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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Fort Dodge Animal Health Ltd v Akzo Nobel NV  EWCA Civ 3096 (27 October 1997)
Cite as:  ILPr 732,  EWCA Civ 3096,  FSR 222
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IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE
(MR JUSTICE LADDIE)
B e f o r e :
LORD JUSTICE ALDOUS
LORD JUSTICE CHADWICK
| IN THE MATTER OF A PETITION BY
1. FORD DODGE ANIMAL HEALTH LIMITED
2. ARTHUR WEBSTER PTY LIMITED
3. WEBSTER ANIMAL HEALTH (UK) LIMITED
4. WILLOWS FRANCIS LIMITED
5. FORT DODGE ANIMAL HEALTH BENELUX BV
|IN THE MATTER OF THE PATENTS ACT 1977
|AND IN THE MATTER OF EUROPEAN PATENT (UK) NO 189 958 IN THE NAME OF AKZO NOBEL NV LICENSED TO INTERVET INTERNATIONAL BV
Smith Bernal Reporting Limited, 180 Fleet Street,
London EC4A 2HD
Tel: 0171 8313183
Official Shorthand Writers to the Court)
MR P PRESCOTT QC and MR A SPEAK (Instructed by Messrs Herbert Smith, London EC2A 2HS) appeared on behalf of the Respondents.
Crown Copyright ©
The Brussels Convention
Subject to the provisions of this Convention, persons domiciled in a Contracting State shall, whatever their nationality, be sued in the courts of that State.
Persons who are not nationals of the State in which they are domiciled shall be governed by the rules of jurisdiction applicable to nationals of that State.
Persons domiciled in a Contracting State may be sued in the courts of another Contracting State only by virtue of the rules set out in Sections 2 to 6 of this Title.
In particular the following provisions shall not be applicable as against them -
- in the United Kingdom: the rules which enable jurisdiction to be founded on:
(a) the document instituting the proceedings having been served on the defendant during his temporary presence in the United Kingdom; or
(b) the presence within the United Kingdom of property belonging to the defendant; or
(c) the seizure of the plaintiff of property situated in the United Kingdom.
A person domiciled in a Contracting State may, in another Contracting State, be sued:-
(3) In matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred.
A person domiciled in a Contracting State may also be sued
1. Where he is one of a number of defendants in the courts for the place where any one of them is domiciled
SECTION 5 EXCLUSIVE JURISDICTION
The following courts shall have exclusive jurisdiction, regardless of domicile:
4. In proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place.
EXAMINATION AS TO JURISDICTION AND ADMISSIBILITY
Where a court of a Contracting State is seised of a claim which is principally concerned with a matter over which the courts of another Contracting State have exclusive jurisdiction by virtue of Article 16, it shall declare of its own motion that it has no jurisdiction.
SECTION 8 LIS PENDENS - RELATED ACTIONS
Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Contracting States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.
SECTION 9 PROVISIONAL, INCLUDING PROTECTIVE, MEASURES
Application may be made to the courts of a Contracting State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Convention, the courts of another Contracting State have jurisdiction as to the substance of the matter.
Moreover, a judgment shall not be recognised if it conflicts with the provisions of Sections 3, 4 or 5 of Title II, or in a case provided for in Article 59.
In its examination of the grounds of jurisdiction referred to in the foregoing paragraph, the court or authority applied to shall be bound by the findings of fact on which the court of the State of origin based its jurisdiction.
RELATIONSHIP TO OTHER CONVENTIONS
1. This Convention shall not affect any conventions to which the Contracting States are or will be parties and which in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments.
2. With a view to its uniform interpretation, paragraph 1 shall be applied in the following manner:
"Since the grant of a national patent is an exercise of national sovereignty, Article 16(4) of the Judgments Convention provides for exclusive jurisdiction in proceedings concerned with the validity of patents. Other actions, including those for infringement of patents, are governed by the general rules of the Convention."
"As I have said, validity is frequently in issue, and sometimes the most important issue, in English patent infringement proceedings. This is now enshrined in section 74(l)(a) of the Patents Act 1977. We have always taken the view that you cannot infringe an invalid patent. This was restated by Aldous J in the passage from Plastus quoted above. However the fact that the defendant can challenge validity does not mean that he will. In Plastus he did not. Until he does, only infringement is in issue and the approach in Pearce applies. The court cannot decline jurisdiction on the basis of mere suspicions as to what defence may be run. But once the defendant raises the validity the court must hand the proceedings over to the courts having exclusive jurisdiction over that issue. Further, since Article 19 obliges the court to decline jurisdiction in relation to claims which are "principally" concerned with Article 16 issues, it seems to follow that jurisdiction over all of the claim, including that part which is not within Article 16 must be declined. It may well be that if there are multiple discrete issues before a court it will be possible to sever one or more claims form another and to decline to accept jurisdiction only over those covered by Article 16, but I do not believe that that approach applies where infringement and validity of an intellectual property right are concerned. They are so closely interrelated that they should treated for jurisdiction purposes as one issue or claim."
The question of relief
Order: Appeal adjourned. Question of costs of appeal below to be reserved and costs in court below to be stayed.