“1.

Does the obligation imposed on the court of a Contracting State by Article 19 of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters to declare of its own motion that it has no jurisdiction override a provision such as Article 419 (1) of the Netherlands Code of Civil Procedure, with the result that the court of cassation must consider whether the judgment appealed against relates to a claim covered by Article 19 and, if that question is answered in the affirmative, quash the judgment appealed against, even if the question has not been raised in the grounds of appeal?

2.

Must the question whether the proceedings are ‘concerned with the registration or validity of patents’ within the meaning of Article 16 (4) of the said Convention be determined:

3.

If Question 2 is answered in the manner suggested under (c), must a claim such as that concerned here ... be considered to be a claim covered by Article 16 (4)?”

(a)

On the basis of an independent criterion, does the expression “proceedings concerned with the registration or validity of patents” include a dispute such as that which is before the Hoge Raad?

In accordance with the previous judgments of the Court, I consider first that the exclusive jurisdictions created by the Convention in derogation from the general and special provisions must be interpreted narrowly.

The Court has indeed ruled that:

“... the assignment, in the interests of the proper administration of justice, of exclusive jurisdiction to the courts of one Contracting State in accordance with Article 16 of the Convention results in depriving the parties of the choice of the forum which would otherwise be theirs and, in certain cases, results in their being brought before a court which is not that of the domicile of any of them.”

From that the Court inferred that “the provisions of Article 16 must not be given a wider interpretation than is required by their objective”. ( 7 )

Like the exclusive jurisdiction provided for in Article 16 (3) (validity of entries in public registers), the exclusive jurisdiction laid down in Article 16 (4) is explained by the fact that patents and other similar rights involve — according to the systems in force in the Member States — either deposit or registration after prior examination, and obviously the courts of the State in which the deposit or registration has taken place or is deemed to have taken place are best placed to adjudicate upon cases in which the dispute (validity or existence of the patent, alleged right of priority by reason of earlier deposit, revocation, lapse, unity of the invention, etc.) itself centres on the validity or existence of the deposit or registration.

None of those questions seems to be primarily at issue in the dispute before the Hoge Raad. The legality of the grant of the patent was not disputed when the patent was applied for; nor is it the subject-matter of the proceedings before the Hoge Raad.

It appears from the papers before the Court that the outcome of the dispute depends first upon the classification of the relationship which existed between the Company and Mr Goderbauer and secondly upon the rights and obligations arising out of that relationship.

That question arises in advance of the formalities, properly so called, for the transfer of the applications lodged or patents registered by Mr Goderbauer in the Contracting States other than the Netherlands. It is not until a decision has been taken on any assistance which Mr Goderbauer might have to give to the Liquidator that the problem of the transfer, properly so called, of the rights of the applicant or the inventor will actually arise in the other Contracting States and in the countries which are not parties to the Convention.

In reality, what the Liquidator is seeking — and this is clearly demonstrated by the fact that at first instance he applied for an interlocutory injunction — is the adoption of an interim measure relating to an obligation to act on the part of Mr Goderbauer, since in order to wind up the insolvent company it is necessary that the formalities for transfer should be carried out.

The adoption of such a measure is dependent upon the civil or commercial relationship which existed between the Company and Mr Goderbauer. It is a question of whether the Liquidator, in so far as he is the assignee of the rights of the Company, may, on the basis of the links or the contract of employment between Mr Goderbauer and the Company, and notwithstanding the right to compensation which the latter continues to assert as against the insolvent Company, require his cooperation in order to carry out the preliminary formalities needed in order to realize the asset of the Company constituted by the applications lodged and the patents obtained abroad in the name of Lodewijk Goderbauer.

(b)

Since the adoption of the 1968 Convention on Jurisdiction and the Enforcement and Judgments, two international conventions have been drawn up concerning patents: the Convention on the Grant of European Patents, signed in Munich on 5 October 1973, and the Convention for the European Patent for the common market, signed in Luxembourg on 15 December 1975.

Only the Munich Convention is at present in force. It deals only with the European patent. The applications made or patents held by Mr Goderbauer are national; therefore it appears that only the Paris Convention for the Protection of Industrial Property of 20 March 1883, most recently amended in Stockholm on 14 July 1967, should be applied to them.

That point was considered in the written observations submitted to the Court and it is not without interest to examine the problem of jurisdiction in the light of the solutions or approaches adopted by the two Conventions of Munich and Luxembourg. Those two Conventions, which are subsequent to the Brussels Convention, in fact contain special provisions on jurisdiction, in particular in relation to actions for the revocation of patents under the Luxembourg Convention. In addition, they deal with the special case of the inventor in the service of an employer.

Article 60 (1) of the Munich Convention provides as follows:

“The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has his place of business to which the employee is attached.”

Article 4 of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (known as “the Protocol on Recognition”), annexed to that Convention, provides that:

“Subject to Article 5, if the subject-matter of a European patent application is the invention of an employee, the courts of the Contracting State, if any, whose law determines the right to the European patent pursuant to Article 60, paragraph 1, second sentence, of the Convention, shall háve exclusive jurisdiction over proceedings between the employee and the employer.”

Article 68 of the Luxembourg Convention provides that:

“Unless otherwise specified in this Convention, the Convention on jurisrdiction and enforcement of judgments in civil and commercial matters, signed at Brussels on 17 September 1968... shall apply to actions relating to Community patents and to decisions given in respect of such actions.”

Article 69 (4) of that Convention provides that:

“The following courts shall have exclusive jurisdiction, regardless. of residence:

Finally, Article V (d) of the Protocol annexed to the Brussels Convention, after the adjustments made by the Convention on the Accession of Denmark, Ireland and the United Kingdom and by the Convention on the Accession of Greece, will, when it enters into force, provide that:

“Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Contracting State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with. the registration or validity of any European patent granted for that State which is not a Community patent by virtue of the provisions of Article 86 of the Convention for the European Patent for the common market, signed at Luxembourg on 15 December 1975.”

By stating that in disputes between employer and employee in relation to patents the courts of the State whose law determines the right to the patent (European or Community) are to have exclusive jurisdiction, all those texts by implication confirm the special nature of the concepts of registration and validity of patents.

Even if the patent were a European or Community patent, the courts of the State in which the employee is mainly employed, that is to say in this case the Netherlands courts, would have exclusive jurisdiction, provided that the dispute between Mr Goderbauer and the Liquidator could properly be described as an “action in which an employer and an employee are in dispute”. It seems that Mr Goderbauer was employed mainly in the Netherlands; in addition, that part of the Company to which he was attached was also situated in the Netherlands.

Consequently, the jurisdiction of the Netherlands courts — subject to the national rules on jurisdiction contained in Article 5 of the Netherlands Patents Law ( 8 ) — resulting in this case from the combined provisions of Articles 2 and 5 of the Brussels Convention would not be affected by the provisions of the two European Conventions on patents.

(c)

The papers before the Court show that the dispute between Mr Goderbauer and the Liquidator arose before the Company went into liquidation.

Nevertheless, as the United Kingdom points out in its written observations, it is not impossible that, while not falling within the matters referred to in Article 16 (4) and therefore being in principle within the scope of the general or special provisions of the Convention, the dispute exhibits a link with the rules on bankruptcy, which is specifically excluded by Article 1.

For example, there might be a problem in relation to the registration of a patent in the name of the Liquidator. It is in that case that Mr Goderbauer relies upon Article 60 of the Netherlands Insolvency Law.

However, it should be noted that, apart from the fact that the applications or patents in question are registered abroad and the Liquidator resides in Belgium, the dispute does not exhibit any foreign element.

As for the problem of the effect of the insolvency on the disposal of the intangible assets, which are subject to registration in the public registers of other Contracting States, it does not arise until a later stage: first, it must be determined whether those rights are part of the assets; the applications or patents in question can be involved in the insolvency proceedings relating to the Company only in the State in which such proceedings have been brought in the first place, that is to say in the Netherlands.

The question of what effects a reference, or failure to make reference, to the insolvency in the public registers of the other Contracting States in which the applications or patents in question have been registered will have on the disposal of those assets also does not arise until a later stage.

Consequently, if it is accepted that the Netherlands rules of private international law on bankruptcy are applicable, the same result is achieved as that reached by the interpretation which I have suggested of Article 16 (4) of the Convention.

1.

The expression “proceedings concerned with the registration or validity of patents” used in Article 16 (4) of the Brussels Convention must be given an independent interpretation.

2.

That expression covers only disputes which are principally concerned with the registration or validity of a patent.

“1.

If the product or process for which an application for a patent is made was invented by a person, employed by another person such that he uses his special knowledge in order to make inventions similar to those in respect of which the application for a patent is made, the employer is entitled to the patent...

2.

If the remuneration which he receives or any special consideration to be received cannot be regarded as constituting compensation to the inventor for loss of the patent, the employer is bound to pay to him a fair sum, having regard to the financial value of the invention and the circumstances in which it was made. If the employer and the inventor fail to reach agreement on the amount of compensation, they may request the Patent Office in writing to determine it. The Patent Office shall give a decision on that request. The parties are bound by the duly motivated decision of the Patent Office. If the employer and the inventor do not make use of that possibility, Article 56 shall be applicable. The inventor shall lose all rights of appeal under the present provision on the expiry of a period of three years following the notification of the patent.

3.

Any agreement contrary to the provision laid down in the proceding paragraph shall be void.”

“1.

The Arrondissementsrechtbank, The Hague, shall have exclusive jurisdiction at first instance in relation to any claim for revocation, for a declaration of loss of legal effect or for changing the patent, referred to in Article 51, 52 and 53 respectively, and also in relation to any claim for the fixing of compensation, referred to in Articles 34 (9), 34A (2) or 34B (3).”