How does a court determine whether it has jurisdiction to hear a patent action?

Patent Litigation

Australia Small Flag Australia

Australian patent rights are generally limited to acts in the Australian patent area. In some cases a party can be liable for acts outside Australia, for example, importation and sale in Australia of a product made outside the jurisdiction by a method claimed in an Australian patent.

An Australian Court would not generally consider questions of validity of a foreign patent however it may consider questions of infringement of a foreign patent in some cases.

Austria Small Flag Austria

The Commercial Court Vienna has exclusive jurisdiction in patent infringement cases. This also applies also if the action is based on a foreign patent.

In principle it is possible to sue in Austria based on a foreign patent, for example, if the defendant has his seat in Austria (Art 4 Brussels Ia Regulation ((EU) No 1215/2012)). However, if the defendant questions the validity of the patent the Austrian court will lose jurisdiction in favor of the court of the Member State of the EU in which the patent was applied for (Art 24 para 4 Brussels Ia Regulation). Since this is an exclusive jurisdiction, the Austrian court has to declare of its own motion that it has no jurisdiction and the parties cannot agree upon which country shall have jurisdiction.

Brazil Small Flag Brazil

As discussed above, the Federal Court and the appropriate provincial courts can hear patent infringement actions, but only in respect of Canadian patents, and not foreign patents. Additionally, the Federal Court has the exclusive jurisdiction to hear impeachment proceedings with respect to Canadian patents and expunge said patents from the register. The provincial courts can only declare a patent to be invalid as between the parties to the litigation.
Due to the principles of comity, anti-suit injunctions are available but are extremely rare. For example, they are issued only where a foreign court has assumed jurisdiction on a basis that is inconsistent with Canada’s rules of private international law relating to forum non conveniens such that it results in injustice to a litigant or potential litigant in the Canadian courts.

Canada Small Flag Canada

As discussed above, the Federal Court and the appropriate provincial courts can hear patent infringement actions, but only in respect of Canadian patents, and not foreign patents. Additionally, the Federal Court has the exclusive jurisdiction to hear impeachment proceedings with respect to Canadian patents and expunge said patents from the register. The provincial courts can only declare a patent to be invalid as between the parties to the litigation.

Due to the principles of comity, anti-suit injunctions are available but are extremely rare. For example, they are issued only where a foreign court has assumed jurisdiction on a basis that is inconsistent with Canada’s rules of private international law relating to forum non conveniens such that it results in injustice to a litigant or potential litigant in the Canadian courts.

China Small Flag China

The Chinese court has jurisdiction over disputes involving a Chinese patent, and has no jurisdiction over infringement or validity cases in respect of foreign patents. There is no anti-suit injunction system in China, either.

Czech Republic Small Flag Czech Republic

It applies national and EU rules on jurisdiction. In summary it will hear cases that involve an act which took place in the Czech Republic and infringes a Czech patent right (national patent or Czech part of a European Patent).

Foreign patent infringement is not actionable.

France Small Flag France

A court, being recalled that only the Paris District Court has jurisdiction over patent disputes, has jurisdiction to hear a patent case every time acts infringing a patent having an effect in France occurs.

Germany Small Flag Germany

German courts affirm jurisdiction generally only when a German (or a German part of a European) patent is asserted. Cross-border proceedings are rare. If foreign patents are asserted in an infringement main action, the German courts will lose jurisdiction once an invalidation defense is raised. This is different in preliminary injunction proceedings.

German law does not provide for anti-suit injunctions. Indeed, the District Court Munich I recently ruled that a US anti-suit injunction was incompatible with German law.

Greece Small Flag Greece

According to the law, competent courts to hear preliminary injunctions in patent cases are Single Member Courts of First Instance, of the place of residence of the defendant, or of the place where the infringing action takes place. The Full Member Courts of First Instance are competent to hear main infringement actions. In this case, the suit can be brought before the specialized IP courts based in Athens and Thessaloniki.

India Small Flag India

The Court having jurisdiction means the court where the Defendant voluntarily resides or carries on business, and where there are more than one Defendant, where at least one of them at the time of commencement of the suit voluntarily resides or carries on business, or where the cause of action arose.

Ireland Small Flag Ireland

The normal rules under the Brussels Regime will apply or, where Brussels does not apply, the rules of private international law will apply. The Irish court has exclusive jurisdiction in proceedings concerned with the validity of any Irish patent.

Israel Small Flag Israel

Alternative dispute resolution (ADR) in patent cases may take the form of mediation, arbitration or a compromise consent verdict. ADR in general is not commonly used in infringement or validity disputes. On the other hand, in entitlement and ownership disputes, mediation is quite commonly used. In addition, arbitration is quite common in patent-related contract disputes. Compromise consent verdicts are not common in patent cases.

There are no mandatory ADR provisions in patent cases.

Italy Small Flag Italy

The court having territorial jurisdiction to hear a patent infringement action is the court of the domicile of the defendant or, alternatively, of the place where the alleged infringement is taking place. Patentees may avail of the latter criterion to forum shop to their courts of choice.

The court seized with patent infringement proceedings is always competent to also hear a revocation action filed by way of counterclaim, in response to the infringement action.

Revocation actions can also be filed in the form of main proceedings i.e. not in response/by way of counterclaim to an infringement action. When filed in the form of main proceedings, revocation actions are subject to the exclusive jurisdiction of the court of the place that the patentee elected as its domicile in the patent application (in the case of a national patent) or upon validation (in the case of a national EP designation). The patent domicile is normally coincident with the offices of the patent attorney instructed to apply for/validate the patent.

Japan Small Flag Japan

Japanese courts have jurisdiction over actions relating to patent infringement, including actions relating to foreign patent infringement, as long as such actions relating to patent infringement each satisfy the requirements set forth in the Code of Civil Procedure. More specifically, the jurisdiction of Japanese courts is accepted in the following circumstances: (i) where the general venue for an action against the defendant is located in Japan; (ii) in a claim for damages, where seizable property of the defendant is located in Japan; (iii) where the defendant has an office or business office in Japan, and the action relates to the business conducted at such office or business office; (iv) where the defendant is conducting business in Japan, and the action relates to the business conducted in Japan; (v) where it is determined that a tort occurred in Japan; (vi) where agreed jurisdiction is accepted; and (vii) where jurisdiction by appearance is accepted. Requirement (iv) may involve, for example, consideration of the following issues: whether the website is in Japanese; and whether applications from Japan are available through the website.

Norway Small Flag Norway

Norwegian Courts do not have jurisdiction to consider the validity of foreign patents and will dismiss a case or a claim that concerns the validity of a foreign patent.

Norwegian Courts may consider questions of infringement of foreign patents provided that the alleged infringes may be sued in Norway, i.e. is domiciled in Norway. Foreign companies may however not be sued in Norway for acts carried out outside of Norway. For practical purposes it is therefore difficult to imagine a situation where a Norwegian Court could consider a question of whether a foreign patent is infringed.

Poland Small Flag Poland

The jurisdiction to hear a patent action may be based on the Regulation no. 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters and national provisions applicable to non-EU disputes.

Polish courts to not accept jurisdiction over foreign patents validity or infringement; they do however accept jurisdiction against foreign entities for infringement of a Polish patent or an European patent validated in Poland.

There is no anti-suit injunction available in the Polish system.

Portugal Small Flag Portugal

Apart from cases in which the parties have reached an agreement to settle an infringement dispute in arbitral proceedings, the court with jurisdiction to hear patent actions (infringement and validity) is the IP Court.

Russia Small Flag Russia

Russian courts have only jurisdictions over Russian and Eurasian Patents (in respect to their force or validity in Russia). There is no provision in the law extending their jurisdiction for foreign IP titles.

Singapore Small Flag Singapore

The Singapore Court does not have jurisdiction to consider questions of infringement or validity in respect of foreign patents that do not fall under the PA (i.e. are not filed in the IPOS Registry).

There has not been a local case dealing with the circumstances under which a Court will grant an anti-suit injunction in relation to overseas patent infringement and/or validity proceedings. In theory, while there is likely no issue with the Singapore Courts granting an anti-suit injunction to injunct overseas patent litigation proceedings where the patent concerned is within Singapore’s jurisdiction, we note that such cases would be unlikely given that patents are widely regarded as being territorial in nature and thus it is likely that litigants will commence proceedings in the appropriate forums at the outset.

South Korea Small Flag South Korea

The standard of determining jurisdiction is whether or not a party or a case in dispute is “substantially related” to Korea (see the Act on Private International Law at Article 2 of). With regard to a patent matter, the Korean Supreme Court has held that, invalidation or revocation of a patent, which has to be registered to be effective in the relevant country, should be deemed to fall within the exclusive jurisdiction of the country where the patent is registered, and cannot be tried at the Korean courts. However, there is no established rule on whether the Korean court can review a case involving infringement or validity of a foreign patent. In view of the Supreme Court’s decision above, we believe that the Korean court would not likely review a case involving infringement or validity of a foreign patent.

Sweden Small Flag Sweden

The patent and market courts have exclusive jurisdiction regarding Swedish patents (granted by the national Patent Office or by the EPO and validated here). The jurisdiction does not extend to validity of foreign patents. In cross-border infringement proceedings the Swedish courts are bound by EU law instruments on jurisdiction. Anti-suit injunctions are not a remedy available under Swedish law.

Switzerland Small Flag Switzerland

The FPC has exclusive jurisdiction over disputes relating to the validity or registration of a Swiss patent or the Swiss part of a European patent. In infringement cases, the FPC has jurisdiction if the infringement occurs in Switzerland. If the defendant is domiciled in Switzerland, the FPC will also have jurisdiction for infringement elsewhere, i.e., also for infringements of foreign patents. However, if the validity of a foreign patent is at dispute, the courts of the respective country, and not the Swiss courts, will have jurisdiction.

Taiwan Small Flag Taiwan

For the IP Court, as long as the subject matter of a proceeding involves a Taiwanese patent or other intellectual property rights, the IP Court will have jurisdiction over this proceeding unless some extreme exceptions present.

If a patentee goes to a district court of the common court system and files a patent infringement proceeding, then the district court will determine whether it has jurisdiction over this proceeding basing on (1) whether the defendants resides in the territory that is subject to this district court’s jurisdiction; (2) whether the infringing acts or damages occur in the territory subject to this district court’s jurisdiction.

For a proceeding where at least one of the parties is a foreigner or a foreign company, the courts (both the IP Court and the district courts) will have to determine whether Taiwan courts have proper international jurisdiction over this proceeding. Usually, as long as the patentee asserts a Taiwanese patent being infringed in this proceeding, then the courts will determine that the Taiwan courts have international jurisdiction over this proceeding.

Thailand Small Flag Thailand

The IP&IT Court has exclusive jurisdiction over civil and criminal proceedings in relation to patent disputes (and all other intellectual property matters), including patent invalidity and patent infringement disputes, that occur within Thailand.

Turkey Small Flag Turkey

The procedural issues of civil judgement are governed by the CPL. Moreover, there are specific rules in the IP Law with respect to intellectual property disputes. Accordingly, several courts are authorized to handle disputes:

- The court of the domicile of the defendant
- The court of the domicile of the plaintiff
- The court of the place where the infringing act was carried out.
- The court of the place where the act of infringement produced its effects.

The courts mentioned above are entitled to hear both infringement and invalidation claims. As to the authorised courts, specialised IP courts, where available, handle the dispute. Otherwise, the 3rd Criminal Court of General Practice is authorised to settle the conflict.

The foreign patents, i.e., European patents and patents entered into the national phase through PCT, are considered no different than national patents. Meaning that the general authorisation and jurisdiction rules also apply for these; no special courts handle these disputes.

As to anti-suit injunctions, such injunctions are not granted in Turkey, as filing an action is deemed as the exercise of a fundamental human right, i.e., the right to due process. The cancellation of the patent protected in Turkey, either national or European patents validated in Turkey or patents entered into the national phase through PCT, should be requested from and such decisions should be granted by the Turkish courts to be enforceable in Turkey. In this context, foreign court decisions are not binding for Turkish courts. The same applies to infringement cases; the prevention of infringement actions carried out in Turkey, along with other requests available to the patent holder should be examined and granted in Turkey.

United Kingdom Small Flag United Kingdom

UK courts have jurisdiction to hear patent actions concerning the validity and infringement of UK patents, and UK-designated European patents. Additionally, while they may have jurisdiction to hear actions concerning the infringement of foreign patents, they will not have jurisdiction in matters concerning the validity of foreign patents, with jurisdiction in such cases being reserved for the state of registration. 

Validity

Article 24(4) of Regulation (EU) 1215/2012 (the “Brussels Regulation Recast”) provides that in proceedings concerned with the registration or validity of patents, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the registration has been applied for, has taken place or is under the terms of an instrument of the EU or an international convention deemed to have taken place shall have exclusive jurisdiction, regardless of the domicile of the parties. 

 

Article 24(4) further states that without prejudice to the jurisdiction of the European Patent Office under the EPC, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State.

 

Article 27 of the Brussels Regulation Recast provides that where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it has no jurisdiction.

Accordingly, UK courts have exclusive jurisdiction in proceedings concerned with the validity of UK patents or UK designations of European patents. Conversely, where a UK proceeding is concerned with the validity of a foreign patent, including that of another Member State, then the UK court is to declare that it has no jurisdiction. Whether a particular action can be said to be concerned with the validity of a patent will often be a matter of characterisation in light of the circumstances, having regard to substance rather than form.

Notwithstanding this general rule, the CJEU held in Solvay S.A. v Honeywell Fluorine Products Europe BV and Ors (Case C-616/10) that this rule shall not prevent a court from awarding provisional relief on the basis of a foreign patent, such as a provisional cross-border prohibition against infringement, even if the defendants in the main proceedings argue by way of defence that the patent invoked is invalid.

Infringement

The Brussels Regulation Recast sets out a regime for determining whether a party can be sued in the courts of a given EU Member State, including in relation to the tort of patent infringement. Articles 4 and 5 provide in essence that subject to the Brussels Regulation Recast, persons in a Member State shall, whatever their nationality, be sued in the courts of that Member State. Per Article 6, if the defendant is not domiciled in a Member State, the jurisdiction of the courts of each Member State shall, subject to the Brussels Regulation Recast, be determined by the law of that Member State. Pursuant to Article 7, in matters relating to tort, a person domiciled in a Member State may be sued in another Member State in the courts for the place where the harmful event occurred or may occur. Under Article 8, where a person domiciled in a Member State is one of a number of defendants, he may also be sued 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. Article 9 of the Brussels Regulation Recast sets out the procedure for determining which court has jurisdiction in circumstances where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States.

In contrast to validity, UK courts may have jurisdiction in proceedings concerning the infringement of a patent registered in a foreign jurisdiction.

As an example of UK courts determining infringement of foreign patents, the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48 recently opined on the infringement of not only the UK designation of a European patent, but also its corresponding designations in France, Italy and Spain. Further, in Chugai Pharmaceutical Co. Ltd v UCB Pharma SA & Ors [2018] EWHC 2264 (Pat), the court granted the claimant a declaration that its product would not infringe a valid claim of a particular US patent, such that no royalties were payable pursuant to a patent licence for the relevant period.

This is not to say, however, that a foreign court may not also have jurisdiction to decide the same question, or that even if the UK court does have such jurisdiction, it will necessarily be appropriate for the UK court to exercise it. In such circumstances, it will be a matter for the relevant courts, applying principles of private international law, to determine which court has jurisdiction to consider the question of infringement of a foreign patent, and whether that jurisdiction should be exercised.  

Moreover, where a claim is brought in the UK for infringement of a non-UK designation of a European patent, and invalidity/nullity proceedings are then brought in the court of the relevant Member State, then Article 24(4) may be engaged in which case the UK court will not have jurisdiction to determine the infringement claim, as was the case in Anan Kasei v Molycorp [2016] EWHC 1722 (Pat).

Anti-suit injunctions

It is open to a party to seek an “anti-suit injunction” from the UK court, whereby the court restrains a party over whom it has personal jurisdiction from instituting or continuing proceedings in a foreign court if it is necessary in the interests of justice to do so. Whether an anti-suit injunction is granted will depend on all of the circumstances, though some relevant factors include: whether the proceedings before the foreign court are or would be vexatious or oppressive, whether the UK is clearly the natural forum for the dispute, and whether justice requires that the claimant in the foreign court should be restrained from proceeding there. In this regard, it should be noted that UK courts will tend to grant anti-suit injunctions cautiously since by definition they involve interference with the processes or potential processes of a foreign court, and further, while the prosecution of parallel proceedings in different jurisdictions may depending on the circumstances be undesirable, doing so is not necessarily vexatious or oppressive.

United States Small Flag United States

Jurisdiction for patent suits is automatic under 28 U.S.C. § 1338. Under this statute, a patent owner may file suit in any federal district court where the defendant is subject to personal jurisdiction and venue is proper. Venue is proper in judicial districts where the defendant is incorporated, or has some business presence and has committed acts of alleged infringement. Courts in the United States only address the merits of United States patents, not foreign patents. While courts are sometimes willing to transfer cases from one judicial district to another, based on convenience and other factors, anti-suit injunctions are exceptionally rare and very difficult to obtain.

Vietnam Small Flag Vietnam

Generally, the court will follow the following principles to determine the jurisdiction over the dispute:

- Patent disputes that are for profit purposes would be handled by the provincial court. Other disputes will go to the district court for the first-instance level. Appeals are handled by the provincial court.
- Disputes involving foreign elements (e.g., where the patent holder is an offshore company) will go to the provincial court for the first-instance level. Appeals are handled by the Superior Court.
- The court of the location where the defendant resides/is headquartered shall assert jurisdiction.

The courts do not deal with foreign patents (patents granted by foreign patent offices). Rather, Vietnamese courts would deal with infringement of patents granted by the Vietnam IP Office.

In principle, the concerned parties can seek preliminary injunctions to prevent the other party from commencing or continuing a proceeding in a foreign country. However, in practice, Vietnamese courts do not grant such an anti-suit injunction.

Updated: November 14, 2019