In the field of patents, there are a large number of situations where elements of extraneousness appear and where the question of the applicable law or of the competent court can be raised.
The typical case is the case where the patent in question is an American patent, the owners are German and Dutch, that they have established a co-ownership contract due to a commercial relationship in China, that they have a licensee in Belgium, and there is a suspected Japanese infringer & #8230;
In short, we see that this can quickly become complex.
Chapter 1. Governing Law
Section 1.1. Conflicts of laws
A & #8220; conflict of laws & #8221; may appear 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.
Section 1.2. Conflict Resolution
1.2.1. In a non-contractual context (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 & #8217; 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 competence via an agreement between the parties.
1.2.2. In a contractual context (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.
1) General case
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: generally, the contract is governed by the law of the country with which it has the closest links.
2) Case of #8217; 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 employment contract is governed by the law chosen by the parties (unless a national law provides that a specific provision cannot be waived).
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, failing this, the country in which the establishment which has hired it is located.
Of course, if the facts show that another country has more ties to the employment contract, you must choose the latter country.
Section 1.3. exceptions
It may happen that the French judge refuses to recognize the jurisdiction of a foreign law which seems objectively applicable.
1) International public order
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.
2) Content of foreign law not accessible
If the content of a foreign law cannot be established with sufficient certainty, the French judge will tend to fall back on French law.
3) Fraud to the law
I am not aware of this case in the context of industrial property, but you should know that the French judge may rule out a foreign law if he considers that there are intentional maneuvers having the effect of rendering artificially competent a foreign law, in place of the law which would normally have been intended to apply.
Chapter 2. Competent Jurisdiction
Section 2.1. 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.
Section 2.2. Resolution of the conflict of jurisdictions
To do so, we have available the EC Regulation No. 1215/2012 (Brussels I bis) concerning jurisdiction, recognition and enforcement of decisions in civil and commercial matters.
2.2.1. Principle (which hardly ever 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 immediately be noted that what we are saying here has no reason to apply to judges from countries outside the European Union: it is entirely possible that a foreign judge declares himself competent while these rules provide another solution.
2.2.2. Possible exemptions
1) In contractual matters
In contractual matters, it is possible to bring a person before a court of 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, it was held (ECJ, April 23, 2009, Falco) that a license contract relating to an intellectual property right is not a contract for the supply of services 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 necessary to apply Article 7.1a) and to determine the place of execution of the obligation based on the Tessili case law (ECJ, 6 October 1976, Tessili): in d & #8217; in other words, the place where the obligation was or must be performed must be determined in accordance with the law governing the disputed obligation according to the conflict rules of the court seized.
2) In tort or quasi-delict
In tort or quasi-tort matters, it is possible to sue a person before a court of the place for the harmful event (Article 7.2, eg an act of counterfeiting).
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 Cour d & #8217; Appeal of Paris, 4th ch., Sect. A, January 30, 2008, RG n ° 06/14524, the judges had to ask themselves this question within the framework of a website written in English.
Their answer is that the place of the harmful event can be France, especially because 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, an American court does not have jurisdiction to hear requests for infringement of foreign patents. C & #8217; is happy, but it gets better by saying it.
3) Case of #8217; a plurality of defendants
In addition, in the event of a plurality of defendants, it is possible to bring them all before a court of the domicile of l & #8217; 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 & #8217; spider below (you will have noted the pun intended & #8230;).
4) Case of employees' inventions
In the context of #8217; a dispute the source of which is the assessment of the employment contract (e.g. to determine whether an invention falls under the scheme of employee inventions), the regulation provides that the employee summons his employer before #8217; following (article 21 of EC Regulation No. 1215/2012) :
- in the courts of the Member State where the employer is domiciled, 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 or does not usually work in the same country, in the court of the place where the establishment which hired the worker is located or was 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 birth of the dispute or if the derogations do not limit, for the employee, his right to seize the courts mentioned above.
5) Case of registration and patent validity
L & #8217; article 24.4 of EC Regulation No. 1215/2012 provides for exclusive jurisdiction of the courts of the Member State for which the patent has been filed with regard to questions of registration or validity of the title.
6) Case of execution of decisions
Regarding the execution of a decision (e.g. conviction, order forfeiture ordered), the competent court is the court of the place of execution of the decision (article 24.5 of the EC Regulation No. 1215/2012).
2.2.3. Case of lis pendens or connectedness
& #8220; lis pendens & #8221; (respectively & #8220; connectivity & #8221;) is the circumstance that arises when two different jurisdictions have been seized of the same dispute, ie same cause and same subject (respectively of two disputes which would have an interest to be treated at the same time).
In the event of a lis pendens, the court seized in the second place stays the office to rule until #8217; until the jurisdiction of the court first seized is established (and is withdrawn 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 can also surrender at the request of one of the parties if the first court can have jurisdiction and join the second case to the first
2) 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 due to the principle of & #8220; connectivity & #8221; mentioned above, it is no longer possible for the patentee to seize another court to have the infringer tried.
French courts have regularly deprived of all useful effect these actions & #8220; torpedo & #8221; considering this practice as a diversion from the rules of jurisdiction 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.
However, the CJCE opposes the reasoning of the French courts (ECJ 9 December 2003, C-116/02) by indicating that & #8217; 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).
3) L & #8217; spider in the web
The maneuver of the spider in the web consists for a patentee in attacking an alleged infringer in a state known for the speed of his decisions and in attracting the other infringers (possibly infringer in another state) before this same jurisdiction (by using l & #8217; 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 #8217; there are several counterfeiters in different countries, there is little risk of having several (allegedly) & #8220; contradictory decisions & #8221; in each country, because the factual and legal situations are necessarily different.
It is therefore for 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 #8230;
Chapter 3. Effects of a foreign decision in France (or vice versa)
The theoretical territorial scope of a judgment across borders is determined by the lex fori (ie the law of the judge): c & #8217; it is therefore the law of the State of #8217; where emanates this judgment which alone determines the field of application of the measures prescribed by the Judge.
However, this does not mean that the decisions of a French judge will be instantly executed in another country: the foreigner will have to be asked to allow the execution of the decision.
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).
Chapter 4. Provisional and provisional 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 & #8217; a measure to obtain evidence is not (strictly speaking) an interim measure or a precautionary measure. Therefore, to request a counterfeit seizure (or any equivalent measure), this article 35 does not seem applicable & #8230; but that makes a transition quite found for the continuation & #8230;
Chapter 5. Managing evidence abroad #8217;
Section 5.1. In the world
There is also the The Hague Convention of 18 March 1970, international convention & #8220;on Obtaining Evidence Abroad in Civil and Commercial Matters& #8221; entered into force in France on October 6, 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 letter rogatory is executed according to the law of the State & #8220; recipient & #8221;, but the letter rogatory can request the application of State rules & #8220; source & #8221; (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, #8217;United 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.
Section 5.2. In Europe
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.