An International Guide to
Patent Case Management for Judges

13.5.4 Rules on the international jurisdiction of French courts

13.5.4.1 Brussels Ia Regulation

In patent matters, the jurisdiction provisions under Regulation (EU) No. 1215/2012 of December 12, 2012 (Brussels Ia Regulation) apply.

Under Article 4 of the Regulation, individuals residing within the territorial boundaries of a member state are subject to the jurisdiction of the courts in that member state, irrespective of their nationality. Individuals who are not nationals of the member state in which they are domiciled are subject to the jurisdiction of that member state. Therefore, the aforementioned article establishes the jurisdiction of the court of the defendant's domicile as a matter of principle.

The Brussels Ia Regulation also provides for optional jurisdiction.

The place of the tort: Article 7.2 of the Regulation first offers the claimant the possibility of bringing proceedings before "the courts of the place where the harmful event occurred or may occur", thereby directly determining the competent court within the member state. This ground for jurisdiction is most frequently invoked in patent infringement cases. It enables the owner of a French or European patent designating France (excluding unitary patents) to initiate legal proceedings against any individual or entity infringing the patent, irrespective of the defendant's domicile.

The location of the co-defendant: Article 8.1 of the Regulation stipulates that an individual domiciled in the territory of a member state may be subject to legal action "where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings."

In the Solvay judgment,⁴⁴⁷ the CJEU clarified that in instances where two or more companies established in different member states, in proceedings pending before a court of one of those member states, are each separately accused of committing an infringement of the same national part of a European patent by virtue of their performance of reserved actions with regard to the same product, “irreconcilable judgments” could result from separate proceedings. Such cases can constitute “related actions” and it is for the national court to assess whether that is so, taking into account all the relevant information in the case in question.

In France, the provision contained in Article 8.1 was the subject of a ruling by the Court of Cassation on June 29, 2022.⁴⁴⁸ In that case, the Court of Cassation reversed the decision of the Paris Court of Appeal, which had declined to adjudicate on the merits of acts of infringement committed abroad. The refusal was based on CJEU case law⁴⁴⁹ relating to Article 8.1. The Court of Cassation has indicated that a French court may adjudicate cases involving acts of infringement committed in multiple member states, provided that said acts concern the same national part of a European patent relating to the same product. The Court has further noted a risk of irreconcilable judgments if such cases are be judged separately. It stipulates that the national court is responsible for evaluating this risk, taking into account all the factors specific to each case. In the case at hand, the Paris Court of Appeal had transgressed those principles by declining to examine the possibility of such a risk, despite the fact that Hutchinson had alleged infringements in France, Germany and Great Britain of the same national parts of its European patent relating to the same product.

Under Article 24(4) of the Regulation, the courts of the member state in which the application was filed or the registration was made retain exclusive jurisdiction over the validity of the title, including in instances where the matter is raised by way of exception.

The recent CJEU judgment in BSH v. Electrolux⁴⁵⁰ has shed considerable additional light on the applicable jurisdictional rules in cases of patent infringement involving European patents with multiple national designations, including those outside the EU. In the judgment, the question arose as to whether the Swedish courts, which had jurisdiction on the basis of the defendant’s domicile (pursuant to Article 4 of the Regulation), could hear cases of infringement affecting national designations of the European patent, including those relating to third countries, even though the validity of those titles was contested by way of exception. In response, the CJEU delineated a distinction between the jurisdiction of a member state of the EU or state party to the Lugano Convention, and⁴⁵¹ that of a third country that is a member of the EPC:

• In the first case, the court retains its jurisdiction to proceed with the infringement case, while also maintaining the prerogative to stay proceedings.

• In the second case, Article 24.4 does not apply. Consequently, the court may rule on validity on an inter partes basis, thereby respecting the sovereignty of the state in question.

Such extension of jurisdiction also applies to provisional measures. Moreover, Article 35 of the Regulation permits the request for provisional and protective measures from the courts of a member state even if the courts of another member state have jurisdiction to hear the merits of the case. However, the scope of such measures is then limited to the territory of the state of the court seized, which considerably reduces their effectiveness in combating cross-border counterfeiting.⁴⁵²

13.5.4.2 French private international law

French private international law establishes extensive rules of jurisdiction based on French nationality. Article 14 of the Civil Code ensures that French nationals have the right to initiate legal proceedings in French courts, regardless of their role in the case. This rule, which was once a matter of principle, has become subsidiary in application. Its application requires that the defendant not be domiciled in France and that no ordinary criterion of jurisdiction justify the jurisdiction of the French courts.

Article 6.2 of the Brussels Ia Regulation states that “any person domiciled in a Member State may, whatever his nationality, avail himself in that Member State of the rules of jurisdiction there in force [...]” That privilege therefore extends to all plaintiffs domiciled in France.

In the event of an infringement that takes place partially in France, the subsidiarity of Article 14 of the Civil Code raises questions. Article 46 of the CCP establishes territorial jurisdiction, limited to harm caused in France. Therefore, it would be possible to combine Article 14 of the Civil Code (for harm caused abroad) and Article 46 of the CCP (for harm caused in France).⁴⁵³

13.5.4.3 Anti-suit injunctions

An anti-suit injunction is a legal mechanism that is part of ordinary law. It is a tool that a court can use to restrain a party from bringing or pursuing legal proceedings before a foreign court.

In principle, anti-suit injunctions are not permitted in the EU under the Brussels I Regulation, as was reiterated in the West Tankers Inc. ruling by the Court of Justice of the European Communities on February 10, 2009.⁴⁵⁴ The Court determined that anti-suit injunctions are incompatible with the Brussels I Regulation, as they may hinder its effective implementation. European case law emphasizes that prohibiting a party from bringing proceedings before a foreign court “undermines the mutual trust that member states place in each other’s legal systems and judicial institutions, on which the system of jurisdiction under Regulation No. 44/2001 is based.”

That said, an anti-suit injunction issued by a court outside the EU may be recognized in France. In a ruling dated October 14, 2009, the Court of Cassation held that “an anti-suit injunction which, outside the scope of conventions or Community law, is intended solely [...] to punish the breach of a pre-existing contractual obligation is not contrary to international public policy.”⁴⁵⁵ However, such recognition remains contingent upon adherence to the standard criteria for exequatur, particularly with regard to conformity with international public policy and the absence of any fraudulent activities.

That approach applies primarily in situations where the injunction is intended to enforce a jurisdiction clause that has been mutually agreed upon by the parties. The Court of Cassation has determined that there is no denial of access to the courts when the purpose of the decision is to enforce a mutually agreed upon clause.