European courts widen their net for patent infringers
In this blog, Justin Wilson, Partner and European and UK Patent Attorney at Withers & Rogers LLP and member of the BIA Intellectual Property Advisory Committee (IPAC), shares his expert perspective on what the recent patent rulings from the UPC and the CJEU mean in practice for biotech and pharma companies and how they could influence patent enforcement strategies across Europe.
Three recent patent rulings from the Unified Patent Court (UPC) and the Court of Justice of the European Union (CJEU) are reshaping the European patent litigation landscape. While these cases involve companies operating outside the life sciences, the procedural implications are highly relevant to companies navigating cross-border patent enforcement. This is especially pertinent to biotech and pharma companies where potential patent infringement is rarely confined to a single jurisdiction. Here we take a look at what has changed.
1. BSH v Electrolux: CJEU expands jurisdictional reach of EU courts
The CJEU ruled that EU courts can hear infringement cases involving European patents validated in other member states, even when validity is challenged. While national courts retain exclusive jurisdiction over validity, EU courts can still assess validity within infringement proceedings. This is a departure from the previous practice where infringement proceedings were halted if validity was contested.
This decision applies to EU national courts and also to the UPC, and means that it may now be possible to obtain a pan-European infringement decision (and/or injunctions), even when the validity of the patent in some countries is challenged. For example, a German national court can now decide on infringement in the UK, even if the validity of the UK patent is challenged.
This ruling also puts national courts on more of a level footing with the UPC, so, in some instances, it may now be worth considering litigation before national courts rather than before the UPC, as shown by a recent cross-border preliminary injunction decision.
Interestingly, the CJEU did not limit its decision to patents granted by the European Patent Office. In theory, this means that EU courts can assess infringement of patents granted outside Europe, including, for example, in the US and China.
2. Fujifilm v Kodak: UPC injunction extends to the UK
In a notable first, and in line with the CJEU case above, the UPC granted an injunction that applies to the UK, despite the country not being a UPC member state. Currently, the UPC system covers 18 countries in the European Union (EU). However, in this case, the court ordered Kodak to cease infringing activities in Germany and, crucially, also the UK. This was due to the existence of a UK part of the European patent. Therefore, the court held that where a defendant is based in a UPC member state, the UPC can determine infringement of European patents in every country in which those patents apply, which can include countries that do not participate in the UPC system, like the UK.
This decision shows the UPC’s willingness to decide on infringement and grant injunctions across European countries, even in those which are not part of the UPC – so-called ‘long-arm jurisdiction’. One way to counter this strategy would be to bring pre-emptive action in those non-UPC/EPC countries. Therefore, the availability of such an injunction could change the litigation strategy of biotech and pharma companies engaging in multi-country enforcement.
3. Dyson v Dreame: UPC covers non-EU defendants
In another jurisdictional extension, the UPC issued a preliminary injunction against Hong Kong-based Dreame, barring sales of infringing products in UPC member states and Spain. Dreame had a European-based authorised representative to sell its products in Europe in order to meet safety regulation obligations. The court decided that this European representative drew the Hong Kong company within the jurisdiction of the UPC.
This ruling paves the way for the UPC to broaden its international jurisdiction to a much larger number of companies, rather than just companies based in the UPC member territories. Given the need to have European representatives in many areas within the biotech and pharma industries, this decision makes it easier to enforce European patents against non-EU manufacturers.
Conclusion
These decisions collectively give more power to EU courts, both national courts and the UPC, to decide infringement across Europe, and potentially beyond. Given this change, it is important for biotech and pharma companies to reconsider their European patent enforcement or defensive strategies to ensure they are making the right decisions in view of the new options now available.
