CELEX: 62003CJ0004
Brussels Convention
Article 16(4)
Proceedings concerned with the registration or validity of patents
Exclusive jurisdiction of the court of the place of deposit or registration
Declaratory action to establish no infringement
Question of the patent's validity raised indirectly

1       This reference for a preliminary ruling concerns the interpretation of Article 16(4) of the Convention of 27 September 1968
on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (OJ 1978 L 304, p. 36), as amended by the
Convention of 9 October 1978 on the Accession of the Kingdom of Denmark, Ireland and the United Kingdom of Great Britain and
Northern Ireland (OJ 1978 L 304, p. 1, and – amended version – p. 77), by the Convention of 25 October 1982 on the Accession
of the Hellenic Republic (OJ 1982 L 388, p. 1), by the Convention of 26 May 1989 on the Accession of the Kingdom of Spain
and the Portuguese Republic (OJ 1989 L 285, p. 1), and by the Convention of 29 November 1996 on the Accession of the Republic
of Austria, the Republic of Finland and the Kingdom of Sweden (OJ 1997 C 15, p. 1) (‘the Convention’).
2       The reference has been made in the course of proceedings between Gesellschaft für Antriebstechnik mbH & Co. KG (‘GAT’) and
Lamellen und Kupplungsbau Beteiligungs KG (‘LuK’) concerning the marketing of products by the first of those companies which,
according to the second, amounts to an infringement of two French patents of which it is the proprietor.

Legal context
3       Article 16 of the Brussels Convention, which constitutes Section 5 (‘Exclusive jurisdiction’) of Title II, concerning the
rules of jurisdiction, states:
‘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, the courts of the Contracting State in which the deposit or registration has been applied for,
has taken place or is under the terms of an international convention deemed to have taken place;
…’
4       The fourth paragraph of Article 17 of the Convention, which, together with Article 18, makes up Section 6 (‘Prorogation of
jurisdiction’) of Title II, provides that ‘[a]greements … conferring jurisdiction shall have no legal force … if the courts
whose jurisdiction they purport to exclude have exclusive jurisdiction by virtue of Article 16.’
5       Article 18 of the Convention states:
‘Apart from jurisdiction derived from other provisions of this Convention, a court of a Contracting State before whom a defendant
enters an appearance shall have jurisdiction. This rule shall not apply … where another court has exclusive jurisdiction by
virtue of Article 16.’
6       Article 19 of the Convention, which features in Section 7 (‘Examination as to jurisdiction and admissibility’) of Title II,
provides:
‘Where a court of a Contracting State is seised of a claim which is principally concerned with a matter over which the courts
of another Contracting State have exclusive jurisdiction by virtue of Article 16, it shall declare of its own motion that
it has no jurisdiction.’
7       According to the first paragraph of Article 28 of the Convention, which is in Section 1 (‘Recognition’) of Title III, concerning
the rules of recognition and enforcement, ‘a judgment shall not be recognised if it conflicts with the provisions of Sections
3, 4 or 5 of Title II’. The second paragraph of Article 34 of the Convention, which is in Section 2 (‘Enforcement’) of Title
III, refers, in regard to the possible grounds for refusing enforcement of a decision, to the first paragraph of Article 28,
cited above.

The dispute in the main proceedings and the question referred for a preliminary ruling
8       GAT and LuK, companies established in Germany, are economic operators competing in the field of motor vehicle technology.
9       GAT made an offer to a motor vehicle manufacturer, also established in Germany, with a view to winning a contract to supply
mechanical damper springs. LuK alleged that the spring which was the subject of GAT’s proposal infringed two French patents
of which LuK was the proprietor.
10     GAT brought a declaratory action before the Landgericht (Regional Court), Düsseldorf to establish that it was not in breach
of the patents, maintaining that its products did not infringe the rights under the French patents owned by LuK and, further,
that those patents were either void or invalid.
11     The Landgericht Düsseldorf considered that it had international jurisdiction to adjudicate upon the action relating to the
alleged infringement of the rights deriving from the French patents. It considered that it also had jurisdiction to adjudicate
upon the plea as to the alleged nullity of those patents. The Landgericht dismissed the action brought by GAT, holding that
the patents at issue satisfied the requirements of patentability.
12     On appeal by GAT, the Oberlandesgericht (Higher Regional Court) Düsseldorf  decided to stay the proceedings and refer the
following question to the Court of Justice for a preliminary ruling:
‘Should Article 16(4) of the Convention … be interpreted as meaning that the exclusive jurisdiction conferred by that provision
on the courts of the Contracting State in which the deposit or registration of a patent has been applied for, has taken place
or is deemed to have taken place under the terms of an international convention
only
applies if proceedings (with
erga omnes
effect) are brought to declare the patent invalid
or
are proceedings concerned with the validity of patents within the meaning of the aforementioned provision where the defendant
in a patent infringement action or the claimant in a declaratory action to establish that a patent is not infringed pleads
that the patent is invalid or void and that there is also no patent infringement for that reason, irrespective of whether
the court seised of the proceedings considers the plea in objection to be substantiated or unsubstantiated and of when the
plea in objection is raised in the course of proceedings?’

The question referred for a preliminary ruling
13     By that question, the referring court seeks in essence to ascertain the scope of the exclusive jurisdiction provided for in
Article 16(4) of the Convention in relation to patents. It asks whether that rule concerns all proceedings concerned with
the registration or validity of a patent, irrespective of whether the question is raised by way of an action or a plea in
objection, or whether its application is limited solely to those cases in which the question of a patent’s registration or
validity is raised by way of an action.
14     It should be recalled, in this connection, that the notion of proceedings ‘concerned with the registration or validity of
patents’ contained in Article 16(4) of the Convention must be regarded as an independent concept intended to have uniform
application in all the Contracting States (Case 288/82
Duijnstee
[1983] ECR 3663, paragraph 19).
15     The Court has thus held that proceedings relating to the validity, existence or lapse of a patent or an alleged right of priority
by reason of an earlier deposit are to be regarded as proceedings ‘concerned with the registration or validity of patents’
(
Duijnstee
, cited above, paragraph 24)
16     If, on the other hand, the dispute does not concern the validity of the patent or the existence of the deposit or registration
and these matters are not disputed by the parties, the dispute will not be covered by Article 16(4) of the Convention (
Duijnstee
, paragraphs 25 and 26). Such would be the case, for example, with an infringement action, in which the question of the validity
of the patent allegedly infringed is not called into question.
17     In practice, however, the issue of a patent’s validity is frequently raised as a plea in objection in an infringement action,
the defendant seeking to have the claimant retroactively denied the right on which the claimant relies and thus have the action
brought against him dismissed. The issue can also be invoked, as in the case in the main proceedings, in support of a declaratory
action seeking to establish that there has been no infringement, whereby the claimant seeks to establish that the defendant
has no enforceable right in regard to the invention in question.
18     As the Commission has observed, it cannot be established from the wording of Article 16(4) of the Convention whether the rule
of jurisdiction set out therein applies only to cases in which the question of a patent’s validity is raised by way of an
action or whether it extends to cases in which the question is raised as a plea in objection.
19     Article 19 of the Convention, which, in certain language versions, refers to a claim being brought ‘principally’, does not
provide further clarity. Apart from the fact that the degree of clarity of the wording of that provision varies according
to the particular language version, that provision, as the Commission has observed, does not confer jurisdiction but merely
requires the court seised to examine whether it has jurisdiction and in certain cases to declare of its own motion that it
has none.
20     In those circumstances, Article 16(4) of the Convention must be interpreted by reference to its objective and its position
in the scheme of the Convention.
21     In relation to the objective pursued, it should be noted that the rules of exclusive jurisdiction laid down in Article 16
of the Convention seek to ensure that jurisdiction rests with courts closely linked to the proceedings in fact and law.
22     Thus, the exclusive jurisdiction in proceedings concerned with the registration or validity of patents conferred upon the
courts of the Contracting State in which the deposit or registration has been applied for or made is justified by the fact
that those courts are best placed to adjudicate upon cases in which the dispute itself concerns the validity of the patent
or the existence of the deposit or registration (
Duijnstee
, paragraph 22). The courts of the Contracting State on whose territory the registers are kept may rule, applying their own
national law, on the validity and effects of the patents which have been issued in that State. This concern for the sound
administration of justice becomes all the more important in the field of patents since, given the specialised nature of this
area, a number of Contracting States have set up a system of specific judicial protection, to ensure that these types of cases
are dealt with by specialised courts.
23     That exclusive jurisdiction is also justified by the fact that the issue of patents necessitates the involvement of the national
administrative authorities (see, to that effect, the Report on the Convention by Mr Jenard, OJ 1979 C 59, p. 1, at p. 36).
24     In relation to the position of Article 16 within the scheme of the Convention, it should be pointed out that the rules of
jurisdiction provided for in that article are of an exclusive and mandatory nature, the application of which is specifically
binding on both litigants and courts. Parties may not derogate from them by an agreement conferring jurisdiction (fourth paragraph
of Article 17 of the Convention) or by the defendant’s voluntary appearance (Article 18 of the Convention). Where a court
of a Contracting State is seised of a claim which is principally concerned with a matter over which the courts of another
Contracting State have jurisdiction by virtue of Article 16, it must declare of its own motion that it has no jurisdiction
(Article 19 of the Convention). A judgment given which falls foul of the provisions of Article 16 does not benefit from the
system of recognition and enforcement under the Convention (first paragraph of Article 28 and second paragraph of Article
34 thereof).
25     In the light of the position of Article 16(4) within the scheme of the Convention and the objective pursued, the view must
be taken that the exclusive jurisdiction provided for by that provision should apply whatever the form of proceedings in which
the issue of a patent’s validity is raised, be it by way of an action or a plea in objection, at the time the case is brought
or at a later stage in the proceedings.
26     First, to allow a court seised of an action for infringement or for a declaration that there has been no infringement to establish,
indirectly, the invalidity of the patent at issue would undermine the binding nature of the rule of jurisdiction laid down
in Article 16(4) of the Convention.
27     While the parties cannot rely on Article 16(4) of the Convention, the claimant would be able, simply by the way it formulates
its claims, to circumvent the mandatory nature of the rule of jurisdiction laid down in that article.
28     Second, the possibility which this offers of circumventing Article 16(4) of the Convention would have the effect of multiplying
the heads of jurisdiction and would be liable to undermine the predictability of the rules of jurisdiction laid down by the
Convention, and consequently to undermine the principle of legal certainty, which is the basis of the Convention (see Case
C-256/00
Besix
[2002] ECR I-1699, paragraphs 24 to 26, Case C-281/02
Owusu
[2005] ECR I-1383, paragraph 41, and Case C-539/03
Roche Nederland
and Others
[2006] ECR I‑0000, paragraph 37).
29     Third, to allow, within the scheme of the Convention, decisions in which courts other than those of a State in which a particular
patent is issued rule indirectly on the validity of that patent would also multiply the risk of conflicting decisions which
the Convention seeks specifically to avoid (see, to that effect, Case C‑406/92
Tatry
[1994] ECR I-5439, paragraph 52, and
Besix
, cited above, paragraph 27).
30     The argument, advanced by LuK and the German Government, that under German law the effects of a judgment indirectly ruling
on the validity of a patent are limited to the parties to the proceedings, is not an appropriate response to that risk. The
effects flowing from such a decision are in fact determined by national law. In several Contracting States, however, a decision
to annul a patent has
erga omnes
effect. In order to avoid the risk of contradictory decisions, it is therefore necessary to limit the jurisdiction of the
courts of a State other than that in which the patent is issued to rule indirectly on the validity of a foreign patent to
only those cases in which, under the applicable national law, the effects of the decision to be given are limited to the parties
to the proceedings. Such a limitation would, however, lead to distortions, thereby undermining the equality and uniformity
of rights and obligations arising from the Convention for the Contracting States and the persons concerned (
Duijnstee
, paragraph 13).
31     In the light of the foregoing, the answer to the question referred must be that Article 16(4) of the Convention is to be interpreted
as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration
or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection.

Costs
32     Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,
the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs
of those parties, are not recoverable.
On those grounds, the Court (First Chamber) hereby rules:
Article 16(4) of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial
Matters, as last amended by the Convention of 29 November 1996 on the Accession of the Republic of Austria, the Republic of
Finland and the Kingdom of Sweden, is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein
concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised
by way of an action or a plea in objection.
[Signatures]
*
Language of the case: German.