The French Supreme Court has announced a decision that could lead to courts in France ruling more frequently on cross-border patent infringement claims.

However, it should be noted additional hurdles still exist such as the exclusive jurisdiction of the courts of a European Union Member State to rule on the validity of a patent(Article 24(4) of Brussels Regulation recast).

This can be a complicated issue and that is why companies and investors are increasingly turning to intellectual property rights insurance to protect their copyright, trademarks, and patents. Crucially, an IP insurance policy can be tailored to individual business needs.

The French Supreme Court was responding to the Hutchinson v. Dal, Global Wheel et al. 29 June 2022, Appeal No. G 21-11.085, a case involving European patents. A French company started infringement proceedings in France against France, UK, and South Africa-incorporated companies for infringement of the French, UK and German designations of its European patent.

A procedural plea for lack of jurisdiction was then raised by the defendants concerning the acts of infringement carried out in the UK and Germany by non-French EU entities, and a non-French non-EU entity.

According to the Paris Court of Appeal, the legal and factual situations would not be the same for the claims related to the acts committed in France and for the acts committed in the UK

The Paris Court of Appeal, having no jurisdiction to rule on the infringing acts committed in the UK and Germany on the basis of the Brussels Regulation recast, also ruled that the South African company could not be brought either before French courts as there was thus no link with the action brought in France by a French entity for acts of infringement committed in France

However, the French Supreme Court quashed both of these ruling as the acts in suit concerned national designations of a given European patent and the same product. The Supreme Court also ruled the lower courts failed to articulate a proper reasoning to decline their jurisdiction towards the South African company.

While the French Supreme Court does not rule that French courts have jurisdiction in this case, it emphasised that the lower courts should have assessed whether there is a likelihood of irreconcilable decisions should the infringement actions be carried out in this scenario before different jurisdictions.

A new decision of the Paris Court of Appeals, composed of different judges, can be expected in 2023.

W Denis have been arranging Intellectual Property right infringement insurance for over 40 years and we can arrange IPR insurance worldwide where required if you would like to discuss your IPR insurance requirements please contact Vida Jarasiunaite Vida.jarasiunaite@wdenis.eu or Mark Dutton mark.dutton@wdenis.com