Registers in the United Kingdom

As Article 22(3) gives international jurisdiction to the courts of the United Kingdom, it will be a matter of internal United Kingdom law to allocate national jurisdiction to the courts of a part of the United Kingdom. Accordingly, jurisdiction is conferred on the courts for the part of the United Kingdom in which the register is kept.

Intellectual property rights registered in Lugano States: Article 22(4)

Article 22 of the Convention goes on to provide:

The following courts shall have exclusive jurisdiction, regardless of domicile:

(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the State bound by this Convention in which the deposit or registration has been applied for, has taken place or is, under the terms of a Community instrument or an international convention, deemed to have taken place. Without prejudice to the jurisdiction of the European Patent Office under the Convention on the grant of European patents, signed at Munich on 5 October 1973, the courts of each State bound by this Convention shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State irrespective of whether the issue is raised by way of an action or as a defence;

An easy and straightforward aspect to the exclusive jurisdiction conferred by Article 22(4) is illustrated by Duijnstee v Goderbauer,"' which shows that the Article is engaged only where the validity of the right in question, or of its registration, is raised as a substantial issue in the proceedings: where there is a genuine issue of validity of the right to be resolved, by far the best place to do it, and to deal with the consequences of having done it, is the place of deposit or registration. It follows that the Article is not applicable where the validity or registration is no more than incidental to the proceedings. A claim by an employee that he was entitled to a right or lien over an employer’s patent, the validity of which was not in question, did not fall under Article 22(4). The same will be true more generally of disputes over ownership of such rights in which the validity of the right as such is not contested or disputed."² And in a simple action founded on an allegation of infringement, which does not call into question the validity of the right, Article 22(4) will likewise have no part to play."³ Moreover, the provision applies only to those intellectual property rights which depend on deposit or registration, and will therefore not extend to copyright, which does not.

If it were to be judged by reference to the English language text alone, it might be argued that Article 22(4) is wider than the first three heads of Article 22 jurisdiction, for it uses the language of the proceedings being ‘concerned with’ the validity of the patent or other right, rather than having this as the object of the proceedings. But no such distinction appears in the French^[1] or German versions of Article 22, and it would be unwise to go where they do not point."⁶ Accordingly, Article 22(4) will apply when the proceedings have as their principal object the validity of the right. Proceedings brought by way of petition seeking the revocation of a patent will clearly fall under Article 22(4).

Invalidity raised as a defence to an infringement claim

The issue of whether the application of Article 22 depends on the claim, or is to be considered in the light of the claim and the defence, arises more acutely in the context of proceedings for patent infringement. A common defence to an infringement claim is the invalidity of the patent, it being fundamental to patent litigation that one cannot infringe an invalid patent. Assuming that the defence of invalidity of the right cannot be struck out summarily as having no realistic prospect of success, one may suppose that there are three possible responses. The first would be to say that the raising of a defence does not alter the character of the claim advanced in the proceedings, and if the claim did not bring the proceedings within the Article, they are not dragged back within its range by the particular defence, or by one of them. The second would be to say that the infringement proceedings should be stayed, and the parties left to go to the court with exclusive jurisdiction under Article 22(4) for a determination of the validity of the right, the stay being lifted and proceedings on the infringement claim resumed in the light of that ruling. The third would be to hold that, once the issue of validity is squarely raised, or is raised as the principal issue for decision in the proceedings between the parties. Article 25 of the Convention divests the court of jurisdiction over the infringement action, which is then and thereafter vested in the court identified by Article 22(4). For reasons explained below, the third of these is the best answer.

As a matter of principle, the first possibility would not be easy to accept, for if the policy which underpins Article 22(4) is taken as seriously as the structure of the Convention suggests it should be,"⁷ it cannot be made to depend upon the accident of who sues whom first, and therefore upon the particular procedural context in which the issue of validity comes to be raised. If it is essential to the claim that the property right is valid, and the defence of invalidity will defeat the claim, the proceedings do have as their object, are founded on, the existing validity or invalidity of the right, and are certainly concerned with the right. The second possibility would not be obviously wrong, but it would be procedurally inconvenient. Bifurcated procedure will generally delay the final resolution of the claim, and in the context of intellectual property disputes, very large sums of money can be put at risk if one or the other of the parties can stall proceedings and fend off the day of judgment, all the while hoovering up money from the alleged infringement. The third represented the practice of the English courts."⁸ It had the merit of practical wisdom about it, combining respect for what is now Article 22(4) with the need to obtain a prompt, efficient and coherent resolution of the entire dispute.

When the issue eventually came for decision in GAT v LuK''^l> it was not dealt with in a wholly satisfactory way. The claimant, a German company, was warned by the defendant that an industrial process which it was proposing to develop infringed two French patents of which the defendant was the proprietor. The claimant brought proceedings before the German courts for declarations that no infringement would be committed and that the patents were invalid. The European Court confirmed that the validity of patents could, whenever^[2] it was in dispute, be determined only under the law of, and in the courts of, the State in which the right was granted; and it followed that the State under whose law the right was granted had exclusive jurisdiction to determine validity, no matter the procedural context in which the issue had arisen for

B JURISDICTION ACCORDING TO LUGANO/BRUSSELS decision;^[3] it said no more. This meant the rejection of the first of the three possible solutions discussed above, but offered no guidance on whether the second or third was correct, or on whether the national court was free to choose between them. As the two possibilities were canvassed in the Opinion of the Advocate General it was disappointing that the Court did not offer any guidance.

The answer should be that once the issue of validity is genuinely raised, Article 25 of the Convention is engaged, and the court seised of the infringement claim should consider that the proceedings are to be understood as principally concerned with, or as having as their object, the issue of validity, no matter that the validity of the right is not the basis of the claim, and grant jurisdictional relief accordingly. Because one cannot infringe an invalid patent, it may very well be that issues of validity are more central or fundamental to an infringement case than they are to a damages claim in which the lack of corporate capacity is raised as a defence, and that as a result, the raising of a defence which Article 22(4) allows to override the jurisdictional basis on which the claim was brought will be easier and more frequent than is the case under Article 22(2). A managerial alternative would be allow the infringement proceedings to continue while the issue of validity is determined elsewhere, with the claimant giving a fortified undertaking to repay any damages awarded if it should appear, once the validity is determined, that none should have been recovered. If this involves accepting that intellectual property law is in some way distinct from the rest of civil and commercial law, it would not be the first time that such a point has been made.

• [1] 288/82, [1983] ECR 3663; C-341/16 Hanssen Beleggingen BV v Prast-Knipping EU:C:2017:738, [2017] ILPr 735. 2 C-341/16 Hanssen Beleggingen BV v Prast-Knipping EU:C:2017:738, [2017] ILPr 735; see also Napp Laboratories v Pfizer Inc [1993] FSR 150. 3 Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112. 4 All use the formula ‘en matière de ...’. 5 All use the formula ‘für Verfahren, welche ... zum Gegenstand haben ...’. 6 See LP Morgan Chase Bank NA v Berliner Verkehrsbetriebe [2009] EWHC 1627 (Comm), [2010] QB 276 (on appeal, [2010] EWCA Civ 390, [2012] QB 176) (a case on what is now Art. 22(2)).
• [2] In particular, the obligation to refuse recognition to the judgment of a court which has exercised jurisdiction in violation of Art. 22: see Chapter 33, below. 2 Coin Controls Ltd v Suzo International (UK) Ltd [ 1999] Ch 33; Fort Dodge Animal Health Ltd v Akzo Nobel Ltd [1998] FSR 222. 3 C-4/03 Gesellschaft fiir A ntriebstechnik mbH <£ Co KG v Lamellen and Kupplungsbau Beteiligungs KG [2006] ECR 1-6509. See also C-172/18 AMS Neve >- Heritage Audio SL EU:C:2019:674. 4 Though ‘wherever’ may be preferable. 5 At [22].
• [3] At [25]. 2 At [46] in the Opinion of Geelhoed A-G, where he seemed to consider that the court hearing the infringement claim could follow either the second or the third of the possibilities mentioned earlier in this paragraph. 3 A value judgment will be called for in order to decide whether the issue of validity is ‘genuinely’ raised. A ‘whisper of invalidity’ is not enough, according to Ablynx NV v VHsquared Ltd [2019] EWCA Civ 2192, [2020] 1 WLR 1412. 4 Even if prospectively or hypothetically: Fujifilm Kyowa Kirin Biologies Co Ltd v Abb Vie Biotechnology Ltd [2016] EWHC 2204 (Pat), [2017] RPC 245; Anan Kasei Co Ltd v Molycorp Chemicals & Oxides (Europe) Ltd [2016] EWHC 1722 (Pat), [2017] FSR 281. 5 C-144/10 Berliner Verkehrsbetriehe v IP Morgan Chase Bank NA [2011] ECR 1-3961. 6 See JP Morgan Chase Bank NA v Berliner Verkehrsbetriehe [2009] EWHC 1627 (Comm), [2010] QB 276, [52] (on appeal, [2010] EWCA Civ 390, [2012] QB 176). 7 Colorplast AIS v Salts Healthcare Ltd [2019] EWHC 1979 (Pat). 8 Save as to the territory to which it applies.