(published on EIPR, 1997, 7)

The Brussels Convention of 1968 and subsequent similar Conventions have made it possible to litigate before a judge of a Member State the infringement of a patent registered in another State. If such a litigation is pending (litigation in country A concerning the infringement of a patent registered in country B) a judge subsequently seised in the country where the patent is registered does not have jurisdiction. In several European countries it is possible to start an action for declaration of non-infringement. If an action for declaration of non-infringement of a foreign patent is started before a judge where the judicial system is not particularly quick, this move may delay or, even jeopardize the enforcement of industrial property in all Europe. The Brussels (and Lugano) Convention and the Speed of the Convoy It is well-known principle of sea warfare that an escorted convoy should travel at the speed of the slowest ship. If the various ships travel at their own speed, there will be no convoy and no unity. The consequences could be disastrous, as the sad destiny of PQ-17 in July 1942 showed (70 per cent of the ships were lost). When the founding fathers drafted the Treaty of Rome, they considered that the various nations could travel at a different speed. The founding children, when issuing subsequent regulations covering specific areas of economy or law-the Brussels Convention of September 27, 1968 (concluded between Belgium, Federal Republic of Germany, France, Italy, Luxembourg, the Netherlands and then extended to Denmark, Ireland, United Kingdom, then again to Greece and then again to Spain and Portugal)-also took into consideration this principle (which is also an underlying principle of the Lugano Convention)
[1].The administration of the Justice in the various countries of what is now the European Union was considered in a unitarian manner and common criteria of jurisdiction and recognition of the foreign awards were issued. This means that, to a certain extent, a national judge of a Member State is considered equivalent to a national judge of another Member State and the decision of the judge in one Member State could be applicable to another Member State. It would take too long to describe the extent and the limit of the application of this rule. In any event, up to a certain point, all the ships are considered to belong to the same convoy, so that the behaviour of one ship influences the behaviour of the others. As a consequence, and to come to the subject matter of this Article, the speed of the slowest ship is the speed of the convoy. If a national ship is considered a European ship, the speed of the various other ships is the speed of the first one. How to Litigate a Patent in a Different Jurisdiction In recent articles[2] it is demonstrated that it is possible to litigate a patent registered in one European country in another European country. Of course, challenging the validity of a foreign patent is not possible (see Art. 16.4 of the Brussels Convention)[3], but adjudging on an infringement is possible. Several rules of the Brussels Convention apply: (1) First of all, the fundamental rule of domicile applies, to the effect that the defendant can be sued before the Court of his domicile, for violation of a patent registered in that jurisdiction or/and of a patent registered in another jurisdiction. The consequence clearly derives from Art. 2 of the Brussels Convention[4]. This means that, for instance, an Italian defendant can be sued in Italy for violation not only of an Italian patent but also of a French , Greek, Danish patent, as the case may be. It is also possible in various countries to sue a national for violation of a patent registered outside the European Union. If plaintiff and defendant are both citizens of Member States (i.e., of a state member of the European Union) the principle derives from the Brussels Convention. If plaintiff or defendant are citizens of a non Member State, the principle may derive from national laws: this is another problem which will not be considered here. (2) A defendant can also be sued according to Article 5.3 before the judge of the place where the damaging event occurred[5]. On the basis of the Fiona Shevil decision[6] of the European Court this can be either the place where the action took place or the place where the event occurred, but not the place where the indirect effect of the event occurred. Without going into technicalities, Article 5 is another reason for holding a judge of a Member State competent to decide on infringement of a patent registered in another Member State. (3) According to Article 6.1, a co-defendant can be sued before the judge where another co-defendant is domiciled [7]. This means, for instance that an Italian co-defendant may be sued together with a German co-defendant in Germany for violation of the German, Italian and U.K. patent. (4) For preliminary measures the judicial authority of a Member State has a wider jurisdiction[8]. The application of this rule by the Dutch judges is well known, and will not be commented on here[9]. Dutch judges have held that they possess jurisdiction to adjudge not only on the infringement of Dutch patents but also on European patents and even of non-European patents. Summing up, the Brussels Convention offers a very wide possibility of forum shopping and therefore of asking for a declaration of infringement from a judge of a jurisdiction where the patent is not registered. Litigation in One Country Forecloses Jurisdiction in Other Countries The two principles contained in Articles 21 and 22 of the Brussels Convention should be underlined. Article 21 says that when the same action is pending before a court of a Member State, the court of another Member State subsequently seised must, on its own motion (ex officio), decline jurisdiction[10]. The case should be pending between the same parties and have the same object and the same cause of action. Article 22 says that when the two cases are not identical but related, the second court may suspend the proceeding[11]. Related cases are the ones which have such a connection as to make a single decision convenient in order to avoid decisions which, where the cases decided separately, could be in conflict. It is clear that when the cases are identical, the second court must, on its own motion, suspend the case; when the cases are related the second court can do so. It is a well establish principle in some jurisdictions that, whenever the plaintiff can sue for infringement, the alleged infringer can sue for declaration of non-infringement[12]. The alleged infringer, in other words, may seek for a declaration of non-infringement prior to the time when the patentee may sue for infringement. This action is not possible under the national laws of some countries (for instance, United Kingdom) and has different effects under the national laws of various countries. For instance, under the national Italian law, an action for declaration of non-infringement would make it impossible for a subsequent action for infringement to be brought by the patentee. If the judge is subsequently seised by the patentee for infringement, he must, on his own motion, decline jurisdiction[13]. In Germany, on the contrary, an action for declaration of non-infringement does not prevent the patentee to start an action for infringement[14]. According to the Brussels Convention, if the action has the same object and the same ground, the second judge must decline jurisdiction. When the Brussels Convention is applicable, this solution applies whether the national law does or does not offer the same solution. Therefore when two parties of Brussels Member States are involved, the solution is like the Italian one, and not the German one. An action for declaration of non-infringement in a Member State (e.g., Italy) would automatically stop an action for infringement of the patent in question in another Member State (e.g., Germany)[15]. The Italian Torpedo And here comes the slow-moving ship. Imagine the following situation. The accused infringer start an action in a Member State A, which is the state of his domicile, alleging that he or she does not violate patents registered in the European states B, C, D. There is no doubt that, according to the Brussels Convention Art. 21, this action for declaration of non-infringement would make it impossible for the patentee to sue for infringement in the Member States B. C. D. The existence of the litigation in Member State A makes it impossible to litigate on the same object in states B, C, D according to Art. 21 of the Brussels Convention. This is a great jeopardy to the enforcement of the intellectual property rights. Suppose that the accused infringer selects a country where the judicial system is slow. This was until relatively recently the situation in Italy, and still is the situation in most Italian Courts. A recent code of civil procedure has been enacted, which aims to accelerate the litigation process, but the effect will not be immediately felt. As a result, in several courts litigation is still a lengthy procedure[16]. This is also true in other European countries. So, if an action for declaration of non-infringement is started before a slow-moving Italian court (for obtaining a declaration that there is no violation of patent registered in Italy and/or in other European countries) all the other European judges must decline on their own motion jurisdiction, until the Italian case is decided. And since an Italian case is decided when the three degrees of jurisdiction are exhausted (first instance, appeal and second appeal), this may take an outrageous lenght of time. During this time, the enforcement of intellectual property right would be paralysed. This is what is referred to above as the principle that the slowest ship determines the speed of the entire convoy. If in a certain country the litigation for ascertaining non-infringement is conducted over a long period of time, the enforcement of the patent become impossible. All the countries are obliged to stop their engines until the slow-moving ship arrives. There are justified efforts to accelerate the speed of industrial property litigation in various countries, and mainly in Europe. The Dutch judges have taken a bold approach (which is not necessarily an expression of “Dutch courage”, but a showing of creativity instead) to adjudge on infringements of foreign patent. This trend has been followed by German, UK and even French judges[17]. But the possibility of jeopardizing the system with an action for obtaining a declaration of non-infringement in a slow-moving country, of patent registered in various European country is a serious challenge to the system of the enforcement of intellectual property. To continue to use the maritime analogy, the Italian torpedo could pose a real threat to an organized convoy. Some Practical Advice In the meantime, some advice is appropriate. 1) If a patentee believes that his or her patent is violated, and is not confident of being able to persuade the infringer to stop the infringement, he or she would be better advised not to send warning letters or seek contact. The practice normally followed, for instance, in United Kingdom or in Germany, therefore becomes risky. A warning letter may provoke a counter action for non-infringement before a slow-moving court and jeopardise enforcement. (The fact that prior contacts between the patentee and the infringer are discouraged has a highly negative effect: it increases the burden of judges without real benefit for the economy). 2) If a company fears it may be attacked without grounds in more than one country, it may avoid this sort of legal harassment by filing an action for non-infringement in a favourable jurisdiction. This could be done either before the jurisdiction of its domicile or, if it finds a co-plaintiff, before the jurisdiction of the domicile of the at co-plaintiff, to whom the case is somehow related[18]. MARIO FRANZOSI Franzosi, Dal Negro Associati Milan
[1] The Brussels Convention was adopted pursuant to Art. 220 of the Treaty Establishing the European Economic Community (Treaty of Rome, or EEC Treaty) and was initially signed by the six original members of the EEC (France, Germany, Italy, Belgium, the Netherlands, Luxembourg). Sub­se­quently, the Convention was also ratified by Denmark, Ireland, United King­dom, Greece, Spain and Portugal. The consolidated text version can be found in [1990] O.J. C189/1. See Dashwood, Hacon and White, A Guide to the Civil Juris­dic­tion and Judgments Convention, (1987). The Lugano Convention was signed by the Member States of the EEC and the Member States of the European Free Trade Area EFTA (Austria, Finland, Iceland, Nor­way, Sweden and Switzerland). There are some differences between the Brussels and the Lugano Conventions, but these concern only secondary aspects. [2] M. Franzosi - G. de Sanctis, “Are National IP Rights Becoming Obsolete?” (1995) IP Worldwide 9; M. Franzosi and G. de Sanctis, “The Increasing World Wide Significance of European Patent Litigation”, 25 AIPLA Quarterly Journal 67 (1997) and G. O’ Sullivan, “Cross-border Jurisdiction in Patent Infringement Proceedings in Europe”, [1996] 12 EIPR 654. [3] Art. 16.4 “The following courts have an exclusive jurisdiction, regardless of domicile: ... in proceedings concerned with the registration or the validity of patents, trade marks, designs or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been ap­plied for, has taken place or is under the terms of an international convention deemed to have taken place." [4] Art. 2: “Subject to the provisions of this Convention, persons domi­ciled in a Con­tracting State shall, whatever their nationality, be sued in the courts of that state. Persons who are not nationals of the State in which they are do­mi­ciled shall be governed by the rules of jurisdiction applica­ble to na­tionals of that State”. [5] Art. 5: “A person domiciled in a Contracting State may, in another Con­tracting State, be sued: ... 3. In matter relating to tort, delict or quasi-delict, in the court for the place where the harmful event occurred”. [6] European Court of Justice, Fiona Shevill a.o. v. Press Alliance AA [1995] 2 W.L.R. 499. [7] Art. 6: “A person domiciled in a Contracting State may also be sued: 1. Where [he] is one of a number of defendants, in the courts for the place where any one of them is domiciled”. [8] s.9: Provisional, including protective measures. Art. 24: “Application may be made to the courts of a Contracting State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Convention, the courts of another Contracting State have ju­ris­dic­tion as to the sub­stance of the matter”. [9] See Brinkhof, “Between Speed and Thoroughness: The Dutch Kort Geding Procedure in Patent Cases”, [1996] 9 EIPR 499; Franzosi, “La pronuncia giudiziale "cross border: la Dutch European-wide injunction”, (1995) II Foro Padano 25; G. O’ Sullivan, n. 2 above. [10] Art. 21: “Where proceedings involving the same cause of action and be­tween the same parties are brought in the courts of different Con­tracting States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favor of that court”. [11] Art. 22: “Where related actions are brought in the courts of different Contracting States, any court other than the court first seised may, while the actions are pending at first instance, stay its proceedings. A court other than the court first seised may also, on the application of one of the parties, decline jurisdiction if the law of that court permits the consolidation of related actions and the court first seised has jurisdiction over both actions. For the purposes of this Art., actions are deemed to be related where they 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”. [12] G. O’ Sullivan, n. 2 above. Italian Supreme Court, October 18, 1982, in Foro It. Rep., 1982, 424; September 10, 1991, n. 9405, Giur. Ann. Dir. Ind., 1991, 2607. [13] The judge must decline jurisdiction according to Art. 39 of the Italian civil procedure code. [14] Stockmeier, The Protection of Technical Innovations and Designs in Germany (Weinheim, 1994). p. 107. [15] Franzosi and de Sanctis, n. 2 above, p.94. [16] M. Franzosi and G. de Sanctis, “Italian Patent Litigation: a Change for the Better?”, (1996) Patent World, 36. [17] In France, Court of Paris, Eurosensory v. Tieman, January 28, 1994; in UK Pearce v. DVC Arup Partnership, Ltd, March 7, 1997 for copyright; in Germany Court of Düsseldorf, February 1, 1994 case 40193/87 and January 16, 1996 case 405/95. [18] This statement should not be interpreted as an invitation to file an action for non-infringement before a slow moving Court in order to prevent a justified action for infringement. In effect, some means could be conceived to avoid this malicious use of the paralysing effect of the action for non-infringement. See Tribunal of Lodi, 13 February, 1991, Giur. Ann. Dir. Ind., 2759.