Müller-Stoy and Lepschy on BSH v. Electrolux

Tilman Müller-Stoy and Paul Lepschy have published an article titled Practical Implications of BSH v Electrolux for resolving global patent disputes, 7/2025 GRUR Patent 331.  Here is the abstract:

Until recently, the following practical rule applied (with a few exceptional cases in the Netherlands in interim proceedings):  39 EPC Member States — theoretic need for 39 infringement actions.  This rule changed when the UPC opened its doors on 1 June 2023 offering a one-stop-shop for patent disputes in the EU, centralizing infringement and revocation proceedings for meanwhile 18 Contracting Member States.  And it changed again in spring 2025 with the ruling of the CJEU in BSH v Electrolux offering a one-stop-shop litigation solution also for the remaining nine EU Member States, the remaining 12 non-EU members of the EPC, and in fact any third state when dealing with EU-domiciled defendants.  This article analyses practical implications of the ruling on the level of national courts as well as on the UPC level from a claimant’s and a defendant’s perspective.  Some open questions are addressed and a short outlook is provided.

The article makes a number of interesting observations, among them that an EU-domiciled defendant can now be sued for the infringement of a U.S. patent.  (According to ip fray and JUVE Patent, this has now happened in at least one case pending in Munich—a good reason, perhaps, for U.S. patent professionals who don’t already do so to start reading some of the non-U.S. commentary and journals!)  The authors also suggest that some plaintiffs may try a “split strategy” of suing for an injunction in the E.U. (which might apply eBay differently from a U.S. court—assuming that remedies are considered substantive law, I assume) and for an award of damages in the U.S. (given the possibility of treble damages for willful infringement—though as the authors also note, there might a question whether an E.U. court would refuse to award treble damages on public policy grounds).  I wonder, though, if such a split strategy would be advisable, or is even possible?  The authors also discuss whether the UPC has authority under the UPCA to determine invalidity on an inter partes basis, in a case in which that would otherwise be permitted under BSH (see p. 335).

For previous posts on this blog about BSH, see, e.g., here, here, and here.