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Post-Brexit, patent litigants will probably still be able to obtain declarations of non-infringement of European national patents from the English courts, but there are further issues to consider, say Duncan Ribbons and Maeve Lynch of Redd Solicitors.
A number of recent cases have demonstrated that the English courts can and will determine issues of infringement of foreign intellectual property rights where their validity is not challenged.
This jurisdiction arises under Regulation (EU) No. 1215/2012 (the recast Brussels regulation), which provides a common framework concerning jurisdiction and recognition and enforcement of foreign judgments in all EU member states. Article 24(4) provides that member states have exclusive jurisdiction over issues concerning the validity of patents and other IP rights registered in accordance with their national laws. However, such jurisdictional exclusivity does not apply to infringement.
This framework allows litigants to ask the English High Court to rule on the infringement of patents covering other EU member states (if the other jurisdictional requirements are satisfied). For example, in Actavis Group v Eli Lilly & Company (2012), Actavis sought declarations of non-infringement of the French, German, Italian, Spanish and UK designations of a European patent. Eli Lilly accepted that in these circumstances, where validity was not in issue, the court was not required to decline jurisdiction based on the predecessor to the current article 24(4) of the recast Brussels regulation. Eli Lilly’s jurisdictional challenge based on the English common law doctrine of forum non conveniens (when courts can dismiss a case that another court, or forum, is much better suited to hear) failed.
Duncan Ribbons, Maeve Lynch, Redd Solicitors, post-Brexit, Actavis Group v Eli Lilly & Company, patent, trademark, copyright,