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On December 8, 2005, Advocate General Leger delivered his Opinion in the case Roche Nederland v. Primus and Goldberg[1] currently pending before the European Court of Justice (ECJ) on a reference from the Dutch Supreme Court.  The question before the ECJ is whether a plaintiff alleging infringement of parallel national patents by several members of the same corporate group located in different European  countries may sue them all before a single national court, relying on Article 6(1) of the Brussels Convention on jurisdiction and the recognition of enforcements in civil and commercial matters[2] (and, by implication, under the Brussels Regulation[3] which has now replaced it).  The Advocate General’s Opinion is part of the procedure before the ECJ; it generally considers the issues in a case discursively and in detail, concluding with a recommendation as to the outcome of the case, which, although merely advisory, is often followed by the ECJ. 

In this case, AG Leger’s suggested answer to the question was in the negative; if followed by the ECJ, this would condemn plaintiffs to institute separate infringement suits in each country concerned.  This follows by a little more than a year the Opinion of AG Geelhoed in GAT v. LuK[4].  In that case, referred to the ECJ by the Düsseldorf Court of Appeal, the question is whether, when the validity of a patent is attacked or asserted by one or both of the parties in an infringement action brought in a court of a country other than that which issued the patent, by virtue of Article 16(4) of the Brussels Convention[5] (and Article 22(4) of the Brussels Regulation), only the courts of the country that issued the patent have jurisdiction with respect to the issue of validity.  AG Geelhoed’s proposed answer was affirmative.  If followed by the ECJ, this would have an effect similar to the AG’s Opinion in Roche Nederland, since, in any infringement action where the issue of the validity of parallel patents is raised in the context of multiple infringements in different countries, separate proceedings would be necessary in all the countries concerned. 

Both Opinions turn on an analysis of the provisions of the Brussels Convention and their rationale, in the specific context of patent litigation.  In Roche Nederland, AG Leger analyzes the requirement of "connexity" read into Article 6(1) in earlier case law of the ECJ.  He argues for a restrictive interpretation of this requirement, which would only be met where separate proceedings might lead to "irreconcilable" (as opposed to inconsistent) results, which could only occur where the different proceedings involved "the same factual and legal situation".  This test cannot be met so long as the infringement of separate (but parallel) national patents is the subject of the litigation, since of necessity the law will be different for each national patent.  He also expresses concern that a broader interpretation would facilitate forum shopping, of which the plaintiffs’ choice of the Dutch courts to sue all Roche’s European subsidiaries is indeed an example.  AG Geelhoed’s opinion points to the rationale of Article 16(4) – to ensure that the validity of patents is determined only by the courts of the country which issues them – to reject an alternative possible interpretation, namely that the courts of the country of issuance of the patent have exclusive jurisdiction only when the action initially brought by the plaintiff seeks declaration of the validity or invalidity of the patent.

In summary, both Opinions, if followed by the ECJ, would substantially limit the scope for concentrating infringement actions concerning multiple parallel patents in Europe in a single proceeding.  Of course, if EU wide Community Patent were ever adopted, the legislation creating it would include provisions relevant to multi-jurisdiction infringement actions, but, following the failure to adopt the necessary regulation in 2004, this prospect still seems far away.