[Hague-jur-commercial-law] EU: Forum Shopping in IP disputes

[Manon Ress]

In the intellectual property enforcement newsletter which is also
  published on the WIPO enforcement website
http://www.wipo.int/enforcement/en/news/2004/enforcement_10_12.html
French and Spanish translations will be available later.

SNIP
EU (II): Forum shopping in intellectual property disputes - General
Advocate issues opinion
  The European Court of Justice (ECJ) will shortly render a decision
expected to have a major impact on the future scope for cross-border
patent infringement actions in Europe:  the court has to interpret the
scope of exclusive jurisdiction for disputes relating to the granting
and registration of patents under the Brussels Convention. According to
the relevant provision, Art. 16 (4) Brussels Convention (now replaced by
the Brussels I Regulation, which provides a similar provision), courts
of the country where a patent (or other registered IP right) was
granted, have exclusive jurisdiction for disputes relating to validity
or registration of such a right. It is now questioned whether this
refers only to claims brought for declaration of invalidity, or whether
exclusive jurisdiction also applies if validity is raised in an
infringement proceeding.

The General Advocate now stated, in his opinion, that only the courts
of the state of grant have jurisdiction to decide upon the validity of a
patent, regardless whether it was brought for a declaration of
invalidity or, for instance, as defense or counterclaim in an
infringement proceeding.  The ECJ is not obliged to follow the opinion,
however, this often is the case. The outcome of the case will also
influence the scope of exclusive jurisdiction for disputes involving
other registered IP rights; in addition, it will certainly be examined
by the delegations involved in the Judgements Project at The Hague
Conference on Private International Law, where related questions are
under discussion (see also below).

The opinion is available in various European languages, including in
French and Spanish (but not in English), see
http://curia.eu.int/jurisp/cgi-bin/form.pl?lang=en&Submit=Submit&docrequire=alldocs&numaff=C-4%2F03&datefs=&datefe=&nomusuel=&domaine=&mots=&resmax=100


-- 
Manon Anne Ress
manon.ress@cptech.org,
www.cptech.org

Consumer Project on Technology in Washington, DC
PO Box 19367, Washington, DC 20036, USA
Tel.:  1.202.387.8030, fax: 1.202.234.5176

Consumer Project on Technology in Geneva
1 Route des  Morillons, CP 2100, 1211 Geneva 2, Switzerland
Tel: +41 22 791 6727