, deciding on its validity with external effect.
Put simply: EU courts can rule on infringement actions relating to patents from third countries, even if questions of validity are raised, as their decisions have no legal effect on the status or content of the patent in that third country. Such decisions remain inter partes and are not binding on authorities or courts in the third country.
Why This Matters for U.S. Attorneys
- Broader Litigation Risk: U.S. patents may now be pulled into European litigation if the defendant is based in an EU member state.
- Application of U.S. Law Abroad: European judges and lawyers may need to interpret U.S. patent law to resolve infringement claims—something many are not equipped to do without American legal counsel.
- Strategic Implications: Plaintiffs may try to consolidate global disputes in one EU forum rather than litigating piecemeal in multiple countries. Defendants may explore U.S. annulment actions or Section 1782 discovery to influence European proceedings.
The CJEU’s decision reshuffles the cards for international patent disputes. U.S. attorneys should be aware that their expertise may be called upon in European litigation involving U.S. patents. This development underscores the growing need for cross-Atlantic collaboration in IP strategy and litigation planning.[5]
[1] Article 4(1) of the Brussels I Regulation.
[2] Art. 8(1), Art. 3 of the Rome II Regulation.
[3] Article 24(4) of the Brussels I Regulation.
[4] Article 4(1) of the Brussels I Regulation. The only exception to this is where Article 73 of the Brussels I Regulation applies. However, this does not generally prevent US patents from being registered, as the US has not acceded to either the Lugano Convention or the New York Convention.
[5] Disclaimer: Although we are not European attorneys, this summary reflects our understanding of the CJEU’s ruling and its potential implications for U.S. companies and their counsel. If you or your clients face these issues in practice, consultation with experienced European counsel is necessary.
