Patents: jurisdiction over non-UK European patents

Summary

The High Court has held that it had no jurisdiction to grant declarations of non-infringement for non-UK designated patents.

Background

Jurisdiction and recognition and enforcement of judgments between the EU, Denmark, Iceland, Norway and Switzerland are governed by the 2007 Lugano Convention, which is equivalent to the recast Brussels Regulation (1215/2012/EU) for EU member states.

Article 2(1) of the Lugano Convention provides that persons, whatever their nationality, should be sued in the courts of the state where they are domiciled. Article 5(3) of the Lugano Convention (Article 5(3)) sets out an exception allowing persons to be sued for a tort in the courts for the place where the harmful event occurred or may occur. Defendants may be sued, at the claimant's option, in the courts of either the place where the damage occurred or the place of the event giving rise to that damage. Article 5(3) also covers claims for negative declarations seeking to establish the absence of liability in tort.

The law applicable to the question of whether past acts have infringed, or proposed future acts would infringe, for each designation of the patent is the substantive patent law of the relevant country (Article 8(1), Rome II Regulation on the law applicable to non-contractual obligations (864/2007/EC)) (Rome II). The law which has to be satisfied in order to obtain a declaration of non-infringement (DNI) is the lex fori (Article 1(3), Rome II). 

In Actavis UK Ltd and others v Eli Lilly & Co, the High Court made declarations of non-infringement for non-UK designations of a European patent (www.practicallaw.com/4-572-1394). 

The doctrine of res judicata provides that litigation raising issues that have, or could have, been decided in previous proceedings may be held to be an abuse of process. 

Facts

J owned a European patent relating to a method for discharge of bulk material from a ship. A vessel previously owned by J, which was alleged to use the invention, had been sold and resold, ending up owned by P. The first buyer had undertaken that the system would not be used and gave J a right to inspect the ship, but P alleged that this undertaking was not passed on.

P brought an action in the UK for DNIs of the patent, both for the UK designation and for the other 11 countries where the patent had been validated, all of which were in the EU or EEA. No challenge to validity was made. J argued that the court had no jurisdiction to grant the declarations in respect of the 11 non-UK designations of the patent.

P agreed that in general the UK court did not have jurisdiction over claims for DNIs for non-UK designations of the patent by virtue of Article 5(3). However, P argued that there was such…