A guide to the UPC and the UP - Flipbook - Page 100
Forum Shopping
Introduction
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Forum shopping has a long tradition as a popular litigation tactic which is especially relevant in
cross-border patent infringement cases. It is not limited to intellectual property matters but also
plays an important role in many other fields of law. 83 In general, forum shopping can be defined
as the strategic choice between one of several possible fora by a claimant for its advantage. 84
Forum shopping therefore presupposes, by definition, that for one and the same dispute,
several courts have concurrent jurisdiction. The reasons for forum shopping are manifold:
some claimants intend to choose a specific judge or court with special experience in the
respective field of law whilst others seek to take advantage of particular features of a forum
based on its substantive and/or procedural law.
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Forum shopping sometimes carries a negative connotation. 85 Lord Simon of Glaisdale,
for instance, considered forum shopping a “dirty word”. 86 Others attach to it something
“deplorable” 87 and, with regard to patent litigation, it is said that forum shopping would
“reveal and exacerbate economic inefficiencies”. 88 These statements are too sweeping
since forum shopping is a legitimate way of choosing the most appropriate legal venue
in accordance with the law. Indeed, forum shopping considerations are standard for
any claimant in cases where more than one court has jurisdiction, particularly in patent
litigation matters. In general, subject to any mandatory court allocation and/or jurisdictional
rules, a claimant may legitimately seek to take advantage of having the choice between
different competent courts and to litigate in the most favourable jurisdiction.
Forum Shopping in the EPC System
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The possibility to “shop” for a specific forum in patent matters in the EPC system arises from
the fact that, in many cases, different national courts have concurrent jurisdiction under the
Brussels I Regulation (recast). An action for patent infringement must be filed either in the
country of the infringer’s domicile or in the country where the infringing activity has occurred. 89
As many products and services are now offered globally, for instance via the internet,
the patent owner can often establish jurisdiction in a specific court of choice as the infringing
acts take place nearly everywhere. By initiating a “test purchase” in the appropriate EU
Member State and where relevant, court district, the jurisdiction of the desired forum can
easily be established.
For instance, it is well known in family law (in connection with divorce) and in libel law that the UK in particular has become
popular as a very claimant-friendly forum see (i) Walker L, “Has forum shopping had another lease of life?”, Family Law
Bulletin, 2015, Vol.136, pp.5 to 7; (ii) regarding so called “libel tourism”, see Rudkin T and Pearce C, “Forum shopping in the
21st century”, Entertainment Law Review, 2014, Vol.25(2), p.73 to 76; (iii) see also Subotic v Knezevic [2013] EWHC 3011 (QB).
For similar definitions see, for instance, GIE Groupe Concorde and Others (C-440/97) [1999] ECR I-6309, specifically p.6314
para.19; Coalition for Clean Air v VWR Intern., LLC, [2013] WL 486287, (E.D.Cal. 2013); Ferrari F, “Forum Shopping: A Plea for a
Broad and Value-Neutral Definition” in Festschrift für Ulrich Magnus zum 70. Geburtstag by eds Mankowski P and Wurmnest
W (Munich: Sellier European Law Publishers, 2014) p.385.
Ferrari F, “Forum Shopping: A Plea for a Broad and Value-Neutral Definition” in Festschrift für Ulrich Magnus zum 70.
Geburtstag, p.385.
Atlantic Star v Bona Spes [1974] AC 436 at p.471.
Bijanki, “Redefining Attorney-Fee Shifting Under the Lanham Act: Protecting Small Businesses and Deterring Trademark
Infringement”, Iowa Law Review, 2013, Vol.98, pp.822 and 831.
Moore KA and Parisi F, “Rethinking Forum Shopping in Cyberspace”, Chi. Kent L. Rev, 2002, Vol. 77, No 3, pp.1325 to 1358.
arts 4(1) and 7(2) Brussels I Regulation (recast) respectively.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 90
