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The goodfellasDetkin and Mhyrvold on patents, trolls and Intellectual Ventures

The patent pendency crisis and the way to respond • How to make open source pay

Why Europe needs a new IP intermediary market • Putting a price on the value of customers

The keys to better benchmarking of patent quality

How SFAS 141 has changed the M&A rules for intangiblesInside the survey that reveals non-core licensing myths

Why better valuation leads to more royalty rate deals

The growing threat of IP mismanagement lawsuits in the US

Patents in Europe 2006 1

Facing up to Europe’s patent challenges 5By Joff Wild, Editor, IAM magazine

Quality at the European Patent Office 10By Professor Alain Pompidou, President, European Patent Office

The reform of the European Patent Convention: 14grant and opposition proceedingsBy Pascal Moutard, Brevalex

The Boards of Appeal at the EPO 18By Pascal Moutard, Brevalex

Filing divisional applications in Europe: a dangerous hobby? 22By Hans Hutter, Nederlandsch Octrooibureau

A tale of spiders and torpedoes 27By Christophe Ronse, ALTIUS Law Firm

Strategic issues concerning patent litigation in Europe 30By Tom Carver and Nigel Stoate, Taylor Wessing

Patent enforcement in Norway 34By Jens Fredrik C Langfeldt, Zacco Norway AS

Enforcing patents in Austria 39By Alexander Cizek, DLA Piper Weiss-Tessbach

Enforcing patents in Belgium 43By Christophe Ronse and Paul Maeyaert, ALTIUS Law Firm

Enforcing patents in the Czech Republic 48By Lukas Lorenc, Cermák Horejs Myslil a spol

Enforcing patents in Denmark 51By Pernille Thorsboe, Zacco A/S

Enforcing patents in Finland 55By Ben Rapinoja and Aura Soininen, Borenius & Kemppinen Ltd

Enforcing patents in France 59By Pascal Moutard, Brevalex

Enforcing patents in Germany 63By Bernd Allekotte, Grünecker Kinkeldey Stockmair & Schwanhäusser

Enforcing patents in Hungary 67By Dr Gábor Faludi and Dr Gusztáv Bacher, Szecskay Ügyvédi Iroda – Attorneys at Law

Enforcing patents in Iceland 72By Gunnar Örn Harðarson and Ásdís Magnúsdóttir, Árnason Faktor

Enforcing patents in Ireland 76By John Whelan and Ciara Cullen, A&L Goodbody

Contents


Chapters

2 Patents in Europe 2006 www.iam-magazine.com

Contents

Enforcing patents in Italy 80By Giovanni Antonio Grippiotti, Società Italiana Brevetti

Enforcing patents in the Netherlands 83By Hans Bottema, Nederlandsch Octrooibureau

Enforcing patents in Poland 86By Katarzyna Karcz and Malgorzata Zielinska-Lazarowicz, Patpol

Enforcing patents in the Slovak Republic 91By Andrea Povazanova, Cermák Horejs Myslil a spol

Enforcing patents in Spain 94By Miguel Vidal-Quadras and Oriol Ramon Sauri, Amat i Vidal-Quadras Advocats

Enforcing patents in Sweden 98By Helena Östblom, Zacco Sweden

Enforcing patents in Switzerland 101By Michael Stierwald, Braunpat Braun Eder AG

Enforcing patents in the UK 104By Gary Moss, Taylor Wessing

Directory 110

Chapters Continued

Welcome

Welcome

It is a pleasure to welcome readers to thesecond edition of Patents in Europe: Helpingbusiness compete in the global economy.

There are very few patent owners whocan afford to ignore the importance ofEurope to their businesses. As home to apopulation of over 500 million, as well asinnumerable world-class technology-basedcompanies, the continent is not only apotentially very lucrative market for thosefrom elsewhere in the world, it is also wheremany of their competitors are to be found.For those actually based there, Europe’smarkets are the lifeblood that keeps themgoing. As a consequence, understanding theintricacies of how the patent system operatesis essential: get it wrong and valuableresources invested in research anddevelopment will end up having been wasted.

But the problem with Europe is that it ismade up of a collection of sovereign states –each one with its own patenting rules andways of deciding disputes. For companieswishing to understand the complicated patentinfrastructure on the continent, this is the firstlesson: Europe is not one, it is many.

There is a way, however, in which thepatenting process can be simplified and thatis to use the European Patent Office (EPO) asthe starting point for a protection strategythat covers the continent. Established bysignatories to the European PatentConvention (EPC) in the 1970s, the EPO actsas a one-stop location for securing grantedpatents in each of the current 31 memberstates of the EPC, or in as many as theapplicant wishes to nominate.

What the EPO cannot do, though, is togrant a unitary patent that covers all EPCcountries. Because what it grants are

essentially national patents, when it comesto enforcement, patent owners have to take acountry-by-country approach. Something thatcan take time, cost a lot of money andprovide contradictory results. Efforts tochange this situation are ongoing but, atpresent, show little sign of nearing resolution.

It is with all this in mind that IAM hasproduced Patents in Europe 2006. Thisspecial supplement to the magazine has beendesigned to provide concise information abouta host of key issues facing those looking toobtain patent protection in Europe and then, ifnecessary, to enforce it. At the front end ofthe publication we have a number ofintroductory chapters that look in some detailat specific aspects of the European patentingprocess. These are then followed by a seriesof country-based contributions in whichcorrespondents answer questions relating tothe way in which patents are enforced in theirjurisdictions. In this way, the aim is to build atool that will be of practical use to Europeanpatent owners, as well as those from otherparts of the world.

To ensure the highest quality, weapproached only those firms withacknowledged expertise in European patentlaw and practice to submit editorial. We aregrateful to all contributors for taking the timeto do so. Above all, however, we areindebted to officials at the European PatentOffice, who not only provided copy andstatistics, but also gave much invaluablegeneral help as Patents in Europe 2006 wasconceived and produced.

Joff Wild,Editor, IAM magazinewww.iam-magazine.com

Patents in Europe 2006 3www.iam-magazine.com

Editorial board

Bruce BermanPresident, Brody BermanAssociates, New York

Mike CarrDirector of Enterprise Venturing,BT Exact, UK

Michael CleareExecutive Director, ColumbiaUniversity Enterprises

Bruce LehmanChairman of the InternationalIntellectual Property Institute,Washington DC

Douglas R ElliottFounder and CEO,TEQ Development LLC, Chicago

Morag MacdonaldHead of the International IP Group,Bird & Bird, London

Marshall PhelpsCorporate Vice President forIntellectual Property, Microsoft Corp.

Herbert C. WamsleyExecutive Director, IntellectualProperty Owners Association,Washington DC

Rob WillowsVice President, Thomson DerwentIndustrial Property Markets Division

EditorJoff [email protected]

Finance EditorNigel [email protected]

Deputy Editor (North America)Victoria [email protected]

Contributing editorsRichard [email protected]

Adrian [email protected]

ReporterLiz [email protected]

Sub-editorCarolyn [email protected]

Design and productionRussell [email protected]

Subscriptions andmarketing managerAlan [email protected]

Circulation managerAmanda Green

PublisherDan [email protected]

Publishing directorTony [email protected]

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The European Patent Office (EPO) wasestablished by the contracting states to theEuropean Patent Convention (EPC) back inthe 1970s and made its first grants in1980. In its first few years of existence itwas handling an annual workload ofapproximately 10,000 applications. By theend of 2005, this figure stood at 128,679 ayear, a rise of 4% on the 2004 total. Ofthese applications, 49.5% came from peopleor organisations based in EPC memberstates, while 25.4% came from the UnitedStates and 16.7% from Japan.

The EPO, which is headquartered inMunich and has satellite offices in Berlin,Vienna and The Hague, is now established,along with the US Patent and TrademarkOffice and the Japanese Patent Office, asone of the three most important patentoffices in the world. Between them, the so-called trilateral authorities handle well over50% of the world’s patent applications.

What makes the EPO unique is the factthat it grants rights that have the potential tocover all contracting states to the EPC (withthe accession of Latvia in 2005, there are now31 of these, with five more extension statesalso recognising European patents). The EPCallows organisations to take advantage of asingle grant procedure by filing an applicationin one of the three official languages of theEPO – English, French and German – to gainprotection that potentially covers an area witha population of close to 500 million people.Not that every European patent covers all 31member states of the EPC – it is up to theapplicant itself to nominate those jurisdictionswhere it would like its granted patent to apply.

In 2005 the EPO granted 53,300 patents,which means that by the end of that year ithad granted a total of 760,700 since itstarted to operate, equivalent to a figure of6.3 million national patents.

Over the years, the EPO has establisheda reputation for the quality of the patents itgrants. It is an issue to which the Officecontinues to pay close attention. With closeto 3,500 examiners, expertise across a widevariety of technical areas and access to adatabase of 56 million patent documents –as well as a library composed of over 55million facsimile patent documents and non-patent literature – applicants and otherinterested parties know that every applicationsubmitted to the EPO receives close scrutiny.

The opposition and appeals process alsoensures that there is the opportunity toaddress any problems that do occur duringthe examination stage before embarking uponpotentially costly civil litigation in memberstates’ courts. Oppositions must be filedwithin nine months of a patent being grantedand in 2005, 2,960 were filed, meaning anopposition rate of 5.4%. The Boards ofAppeal, meanwhile, registered 1,684 newcases during 2005, representing a 9.8%increase on 2004’s figure of 1,533; settledappeals in 2005 numbered 1,499, slightly upon the previous year. During 2005, there wasalso some progress on dealing with thebacklog of cases waiting to be heard by thevarious boards of appeal – by the end of theyear, 753 appeals had been pending for overtwo years, which represented a 9%improvement on 2004’s total of 832. Twonew boards of appeal were also created.These handle issues relating to chemistryand electricity. There are now 24 boards ofappeal in total.

Facing up to Europe's challenges

Facing up to Europe’spatent challenges


Feature

By Joff Wild, Editor, IAM magazine


The European Patent Office is not only responsible for the delivery of ahigh-quality patent application and grant process, but also has a centralrole to play as Europe debates its patent future

Pendency times, of course, are not aproblem limited to the appeals process. Theyremain a significant challenge for the wholeof the Office. Although around 25% of patentgrants are now made inside the currenttarget period of 36 months from application,the average time to grant remains high, at45.3 months (though this does represent animprovement of nearly a month on the 2004average). Over the medium to long term, it ishoped that the introduction of an enhancedservice relating to the delivery of firstopinions from examiners to applicants will behelp to reduce waiting times.

Designed to enhance the EPO’s reputationfor quality and to help applicants make earlier,and therefore less expensive, decisions withregards to their patenting strategies, theservice aims to provide a first opinion fromthe examiner on an application within anaverage of six months from the originalsubmission of the application. In the opinionthe examiner outlines his impressions of thestrength of the application based on theclaims and on the prior art. He can advisethat in its current state the application doesnot look like a potential candidate for grant or,alternatively, that there appear to be fewproblems. Similarly, the examiner also makessuggestions as to how the application can bealtered in order to stand a greater chance ofmaking it through to grant. In providing thisservice at such an early stage in theapplication process, the aim is to allow theOffice’s customers to manage their patentingrisks more effectively and so gain greatervalue from their IP portfolios.

Looking outwardsThe EPO does not issue patents that areenforceable across Europe. Instead, anapplicant will nominate those countries inwhich it wants to be protected and, if theapplication gets the green light, the EPO willeffectively grant national patent rights foreach of those countries. And while the EPOroute makes life easier for applicants andalso means that potential patents aresubjected to highly rigorous scrutiny, thecurrent system does present majorproblems; specifically in the areas of costand litigation, should this arise. It remainsthe case that getting Europe-wide protectionis significantly more expensive than it is toget protection for the whole of the US orJapan; while enforcement of rights is far lesscertain. Courts in, say, Germany and the UKwill often reach completely differentdecisions in cases that are to all intents andpurposes about the same thing.

At the European level, there isacknowledgement that solutions have to befound to the current problems, especially asa strong patent system is a cornerstone ofthe Lisbon Agenda, agreed by Europeanleaders back in 2000. The LisbonAgreement aims to establish Europe as theworld’s most competitive knowledge-basedeconomy by 2010.

Although EU leaders have consistentlystressed their commitment to the developmentof a unitary patent for the European Union –known as the Community patent – that wouldbe granted by the EPO and would beautomatically valid in all member states of theEU, and enforceable under a single set of legalprinciples, progress towards seeing this comeinto force has been painfully slow.

By establishing a Community patent, theidea is that patents will be less expensive toobtain and that patentees will have morecertainty because the rights they own will besubject to only one set of rules andprocedures. However, while there seems to begeneral consensus that the Community patentis needed, the devil is in the detail. There area number of issues that still have to beresolved before it can take effect, most ofwhich resolve around language and, to alesser extent, the nature of the enforcementframework. Although talks are ongoing thereseems little prospect of a breakthrough in theshort to medium term, as the negotiatingparties struggle to design a system that notonly makes patenting in Europe less expensiveand more certain, but also satisfies those thatworry about issues such as translations.

Although the EPO has made clear that itsupports the introduction of the Communitypatent, it is also pragmatic enough to realisethat the chances of it actually happening anytime soon are remote. That means, ofcourse, that European patentees andapplicants are still faced with thedisadvantages the current patent



Direct European filings

Euro-PCT applications filed(international phase)

Total European applications(incl. Euro-PCT international phase)

Euro-PCT applications entering the regional phase

European applications(incl. Euro-PCT regional phase)

2005+3.8

Change in %

2004

60762

58523

2005+8.8

2004

132861

122139

2005+7.2

2004

193623

180662

2005+4.1

2004

67917

65252

2005+4.0

2004

128679

123775

Applications filed in 2005

Source: European Patent Office, Annual Report 2005

infrastructure presents – points that wereunderlined during a European Commissionconsultation process on Europe’s patentsystem and its future that started at thebeginning of 2006 and culminated in apublic hearing in Brussels in July.

The need to harmoniseWhat became apparent during thisconsultation process, which saw a total of2,515 submissions from individuals andvarious interested organisations, was thatwhile support for the principles behind theCommunity patent remained strong, thosethinking that it was a viable prospect in itscurrent form were almost non-existent.

This was something that was recognisedby the Commissioner of the Internal MarketDirectorate General Charlie McCreevy in aspeech he made in Prague in October 2006.“Industry is not enamoured by thecompromise reached by the Council in 2003on the Community patent in terms of theproposed solution in respect of language andthe jurisdictional system because they don'tachieve the cost reductions and thesimplification of the system that industrywants,” he said. Instead of the Communitypatent, therefore, McGreevy hinted that theCommission may throw its weight behind twoother initiatives supported by the EPO: theEuropean Patent Litigation Agreement (EPLA)on jurisdiction and the London Agreement (orProtocol) on the language regime. “Before theend of this year,” he explained, “I will beproposing that the Commission adopt acommunication and action plan aimed attackling the patent issues all in one approach.In particular, I want to tackle the jurisdictionalissue so that we don't have different courtsin different countries delivering divergentinterpretations on the same patentedinvention.” In a telling final sentenceMcCreevy stated: “We cannot aspire to beingthe most competitive economy in the world ifwe don't find workable solutions to patentapplication and protection.”

Progress on the EPLAA draft of the EPLA has been agreed byofficials from a number of member states ofthe European Patent Convention, includingthe UK, Germany, France, Sweden,Switzerland and the Netherlands. Thisenvisages the creation of a European PatentCourt that would have exclusive jurisdictionto hear cases concerning actual orthreatened infringements of Europeanpatents, and actions and counterclaims forthe revocation of European patents, as long

as the defendant were domiciled in acontracting state.

In this way, the infringement and validityof European patents would be litigated in thesame proceedings, while any decision torevoke a European patent would beapplicable in all contracting states to theEPLA. In effect, this would make theEuropean patent a unitary right in thosecountries that signed up to the Agreement.

In the past, the Internal Market DG hadbeen hostile to the EPLA, regarding it as verymuch a second best to the Communitypatent, while at the same time casting doubton its legality under EU law. However, itseems that minds have been changed. In hispublic hearing testimony, McCreevydescribed the EPLA as “a promising route”and is reported to have instructed officialsto work on taking the project forward.

Furthermore, McCreevy told a committeemeeting of the European Parliament in Junethat he was determined to ensure thatEurope’s patent system is reformed.“Businessmen, faced with a 21st-centuryglobal economy, scratch their heads indisbelief when they see us stuck indiscussions about language regimes andregional distribution of courts. What theywant is a cheaper and reliable patentsystem. That’s why I think we should look atall possible routes forward, be theyCommunity or non-Community initiatives.”

As a voluntary agreement only thosecountries that wish to be bound by the EPLAneed to sign up, although in practice theendorsement of Germany, the UK and Francetakes care of Europe’s three biggest markets:this will increase certainty for patentees andalso reduce the costs of pan-Europeanlitigation. An added attraction is that becausethis is an agreement between contractingstates of the EPC, there is no need for anygreen light from all EU member states or theEuropean Parliament. However, in a vote on12th October, the European Parliament, whilesupporting the broad principles behind theEPLA, made clear that it had substantialreservations about the EPLA as currentlyworded. Although this does not, of itself,preclude the Agreement being ratified, it doesmake it politically much more difficult.

The Protocol advancesBut the EPLA is not the only initiative thatlooks like moving forward. Also at the Julypublic hearings, EPO chief Alain Pompidoustated that he believed the Frenchgovernment was now ready to ratify theAgreement on the application of Article 65 of




JP 16.7%

others 8.4%

US 25.4%

DE 18.5%

FR 6.2%

NL 6.1%

CH 3.9%

GB 3.6%IT 3.3%

7.9%AT, BE, BG, CY, CZ, DK,EE, ES, FI, GR, HU, IE,IS, LI, LT, LU, LV, MC, PL,PT, RO, SE, SI, SK, TR

EPO 49.5% ±0.0%

US 25.4% −0.9%

JP 16.7% ±0.0%

Others 16.7% +0.0%

Applications by residence ofapplicant in 2005


The European Inventor of the Year Awards

On the evening of 3rd May 2006, at theAutoworld Museum in Brussels, over 400people attended a gala dinner and ceremonyto discover the names of the first recipientsof the European Inventor of the Year Awards.Hosted by veteran BBC journalist MichaelBuerk and jointly organised by the EuropeanPatent Office and the European Commission,the Awards were designed to showcase theimportance of innovation for Europe’s futureand to strengthen the continent’s position asa dynamic centre for science and R&D in thecontext of the EU’s Lisbon Agenda.Commission Vice-President and Enterpriseand Industry Commissioner GünterVerheugen and EPO President Alain Pompidouwere both present to honour the winners.

To establish the first set of Awardrecipients, an international jury chaired byformer Dutch Prime Minister Wim Koknominated inventors from 11 nations. Thenominees represented nine countries inEurope, plus Australia and the United States.The list the jury drew up covered inventionsfrom all the fields of technology in which theEPO granted European patents between 1991and 2000. It granted over 380,000 patents inthat period, so in making their choice the

jurors drew on the technical expertise of theOffice’s 3,500 patent examiners.

Awards were made in a total of sixcategories and were handed to the followinginventors:• Industry category – Zbigniew Janowicz

and Cornelis Hollenberg, who invented amethod for making proteins in Hansenulayeast, which is used to produce anaffordable vaccine against hepatitis B.

• SME category – Stephen Fodor, MichaelPirrung, Leighton Read and LubertStryer for their invention of the DNA chipwhile working for the Dutch companyAffymax’s US research institute.

• Universities and research institutionscategory – Peter Grünberg, ofGermany’s Jülich Research Centre, forhis discovery of the giant-magnetoresistance effect, or GMR.

• New EU member states category – JohnStarrett, Joanne Bronson, John Martin,Muzammil Mansuri and David Tortolani,whose work – based on research done atthe Academy of Sciences of the CzechRepublic – resulted in a breakthroughwith chemical compounds, calledprodrugs of phosphonates.

• Non-European countries category –Larry Gold and Craig Tuerk, of NeXstarPharmaceuticals, Boulder, UnitedStates, who found out that nucleic acidscan bind a protein to potentiallyintercept other proteins that causediseases such as AMD.

• Lifetime achievement category –Federico Faggin, an Italian scientist nowliving in California, who developed thefirst microprocessor chip, allowing hugevolumes of data to be processed andunleashing a revolution in computertechnology.

Speaking at the event, Professor Pompidousaid that inventors should be “treated likepop stars”, while Commissioner Verheugenexpressed his hope that one day “theEuropean Inventor of the Year will have thesame prestige as the Nobel Prize”. TheAwards will now be held on an annual basis.

All photographs by Rupert Warren, © European Patent Office

the Convention on the Grant of EuropeanPatents (the London Protocol) and predictedthat it would do so before the country’s May2007 elections.

Under the Protocol, member states of theEPC which share an official language with theEPO, ie English, French and German, wouldnot require any translation of Europeanpatents in one of their official languages.Other countries, meanwhile, would have tochoose one of the official languages of theEPO as a “prescribed language”, in whichEuropean patents would be translated,although they would also retain the right torequire translation of the claims in one oftheir official languages. It is estimated that

should the Protocol come into force, it wouldcut the cost of translations in Europe by 50%.

A number of countries have ratified theProtocol, but it cannot come into force withoutthe sign-up of France, the UK and Germany.And although the latter two have given it thegreen light, France has been reluctant up tonow, citing concerns about the effect theProtocol would have on the French languageand its role in the dissemination of scientificknowledge (in 2001, for example, theEuropean Parliamentary Regional Assembly ofthe Francophonie (French-speaking countries)passed a resolution rejecting the Protocol). Amajor breakthrough in this regard came at theend of September 2006, when the French


EPO President Alain Pompidou withCommission Vice President Günter Verheugen

Group photo of the winners of the first European Inventor of the Year Awards

Constitutional Council ruled that the Protocoldid not run contrary to the FrenchConstitution, so clearing the way for formalFrench ratification. If this were now to occur, itwould be a major step towards the Protocolcoming into force and good news for allcompanies that patent inventions in Europe.

Obstacles aheadSo for European patentees, the signs aregood. But it would be wise to remember thatnothing has yet been agreed. And nothing isguaranteed. But with Community patentnegotiations looking as if they have stalled,attention has shifted to the Protocol andthe EPLA.

Of the two, the Protocol looks to be themost likely to progress quickly as its aim isone that everybody shares – a much cheaperpatenting process in Europe. That said,language can be an emotive issue in Franceand there is no guarantee that, withelections looming, the Protocol will not beseized on as an issue in the run-up to pollingday. In addition, even if France does ratify,that does not guarantee the Protocol willcome into force, as a minimum of eight EPCmember states must accede before it does.So far, this number has not been reached.

But with France on board, it will just be amatter of time for the Protocol. Moreproblematic is the future of the EPLA. Here,there are bigger issues to confront. Theseinclude exactly how the new system willfunction and how much it will cost. Moresignificant, however, is that the anti-softwarepatent lobby has decided that the EPLA is yetanother back-door attempt to introducesoftware patents into Europe and, as a result,is now beginning to organise in opposition to it.

Although McCreevy’s Internal Market DGmay be getting more relaxed about thedesirability and legality of the EPLA, thisdoes not guarantee that other parts of theCommission will be equally sanguine; whilestrong lobbying could begin to make thewhole issue less comfortable for individualmember states. Certainly the vote of theEuropean Parliament indicates that manypoliticians have yet to be fully convinced ofthe Agreement’s merits.

Difficult stepsBecause Europe remains a collection ofsovereign states, it is always going to bedifficult to construct a patent regime on thecontinent that matches those found in theUnited States and Japan, and that we willsee, in the future, in places such as Chinaand India. Each of these countries has theadvantage of operating under a single patentregime that is administered by an officeresponsible to just one government. Lawmaking and policy discussions will inevitablybe easier in such circumstances.

One only has to look at the failed attemptto get the Computer Implemented InventionsDirective approved by the European Parliament,as well as efforts to force countries toimplement the Biotechnology Directive (whichitself took a decade to get through theBrussels decision-making process) to see thetask patent owners face in Europe. All they cando is to educate those that take decisions sothat, in time, they realise just how importantpatents are to the future of Europe’s economy.

While uncertainty and delay seem to bethe natural state of things in a Europe thatoften seems to be fonder of grand statementsrather than hard-nosed action, what is clear isthat the EPO remains committed to ensuringthat it not only grants high-quality patents, butalso keeps the whole issue of intellectualproperty and patenting in particular on thepolitical agenda. Ultimately, it is up to rightsowners to force the politicians to take theirneeds seriously. They can be sure, however,that as they attempt to do this they will havea loyal friend in Munich.


Application for which European grant proceedings were instituted in 2005

Philips

Company

1

Rank

4883

Siemens2 1863

Samsung Electronics3 1585

Matsushita Electric4 1390

LG Electronics5 1152

Sony6 1117

Bosch7 1030

Microsoft8 879

Fujitsu9 837

BASF10 778

Nokia11 688

Thomson12 577

DSM IP Assets13 575

IBM14 573

General Electric15 567

Alcatel16 552

Seiko Epson17 521

Bayer18 519

3M19 517

Canon20 499

Hitachi21 492

Fuji22 462

L’Oréal23 448

Delphi Technologies24 447

NEC25 431

The top filers with the EPO in 2005



Quality at the EPO Feature

For the European patent system and theEuropean Patent Office (EPO), quality is notan option: it is the heart of its identity, adistinctive characteristic. European patentsare granted on the basis of a uniquelythorough search and examination procedure.They offer a degree of legal certainty that isunmatched anywhere in the world. They offerguarantees of this quality that areunparalleled. This commitment to qualityoriginates in the mandate of the EPO, as laiddown in the European Patent Convention(EPC), and in the will of Europeangovernments and European society.Nevertheless, quality remains a permanentchallenge and a concrete objective for theEPO, as reflected in the formal qualitymanagement system initiated in 2004.

Quality a defining characteristic At the recent EU hearing on Patent Policy inEurope, held in Brussels on 12th July 2006,civil society and, in particular, therepresentatives of large and small andmedium enterprises, expressed their strongsupport for the high quality of the Europeanpatent. The desired reduction of cost shouldnot come at the expense of quality, theyargued, as the high quality of patents is amajor asset for Europe and its knowledgeeconomy. The Commission and the Union’smember states also showed that they sharethis vision of quality as a distinctive featureof the intellectual property system in Europe.

It is the mandate of the EPO to granthigh-quality patents. The requirements forpatentability set out in the EPC and applied

by the EPO are stringent. The threeconditions of novelty, inventive step andtechnical character are interpreted in thewidest sense (EPC, Article 52(1)). Thisimplies extensive search and examinationprior to the granting of patents, and requireshighly skilled examiners with appropriateinitial and continuing training.

Recruitment and training of examinersExaminer recruitment is a thorough operation.First, the EPO’s recruitment procedure is verycompetitive and demanding, and we benefitfrom a strong interest from skilled applicants.Second, the EPO provides common training toensure that all examiners follow, legally andtechnically, a consistent approach. Particularattention is given thereafter to the individualtraining needs of examiners, according to boththeir individual background and their field ofwork. New technological developments andtrends also require us to reassess ourtraining policy and needs continuously.

DocumentationSkilled examiners rely on extensive and high-quality documentation. Since the state of theart considered for the purpose of noveltyassessment is held to comprise “everythingmade available to the public” (EPC, Article 54(2)), examiners need access to a vast stockof patents and other documents. In this areatoo, the EPO sets a benchmark: its virtuallibrary for examiners now comprises over 62million documents. The quality of thisdocumentation is guaranteed by strictmonitoring: 4.6 million documents werereviewed in 2005, resulting in 314,000manual corrections. Espacenet makes thispatent literature publicly and freely accessible.

Unlike a number of patent offices

Quality at the EuropeanPatent Office

By Professor Alain Pompidou, President,European Patent Office, Munich


Quality is at the heart of the European patent system. The EPO is deeplyand very concretely committed to ensuring that it remains so and intendsto be the world benchmark for patent quality

worldwide (notably the US office), the EPOtakes global knowledge in all its forms as theyardstick of inventiveness. This includestraditional knowledge, an area where the EPOhas partnerships with many non-Europeancountries. These partnerships aim atincorporating traditional knowledge into the EPOdata banks. It also has the side effect ofmaking traditional knowledge available to thepublic in the English language and thusconstitutes a very efficient way to protect andpromote it. A database of traditional Chinesemedicine, for example, has been integrated inthe EPO stock of patent documents, ensuringthat techniques derived from traditionalChinese medicine are not patentable in Europe.

Stringent conditions for patentabilityThe requirement of technical character forpatents is also, in my view, another token ofthe high quality European society expects fromits patents, as it helps to make the Europeanknowledge economy a safer and morepredictable environment for entrepreneurs. Theso-called ethical exclusions from patentability –such as the refusal to grant patents toinventions that are contrary to ordre public ormorality – also contribute towards making theEuropean patent system one of the mostdemanding in the world.

ProcessesIn addition to the quality aspects outlinedabove – the skills of the examiners, theextent of our documentation and the highstandards we apply – the EPO followsmeticulously designed procedures that arecontinuously reviewed and updated. Theexamination procedure in particular involvesa high number of redundancies, which is oneof the Office’s distinctive features.Examiners, of course, bear the primaryresponsibility for maintaining high-qualitystandards. They assess their own workagainst systematic checklists and therequirements for the justification of theirrecommendations are high, especially withregards to documentation and compliancewith the EPC.

Individual examiners are, therefore, theprime actors in the operational qualitycontrol processes. However, any decision onthe granting of a patent is checked furtherby an examining division, with a secondexaminer, who reviews formal aspects, and achairman, who checks the substance of thepatent application. After this second review,a third check on selected files is carried outby directors. In addition, the QualityManagement Directorate is currently

developing a fourth level of quality control,which I shall detail below. Each of theselevels of quality checking precedes adecision. Any of them can result in a requestfor further search and examination.

Practices and procedures are undercontinual scrutiny, and they are reviewed onthe basis of, for example: feedback from theexamination process, in particular from thequality control measures; the jurisprudenceof the boards of appeal and otherdevelopments in the interpretation of patentlaw; and feedback from users.

With the changing European and globaltechnological environment, patents insensitive areas require special attention,supplementing our normal procedures. This isthe case with biotechnology, businessmethods that show significant technicalcharacter, and computer-implementedinventions. For such sensitive cases, the EPOis assisted by a network of experts who areconsulted on a case-by-case basis. Issuemanagement groups have also been set upwithin the Office. They systematically reviewevery application in their area of concern,providing an additional level of quality control.

Possibilities of reviewThe first line of defence against low-qualitypatents is thus provided by the examinersand the grant procedure and processes. Thesecond line consists of the opposition andappeal procedures. The fact that these arenot heavily used proves the quality of thefirst line. Fewer than 7% of patents grantedby the Office are challenged in an oppositionor appeal proceeding (two-thirds of thesecontested patents are amended or rejected).Recourse to the third line of defence,revocation proceedings in national court, isvery little used, as it should be. At 1%, thelitigation rate for the EPO is on par with thatof the world’s top patent offices.

The transparency of the patent grantprocedure and the multiple possibilities forthird parties to challenge its outcome arefurther guarantees of the quality of theEuropean patent. Applications are publishedfrom the 19th month of the procedure, whichenables third parties to present commentsand facilitates public debates on inventionsand patentability in the early stages of thepatenting process.

Principles of EPO Quality PolicyThe objectives of the EPO are to supportinnovation, competitiveness and economicgrowth in Europe. Defining what qualitymeans for us therefore entails identifying the


Quality at the EPO


Professor Alain PompidouEPO President

Patent qualityis at the heartof the EPO’sphilosophy

key factors in the fulfilment of these goals. Itis on this basis that the four principles ofthe Quality Policy were specified:• The first principle of the Quality Policy is

legal certainty. A primary goal of thepatent system is to provide certainty toinventors, investors and enterprises withregards to the protection and the use ofinventions. The task of the EPO is togrant patents and to ensure that therights granted by the patent arecommensurate with the contributionmade to technology.

• Service is the second principle. The EPOis at the service of European society. Ithas to be reliable and flexible on thebasis of a balanced understanding ofthat society’s needs and values. The factthat the Office now provides applicantswith an early opinion on patentability is agood illustration of its commitment tothis principle. Its commitment toreducing the delays in the patentingprocedure is another.

• Third, the openness policy of the Officehas at least three advantages. Thetransparency of the patent grantprocedure facilitates comments by thirdparties early in the process (the publicfile inspection procedure allows anyone tosubmit comments on an application tothe relevant examiner from the 19thmonth of the process). The indication ofwhat applications have already been filedalso provides a powerful tool foreconomical intelligence, and thepublication of patents is a strong catalystfor research and innovation.

• Fourth, the Office strives for continuousimprovement, in a permanentcommitment to enhance quality, on thebasis of our five cardinal virtues:thoroughness, consistency, transparency,fairness and timeliness.

Let me now turn to the details of theEPO’s effort to secure and reinforce the highlevel of quality already attained.

Formal quality management in the EPOQuality at a given time, and even a history ofquality like that of the EPO, is not a guaranteeof future quality. On the contrary, the wholepoint of a quality system is to ensure thatquality is sustained with certainty beyond theunavoidable changes of the environment andof the organisation. As this requires continualreassessment and adjustment, there is noother way to secure quality than aiming atconstantly raising its level. Therefore, the

principle of continuous improvement is centralto our quality policy, which in turn involvesensuring the Office’s responsiveness tochange.

The environment in which the EPOoperates has seen some very obviouschanges in recent years. The main newdevelopment posing a challenge is thegrowth in our workload, with nearly 194,000filings in 2005, amounting to an increase of148% in 10 years. Other such factorsinclude the emergence of new types ofinventions in fields such as biotechnology ortelecommunications and IT, the evolving legalbackground, the ongoing debate on EPOcooperation with national patent offices andchanges in the filing behaviour of applicants.

This is why in 2004 I initiated theimplementation of a formal QualityManagement System, with a natural focus onquality in the examination area (ie, search,examination and opposition), and, as part ofthe reorganisation of the EPO in 2005, thecreation of a Principal Directorate for QualityManagement, and the integration of theinternal audit department under my directsupervision.

The main added value of a formal qualitymanagement system lies in thesystematisation of our approach to quality.The role of the European patent system is toprovide certainty and predictability for theEuropean economy. Faced with thechallenging environment of global innovation,it is only natural that the EPO shouldendeavour to make the quality of its workcertain and predictable, further enhancingthe general reputation it already enjoys.

The Office’s efforts to formalise itsquality system have already borne fruit in anumber of significant areas.

Customer satisfactionThe first recent development connected withthe reorganisation of the Office is anenhanced attention to the needs andexpectations of its users. That service is oneof the four principles of the quality policyalready indicates the Office’s intention toopen itself still further to European society.

This service reorientation is reflected inthe activities of the new Metric and StandardsDirectorate, which has taken over the task ofredesigning the Users’ Satisfaction Surveywith a view to exploiting its results moresystemically. The incorporation of this unitwithin the Principal Directorate for QualityManagement will ensure that the EPO paysstill closer attention to customer satisfactionwhen assessing the quality of its products

Quality at the EPO


and updating its processes and proceduresaccordingly.

The handling of complaints has also beenintegrated into the Office’s general qualitymanagement system. Complaints received bythe Office were invariably taken up by thepersons directly concerned; now they areprocessed and analysed by the departmentwhich oversees the quality policy.

The opening of the Office to society isclearly apparent in the work of theCommunication Department, which was setup in 2004 to unify and enhance the ways inwhich the Office presents itself. Significantlyimproved attendance at press conferencesand briefings, wider dissemination of ourpublications, clarification of our messageand image, coordinated communication withthe European Commission – these are justsome examples of our renewed relationswith the press, the public, policymakers,industry and society at large.

Systematising the improvement loopAnother significant part of the quality effortrelates to the systematisation and thestrengthening of the so-called improvementloop. Throughout the Office, as in the usersatisfaction surveys and the processing ofcomplaints, every issue, doubt or suggestionthat arises is analysed and integrated intothe process of quality enhancement. Thusthe Office is able to spot early signs ofproblematic situations.

An example of the reinforcedimprovement loop is the creation of anadditional level of operational quality controlwithin the technical clusters. Randomlysampled patent applications are to besurveyed and checked against electroniccheck-lists. This will provide us withstatistically relevant information on acontinual basis for each technical field on themost common flaws in the patent grantingprocedure, and will thus allow for immediatetargeted actions to be taken forimprovement. As these checks will alsomeasure the effectiveness of the actionstaken, resources can be applied in atargeted, efficient and economic way.

Internal audit Another important aspect of the new qualitymanagement system is the reinforcement ofour internal audit system, which now has adedicated unit for auditing search and grantproducts, and which reports directly to me. Itis therefore entirely separate from theexamining area. Its primary role is to provideconfidence in the quality of the Office’s

work. This is done by closely scrutinising alimited number of randomly sampled files,which are checked against legal, proceduraland technical standards. Moreover, thecriticisms and suggestions of the internalaudit department are an additional input intothe improvement loop described above.

European patent quality systemThe EPO acts as a coordinator and anexamining authority for the grant of Europeanpatents. It does by its nature collaborate withthe national patent offices, which eventuallygrant national patents and also receive amajor (though diminishing) share of first filings.

The quality of European patentstherefore depends not only on the work ofthe EPO, but also on the contributions of thenational patent offices and their cooperationwith the Office. This is why the memberstates of the EPC wish to implement aEuropean quality system, to provide afoundation for participating offices toachieve continuous improvement to thequality of their products and services, and toenable them to participate in any utilisationof their searches by the Office.

The EPO, with its long experience andstrong track record for quality, has drafted amandate for a working group to makeproposals on this matter. This is being doneon the basis of the experiences of the EPOand national patent offices, and paying dueregard to the need to adapt the proposedquality system to the particularcircumstances of a given office.

ConclusionThe quality of the European patent system,complying with the high standards demandedby European society, relies on the EPO’sprocedures for granting patents and controllingtheir quality. This is backed by the transparencyof the Office’s work, its attention to feedbackfrom applicants, and its strengthened qualitycontrol and internal auditing.

On this basis, and to continue fulfillingits wider mission to provide certainty forindustry in Europe, the EPO intends toremain the world benchmark for quality. Inthese efforts however, the Office’s mainasset – and the ultimate assurance ofquality – remains the unstinting commitmentof its entire staff.


Quality at the EPO


The reform of the EPC Feature

The economic value of European patents is amatter of growing importance for patentees,in particular in view of the evaluation ofcompanies’ intellectual assets.

In order to adapt the European PatentConvention (EPC) more closely to the role ofpatents in today’s economy and to users’needs, the EPC was heavily modified in2000. The so-called EPC2000 will replacethe Convention presently in force byDecember 2007 at the latest, the exact datedepending on the ratification process in thedifferent EPC countries. This article is areview of grant and opposition procedurebefore the EPO, and also of the mostsignificant amendments which the EPC2000will introduce.

The EPC2000 has not affected theimportant principle according to which onlygrant and opposition procedures are unifiedbefore the EPO. National courts of the statesdesignated in the European patent systemremain competent for any infringement withintheir own territorial jurisdiction. Thus theEPC2000 does not establish a single unitarypatent. Initiatives such as the Communitypatent may cause this state of affairs tochange in the future. Another possiblealternative, although of a different nature, isthe European Patent Litigation Agreement(EPLA).

The EPC, and in particular the EPC2000,nevertheless contains some provisionsunifying to some extent the rights conferredby a European patent application afterpublication, and then by a European patentafter grant; the authentic text of a patentapplication or of a patent; the scope of

protection; and the grounds for revocation. Inparticular, Article 69, which defines thescope of protection of a European patent, isamended to include a special provisionrequiring that equivalents be taken intoaccount, although no definition is given ofwhat an equivalent is. Most Europeancountries, however, already have a doctrine ofequivalents.

Filing, states designation and priorityclaiming under EPC2000 A general feature of the EPC2000 is thatmany provisions are harmonised with thePatent Law Treaty (PLT). In particular, theapplicant will have the following additionalfiling possibilities:• An application in any language, provided

a translation into one of the EPO’sofficial languages is filed within threemonths of the filing of the application.

• A mere reference to a previousapplication, provided the last one andpossibly its translation is filed within twomonths of the filing of the application.

• A description without claims, providedclaims are filed shortly after. Howeverthe well-established case law regardingArticle 123(2) will still apply under thenew Convention and it will be probablyvery difficult in certain cases to extracta concise claim from a description inwhich all features are intermingled. Inother words, filing a description withoutclaims can lead to situations wherethere is no clear basis for a concisedefinition of the invention. Thispossibility of filing without claims willcertainly be useful in some urgent,cases but will probably be a source ofdifficulties for some applicants.

The reform of the EuropeanPatent Convention: grantand opposition proceedings

By Pascal Moutard, Brevalex, Paris


The modifications made to the European Patent Convention in 2000, whichare due to come into force by the end of 2007, will have major implicationsfor patentees and applicants

With respect to priority claiming, theEPC2000 is also very liberal. Claiming ofpriority is possible up to 16 months from thepriority claimed or until the filing of a requestfor early publication. It also gives theapplicant the possibility of having its rights re-established with respect to the priority periodof 12 month. Re-establishment has to berequested within two months of expiry of the12 month period. As to the translation of thepriority document, it will be requested only ifthe priority claim is relevant to thedetermination of patentability. This shouldresult in significant cost savings for theapplicant.

The territorial extent of protectionremains a strategic tool for the applicant withrespect to competitors. As of now, 31 stateshave joined the EPC, which represents ahuge territory and a huge market. Norway willalso join the EPC in the near future.According to the EPC2000, all contractingstates will be deemed to be designated uponfiling in every application. This means thatthe application will provisionally designate allcontracting states. And, regardless of thedesignated states, any published Europeanapplication will form part of the state of theart for novelty in view of any latter Europeanapplication, each application beingconsidered with its relevant filing or prioritydate. The applicant can still choose (ordesignate) the states in which protection forthe invention is wanted (designated states),normally within six months of the publicationof the search report.

The European patent applicationThe EPC2000 does not change what aEuropean patent application should basicallycomprise: a description of the invention interms of structural features and/or methodsteps and/or technical functions.Advantages, comparative results andexamples should also be included, whenavailable.

Explaining the invention in terms of aproblem-solution approach with respect tothe published prior art is very often a goodbasis for any future discussion with the EPOon patentability. The EPO examiner could stillconsider another technical problem, butnevertheless the approach presented by theapplicant will be helpful.

Claims, which define what the applicantwants to protect, are very important. Somepatent applications are filed with claimswhich are adequate for another legal system(the US for example), but not for Europeanpractice. It is therefore often advisable to

redraft a set of claims based on a priorapplication before filing in Europe.

Introducing different concise definitionsof the invention in the description is alsorecommended when preparing theapplication. This, together with broadeneddependencies of the dependent claims, willbe very helpful and will save time – and thecorresponding costs – at any further stage ofthe examination or opposition procedure.

Preparing the application with theseprinciples in mind gives some potentialflexibility in view of the future grantprocedure, reduces legal risks and isessential to the value of a future patent.

Concerning substantive patent law, theEPC2000 was signed at a time when therecently withdrawn EC Directive, designed toharmonise the national laws of EU memberstates on the patentability of computer-related inventions (CRI), was still apossibility. Computer programs as suchtherefore remain excluded from patentability,although the case law of the EPO todayseems quite well established and nationaldecisions regarding patentability of CRIs areincreasingly in line with it. This case law andthe legal basis in the EPC for CRI willprobably remain as they are for a long time.

A legal basis is now included for secondtherapeutic application, which was formerly aconstruction of the case law.

The grant procedure Claims are definitions of the invention andwill be the reference when assessingwhether any product or process is infringingthe patent or not. Claims are thereforeessential.

During the grant procedure most of theprosecution work done by the applicant or itsEuropean patent attorney (EPA) will concernthe claims. The EPC sets out substantivecriteria that have to be fulfilled by theclaims; these mainly relate to novelty andinventive step. Prosecution work is essentialas it determines the value of the patent, notonly in judicial but also in economic terms.

The EPO grant procedure first comprisesa prior art search. A search report (SR) isdrafted and published by the EPO. There isno duty of disclosure, unlike the US practice.However, according to the EPC2000, the EPOmay now invite the applicant to provideinformation on prior art taken intoconsideration in national or regional patentproceedings. If the applicant fails to reply, theapplication is deemed to be withdrawn. Isthis the beginning of a duty of disclosure atthe EPO? The applicant should evaluate


The reform of the EPC


whether any document cited by the EPOshould be disclosed in the context of anyprosecution abroad, including, of course, inthe United States.

If the application as filed contains manyindependent claims of the same category,and/or very broad claims, the SR will not bevery well focused on the invention. Evenmore problematic is the situation where theclaims are too vague or cover non-searchablesubject matter. Indeed, in such cases theEPO does not carry out any search: thesubsequent stages of the grant procedureare normally based on the SR and a patentcannot be granted if there is no SR. Such asituation is very common with businessmethod applications, but also in other fields;for example, when therapeutical or surgicalmethods are claimed. In such cases it isstrongly recommended that the claims beredrafted before filing in order to claimsubject matter not excluded from the search.

Together with the SR, the EPO nowissues an opinion on whether the applicationand the invention meet the requirements ofthe EPC, the opinion and the SR forming theso-called Extended Search Report (ESR)

A careful consideration of this ESR isessential to evaluate possible future legalrisks. At this stage, the applicant can amendthe application, which is a good opportunityto prepare for the substantive examination.

Amending the claims during substantiveexamination is often very delicate work. Atypical difficulty arises when the applicantinstructs his EPA merely to file a set of claimsalready granted by another patent office, suchas the USPTO. These sets of claims areusually not adapted to EPO practice.

The EPO is very strict with any addedsubject matter, or any amendment whichintroduces technical information notcontained, at least implicitly, in the applicationas initially filed. For example, a generalisationof a particular feature very often introducesadded subject matter. Certain – but not all –patents granted with added subject mattermay be totally revoked in post-grantopposition or by a national court without anypossibility for the patentee to overcome anobjection of added subject matter. Otherpatent offices may be more flexible in thisrespect and sometimes the applicant justinstructs the EPA to file another set of claimsalready granted by another patent office. Thisis a major risk, as this other set of claimsmay contain some added subject matterforbidden according to EPO criteria. The merefiling of such a set of claims can be a short-term cost saving, but can also result in huge

losses in the long term. The EPO has made many efforts to make

the whole grant procedure shorter than it usedto be. Some periods have been shortened orare no longer extendable, for example the onefor responding to the so-called Rule 51(4)Communication. And the fees for furtherprocessing are also much higher than in thepast. In addition, the EPO still offersapplicants the chance to file a request foraccelerated examination. This is very efficient,incurs no additional costs and is very helpfulto applicants who are interested in a rapidgrant, for example because of a licenceagreement or a potential litigation, or becausethey are start-up companies whose investorsare not demanding only patent applications,but also granted patents.

Limitation proceedingsThe EPC2000 establishes limitationproceedings which did not exist before. Theowner of a granted patent will be able to filea request for limitation of its own patent.The Examining Division will examine whetheramended claims filed by the owner are alimitation of the granted claims, are clearand comply with Article 123(2)(3) EPC. Ifnot, the patentee will have one opportunityto amend the patent. The request forlimitation can be re-filed again at any time.Opposition procedure will take precedenceover the limitation procedure: a limitationcannot be filed if opposition proceedings arepending and any limitation procedure will beterminated if an opposition is filed.

Opposition proceedingsAny third party can file an opposition withinnine months of the grant of any Europeanpatent. It is, of course, a legal risk whichhas to be taken into account if an economicevaluation of a patent application isperformed at a very early stage. Theconsequences of an opposition can bedramatic, as most oppositions are usuallyfiled after a long grant procedure, and aftervalidation of the patent in several contractingstates. In addition, it applies to allcontracting states covered by the patent.

The opponent seeks to challenge thepatentability of the protected invention. Itusually files evidence which was not takeninto consideration by the EPO before grant.Noteworthy is the fact that there is noestoppel effect as in the inter partes re-examination in the United States. Not citinga document which the opponent could haveknown about when filing the opposition willnot prevent the opponent from using such a



document at a later stage; for example,during any litigation procedure.

The opponent is usually a competitorwho feels threatened by the granted patentor someone who has already been directlythreatened by the patentee.

For this reason it is preferable for thepatentee to wait, as much as possible, forthe expiration of the nine-month period aftergrant before approaching any third party withnot only peaceful intentions but also thethought to trigger infringement action.However, this is not always possible, usuallyfor strategic reasons.

In response to an opposition, the patenteehas limited opportunities to amend the claims.In addition to being forbidden to add subjectmatter, the patentee has to deal with anotherconstraint: it cannot extend the scope of theclaims. The chances for the patentee toamend the claims are therefore much morelimited than during the grant procedure.

An opposition procedure can extend overtwo or three years. It should be noted that arequest for accelerated processing of anopposition is possible when an infringementaction is pending before a national court of acontracting state.

The EPC2000 has introduced a legalbasis for giving the opposition division theright to examine of its own motion groundsnot invoked by the opponent if these couldprejudice the maintenance of the patent.

Conclusion As already explained above, national courtswill decide any litigation relating to aEuropean patent. In courts and amongjudges, awareness of the value of IP assets,and of the necessity to stop any infringementand to award adequate compensation fordamages to IP owners, is growing.

The European Union is also aware ofthe problem of infringement in Europe: seefor example Directive 2004/48 on theenforcement of IP rights and Regulation2003/1383 on customs action againstinfringing goods, which was extended topatents.

The difficulties of the various proceduralsteps and the consequences of oversight indealings before the EPO should therefore beconsidered very seriously by applicants.Underestimating the consequences of aparticular prosecution strategy can havehuge consequences, in both legal andeconomic terms. The EPC2000 offers someflexibility with respect to the former EPC butone should never underestimate thedifficulties of the procedure before the EPO.




Boards of Appeal Feature

This article introduces some legal andpractical aspects of the appeal procedurebefore the Boards of Appeal (BoA) of theEuropean Patent Office (EPO).

The BoA have a particular place in theEPO since they are independent: they arebound only by the European PatentConvention (EPC). In addition, they have theirown rules of procedure. New Rules ofProcedure of the BoA (RPBA) entered intoforce in 2003. They have led to greaterefficiency and shorter appeal proceedings.The EPC2000, which will come into force atthe latest in December 2007, does notsignificantly change the role of the BoA.

Over the last 10 years, the BoA havedeveloped their own procedural rules whichare very specific. Some of these areexplained below, in particular with respect tothe rights of the different parties in thesame appeal procedure.

Very different principles apply toexamination appeal (ex parte) proceedingsand opposition appeal (inter partes)proceedings.

Decisions subject to appealDecisions by the Receiving Section, theExamining Divisions, the Opposition Divisionsand the Legal Division at the EPO are subjectto appeal. However, opinions by the SearchDivision on lack of unity, decisions by thePresident of the EPO and decisions by theBoA themselves are not subject to appeal.

The first main effect of an appeal issuspensive: the appealed decision does notcome into force and does not have any legaleffect until the BoA issues its decision.

There is no suspensive effect onnational procedures; for example, oninfringement actions based on a patentsubject to appeal. In certain cases,however, a national judge will stay aninfringement action until a final decision isissued by the BoA, but there is no obligationto do so, at least not in the UnitedKingdom, Germany and France.

Persons entitled to appealAny party to proceedings adversely affectedby a decision may appeal. A party is adverselyaffected if its requests were not completelysatisfied. Such party can be an applicant, apatentee or an opponent. A person havingsome economic link with a party to theproceedings is not entitled to appeal.

Let us consider the example of anopponent requesting the revocation of apatent in its entirety and the patenteerequesting the rejection of the opposition. Ifthe opposition division decides to maintainthe patent in an amended form, none of therequests has been completely satisfied.Hence both parties may appeal.

Theses principles may seem to beobvious. However, a dramatic situation mayoccur when a patent is assigned to atransferee who has not registered theassignment at the EPO. Only the registeredpatentee or applicant may file an appeal anda late registration of a transfer does notretroactively validate an appeal.

Any other party to the same proceedingswho has not filed an admissible appeal isparty to the appeal as of right. However, aparty as of right has weaker rights than theappellant filing an appeal, as it can notrequest “more” than that which it obtainedbefore the first instance and it has no right

The Boards of Appealat the EPO



The Boards of Appeal of the EPO have a vital role to play in theEuropean patenting process

to continue an appeal procedure if the soleappellant should withdraw its appeal.

Filing a notice of appeal A notice of appeal has to be filed within twomonths of the date of notification of thedecision being appealed. It must contain astatement indicating, in particular, the extentto which an amendment or a cancellation ofthe decision is requested. Within four monthsafter the date of the same notification,written statements specifying in detail thelegal or factual reasons why the decisionshould be set aside have to be filed. A merereference to previous submissions madeduring an opposition procedure is usually notconsidered sufficient.

Another principle is that an appealshould be within the same legal and factualframework as the opposition proceedings orshould remain within the same legal andfactual framework of the decision made inthe first instance.

Incomplete notice of opposition orincomplete grounds of appeal will result inthe appeal being considered asinadmissible. The question of admissibilitymay be raised at any stage of the appealprocedure, even during oral proceedings.

Filing an appeal is a very delicate matter;many decisions reject appeals just becausethey are inadmissible. Appellants should beaware that filing an appeal is not merely aformal matter, instead the action should beconducted with great care. Once a notice ofappeal has been filed, the appellant shouldnot wait until the end of the four-monthsperiod to prepare the written statementssetting out the grounds for appeal.

The appellant should always consult aEuropean patent attorney to draft the noticeof appeal and the written statement: theinitial “request” determines the extent of theproceedings

Amendments to granted patentsAs a general rule, the EPO proceedingsshould be conducted expeditiously, in theinterests of the public and of the parties.Such rules apply not only to examination andopposition proceedings, but also to thecorresponding appeal proceedings.

This means that a patentee who has lostbefore an opposition division has the right tohave rejected requests reconsidered by theBoA, but has no right to file new requestsraising issues which the first instance did notlook at (the role of an appeal is, in principle,limited to reviewing the appealed decision).

However, the BoA can, at their discretion,

accept amended claims at any stage of theappeal proceedings. They used to admit newrequests in appeal proceedings: for example,when they were filed to overcome objections,or when late filings could be justified andwhen the new requests were prima facieadmissible. However, the new RPBA specifyconditions under which a late filedsubmission is admissible and these seem tobe more restrictive than before.

New requests are refused when their filingis seen as an abuse of procedural rights.

Opposition appeal proceedingsVery delicate situations may occur in thecourse of opposition appeal proceedings.

In particular, a question was raisedwhether and to what extent a BoA coulddepart from the request formulated in thenotice of appeal when deciding oppositionappeal proceedings to the disadvantage ofthe appellant.

The Enlarged Board (G 9/92 and G4/93) concluded that:1. If the patentee is sole appellant against

an interlocutory decision maintaining hispatent in amended form, neither theBoard of Appeal nor the non-appealingopponent (as party to the proceedings asof right) can challenge maintenance ofthe patent as thus amended.

2. If the opponent is sole appellant againstan interlocutory decision by anopposition division maintaining thepatent in amended form, the patentee isprimarily restricted in the appealproceedings to defending the patent asthus maintained.

If it is the intention of one party to obtain“more” or a “better result” than that whichwas obtained in the first instance, it shouldnot rely on the fact that the other party hasalready filed an appeal, it should also file anappeal. In other words, a party as of rightdoes not have the same rights as partiesthat have filed an admissible appeal. Instead,parties as of right are limited to defendingthe result obtained in the first instance.

Patentability requirements under examinationThe Enlarged BoA has established that onlythe grounds for opposition already cited atthe opposition stage can be considered onappeal. New ones can be introduced onlywith the consent of the patentee, whosepower of veto is applied regardless of therelevance of the new grounds.

In other important decisions (G 1/95and G 7/95), the Enlarged BoA explained


Boards of Appeal


that “a fresh ground for opposition” means anew legal basis for objecting to maintenanceof the patent which was neither raised andsubstantiated in the notice of opposition norintroduced into the proceedings by theopposition division.

Opposition appeal proceedings are veryspecific and should be planned with greatcare. In addition, a party to an oppositionappeal procedure will not have the samerights, depending upon its status ofappellant or of party as of right.

Examination appeal proceedingsThe situation is completely different inexamination appeal proceedings: the aboveprinciples, applicable to inter partesproceedings, do not apply to ex parteproceedings.

The Enlarged BoA has ruled that wherethe examining division refuses an application,the BoA has the power to examine whetherthe application or the invention to which itrelated meets the requirements of the EPC.This also holds for requirements the divisionhas not considered in the examinationproceedings or regards as fulfilled. In suchcircumstances, the BoA should, whereappropriate, decide either to rule on the caseitself or send it back to the examiningdivision. This follows from the fact that an exparte review is not contentious by nature.

Accelerated processingParties with a legitimate interest may askthe BoA to deal with their appeals rapidly.The BoA can speed up an appeal as far asthe procedural regulations allow.

Requests for accelerated processingmust be submitted to the competent BoAeither at the beginning of or duringproceedings. They should contain reasonsfor the urgency together with relevantdocuments; no particular form is required.

By way of example, the followingcircumstances could justify an appeal beingdealt with particularly rapidly:• Infringement proceedings have been

brought or are envisaged.• Decision of potential licensees of the

patent in suit hinges upon the outcomeof the appeal proceedings.

• An opposition which is to be givenaccelerated processing has been madethe subject of an appeal.

Appeal proceedings and infringement An alleged infringer may, subject to specificconditions, intervene in oppositionproceedings. Intervention during appeal

proceedings is also admissible. An interveningparty can raise any of the grounds foropposition under Article 100 EPC. Anintervention is dependent, however, on theextent to which opposition or appealproceedings are still pending. Should apatentee sue or threaten a third party forinfringement before the end of the nine-monthsperiod for filing an opposition, the allegedinfringer will certainly file an opposition.

What is the influence of such anopposition and of a possible subsequentappeal on the infringement action? Thesituation differs from state to state. Let ustake the example of UK and France.

In UK, the judge usually considers thatstaying is the preferred option; however, thedecisive question is whether staying theprocedure would cause any injustice. Severalfactors are considered, including the delayswhich are considered a feature of the EPOopposition and subsequent appealprocedures, and the means available to theparties for fighting their case.

In General Hospital Corporation’sEuropean Patent, a revocation action in theUK was running parallel to oppositionproceedings and infringement proceedings inother countries. A stay was granted by thePatent Court because of the injustice to thepatentee if the UK proceedings went ahead(the patentee having shown that it could notafford the costs of both proceedings, so beingplaced in the position of having to surrenderthe patent if no stay had been granted).

In Kimberly-Clark v Procter & Gamble, thejudge decided in a similar situation not to staythe infringement action, considering that thiswould write into the UK proceedings the delayswhich are a feature of EPO oppositions.

In France there is no provision obliging aFrench judge to stay the infringement actionin such a case. As a general trend, however,the French judge decides to stay theinfringement action and to wait for a finaldecision by the EPO with respect to “a fairadministration of justice” (TGI Paris – Bonzeland Schneider Europe AG v Carbo France –18th April 1991; TGI Paris – Pall Corporationv Flot, Cuno Europe and Cuno Inc – 16thApril 1989).

In some other cases the French judgehas not felt that it was necessary to wait forthe final decision by the EPO (TGI Paris –Henlopen Manufacturing Co Inc v Lab Payot,Sofadis, Geka France and Georg Karl BrushGmbH, 10th July 1991).

Decisions by the Boards of AppealThe BoA may hand down a final decision in a

Boards of Appeal


case or may send it back to the firstinstance department which originally issuedthe appealed decision.

Remittance to the first instance occurs,in particular, when a new piece of prior art iscited in the course of the appealproceedings, which the BoA decides to takeinto consideration; or because of asubstantial procedural error made by thefirst instance; or because of substantialamendments made by the appellant.

The first instance department to whichthe case is remitted is bound by the reasonsor findings that support the BoA’s decisionor that are essential to that decision. Thebinding effect is only for the case remitted tothe first instance, not for any other case andnot for any other instance. For example, if aBoA issues a decision cancelling a formerdecision of an examining division regardinginventive step, an opposition division is notbound by this.

There is, in principle, no binding effecton national procedures. For example,according to the 10th Civil Senate of theGerman Federal Court of Justice, commentsmade in the grounds for a decision in anEPO opposition or in a subsequent appealprocedure are considered as expert opinionswhich must be taken into account, no moreand no less.

Enlarged Board of AppealThe Enlarged BoA is not a third degree ofjurisdiction. Its job is to ensure uniformapplication of the law, or it decides or givesopinions when an important point of law arises.

According to Article 112 EPC, it isresponsible for: deciding points of lawreferred to it by BoA; or for giving opinionson points of law referred to it by thePresident of the EPO when two BoA havegiven different decisions on that question.

According to new Article 112a of EPC2000, the Enlarged BoA will also beresponsible for deciding on petitions forreview of decisions of the BoA. Suchpetitions may, in particular, be filed ongrounds such as a fundamental violation ofthe right to be heard or any fundamentalprocedural defect.


Boards of Appeal


A dangerous hobby? Feature

In the United States, it is quite common forapplicants to file one or more divisional orcontinuation applications for importanttechnological developments. To that end,patent attorneys sometimes try to draft newclaims in a still pending application that mayread on products already on the market fromcompetitors and file these claims in such adivisional or continuation application. Theparent application of the divisional orcontinuation application may itself be adivisional or continuation application.

The great advantage is, of course, thatone sees the competitor’s product and onecan seek the proper words from thedescription or drawings, and try to map anew claim on the existing product. Of course,also in the United States, care should betaken not to extend the subject matter of theapplication as originally filed. However, theUnited States Patent and Trademark Office(USPTO) is, in practice, rather flexible.

The European Patent Office allowsdivisional applications to be filed from apending patent application, although theconcept of continuation applications, wherebythe USPTO allows subject matter to beadded, is missing in Europe. But by filing oneor more divisional applications from adivisional application in a sequence, it seemsthat some European patent applicants areattempting to copy the United Statescontinuation application practice. However,adding subject matter is not allowed: theEuropean Patent Office (EPO) has alwaysbeen stricter in its requirements as toextension of subject matter than the USPTO.

In recent decisions of the Boards ofAppeal (BoA) of the EPO, very importantquestions of law as to divisional applicationshave been referred to the Enlarged Board ofAppeal (EBoA). This article discusses andexplains these questions. Moreover, someissues not addressed by the BoA’s willbe addressed.

Questions referred to EBoA indecision T39/03In decision T39/03, dated 26th August2005, BoA 3.4.2 decided to refer severalquestions of law to the EBoA and thesequestions are now pending as G1/05.Basically, the main question addressed byT39/03 is: “Is a divisional applicationcontaining added matter on the date of filinga valid or invalid application and can it becorrected during proceedings before the EPO,even if the parent is not pending anymore?”

BoA 3.4.2 had already dealt with someother issues relating to divisionalapplications in earlier decisions T720/02and T797/02. These were issued the sameday and have largely the same content.

In T720/02, the BoA was confrontedwith the following situation. The decisionunder appeal related to a patent applicationthat itself was a divisional application froman earlier application (the parentapplication), where the parent applicationitself was in turn a divisional applicationfrom a still earlier application (thegrandparent application). The examiningdivision examining the application haddecided that the application contained anextension of subject matter as the mainclaim was missing a feature that had beenpresented consistently as being essential.

With reference to earlier decision

Filing divisionalapplications in Europe:a dangerous hobby?

By Hans Hutter, NederlandschOctrooibureau, The Hague


The EPO Boards of Appeal have recently considered a series of importantissues relating to divisional applications

T1158/01, this BoA concluded that the EPCdoes allow the filing of a divisionalapplication from an earlier application thatitself is a divisional application. However, theissue discussed at length in T720/02 wasthe time limit for filing a divisional applicationfrom another divisional application. The BoAreferred to Rule 25(1) EPC which reads asfollows: “The applicant may file a divisionalapplication relating to any pending earlierEuropean patent application.”

Afraid of the possibility of filing an almostendless chain of divisional applications,something that would leave the public in greatuncertainty as to which potential rights areoutstanding, the BoA observed that Rule25(1) establishes the time period in which allpossible divisional applications should be filed(ie, all possible divisional applications from aparent application can be filed only while theparent application is pending). In the Board’sview, it should be evident to the public whichother inventions will be claimed by theapplicant of the parent application before it isgranted. Any other solution would bedetrimental to the public interest: “By themere filing of recurrent cascading divisionalapplications, to leave the public completelyuncertain during most of the life of a patentas to how much of the subject-matter of theoriginal patent application might still beclaimed. This would indeed pave the way forpotential misuse by applicants of thepossibility afforded by the EPC to filedivisional applications.”

The BoA even expressly denounced thecurrent US system in this respect: “Theobviously unacceptable consequences of theposition advocated by the appellant, which ineffect would result in the setting up of asystem of ‘continuation applications’ of thetype explicitly provided for in the US patentlaw, but for which there is no basis in the[European Patent] Convention.”

Therefore, the BoA decided that, in orderfor a divisional application of which theparent application is itself a divisionalapplication to meet the requirements ofArticle 76 and Rule 25(1) EPC, it must bedirected to an object that is already claimedin the parent application. In other words, afirst divisional must contain in its claims allsubject matter that is eventually to bedivided from an application.

Interestingly enough, the BoA expresslystated that this view was so obvious that itconcerned a referral to the EBoA asunnecessary.

In T39/03, the same BoA supported itsearlier views as expressed in T720/02.

However, the essential issue here wasrelated to another legal problem of divisionalapplications. In T39/03, the decision underappeal related not to a divisional from adivisional application, but to a first generationdivisional application. Again, the problem wasthat the examining division was of the opinionthat a feature that was presented in theearlier application as being essential wasmissing from the divisional claims such thatthey contained added subject matter. TheBoA supported this point of view.

However, the BoA raised the issue that itmay well be that this cannot be correctedanymore in proceedings before the EPO sinceArticle 76(1) requires: “A European divisionalapplication must be filed directly with theEuropean Patent Office in Munich or itsbranch at The Hague. It may be filed only inrespect of subject-matter which does notextend beyond the content of the earlierapplication as filed; in so far as this provisionis complied with, the divisional applicationshall be deemed to have been filed on thedate of filing of the earlier application andshall have the benefit of any right to priority.”

The BoA considered Article 76(1) toimply that, if the requirements of Article76(1) are not met, the divisional applicationcannot be afforded a filing date and is,therefore, invalid.

In its decision, the BoA devoted muchattention to the consequences of this line ofreasoning to chains of divisional applications:if in a chain of divisional applications anintermediate application turns out to beinvalid due to being filed inclusive of addedsubject matter, all the divisional applicationsbeing filed after this intermediate applicationand being (in)directly dependent upon thisintermediate application should beconsidered “invalid” too.

Understanding the great legalconsequences of this reasoning for manyapplicants and patent proprietors, the BoAdecided to refer the following questions tothe EBoA:1. Can a divisional application which does

not meet the requirements of Article76(1) EPC because, at its actual filingdate, it extends beyond the content ofthe earlier application, be amended laterin order to make it a valid divisionalapplication?

2. If the answer to question (1) is yes, isthis still possible when the earlierapplication is no longer pending?

3. If the answer to question (2) is yes, arethere any further limitations of substanceto this possibility beyond those imposed


A dangerous hobby?


by Articles 76(1) and 123(2) EPC? Canthe corrected divisional application inparticular be directed to aspects of theearlier application not encompassed bythose to which the divisional as filed hadbeen directed?

Note that the last portion of question 3(“Can the corrected divisional application inparticular be directed to aspects of the earlierapplication not encompassed by those towhich the divisional as filed had beendirected?”) seems a little strange. If it asksfor an express denial of the option to changethe original subject matter of the divisionalapplication to subject matter not forming unityof invention with this original subject matter,there seems to be no way of getting apositive answer. There is no way claims in apending application in Europe can besubstituted by a set of claims that aredirected at a different invention. Maybe thisportion of question 3 is an attempt tosmuggle a question relating to chains ofdivisional applications into the referral, in thesense that it requests the EBoA to give anopinion about whether a first divisional shouldalready claim all subject matter that shouldbe divided out of the parent application (aquestion that could not expressly be askedsince the case at hand was not about adivisional from a divisional application).

Questions referred to EBoA indecision T1409/05In T1409/05, BoA 3.4.03 found severalissues where it had great difficulty insupporting the point of view expressed inearlier decisions such as T720/02 andT39/03.

T1409/05 dealt with a situation where adivisional was filed from a parent applicationthat itself was also a divisional application.So, it could officially raise all issues dealtwith by BoA 3.4.2 both in T720/02 and inT39/03. And so it did.

For deciding whether a divisionalapplication contains added subject matterwhich is not allowed by Article 76(1),T1409/05 refers to still earlier case law. Thisearlier case law has consistently shown overthe years that “content of the application” asreferred to in Article 76(1) is to beinterpreted as “the total technical informationcontent of the disclosure”, including claimsand description. So, its conclusion is thatArticle 76(1) does not provide any basis forthe point of view that a divisional applicationof a divisional application can be directedonly to subject matter already claimed in the

parent application. Any support, even in thedescription or drawings, in any earlierapplication is enough.

Moreover, it concluded that publicuncertainty as to when subject matter isdivided from a pending application (that itselfmay be a divisional in a chain of divisionalapplications), possibly resulting in misuse orunfairness, is no legal concept. It evenobserved that uncertainty is inherent to thepatent system where applications remainsecret for a period of 18 months after thefirst priority date!

As to whether a divisional application canbe declared invalid due to the applicationcontaining added subject matter in view ofits parent, as defended in T39/03, this BoAhas no doubts whatsoever: “There is nobasis in the EPC for the concept of an“invalid” application and it does not seemappropriate to draw legal consequences fromthe perceived properties of non-existent legalcategories. In fact, the terms ‘valid’ or‘invalid’ do not occur in the EPC.”

So, the conclusion of this BoA is thatevery pending application should have beenaccorded a filing date. In its view, therequirements of Article 76(1) are mererequirements for grant (ie, the legalconsequence of not meeting therequirements of Article 76(1) is that theapplication shall not be allowed to proceedto grant). The requirements of Article 76(1)are, thus, similar to requirements such asnovelty and inventive step.

So, according to this BoA, a divisionalapplication cannot become simply invaliddue to one of its predecessors in a chain ofdivisional applications being invalid for beingfiled with claims that contained addedmatter relative to one or more earlierapplications in the chain.

In fact, the legal remedy to alluncertainties as referred to by these earlierBoA decisions seems to be straightforwardfor this BoA: just check whether any subjectmatter is “smuggled in” in a divisionalapplication by comparing its content with allearlier applications in the chain as filed: “Onthis board’s interpretation it would sufficefor compliance with Article 76(1) EPC thatwhat is disclosed in the application bedirectly, unambiguously and separatelyderivable from what is disclosed in each ofthe preceding applications as filed.”

Even though this BoA based itsinterpretation on well-established case law, itrecognised the conflicts with the reasonings ofseveral recent other decisions, and it referredthe following questions of law to the EboA:

A dangerous hobby?


1. In the case of a sequence of applicationsconsisting of a root (originating)application followed by a divisionalapplications, each divided from itspredecessor, is it a necessary andsufficient condition for a divisionalapplication of that sequence to complywith Article 76(1) EPC, second sentence,that anything disclosed in that divisionalapplication be directly, unambiguouslyand separately derivable from what isdisclosed in each of the precedingapplications as filed?

2. If the above condition is not sufficient,does said sentence impose theadditional requirementa. that the subject-matter of the claimsof said divisional be nested within thesubject-matter of the claims of itspredecessors? orb. that all the divisional predecessorsof said divisional comply with Article76(1) EPC?

Question referred to EBoA indecision T1040/04In the last decision to be discussed here,T1040/04, BoA 3.2.03 had to decide abouta case where it had found that a patentopposed in opposition proceedings containedextended subject matter in its description(so, not in its claims). This BoA recognisedthat this situation could result in similarquestions as those referred to the EBoA inT39/03. However, the BoA also recognisedthat in view of T39/03, the EBoA would mostprobably not deal with granted patents inopposition proceedings. Therefore, in orderto avoid the risk of obtaining a decision ofthe EBoA that did not deal with thissituation, in T1040/04 BoA decided to referthe following question to the EBoA: “Can apatent which has been granted on adivisional application which did not meet therequirements of Article 76(1) EPC becauseat its actual filing it extended beyond thecontent of the earlier application, beamended during opposition proceedings inorder to overcome the ground of oppositionunder Article 100(c) EPC and thereby fulfilsaid requirements?”

Still open issues not referred to EBoAIn the writer’s view, in T1409/05, the BoAhas missed at least two issues that couldhave been referred to the EBoA:• As indicated above, this BoA concluded:

“On this board’s interpretation it wouldsuffice for compliance with Article 76(1)EPC that what is disclosed in the

application be directly, unambiguouslyand separately derivable from what isdisclosed in each of the precedingapplications as filed.” However, this isnot exactly the same as what is requiredby Article 76(1), which says: “It may befiled only in respect of subject-matterwhich does not extend beyond thecontent of the earlier application asfiled.” So, Article 76(1) seems to allow atest of extension of subject matterrelative only to the direct parentapplication and not to each earlierapplication. Of course, a test relative toall earlier applications is much betterfrom a legal point of view (no one cansmuggle subject matter into thedescription of a divisional and then laterclaim it in a divisional from thatdivisional anymore), but it would haveclarified things if this issue had beenreferred to the EBoA too.

• In T1409/05, the BoA states that theEPC does not define valid or invalidpatent applications. Thus T1409/05concludes that the requirement of Article76(1) that the divisional “may be filedonly in respect of subject-matter whichdoes not extend beyond the content ofthe earlier application as filed” cannotresult in invalid patent applications. Thus,the BoA concludes that the filing date isthe filing date of the parent application.

However, Article 76(1) seems tosupport another possible interpretation asit also states: “In so far as this provisionis complied with, the divisional applicationshall be deemed to have been filed on thedate of filing of the earlier application andshall have the benefit of any right topriority.” So, in the writer’s view, notmeeting the requirement of avoidingextension of subject matter can alsoresult in the observation that the claim ofthe application of being a divisionalapplication is not granted. Then, thesanction would be that the effective filingdate is not the filing date of the parentapplication but the actual filing date withthe EPO. Of course, if correction isallowed during prosecution, this can becorrected (like an improper claim ofpriority due to extension of subject mattercan be corrected during prosecution).

Of course, this interpretation wouldresult in other problems:1. the parent would become prior art to

the application where the parent mayprovide serious inventive stepproblems;


A dangerous hobby?


2. moreover, this interpretation wouldintroduce similar problems asencountered in the analysis made inT720/02: a divisional applicationfrom an earlier divisional applicationcould all of a sudden lose itseffective date if the earlier divisionalapplication turns out to containadded matter. This problem can stillbe present after all divisionalapplications in a chain ofapplications have been granted,resulting in great legal uncertainty forpatent proprietors.

Thus, bearing all these uncertainties inmind and being unsure about what the EBoAis going to decide, the writer’s advice wouldbe the following: if one is consideringprotecting more than one other inventionthan the one already claimed in a patentapplication, either file a separate divisionalapplication per separate invention within thetime limit prescribed by Rule 25(1) or fileone divisional application with separate setsof independent claims per invention withinthat time limit.

A dangerous hobby?


For reasons inspired by the cost andcomplication of patent litigation, manypatentees have traditionally sought ways toavail themselves of patent protection throughcross-border injunctions covering as manycountries of the European Union as possible.

In pursuing such endeavours, however,the patentee is restricted by the rule that adefendant established in the European Unionshould normally be sued before the courts ofits country of domicile; this under the generalprinciples on jurisdiction established by theBrussels Convention (now superseded by ECRegulation 44/2001) and the LuganoConvention. Only under certain exceptions cana defendant be sued in another member stateof the European Union or the EuropeanEconomic Area. This particularly raises anissue where the allegedly infringing productsare marketed in various European countriesby separate legal entities.

Furthermore, as a European patentconsists only of a bundle of national patentssubject to their respective national rules onenforcement and infringement, there hasalways been a high degree of uncertainty as towhether and how a national court could judgeon the infringement or absence thereof offoreign (parallel) patents. In view of theconnection existing between the variousnational claims, the German, Belgian and, inparticular, Dutch courts have shown a certainwillingness to assert jurisdiction vis-à-visdefendants established in various EuropeanUnion member states. Applying the so-calledspider in the web theory, the Dutch courtshave considered themselves competent to

judge on patent infringements committed bydefendant companies belonging to the samegroup or otherwise cooperating in the infringingactivities pursuant to a joint plan, when theentity responsible for the implementationthereof is domiciled either in the Netherlandsor outside Europe. Other national courts, suchas the English courts, have been much morereluctant to grant such pan-European relief.

Conversely, potential infringers havesought ways to prevent patentees fromasserting their rights in certain countries bybringing actions for declaration of non-infringement, or so-called torpedo actions, inother countries – such as Belgium or Italy –where courts are allegedly less diligent infurthering patent cases. In doing this, theyseek to block the infringement proceedings inthe former countries through the applicationof the rules of lis pendens available in theEuropean Union. Although such attempts arebased on a doubtful assumption – at least asfar as the speed of Belgian proceedings isconcerned – and have consistently beenrejected (by the Belgian courts, for example),the strategy has to some extent beeneffective. This is particularly the case inGermany, whose courts have traditionallyacknowledged the suspensive effect of non-infringement proceedings in other Europeancountries relating to the same patent andsubject matter.

All this may now be changing, however.Following the long-awaited decisions of theEuropean Court of Justice (ECJ) in GAT v LuK(case C-4/03) and Roche v Primus (case C-539/03) rendered on 13th July 2006,patentees seeking pan-European relief arelikely to find it much harder to get. Thedecisions highlight the inadequacy of thepresent European rules on international

Spiders and torpedoes

A tale of spiders andtorpedoes


Feature

By Christophe Ronse, ALTIUS Law Firm,Brussels


The ECJ’s recent decisions in GAT v LuK and Roche v Primus will make lifemuch harder for patentees seeking to enforce their rights in cases involvingmore than one European country

jurisdiction when it comes to the enforcementof European patents.

Invalidity as a ground for opposingjurisdictionGAT v LuK concerned a dispute between twoGerman companies active in the automotiveindustry. The plaintiff sought a declaratoryjudgment before the Düsseldorf Landgerichtthat it had not infringed the defendant’sFrench patents, which it alleged to be invalid.The lower court accepted jurisdiction, but onappeal the Oberlandesgericht decided toseek a preliminary ruling from the ECJ on theinterpretation of Article 16(4) of the BrusselsConvention (presently Article 22(4) ofRegulation 44/2001). This provides for theexclusive jurisdiction of the courts of thecountry where a patent has been issued inproceedings concerned with the validity ofsuch patents.

In line with the opinion of the Advocate-General, the ECJ gave a broad interpretationto this rule and stated that it applied to allproceedings relating to the registration orvalidity of a patent, irrespective of whetherthe issue is raised by way of an action or aplea in objection. In short, national courts ofmember states other than in which thepatent has been issued are precluded fromassessing the validity of the patent.

Needless to say, even if this limitationdoes not apply to the infringement claim perse, the practical downside of this ruling willprobably be that a defendant in pan-Europeanpatent proceedings will only have to raise adefence based on the alleged invalidity of theforeign patent(s) at stake to frustrate theefforts of the patentee to obtain a cross-border injunction. Indeed, a national court willbe reluctant to allocate a claim oninfringement in the presence of a seriousinvalidity defence and will undoubtedly preferto stay the proceedings until this matter hasbeen decided upon by the national courthaving jurisdiction in the matter.

One can thus only conclude that GAT vLuK has created a new type of torpedo foralleged patent infringers confronted by cross-border patent claims, provided that theycan invoke a validity defence which hassufficient merit.

No more multiple defendantsEven if no invalidity issue is at stake, the rulingof the Court of Justice in the Roche v Primuscase is likely to render any centralisation ofpatent infringement proceedings impossible inmany other instances.

In this case, two US patentees had

brought infringement proceedings in theNetherlands against the local Rochesubsidiary and various other affiliatesestablished in other member states of theEuropean Union. As the defendants objectedto the territorial jurisdiction of the Dutchcourts vis-à-vis the defendants established inother member states of the European Union,the Dutch Hoge Raad decided to seek apreliminary ruling from the European Court ofJustice on the interpretation of Article 6(1) ofthe Brussels Convention (presently Article6(1) of Regulation 44/2001). This providesthat a defendant established in anothermember state of the European Union mayalso be sued, where he is one of a number ofdefendants, in the courts of the place whereany one of them is domiciled. The provisionhad previously been interpreted by the ECJ asapplying only in those cases where the claimsare so closely connected that it is expedientto hear and determine them together to avoidthe risk of irreconcilable judgments resultingfrom separate proceedings. Thisinterpretation has since been espoused byRegulation 44/2001.

In its ruling, the ECJ held that therequirement for a connection is not met in asituation where patent infringementproceedings based on the same Europeanpatent are brought in different EuropeanUnion member states, involving a number ofdefendants domiciled in those states, inrespect of acts committed in their territory.This is so even if those defendants belong tothe same group of companies and may haveacted in an identical or similar manner inaccordance with a common policy elaboratedby one of them. According to the Court, onlyan identical legal and factual situation cangive rise to irreconcilable decisions and itdoes not suffice that there could be adivergence in the outcome of the dispute.

With regard to pan-European patentinfringement, the Court considered that thesame situation of fact cannot be inferred,since defendants are different and thealleged infringements are not the same.Neither will the same legal situation arise, asthe infringement of a European patent mustbe assessed in the light of the national lawof each country for which it has beengranted. The fact that European patents aregoverned by common rules (particularly whenit comes to defining their scope of protection)and that decisions by the various nationalcourts should presumably present a certaindegree of harmony was thus held insufficientby the Court to consider that a sufficientconnection was present in order to allow



foreign defendants to be sued in anothermember state of the European Union.

The end of cross-border injunctions?Even if their wording is not always crystalclear, the joint reading of the abovedecisions of the ECJ are likely to mean thatcross-border enforcement of patent rights inproceedings on the merits will become muchmore arduous, if not practically impossible,under the present Community rules onjurisdiction. In order to avoid any defencebased on the lack of jurisdiction, thepatentee will be obliged to sue potentialinfringers in each separate country wherethey are established and/or can be provento have committed infringing acts.

Of course, it will remain possible to claimcross-border relief against a single party whichhas committed alleged infringements invarious European states before the courts ofthe latter’s home state, at least provided thisparty does not challenge the validity of theforeign patent. Depending upon the provisionsof national judicial law, such proceedings couldpossibly also be extended to include any non-European defendants who cannot availthemselves of the provisions of EC Regulation44/2001 or the Lugano Convention. However,it is doubtful that such a concourse ofcircumstances will frequently arise.

More importantly, patentees might takesome comfort from the fact that the ECJ’sjurisprudence should not affect thepatentee’s ability to seek a cross-borderinjunction on a preliminary basis inapplication of Article 31 of Regulation44/2001, respectively Article 24 of theLugano Convention, which needs to beinterpreted separately from the otherprovisions of these legal instruments. Inorder to prevail in summary proceedings andobtain provisional measures – according tothe present jurisprudence of the ECJ – thepatentee must demonstrate the existence ofa real connecting link between the subjectmatter of the measures sought and theterritorial jurisdiction of the country of thecourt before which those measures aresought. This threshold is undoubtedly muchlower than that imposed by Roche v Primus(identity of the factual and legal situation).Depending on the facts of the case, it willmost probably allow patentees to obtaincross-border preliminary relief in certaincountries against alleged infringersestablished in other European countries inrespect of infringements committed abroad.It remains to be seen, however, whether thepossibility of preliminary relief will be of any

avail to the patentee, as summaryproceedings need to be followed up byproceedings on the merits.

The present situation thus remains quiteunsatisfactory and severely restrains apatentee’s opportunities to seek adequatecross-border relief at an acceptable costwithin a reasonable period of time.Undoubtedly, this will further stoke thedebate relating to the European PatentLitigation Agreement (EPLA) or theintroduction of the Community patent,something that the ECJ may have intended.This process is, however, expected to takeseveral years and the outcome remainsuncertain. In the meantime, cross-borderpatent litigation will remain in turmoil, withonly a limited number of options for cross-border litigation remaining available.




Patent litigation in Europe Feature

In the absence of any European legislationproviding specifically for pan-European patentlitigation, patent owners have had to thinklaterally about how to enforce their Europeanpatents. Until recently, the Dutch courtsused to interpret the Brussels Convention onJurisdiction and the Enforcement ofJudgments in Civil and Commercial Mattersas permitting them to grant injunctions inevery EU member state in which a patenteeheld a designation of a European patent, aslong as one of the related infringingcompanies was based in the Netherlands.However, the European Court of Justice (ECJ)ruled in GAT v LuK that cases against agroup of companies based in different EUmember states, each infringing equivalentnational designations of European patents,cannot be joined in one action in one countryand, in Roche v Primus, that courts in onejurisdiction may not entertain proceedings inwhich the validity of patents registered inother jurisdictions is raised.

Forum shoppingThe ECJ’s decision means that until theCommunity patent, the EPLA or the LondonAgreement becomes a reality, there are stillmultiple jurisdictions with differentprocedures and characteristics, andcompanies need to choose carefully thejurisdiction in which they are most likely toachieve their aim – be it to enforce patentrights or to defend against suchenforcement. Clearly, if a patent is held onlyin one country, or if an infringer is operatingonly in one country, then there will be no

need to consider in which forum to litigate.However, it is more common that a patenteewill hold multiple designations of a Europeanpatent and an alleged infringer will beoperating in several countries at the sametime, and this means that both parties willhave a choice of jurisdiction in which toresolve any dispute.

Generally speaking, following the recentclarification of the law in GAT v LuK, a patentowner will have to bring separateproceedings in each country where its rightsare infringed. It is tactically important todecide where best to bring the proceedingsand in what order, because early decisions inone country may set a precedent for laterproceedings, particularly if the earlierdecision was from a specialist court.

The three countries often regarded ashaving the most developed patent litigationsystems in Europe are the Netherlands,Germany and the UK. Each of these threejurisdictions has a specialised patent courtand a range of procedures available to boththe patentee and the alleged infringerincluding injunctions, revocation actions andinfringement actions, and each will generallyproduce a decision in infringementproceedings at first instance within about ayear (validity proceedings in Germany will takeup to two years). However, the judgments arereached by quite different processes.

The most obvious difference between thecommon law system in the UK and the civillaw systems on the continent is thatdisclosure is available to parties in the UK.Clearly, disclosure of documents relatingeither to an allegedly infringing article or tothe making of the alleged invention providesuseful ammunition to the receiving party,which may (subject to confidentiality and

Strategic issuesconcerning patentlitigation in Europe

By Tom Carver and Nigel Stoate,Taylor Wessing, London


Cross-border patent litigation remains as complex as ever. However,there is some hope that there will be a simpler system in future

court rules) be used in other jurisdictions. The adversarial nature of the UK system

is reflected in the preparation of evidence. Inthe Netherlands and Germany the courtappoints an expert to prepare anunexamined report (parties may appointtheir own experts but these are generallyconsidered not to be independent and theirviews are therefore not given much weight),whereas in the UK both parties appoint theirown expert and both parties have theopportunity to cross-examine the otherparty's expert. This enables a very thoroughexamination of the merits of the case to beconducted by the court.

A further difference between thejurisdictions is the rigour with whichexperimental evidence is gathered. Forexample, experimental evidence can besubmitted in Germany and the Netherlands,but there is no requirement in thesejurisdictions for the experiment to bewitnessed by the opponent and therefore theresults cannot be given the same weight asin the UK, where experiments which arerelied on must be repeated in the presenceof representatives of the other side.Additionally, following a recent change to thepractice in the UK, the protocol and resultsof any work-up experiments preceding theactual witnessed experiments must also bedisclosed to the other side. This procedureensures that a party cannot practise anexperiment in private and submit only oneresult to the court: all the practice resultsneed to be disclosed.

Of course, one consequence of thethorough analysis of a patent actionconducted by the UK courts is that it will costmore than a case in, say, the Netherlands orGermany. However, this is balanced by thefact that the winning party will normallyrecover a large proportion of its costs in theUK, but not in Germany or the Netherlands.In Germany, the winning party will recoversome of its costs on a fee scale, but thisrarely compensates it for the costs actuallyincurred. The position in the Netherlands issimilar to Germany in that only some fixedcosts are recoverable, although it remains tobe seen whether this will change since ECDirective 2004/84, which seeks toharmonise the position across Europe, cameinto force in April 2006.

Legal aspectsIn theory, the scope of every Europeanpatent is interpreted according to theProtocol on the Interpretation of Article 69 ofthe European Patent Convention. However,

each national court does not necessarilyinterpret the Protocol, and therefore patents,in the same way. In addition, the quirks ofeach national system make harmonisedinterpretation very difficult.

In Germany, courts use a doctrine ofequivalents to construe claims and theyhave a bifurcated system, hearing trials ofinfringement and validity in separate courts.The combination of an absence of squeezearguments (caused by the bifurcated system)and a doctrine of equivalents means that itis sometimes easier to obtain a judgment ofinfringement in Germany than it is in the UK,where infringement and validity are triedtogether, thus enabling so-calledvalidity/infringement squeeze arguments,and where there is no doctrine ofequivalents. The Netherlands sits neatly inthe middle using a doctrine of equivalentsbut hearing issues of validity andinfringement together.

Jurisdictions also vary in terms of theprocedures for interim injunctions. In the UKa patent is presumed valid and an injunctioncan be granted within a matter of days basedon technical evidence that there is anarguable case that the patent is infringed,and commercial evidence that the balance ofconvenience is in favour of an injunction. Thiscontrasts with the Netherlands, where thereis a full preliminary review of the merits ofthe case based on expert affidavits andwitness statements, and the time from writ tohearing is likely to be about six weeks with afurther two weeks until judgment. Likewise, inGermany an interim injunction hearing isalmost a mini-trial, which will consider thestrength of the patent and the likelihood ofinfringement as well as the commercialarguments, usually taking between two andfour months to obtain a decision.

As for the other jurisdictions in Europe,they all have patent litigation conducted incourts ranging from the very experienced tothe comparatively untested. While by nomeans binding, an earlier judgment from oneof the more experienced patent countries islikely to be persuasive.

EPO proceedingsThere is one further very important‘jurisdiction’ which has not been mentionedand that is the European Patent Office(EPO). The national designations of aEuropean patent are all the result of a singleapplication to the EPO. The application isexamined by the EPO and, if deemed to fulfilthe criteria, is granted as a bundle ofnational patents. Once a patent is granted by


Patent litigation in Europe


the EPO any third party has nine months inwhich to register an Opposition and attemptto have the patent revoked. Oppositions canlast many years but culminate in what isusually a one-day hearing at which the patentcan be maintained, amended or revoked onthe basis of written submissions and an oralhearing, if requested. If the patent isrevoked by the EPO, it is revoked ab initioand every national designation is revokedwith it. The same applies if the result of theOpposition is an amendment.

EPO proceedings affect nationalproceedings in different ways. If there is anEPO Opposition on foot against a patent thenin Germany it is not possible to commencenational revocation proceedings. So thepatentee may sue an alleged infringer forinfringement and the infringer cannot retaliatewith a revocation (at least not in Germany:retaliatory proceedings in the UK, theNetherlands or any other jurisdiction are,however, perfectly possible). At the oppositeend of the spectrum the UK courts areunlikely to grant a stay of revocation orinfringement proceedings on the basis thatthere is an Opposition in the EPO (but notethat it is possible for a patentee to win in theUK and then for the EPO to revoke a patent,and in such circumstances the infringer willstill be required to pay any damages alreadygranted by the UK court). As usual, theNetherlands sits in the middle and will granta stay of national revocation proceedings onthe basis of an EPO Opposition if certainrequirements are fulfilled.

RIM v InProThe recent judgments in the United Kingdomand Germany in the patent litigation inResearch in Motion v InPro Licensing SARLhave highlighted the differences between thejurisdictions and demonstrated the lengthsto which parties will forum shop to stealmaximum tactical advantage.

Early in 2005 InPro commenced actionagainst T-Mobile in the District Court inDüsseldorf alleging that T-Mobile wasinfringing its European patent by offering andimplementing the BlackBerry system inGermany. RIM intervened in the proceedingsin support of T-Mobile, its customer, andretaliated in the usual way by commencingrevocation proceedings against the patent.However, RIM was faced with the seriousproblem that the infringement trial seemedcertain to be decided several months inadvance of the validity trial, thus leaving agap of several months during which T-Mobilemight be injuncted and not be able to

provide the BlackBerry service. Clearly, this was not satisfactory and RIM

therefore brought proceedings in the UK torevoke the UK designation of the samepatent with the aim of obtaining a favourableresult in the UK which might be useful inconvincing the Düsseldorf court that theinfringement proceedings in Germany shouldbe stayed until the validity proceedings hadbeen heard. Infringement hearings inGermany are stayed on the basis of pendingvalidity actions only if there is strongevidence that the revocation is likely tosucceed. In the event, the UK action was notnecessary because the Federal Patent Courtof Germany managed to hear the case ingood time and revoked the patent in advanceof the infringement hearing.

Future developments in Europeanpatent litigationIt may be that forum shopping will soon bereduced in importance. There have been anumber of developments (possibly promptedby the ECJ's decision in GAT v LuK) whichmean that the pipedreams that have beenthe European Patent Litigation Agreement(EPLA), the Community patent and theLondon Agreement may one day be realised.

London AgreementThe London Agreement aims to create acost-effective post-grant translation regimefor European patents. The parties to theagreement waive the requirement fortranslations of European patents to be filedin their national language, meaning that allEuropean patents will be translated into onlya few languages.

The chief remaining obstacle to theLondon Agreement coming into force hasbeen ratification by France, but France’sConstitutional Council recently ruled that theAgreement complies with the Frenchconstitution and this enables parliament andthe president to proceed with the ratificationprocess. If/when it comes into force itshould significantly reduce the cost ofobtaining European patents, but not the costof litigating them.

European Patent Litigation Agreement (EPLA)It is hoped that the EPLA will help reduce thecost of litigation. The European Commissionis due to make a formal proposal on patentlitigation, centred around the EPLA, beforethe end of the year. The EPLA is a non-EUtreaty which would establish a EuropeanPatent Judiciary (EPJ) to create and run aEuropean Patent Court which would hear



litigation concerning infringement and validityof patents granted by the EPO. This willenable European patents to be litigated on apan-European basis in one court rather thanthe current system of litigating in eachcountry where the patent is in dispute, whichshould significantly reduce litigation costsgiven that there will be only one trial.

Charles McCreevy, EuropeanCommissioner for Internal Market andServices, broadly supported the EPLA in aspeech he gave on 8th September. However,if the EPLA conflicts with the acquiscommunautaire of the EU then memberstates would not be free to sign up to theEPLA independently, being reliant on the EUto accede to the agreement on their behalf.The potential conflict is being examined bythe European Commission's legal departmentand in the meantime the EuropeanParliament voted on 12 October to postponethe EU's accession so that 'significantimprovements' could be made to it in termsof democratic control, judicial independenceand litigation costs. Clearly, if there is noconflict with the acquis communautaire thenmember states would be free to sign up tothe EPLA independently.

Community patentThe agenda behind the EU’s opposition to theEPLA is that it has its own project in theCommunity patent. The Community patent willbe, as the name implies, an EU patentsystem created by directive or regulation andregulated and enforced by the EuropeanCommission. It was first suggested as longago as the 1970s but politics, in particularthe politics of languages, has alwaysprevented it becoming a reality. This scenariois unlikely to change as there are importantissues to resolve which stem from thecommitment of the EU to operate in eachlanguage of the Community.

The EU ideal would be to translate everyCommunity patent into every language, butgiven that there are 20 official languages thecost of this would be prohibitive. Accordingly,it has been suggested that Communitypatents should be published in only a fewlanguages (as is the proposal for Europeanpatents under the London Agreement).However, this resolves neither what languagea patent should be litigated in, nor the relativeweight given to the meaning of translations ofthe patent claims as opposed to claims intheir original language. In addition, if aCommunity patent were only translated into,say, three languages, then is it right thatpeople can be affected by a third-party right

which they cannot understand? Obviously, theissue of language also applies to the EPLAbut can be sidestepped more easily becausethe EPLA is not required to operate in thelanguage of each EU member state.

ConclusionAs you can see, it has been an interestingyear in patent litigation, what with pan-European injunctions being ruled out andlitigants becoming ever more sophisticatedabout forum shopping. It would be good ifthese jolts to the system encouraged theparties behind the various treaties tofinalise their arrangements and create anaccessible and effective system of pan-European patent litigation.




Patent enforcement in Norway Feature

reached, a preliminary injunction or regularinfringement suit may be filed.

A court in a patent suit normally has oneprofessional judge and two appointed layjudges, the lay judges being familiar withpatent rights and in most cases also withthe technical art of the patent at issue.However, lay judges are not mandatory.

An appointed Norwegian lawyer (attorneyat law) normally represents the patentee.Further, the patentee or other representativeof the patentee, as well as any opposingparty or its representative, may also bepresent in the courtroom. As a lawyer is notexpected to be an expert on the invention inquestion, the patent attorney who processedthe patent application will normally assist thelawyer prior to and during court proceedings.Further, the lawyer of the opposing party maybe assisted by a patent attorney.

The role of the Oslo District CourtInvalidation suits (which, in many cases,defendants file as a countermeasure) mustbe dealt with at the Oslo District Court. Boththe lawyer representing the defendant andthe lawyer representing the plaintiff cross-examine witnesses, as do the professionaljudge and any appointed lay judges.Preliminary proceedings are based onestablished facts, such as proof ofinfringement or harmful prior art. Oral andwritten evidence from experts is normal.

If the defendant, through a separate suitfor invalidation, counteracts a suit forclaimed infringement, the invalidation issuewill be dealt with first. If the infringementsuit has been brought before any court otherthan the Oslo District Court, both suits arenormally then moved to Oslo in order to savetime and expenses. A precondition for

Patent enforcementin Norway

By Jens Fredrik C Langfeldt, Zacco Norway AS, Oslo


Norway has to be factored into any pan-Scandinavian patenting strategy,although the country will probably not become a member of the EuropeanPatent Convention until the end of 2007

Following two referendums, Norway is stillnot a member of the European Union andmembership is currently not on the agenda.Although the Norwegian Patent Act has to alarge extent been harmonised with theEuropean Patent Convention (EPC), Norwayhas still not joined the EPC. This has overthe years largely been due to thecontroversial issue of patent protection forbiotechnology inventions, a bar no longerpresent. The government decided in early2006 that Norway should join the EPC by nolater than the end of 2007, and, after ahearing in 2006, Parliament is likely todecide upon the government proposal beforethe end of 2006 or very early in 2007.

In order to obtain patent protection inNorway, national filing through Convention ornon-Convention application or via the PCT istherefore necessary at present. Designationof Norway via the EPC/European patent isnot yet possible.

With its stable and strong economy, widevariety of industries, oil and gas installations,and hydro-electric power, Norway has provedto be a country in which foreign companieswish to obtain patent protection.Approximately 5,000 to 5,500 patentapplications of foreign origin are filed eachyear, most of them through the PCT system.

Compared with countries belonging tothe EPC, Norway is not all that differentwhen it comes to enforcement of patentrights. Notably, marking on products orbrochures is not mandatory. Normally, aninfringer is initially warned through a warningletter and if an amicable settlement is not

requesting consolidation of courtproceedings is normally that the plaintiff orthe defendant is the same person or legalentity in both cases. Evidence andarguments in writing must be provided at thetime a petition for a suit is filed, althoughfurther documentation may be filed up to thepoint at which oral proceedings take place.The opposing party has a right to considerthe evidence before the oral proceedings. Inthe oral proceedings, witnesses may presentevidence in support of either claim.

Pre-trial discovery is permitted, providedit can be carried out in a legal manner. Acommon procedure is to let the plaintiff anddefendant agree on a neutral person orentity that will carry out the discoveryoperation. The alternative is to obtain acourt order for discovery prior to the mainoral proceedings.

Doctrine of equivalents appliedCourts generally refrain from judging thewording of claims in a restrictive manner.However, if a patent states that the claimedsubject matter is technically equivalent tosome other solution, and this other solutionis proved to be prior art, then the validity ofthe patent may be in jeopardy. Furthermore,if the patentee during prosecution of apatent application indicates in writing to thePatent Office how the novelty and inventivestep of the invention are to be understood,such statement cannot later be reversed incourt, in particular if it limits the scope ofthe invention as claimed. Thus, if claims arenarrowed during the prosecution in order tolet a patent issue, the patentee cannot laterclaim a broader interpretation of the grantedclaims. The basis for claiming equivalenceor alternatives is normally found in thepatent specification, and if the patentee hasnot suggested alternatives or equivalents,the court may rely entirely on thespecification and drawings when judging thescope of the claims. Consideration must begiven to what the patentee in an objectivesense intended to protect and argumentsare made in that respect.

Some types of patent, for example thoserelating to biotech, may be harder to enforcein litigation because they often requireexpert witnesses and also expert lay judges,as the art is complex and difficult tounderstand. Enforcement in this context isprimarily related to the substantial efforts ofproviding and explaining evidence, and howthe prior art and the invention work, all in amanner that the court readily understands.As soon as a court ruling is made,

enforcement is straightforward. In certaincases, infringement of method patents maybe difficult to prove, unless it is fairly evidentthat there is no other way to arrive at theend result. In such case, pre-trial discoverymay be required.

Influence of foreign judgmentsIt seems that the Norwegian courts are notnecessarily persuaded by decisions of courtsin other countries. Foreign court decisionsmust be presented merely as facts alongwith other exhibits, and the court maychoose to rely on such an exhibit to someextent or not at all. Further, the outcome ofproceedings or even opposition proceedingsat patent offices in other countries, and priorart relied upon thereat, in particular prior artnot revealed in the Norwegian patent case,may have some bearing on how the courtmay look at the claims in a Norwegianpatent, especially if the claims in suchforeign patent are substantially differentfrom, or in particular more restricted than,the claims in the Norwegian patent.

Reasoning given by foreign courts thathave handed down decisions in similarcases may be considered by a Norwegiancourt if a copy of a foreign court ruling is anexhibit, but the court may simply choose notto rely upon it, in particular if witnesses orother statements made in the courtproceedings indicate some doubt as to thequality of the reasoning. Also, if argumentsother than those in the foreign case arepresented in the Norwegian case, the foreignreasoning may be considered irrelevant.

From a tactical point of view, a defendantmight seek to delay a case from going totrial, mostly through asking for extensions ofthe reply term due to, for example, illness ofthe defendant or his lawyer, presentation offurther defence material, additional time tocollect evidence or objection to the courtselection of lay judges. The plaintiff maycounter such tactics if it can be proved thatinfringement is still ongoing, the plaintiff issuffering substantial economic or marketlosses as a result thereof, or the additionalevidence presented by the defendant doesnot support supplementary arguments.

Once both the plaintiff and the defendanthave had the opportunity to present claims,evidence and counter-arguments, the courtwill set the date for oral proceedings.

Preliminary injunctions availablePreliminary injunctions are generallyavailable at any district court and a suit forpreliminary injunction must be filed with


Patent enforcement in Norway


sufficient evidence. Normally, both partiesmay have to provide an economic guaranteeagainst damage if it is proved through asubsequent regular suit that the claim for apreliminary injunction was unjustified andhas caused substantial damages to oneparty. A decision made by such preliminaryinjunction court may be appealed. Normally,however, a conventional infringement suitfollows instead.

Approximately one to two years normallyelapse between the filing of a suit at firstinstance (in a city court or district court) andthe issue of a ruling. Unless public interestsare potentially affected, it is hard to expeditea ruling. However, in district courts outsideOslo, if an invalidation suit does notaccompany the infringement suit, thecommencement of oral court proceedingsmay take less time, depending on thecourt’s backlog. Within reasonable time afterthe suit is filed, a date for oral courtproceedings is set. This effectively requiresthe defendant and the plaintiff to presentarguments in writing as efficiently aspossible and in good time before the oralcourt proceedings.

An adverse decision at first instance maybe appealed to the High Court. Recentindications are that in order to do this, thealleged damages in question must be abovea certain level (a figure of Euros 20,000 hasbeen mentioned in this regard). The defeatedparty may claim that, for example: thedecision at first instance is wrong forparticular reasons; important issues havenot been considered or have beenconsidered incorrectly by the court; damagesawarded are out of step with reality; thecourt has not fully understood the inventionor the prior art cited by the defendant;evidence presented has not been reliedupon; or the court processed the suitinappropriately. An appeal will add at leastone and a half to two years to the case,depending on the caseload of the court atthe time.

High costsUnfortunately, processing a suit isexpensive, even according to Norwegianstandards, and seldom costs less than NOK160,000 (approximately Euros 20,000);figures of NOK 300,000 to NOK 600,000(Euros 39,000 to Euros 58,000), and evenhigher, are commonplace.

If a party loses the case entirely, it willnormally have to bear the costs of the otherparty, including prosecution charges, courtcharges, witness expenses etc, in addition

to any damages awarded by the court.Further, if the plaintiff is unsuccessful, itmay also risk losing its patent rights throughan invalidity suit ruling. However, there arecases where the patent is held valid, but thecourt nonetheless rules no infringement. Incases where the losing party must meet thecosts of the winning party, the court is freeto reduce the costs if these are considereddisproportionate.

Available remediesThe court may prohibit the defendant fromworking the invention and/or specify a sumto be payable within a set term to coverdamages and expenses. As a rule, theprofits that the defendant has gained byviolating the patent rights must besurrendered. Also, damages may be awardedin an amount to be specified at thediscretion of the court and in addition to anyclaims by the plaintiff.

Many disputes are, however, resolved bythe parties without a court ruling, and thejudge has an obligation to urge the partiesto compromise. If an attempt at compromisefails, a claim for compulsory licence may bemade (this is rare in practice), provided theconditions of the Patents Act are met. Eitherthe Oslo District Court or the NorwegianCompetition Authority will consider issuesrelating to a claim for compulsory licence.Alternatively, the patentee may consideroffering a licence or cross-licensing in caseswhere the defendant possesses patent(s) ofinterest. Another option is to consider a jointventure with the defendant. The attorney ofrecord will normally advise on the availableoptions, which depend on prevailingconditions, the status and reputation of thedefendant, and the economic situation ofthe defendant.

In some cases the Act on MarketingControl (which replaced the old UnfairCompetition Act) is applied in addition to, orinstead of, a claim for patent infringement,and the Act provides for remedies related tounfair competition. Copyright (unregistered)may under some circumstances be applied.If the dispute relates to an article, aregistered design may be useful (EUregistered designs are not enforceable inNorway). Finally, the Patents Act provides forthe administrative re-examination of anissued patent at the request of thepatentee. If the patentee holds a Norwegianpatent that is considered to have beeninfringed, and essential foreigncorresponding patents are more restrictive inview of identical or other prior art, the



patentee may be well advised to request re-examination before considering filing suit, inorder to avoid the patent being declaredinvalid in a suit. Although re-examination maylead to the patent having a narrower scope,it will still be easier to enforce.

Much to be gainedIn summary, much is to be gained fromobtaining a patent in Norway: the PatentOffice’s substantive examination isprofessional and all professional patentattorneys have a university degree from atechnical university. Although translation ofan application into Norwegian is mandatory,processing charges are normally low andallowance of a corresponding EPCapplication often triggers allowance of theNorwegian application.




Feature


In this section of the publication, contributors from a number ofmember states of the European Patent Organisation answer the sameset of questions based around the enforcement of European patentsin their respective jursidictions.

Country Q&As

Country Q&As

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?The European patent holder has severaloptions when seeking to enforce its rights inAustria. It may initiate civil proceedingsclaiming (preliminary and permanent) injunctiverelief, removal and destruction of infringingproducts, rendering of accounts, payment ofcompensation and damages, and publicationof the verdict concerning the injunction.

In the case of wilful infringement, thepatent owner may also instigate criminalproceedings against the infringer or unknownperpetrator and pursue the case as a so-called“private prosecutor”. Where infringing productsoriginate from countries outside the EuropeanEconomic Area and are being imported intoAustrian territory, the patent holder mayadditionally file for a product piracy order andrespective border seizure measures throughAustrian customs authorities.

Furthermore, the patent holder may file arequest with the Austrian Patent Office for adeclaratory decision establishing the fact ofwhether a specific object or process fallswithin the scope of its patent. Such requestneeds to be filed prior to an infringementaction concerning the same subject matter.The decision of the Patent Office is bindingupon the courts.

2. Does your jurisdiction have specialistpatent courts?No. However, as a matter of statutory patentlaw, the Commercial Court of Vienna(Handelsgericht Wien) has exclusivejurisdiction over all civil patent matters.Within this Court, only three departmentshear and adjudicate patent infringement

cases. Consequently, the judges staffingthese departments are well versed in patentlaw issues. They sit in panels of three,consisting of two judges and one lay-judgewho is usually a patent agent. The competentcourt for criminal patent matters is theCriminal Court of Vienna (Landesgericht fürStrafsachen Wien).

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts?A witness is regarded as a means ofevidence for either party; thus, as a matterof equal fighting chances, either party mayinterrogate the witness and the law does notformally distinguish between examinationand cross-examination. It is usually the judgewho examines the witness first, followed bythe party representatives who are allowed toask supplemental questions.

Admissible evidence in civil courtproceedings includes witness testimony,expert opinions and expert witnesstestimony, party testimony, documents,inspection of objects or on-site inspections.Written statements of witnesses areadmissible in preliminary proceedings but notin full-scale proceedings. By law, all forms ofevidence are given equal weight and aresubject to the judge’s free evaluation.However, in practice, written documents tendto be the most important form of evidence.

There are no particular restrictions onthe use of evidence from experts. The courtmay appoint an expert to submit a writtenreport on technical aspects of the claim andto answer, in an oral hearing, questions putforward by the judge and the parties. Inaddition, the parties tend to retain their ownexperts and file party expert opinions withthe court in order to support their case.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof is

Enforcing patents in Austria

Enforcing patentsin Austria


Feature

By Alexander Cizek, DLA Piper Weiss-Tessbach, Vienna


necessary to demonstrate one or the other?Infringement and invalidity are not usuallydealt with simultaneously. Infringementissues lie within the exclusive jurisdiction ofthe judiciary whereas issues of invalidity aredecided separately by the Patent Office.Where the validity of a patent is contested ininfringement proceedings, the court mayhave to suspend its proceedings until thePatent Office has ruled on the validity issue.This does not apply in preliminaryproceedings, however.

No particular level of proof is required ineither proceeding. Pursuant to the AustrianCode of Civil Procedure, the court and thePatent Office respectively are required toconsider the results of the hearings andevidence proceeding carefully in theirdeliberations. However, they are free in theirdecision as to which party has successfullyestablished its case and thus is to prevailunder the law.

5. To what extent is pre-trial discoverypermitted?Principally, the taking of evidence isconsidered the sole prerogative of the state.Therefore, pre-trial discovery is not permittedin Austria. However, on the criminal route thepatent holder assumes the position of the(private) prosecutor and thus may file allavailable criminal pre-trial discovery motionswith the investigating judge.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Besides literal infringement, Austrian courtshave also recognised infringement under thedoctrine of equivalents. As a matter of Austriancase law, infringement under the doctrine ofequivalents occurs when, on the priority date ofthe patent in question, a person skilled in theart, equipped with general technical expertiseand knowledge of the state of the art laid downin the patent specification, without an inventiveendeavour would infer the modified features asa solution equivalent to those defined in thepatent claims. By contrast, the usage offeatures having the same effect but essentiallyaltering the protected solution idea orcontradicting the fundamental idea of theinvention would not be considered equivalentunder the doctrine.

7. Are there certain types of patent rightsthat may be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others?There are no patent rights that are moredifficult to enforce by virtue of the law;

however, as a matter of fact, the CommercialCourt of Vienna does not often get thechance to adjudicate rare patents such asbiotech patents.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?As the Commercial Court of Vienna hasexclusive jurisdiction in patent infringementissues and consequently no other nationalcourt deals with patent infringement cases,there are no other decisions that theCommercial Court of Vienna could consider.However, declaratory decisions by the PatentOffice as to whether a specific object orprocess falls within the scope of a patent, ordecisions on the nullity of a patent, arebinding upon the court.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Austrian courts are not bound by law to takethe reasoning given by foreign courts insimilar cases into consideration. However, thepanel hearing the case might consider thereasoning given on a discretionary basis.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?The defendant can delay a case bycounterclaiming that the plaintiff’s patent ispartially or completely invalid and thussubject to nullity; issues of invalidity aredecided separately by the Austrian PatentOffice. Hence, the court has to examinewhether the objection is founded andsuspend the civil proceedings if it concludesthat the invalidity of the patent is likely. Thedefendant then must file a motion for nullityof the patent with the Patent Office withinone month and the court will resume andcontinue the infringement proceedings onlyupon issuance of the Patent Office’sdecision. The plaintiff can only counter thisdelaying tactic by convincing the court of thevalidity of its patent and thus preventing thesuspension of the infringement proceedings.

The defendant may also file for a negativedeclaratory decision seeking the PatentOffice’s finding that its product or processdoes not infringe the plaintiff’s patent.Although not strictly required by statutory law,the first instance court sometimes stays theinfringement proceedings as contradictingdecisions may give rise to a re-opening of the



proceedings. Again, the plaintiff can onlycounter this delaying tactic by convincing thecourt otherwise.

11. How available are preliminaryinjunctions and how do you get them?Infringement of patent rights generallyentitles a plaintiff to preliminary injunctiverelief irrespective of any urgency requirementeven prior to the commencement of full-scaleproceedings. To this end, the patent holdermust present a clear and well-founded casebut need not prove danger of recurrence,which is regularly presumed through thepresent infringement, or irrecoverable loss.Having applied for preliminary injunctiverelief prior to filing legal action, the patentholder must commence full-scaleproceedings within a certain period of timeto be determined by the court.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethese proceedings?For a patent infringement action of mediumcomplexity, the average length of a firstinstance trial is one to two years, provided theproceedings have not been suspended due toan objection of invalidity of the patent.Preceding preliminary proceedings beingsubject to interlocutory appeal may also delaythe full-scale decision. Besides preliminaryinjunction proceedings, there are no expeditedproceedings available in Austrian courts.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The party defeated in the first instance ofthe full-scale proceedings may file an appealagainst the judgment within a period of fourweeks based upon one or more of thefollowing grounds: nullity; violation ofprocedural law; false or incompleteascertainment of facts; and/or falseassessment or misinterpretation of the law.In appeal proceedings, no new facts may becontended and no motions for taking newevidence may be brought forward. Theopponent may file a reply to the appeal.Oral hearings can be directed by the courtof appeals but are usually rare. In mostcases, the court of appeals will decidebased upon the written appellate briefs ofthe parties. The appeal process in patentinfringement cases usually takes betweensix months and one year.

In relation to the first instancepreliminary proceedings, the defeated party

may file an appeal within two weeks. Thesame grounds and formal requirementsapply. The appeal process in the preliminaryproceedings usually takes between two andfour months.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?A court fee is payable upon filing the legalaction, the amount depending upon the valueof the claim. In patent infringement cases, thefee usually starts at Euros 1,082 and goes upto 1.2% of the value of the claim plus Euros1,509. Moreover, as a matter of statutory civilprocedural rules, the defeated party mustreimburse the legal costs of the prevailingparty, amounting to 100% in the event of atotal defeat and a respective portion thereofin case of partial defeat. Legal costscomprise court fees, attorneys’ fees(calculated upon the statutory fee schedule)and possible costs of witnesses, expertwitnesses and expert opinions.

15. Who can represent parties in court? Isspecialist representation required?In patent infringement proceedings, anattorney at law must represent the parties.Specialist representation is not required buthighly recommended. A patent agent usuallyassists the attorney at law with regard totechnical patent aspects of the litigation.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The remedies in civil proceedings include(preliminary and permanent) injunctive relief,removal and destruction of infringing items,rendering of accounts, payment ofcompensation and damages, and publicationof the verdict over the injunction. Damageswill be awarded if the plaintiff can proveactual loss suffered which was caused bythe defendant, and that the defendant actedwilfully or negligently.

The plaintiff may be strictly liable for alldamages suffered by the defendant if apreliminary injunction is lifted in subsequentfull-scale proceedings for reasons whichrendered the preliminary injunctionunjustified from the very beginning.

The Austrian legal system does notprovide for punitive damages; however, inthe case of gross negligence or wilfulness onthe part of the infringer, the plaintiff isentitled to double damages, comprising twicethe amount of adequate compensation,




without having to prove the amount of theactually incurred loss.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?No. In Austria, the usual alternative disputeresolution schemes such as arbitration andmediation exist, but they are hardly everused to settle patent disputes. The usualcourse of action is to send a demand letterfor cease and desist to the infringer beforebringing legal action. If no out-of-courtsettlement can be reached, courtproceedings are immediately initiated.

18. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?There is no specific cause of action forgroundless threats of patent infringementproceedings under Austrian law; however, arespective liability may be considered undergeneral tort rules. Moreover, the civilremedies of the patent holder are subject toa statute of limitation of three years, startingto run from the point at which the patenteefirst learns of the infringement and theidentity of the particular infringer. Also, theAustrian civil procedural laws do not providefor representative legal actions(Prozessstandschaft); only the rights holder,ie, the patent owner or the exclusivelicensee, may legally pursue a patentinfringement in court.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?There are basically three possible courses ofaction which are open to a patentee seekingto enforce its rights in Belgium.

The most obvious option is to startproceedings on the merits in order to obtainan injunction and the grant of damages, andany other form of relief available under theBelgian Patent Act of 28th March 1984.

However, proceedings on the merits areoften preceded by a so-called descriptiveattachment proceeding (saisie description),which is a specific ex parte procedure aimedat establishing the existence and/or the extentof the infringement, and possibly securing theseizure of any infringing materials.

In urgent matters, the patentee can initiatesummary proceedings aimed at the immediatecessation of the patent infringement.

Patent proceedings can be preceded bythe sending of a notice letter to the allegedinfringer, although this is not required andalso is not advisable if ex parte proceedingsare envisaged.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?Belgium does not (yet) have specialist patentcourts. Judges as a rule also have notechnical background, although they canseek the assistance of court-appointedjudicial experts.

The Belgian Patent Act of 28th March1984 provides that only the courts of firstinstance of Brussels, Antwerp, Ghent, Liègeand Mons have jurisdiction in patent

matters, which arise under their respectiveterritorial jurisdiction. However, it appearsfrom the latest legislative proposals tabledwithin the framework of the transposition ofthe IP Enforcement Directive 2004/48/ECthat the Brussels Court of Commerce will bedesignated as solely competent to deal withpatent litigation.

At present, most patent cases arelitigated in Brussels and Antwerp.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Belgian civil proceedings are mainly basedon written evidence which must beexchanged between the parties together withtheir written submissions.

Any witness examination must berequested and authorised by the court. Wehave knowledge of only one recent patentcase where a witness examination wasordered. In any case, proof by witnesses canbe authorised only in view of proving certainfacts or highlighting certain factual ortechnical issues.

Furthermore, Belgian judicial law doesnot provide for the possibility of cross-examining witnesses at trial. Questions aredirected only by the court (possibly at therequest of either party).

On the other hand, parties in patentlitigation usually submit written affidavits ordeclarations from patent attorneys in order tostrengthen their case. There are no limitationson the use of such written documents.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?When an infringement action is broughtagainst an alleged infringer, the latter hasthe right to invoke the possible invalidity ofthe patent at stake and to file acounterclaim based on one of the grounds of

Enforcing patents in Belgium

Enforcing patentsin Belgium


Feature

By Christophe Ronse and PaulMaeyaert, ALTIUS Law Firm, Brussels


nullification provided for by the Patent Act. Insuch cases, both infringement and invaliditywill be dealt with simultaneously.

Where the alleged infringer bringsseparate invalidity proceedings, it can beexpected that such proceedings will also bejoined to the main infringement proceedingson the basis that they could otherwise leadto contradictory decisions.

In such proceedings both parties areallowed to use all available means ofevidence, provided it is in written form or canotherwise be filed with the court. As will befurther described below, the descriptiveattachment proceedings allow for a veryefficient means for the patentee to establishthe proof of an infringement.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Belgian judicial law does not recognise anydiscovery proceedings within the usualmeaning of the term. But Article 877 of theBelgian Judicial Code allows a judge to ordera party to the suit or a third party to submit adocument (or a copy thereof) which containsthe evidence of a relevant fact when there areimportant specific and concurringpresumptions that such party possesses thisdocument.

Where insufficient evidence of theexistence and/or scope of the infringementis available, a patentee can, before startingany contradictory proceedings, establish theinfringement by requesting on an ex partebasis the granting of a descriptiveattachment (saisie description) from thejudge. In order to obtain this, the existenceof a prima facie valid patent must beestablished (the production of a copy of thepatent is normally sufficient) and prima facieevidence of infringement must be provided.The request is aimed at the appointment ofan expert who is empowered to enter thepremises of the alleged infringer or anylocation where relevant evidence can befound. The judge may also authorise thepatentee to be represented during thedescription operations by its lawyers or otherrepresentatives.

The patentee may further request thejudge to provide for any adequateaccompanying measures, such as allowingthe expert to enter the premises as manytimes as necessary for the carrying out ofhis task, to obtain access to computers,files, etc. The expert will be required todescribe the allegedly infringing processes orproducts or any materials involved therein,

but may not judge the alleged infringementas such.

In addition to descriptive measures, thejudge can also order the person againstwhom the descriptive measure is sought notto dispose of the infringing goods uponforfeiture of a financial penalty. The judgecan further appoint a custodian to seize theinfringing goods or revenues derived frominfringing activities. Obtaining suchmeasures, however, usually requires thepatentee to demonstrate that the requestedrelief is reasonably justified under thecircumstances, having regard to the variousinterests at stake.

In many cases, the judge will alsorequest that a guarantee be posted beforethe saisie description can be carried out.

Upon granting of the authorisation, theexpert will visit the alleged infringer’spremises together with a bailiff who willserve the judge’s decision. Once he hasgathered the required evidence, the expertwill draft a sworn report containing adetailed and objective description of thealleged infringements, and will subsequentlyfile this report with the court of first instanceand send a copy to the parties. Thepatentee must initiate proceedings beforethe competent court of first instance within30 days of the date of this filing. If this doesnot happen the report becomes devoid ofany legal value.

6. To what extent does any doctrine ofequivalents apply in an infringement action?In the absence of a literal infringement ofthe patent, it is possible for the patentee toinvoke the doctrine of equivalents.

Although there is only very limited caselaw available, it appears that the function-plus-result approach will probably be applied,ie, that a certain means will be consideredto be equivalent to the infringement if itrealises the same technical function in thesame way and with a similar result.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? One should take into account that technicallycomplex patents such as pharmaceuticalpatents will as a rule be more difficult toenforce than those patents which can beunderstood by a layman. A particular effortshould therefore be made to translate anytechnical issues into plain language. Incomplex matters, the Belgian courts will tryto compensate for their lack of technical



expertise by appointing a judicial expert.In addition, biotechnological patents

could give rise to further difficulties in viewof the limitations imposed by the BelgianPatent Act. Although the Patent Act has beenamended in order to transpose theprovisions of the European BiotechnologyDirective 98/44/EC, the legislator hasadded some further limitations including, inparticular, a newly worded researchexemption which will be discussed below.

For software-related inventions, there isno case law available from which to draw anyrelevant conclusion as to their enforcementin Belgium.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?Belgian courts are not bound in any waywhatsoever by the opinions and decisions ofany other (Belgian or foreign) courts thathave dealt with similar cases, even if theyconcern parallel national patents to thepatent at stake.

That said, Belgian judges will usually takeinto account the decisions reached in parallelcases by the more specialised courts ofother European countries such as Germanyand the Netherlands or, in exceptionalcircumstances, even the US courts.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Belgian judges are willing to consider thereasoning given by foreign courts, particularlyin parallel patent cases; although they willnot necessarily agree with the reasoning.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? The possibilities of delaying a case whichare open to a defendant will vary dependingupon the particular circumstances of eachcase and the strategy and tactics adopted bythe defendant.

Classical means of defence include thecontestation of the available evidence ofinfringement (including starting oppositionproceedings against the saisie descriptionwhich the patentee may have obtained, inorder to delay the infringement proceedings)or the filing of a counterclaim for thenullification of the patent.

Many defendants also try to exploit thepossibilities available under Belgian judicial

law to create obstacles and/or postpone thecase. This includes, in particular, the failureto file submissions or to agree on atimetable for the filing of submissions. Theplaintiff can, however, counter this byrequesting the court to determine aprocedural calendar.

11. How available are preliminaryinjunctions and how do you get them? It is possible to request the president of thecourt of first instance to impose apreliminary injunction on a patent infringerwithin the framework of summaryproceedings, pending the outcome of theproceedings on the merits.

In order to succeed, the patentee mustmeet two conditions:• It must demonstrate the so-called

appearance of rights, ie, that the acts forwhich a preliminary injunction is soughtprima facie infringe on its patent. Withinthis context, the president will, as a rule,assume that the European patent invokedis valid (foi est due au titre), havingalready been the object of an examinationby the European Patent Office, unless thedefendant can demonstrate that thispatent is prima facie invalid and shouldtherefore be disregarded.

• The patentee must also demonstratethat its claim is urgent, ie, that it willsuffer serious harm or prejudice in theabsence of a preliminary injunction andthat the proceedings on the merits willnot allow it to obtain the necessary reliefin a timely fashion. Accordingly, if theurgency has been caused by thepatentee’s negligence or inaction, itsclaim will be rejected for lack of urgency.

A decision on whether or not to grant apreliminary injunction will usually be handeddown within a couple of weeks or months atthe most. It is possible to requestpreliminary measures on an ex parte basis,but only in cases of absolute necessity, ie, ifan immediate decision is required in order tosafeguard the plaintiff’s interests.

Summary proceedings sometimes giverise to the balancing of the parties’ interests,particularly if the case is not clear-cut.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?The length of proceedings on the meritsdepends mainly on the court in question, thecomplexity of the case and the diligence ofthe parties.




While there are certain exceptions (suchas the proceedings before the French-language Court of First Instance of Brussels,which suffers backlogs of up to three yearsor more), one can say that it is possible toobtain a judgment in a standard patent casewithin one or two years. Where the courtdecides on the appointment of a judicialexpert, further delays must be anticipated,as the expert will have to hear the parties,investigate the issues and draft a reportwhich will then be debated before the court.

Considering that the furtherance of theproceedings mainly depends on the partiesthemselves – the court being mainly reactiveto their initiatives – the plaintiff can expeditethe case to some extent by acting proactivelyand diligently in setting deadlines for theexchange of submissions and exhibits, andfixing a hearing date.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The defeated party can appeal any (eveninterlocutory) judgment before the territoriallycompetent court of appeal (at Brussels,Antwerp, Ghent, Mons or Liège). Where thishappens, the whole case is devolved to thecourt of appeal, which will review it anddecide on the claims (raised in appeal orpossibly also in counter-appeal).

Proceedings before the court of appealusually take longer than those at firstinstance and one should count on atimeframe of about two to three years beforea decision is taken on the merits (orsometimes less, depending upon the courtinvolved). Appeals against decisions by thepresident of the court of first instance insummary proceedings take much less timeand are normally dealt with in one year orless, depending upon the circumstances.

The judgment of the court of appeal canbe appealed to the Supreme Court (Court deCassation). However, the Supreme Court willnot review the facts, but only the legal issues.Such procedures can take two years or more.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?It is very difficult to give an assessment of thecost of patent litigation in Belgium, as the costof litigation (and patent litigation in particular)will vary to a great extent depending upon thetype of the proceedings and the complexity ofthe case, in addition to some other elementssuch as the rates applied by the legal counsel

involved, whether or not the court appoints ajudicial expert, etc. Any estimate will thereforehave to be considered as very approximate, asone usually knows where this kind ofundertaking starts but cannot predict how andwhere it will end.

Based on prior experience, we would saythat a case on the merits involving a not toocomplex patent dispute will cost betweenEuros 50,000 and Euros 100,000, up to thepoint where a first instance judgment isrendered (this amount would cover thedrafting of summons and arguments, as wellas the appearances in court, the preparationof the case, correspondence and follow-up,etc). One should also take into account thatthe assistance of a specialised patentattorney is required in most cases to helpprepare the briefs. The cost of theproceedings can further increase if the courtrenders only an interlocutory judgment, eg, ifa judicial expert is appointed and theproceedings are lengthened as a result.

In addition, one needs to take intoaccount the possibility that certainsubmissions and exhibits will have to betranslated (for the benefit of the client orsometimes at the request of the judge).

Finally, note that (some of the) legalcosts could possibly be recovered from thedefendant if one can convince the court thatsuch costs are part of the damage incurredby the plaintiff as a result of the patentinfringement.

15. Who can represent parties in court? Isspecialist representation required?Litigating parties must be represented byone or more attorneys at law. It is possiblefor a party to represent itself, but this isalmost never done in patent cases and couldprove dangerous in view of the complexitiesof Belgian judicial and substantive laws.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Article 27 of the Belgian Patent Act allowsthe patentee to prevent any unauthorisedthird party from: (1) producing, offering,marketing, using or importing or storing witha view to the aforementioned the patentedsubject matter; (2) in the case of a patentedprocess, applying or offering this process foruse in Belgium; and (3) producing, offering,marketing, using or importing or storing witha view to the aforementioned any materialdirectly resulting from a patented process.

In addition, the Patent Act also sanctions



indirect patent infringements, ie, where thedefendant knowingly or negligently offers orsupplies means relating to an essentialfeature of the patented invention.

Any such injunction is normally imposedunder forfeiture of substantial fines in caseof continued infringement and can possiblybe combined with publicity measures at thecost of the infringing party.

In addition, the patentee (and anyregistered licensee) is entitled to seekdamages (to be increased with interest atthe legal rate of 7%) in order to compensatefor the prejudice resulting from theinfringement. The same principles apply hereas in tort cases, the aggrieved party beingentitled to the full reparation of its prejudicecaused by the infringement. One should,however, take into account that the Belgiancourts have a rather conservative approachin the assessment of damages, eg, takingas a basis the level of royalties usuallyclaimed by the patentee.

Within this context, it is out of thequestion that punitive damages can begranted, although the amount and level ofdamages granted seems to be growing.

Finally, if the bad faith of the defendantis established, the court can order theconfiscation of the infringing products andthe means specifically intended for theirmanufacture.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Alternatives to litigation are either arbitrationor mediation, but these require theagreement and cooperation of the infringingparty and might therefore not always be ofrelevance.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?Belgium has not yet signed or ratified theLondon Protocol and has not yet expressedits support for the European Patent LitigationAgreement. Although one can expect thatsuch will eventually happen, it is impossibleto make any prediction on the timing thereof.Also, it remains to be seen whether thedispensation of translations provided by theLondon Protocol will cause any problems atthe political level.

19. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?

It is noteworthy that the experimental useexception has been fundamentally modifiedfollowing the review of the Belgian PatentAct with regard to the transposition of theBiotechnology Directive. Whereas under theold law, the rights conferred by a patent didnot extend to experiments relating to thesubject matter of the patented invention,this exception now applies to acts which areperformed on and/or with the subjectmatter of the patented invention, forscientific purposes.

The Belgian legislator has thus completelyabandoned the distinction betweenexperiments on the patented subject matterand experiments with the patented subjectmatter, and provides for the exemption of bothtypes of experiment. As a result, it hasbecome much more difficult to enforce patentrights relating to so-called research tools.

Furthermore, one should take intoaccount that the Belgian Patent Act and therelevant procedural rules will be furtheramended at the occasion of thetransposition of the IP EnforcementDirective. The main anticipated new featuresare the centralisation of patent cases at thelevel of the Brussels Court of Commerce andthe possibility of obtaining final injunctionson the merits on an expedited basis.




Enforcing patents in the Czech Republic Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?According to Article 35c of Czech Act No527/1991 Coll on Inventions andRationalisation Proposals (hereinafterreferred to as the Patent Act), a Europeanpatent has the same effects as a patentgranted by the Czech Patent Office inaccordance with the Patent Act. The owner ofa European patent therefore has theexclusive right to use the invention, toauthorise others to use the invention or toassign the patent to others. According toArticle 4 of the new Act 221/2006 Coll onEnforcement of Intellectual Property Rights,in case of infringement of patent rights, theowner of the patent has the right to apply tothe court for an order prohibiting theinfringement or the impending infringement,and to ask for the consequences of theinfringement to be remedied; the owner ofthe patent may also claim appropriatesatisfaction, including monetaryrecompense. The right to claim the surrenderof unjustified enrichment and to claimdamages shall not be affected. It is alsopossible to apply to the court to issue apreliminary injunction against an infringerordering immediate cessation of theinfringement, an option which is a fast andeffective measure.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?There are no special patent courts in the CzechRepublic. However, according to Article 6 of theAct on Enforcement of IP Rights, the City Court

in Prague shall decide all IP infringement cases– including cases involving patent infringement.As the new regulation on the enforcement of allIP rights became effective only in May 2006,the City Court judges do not yet have highlevels of expertise.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Litigation is based on written evidencesupported by witness statements. Witnessesmay be cross-examined by the other party attrial. There are no restrictions on the use ofevidence from experts. IP infringementproceedings are so-called concentratedproceedings, which means that all evidencehas to be submitted or at least proposedwithin the first hearing. The judge has toconsider all evidence (including witnessstatements) proposed by each party in thelitigation and give reasons for its rejection.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Courts deal with any infringement ofpatent rights and its consequences. On theother hand, only the Patent Office decideson revocation (invalidity) of a patent. It isvery usual that in case of infringement ofpatent rights the defendant files a requestfor revocation of the patent; the court maythen suspend infringement proceedingsuntil the Patent Office decides on therevocation request.

To succeed in infringement proceedingsthe patent owner should submit at least onedirect piece of evidence proving the fact thatthe defendant’s activity infringes the patent– for example, any expert opinion comparingthe defendant’s product with the productprotected by the patent.

In invalidation proceedings before thePatent Office, the plaintiff has to prove that:

Enforcing patentsin the Czech Republic

By Lukas Lorenc, Cermák Horejs Myslil a spol, Prague


(a) the invention does not meet theconditions of patentability (novelty, inventivestep, industrial application); (b) theinvention is not disclosed in the patent soclearly and completely that it can be workedby a person skilled in the art; and (c) thesubject matter of the patent extends beyondthe content of the invention application asfiled, or the subject matter of the patentgranted on the divisional application extendsbeyond the content of the inventionapplication as filed, or that the extent of theprotection arising from the patent has beenextended. The evidence in invalidityproceedings therefore consists of quoting anumber of registered patents, books,dictionaries and prior art in general.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?There is no pre-trial discovery under Czechlaw. Evidence or documents are discoveredbefore the judge during the hearing.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Czech courts hesitate to apply a doctrineof equivalents in an infringement actionbased on patent rights. The doctrine ofequivalents is applied in infringement actionsbased on unfair competition provisions ofthe Czech Commercial Code. The argumentbased on patent rights is therefore oftencombined with argument based on unfaircompetition provisions.

7. Are there certain types of patent rightthat may be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Software-related, biotech and pharmaceuticalpatents are usually more difficult to enforcethan technical patents, because it is moredifficult to prove infringement by comparingthe solution used by the defendant and thesolution protected by the patent. This appliesalso to patented methods of manufacturing.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?The courts are bound primarily by thewording of the law. After the accession of theCzech Republic to the EU, European law ispart of Czech law and must be applied byCzech courts. In general, decisions oropinions of other courts are not binding onthe Czech courts, except preliminary rulings

of the ECJ in particular cases and rulings ofthe Constitutional Court. However, decisionsand opinions of other courts (and especiallyhigher courts, ie, high courts and theSupreme Court) in similar cases are veryoften taken into account when the court hasto decide an identical or similar matter. Thispractice helps courts to establish consistentinterpretation and application of the law.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Czech courts generally do not like to considerdecisions or reasoning given by foreigncourts, except certain rulings of the ECJ (seeabove). If, however, the foreign legislation isidentical or similar to the Czech law and thereasoning of a foreign court is persuasive, itcan influence the approach of a Czech court.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?In patent infringement actions, the defendantmay file a revocation request with the PatentOffice, which may substantially protract thecase. If the court decides to suspend the caseuntil the Patent Office rules on the revocationrequest, the plaintiff’s position is difficult. Thedefendant may also request the court to askthe ECJ for a preliminary ruling in cases wherea provision of EU law is applicable. Theplaintiff is authorised to object to this request.Long-lasting litigations and trials are a majorproblem for Czech courts. Preliminaryinjunctions may be a good solution for theplaintiff until the final decision is issued.

11. How available are preliminaryinjunctions and how do you get them?Preliminary injunctions are fast and effectiveprotective measures. The court has to decideon the request for preliminary injunctionwithin seven days of the date of filing.According to the amended Article 75b of theCzech Civil Procedure Code, the plaintiff hasto deposit a security in the amount of CZK50,000 – and in commercial matters (ie, alsoin cases of patent infringement and unfaircompetition actions) CZK 100,000(approximately Euros 3,000) – at the lateston the same day on which it files the requestfor the issuance of a preliminary injunctionwith the court. This security serves thepurpose of securing compensation fordamage or other harm that could be causedby the preliminary injunction if the finaldecision goes against the plaintiff.


Enforcing patents in the Czech Republic


12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?It takes approximately one to one and a halfyears to get a decision at first instance. Thereis scant possibility of expediting the process.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The defeated party in patent infringementproceedings may appeal the first instancedecision to the High Court within 15 days ofthe date of the delivery of the first instancedecision. There are two high courts in theCzech Republic: in Prague and in Olomouc.The defeated party may appeal the wholedecision or only a part of it. It is not possibleto appeal only the reasoning behind thedecision. An appeal may be based only oncertain circumstances stated in Article 205(2) of the Civil Procedure Code, for example:the conditions of the proceedings were notmet; the decision was issued by a firstinstance court that was not materiallycompetent; the decision of the first instancecourt was issued by an excluded judge(assessor) or the first instance court wascomposed incorrectly; the first instance courtdid not take account of the facts asserted bythe appellant or of the evidence identified byit; or, although the requirements for appealstated by the Civil Procedure Code were notmet, the procedure was affected by anotherdefect that could have caused an incorrectdecision on the merits of the case. Appellateproceedings are regulated by Articles 201 to226 of the Civil Procedure Code.

The appeal process takes one and a halfto two years.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?The costs of first instance proceedingsdepend on the complexity of the matter. Itusually takes at least 20 hours of a lawyer’stime to take a case through to a firstinstance decision. The level of costincreases where an expert opinion is draftedand submitted to the court. Court fees maybe considerably high, especially if extensivedamages are requested.

15. Who can represent parties in court? According to Article 24 of the Civil ProcedureCode, any party may choose a representativeto represent it in the proceedings. There isno compulsory representation required

before the first and second instance courtsgenerally. The patent owner may defend itsrights personally. Parties may berepresented by any individual, by an attorneyat law, by a notary public and, except inappeals, also by a patent attorney.Representation by an IP litigation specialistis recommended, however.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?For remedies in case of patent infringementplease see the answer to question 1. Theremedy called appropriate satisfaction canbe considered as equivalent to punitivedamages. It is intended to indemnify theaggrieved party for any harm which cannotbe calculated by direct damages.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?At the moment there is no alternative tolitigation in case of patent infringement. If theparties do not conclude an out-of-courtsettlement or settlement before the court, onlylitigation can secure the enforcement of rights.

Enforcing patents in the Czech Republic


1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?Denmark ratified the European PatentConvention as late as 1st January 1990.Since that date most patent protection inDenmark has been established by way of aEuropean patent designating Denmark. AEuropean patent application that designatesDenmark has the same effect in Denmark asa national application filed at the DanishPatent Office from its date of filing. Thus,when a patent is granted it confers the sameright on the patent holder as a national patent.

In order to secure provisional protectionbefore grant, the patent applicant must file atranslation of the patent claims into Danish.Once a translation has been filed, anapplicant has the right to reasonablecompensation in cases of infringement fromthe date when the translated claims aremade available to the public. Obviously, filinga translation also serves as a warning topotential infringers.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?A patent holder seeking to enforce its rightsin Denmark can file an infringement suit withone of the two Danish high courts, where thecase will be tried before three legallyqualified judges. Due to the small number oflitigation cases in Denmark, we have nospecialist patent courts. In order tocompensate for the lack of technicalexpertise in the high courts, the courtsnominate neutral expert witnesses, whonormally include an experienced patent

attorney and one or more technicalexperts in the relevant field, preferablyuniversity professors.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? The parties put a series of questions inwriting to the experts, who may also beasked to conduct or supervise experimentsrelevant to the case. The experts thenpresent written testimony containing theiranswers to the questions.

During the final court hearing, the expertwitnesses are cross-examined. The expertsmay not express any opinion of legalcharacter, ie, they may not state whether thepatent is infringed or not. The judges thenreach a decision, based on the writtentestimony and the cross-examination of theexpert witnesses.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?The validity of the patent-in-suit is notautomatically an issue – at least not an issueraised by the court. But the defendant partymay, and often does, file a counterclaim forinvalidity at the same high court. Thecounterclaim should be supported by newprior art and/or arguments challenging noveltyand inventive step. If an invalidity suit is filed,the proceedings are consolidated, unless theparties agree to a bifurcation. The validity suitproceeds much like the infringement suit, ie,it includes written testimony from expertwitnesses and cross-examination, followed bya court decision taken by the judges.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?No formal pre-trial discovery is permitted inDenmark. The parties are able to request

Enforcing patents in Denmark

Enforcing patentsin Denmark


Feature

By Pernille Thorsboe, Zacco A/S,Copenhagen


voluntary information from each other, suchas samples of an alleged infringing productfor further investigation, but they have noobligation to meet any requirements in thisrespect. Instead, a company that wants tosue an infringer will normally investigatepublicly available information, such as thefile history of the patent-in-suit and patentdatabases. A company may also consultexperts in the technical field, such asuniversity professors. Where technicalexperts are consulted prior to a trial, it isimportant for the company to keep clearsome selected experts to act as court –appointed witnesses in the later trial.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The extent of protection conferred by aEuropean patent is determined by the termsof the claims (Article 69 EPC). The Protocolon the Interpretation of Article 69 is anintegral part of the Convention, but attemptsto harmonise the interpretation ofequivalents in the contracting states havebeen unsuccessful. However, the doctrine ofequivalents cited in the Protocol’s lastsentence is much in harmony with thesituation according to Danish case law.

Thus, the protection conferred by theclaims in a European patent enforced inDenmark extends beyond the literal wording ofthe claim to cover, to some extent, products,processes, etc, that are equivalent instructure, technical function, use, etc. Thedecision is taken on a case-by-case basis ona balanced overall judgment, taking intoaccount all essential steps in a process (if thepatent relates to a process) or all essentialelements (if the patent relates to a product).The protection must combine fair protectionfor the patent holder and a reasonable degreeof certainty for third parties.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Only a few cases relating to the enforcementof patents within new technical fields, such asbiotech or software, have reached the courts,and these have not yet given rise to anydiverging trend that would suggest that suchpatents may be more difficult to enforce.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?During the final hearing of a case in high

court the parties plead their case primarilybased on legislation and decisions of Danishcourts. However, if the case concerns aEuropean patent, then relevant decisionsfrom European case law will be cited and theevaluation from the European Patent Officeof the validity of a patent will be referred to.The decisions and opinions of foreign courtsin similar cases would, however, normallyhave little effect on the final decision in aDanish court.

9. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? It takes two to three years from the start ofthe proceedings in an infringement casebefore a decision can be expected from thehigh court. The parties may request anextension of the time limits set by the courtduring the preparatory work, and theseextensions are widely granted by the court.The plaintiff may object if the defendantabuses this privilege and deliberately delaysthe case unduly.

10. How available are preliminaryinjunctions and how do you get them? It is possible, and in most casesrecommended, to seek a preliminaryinjunction in the city court. The formalrequest for injunction is filed at the city courtwhere the alleged infringer is resident. Thecase is tried before one judge, who isunlikely to be familiar with patent cases.

In injunction proceedings, testimoniesare allowed from experts consulted by onlyone of the parties, and both parties willnormally support their case with experttestimonies. The final hearing is often verycomprehensive, since the parties have alegitimate interest in presenting as manytechnical details as possible; this is normallyallowed by the city court. In an injunctioncase, a challenge from the defendant on thevalidity of the patent will, according topresent practice, be taken into considerationonly if new prior art anticipating the noveltyof the invention is presented to the court.

A decision of the city court to grant apreliminary injunction must be confirmedafterwards in a confirmatory action in thehigh court.

11. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?In an injunction case in a city court one canexpect a decision within one to six months.The timeframe depends on the



circumstances and the desire of the partiesto speed up or delay the case.

In an infringement case in high court adecision may be taken within six to 24months, depending on the circumstancesand the parties’ willingness to speed uppreparation of the case by, for example,getting a statement from the court-nominated patent expert and technicalexpert witnesses.

12. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?A decision of the city court to grant or rejecta preliminary injunction may be appealed tothe high court. In an appeal relating to apreliminary injunction, testimonies from one-sided experts are also allowed. Thetimeframe for an appeal case, following apreliminary injunction case, depends on thecircumstances and the desire of the partiesto speed up or delay the case, but it ispossible to have an appeal decision withinanother three to nine months.

An infringement decision from the highcourt may be appealed to the SupremeCourt, from which it may take several yearsto get a decision.

13. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?The official fee for an injunction case ismodest, whereas a larger fee depending onthe value of the case must be paid for aninfringement case before the high court. Inprinciple, the losing party must pay thewinner’s legal expenses, but the amount to bepaid is set by court by way of an estimate, andthis estimate seldom reflects the winner’sactual costs. The losing party normally paysthe expenses of the expert witnesses.

It should be added that since pre-trialdiscovery is not possible in Denmark, thecosts are smaller than in countries wherepre-trial discovery is allowed. However, thereare, of course, costs for the preparatorywork of a suit, involving both a patentattorney and an attorney at law, and possibleexpert witnesses. Naturally, the cost variesdepending on the technical field, butgenerally pharmaceutical cases are the mostexpensive to prepare.

14. Who can represent parties in court? Isspecialist representation required?Only attorneys-at-law can represent theparties in a Danish court. A specialist

representative is not formally required by thecourt, but the patent attorney plays animportant role as adviser and assessor tothe attorney at law and the client in technicalmatters both during the pre-trial preparationof the suit and during the final hearing.

The patent attorney is responsible fordrafting the written questions which are thebasis for the testimonies presented by thecourt-nominated experts, and the patentattorney also contributes during the draftingof the pleading documents. Writtendeclarations and testimonies are also oftengiven by a patent attorney, who may benominated by the court as an expert witness.

15. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The Danish Patents Act was amended on 1stJanuary 2006 in accordance with Directive2004/48/EC from the European Union,which enumerates a number of minimumrequirements. According to the amended Act,any person who intentionally or negligentlyinfringes an exclusive patent right must payremuneration for the use and compensationfor any damages caused by the infringement.In aggravating circumstances, in particular ifthe infringement is with intent to gain asignificant and obviously unlawful profit, thepenalty may increase to imprisonment.

In practice, this means that the patentholder has the right to reasonablecompensation for the use of the patentedinvention, which would frequently be based ona normal licence fee within the relevant field,as well as damages for the unauthorised use.The compensation is based on an estimatemade by the court and in this connection itshould be noted that compensation isgenerally very modest in Denmark.

16. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?A European patent holder seeking to enforceits patent in Denmark can, in principle, optfor mediation as an alternative to litigation.The chance of solving a conflict throughmediation before litigation must beevaluated on a case-by-case basis, takingthe subject matter of the patent and thepurpose of the litigation into account.

17. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? Denmark signed the London Agreement on




the application of Article 65 EPC on 17thOctober 2000. On 4th June 2003, the DanishParliament amended the Danish Patents Actin order to implement the London Agreementso that it will be compulsory to translate theclaims into Danish, while the descriptionmust be available in English. The date ofdeposit of the instrument of ratification andthus of entry into force of the amendment tothe Patents Act will be decided by thecompetent minister.

18. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?The European patent holder can strengthenits position by having the patent re-examinedby the Patent Office. This system, introducedin 1993, permits administrative re-examination of both Danish and Europeanpatents which have been registered inDenmark. The patent holder can amend theclaims and description of its patent in orderto take newly discovered and relevant priorart into account. This procedure mayimprove the chances of success in apreliminary injunction suit.

If a European patent application is stillpending, it is also possible to speed up theright to enforcement by filing an applicationfor a utility model, preferably with a limitedscope, that is tailor-made for an infringementsuit. A utility model right can be enforced inthe same way as a patent right, providedthat the utility model has been examined bythe Patent Office. In most cases it ispossible to have an examined utility modelgranted within a few months and then to filea suit for preliminary injunction against aninfringer at the city court.

A potential countermove from adefendant sued for infringement is tochallenge the validity of the patent in highcourt or to request administrative re-examination at the Patent Office in order tohave the patent invalidated or the scope ofprotection limited. However, whereinfringement proceedings are brought beforea court prior to a final decision on re-examination, the Patent Office will temporarilyshelve the prosecution of the re-examinationcase pending the decision from the court.

Because the climate for preliminaryinjunctions is generally favourable inDenmark, we have also seen an increase inthe number of non-infringement suits filed byprospective defendants.

Finally, the rules on compulsory licencesshould be mentioned. These state that theowner of a patent, the use of which is

dependent on a patent which belongs toanother person, may obtain a compulsorylicence for use of the protected invention ofthe latter patent if the former inventionrepresents an essential technical progressof substantial economic importance. Thesame applies in the case of the non-workingof a patent within the EU. These rules haverarely been utilised in practice, but theyprobably have a preventive effect.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?Finland has been a member of the EuropeanPatent Convention ever since 1996.European patents are treated as nationalpatents after they have been granted andhave come into effect in Finland. Therefore,the possibilities for European patent holdersto enforce their rights in Finland correspondto those of national patent holders. Patentinfringement cases can be trialled on a civilor criminal basis, although the former isnormally what happens in practice.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?The District Court of Helsinki is the solecompetent court of first instance withrespect to patent infringement and invaliditymatters in Finland. As all court actions inpatent cases are handled before the districtcourt of Helsinki, certain judges in onedivision of the court are specialised inhearing these cases.

The competent court of first instance inpatent infringement actions consists of onelegally trained judge and two technicalexperts in the preparatory hearings. Themain hearing consists normally of threelegally trained judges and two technicalexperts. Technical experts are appointed bythe court and they are regarded not asjudges but as assistants of the court. It is tobe noted that in the proceedings for patentinvalidation, the court shall at its owndiscretion also request the expert opinion ofthe Patent Office.

The second instance in patentinfringement cases is the Helsinki Court ofAppeal and the final instance is the SupremeCourt. Neither the court of appeal nor theSupreme Court has technical expertsassisting it.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? The preparatory phase of the court action inpatent litigation is based on writtendocumentation, while witnesses may be cross-examined in the main hearing. Scientificexperts are quite often used as expertwitnesses.

All material which illustrates that aninfringement has taken place can beconsidered relevant. The same applies tomaterial proving the claimed invalidity of apatent if the case concerns annulmentissues. Written documents, letters,brochures, drawings and photographs orpictures of the product or process inquestion, findings by the witnesses etc, canbe presented to the court. Rules of evidenceare applied in accordance with the CivilProcedural Code of Finland.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?It is quite usual in Finland that aninfringement action includes two combinedproceedings: the patent infringement actionof the claimant and the invalidationproceeding against the patent claimed to beinfringed, initiated by the defendant. If bothinfringement and invalidation matters arecombined, the court has first to decide thequestion of invalidity of the patent if thedefendant so requests. The infringementproceedings are then stayed until the validityhas been finally determined. This carriesprocedural benefits, because if the patent is

Enforcing patents in Finland

Enforcing patentsin Finland


Feature

By Ben Rapinoja and Aura Soininen,Borenius & Kemppinen Ltd, Helsinki


finally declared invalid, no penalty, paymentof compensation or other measures may beordered by the court as no infringement hastaken place.

In Finland, the Patents Act does notdefine the level of proof necessary in orderto demonstrate patent infringement orinvalidity. Basically the courts may freelyconsider the evidence on the basis of whichthey determine what is right in the case.Only with respect to precautionary measuresis there a defined standard for the issuance.Thus, the probability of the existence ofalleged infringement is assessed by thecourt in these cases.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Finnish patent law does not permit so-calledpre-trial discovery, as it is known to manycommon law jurisdictions. However, partiesmay request the court to order certainidentified documents or other pieces ofevidence to be presented in the court ifthese are necessary for determining thelevel of damages, for example.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The basic rule for the interpretation of patentsby the Finnish courts is set out in Section 39of the Finnish Patents Act. According to this,the scope of protection conferred by a patentis determined by the claims and thedescription may serve as guidance forinterpreting them.

Finnish case law, however, is notcoherent with regard to the interpretation ofthe patent claims in accordance with thestatute and also to the application of thedoctrine of equivalents. Nevertheless, it canbe said that while the courts havetraditionally based their assessment inpatent infringement cases first and foremoston the literal wording of the patent claims,they may also take into consideration thepatent description, drawings and prior artwhen interpreting them. Furthermore, inpractice the courts assess the patent claimsas a whole, taking into account technicalknowledge, intuition, legal tradition andexpert opinions. The claims may thus beconstrued more broadly than their literalinterpretation would give rise to.

Irrespective of what has been said above,in their reasoning the Finnish courts have notbeen keen on referring to the doctrine ofequivalents, according to which patent scopealso entails such elements which do not

infringe the patent claims literally, but whichsolve the technical problem in an equivalentmanner compared to the elements explicitlymentioned in the patent claims. Instead, theyhave applied the doctrine indirectly and haveconsidered whether there is only aninsubstantial difference between the patentedinvention and the allegedly infringingproduct/process, or whether technicalsolutions are functionally similar.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? With regard to patents granted for computer-related inventions, the Finnish Patent Officehas taken the position that it follows thepractice of the European Patent Office (EPO)and accepts so-called product claims.However, to our understanding, theenforceability of these patents has not so farbeen tested in court. When it comes tocertain biotech-related inventions, thesituation corresponds to that of computer-related inventions: the practice of the FinnishPatent Office is largely consistent with thatof the EPO, but the Finnish courts have notso far given decisions on the matter.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?Finnish courts do take the opinions anddecisions of other courts into account, butas a general rule they are not bound by themwith the exception of the precedents given bythe Supreme Court.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Finnish courts are to some extent willing totake into consideration the reasoning given byforeign courts in similar matters, as well asthe decisions of the EPO Board of Appeals.They are not bound to do so, however.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? The defendant may delay the courtproceedings by requesting extensions for itsstatements. This kind of delaying tactics mayprolong the process for several months.Furthermore, if the defendant challenges thevalidity of the patent claimed to be infringed,the court will set a certain period of time



during which the defendant must file theinvalidity proceedings against the patent.Handling of the invalidity action before thecourt takes normally from one and a half totwo years in the first instance.

11. How available are preliminaryinjunctions and how do you get them? A preliminary injunction action may beinitiated in Finland in the district court beforethe main subject matter is pending. In orderto succeed with such a claim, there must bea danger that the other party will hinder orundermine the realisation of the patentholder’s right by deed, action or negligence orin some other manner, or will essentiallydecrease its value or significance.Furthermore, probability of the existence of avalid right is needed, and the granting of thepreliminary injunction is tied to an interestbalance: the other party must not sufferundue inconvenience in comparison with thebenefit to be secured. Preliminary injunctionsare sought quite often by patentees,especially in certain fields of industry, but thecourts are cautious in awarding them.

In addition to a preliminary injunctionpotentially awarded prior to the initiation ofthe main action, it is possible to request thecourt in the course of the proceedings togrant an interlocutory injunction on use ofthe patent or to order that certain objects ofproperty be seized for the duration of theproceedings.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?The timeline for the patent cases at the firstinstance is generally from one and a half totwo years, depending on the case. There areno specific provisions for expedited process.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The parties in a patent infringement caseare entitled to appeal the decision to theHelsinki Court of Appeal in accordance withthe instructions given by the district court.These appeal proceedings last generallyfrom one to two years.

The decisions and judgments of thecourt of appeal can be further appealed tothe third instance, the Supreme Court. Inpatent proceedings, as in other civilproceedings, permission to appeal has to begiven. Permission is granted only if it isimportant to bring the matter to the

Supreme Court in order to ensure theconsistency of jurisdiction in similar cases,or if it is considered otherwise necessarydue to an error in the proceedings orotherwise in the case that would ultimatelylead to the reversal of the judgment or forsome other weighty reason. In practice,permission to appeal is granted in less thanone-tenth of all cases. In patent matters, thenumber is even lower.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?Costs of patent litigation are relatively highin Finland. Parties should take into accountthat, in addition to attorneys’ fees, the workof patent agents and, in most cases,scientific experts (cross-examined as expertwitnesses in the main hearing) add to thelegal costs of the case. Parties should beprepared for costs varying between Euros80,000 and Euros 400,000 to get to a firstinstance decision depending on the case.The costs are dependent on the amount ofwork needed for the court proceedings (thepreparation in writing, oral preparatoryhearings and the main hearing). The morewrits and pleading papers in the proceedingsthere are, the higher the costs.

It should be also taken into account thatin principle the winning party is entitled tohave its legal costs compensated by thelosing party.

15. Who can represent parties in court? Isspecialist representation required?The representative of the party in disputemust have a law degree, but no otherspecialist representation is required underthe law. Normally parties are represented byattorneys who are members of the FinnishBar Association and specialise in patent lawand intellectual property litigation.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?In civil cases, the primary remedy for patentinfringement in Finland is injunctive relief.Thus, if infringement is confirmed, the courttypically forbids the infringer from continuingor repeating the infringing act. Furthermore,the infringer is as a general rule liable forpaying reasonable compensation for theexploitation of the invention, which is oftendetermined on the basis of licence analogy.Damages for other injury may also beawarded. These damages may only include




those incurred during the last five years priorto instituting the court proceedings, however.Moreover, if the patent infringement isintentional, the infringer may be liable to afine. If requested, the court may also orderthat the infringing products must be alteredor destroyed. If the patent infringement caseis litigated on a criminal basis, the remediesavailable include a fine and imprisonment.

Punitive damages are not available inFinland and the reasonable compensationand damages awarded by the courts aretypically rather low.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?If the parties so agree, they can settle theircase in arbitration or in mediation.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?Finland has signed neither the LondonProtocol nor the European Patent LitigationAgreement. As of October 2006, no officialdecisions regarding the signing of the saidagreements or the timeline for doing so hadbeen made. Principally, Finland has had apositive approach towards the agreements,but prior to signing them there are stillstudies to be conducted with respect to theimplications of the implementation of theagreements in Finland.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?A European patent holder has exactly thesame rights as the owner of a French patent.It is, in particular, entitled to have aninfringement seizure carried out, which is avery efficient way of collecting evidence ofinfringement. After having broughtproceedings before the court it may furtherrequest a preliminary injunction.

Custom detention is now also availableon the basis of a patent. Although probablymore difficult to enforce than customdetention of goods infringing trademarks, itcan be a useful tool for patentees.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?All litigation on patent matters falls withinthe jurisdiction of seven first instance courtsand of the relevant courts of appeals.However, 70% of the litigation is handled bythe courts of Paris and Lyon. In the Pariscourt, one chamber specialises in IPmatters. More than 300 patent infringementcases are filed each year in France andtherefore the French courts are used todealing with complicated IP cases. As aresult, a patent owner can expect a highlevel of competence from French judges.Expertise may be ordered by the judge ontechnical questions but is not very frequent,except when evaluating damages.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts?

There is no cross-examination of witnesses.The whole procedure is in writing. Inprinciple, any kind of evidence can be used,but it is very rare for a judge to rely on oralevidence. Experts’ reports can be ordered bythe judge and both parties have the right tosee the report and findings, and to commenton them, just as they can with any otherarguments and facts taken into accountduring the process. The expert report is onlyone piece of information for the judge anddoes not bind him. He is entirely free tofollow the expert’s conclusions or not.Accounting experts are also very frequentlydesignated to evaluate damages. Sometimesexperts’ reports from foreign jurisdiction aretaken into account by the French judge.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?The court which is competent to decide theinfringement is also competent to decidevalidity. It makes the decision oninfringement coherent with the analysis ofthe patent first performed by the judge todecide on the validity. As a general rule, anykind of evidence can be used. However,judges tend to rely on written evidence. Inmost cases an infringement seizure carriedout by a bailiff is decisive for the decision oninfringement. In the case of a patentcovering a process for the manufacture of aproduct, the court may, subject to certainconditions, order the defendant to prove thatthe process used to manufacture anidentical product is different from thepatented process. It is a reversal of theburden of the proof. As to the validity of thepatent, this is very often challenged by thedefendant on the basis of writtendocuments.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?

Enforcing patents in France

Enforcing patentsin France


Feature



There is no discovery process as, forexample, in the US. The French IntellectualProperty Code (CPI), however, has provisionson conducting an infringement seizure, aprocedure which is very often used before alitigation. It allows a patentee to get relevantevidence in respect of the allegedinfringement. The investigations may includethe detailed description (saisie descriptive) –with or without the taking of samples – orthe physical seizure of the infringing goods(saisie réelle). It is also possible to seizeother items, such as the materials andimplements used in the production of thesegoods and the documents relating thereto,to identify the infringers. These measuresare taken ex parte, without the other partyhaving been heard. Only the president of thecourt of first instance can order aninfringement seizure and only the bailiffassisted by an expert (usually the patentattorney) is entitled to carry it out. It is avery efficient way to prove the infringement.It is possible for the person against whomthe seizure is directed to ask the judge toretract or limit the order. Damages can alsobe claimed if the seizure is misused. Withregard to the saisie réelle there is a timelimit of 15 days as from the date on whichthe seizure is carried out to bring an actionon the merits. If this does not happen, theseizure is void.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Of course it applies. According to well-established French case law, means areequivalent if, despite being in a differentform or structure, they have the sametechnical function to perform a similarresult. This technical function has to be new.If it is known from the art then the doctrineof equivalents does not apply. The amendedversion of Article 69 of the European PatentConvention 2000 requires courts to take dueaccount of equivalents, although it does notgive a precise definition of the term.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Regarding CRI (computer-related inventions),there are some reasonable decisions in thisfield. French judges may apply the exclusionfrom patentability more strictly than the EPO.The analysis is not yet performed entirely onthe basis of the same criteria (in particular,the “further technical effect”) that the nowwell-established EPO case law applies. I

think that practice will progressivelyharmonise between the different Europeancountries.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?No French court is bound by any previousdecisions on similar cases. But, of course,some principles have become well-established case law and are well observedand applied by judges, particularly in view ofthe specialisation of the courts, as alreadymentioned.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases?Here again French judges are totally free toevaluate or consider any decision or opinionfrom any other jurisdiction. In particular,when deciding on the validity of a patent theyare not even bound by the decisions oropinions of the EPO Boards of Appeal on thesame patent, though this does not meanthey will not consider them. In addition,application of Article 69 EPC is not yetharmonised across Europe, so certain caseswill be decided differently from onejurisdiction to another. This is one of thereasons why professionals are so impatientto have a system like the EPLA.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?If a patentee sues a third party on the basisof a European patent before the end of theopposition period, the assumed infringer willcertainly file an opposition and the judge willconsider whether it is appropriate to stay theproceedings.

The so-called torpedo strategy seems tobe confirmed since the decision of the ECJ inthe case Gasser v Misat of December 2003.A torpedo action is an action for declarationof non-infringement of a patent. It is filed by aplaintiff who feels threatened by a patenteebefore the latter files an infringement action.According to European Council Regulation44/2001 (and the former BrusselsConvention), in such a case the jurisdiction ofthe state where the infringement proceedingsare brought has to stay the proceedings untilthe jurisdiction of the court first seized isestablished. In the past, it was notuncommon to see plaintiffs first seizing thecourts of a country reputed for its slow



proceedings, in particular in patent matters,for declaration of non-infringement of aEuropean patent in other countries. Anyinfringement action before other courts(seized after the first court) in these othercountries was therefore frozen until the courtfirst seized decided on its competency. Andsince the court first seized was particularlyslow, the action before the second courtswas frozen for a long time. Some courts (thesecond courts) in other countries, such asFrance, decided not to stay infringementactions in such circumstances, particularly onthe grounds that the action for declaration ofnon-infringement was filed in bad faith. Butthe ECJ has confirmed that the second courtseized has to stay, regardless of any otherconsideration.

11. How available are preliminaryinjunctions and how do you get them?The owner or the exclusive licensee, uponcertain conditions, may request such apreliminary injunction. But proceedings onthe merits must first be brought before thecourt for infringement of a patent and theinjunction (or guarantees) is granted only ifthe proceedings on the merits appear wellfounded (that is, on the basis of theprovided information, the patent is regardedas likely to be valid and the infringementaction is likely to be successful) and havebeen initiated within a short time (usuallywithin six months of when the patenteebecame aware of the infringing acts). Theinjunction is provisional and, under penaltyof a daily fine, enjoins the defendant fromcommitting the suspected infringing acts.The judge may grant the injunction only whenthe plaintiff has provided a guarantee tocover possible indemnification of damagessuffered by the defendant if the infringementproceedings are subsequently judged to beunfounded. Or he may not grant thepreliminary injunction and instead requirethe defendant to post a guarantee to coverindemnification of the patentee in case it issuccessful in its infringement action. Ofcourse, the decision can be appealed.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?No accelerated examination of the case isavailable. The approximate duration of atypical infringement case is between 18 and30 months in first instance, depending onthe complexity of the case. It should be keptin mind that a decision is on both validity andinfringement.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The judgment of the first instance court canbe appealed within one month of thedecision being handed down. The appealautomatically suspends the decision of thefirst instance court, although this can bedeclared enforceable notwithstandingappeal. And the decision of the Appeal Courtcan be appealed before the Supreme Court(Court of Cassation) on points of law only.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?It depends very much on the nature of thecase and on its complexity (number ofparties involved, need for an expertise, etc).Statistics recently published by the EPOindicate amounts of about Euros 50,000 toEuros 200,000 for a small to medium-scalepatent litigation, which seems quite realisticand is confirmed by our experience.

15. Who can represent parties in court? Isspecialist representation required?The parties have to be represented by anattorney at law (avocet) before the firstinstance court and by an avoué forprocedural matters before the Court ofAppeal. Very few attorneys may representparties before the Supreme Court (CassationCourt). Patent attorneys have no right ofaudience, although they deal withsubstantive matters and play an importantrole in any patent litigation.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Different sanctions may be ordered by thejudge and these do not relate only todamages. Usually, the judge also decides tobar the infringer from continuing theinfringing acts, under penalty of a fine (whichcan be quite high). Depending on the case,he may also order destruction orconfiscation of the infringing articles. Hemay even order the confiscation of themeans and devices that were used to realisethe infringement, or bar the infringer fromoperating elements such as machines orprocesses in order to cease theinfringement, under penalty of a fine. Thesolutions available in this regard arenumerous. Publication of the judgment in thepress (which can be a problem for the




reputation of some firms) is also sometimesordered, as well as provisional execution ofthe decision, if needed.

As to damages, there are no punitivedamages in France. Damages are intended tocompensate the patentee for the harmsuffered. They are calculated on the basis ofthe infringing asset (number and value ofarticles) and the commercial and technicalcapacity of the claimant in order to determinewhether it could have satisfied the demand ofthe infringer’s clients. For the part of theinfringing asset which the plaintiff could havesold, lost profits will be determined, takinginto account the profit margin of the plaintiff.For the part of the infringing asset which theplaintiff could not have sold, the damage willbe estimated on the basis of a royalty rate (ahigher rate than would willingly be agreed on).If the plaintiff does not exploit the invention inFrance or only imports into France, damagesare calculated on the basis of a royalty rate(here again a higher rate than would willinglybe agreed on). Directive EC 2004/48 on theenforcement of IP rights opens the possibilityof increasing damages if necessary, inparticular on the basis of the unfair profitsmade by the infringer.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Mediation and arbitration are open to patentdisputes. The validity of the patent cannot bedecided by an arbitrator, but most of thequestions raised in a patent dispute can besettled through mediation or decided in theframe of arbitration.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?France is participating in the EPLA projectand has signed the London Protocol.

19. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?Very often the plaintiff files additional claimsfor unfair competition. Combining different IPrights can also be very efficient in somecases, in particular for customs detention.And last, but not least, French judges areincreasingly aware of the problem posed byinfringement in general and damagesawarded tend to be higher than in the past. Iagain mention Directive EC 2004/48, whichopens the possibility of increasing damagesif necessary.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?A European patent designating Germanyaffords the same rights as those conferredby a German patent. The holder of suchEuropean patent has, in particular, thefollowing options:• The right to send out a cease and

desist letter.• The right to apply for a preliminary

injunction or a decision on the merits.• The right to obtain evidence of an

infringement (to some extent only, though).• The right to request border seizure.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts? Specialised patent infringement chambers ofa few selected district courts handle patentinfringement cases. In total, there are 12such chambers in Germany. The patentinfringement chambers of the District Courtof Düsseldorf have the highest filing rateamong all of them, while those of the districtcourts in Mannheim, Munich, Hamburg andFrankfurt also hear a very substantialamount of infringement cases. The judgeshearing patent infringement matters aretrained jurists and do not need to have atechnical background. Due to their beingexposed to all facets of patent infringementcontinuously, the German patentinfringement chambers are widely held inhigh esteem by parties and practitioners,and understand even complex and difficultpatents and technology. The same is truewith respect to the courts of appeal.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Although in any litigation an oral hearing takesplace before the court, it appears to be thewritten briefs – rather than oral arguments –that make the courts come to a decision.

In practice, witnesses will be heard by thecourt and examined by the parties if crucialand decisive underlying facts of the case arein dispute (eg, if the defendant has a validdefence based on prior use). Experts areheard by the court to provide it withknowledge it does not have, in particularwhen, say, the technology is extremelydifficult to grasp for the court or when thesubject which is alleged to be infringing doesnot fall literally under the plaintiff’s patent,but is said to be infringing under the so-calleddoctrine of equivalents.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?As opposed to other countries, Germancourts hearing infringement mattersexclusively deal with infringement of thepatent, ie, they do not have the competenceto decide on the validity of a patent. As aconsequence, the defendant needs to attackthe validity in separate proceedings (which iswhy the German system is commonly referredto as the dual system), to be initiated at theFederal Patent Court, the European PatentOffice or the German Patent and TrademarkOffice, as the case may be.

Although the defendant may not requestthat the court hearing an infringement matterinvalidate the plaintiff’s patent, it mayrequest that the infringement proceedings bestayed until the invalidity proceedings areresolved, ie, until it has been determinedwhether the patent is valid. As a matter offact, in almost all cases where a party filesa complaint on grounds of patent

Enforcing patents in Germany

Enforcing patentsin Germany


Feature

By Bernd Allekotte, Grünecker KinkeldeyStockmair & Schwanhäusser, Munich


infringement, the defendant will respond byinitiating invalidity proceedings. However, theinfringement courts will honour requests tostay the infringement trial only in caseswhere there is an overwhelming likelihoodthat the patent which is allegedly infringedwill be invalidated; otherwise, theinfringement trial continues to run during theparallel invalidity proceedings. In practice,the defendant may succeed in convincing theinfringement court to stay its proceedings ifit can present a novelty-destroying prior artdocument which has not been examinedduring prosecution. It is only rarely that a denovo review of other prior art will lead to astay of infringement proceedings, inparticular when it has already beenexamined and reviewed during prosecution.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?German law contains no process similar tothat of pre-trial discovery. Basically, aplaintiff needs to know all the relevant factsbefore suing. There are, however, somelimited ways to obtain evidence from adefendant. Currently, under a rather recentruling of the Federal Supreme Court, aplaintiff may request that a device or objectthat is not readily available to the plaintiff beinspected by an expert appointed by thecourt. Such a claim will be granted by thecourts only if a balancing of interests (ie, alikelihood of infringement on the side of theplaintiff, as opposed to the justifiedinterests of secrecy on the side of thedefendant) results in favour of the plaintiff.Moreover, German courts allow forindependent proceedings for taking evidence,according to section 485 of the CivilProcedure Code. Please note that thecurrent regime of German laws is underreview, as European Directive 2004/48(Enforcement Directive) will be transposedinto national law by the beginning of 2007.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The scope of a patent is defined by theinfringement court, which takes intoconsideration the meaning of the claims.These are interpreted in light of thedescription and the drawings of the patent.

If the subject matter fulfils all features ofthe patent literally, this constitutesinfringement. However, modifications of thesubject matter vis-à-vis one or more featuresof the patent may also be caught under theso-called doctrine of equivalents. According

to well-established German case law, amodification still falls under the scope of apatent if: (1) the modified means haveobjectively the same effect as the means ofthe patent; (2) a person skilled in the artwas able to find such modified means; and(3) the person skilled in the art would alsoconsider such modified means as a solutionof equal quality to what is patented whenreading the patent.

In practice, courts appoint experts toassist them in determining whether theserequirements are met. Such experts areultimately appointed by the court, yet theparties are given the opportunity – and are,in fact, invited – to propose experts in theparticular technical field of the patent. Theappointed expert is asked to submit a writtenopinion on factual questions that will allowthe court to find for or against equivalence.

Once the court receives the opinion, theparties may comment on it in written briefsas well as in a follow-up hearing at which theexpert may be ordered to appear to defendhis opinion. Depending on the complexity ofthe issues raised and the time the expertneeds to render an opinion, a trial may bedelayed significantly, ie, for about a year.

7. Are there certain types of patent rightthat may be granted by the EPO – forexample, biotech computer software-related– that are more difficult to enforce thanothers?There are no specific types of patent grantedby the EPO that should be regarded as beingmore difficult to enforce than others.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases? German courts are not bound by opinionsand decisions of other courts that havedealt with similar cases. Even at the appeallevel, one will notice that in particularquestions of law different views existbetween the courts, but in practice thesedifferences are rather minor.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Although a party may find it worthwhile tointroduce a reasoning given by a foreign courtin a parallel or similar case in its favour tobolster its position, it should not anticipatethat German courts will be overly impressedby this.



10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? A defendant seeking to delay a case willprimarily consider initiating invalidityproceedings against the plaintiff’s patentand will try to convince the infringementcourt to stay proceedings until a decisionhas been rendered as regards the validity ofthe patent.

Another means to delay the infringementtrial is to persuade the court to appoint andhear an expert. The defendant may succeedif the technology (patent) is difficult tounderstand and/or the patent is not infringedliterally (ie, the subject matter containedmodifications vis-à-vis the patent claim).

Potential defendants may also considerfiling a motion for a negative declaratoryjudgment in a foreign jurisdiction wherecourts may render a decision rather slowly,such as Belgium or Italy. If the foreigncomplaint of the potential defendant ispending before it is sued in Germany, theGerman courts need to stay the German trialuntil a decision is rendered by the foreigncourt. At least until recently, this resulted insevere delays to some German trials.Recently, however, there has been anoticeable decrease in choosing such astrategy. One reason is a legislative changein the applicable European regulation nowgoverning the point of time when a complaintis regarded to be pending for all EU memberstates equally. Also, in cases where it isobvious that the action of the defendant inthe foreign jurisdiction is designed merely todelay German infringement proceedings,courts have held that this may constitute anabuse of procedural means and have heardthe case in spite of a parallel foreign trial.

11. How available are preliminaryinjunctions and how do you get them? The plaintiff may consider obtaining apreliminary injunction – which is limited toordering that the defendant cease and desistfrom committing infringing acts.

Whether trying to obtain a preliminaryinjunction is an option for the patenteeneeds to be decided on a case-by-casebasis. In practice, it is particularly interestingin less complex cases where the plaintiffcan show a clear case of infringement. Inany case, should the patentee consider filinga motion for a preliminary injunction, itneeds to act very quickly because courtsgrant preliminary injunctions only if thematter is urgent; this requires the plaintiff tofile a motion for a preliminary injunction with

a period of one to two months upon notice ofthe infringing actions.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process? As compared to other jurisdictions, mostpatent infringement disputes are decidedrelatively quickly in Germany. As a rule ofthumb, the plaintiff may expect the districtcourt to render its decision about one yearafter the filing date if no expert is appointedand heard by the court.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take? Any judgment in a patent infringement mattermay be appealed. However, it is ratherdifficult to introduce new facts during appealproceedings, ie, facts which were notintroduced when the case was heard by thedistrict court. In practice, therefore, appealproceedings often turn out to be limited toreviewing whether the court of first instanceapplied the laws correctly. Appealproceedings may take up to another year asfrom the date of filing the appeal.

It is only under very narrowcircumstances that a further appeal – whichgoes to the German Federal Supreme Court– will be heard; such appeals are, in anycase, limited to a review of questions of law.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?In Germany, the losing party needs toreimburse the winning party for legal fees,consisting of: (1) court fees; (2) attorneys’fees; (3) patent attorneys’ fees; and (4)reasonable expenditures. The fees dependon the value in dispute, which is a number inEuros that reflects the plaintiff’s interest inthe case. In practice, it turns out that aplaintiff should consider being exposed to aminimum of about Euros 40,000 in legalfees if it loses the suit. The cost riskincreases in more important cases, but inalmost all cases the plaintiff may assess itpretty accurately before suing.

In appeal proceedings, the same principlesapply, but the cost risk is roughly 20% higherthan in the proceedings before the court offirst instance. The cost risk for an invalidityaction depends on the specific action initiated.

15. Who can represent parties in court? In patent infringement matters, the parties




need to be represented by an attorney at lawwho is admitted to the German Bar. There isno need for the attorney at law to bedomiciled at the court hearing the matter;rather, any German attorney at law mayrepresent clients at both the district courtand the court of appeals level.

It is quite unusual for an attorney at lawrepresenting a client in a patent infringementtrial also to have a technical background. Inpractice, therefore, the litigators are alwaysassisted by patent attorneys who providethem with the technical background requiredby the specific case.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances? The usual remedies sought by the plaintiffinclude: (1) cease and desist; (2) payment ofdamages; and (3) rendering of accounts forinfringing actions in the past. Damages maybe calculated by the plaintiff on the followingbases: (1) actual losses of the plaintiff; (2)reasonable licence fee; or (3) profitgenerated by the defendant.

Due to a recent holding of the GermanFederal Supreme Court, claiming the profitmade by the defendant may often turn out tobe the most rewarding method for theplaintiff. Under certain circumstances, theplaintiff may also request that infringingdevices be destroyed. If the court finds infavour of the plaintiff, it may enforce thejudgment by depositing security (in anamount which is fixed by the court) by wayof, for example, a bank guarantee.

17. Are there any realistic alternativesto litigation, in cases relating to patentdisputes?Although alternative dispute resolutiontechniques such as mediation or arbitrationare, in general, available, they do not play animportant role.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?Germany has ratified the London Protocol.

19. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?A patentee should always consider filing arequest for border seizures to stop infringingdevices from entering the country.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?A European patent is subject to the sameconditions as a patent granted by theHungarian Patent Office (HPO). A Europeanpatent is considered granted when the noticeis published in the European Patent Journal.The patent’s effect is subject to the filing ofthe Hungarian text of the European patentwith the HPO within three months of itsgrant. Should the patent owner fail to file theHungarian text, the patent shall be regardedas ineffective in the territory of Hungary.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?In patent cases, the Metropolitan Court ofBudapest has exclusive jurisdiction, as acourt of first instance. A specialised councilcomposed of a three-judge panel, where twoof the three professional judges are requiredto have a technical degree, handles cases.The Metropolitan Court is an assignedhigher-level court. The Metropolitan CircuitCourt hears appeals against its decisions.Legal revision (exceptional relief) falls withinthe power of the Supreme Court.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? It is not possible to cross-examine witnessesat trial in the way the question suggests.However, the court hears witnesses and theparties may ask them questions. The court

usually appoints an expert for those fact-finding issues that require special expertise.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Patent cancellation claims shall be initiatedbefore the HPO. If the defendant in theinfringement proceedings challenges thevalidity of the patent (this is a separateproceeding) and the patent cancellationproceedings are pending (either before theHPO or after appeal before the court), theinfringement proceedings are suspended. Atthe request of either party, patentcancellation proceedings shall be conductedexpeditiously if patent infringement litigationhas been commenced on the basis of thesame patent. However, the pendingcancellation proceedings may not prevent thecourt from ordering an interim injunctionagainst the alleged infringer. In the course ofthe court's review as to whether the interiminjunction is necessary for the specialprotection of the claimant's rights (for thedetails see section 11), the court shallconsider whether the patent has already beencancelled by the non-final decision of the HPOor the court of first instance, or whether aEuropean patent with effect for the territoryof the Republic of Hungary has been revokedby the Opposition Division of the EuropeanPatent Office (EPO), or whether it has beencancelled in another member state of theEPO in a final or non-binding decision.

There are no specific rules on level ofproof in IP matters. With respect to processpatents, the Patent Act grants a presumptionfor the patent holder – pursuant to the TRIPsAgreement – that, pending proof to thecontrary, a product shall be deemed to beproduced through the patented process if theproduct is new, or it is highly probable thatthe product has been manufactured throughthe patented process, and the patent holdercannot define the applied process, even after

Enforcing patents in Hungary

Enforcing patentsin Hungary


Feature

By Dr Gábor Faludi and Dr GusztávBacher, Szecskay Ügyvédi Iroda –Attorneys at Law, Budapest


having taken the steps generally expected inthe given situation. In particular, it is highlyprobable that the product has been producedthrough the patented process if this is theonly known process.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Even before the commencement of thelitigation, the court may – on request of theinterested party – order preliminary fact-finding proceedings if it is likely that thecarrying out of such fact finding during theproceedings or at a later time would not besuccessful or would be more difficult; orwould enable the court to finish theproceedings within a reasonable period oftime. Further, preliminary fact-finding may becarried out if the holder of the patent hasalready substantiated the infringement orthreat of infringement to a reasonable extent.Preliminary fact-finding may also be orderedin ex parte procedures, where any delay islikely to cause irreparable harm or wherethere is a demonstrable risk of evidencebeing destroyed. These circumstances will betreated as a case of urgency.

There is no obligation under Hungarianlaw for a litigant to disclose documents tothe other litigant. Discovery proceedingssimilar to those found in US courts areunknown in Hungary. It should be noted,however, that while there is no general dutyof disclosure, the tribunal could order alitigant, at the request of the counterparty, todisclose certain documents, includingdocuments that could be harmful to thedisclosing party (notwithstanding theprotection of trade secrets). In IP litigation,the burden of proof can be reversed if theplaintiff has substantiated its statements toa reasonable extent. As a result, theopposing party can be ordered to presentand allow for review documents and otherphysical evidence in its possession, and topresent bank, financial or commercialinformation and documents in its possession.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The scope of protection conferred by a patentshall be determined by the claims. Theclaims shall be interpreted on the basis ofthe description and the drawings. Patentprotection shall cover any product or processin which all the characteristics of the claimare embodied. The terms of the claims shallnot be confined to their strict literal wording;neither shall the claims be considered as

mere guidelines for a person skilled in the artto determine the claimed invention. Theofficial reasoning of the Patent Act explainsthat due to this provision governing the scopeof protection, it is not necessary to definethe doctrine of equivalents in the Patent Act.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? In principle, there is no difference betweenthe enforcement of different types of patent.The legal preconditions for the granting ofpatents are in conformity with the EPC.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?While binding case law (precedents) per sedoes not exist in Hungary, the Supreme Courtsets guidelines based on principles and alsopublishes opinions on issues of principle inorder to give guidelines to all courts. Suchdirectives and decisions on issues of principleas set forth by the Supreme Court are bindingon all courts in Hungary.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Jurisprudence in Hungary does not take intoaccount the decisions rendered by the courtsof other countries. Hungarian courts maydecide only on the basis of the legislation inforce in the Republic in Hungary and thefacts of the case revealed by the Hungariancourts. Following Hungary's accession to theEuropean Union, it is no longer possible toapply without reservation the formerprecedents, according to which a foreigndecision, rendered upon similar facts of thecase, cannot substantially bind the Hungariancourt (formal binding force undoubtedly doesnot exist), as the decisions rendered by thecourts of the member states are based onmandatory harmonised substantive law.

As indicated above under section 4, inthe course of evaluating the grounds of aninterim injunction, the court may considerwhether a European patent has beenrevoked by the Opposition Division of theEPO or whether it has been cancelled inanother member state of the EPO.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?



If the patent holder starts an infringementcase, the defendant may claim, from the HPO,the revocation of the patent on the basis thatthe patent is not eligible for protection.Although commencing cancellationproceedings per se does not prevent theMetropolitan Court from rendering apreliminary injunction, the court shall alsoconsider whether the patent has already beencancelled by a non-final decision of the HPO.

11. How available are preliminaryinjunctions and how do you get them? According to Section 156(1) of the HungarianCivil Procedure Code, a court may, uponapplication, issue a preliminary injunction inorder to: prevent imminent damage; maintainthe status quo during a legal dispute; orprotect the claimant's rights if it is found thatthey need special protection. This is the caseas long as the burdens imposed by such ameasure do not exceed the benefits that maybe gained by it. The facts relating to thereasoning of the request for a preliminaryinjunction must be of a probable nature.

The request for a preliminary injunction ininfringement litigation can be filed prior tofiling the statement of claim. In court actionsinstituted on the grounds of allegedinfringement of a patent, a preliminaryinjunction will be considered necessary forthe special protection of the claimant's rightsif the claimant can prove that the patent isprotected and that it is the patent holder or auser which is authorised to institute courtproceedings due to an infringement in its ownname. Upon weighing the potential benefitsand disadvantages of the preliminaryinjunction, the court shall take into accountwhether such injunction is manifestly andsubstantially contrary to public interest or theinterests of third parties.

Instead of an injunction, the court mayorder the defendant to provide appropriatesecurity in lieu of continuing the allegedlyinfringing acts.

The court shall rule on a preliminaryinjunction in special proceedings no laterthan 15 calendar days following thesubmission of a petition for such measures.The same rules apply to the court of secondinstance regarding appeals against thedecisions of the court of first instance. Thepreliminary injunction is enforceable even ifthe defendant files an appeal against suchdecision. The parties must be heardpersonally, unless the urgency of thesituation makes a hearing impossible. Whereany measures are taken ex parte, theopposing party shall be given notice when the

decision is executed. Upon being notified ofthe decision, the affected party may requesta hearing and that the decision ordering theprovisional measures or the preliminaryevidence be modified or revoked.

In a similar way to so-called Marevainjunctions and under the conditions set forthabove relating to the preliminary injunction,the patent holder may request the court toorder: (1) protective measures under theprovisions of the Act on Judicial Enforcement,if it can be substantiated that anysubsequent attempts for the recovery ofprofits made by the infringement or thepayment of damages are in jeopardy; and/or(2) the infringer to provide or disclose bank,financial or commercial information anddocuments for the purposes of ordering suchprotective measures.

The party requesting the court to grant thepreliminary injunction or protective measuresmay be obliged by the court to provideappropriate security. The security serves as adeposit to satisfy claims for the recovery offinancial disadvantages suffered by theopposing party. If the opposing party fails toenforce its claim for recovery within threemonths of the operative date of the judgmentfor repealing the measure, the depositor of thesecurity may request the court to release thesecurity. This provision provides compensationfor those who suffer from an unfoundedrequest to apply the said measures.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?Section 2 of the Code of Civil Procedureprovides that court proceedings must becompleted within a reasonable time. However,it often takes years to obtain a judgment,depending upon the workload of the court andthe complexity of the matter. It is worthmentioning that the reform of the judicialsystem – namely the setting up of the Courtof Appeals between the second level (countyand metropolitan courts) and the SupremeCourt – has considerably accelerated theproceedings at the appellate courts.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?In infringement proceedings, an appeal canbe filed against a judgment of theMetropolitan Court to the Metropolitan Courtof Appeal. Further, the party may requestfrom the Supreme Court, on the basis ofviolation of law, a judicial review of the




second instance judgment rendered by theCourt of Appeal.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?Depending on the complexity of the case,from Euros 1,500 upwards.

15. Who can represent parties in court? Isspecialist representation required?In patent cases, attorneys-at-law or patentattorneys may represent the parties.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Hungarian law has been adapted to the IPEnforcement Directive (2004/48/EC). Claimscan be initiated against the infringer of thepatent right and some of them (injunctionand data provision, as set forth below) mayalso be initiated against third parties. In theevent of infringement, the patent holder may– in accordance with the circumstances ofthe case – have the following civil law claimsagainst the infringer:• Establishment of the fact that patent

infringement has occurred.• Cessation of the infringement or threat

of infringement and injunction fromfurther infringement or the provision ofsecurity (guarantee) by the infringer incase the allegedly infringing behaviourwere to continue.

• Provision of data on parties taking partin the manufacture of and trade in goodsor performance of services which infringeon the patent, as well as on businessrelationships established for the use ofthe infringer.

• Amendments of the infringement – bydeclaration or in some other appropriatemanner – and, if necessary, publication ofsuch amendments by and at the expenseof the infringer.

• Recovery of economic profits achievedthrough infringement.

• In relation to those assets and materialsused exclusively or primarily in theinfringement, seizure, delivery up thereofto a particular person, recall and definitewithdrawal thereof from commercialcirculation, or destruction.

• Appropriate measures for thedissemination of the informationconcerning the decision at the expenseof the infringer as decided at thediscretion of the court.

• Compensation of damages other thanthe financial profit achieved by theinfringer in case of culpable infringementunder the Civil Code.

Further, the court may order thedefendant to pay general (estimated)compensation for damages if the extent ofdamage (usually the lost profit element of thedamage) cannot be precisely – even if only inpart – calculated. The estimated damagesshould suffice to provide the injured partywith full financial compensation. A sentenceon estimated damages constitutes resjudicata, even if it turns out in the future thatthe extent of actual damage did notsubsequently reach the amount of theestimated damages. If, however, thedefendant pays an annuity (a recurringamount) as estimated damages, the reductionthereof or the reduction of the payment periodcan be claimed in accordance with anysubstantial changes in the conditions.Hungary does not have the concept ofpunitive damages. The damages award ismeant to provide full repair, ie, to compensatea party from the loss actually suffered.

Some of the claims as listed above canalso be enforced against persons other thanthe infringer. The claim for injunction can beenforced against any party whose service isused in relation to the infringement. Claimsto provide information can be enforcedagainst third parties, namely parties to theinfringement who are: • Found in possession of the infringing

goods on a commercial scale.• Found to be using the infringing services

on a commercial scale.• Found to be providing, on a commercial

scale, services used in infringing activities.• Named by the persons referred to above

as being involved in the production,manufacture or distribution of the goodsor the provision of services.

The information to be provided by eitherthe infringer or the party aiding infringementcovers:• The names and addresses of the

producers, manufacturers, distributors,suppliers and other previous holders of thegoods or services involved in theinfringement, as well as the intendedwholesalers and retailers or those actuallyinvolved.

• The quantities produced, manufactured,delivered, received or ordered, as well asthe price paid or received for the goodsor services in question.



Assets, materials and goods can beseized even if they are possessed by anowner other than the infringer if the owneracts in bad faith, ie, it was aware of theinfringement or should have been aware ofsame with proper care.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Settlement by the parties.

Mediation proceedings under a separateAct preceding a lawsuit are possible inpatent cases (except for a challenge to adecision of the HPO) as well. If themediation fails, the parties are free tocommence a lawsuit.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?Hungary has not signed up to either theLondon Protocol or the European PatentLitigation Agreement. The issue of signing isunder professional discussion.




Enforcing patents in Iceland Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?An important remedy for a patent holder inIceland is the possibility of having apreliminary injunction against the allegedlyinfringing act. Such an injunction is grantednot by courts but by governmental authorities,somewhat similar to sheriffs. Such actionsare relatively swift and one can expect a rulingwithin a few weeks. An injunction is possibleupon proving, or showing that it is plausible,that an act is likely to infringe one’s legitimaterights, that the act has already begun or thatit is pending, and that the owner’s rights willbe diminished or harmed substantially if it isforced to wait for a court’s decision. Themost important condition is that it must beproven that general rules on torts orpunishment will not provide for sufficientprotection for the rights holder. There is alsoa comparison of the interests of the rightsholder to have the injunction granted with theinterests of the alleged infringer to pursueits actions.

If an injunction is granted, a case willimmediately follow in the courts in order toconfirm the preliminary injunction (must be filedwithin one week of issuance of the preliminaryinjunction). The alleged infringement will bedealt with in that same case.

General court proceedings are alsopossible without any prior injunctionmeasures. The court system in Iceland ismade up of two stages: district courts (eightcourts in eight jurisdictions around thecountry) and the Supreme Court. All patentcases, including verification cases followinginjunctions, are dealt with in the district courtof Reykjavik.

Finally, we would like to mention thatthere are some remedies available underIcelandic customs laws. It is possible, ifthere is a belief that products infringingintellectual property rights are beingimported, to have those products withheld incustoms clearance. This is possible uponrequest from the relevant IP rights holderwhile it seeks justice before the competentauthorities. In these cases, the rights holdermust submit an indemnity to cover anyfinancial damage for withheld products whichare subsequently found to have beenimported legally.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?There are no specialist patent courts inIceland. Patent cases, like all other cases, aretried before general courts, although casesinvolving patents are all tried within the samejurisdiction, the district court of Reykjavik.

Only a few patent cases have been triedbefore Icelandic courts, although it is ouropinion that the number is increasing.Expertise among judges is therefore not great.It is possible, however, to call for experts in acertain field to sit as assisting judges in apatent case. These experts do not have to belawyers but are usually professionals in therelevant technical field. Another option is toappoint outside assessors to give expertassessments regarding certain questions oruncertainties relevant to the case at hand.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts?Yes, it is possible to cross-examinewitnesses. The rule is that the party bringingthe witness first asks questions. Theopposing party then has an opportunity tocross-examine.

Enforcing patentsin Iceland

By Gunnar Örn Harðarson and ÁsdísMagnúsdóttir, Árnason Faktor, Reykjavik


The main rule is that all cases beforeIcelandic courts go through oralproceedings. Parties present the case andexplain the submitted materials and otherevidence they have put forward. Evidence ina case can be statements of parties beforethe court, statements of other witnesses,expert assessments and statements beforethe court, written materials and othersubstantial materials.

There are general rules that one mustcomply with in order to have a court-appointed expert assessor. An expertassessor can answer questions that pertainto, for example, what is a fact in a givencase. The role of an expert assessor is,however, limited by the role of the judge -that is, he cannot be used to answer generalquestion that pertain to interpretation of thelaw or questions that one only needs generalknowledge or education to be able toanswer. Those are within the role of thejudge in each matter. The judge then decidesthe evidential value of an expertassessment. In general, though, it is safe tostate that expert assessment is usuallyconsidered very strong evidence with regardto the questions it covers.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?In an infringement case the defendant cancounter-summon the plaintiff claiminginvalidity of the patent. When this happensthe validity of the patent is dealt withsimultaneously with the infringement claim.

Rules on proof are not very well definedin Icelandic law and practice in mattersrelating to patent infringement and invalidity.This is true mainly due to lack of precedentsin courts. The basic rule is that the burden ofproof regarding infringement lies on the partyalleging the infringement. The judge thendecides in accordance with general rules onproof in Iceland whether a fact has beenproven or not. There are, however, specialrules regarding the burden of proof in aninfringement case involving process patents.If the alleged infringer is making the sameproduct as the process patent covers it hasthe burden of proving that the product is notmade with the patented process.

In cases involving invalidity of patents,the party alleging invalidity has the burden ofproving that to be the case. Here again it iswithin the general role of the judge to decidewhether the claim has been proven or not.

In addition to the above, we would like toemphasise that Icelandic patent laws have

been amended to comply with the EPC. Itremains to be seen how much Icelandiccourts will look to court precedents inrelation to the Convention.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Pre-trial discovery phase as it is known inthe US does not exist in Iceland.

6. To what extent does any doctrine ofequivalents apply in an infringement action?According to Icelandic laws, the scope of thepatent is based on the patent claims. Theclaims are constructed with reference to thedescription given in the patent. In general, itis also safe to say that courts will to someextent use some kind of doctrine ofequivalents in resolving infringementmatters. However, again, we have toemphasise lack of court precedents in thisregard, so it is difficult to lay down detailedrules in this respect. Courts would, however,look to precedents in other Nordic countries.

Moreover, as Iceland is now a party to theEPC, its courts are bound by the Protocol oninterpretation of article 65 of the EPC,although the Protocol is not directly a part ofIcelandic laws. It remains to be seen howmuch courts will refer to the the Protocol inrelation to its interpretation of the scope ofpatent claims.

7. Are there certain types of patent rightthat may be granted by the EPO – biotechor computer software related, for example –that are more difficult to enforce thanothers?Since 1st November 2004, the patent lawsof Iceland have been harmonised with theEPC. Icelandic laws have also been amendedto comply with the EU directive on the legalprotection of biotechnology inventions.Therefore, there are no provisions inIcelandic laws that would act as an obstaclefor enforcement of European patents in thisrespect. But, again, there is very little caselaw in the field so it is very difficult to predictthe possible outcomes in such cases.Regarding computer software-relatedinventions the practice by the IcelandicPatent Office up until now has been to followEPO practice. Consequently one would expectthat that would apply also for the courts.

In this respect we would, however, alsolike to draw attention to recent changes inthe patent laws of Iceland to comply with EUDirective 2004/27/EC of 31st March 2004,which changed Directive 2001/83/EC. A


Enforcing patents in Iceland


certain limitation was added to the scope ofpatent protection on 8th March 2005 (Bolartype exception) with regard to research andtesting, and other necessary means to allowapplications for marketing authorisation of,for example, generics.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?In general, courts look to precedents whendeciding cases if the cases in question aresimilar and there have been no changes inthe laws. Precedents of the Supreme Courtof Iceland are of particular importance inthis respect. District court precedents are oflesser importance.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases?In general, Icelandic courts are often willing toconsider reasoning and precedents given bycourts in the other Nordic countries. This alsoapplies in the field of intellectual propertyrights. Court decisions from other countriesmight also be relevant, especially if they arerelated to the interpretation of internationalagreements to which Iceland is a party.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?Parties to a court proceeding cannot bythemselves, even if they both agree, delay acase. The judge is supposed to deny grantingof useless extensions of terms to ensurethat the case will be resolved quickly andeffectively. This rule prevents parties fromdelaying a case out of the ordinary, on theirown or in agreement with the other party.

11. How available are preliminaryinjunctions and how do you get them?Preliminary injunctions are granted bygovernmental authorities, somewhat similarto sheriffs. Such actions are relatively swiftand one can expect a ruling within a fewweeks. An injunction is possible uponproving or showing that it is plausible thatan act is likely to infringe one’s legitimaterights, that the act has already begun orthat it is pending and that the owner’s rightswill be diminished or harmed substantially ifit is forced to wait for a court resolution.The most important condition is that it mustbe proven that general rules on torts orpunishment will not provide for sufficient

protection for the rights holder. There is alsoa comparison of the interests of the rightsholder to have the injunction granted withthe interests of the alleged infringer topursue its actions. If an injunction isgranted, a case will immediately follow incourt in order to confirm the preliminaryinjunction (this must be filed within oneweek of issuance of the preliminaryinjunction). The alleged infringement will bedealt with in that same case.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?It takes about six to 12 months to completea case at first instance. An expertassessment, however, usually takes up alarge chunk of time, if one is requested.Deciding to have an expert assessmenttherefore usually delays a final decision.There is a special procedure before thecourts for cases requiring quick resolution,but this procedure is in general not availablein a typical infringement case. An IP-relatedmatter might qualify for this specialprocedure if the matter revolves around adecision of government authorities.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?An appeal from the district courts in Icelandis possible to the Supreme Court. The criteriafor granting an appeal are not very strict butmainly relate to the minimum amountclaimed, if the claim involves a certainamount of money. The minimum amounttoday is around Euros 5,500. An appeal mustbe lodged within three months of a court’sdecision in a first instance case. The appealprocess takes about six to eight months.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?This is very difficult to estimate. The numberof cases has been very limited in the pastand they have not been very complex. Togive some guidelines we would estimate thecost to be in the range of Euros 30,000 toEuros 50,000 for taking a non-complexpatent case through the first instance court.

15. Who can represent parties in court? Isspecialist representation required?Although parties can represent themselvesin Icelandic courts, that rarely happens andespecially not in complex matters such as



patent cases. To be able to represent othersin court one must be an attorney at lawauthorised to practise before the courts ofIceland. Patent attorneys (patent agents) arenot allowed to represent others in court.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Upon proving infringement the remediesavailable are damages for the injury whichthe infringement may have caused. Somecompensation for the exploitation of thepatent is also possible. If the infringement isconducted intentionally the punishment canbe a fine or, under aggravatedcircumstances, imprisonment for up to threemonths. Other measures may be demandedby the court upon a claim thereon to preventthe abuse of products manufactured inaccordance with the patented invention or ofany apparatus, tool or other article the useof which would involve patent infringement.

Punitive damages are, however, notavailable under Icelandic laws.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?It is, of course, possible to solve casesthrough arbitration in Iceland. That has notbeen used much in IP-related matters,however, and we would not recommend it asa realistic alternative, due to lack ofexperience in such cases.

18. Has your jurisdiction signed up to theLondon Protocol or the European PatentLitigation Agreement? If not how likely, is itthat it will do so?Iceland acceded to the London Agreement on31st August 2004 when depositing itsinstruments for EPC membership. In practice,the principles of the London Agreement haveactually been followed in Iceland since 1stJanuary 2002. This means that only atranslation of claims into Icelandic is required,provided the description is filed in English. Ifthe description of an issued European patentis in German or French, the proprietor canchoose to file either an Icelandic or Englishtranslation or validation. This rule applies toall European patents validated in Iceland andhaving an effective filing date after Iceland’saccession to the EPC. This is worth specialattention as it reduces the cost of validatingEuropean patents in Iceland considerably.

19. Are there any other features of the

enforcement system in your jurisdiction thatyou would like to point out?We would like to draw special attention tonew legislation (Law 53, 13th June 2006),which entered into force on 1st July 2006,concerning obtaining proof in relation toinfringement of IP rights, including patents.The law stipulates that following a courtorder, where a patent holder needs to showthat infringement is already likely to haveoccurred, a search may be conducted bygovernment authorities (sheriffs) to collectevidence - such as products, equipment forproduction, computer data or other relevantmaterial - of the infringement. This procedureis designed to be relatively swift and it isworth noting that under certaincircumstances the judge does not need toadvise the alleged infringer of the courtproceedings or of the upcoming search.




Enforcing patents in Ireland Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?The holder of a European patent may bring civilproceedings to enforce its rights in Ireland.Ireland recently transposed into national lawthe EC Directive on the Enforcement ofIntellectual Property Rights, which had theeffect of harmonising enforcement proceduresthroughout the European Union. Thus theholder of a European patent can expect tohave similar enforcement remedies availableto it in Ireland as in other member states.

In practice, civil proceedings commenceafter the claimant has issued a letter beforeaction and the allegedly infringing party hasbeen given an opportunity to remedy anydamage caused. The onus rests upon theplaintiff rights holder to prove its case,although certain presumptions of ownershipand the subsistence of rights in the plaintiff(until the contrary is proved) may apply incertain circumstances.

As a general rule, the patent owner maycommence proceedings to enforce its rightsin the event that a third party makes, offersfor sale, puts on the market, imports or usesa product or process which is the subjectmatter protected by the patent, without thepatent owner’s consent. However, patentowners should be aware that there arecertain limitations placed on their right tocommence court proceedings to enforce theirrights under a patent, such as where theallegedly infringing act is done for private ornon-commercial purposes and where acts aredone for experimental purposes.

2. Does your jurisdiction have specialistpatent courts? If not, what level of

expertise can a patent owner expect fromthe courts?Ireland does not have specialist patentcourts. Choosing the right court is thus akey early consideration for patent owners. Ingeneral, patent infringement proceedings willbe commenced in the High Court, in eitherthe chancery division or in the relatively newCommercial List, the latter commonlyreferred to as the Commercial Court.

Although the High Court has generaljurisdiction to hear patent claims, the IrishCommercial Court has been conferred withspecific jurisdiction over intellectual propertydisputes both at first instance and onappeal. However, specific permission fromthe Commercial Court has to be obtainedbefore bringing proceedings before it. Thereare a number of advantages for partiesinvolved in patent proceedings to make suchan application for entry into the CommercialCourt. The Commercial Court rules havebeen designed to provide for stricttimeframes and more efficient and lesscostly trials, important factors in any patentcase. In addition, the judges in the generalHigh Court may not have had any significantpatent litigation experience, whereas thejudges of the Commercial Court are morelikely to have been involved in such cases.An application to have the claim heard by theCommercial Court is made by a motion tothe court on notice to the other parties tothe proceedings at the commencement ofproceedings or shortly thereafter. Given itsspecific jurisdiction for IP disputes, most ifnot all future patent cases are likely to bebrought in the Commercial Court.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Yes, cross-examination of witnesses at trialis possible. The Commercial Court does,however, favour – where possible – the

Enforcing patentsin Ireland

By John Whelan and Ciara Cullen, A&LGoodbody, Dublin


exchange of written statements based onagreed evidence between the respectiveparties’ experts. The Commercial Court mayalso require the parties to set out theircases in writing and use the witnessstatements, sworn under affidavit, as themain evidence of the witnesses. It is aunique feature of the Commercial Court toallow parties to exchange witnessstatements and expert reports pre-trial,aimed at reducing the length of proceedings.

If a matter is pursued in the chancerydivision of the High Court, then the moretraditional method of oral argument andcross-examination of witness at trial is likely,and the case can therefore probably beexpected to progress more slowly.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Yes, infringement and invalidity are usuallydealt with simultaneously: any defencemounted to a claim for infringement ongrounds that the patent is invalid wouldgenerally and logically be coupled with acounterclaim by the defendant for invalidityof the patent.

The burden of proof is on the partyalleging infringement of its rights under thepatent to demonstrate, on the balance ofprobabilities (that it is more likely than not),that the patent has been infringed. Adefendant may seek to argue, in response toa claim that its actions have infringed thepatent owner’s rights, that the existing patentis invalid. In that case the defendant bearsthe burden of proof to show on the balanceof probabilities that the patent is invalid.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?There are no specific rules governing pre-trialdiscovery in relation to patent disputes.

As a general rule, when legal proceedingsare issued, the right to obtain discovery arisesautomatically and both parties are required toprovide full discovery of all documents relatingto the dispute which are, or have been, in theirpossession, custody or power, except thosedocuments protected by privilege. Discoverymay be effected voluntarily, by agreementbetween the parties or by order of the courtfollowing a successful application by one orother party. As a general rule, discovery will berequired in respect of all documents relevantto matters in issue in the proceedings andwhich are necessary for the fair disposal ofthe proceedings or to save costs.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The Irish courts have not adopted a doctrineof equivalents in patent proceedings and thedoctrine does not as such form part of Irishpatent law.

The Irish courts have, on the otherhand, endorsed the purposive approach toconstruction of patent claims in line withthe approach under Article 69 of theProtocol to the European Patent Convention.The purposive approach, being narrowerthan the approach taken when applying thedoctrine of equivalents, means that patentclaims will be construed by the Irish courtsobjectively through the eyes of the skilledaddressee.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others?There are no specific legal rules relating tobiotech or computer software-related patentsas such which makes them more difficult toenforce in Ireland: the rules governingenforcement of patents are indiscriminate.Practically speaking, however, if the subjectmatter constitutes newly emergingtechnology, and the patent rights arecomplex and require specialised expertise toassist in their enforcement, they may beregarded as more difficult, costly or timeconsuming to enforce than patents for amore traditional subject matter.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?As a general rule, Irish courts are bound bythe doctrine of precedent such that lowercourts will be bound by decisions of thesuperior courts.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases?There have been only a limited number ofpatent cases decided in Ireland; thus, thereis a likelihood that particular points of patentlaw may not have been considered by anIrish court. In the absence of any existingIrish case law on a particular issue, Irishcourts may look to the case law of other,particularly common law, jurisdictions forguidance. Historically, Irish courts havedemonstrated a preference to follow thedecisions of the English courts.


Enforcing patents in Ireland


10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? In the High Court, a defendant mayrepeatedly miss deadlines in an attempt todelay the court proceedings. However, if thematter has been transferred to theCommercial Court, which for the reasonsmentioned above is now likely to be the casefor most patent proceedings, such delaytactics, if adopted, are a dangerous strategyfor a defendant. In the Commercial Courtinterim costs orders will be made to penaliselate compliance with time limits. If a plaintiffbrings any such tactics to the attention ofthe court it will result in swift and sternmeasures by the court against the defendantto move the case on.

11. How available are preliminaryinjunctions and how do you get them? In the High Court, an application may bemade for an interlocutory injunctionrestraining the defendant from any possibleor actual act of infringement. The principlesupon which an injunction will be granted arewell settled in Ireland and apply to patentcases in the same way they apply to othercases. Basically, the claimant mustdemonstrate that there is a serious questionto be tried and that damages would be aninadequate remedy. The grant of aninjunction is a discretionary power and thecourt will assess whether to exercise thatpower according to the balance ofconvenience. The plaintiff is also likely to berequired to give an undertaking as todamages (to cover the situation where it isultimately determined that it should not haveobtained the injunction). Injunctions aremore common in the High Court in general,as judges in the Commercial Court may bemore inclined to grant a speedy and earlytrial rather than interlocutory injunctive relief.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?The Commercial Court, in operation sinceJanuary 2004, has been widely acclaimed asa major success with regard to the speed atwhich it brings matters to trial. The system ofrigorous case management which it hasemployed and its ability to offer early hearingdates have ensured the speedy resolution ofdisputes – the average time from start tofinish of a case at the end of the last legalterm was a mere nine weeks, with theallocation of a trial date taking approximatelyfive weeks from institution of proceedings.

This is a marked improvement from thechancery division of the High Court which cantake as long as 18 months to hear a case. Ineither court, however, complex and contestedpatent cases will still be likely to take longerthan the typical commercial or IP dispute.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?An aggrieved party may appeal a decision ofthe High Court only on a point of law to theSupreme Court. There is no avenue forappeal on a question of fact.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?This is very difficult to answer as there havenot been enough patent trials in Ireland togive an informed view.

15. Who can represent parties in court? Isspecialist representation required?Parties are represented by qualifiedsolicitors and barristers – we have a two-tiersystem as in the United Kingdom, wheresolicitors prepare the case and barristersargue it before the court at trial. Althoughspecialist representation is not required it isadvisable to use a solicitor and barrister withexperience in patent disputes, in addition toa patent agent where the technology coveredby the patent is complex.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The remedies typically available on a findingof patent infringement include: order fordelivery up or destruction of infringing goods;an injunction preventing further infringement;damages or an account of profits; and costs.

Punitive damages are generally notavailable in a patent infringement case.Furthermore, an award of damages will notbe awarded against an innocent infringer whowas genuinely not aware, nor should havebeen aware, of the existence of the patent.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Recent law reforms have encouraged the useof alternative dispute resolution (ADR) as ameans to solve IP-related conflicts.Arbitration and mediation are the mostcommon ADR procedures in Ireland. In



arbitration, the dispute is settled by animpartial expert or arbitrator who issues abinding decision. Mediation, on the otherhand, does not involve a binding decision buthelps bring both parties towards anamicable resolution.

ADR procedures have the advantage thata greater degree of control is retained by theparties. In addition to the time and cost-effective benefits of ADR, thearbitrator/mediator is usually an expert inthe field of the dispute and confidentiality isassured. There are many institutions thatoffer ADR advice and expertise; however, theWIPO Arbitration and Mediation centre is thebest international institution as it focuses onIP and technology-related disputes.

A patent dispute is often centred onspecific technical details, such asmodifications to mechanical inventions oralterations to chemical entities. As such, itcan often be a highly complex matter thatinvolves a qualitative examination of the stateof the art, on which the parties simply cannotagree. Thus, unfortunately, litigation may oftenbe the only realistic option available.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?Ireland has not yet acceded to the LondonProtocol or the EPLA.

19. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out? Under the Brussels Regulation, which hasnow succeeded the Brussels Convention onthe Jurisdiction and Enforcement ofJudgments in Civil and Commercial Matters1968, a defendant must be sued in hishome state. However, there is an exemptionin tort law that allows the defendant to besued in the country in which the patentinfringement takes place. So, for example,an Irish domiciled defendant infringing aFrench patent may be sued either in Franceor in Ireland. Although this may lead to asplit in proceedings if the defendantchallenges the validity of the patent (asvalidity is a matter for the courts in thecountry where the patent is registered),where to sue can be an importantconsideration in multi-jurisdictional disputes.Although not uniquely an Irish point, itmeans that it is open to a plaintiff to decideon the courts where it is most likely toobtain the fastest and most effective relief.




Enforcing patents in Italy Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?Civil and criminal litigation are bothavailable to a patent owner wishing toenforce its rights in Italy. Civil actions aremore frequent as judges in civil courts aregenerally more experienced in patentmatters than criminal judges.

An ordinary civil court action may bepreceded by a request for a preliminaryinjunction, which may consist of a request forseizure of the infringing products, an order tostop the infringing activity and an evidence-gathering procedure known as description.Such measures can be required even ex parte,ie, without hearing the defendant.

Another option is the seizure of goodssuspected of infringing intellectual propertyrights at customs. This is provided for by aEuropean regulation and the Italian Customsare very proactive in applying it. A seizuremeans that the importation of the infringinggoods is suspended by the Customs Authorityon the basis of evidence supplied by thepatent holder, which must then bring either acriminal or a civil action, even if in mostcases criminal actions are startedautomatically.

2. Does your jurisdiction have specialistpatent courts? If not, what level of expertisecan a patent owner expect from the courts?In 2003 Italy introduced specialised industrialproperty sections in the courts of Turin, Milan,Venice, Trieste, Genoa, Bologna, Florence,Rome, Naples, Bari, Catania and Palermo. Theexperience of these courts is increasing dueto the fact that they have sole jurisdiction overfirst instance patent matters. However, quite

often patent litigation is decided on the basisof an assessment rendered by court-appointedcounsel, who are more technically experiencedthat the court itself.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? In principle, it is possible to cross-examinewitnesses, but according to the ItalianProcedural Code the right to questionwitnesses lies with the judge only. Eachparty’s attorney must therefore go through thejudge to have any questions answered by thewitnesses. However, in patent litigationwitnesses are rare, while the use of technicalbriefs is very frequent. These briefs are, ofcourse, drafted by patent counsel.

Usually the judge appoints a technicalexpert to assist the court. During proceedingsa sort of internal technical trial takes place, inwhich the court-appointed expert exchangesbriefs with the parties’ patent counsel andrenders a concluding assessment which isquite often the basis for the judge’s finaldecision. Patent counsel are subject to norestrictions and may submit any kind ofavailable evidence.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Infringement and invalidity actions can takeplace simultaneously. It is quite usual for adefendant in a patent infringement action tocounterclaim the invalidity of the patent aspart of the same proceedings. Likewise, wherea declaratory judgment for non-infringement ofa patent is sought, the patent holder maycounterclaim infringement of the patent.

Each party bears the burden of proving thealleged invalidity or infringement, and maysubmit any kind of evidence.

5. To what extent is pre-trial discovery

Enforcing patentsin Italy

By Giovanni Antonio Grippiotti, SocietàItaliana Brevetti, Rome


permitted? If it is permitted, how is discoveryconducted?Italy provides for a sort of pre-trial inspectioncalled a description. This is a type ofpreliminary injunction allowing the plaintiff,upon authorisation by the judge, to inspect thedefendant’s premises, means or productsrelating to the infringing activities. Theinspection takes place in the presence of thebailiff of the court and ex parte experts.

The report of the description, drafted bythe bailiff, can be used to obtain anotherpreliminary injunction in the form of a seizureor an inhibitory order, or as evidence in anordinary court action. Usually these orders arerequested inaudita altera parte (ie, withouthearing the defendant) in order to avoid therisk of the evidence being removed.

During the trial another form ofinspection that may be requested is anorder for the defendant to producedocuments or information concerning thesubject matter of the court action. The partyrequesting this order must show the courtthat the action is sufficiently grounded. Thiskind of inspection mostly concernsaccounting evidence which may be useful inview of a quantification of damages.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Although the doctrine of equivalents applies ininfringement actions in Italy, there is littlecase law and therefore a finding ofequivalence largely depends on the specificcircumstances. The criteria adopted by theEuropean Patent Office or by courts in otherEuropean Union member states can beproposed where appropriate.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? In principle, the enforcement of patents doesnot differ depending on their subject matter.However, Italian judges, who normally have notechnical background, often have difficultyunderstanding technical matters, particularlywhen a case involves sophisticated technicalfields such as biotechnology or computerscience. Therefore, courts usually appointtechnical experts to assist them in thedecision-making process.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealt withsimilar cases?Although Italian courts are not bound by the

decisions of other courts, they may beinfluenced by case law, particularly whereseveral decisions consistently espouse thesame opinion. Decisions issued by theItalian Supreme Court (Corte di Cassazione)are taken into account, although first andsecond instance courts have been known todiverge from Supreme Court guidance.Different views among Supreme Courtjudges are also possible and have resultedin conflicting decisions.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? While Italian courts must take intoconsideration European Court of Justicedecisions, they are not bound by foreignjudgments. However, in view of theharmonisation of all basic patent principlesthroughout Europe, decisions rendered byother European courts in comparable casescan be referred to as case law, and mayprovide useful arguments, if suitablypresented.

10. What options are open to a defendantseeking to delay a case? How can a plaintiffcounter delaying tactics?In order to delay proceedings, the defendantmay file a separate action seeking adeclaration of invalidity of the plaintiff’s patentas opposed to counterclaiming in the sameproceeding. This action would be filed with thecourt where the plaintiff has its domicile,which may be a different court.

In such cases, depending on thecircumstances, the judge may suspend theinfringement proceedings and wait for thedecision concerning invalidity. As acountermove, the plaintiff may, depending onthe circumstances, request a preliminaryinjunction in order to anticipate the effectsof the final decision or try to concentrateproceedings.

11. How available are preliminary injunctionsand how do you get them?Preliminary injunctions are provided for in Italy.As already explained under point 1, theyconsist of seizure, an inhibitory order and adescription. A preliminary injunction can beobtained in a shorter time than an ordinarycourt decision and approximately takes two toeight months. This usually depends onwhether the judge is able to reach a decisionautonomously or needs to appoint a technicalexpert. In the past, most case law indicatedthat technical expertise in a preliminary


Enforcing patents in Italy


injunction was inconsistent with the urgency ofthis kind of provision, but this trend seems tohave reversed and technical experts are nowquite often involved, particularly in technicallysophisticated cases.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?It usually takes two to three years to reach adecision at first instance, depending on theevidence required and on whether a technicalexpert is appointed.

New rules of procedure were introduced ayear ago for proceedings concerningintellectual and industrial property matters,with the aim of reducing their length. Althoughit is too early to tell whether that aim has beenachieved, it is foreseeable that under the newrules courts will be able to issue decisions inone to three years, depending oncircumstances.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?Any of the parties involved may file an appealagainst the first instance decision before thecompetent court of appeal, depending on thefirst instance court’s location. The appealmust be filed within 30 days of the serving ofthe decision by one party on the other or oneyear from publication of the decision if noserving takes place.

After the decision of the court of appeal,appeals on points of law may be filed with theSupreme Court. First instance decisions areimmediately enforceable, even if they havebeen appealed. However, the court of appealmay suspend the enforcement if a sufficientlypersuasive request is submitted.

It normally takes two to three years toreach a decision in appeal proceedings.

14. To take a case through to a first instancedecision, what level of cost should a party toa litigation expect to incur?Cost depends on the fees charged by lawyersas well as by patent counsel to the partiesand to the court. Any patent litigation isunlikely to cost a party less than Euros15,000 to 20,000 in preliminary proceedings,and no less than Euros 25,000 to Euros30,000 through to a decision in ordinaryproceedings at the first instance court.

Higher costs are possible, depending onspecific circumstances. In complex cases,costs can climb to between Euros 60,000 andEuros 70,000 in preliminary proceedings and

could reach up to Euros 200,000 for the firstinstance. Higher figures than this are unusual.

The winning party may obtain a sum asrecovery of costs incurred, but this will nevercover the complete expense. In practice, it isusually possible to recover approximately 35%of the actual costs incurred, while undercertain circumstances recoveries in the regionof 50% to 60% of costs are possible.

15. Who can represent parties in court? Isspecialist representation required?Only Italian lawyers or foreign lawyersregistered with Italian bars are admitted torepresent before Italian courts.

Patent attorneys in Italy are not allowed torepresent clients before the courts but theycan appear as ex parte experts. It is advisableto rely on lawyers who specialise in intellectualand industrial property law.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages available andin what circumstances?Remedies available in cases of infringementare seizure of the infringing products and ofthe means related to the infringement activity,inhibitory orders, such as an order to theinfringer to immediately stop the infringingactivity, publication of the decision, destructionor assignment of infringing goods anddamages (the latter only at the end of anordinary court action).

The burden of proving damages is on theplaintiff, which must also quantify the relevantamount – usually not a simple task. Inprinciple, there are three different criteria fordetermining damages: loss of profit for thepatent holder; income of the infringer; andreasonable royalty. In recent years, it hasbecome quite customary to request theappointment of an expert to help the courtassess damages and to rely on an order forthe defendant to produce accounting evidence.Italian law does not provide for punitivedamages.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?The only alternative to court action is to senda cease and desist letter, which may beeffective depending on the circumstances. Itshould be borne in mind, however, that acease and desist letter might trigger therecipient to commence an action for invalidityof the patent or file a request for a declaratoryjudgment.

Enforcing patents in Italy


1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?A holder of a European patent designatingthe Netherlands can start a court actionagainst unauthorised making, using orselling of the patented product in theNetherlands. Also transit of goods throughthe Netherlands can be prohibited based onpatent infringement.

On 29th April 2006, the EC EnforcementDirective 2004/48/EC should have comeinto force, but implementation is stillpending. As well as changing Article 70 ofthe Dutch Patents Act of 1995, relating toenforcement, and introducing changes toother intellectual property laws,implementation of the directive will see theCode of Civil Procedure (CVP), which givesthe basic framework of enforcement of IPrights, modified as follows:• To accommodate Article 6 of the

directive regarding evidence, a newArticle 1019a of the CVP has beendrawn up specifying that evidence otherthan written documents can be orderedto be produced. Violation ofconfidentiality may be a ground forrefusal of the provision.

• Article 7 of the directive on measures forproducing evidence is implementedthrough new Articles 1019b-1019d CVP.The new articles provide for physicalseizure of the infringing goods, but alsofor a descriptive seizure or the taking ofsamples of infringing goods or documentsand tools relating to such goods. Thismay be ordered in ex parte proceedings.

• Article 9 of the directive relating toprovisional and precautionary measures

is implemented in new Article 1019eCVP providing for an ex parte injunctionwhere there is a chance of irreparabledamage to the plaintiff.

• Article 14, relating to legal costs, isimplemented in new Article 1019h CVP,which states that the unsuccessful partyin a case must bear the other party'sreasonable and proportionate costs,instead of the fixed rates formerlyprevailing. This may increase the risk forsmaller companies exerting their Dutchpatent rights against larger companiesthat are able to afford extensive legalassistance in IP proceedings.

• Article 260 of the old CVP, implementingArticle 50 under 6 of the TRIPsagreement, is changed to new Article1019i CPV although its content remainsunchanged. For provisional measures toremain effective, proceedings on themerit should be commenced at the latestwithin 31 days.

Contributory infringement can be actedagainst for goods relating to an essentialelement of the invention, provided that theyare both intended and suitable for aninfringing use within the Netherlands.

In court proceedings not only injunctions,but also lost profits and damages can beclaimed, the latter after the alleged infringerknew or had "reasonable grounds to know"about the infringing nature of its acts (cfArticle 45 TRIPs), or in any case after 30days from the date on which the infringingparty is put on notice of the infringing natureof its acts. Serving a writ in which theinfringing act is clearly set out serves as atrigger for the 30-day notice period.

Disputes can be adjudicated in summarypreliminary injunction proceedings, whichmay be concluded within the timeframe oftwo months, or in proceedings on the meritswith an accelerated regime, resulting in averdict in a period just short of a year.

Enforcing patents in the Netherlands

Enforcing patentsin the Netherlands


Feature

By Hans Bottema, NederlandschOctrooibureau, The Hague


Parties can also agree on alternativedispute resolution to resolve their disputes,such as arbitration under the Rules of theNetherlands Arbitration Institute.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?Patent cases are dealt with exclusively by anexpert court (the district court) of firstinstance and in appeal (the court of appeals)residing in The Hague.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Witnesses are not cross-examined at trial. Acourt can order a hearing of witnesses atthe request of one of the parties or in aninterlocutory decision. The court will mainlyrely on written evidence.

There are no restrictions on the use ofevidence from experts, although certainpieces of information during trial may belabelled confidential and may be accessibleonly to an independent expert and notdirectly to the parties.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Infringement and invalidity are dealt with inthe same proceedings. The level of proof forinfringement is a level of beyond reasonabledoubt. For invalidity, lack of novelty or lack ofinventive step can be based on public prioruse, supported by witness statements in theform of written declarations. Parties to theproceedings or employees of parties to theproceedings may also serve as witnesses.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Pre-trial discovery is not available. In case ofalleged infringement of a process claim, Dutchlaw provides for a reversal of the burden ofproof (to the defendant) where: (1) the productdirectly resulting from the patented process isa novel product; or (2) the plaintiff has made acredible case of infringement and cannotsubmit more evidence.

6. To what extent does any doctrine ofequivalents apply in an infringement action?In infringement actions the doctrine ofequivalents is applied in the sense of thetripartite test of essentially the same means

for performing essentially the same function inessentially the same way, or the insubstantialdifferences test (in chemical cases). Incrowded prior art fields, the courts will adhereto a more literal claim interpretation.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Enforcement of biotech patents and ofcomputer and software-related patents iswell provided for. These generally complexcases are often less suitable for dealing within summary proceedings and may be allowedonly in proceedings on the merits.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?High court decisions are authoritative andare followed by the lower courts.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? The Dutch courts do take into accountverdicts of foreign courts that have dealtwith the equivalent patent, but will form theirown opinion based on all facts. Dutch cross-border injunctions based on the spider-in-the-web doctrine may be affected by the recentECJ decision in Roche v Primus that thisDutch cross-border practice is incontravention of the Brussels Convention.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? There are very few options open for theplaintiff or defendant to delay proceedings inthe accelerated proceedings (which are almostalways used). At the start of the proceedings atime schedule is set for submission of briefsand documents with no extensions.

11. How available are preliminaryinjunctions and how do you get them? A preliminary injunction is easily availableand the required urgency is almost alwayspresumed.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?Disputes can be adjudicated in summarypreliminary injunction proceedings, whichmay be concluded within the timeframe of



two months or, in proceedings on the meritwith an accelerated regime, resulting in averdict in a period just short of a year.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?Appeals may be filed from decisions of thedistrict court at first instance to the Court ofAppeals and from there to the SupremeCourt. The latter proceedings can be basedonly on procedural violations or violation ofthe law; no factual re-assessment of the caseis undertaken. The appeal process before theCourt of Appeals and before the SupremeCourt may take about one and a half years.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?In first instance, costs of litigation mayamount to between Euros 30,000 and Euros100,000.

15. Who can represent parties in court? The parties are represented by a lawyer,mostly in combination with a patent attorneywho has a right to plead, which is often usedto elucidate the technical side of the case.Detention by the customs authorities ofgoods suspected of infringing an intellectualproperty right under Council Regulation EC1383/2003 can be requested in anadministrative procedure before the customsauthorities without legal representation beingrequired. Within 10 days of a seizure, aperiod that is extendable by 10 days, legalproceedings requiring representation by alawyer need to be commenced.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The injunction is the most popular remedyfor infringement. Damages may be awardedand submission of sales figures may beordered for calculating lost profits. Punitivedamages are not available.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Alternatives to litigation are mediation orarbitration.

18. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?

When litigating a Dutch patent (either EP/NLor a Dutch national registration patent whichhas been granted without substantiveexamination), the patent may be partiallyinvalidated in view of lack of novelty orinventive step. In the 1996 case of SpiroResearch v Flamco, the High Court ruled thatin case of invalidity a new and valid claimmay be formulated only when it is clear tothe skilled person where the scope ofprotection shall lie and that a more limitedpatent is obtained which is not different fromthe invalidated patent. This differs from theinterpretation the European Patent Officegives under Article 123 (2) EPC relating toamendments of a patent application notbeing allowable in case of extension ofsubject matter. In Parteurosa v Fokker, theDutch Court of Appeal in early 2005 ruledthat in the absence of validity of the mainclaim no partial validity was allowed as tothe remaining sub-claims. This is at variancewith the Spiro Flamco doctrine. The sameruling may be expected in cases of avoluntary restriction of a Dutch patent by thepatentee filing new claims.

19. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?The Netherlands has signed up to both theLonden Protocol and the LitigationAgreement. The state law changing article52.1 of the Dutch Patents Act of 1995 waspublished on 17th January 2006. This nowstates that European patents designating theNetherlands must be translated into Dutchor English. Where an English translation issubmitted, the claims need to be translatedinto the Dutch language.




Enforcing patents in Poland Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?A holder of a European patent in whichPoland has been designated, and which iseffective in Poland, enjoys basically thesame rights as a holder of a patent issuedby the Polish Patent Office under thenational route. The exclusive rights may beenforced by the patent holder or they may beassigned to third parties.

In cases of infringement, claims may belodged with a civil court. Namely, the patentholder may lodge a claim demanding that thealleged infringer cease the infringing activitiesand redress the consequences ofinfringement, as well as surrender unlawfullyobtained profits and compensate for damages.Moreover, at the patent holder’s request, thealleged infringer may also be required topublish an appropriate statement in the pressand, if the infringement was wilful, to pay anadequate amount of money to a socialorganisation enhancing inventive activity.

Damages resulting from patentinfringement may be claimed after the grantof the patent. However, damages may becollected from a date prior to the grant ofthe patent, provided that informationconcerning availability of the Polishtranslation of the patent claims as filed hasbeen published in the Bulletin of the PolishPatent Office (PPO). Such information (whichfollows filing of the translation of the claimswith the PPO) may be published only at theexplicit request of the applicant and after theEuropean publication of the application. Itshould be noted that although thepublication of the above information in theBulletin of the PPO is voluntary, it has a

significant effect upon the scope ofprotection covered by the European patent.

When the alleged infringer has beennotified of the claim of infringement, thepatent holder may collect damages from thedate of notification. The aforesaid makesfurther infringement wilful. The Europeanpatent holder may also claim a preliminaryinjunction.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts? There are no specialist patent courts inPoland. Common civil courts handle patentinfringement matters and the judgesadjudicating patent infringement, caseshave no technical training. Therefore, thecourt is allowed to appoint independentexperts to submit written or oral opinionswhen specialised knowledge is necessary.In particular, an expert may be asked tocompare the invention covered by the patentwith the infringing product or other infringingactivities of the defendant so that the courtcan estimate whether the acts of thealleged infringer fall within the scope of thepatent protection.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? In civil proceedings regarding patentinfringement all and any evidence must beindicated and, if possible, produced by theparty relying on the facts which have to beproved. As a rule, the court does not takeinto consideration any evidence ex officio. Ina lawsuit between business entities, theplaintiff is obliged to indicate all the relevantevidence in the statement of claim. If this isnot done, the right to submit additionalevidence during the proceedings before thecourt is generally lost. The plaintiff is

Enforcing patentsin Poland

By Katarzyna Karcz and MalgorzataZielinska-Lazarowicz, Patpol, Warsaw


allowed to submit further evidence duringthe course of the court proceedings only oncondition that the evidence is unlikely tohave been known at the moment of bringingthe action before the court, or where theevidence relevant to the case occurred afterthe action had started.

Each party in a lawsuit is entitled tosubmit written evidence, such as private orofficial documents or written opinions ofprivate experts (eg, experts who were notappointed by the court). Opinions of privateexperts are regarded as documents notissued by official bodies.

The situation of an expert appointed bythe court is different. The choice of theexpert depends first of all on the characterand complexity of the matter in hand. Theappointed expert may be chosen fromamong registered Polish patent attorneys orother highly qualified specialists in therelevant field. The court is also entitled toexpertise from a research or scientificinstitute. In patent infringement trials, theexpert should aim to explain the technicalaspects of the invention.

Cross-examination of witnesses is alsopermitted.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Infringement and validity cases are dealt within Poland by different authorities:infringement is handled by common civilcourts, while invalidation is the province ofthe Litigation Division of the Polish PatentOffice. The decisions of the Patent Office aresubject to appeals to administrative courts.Under some circumstances, the issuesregarding a patent’s validity may influencethe infringement proceedings. If thedefendant (alleged infringer) claims invalidityof the patent at issue, the court maysuspend the infringement proceedings untilthe invalidity case is resolved.

The level of proof necessary ininfringement cases results from the generalrules of civil procedure, which means that aparty is generally entitled to request oralexamination of witnesses, to appointexperts, to produce documents (private orofficial) and/or to demonstrate samples, ifnecessary. All and any evidence shouldprove the circumstances relevant to thelodged demands.

The evidence allowable in invalidityproceedings is generally comparable to theevidence in infringement proceedings. Theparty demanding invalidation of a patent is

obliged to prove its legal interest as well asthe claimed non-patentability of the inventionin question. If it comes to an appeal, theadministrative courts examining a decisionof the Patent Office issued in an invalidityproceeding will generally base their decisionon the evidence collected by the PatentOffice. But where there are doubts regardingevidence essential to the case, the courtmay examine additional evidence (onlydocuments are permissible).

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted? Where both litigating parties (the patentholder and the alleged infringer) are businessentities, the patent holder is obliged to senda cease and desist letter to the allegedinfringer before filing the statement of claimwith the court. A cease and desist letter (so-called warning letter) is a final invitation toresolve the claim amicably throughsettlement. A copy of the cease and desistletter along with the alleged infringer’s replyshould be attached to the statement of claimlodged with the court.

The warning letter shall, in particular,indicate the right of the patent holder to usethe invention within the territory of Poland,as well as the allegedly infringing activities.The warning letter is treated as evidence ofthe plaintiff’s goodwill to settle the matteroutside court. If discovery of evidence isrequested by the infringer to prove theholder’s claims, it should be indicated by thepatent holder before the trial, on pain ofcharging the plaintiff with extra proceduralfees for the lack of goodwill to settle thedispute amicably.

During the court proceedings the courtmay summon any person to submit anydocuments relevant to the proceedings whichare in that person’s possession, unless thedocument contains state secrets. If any partyrefers to trade books, the court may requirethe surrender of those books to the court.

The adaptation of Polish law to EuropeanDirective 2004/48/EC as of 29th April 2004on the enforcement of intellectual propertyrights is expected to bring some newdiscovery options to IP matters.

6. To what extent does any doctrine ofequivalents apply in an infringement action? According to Polish patent law, particularemphasis should be placed on clear andunequivocal wording of patent claims. Suchstrict interpretation of the patent claims isnot compatible with the concept of


Enforcing patents in Poland


interpretation of patent exclusivity set out inthe Protocol on interpretation of Article 69 ofthe European Patent Convention (EPC).Bearing in mind that the EPC is binding inPoland, it should be expected that thepractice of the Polish Patent Office and thecourts will be consistent with the practiceresulting from the EPC.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Enforcement of software patents may bedifficult because the Polish Patent Office isreluctant to grant protection to those patentsand is frequently inclined to invalidate them.As regards biotech patents, enforcement isusually more complicated because of thespecific nature of the subject matter.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?As a rule, courts are not bound by theopinions and decisions of other courts whichhave handed down decisions in similarcases. The two exceptions are the decisionsof the Supreme Court and the SupremeAdministrative Court. In practice, opinionsand decisions of other courts are frequentlytaken into consideration by courts whenjudging similar cases. Coherent and uniformcourt decisions guarantee certainty andreliability of the law.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? The Polish courts are generally not bound bythe reasoning of foreign courts that havetried similar cases. However, they may drawconclusions from foreign courts’ judgmentswhen solving similar legal problems that arenot precisely regulated by Polish law. Theindividual character and particular provisionsof foreign legal systems, as well as thebackground of a specific case, have to betaken into account before taking the foreignreasoning into consideration.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? The basic way of delaying a court case is tostart litigation proceedings before the PolishPatent Office claiming invalidation of thepatent in question. As two separate

authorities hear the two cases, startinginvalidation proceedings often causes thesuspension of the infringement proceedingsuntil validity is decided. The plaintiff cancounter such delaying tactics by, forexample, trying to convince the court thatthe invalidation claim is inappropriate or thatit constitutes a misuse of law.

Another way of delaying or even blockingan infringement case in the court is toanticipate the infringement claim by filing aclaim requesting a finding that the allegedinfringer is exploiting its own rights andconsequently is not infringing. If thesupposed plaintiff does not file its claim intime, the case charging infringement will beunallowable by statute until the first case isresolved. One way to avoid such a situationis to file a preliminary injunction or theinfringement claim as soon as possible (aftersending a cease and desist letter first).

11. How available are preliminaryinjunctions and how do you get them? A patent holder is entitled to file a requestfor a preliminary injunction before initiatingcourt proceedings (before lodging a claim tothe court), as well as simultaneously withthose proceedings. If the request is filedbefore initiating the court proceedings, thecourt, upon issuing a decision to grant thepreliminary injunction, will appoint a two-week deadline for the filing of the statementof claim.

If the plaintiff misses the deadline, thecourt will reverse the preliminary injunction.In order to obtain a preliminary injunction, itis necessary to prove the legal interest inrequesting the preliminary injunction, justifythe grounds for filing the request andindicate the way in which the injunctionshould take place (eg, seizure of goods inthe infringer’s warehouse, ban on furthersale, etc). The patent holder has to prove itspatent rights with an official document andshould also prove that the exclusive rightshave been infringed.

Preliminary injunctions should not aim tosatisfy the claims raised by the plaintiff, butin practice they often lead to a court order inwhich the alleged infringer is requested tostop its activities under the sanction ofcompulsory enforcement of the said order.

An important consequence resulting fromclaiming a preliminary injunction is that if theplaintiff loses the lawsuit or decides towithdraw the court action before the verdict,the alleged infringer is entitled to demandcompensation for the damages arising fromthe preliminary injunction order.



12. How long does it take to get a decisionat first instance?Patent infringement proceedings in Polandcan last from approximately three to fiveyears, depending on the complexity of thecase, the strategy undertaken by the partiesand the number of cases at the courtpending examination. However, there is nogeneral rule and in some cases it may takelonger to complete the proceedings.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take? A decision of the court of first instance issubject to an appeal to the court of secondinstance. The appeal should be filed with thecourt that issued the initial judgment withintwo weeks of the date of delivery of thereasoned court decision to the party.

The court of second instance examinesall substantive and procedural issues, thebreach of which may have provided groundsfor the appeal. It is worth emphasising thatthe court of appeal judges the case withinthe limits of appeal and only nullity of theappealed decision is considered ex officio.Therefore, broadening the claims or addingnew claims once the appeal has been filedis not allowed.

The court of second instance judges thecases on the basis of the evidence collectedboth in the first instance proceedings and inthe appeal proceedings. However, the factsand evidence which were available to theparty during the first instance proceedingsmay not be taken into consideration in theappeal proceedings unless they arespecifically relevant to the appeal. It maytake a few years before a verdict in theappeal proceedings is issued.

Under some circumstances explicitlyprovided for by law, a decision of the courtof second instance may be subject to acassation pleading to the Supreme Court. Itis an extraordinary legal remedy and may bebased only on breach of substantive lawinvolving incorrect interpretation or incorrectapplication of such law or on breach ofprocedural provisions, which should havehad relevant effect on the result of the case.The appeal should be filed within a fixedterm of two months from the date of deliveryof the appeal decision.

14. To take a case through to a firstinstance decision, what level of costsshould a party to litigation expect to incur?It is difficult to anticipate the range of costs

associated with infringement proceedings.The potential costs depend on the complexityof the matter and the value of the object ofthe litigation. The costs of representation, orthe costs connected with entering andhandling the court proceedings, as well asthe costs of preparing the relevantdocuments, have to be taken into account.As a rule, the losing party is burdened withthe costs of the court proceedings.

15. Who can represent parties in court? Isspecialist representation required? As a rule, the parties in patent infringementcases may by represented in court byprofessional representatives, ie, lawyers(attorneys or legal counsel) or by patentattorneys. A legal entity may also berepresented by an employee.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?A patent holder or any other entitled person(ie, an exclusive licensee entered onto thepatent register) whose patent has beeninfringed may demand cessation of theinfringement, redress of its consequencesand surrender of unlawfully obtained profitsas well as compensation for damages. At thepatent holder’s request, the patent infringermay also be required to publish anappropriate statement in the press and, ifthe infringement was wilful, to pay anadequate amount of money to a socialorganisation supporting inventive activity.

The responsibility for compensation fordamages applies only where the infringementwas wilful. Compensation for damagesincludes the actual lost earnings as well asany profits which the patent holder wouldhave achieved if the infringement had notoccured. A readily applicable method ofmeasuring the damages is licence analogy.Thus, lost profits can reside in the possiblelost royalties and/or in the decline in sales. Itis worth emphasising that the plaintiff has toprove the direct causal relationship betweenthe damage that it has suffered and theinfringing activities.

The monetary remedies have more of acompensatory than a punitive character.Furthermore, anyone who appropriatessomeone else’s authorship, misleadsanother party regarding authorship of aninvention or otherwise infringes the rights ofthe creator to an inventive project shall beliable to a fine, limitation of freedom orimprisonment for a period of up to one year.




A person committing such an act for materialor personal profit shall be liable toimprisonment for a period of up to two years.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?Alternative means for resolution of patentdisputes are available, but not commonlyused in Poland (arbitration and mediation).

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely isthat it will do so?Poland has signed neither the LondonProtocol nor the European Patent LitigationAgreement yet.

19. Are there any features of theenforcement system in your jurisdcition thatyou would like to point out?The main feature of the patent enforcementproceeding is the so-called rule of evidencepreclusion. Pursuant to this rule, it isnecessary for the plaintiff to mention in thestatement of claim all the statementsrelevant to the case and attach all evidenceto support those statements, under thepenalty of being precluded from serving thecourt with further evidentiary materials afterthe proceedings have started.



1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?According to Article 63 para 1 of the SlovakAct No 435/2001 Coll on Patents,Supplementary Protection Certificates andon Amendment of Some Acts as Amended(hereinafter referred to as the Patent Act), aEuropean patent shall have the same effectsas a patent granted by the Slovak PatentOffice. Thus, the owner of a European patenthas the exclusive right to use the invention,to authorise others to use the invention, toassign the patent to others or to abandonthe patent. In cases of unauthorisedinterference with the patent rights, thepatent owner is entitled to claim that theinfringement or jeopardising of its patentright be prohibited and the consequences ofinfringement removed. The patent owner isalso entitled to request that the party thatjeopardises or infringes its rights submitdata relating to the origin of the product andthe circumstances of its placement on themarket; and to claim compensation fordamage caused, including lost profits andadequate satisfaction, which may berepresented by pecuniary compensation. Thecourt may issue a preliminary injunctionupon the request of the patent owner.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?There are no special patent courts in theSlovak Republic. However, according tocurrent legislation, three district courts – inBratislava, Banská Bystrica and Kosice – areentitled to decide cases concerning

intellectual property law, including unfaircompetition cases, as the courts of firstinstance. Consequently, the regional courtsin Bratislava, Banská Bystrica and Kosiceare the courts of second instance. Due tothe fact that patent cases are heard bySlovak courts rather rarely, the level ofexpertise of the judges is average.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Court proceedings in the Slovak Republic arebased on written evidence supported bywitness statements. Witnesses may becross-examined by the other party at trial.There are no restrictions concerning the useof evidence from experts. All evidence mustbe submitted by the relevant party in thecourt proceedings before the issuing of thecourt decision.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Courts deal with any infringement of patentrights and its consequences. But only theSlovak Patent Office decides on revocation(invalidity) of a patent. It is very usual that incases of infringement of patent rights thedefendant files a request for revocation ofthe patent and the court then suspendsinfringement proceedings until the PatentOffice decides on the revocation request.

The patent owner should submit in theinfringement proceedings before the court (ifappropriate) a sample of the productmanufactured by the patent owner and asample of the product, which is manufacturedby the infringing person, including the proofthat both products are available in the Slovakmarket, ie, sale receipts.

In invalidation proceedings before thePatent Office, the plaintiff has to prove that:(a) requirements for granting of a patent have

Enforcing patents in the Slovak Republic

Enforcing patentsin the Slovak Republic


Feature

By Andrea Povazanova, Cermák HorejsMyslil a spol, Bratislava


not been met; (b) the invention is notdisclosed and described in the patent soclearly and so fully that it can be carried outby a person skilled in the art; (c) the subjectmatter of the patent exceeds the specificationas filed; (d) the scope of protection followingfrom the patent is too broad; or (e) the ownerdoes not have the right to the patent.Therefore, the evidence in invalidationproceedings is rather specialising consistingof quoting a number of registered patents,books, dictionaries and prior art in general.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?According to the Slovak law, there is no pre-trial discovery. Evidence or documents arediscovered within an oral hearing.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Slovak courts have not yet applied a doctrineof equivalents in an infringement action basedon patent rights. The doctrine of equivalentshas been applied in infringement actionsbased on unfair competition provisions of theSlovak Commercial Code. In such cases,argument based on patent rights is oftencombined with unfair competition provisions.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? Software-related, biotech and pharmaceuticalpatents are usually more difficult to enforcethan technical patents due to the difficultyconcerning the comparison of the solutionused by the defendant and the solutionprotected by the patent. This applies also topatented methods of manufacturing.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?According to the Slovak Constitution, judgesare bound by the Constitution, constitutionalacts, international treaties and by nationallegislation. After the accession of the SlovakRepublic to the European Union, Europeanlaw is applicable in the Slovak Republic aswell. Decisions and opinions of other courtsare not binding, although they may be takeninto account if the court has to decide thesame or similar matter.

9. To what extent are courts willing toconsider the reasoning given by foreign

courts that have handed down decisions insimilar cases? It is possible to file decisions or reasoninggiven by foreign courts with Slovak courts.However, these are not binding. Such foreigndecisions or reasoning may inspire theSlovak judges in some cases, however.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?In patent infringement actions a defendantmay file a revocation request, which maysubstantially delay a case. If the courtdecides to suspend the case until the PatentOffice issues a decision on the revocationrequest, the plaintiff’s position is difficult.The defendant may also propose to the courtto ask the ECJ for a preliminary ruling if EUlaw is applicable in the matter. The plaintiffmay challenge each request of the opposingparty and finally the court decides.

11. How available are preliminaryinjunctions and how do you get them?It is possible to file with the court a requestfor preliminary injunction. The court has todecide in commercial matters within 30 daysof the date of its filing.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?It takes approximately one to one and a halfyears to get a decision at first instance.There is no legal possibility of expeditingthe process.

13. What avenues for appeal are open tothe defeated party in a first instance case?What criteria are there for granting anappeal? How long does the appealprocess take?The defeated party may file an appealagainst the first instance’s decision within15 days as of the day of its delivery. Inpatent infringement proceedings, the appealshould be filed with the regional court inBratislava, Banská Bystrica or Kosice,according to the local competency. Thedefeated party may appeal the wholedecision or only a part thereof. It is notpossible to appeal against the decision’sreasoning only. The defeated party has toindicate against which decision the appeal isfiled, the extent of the appeal, why the firstinstance decision or the precedentproceedings were wrong and how the caseshould be decided. The appeal processtakes one and a half to two years.



14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?The costs of first instance proceedingsdepend on the complexity of the matter. Itusually takes at least 20 hours of lawyers’work to take a case through to a firstinstance decision. The level of costincreases if any expert opinion is draftedand submitted to the court. Court fees maybe considerably high if extensive damagesare requested.

15. Who can represent parties in court? The patent owner may defend its rights inperson, but parties may be represented byany individual, attorney at law, notary publicand, except for appeals, also by a patentattorney. Generally, there is no compulsoryrepresentation before the first and secondinstance courts, nevertheless arepresentation by an IP litigation specialist isrecommended.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?For a full discussion of this, see the answerto the first question. The remedy called“adequate satisfaction” (see answer to firstquestion above) can be considered aspunitive damages. It is intended to indemnifythe aggrieved party for any harm that cannotbe calculated as damages.




Enforcing patents in Spain Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?In the Kingdom of Spain, European patentholders may bring civil court action againstany possible infringers of their rights. Inexceptional circumstances, if a crime hasactually been committed, criminal action maybe brought. The administrative courts cannotbe petitioned to revoke a patent, as the civilcourts are competent for all proceedingsrelated to patents. The Spanish courts alsohold exclusive jurisdiction to hear casesrelated to patent rights granted for Spain.Action may either be brought in the courtwith jurisdiction in the territory where thedefendant is resident or in the competentcourt in the territory where the infringementhad been committed.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?Since September 2004, there have beenspecific courts that specialise in certaincommercial matters, including intellectualproperty rights and unfair competition. Themain courts where most of these kinds ofcases are heard are in Barcelona and Madrid.They have increasingly specific knowledge ofpatents. There is no body of judicial technicalexperts; neither are judges specialists from atechnical point of view or supported by courttechnical specialists. However, it is normalpractice for them to agree to a request by theparties in litigation for an independent expertto be appointed to issue an opinion on thequestions the case concerns.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Although it is not normal practice, Spanishprocedural laws do allow witnesses, theparties or court-appointed experts to becross-examined at the request of the partiesor the judge, providing the latter deems itappropriate.

Evidence submitted in patentinfringement proceedings is initially based onthe technical opinions provided by theparties’ expert advisers. These are classedas court-recognised experts and must swearon oath to perform their duties objectivelyand impartially, taking into accounteverything that might be beneficial orprejudicial to either party. The technicalopinions usually include the documentsrequired to prove that an infringement hasbeen committed, such as laboratory analysisor voice, image or data recordings. Expertsmay attach any exhibits or evidence to theirreports that they consider necessary tosupport their statements. Any relevantdocuments must be translated into Spanish.

During the hearing, the parties,witnesses and experts are examined andquestioned. The judge may intervene whenhe/she considers it necessary. As the cross-examination is oral and takes place in frontof the judge, good preparation is important.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?A common defence in infringement casestends to involve alleging that the patent isinvalid. This often also tends to be useful toshow the judge where the invention stands inthe state of the art, while also presenting thetechnical contribution made by it in order topresent the defence against the infringement.

Invalidity may be alleged either as anobjection, in order to call for the claim to be

Enforcing patentsin Spain

By Miguel Vidal-Quadras andOriol Ramon Sauri, Amat i Vidal-QuadrasAdvocats


dismissed due to the patent being invalid, orelse by means of bringing a counter-claim. Ifthis is accepted by the court, the Spanishpart of the patent will be declared invalid, andthe patent’s registration entry in the SpanishPatent and Trademark Office will be cancelled,with the consequent effect for third parties.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?There is a specific procedure in Spain todetermine whether an infringement may havebeen committed called diligencias decomprobación de hechos, court inspectionproceedings to verify a possible infringementin situ. This basically consists of the plaintiffbeing able to petition the court, when thereare signs that an infringement has beencommitted for which it lacks proof, to appointone or more experts (normally one technicalspecialist and one IT specialist) to assist thejudge in the diligencias. The procedure iscarried out at the facilities of the potentiallyinfringing party to find out whether the latterhas actually infringed a patent right. If so, thenecessary documents are drawn up and acopy is provided to the party that requestedthe procedure so that it can bring theappropriate patent infringement claim.

Provided there is enough evidence of theinfringement, the court may also bepetitioned to allow the infringing party to becross-examined prior to the initiation of aninfringement case about its suppliers,customers and distribution channels, as wellas the product quantities, sales and theproduct in the market. A petition may also bemade for commercial, customs, accountingand financial documents to be provided inorder to prepare the case. This measure iscarried out before the party concerned isserved notice.

6. To what extent does any doctrine ofequivalents apply in an infringement action?The doctrine of equivalents is starting to beroutinely accepted by the courts. The courts(such as the Provincial Court of Barcelona)now even quote landmark judgments such asCatnic, Improver and Formstein. Somejudgments have also taken into account thepatent’s registration background indetermining the specific scope of aparticular patent right.

It is worth pointing out that the appealcourts currently tend to lean more towardstechnical issues and to assess judicially thestatements made by experts. This did notuse to be the case, which gave rise to a

Supreme Court doctrine according to whichquestions of validity or infringement weretechnical questions that could not be takeninto account in an appeal for annulment by ahigher court (cassation).

In recent years, the doctrine ofequivalents has been replacing thetraditional approach taken by the SupremeCourt, based on the essential nature of apatent’s elements. This has given rise to thepossibility of disregarding the elements ofthe claim considered secondary by theexpert, generally the court-appointed expert.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? There are no past cases from whichstatistics can be produced. The Spanishcourts have not ruled on certain issues thatare currently hot topics in some Europeancountries and the United States.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?The Spanish courts and parties in litigationare increasingly referring to judgments laiddown by other European courts concerningthe infringement or invalidity of the samepatent. Background such as this tends to beaccepted as a relevant exhibit by the courts.However, the parties must prove to theSpanish court that the facts put before it arethe same as those on which the foreigncourt based its decision.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? The courts indirectly take into account thearguments put forward in foreign decisions intheir own judgments, albeit by taking them fortheir own. This is quite normal practice, asthe judgment handed down by the Spanishcourt is the one that will be submitted to theappeal court. Therefore, just as in any otherkind of proceedings, the parties must beaware of the need to allege and provewhether facts may be required to convince thecourt, without relying on a foreign judgment asbeing sufficient to win the case in Spain.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? The terms stipulated by Spanish law for the


Enforcing patents in Spain


parties’ actions are very strict. Along withtheir respective initial documents, theparties must provide all the evidence theyhave available. The courts do not allowdocuments or experts’ opinions to beprovided later on if they could have beensubmitted or announced previously. However,in the past, it was common practice toemploy delaying tactics based on proceduralrules. Now it is not quite so easy for thedefendant to interrupt court proceedingsthrough procedural strategies. Adjournmentof a hearing may be petitioned if, forexample, witnesses or experts will be unableto attend. However, this always runs the riskthat it could harm the party who requests it,if the judge decides to go ahead withoutcross-examining someone.

11. How available are preliminaryinjunctions and how do you get them? Preliminary injunctions may be requested,either before bringing the infringement claimor together with the claim. They must berequested for urgent reasons and there mustbe prima facie justification that aninfringement has been committed and thatthere will be costly consequences for theplaintiff if the injunction is not ordered. Therightholder must also prove that it is makinguse of the patent or that serious andeffective preparations are being made forthat purpose. The parties are usuallysummoned to a hearing. After hearing thearguments the parties put forward, the judgewill decide whether or not the injunctionshould be granted. If it is granted, thedefendant may request suspension of it byoffering a counter-guarantee.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?Depending on the courts involved and theirworkload, first instance proceedings normallylast between 12 and 18 months. The maincircumstances that may hold up a case arebringing a claim against a party residentabroad, needing to provide technical expertevidence, the complexity of certain evidence(such as carrying out trials, analyses andreproductions, or inspections in plants inSpain or abroad) or the number of experts orwitnesses and their nationality.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?An appeal is quite normal in patent cases

and there are no special requirements. Theparty against which the first instancejudgment is made merely needs to servenotice that it does not agree with thedecision within a term of five days after theruling and must then submit the reason forits appeal within a 20-day term granted bythe court. The appeal court will review thejudgment and decide the case havingassessed the facts available to the court offirst instance and whether its judgment wasin accordance with the law. The appeal rulingusually takes one to two years, depending onthe court hearing the appeal and itsworkload, and whether the court decides,exceptionally, to allow evidence that hadbeen denied by the court of first instance.

In exceptional circumstances, an appealfor annulment by a higher court (cassation)may be brought against the appeal court’sdecision. If the hearing of the appeal isaccepted, the Supreme Court will rule onwhether to accept the appeal within a termof about two or three years and will lay downits judgment on the annulment within fiveyears. The Supreme Court is currentlyendeavouring to shorten the time taken tolay down its judgments, so it is refusing tohear many appeals for annulment.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?Although the cost of court proceedingsdepends on the complexity of the case, itcan be estimated at between Euros 30,000and Euros 100,000 on average.

15. Who can represent parties in court? Isspecialist representation required?The parties are represented in legalproceedings in Spain by their lawyers andformally by a court liaison officer (procuradorin Spanish). The latter is a legal professionalwho acts as an intermediary between thecourt and the party’s lawyer. The lawyer doesnot need to have any specific technicalqualifications. However he/she is often aspecialist in patent law who is familiar withthe subject matter.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Legal actions may be brought to cease anddesist from the infringement, seize or destroythe infringing products or machinery andmoulds exclusively used for that purpose,prohibit the recommencing of the infringing



actions and pay compensation for damagesand losses. Damages and losses aredetermined by calculating the profits earnedby the defendant as a result of theinfringement, the profits that the plaintiff hasnot obtained or the cost of a possiblelicence. Compensation can also be includedfor the harm caused to the prestige of theinvention if this actually took place and canbe proven (eg, inadequate or defectivepresentation of the product in the market).Spanish law has recently also included thepossibility of claiming compensation for moraldamages. There is no reference in Spanishlaw to the possibility of claiming punitivedamages in the same sense as US law.

In addition, in Spain, as in other Europeancountries, a claim may be brought againstactions that have contributed to theinfringement, provided those who contributedto the infringement were aware that the meansdelivered to the infringing party were to beused to manufacture the infringing products.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?This may happen only if the parties agree togo to arbitration or conciliation, which doesnot usually take place unless there is aspecial reason (eg, both parties’ needs fordiscretion and confidentiality regarding theproceedings) or in the case of agreements inwhich there is an arbitration clause acceptedby both parties.

18. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?One should particularly take into account thatuntil 7th October 1992, chemical andpharmaceutical products could not bepatented in Spain. For patents filed beforethis date, which have new products as theirsubject matter, the holder may ask the courtsto consider the benefit of inverting the burdenof the proof, placing it on the defendant andpresuming, unless otherwise proven, that thepatented process is being used.




Enforcing patents in Sweden Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?Sweden has been a member of the EuropeanPatent Convention since 1978, which meansthat a significant proportion of the patents thatare granted in the country today are Europeanpatents. Designating Sweden through aEuropean patent application results in a patentwith the same legal status and scope ofprotection as a national Swedish patent.Enforcing a European patent in Sweden is,from a litigation perspective, therefore, verysimilar to enforcing a national patent. Thereare three ways of enforcing a patent inSweden: through litigation, arbitration or asettlement between the parties.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?The District Court of Stockholm (firstinstance), The Svea Court of Appeal (secondinstance) and the Supreme Court (finalinstance) are exclusive venues for patentproceedings. The courts have technicalexperts within the different technical fieldsand these sit as judges in patent cases. Ahigh level of expertise can thus be expectedfrom the courts. In some very specialisedfields of technology, for example, advancedbiotech, the courts’ level of expertise mightbe limited. In such cases, litigation is likely tobe rather time consuming and will demand asignificant amount of work and expertisefrom the parties and the attorneys.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based on

written evidence? Are there restrictions onthe use of evidence from experts? At the main hearing it is possible to cross-examine witnesses. It is also possible for thejudge to ask the witnesses questions. Writtenevidence is allowed and is used to a greatextent, but written statements of witnessesare in principle not allowed. There are norestrictions on the use of written formalreports from experts and it is common forthe experts also to be examined at the trial.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?In some cases, one of the parties may wishto declare a patent invalid during the courseof, for example, a trial for infringement. Inthis respect, it should be noted thatinvalidity cannot be used as a counterclaimin an infringement trial. If the defendant inan infringement trial wishes to claiminvalidity of the patent, a separate writ ofsummons with a claim for cancellation of thepatent has to be filed. The two cases arethereafter in principle handled and decidedjointly by the court.

The level of proof to demonstrate that apatent should be declared null is rather highin Sweden and the court demands that theplaintiff be able to prove beyond doubt,through written evidence, that the inventiondoes not meet the conditions of patentability(such as lack of novelty and/or lack ofinventive step). Usually this written evidence- such as dictionaries, books and quotationsof prior art - is combined with witnesses andformal reports from experts.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?The holder of a patent may request that aninfringement investigation be conducted inorder to collect evidence of the infringementand the extent of the infringement. A claim

Enforcing patentsin Sweden

By Helena Östblom, Zacco Sweden,Stockholm


for an investigation is filed at the competentcourt and is carried out by the enforcementagency. The plaintiff can be present at theinvestigation but is not allowed to take anactive role – it can only respond to questionsfrom the enforcement officers. The plaintiffhas to provide security for the possibledamages that might be caused to thealleged infringer due to the investigation.

6. To what extent does any doctrine ofequivalents apply in an infringement action?Swedish courts may apply the doctrine ofequivalents in patent cases. To what extentand, in particular, how generously thisdoctrine is used by the courts is difficult tosay. There are very few patent cases inSweden each year and practice is not easyto foresee. In general terms, however, theapplication of the doctrine of equivalents hasin recent years become stricter.

7. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?For international litigators, it may beworthwhile knowing that Swedish courts arenot bound by decisions of other Swedishcourts, except with regard to the SupremeCourt. This court sets precedents that alllower courts in Sweden are bound to follow.

8. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? The only circumstances under which aSwedish court will be bound by a decision of anon-Swedish court are when a case has beenreferred from Sweden to the European Courtof Justice. However, judges in patent casesmay be prepared to look at the decisions offoreign courts that have tried similar mattersand will also look at decisions from the EPO.

9. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? Parties in litigation may often, for strategicor economic reasons, seek to delay thetrial proceeding. There are a number of waysto do this in Sweden; for example, requestsfor extension of time to respond, late filingof evidence, filing of extensive evidence andarguments and unclear statements tend todelay cases. These are all informal ways ofdelaying the proceedings. As in manyjurisdictions, there are no formal ways ofachieving a delay and consequently it

is difficult for a plaintiff to counterdelaying tactics.

10. How available are preliminaryinjunctions and how do you get them?Preliminary injunctions are a relevant optionfor many parties, not just for legal purposesbut also as an efficient way to persuade ahesitant counterparty to negotiate. In short,the procedure for requesting a preliminaryinjunction in Sweden can be described asfollows. Requests for preliminary injunctioncan be filed at the time of filing the writ ofsummons, as well as before the writ ofsummons or later on in the litigation. If theplaintiff shows that it is probable that aninfringement is occurring and that one mayreasonably fear that the defendant will, bycontinuing the infringement, reduce the valueof the exclusive right to the patent, the courtmay impose a prohibition under penalty offine for the period until the case has beenfinally decided or another decision has beenmade. Together with the request for apreliminary injunction, the plaintiff has to filesecurity at the court for the damages thatmay be caused to the defendant due to theinjunction if the court later judges that noinfringement has occurred. Before aprohibition is imposed, the defendant has theopportunity to comment on the request forthe injunction, unless a delay would involve arisk for further damages to the plaintiff.

11. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?Patent proceedings in Sweden are arelatively long process. It takes about one tothree years to get a decision in the firstinstance. In principle, it is not possible toexpedite the process (except through apreliminary injunction).

12. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The decision from the district court may beappealed to the Court of Appeal. The decisionfrom the Court of Appeal can be appealed tothe Supreme Court only if a leave to appeal isgranted. Such a leave to appeal is grantedonly if the case is considered to setprecedent or if it is evident that the lowercourt has made a judicial mistake. The appealprocess to the Court of Appeal usually takesbetween 12 and 24 months. If a leave toappeal is granted the process will at leasttake another 12 to 24 months.


Enforcing patents in Sweden


13. To take a case through to a firstinstance decision, what level of cost shoulda party to litigation expect to incur?Cost-wise, litigation in Sweden is rather lowby international comparison. The costs differfrom case to case but one should beprepared for costs of between SEK 1 millionand SEK 3 million depending on the case,evidence adduced, witnesses, experts etc.Furthermore, in general, the losing partymust pay the winning party’s legal costs.

14. Who can represent parties in court? Isspecialist representation required?Compared to many other countries,specialist representation is not required inSwedish courts, although it is stillrecommended. Attorneys specialising inintellectual property and patent law usuallyhandle court proceedings.

15. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The remedies available are imprisonment ora fine (in criminal cases), injunction underpenalty of fine and damages. Punitivedamages are not available, only damages foruse of the invention and further damages,for instance market damages or loss ofprofit. Damages are often quite low inSweden. The damage for use is calculatedas an estimated licence fee. The court mayalso order infringing goods to be destroyed.

16. Are there any realistic alternatives tolitigation in cases relating to patent disputes?Mediation is an alternative to litigation.Usually, the parties meet and reach asettlement agreement shortly after litigationhas been initiated. This causes no proceduralproblems, as court proceedings may becancelled at any time if all involved partiesconcur. Indeed, the courts often encourageparties to reach a settlement out of court,even after litigation has been initiated. Incases where the parties for some reason donot want the publicity that court litigation mightprovoke, arbitration is an alternative. There area number of individuals and organisations thatspecialise in arbitration; most significant is theStockholm Chamber of Commerce.

17. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? If not, how likely is itthat it will do so?On 18th May 2006, the Swedish Parliamentapproved the London Agreement and

amended the Swedish Patents Act in orderto implement the London Agreement(compulsory translation of the claims intoSwedish, description must be available inEnglish). The date of deposit of theinstrument of ratification, and thus of theentry into force of the amendments to thePatents Act, will be decided by theGovernment.

Enforcing patents in Sweden


1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?In case of an alleged infringement the patentholder may file court actions for the award ofan injunction and for the award of damages.Infringement suits can be filed only after theissuance of the patent; the suits can becivil or criminal. Damages may be claimedfrom the time at which the defendant shouldhave become aware of the content of thepatent application, but the action may beintroduced only after grant of the patent.Only when the patent infringement has beencommitted intentionally can criminalproceedings be instituted.

A court may also order the confiscation,sale or destruction of the infringing articles.Declaratory judgment as to non-infringementor as to the validity of a particular patentmay be requested by any interested party.The right of suing a given patent infringer isgranted to an exclusive licensee but not tonon-exclusive licensees.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?There are no special patent courts.Switzerland is a federal state and is dividedinto 26 cantons. In patent matters, thecantonal procedural laws are applicable andfor each canton there is a court designatedwhich receives the civil actions. The level ofexpertise is very heterogeneous. Inprinciple, commercial courts have a higherlevel of expertise.

3. Is it possible to cross-examine witnesses

at trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts? Cross-examination is not possible andproceedings are based on written evidence.

It is up to the court to appoint andquestion the experts. However, the parties canalso appoint their own experts. Such expertopinions may be considered by the court.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?Infringement and invalidity are dealt with atthe same court but not simultaneously. Allallegations must be substantiated and thelevel of proof is rather high, based on writtenevidence or witnesses.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Pre-trial discovery is not permitted inSwitzerland. Discovery can, in rare cases, beconducted by the judge.

6. To what extent does any doctrine ofequivalents apply in an infringement action?In Switzerland the patent protection providedis broader than the literal scope of the claim,as demonstrated by case law. Thus a doctrineof equivalents applies to patent cases.

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others? No.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?Cantonal courts are independent andtherefore not bound by the decisions ofother courts. However, the decisions of other

Enforcing patents in Switzerland

Enforcing patentsin Switzerland


Feature

By Michael Stierwald, Braunpat BraunEder AG, Basel


cantonal courts in similar cases may beconsidered, at the discretion of the court, toa high extent.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases? Swiss courts are willing, at the discretion ofthe court, to consider the reasoning given byforeign courts to a high extent, depending onthings such as the country from which adecision is cited and the seniority of thecourt that handed down the judgment.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics? The prolongation of time limits is the onlymeans to delay a case. A judge may suspendthe procedure or defer the judgment wherethe validity of a European patent has beencontested and where one of the parties tothe dispute gives evidence that oppositionmay yet be filed with the European PatentOffice or that a final decision on the subjectof a pending opposition has not been taken.

11. How available are preliminaryinjunctions and how do you get them? Precautionary measures are provided by lawin the event of infringement. Provisionalmeasures may be ordered to secureevidence, to maintain the actual state ofaffairs and to enforce disputed rightsprovisionally. The party requesting suchmeasures at court will have to furnishequitable security. The petitioner mustprovide prima facie evidence that the otherparty has committed or intends to commitan act contrary to law and that it isthreatened by a loss which is not easilyreparable, and which can be avoided only byprovisional measures. Before aprecautionary measure is granted, theopposing party will be heard, but if there isan imminent danger urgent measures maybe taken even before hearing the opposingparty, provided that it is informed thereofimmediately after such measures are taken.If precautionary measures are granted, aninfringement action has to be brought withina set term that shall not exceed 30 days.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?Depending on the case, the technical field,expert opinions etc, a decision at firstinstance can be obtained within one to three

years. Besides consequent adherence totime limits, there is no possibility to expeditethis process.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?The Swiss law provides only one possibilityfor appeal. An appeal can be taken from thecantonal court to the Supreme Court ofSwitzerland regardless of the values inlitigation.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?Depending on the amount in dispute and thecomplexity of the case – for example, if itrequires expert opinions – costs for a first-instance decision are about CHF 50,000 toCHF 1 million, or even more.

15. Who can represent parties in court? Isspecialist representation required?Parties in court may be represented only byattorneys at law admitted to the bar of thecorresponding canton. Patent attorneysprovide the technical know-how.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?Punitive damages are not available inSwitzerland (see also 1, above). Whoeverwilfully or by negligence or imprudenceunlawfully utilises a patented invention shallbe bound to pay damages to the injuredparty. The prerequisites for the liability fordamages are given by the Swiss Code ofObligations (damage, illegality, fault, causalconnexion). The injured party has to assessbeforehand the amount of damages or thejudge may be requested to award damagesat his discretion on the basis of theevidence. The judge may also authorise thesuccessful party to publish the decision atthe expense of the other party. In criminalcases the infringer may be liable toimprisonment not exceeding one year or to afine not exceeding CHF 100,000.

17. Are there any realistic alternatives tolitigation in cases relating to patent disputes?Besides negotiation or arbitration, there areno realistic alternatives to litigation.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European Patent



Litigation Agreement? If not, how likely is itthat it will do so?Switzerland has signed up to the LondonProtocol and is a member of the sub-groupof the Working Party on Litigation to producea draft agreement.

19. Are there any other features of theenforcement system in your jurisdiction thatyou would like to point out?A revision of the Swiss Patent Act is on theway. As well as changes to the cantonalprocedural law, the establishment of afederal patent court with specialised judgesis also up for discussion.




Enforcing patents in the UK Feature

1. What options are open to a Europeanpatent holder, whose rights cover yourjurisdiction, when seeking to enforce itsrights in your jurisdiction?The primary option is to commenceproceedings for infringement in the appropriatecourt, as to which see section 2 below.Normally a patentee will seek by way of reliefan injunction restraining further infringements,damages or an account of profits and deliveryup of any infringing materials. We discussthese in greater detail in section 16.

However, court proceedings are not theonly route available and alternative forms ofdispute resolution are discussed in section17 below.

In addition, under Section 61(3) of thePatents Act 1977 the proprietor of a patentand an alleged infringer may, by agreement,refer to the Comptroller of Patents at thePatent Office the question of whether thereis infringement. Note that such referencehas to be by agreement of the parties.Where such a reference is made then theComptroller may award only damages or anaccount of profits – he does not have powerto award an injunction or delivery up. Notealso that under Section 61(5) if theComptroller reaches a conclusion that thequestion referred would be more properlydetermined by the court, he may decline todeal with it and thereafter the court wouldhave jurisdiction.

Additionally, under a recently introducedprocedure a patent proprietor may request theComptroller to issue an opinion as to whether aparticular act constitutes an infringement of thepatent. In these circumstances the consent ofthe alleged infringer is not required. However,any such opinions are not binding. They weregenerally thought useful to enable proprietorsto obtain opinions from the Comptroller on the

issue of infringement and then use those toput pressure on the alleged infringer.

2. Does your jurisdiction have specialistpatent courts? If not, what level ofexpertise can a patent owner expect fromthe courts?The United Kingdom in fact comprises threeseparate jurisdictions namely: England andWales; Scotland; and Northern Ireland.

Of these, England and Wales is by far thelargest, covering approximately 53 millionpeople out of a total population of 60million. By far the largest proportion ofpatent infringement suits are determined inthe courts of England and Wales.

England and Wales has three specialisttribunals for the determination of patentdisputes. The first is the Patents Court,which is a division of the Chancery Divisionof the High Court. The High Court is theprimary court of first instance in England andWales for dealing with significant disputes,generally reckoned to be those over£50,000. There are currently two mainpatents judges, Mr Justice Pumfrey and MrJustice Kitchin. Prior to their elevation to thebench, both were practitioners at theintellectual property bar and had significantexperience in patent matters. In addition,there are a number of Chancery judges whoare designated as able to hear patent cases– in practice, they tend to deal with the lesstechnically complex cases.

The second tribunal is the PatentsCounty Court (PCC). The PCC was originallyestablished in 1990 at a time when thecounty court was generally the courtdesignated for dealing with smaller claims.The concept behind the PCC was to have amore streamlined procedure enabling thehearing of smaller, less complex disputes. Itwas envisaged as a way of giving SMEs theability to have their patent disputesdetermined both speedily and relativelyinexpensively. The PCC continues to fulfil

Enforcing patentsin the UK

By Gary Moss, Taylor Wessing, London


that role although in practice, following theWoolf Reforms of 1998, the streamlinedprocedure is now available in all courts.

The primary judge of the PCC is HisHonour Judge Fysh. Before going to thebench, Judge Fysh was an intellectualproperty practitioner of many years’standing. Where the workload of the courtrequires additional judges, deputy judges arerecruited from among senior practitioners atthe patent bar.

As indicated under section 1 above, it isalso possible (by agreement) to haveinfringement issues determined by thePatent Office, the members of which will bespecialists (from both a patent and technicalstandpoint).

In Scotland, patent actions will normally bedetermined by the Court of Session. Becauseof the relatively few number of patent caseswhich are heard, there is no specialistjurisdiction in Scotland. We are not aware ofthere having been any patent cases before thecourts of Northern Ireland in recent times.

3. Is it possible to cross-examine witnessesat trial? How far are proceedings based onwritten evidence? Are there restrictions onthe use of evidence from experts?In the majority of cases in the UK oraltestimony by witnesses (both lay and expert)remains the norm. However, over the past 15years or so, in an effort to streamline theprocess, the English courts have tended todispense with oral testimony in chief.Instead, witness statements and expertreports are exchanged by the parties inwritten form some time in advance of the trial(in most major cases there will be two roundsof evidence, in chief and in reply). Thewitnesses will then confirm the truthfulnessof those written statements under oath at thetrial. They are then tendered for cross-examination by the opposing party.

The ability to challenge forensically awitness’s evidence by means of cross-examination is still regarded as afundamental aspect of the British legalsystem. A party will not be allowed toadduce evidence from a witness who has notbeen tendered for cross-examination unlessthat party can establish that it does nothave the ability to require the witness toattend the court or to be cross-examined insome other way, eg via a video link. Thiswould require the party wishing to rely on thewritten evidence to show that the witness istoo ill to attend, or has died, or cannot becompelled, eg because they are not withinthe jurisdiction. Even the latter may be

difficult to establish in the case of a witnesswhose attendance by way of video link orwritten deposition could be compelledthrough an overseas court.

There are no restrictions on the use ofevidence from experts as such. However, inpractice courts will endeavour to limit thenumber of experts used by each party.Usually the court will seek to limit each sideto one expert per technical discipline,although cases involving complex areas oftechnology can involve a number ofdisciplines which can lead to each partyutilising more than one expert.

As regards experts generally, it shouldbe noted that the courts have stressed thatthe function of such witnesses is to assistthe court and not to act as an advocate forthe case of the party from whom they havereceived instructions. This rule is appliedvery strictly and the court will take a dimview of an expert who it believes is simplyputting forward the best case possible forhis or her instructing party.

4. Are infringement and invalidity dealt withsimultaneously? What level of proof isnecessary to demonstrate one or the other?In the vast majority of cases infringement andvalidity are dealt with by the same court atthe same time. All of the jurisdictionsmentioned under section 2 above havejurisdiction to hear both infringement andvalidity issues. Under UK law it is not possibleto “infringe” an invalid patent and thereforethe invalidity of a patent is a completedefence to a charge of infringement.

In all cases the level of proof required isthe normal standard, namely balance ofprobabilities. Note that in the United Kingdomthere is no presumption of validity of a grantedpatent requiring a higher level of proof toestablish invalidity, as is the case in theUnited States. Moreover, the fact that a PatentOffice Examiner may have considered a pieceof prior art prior to granting the patent will beof no evidential value whatsoever if that priorart is raised again in any invalidity suit.

5. To what extent is pre-trial discoverypermitted? If it is permitted, how isdiscovery conducted?Pre-trial discovery is a key feature of theUnited Kingdom legal system. However, in aneffort to reduce the costs of litigation overthe past few years its general scope hasbeen reduced to a significant extent. This hasnow been further restricted in patent cases.

Prior to the changes coming about as aresult of the civil justice reforms at the


Enforcing patents in the UK


beginning of this decade, the UK rules ondiscovery obliged each party to disclose anydocument in its possession, custody orcontrol which was relevant to the matters inissue or which might lead to a chain ofenquiry which was relevant to the matter inissue. This made documentary discoveryquite wide ranging, although it was never aswide ranging as US discovery.

Under the new procedure a party mustnow provide “standard disclosure”. Standarddisclosure requires a party to disclose only:• The documents on which it relies. • The documents which:

1. adversely affect its own case;2. adversely affect another party’s

case; or3. support another party’s case.

• Documents which it is required todisclose by a relevant practice direction.

It should be noted that the above isconsiderably more limited than the previousobligations.

These obligations have been furtherlimited in the case of patents in the followingmanner:• Where a defendant has produced a

product description it is not obliged toprovide documents relating to the issueof infringement.

• In the case of validity, neither party isobliged to disclose any documents fallingoutside a period beginning two yearsbefore the priority date of the patent insuit and ending two years after the prioritydate.

• In relation to allegations of commercialsuccess, instead of providing documentarydiscovery the party relying on suchallegations must serve a schedule settingout the details of the alleged commercialsuccess covering such issues as theproduct in question, the level of sales, theperiod of sales etc.

The disclosure process imposessignificant obligations on the parties’lawyers. As officers of the court they havean overriding duty to ensure that the courtrules are complied with by the party forwhom they are acting. That duty outweighstheir duties to their client. This includesmaking searching enquiries to ascertain thatall relevant documents required to bedisclosed have been disclosed. It alsoimposes obligations to ensure that itemssuch as product descriptions fully andaccurately describe the product in questionand are not defective to any material degree.

In addition to the above, it is open to aparty to seek disclosure over and abovestandard discovery. In deciding whether ornot to order a specific disclosure order, thecourt takes into account all thecircumstances of the case and in particularthe Overriding Objective of the Rules of CivilProcedure which requires the court to dealwith cases proportionately, expeditiously andfairly. In practice, this places an obligationon the party seeking specific disclosure toestablish to the satisfaction of the court thatthe standard disclosure is inadequate andthat the additional disclosure sought isnecessary for the just disposal of the case.

6. To what extent does any doctrine ofequivalents apply in an infringement action?This is an extremely complex issue. In Kirin-Amgen Inc v Transkaryotic Therapies Inc[2004] UKHL 46, the House of Lords ruledthat under United Kingdom law there is nodoctrine of equivalents. Rather the patentclaims are to be given a purposiveconstruction having regard to the purpose ofthe patentee as would be determined onreading the specification as a whole by theperson skilled in the art. The claims shouldnot be given a strict literal interpretation; atthe same time it is the claims whichdetermine the monopoly and they should notbe regarded merely as a guideline.

For a more detailed explanation as tohow patent claims are to be construedplease see the judgment of Lord JusticeJacob in Rockwater v Technip France SA &Technip Offshore UK Limited [2004] RPC 46(which was generally cited with approval inKirin-Amgen) and in Mayne Pharma vPharmacia Italia SPA [2005] EWCA Civ 137(which was given after the decision in Kirin-Amgen, but took into account the commentsof the House of Lords).

7. Are there certain types of patent right thatmay be granted by the EPO – biotech orcomputer software-related, for example – thatare more difficult to enforce than others?In general the answer to this question is no.However, it should be noted that there hasbeen very limited judicial pronouncement inthe UK regarding computer software-relatedinventions and the degree to which thesemay be patentable. There is still uncertaintyas to how readily these may be enforced.

8. To what extent are courts willing toconsider, or bound by, the opinions anddecisions of other courts that have dealtwith similar cases?



The United Kingdom courts operate on abasis of precedent in which previousdecisions will be binding upon them. Thisrule relates particularly to decisions given bythe higher courts (Court of Appeal or Houseof Lords). Where there are prior decisions ofcourts on the same level, the later courtmight be willing to depart from a previousdecision if it is satisfied there are new factsor new arguments which were not consideredby that prior tribunal.

9. To what extent are courts willing toconsider the reasoning given by foreigncourts that have handed down decisions insimilar cases?These will be of significant persuasive effect.The United Kingdom judges have been at theforefront of attempts to harmonise patentlaw throughout Europe. This necessarilyinvolves giving appropriate consideration andrespect to prior decisions of judges in otherjurisdictions where they have beenconsidering essentially the same patent andthe same alleged infringement while at thesame time applying the same law.

10. What options are open to a defendantseeking to delay a case? How can aplaintiff counter delaying tactics?Generally the abilities for a party to delay acase are very limited. In the recent past thePatents Court has made significant strides inensuring that patent cases are disposed ofreasonably expeditiously. The court is veryreluctant to allow a party to delay thedisposal of the case once commencedunless there are very good reasons for doingso. It will also not necessarily rubber stampan agreement between the parties to delaythe disposal of the case unless it is satisfiedthat there are good reasons for doing so.

One tactic which has sometimes beenemployed is to seek a stay of the litigationproceedings pending the outcome ofoppositions in the European Patent Office(EPO). Although the courts have been atpains to stress that there is no hard andfast rule and that each case turns on its ownfacts, in practice it can be difficult to securesuch a stay. This is because of the length oftime which oppositions take includingappeals – currently the estimate is at leastfive years. The court is unwilling to allow apatentee’s rights to be frozen for that lengthof time and will be similarly reluctant torequire a defendant to have hanging over itan allegation of infringement for that lengthof time. Where the parties comprise sizeablecommercial organisations, the view of the

United Kingdom court is that any perceivedprejudice incurred by proceeding with the UKaction in the meantime, which usually comesdown to a question of wasted expense, canbe dealt with by appropriate orders in costs.

Circumstances which may justify a stay are:• Where the defendant is an individual or

small entity and can show that having tospend money fighting the UK action whilean opposition is pending will cause itsignificant prejudice.

• Where the patentee has delayed untilwell into the opposition period beforecommencing proceedings despite havingknown about the alleged infringement.

11. How available are preliminaryinjunctions and how do you get them?Theoretically, preliminary injunctions areavailable where the claimant can show that itwill suffer irreparable harm and damage ifthe defendant’s activities are allowed tocontinue pending the trial. In practice, theyhave become relatively rare in patentactions, save in cases involving the launchof generic pharmaceuticals. This is becauseof the timescales for UK patent actions (seesection 12 below) and the possibility foreven further expedition. In practice, in mostinstances if a claimant seeks a preliminaryinjunction they will be met by the responsefrom the court that, rather than arguing overthe preliminary injunction, it would be moresensible to have a full trial of all the issuesin three to four months.

12. How long does it take to get a decisionat first instance? Is it possible to expeditethis process?The Patents Court has made great stridesover the past few years in ensuring thatpatent actions are disposed of expeditiously.The normal timescales for even a reasonablycomplex patent action are in the region ofnine to 12 months from commencement ofthe action through to trial. Decisions can beexpected within four to six weeks thereafter.

Furthermore, the court has beenamenable to expedition in appropriate caseswhere, for example, one of the parties candemonstrate that it has a real need to havea definitive ruling within a relatively shortspace of time. A timescale of four to sixmonths from commencement of the action totrial is not uncommon.

13. What avenues for appeal are open to thedefeated party in a first instance case? Whatcriteria are there for granting an appeal? Howlong does the appeal process take?




Appeals from both the Patents Court and thePatent County Court are to the Court ofAppeal. Appeals from decisions of thePatents Office go first to the Patents Courtand then on to the Court of Appeal – this isone of the drawbacks of commencing anyinfringement litigation in the Patent Office inthat one is adding an extra level of appeal.

Appeals from first instance to the Court ofAppeal may now be made only withpermission. A litigant must seek thepermission of the first instance court toappeal. If that is refused then one may applyfor permission to the Court of Appeal. If theCourt of Appeal, without a hearing, refusespermission to appeal then a request may bemade that the decision be reconsidered at ahearing. But if leave is refused at the hearingno further appeal is possible. In theory,appeals can be raised on a point of law oragainst a finding of fact, but in practice onewould struggle to bring an appeal on a findingof fact alone as the Court of Appeal isreluctant to overturn a first instance courtdecision on fact. This is because the Court ofAppeal, unlike the court of first instance, doesnot have the opportunity to hear the witnessesin person. However, often litigants try to dressup factual issues as points of law by sayingthat the judge should not have found for theother party on the preponderance of facts.

One interesting feature is thatobviousness/inventive step is a mixedquestion of law and fact of which only thefactual element should be determined by thefirst instance judge. The Court of Appealhas on several occasions cautioned againstlitigants appealing against decisions onfactual issues alone purely in the hope thatanother tribunal may take another view ofthose facts. It remains to be seen whetherthe first instance court will utilise that inorder to cut down a party’s ability to appealon those issues.

There may be a further level of appeal tothe House of Lords. Again that has to bewith the permission of the Court of Appeal orthe consent of the House of Lords ifpermission is refused by the Court ofAppeal. In practice, the House of Lords willhear only appeals raising a point of law ofpublic importance.

Appeals from the first instance to theCourt of Appeal take approximately 12months. Appeals to the House of Lords willtake a further 12 months.

14. To take a case through to a firstinstance decision, what level of cost shoulda party to a litigation expect to incur?

One of the drawbacks of the United Kingdomsystem is that it is relatively expensivecompared with other European systems.

Even in the most relatively simple patentcases, a litigant can expect to pay between£150,000 and £250,000 if the case goesall the way through to trial. For a case ofmedium complexity those costs would rise to£500,000 to £750,000. Very complexpatent trials involving significanttechnologies would rise into the low millions.

One point which should be noted is thatthe United Kingdom has the rule thatgenerally the loser pays the successfulparty’s costs. The basis of award means thatthe actual recovery is usually somewherebetween 60% and 80% of the actual costsincurred. However, over the past few yearsthere has grown up a market in after-the-event insurance which enables litigants toinsure against that potential liability.

It should also be noted that UnitedKingdom lawyers are now able to take onlitigation on a no win, no fee basis. Howeverthe amount of uplift which they are permittedto charge is significantly restricted(depending on the perceived likelihood ofsuccess) and cannot in any event be morethan 100% of the costs which would havebeen incurred on a normal charging basis.

15. Who can represent parties in court? Isspecialist representation required?Both solicitors and chartered patentattorneys can represent parties in thePatents County Court and also can act asthe advocate at the trial. Barristers can alsobe instructed, by either the chartered patentattorney or the solicitor, to appear at aPatents County Court trial where specialistcross-examination and advocacy arerequired. In the Patents Court (part of theHigh Court) a chartered patent attorney withadditional advocacy qualifications canconduct litigation, but will have a right ofaudience (ie, be allowed to act as advocate)only for cases on appeal from the PatentOffice. In all other cases in the PatentsCourt advocacy and cross-examination maybe conducted only by a barrister or a solicitorwith a right of audience.

16. What remedies are available forinfringement and how are these typicallyapplied? Are punitive damages availableand in what circumstances?The normal remedies are:• Injunction to restrain further infringements.• Damages or an account of profits (these

are alternatives and the claimant has to



elect which of these remedies he wishesto adopt).

• Delivery up of any infringing materials.• Costs expended in pursuing the litigation.

Damages can be based on the amountof profits lost by the patentee by reason ofthe defendant’s infringing acts. In order toestablish an entitlement to lost profits theclaimant has to show that on the balance ofprobabilities it would have made theinfringing sales had the defendant not doneso. Where the claimant cannot show this,damages will be based on a national royaltybased on the rate a willing licensor wouldagree with a willing licensee.

A defendant may avoid liability fordamages or an account of profits if it canshow that at the date of the agreement itwas not aware and had no reasonablegrounds for supposing that the patentexisted. Given the public nature of thePatent Office register it is difficult tosucceed in such a defence.

Punitive damages are available only inexceptionally rare circumstances in the UK.

17. Are there any realistic alternatives tolitigation in cases relating to patentdisputes?It is open to the parties to adopt alternativeforms of dispute resolution, notablyarbitration. Arbitrations are not common inthe field of intellectual property infringement,mainly because there is no pre-existingagreement between the parties under whichthe arbitration can be initiated. Neverthelessit is open to the parties to agree to arbitrateonce the dispute has arisen.

18. Has your jurisdiction signed up to eitherthe London Protocol or the European PatentLitigation Agreement? The UK has ratified the London Protocol butthe European Patent Litigation Agreement isstill being debated.





Directory

ALTIUS Law Firm Avenue du Port 86C B.414 1000 Brussels, BelgiumTel: +32 2 426 14 14 Fax: +32 2 426 20 30

www.altius.com

Paul Maeyaert [email protected]

Paul Maeyaert heads the IP practice ofALTIUS. His daily practice focuses ontrademark and patent litigation, as well asmedia & entertainment law. During recentyears he has obtained particular experiencein assisting clients in cross-border litigationdisputes.

He has been a member of the BrusselsBar since 1984 and obtained a law degreemagna cum laude at the Free University ofBrussels and a master’s in European law atthe College of Europe.

He is a frequent speaker at IP seminarsand regularly publishes articles on IP topicsof interest. He is also active in variousprofessional associations, such as AIPPI,INTA, LIDC, Marques and BMM, and is amember of the editorial board of IRDI, aleading Belgian IP journal.

Christophe [email protected]

Christophe Ronse is a partner with ALTIUS,in charge of the litigation practice. Hespecialises in patent litigation, particularly inthe life sciences sector, and has litigatedvarious important pharmaceutical patentcases before the Belgian courts.He has been a member of the Brussels Barsince 1988 and obtained a law degree cumlaude from the Catholic University of Leuvenand a master of laws degree from theUniversity of Illinois at Urbana-Champaign.

He is active in various professionalassociations such as AIPPI, LES and EPLaw,and presently serves as a board member ofthe Belgian section of AIPPI. He occasionallyspeaks and publishes on various legalsubjects.

ALTIUS Law Firm continued


A&L Goodbody International Financial Services Centre North Wall Quay, Dublin 1, Ireland Tel: +353 1 649 2234 Fax: +353 1 649 2649

www.algoodbody.ie

John Whelan [email protected]

John Whelan is Head of IP & Technology atA&L Goodbody. John’s practice areas includeboth the contentious and non-contentiousaspects of intellectual property, informationtechnology, telecoms and life sciences.

Before joining A&L Goodbody as apartner in 2003, John previously worked witha leading international law firm in Londonand Hong Kong. His return to Irelandcoincided with the subsequent establishmentof the Irish Commercial Court in January2004 and he has been involved in most ofthe significant IP cases before that courtsince its inception, including a number ofcomplex and high-profile patent proceedings.

John has spoken at conferences on IPtopics in a number of jurisdictions and isrecommended as a lawyer of choice for IPand IT matters by a number of internationallegal publications. John was educated atUniversity College Dublin and holds a lawdegree (BCL) and a masters in commerciallaw (LLM).

Ciara [email protected]

Ciara Cullen is a member of the IP &Technology Group at A&L Goodbody. Ciara’sareas of specialisation include trademarks,patents, designs and copyright law.

Ciara has experience in a wide range ofintellectual property matters dealing with allforms of intellectual property rights coveringa range of sectors and technologies. Hercontentious experience includes a number ofpatent, trademark and copyright casesbefore the Irish High Court and CommercialCourt. Her non-contentious experienceincludes advising on licences, sponsorshipagreements, distribution and franchisearrangements and other intellectual property-focused transactions.

Ciara worked in the financial sector for aperiod before qualifying as a solicitor withA&L Goodbody. She holds a law degree (LLB)from Trinity College Dublin.

A&L Goodbody continued

Amat i Vidal-Quadras Advocats Pau Casals, 14, 5è 08021 Barcelona, Spain Tel: +34 93 321 10 53 Fax: +34 93 419 31 47

www.avqadvocats.com

Miguel Vidal-Quadras Trías de Bes [email protected]

Mr Vidal-Quadras is head of the firm’sindustrial and intellectual property andpharmaceutical law department. A doctor oflaw, he graduated in 1993 from Universidad deBarcelona. He has been a member ofBarcelona Bar Association since 1997. He is amember of the AIPPI and LES. Before joiningAmat i Vidal-Quadras he was a lawyer atBufete Roig Aran (1995-1997), Garrigues-Andersen (2000-2002) and Torrents &Advocats (1997-2000 and 2002-2003). He isthe author of various publications onintellectual property and the coordinator of theprotection of technology module at ESADE,Universitat Ramon Llull, as well as being alecturer at the Patent Centre, Universidad deBarcelona, where he also teaches variousother courses on industrial property.

His main areas of expertise arelitigation, intellectual property, competition,advertising, technology transfer andpharmaceutical law. He speaks Spanish,Catalan, English and French.


Oriol Ramon Sauri [email protected];

Oriol Ramon Sauri graduated in law in 2002from Universitat Autònoma de Barcelona andalso has a master’s degree in industrial andintellectual property and competition lawfrom ESADE, Universitat Ramon Llull. He hasben a member of the Barcelona BarAssociation since 2004 and joined Amat iVidal-Quadras in the same year. Beforejoining the firm he was a lawyer at H & CAdvocats i Consultors (2001-2003).

His areas of expertise are intellectualproperty, competition and advertising law. Hespeaks Spanish, Catalan and English.

Amat i Vidal-Quadras Advocats continued

Árnason Faktor Gudridarstig 2-4, IS 113 Reykjavik, IcelandTel: +354 540 0200Fax: +354 540 0201

www.arnasonfaktor.is

Gunnar Örn HarðarsonFounding partner and managing [email protected]

Gunnar has a BSc in mechanical engineeringand is a European patent attorney. After 20years in the IP field, Gunnar has extensiveindustry and private practice experience, andhas served on various government IPadvisory committees. He focuses on draftingand prosecuting mechanical patentapplications, opinion work, appeals andlitigation support. Gunnar was secretary ofthe Association of Icelandic Patent Agentsfrom 2000 to 2005, and is a council andboard member of the EPI.

Ásdís Magnúsdó[email protected]

Ásdís has over seven years’ experience in IPmatters in private practice as well as at theIcelandic PTO. She graduated from the LawFaculty of the University of Iceland and herfinal thesis was in the field of patents: “Thelegal protection of biotechnology inventions.”She completed an LLM degree in law,science & technology at Stanford Universityin California in May 2005.

Ásdís also works on trademark matters,such as the prosecution of trademarkregistrations, as well as consulting on otherintellectual property matters. She is amember of the INTA.

Árnason Faktorcontinued


Braunpat Braun Eder AGReussstrasse 22PostfachCH-4015 Basel, SwitzerlandTel: +41 61 307 90 30Fax: +41 61 307 90 39

www.braunpat.ch

Michael StierwaldPatent [email protected]

Michael Stierwald prosecutes patent anddesign grant procedures in Switzerland,Europe and internationally. He specialises inbiotech and chemistry inventions. Inparticular, he devotes his attention to IPvaluation and strategies in IP.

He holds a PhD in molecular biology fromthe University of Basel and a master’sdegree in advanced studies in IP from theSwiss Federal Institute of Technology, Zurich(ETHZ). As well as his native German, hespeaks fluent English and French.

Borenius & Kemppinen LtdYrjönkatu 13 A, 00120 Helsinki, FinlandTel: +358 9 615 333Fax: +358 9 615 33499

www.borenius.com

Ben [email protected]

Ben Rapinoja is a partner in the IP &Technology practice group of Borenius &Kemppinen Ltd. His practice is focused oncommercial utilisation of intellectual andindustrial property rights (especially patentsand trademarks), technology-driventransactions and the legal aspects of lifesciences and pharmaceuticals. Ben hasparticular expertise in the fields of patentand IP litigation.

Prior to joining Borenius & Kemppinen,Ben worked for the Ministry of Trade andIndustry as legal adviser and governmentalsecretary responsible for legal affairs relatingto intellectual property rights, especiallypatents, trademarks and design rights. Healso represented the Finnish government invarious expert groups of the EU institutions,the European Patent Organisation andinternational organisations in the field ofintellectual property (WIPO, WTO).

Aura Soininen, [email protected]

Aura Soininen is an associate lawyer atBorenius & Kemppinen Ltd. She advises onIP-related matters with a specific focus onpatent law, IPR strategies and questionsrelated to the pharmaceutical field andbiotechnology. Aura received her master oflaws degree in 2002. She also studiedbiochemistry at the University of Oulu andlater in the University of Helsinki, and iscurrently in the process of completing herdoctoral studies (econ) on patents at theLappeenranta University of Technology,Department of Business Administration. Priorto joining B&K, Aura worked for several yearsas a researcher at the Helsinki Institute forInformation Technology (HIIT). During heremployment at HIIT she spent a year and ahalf at the UC Berkeley, US, where she was avisiting scholar at the School of InformationManagement and Systems.

Borenius & Kemppinen Ltdcontinued


Brevalex 3 rue du Docteur Lancereaux75008 Paris, FranceTel: +33 1 53 83 94 00Fax: +33 1 45 63 83 33

www.brevalex.com

Pascal [email protected]

Pascal Moutard is a French and Europeanpatent and trademark attorney, and is alsojoint manager of Brevalex, an IP law firm withheadquarters in Paris and offices inGrenoble and Tolouse. He graduated as anengineer from the Ecole NationaleSupérieure des Mines (Saint Etienne), andalso has a doctorate in physics and amaster’s degree in law (industrial property)from the University of Lille. He is a graduateof the European patent litigation course ofthe University of Strasbourg.

Mr Moutard was a patent examiner at theEuropean Patent Office for six years and has14 years’ experience as a patent engineerand a patent attorney. He now works for bothSMEs and large French, Japanese and UScompanies, with a focus on physics,electronics, computer-related inventions,semiconductors, nanotechnologies,microelectronics and data processing.

He has wide experience in prosecutingopposition cases before the EPO, but alsobefore foreign offices (mainly US andJapanese, in cooperation with a wide rangeof associate firms). He has also acquiredwide experience in IP litigation cases, mainlyin France but also in different Europeancountries in cooperation with local attorneys.

Mr Moutard is a member of the IEAM(Institute for Expertise, Arbitration andMediation - Paris) for IP matters and anexpert of the French committee of theInternational Chamber of Commerce.

Cermák Horejs Myslil a spol,Národní 32, 110 00 Praha 1,Czech RepublicTel: +420 296 167 111Fax: +420 224 946 724

www.cermakhorejsmyslil.cz

Lukas LorencAttorney at [email protected]

Lukas Lorenc studied at the Faculty of Lawat Charles University in Prague, gaining amaster’s degree in 2000. He joined CermákHorejs Myslil a spol as a legal trainee in2000, and was admitted to the Bar in 2002.His main practice areas are Czechintellectual property, commercial law andlitigation. He also has experience in advisingon unfair competition issues and on EUregulations and EU law. He speaks Czech,English and German, and also has a workingknowledge of Russian.

Andrea PovazanovaAttorney at [email protected]

Andrea Povazanová completed her studies atthe Faculty of Law of Komensky University inBratislava in 1998. She has participated inexpert traineeships with the ConstitutionalCourt in Koice (1997), the Council of Europe inStrasbourg (1999), the International Institutefor Public Administration in Paris (1999), andthe European Court of Justice in Luxembourg(2002 – 2003). Between 1998 and 2002, shewas a legal adviser at the Ministry of Justiceof the Slovak Republic. Since 2003. she hasbeen a legal assistant with Cermak HorejsMyslil a spol. She specialises mainly inindustrial property law and the civil law. Shespeaks Czech, Slovak, English and French.

Cermák Horejs Myslil a spol,continued


DLA Piper Weiss-TessbachRotenturmstrasse 13A-1010, Vienna, AustriaTel: +43 1 531 78 0Fax: +43 1 533 52 52

www.dlapiper.com

Alexander Cizek [email protected]

Alexander Cizek was admitted to the NewYork bar in 1996 and to the Austrian bar in2000. He has been a partner with DLA PiperWeiss-Tessbach since 2001; he heads the IPteam of DLA Piper Weiss-Tessbach’s Viennaoffice. He is also responsible for the IPpractice in the firm’s CEE offices.

Alexander Cizek specialises in all areasof intellectual property law including patents,trademarks, designs, copyrights and unfaircompetition practices. He advises bothnational and international clients on IP-related issues and has represented them inlicensing and know-how transfernegotiations. He has substantial litigationexperience both in court and before theAustrian Patent and Trademark Office. Hisdomestic and foreign patent clients mostlystem from the chemical and mechanicalengineering field but also include otherindustries. Alexander Cizek also advises andrepresents clients on general commerciallegal issues and in transport insurance andshipment law cases.

Grünecker Kinkeldey Stockmair &Schwanhäusser Maximilianstrasse 58,80538 Munich, GermanyTel: + 49 89 21 23 50 Fax: + 49 89 22 02 87

www.grunecker.de

Dr Bernd [email protected]

Dr Bernd Allekotte is an attorney at law atthe Munich office of Grünecker KinkeldeyStockmair & Schwanhäusser. His practicefocuses on litigation, in particular patent,trademark and unfair competition cases. Healso advises his clients on related licensingmatters, with particular emphasis onGerman and EU antitrust concerns. He hasfocused on intellectual property law since hefirst started practising with a New York lawfirm in 1996. He is admitted to the Bars ofNew York and Germany.

Dr Allekotte’s technical experienceencompasses mechanical and electricaltechnologies, chemistry/pharmaceuticals,biotechnology and telecommunications. He ispermanently engaged in a number oflitigations involving patent infringementactions in various district courts and courtsof appeal in Germany. He continuously dealswith aspects of international patent litigation,in that he works out strategies andrepresents clients to enforce patentportfolios in a number of jurisdictions, as wellas advising on strategies to defend clientsagainst patent infringement in severaljurisdictions. Dr Allekotte has written severalarticles and lectures from time to time onaspects of intellectual property law.

Intellectual Asset Management magazineGlobe White Page Ltd, New Hibernia House,Winchester Walk, London SE1 9AG, UKTel: +44 20 7234 0606Fax: +44 20 7234 0808


Joff [email protected]

Joff Wild is a journalist who has specialisedin covering IP since 1992. He has beeneditor of a number of IP publications,including Copyright World, Patent World andManaging Intellectual Property. He has alsowritten on IP for a number of otherpublications including the Times, theFinancial Times and the American Lawyer.From 1998 to 2000 he was publisher of allintellectual property products at EuromoneyInstitutional Investor. He has been editor ofIAM since it launched in July 2003.


Nederlandsch Octrooibureaucontinued

Patpol02-776 Warsaw, 162J, Nowoursynowska Str, PolandTel: +48 22 644 96 57

+48 22 546 91 18Fax: +48 22 644 44 02

www.patpol.com.pl

Katarzyna Karcz Patent Attorney, [email protected]

Katarzyna Karcz has an MSc degree in civilengineering from Warsaw University ofTechnology, as well as a certificate inpostgraduate intellectual property studiesfrom Jagellonian University in Kraków. Since1999, she has been a Polish patent andtrademark attorney, and since 2004 aEuropean patent attorney.

Formerly at the Polish Patent Office andnow a partner at Patpol, Mrs Karcz’sactivities focus on the prosecution ofmechanical patents. In June 2005, she wasappointed as the Head of the Patents andDesigns Department at Patpol.

As a member of AIPPI she participatesregularly in the work done by this associationand is also a frequent attendee of itsseminars, forums and congresses.

H J [email protected]

Hans Hutter is a partner of NederlandschOctrooibureau in The Hague and heads theelectronics section. He is a Dutch andEuropean patent attorney and his areas ofpractice include computer-implementedinventions, semiconductor technology,lithography machines, telecommunications,optical discs and smart cards. Hans worksfor a wide variety of national andinternational companies.

Hans joined Nederlandsch Octrooibureauin 1991. He started his patent career withthe Netherlands Industrial Property Office in1988. Before that, he studied electricalengineering at Twente University (1982).Here he worked as a teacher in computerscience. Hans holds a PhD in the history ofscience and technology from EindhovenUniversity of Technology (1988).

Nederlandsch OctrooibureauPO Box 29720NL-2502 LS, The Hague, the NetherlandsTel: +31 70 331 2500Fax: +31 70 352 7528

www.octrooibureau.nl

Hans Bottema Managing [email protected]

Hans Bottema is managing partner ofNederlandsch Octrooibureau in The Hague.

He is a Dutch and European patentattorney and his areas of practice includemechanics, process and packagingtechnology and physics. Hans works formultinational companies in the offshore andbrewing industry, as well as for medium-sized companies in automotive technology.

Hans joined Nederlandsch Octrooibureauin 1995. Prior to this he was a Europeanpatent attorney with Procter & Gamble inBrussels, Newcastle and Frankfurt. With P&Ghe was engaged in prosecution and litigationin the paper product technology area. Hestarted his training as a patent attorney in1987 with Philips Electronics in Eindhoven inthe field of medical systems and electronbeam imaging devices. Hans holds an MSc intechnical physics from Delft University ofTechnology at the Faculty of Reactor Physics(1987).


Szecskay Ügyvédi Iroda – Attorneys at LawH-1055 Budapest, Kossuth Tér 16-17, HungaryTel: +36 1 472 3000Fax: +36 1 472 3001

www.szecskay.com

Dr Gábor Faludi [email protected]

Dr Gábor Faludi is a Hungarian attorneyadmitted to the Budapest Bar. Dr Faludireceived his JD, summa cum laude, fromEötvös Loránd Faculty of State and LegalScience in 1976. He obtained his PhDthrough a thesis on copyright licensingagreements. He also attended ColumbiaUniversity (graduate of the summerprogramme in American law, 1981).

Dr Faludi is an associate professor oflaw at Eötvös Loránd University. He is also aboard member of the Hungarian Associationfor the Protection of Industrial Property, anda member of the Copyright ExpertsCommittee, the Council for the Protection ofIntellectual Property at the National PatentOffice and the Electronic TelecommunicationArbitration Board. Dr Faludi is the author ofnumerous articles on intellectual propertylaw. He currently specialises in civil,commercial and IP law and litigation. DrFaludi is fluent in English and German.

Malgorzata Zielinska-Lazarowicz [email protected]

Malgorzata Lazarowicz has a master of lawdegree from Warsaw University, where shealso undertook postgraduate studies inintellectual property law (2003) and inEuropean law (2005). Since 2005, MrsLazarowicz has been a trainee patent attorney.

At Patpol, Mrs Lazarowicz’s practicefocuses on infringement and enforcement ofintellectual property rights, including patents,designs, trademark protection, administrativeand litigation proceedings, as well as unfaircompetition and copyrights. She isexperienced in drawing up appeals againstdecisions of the Patent Office issued as partof litigation proceedings (opposition andinvalidation proceedings) or when it hasrefused to grant a patent, drafting cease anddesist letters to alleged infringers ofexclusive rights, and giving legal opinions onmany aspects of Polish intellectual propertylaw to national and foreign clients.

Patpolcontinued

Società Italiana BrevettiPiazza di Pietra, 38-3900186 Rome, ItalyTel: +39 06 69 54 41Fax: +39 06 69 54 4810/20

www.sib.com

Giovanni Antonio [email protected]

Giovanni Grippiotti is a member of the RomeBar as well as being an Italian andCommunity trademark attorney and aCommunity design attorney.

In over 20 years’ practice in associationwith SIB’s Rome office he has covered thefull range of IP rights and handled a largenumber of disputes in a number of IP-relatedfields, including patents, trademarks,designs and copyrights. His clients are worldindustry leaders, international companies,universities and research organisations. Heis particularly experienced in obtainingpreliminary injunctions and seizures inpatent disputes.

Mr Grippiotti regularly contributes casecomments to specialist journals and helectures on IP matters. He belongs to INTA,AIPPI, FICPI, ECTA, MARQUES and LES, aswell as to the INDICAM Council, the ItalianIndustrial Property Consultants Institute andthe Italian College of Industrial PropertyConsultants.

He speaks English.


Dr Gusztáv Bacher [email protected]

Dr Gusztáv Bacher is a Hungarian attorneyadmitted to the Budapest Bar. He receivedhis JD, summa cum laude, from EötvösLoránd Faculty of State and Legal Science in1998. Dr Bacher lectures at the university inseminars on contract law. He received hismaster of laws (LLM) degree in internationalbusiness law from the Central EuropeanUniversity in 2001. He worked for threemonths in the Max Planck Institute forIntellectual Property (Munich) in 2005.

Dr Bacher is a member of the executivecommittee of the Hungarian group of AIPPI,assistant secretary general of the LigueInternationale du Droit de la Concurrence(LIDC) and in 2004 was internationalrapporteur of the LIDC on comparativeadvertising. He is the author of a number ofarticles on civil law, IP and e-commerce. DrBacher joined Szecskay Ügyvédi Iroda in 1999.He currently specialises in civil, competition,advertising and IP law and litigation. Dr Bacheris fluent in English and German.

Szecskay Ügyvédi Iroda – Attorneys at Lawcontinued

Taylor Wessing Carmelite50 Victoria Embankment, BlackfriarsLondon EC4Y 0DX, United KingdomTel: +44 20 7300 7000 Fax: +44 20 7300 7100

www.taylorwessing.com

Gary Moss [email protected]

Gary is a senior partner in the IntellectualProperty Department of leading Europeanlaw firm Taylor Wessing. He specialises inboth contentious and non-contentiousissues, with particular emphasis on patents,pharmaceuticals, biotechnology, informationtechnology and technology transfers. Garyhas over 25 years' experience practising inthese areas and during that time hashandled many major patent cases. Gary alsohas extensive experience in cross-borderpatent litigation involving both Europe andthe United States.

Nigel [email protected]

Nigel is a partner in the Intellectual PropertyDepartment of Taylor Wessing, specialisingin patent litigation and advice, and licensingand technology transfer in the engineering,chemical, pharmaceutical and biotechnologyindustries.

He graduated from Southampton Universitywith a BEng in mechanical engineering andworked in industry before retraining as asolicitor. In 1995 he joined Taylor JoynsonGarrett (which became Taylor Wessing inSeptember 2002). Nigel has also obtained apostgraduate diploma in intellectual propertylaw from Bristol University.

Nigel writes regularly, contributingarticles to a number of specialist intellectualproperty and life sciences publications. Healso lectures and speaks regularly atconferences on patent-related matters. Hehas appeared on television commenting onpatent issues, in particular the proposals forthe Community patent.

Taylor Wessingcontinued


Tom [email protected]

Tom is an associate in the IntellectualProperty Department of Taylor Wessing andspecialises in patent litigation. Tom hasparticular experience of acting for clientsin the pharmaceutical, medical devices andbiotechnology sectors, but has alsoassisted on cases in a variety of othertechnology fields.

Tom gained a BSc in genetics from theUniversity of Nottingham and a diploma inintellectual property law and practice fromthe University of Bristol. He trained as asolicitor at Taylor Wessing, qualifying inMarch 2005.

Taylor Wessingcontinued

Zacco A/SHans Bekkevolds Allé 7DK-2900 Hellerup DenmarkTel: +45 39 48 80 00Fax: +45 39 48 80 80

www.zacco.com

Pernille [email protected]

Pernille Thorsboe graduated in 1980 with anMSc in chemical engineering from Denmark’sTechnical University. Mrs Thorsboe startedher career in the patent businessimmediately and worked from 1982 to 2000at the Danish Patent Office, from 1988 ashead of various chemical divisions and finallyas Head of Patents.

During her years at the Patent Office,Mrs Thorsboe had the responsibility ofmanaging and developing Danish patentpractice within chemistry, and she hasparticipated in harmonisation work inrelation to patents at WIPO, the EPO, the EUand the North. She was the head Danishdelegate in the negotiation of the EUDirective on Biotechnological Inventionsbetween 1988 and 1996.

Mrs Thorsboe joined Zacco Denmark as apatent attorney in 2000 and became Head ofthe Life Science and Chemistry Departmentin 2004. In Zacco Denmark she works withinorganic chemistry, food technology andpharmaceuticals, and with patent litigation forthe pharmaceutical industry.

Zacco A/S is a Scandinavian company,which has offices in Copenhagen, Aarhus,Oslo, Trondheim, Stockholm, Skellefteå andMalmoe.

Zacco Norway AS Haakon VII’s gate 2, PO Box 2003 Vika,NO-0125 Oslo, NorwayTel: +47 22 91 04 00 Fax: +47 22 91 05 00

www.zacco.no

Jens Fredrik C Langfeldt Senior [email protected]

Jens Fredrik C Langfeldt was born in 1942and graduated in 1970 with a BSc degreefrom Queens University in Belfast,Department of Applied Science andTechnology, Electrical & ElectronicsEngineering Division. Mr Langfeldt started hiscareer as a patent consultant in 1971 andjoined Bryns Patentkontor (now Zacco Norway)in 1985. He has considerable expertise in thearea of intellectual property rights, andparticularly patent and design rights.

Mr Langfeldt has completed a number ofcourses in the areas of international patentrights and Norwegian intellectual propertyrights. He is president of the Association ofNorwegian Patent Agents. Further, he is amember of the Norwegian Society ofChartered Engineers, NIR, FICPI, AIPPI, UNIONand the Scandinavian Patent Attorney Society.Mr Langfeldt is a partner in Zacco A/S.

Zacco Norway is part of theScandinavian group of companies ZaccoA/S, which has offices in Copenhagen,Aarhus, Oslo, Trondheim, Stockholm,Skellefteå, Gothenburg and Malmoe.


Zacco Sweden ABSveavägen 151Box 23101 SE-104 35, Stockholm, SwedenTel: +46 8 729 95 63Fax: +46 8 31 83 15

www.zaccolegal.com

Helena ÖstblomAttorney at [email protected]

Helena Östblom has more than 10 years’experience in advising on legal mattersrelating to commercial law with specialexpertise in intellectual property law. Shespecialises in litigation relating toinfringement of intellectual property rightssuch as trademarks, patents, designs andcopyrights, as well as litigation regardingmatters relating to the Marketing PracticesAct. She also advises on other legal mattersrelating to intellectual property law, marketinglaw and competition law.

Helena Östblom graduated in 1989 with amaster of laws degree from StockholmUniversity. She has worked as an assistantjudge at the District Court of Västervik.Between 1991 and 1998 she was a memberof the Swedish Bar Association and workedas a lawyer at Advokatbyrån Frie in Stockholm(merged with Gedda & Ekdahl Advokatbyrå1997). She joined Zacco Sweden AB in1999. In addition to her work as an attorneyat Zacco Legal, Helena is the secretary of theboard of the Swedish Anti CounterfeitingGroup (SACG).

Zacco Sweden is part of theScandinavian group of companies ZaccoA/S, which has offices in Copenhagen,Aarhus, Oslo, Trondheim, Stockholm,Skellefteå and Malmö.

Published in partnership with NASDAQ,Deloitte, Morgan Stanley, Moody’s, Duff &Phelps, Thomson and over 70 leading lawfirms worldwide, it provides country-by-country analysis of the latest developmentsin IP protection in over 50 jurisdictions.

Separate sections by our internationaldistribution partners detail key global IPtax, finance, investment and valuationtopics. An extensive US section containsover 15 chapters focusing on a wide rangeof the latest issues affecting companies’ability to maximise and protect the valueof their IP assets.

For more information, or to receive yourown copy, please contact Gavin Stewart at [email protected] on +44 20 7234 0606.

Now in its fifth edition,IP Value 2007 –An international guidefor the boardroomis firmly established as theindispensable guide for allcorporate professionalswith an interest in IP –investors, board members,in-house counsel, financeofficers and attorneys inprivate practice.

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