EP 4 153 830 B1 relates to a lock comprising a slider which is flush relative to a sole plate provided with a recess for receiving a translation stop of the slider.
The patent was not opposed at the EPO.
Brief outline of the case
IMC Créations has brought an action for infringement of patent EP 4 153 830, before the Paris LD UPC, against the French company Mul T Lock France and the Swiss company Mul T Lock.
The alleged infringers claimed that the UPC had no jurisdiction, or requested that the UPC will not exercise its jurisdiction to rule on the alleged infringement of the national designations of patent EP 4 153 830 in force in the States in which it does not have unitary effect, and in particular its Spanish, Swiss and UK designations.
In application of the BSH vs. Electrolux decision of the CJEU of 25.02.2025, the LD Paris decided by order of 21.03.2025, that it was competent to decide on infringement in ES, CH and UK.
The BSH vs. Electrolux decision of the CJEU
In its decision C 339/22 of 25.02.2025, the CJEU has decided that the court of the EU Member State in which the defendant is domiciled has jurisdiction to hear a patent infringement action concerning a patent granted in another EU Member State or in a state other than an EU Member State, even if the defendant challenges the validity of the patent subject to that action.
This makes it possible to concentrate all infringement claims and obtain global compensation in a single forum, avoiding the risk of divergent decisions.
On the other hand, jurisdiction to rule on validity lies exclusively with the courts of that other Member State. This may lead to a separation of the infringement proceedings from the validity proceedings but, for example, the court hearing the infringement action may stay the proceedings if it considers that there is a reasonable chance that the patent will be declared invalid by the competent court in the other Member State.
The court of the defendant’s domicile has jurisdiction to rule on the validity of the patent granted in a third State, unless limitations are imposed by other international or bilateral conventions. However, the decision will only have an inter partes effect and will not affect the existence or content of the patent in that third State.
The application of the BSH vs. Electrolux decision to EP 4 153 830
The UPC has jurisdiction to hear the infringement action brought by IMC Créations, with regard to the Spanish and Swiss designations, if necessary by staying the proceedings, pending the decision of the national court hearing the invalidity action, if there was a reasonable and non-negligible risk that the patent would be declared invalid by the court of the State in which the patent was granted.
The UPC has also jurisdiction to hear the infringement action in respect of the UK part of the patent, and to rule where appropriate on the validity of the title, provided that the decision on the invalidity of the patent has only an inter partes effect.
In addition, the Paris Local Division held itself territorially competent, due to the fact that one of the domiciled in France of one of the defendants,
The patent proprietor must be able to concentrate all his infringement claims in the event of infringement litigation in several EU Member States, and obtain global redress in a single forum and avoid the risk of divergent decisions.
In order to ensure legal certainty and the foreseeability of the rules of jurisdiction, the jurisdiction of the defendant’s court to rule on an infringement action must not be subordinated to the defendant’s procedural strategy (CJEU judgment – paragraph 46).
There is no infringement of the rights of the defence or of the principle of equality of arms between the parties, since in the event of a challenge by way of exception to the validity of the patent, the court of the infringement action, has the option of staying the proceedings in order to take into account any decision handed down by the court of the Member State of the EU, or a State bound by the Lugano Convention, or to hand down a decision with inter partes effect.
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The BSH vs. Electrolux decision of the CJEU has given the UPC a very powerful tool to the benefit of patent owners. The CJEU decision enables UPC to develop its long arm jurisdiction.
It has to be agreed with the potential infringers that the solution adopted by the CJEU creates a significant imbalance between the parties, to the benefit of the claimant in fringement and to the detriment of the defendant in infringement, obliging the latter to bring as many individual invalidity actions in each of the non-UPC but EPC Member States in which the patent has been validated.
This situation undermines the right to a fair trial within the meaning of Art 6 (1) ECHR. It also undermines legal certainty and the prevention of the risk of divergent decisions, and is such compromises the very object and purpose of the UPC.
In the present case, the opposition period has lapsed and only nullity actions can be envisaged, either before the UPC, or in one of the non-UPC states in which the patent has been validated.
As the UPC is actually reluctant to stay proceedings even in case of an opposition at the EPO or a nullity action in a EPC state, the risk of divergent decisions is far from being negligible.
Before publication of the BSH vs. Electrolux decision of the CJEU, the Düsseldorf LD had already decided that it was competent to decide upon infringement of the UK part of EP 3 594 009 B1. This decision was commented on my blog. As the patent was revoked, by the Düsseldorf LD, so the aspect of infringement in the UK became irrelevant. .
Whilst Switzerland is part of the Lugano Convention, the UK is not. While Switzerland, Iceland and Norway agreed to the UK’s accession to the Lugano Convention, the EU has not consented. There is no sign that it will do so in the near future. The last word on competence of the UPC for infringement in the UK is thus not yet spoken.
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