21 Oct 2016

Currently, there is no EU wide legislation harmonising the grant of a patent or its effects once granted.

However, under the European Patent Convention 1973 (“EPC”), the majority of European states (including all EU Member States) can apply for the grant of a ‘European’ patent through the European Patent Office (“EPO”). A single examiner deals with the application, which designates which countries a grant is sought in. Once granted, the applicant receives national patent rights in each of the states which were designated.

With the exception of the application procedure, and a centralised nine month opposition period before the EPO, the laws of each designated state apply in relation to the granted patent.

As all of the EU Member States are EPC signatories, when dealing with jurisdictional issues between Member States, the Recast Brussels I Regulation (“Brussels Regulation”) apply, which provide that:

  • Under Article 24 in proceedings concerned with the registration or validity of patents… …each Member State shall have exclusive jurisdiction
  • Under Article 27  “Where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it had no jurisdiction.”

The proceedings

In the recent case of (1) Anan Kasei Co Ltd (2) Rhodia Operations S.A.S v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722, Arnold J in the High Court confirmed the relatively well established principle that where the validity of a designated patent is brought before the courts of one Contracting State, due to the operation of the Brussels Regulation, then the court in another Contracting State did not have jurisdiction to consider the infringement of that same designation.

The Claimants initially particularised their infringement claim against both the UK and German designations of the patent but, after the Defendants brought invalidity proceedings in the German courts in relation to the German designation, they later amended their claim so that infringement of the German designation was conditional upon the German court’s findings of validity (as it was common ground that the German courts had exclusive jurisdiction over such proceedings).

The issue between the parties was therefore whether the Claimant’s reformulated claim was “concerned” or was  “principally concerned with” said validity.

The decision

Arnold J concluded that the Claimants' particulars were indeed concerned with validity, and he drew upon a number of previous cases which stated a very similar principle – being that validity and infringement are so closely interrelated, they should be treated for jurisdictional purposes as one claim; or, as Laddie J phrased it in Coin Controls Ltd v Suzo International (UK) Ltd (1999) Ch 33, “there is in the end only one question; ‘has the defendant infringed a valid claim’.”

Arnold J went onto conclude that there are three reasons why the courts should not allow concurrent infringement/validity actions regarding the same designation:

  1. Allowing a court to decide on infringement would indirectly rule on validity; and if validity proceedings are ongoing elsewhere, this would undermine the Brussels Regulation.
  2. Circumventing the Brussels Regulations in this manner would “have the effect of multiplying the heads of jurisdiction”, and would undermine legal certainty.
  3. Indirectly ruling on validity  “would also multiply the risk of conflicting decisions."

Whilst one can question whether validity and infringement are inseparable (as judgment can be pronounced on infringement alone) and there is an argument that second and third reasons given by Arnold J are counter intuitive because the current EPC system provides for the infringement of designations to be addressed by individual national courts, the practicalities and constraints of the system make Arnold J’s reasoning fundamentally sound.


There exists an inherent tension whereby each national court has exclusive jurisdiction over validity, but national courts have also granted cross-border injunctions in cases where validity has not been put in issue. This tendency has led to courts, knowingly or unwittingly, to overreach their jurisdiction in the past.

It is recognised in the UK, but less so in bifurcated systems such as Germany, that questions of validity and infringement are intrinsically linked. This is not just in the sense that validity is a prerequisite for infringement, but it is a pragmatic recognition that very few infringement actions take place where validity is not raised as an issue.

Practically speaking, not allowing concurrent infringement/validity actions for the same designation allows the system to function with less inconsistencies and contradictions.

Until unitary patents are introduced, decisions must be kept compartmentalised at the national level for the reasons stated by Arnold J. If, for example, courts in various countries were allowed to grant supra-national injunctions on the basis of infringement, it would cause confusion if such injunctions conflicted, and it would tend to frustrate validity proceedings pending before the courts of other Contracting States.

One could still question whether this particular case was decided correctly, however, due to the conditional nature of the Claimants' pleadings. Even if infringement and validity are to be treated as one and the same, the English court was not asked to pass judgment on either, but merely to reserve its position.

Perhaps, however, for the sake of clarity, Arnold J was correct to draw the line where he did, and conclude that where a designation’s validity is in question in one state, another state’s courts cannot consider infringement. The cases brings into focus how when introduced, the EU wide unitary patent would aim to resolve many of these issues.