EuGH; 2022-09-08; C-399/21
Judgment;Summary;Decision by national courts in the field of European Union law — ECLI:EU:C:2022:648
Date: 2022-09-08
Language of the case: Swedish
Court formation: Ninth Chamber
Subject matter: Area of freedom, security and justice;Judicial cooperation in civil matters
Procedure: Reference for a preliminary ruling
Origin: Sweden;Germany

Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged:  
28 June 2021 
Referring court:  
Svea hovrätt, Patent- och marknadsöverdomstolen (Sweden) 
Date of the decision to refer:  
17 June 2021 
Applicant:  
IRnova AB 
Defendant:  
FLIR Systems AB 
Subject matter of the main proceedings 
The company FLIR has applied for patents on certain inventions in inter alia the 
United States of America and China. IRnova brought an action seeking a 
declaration that IRnova has better entitlement to the inventions than FLIR. The 
action was dismissed at first instance on the ground that the action is related so 
closely to the registration and invalidity of patents that the Swedish courts do not 
have jurisdiction to hear the case. IRnova has lodged an appeal against this 
dismissal decision before the referring court. 
Subject and legal basis of the request for a preliminary ruling 
Request under Article 267 TFEU for interpretation of Article 24(4) of Regulation 
(EU) No 1215/2012 of the European Parliament and of the Council of 
12 December 2012 on jurisdiction and the recognition and enforcement of 
judgments in civil and commercial matters. 
EN 
REQUEST FOR A PRELIMINARY RULING OF 17. 6. 2021 – CASE C-399/21 
 
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Question referred for a preliminary ruling 
Is an action seeking a declaration of better entitlement to an invention, based on a 
claim of inventorship or co-inventorship according to national patent applications 
and patents registered in a non-Member State, covered by exclusive jurisdiction 
for the purposes of Article 24(4) of Regulation (EU) No 1215/2012 of the 
European Parliament and of the Council of 12 December 2012 on jurisdiction and 
the recognition and enforcement of judgments in civil and commercial matters? 
Provisions of EU law relied on 
Regulation (EU) No 1215/2012, Articles 4(1) and 24(4) 
Provisions of national law relied on 
Patents Act (1967:837), Sections 17 and 18, Section 53, first paragraph and 
Section 65, first paragraph. 
According to those provisions, anyone who proves that they have better 
entitlement to an invention than the applicant for a patent may request that the 
application be transferred to them. Similarly, a patent granted to someone other 
than the person entitled to the patent will be transferred on request to the eligible 
person. 
Act (1978:152) on the Jurisdiction of Swedish courts in certain cases in the field 
of patent law, etc., Sections 1 and 2. 
According to those provisions, cases in which an action is brought against 
applicants for a European patent based on better entitlement to the patent-pending 
invention in the case of Sweden may be heard by a Swedish court, inter alia, if the 
defendant is domiciled in Sweden. 
Succinct presentation of the facts and procedure in the main proceedings 
1 IRnova is a Swedish limited liability company which develops and manufactures 
infrared detectors used in thermal-imaging cameras in various contexts. FLIR is a 
Swedish limited liability company which belongs to an American group. That 
company develops and manufactures electronic equipment based on infrared 
technology. The parties previously had a business relationship. 
2 In 2015, FLIR applied for a patent in two cases through provisional applications in 
the United States. The provisional applications were followed up by FLIR on 
2 March 2016 through two international patent applications. The international 
patent applications were later completed by FLIR, including two Chinese patent 
applications and two US patent applications. Two Chinese patents based on the 
Chinese applications have been granted and two US patents based on the US 
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applications have been granted. In addition, a US patent application, which is a 
divisional application for one of the abovementioned US applications, has been 
filed. 
3 IRnova brought an action against FLIR before the Patent- och marknadsdomstolen 
(Patent and Market Court) on 13 December 2019. IRnova requested, inter alia, 
that the Patent- och marknadsdomstolen (Patent and Market Court) declare that 
IRnova has better entitlement to the inventions than FLIR, or to a share thereof, 
according to the US and Chinese patent applications referred to, as well as to the 
inventions under each patent, patent application, utility model or utility model 
application which they may result in, and according to the patents granted. 
4 The Patent- och marknadsdomstolen (Patent and Market Court) dismissed 
IRnova’s action in those parts on the ground that the action in the dismissed part is 
related so closely to the registration and invalidity of patents that the Swedish 
courts do not have jurisdiction to hear the case. 
5 IRnova has lodged an appeal against the dismissal decision of the Patent- och 
marknadsdomstolen (Patent and Market Court) before the Patent- och 
marknadsöverdomstolen (Patent and Market Appeal Court). IRnova requests that 
the decision of the Patent- och marknadsdomstolen (Patent and Market Court) be 
annulled and that the case be referred back to the Patent- och marknadsdomstolen 
(Patent and Market Court) for consideration of the substance.  
The essential arguments of the parties to the main proceedings 
6 In support of its action, IRnova argues, in essence, the following. As part of his 
employment and duties, an IRnova employee has developed the inventions in 
accordance with the aforementioned patent applications and patents. In any case, 
he has made such a substantial contribution to the inventions that he is to be 
regarded as a co-inventor. As employer, IRnova has taken the place of the 
inventor and is therefore the rightful owner of these inventions. FLIR has, in its 
own name and without acquiring the inventions from IRnova or otherwise being 
entitled to do so, applied for the patents for the inventions. FLIR is acting 
wrongfully as an applicant for the patents and as proprietor of the patents. Because 
of this, there is also uncertainty about ownership, which is to the detriment of 
IRnova. 
7 IRnova cites the following facts in respect of Swedish jurisdiction. The parties and 
the inventors are Swedish. The circumstances invoked have taken place in 
Sweden. The patent applications and the patents in question constitute wealth 
assets in Sweden. There are therefore objectively good reasons as to why the 
Swedish courts have jurisdiction under the principle of the place of the 
defendant’s domicile also with regard to the US and Chinese patent applications 
and patents, respectively. The rules of Regulation (EU) No 1215/2012 are not 
directly applicable to this case. The action in this part in no way concerns property 
related to the EU. There are no objective reasons for applying the rule of exclusive 
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jurisdiction by analogy. There is no request for the applications and patents to be 
transferred or for the court otherwise to intervene in the activities of the foreign 
registration authority. The value of the Swedish courts’ judgment lies in clarifying 
the situation between the parties in Sweden. The judgment may have an effect on 
evidence in a dispute abroad but it will not have any prejudicial significance either 
in China or in the United States. 
8 FLIR disputes the amendment to the dismissal decision of the Patent- och 
marknadsdomstolen (Patent and Market Court). FLIR states to that end that, 
although Article 24(4) of Regulation (EU) No 1215/2012 does not, in its wording, 
affect patents and patent applications registered in China and the United States, 
the rules of the regulation may be considered to reflect what are internationally 
accepted principles of conflict of jurisdiction between courts in different 
countries, which strongly suggests that the exemption rule can be applied by 
analogy to situations where the registration of patents has taken place in a non-
member country. IRnova’s reason for the action is based on substantive patent law 
and its inventor concept. The assessment of who is the rightful owner of a patent-
pending invention must be based on what the invention in question actually covers 
according to the patent claims in the patent. Such an assessment can be made only 
in accordance with the national rules for the patent because the inventions are 
defined in the claims and must be interpreted in accordance with national 
substantive patent law. Therefore, a dispute over who has better entitlement to a 
patent-pending invention based on the inventor concept involves an assessment of 
whether the person claiming to have better entitlement is classified as an inventor 
or as a co-inventor under the patent rules of the country of registration. Such an 
assessment therefore touches on questions involving substantive patent law, 
which, according to the principle of sovereignty, is exclusive to the authorities and 
courts of the country of registration. The question of ownership based on the 
inventor concept is prejudicial, for example, to the issue of transferring patent 
applications and patents.  
Succinct presentation of the reasoning in the request for a preliminary ruling 
9 The question of the competent court, which is the subject of a review in the case 
in the Patent- och marknadsöverdomstolen (Patent and Market Appeal Court), 
concerns an action for establishing who has better entitlement to the invention 
under Chinese and US patent applications and US patents, respectively (as well as 
the inventions under each patent, patent application, utility model or utility model 
application which they may result in). The dispute in which the question of 
jurisdiction has arisen is therefore a private law matter and falls within the scope 
of private law to which Regulation (EU) No 1215/2012, by virtue of Article 1 
thereof, is per se applicable. 
10 The Court of Justice has previously held, with regard to the Convention of 
27 September 1968 on jurisdiction and the enforcement of judgments in civil and 
commercial matters (the Brussels Convention), which was subsequently replaced 
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in essence by Regulation (EU) No 1215/2012, that the rules apply also to a dispute 
concerning a Contracting State and a non-Contracting State, for example if the 
claimant and the defendant are domiciled in the first State and the events at issue 
occurred in the second, which would then make the dispute international in nature. 
The provisions of the Brussels Convention therefore apply to cases relating to the 
relationship between courts in a Contracting State and a non-Contracting State 
(see judgment of 1 March 2005, Owusu, C-281/02, EU:C:2005:120, paragraphs 26 
and 35). 
11 Article 24(4) of Regulation (EU) No 1215/2012, according to its wording, covers 
only actions relating to the ‘registration or validity’ of patents, which may be 
understood as meaning that the provision would not apply to a dispute concerning 
who has better entitlement to an invention under certain patent applications and 
patents on account of alleged inventorship or co-inventorship. 
12 The Court of Justice has specified in a number of rulings the starting points for 
how the provision in question should be construed. The Court has highlighted, 
inter alia, that the concept of ‘in proceedings concerned with the … validity of 
patents’ is an independent concept intended to be interpreted uniformly in all 
Member States (judgments of 15 November 1983, Duijnstee, C-288/82, 
EU:C:1983:326, paragraph 19, and of 13 July 2006, GAT, C-4/03, 
EU:C:2006:457, paragraph 14; see, also, with regard to cases involving trade 
marks, judgment of 5 October 2017, Hanssen Beleggingen, C-341/16, 
EU:C:2017:738, paragraph 31). 
13 The purpose of the provision is to ensure that, in the case of such disputes 
mentioned, jurisdiction rests with courts closely linked to the proceedings in fact 
and law. The exclusive jurisdiction of the courts of the country of registration can 
be justified by the fact that those courts are best placed to adjudicate on cases 
where the validity of the patent, or even the existence of the deposit or 
registration, is in dispute. The courts in the country of registration 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 disputes are dealt with by specialised 
courts (see, in particular, GAT judgment, paragraphs 21 and 22, but also the 
judgments in Hanssen Beleggingen, paragraph 33, and Duijnstee, paragraph 22). 
14 The exclusive jurisdiction is also justified by the fact that the issue of patents 
necessitates the involvement of the national administrative authorities. In this 
regard, the Court of Justice has referred to the Jenard report about the Brussels 
Convention (OJ C 59 1979, pp. 1 to 36), which argued that the granting of patents 
constitutes the exercise of national sovereignty (see GAT judgment, paragraph 23). 
15 Disputes 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 
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‘concerned with the registration or validity of patents’. If, on the other hand, the 
dispute does not concern the validity of the patent or the existence of the deposit 
or registration, the dispute will not be covered by the rule of exclusive 
jurisdiction. Such would be the case, for example, with an infringement action. 
The provision will be applied restrictively (see judgments in Duijnstee, 
paragraphs 23 and 24, and GAT, paragraphs 15 and 16). 
16 The Court of Justice has also emphasised that it is not sufficient, with a view to 
avoiding the risk of contradictory decisions, for a non-exclusive court to rule only 
on the validity of a patent in relation to the parties to the proceedings. The rule of 
exclusive jurisdiction therefore 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 (see GAT judgment, paragraphs 30 and 31). 
17 As regards the question of whether the exclusivity rule is applicable to disputes 
concerning better entitlement to intellectual property, the Court of Justice has had 
occasion to rule on certain types of such disputes. 
18 The Court of Justice has established that exclusive jurisdiction does not cover a 
dispute between an employee for whose inventions patents have been applied and 
their employer, where the dispute concerns their respective rights to patents under 
the employment contract. The reason for this is that the outcome of the dispute 
depends solely on the question of who is entitled to the patent, which must be 
determined on the basis of the legal relationships that existed between the parties 
concerned, when neither the validity of the patent nor the legality of the patent 
registrations is disputed (see Duijnstee judgment, paragraphs 26 to 28). 
19 In the field of trade marks, the Court of Justice has ruled in respect of a dispute 
concerning an objection to the registration of the sole heir of a trade mark 
proprietor as proprietor of the trade mark when it was alleged that the trade mark 
in question had been assigned several times and was no longer part of the trade 
mark proprietor’s estate at the time of his death. Referring to the Duijnstee 
judgment, the Court clarified that proceedings concerning exclusively the question 
of who is entitled to a patent do not fall within the scope of such exclusive 
jurisdiction (Hanssen Beleggingen judgment, paragraph 35). The Court also 
pointed out that the question of the individual estate to which an intellectual 
property right belongs is not, generally, closely linked in fact and law to the place 
where that right has been registered, which was true for the case that has been 
referred. The rule of exclusive jurisdiction must, according to the Court of Justice, 
be interpreted as not applying to proceedings to determine whether a person was 
correctly registered as the proprietor of a trade mark. The Court of Justice’s 
interpretation was not affected by the fact that a proprietor of an intellectual 
property right can demand the assignment to them of a registration initially made 
in the name of another (see Hanssen Beleggingen judgment, paragraphs 37 to 40). 
20 The dispute over who has better entitlement to inventions under patent 
applications and patents brought before the national court does not concern a 
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dispute between an employee and his or her employer. Therefore, the statements 
made by the Court of Justice in the Duijnstee case do not provide direct guidance 
on whether the rule of exclusive jurisdiction is applicable in the present situation. 
21 Nor does the general statement of the Court of Justice in the Hanssen Beleggingen 
judgment clarify the situation now at issue, since the national dispute does not 
concern who is the proprietor of a patent or who is entitled to file a patent 
application on the basis of legal arrangements with the intellectual property. 
22 In order to determine which party is entitled to an invention under a patent or 
patent application in proceedings of the present kind, the national court must 
examine the question of who should be considered as the inventor or co-inventor 
of the inventions under the relevant patent applications and patents, respectively. 
Such an examination typically involves questions as to what constitutes the 
invention according to the respective patent application/patent by interpreting the 
patent claims and an assessment of who has contributed to the creation of the 
invention and, where appropriate, to which parts thereof. Determining who is 
entitled may therefore include patent law assessments of the contributions made to 
the development work which resulted in novelty and inventiveness and also 
questions regarding the scope of protection under patent law of the country of 
registration. It may further be added that it is a ground for invalidity if someone 
who is not entitled to do so applies for a patent. 
23 The question of better entitlement in the situation now before the national court 
could therefore be considered to be linked in such a way to both the registration 
and validity of a patent that it seems appropriate in view of the objective and 
purpose of the rule of exclusive jurisdiction that a dispute of the current nature is 
covered by the rule. 
24 The conclusion of the Patent- och marknadsöverdomstolen (Patent and Market 
Appeal Court), in an overall assessment of the relevant EU law, is that it is not 
clear or clarified how EU law should be interpreted with regard to the question of 
jurisdiction of a national court when considering an action relating to the right to 
an invention under respective patent applications or patents where the action is 
based on the fact that someone other than the person specified in the patent 
application is the inventor or co-inventor. In order for the Patent- och 
marknadsöverdomstolen (Patent and Market Appeal Court) to be able to rule in 
the case, that court requires an answer to the question that has been referred.