CJEU Clarifies Jurisdictional Boundaries in Patent Infringement and Validity Disputes in BSH v Electrolux

The Court of Justice of the European Union (CJEU) issued a pivotal judgment on February 25, 2025, in the case of BSH v Electrolux (C-339/22), reshaping the jurisdictional landscape for European patent litigation. The ruling provides critical guidance on the application of Article 24(4) of Regulation (EU) No 1215/2012 (Brussels I bis) concerning the jurisdiction of national courts over infringement claims when a validity defense is invoked.

BSH initiated infringement proceedings in Sweden against Electrolux, a Swedish company, alleging unauthorized use of national designations of a European patent (EP) validated in multiple jurisdictions, including Austria, France, Germany, Greece, Italy, the Netherlands, Spain, the UK, Turkey, and Sweden. Electrolux contested the validity of these designations and argued that, pursuant to Article 24(4) of Brussels I bis, Swedish courts lacked jurisdiction over infringement claims related to foreign patent designations.

Article 24(4) of Brussels I bis confers exclusive jurisdiction to the courts of each Member State over matters relating to the registration or validity of patents granted for that state, even when validity is raised as a defense, codifying the CJEU’s earlier ruling in GAT/LuK (C-4/03). BSH countered that their infringement claim did not fall within the scope of “validity” under Article 24(4) and cited Swedish procedural law requiring separate invalidity actions before competent courts when invalidity is pleaded in infringement proceedings.

The Swedish Patent and Market Court initially dismissed the infringement claims concerning foreign parts of the European patent, concluding that jurisdiction was lost once validity was challenged. On appeal, the Svea Court of Appeal referred three questions to the CJEU:

1. Whether Article 24(4) results in national courts losing jurisdiction over the entire infringement claim when a validity defense is raised, or only over the validity challenge itself.

2. Whether the Swedish procedural rule mandating separate invalidity actions affects the jurisdictional issue.

3. Whether Article 24(4) applies to patents validated in third states, such as Turkey, granting exclusive jurisdiction to those states’ courts.

The preliminary ruling request was lodged on May 24, 2022, with written observations from BSH, Electrolux, the French Government, and the European Commission. An oral hearing occurred on June 22, 2023. Advocate General (AG) Emiliou delivered his initial opinion on February 22, 2024, advocating a narrow interpretation of Article 24(4). He argued that exclusive jurisdiction should apply solely to validity issues, not to the entire infringement dispute, cautioning against defendants using invalidity defenses to manipulate jurisdiction. AG Emiliou acknowledged the inefficiencies of bifurcated proceedings but deemed them manageable, referencing systems like Germany’s.

Regarding third-state patents, AG Emiliou rejected absolute positions that either EU courts must always decline jurisdiction or always exercise it. Instead, he proposed a balanced approach based on the defendant’s domicile and the principle of reflectivity in international law, whereby courts consider the jurisdictional stance of the third state. He noted the Brussels I bis Regulation’s design limitations concerning non-EU patents and recommended judicial discretion to fill these gaps.

Following the AG’s opinion, the case was transferred to the Grand Chamber, which reopened oral proceedings focusing on the third question. A second hearing took place on May 14, 2024, and a supplementary AG opinion was issued on September 5, 2024.

In its final ruling, the CJEU largely adopted AG Emiliou’s reasoning on the first two questions. The Court confirmed that national courts retain jurisdiction over infringement claims even when validity is challenged as a defense. However, they cannot rule on the patent’s validity, which remains exclusively within the jurisdiction of the courts of the patent’s granting Member State. The infringement court may stay proceedings if there is a reasonable chance that the competent court will invalidate the patent, ensuring the infringement decision considers the validity ruling.

This approach prevents defendants from evading jurisdiction by raising validity defenses and promotes legal certainty by allowing infringement claims to proceed in a single forum. It also mitigates the risk of conflicting decisions across Member States and reduces litigation complexity and costs for patent holders.

On the third question, the CJEU acknowledged the absence of explicit provisions in Brussels I bis for patents validated in third states. While the Court did not adopt AG Emiliou’s nuanced middle-ground approach in full, it recognized the need for EU courts to exercise discretion in such cross-border disputes, considering factors like the defendant’s domicile and the connection to the third state.

The BSH v Electrolux decision thus clarifies that while EU courts have jurisdiction over infringement claims involving foreign EU patents, validity challenges must be adjudicated exclusively by the courts of the patent’s granting state. For patents validated outside the EU, the ruling highlights jurisdictional uncertainties and the necessity for courts to balance respect for third-state jurisdiction with the practicalities of cross-border litigation.

This judgment has significant implications for patent litigation strategy within the EU and beyond, particularly as the Unified Patent Court (UPC) system evolves and interacts with national courts. It underscores the importance of understanding jurisdictional nuances in multi-jurisdictional patent enforcement and invalidity proceedings.