On 26 May 2004, the District Court of The Hague rendered a decision in a matter between Stork a n d CFS .Stork claimed a declaration of non-infringement of CFS’s US patent on the grounds of non-infringement and the invalidity of the CFS patent. CFS argued that the Court lacked jurisdiction.
The matter was governed by Regulation 44/2001 which (like the Brussels and Lugano Conventions) provides rules for international jurisdiction in civil and commercial matters. Article 22(4) of this Regulation provides (in short) that in proceedings concerned with the registration or validity of (European) patents, the courts of the Member State in which the registration has been applied for or has taken place shall have exclusive jurisdiction. For similar provisions, see Article 16(4) of the Brussels and Lugano Convention.
According to the Court, the same rule as Article 22(4) should be applied in relation to US patents. Although this rule does not affect the court’s jurisdiction in infringement matters, the situation is different if a declaration of noninfringement of a foreign patent is claimed. If such claim is based on the invalidity of a foreign patent, the court of the state where that patent is registered has exclusive jurisdiction. Stork’s argument that a decision about the validity of the US patent in Dutch proceedings will only have inter partes effect was rejected. If Stork's argument were accepted, parties would easily be able to circumvent this internationally accepted rule of jurisdiction.
To the extent that Stork’s claim was based on non-infringement of the US patent, assuming that this patent is valid, the Dutch court has jurisdiction, notwithstanding the fact that the infringement question should be determined in accordance with US law.
In a recent opinion in the matter of GAT v LuK of 16 September 2004, Advocate-General Geelhoed advised the ECJ to decide that Article 16(4) of the Brussels Convention is applicable if a defendant in infringement proceedings argues that the patent is invalid, or if a declaratory action of non-infringement is based on the invalidity of the respective patent. According to the Advocate- General, if one of these situations arises, the court where the proceedings are pending should (i) refer the proceedings entirely to the court(s) that have exclusive jurisdiction to decide about validity, (ii) postpone its decision until the court(s) have decided about validity or (iii) decide the case if the defendant acted in bad faith. These suggestions may be difficult to apply in practice: if no invalidity proceedings are pending in any country outside the Netherlands, the Dutch court does not seem to be able to refer the proceedings to the court(s) of all countries in which the European patent is effective or to postpone its decision until the court(s) have decided about validity, because Regulation 44/2001 does not provide a basis for this. In this respect, it should also be taken into account that the Supreme Court decided on 19 December 2003 in the matter of Primus v Roche that even if there are serious indications that a foreign part of a European patent is invalid, the Dutch court may still decide about infringement of such foreign patent if it has jurisdiction, because a granted patent should be assumed to be valid as long as it has not been declared invalid. On the basis hereof, even if the opinion of the Advocate-General is followed by the ECJ, it remains to be seen whether the current practice in the Netherlands with respect to conducting international patent infringement proceedings will change.
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