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December 2019

English judges defer jurisdiction decision to Belgium

In Ablynx NV & Anor v VHSquared Limited & Ors, the English Court of Appeal stayed an action concerning a patent licence with a Belgian jurisdiction clause in order to allow a Belgian court to decide if it has jurisdiction.

In the case, proceedings have been on foot both in England and in Belgium, but the UK court was first to be seised. Although it would have to be decided which of the two courts has jurisdiction over the dispute, the question the Court of Appeal had to decide is: which court should make that decision? The dispute mainly turns on the interpretation of EU Regulation 1215/2012 (the Recast Regulation), which determines jurisdiction for disputes.

The dispute is between two licensees, one of which holds a licence and the other a sub-licence to exploit three European patents, including UK designations. The licence and sub-licence derive from the same patentee. Ablynx NV alleges that VHsquared Ltd has infringed the UK designations of the patents within the UK. The licence under which VHsquared's sub-licence was granted includes an exclusive choice of court clause conferring jurisdiction on the Belgian court.

In addition to saying that its activities are covered by its licence and therefore there has been no infringement, VHsquared says that any question about the scope of the licence is within the exclusive jurisdiction of the Belgian court. Ablynx says that the exclusive jurisdiction clause is invalid because the Recast Regulation allocates exclusive jurisdiction over the validity of patents with a UK designation to the UK court and the action is, amongst other matters, concerned with the validity of UK patents.

At first instance, HHJ Hacon decided in the IPEC that the UK court had exclusive jurisdiction; and refused to stay the proceedings in England. The reason for his decision was that the exclusive jurisdiction clause had no legal force because it purported to exclude the UK court's exclusive jurisdiction in an action concerned with the validity of the UK designations of the European patents.

The Court of Appeal has unanimously allowed the appeal and stayed the action until a Belgian court makes a ruling on whether it has jurisdiction to hear the dispute. In particular, the Court comments that, as the CJEU case of Solvay v Honeywell shows, there is nothing objectionable about a Belgian court expressing provisional views about a UK designated patent.

The Court states that there is at least an arguable case that in an action raising multiple issues, including the scope of an express licence to exploit the patented invention, the Recast Regulation (Article 24 (4)) does not pull all the issues into the exclusive jurisdiction of the English court in the face of an exclusive choice of court clause. It is also arguable that the recast Regulation (Article 25 (4)) does not invalidate the choice of court clause in so far as it relates to disputes falling within its scope.

Case: Ablynx NV & Anor v VHSquared Limited & Ors [2019] EWCA Civ 2192
Court: English Court of Appeal
Date: 10 December 2019

Who is the skilled person?

Who is the skilled person, and does the skilled person addressing a patent claim stay the same even if that patent claim is amended? This question was addressed by Mr Justice Colin Birss in Conversant Wireless Licensing Sarl v Apple Retail UK Limited & Ors, a case concerning mobile phones but nonetheless a point of general importance.

Apple argued that the way to identify the skilled person is to look at the filed the patent itself locates the invention in and posit a person in that field as the relevant person. This is wrong, the judge says, because a patent is taken to be directed to those with an interest in its subject matter, which is the invention as defined by the claims.

Consequently, there is nothing wrong in principle for the effect of a claim amendment to mean that the notional person skilled in the art relevant to an amended claim may be different form the one applicable to the unamended claim.

Case: Conversant Wireless Licensing Sarl v Apple Retail UK Limited & Ors [2019] EWHC 3266 (Pat)
Court: English Patents Court
Date: 29 November 2019

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