Patents, inventors, jurisdictions, and a European Union Court decision

The European Court has ruled in the patent case C‑399/21 IRnova AB v FLIR Systems AB. This dispute has the following background:

IRnova and FLIR Systems, active in the infrared technology sector, are companies with their registered office in Sweden. They had a business relationship in the past.

On 13 December 2019, IRnova brought an action before the Patent and Market Court seeking, inter alia, a declaration that it had a better right to the inventions covered by international patent applications, subsequently supplemented by European, United States and Chinese patent applications deposited by FLIR in 2015 and 2016, and by United States patents granted to FLIR on the basis of those latter applications.

In support of that action, IRnova had stated, in essence, that those inventions had been made by one of its employees, meaning that that employee had to be regarded as their inventor or, at the very least, as their co-inventor. IRnova therefore argued that, as the inventor’s employer and thus successor in title, it had to be regarded as the owner of the said inventions. However, FLIR, without having acquired those inventions or otherwise being entitled to do so, deposited the applications mentioned in the preceding paragraph in its own name.

The Patent and Market Court declared that it had jurisdiction to hear Irnova’s action relating to the inventions covered by the European patent applications. On the other hand, it declared that it did not have jurisdiction to hear the action relating to its alleged right to the inventions covered by the Chinese and United States patent applications deposited by FLIR and by the United States patents granted to FLIR, on the ground, in essence, that the action concerning the determination of the inventor of those latter inventions is linked to the registration and validity of the patents. In view of that link, the dispute at issue falls within the scope of Article 24(4) of the Brussels Ia Regulation, such that the Swedish courts do not have jurisdiction to hear it.

It is against that decision as to lack of jurisdiction that IRnova brought an appeal before the referring court, the Svea Court of Appeal, Stockholm, Sweden.

According to that court, the dispute before it falls within the scope of the Brussels Ia Regulation, since it seeks a declaration of the existence of a legitimate right to an invention and is therefore civil and commercial in nature. However, that court is uncertain as to whether the Swedish courts have jurisdiction to hear a dispute seeking to establish the existence of the right to an invention arising from the alleged status of inventor or co-inventor. In its view, Article 24(4) of that regulation provides, ‘in proceedings concerned with the registration or validity of … patents’, for exclusive jurisdiction of the courts of the Member State in which the registration has been applied for or has taken place. That exclusive jurisdiction is justified by the fact, first, that those courts are best placed to hear cases in which a dispute concerns the validity of a patent or the existence of its deposit or registration and, second, that the grant of patents necessitates the involvement of the national administrative authorities, which indicates that the grant of a patent falls within the exercise of national sovereignty. However, while it is clear from the case-law of the Court that proceedings concerning exclusively the question of who is the holder of a patent right does not fall within that exclusive jurisdiction, that case-law does not provide any direct guidance as to the applicability of that Article 24(4) in this case.

In the present case, according to the referring court, the dispute before it can be considered to be linked to the registration or validity of the patent within the meaning of that provision. In order to identify the proprietor of the right to the inventions covered by the patent applications or by the patents at issue, it is necessary, according to that court, to determine the inventor of those inventions. Such an assessment would involve an interpretation of the patent claims and an analysis of the respective contribution of the various alleged inventors to the said inventions. Thus, the determination of the proprietor of the right to an invention could give rise to an assessment, in the light of substantive patent law, aimed at establishing which contribution to the development work resulted in the novelty or inventive step, and raise questions as to the scope of the protection conferred by the patent law of the country of registration. Furthermore, the fact that the patent applicant is not entitled to file a patent application constitutes a ground for invalidity.

In those circumstances, the Svea Court of Appeal, Stockholm decided to stay the proceedings and to refer the following question to the Court 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 [the Brussels Ia Regulation]?’

The Court’s decision:

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,

must be interpreted as:

not applying to proceedings aimed at determining, in the context of an action based on alleged inventor or co-inventor status, whether a person is the proprietor of the right to inventions covered by patent applications deposited and by patents granted in third countries.

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