C-288/82

LODEWIJK GODERBAUER,

on the interpretation of Articles 19 and 16 (4) of the Convention,

T H E C O U R T (Fourth Chamber)

composed of: J. Mertens de Wilmars, President, T. Koopmans and K. Bahlmann, Presidents of Chambers, and A. O'Keeffe and G. Bosco, Judges,

Advocate General: S. Rozès Registrar: P. Heim

gives the following

I — Facts and written p r o c e d u r e The Liquidator, the defendant in those proceedings, submitted in the first place that Mr Goderbauer's claim should be dismissed and further pleaded a While in the employment of BV Schroef- counterclaim, contending that the court boutenfabriek in the Netherlands, Mr should order Mr Goderbauer to Goderbauer made an invention, namely a cooperate, subject to payment of a "mounting for a rail on a girder", for periodic penalty, in the transfer of the which he was granted a patent in that patents and patent applications into the country. He also applied for, and in name of the company. certain cases has already been granted, patents in many countries in Europe (including Belgium, France, Italy and the By judgment of 24 April 1980, the Federal Republic of Germany, which are Arrondissementsrechtbank dismissed parties to the Brussels Convention of both the claim and the counterclaim. The 1968) and outside. case was then brought before the Gerechtshof [Regional Court of Appeal], 's-Hertogenbosch, which on 20 May 1981 confirmed the decision of the In an application for an interlocutory Arrondissementsrechtbank. injunction before the Arrondissements- rechtbank [District Court], Maastricht, The Liquidator then appealed to the Mr Duijnstee, the liquidator in the Hoge Raad on the ground that there had winding-up of BV Schroefboutenfabriek been an error of law inasmuch as the [hereinafter referred to as "the Liqui- judgment of the Gerechtshof was dator"], claimed, producing a decision of contrary to the Patents Law. the Netherlands Patent Office, that that company was entitled to the Netherlands patent under Article 10 of the However, in his Opinion delivered at the Octrooiwet [Patents Law], and requested sitting on 17 September 1982, the that Mr Goderbauer should be ordered Advocate General at the Hoge Raad to transfer to the insolvent company all stressed that, before considering the the patents which he had obtained and grounds of appeal, it was necessary to all the applications for patents which he examine whether the Netherlands courts had made in other countries. had jurisdiction. He noted that, although the Netherlands rules of procedure (Article 419 (1) of the Wetboek van Burgerlijke Rechtsvordering [Code of In a writ dated 21 December 1979 Mr Civil Procedure]) provide that "The Goderbauer requested the same court to Hoge Raad shall confine its consider- declare that "in so far as the patents and ation of the case to the grounds on applications for patents referred to in the which the appeal is based" and that writ are the property of the insolvent court is therefore not obliged in this case company, Mr Goderbauer has a lien over to check whether it has jurisdiction, them as against the Liquidator". Article 19 of the 1968 Convention

By judgment of 29 October 1982, the Pursuant to Article 5 of the Protocol of Hoge Raad stayed the proceedings and 3 June 1971 and in accordance with submitted the following questions to the Article 20 of the Protocol on the Statute Court of Justice : of the Court of Justice, written obser- vations were submitted by the following: the Government of the Federal Republic of Germany, represented by Christof " 1 . Does the obligation imposed on the Böhmer, acting as Agent; the United court of a Contracting State by Kingdom, represented by J. D. Howes of Article 19 of the Convention of 27 the Treasury Solicitor's Department, September 1968 on Jurisdiction and acting as Agent; and the Commission of the Enforcement of Judgments in the European Communities, represented Civil and Commercial Matters to by Erich Zimmermann, its Legal Adviser, declare of its own motion that it has acting as Agent, assisted by H. Stein of no jurisdiction override a provision the Zwolle Bar. such as Article 419 (1) of the Netherlands Code óf Civil Pro- cedure, with the result that the court Upon hearing the report of the Judge- of cassation must consider whether Rapporteur and the views of the the judgment appealed against Advocate General, the Court decided to relates to a claim covered by Article open the oral procedure without any 19 and, if that question is answered preparatory inquiry. By order of 4 May in the affirmative, quash the 1983 the Court decided to assign the judgment appealed against, even if case to the Fourth Chamber, pursuant to the question has not been raised in Article 95 (1) and (2) of its Rules of the grounds of appeal? Procedure.

That interpretation results both from the In relation to the second question, the wording of the provision and from the Government of the Federal Republic of travaux préparatoires of the Convention. Germany considers that in order to determine whether proceedings are concerned with "the registration or validity of patents", within the meaning The principle that the courts of the of Article 16 (4) of the Convention, Contracting States are to apply the reference must be made to the sub- provisions of the Convention of their stantive law of the Contracting State own motion, whether or not they are whose courts acquire jurisdiction by pleaded by the parties, is formally laid virtue of that provision. down in Articles 19 and 20 of the Convention on the examination by the courts of the Contracting States of their international jurisdiction. Furthermore, it In principle, the purpose of the is clear from the Jenard Report (Chapter Convention, namely the unification of III, Section II) that it is that very the systems of civil procedure of the principle which inspired the authors of various Member States of the EEC, is the Convention. If a court of a best served by an independent interpre- Contracting State failed to apply Article tation of the terms appearing in the 19 of its own motion, its decision would Convention, so that they have the same neither be recognized nor enforced in meaning for all the courts of the the other Contracting States. Contracting States, rather than by an interpretation on the basis of national law. However, exceptions to such an independent interpretation are permiss- The principle cited above applies not ible wherever the Convention itself so only to the court of first instance, but provides or where special grounds dictate

accordingly. Article 16 of the The United Kingdom asks first whether Convention does not provide its own the dispute should be classed as relating definition of the terms contained in it, to bankruptcy, which is outside the scope the framework of a definition being of the Convention, but itself answers that outlined by the scope of Article 1 and by question in the negative, noting that the the text of Article 16. But, in so far as Court has already held (cf. judgment of doubts exist within that framework, there 22 February 1979 in Case 133/78, is no room for an independent interpret- Gourdain v Nadler, [1979] ECR 733) ation of the Convention. Such an in- that in order to be excluded from the terpretation might differ from the in- scope of the Convention decisions terpretation applicable in the State whose relating to the winding-up of insolvent courts are to have exclusive jurisdiction, companies "must derive directly from the for example, in relation to the deposit or bankruptcy or winding-up", which is not registration of a patent. The result of the case here. that would be positive and negative conflicts of jurisdiction, which would however be particularly serious since they would relate to cases of exclusive In relation to the question whether the jurisdiction. Hoge Raad must regard itself as bound by Article 419 (1) of the Netherlands Code of Civil Procedure or by Article 19 of the Convention, the United Kingdom submits that, where a national court is A definition according to the lex fori faced with a conflict between its own would be subject to the same objections. procedural rules and the provisions of Article 19, the latter provisions are mandatory and must prevail. It notes- that, if the case is concerned with a matter over which the courts of another In order to maintain the link between the Contracting State have exclusive substantive law applicable and its pro- jurisdiction by virtue of Article 16, cedural implementation, preference must Article 19 states in the most explicit therefore be given to the definition terms that the national court is to decline applicable in the place in which the jurisdiction of its own motion. More- courts are to have exclusive jurisdiction. over, a court which failed to decline That would make it possible to have a jurisdiction would find that its judgment uniform appraisal in all the Contracting was not recognized in other Contracting States, thus avoiding conflicts of States, pursuant to the first paragraph of jurisdiction. Moreover, such a definition Article 28. would be consistent with the purpose of Article 16; indeed, the considerations which justify conferring exclusive jurisdiction on the courts of a given As regards the interpretation of the term Contracting State also justify settling "proceedings concerned with the questions of definition according to the registration or validity of patents", the law of that State. United Kingdom sets out from the consideration that the question whether or not the national courts have jurisdiction in a particular case must The reply given to the second question always be a matter for the lex fori. But, renders an examination of the third in each of the Contracting States, the lex question otiose. fori is, in cases governed by the 1968

An entry in a patent register is a matter The United Kingdom further points out within the exclusive jurisdiction of the that the Court has already considered a national patent authorities and ultimately similar question on the interpretation of of the national courts. However, it does Article 16 (1) of the Convention (cf. not follow that any proceedings which judgment of 14 December 1977 in Case will have as an incidental consequence of 73/77, Sanders v van der Putte [1977] their outcome an alteration in a patent ECR 2383) and held that the purpose of register must fall within the exclusive Article 16 is to give jurisdiction to the jurisdiction of the courts of the State courts which clearly are best placed to in which that register is situated. deal with the disputes referred to therein, Proceedings which are in essence but those considerations do not apply concerned with the making, alteration or where the principal aim of an agreement deletion of an entry in a patent register is of a different nature from that are "concerned with the registration . . . envisaged in that article. of patents", but proceedings such as the present which are in essence a dispute between an inventor and the liquidator of the company which formerly employed him are not primarily concerned with the registration of Finally, the United Kingdom points out patents. The outcome of the case might that according to Article 4 of the possibly lead to a change in the name of Protocol on Jurisdiction and Recognition the owner of the patents in the appro- of Decisions in respect of the Right to priate registers, but the United Kingdom the Grant of a European Patent, which is considers, as is stated at page 34 of the annexed to the Convention on the Grant Jenard Report, that "the matters referred of European Patents, to which all the to in [Article 16] will normally be the Member States of the Community are parties, if the subject-matter of a

As to the second question, the Commission considers that a detailed examination of the legal basis of Article In view of the considerations set out 16 (4) makes clear the need for an above, the United Kingdom concludes independent interpretation of the terms that the reply to the third question contained therein. should be that proceedings are "concerned with the registration . . . of patents" within the meaning of Article 16 (4) of the 1968 Convention only if they are primarily concerned with the making, That provision can be applied sat- amendment or deletion of an entry in a isfactorily only by means of a uniform register of patents, and not if the interpretation which applies in all the making, amendment or deletion of such Contracting States. It demands a uniform an entry is an incidental consequence of interpretation consistent with the the outcome of the proceedings. Community legal order.

The Commission of the European Com- munities proposes that the first question An independent interpretation is further should be answered in the affirmative. It required by the need to ensure proper observes that Article 19 of the 1968 legal protection. In cases such as this, in Convention imposes a direct obligation which several Contracting States are on all courts of a Contracting State and concerned with the same invention, does not exempt courts of cassation. The recourse to the law of the State in which

DUIJNSTEE v GODERBAUER

Moreover, solutions similar to those proposed by the Commission follow both In relation to the third question, the from the European Patent Convention Commission observes first that the fact signed in Munich on 5 October 1973 that Mr Goderbauer made his invention and the Community Patent Convention while he was employed by the company signed in Luxembourg on 15 December later declared insolvent is of no 1975. importance for the purposes of the reply to be given to that question. Even if Mr Goderbauer had made his invention outside his employment but had Under Article 60 (1) of the Munich undertaken by contract to assign the Convention, in relation to inventions patents and applications for patents and made in the course of employment, it is had later failed to fulfil that obligation, it the law of the State in which the would in fact be necessary to examine employee is employed which determines whether there was jurisdiction under whether the right to a European patent is Article 16 (4) or whether Article 5 of the to belong to the employee or to the Convention, which determines jurisdic­ employer. According to Article 4 of the tion in matters relating to a contract, Protocol on Recognition, the courts of must be applied. that State have exclusive jurisdiction over proceedings between the employer and employee. If that Convention had been applicable in this case, the preliminary Instead, the decisive factor appears to be issue concerning the entitlement to the that not every claim in some way relating patent could have been, and might have to the registration of patents is covered had to be, determined by the courts of by Article 16 (4). the Netherlands.

The purpose of the counterclaim pleaded covered not by Article 16 (4) but by by the Liquidator is to obtain from the Article 5 of the 1968 Convention. Arrondissementsrechtbank, Maastricht, a binding declaratory judgment on the question who is entitled to the patent. Ill — Oral procedure Understood in that way, the action is intended to obtain a declaratory ruling At the sitting on 8 July 1983 oral by which the courts referred to in Article argument was presented for the Com- 16 (4) may be guided in subsequent mission of the European Communities by rulings on "the registration or validity" Mr Zimmermann, Legal Adviser of the of patent applications or patents granted. Commission, acting as Agent, assisted by The Commission therefore considers that Mr Stein of the Zwolle Bar. a claim such as the one pursued in this case — described in the judgment of the The Advocate General delivered her Hoge Raad of 29 October 1982 — is opinion at the sitting on 5 October 1983.

Decision

1 By a judgment of 29 October 1982, which was received at the Court Registry on 3 November 1982, the Hoge Raad der.Nederlanden [Supreme Court of the Netherlands] referred to the Court, for a preliminary ruling under the Protocol of 3 June 1971 on the Interpretation by the Court of Justice of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (hereinafter referred to as "the Convention"), three questions on the interpretation of Articles 16 (4) and 19 of the Convention.

2 Those questions arose in an appeal in cassation by Ferdinand M . J . J . Duijnstee against a judgment delivered on 20 May 1981 by the Gerechtshof [Regional Court of Appeal], 's-Hertogenbosch, confirming a judgment of the Arrondissementsrechtbank [District Court], Maastricht.

7 Although the only ground of appeal was the alleged infringement of the Netherlands Patents Law, the Hoge Raad none the less expressed doubt over its own jurisdiction on the ground that certain factors involving the law of other States might, by virtue of Article 16 (4) of the Convention, mean that the courts of other Contracting States had exclusive jurisdiction.

s In the first place, the Hoge Raad raised the question whether, on the assumption that the courts of another Contracting State had exclusive jurisdiction, that jurisdiction should be recognized even though the point had not been pleaded by any of the parties. Article 419 (1) of the Netherlands Code of Civil Procedure provides that the Hoge Raad is to confine its consideration of the case "to the grounds on which the appeal is based",

JUDGMENT OF 15. 11. 1983 — CASE 288/82

whereas Article 19 of the Convention provides that "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".

9 In its first question, the Hoge Raad therefore asks the Court whether the obligation imposed by Article 19 on the court of a Contracting State to declare of its own motion that it has no jurisdiction implies that a provision such as Article 419 (1) of the Netherlands Code of Civil Procedure has no effect, inasmuch as a court of cassation must include in its consideration of the case the question covered by Article 19 and, if that question is answered in the affirmative, must quash the judgment appealed against, even if the question has not been raised in the grounds of appeal.

1 4 It must be concluded that the Convention, which seeks to determine the jurisdiction of the courts of the Contracting States in civil matters, must override national provisions which are incompatible with it.

is The reply to the first question must therefore be that Article 19 of the Convention requires the national court to declare of its own motion that it has no jurisdiction whenever it finds that a court of another Contracting State has exclusive jurisdiction under Article 16 of the Convention, even in an appeal in cassation where the national rules of procedure limit the court's reviewal to the grounds raised by the parties.

i6 In its second question the Hoge Raad asks whether the concept of proceedings "concerned with the registration or validity of patents" within the meaning of Article 16 (4) of the Convention, which attributes exclusive jurisdiction to the courts of the Contracting State competent to grant the patent, must be defined on the basis of the law of the Contracting State whose courts are referred to in that provision, or according to the lex fori, or on the basis of an independent interpretation of the said provision.

i9 Thus the term "proceedings concerned with the registration, or validity of patents" contained in Article 16 (4) must be regarded as an independent concept intended to have uniform application in all the Contracting States.

20 This reply to the second question compels the Court to define the term "proceedings concerned with the registration or validity of patents", since the Hoge Raad has asked in its third question whether that concept may cover a dispute such as that concerned in the main action.

2i In order to reply to the third question, reference must again be made to the objectives and scheme of the Convention.

22 In that regard, it must be noted that the exclusive jurisdiction in proceedings concerned with the registration or validity of patents conferred upon the courts of the Contracting State in which the deposit or registration has been applied for is justified by the fact that those courts are best placed to adjudicate upon cases in which the dispute itself concerns the validity of the patent or the existence of the deposit or registration.

DUIJNSTEE v GODERBAUER

23 On the other hand, as is expressly stated in the report on the Convention (Official Journal 1979, C 59, p. 1, at p. 36), "other actions, including those tor infringement of patents, are governed by the general rules of the Convention". That statement confirms the restrictive nature of the provision contained in Article 16 (4).

JUDGMENT OF 15. 11. 1983 — CASE 288/82

1975 (Official Journal 1976, L 17), which has not yet entered into force. Although those two Conventions are not applicable in this case, the tact that they expressly accept such a distinction confirms the interpretation given by the Court to the corresponding provisions of the Brussels Convention.

28 The reply to the third question should therefore be that the term "proceedings concerned with the registration or validity of patents does not include a dispute between an employee for whose invention a patent has been applied for or obtained and his employer, where the dispute relates to their respective rights in that patent arising out of the contract oi employment.

Costs

2, The costs incurred by the Governments of the Federal Republic of Germany and the United Kingdom and by the Commission of the European Communities, which have submitted observations to the Court, are not recoverable. As these proceedings are, in so far as the parties to the main proceedings are concerned, in the nature of a step in the action before the national court, costs are a matter for that court.

On those grounds,

Mertens de Wilmars Koopmans

Bahlmann O'Keeffe Bosco

Delivered in open court in Luxembourg on 15 November 1983.

P. Heim J. Mertens de Wilmars Registrar President

O P I N I O N O F MRS ADVOCATE GENERAL ROZÈS DELIVERED O N 5 OCTOBER 1983 l

Mr President, I — The facts are as follows: Members of the Court,