{"id":15636,"date":"2026-05-12T09:33:05","date_gmt":"2026-05-12T07:33:05","guid":{"rendered":"https:\/\/www.gulliksson.se\/?p=15636"},"modified":"2026-05-12T09:39:47","modified_gmt":"2026-05-12T07:39:47","slug":"a-game-changer-in-patent-law-gullikssons-work-behind-bsh-v-electrolux","status":"publish","type":"post","link":"https:\/\/www.gulliksson.se\/en\/a-game-changer-in-patent-law-gullikssons-work-behind-bsh-v-electrolux\/","title":{"rendered":"A game changer in patent law \u2013 Gulliksson\u2019s work behind BSH v Electrolux"},"content":{"rendered":"

[vc_row][vc_column][vc_column_text css=””]Around four years ago, the Patent and Market Court of Appeal (PM\u00d6D) was faced with a complex question: Can the defendant in a case concerning infringement of a foreign patent block the court\u2019s jurisdiction in their own country by objecting that the patent is invalid? The PM\u00d6D ruled that the court could not take a position on the matter without a preliminary ruling from the Court of Justice of the European Union.<\/p>\n

Just over a year ago, the long-awaited answer came from the Court of Justice of the European Union: No, it is not possible.<\/p>\n

In short, the Court of Justice has ruled that national courts retain their jurisdiction to hear a claim for infringement of a foreign patent, even if the defendant raises the issue of the patent\u2019s validity by way of a defence. Where the foreign patent has been granted or validated in another Member State, the question of validity \u2013 but not infringement \u2013 must be separated and examined by the courts of the Member State in which the patent was granted or validated. Depending on the circumstances, the infringement proceedings may also be stayed. If, on the other hand, the foreign patent has been granted or validated in a third country, the national courts have the option of examining the issue of invalidity inter partes<\/em>.<\/p>\n

Case C-339\/22 of the Court of Justice of the European Union, BSH Hausger\u00e4te GmbH (\u201cBSH\u201d) v AB Electrolux (\u201cElectrolux\u201d), took the entire intellectual property world by storm when the Court of Justice issued its preliminary ruling. Immediately following the ruling, there was a flood of articles and commentaries noting its significance, the change to previously accepted case law on jurisdictional issues, as well as thoughts and concerns about how the decision would affect future disputes in the field of patent law. For the undersigned, who represented BSH before the Court of Justice of the European Union and who had been involved in the entire proceedings before the Court of Justice for many long months, the announcement of the ruling and the Court of Justice\u2019s position were very welcome. It was with great pleasure that we noted the Court of Justice\u2019s clarification, which was largely entirely in line with the arguments put forward by BSH before the Court of Justice.\u00a0<\/strong><\/p>\n

Background
\n<\/strong>Within the EU, the jurisdiction of the courts in matters of private law is governed by the Brussels I Regulation (\u201cBrussels I\u201d).<\/p>\n

As a general rule, under Article 4(1) of the Brussels Ia Regulation, proceedings must be brought in the defendant\u2019s place of domicile. However, the Brussels Ia Regulation also contains several exceptions to the general rule. One such exception is Article 24(4), which excludes cases concerning the registration or validity of intellectual property rights. Under Article 24(4), regardless of the parties\u2019 domicile, the court of the Member State in which an intellectual property right has been registered has exclusive jurisdiction to hear an action concerning the registration or validity of that right, whether the action is brought as a claim or a defence.<\/p>\n

The Court of Justice of the European Union has ruled on the purpose behind Article 24(4) on several occasions, stating that it is appropriate for the above types of cases to be heard only by courts that have a substantive and legal connection to the register in which the intellectual property right is recorded. It is, in fact, those courts that are best placed to hear disputes concerning the validity of the right, and only those courts that, with erga <\/em>omnes effect , can influence the content of the register.<\/p>\n

The final part of Article 24(4); \u2018whether the action is brought as a claim or a defence\u2019, is a codification by the EU legislator of the judgment of the Court of Justice of the European Union in GAT v LuK. In that case, the claimant GAT sought to circumvent the rules on exclusive jurisdiction (then Article 22(4)) by bringing a negative declaratory action for infringement and relying on the invalidity of the defendant\u2019s patents as a ground. The Court of Justice did not accept that an action could be brought in that manner and held that the rule on exclusive jurisdiction applied to all proceedings concerning registration or validity, regardless of whether the issue arose as a legal basis for a claim or as a defence.\u00a0<\/strong><\/p>\n

The present case
\n<\/strong>In the present case, which the Court of Justice of the European Union was called upon to hear on this occasion, the situation differed from that in GAT v LuK. BSH sued Electrolux before the Swedish Patent and Market Court (\u201cPMD\u201d) for patent infringement in Sweden \u2013 but also in, inter alia, Germany, France and Turkey.<\/p>\n

At the time the action was brought, it was therefore a pure infringement action. The fact that such an action is not covered by Article 24(4) has been reiterated by the Court of Justice on several occasions, including in GAT v LuK, Duijnstee and IRNova.<\/p>\n

What complicated the case for the Swedish courts was that Electrolux more or less outright (without stating grounds or circumstances relating to the respective jurisdictions) challenged the validity of the foreign registrations and argued that, since the issue could not be separated from the infringement assessment, the Swedish court lacked jurisdiction. Nor did Electrolux at that time make any attempt whatsoever to seek the invalidation of the foreign registrations in the respective countries of registration. Electrolux claimed that the PMD should dismiss BSH\u2019s action, pursuant to Article 24(4), regarding validity and infringement in all jurisdictions other than Sweden. After the matter had been examined (and the action dismissed in accordance with Electrolux\u2019s claim) at first instance, the PM\u00d6D found that neither the wording of the Brussels I Regulation nor the case law of the Court of Justice of the European Union made it clear how the Regulation should be applied in the present case and therefore, as mentioned, requested a preliminary ruling from the Court of Justice of the European Union.<\/p>\n

The questions referred to the Court of Justice
\n<\/strong>The first question <\/u>put by the PM\u00d6D to the Court of Justice was as follows: does the wording of Article 24(4) of the Brussels I Regulation mean that a national court lacks jurisdiction to hear an action for infringement of a foreign patent where the defendant raises the issue of the patent\u2019s validity by way of a plea?<\/p>\n

Electrolux argued in support of such an interpretation of Article 24(4) that established case law indicates that infringement proceedings, where the validity of the right in question is contested, fall within the scope of Article 24(4). In response, BSH contended that Article 24(4) is an exception, and should therefore be interpreted restrictively. We argued instead that GAT v LuK should be interpreted as meaning that the Court of Justice of the European Union had merely put its foot down regarding attempts to circumvent the exclusive jurisdiction rules of the Brussels I Regulation, i.e. the claimant\u2019s attempt to disguise its desire to have the validity of a patent examined by using a negative declaratory action or similar. The Commission also concurred with this reasoning.<\/p>\n

The second question <\/u>referred by the PM\u00d6D to the Court of Justice concerned the wording of the Swedish Patents Act \u2013 namely, whether the answer to the first question is affected by the fact that national law contains provisions stipulating that the issue of invalidity may be examined only after a separate action has been brought in this regard?<\/p>\n

Electrolux and the Commission argued that the question should be answered in the negative, having regard to the Court of Justice\u2019s previous rulings in, inter alia, GAT v LuK. The Court of Justice has previously held that the concept of an action \u2018concerning the registration or validity of a patent\u2019 is an autonomous concept of EU law which must be applied uniformly in all Member States. In response to this, BSH argued that once Swedish jurisdiction had been established, which was the case in the infringement proceedings that had been initiated, national procedural law should apply. BSH drew particular attention to Section 61 of the Patents Act, which applies to patent infringement cases in Sweden and which requires that an action for invalidity be brought separately in order for the court to be able to consider the existence of such a defence within the framework of the infringement action at all.<\/p>\n

The third and final question <\/u>put by the PM\u00d6D to the Court of Justice of the European Union was this: does it matter that the patent in question has been validated in a third country?<\/p>\n

As regards the third question, Electrolux and BSH, as well as the Commission and the French Republic, were in agreement \u2013 Article 24(4) is not directly applicable. BSH, the Commission and the French Republic also agreed that there can be no reflexive effect. Several arguments were raised regarding access to justice; a court within the Union that has fundamental jurisdiction cannot decline jurisdiction in favour of a court in a third country, particularly if this risks leaving a party without a real opportunity to have its case heard.<\/p>\n

The Advocate General\u2019s first draft opinion
\n<\/strong>In his Opinion, Advocate General Emiliou noted at the outset that the scope of Article 24(4) of the Brussels I Regulation is clear \u2013 it applies to proceedings \u2018concerning the registration or validity of a patent\u2019 but not to proceedings \u2018concerning\u2019 other patent-related matters. At the same time, Emiliou highlighted the uncertainty that nevertheless persists as to how the provision should be interpreted. Emiliou placed a significant share of the blame on GAT v LuK and was far from restrained in his criticism of the judgment.<\/p>\n

Emiliou advocated a system whereby national courts with jurisdiction to hear an infringement action would also have jurisdiction to hear a plea of invalidity with inter partes <\/em>effect. He noted, however, that, due to the EU legislator\u2019s codification of GAT v LuK, the Court of Justice is prevented from declaring GAT v LuK invalid, and this system is therefore not one that the Court of Justice can advocate.<\/p>\n

\u2018Bound\u2019 by GAT v LuK and the subsequently amended Article 24(4), Emiliou therefore argued that \u2018a \u201crestrictive\u201d interpretation of the judgment in the case [GAT v LuK] is the least bad option\u2019. In response to the first question, Emiliou therefore proposed that a court hearing an infringement case does not lose its jurisdiction, regardless of whether the defendant objects that the patent in question is invalid. The only matter over which the court would lose jurisdiction is the invalidity defence itself. Emiliou further argued that it would then be for the alleged infringer to bring an action for invalidity in the state of registration. Of course, the alleged infringer does not always do this, as was the case, for example, in BSH v Electrolux. However, should the alleged infringer bring an action for invalidity before a competent court, Emilou argued that there might be grounds to stay the infringement proceedings, depending on the circumstances of the case.<\/p>\n

Emiliou addressed the third question by first pointing out that the Brussels I Regulation, which is binding on EU Member States, cannot confer jurisdiction on courts in third countries. He also specifically referred to the Owusu judgment, arguing that it had made clear that there is no provision in the Brussels system corresponding to the doctrine of forum non conveniens<\/em>. At the same time, Emiliou argued that it is too simplistic an approach to the Brussels system to simply accept this and thereby accept that jurisdiction under Article 4(1) of Brussels Ia is mandatory unless otherwise explicitly stated in the Regulation. He argued instead that Brussels Ia is not designed to deal with disputes with a strong connection to a third country, which is why the silence of the Brussels system on this matter cannot be interpreted as meaning that such a connection may be disregarded. This silence should instead be interpreted, according to Emiliou, as meaning that the national courts of the Member States, when applying their national law, should \u2018reflect\u2019 the structure of the Brussels I Regulation.<\/p>\n

In practice, this would lead to an arrangement consistent with the theory of reflexive effect. Just as exclusive jurisdiction is conferred on a Member State, it may also be deemed to apply in relation to third countries. Consequently, a court may <\/em>decline general jurisdiction where, in a corresponding intra-EU relationship, it would have been compelled <\/em>to do so.\u00a0<\/strong><\/p>\n

Reopening of proceedings in the Grand Chamber
\n<\/strong>How Brussels Ia is to be understood in relation to third countries is a highly complex and sensitive issue. It was likely this, among other factors, that led the Court of Justice to decide to reopen the oral hearing in its Grand Chamber and discuss these issues further before a preliminary ruling could be delivered. This round of oral proceedings covered a large number of sub-questions that had to be addressed within the 20 minutes of speaking time we had. The questions before the Grand Chamber are set out in the attached document<\/a>.<\/p>\n

Following the second hearing in Luxembourg, Emiliou presented a second draft opinion specifically concerning the third question. In it, he maintained the solution he had presented in his first draft, i.e. the one consistent with the theory of reflexive effect. Emiliou argued, however, that following the second hearing he had become aware of a more radical alternative.<\/p>\n

According to Emiliou, Article 4(1) of the Brussels I Regulation could be interpreted, in light of the context in which the provision is set and international customary law, as meaning that the courts of the Member State in which the defendant is domiciled are not granted any jurisdiction whatsoever to hear actions concerning the registration or validity of third-country patents. Emiliou highlighted the many advantages of such an interpretation, such as the creation of uniformity and predictability, but also discussed the extensive criticism that could be levelled against such an interpretation.<\/p>\n

Emiliou concluded by proposing a ruling that does not directly adopt either of the above interpretations. Instead, he merely advocated that Article 24(4) of the Brussels I Regulation should not be directly applicable in relation to patents registered in third countries and that, if <\/em>the courts of Member States have jurisdiction based on another provision of the Brussels I Regulation ( ), such as Article 4(1), they may <\/em>refrain from ruling on the validity of the patent.<\/p>\n

Judgment of the Court of Justice of the European Union (Link)
\n<\/strong>The ECJ\u2019s judgment<\/a> was delivered on 25 February 2025 and essentially meant that the Court settled the questions referred by the PM\u00d6D in accordance with BSH\u2019s arguments: national courts do not automatically lose their jurisdiction to hear an action for infringement of a foreign patent when the defendant raises the issue of the patent\u2019s validity by way of a defence.<\/p>\n

With regard to the first and second questions, the Court of Justice dealt with them together and briefly held, in relation to the second question, that a national provision cannot affect the interpretation of Article 24(4) of the Brussels I Regulation, having regard to the very grounds raised by Electrolux and the Commission (see the Court of Justice\u2019s grounds for the judgment, paras. 26\u201328).<\/p>\n

With regard to the first question, the Court of Justice concurred with Advocate General Emilious\u2019s opinion. As grounds for this interpretation, the Court of Justice highlighted in particular that it is supported by the structure of the Regulation, that it upholds legal certainty through a high degree of predictability, and that it fully meets, without going beyond what is necessary, the objective of Article 24(4) \u2013 namely, that disputes concerning the registration or validity of a patent should be reserved for the courts of the Member State in which the patent was granted, as they are best placed to adjudicate such disputes (see the Court of Justice\u2019s grounds for the judgment, paragraphs 42, 46 and 48). The Court of Justice also concurred with Advocate General Emiliou\u2019s observations regarding the possibility of staying proceedings in the event that the alleged infringer brings an action for a declaration of invalidity (see the Court of Justice\u2019s grounds for the judgment, para. 51).<\/p>\n

Finally, regarding the third question, the Court of Justice once again concurred with the views expressed by Advocate General Emilliou in his Opinion.<\/p>\n

To begin with, the Court of Justice noted that it is clear from the wording of Article 24(4) that the system provided for is an internal system of jurisdiction within the EU. Furthermore, the Court of Justice noted that it had already established in previous case law (albeit not at the time the PM\u00d6D raised the question) that Article 24(4) cannot therefore be regarded as applicable to a court in a third country or as conferring exclusive or other jurisdiction on such a court.<\/p>\n

However, like Advocate General Emiliou, the Court of Justice did not stop there, but went on to examine whether Article 4(1) is mandatory unless otherwise explicitly stated in the Brussels I Regulation. The Court of Justice concluded that the constraint identified by Advocate General Emiliou, arising from GAT v LuK and the EU legislature, cannot be deemed to exist in the case of patents granted or validated in third countries, since Article 24(4) does not apply to the courts of those countries. Instead, the Court of Justice answered the third question in accordance with the solution advocated by Advocate General Emiliou: national courts with jurisdiction to hear an infringement action also have jurisdiction to hear a plea of invalidity of a patent granted or validated in a third country with inter partes <\/em>effect (see the Court of Justice\u2019s grounds for the judgment, paras. 75\u201376).<\/p>\n

One year later
\n<\/strong>The judgment provides a long-awaited clarification of the meaning of the Brussels I Regulation and brings strategic issues into sharp focus. It is now beyond doubt that it is advantageous to seek out an alleged infringer at their domicile and initiate infringement proceedings against them, not only for infringements committed in the country where the court is situated, but also for other jurisdictions (within and outside the EU and also within and outside the UPC). Under such circumstances, such a court must, as a starting point, hear the infringement case even if the defendant raises objections regarding the validity of the national validations.<\/p>\n

It should be noted, however, that the ruling still contains some gaps. Firstly<\/u>, how should a national court deal with interim injunctions subject to a penalty payment, which to some extent and for certain jurisdictions involve an element of public law? Can a public law penalty for an injunction against continuing an act of infringement be imposed by the court in the country that decided the infringement issue, or is there another exclusive forum for the question of imposing such a public law penalty? Will such a court in the country of registration recognise such an interim injunction and a penalty imposed by a foreign court? This is likely to be a minor issue, as the court with jurisdiction to hear the infringement case would also be expected to have jurisdiction to impose a penalty for a breach in one of the countries covered by the decision. Since this court is also located in the country where the defendant is domiciled, the sanction in such a case becomes even more effective for the claimant (and all the more problematic for the infringing defendant).<\/p>\n

Secondly<\/u>, it can be noted that, as regards the issue of invalidity, the practical handling within the EU becomes somewhat more cumbersome than that applicable to third countries. For invalidity arguments relating to third countries, the court in the defendant\u2019s domicile may examine the arguments inter partes. In relation to invalidity arguments concerning countries within the EU, the situation is different. Here, there is, of course, an exclusive forum in the country of registration. The question here is purely practical: how should the court in the defendant\u2019s domicile deal with invalidity arguments that are put forward? This is not addressed in detail by the Court of Justice of the European Union. One solution could be for the court to inform the defendant that, should they wish to have the validity of a national validation examined, they must bring proceedings to that effect in the country of registration, whereupon the court may be informed of this so that it can decide whether parts of the infringement case can be adjudicated or stayed pending a decision from a court in the country of registration. However, this places an important responsibility on the national courts to ensure that this is not abused to delay the infringement proceedings for strategic reasons. In this regard, it may also be noted that paragraph 51 of the judgment contains a very extensive reference to the Advocate General\u2019s first opinion, which includes the Advocate General\u2019s proposal for the practical handling of the infringement case by the competent court. Exactly what precedential value this has is unclear, but it would be difficult to simply disregard this explicit reference in the judgment, not least as it reflects what emerged during the written and oral proceedings before the Court.<\/p>\n

As already stated at the outset, only Electrolux brought an action for annulment regarding the Swedish validation, but claimed that the same applied to other national validations. In doing so, Electrolux succeeded in causing a significant delay in the examination of BSH\u2019s infringement claim. A similar situation could conceivably arise again , where the defendant in an infringement case seeks to delay the bringing and examination of an invalidity action in the country of registration. In such cases, the courts should ensure that the hearing of the infringement case \u2013 which is, after all, the matter to be heard by the court in the defendant\u2019s domicile \u2013 remains the priority and that the hearing of this case is not delayed or postponed without good cause.<\/p>\n

Since we are, in this context, discussing infringement of a granted and validated patent, it further appears appropriate for the court to proceed on the basis that the patent is valid and not to allow the examination of the infringement issue to be delayed unless there are grounds for doing so. If a defendant thus delays bringing an action for invalidation in the country of registration, the examination of the infringement should not be delayed. Similarly, vague assertions regarding the defendant\u2019s views on the validity of foreign validations should not lead to the defendant being able to delay the examination of the infringement issue. A system in which the infringement proceedings are delayed by vague claims of invalidity without subsequent action to secure a declaration of invalidity is at odds with the EU Charter\u2019s requirement for access to an effective remedy.<\/p>\n

Thirdly<\/u>, the question remains as to how the national court should deal with a situation where the relationship between the cases in different jurisdictions may become out of step. This may, of course, primarily occur because the defendant chooses not to defend the infringement claims in certain jurisdictions but defends itself all the more vigorously in others. In this respect, the national court may need to divide the case into parts in some way.<\/p>\n

Another issue is how the court should approach the examination of the claimant\u2019s case. The infringement issue would likely need to be examined in accordance with the rules of the respective country\u2019s law. In such a case, the claimant should also be required to provide evidence regarding the content of the respective country\u2019s law. In this instance, the claimant may have an interest in splitting the cases. In this respect, however, the court should not split the proceedings without compelling reasons. After all, it is the claimant themselves who has chosen to bring the action in the manner that has occurred, and the claimant therefore also bears a responsibility for pursuing the case in that way.<\/p>\n

The judgment in the BSH case has given rise to an almost avalanche-like reaction of national cases, but perhaps even more cases before the UPC. To mention just a few, where the BSH doctrine is highlighted in particular:<\/p>\n