A Revival of Cross-border Injunctions in Europe?

Key takeaways

Revival of cross-border injunctions in the EU? Examining UPC - Fujifilm Corp. v. Kodak GmbH et al. and CJEU - BSH Hausgeräte GmbH v. Electrolux AB

• Regarding third states, such as China, Japan or USA?
  Likely yes, before national EU courts!

• Regarding non-EU but EPC states, such as the UK, Turkey?
  Likely yes, before EU national courts and the UPC!

• Regarding EU states?
  Remains to be seen how courts within the EU/the UPC will handle stay requests.

Cross-border injunctions for patent infringement used to be a real thing in patent litigation in Europe about 20 years ago. Back then such were regularly granted in particular by Dutch and German courts. Following the decision of the Court of Justice of the European Union (CJEU) in the matter of GAT v LUK (docket no. C-4/03^[i]) in 2006, there was, however, a significant decline. The CJEU had held that for proceedings concerned with the registration or validity of a patent, exclusive jurisdiction shall lay with the courts of the EU member state of registration, irrespective of whether the issue is raised by way of an action or as a defense. As a consequence, German courts stayed cases once the defendant raised an invalidity defense regarding the asserted foreign patent(s). This scared off plaintiffs from pursuing cross-border injunctions which instead filed separate lawsuits to not waste time. In recent years, however, the discussion over cross-border injunctions in Europe has started anew.

With the Unified Patent Court (UPC) on the horizon, discussions began whether the UPC would be able to exercise long arm jurisdiction with respect to the assessment of infringement (and possibly validity) of national parts of a European Patent (EP) validated outside the territory of the (currently 18) EU member states that have ratified the UPC Agreement (UPCA^[ii]). Recently, on January 28, 2025, the UPC, which finally opened its doors on June 1, 2023, held for the very first time that it does indeed have long arm jurisdiction, in this specific case for the assessment of infringement of the UK-part of a classic European patent (EP) asserted against a defendant domiciled in Germany (Dusseldorf Local Division, docket no. UPC_CFI_355/2023, Fujifilm Corp v Kodak GmbH et al^[iii]).

In a seemingly unrelated matter, BSH Hausgeräte GmbH brought an infringement action against Electrolux AB in Sweden in 2020 asserting not only the Swedish but also the national parts of an EP relating to vacuum cleaning technology validated in several other EU members states (including Germany) as well as in a non-EU state (Turkey). In response, Electrolux not only filed a corresponding (and finally unsuccessful) nullity action in Germany (among others) but also questioned the validity of the asserted national parts in the Swedish case. While the Swedish court seized in the first instance denied it had jurisdiction for the non-Swedish parts after Electrolux raised the argument that all patents in litigation were invalid, the Swedish Court of Appeal, on May 24, 2022, referred three questions to the CJEU concerning international jurisdiction. Now, on February 25, 2025, the CJEU rendered its decision confirming the status quo for the question of validity after its decision in the matter of GAT v LUK, though only with respect to courts of EU member states and not of third-states outside the EU (docket no. C-339/22^[iv]). As we will see later, this CJEU decision finally informed the Dusseldorf Local Division’s decision in the above-mentioned case.

Therefore, these two recent decisions pose the question raised above: Could we see a revival of cross-border injunctions in Europe, either by the UPC and/or courts of the EU member states which exercise parallel or competing jurisdiction over classic EPs during the so-called transitional period?

European rules on international jurisdiction and jurisdiction of the UPC

EU-harmonized rules on international jurisdiction are provided in the so-called Brussels Ibis Regulation, i.e., Regulation (EU) No 1215/2012^[v] on (international) jurisdiction and the recognition and enforcement of judgments in civil and commercial matters which directly applies to the courts of any of the (currently 27) EU member states, except for Denmark. Having signed the Lugano Convention^[vi], similar rules are, nevertheless, applicable also in Denmark.

Art. 31 UPCA stipulates that the international jurisdiction of the UPC shall be established in accordance with the Brussels Ibis Regulation or, where applicable, on the basis of the Lugano Convention. With its recast, which became applicable on January 10, 2015, Artt. 71(a)-(d) Brussels Ibis Regulation were introduced in order to address the back then still slowly but steadily looming UPC.

The UPC is deemed a court common to several EU (i.e., the UPCA) member states under Art. 71a(2) Brussels Ibis Regulation and Art. 1 para. 2 UPCA. According to Art. 71a(1) Brussels Ibis Regulation, this means that the UPC, for the purposes of the Brussels Ibis Regulation, is deemed to be a EU member state court as the UPCA in Art. 32 confers the UPC jurisdiction over matters falling within the scope of the Brussels Ibis Regulation. Art. 32(1) UPCA confers the UPC exclusive jurisdiction for the civil matters listed in its lit. (a)-(i), which include actions for (non-)infringement and revocation of “patents”. Here, “patents” is understood to cover classic EPs that grant a bundle of national patents (so-called national parts) which are solely enforceable in each of the European Patent Convention (EPC) member states the EP is validated in, as well as EPs with unitary effect that grant a single exclusive patent right which is uniformly enforceable within the territory of the UPCA member states; cf. Art. 2 lit. (g) UPCA.

While the UPC naturally and as of its beginning has exclusive jurisdiction over EPs with unitary effect, exclusive jurisdiction over classic EPs comes in fact in two steps. During the seven-year transition period, which commenced the day the UPC opened its doors and lapses on May 31, 2030, if not prolonged for another seven years upon prior evaluation, the UPC and the national courts/authorities in the UPCA member states exercise parallel jurisdiction with respect to classic EPs validated there, unless the classic EP concerned is validly opted-out from the exclusive jurisdiction of the UPC. After the transition period, the UPC in fact gains exclusive jurisdiction for any classic EP not (validly) opted-out by then. Under certain circumstances such an opt-out can also be withdrawn later (however only once).

Long arm jurisdiction of the UPC

With this regulatory framework in mind, when can the UPC exercise long arm jurisdiction? This question arises in two scenarios: (i) awarding damages for damage which results from a patent infringement within the territory of the UPCA member states but occurs outside thereof, and (ii) adjudicating patents registered in a non-UPCA member state, whether this state is an EU member or a third-state.

Scenario (i) is expressly addressed in Art. 71(b)(3) Brussels Ibis Regulation, which insofar basically states: Where the UPC, in a dispute relating to an infringement of an EP, has jurisdiction over a defendant under Art. 71(b)(2) Brussels Ibis Regulation (e.g., because allegedly infringing acts are committed in a UPCA member state) and this infringement gives rise to damage within the EU, the UPC can also exercise (long arm) jurisdiction in relation to damage arising outside the EU from such an infringement. Such jurisdiction can, however, only be established if (a) property, which belongs to the defendant, is located in a UPCA member state, and (b) the dispute has a sufficient connection with any such member state.

Scenario (ii), in contrast, is not addressed in Artt. 71(a)-(d) Brussels Ibis Regulation so that an answer for it must be sought in its general and specific rules. This has now been confirmed by both the Dusseldorf Local Division of the UPC and the CJEU in their respective decisions mentioned above. Considering the interplay between the CJEU case’s genesis and the UPC decision, the following analysis will focus on the latter and offer insights on the CJEU decision by way of an excursus.

The UPC decision in Fujifilm Corp v. Kodak GmbH et al

Fujifilm had sued three Kodak entities all of which are domiciled in Germany for infringement of a classic EP (i.e., Art. 71(b)(2) Brussels Ibis Regulation did not apply from the outset). The infringement claims covered both Germany (a UPCA member) and the UK (neither a UPCA nor EU member, but a third-state). In response, the defendants first lodged a preliminary objection regarding international jurisdiction of the seized court with respect to the UK, which the court decided to deal with in the main proceedings, and subsequently filed a counterclaim for revocation asking the court to revoke the patent in suit in its entirety with effect for the territory of all UPCA member states in which it has effect (i.e., Germany only). While no nullity action had been filed in the UK, the defendants claimed that the UK-part of the asserted EP was invalid under UK law for the same reasons brought forward otherwise.

The Dusseldorf Local Division found the preliminary objection to be admissible but unfounded, thus assuming international jurisdiction also for the assessment of infringement of the UK-part. The Local Division revoked the asserted EP in the territory of the UPCA member states it is validated in and consequently dismissed the corresponding infringement claim. The infringement claim with respect to the UK was dismissed as well because the UK part was accordingly held to be invalid under UK law in view of the parties’ submissions, which the Local Division assessed as a prerequisite for infringement.

The reasoning

The Dusseldorf Local Division finds that international jurisdiction in any case follows from Art. 4(1) in conjunction with Art. 71b(1) Brussels Ibis Regulation (as they are both generally applicable pursuant to Art. 31 UPCA) and Artt. 32(1) lit. (a) and 33(1) lit. (a) UPCA (which grant the competence to hear an action for infringement of patents occurred in the UPCA member state hosting the Local Division).

As the defendants’ revocation action was limited to the territory of the UPCA members states in which the patent in suit is in force, the Local Division first points out that there was no situation in which it had to decide whether it had jurisdiction to revoke the UK-part of the patent in suit (which it explicitly denies later on nonetheless – more on this further below). So, the Local Division turns to the question whether it has jurisdiction to decide the infringement action also with respect to the UK-part of the patent in suit, which it answers in favor of the claimant while noting that this had to be answered irrespective of the question of which substantive law was applicable. In detail:

As a starting point, the Local Division elaborates on the special rule of Art. 24(4) Brussels Ibis Regulation. This provision codifies the decision of the CJEU in the matter of GAT v LUK, which, as mentioned above, was rendered in response to a German referral in a case where an action for declaration of non-infringement was filed which had also been based on the argument that the patent in suit was invalid. Following the CJEU’s ruling the EU legislator amended the wording of the provision so that it now reads: “The […] courts of a[n EU m]ember [s]tate shall have exclusive jurisdiction, regardless of the domicile of the parties[,] […] in proceedings concerned with the registration or validity of [, inter alia,] patents [granted for the territory of said EU members state], irrespective of whether the issue is raised by way of an action or as a defen[s]e”. This compulsory rule is meant to prevent that e.g. a nullity action against a national part of an EP is heard and decided by a court of an EU member state other than the EU member state in which it is registered. The main ratio behind this is to ensure that the EU member states do not interfere with each other’s sovereignty rights regarding the grant and revocation of patents registered in and for their territory. However, since the special rule of Art. 24(4) Brussels Ibis Regulation did obviously not apply to the question of which court has jurisdiction in infringement proceedings, in the case of Fujifilm Corp v Kodak GmbH et al, the Local Division moves on to the general rules of the Brussels Ibis Regulation (before returning to Art. 24(4) Brussels Ibis Regulation later with respect to the legal consequences of an invalidity defense raised by a defendant in response to an infringement action).

Thus, to clarify the question of jurisdiction for the infringement action, the Local Division discusses the general rule of Art. 4(1) Brussels Ibis Regulation, which confers jurisdiction on the courts of the EU member state in which the defendant is domiciled, whatever the nationality may be (and irrespective of whether the defendant is a natural or legal person; cf. Art. 63 Brussels Ibis Regulation). Since Art. 4(1) Brussels Ibis Regulation is applicable in the case at stake with all the defendants being domiciled in Germany, the Local Division raises the question whether the scope of Art. 4(1) Brussels Ibis Regulation also allowed to assume international jurisdiction over national parts of an asserted EP validated outside the UPCA member states. To enter this discussion, the Local Divisions refers to the decision of the CJEU in the matter of Owusu (docket no. C-281/02^[vii]). According to this decision, the uniform rules of jurisdiction as contained today in the Brussels Ibis Regulation, which include Art. 4(1), do not only apply to situations in which there was a real and sufficient link with the working of the internal market of the EU, which by definition involved a number of EU member states, but also to circumstances involving relations between the courts of a single EU member state and those of a non-EU state. Therefrom, the Local Division draws the conclusion that the international element required for the application of the Brussels Ibis Regulation may not only be intra-EU but also between an EU member state and a third-state.

In support, the Local Division also refers to the opinion of the Advocate General in the above-mentioned matter BSH v Electrolux, which was still pending at the time the Local Division delivered its decision. In his opinion delivered on February 22, 2024^[viii], the Advocate General opined that the jurisdiction of the courts of the EU member state where the defendant is domiciled was universal. Thus, such jurisdiction could extend to the infringement of an EP committed in all the states it is validated in and these courts could consequently fully adjudicate the infringement case, which, neither in view of the CJEU decision in the matter of GAT v LUK nor Art. 24(4) Brussels Ibis Regulation as subsequently recast, would lose jurisdiction for the assessment of infringement in case the defendant later raised a corresponding invalidity defense with respect to the national part(s) registered in a state other than the state of the court seized. This has now been confirmed by the CJEU:

Excursus: The CJEU decision in BSH Hausgeräte GmbH v. Electrolux AB

On February 3, 2020, BSH brought an infringement action against Electrolux in Sweden, where Electrolux is domiciled, asserting not only the Swedish but also the national parts of an EP relating to vacuum cleaning technology validated in several EU members states (including Germany) as well as in a non-EU state (Turkey). In response, Electrolux had not only previously filed a (and finally unsuccessful) nullity action in Germany (among others), but questioned the validity of the asserted national parts in the Swedish case. While the Swedish court seized in the first instance initially confirmed jurisdiction, it denied it after Electrolux raised its invalidity defense; it denied it had jurisdiction not only for the validity defense but also for the infringement of the non-Swedish parts, the Swedish Court of Appeal, on May 24, 2022, chose to refer the three below summarized questions to the CJEU:

1. 1. Is Art. 24(4) Brussels Ibis Regulation to be interpreted as meaning that a national court of an EU member state that assumes jurisdiction to adjudicate a patent infringement dispute also over a national part of an EP not validated in its EU member state under Art. 4(1) Brussels Ibis Regulation loses jurisdiction for said dispute once a corresponding invalidity defense is raised, or does such a national court only lack jurisdiction to adjudicate the raised invalidity defense?
   2. Is the answer to (1) affected by whether national law contains provisions which state that, for a defense of invalidity raised in an infringement case to be adjudicated, the defendant must bring a separate action for a declaration of invalidity?
   3. Is Art. 24(4) Brussels Ibis Regulation further to be interpreted as being applicable to a court of a non-EU state, i.e., also conferring exclusive jurisdiction on a court in a third-state with respect to the national part of the EP validated there?

After the Advocate General delivered his above-mentioned opinion on February 22, 2024, the CJEU assigned the case to the Grand Chamber and reopened the oral hearing with a focus on question (3). On September 5, 2024, the Advocate General delivered another opinion^[ix], focusing on that question. In its decision of February 25, 2025, the CJEU follows the Advocate General and (treating question (1) and (2) together) responds that Art. 24(4) Brussels Ibis Regulation must be interpreted

1. 1. as meaning that a court of the Member State of domicile of the defendant seized, pursuant to Art. 4(1) Brussels Ibis Regulation, of an infringement action regarding a patent granted in another EU member state has jurisdiction to hear that infringement action even where, in the context of that action and by means of defense, the defendant challenges the validity of that patent, whereas the courts of that other EU member state have exclusive jurisdiction to rule on that validity; and
   2. as not applying to third-states and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on any third-state court regarding the patent’s validity, meaning that if a court of an EU member state is seized of an infringement action regarding a patent granted or validated in a third-state, the EU member state court having jurisdiction pursuant to Art. 4(1) Brussels Ibis Regulation is also competent to rule on the question of validity raised by means of defense, where its decision in that regard does not affect the existence or content of the patent in the third-state or cause the national register of the third-state to be amended.

Since it has always been undisputed that the courts of the state a patent is registered in have exclusive jurisdiction over actions for revocation or nullification, the core issue of the case was that the ambiguous ruling of the CJEU in the matter of GAT v LUK could not simply be overturned seeing as the decision had been subsequently codified in Art. 24(4) Brussels Ibis Regulation. In other words, Art. 24(4) Brussels Ibis Regulation stands in the way of the solution favored by the Advocate General consisting in the rules of exclusive jurisdiction for proceedings concerned with the validity of a patent not applying where an invalidity defense is raised in infringement proceedings to the extent that the judgment delivered by the court seized would produce inter partes effects only. Instead, the only option the Advocate General saw was opting for one of two possible interpretations of the decision in the matter of GAT v LUK – a (i) broad and a (ii) narrow interpretation:

• • either the courts of the EU member state said patent is registered in were (or became) exclusively competent under Art. 24(4) Brussels Ibis Regulation for the entire case and any other court seized must decline (its formerly established) jurisdiction pursuant to Art. 27 Brussels Ibis Regulation;
  • or the courts of the EU member state said patent is registered in had exclusive jurisdiction under Art. 24(4) Brussels Ibis Regulation for the assessment of validity only and other courts seized could have (or keep) jurisdiction for the assessment of infringement under the general rules the Brussels Ibis Regulation (such as Art. 4(1)).

As seen above, the CJEU opted for the narrow interpretation, which the Advocate General considered “the lesser evil” (first opinion, recital 88). The main arguments for this are the predictability and certainty of jurisdiction: Applying the broad interpretation would compromise these two goals of the Brussels Ibis Regulation, while the application of the narrow interpretation would not, as it did not force a court to decline its formerly established jurisdiction once an invalidity defense was later raised. Concerning the practical implications of this split jurisdiction for the assessment of infringement and validity, the Advocate General also proposed some guidelines which the CJEU generally endorsed (decision, recital 51; more on that further below).

With respect to patents registered in third-states, the CJEU sub (2) above holds that Art. 24(4) Brussels Ibis Regulation was, due to the express wording, neither applicable directly nor by way of analogy. This meant that a seized court of an EU member state could, based on the jurisdiction conveyed under the general rules in the Brussels Ibis Regulation, in principle, adjudicate the entire case even where an invalidity defense is later raised. While the Advocate General held that, in such cases, the court seized should not be bound by the general jurisdiction but rather have, albeit limited, discretionary power to decline adjudicating the validity issue and instead stay the case under specific circumstances in a manner reflecting the solution for intra-EU cases addressed by Art. 24(4) Brussels Ibis Regulation, the CJEU opted for a “‘third way’” which came up during the second hearing (second opinion, recitals 42 et seqq.).

According to this third way, the general rule of Art. 4(1) Brussels Ibis Regulation must be read as meaning that, in principle, it confers jurisdiction to also hear and determine actions concerned with the registration or validity of patents registered in a third-state on the courts of the EU member state the defendant is domiciled in. However, this comes with limitations, as the CJEU pointed out (decision, recitals 61 to 75).

First, there are limitations within the Brussel Ibis Regulation. According to Art. 73(1) and (3) Brussels Ibis Regulation no such jurisdiction is given where either (i) the Lugano Convention is applicable^[x], which in Art. 22(4) contains a provision similar to Art. 24(4) Brussels Ibis Regulation or (ii) a bilateral convention concluded between an EU member state and a third-state stipulates that the courts of that third-state are to have exclusive jurisdiction over disputes relating to the validity of patents granted in that third-state. According to Artt. 33 and 34 Brussels Ibis Regulation, an EU court seized can (iii) stay (or even terminate) its case if a court in a third-state has already been seized with either a case between the same parties concerning the same subject-matter and cause or a case related to the case brought before the court of an EU member state.

Second, the courts of the EU member states must exercise jurisdiction without infringing the principle of non-interference, i.e., not interfere with matters that essentially come within the national jurisdiction of another state. This was, however, not generally the case where a court of an EU member state is asked to decide on the validity of patent registered in a third-state. Rather, the courts of the EU member states had jurisdiction where their decision had only inter partes but no erga omnes effects. Thus, they may decide on invalidity as incidental question when assessing infringement as such decision would only bind the parties of the case.

Coming back to the UPC decision in Fujifilm Corp v Kodak GmbH et al, the Dusseldorf Local Division went on and held that neither Art. 71b(1) Brussels Ibis Regulation nor Art. 34 UPCA altered the found result. Art. 71b(1) Brussels Ibis Regulation, which stipulates that the UPC has jurisdiction where, under the Brussels Ibis Regulation, the national courts of a UPCA member state would have jurisdiction, could not be read as limiting the territorial scope of the UPC’s decisions to the territory of the UPCA member states, but only as limiting the extent of legal matters conveyed by the UPCA member states to the UPC. Since, in accordance with the case law of the CJEU, the courts of the conveying UPCA member state did indeed have jurisdiction over third-state patent infringement actions under the Brussels Ibis Regulation, the UPC had to have the same jurisdiction. Art. 34 UPCA, in contrast, which governs the territorial scope of UPC decisions, did – unlike Art. 31 UPCA – not deal with the international jurisdiction of the UPC in the first place and further not exclude that UPC decisions had effect beyond the territory of the UPCA members states. Since EPs were not necessarily in force in all UPCA member states, Art. 34 UPCA could also be understood to clarify that, in the case of an EP, UPC decisions normally covered the entire territory of the UPCA member states, only except for the territories of the UPCA member states where that EP was not or no longer in force.

When dismissing the infringement claim also with respect to the UK-part, the Local Division states the following: “Even though the UK part of the patent in suit is not covered by the counterclaim for revocation and […] no revocation action has been filed in the UK, the validity of the patent in suit is a prerequisite for an injunction and further orders based on a finding of infringement. […] Even if the Court cannot decide on the validity of the UK part of the patent in suit, and certainly cannot revoke that part, the infringement action cannot be successful in such a factual and legal situation [note: a situation where validity was discussed and denied for the national part of the EP validated in Germany and an invalidity defense has been raised with respect to the UK-part referring to the same reasons]. […] There is no need for a stay of the proceedings pending on the validity of the UK-part of the patent in suit in the present case. The prerequisite for such a stay would be a pending revocation action in the UK, which is lacking (R. 295 RoP). The Court also finds that there is no legal basis for ordering the Defendants to bring such a revocation action in the United Kingdom.” (page 60 et seq.).

As demonstrated, the Local Division apparently follows the “‘third way’” the Advocate General discussed in his second opinion and the CJEU eventually adopted in its subsequent decision, even though the Local Division initially states that “[i]n view of the scope of the revocation action, the outcome of the pending case BSH Hausgeräte GmbH v Electrolux AB (C-339/22) is not decisive for the present case as regards to the third question referred to the ECJ, which was the reason for the referral of the case to the Grand Chamber and the reopening of the oral hearing.” (page 21): The Local Division denies international jurisdiction for the assessment of validity of the UK-part, however, neither pursuant to Art. 73 Brussels Ibis Regulation nor in favor of a stay/termination of its case (insofar). Instead, the Local Division solely assesses the validity of the UK-part as a prerequisite for infringement, which is determining the validity issue as an incidental question, thus with inter partes effects only.

Outlook

For the first time the UPC has assumed (long arm) jurisdiction for the assessment of infringement of a national part of an EP not validated in a UPCA member state. The reasoning refers to the competences conveyed by the UPCA member states, which, as the CJEU has now confirmed, may exercise such long arm jurisdiction mutatis mutandis. Unlike the UPC that has jurisdiction only over EPs, the (national) courts of any EU member state could, however, likewise assume international jurisdiction even over patents registered in non-EPC states, such as the USA, Japan or China, in case the respective defendant is domiciled in their EU member state.

Will this cause a revival of cross-border injunctions? Likely yes!

For intra-EU cases, the CJEU has basically confirmed the GAT v LUK ruling with regard to the validity of a patent. So, the application of Art. 24(4) Brussels Ibis Regulation as confirmed by the CJEU ensures that courts of non-UPCA member states such as Spanish courts (Spain being the EU’s most prominent non-UPCA member state) are exclusively competent not only for dedicated nullity actions but also for determining validity in cases where an invalidity defense is raised before the UPC or any national EU member state court. However, whether there will be additional competition with respect to the assessment will depend on how the courts will deal with the split jurisdiction for infringement and validity. The CJEU points to the possibility of a stay of the infringement case for which the Advocate General proposed guidelines. According to these guidelines the court seized should, under its national procedural law, (i) preliminarily assess the chances of invalidity proceedings (already pending or to be initiated within a court-set deadline) before the competent court in the state the patent is registered in, and (ii), where applicable and appropriate, stay the case pending the invalidity case abroad. This resembles the discretionary decision German patent infringement courts take under Sec. 148 of the German Code of Civil Procedure, where due to the bifurcation no invalidity defense can be raised but only a stay of the infringement proceedings requested pending parallel invalidity proceedings. The CJEU added that a stay could in particular be justified “where it takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid” (decision, recital 51). Whether this indicates a lower standard than applied in Germany remains to be seen. Seeing as this assessment would in any event be an assessment under the respective foreign law (which the court seized might be unfamiliar with), the national courts within the EU could, however, generally be more inclined to stay the case due to additional uncertainties involved.

Finally, for third-state cases, the CJEU points to Artt. 33 and 34 Brussels Ibis Regulation, according to which a court of an EU member seized “may” stay their case, even though the CJEU seems to favor a stay in such cases (“a court of a Member State […] may be prompted to recognise the jurisdiction of courts of third States”, decision, recital 65; “if none of the restrictions referred to in paragraphs 63 to 65 is applicable”, decision, recital 74). Where Artt. 33 and 34 Brussels Ibis Regulation are not applicable, the court of an EU member state seized may rely on the provisions provided by the civil procedural laws of its member states. In Germany, courts may stay their case under Sec. 148 of the German Code of Civil Procedure also with respect to proceedings pending abroad. Whether they will, is still an open question, but this allows to open things up. For the UPC, Rule 295(a) of the Rules of Procedure^[xi] becomes relevant which stipulates that the UPC “may” stay the infringement action provided that a decision in the invalidity proceedings “may be expected to be given rapidly”. So far, the UPC has been rather reluctant to stay its proceedings thereunder. It remains to be seen whether this will hold true also in such cases. For the courts of the UK and Turkey, two of the most prominent non-EU (and, thus, also non-UPCA) member states of the EPC, the decisions, thus, indicate additional competition with respect to the assessment of infringement of the national parts of an EP validated there, including an incidental decision on validity in cases where only a corresponding invalidity defense is raised.

Endnotes

[i] Online available: https://curia.europa.eu/juris/showPdf.jsf?text=&docid=56479&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=427055 (last retrieved 02/07/2025).

[ii] Online available: https://www.unified-patent-court.org/sites/default/files/upc_documents/agreement-on-a-unified-patent-court.pdf (last retrieved 01/31/2025).

[iii] Online available: https://www.unified-patent-court.org/sites/default/files/files/api_order/CC5DDB59B23C4060B18ADA327BFB5640_en.pdf (last retrieved 01/31/2025).

[iv] https://curia.europa.eu/juris/document/document.jsf?text=&docid=295685&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=14133197 (last retrieved 02/25/2025).

[v] Online available: https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:02012R1215-20150226 (last retrieved 01/31/2025).

[vi] Online available: https://www.consilium.europa.eu/en/documents-publications/treaties-agreements/agreement/?id=2007081 (last retrieved 02/25/2025).

[vii] Online available: https://curia.europa.eu/juris/showPdf.jsf?text=&docid=55027&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=427221 (last retrieved 07/02/2025).

[viii] Online available: https://curia.europa.eu/juris/document/document.jsf;jsessionid=9D5BC637993029E661098ECB002A44DF?text=&docid=283062&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=3336248 (last retrieved 02/03/2025).

[ix] Online available: https://curia.europa.eu/juris/document/document.jsf?text=&docid=289819&pageIndex=0&doclang=en&mode=req&dir=&occ=first&part=1&cid=9548064 (last retrieved 02/07/2025).

[x] In the case the third state is Denmark, Norway, Iceland, or Switzerland.

[xi] Online available: https://www.unified-patent-court.org/sites/default/files/upc_documents/rop_en_25_july_2022_final_consolidated_published_on_website.pdf (last retrieved 02/07/2025).