In the field of patents, there are a large number of situations where foreign elements arise and where the question of applicable law or jurisdiction may be raised.
The typical case is the case where the patent in question is an American patent, that the owners are German and Dutch, that they have established a co-ownership contract as a result of a commercial relationship in China, that they have a licensee in Belgium, and there is a suspected Japanese infringer…
In short, we see that this can quickly become complex.
Conflict of laws
A "conflict of laws" can arise when laws of several countries declare themselves individually competent.
Fortunately, in a number of cases there are conflict resolution rules at the international level, so you have to know them.
Resolving conflicts of laws
In a non-contractual framework (eg counterfeiting)
The Regulation (EC) No 864/2007 of 11 July 2007 on the law applicable to non-contractual obligations (known as the Rome II Regulation) makes it possible to lay down rules concerning the applicable law in the event of a conflict of laws in Europe, and in a non-contractual context.
In particular, in the context of infringements of intellectual property rights, Article 8 gives us the rule:
The law applicable to a non-contractual obligation resulting from an infringement of an intellectual property right is that of the country for which protection is claimed.
In short, if you have a German patent, the applicable law regarding counterfeiting or the validity of the title is German law.
It is not possible to derogate from this jurisdiction by agreement between the parties.
Within a contractual framework (eg license, assignment, etc.)
The Regulation (EC) No 593/2008 of 17 June 2008 on the law applicable to contractual obligations (known as the Rome I Regulation) makes it possible to give the rules concerning the applicable law in the event of a conflict of laws in Europe, and in a contractual context.
Article 3 provides that the contract is governed by the law chosen by the parties. This choice can be changed by mutual agreement, at any time.
The choice is express or results from the provisions of the contract or circumstances.
In the absence of a choice, Article 4 provides a framework to help determine the applicable law: in general, the contract is governed by the law of the country with which it has the closest links.
Case of an employment contract
It may happen that we have to determine what is the regime of applicable employee inventions.
Article 8 provides that the individual contract of employment is governed by the law chosen by the parties (unless a national law provides that a particular provision may not be derogated from).
If no choice is indicated by the parties, the applicable law is the law of the country in which the work is usually performed or in the absence of the country in which the institution which hired him is located.
Of course, if the facts show that another country has more connection with the employment contract, it is necessary to choose the latter country.
It may happen that the French judge refuses to recognize the jurisdiction of a foreign law that seems objectively applicable.
International public policy
The substantive provisions of the foreign law normally applicable under the conflict of laws rule may also be excluded, wholly or partly under the international public policy exception, in favor of those of French law.
The international public policy exception first includes the fundamental or fundamental principles of French law, such as dignity, human freedom and the physical integrity of individuals.
It then encompasses a more fluctuating concept in time and space, namely the imperative French legislative policies, the contours of which depend on the appreciation in concreto of the judge.
Content of foreign law not accessible
If the content of a foreign law can not be established with sufficient certainty, the French judge will tend to fall back on French law.
Fraud of the law
I am not aware of this case in the context of industrial property, but it should be known that the French judge may waive a foreign law if he considers that there are intentional maneuvers having the effect of making it artificially competent a foreign law, instead of the law that would normally apply.
Conflicts of jurisdiction
Once the applicable law is determined, it does not mean that the competent judge is the judge of that law (because that would be too simple :)).
Therefore, it is also necessary to determine the competent jurisdiction.
Resolution of the conflict of jurisdictions
To do so, we have available the EC Regulation No. 1215/2012 (Brussels I bis) on jurisdiction, recognition and enforcement of judgments in civil and commercial matters.
Principle (which almost never applies)
The competent court is, by default, that of the defendant's place of residence (Article 4 of EC Regulation No. 1215/2012).
It should be noted immediately that what we are saying here has no reason to apply to judges from countries outside the European Union: it is quite possible for a foreign judge to declare himself competent whereas this Regulation provides for another solution.
In contractual matters
In contractual matters, it is possible to bring a person before a court in the place of performance of the obligation which serves as the basis for the request (Article 7.1, eg license in a given country).
As part of a license agreement, he was tried (ECJ, April 23, 2009, Falco) that a license agreement relating to an intellectual property right is not a service provision contract within the meaning of Article 7.1 (b) (formerly 5.1 under Brussels I), but rather relates to an obligation to pay.
Thus, it is appropriate to apply Article 7.1 (a) and to determine the place of performance of the obligation on the basis of the Tessili case-law (ECJ, 6 October 1976, Tessili): in other words, the place where the obligation has been or must be performed must be determined in accordance with the law that governs the disputed obligation according to the conflict rules of the court seised.
In tort or quasi-tort matters
In tort or quasi-delict, it is possible to bring a person before a court of the place of the harmful event (Article 7.2, eg an act of infringement).
If the place of the harmful event does not often ask questions, we may have difficulties in the event of counterfeiting on the Internet.
In a decision of the Court of Appeal of Paris, 4th ch., Sect. A, January 30, 2008, RG No. 06/14524, the judges had to ask this question as part of a website written in English.
Their answer is that the place of the damaging fact can quite be France, especially since the usual language in the technical field is English.
It should also be noted that the CAFC decision (CAFC, Voda c. Cordis, February 1, 2007). According to the CAFC, a US court is not competent to hear applications for infringement of foreign patents. It's happy, but it's better by saying it.
In addition, in the case of multiple defendants, it is possible to bring all of them before a court in the domicile of one of them, even if they are not all domiciled in the same country (Article 8.1 of the EC Regulation No. 1215/2012).
However, there must exist, between the different requests made by the same plaintiff against different defendants, a link of connexity such that it is advantageous to instruct and judge them together in order to avoid solutions that could be irreconcilable if the cases were judged separately (27 September 1988, Kalfelis C-189/87).
For this last point, I invite you to jump (like a Salticidae) to the section that talks about spider below (you will have noted the pun).
In the context of a dispute whose source is the assessment of the contract of employment (eg to determine whether an invention falls under the scheme of employee's inventions), the regulation provides that the employee assigns his employer to one of the courts following (Article 21 of the EC Regulation No. 1215/2012) :
- in the courts of the Member State where the employer has his domicile, or
- in another Member State:
- in the court of the place where the worker habitually performs his work or in the court of the last place where he habitually performed his work, or
- when the worker does not perform or has not habitually performed his work in the same country, in the court of the place where the establishment which hired the worker is located.
The choices for the employer are more limited if he wants to assign his employee (article 22 of the EC Regulation No. 1215/2012, except counterclaim): he must assign his employee to the country where he is domiciled.
In any case, it is not possible to derogate from these principles unless this derogation occurs after the dispute has arisen or if the derogations do not limit the employee's right to appeal to the courts mentioned above.
Registration or validity of patents
Article 24.4 of the EC Regulation No. 1215/2012 provides for the exclusive jurisdiction of the courts of the Member State for which the patent has been filed with regard to the registration or validity of the title.
Case of enforcement of decisions
With regard to the execution of a decision (eg conviction, seizure-infringement ordered), the competent court is the court of the place of execution of the decision (Article 24.5 of EC Regulation No. 1215/2012).
Lis pendens or related cases
"Litispendence" (respectively "connectedness") is the circumstance that arises when two different courts have been seized of the same dispute, ie the same cause and the same object (respectively two disputes that would have an interest in being treated at the same time) .
In the case of lis pendens, the court second seised automatically has to take a decision until the jurisdiction of the court first seised is established (and divest itself if the first court recognizes its jurisdiction) (Article 29 of EC Regulation No. 1215/2012).
In the event of a connection, the court second seised may stay the proceedings (Article 30 of EC Regulation No. 1215/2012). It may also divest itself at the request of one of the parties if the first court can be competent and join the second case to the first
The Italian or Belgian torpedo
The torpedo consists, for a part with projects of exploitation in Europe of a potentially counterfeit project of a patent, not to wait to be attacked to engage a first declaratory action of non-infringement, in a State whose Courts are not known for their speed (at least for patent actions).
Thus because of the principle of "connectivity" mentioned above, it is no longer possible for the patentee to seize another court to try the infringer.
The French courts have regularly deprived these "torpedo" actions of any useful effect by considering this practice as a misuse of the jurisdictional rules laid down by the Brussels Convention:
- Paris District Court, Third Chamber, 28 April 2000,
- Paris District Court, Third Chamber, Section 2, March 9, 2001,
- Paris District Court, 3rd Ch., 3rd Sect., 18 November 2003, RG No. 01/06528.
Nevertheless, the ECJ opposes the reasoning of the French courts (ECJ 9 December 2003, C-116/02) stating that it is necessary to stay proceedings even if the courts seized have excessively long processing times (reinforced by the response of the ECJ 27 April 2004, C-159/02).
The spider in the web
The spider's maneuver in the web is for a patentee to attack an alleged counterfeiter in a state known for the speed of his decisions and to appeal to other counterfeiters (possibly counterfeiters in another state) before that same jurisdiction (using Article 8.1 of EC Regulation No. 1215/2012 mentioned above).
Decisions of the Court of Justice of the European Communities have called into question this possibility - at the very least they have considerably restricted it (ECJ 13 July 2006, C-539/03): indeed, if there are several counterfeiters in different countries, there is little risk of having several (supposedly) "contradictory" decisions in each country, since the factual and legal situations are necessarily different.
It is therefore up to the judge (seized second) to assess whether the risk of having a contradictory decision exists (CJEU, 12 July 2012, C-616/10).
We could see that this Phoneutria spider has lost some of its venom…
Effects of a foreign decision in France (or vice versa)
The theoretical territorial scope of a judgment beyond the borders is determined by the lex fori (ie the law of the judge): it is therefore the law of the State from which this judgment emanates that alone determines the scope of the measures prescribed by the Judge.
Nevertheless, this does not mean that the decisions of a French judge will be executed instantly in another country: it will be necessary to request the exequatur of the decision abroad to allow its execution.
Nevertheless, the EC Regulation No. 1215/2012 provides for a simplified exequatur under Articles 36 to 51 (although some cases (see Article 38) may block this simplified exequatur): it suffices to submit a simple request (the practical details are determined by the law of the country in which the execution is requested).
Provisional and protective measures
It is possible to request any provisional or protective measure from the courts of the States which provide for it in their laws (Article 35 of EC Regulation No. 1215/2012).
Provisional or protective measures provided for by the law of a Member State may be requested from the courts of that State, even if the courts of another Member State have jurisdiction to hear the substance of the case.
It should be noted that a measure to obtain evidence is not (strictly speaking) an interim measure or a precautionary measure. Consequently, to request a counterfeiting seizure (or any equivalent measure), this article 35 does not seem applicable… but that makes a transition quite found for the continuation…
Evidence Management Abroad
In the world
There is also the The Hague Convention of 18 March 1970international convention on Obtaining Evidence Abroad in Civil and Commercial Matters Entered into force in France on 6 October 1970.
According to this Convention, an application must be made to the requesting court, which transmits a letter rogatory to the central authority of the requested State (Article 1).
This rogatory commission is executed according to the law of the "receiving" State, but the rogatory commission may request the application of "source" state rules (Article 9 and following).
The result of the implementing acts is transmitted by the judge who executed the letter rogatory to the requesting court (Article 13).
For example, theUnited States Code, 28 USC §1782 allows, under certain conditions, to obtain a "discovery" measure in the US for the purposes, in particular, of a French procedure.
The EC Regulation No 1206/2001 of 28 May 2001 on the cooperation of the Member States in the taking of evidence in civil and commercial matters which entered into force on 1 January 2004 (which is inspired by the The Hague Convention of 18 March 1970 previously cited) is also an interesting legal tool.
The latter regulation allows the courts of the Member States to obtain the execution by the courts of another Member State of investigative measures, or to execute them themselves in another Member State.
An application for an investigating act specifying the nature and purpose of the proceedings and the act of instruction to be executed shall be sent directly to the requested court
The requested court shall, within 90 days, proceed to the inquiry action by applying its own rules of procedure (Article 10.2), but the requesting court may request that the measure be executed in a special form provided for by the the State to which it belongs (Article 10.3)
The result of the implementing acts shall be transmitted by the judge who executed the letter rogatory to the requesting court.
Except for translation, interpreting, etc., this measure is free.