Patents in Europe 2011-2012

Patents in Europe 2011/2012
Contents
Welcome By Sara-Jayne Clover The EPO as a driving force behind positive developments in the patent system By Benot Battistelli European Patent Office 2010: the EPOs year in statistics By Joff Wild Protecting software and business methods via the EPO By Dulce M Miranda Garrigues Abogados y Asesores Tributarios, SLP Patenting biotechnology inventions via the EPO By Ralph Minderop, Arwed Burrichter, Meikel Diepholz and Natalie Kirchhofer COHAUSZ & FLORACK EU patents and the Unified Patent Court By Rainer K Kuhnen and Michael Zeitler Kuhnen & Wacker Albania By Gjergji Gjika and Evis Jani Drakopoulos Law Firm Austria By Peter Israiloff Barger, Piso & Partner Belgium By Kristoff Roox, Christian Dekoninck and Sarah van den Brande Crowell & Moring Cyprus By Phivi Tramountanelli Michael Kyprianou & Co LLC Denmark By Claus Elmeros and Louise Aagaard Hiberg A/S Finland By Petri Eskola Backstrm & Co Attorneys Ltd France By Patrick Dunaud, Nathalie Hadjadj-Cazier and Gwendaline Sarrat Winston & Strawn Germany By Gottfried Schll COHAUSZ & FLORACK Greece By Eleni Lappa Drakopoulos Law Firm Iceland By Gunnar rn Hardarson and Asdis Magnusdottir Arnason Faktor 3
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Ireland By Yvonne McKeown MacLachlan & Donaldson Italy By Rossella Solveni and Giuseppe Mercurio Rapisardi Intellectual Property Montenegro By Lidija B Djeric Popovic Popovic Samardzija & Popovic Netherlands By Peter Claassen, Martin Hemmer and Elitte Vaal AKD Poland By Katarzyna Karcz Patpol Romania By Margareta Oproiu Cabinet M Oproiu Serbia By Katarina Kostic Popovic Popovic Samardzija & Popovic Spain By Miguel Vidal-Quadras Trias de Bes and Oriol Ramon Sauri Amat i Vidal-Quadras Advocats Sweden By Peter Kenamets and Fabian Edlund Awapatent Switzerland By Regula Redi and Rainer Schalch E Blum & Co AG Turkey By Ersin Dereligil and Oktay Simsek Destek Patent Inc United Kingdom By Richard C Price and Gareth E Morgan Winston & Strawn Firm directory 65
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Editorial board Bruce Berman President, Brody Berman Associates Scott Frank President, AT&T Intellectual Property Daniel M McGavock Vice President and Global IP Practice Leader, CRA International Ruud Peters CEO Philips IP & Standards Marshall Phelps Former Corporate Vice President for Intellectual Property, Microsoft Corp. Herbert C Wamsley Executive Director, Intellectual Property Owners Association Rob Willows Vice President, Thomson Scientific Industrial Property Markets Division Editor Joff Wild jwild@iam-magazine.com Finance editor Nigel Page npage@iam-magazine.com Contributing editors Richard Marsland rmarsland@iam-magazine.com Adrian Preston apreston@iam-magazine.com Reporter Sara-Jayne Clover sclover@iam-magazine.com Sub-editors Carolyn Boyle cboyle@iam-magazine.com Jo Moore jmoore@iam-magazine.com Design and production Natalie Clarke Nicky Phillips Subscriptions and marketing manager Alan Mowat amowat@theipmediagroup.com Publications manager Cihan Narin cnarin@theipmediagroup.com Circulation Amanda Green agreen@theipmediagroup.com Evette Scott Associate publishers John Eborall jeborall@theipmediagroup.com Patrick Speedie pspeedie@theipmediagroup.com Group publisher Gavin Stewart gstewart@theipmediagroup.com Publishing director Tony Harriss tharriss@iam-magazine.com Globe White Page Ltd New Hibernia House Winchester Walk London SE1 9AG, UK Tel Fax Email Web +44 20 7234 0606 +44 20 7234 0808 info@iam-magazine.com www.iam-magazine.com
Welcome
Welcome to the fifth edition of Patents in Europe: Helping business compete in the global economy. Produced in partnership with the European Patent Office, Patents in Europe has become an indispensable guide for all those who use or have an interest in the European patent system. Over the past year the movement towards creating a single European patent has once again gained momentum. However, long plagued by bureaucratic hurdles and resistance to the suggested translation agreement under which applications would be filed in either English, French or German, and grants translated into the two languages not used in the original filing this attempt to achieve Europe-wide harmonisation will be no simple task. While enhanced cooperation has now been agreed by 25 of the 27 EU member states, Spain and Italy are challenging the right to proceed towards a unitary patent on this basis. Whether this obstacle can be overcome and a unitary patent will become a reality for Europe remains uncertain. Until that happens, patent applicants must still adopt a country-bycountry approach to protection and prosecution; and this can take time, cost dearly and yield contradictory results. It is with all this in mind that Intellectual Asset Management (IAM) magazine has produced Patents in Europe 2012. This special supplement to the magazine has been designed to provide an overview of the way in which companies can secure effective patent protection in Europe and how they can enforce their rights should the need arise. At the front end of the publication, we have introductory chapters that look in some detail at specific aspects of the European patenting process. These chapters are then followed by a series of in-depth, country-based contributions in which correspondents consider how patents are enforced in their jurisdictions. In this way, the aim is to build a tool that will be of practical use to European patent owners, as well as those from other parts of the world. To ensure the highest quality, we have invited only those firms with acknowledged expertise in European patent law and practice to submit editorial. We are grateful to all contributors for taking the time to do so.
Sara-Jayne Clover Reporter, IAM magazine
Patents in Europe 2011/2012 is a free supplement to IAM magazine. Contact Alan Mowat at amowat@theipmediagroup.com to subscribe to IAM magazine.
ISSN 1741-1424 Printing and origination by Buxton Press Ltd, Derbyshire, UK Globe White Page Ltd Copyright applies. No photocopying. For licensed photocopying please call +44 20 7234 0606 This publication does not purport to provide investment advice. The publishers do not bear the responsibility for any errors or omissions contained in the magazine. Cover image: istockphoto.com/Nikada
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The EPO as a driving force behind positive developments in the patent system
The European Patent Office plays a key role in reforms of the European patent system and is a central pillar of both European and global innovation
By Benot Battistelli, European Patent Office On signing the European Patent Convention (EPC) at the Munich Diplomatic Conference over 30 years ago, the signatory states laid the foundations for the worlds most successful regional patent system. After years of political standstill, development of the European patent system has gained new momentum. The EU member states recent decision to use enhanced cooperation to introduce unitary patent protection in Europe has now brought that system a crucial step closer to completion. The move has also boosted efforts at international level to harmonise the patent systems of the largest economic regions. Other major systems, such as that of the United States, are also undergoing a process of reform and closer alignment of the various systems now seems a feasible possibility. The European Patent Office (EPO) plays a key role in all of these processes. Although the EPO is not an EU institution and has no place at the negotiating table, the EU member states want it to be responsible for granting and administering the unitary patent. European businesses especially profit from this new approach and can expect considerable reductions in costs and red tape from a unitary patent. From regional office to global player The facts speak volumes: from a core of seven founding states in 1977, the European
Patent Organisation has grown to comprise 38 contracting states and three associate states. Together, they cover a territory with a population of almost 600million, which outnumbers that of the United States, Japan and Korea combined. At the same time, the EPO, with a staff of almost 7,000 located in Munich, The Hague, Berlin, Vienna and Brussels, has grown to become the secondlargest European institution. This growth reflects the success and economic importance of the European patent: the record number of 235,000 European patent applications filed in 2010 was almost eight times higher than the originally predicted maximum of 30,000, and the figure is still growing. Applicants from European countries file roughly 40% of patent applications. The EPO has witnessed considerable growth in filings by Chinese, Korean and Japanese firms over the past two years. These firms file many of their applications as Euro-Patent Cooperation Treaty (PCT) filings, thereby capitalising on the EPOs central role as a PCT authority. It acts as an international searching authority in more than 40% of all international procedures, making it a nerve centre of the global patent system. Similarly, many European companies use the international procedure before the EPO to file their applications for patent protection in other continents, mainly America and Asia. The EPO is thus a central pillar of not only European, but also global innovation. The European economy benefits enormously from this, as it means that European patents and patent applications play a key role in both innovation transfer within Europe and the export of European innovation to other regions. Patent quality, efficiency, transparency The success of the European patent boils
Patents are instruments of economic competition: any improvement of the patent system must be designed to optimise its economic benefit to businesses
down, in essence, to three things. First of all, the EPO grants procedures, which rigorously aim for high patent quality and provide legal certainty for innovation on the technology market. The EPOs quality policy manifests itself in a restrictive patenting practice and a strong presumption of validity for European patents. The outstanding quality of European patents has been repeatedly acknowledged by independent experts. The EPOs eminent status among the PCT authorities, despite growing competition from other offices, is a clear sign of the confidence that globally operating companies have in its competence, the quality it isues and the pace at which it delivers its search report. Second, due to the efficiency and transparency of the European procedure, information on the patentability of an invention is available from an early stage: the applicant and the general public can find out whether an invention is likely to be patented as early as six months after filing. Few other offices with an international remit can provide information so quickly and reliably at such an early procedural stage. Finally, the harmonising nature of the European patent system proves useful in integrating new member states into the European innovation process and is conducive to the prompt dissemination of new technologies. That is why associate status is so attractive to neighbouring countries as is shown by the validation agreement with Morocco, and why more and more aspiring regions, such as the Association of Southeast Asian Nations, see the European patent system as a suitable model for developing their own IP systems. Priorities Given this success, the EPO must now set clear priorities with a view to enhancing
6 Patents in Europe 2011/2012
further the stimulus that European patents provide for the competitiveness of European industry. Patents are instruments of economic competition: any improvement of the patent system must be designed to optimise its economic benefit to businesses. Broadly speaking, the priorities for the European patent system must be set in three areas. First, it is necessary to enhance the patenting procedure through reforms designed to ensure that it continues to provide European industry with a highquality service at the lowest possible cost. This requires optimisation of the EPOs procedural operations, including the technical tools deployed. In addition, the plans to introduce a unitary patent will mean that the EPO has a new task to perform. Harmonisation of the post-grant phase and patent litigation in Europe is a much longed-for step and should entail a significant reduction in costs and red tape, above all for small and medium-sized enterprises. Finally, global innovation calls for harmonisation of the various patent systems as an effective support for the global economy. Although it is politically more difficult to take this step (given the various states sovereign rights), technical cooperation projects already allow for extensive procedural alignment and so help to avoid unnecessary duplication of work. The appropriate platform for this is the IP5 cooperation between the EPO and the patent offices of the United States, Japan, China and Korea, which together handle 80% of the worlds patent applications. Thanks to its widely recognised expertise in the area of international cooperation projects, the EPO plays a leading role in this process. Enhancing European procedure The EPO recently began to take the first
Benot Battistelli President, European Patent Office Benot Battistelli took up his duties as president of the European Patent Office (EPO) on 1st July 2010 following his election in March of that year. Prior to joining the EPO, he was director general of the French National Institute for Industrial Property, a post to which he was appointed in May 2004. Mr Battistelli also served as chairman of the Supervisory Board of the European Patent Academy from July 2005 to July 2008, and was elected chairman of the Administrative Council of the European Patent Organisation in March 2009, after serving as vice chairman of the council from December 2006 onwards.
steps towards significant procedural reform by implementing the Raising the Bar Initiative. No fewer than 15 EPC rules had to be amended, which required that the EPO engage in close consultation with its users. The reforms made clear, once again, that the stability and predictability of the European patent system are extremely important factors underlying its benefit to the economy. Consultation with user groups is therefore a fundamental element of this stability and the process must be improved and consolidated. I consider it one of my chief responsibilities to engage regularly in open and constructive talks with user groups. This also helps the EPO to strike a better balance between conflicting interests. It will not always be possible to do equal justice to all interests, but consultation is an important step towards developing the legal framework and EPO practice in accordance with users needs. That is why the EPO plans, as its next reform, to take measures that will encourage third parties to exercise their right, under Article 115 of the EPC, to present observations during proceedings. This is based on the fact that virtually all applicants will inevitably also find themselves in the position of a third party directly affected by the grant of a patent. The idea behind the measures is to enhance the European patent systems positive impact on innovation by making improvements to quality on the basis of such observations. Increasing operational efficiency Another important area on which the EPO must concentrate is the operational and cost efficiency of the European patent system. The EPO has always sought to set the pace in the development of electronic tools which make it possible to offer applicants fast, high-quality search and examination procedures at a reasonable cost. The success of its EPOQUE suite of search applications proves that this was the right strategy: more than 40patent offices, including the Chinese State Intellectual Property Office, now use it as their standard patent-search tool. The EPOs considerable ongoing investment in the development and optimisation of EPOQUE has produced a benchmark tool which unquestionably sets global standards. It is important that the EPO continues this strategy because, in the face of a worldwide increase in filings, it is predominantly through electronic tools that significant efficiency gains will be realised. A recent analysis of the EPOs IT infrastructure clearly showed that the EPO
must make improvements if it is to remain at the vanguard and achieve the desired efficiency gains. The EPOs policy here is to develop the best possible IT tools and share them with other patent offices first of all within but also outside Europe so as to improve the efficiency of the system as a whole, including that of the EPO procedures, at the lowest possible cost for users. The infrastructure reforms will, of course, be accompanied by procedural improvements and the EPO is currently working on these too. In the years to come, the EPOs financial policy will likewise be geared towards strengthening its operational capacity in its core business. Its chief aim is to ensure that innovative businesses are not burdened with unnecessary costs, while at the same time safeguarding its own financial independence. Unitary patent protection An efficient ITstructure and the resulting enhancement of the EPOs operational potential will bear fruit when it comes to granting and administering the planned European patent. The decision of 25 EUmember states to introduce this patent after years of stalemate amounts to a political breakthrough. The European Councils adoption of the European Commissions draft regulations sees one of the longest-ever European integration projects enter the home straight. It is an important step in finally ensuring that innovative European businesses can compete with their Asian and US rivals under the same IP conditions. Under the draft regulations, the EPO is to be responsible not only for granting the unitary patent, but also for its central administration. The fact that EUmember states have entrusted the EPO with these tasks is a major vote of confidence in its competence and the quality of its work. Its activity to date has been a crucial factor in developing an eminent technology portfolio in Europe. The unitary effect of the new patent will serve to promote innovation further. The unitary patent will also give businesses more options in devising an appropriate IP strategy, as it will co-exist alongside national patents and the traditional European patent. The EU unitary patent will succeed only if it offers businesses the relief they seek from current administrative and financial burdens. The EUmember states must therefore be congratulated on having chosen to maintain the EPOs tried and tested language regime and, in the interests of
economy, to dispense with any need to translate the granted patent into all the official EU languages. The absence of such translation requirements and the central administration of the patents will save applicants around 70% of the cost of a comparable European patent valid in 25states. Nevertheless, the EPO takes misgivings as to potential language barriers seriously, and has therefore concluded a non-exclusive agreement with Google on a machine translation service for patents. The new tool should enable users searching for information in the EPOs public databases to quickly obtain a fit-for-purpose translation of published patents into the language of any EPO member state. To that end, the EPO is making the existing collections of professional translations of European patents into the various official languages of its member states available to Google for upload, so as to ensure that the machine translations are of good quality. The agreement also covers Chinese, Japanese, Korean and Russian patents. This global information tool will undoubtedly increase the benefit the economy derives from the patent system. The service should be fully operational in all the languages mentioned by 2014. The second element of the unitary patent system is a specialist unified European patent court. The establishment of this court is another important step in increasing legal certainty and lowering the costs associated with European patents. After the European Court of Justice rejected the European Commissions first specific proposal on such a court, the commission has developed a revised version of the proposal for consideration by the European Council. International harmonisation The positive developments in Europe have given fresh impetus to efforts to harmonise the patent systems of the largest economic regions. The EPOs international outlook has long made it a global player in the patent field, but its central role in the planned unitary patent scheme will also strengthen its position in relations with the other major regions. The first meeting of the heads of the IP5 in 2006 laid the foundations for close cooperation between these institutions. The aim of this cooperation is to reduce unnecessary duplication of work in the global patent system, while guaranteeing the quality and sustainability of patents as key instruments
of the global economy. This shared vision has given rise to 10 technical foundation projects aimed at harmonising procedures for processing patent applications at the five major offices. This is needed in view of the growing interdependence of technology markets and the ever-greater influence that this has on businesses global IP strategies, leading them to file parallel patent applications for the same invention in various countries. The priorities here are procedural economy and quality assurance. Given the rapidly growing demand for patents, immediate action is required to ensure that the patent system continues to play an important part in disseminating new technologies. Businesses must find comparable conditions in all markets if their innovation strategies are to succeed. In this respect, the EPO can draw on its considerable technical expertise and its experience as a forerunner in cooperation while, at the same time, safeguarding European interests. The first important step was an agreement with the US Patent and Trademark Office on establishing a Cooperative Patent Classification, building on the EPOs own European Patent Classification system. This will serve as a basis for harmonising the IP5 offices working methods. The agreement is a promising start to creating a joint classification system, especially now that Japan is also considering adopting the Cooperative Patent Classification. The IP5 cooperation is a long-term project designed to establish the legal and technical infrastructure needed for a sustainable global patent system. Close cooperation, based on trust, with the IP5 partner offices and the World Intellectual Property Organisation is crucial to achieving this aim. That is why the further development of the PCT, which is the preferred international filing route for innovative businesses, can be considered pioneering. In this connection too, the EPO sees itself as the advocate of Europes interests. The recent developments in the European and international IP systems have clearly added to the EPOs profile as a global player in the patent field. The EPO will make every effort to play its part in the development of a sustainable and efficient patent system which responds to the needs of the economy both in Europe and beyond. In that regard, its true potential and capacity as a facilitator for innovation have yet to be seen.
2010: the EPOs year in statistics
A busy year at the EPO saw a record number of applications, with filings from China soaring. And once again, the office was recognised for the quality of the patents it grants
By Joff Wild It was a record year for patent applications in 2010 at the European Patent Office (EPO). After a decline in 2009, the numbers bounced back to record an 11% rise at just over 235,000 the most filings recorded in a single year during the EPOs 34-year history. The country from which most applications came was the United States (with 60,588), followed by Japan (41,917) and Germany (33,139). While these countries usually make up the top three, fourth place this time round was taken by a relative newcomer. With 12,968 applications, the Peoples Republic of China just pipped Korea, at 12,342. The rise in the number of Chinese patent filings is truly extraordinary, having grown 96% since 2008. During 2010 the EPO issued 135,000 final decisions on grant proceedings, not including oppositions and appeals. Of the total, 58,000 or 43% were grants. Top for quality The EPO has long been recognised for the quality of the patents that it grants and this reputation was confirmed again in early 2011 with the publication of the second IAM/Thomson Reuters IP benchmarking survey. Among other things, this annual exercise asks both senior in-house practitioners and those in private practice to
rate the quality of the patents issued by the worlds granting authorities. This year, over 650 individuals responded. According to the survey, 74% of in-house counsels thought that the quality of patents granted by the EPO is excellent or very good (up from 71% last year), with 62% of private practice attorneys sharing this view (up from 56% last year). The Japan Patent Office (JPO) came in second, with 57% and 43% respectively, followed by the US Patent and Trademark Office (USPTO) (50% and 37%), the Korean Intellectual Property Office (KIPO) (34% and 24%) and the State Intellectual Property Office of the Peoples Republic of China (SIPO) (23% and 13%). The survey also found that the quality of patents granted by the EPO is seen to have improved from previous years: 22% of in-house attorneys and 26% of their counterparts in private practice agreed with this view, while roughly two-thirds of the respondents thought that it had stayed the same. Just 7% and 9%, respectively, answered that the quality had deteriorated. These are impressive findings, but the EPO recognises that it must not be complacent. Reacting to the survey, EPO President Benot Battistelli said: Quality has always driven the EPOs policy, as only high-quality patents provide the legal certainty that makes them such a valuable tool for companies, individual inventors and third parties alike. The EPO continues to invest heavily in boosting quality, especially by streamlining procedures and improving IT systems. And this study shows that our efforts at establishing a quality-based patent system are paying off. The figures overleaf illustrate the statistics discussed here.
Total European patent filings Direct European filings under the EPC and international filings under the PCT
235 000 210 800 222 600 226 000 211 300
Five-year development After steady growth until 2007, the number of patent filings (direct European under the European Patent Convention (EPC) and international under the Patent Cooperation Treaty (PCT)) grew at a much lower rate in 2008 and decreased markedly in 2009 at the time of the recession. In 2010, they grew substantially by 11% to exceed the precrisis level, partly as a result of the economic recovery and partly as a side-effect of the EPOs introduction of new regulations which led applicants to file certain applications before the end of 2010.
2006
Source: European Patent Office
2007
2008
2009
2010
Granted patents
121 200 112 800 112 800 18% 108 800 108 800 21% 121 200 23% 124 600 124 600 24%
136 700 136 700 22%
Outcome of grant proceedings From 2007 to 2010 there was a steady increase in the number of final decisions on grant proceedings, patents granted, applications refused by the EPO and applications withdrawn by the applicant, especially in 2010 when there was a 10% increase over 2009. Since 2008, a patent has been granted in under 50% of all cases. Please note that oppositions and appeals are not included in these figures.
26% 29%
35% 28% 34%
56%
50%
49%
42%
43%
Abandoned after search Stopped during examination
2006
2007
2008
2009
2010
Granted
Private practice. Patent quality

The EPO has the highest perceived level of patent quality over the past year. China has the lowest quality level but has the highest number of respondents who have seen an improvement in the quality of patents over the past year Percent rating patent quality is excellent/very good EPO JPO USPTO KIPO SIPO Perceived change from prior years
62% 43% 37% 24% 13%

Improved
EPO JPO USPTO KIPO SIPO
26% 20% 31% 33% 65%
65% 78% 52% 64% 29%
9% 2% 17% 3% 6%
Stayed the same
No improvement/worse
Source: Intellectual Asset Management magazine, Issue 48
Top 25 applicants (based on European patent applications filed before the EPO) 1. Siemens 2. Philips 3. BASF 4. Samsung 5. Qualcomm 6. Panasonic 7. Robert Bosch 8. Sony 9. LG 10. Bayer 11. Mitsubishi 12. Ericsson 13. General Electric 14. Research in Motion 15. Hoffman - La Roche 16. Alcatel 17. Hitachi 18. Huawei 19. 3M 20. Johnson & Johnson 21. EADS 22. Canon 23. Toyota 24. Fujitsu 25. Honeywell
2135 1765 1707 1691 1682 1400 1400 1286 1263 1123 1096 1095 1084 907 811 773 741 730 710 709 688 653 651 642 642
In-house counsel. Patent quality

The EPO has the highest perceived level of patent quality over the past year. China has the lowest quality level, but has the highest number of respondents who have seen an improvement in the quality of patents over the past year
Percent rating patent quality is excellent/very good
EPO JPO USPTO KIPO SIPO 74% 57% 50% 34% 23%
Perceived change from prior years

EPO JPO USPTO KIPO SIPO 22% 19% 30% 27% 63% 70% 75% 51% 67% 31% 7% 6% 19% 6% 6% Improved Stayed the same No improvement /worse
Source: Intellectual Asset Management magazine, Issue 48
Protecting software and business methods via the EPO

The European Patent Office has, over the years, granted protection to hundreds, even thousands, of inventions involving a business method or computer program
By Dulce M Miranda, Garrigues Abogados y Asesores Tributarios, SLP, Madrid Many patent applications filed at the European Patent Office (EPO) refer, in one way or another, to computer-implemented inventions covering markets as diverse as mobile telephones, the automotive industry, digital photography and television. They are products or procedures that are present in our daily lives and which can function only with software. This market is worth hundreds of millions of euros, and it is thus important to protect the results of its research and development and legal security adequately and correctly. Although in some jurisdictions, such as the United States, there are no legal obstacles to the patentability of computer programs, this is not the case for European patents. Article 52(1) of the European Patent Convention (EPC) states that: European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. This article of the EPC does not define what can be considered an invention but rather , expresses the fundamental maxim of the general entitlement to patent protection for any inventions in all technical fields. The second paragraph of Article 52 of the EPC is a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Article 52(1). Specifically, Article 52(2) excludes
patentability for, among other things, schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers to the extent to which the , European patent application relates to such subject matter as such (Article 52(3)). This final clarification basically means that these exclusions should be narrowly interpreted. It is significant that computer programs were not included in the list of subject matter that is not considered to constitute an invention under Article 52 in the first drafts of the European Patent Convention. This shows that right from the start, this issue has been the subject of much discussion. To date, all efforts made to extend patentability to computer programs have failed. In 2002 the European Commission put forward a proposal for a directive to regulate the patentability of computer-implemented inventions, but this initiative failed in July 2005, when the European Parliament rejected the proposed common position and declared the legislative procedure closed. The above notwithstanding, the fact is that over the years, the EPO has granted protection to hundreds, even thousands, of inventions which involve a business method or a computer program. This article examines some of the most relevant decisions of the EPO in this field and some of the issues related to such patents that have been the subject of debate. One of the most relevant aspects of this approach to the question is to clarify the criteria that the EPO has applied to decide on the patentability of computer programs. At the beginning, the decisions of the examiners and the EPO Board of Appeal on this subject followed an approach based on the contribution to the art of the subject matter claimed, whereby it was considered
that a computer program did not fall under the exclusions of Article 52(2) if it made a technical contribution to what had existed until then in the state of the art. This was the criteria applied in the Vicom case (T208/84, 15th July 1986), which dealt with a method for digitally processing images in the form of a two-dimensional array. In this decision the Board of Appeal made a first distinction between a computer program as such and an invention that makes a technical contribution and is therefore patentable, stating that an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art (emphasis added). Also remarkable in this sense is the decision in the Sohei case (T 762/92, 31st May 1994), which dealt with a patent for a computer system and method for several types of independent management, including at least financial and inventory management. In this case the Board of Appeal granted the patent based on the argument that if a contribution to that art can be found either in a technical problem (to be) solved, or in a technical effect achieved by the solution, said mix may be not excluded form patentability . However, this interpretation of the issue was soon abandoned. At is generally known, in order for an invention to be patentable, it must fulfil the requirements of novelty and inventive step: the practical consequence of applying the contribution approach was that examiners had to examine both novelty and inventive step not only as regards fulfilment of the requirements of an invention in order to be protected by a patent, but also as regards Articles 52(2) and (3) of the EPC (ie, to determine whether the subject matter claimed could be considered an invention). Therefore, that approach was soon superseded by the so-called technical character test In this regard, the decision . handed down in the IBM case (T 1173/97, 1st July 1998) should be highlighted. In this case the Board of Appeal considered inappropriate any comparison with the prior art in order to determine the presence of an invention, and stated that determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive
step than for deciding on possible exclusion under Article 52(2) and (3) . As mentioned, in the IBM case, instead of the contribution approach, the Board of Appeal applied the technical character test when issuing a decision on an appeal lodged against a decision of the examining division that refused an application on the grounds that the subject matter of some of its claims was a computer program, stating that a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the program (software) and the computer (hardware) on which it is run (emphasis added). In its decision the board clarified that physical modifications of the hardware (eg, causing electrical currents) cannot constitute such technical character per se, as they are a common feature of all computer programs. The IBM decision concludes that a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect . A similar viewpoint can be applied to business methods, since pure business methods as such are not patentable under Article 52(2). In Decision T 931/95, regarding a method of controlling a pension benefits programme, the Board of Appeal stated that the question to be answered is whether the method represents a method of doing business as such because if the , method is technical or has a technical character, it may still be a method for doing business, but not a method for doing business as such In the case in question, . the board considered that all features of the claim were steps for processing and producing information having purely administrative, actuarial and/or financial character, which are typical steps of business and economic methods, and that therefore the method claimed was excluded from patentability since it did not have technical character. Decision T 258/03 regarding an automatic auction method executed in a server computer applied the same criteria. Thus, while the examining division concluded that an auction method was a business method and therefore was not patentable, the board declared that the use of technical means to carry out a method
for performing mental acts, whether totally or partially without human intervention, may give that method a technical character. Therefore, an invention that consists of a mixture of technical and non-technical features may be regarded as an invention. Following the analysis of the criteria that continue to be applied to define a computer program as an invention, the next key issue to consider is the difference between a computer program and a method implemented in a computer. This difference was defined by Decision T 424/03. This case involved a patent application filed by Microsoft that disclosed a method in a computer system having a clipboard for performing data transfer of data in a clipboard system. The Board of Appeal established that: a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on a computer. Thus, the Board holds that the claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program. One of the claims of the patent in question referred to a computer-readable medium having executable instructions adapted to cause the computer system to perform such method. As regards this claim, the board decided that a computer-readable medium (ie, a technical product involving a carrier) has technical character: Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of
enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data protection The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter. It appears that there was a contradiction between the decisions in the IBM and Microsoft cases, as in IBM the decision emphasised the function of the computer program, rather than the manner in which it is claimed, while in Microsoft the board emphasised the manner in which the computer program is claimed. This apparent contradiction was one of the questions referred by former EPO President Alison Brimelow to the EPO Enlarged Board of Appeal in October 2008 she asked whether a computer program can be excluded as a computer program as such only if it is explicitly claimed as a computer program. The Enlarged Board of Appeal handed down its opinion on May 12 2010, stating that a computer-readable medium is not excluded from patentability under Article 52(2) as it always has the technical effect of being capable of storing data, although such computer-readable medium could fail to be patentable due to lack of inventive step (it naturally would not be patentable if it was not new or did not involve an inventive step). Thus, the Enlarged Board of Appeal concluded that there was no contradiction between the decisions, since in Decision T 424/03 the same criteria were applied: the technical effect of the subject matter claimed. The conclusion reached in light of the above discussion is that according to the case law of the EPO Board of Appeal, by having technical character any product or method, even if formally relating to the list set out in paragraph 2, is an invention and therefore potentially patentable.
Dulce M Miranda has been a partner in the IP department of Garrigues Abogados y Asesores Tributarios, SLP since 2005. Her work focuses on patents, and in this field she handles licensing work across a wide spectrum of industries, with a particular emphasis on biotech. She has extensive litigation experience in patent infringement/validity cases. She is an arbitrator of the Arbitration and Mediation Centre of the World Intellectual Property Organisation and has been recognised as a leading lawyer in the area of patents by international directories such as Chambers and Partners, Best Lawyers and Legal 500. She is a member of the Madrid Bar Association, the American Intellectual Property Law Association and the International Association for the Protection of Intellectual Property.
Dulce M Miranda Partner dulce.miranda@garrigues.com +34 91 514 52 00 Garrigues Abogados y Asesores Tributarios, SLP Spain www.garrigues.com
Patenting biotechnology inventions via the EPO

By patenting a biotechnological invention via the European Patent Office, a patent owner can ensure the protection of its patent across Europe
By Ralph Minderop, Arwed Burrichter, Meikel Diepholz and Natalie Kirchhofer, COHAUSZ & FLORACK, Dusseldorf As one of the key enabling technologies of the 21st century, modern biotechnology has become a major source of innovation and a global driver of economic growth in various industries, including healthcare, diagnostics and agro-food. With annual net sales exceeding US$90 billion and double-digit growth rates in the last five years, biopharmaceuticals and diagnostics are of paramount importance to the pharmaceutical industry today. The biotech industry largely depends on a strong patent system. In its 2010 EU Industrial Research & Development (R&D) Investment Scoreboard, the European Commission identified the biotechnology industry to have the highest R&D intensity (21.2%) of all industries. In comparison, according to the report the automotive and parts industry had an R&D intensity of 2% to 5%. In addition to skyrocketing R&D costs, the biotechnological sector is confronted with high regulatory burdens which must be counterbalanced and renumerated by patent-enforced market exclusivity. Finally, solid IP protection is the cornerstone for the business model of many small biotech start-up companies, which often build on a single invention as their major intangible asset. Therefore, from an economic perspective, strong and harmonised IP protection for
biotechnological inventions in Europe is indispensible. In 1998 the European Parliament passed Directive 98/44/EC, which provides the legal framework for the protection of biotechnological inventions in the European Union. The directive was subsequently implemented into both national laws and the European Patent Convention (EPC), and is therefore binding for patent prosecutions concerning biotechnological inventions before the European Patent Office (EPO). Under the EPC, biological material isolated from its natural environment or otherwise technically produced is considered patentable. This includes inanimate biologically active material such as proteins (eg, antibodies or enzymes), genes and DNA and RNA sequences. On the other hand, animate matter (eg, microorganisms, genetically modified animals) are considered patentable under the EPC. The EPC contains several exceptions to patentability which pertain to biotechnological inventions in the wider sense. In contrast to the United States, where, according to the Supreme Courts decision in Diamond v Chakrabarty (447 US 303 (1980)), anything under the sun made by man is considered patentable, the following biotechnological inventions are generally excluded from patentability in Europe, mostly in view of moral or ethical considerations: Inventions contrary to public order public or morality (Article 53a of the EPC), in particular those listed in Rule 28 of the EPC: Processes for cloning human beings. Processes for modifying the germline genetic identity of human beings.
Uses of human embryos for industrial or commercial purposes. Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal. Plant or animal varieties (Article 53b). Essentially biological processes for the production of plants or animals (Article 53b). Methods for treatment of the human or animal body by surgery or therapy (Article 53c). Diagnostic methods practised on the human or animal body (Article 53c).
Monsanto (C-428/08) the European Court of Justice held that in order to be protected, a gene must be fulfilling its function at the time of the alleged infringing act. The decision may change how such patent claims will be construed in the future when it comes to assessing their protective scope in litigation; patent practitioners may try to draft basic chemical-type claims on industrially produced inactive DNA, which would not be encompassed by the definition of genetic/biologically active material stipulated in the directive. However, many patent practitioners view Monsanto as a setback to the enforceability of patents directed to DNA sequences. Peptides and proteins (enzymes and antibodies) In claims, proteins and peptides are often characterised by structural features, their physiological activity and/or particular functional facts. In the prosecution of such applications before the EPO, the allowable breadth of the claims greatly depends on the detail of the disclosure of the claimed protein or peptide in the description of the application. Proteins may be structurally defined by their full amino acid sequence or just by the sequence of that part of the protein that is necessary for its function. Regarding claims directed to antibodies, the minimum structural information necessary would be the heavy and light chain variable region sequences of the antibody, or at least the sequences of the complementarity determining regions of the heavy and light chain. The EPO is rather reluctant to grant patents directed to antibodies which, for example, are defined by the heavy chain variable region sequence or by single chain variable fragments only. If sufficient sequence determinants are included in the claim, the EPO will often grant protection of the antibody as such. However, patent protection is thereby limited to antibodies containing exactly these structural features. An even narrower scope of protection applies to an antibody defined by reference to the deposition of a cell line producing the new and inventive monoclonal antibody with a recognised depositary institution (Rule 31(1)(a)). Such definition is generally accepted by the EPO, but provides protection only for the specific antibody produced by the deposited cell line. To obtain a broader scope of protection, the applicant may try to claim antibodies or proteins with a minimum identity to specific sequences of the antibody or protein. For this, the applicant may disclose
Despite these limitations, the protection afforded by the EPC is generally viewed as strong and adequate. DNA and gene patents There is no a priori bar to the patentability of genes or DNA sequences under the EPC. In fact, Rule 29(2) positively acknowledges that human gene sequences are patentable. However, as for all patent applications before the EPO, biotechnological inventions must meet the basic criteria of patentability (ie, novelty (Article 54), inventive step (Article 56) and industrial applicability (Article 57)). Moreover, the invention must be sufficiently disclosed in the specification and claimed in a clear manner (Articles 83 and 84). To date, the majority of genes claimed in patent applications are derived from nature. Similar to new chemical compounds, genes as well as proteins are considered novel if they are isolated or produced for the first time, even if they are already present in nature (Rule 27(a)). In the post-genomics era, where the sequence of the human genome has been unravelled and most human genes have been cloned, patentable inventions can be expected to shift from original gene sequences as such to genetically modified sequences, special splice variants with surprising technical effects or purposeful selections of subsequences. For human gene sequences, Rule 29(3) requires the applicant to disclose the industrial application (ie, function) in the patent application. Mere DNA sequences without indication of a function or practical use are considered to contain no technical teaching and are therefore not patentable under the EPC. The particular function of the DNA sequence may also have an effect on the scope of the claims in patent litigation. In
in the application several sequences with modifications in one or more amino acids, all providing the same desired technical effect. The question is whether under such conditions the claims must be directed to the specific embodiments disclosed, or whether the scope of the claims can be broadened by defining a minimum identity to one of the disclosed sequences or allows protection for the disclosed embodiments only. A generalisation beyond the exact sequence of a monoclonal antibody or peptide (eg, by using the phrase at least 90% identity with...) is possible for a claim which also includes a functional feature of the antibody or the peptide which cannot be derived from the state of the art. Thus, applicants would be well advised to include such functional features in the application in addition to the sequence data, since this may enable them to seek claims with a generalisation of the subject matter beyond the exact antibody sequence disclosed in the application. In summary, generalisations in claims directed to antibodies are allowable only if the solution of the problem underlying the invention was made credible over the full range of claimed antibodies or proteins. Microorganisms The majority of patents in the field of microbiology are directed to either a microorganism itself or a method employing a microorganism for the generation of a specific product. In contrast to the scientific definition of microorganism in patent law the term , also includes animal and plant cells as well as viruses and prions. The patenting of microorganisms generally requires deposition of the microorganism at an international depository authority (IDA). This is necessary since it is not usually possible to define a newly generated microorganism by a written description in enough detail to enable third parties to carry out the invention as required by Article 83. The Budapest Treaty ensures that deposition at one IDA is sufficient for all member states and organisations. However, this would mean that the deposited microorganism would become available to any third party upon publication of the patent application. In order to protect the rights of the applicant, the EPC has adopted the socalled expert solution where the deposited , sample may be made available only to an expert nominated by the applicant. Under the EPC, these samples then become freely
available only at the time of publication of the grant of the European patent or, where no patent is granted, 20 years from the date of filing. Stem cells Stem cells are particularly promising for the development of novel therapies. There are two types of stem cell: embryonic and adult. In principle, like all parts of the human body, cells are patentable only in an isolated form and in case the provision of the cell goes beyond a mere discovery. While products or methods related to adult human stem cells were always principally regarded as patentable, the patenting of products or methods related to human embryonic stem cells was a highly debated topic which was recently clarified by a decision of the Enlarged Board of Appeal. In Case G2/06 the board had to decide on a patent application by the Wisconsin Alumni Research Foundation on a method for obtaining embryonic stem cell lines which, at the filing date, could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which they were derived. Although the patent application did not include the step of isolating cells from a blastocyst, which inevitable leads to the destruction of the blastocyst, the board regarded this method as a case of uses of human embryos for industrial or commercial purposes which is excluded , specifically by Rule 28(c). Thus, products and methods related to embryonic stem cells are excluded from patentability. Methods and products related to the use of adult human stem cells do not fall under this prohibition and are thus patentable under the EPC. Transgenic plants and animals According to Article 53(b), animal and plant varieties or essentially biological processes for the production of plants or animals are excluded from patent protection for lack of technical character. A process for the production of plants or animals is considered essentially biological if it consists entirely of natural phenomena such as crossing or selection (Rule 26(5)). On the other hand microbiological processes per se are not excluded from patentability under Article 53(b). The definition of essentially biological processes according to the EPC was recently clarified when the Enlarged Board of Appeal ruled on two referrals relating to processes for the production of tomatoes (G2/07) and broccoli (G1/08). Decision
G1/08 dealt with a patent application claiming a process for crossing and selecting broccoli hybrids which allegedly prevented cancer. In the claimed method molecular markers were used for the selection of specific hybrids for further breeding. The board decided that the mere fact of using technical means such as molecular markers in a breeding process was insufficient to confer technical character onto the process as a whole. However, the board concluded that a method for breeding plants which comprises a technical step that by itself adds a trait to a plant or an animal (eg, a step involving genetic engineering) is still to be considered patentable under the EPC. The same applies to transgenic plants and animals which are the products of genetic engineering. In Decision G1/98 the Enlarged Board of Appeal held that patent protection of transgenic plants is allowable as long as the transgenic plant is not considered a plant variety. This ruling was later confirmed for the patenting of transgenic animals (T315/03), although there is no sui generis protection system for animal varieties. Finally, moral issues present an additional bar to the patenting of transgenic animals. Rule 28(c) excludes from patent protection processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal and animals resulting from such processes. To address this exception, the EPO has developed a utilitarian balancing test which aims to assess the potential benefits of a claimed invention against its negative aspects. In T315/03 the Technical Board of Appeals had to decide on the patentability of the OncoMouse, developed by Harvard researchers in the early 1980s for cancer research. The board held that the benefits outweighed the suffering of the animal and granted a patent. Diagnostics and therapy In contrast to US patent law, methods for treatment of humans or animals by surgery or therapy and diagnostic methods are excluded from patentability under Article 53(c). Under the EPC, only diagnostic methods
performed on the human or animal body in vivo are excluded from patentability. Substances or devices for use in such methods, as well as all ex vivo or in vitro diagnostic methods, are patentable. Article 53(c) does not exclude products (in particular, biotechnological subject matter), pharmaceutical compounds and compositions for use in methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. According to Article 54(4), known substances already comprised in the state of the art can still be patented if the invention constitutes the first use of such substances as a medicament. In addition, second (and further) medical use claims are allowable under Article 54(5) if the substance has already been used as a medicament, but only in a different medical indication. Instead of the Swiss-type claim, which was commonly used in the past, according to a recent Enlarged Board of Appeal decision (G2/08), claims directed to a second (or further) medical application should read Sequence/Biopharmaceutical X for use in treating disease Y In the same decision the . board ruled that claims directed to a known medicament for use in a known treatment of a disease are protectable by a second medical use claim, even if the only distinguishing feature with respect to the prior art is the provision of an inventive novel dosis regimen. Outlook Patenting of biotechnological inventions has come a long way since its advent in the early 1970s. With the expiry of the first patents on recombinant drugs (eg, insulin), generic products are surging onto the market. Biopharmaceutical innovator companies must weather this storm through smart patent lifecycle management and cultivation of a broad biotechnological patent portfolio. Recent years have shown that biotechnology offers cures and technologies beyond the reach of conventional small molecules. The patent protection offered for biotech inventions in Europe allows these innovations to translate into economic success stories.
Ralph Minderop is a senior partner with the law firm COHAUSZ & FLORACK. He has wide experience in the prosecution and litigation of cases in chemistry, pharmaceutical chemistry and biochemistry on behalf of German and international clients and gives strategic IP advice. He obtained his PhD in biochemistry.
Ralph Minderop Senior partner rminderop@cohausz-florack.de +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de
Arwed Burrichter is a senior partner with the law firm COHAUSZ & FLORACK. He is a renowned and highly experienced European and German patent attorney. Having obtained a PhD in chemistry from the University of Southern California, Los Angeles, he prosecutes and litigates patents in the fields of chemistry, polymer chemistry, pharmaceutical chemistry and biochemistry and gives advice on strategic IP decisions.
Arwed Burrichter Senior partner aburrichter@cohausz-florack.de +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de
Meikel Diepholz studied biotechnology in Braunschweig and San Diego and received a PhD at the European Molecular Biology Laboratory Heidelberg in the field of cryoelectron microscopy, protein structure and biochemistry. Dr Diepholz has authored and co-authored several high impact scientific publications. He joined COHAUSZ & FLORACK in September 2009 and is currently being trained as a patent attorney.
Meikel Diepholz Technical expert mdiepholz@cohausz-florack.de +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de
Natalie Kirchhofer obtained a graduate degree in biochemistry from the University of Tbingen. As a Fulbright scholar she attended Rockefeller University, New York and subsequently obtained a PhD at the MaxPlanck Institute of Biochemistry in Munich, investigating DNA double-strand break repair mechanisms. Dr Kirchhofer joined COHAUSZ & FLORACK in October 2010 and is currently being trained as a patent attorney.
Natalie Kirchhofer Technical expert nkirchhofer@cohausz-florack.de +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de
EU patents and the Unified Patent Court
Progress towards the establishment of a single EU patent system has gained momentum recently, bringing the creation of a unified patent court closer to realisation
By Rainer K Kuhnen and Michael Zeitler, Kuhnen & Wacker, Freising After almost half a century of striving for unified patent protection throughout the European Union, one of the biggest single markets on the planet, there is still no such system in place. However, after several years of stalemate, the development of a single EU patent system picked up new momentum at the end of 2009 and progress seems to have accelerated since the beginning of this year. In March 2011, 25 out of 27 EU member states finally agreed to an enhanced cooperation in order to resolve the language regime and move towards the creation of a unified patent protection system. On 27th June 2011 EU Commissioner Michel Barnier said, We are now entering the home straight. Working closely with the European Parliament, the final objective the creation of unitary patent protection is within reach. If we maintain our present momentum and cooperative spirit, a unitary patent in Europe could be a reality within the next two years. Background Today, inventions can be protected in Europe either by national patents or by socalled European patents However, . contrary to the name, a European patent does not actually provide protection throughout Europe by one unitary patent. European patents are granted by the European Patent Office (EPO) an organ of
the European Patent Organisation established by the European Patent Convention (EPC) of 5th October 1973, which currently has 38 contracting states, including all 27 EU member states plus 11 non-EU states such as Switzerland, Turkey and Norway. However, rather than being one single patent after grant, a European patent is actually a bundle of national patents. The transformation of a European patent into an enforceable national patent requires an individual validation in each contracting state for which protection is sought. This usually requires that the patent specification be translated into the official national language of the contracting state. As a result, administrative costs can reach up to 32,000 when protection is sought in all 27 EU member states, of which approximately 23,000 can result from translation fees alone. In comparison, a US patent costs 1,850 on average. In addition to high post-grant costs, the EPC fails to provide for a centralised court system to adjudicate the validity of European patents, along with any infringement issues that might arise. The bundle of national patents resulting from a European patent must be individually administered and can be enforced only on a strictly national basis, even in cases of EUwide infringement where the claim wording is the same in each contracting state, leading to high litigation costs. Hence, while the current EPC system provides for a fairly reasonable centralised patent granting procedure, it is less than ideal in view of the exorbitantly high postgrant costs and the legal uncertainty with regard to infringement and invalidation. The EU patent reform process This complex and expensive system is the result of years of failed attempts to create a
Figure 1 Overview of the EPC procedure
Filing of European patent application
Formal examination
European search Central prosecution
European publication of the application
Validation required for all EPC member states
Substantive examination of application
Grant
beyond that already prescribed in the EPC for the patent grant. With regard to legal certainty, the proposal suggested setting up a new centralised Community tribunal within the framework of the European Court of Justice (ECJ), which would hear infringement and validity cases. On 3rd March 2003 negotiations on the proposed regulation resulted in a common political approach towards the Community patent by the EU Council. However, the council then failed to reach the requisite unanimous agreement for all aspects of the draft regulation on a number of occasions, in particular with regard to translation arrangements. Negotiations stalled without a final agreement in 2004. A new way forward In March 2007, after various new debates and consultations, the commission set out its vision for reforming the European patent system and proposed a package deal. This included two proposed regulations for a future EU patent and a proposal for a mixed agreement regarding a future litigation system. In addition, the deal would include new regulations for cooperation between national patent offices and the EPO, as well as a revision of the EPC. The entry into force of the Lisbon Treaty on 1st December 2009 introduced a new legal framework for the European Union, which explicitly provides a legal basis for creating an EU patent by two regulations: one for creating a unified EU patent to be decided under the ordinary legislative procedure and another separate regulation regarding the language regime, which would have to be decided under a special legislative procedure requiring a unanimous vote. In July 2010 the commission published a proposal for a council regulation on translation arrangements for the future EU patent. The language issue remained a sticking point and on 10th November 2010 the Competition Council held an extraordinary meeting to discuss the draft regulation on a future EU patent system. However, this attempt to reach unanimity was blocked by Spain, which was keen to prevent any discrimination against the Spanish language that might result by the EPC language regime (ie, English, German and French) being used as the basis for a future EU patent. In view of the fact that the Lisbon Treaty required unanimity on the language issue, the process appeared to have reached yet another dead end. However, after more than a decade of debating, the overwhelming majority of
Opposition
EPCH
EPDE
EPFR
EPGB
EPES
EPIT
Bundle of national patents
Limitation
unified patent protection system for the European Union. In 1962 a first attempt to create a unified Community patent was initiated by means of an intergovernmental agreement, the so-called Community Patent Convention (CPC). However, CPC negotiations finally collapsed in 1989 due to a variety of unresolved issues regarding the language regime, an appropriate jurisdictional arrangement and constitutional problems in some member states. In 2000 the European Commission launched a new attempt to create a single Community patent. In order to avoid the constitutional problems that impeded the implementation of the CPC, this new approach was in the form of a proposal for a council regulation (COM (2000) 412 final) unlike directives, which need to be transposed into national law, regulations become immediately enforceable as law in all EU member states simultaneously. Under the commissions new proposal, Community patents would be issued by the EPO, thereby making use of the EPCs wellestablished granting procedure. Under this plan, both national and European patents would co-exist with the Community patent system, leaving inventors free to choose which type of protection best suited their needs. With regard to affordability, the commission suggested reducing translation costs by not requiring any translation
member states were now keen to solve the language issue with regard to both an EU patent and a unified patent court system. In December 2010, 12 member states proposed using the so-called enhanced cooperation procedure which allows nine or more , member states to move forward on a particular area if no agreement can be reached; other member states can opt to join at any stage before or after an enhanced cooperation has been launched. In the following months this proposal was supported by almost all member states except Spain and Italy a total of 25 out of 27. This left Spain and Italy outside the process and without a vote to block any further progress towards an EU patent that would cover nearly all EU member states. On 15th February 2011 the European Parliament gave its consent to proceed with the enhanced cooperation and on 10th March 2011 the council authorised the launch of the enhanced cooperation. EU patent under enhanced cooperation On 13th April 2011 the commission presented two proposals for regulations implementing the enhanced cooperation: one on the EU patent itself and the other on the applicable translation arrangements. In a general approach, the EU Council agreed to the commissions proposals on 27th June 2011. These two proposals would radically reduce the cost of patents in Europe (by up to 80%) and allow companies and individuals to protect their inventions through a single European patent granted by the EPO, which would then be valid in every EU member state participating in the enhanced cooperation (currently 25 of 27). The key points of the proposed regulations are as follows: The patentee of an EP patent may apply for protection in participating member states at the EPO. Patent applications can be submitted in any language. However, building on its existing working procedures, the EPO will continue to examine and grant applications in the three EPO languages English, French and German. EU applicants which file their patent application in a language other than these three will be compensated for any translation costs they incur. Finally, after the patent is granted, the claims defining the scope of protection must be translated into the other two official languages. For a transitional period of up to 12 years, European patents with unitary effect that are granted in French or
Figure 2 Future EPC procedure including EP patents with unitary effect
Filing of European patent application
Formal examination
European search Central prosecution
European publication of the application Only one translation for 25 EU member states required
Validation still required for non-EU member states and Spain and Italy
Substantive examination of application
Grant
Opposition
EPCH
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European patent with unitary effect
Classic European patents + European patents with unitary effect
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German must be translated into English. Those granted in English must be translated into one other official language until high-quality machine translations become available, in order to ensure the accessibility of patent information. EU patents with unitary effect will be administered by the EPO, including patentees requests for unitary effect, collecting, administering and remitting renewal fees and keeping a register of unitary EU patents, which would include legal information such as licences, transfers, limitations, revocations or lapses.
The European and EU Patents Court These latest attempts to set up a unified patent jurisdiction resulted in a draft agreement on the European and EU Patents Court (EEUPC), a mixed agreement between the European Union and some EPC contracting states that are not EU members. The draft agreement proposes setting up the EEUPC, consisting of a Court of First Instance (with local and central divisions) and a Court of Appeal, with exclusive jurisdiction for both European and EU patents (ie, European patents with unitary effect). The ECJ would be responsible for ensuring the primacy of EU law and its uniform interpretation. In June 2009 the EU Council submitted a request to the ECJ on the compatibility of
If the enhanced cooperation is not rejected by the ECJ, the creation of a unified EU patent by the two proposed regulations seems achievable by 2013
the draft agreement with the EU treaties. The ECJ rendered Legal Opinion 1/09 on 8th March 2011. Although it stated that the current draft for such a mixed agreement is incompatible with European law, this would not exclude appropriate amendments to bring it into line. Moreover, the ECJ confirmed that a court set up by member states through an international agreement could be compatible with the treaties. On 26th May 2011, after analysing the opinion and considering ways to address the ECJs concerns, the commission adopted a non-paper on solutions for a unified patent litigation system and a way forward (www.register.consilium.europa.eu/pdf/en/11/ st10/st10630.en11.pdf). According to the nonpaper, any future patent litigation system should be based on the following pillars: A unified patent court set up only by member states; participation of third states should be excluded. The European Union would not be a party. Exclusive jurisdiction with regard to civil litigation relating to infringement and validity for both classic European patents and EU patents with unitary effect. Limiting the jurisdiction of the specialised patent court to classic European patents would render the unified patent protection unattractive and may even impede its creation, whereas limiting jurisdiction could lead to the establishment of two different common patent courts. Such duplication
would not be reasonable, in particular given the limited number of competent judges and the risk of contradictory judgments. The unified patent court could therefore be set up by an agreement between member states on the creation of a common jurisdiction. The basic institutional architecture of the unified patent court as foreseen for the EEUPC should, however, be maintained. Remaining issues In addition to the fact that without Spain and Italy on board, complete EU coverage is not possible, substantial additional problems remain: On 30th May 2011 Italy and Spain sued to block the enhanced cooperation for creating an EU patent on the basis that their exclusion constituted inadmissible language discrimination within the single market. Other EU member states that are part of the enhanced cooperation (eg, Slovakia) have indicated that they may choose to withdraw from the procedure in light of ECJ Opinion 1/09, which was rendered just two days before the enhanced cooperation was adopted by the EU Council. High-quality machine translations are not yet a reality. Although in March 2011 the EPO and Google entered into a longPatents in Europe 2011/2012 23
term agreement to collaborate on machine translations of patents into multiple European, Slavic and Asian languages, there are significant doubts as to whether the requisite quality is actually achievable within the transitional period. Regarding the EEUPC, a number of issues including the composition of court panels, the competence of the divisions of the Court of First Instance, the concept of technically qualified judges and the language regime still have to be resolved. Experienced infringement judges will have to educate their new colleagues. However, few German judges (almost 75% of all litigation in Europe takes place in Germany) have the capacity to educate non-German speaking colleagues with little or no experience of patent infringement.
Summary If the enhanced cooperation is not rejected by the ECJ, the creation of a unified EU patent by the two proposed regulations seems achievable by 2013. In addition, with regard to the EEUPC, the European Commissions non-paper appears to provide an appropriate solution to address the concerns set out in the ECJs opinion. Moreover, the establishment of the enhanced cooperation by 25 EU member states indicates, for the first time, that there is a strong political will to implement a unified patent system. According to insiders at the commission, Italy might soon join the enhanced cooperation, putting further pressure on Spain to give up its seemingly intransigent position. It seems that the European Union has never been closer to a solution for its current complicated and expensive patent system.
Rainer K Kuhnen is a partner at Kuhnen & Wacker, based in Freising/Munich. He specialises in patent prosecution in the fields of electrical engineering/electronics, physics, information and computer technology and network technology. Mr Kuhnen has a masters degree in electrical engineering from the Technical University of Munich and also studied European IP law at Fernuniversitt Hagen. He is a qualified German and European patent attorney, as well as a European trademark and design attorney. Mr Kuhnen is a member of the American Bar Association, the International Association for the Protection of Intellectual Property (AIPPI), the German and International Association for the Protection of Intellectual Property (GRUR), the American Intellectual Property Law Association (AIPLA), the European Patent Institute (EPI), the Licensing Executives Society (LES) and the Association of Intellectual Property Experts (VPP), among others. He is frequently invited to lecture on German and European patent practice, and has attended conferences and given presentations in several Asian countries.
Rainer K Kuhnen Patent attorney and partner rainer-k.kuhnen@patentfirm.de +49 8161 608 318 Kuhnen & Wacker Germany www.kuhnen-wacker.com
Michael Zeitler is a partner at Kuhnen & Wacker. He joined the firm in 2008 as a specialist for the prosecution of sophisticated patents in the field of physics (in particular semiconductors, solid state physics and material sciences), as well as in electronic engineering. After studying physics, Dr Zeitler was awarded his masters degree and subsequently his PhD from the University of Augsburg. He is a qualified German and European patent attorney, as well as a European trademark and design attorney. Before joining Kuhnen & Wacker, Dr Zeitler was head of patent and trademark prosecution at Qimonda AG, an IP manager at Infineon Technologies and a patent expert at Infineon Technologies AG. He worked on his diploma thesis in close cooperation with Hoechst AG. He is a member of AIPPI, GRUR, AIPLA, EPI, VPP and LES.
Michael Zeitler Patent attorney and partner michael.zeitler@patentfirm.de +49 8161 608 318 Kuhnen & Wacker Germany www.kuhnen-wacker.com
Albania
Albania
By Gjergji Gjika and Evis Jani, Drakopoulos Law Firm, Tirana 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent right may be enforced through administrative or civil proceedings. Administrative proceedings may be initiated based on Decision of the Council of Ministers (DCM) 547/2008 on amendments to DCM 205/1999 on implementing provisions of the Custom Code. By virtue of DCM 547/2008, the holder of a patent right may submit a request for action to the General Customs Directory (GCD) if it has grounds to suspect a potential infringement of its IP rights. Following examination and control at the border, if the GCDs regional offices identify goods as indicated in the decision, it should seize such goods and inform the patent holder, which should commence court proceedings within 20 days; otherwise, the goods will be released. A simplified procedure for the destruction of the suspected infringing goods may be applied by Customs without the need to determine whether the patent rights have been infringed, provided that the owner of the suspected infringing goods has submitted, within 10 days of notification of seizure of the goods, a declaration agreeing to the destruction the goods. Civil proceedings may be initiated based on Law 9947/2008. When ruling on the case, the court may decide to order: Cessation of the infringement. Destruction of the infringing items. Damages.
The court may order preliminary measures against the infringer if the plaintiff submits documents proving that its rights have been infringed or that infringement is very likely to occur; and provided that the plaintiff requests such preliminary measures immediately after becoming aware of the infringement. However, the rights holder must initiate civil proceedings within a time period defined by the court, which may not be more than 15 days from the date on which the preliminary measures are granted. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The courts are often assisted in their determination of patent validity or infringement issues by reports from technical experts with specialist knowledge of the particular subject matter of the patent at issue. With the guidance of local patent attorneys, the court can thus be assisted in highlighting the key issues of the matter at hand. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? In Albania, dual jurisdiction exists in relation to patent matters. As such, a matter involving the validity of a patent (eg, a nullity action) must be decided at first instance by the Board of Appeals of the Albanian Patent and Trademark Office (ALPTO). A decision of the ALPTO may be appealed to the Tirana District Court. However, patent infringement is handled by the Tirana District Court. In light of these subject-matter jurisdictional issues, the consolidation of a nullity and an infringement action is not feasible, and this often benefits the patent owner.
Albania
4. To what extent is cross-examination of witnesses permitted during proceedings? Cross-examination is permitted to the extent needed to complete and clarify the answers given by a witness; however, this can take place only with the courts permission. 5. What role can and do expert witnesses play in proceedings? Expert witness reports play a decisive role in court proceedings involving patents with regard to the technical part of the case. However, for the purpose of a final decision, the experts witnesses and reports are reviewed in conjunction with other submitted evidence at the courts discretion. 6. Is pre-trial discovery permitted? If so, to what extent? Under the Civil Procedure Code, if there are grounds to believe that particular evidence is important to the fact-finding process of a case, or that such evidence may be destroyed or be difficult to submit at a later stage, at the request of the interested party the court may decide to secure such evidence before the filing and/or initiation of a lawsuit. Such evidence shall be secured by the court provided that the plaintiff justifies the reasons for such action and the facts that such evidence shall prove. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Neither statute nor case law follows the doctrine of equivalents, although this may change in the future. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? In principle, business methods and software are not patentable under Albanian law. However, biotechnology-related rights may be protected. 9. How far are courts bound by previous decisions in cases that have covered similar issues? The Albanian courts are not bound by the decisions of any other courts covering similar issues, with the exception of decisions of the Unified College of the Supreme Court, which is the highest civil court instance in Albania. 10. Are there any restrictions on who
parties can select to represent them in a dispute? Before the ALPTO, a party must be represented by a patent attorney, duly licensed by the ALPTO, while during court proceedings a party must be represented by an attorney who is a member of the Bar Association. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In ruling on IP cases, the courts will consider the views of courts from other jurisdictions on the same issues, particularly if such opinions derive from the European Patent Office (EPO) or other EU member states. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? In practice, defendants may delay proceedings by requesting the postponement of hearings for justified reasons, the appointment of new attorneys (who would then request time to become acquainted with the case) or the dismissal of a particular judge for valid reasons. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? At the request of the plaintiff, the court may issue a preliminary injunction where there is reason to believe that execution of the final decision may prove difficult. The court may order preliminary measures against the infringer if the plaintiff: Is the owner or rights holder. Submits documents proving that its rights have been infringed or that infringement is likely to occur. Requests the application of preliminary measures immediately after becoming aware of the infringement. The court may order the following preliminary measures: Prevention of actual or expected infringement. Prevention of the entry of the suspect goods into circulation. Protection of key evidence, provided that confidential information is protected in accordance with the applicable law. Seizure or recall from circulation of the suspected infringing goods or seizure of the facilities used to manufacture such goods.
Albania
Should experts be appointed during proceedings, their fees will vary based on their experience and the volume of work
Blocking of immovable and movable property owned by the suspected infringer, including bank accounts and other assets, in order to ensure that damages can be recovered.
However, the rights holder must initiate civil proceedings within a time period defined by the court, which may not be more than 15 days from the date on which preliminary measures are granted. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The administrative tariff for submitting a claim is Lek12,000 (approximately 86) for claims with a value up to Lek100,000 (approximately 715), and 3% of the value of the claim for claims over Lek100,000. Attorneys fees are agreed between the parties. In addition, should experts be appointed during proceedings, their fees will vary based on their experience and the volume of work. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Under Article 106 of the Civil Procedure Code, court expenses must be borne by the losing party for the part of the claim accepted by the court. 16. What are the typical remedies granted to a successful plaintiff by the courts? Typical remedies granted by the courts are cessation of the infringement and compensation for damages (to be paid by the infringing party).
17. How are damages awards calculated? Is it possible to obtain punitive damages? In order to calculate damages, the court shall take into account the negative aspects of such infringement, including lost profits, any unfair profits made by the infringer, the moral damage caused to the rights holder and the royalties that the infringer would have paid had authorisation for use been granted. Punitive damages are not available in Albania. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If the plaintiff can prove the infringement of its patent rights, the court will issue a permanent injunction ordering the defendant to stop the infringement. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? There is no mandatory term for the completion of court proceedings at first instance; however, in practice, the courts tend to close legal proceedings within one year of filing of the relevant lawsuit. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Any party wishing to appeal the first instance decision may submit an appeal to the appeal court within 15 days of publication of the first instance decision. The Civil Procedure Code does not set down a timeframe within which appeal proceedings should be initiated or completed.
Albania
21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? Mediation/arbitration procedures can be used if agreed by the parties. The agreement reached through mediation and the decision of any properly constituted arbitration tribunal is final for the parties. International arbitration awards are also enforceable if they accord with the applicable provisions of the New York Convention 1958. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The courts are always pro-patentee if such patent is registered with the ALPTO through national, international (World Intellectual Property Organisation (WIPO) Patent Cooperation Convention) or EU (EPO) proceedings.
23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Albania has not signed the London Agreement on Translations however, it is expected to do so in the near future due to the harmonisation of the national legislation with EU law. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? To date, all searches with the ALPTO for registered IP rights may be performed only by physically filing a request with the ALPTO. In order to improve the search process, as well as to reduce the time taken to perform such searches, the ALPTO, in cooperation with WIPO, plans to prepare and implement an online database system, which will make it easier for interested parties to search all registered IP rights online.
Gjergji Gjika graduated from the Law School of the University of Tirana. He has several years experience of prosecution and contentious work for various IP rights. He is a trademark agent registered with the ALPTO and a European patent attorney registered with the EPO. Mr Gjika represents foreign and domestic clients in a variety of IP matters and is involved in various local and international publications. He joined Drakopoulos Law Firm in 2008 as a senior associate and was made partner in 2010.
Gjergji Gjika Partner ggjika@drakopoulos-law.com +355 42 400 900 Drakopoulos Law Firm Albania www.drakopoulos-law.com
Evis Jani graduated from the Law School of the University of Tirana and holds an LLM in European law from the University of Geneva. She is a trademark and patent agent registered with the ALPTO and a European patent attorney registered with the EPO. She has experience of the broad spectrum of IP rights protection locally and follows international IP developments by attending various seminars overseas hosted by, for example, WIPO. She joined Drakopoulos Law Firm in 2008 as a senior associate.
Evis Jani Senior associate ejani@drakopoulos-law.com +355 42 400 900 Drakopoulos Law Firm Albania www.drakopoulos-law.com
Austria
Austria
By Peter Israiloff, Barger, Piso & Partner, Vienna 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In civil matters, actions and requests for interim injunctions based on alleged infringement may be brought exclusively before the Vienna Commercial Court. Jurisdiction in criminal matters rests with the Vienna Provincial Court for Criminal Matters. Furthermore, a patent holder may apply to Austrian Customs for seizure of any infringing goods when they are imported into Austria, as part of the European Economic Area, for the first time; thereafter, a court action may be commenced. A patent or supplementary protection certificate (SPC) holder or its exclusive licensee may apply to the Nullity Department of the Austrian Patent Office for a declaratory decision against anybody that allegedly infringes the patent or SPC. Declaratory proceedings may be launched even in case of the mere intention to take such steps. Furthermore, the owner of a senior patent may apply to the Nullity Department for a decree that the commercial use of a junior patent entails the full or partial use of its invention. Moreover, the holder of a senior patent or SPC, or any third party, may file an opposition against a junior patent application or nullification proceedings against a junior patent based on lack of novelty and/or inventiveness. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? As any infringement proceedings must be launched before a single court, it may be assumed that the judges have specialist experience. In civil matters the first
instance court consists of two professional judges and one expert, usually a patent attorney. One of the professional judges is the chairperson. It is also common for the court to appoint an expert whose opinion is also taken into account. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The civil court rules on infringement only. If the defendant objects to the validity of the patent or SPC, the proceedings will be interrupted so that it can file a nullification action with the Austrian Patent Office or, in case of a European patent that has been in force for less than nine months, an opposition with the European Patent Office. Upon a final, uncontestable decision on the patents validity, the court action will continue. 4. To what extent is cross-examination of witnesses permitted during proceedings? The court proceedings are oral, direct and open to the public. The court must rule based on the evaluation of evidence (ie, documents, private expert opinions, court expert opinions, witness testimony). In the course of the oral hearings, which may be preceded by several preparatory writs, the case is discussed and cross-examined. 5. What role can and do expert witnesses play in proceedings? The opinion provided by the courtappointed expert helps the court to understand the matter. However, private expert opinions submitted by all parties must be considered. 6. Is pre-trial discovery permitted? If so, to what extent? Unlike, for example, the United States, Austria has no discovery system. However, the defendant must assist in providing
Austria
evidence if the plaintiff has difficulties in proving the facts. If a request for a preliminary injunction has been issued alongside infringement proceedings, this request may be directed to securing not only the claim itself, but also measures for preserving evidence. Such a preliminary injunction may be ordered without hearing the defendant if a delay might result in irreparable damage to the plaintiff or if there is a risk that evidence will be destroyed. Either during or outside of an infringement suit, any party which has suffered infringement of a right granted to it by the patent may request information about the origin and distribution channels of the infringing goods or services. The request for information must be directed either to the infringer itself or to any person that has dealt directly or indirectly with the infringing goods or services. If necessary, the request may be followed by legal action. In criminal proceedings the infringers premises may be searched for evidence to be seized. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Two types of equivalent are distinguished: those that are still covered by the scope of the patent (so-called technical equivalents) and those that are already beyond the scope of the patent (ie, patentable or inventive equivalents). A mere technical equivalent (ie, where just some features have been exchanged without altering the subject of the invention and lying within the knowledge of a person skilled in the art at the priority date of the patent) is covered by the scope of protection granted by the patent and therefore constitutes an infringement. On the contrary, an inventive equivalent is not regarded as infringement. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There exist some measures that are, as such, not regarded by law as inventions, including discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts and computer programs. However, all of these measures are patentable, provided that they are directed to or combined with technical features. If the plaintiff is the holder of a patent combining such mental features with technical features, the defendant may argue that the patent actually covers, for example, a business method or a piece of software, and thus either should never have been granted
or should be regarded as ineffective. Such patents are therefore sometimes difficult to enforce. The same may hold true for biological patents, because there exist some restrictions to patentability of biological matters on which a defendant may rely. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Case law is unknown in Austria courts are bound only by statutory law. However, courts may choose to cite related previous decisions. If one of the parties refers to a previous decision, the court must deal with it in its reasoning; failure to do so may give rise to a complaint or appeal. 10. Are there any restrictions on whom parties can select to represent them in a dispute? Before the courts, parties must be represented by an attorney at law or a notary public. In patent matters the representatives may be accompanied by patent attorneys. Before the Austrian Patent Office or the Supreme Patent and Trademark Board, there is no statutory requirement for representation provided that the party is based in the European Economic Area or in Switzerland. However, before these authorities, a party is usually represented by a patent attorney rather than an attorney at law or a notary public. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Decisions of courts in other jurisdictions are not binding on the Austrian courts. However, if one of the parties cites such a case, the court must refer to it in its statement of grounds. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? In proceedings before the court each party has the opportunity to submit requests for extension of terms or postponement of hearings. If such a request is filed by both parties, it is usually granted. If such a request is filed by the defendant with due grounds for consideration, it will also be granted. Otherwise, especially upon a counterrequest by the plaintiff, any request for delay will be rejected. In case of nullification proceedings in the course of interruption of infringement proceedings, the parties cannot request a delay because such proceedings are accelerated. In regular nullification proceedings or an action for a declaratory
Austria
decision, several extensions of terms may be granted on request. After a while, such requests by the defendant will be granted only with the plaintiffs consent. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances can this be done? Preliminary injunctions may be requested together with the demand for a judgment in infringement proceedings, even if no risk is proven. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of a patent attorney assessing an infringement before litigation may range from 4,000 to 12,000. The costs for infringement proceedings depend on the value in dispute, which has a statutory minimum of 36,000. The overall costs for a patent holder until a first instance decision regarding a preliminary injunction range from 9,000 to 22,000. Until a first judgment regarding a permanent injunction, the costs range from 9,000 to 42,000. However, these figures reflect only a range of costs and may be higher in complicated matters. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The losing party must refund the costs of the proceedings and representation to the winning party. However, the refund is calculated on basis of statutory law, so it will not cover all of the winning partys costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies granted to a successful plaintiff encompass interim or permanent injunctions, destruction of infringing goods, drawing up of accounts and publication of the decision or judgment, as well as monetary remedies depending on the type of infringement. In case of mere unauthorised use of a patent, the plaintiff may demand appropriate monetary compensation, or double that compensation if the infringement was based on gross negligence or intent. In case of wilful patent infringement, the plaintiff may demand damages instead of appropriate monetary compensation, including the profits which it has lost or surrender of the profits gained by the defendant from the infringement. Disadvantages suffered as a result of wilful patent infringement, but not leading to monetary loss, may also be claimed.
17. How are damages awards calculated? Is it possible to obtain punitive damages? The appropriate monetary compensation is usually calculated based on equivalent licence fees. The profits realised by the defendant are calculated on the basis of the defendants accounts. However, in most cases the monetary remedy consists of double the usual licence fee because, in general, the plaintiff does not want to publish the profits it has lost. Punitive damages are not available in civil court proceedings, although publication of the judgment in several newspapers or magazines, which is usually very costly, is regarded as a form of punitive damages. In criminal patent infringement matters the infringer may be fined up to 360 times the daily rate of calculating fines or, in case of a professional infringement, sentenced to imprisonment of up to two years. As a private participant to the criminal case, the patent holder may also claim compensation, which may be regarded as punitive damages. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? The first claim of a plaintiff in infringement proceedings is generally for discontinuance of the infringement. When a claim is successful the court must order a permanent injunction. However, in cases in which the infringed patent has already lapsed, so that the plaintiffs request will be directed to monetary remedies only (eg, compensation, damages), the court will primarily order, in case of proven infringement, the drawing up of accounts. It will also rule on the liquidated demand of the plaintiff. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? In main proceedings (ie, those directed towards a permanent injunction), a judgment might take several years. Provisional proceedings (which are usually launched by the plaintiff together with the main proceedings and are directed towards an interim injunction) usually lead to a first instance decision after several months to one year. There are few ways to expedite this process, because even in provisional proceedings there is usually at least one oral hearing, which may be postponed for different reasons (eg, at the defendants request). 20. Under what circumstances will the losing party in a first instance case be
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granted the right to appeal? How long does an appeal typically take? The losing party at first instance may appeal to the court of second instance (ie, the Vienna Upper Provincial Court). The second instance judgment must then contain a decision on whether an ordinary (regular) revision to the Supreme Court is admissible. Even if it is not admissible, the losing party might file an extraordinary revision, which need not be accepted by the Supreme Court, but rather may be rejected before trial. The timeframe for an appeal or revision is around two years for each. A first instance decision (of the Nullity Department) in nullification proceedings launched after the interruption of court proceedings takes around 18 months. Such decision may be appealed to the Supreme Patent and Trademark Board, whose final decision will take a similar time. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake mediation and/or arbitration before going to court. However, it is usual to try to settle the problem by negotiations. On the other hand, it is important for a patent holder to send a cease and desist letter to an infringer before launching a suit, because from receipt of such letter, patent infringement is regarded as wilful, which affects monetary remedies in infringement proceedings. In general, ADR is not a realistic alternative to litigation because it is not usually prearranged between a patent holder and an infringer. Moreover, ADR decisions do not exclude an eventual court case. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The court is obliged to decide only on the preliminary questions of whether the patent is or was valid and whether it is or was
effective against the plaintiff (eg, in case of a claimed right of prior use). The question of meritorious validity is to be solved by the Nullity Department in a nullification action. Given a valid patent, it is the courts task to decide whether infringement occurred, whereby the scope of protection is defined by the patent claims, supported, if necessary, by the description and drawings, if available. Mere technical but not inventive equivalents are to be regarded as falling under the scope of the patent. In light of the abovementioned criteria, it is not possible to state whether the courts are pro-patentee. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? To date, Austria has not signed the London Agreement. A legal amendment in 2009 cancelled the relevant passages of the law referring to translations into German of European patents issued in English or French. The amendment will come into force along with Austrian ratification of the London Agreement, and will have effect only on European patents granted after that date. At present, it appears that ratification has been postponed for several years. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Austrian Product Piracy Act strengthens the position of rights holders, in addition to the EU Regulation on Customs Action against Goods Suspected of Infringing Certain IP Rights. Goods seized by Customs on a granted application for action will be destroyed with the consent of the rights holder, provided that the importer (and alleged infringer) does not file an opposition within 10 days. Even if a rights holder has not applied for a customs action, its Austrian representative (eg, patent attorney) will be informed by Customs if goods are to be imported which clearly infringe an IP right.
After studying industrial technology, since 1969 Peter Israiloff has worked in the IP field. He holds an engineer diploma and is a doctor of technical sciences from the Vienna Technical University. He is a member of the International Association for the Protection of Intellectual Property and handles patents and utility models in all fields of technology except biochemistry. In addition, Mr Israiloff is a specialist in Austrian, EU and international trademark matters, and as such member of and Austrian contributor to the International Trademark Association.
Peter Israiloff Partner office@bapipat.at +43 1 512 33 99 Barger, Piso & Partner Austria www.bapipat.at
Belgium
Belgium
By Kristoff Roox, Christian Dekoninck and Sarah van den Brande, Crowell & Moring, Brussels 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent holder has several options to enforce its rights in Belgium. It can initiate proceedings on the merits, summary proceedings, ex parte proceedings or saisiecontrefaon proceedings. Two types of proceedings on the merits are available: classic and accelerated. Classic proceedings take longer, but in such proceedings the patent holder can apply for both injunctive relief for the future and damages for past infringements, as well as for other measures available under the Patent Act (see Question 16). Accelerated proceedings are also on the merits, but the procedure is the same as in summary proceedings, with no need for urgency. In accelerated proceedings the patent holder can apply only for injunctive relief and publication measures, but not for damages. When urgency is established, the patent holder can also initiate summary proceedings in order to obtain preliminary injunctions (see Question 13). In extremely urgent matters requiring an immediate decision to prevent or stop the infringement, the patent holder can apply for ex parte measures. Another option is saisie-contrefaon which is an ex parte procedure specifically tailored to the infringement of IP rights which can be used to secure evidence and, as an accessory, to freeze allegedly infringing goods (see Question 6). Finally, the patent holder can file a criminal complaint as patent infringements are considered to be criminal offences. This
is recommended only in clear cases of infringement where there are no doubts as to the infringers intentions. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Belgium has no specialist patent courts. However, the Patent Act provides that only five Belgian courts can hear patent cases, in order to ensure a degree of specialisation. Belgian judges typically have a purely legal, non-scientific background. Therefore, in complex patent litigation the courts tend to use a court-appointed expert to provide technical or scientific advice. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The Belgian courts are competent to deal with infringement and validity; there are no separate courts for validity issues. Although infringement and validity are not always dealt with simultaneously, this is often the case. Indeed, in most patent infringement cases the defendant will invoke the invalidity of the patent as a defence and file a counterclaim based on one of the grounds for nullification set out in the Patent Act. If, on the other hand, the alleged infringer initiates proceedings in order to obtain a declaratory judgment for noninfringement or invalidity, in most cases the patent holder will file a counterclaim for patent infringement. 4. To what extent is cross-examination of witnesses permitted during proceedings? The Judicial Code establishes a set of rules for calling witnesses. Witnesses will testify before the judge who conducts the examination. The parties
Belgium
lawyers cannot conduct an examination or cross-examination. In patent cases (and commercial matters in general), witnesses are rarely heard. Commercial proceedings such as patent litigation are mostly based on written evidence. 5. What role can and do expert witnesses play in proceedings? As stated above, patent litigation is mostly based on written evidence. The parties are free to submit any evidence they wish. In patent litigation, technical reports from patent attorneys or other experts are usually submitted. Such reports have the same value as a partys statement. If there is still any doubt as to technical issues, the court can appoint an independent expert. 6. Is pre-trial discovery permitted? If so, to what extent? There is no pre-trial discovery in Belgium. A party can request that the other party submit specific documents only if such documents are relevant to the case and if the other party should have or is presumed to have these documents. Moreover, the Judicial Code provides for a counterfeit seizure a kind of discovery measure. This is an ex parte procedure which can be used for two purposes: for a descriptive seizure (ie, securing evidence to prove the existence, extent and origin of the patent infringement) and as an accessory for an effective seizure (ie, freezing allegedly infringing goods). To obtain an order for a descriptive seizure, it is sufficient that there be a prima facie valid and enforceable patent and that the allegation of infringement be plausible. These conditions are usually met. An effective seizure can be ordered only on the additional conditions that the existence of the infringement cannot be reasonably contested (eg, on the basis of a foreign judgment or an expert report), and that the interests of the patent holder prevail over those of the alleged infringer or the general interest. The judge can also request the deposit of a guarantee before granting any measure. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Equivalents are liable for patent infringement when they produce a similar technical effect in a similar way (same function) and a similar result that is not necessarily identical (leading to
the same result) as the patented invention. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? In general, no type of patent is more difficult to enforce than others. However, complex patents of any type are unlikely to be dealt with in summary proceedings, as it will be difficult to establish prima facie infringement. For such complex matters, where the difficulty lies in the technology itself rather than in the legal questions, the Belgian courts will most likely appoint a judicial expert. 9. How far are courts bound by previous decisions made in cases that have covered similar issues? As a general rule, Belgian courts are not bound by decisions of other courts in similar cases, whether Belgian or foreign. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only Belgian or foreign lawyers registered with one of the Belgian bars can represent parties in court. It is possible for a party to represent itself, but this is not recommended in patent cases. Patent attorneys are not allowed to represent parties in court. 11. Are courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Even though Belgian courts are not bound by it, they can take into account the reasoning of other courts that have handed down decisions in similar cases. The Brussels courts tend not to look at foreign judgments, whereas the Antwerp courts are more inclined to do this. It is unlikely that foreign judgments can be used to overcome the prima facie validity of a European patent, but they might play a role in establishing noninfringement. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Usually, a defendant will invoke the nullity of the plaintiffs patent to delay proceedings. It can file a counterclaim within the framework of the infringement proceedings or initiate separate proceedings in order to obtain a
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declaratory judgment of the invalidity of the plaintiffs patent. If separate proceedings are initiated, the courts may stay the infringement proceedings. If still possible, the defendant may file an opposition before the European Patent Office (EPO); in such cases the Belgian courts tend to stay the proceedings, although this is not the case in summary proceedings. To counter these delaying tactics, in urgent matters the plaintiff can initiate summary proceedings to obtain a preliminary injunction. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? In urgent matters, patent holders can initiate summary proceedings in order to obtain preliminary injunctions. Preliminary injunctions will be granted under the following conditions: Preliminary injunction proceedings are available only when there is urgency that is, when the patent holder has reason to fear imminent damage in the absence of a preliminary injunction and when the mere initiation of proceedings on the merits would not lead to a timely decision to prevent such imminent damage. To obtain a preliminary injunction, the patent holder must establish the existence of a prima facie valid patent and provide prima facie evidence of the infringement. In preliminary injunction proceedings, no full legal analysis of the parties IP rights is carried out. Belgian courts generally presume that European patents are prima facie valid, even if opposition proceedings are pending before the EPO. Preliminary injunctions will be granted only after considering the various interests at stake (ie, the interests of both the patent holder and the alleged infringer, as well as those of third parties and the general public). In general, however, the courts often find in favour of the patent holders in order to protect investments, research and development. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? It is difficult to provide for a range of costs on patent litigation, as these depend on several factors (eg, the complexity of the case, the number of pleadings to be filed, possible expert testimony, pre-trial costs). Moreover, in most cases the assistance of a patent
attorney is required. The costs of litigation on the merits at first instance in a matter may amount to between 50,000 and 150,000. 15. Is it possible for the successful party in a case to obtain costs from the losing party? In principle, costs are recoverable. A distinction should be made between legal costs on the one hand, and lawyers fees on the other. As a rule, the unsuccessful party will be ordered to bear all legal costs (ie, costs related to service of documents, registration on the court docket, court-appointed expert fees, witness hearings (if any) and other expenses). Lawyers fees are recoverable only on a fixed-rate basis, in principle determined on the amount claimed. Despite the fact that these rates were recently increased, generally they do not cover all lawyers fees. 16. What are the typical remedies granted to a successful plaintiff by the courts? The Patent Act provides for several remedies, such as injunctions against the infringer and intermediaries, damages, supply of information regarding the (scope of) infringement, recall and destruction of the infringing goods and publication of the judgment. If infringement is proven, the court will usually grant damages and an injunction against the infringer. In the event of bad faith on the part of the infringer (which is rarely accepted), the patent holder can apply to forfeit infringing goods and an account of profits by way of compensation. However, such alternatives will be deducted from the final compensation. 17. How are damages awards calculated? Is it possible to obtain punitive damages? In principle, all damages caused by patent infringement must be compensated: direct damage (ie, the loss of profits caused by the sale of a competing infringing product) and indirect damage (ie, loss of reputation or exclusivity). The Belgian courts enjoy a large degree of discretion in awarding damages. In certain cases a detailed calculation of the damages is made based on, for example, accounting evidence submitted by the claimant and/or an expert. The importance of the infringement and the duration thereof are often taken into consideration when determining damages. When the compensation cannot be determined by
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the court on the basis of objective criteria, the court may grant compensation as a lump sum based on an assessment in equity (ex aequo et bono). Punitive damages are not allowed under Belgian law. However, in certain cases the courts may order the forfeiture of infringing goods. In practice, this may be equivalent to an award of punitive damages. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? A permanent injunction can be ordered only by the judge dealing with the merits. If patent infringement is established, the court must issue an injunction against all infringers designed to stop the infringement; the Patent Act does not allow the court to establish infringement but not to issue an injunction. The injunction will remain valid for as long as the patent remains valid. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? A classic infringement trial on the merits may take 12 to 15 months at first instance. Accelerated proceedings on the merits may take four to eight months. Summary proceedings may take anywhere from six to eight weeks to four to eight months. Everything depends on the courts schedule, the speed of the production of evidence, the complexity of the case, the number of parties involved, the exchange of written pleadings by the parties and the appointment of an expert. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Almost all first instance judgments, including interim judgments, may be
appealed. The grounds for appeal are not limited and no permission to appeal is required. Appeal proceedings are a re-hearing of both the facts and the legal issues. As a rule, an appeal must be lodged within 30 days of serving the first instance judgment. This period is extended for parties located abroad. Appeals relating to substantive proceedings take between two and three years, depending on the circumstances of the case (eg, its complexity and the number of parties involved). Appeals relating to injunction proceedings or summary proceedings generally take less time (six months to one year). Appeal court decisions can be appealed to the Supreme Court, but only on points of law. These proceedings take around two years. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake any type of mediation or arbitration before bringing a case before the courts. Patent disputes may be handled by ADR. The Belgian Mediation and Arbitration Centre has built up a strong reputation over the years. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? As a rule, the Belgian courts are impartial but in practice, they tend to be rather pro-patentee. However, the courts approach depends on the particular circumstances of the case. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Belgium has not yet ratified the London Agreement on Translations. As language issues are usually sensitive in Belgium, it might take some time before Belgium ratifies the London Agreement.
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Kristof Roox specialises in IP litigation in a variety of technological and commercial fields, with a particular focus on complex patent litigation in the pharmaceutical and life sciences sector. He advises on many aspects of IP portfolio management, including licensing, protection of trade and domain names, trade secrets, counterfeiting and piracy, technology transfer and strategic IP planning. He also has extensive experience in a wide variety of media law issues. In addition to traditional IP litigation and counselling, Mr Roox is regarded as an expert in the regulatory aspects of life sciences, and assists clients in procedures before the European Medicines Agency. Mr Roox also regularly speaks and publishes on patent law. He is recommended by several legal guides, such as Chambers Europe. The recent IAM publication The Worlds Leading Life Sciences Patent Litigators 2010 describes him as tenacious and recognises his work in the biotechnology field.
Kristof Roox Partner kroox@crowell.com +32 2 282 4082 Crowell & Moring Belgium www.crowell.com
Christian Dekoninck specialises in IP law, focusing on trademark and patent litigation, as well as advertising law. He obtained his law degree from the Catholic University of Leuven and his LLM in IP law from the Catholic University of Brussels. In 2000 he began working as in-house counsel for a record company, but soon became a member of the Brussels Bar. He is active in several professional associations, such as the International Association for the Protection of Intellectual Property (AIPPI), the Benelux Association for Trademark and Design Law (BMM) and the Belgian Copyright Association (ABA). He regularly speaks and publishes on trade practices and IP law.
Christian Dekoninck Lawyer cdekoninck@crowell.com +32 2 282 4082 Crowell & Moring Belgium www.crowell.com
Sarah van den Brande specialises in IP and general commercial law, focusing on patents, trademarks and copyright. She obtained her LLM in 2006 from the University of Ghent and her LLM in IP law in 2007 from the Catholic University of Brussels. She has been a member of the Brussels Bar since 2007 and is active in several professional associations, such as the AIPPI, the BMM and the ABA. She occasionally speaks and publishes on IP law.
Sarah van den Brande Lawyer svandenbrande@crowell.com +32 2 282 4082 Crowell & Moring Belgium www.crowell.com
Cyprus
Cyprus
By Phivi Tramountanelli, Michael Kyprianou & Co LLC, Nicosia 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The most effective way for a European patent holder to enforce its rights in Cyprus is to file a court application for a freezing order until its case is heard by the courts. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? In December 1997 Cyprus entered the European Patent Organisation and became a member of the Patent Cooperation Treaty. On 1st April 1998 the new Cypriot Patent Law was enacted as Law 16(I)/1998 and amending laws. The new law revised the existing Patent Law to deal with current legal issues. There are no specialised courts in Cyprus that deal with IP rights. The courts have only basic expertise and knowledge because very few patent cases come before the district courts or the Supreme Court. The majority of cases are settled at the time of an application for an interim order (injunction). However, some cases do proceed to full trial. When a case proceeds to full trial the parties are expected to call experts in the specific area of the patent in question to explain to the judges the technical aspects of the patent. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? After the filing of an application by any interested party, the district courts have the right to invalidate the patent wholly or partially in the following circumstances only: The object of the invention does not fall under the definition of the term.
The patent does not reveal the invention in a satisfactory manner, clearly and fully so that the invention can be executed by an expert in the field. The right to the patent did not belong to the person to which the patent was granted.
The court then has the right to request whatever it needs for the case from the patent owner. Every invalid patent, claim or part of the claims is considered to be invalid from the date of grant of the patent. An infringement action is tried by the district court in the district where the cause of action arose. An appeal may be made to the Supreme Court in its appellate capacity. The court may also issue an injunction. Proceedings may not be instituted more than five years after the infringing act. Any interested person may, by instituting proceedings against a patent owner, ask the court to declare that the performance of a specific act does not constitute an infringement of the patent. If the person making the request proves this assertion, the court shall grant a declaration of non-infringement. 4. To what extent is cross-examination of witnesses permitted during proceedings? The cross-examination of witnesses is permitted during proceedings; however, one cannot mislead, misdirect or confuse the witnesses or ask them the same questions on the same issue. The questions asked at the cross-examination must comply with the details set down in the pleadings and must not extract additional material and information. 5. What role can and do expert witnesses play in proceedings?
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Any interested person may, by instituting proceedings against a patent owner, ask the court to declare that the performance of a specific act does not constitute an infringement of the patent
Expert witnesses play a vital role in proceedings, since an expert witness can help the judge to reach a decision. If the expert witness is convincing, he or she can determine the judges decision. An expert witness must provide evidence of his or her expertise and cannot be questioned as he or she is there to help the judge and lawyers understand the specific field. An expert witness can help the judge to reach a decision beyond reasonable doubt. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is permitted. The party that wishes to carry out such discovery must obtain a court order in order to do so. Pre-trial discovery is granted when the court is satisfied that the discovery will help to shed light on the case. The pre-trial discovery must not take place merely to fish for witness statements or evidence from the other party. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is not applied in the Cypriot courts. As a former British colony, Cyprus follows UK law on several matters. Neither the United Kingdom nor Cyprus has ever employed a doctrine of equivalents approach. As a signatory to the European Patent Convention, Cyprus follows the Protocol on the Interpretation of Article 69 of the Convention, which requires member states to strike a balance between interpreting patent claims in a strictly literal manner (with the description and drawings helping only to resolve any ambiguity) and regarding the claims as mere guidelines only. 8. Are certain patent rights (eg, those relating to business methods, software
and biotechnology) more difficult to enforce than others? Business methods and software are not patentable under the Patent Law and, until the amendments introduced by Law 163(I)/2002 came into force, biotechnology was not patentable either. Biotechnology patent rights are much harder to enforce than other rights, since a forced permit is needed in order to be able to use a biotechnology patent. In addition, special requirements exist in relation to the description of biotechnology patents. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? As a former British colony, Cyprus inherited a rather unusual system of law, the essence of which has not fundamentally altered since Cypruss independence. The system is based on a series of codifications of the English common law in the form of Cypriot statutes, coupled with a general provision that in the absence of a statutory provision, the law of Cyprus is to be found in the common law. This system is still used today. However, in respect of the question under consideration, the common law does not apply because there are specific sections of the Patent Law. However, as the Cypriot courts have a long tradition of referring to UK law, in appropriate cases the Cypriot courts will look to English authorities for guidance. This is not to suggest that they will definitely apply these authorities or will consider themselves bound by them. Nevertheless, it is likely that they will look at these authorities and, if the jurisprudence is in line with common sense, they will follow and apply them. As Cyprus has a common law system, the courts are bound by previous decisions
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issued by the UK courts in cases covering similar issues. The common law provides for the condition precedent, which states that the lower courts are bound by the previous case law of the higher courts and must follow those decisions. 10. Are there any restrictions on who parties can select to represent them in a dispute? There are no restrictions as to who parties can select to represent them in a dispute, provided that those selected are qualified lawyers. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The courts are willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases. The Cypriot courts follow the common law, based on UK case law, as well as EU directives and case law, since Cyprus joined the European Union in May 2004. In case of a conflict between case law and legislation, according to the Cypriot Constitution EU law prevails over any national law. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is not easy for defendants to postpone court proceedings since according to Cypriot law, certain civil procedures require the defendant to follow strict case procedures in order to reach the final stage. For example, if the defendant wishes to stall, there is always another action that the other party can take or request to make things more difficult for the defendant. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? It is possible to obtain preliminary injunctions. A preliminary injunction can be obtained only under certain circumstances for example, when an ex parte application is filed and the filer proves to the court that it is extremely urgent that the injunction be granted as it has a serious case; or if serious damage will be caused without an injunction. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The cost of taking a case through to a first instance decision depends on the scale chosen by the registrar. The scale sets down
standard amounts based on court procedures and regulations, the legal requirements of each case and the judges requirements. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The losing party usually pays the successful partys legal expenses. The successful partys expenses are calculated by the registrar who takes into consideration the list of expenses filed by the successful party. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies granted by the courts depend on each case. A judges decision is based on previous case law and remedies. The decision will depend on the facts of the case and the damage caused to the plaintiff. Possible remedies include special damages, general damages, nominal damages, punitive damages, preliminary injunctions, final injunctions, permanent injunctions and court orders. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages awards are calculated based on previous case law and decisions in cases with identical or similar facts. The judge will look for previous cases with similar facts and then issue a decision based on the damages granted in that case. The judge will issue a very similar ruling in regard to the damages, as the calculation of damages depends on the damage caused and the damage proved. Nevertheless, the judge has discretionary power to issue a ruling that is different from those in previous cases and less than the damages suggested by the law. Punitive damages (ie, aggravated damages) do exist in Cyprus, but only for torts (ie, civil wrongs). 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? The courts are inconsistent in their granting of permanent injunctions to successful plaintiffs. The plaintiff obtains a preliminary injunction, which it issues to the defendant. The defendant then objects to the preliminary objection and the interim hearing takes place. If the plaintiff is successful, the preliminary injunction becomes permanent upon the ruling in the case; however, if the plaintiff loses, the
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preliminary injunction becomes void. If the trial finishes and the plaintiff loses while a preliminary injunction is still pending, that preliminary injunction is automatically cancelled. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? There is no fixed timeframe for obtaining a decision at first instance it depends on the number of cases pending and for how long a case has been pending. The court usually gives priority to cases that have been pending for three to four years. It takes a minimum of three to four years for a case to be tried and a ruling to be issued. Due to this priority system, it is not easy to expedite the process. However, if the matter is of great medical urgency (eg, serious illness, death) and this is proven to the court by expert testimony, the case may be treated more quickly. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party in a first instance case always has the right to appeal. The appealing party has the right to file an application with the court requesting it to postpone enforcement of the first instance decision. It takes approximately 18 months for an appeal decision to be issued. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? Parties are not obliged to undertake mediation or arbitration prior to bringing a
case before the courts. ADR is a realistic alternative to litigation; however, an ADR decision must be approved by the court in order to be enforceable. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? There are no special procedures or techniques in relation to this; nonetheless, the courts are there to serve justice. Procedures are in place to deal with the invalidity of a patent, both at the application stage and after a patent has been granted, and to provide remedies when a patent is infringed. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Cyprus has not signed up for the London Agreement on Translations because the authorities consider it to be easier and quicker for a translation of the validation of a patent to be submitted in Greek, the official language of Cyprus. This is in line with existing procedures, as the staff of the Registrar of Intellectual Property Department cannot easily access and examine the patent if it is in a language other than Greek. However, it is possible that this may be amended in future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Cyprus has no specialised courts dealing with IP rights and infringements. Cypriot industry contains only a small number of manufacturers and producers of inventions; therefore, infringement does not occur frequently. As a result, the Cypriot courts are not experienced in dealing with IP cases.
Phivi Tramountanelli obtained an LLB from the University of Warwick, United Kingdom and a masters degree in international financial law from the University of Manchester, United Kingdom. She is also a member of the Cyprus Bar Association. She specialises in intellectual property and corporate law. She mainly represents domestic and international clients in obtaining, maintaining and enforcing IP rights in Cyprus and abroad.
Phivi Tramountanelli Advocate and head of IP department phivi@kyprianou.com.cy +357 22 44 77 77 Michael Kyprianou & Co LLC Cyprus www.kyprianou.com.cy
Denmark
Denmark
By Claus Elmeros and Louise Aagaard, Hiberg A/S, Copenhagen 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In Denmark, a preliminary injunction is a fast and effective way of stopping infringing acts. Proceedings to obtain a preliminary injunction can be initiated in the Bailiffs Court; a preliminary injunction will be issued if the patentee can prove that the requested injunction relates to acts covered by its patent and it is probable that infringement will take place. If a preliminary injunction is issued, the Bailiffs Court can assist the patentee to enforce the injunction by, for example, seizing goods suspected of being used for infringing acts. However, once a preliminary injunction has been obtained, it must be followed up by main proceedings, usually before the Maritime and Commercial Court. The Maritime and Commercial Court may order a permanent injunction, as well as payment of damages. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Cases regarding preliminary injunctions are heard by the Bailiffs Court, whereas main proceedings relating to patent infringement are usually heard by the Maritime and Commercial Court. The Bailiffs Court has no specialist patent judges and claims for preliminary injunctions are usually heard by only one legally qualified judge. Since a reform in 2006, patent cases may be heard by the Maritime and Commercial Court; this has allowed that court to gain experience of patent cases. Cases at the Maritime and Commercial Court are usually heard by one legally qualified judge, assisted by two technically qualified judges. The technically
qualified judges hearing patent cases all have solid experience in the patent field from either private practice or industry. Decisions of the Maritime and Commercial Court may be appealed to the Supreme Court, which comprises only legally qualified judges with no special patent expertise. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The Maritime and Commercial Court deals with both validity and infringement, and such issues are usually handled in the same proceeding. Any party may request reexamination of a patent at the Danish Patent and Trademark Office (PTO), but such a request cannot be made while a court case regarding the patent is pending. If, however, such a request is made before the instigation of a court case, validity may be examined by the PTO while infringement is determined by the Maritime and Commercial Court. In general, the court will stay the proceedings until a final decision regarding the patent has been issued by the PTO. 4. To what extent is cross-examination of witnesses permitted during proceedings? During main proceedings, witnesses primarily give testimony in oral form at an oral hearing. At the hearing, witnesses may be cross-examined by both parties. It is usually also possible for parties to submit statements by witnesses during the written proceedings. However, during written proceedings the other party is not generally allowed to examine the witnesses. Witnesses are frequently called to substantiate the existence and extent of infringement. 5. What role can and do expert witnesses play in proceedings? During proceedings at the Maritime and Commercial Court, the court may appoint
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impartial experts to be questioned during the proceedings. Experts will be appointed by the court only at the request of at least one of the parties. The experts will prepare a written report answering questions set by the parties. The questions must be concrete, clear, neutral and relevant, and approved by the court. Thus, questions relating directly to validity or infringement cannot be posed. The impartial expert may also be called to the oral hearing to answer further questions. The parties may suggest use of a particular expert, but the experts are ultimately appointed by the court. In general, it is not possible for the parties to present one-sided technical expert statements. In contrast, in proceedings at the Bailiffs Court it is not only possible, but also common to present one-sided technical expert statements during proceedings, and parties also often call their own technical experts during oral hearings. 6. Is pre-trial discovery permitted? If so, to what extent? At the request of the patentee, the Bailiffs Court may undertake an investigation in order to ensure that there is evidence of infringement and/or the extent of infringement. This can be done only if it is rendered probable that infringement has taken place or will take place, and if there is reason to believe that evidence regarding the infringement can be found in the location to be investigated. The investigation may include all material presumed to be of relevance. If evidence of infringement is found, this may be seized. A request for investigation will be declined if it is presumed that the damage or inconvenience that would be inflicted is disproportionate to the patentees interest in the investigation. In practice, the investigation is carried out by the bailiff, usually accompanied by one or more impartial experts, and may be undertaken without prior notice. The patentee may also be present at the investigation. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Danish courts do apply a doctrine of equivalents. They start the analysis by identifying the core of the patent - according to the latest case law, this comprises the characteristics of the invention which the patent claims identify as significant. Products or methods containing the core of the patent may be considered infringing if they fall within the literal scope of the patent claims, except that one or more parts have been exchanged for technical equivalents
obvious to the skilled person. Claim features limited due to prior art during examination proceedings may be interpreted narrowly. 8. How far are courts bound by previous decisions in cases that have covered similar issues? In Denmark, a court decision has legal binding effect only for that particular case. However, earlier court decisions may set a precedent for later cases and represent an important source of law. In Danish law, there is no clear principle regarding the extent to which a previous decision sets precedent; however, in general, Supreme Court decisions are considered to be of greater importance than other court rulings. 9. Are there any restrictions on who parties can select to represent them in a dispute? Only attorneys at law can represent clients in court disputes. Accordingly, patent attorneys, who usually have a technical background, cannot represent clients before the Danish courts. In practice, during patent disputes a patent attorney frequently works in close collaboration with the appointed attorney at law. 10. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In Denmark, there are few patent cases and many of these are settled out of court before the conclusion of court proceedings. Accordingly, the available Danish case law is very limited. However, the Danish courts are willing to consider the reasoning of courts in other jurisdictions, although they are not bound by foreign decisions. In particular, decisions from jurisdictions with a similar patent law and tradition may be considered, such as decisions from other Scandinavian countries. In matters regarding validity, the courts will also consider case law from the European Patent Office Boards of Appeal. 11. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Since the 2006 court reform it has become more difficult to delay court proceedings. Patent disputes are generally heard by the Maritime and Commercial Court and, early in the proceedings, all time limits are fixed by the parties and the court. The timeframe for written preparation of the case and the date for the oral hearing are also fixed. Once these time limits have passed, the court may refuse to accept new evidence, allegations or claims in the absence of special reasons
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for example: It could not reasonably have been presented earlier. The other party may still be able to ensure its interests sufficiently. A disproportionate loss for the party may arise. After the time limits have been fixed, requests for delays must be justified. 12. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are available in Denmark and are issued by the Bailiffs Court. The requirements for a preliminary injunction are that: It is probable that the acts to be prohibited infringe the rights of the patentee. It is likely that the acts will be performed. The aim (ie, prevention of infringement) would be forfeited by waiting for a normal court case. The third requirement is always considered to be fulfilled in patent cases. The validity of the patent may be examined by the Bailiffs Court; however, if invalidity is asserted based on facts which have already been examined in relation to the patent, there is a strong presumption of validity. Even if no infringement has yet taken place, a preliminary injunction can still be obtained if an infringing act is likely to occur. 13. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of patent litigation are case dependent. The costs for preparation of the case depend on the difficulties in meeting the burden of proof of an infringement and on the extent of potential invalidity arguments. The costs for taking a case through to a first instance decision may be from 40,000 for a simple case to 450,000 for a complex pharmaceutical case. In main proceedings the costs for a court-appointed technical expert opinion will be at least 10,000, depending on the complexity of the case. 14. Is it possible for the successful party in a case to obtain costs from the losing party? The successful party may obtain its costs from the losing party. The courts are generally conservative when awarding costs and the costs awarded are typically less than the actual costs of the successful party. Court
fees can be fully refunded, whereas costs for legal assistance from an attorney at law are refunded based on standard rates. Other justifiable costs may also be fully refunded, such as costs for court-appointed experts, expert reports and witness compensation. Patent attorney costs are normally not refunded. 15. What are the typical remedies granted to a successful plaintiff by the courts? Several different remedies for patent infringement are available in Denmark. An infringer must generally pay reasonable compensation for having used a patented invention, as well as compensation for additional damages. Both preliminary injunctions and permanent injunctions may be granted. The patentee may also request the confiscation or destruction of infringing products or machines or production equipment, or the surrender of the infringing products. Penalties for purposeful infringement in the form of fines or even imprisonment are foreseen under Danish law, but rarely implemented. 16. How are damages awards calculated? Is it possible to obtain punitive damages? Reasonable compensation for having used a patented invention, as well as reasonable damages and reimbursement of any losses that the patentee has suffered because of the infringing act, must be rewarded irrespective of whether the infringing act took place in good or bad faith. To determine the amount of damages, issues such as lost revenue and the profits of the infringer are taken into account, as well as market disturbance, including estimated future loss of sales and loss of goodwill. The damages may also be cumulative, taking more issues into account. Compensation for having used the patented invention may be based on the licence fee that the patentee could reasonably have charged on the market. Punitive damages are not available in Denmark. 17. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is quite common for a successful party to obtain a permanent injunction. If the Bailiffs Court has issued a preliminary injunction, this can be made permanent by a decision in the main proceedings before the Maritime and Commercial Court. A permanent injunction can also be obtained directly after main proceedings at the Maritime and Commercial Court without a preceding preliminary injunction. If an injunction is granted, the
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bailiff should prevent the prohibited act, possibly with the help of the police. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The court reform of 2006 was designed to streamline patent cases and accelerate the process, and the courts now aim to conclude patent cases within one year. The latest statistics show that the average pendency of patent cases at the Maritime and Commercial Court in 2009 was 19 months. Proceedings may be stayed awaiting a decision from the PTO on a re-examination or from the European Patent Office on an opposition. 19. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal usually take? In Denmark, any adverse first instance decision is subject to appeal. Decisions of the Maritime and Commercial Court are appealed directly to the Supreme Court, which is obliged to hear the appeal. Decisions of the Bailiffs Court are appealed to the High Court. The appeal proceedings usually take from one to two years. 20. In broad terms, how pro-patentee are the courts in your jurisdiction?
Denmark has no split jurisdiction, so infringement and validity may be prosecuted in the same court proceedings. This system tends to reduce the likelihood of favouritism towards any party during main proceedings. However, the Bailiffs Court usually considers an issued patent to be valid unless new evidence to the contrary, which was not previously considered by the PTO, is presented. 21. Has your jurisdiction signed up to the London Agreement on Translations? Denmark is a party to the London Agreement. To validate a European patent in Denmark, the claims must be translated into Danish, while the description may be filed in English or Danish. However, a full translation into Danish may be required in relation to patent infringement proceedings if either the defendant or the court requests such translation. 22. Are there any other issues relating to the enforcement system in your country that you would like to raise? In Denmark, unlike in other European countries, it is possible for both third parties and patentees to request re-examination of a patent at any time. This provides a useful tool for testing the validity of a Danish patent or the Danish part of a European patent.
Claus Elmeros is a partner at Hiberg A/S, chairman of Hibergs board of directors and a qualified European patent attorney. He specialises in mechanical technology, medico-technology, processing equipment, manufacturing technology, control systems and software. Mr Elmeros started in the patent profession in 1990 as a patent examiner at the European Patent Office in the Netherlands. Since 1995 he has advised on patents and registered design protection. He co-founded a patent practice in 1998 and took over its Copenhagen office in 2005, before merging the practice with Hiberg in 2006. Mr Elmeros is also an authorised European design attorney at the Office for Harmonisation in the Internal Market and teaches IP rights on the CEIPI course in Copenhagen. He is treasurer of the Association of Danish Patent Agents.
Claus Elmeros European patent attorney, partner cel@hoiberg.com +45 33 32 03 37 Hiberg A/S Denmark www.hoiberg.com
Louise Aagaard is a partner at Hiberg A/S, a member of Hibergs board of directors and a qualified European patent attorney. She has a background as a biochemist and graduated with an Msc in biochemistry from the University of Copenhagen and a PhD in genetics from the University of Vienna. Since 2001 Ms Aagaard has advised on patent-related issues, particularly in the area of life sciences, including biotech, pharmaceuticals, the food industry and green-tech. She qualified as a European patent attorney in 2004. In addition, she lectures for IP rights courses and patent conferences and is chairman of EPCtutors, an organisation which organises the CEIPI basic course in Copenhagen.
Louise Aagaard European patent attorney, partner lad@hoiberg.com +45 33 32 03 37 Hiberg A/S Denmark www.hoiberg.com
Finland
Finland
By Petri Eskola, Backstrm & Co Attorneys Ltd, Helsinki 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent infringement suit can be filed with the Helsinki District Court, which has exclusive jurisdiction in patent matters at first instance. If the situation is urgent (eg, due to an imminent threat of patent infringement), an application for an injunction can be filed with the same court before filing a patent infringement suit. The court can rule on an ex parte injunction within a few days without hearing the opposing party, provided that sufficient grounds are presented by the patent holder. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? When hearing patent matters, the Helsinki District Court appoints two independent experts to assist with technical questions. The level of expertise of these court-appointed experts is very high. The judges who officially decide the matter do not have in-depth technical skills. The situation is different at the appeal courts and the Supreme Court, where no court-appointed experts are used. At the appeal courts and the Supreme Court, patent cases are decided by panels of judges with purely legal backgrounds. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The general principle is to handle validity and infringement matters at the same time. This is based on a recommendation issued by the Helsinki District Court on 9th January 2008.
4. To what extent is cross-examination of witnesses permitted during proceedings? Cross-examination is permitted according to general procedural rules. Specific rules for patent matters do not exist. 5. What role can and do expert witnesses play in proceedings? Expert witnesses have traditionally played a key role in patent proceedings. The experts role is usually to draft a written statement and subsequently to appear as a witness in the oral hearing. As a starting point, the parties have a right to appoint their expert witnesses freely. 6. Is pre-trial discovery permitted? If so, to what extent? The discovery system is not used in Finland. However, a party can request that certain evidence and documentation be secured by a court order and enforced with the assistance of officials. The applicant must lodge security as stipulated in the special legislation covering such securing of evidence. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The local courts apply the doctrine of equivalents as stipulated by the European Patent Convention. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? It is hard to draw conclusions on this issue, since only a few patent matters are filed monthly and there is no extensive case law. In recent years most of the cases filed, for example, related to pharmaceutical patents, whereas business method or software patents have not been litigated.
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Preliminary injunctions may be granted in cases where infringement is likely to occur, taking into account the urgency of the matter
9. How far are courts bound by previous decisions in cases that have covered similar issues? Only Supreme Court decisions can be considered as binding case law. Since there is little Supreme Court precedent on patent matters, the parties also refer to appeal court decisions, even though such decisions cannot be considered legally binding. 10. Are there any restrictions on who parties can select to represent them in a dispute? There are no restrictions other than the conflict of interest stipulations under the local rules of the Finnish Bar Association. However, according to the procedural laws, the representative must have a law degree. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Foreign decisions should not have decisive effect. However, since the Finnish patent legislation was drafted in cooperation with other Nordic countries, some decisions of other Nordic countries in particular from the supreme courts are frequently referred to by the Finnish courts. Other than the Nordic countries, however, decisions from other jurisdictions are not generally given significant weight in Finland. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? If the case does not involve urgent injunction procedures, the delay tactics are usually based on deadline extensions. During revocation or infringement proceedings, the parties are requested to file their briefs by a certain deadline set by the court. In such cases a party can request an extension to the
deadline, provided that reasonable grounds to support such a request exist. The courts usually grant the extension if the requested additional time is not unreasonable. The opposing party has no way of stopping the extension as the courts do not usually seek the other partys opinion in respect of the requested extension. In order to avoid delays, the other party can notify the court of any suspected stalling and request that any extensions not be granted. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions may be granted in cases where infringement is likely to occur, taking into account the urgency of the matter and by weighing up the overall advantages and disadvantages of granting an injunction for each party. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of patent litigation may vary considerably depending, for example, on the field of the invention and issues in dispute. At first instance, the costs may range from 20,000 to 300,000. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The procedural rule is that the losing party compensates the winners costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? The main remedies in an infringement situation are an injunction, reasonable compensation for the unauthorised use of the patented invention and compensation for damages.
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17. How are damages awards calculated? Is it possible to obtain punitive damages? Actual damages are based on the losses suffered by the patent holder which can be proven. Such losses include the loss of sales profits and costs that the infringement may have caused. Punitive damages are not available. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? One of the main remedies under the Patents Act is a permanent injunction for the infringer. If an infringement is confirmed to be occurring or to have occurred, a permanent injunction should be ordered. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Currently, the average time taken to obtain a first instance decision is around two years. Proceedings are rarely expedited. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? In practice, the losing party always has a right to appeal. The appeal process takes
approximately 12 to 18 months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to arrange mediation before bringing a case before the court. At present, ADR does not appear to be a realistic alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? In the sense that patent invalidation cases seldom succeed, it could be argued that the courts are slightly pro-patentee; but in regard to infringement cases, the court tend to be neutral. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Finland has signed up to the London Agreement and it was ratified by Parliament on 11th March 2011. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? There are well-established plans to set up a separate, specialist court for IP rights disputes, but it remains to be seen whether these plans will ever come to fruition.
Petri Eskola trained with the Helsinki District Court from 1996 to 1997, and was admitted to the Finnish Bar in 2001. He has experience in all IP matters and advises clients on all related aspects, as well as major areas of business law. He joined Backstrm & Co in 1998, where he is now a partner.
Petri Eskola Attorney petri.eskola@backstrom.fi +358 9 6689 9415 Backstrm & Co Attorneys Ltd Finland www.backstrom.fi
France
France
By Patrick Dunaud, Nathalie HadjadjCazier and Gwendaline Sarrat, Winston & Strawn, Paris 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? According to the applicable French patent rules, a European patent holder may choose to bring either a criminal or a civil action in order to enforce its rights. Although criminal judges have investigation and coercion powers to collect evidence (which civil judges do not have), the criminal courts are not specialised in IP matters. Except under specific conditions, criminal damages may not be higher than 300,000 and the infringer shall face a three-year prison term (Article L615-14 of the IP Code). However, in practice, criminal actions are rare. Actions may be brought before the arbitration courts (Article L615-17 of the IP Code), but the decision obtained has limited effect. Moreover, actions shall not be brought to the arbitration courts each time that such a court takes over a public organisations prerogatives. Therefore, this route might not be appropriate for litigation on validity or cancellation, but could be appropriate for litigation on infringement, ownership and the enforcement of agreements. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Patent litigation falls under the exclusive jurisdiction of the courts of first instance. The Decree of 9th October 2009, which implemented the Law of 29th October 2007, gave exclusive jurisdiction for patent litigation to the Paris Court of First
Instance. In practice, such cases are submitted to the third chamber of the court. There is a clear trend towards improving the level of specialisation not only of the courts, but also of judges. For this reason the number of competent jurisdictions has been reduced from seven (Paris, Marseille, Bordeaux, Strasbourg, Lille, Lyon and Toulouse) to one. The Ministry of Justice is also said to be in favour of such specialisation, notably by ensuring the suitability of judges for the job and by enhancing the training requirements. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Article L615-17 of the IP Code and Article D211-6 of the Judicial Organisational Code state that all litigious matters arising from patents fall under the exclusive jurisdiction of the Paris Court of First Instance. However, validity and infringement matters must follow specific requirements (under Articles L613-25 and L615-1 of the IP Code) - both are dealt with by the Paris court and are closely linked. A patent must be valid in order for the holder to initiate an infringement action. Validity is usually contested as a mean of defence by the infringer. 4. To what extent is cross-examination of witnesses permitted during proceedings? Unlike in the United Kingdom, and despite the fact that patent infringement may be proven by any means, cross-examination of witnesses is not permitted during proceedings. This is because French proceedings take place exclusively in writing. Only attorneys are allowed to speak at oral hearings before the civil courts. However, expert evidence is often used.
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5. What role can and do expert witnesses play in proceedings? When acting before the civil courts in France, a plaintiff must be represented by an attorney at law. The assistance of an expert is not mandatory, but may be vital to the outcome of the trial. In cases where the issues are complex or require a high degree of expertise, attorneys are assisted by patent agents, who cannot plead, but provide technical expertise and assistance. Court experts are frequently asked to help to calculate the damage awards to be paid to the rights holder. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is not only permitted, but encouraged by French law. A special feature of the French pre-trial discovery procedure is the saisie-contrefaon, which is processed through an ex parte procedure. Article L615-5 of the IP Code stipulates that any party that is entitled to initiate a lawsuit due to counterfeit goods may obtain a court decision authorising it to send a bailiff to the defendants premises. The bailiff may proceed with the description or physical seizure of the infringing products, including copies of invoices and any other documents that may prove the alleged infringement. Under the Law of 29th October 2007, seizure may also cover the devices and instruments that contributed to the production or distribution of the infringing goods. The time limit for the patent owner to initiate the action on the merits has been increased from 15 days to 20 working days or 31 calendar days from the date of the bailiffs report. If the patent owner fails to do so, the seizure will be considered void and the infringer will be entitled to claim damages in compensation. The 2007 law also introduced a right of information, which is aimed at helping to identify networks of counterfeiters, rather than at proving the infringement. The high number of judgments issued using this right demonstrates the interest in such a provision. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The French courts do apply a doctrine of equivalents. This means that a patent may be considered to infringe a prior patent where both are aimed at producing the same technical effect and results, even if the patented means differ. However, no doctrine of equivalents applies when the opposed patented devices
produce the same results, but do not have the same technical effects and structure. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Article L611-10 of the IP Code stipulates that patents shall be granted for any inventions, in all fields of technology [including biological products], provided that they are new, involve an inventive step and are susceptible of industrial application . Patents shall not be granted for only (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information Once a patent has been . granted, there is no particular difficulty with its enforcement unless the claims are written in a way that may render infringement difficult to prove. Nonpatentable inventions, such as business methods, are difficult to enforce, as their protection often relies on keeping them secret. Software is not patentable unless its implementation produces additional technical effects. However, it may be granted protection and thus enforced under the copyright legislation (Articles L111-1 and following and L331-1 and following of the IP Code). 9. How far are the courts bound by previous decisions in cases that have covered similar issues? As opposed to the common law system, French courts are not bound by previous decisions that may have been rendered in similar cases. However, the judges may be influenced by or willing to consider the reasoning of other courts or jurisdictions, especially EU courts. Even if the French courts do not apply a doctrine of precedent, they may be influenced by a kind of case law constituted of general principles set out by the courts of appeal and the Supreme Court. 10. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? French proceedings are conducted in writing and the schedules are set by the judges at their sole discretion. There is always the possibility for defendants to delay proceedings by providing documents and
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evidence at the last minute or by requesting the postponement of the procedural hearings. However, with the trend towards enhanced effectiveness, judges are increasingly less disposed to accept such behaviour. A defendant may also delay a patent infringement case by opposing the European patent evoked. 11. Is it possible to obtain preliminary injunctions? If so, under what circumstances can this be done? The French patent regulatory system has always granted patent owners the right to request preliminary injunctions. These can be obtained on condition that the action on the merits appears to be serious and initiated within a short term. Under Article L615-3 of the IP Code, as amended by the Law of 29th October 2007, a patent owner (or the grantee of an exclusive right of exploitation) may initiate a summary proceeding and obtain a court order to: Prevent any impending infringement. Prevent the continuation of infringing actions. Ensure the indemnification of the plaintiff, notably by awarding damages or ordering the seizure of the infringers assets. The judge may also act on a motion from the patent owner where the circumstances require that the decision not be made after hearing both parties - for example, where any delay could cause detriment to the plaintiff. In order to obtain a preliminary injunction, whether acting on a motion or initiating a summary proceeding, the patent owner must provide the judge with reasonably accessible evidence demonstrating that its rights have been or are likely to be infringed. 12. How much should a litigant plan to pay to take a case through to a decision at first instance? It is always difficult to estimate the costs to take an action through to a decision at first instance, as these depend on the complexity of the case, the arguments of the counterparty and the length of the proceedings. In addition to attorneys fees, the parties must often pay expert fees and, in some cases, translation costs. 13. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. The amount awarded is set by the court
in the fairest way and in consideration of the economic situation of the losing party. The costs awarded are usually less than those requested by the parties. Due to recent changes in the law, the costs awarded have increased and in one case reached 300,000. 14. How common is it for the courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? French judges may rule on both the question of liability and the nature and amount of remedies to be awarded at their sole discretion, in consideration of the right to be protected and the infringement. Often, once the judge has found that an infringement has taken place and has granted the successful party an account of profits, he or she may order that the damages be appraised by experts in order to help to calculate the amount owed. Typical remedies granted include injunctions, damages or account of damages, and destruction of the infringing goods. 15. How are damages awards calculated? Is it possible to obtain punitive damages? Under French law, the courts have sole jurisdiction to assess the amount of damages that shall be awarded in compensation for the damage suffered. The applicable principle is the whole prejudice, but only the prejudice Therefore, punitive . damages are not available. The Law of 29th October 2007 introduced new methods for calculating damages (Article L615-7 of the IP Code). Courts shall now take into consideration the losses and moral prejudice suffered by the plaintiff, as well as the infringers profits. At the plaintiffs request, the courts may also grant a lump sum that shall not amount to less than the royalties that the infringer would have been obliged to pay had it sought the right to use the patent. 16. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It takes approximately 18 months to obtain a court decision. However, the new policy of the Third Chamber of the Paris Court of First Instance is that each party cannot enter written arguments more than twice. This means that decisions should now be issued earlier. As the schedule of the proceedings is set by the judges, the parties cannot expedite the proceedings.
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Figure 1
Trademarks 13%
Copyright 10%
IT and telecom 18% Patents 37%
Other 22%
17. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? A losing party that wishes to contest a first instance decision may lodge an appeal (unless otherwise stated or if the decision has been rendered without appeal) within one month of notification of the judgment (three months for foreign residents or companies). Before the adoption of the Law of 25th January 2011 regarding representation before the appeal courts, appellants had to designate an avou who had the exclusive power to represent the parties before the courts of appeal. However, from 1st January 2012, the profession of avou will no longer exist and attorneys at law will be entitled to represent their clients in both first instance and appeal proceedings. An appeal takes approximately 18 to 24 months. However, the Decree of 28th December 2010 on appeal procedures shortened the time limit for an appeal proceeding to six months, which should help to make the IP enforcement system more efficient. 18. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties may decide to undertake any type of mediation/arbitration before bringing a case before the courts, but there is no obligation to do so. Judges increasingly
encourage parties to opt for mediation. Arbitration and mediation procedures are available at the World Intellectual Property Centre (WIPO) Arbitration and Mediation Centre or at the Paris Mediation and Arbitration Chamber. While mediation/arbitration is not conceivable in some cases, patent cases represent the highest percentage of cases submitted to the WIPO centre (see Figure 1). 19. In broad terms, how pro-patentee are the courts in your jurisdiction? The Third Chamber of the Paris Court of First Instance pays great attention to IP rights enforcement. Since the implementation of the Law of 29th October 2007, the amount of damages awarded has increased and the damage caused has been appraised and evaluated in a better way. 20. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? France signed the London Agreement on 29th June 2001. On 14th April 2010 the Paris Court of Appeal issued 24 similar court decisions, holding that since France has ratified the London Agreement, no French translation need be filed before the French Patent Office with respect to European patents amended after opposition proceedings, and that this also applies to European patents for which the mention of grant was published before the entry into force of the London Agreement.
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Patrick Dunaud heads the litigation department of Winston & Strawn in Paris. His practice focuses on IP and antitrust litigation, particularly in the media, luxury industry, information technology, digital convergence and e-commerce sectors. He also has extensive experience in the corporate and securities litigation areas, advising financial institutions and major corporations on litigation and non-litigation matters. An active trial lawyer for 30 years, Mr Dunaud is experienced before civil, commercial and criminal courts, as well as the European Court of Justice. He has also represented corporations before international arbitration panels in a wide range of matters. Before joining Winston & Strawn, Mr Dunaud headed the Paris litigation department of Latham & Watkins. He holds a graduate degree from the Institut dEtudes Politiques de Bordeaux (1976), a DEA in European law (1977) and a DEA in international law (1978) from the University of Bordeaux.
Patrick Dunaud Partner pdunaud@winston.com +33 1 53 64 82 12 Winston & Strawn France www.winston.com
Nathalie Hadjadj-Cazier focuses her practice on IP counselling, transactional and litigation matters. She has extensive experience in developing IP rights. Ms Hadjadj-Cazier assists clients with licensing, franchising and merchandising agreements involving the use, commercialisation, pledge and tax optimisation of trademarks, patents, and copyrights, as well as know-how, designs and models. Her transactional experience includes implementing IP rights transfers in joint venture transactions; structuring and allocating IP rights and corresponding payments within groups of companies for the purpose of economic and tax efficiency; and brand and domain name licence agreements. She also represents clients in a range of trademark, design and copyright litigation, from urgent protective proceedings to full trial before national courts. Ms Hadjadj-Caziers experience prior to Winston & Strawn includes developing the IP practices at several other international law firms. She is an authorized agent at the Office for Harmonisation in the Internal Market and a former IP counsel.
Nathalie Hadjadj-Cazier Partner nhadjadj@winston.com +33 1 53 64 81 50 Winston & Strawn France www.winston.com
Gwendaline Sarrat concentrates her practice on IP matters covering trademarks, designs and models, copyrights, know-how, patents and domain names. She has seven years experience advising national and international clients on setting up strategies for the protection, management and defence of their IP rights. This experience includes managing IP rights portfolios, including following up on national and international registration procedures, conducting opposition procedures, advising on the availability and validity of trademarks and designs and drafting and negotiating co-existence, licence and assignment agreements. She recently represented inventors at the Commission Nationale des Inventions de Salaris. Ms Sarrat received a masters degree in IP law in 2001 and an MBA in luxury brand marketing and international management in 2010.
Gwendaline Sarrat IP legal adviser gsarrat@winston.com +33 1 53 64 82 47 Winston & Strawn France www.winston.com
Germany
Germany
By Gottfried Schll, COHAUSZ & FLORACK, Dusseldorf 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The silver bullet of patent enforcement in Germany is an infringement action on the merits to be filed with one of the German Ivy League patent infringement courts. The choice of venue must be made in view of the complexity of the case and time constraints. The big four patent infringement courts Dusseldorf, Mannheim, Hamburg and Munich (with Dusseldorf taking a clear lead) handle about 1,000 patent litigation actions each year. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Due to the extraordinarily high number of patent infringement actions, the competent German courts handle patent infringement cases almost exclusively. Hence, the standard of expertise in all technological areas, as well as in the IP law field, is high at all levels of jurisdiction handling patent infringement actions. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Validity and infringement are handled separately in two court processes, both finalised by the X Senate of the Bundesgerichtshof. The infringement process is considerably quicker than the validity process. Only if the patent asserted is likely to become invalid due to lack of novelty in view of new facts will the infringement court stay proceedings until validity has been confirmed.
4. To what extent is cross-examination of witnesses permitted during proceedings? In practice, only court-appointed expert witnesses are cross-examined during proceedings. 5. What role can and do expert witnesses play in proceedings? Expert witnesses appointed by the parties themselves will be heard via written expert opinions. The Landgericht, the first instance court, rarely appoints expert witnesses. At second instance before the Oberlandesgericht, expert witnesses are appointed more frequently. However, only in validity proceedings before the Bundesgerichtshof is it common for the court to appoint expert witnesses. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery, as used in UK and US proceedings, does not exist in Germany. If there is a substantial likelihood of patent infringement but material evidence is not available, the patent owner may request inspection of the potential infringers premises and/or infringing devices (eg, exhibition at a trade fair). 7. Do the courts in your jurisdiction apply a doctrine of equivalents? In principle, yes. In the course of the EUwide harmonisation of jurisdiction, the requirements that must be met in order to find equivalent patent infringement have been considerably raised; thus, it is rare that infringement is based on the doctrine of equivalents. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to
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enforce than others? As the infringement courts will accept a patent granted by the European Patent Office (EPO) as it stands, the validity of the patent becomes an issue only in case of obvious invalidity based on new facts. The technological field as such could hardly be a reason to reconsider validity of the patent granted. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Due to the high number of cases, patentrelated case law is prolific in Germany. Some of this precedent can be used to provide the background for each individual case. But to answer the question, previous decisions have no binding effect in Germany. 10. Are there any restrictions on who parties can select to represent them in a dispute? In patent infringement cases, parties must be represented by attorneys at law who are members of the German Chamber of Lawyers. For validity proceedings, parties can be represented by either a patent attorney admitted at the German Chamber of Patent Lawyers or an attorney at law. In practice, parties are typically represented by a team of attorneys at law and patent attorneys in both patent infringement and validity proceedings. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Yes, the German courts are willing to consider the reasoning of courts in other jurisdictions, but within the framework of German law. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Infringement proceedings can be delayed for only very limited reasons. Of practical relevance is the delay of proceedings due to an obvious lack of validity in view of new facts. Depending on the venue, the complexity of the case may extend the schedule of infringement proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Yes, it is possible to obtain preliminary injunctions and these are immediately enforceable. A preliminary injunction will be issued if the patent owner applies for one
within four weeks of becoming aware of the infringement. Furthermore, the infringement and the validity of the patent must be apparent. Validity can be assumed to be apparent if the patent has already been the subject of post-grant validity proceedings. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? As a guideline, a patent owner can expect litigation to cost about 3% of the value of litigation (ie, the estimated economic value of the lawsuit for the plaintiff, assuming that the claims asserted will be fully confirmed by the court). The minimum is around 50,000, based on the statutory minimum fees set out by the Attorneys Remuneration Law. Depending on the circumstances, attorneys may ask for additional fees. These costs include the considerable statutory court fees. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes, the statutory attorneys fees for both attorneys at law and patent attorneys and the court fees are fully reimbursable. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies granted in Germany to a successful plaintiff are injunctions and claims to render accounts. The court will also decide whether the plaintiff is entitled to claim damages. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The courts have developed three methods of calculating damages: The cost of a licence granted between reasonable parties. The loss of profits suffered by the patent owner. The profits gained by the infringer. In practice, the calculation based on royalty fees is the most common method used to calculate damages awards. Although it is not possible to obtain punitive damages, the courts have confirmed elements in the damages calculations with moderately punitive effects. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If the court confirms infringement and the
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patent is in force and not obviously invalid based on new facts, the court will always grant a permanent injunction. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? In case of infringement actions on the merits, the Ivy League courts will render a decision within six to 12 months, depending mainly on the venue. A decision on a request for a preliminary injunction will be issued within one to six weeks. Expedition of this process is possible, mainly based on the choice of venue. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party in a first instance case will always be granted the right to appeal. Even on appeal, the successful party may enforce the first instance decision on condition of a security bond to cover potential damages due to enforcing a decision that may yet be revised. An infringement appeal typically takes 18 months to two years. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? In practice, the parties are not obliged to undertake any type of mediation or arbitration before bringing a case before the courts. In light of the number of cases, ADR
is not seen as a realistic alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Statistically, patentees win about 40% of the patent litigation actions filed in Germany. Another 40% of complaints filed are dismissed, while the remaining 20% are stayed due to validity issues. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Yes, Germany has signed up to the London Agreement on Translations. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The competent German patent litigation courts have a clear understanding that a patentee is entitled to enjoy protection for patents granted by either the EPO or the German Patent and Trademark Office. Accordingly, the courts not only are reasonably pro-patentee, but also apply strict measures to enforce injunction claims once granted. The Patent Act qualifies patent infringement as a criminal act. Although criminal actions based on patent infringement are rare, patent infringers are not treated with kid gloves in Germany. Finally, the German customs authorities are very cooperative in identifying patent-infringing goods and in seizing such goods.
Gottfried Schll is a prominent and highly renowned patent litigator. He has handled various high-profile cases for global clients, both as lead counsel and as part of an international legal counsel team. The Dusseldorf Appeals Court has appointed him as an independent court expert. Based on his degree in physics from RWTH Aachen University, Mr Schll handles cases related to various sophisticated technologies.
Gottfried Schll Partner gschuell@cohausz-florack.de +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de
Greece
Greece
By Eleni Lappa, Drakopoulos Law Firm, Athens 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? Historically, the enforcement of patent rights in Greece has been a challenging issue. One of the key factors to bear in mind is vigilance through local units and representatives in order to ensure that infringements are brought to the patent holders attention quickly and that swift action is taken. This is important because, in general, a patent infringement claim will be brought alongside an unfair competition claim, and the latter requires the prompt initiation of court proceedings. Although the previously applicable six-month prescription period was extended to 18 months more than a year ago, promptness in taking action is still always advisable. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The Greek courts have developed some practical expertise in patent matters, although the set-up of the court system still far from enables a clear focus on patent issues from the judiciary. As such, although an IP court department has existed since 2006, there is still no patent court department within it. It is hoped that in future, the courts will acquire expertise through practice. Therefore, the safest approach is for a patent owner to expect to have to deal with all aspects of its patent, including validity (ie, novelty, inventive step and industrial application), when challenging infringement before the courts. 3. How do your countrys courts deal
with validity and infringement? Are they handled together or separately? In Greece, the civil courts have jurisdiction over both nullity and infringement actions for patent rights (as opposed to trademark rights, where jurisdiction is split between the administrative and civil courts, respectively). It is not uncommon for an infringer to put forward an invalidity objection or even a nullity action as a counterclaim purely as a defence tactic. Even if that does not occur, although unlikely, the court may touch on the validity of the patent at the heart of the infringement action. As there is no separate court sector with jurisdiction for patent nullity and infringement actions, the advantage of this particular system is the avoidance of delay, as in most cases actions for nullity and infringement of the same patent are consolidated and heard in a single proceeding. 4. To what extent is cross-examination of witnesses permitted during proceedings? A typical court hearing involves the examination of one witness per adversary. The court hearing primarily focuses on the questions addressed to each sides witness by its own counsel, followed by crossexamination by the other side. Lawyers representing the parties do not argue the case orally, but rather via their writs and pleadings. The court panel may also ask questions (especially the court rapporteur and the presiding judge) if certain issues remain unclear to the court. The proceedings are short, and therefore the questions raised and the answers put forward by witnesses play a significant role in the process. 5. What role can and do expert witnesses play in proceedings? Due to the courts lack of specialisation in
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patent matters, the use of expert witnesses has repeatedly proven to be of paramount importance in such proceedings. Aside from the court hearing witnesses, the parties can submit sworn affidavits from expert witnesses (either Greek or foreign), provided that the other side is given sufficient and timely notice. If the expert witness is truly an authority on the subject, the courts will likely be influenced, and in any case they will rely heavily on the expert witness testimonies to fully consider the matter. 6. Is pre-trial discovery permitted? If so, to what extent? Greek law makes no provision for pre-trial discovery. In fact, adversaries try to keep their cards close to their chests until the last minute and often use the element of surprise in the court proceedings if feasible. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The courts follow Article 17(6) of the Patent Law (1733/1987), whereby if the same result is proven to be achieved, then by default the same or equivalent method or process is deemed to have been applied to achieve that result. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Under Article 5(2) of the Patent Law, the following do not qualify as inventions: Scientific theories and mathematical methods. Aesthetic creations; designs. Rules and methods for exercising mental activities, games and financial activities. Computer software programs and data presentation. In addition, in order to be considered patentable under the Patent Law, a patent right must meet the criteria of novelty, inventive step and industrial application, which is applicable in most jurisdictions. As Greece is not a substantive examination jurisdiction, these criteria come into play whenever enforcement issues arise and become the subject of judicial scrutiny in order to ensure that a granted patent is an enforceable patent right. 9. How far are courts bound by previous decisions in cases that have covered similar issues? As Greece is not a common law jurisdiction, precedent although important has no
binding effect. However, over the past 10 to 15 years the Greek courts have tended to welcome decisions on the same issue from other jurisdictions, particularly those with more advanced or specialised patent courts. They also consider any such decisions from other Greek courts. It is always a good strategy to cite any past decisions on the same issue. 10. Are there any restrictions on who parties can select to represent them in a dispute? As Greece has no registered patent attorneys, there are no restrictions on using regular attorneys. Nevertheless, due to the complexity of the issues involved and the lack of regular attorney specialisation on patent issues, the best policy is to retain specialist patent agents or attorneys who are familiar with international jurisprudence and other resources, and can address the key issues effectively. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Yes. As there is an effort to direct IP matters through the specialist IP court department set up some years ago, the Greek courts have not yet acquired the substantive expertise in patent matters to be found in other jurisdictions. Therefore, they are keen to consider judgments on the same issue from other jurisdictions. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Defendants commonly delay proceedings by requesting postponements; under the Greek court system, such requests are granted more often than not if it is the first time that such a request has been made. Plaintiffs always have the opportunity to oppose such requests, especially if witnesses from overseas are due to attend hearings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are granted in urgent cases where the judge can establish a prima facie actionable claim for the petitioner. Given the complexity of patent issues, the main problem is that a certain amount of preparation is required in order to initiate preliminary injunctive relief proceedings, and in most cases the courts tend to be sympathetic to the circumstances
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There is no set formula for calculating damages and the chosen calculation depends on the courts discretionary judgment and the claim put forward by the plaintiff
surrounding a patent infringement matter. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? This depends on the case and cannot be assessed arbitrarily. In comparison with other jurisdictions, Greece is considered to be one of the least expensive jurisdictions for filing suit against an infringer. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. Based on the applicable provisions, the winning party is almost always guaranteed to secure its court fees for the matter if they are claimed appropriately in the action. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies are: An injunction, which may be temporary or permanent (depending on the circumstances) and may also be enforceable immediately or not (depending on the claim submitted). A fine for violation of a court order, which is measured per infringing item found, calculated in regard to a monetary amount requested by the plaintiff and assessed by the court. Seizure of infringing items and possible retention by a court-appointed garnishee, which may also be the plaintiffs legal representative.
Publication of the court order in the press (if so requested by the plaintiff) at the defendants cost and under the plaintiffs supervision.
17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages in patent infringement cases are usually calculated either as the applicable equivalent of royalties or as loss of profits. There is no set formula for calculating damages and the chosen calculation depends on the courts discretionary judgment and the claim put forward by the plaintiff. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is not uncommon for courts to grant permanent injunctions that are immediately enforceable if there are circumstances that require this, particularly in relation to irreparable harm and damage. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The length of time needed for proceedings at first instance depends on the caseload of the court at the time when the matter proceeds to a hearing. An injunction petition proceeding takes a few months, while a main infringement action may take more than a year, depending on possible postponements. The process can be
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expedited by requesting an earlier court hearing, if available. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal is possible only for the decision on the main action (and not for the injunction, which may be stayed in certain circumstances). The right to appeal the main action decision is not subject to the granting of a relevant right to appeal; provided that there are grounds to appeal, the interested party may do so and the appeal court will examine ex officio whether the appeal has grounds. The adjudication of an appeal court proceeding takes more than 18 months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? In the main infringement action, and provided that the proceeding is before the three-member court of first instance (this depends on the legal grounds for the action), the Code of Civil Procedure requires the parties to attempt mediation before the hearing. This takes the form of the plaintiff requesting to meet with the defendant and filing with the court a report on the outcome of the meeting before the hearing. If the meeting has a successful outcome and the parties settle, the safest option is to enter a consent award judgment with the court that is, the court will confirm the settlement agreement in the form of a court order, which is then enforceable as such.
22. In broad terms, how pro-patentee are the courts in your jurisdiction? Although there are no official statistics, from practical experience there are grounds for suggesting that the Greek courts tend to be pro-patentee; however, even on an ex officio basis, they always examine the validity of the patent which forms the legal basis of the action. Although this is not always a pro-patentee approach, it stems from the fact that Greek national patents are not subject to substantive examination before granting. Overall empirical data indicates that the Greek courts are often pro-patentee. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? To date, 16 of the 38 European Patent Convention member states have signed up to the London Agreement, but Greece is not one of them. It seems unlikely that Greece will sign up to the London Agreement in the foreseeable future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Efforts should be made to streamline the process of protecting patent rights in the Greek courts by instituting an exclusive division within the IP court department for the adjudication of patent matters. This will help to advance the knowledge and sophistication of the Greek courts, and will also enhance the credibility and reliability of procedures to enforce patent owners legitimate rights.
Eleni Lappa graduated with an LLB (hons) from Kingston University, United Kingdom and has a combined knowledge of the UK, US and Greek legal systems, having worked for a considerable time in all three jurisdictions in various positions and firms. She has extensive experience in IP law and international alternative dispute resolution. Ms Lappa has been an active member of the International Trademark Association for several years and an elected Institute of Trademark Attorneys overseas member; she is also a member of the European Communities Trademark Association and the Pharmaceutical Trademarks Group. For the past decade, she has been involved in various international IP law publications. She advises major multinational corporations on infringement matters in respect of patents, trademarks and unfair competition, and has extensive experience in Uniform Domain Name Dispute Resolution Policy matters. In 2009 Ms Lappa joined Drakopoulos Law Firm as a partner.
Eleni Lappa Partner elappa@drakopoulos-law.com +30 210 6836 561 Drakopoulos Law Firm Greece www.drakopoulos-law.com
Iceland
Iceland
By Gunnar rn Hardarson and Asdis Magnusdottir, Arnason Faktor, Reykjavik 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? An important remedy for a patent holder in Iceland is the possibility of obtaining a preliminary injunction against the allegedly infringing act. Such an injunction is not granted by courts, but by a government authority, the district magistrate. This action is relatively swift and a ruling can be issued within a few weeks. However, a preliminary injunction must be verified by the court; an application to the court must be filed within one week of the court issuing the injunction. General court proceedings are also possible without any prior injunction measures. The court system is made up of two stages: eight district courts and the Supreme Court. All patent cases, including verification cases following injunctions, are dealt with in the Reykjavik District Court. Under the new Collection of Evidence Act (53/2006), under certain circumstances a rights holder can obtain the assistance of sheriffs to collect evidence following a court order to that effect. Where the court considers that there is a risk that evidence will be hidden, destroyed or altered, or that a delay in the case may cause harm, it may decide to proceed without notifying the alleged infringer. Remedies are also available under customs laws. If there is a belief that infringing products are being imported, such products can be held by Customs at the request of the rights holder. In such cases the rights holder must submit an indemnity to cover any financial damage caused if it turns out that the seizure was not justified.
2. What level of expertise can a patent owner expect from the courts in your jurisdiction? There are no specialist patent courts in Iceland. Patent cases, like all other cases, are tried before general courts, although cases involving patents are all tried by the Reykjavik District Court. To date, the number of patent cases tried before the Icelandic courts has been very low, although it is increasing. Therefore, judicial expertise is very limited. However, the courts can call on experts to assist them in specific cases, such as patent cases. Such experts need not be lawyers, but are usually professionals in the relevant technical field. Another option is to appoint outside assessors to give an expert assessment regarding certain questions or uncertainties in the case at hand. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? In infringement cases, the defendant can counter-summon the plaintiff claiming invalidity of the patent. In such cases the validity of the patent is dealt with at the same time as the infringement claim. 4. To what extent is cross-examination of witnesses permitted during proceedings? Both parties have the right to question witnesses; the party which called the witness asks questions first and the opposing party then has an opportunity to cross-examine. All cases before the Icelandic courts go through oral proceedings. Parties present their case and explain the submitted materials and other evidence that they have put forward. Evidence can comprise statements from parties before the court, statements from other witnesses, expert
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assessments and their statements before the court, written materials and other substantial materials. 5. What role can and do expert witnesses play in proceedings? There are general rules with which parties must comply in order to have a courtappointed expert assessor. An expert assessor can answer questions that pertain to, for example, the facts in a given case. The role of an expert assessor is limited so as to not overlap with the role of the judge that is, the assessor cannot answer general questions that pertain to the interpretation of the law or questions, as these are within the role of the judge. The judge then decides the evidential value of an expert assessment. In general, an expert assessment is usually considered strong evidence with regard to the questions that it covers. 6. Is pre-trial discovery permitted? If so, to what extent? The pre-trial discovery phase, as it is known in the United States, does not exist in Iceland. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? According to Icelandic law, the scope of the patent is based on the patent claims. The claims are constructed with reference to the description given in the patent. In general, the courts will, to some extent, use the doctrine of equivalents in resolving infringement matters. However, limited court precedent means that detailed rules are not available. Moreover, as Iceland has been a European Patent Convention (EPC) member state since 2004, it is bound by the Protocol on the Interpretation of Article 65 of the EPC, although the protocol is not directly applicable in Icelandic law. To date, the courts have indicated that they will exercise the doctrine of equivalents, but the full extent of how much they will use the protocol and the doctrine of equivalents remains to be seen. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Since 1st November 2004, the patent legislation has been fully harmonised with the EPC. Icelandic law has also been amended to comply with the EU Directive on the Legal Protection of Biotechnology Inventions.
Therefore, there are no provisions in Icelandic law that would act as an obstacle to the enforcement of European patents in this respect. Again, however, there is little case law in the field and it is therefore difficult to predict the possible outcome in such cases. Regarding computer software-related inventions, to date the practice of the Icelandic Patent Office has been to follow European Patent Office practice. Consequently, one would expect that this would also apply to the courts. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? In general, the courts look to precedent if the cases in question are similar and there have been no changes in the laws. Supreme Court precedent is of particular importance in this respect. 10. Are there any restrictions on who parties can select to represent them in a dispute? Although parties can represent themselves in the Icelandic courts, this rarely happens, and particularly not in complex matters such as those involving patents. In order to represent others in court, one must be an attorney at law specially legalised before the Icelandic courts. Patent attorneys (patent agents) are not allowed to represent others in court. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the Icelandic courts are willing to consider reasoning and precedents given by courts in the other Nordic countries. This also applies in the field of IP rights. Court decisions from other countries might also be relevant, particularly if they are related to the interpretation of international agreements to which Iceland is a party. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Parties to a court proceeding cannot delay a case in accordance with their own will, even if they both agree. The judge should deny pointless extensions of terms to ensure that the case will be resolved quickly and effectively. This rule prevents parties from delaying a procedure either on their own or in agreement with the other party. 13. Is it possible to obtain preliminary
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injunctions? If so, under what circumstances can this be done? Preliminary injunctions are granted by a government authority, the district magistrate. Such actions are relatively swift and a ruling should be issued within a few weeks. An injunction is possible if the rights holder can prove that: An act is likely to infringe its legitimate rights. The act has already begun or is pending. The owners rights will be substantially harmed if it is forced to wait for a court resolution. Furthermore, it must be proven that the general rules on torts will provide insufficient protection for the rights holder. There is also a comparison of the interests of the rights holder to have the injunction granted and the interests of the alleged infringer to pursue its actions. If an injunction is granted, a case will immediately follow in the courts in order to verify the preliminary injunction (such case must be filed within one week of the issuance of the preliminary injunction). The alleged infringement will be dealt with in the same case. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? This is difficult to estimate. The number of cases has been very limited in the past and those that have arisen have not been very complex. To give some guidelines, the cost is likely to be from 20,000 to 30,000 to take a non-complex patent case through the first instance court. 15. Is it possible for the successful party in a case to obtain costs from the losing party? According to the laws on court procedures, a party can make a claim to obtain costs from the losing party. The judge can decide to award costs; in general, if a party loses a case in all major aspects, it will bear the costs. The decision regarding the amount of costs to be paid is within the powers of the judge. 16. What are the typical remedies granted to a successful plaintiff by the courts? It is hard to make general assumptions regarding typical remedies, due to the limited number of cases tried before the Icelandic courts. The Patent Act allows for reasonable compensation for exploitation of
the patent, as well as damages for possible further injury. For more serious infringement where intent is proven, punishment by fine is provided for, and in very serious circumstances an infringer can be imprisoned for up to three months. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Punitive damages are not possible, but only damages meant to cover harm done. It is up to the party claiming damages to prove the harm or costs incurred by the infringement. It is left to the judge to decide the amount when deciding reasonable compensation for exploitation of the patent. It is likely that the court will take into account agreements in general within the field in question, such as licence agreements. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Again, it is difficult to make general assumptions due to the limited number of precedents at hand. However, in general, injunctions are considered to be an important and effective legal remedy for rights holders in Iceland. The limited practice in Iceland has been in line with the view in the other Nordic countries in this regard. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It takes from six to 12 months to complete a case at first instance a substantial part of the time can be used to obtain an expert assessment if requested. A request for an expert assessment therefore usually delays a final decision in the case. There is a special procedure before the courts for cases requiring quick resolution. However, this procedure is generally not available in a typical infringement case. An IP-related matter might fall under the category of cases dealt with through this special procedure if the matter relates directly to a decision of government authorities. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal from the district courts to the Supreme Court is possible. The criteria for granting an appeal are not strict, but relate mainly to the minimum amount claimed if
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the claim involves a certain amount of money or the estimation of the overall interests at stake. The minimum amount is around 2,000. An appeal must be lodged within three months of a court decision of first instance. The appeal process takes about six to eight months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? It is of course possible to solve cases through arbitration in Iceland. However, arbitration is rarely used in IP matters and is not recommended as a realistic alternative, due to the lack of experienced arbitrators in such cases in Iceland. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? It is difficult to categorise Icelandic courts in respect to how pro-patentee they might be, primarily due to the low number of cases brought before the courts. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Iceland was one of the signatory states to the London Agreement and the agreement took effect in Iceland on 1st May 2008. In fact, the Patent Regulation was amended as early as 2001 in line with the London Agreement, so from that time only the translation of claims into Icelandic has been required.
24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The general issue of concern in Iceland in relation to IP enforcement and, in particular, patent enforcement is the courts lack of experience in dealing with such cases. Therefore, it is difficult to predict a likely outcome and uncertainty is high. The rules on proof are not well defined in Icelandic law and practice relating to patent infringement and invalidity. This is mainly due to the lack of court precedent. The basic rule is that the burden of proof regarding infringement lies with the party alleging the infringement. The judge then decides, in accordance with general rules on proof in Iceland, whether the facts have been proven. However, there are special rules regarding the burden of proof in an infringement case involving process patents. If the alleged infringer makes the same product as the process patent covers, it has the burden of showing that the product is not made with the patented process. In cases involving patent invalidity, the party alleging invalidity has the burden of proving that to be the case. Here again it is within the general role of the judge to decide whether the claim has been proven. In addition, it is important to emphasise that the Icelandic patent laws have been amended to comply with the EPC. It remains to be seen to what extent the Icelandic courts will look to court precedents in relation to the EPC.
Gunnar rn Hardarson Managing director and partner goh@arnasonfaktor.is +354 5400200 Arnason Faktor Iceland www.arnasonfaktor.is
Gunnar rn Hardarson is a European patent attorney and has a BSc in mechanical engineering. After more than 25 years in the IP field he has extensive industry and private practice experience. His practice focuses on drafting and prosecution in the mechanical field, opinion work, infringements, appeals and litigation support. Mr Hardarson is a member of various international organisations including the International Federation of Intellectual Property Attorneys, the International Trademark Association (INTA), the Union of European Practitioners in Intellectual Property (UNION), the International Association for the Protection of Intellectual Property (AIPII) and the Institute of Professional Representatives before the European Patent Office (epi).
Asdis Magnusdottir is an attorney at law with 10 years experience in the IP field, in private practice, at the Icelandic Patent and Trademark Office and as an IP law lecturer at Reykjavik University Law Faculty. Ms Magnusdottir graduated from the Law Faculty of the University of Iceland, where her final thesis was entitled The legal protection of biotechnology inventions. She completed an LLM in law, science and technology at Stanford University, California. Ms Magnusdottir holds a part-time teaching position in IP law at Reykjavik University. Her practice focuses on trademarks, licensing and consulting in IP disputes. She is a member of various international organisations, including INTA, the European Communities Trademark Association, AIPPI, UNION and epi.
Asdis Magnusdottir Attorney at law and partner am@arnasonfaktor.is +354 5400200 Arnason Faktor Iceland www.arnasonfaktor.is
Ireland
Ireland
By Yvonne McKeown, MacLachlan & Donaldson, Dublin 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? Enforcement of a European patent in Ireland is available only by petition to the High Court in civil proceedings. Infringement proceedings are handled by the Chancery Division of the High Court. A special section of the High Court, known as the Commercial Court, has powers to hear and fast track IP disputes. The Commercial Court is empowered to hear general commercial disputes of high value and all IP cases. High Court proceedings can be transferred to the Commercial Court on application by either party to the dispute. Unlike in the Chancery High Court, judges handling Commercial Court disputes case manage the litigation and short deadlines are imposed. The Irish Patents Office plays no role in infringement proceedings. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Ireland has no specialist patent court; nor does it traditionally have a specialist patent bar. Since the establishment of the Commercial Court, it has become usual for patent disputes to be transferred to it; consequently, Commercial Court judges have gained experience in handling patent disputes. The Patents Act enables a court to appoint a scientific assessor to assist the judge on technical aspects of a case and the courts have some history of using this provision in technically complex cases. 3. How do your countrys courts deal
with validity and infringement? Are they handled together or separately? Validity and infringement are heard together by the Irish courts. Validity can be challenged by petition to either the Irish Patents Office or the High Court. If any other proceedings concerning the patent have already been instigated before the court, the Patents Office may not be used as the forum for challenging validity. In the event of a revocation action being commenced in the courts, a counterclaim for infringement may be made and the court will hear the two together. Alternatively, if an infringement action is taken first, the defendant can counterclaim for revocation of the patent. 4. To what extent is cross-examination of witnesses permitted during proceedings? Pre-trial exchanges of reports prepared by expert witnesses usually occur in cases before the Commercial Court. Such reports address questions of both validity and infringement. The Commercial Court encourages the parties to narrow the issues in dispute as much as possible before trial, so that the examination and crossexamination of experts and witnesses during the trial can be restricted to the core areas in dispute. In cases handled by the Chancery High Court, expert witnesses assist the court in invalidity or infringement challenges through oral evidence. 5. What role can and do expert witnesses play in proceedings? In Ireland, the role of the expert witness is to assist the court and experts have a duty to be impartial. Any suspicion that an expert is biased towards the position of the party instructing him or her can damage the credibility of the expert.
Ireland
Pre-trial exchanges of expert reports are the norm in the Commercial Court. The role of the expert witness is to explain to the court the state of the art in the field at the date of the patent in question. Experts also explain to the court what they, as persons skilled in the art, understand to be the teaching of the patent document. In infringement attacks experts may opine on technical issues relating to the alleged infringement. Expert witnesses may also be called on to conduct experiments and to supervise experiments conducted by the other party to the dispute. While experts may assist the court on technical issues, it is the sole prerogative of the court to determine the meaning and scope of the patent claims. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is a usual part of the proceedings and arises either by agreement between the parties or by court order made following an application to the court by one of the parties. Both parties make discovery of all documents presently or formerly in their possession, custody or power which are pertinent to the issues in dispute and which are not privileged. Discovery is limited to those documents sought which are both relevant and necessary for the fair disposal of the case or to save costs. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Ireland does not apply a doctrine of equivalents. The scope of protection conferred by a patent is determined by the claims, with the description and drawings being available to assist in interpreting the claims. It is specifically provided under Irish law that when interpreting patent claims, the Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC) shall be applied. This protocol requires that in determining the scope of a claim, a balance should be found which gives the patent proprietor fair protection, while providing third parties with reasonable certainty as to what is covered by the claims. Elements which are equivalent to elements specified in a claim are to be taken into account when determining the protection conferred. It falls exclusively to the court to determine the scope and meaning of the claim, and the judge must do this assuming the mantle of the person skilled in the art. 8. Are certain patent rights (eg, those relating to business methods, software
and biotechnology) more difficult to enforce than others? The Irish courts take the same approach to enforcement, irrespective of the technological field. Complex technologies may require a higher level of explanation for the court than less complex ones and this can be done by way of expert evidence. The court also has the power to appoint an assessor to assist it in understanding scientific or technical complexities. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Judgments issued by higher courts are binding on that court and lower courts. In Ireland, invalidity may be considered by the Patents Office or the High Court. Decisions of the Patents Office are appealable to the High Court and all High Court judgments whether at first instance or on appeal from the Patents Office can be appealed to the Supreme Court. Appeals to the Supreme Court can be made only on a point of law. 10. Are there any restrictions on who parties can select to represent them in a dispute? Patent attorneys can represent clients before the Patents Office. Only solicitors and barristers have the right of representation before the courts, and it is the normal course to instruct both solicitors and barristers in any proceedings before the courts. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Under Irish patent law, the courts must take notice of any decision or expression of opinion under the EPC by a competent authority on any question concerning the convention. Additionally, Irish courts are willing to consider judgments emanating from other jurisdictions on points which have not already been ruled on in Ireland. In particular, the courts are amenable to hearing the outcome of proceedings in other convention contracting states. Furthermore, Irish courts are willing to hear how other common law jurisdictions have dealt with a point of law. Judgments from other countries are not binding on Irish courts, but may be persuasive. Concerning invalidity, if an application for revocation of a patent is filed in Ireland while an opposition or appeal is pending at the European Patent Office (EPO), the court may delay the Irish proceedings pending a final decision from that office.
Ireland
12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Cases before the Chancery High Court proceed slowly and it is relatively easy for a defendant to delay matters even further (eg, by seeking extra time for taking actions). However, most patent disputes are transferred to the Commercial Court and thus the best way for a plaintiff to minimise a defendants delaying tactics is to apply at an early stage for the case to be moved to the Commercial Court. Once transferred, a case is actively managed by the Commercial Court judge, who will take a poor view of any attempts by the defendant to delay and will make orders to prevent delaying tactics. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are available in Ireland. Although short emergency injunctions are available, more usually applications for interlocutory injunctions are sought, with both sides having an opportunity to be heard. Speed is of the essence in requesting an interlocutory injunction and any delay in applying can be fatal. The court must consider whether there is a serious question to be tried and, if so, whether monetary damages could be an inadequate remedy for the party seeking the injunction. It assesses where the balance of convenience lies. For an injunction to be granted, the party seeking it must give an undertaking to the other side to pay damages to it if, at full trial, it emerges that the injunction should not have been granted. Conversely, if the injunction is refused, the other party must undertake to compensate the plaintiff for harm caused by the absence of interlocutory relief. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? Costs in excess of 175,000 for a relatively non-technically complex case should be anticipated. For technically complex cases, costs can be substantially higher. For a case which is before the Commercial Court, costs will mount up earlier in the proceedings than for cases in the Chancery High Court, since detailed pleadings are exchanged at an early stage, as are expert reports, experiments and discovery, if any. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. An award of costs is a usual request
made by both parties to proceedings. The unsuccessful party will then bear the legal costs of the winning party. In practice, the costs are assessed by the taxing master of the High Court, who is empowered to make an order concerning the percentage of the winners costs which should be paid. 16. What are the typical remedies granted to a successful plaintiff by the courts? Remedies typically available are: A permanent injunction against infringement. An order for delivery up or destruction of infringing products. A declaration that the patent is valid. Costs. The court can also order that the infringer pay damages or make an account of profits arising from the infringement. Plaintiffs usually request damages rather than an account of profits. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are assessed in respect of the different acts of infringement which are proven namely, making, offering, putting on the market, importing or stocking an infringing product, or using a patented process. Damages are awarded to compensate a patent owner for loss arising due to infringement. Punitive damages are not available. No award of damages can be made against a defendant which proves that at the date of the infringement, it was unaware of and had no reasonable grounds to suppose that a patent existed. To avoid this, the plaintiff should engage in pre-trial correspondence to notify the defendant of the existence of the patent. If a patent was amended, damages for infringement which occurred before the amendment can be denied unless the patent owner proves that the patent as granted was drafted in good faith and with reasonable skill and knowledge. Damages may also be restricted where a court finds that the patent is valid only in part. To the extent that the partially valid patent is infringed, the court may exercise its discretion to award damages, provided that it is satisfied that the patent specification was drafted in good faith and with reasonable skill and knowledge. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
Ireland
A permanent injunction against a defendant that has been found to infringe a valid patent is a statutory right and will be granted by the court as a normal remedy. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Proceedings in the Chancery High Court are slow and several years can pass before a first instance judgment is handed down. It is relatively easy for the defendant to delay the proceedings by seeking extra time to complete a procedural step. Cases which are transferred to the Commercial Court proceed much faster and judgment can be expected within about two years. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Leave to appeal is not required as both parties have the right to make an appeal. Supreme Court appeals can be made only on a question of law. The Supreme Court has a substantial backlog of cases and consequently two to three years can elapse before it hears an appeal. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no requirement in Ireland for parties to undertake mediation or
arbitration before bringing a case to the courts. The Commercial Court takes a favourable view of ADR and encourages parties to use it. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Very few patent cases are heard in Ireland and those that are begun are usually settled before trial. There is no evidence of bias in either direction. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Ireland has not yet ratified the London Agreement; consequently, if a European patent is in French or German, it is necessary to file a full English translation at the Irish Patents Office. Ratification is expected to occur in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Caution should be exercised when claiming patent rights before starting infringement proceedings. Irish law includes provisions to punish the making of unjustified threats of patent infringement. Anyone who feels aggrieved by threats can complain to the courts and seek an injunction and damages, unless it is shown that the threats were justified. A party which makes or imports a product for disposal or using a process cannot take action to restrain unjustified threats.
Yvonne McKeown graduated from Trinity College, Dublin with a degree in genetics. She was awarded a PhD in molecular biology from Trinity College in 1984. Dr McKeown worked as a researcher at the Organisation for Applied Scientific Research in the Netherlands, Plant Genetic Systems in Belgium and the Department of Zoology, University College, Dublin. Dr McKeown joined MacLachlan & Donaldson in 1988. She is a European patent attorney with extensive experience in advising clients in the life sciences, healthcare and food sectors, including the pharmaceuticals and medical devices fields. She has experience in due diligence, preparation of infringement opinions and patent litigation. Dr McKeown is a former council member of the European Patent Institute and a member of the Association of Patent and Trademark Attorneys, the Copyright Association of Ireland, UNION, the Licensing Executives Society and the International Association for the Protection of Intellectual Property.
Yvonne McKeown European patent attorney mckeowny@maclachlan.ie +353 1 6763465 MacLachlan & Donaldson Ireland www.maclachlan.ie
Italy
Italy
By Rossella Solveni and Giuseppe Mercurio, Rapisardi Intellectual Property, Milan 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In urgent cases the following preliminary remedies are available to the patent owner: Seizure an order to seize products, tools and production plants, books of account and invoices and advertising materials. Description an order to inspect products, production plants, books of account, advertising and any associated documents in order to collect documentary evidence of the infringement and the extent thereof. Injunction an order to cease the manufacture, trade and use of the infringing items or to remove the infringing items from the marketplace. In order to seek compensation for damages caused by the infringement, the patent owner should start a proceeding on the merits. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? A patent owner can expect a high level of expertise from the Italian IP courts. In Italy, IP civil litigation is handled by 12 specialised IP courts (Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice). Although the judges do not have specific technical backgrounds, during the trial the judge may appoint an expert to deal with technical issues. In addition, each party may appoint a technical expert, who can exchange both oral and
written opinions with the judges expert. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Patent validity and infringement issues can be, and usually are, handled together in the same proceeding before the same court. In both infringement and invalidity proceedings, technical issues are dealt with by the court-appointed expert. 4. To what extent is cross-examination of witnesses permitted during proceedings? In Italy, patent cases are largely based on written evidence. Witness examination is permitted at the request of the interested party and is authorised by the judge on a case-by-case basis. Witnesses can be heard only in relation to specific queries previously submitted and approved by the court, subject to evaluation of the relevance and admissibility of those queries. Although witnesses are not cross-examined, in addition to the submitted queries the court may ask them to provide further clarification in respect of the circumstances on which the relevant queries are based. 5. What role can and do expert witnesses play in proceedings? Expert opinions are frequently filed by the parties to support their technical arguments. There are no restrictions regarding the use of expert evidence. In patent cases the experts appointed by the parties participate actively by filing the relevant technical briefs and documents with the court-appointed expert. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is not permitted. The
Italy
Italian legal system does not provide for discovery in the common law sense. Pursuant to Article 129 of the IP Code, the patent holder can ask for description as a pre-trial measure. This allows the patent holder access to the infringers premises, production facilities, warehouses and/or accounts in order to describe the infringing items, as well as the means used to manufacture them, evidence as to the alleged violation and the extent thereof. If summoning the infringer before the court may prejudice enforcement of the order, the measure may be granted ex parte. When description is granted before the start of the case on the merits, the judges order shall also fix a mandatory time limit (no longer than 20 working days, or 31 calendar days should these represent a longer time period) for commencement of the case on the merits. The order becomes ineffective if it is not enforced within 30 days or if the case on the merits is not filed within the fixed deadline. Usually the court authorises the applicant to participate in the enforcement activities and appoint its own technical expert. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Even before the recent introduction of Article 52(3bis) of the IP Code (pursuant to which equivalents must be taken into consideration in order to determine a patents scope of protection), the doctrine of equivalents was commonly applied in infringement actions. According to some court decisions, infringement occurs when the main inventive idea underlying the invention is found in the alleged counterfeited goods. The Supreme Court, in line with the courts of other EU member states, has held that in order to find that a product infringes a patent, it is necessary first to consider the problem that the invention seeks to solve, and then to decide whether the way in which the alleged infringing product solves the same problem either belongs to the prior art or is patentable in itself. If so, the product does not infringe the patent; if not, then it constitutes infringement. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Business methods, software and biotechnology patents could be more difficult to enforce, particularly in interim measures cases. Due to the complexity of the underlying technical scientific issues,
the judge usually requests an expert witness to draft technical advice in order to grant such measure. Accordingly, the proceedings can often take more time than patent cases in other technical fields. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Italian courts are not bound by decisions rendered in previous similar cases, but they can certainly consider them. Precedents set by the most important courts (Milan, Turin, Rome and Naples) have some influence on the other IP courts. However, at the same time the various IP courts can take divergent positions on complex technical issues, particularly in infringement cases, creating conflicting lines of reasoning that a patent holder must take into account when choosing the venue. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers admitted to practise and enrolled in the Italian Bar Association can represent parties in an Italian dispute. The parties must grant a written power of attorney. In general, in patent litigation the parties designate a lawyer and, if the judge appoints an expert witness, also an expert specialised in the relevant technical field to liaise with the official expert. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the reasoning and decisions of courts in other jurisdictions have little influence in Italy; the Italian courts tend to be independent. Nevertheless, mostly with regard to interim measures, if the European Patent Office or a foreign court repeals the patent (or a corresponding foreign patent), the Italian court will take the relevant decision into consideration when assessing the applicants likelihood of success on the merits. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? A defendant may delay proceedings each time it files a new request with its defence briefs (eg, by claiming invalidity of the plaintiffs patent within an infringement action). However, if it is proven that the defence is groundless, the judge will take this into account. In particular, should the losing party stay in proceedings in bad faith
Italy
or with gross negligence, it will have to bear all relevant costs and can be ordered by the judge to pay damages to the other party pursuant to Article 96 of the Code of Civil Procedure. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? The IP Code provides a wide range of interim remedies: An injunction to cease the infringing activities. A penalty for non-compliance with the injunction. Seizure of the infringing products and the means of manufacturing them, as well as evidence of infringement. Publication of the interim decision in one or more newspapers or trade magazines. The prerequisites of any interim remedy are the existence of a danger in delay and a prima facie case. The danger in delay requirement means that the claimant must prove that the activity of the alleged infringer will cause irreparable harm before the issuing of a first-instance decision. The prima facie case requirement means that the claimant must prove that it is allowed to enforce its alleged rights and that there are good reasons to believe that such rights are being infringed by the defendant. Interim measures are usually granted after the court has heard both parties, but may also be granted ex parte where the claimant can prove that the defendants knowledge of the application or any delay in ruling may seriously affect the enforceability and effectiveness of the interim measure. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The overall cost of patent litigation is significantly influenced by the complexity of the case and of the issues involved. On average, the costs of interim proceedings may vary from 25,000 to 35,000, and the costs of proceedings on the merits from 75,000 to 100,000, up to a first instance decision. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The winning party is usually entitled to recover part of the costs incurred from the losing party. Recoverable costs include court costs, lawyer fees and expert fees. Such costs are calculated on the basis of tariffs
issued by the Italian Bar Association (with regard to lawyer fees) and usually amount to around 30% of the total costs incurred. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies granted to a successful plaintiff in a patent infringement action are: A permanent injunction to cease the manufacture and sale of the infringing products. An order to withdraw the infringing products from the market or to deliver them to the patent holder - a penalty used in case the infringer does not comply promptly with any measure ordered by the court. Compensation for damages. Publication of an abstract of the decision in one or more newspapers or trade magazines. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The criteria to determine damages for patent infringement are set out in Article 125 of the IP Code as follows: An amount equal to the lost profits of the patent owner. The royalties that the infringer should have paid under a licence agreement. In any event, the patent owner can claim the restitution of the profits earned by the infringer as an alternative to compensation for lost profits or in the amount that they exceed such compensation. Punitive damages are not allowed under Italian IP law. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is quite common for courts to grant permanent injunctions in IP rights infringement proceedings. An injunction can also be ordered against any intermediate that had a part in the proceedings. When issuing a permanent injunction, the judge may also fix a fine for each subsequent violation of the order, as well as for any delay in compliance. There are no specific provisions requiring conditions for granting permanent injunctions. However, unlike preliminary injunctions, permanent injunctions cannot be granted if the patent application is still pending. Moreover, courts tend to be
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reluctant to grant this measure when a patent is near to expiry. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? First instance proceedings on the merits may last as long as three to four years, depending on the complexity of the case at hand. If the relevant conditions are met, an application for interim measures before and during the pending proceedings on the merits may expedite the process. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? A first instance decision in patent proceedings can always be appealed by the losing party before the IP Division of the Court of Appeal within one month of notification of the judgment (or six months if the judgment has not been served). The appeal proceedings usually take between two and three years. Occasionally the Court of Appeal reconsiders the technical issues that were examined during the first instance proceedings and orders a supplementary expert; in such case, the duration of the proceedings may be significantly longer. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties are not obliged to undertake mediation or arbitration before bringing a case before the courts. However, mediation is
available as a possible alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Italian courts are motivated to assess and uphold the rights of patent owners. This has been particularly so in recent years, with the creation of 12 IP courts with highly qualified judges and the issue of the new IP Code. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Italian government has not signed the London Agreement and has made no announcements regarding its position on this matter. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The limited number of specialised IP courts allows for a fairly homogeneous and predictable ruling pattern, with only limited jurisprudential differences among the various IP judges. It is usually possible to choose a specific competent court in which to start an IP action. The selected court can be in either the place where the defendant is located or one of the places where the infringement took place. For example, if the infringed item is sold across the whole Italian market, the plaintiff can choose any of the 12 relevant IP courts. Furthermore, one of the most relevant issues in the Italian IP system is the possibility to apply for interim measures and commence proceedings on the merits on the basis of a patent application.
Rossella Solveni, attorney at law and member of the Milan Bar Association, has been with Rapisardi Intellectual Property since 1998. With several years of experience in the IP legal consultancy field, she directly handles court litigation in Italy while coordinating and supervising litigation in foreign countries. Her activities include dispute resolution, arbitration, contracting and extrajudicial procedures for patents, utility models, designs, trademarks, domain names and all internet-related issues. She is fluent in Italian, English and French.
Rossella Solveni Attorney at law r.solveni@rapisardi.com +39 02 763011 Rapisardi Intellectual Property Italy www.rapisardi.com
Giuseppe Mercurio, nuclear engineer and European and Italian patent attorney, joined Rapisardi Intellectual Property in 2002. Highly skilled in patent drafting, filing and prosecution, and with extensive experience in all IP-related matters, he provides assistance in litigation and all extrajudicial procedures for patents, designs and utility models, including oppositions, assignments and licensing. A member of the International Association for the Protection of Intellectual Property, he is also a technical expert before the Court of Milan. His particular area of technical expertise is mechanics. He is fluent in Italian, English and French.
Giuseppe Mercurio Patent attorney g.mercurio@rapisardi.com +39 02 763011 Rapisardi Intellectual Property Italy www.rapisardi.com
Montenegro
Montenegro
By Lidija B Djeric, Popovic Popovic Samardzija & Popovic, Belgrade 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The owner of a patent or holder of an exclusive licence can institute civil proceedings against any person infringing its right to the patent. Preliminary injunctions and measures to secure evidence are provided by the Law on Patents. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Cases concerning patent infringement in Montenegro have been rare since the country declared its independence on 3rd June 2006. This declaration officially terminated the former State Union of Serbia and Montenegro. The Montenegrin Intellectual Property Office officially commenced work on 28th May 2008 and the new Law on Patents came into force on 8th November 2008. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Matters concerning patent validity and patent infringement are handled separately. Patent validity falls under the competence of the administrative courts, while patent infringement is dealt with by the civil courts of first instance. The commercial courts are competent to handle disputes between legal entities, while the courts of general competence deal with disputes involving natural persons. 4. To what extent is cross-examination
of witnesses permitted during proceedings? The Montenegrin courts have little experience of dealing with patent infringement cases. According to the Law on Civil Procedure, after answering the general questions, a witness shall be invited to discuss the relevant facts, which may be followed by the witness being asked additional questions in order to confirm, supplement or clarify particular issues. The court may have the witnesses confront each other if important facts from their statements conflict. 5. What role can and do expert witnesses play in proceedings? In patent infringement matters, expert witnesses play a significant role, since the judges often rely on expert opinion in respect of patent infringement. 6. Is pre-trial discovery permitted? If so, to what extent? No pre-trial discovery is provided for in Montenegro. Evidence is presented in court proceedings. The securing of evidence can be requested in a plaint, or even earlier, but such plaint must be filed within 30 days of the execution of the request to secure evidence. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is not applied by the Montenegrin courts. The Law on Patents provides that the scope of protection acquired by a patent shall be determined by the content of the claims, whereby the description and drawings shall be used to interpret the claims. 8. Are certain patent rights (eg, those relating to business methods, software
Montenegro
and biotechnology) more difficult to enforce than others? According to Article 5(4) of the Law on Patents, business methods and computer programs are not to be considered as inventions within the meaning of this law. We believe that it is more difficult to enforce technically complex patents. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are not bound by previous decisions made in similar cases. Rulings of the Supreme Court are published and the lower courts value these rulings in similar cases. 10. Are there any restrictions on who parties can select to represent them in a dispute? The parties may undertake actions in the proceedings personally or through their attorneys. Foreign legal entities and natural persons must be represented by the attorney at law. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Montenegrin courts are not obligated to consider the reasoning of courts in other jurisdictions that have dealt with similar cases. However, as there is little court practice in patent dispute matters, the courts are likely to monitor legally valid and binding decisions from other jurisdiction. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The defendants might delay proceedings by starting proceedings before the administrative courts for annulment of the infringed patent. These proceedings shall be considered as preliminary questions in the patent infringement litigation until a legally valid and binding decision is issued in respect of the validity of the subject patent. In order to try to avoid such delays in litigation, the plaintiff might request a preliminary injunction to prohibit further infringing actions. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions can be granted on request before filing a lawsuit for patent infringement (providing that the litigation is subsequently started within 30 days of the execution of the preliminary
injunction), together with the lawsuit or even during the litigation. The plaintiff must prove that its right has been or will be infringed. Pending a final decision, the court may order the following preliminary injunctions: Seizure and/or withdrawal from the market of products made or obtained by patent infringement. Seizure and/or withdrawal from the market of implements (eg, equipment, tools) predominantly used in the protection of infringing products. Prohibition of further infringing acts. The court may ask the plaintiff to furnish additional evidence of the patent infringement or of the demonstrable risk of patent infringement, and may order it to provide a security bond in order to prevent any abuse. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The estimation of court costs and attorneys fees depend on the value of the dispute. The translation, verification and certification costs for documents and the costs to obtain expert opinions should be also taken into account. A rough estimation of the cost to reach a first instance decision is between 12,000 and 20,000. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The losing party must compensate the expenses of the other party. When deciding which expenses shall be compensated, the court shall take into consideration only the expenses that were necessary to conduct the proceedings. Such expenses and their amounts shall be decided by the court after careful consideration of the circumstances. The attorneys fees are calculated according to the Fee Tariff; the real costs of engagement of representative as well as translation and certification costs are often much higher than costs determined by court. 16. What are the typical remedies granted to a successful plaintiff by the courts? According to the Law on Patents, the following remedies are available following an infringement claim: Establishment of the fact that a patent infringement exists. Prohibition of acts constituting patent infringement. Compensation for damages caused by infringement.
Montenegro
Publication of the court decision at the defendants expense. Seizure and/or destruction of products made or obtained by means of patent infringement (but no compensation). Seizure and/or destruction of material or articles (eg, equipment, tools) predominantly used in the creation of infringing products (but no compensation).
competence, and within eight days in proceedings before the commercial courts. It takes more than one year to obtain an appeal decision. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties are not obligated to undertake any type of mediation/arbitration prior to brining a case before the courts. During the procedure the court will encourage the parties to reach a settlement. If the court considers that the dispute may successfully be resolved through mediation, it shall instruct the parties to participate in the meditation procedure and interrupt the proceedings. If the parties do not resolve the dispute through mediation, the court will schedule a new hearing within 90 days. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Montenegrin courts have little experience in patent infringement matters and in future they are not likely to be propatentee since the local courts usually take the side of domestic companies. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Montenegro has not signed the London Agreement on Translations. However, only translations of the claims of a European patent must be furnished within three months of the date on which the granted European patent was published. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Agreement on the Extension of European Patents to Montenegro entered into force on 1st March 2010. An extension to Montenegro is available for any European and international patent application filed on or after 1st March 2010.
17. How are damages awards calculated? Is it possible to obtain punitive damages? The relevant provisions of the Law on Contracts and Torts shall apply to damages, which comprise actual loss and lost profits. If the infringement was committed intentionally or as a result of gross negligence, the plaintiff may claim up to triple the amount of the actual losses and lost profits. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? A permanent injunction can be ordered only in the court judgment, and will take effect once the judgment is legally valid and binding. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It can take more than two years to obtain a first instance decision. In order to expedite the proceedings, it is possible to ask the court to issue a partial decision in respect of the legal grounds of the plaint, while the compensation for damages can be determined during further proceedings. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party always has the right to appeal within 15 days of the decision in proceedings before the courts of general
Lidija Djeric was born in 1970 and admitted to the Bar in 1997. She obtained an LLB from the Education: Faculty of Law, University of Belgrade in 1996. She is a member of the International Association for the Protection of Intellectual Property, the International Trademark Association and the Chartered Institute of Patent Agents. Her practice areas include intellectual property, litigation, corporate law, bankruptcy and liquidation. She speaks English.
Lidija B Djeric Associate lidija.djeric@ppsp.rs +381 11 3239 442 Popovic Popovic Samardzija & Popovic Montenegro www.ppsp.rs
Netherlands
Netherlands
By Peter Claassen, Martin Hemmer and Elitte Vaal, AKD, Breda 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In the Netherlands, an effective system of short notice proceedings is in place which makes it possible to obtain an injunction in four to eight weeks. As a result of the EU IP Rights Enforcement Directive (2004/48/EC), the option to obtain ex parte injunctions has been introduced into the Dutch legal system for IP rights. However, short notice proceedings and ex parte proceedings are relatively rare for patent infringements in comparison with the enforcement of other IP rights, due to the complexity of most patent cases. Another reason for this may be that the Hague District Court provides for accelerated proceedings on the merits of the case (the VRO regime) in patent infringements. This procedure follows a pre-set timeframe and, although it has some limitations, it is highly effective because it usually results in a verdict within one year. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases are dealt with at first instance by a specialised chamber of the Hague District Court. Therefore, the judges level of expertise is high. Judgments of the Hague District Court can be appealed to the Hague Court of Appeal (together, the Hague patent courts). After appeal proceedings, appeal on cassation may be instituted with the Supreme Court, but only with regard to issues of law. 3. How do your countrys courts deal
with validity and infringement? Are they handled together or separately? There is no requirement for Dutch courts to deal with validity and infringement together. However, if opposition proceedings are pending regarding a European patent, in most cases the court will stay the proceedings pending the decision in the opposition proceedings. 4. To what extent is cross-examination of witnesses permitted during proceedings? In the Netherlands, it is possible to file a request to initiate witness examinations before the start of legal proceedings. Cross examination is possible in standard proceedings on the merits of the case, but not in short notice proceedings. 5. What role can and do expert witnesses play in proceedings? Similar to the witness examinations, it is possible to file a request to obtain the opinion of an expert appointed by the court before the start of legal proceedings. During the proceedings, experts can be heard on the courts initiative and at the request of the parties. These can be experts appointed by the courts or testifying on behalf of a party. In accelerated proceedings on the merits of the case there is only limited room to hear experts (testifying on behalf of a party) during the scheduled pleadings. 6. Is pre-trial discovery permitted? If so, to what extent? Since the implementation of the IP Rights Enforcement Directive, the court can order preliminary measures to preserve evidence in respect of the alleged infringement, subject to the protection of confidential information. Such measures may include a detailed description and the taking of
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samples, and the physical seizure of infringing goods and, in appropriate cases, materials used in the production and/or distribution of these goods and documents relating thereto. Usually these measures are taken without the allegedly infringing party being heard. However, the applicant will be given access to the information and materials obtained only after the other party has been heard by the court. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Yes, the Dutch courts apply a test to assess whether an implementation of the invention should be considered equivalent. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Under the Patent Act 1995, two types of patent exist: traditional inventions and processes. Insofar as an invention and a process qualify as patentable, no difference exists in the scope of protection and enforceability. Business matters and software as such are not patentable under the Patent Act. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Dutch courts are not formally bound by previous decisions in cases which cover similar issues. However, all patent cases are dealt with by the Hague District Court at first instance and on appeal by the Hague Court of Appeal. Since the same courts deal with all patent litigation, it is highly unlikely that similar issues would be treated differently. However, the judges of the Hague patent courts regularly speak at conferences and have stated that they follow with great interest developments in the UK and German patent courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? The Civil Procedure Rules require that both the plaintiff and the defendant be represented by a lawyer admitted to the Bar. Given the often technical nature of patent litigation, the lawyers are usually assisted by patent agents who have a statutory right to speak on behalf of the parties during the oral hearings. The only exception is for summary proceedings the defendant may defend itself and can bring in other advisers. 11. Are the courts willing to consider the
reasoning of courts in other jurisdictions that have dealt with similar cases? The Hague patent courts consider the reasoning of courts in other jurisdictions that have dealt with similar matters. It is well known that historically, the UK and German patent courts have used different strategies to determine the scope of protection of a patent granted under the European Patent Convention. The UK approach involved a literal interpretation of the claims, while German courts focused on the subject matter of the invention. In the Netherlands, the underlying reasoning of the invention has been prominent in determining the scope of protection. The Protocol on the Interpretation of Article 69 of the European Patent Convention has resulted in changes to both the UK and German approaches. Article 69 determines that patents should not be interpreted as meaning that the extent of the protection is to be understood as that defined by the strict, literal meaning of the wording used in the claims; nor should it be taken to mean that the claims serve only as a guideline. Rather, it determines that it is to be interpreted as defining a position between these extremes which combines fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. In addition, the description and drawings of the patent (together with the history of the granting procedure) can help to resolve any ambiguity in the claims. The Dutch courts apply the protocol and keep a close eye on developments in the United Kingdom and Germany. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The vast majority of patent cases are summary proceedings and accelerated proceedings. The Hague patent courts strictly enforce the VRO regime. At the start of the case, the court issues a timetable to which the parties must adhere no deviations are allowed. As a consequence, defendants have no opportunity to delay proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary measures such as injunctions and seizure of evidence can be obtained. An injunction can be obtained if an urgent interest is present. In the Netherlands, an urgent interest is presupposed to be present in the first year.
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Over the last four years, few ex parte injunctions have been granted by the Hague patent courts. The reason for the court to be cautious when issuing ex parte injunctions in patent infringement cases lies in the complexity of the subject matter, which is often not fully disclosed by the plaintiff. Preliminary measures, such as measures to preserve evidence or to obtain an order for the seizure of goods suspected of infringing a patent, are regularly issued by the Hague courts. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? Is it possible for the successful party in a case to obtain costs from the losing party? The costs of patent litigation consist mainly of two components: attorneys fees and the fee of the patent agents. In relatively simple cases the costs vary between 50,000 and 150,000. In pharmaceutical and biotechnical cases the costs of litigation easily reach amounts of between 250,000 and 800,000. The judgment holds an executable title with regard to the costs of litigation. The winning party obtains a money order. 15. What are the typical remedies granted to a successful plaintiff by the courts? In patent cases the typical remedies are an injunction and the distribution of earned profits or compensation of damage inflicted on the patent holder. All court orders are issued on pain of serious penalties; these are easily enforceable and therefore effective. 16. How are damages awards calculated? Is it possible to obtain punitive damages? In accordance with international treaties (eg, the Agreement on Trade-Related Aspects of IP Rights), the infringer must pay the patent holder damages adequate to compensate for the injury that the patent holder has suffered due to the infringement. This applies only to infringers which knowingly, or with reasonable grounds to know, engaged in infringing activity. Under Dutch law, the right to compensate for damages and the right to obtain the surrender of profits cannot accumulate. The patent holder has a right to choose between the distribution of earned profits or compensation for damages caused. So that the plaintiff can make this choice, the court will order the infringing party to provide a full account of all relevant
income realised from the infringing acts. Because the amount of profits can be calculated more easily than the amount of compensation, it is used as an alternative for the compensation of damages. The surrender of profits is calculated by calculating the net or gross profits (depending on the claim) made from the sale of the infringing products by the infringer. The court may also order the infringer to pay the rights holders expenses, including the appropriate attorneys fees, even where the infringer did not knowingly, or did not have reasonable grounds to know, engage in infringing activity. Sometimes, surrender of profits is considered to be punitive damages. Apart from this, no punitive damages can be obtained. 17. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions are regularly issued by the courts in order to stop the infringement of a patent right. Courts can hand down a permanent injunction on condition that it is claimed by the rights holder or a party authorised by the rights holder. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It takes between 18 months and two years for a judgment to be rendered in a normal proceeding on the merits. The proceeding is initiated if a writ of summons is served containing the arguments and claims of the plaintiff. Thereafter, the defendant files a statement of defence and possible counterclaims. Based on these written documents, the court decides whether additional written briefs may be exchanged to explain the arguments and claims further, or whether parties must explain their arguments, claims and counterclaims in an oral hearing. The court then renders its final judgment six weeks later. Parties can expedite this proceeding if they allow the other party only limited extensions for the exchange of briefs. The party initiating proceedings on the merits has the option to choose the VRO regime by requesting the court to apply this procedure before it initiates the proceeding. If the VRO regime is chosen, the court preschedules the data to serve the writ and file the briefs, and schedules the oral hearing. After this decision, parties no longer have the opportunity to extend the timeframe.
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Patent disputes concerning invalidity are suitable for ADR because under the Patent Act, the patent holder can abandon its patent or patent application
Special procedural rules apply to this type of proceeding. The accelerated proceeding is characterised by the fact that the parties must file all of their legal argument and exhibits at the earliest opportunity. Under the VRO regime a judgment will be issued between nine and 12 months after the writ was filed. 19. Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? Disputes can be reviewed in full by the Hague Court of Appeal. Parties can file an appeal within three months of the first instance judgment. An appeal takes about 18 months. There is no separate accelerated proceeding for patent cases on appeal, although the parties can ask the court to expedite the appeal proceedings. 20. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? Under Dutch law, the parties are not obliged to undertake any type of mediation and or arbitration. The Patent Act 1995 does not mention ADR and grants the authority to declare a patent invalid only to the court. However, parties can always agree on ADR. Patent disputes concerning invalidity
are suitable for ADR because under the Patent Act, the patent holder can abandon its patent or patent application. In addition, patent disputes concerning licence agreements can be subjected to ADR. 21. In broad terms, how pro-patentee are the courts in your jurisdiction? In the Netherlands, the courts often nullify patents they have found a good balance in determining the scope of protection of the rights of the patentee. 22. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Netherlands has signed up to the London Agreement. The Netherlands falls under the Type 2 jurisdictions, as it does not have English, French or German as an official language. The Netherlands has selected English as its language for translation, but requires translation of the claims into Dutch. 23. Are there any other issues relating to the enforcement system in your country that you would like to raise? In a VRO regime the parties particularly the plaintiff must be aware that all grounds for the claim, together with the supporting evidence, must be presented to the defendant on the date on which the case is introduced in court.
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Peter Claassen studied law at Nijmegen University, where he obtained his masters degree. He also obtained an LLM from Miami Law School. In 1984 he worked for Arnall Golden & Gregory, Atlanta, and in 1985 he started working at AKD, becoming a partner in 1992. Mr Claassens main expertise is in IP areas such as patents, trademarks, designs and copyright, and he is also an experienced litigator. Further, he has wide experience with the legal aspects of brand development, parallel trading and drafting of IP agreements. His clients include both nationally and internationally renowned companies. Mr Claassen chairs both the IP and technology practice group and the retail and consumer products branch group, and is a member of leading organisations such as the International Trademark Association and MARQUES. He regularly teaches on trademark and patent law, and lectures at national and international seminars.
Peter Claassen Attorney at law pclaassen@akd.nl +31 88 253 5980 AKD Netherlands www.akd.nl
Martin Hemmer graduated in law from Radboud University Nijmegen in 2002, having spent some time studying at Montpellier 1 University. His studies focused on IP rights. Mr Hemmer joined AKD as a lawyer in 2003. As a member of the IP and technology practice group, he handles a variety of legal cases concerning breaches of IP rights affecting trademarks, copyright and patents. He has also pursued cases in the field of media law, relating particularly to unlawful publications. Another aspect of his work focuses on IP-related agreements, such as licensing contracts and research and development agreements between businesses or groups of companies. Mr Hemmer leads courses and regularly publishes and lectures on intellectual property. He is a member of several professional organisations, including the Benelux Association for Trademark and Design Law) and the European Communities Trademark Association.
Martin Hemmer Attorney at law mhemmer@akd.nl +31 88 253 5916 AKD Netherlands www.akd.nl
Elitte Vaal joined the IP and technology practice group in October 2009. During her legal studies Ms Vaal specialised in IP law, as well as media, privacy and advertising law. She also spent a term at Tulane University, New Orleans, where her focus was on international aspects of IP law.
Elitte Vaal Attorney at law evaal@akd.nl +31 88 253 5908 AKD Netherlands www.akd.nl
Poland
Poland
By Katarzyna Karcz, Patpol, Warsaw
1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The holder of a European patent which is effective in Poland enjoys basically the same rights as the holder of a patent issued by the Polish Patent Office (PPO). In case of infringement, a lawsuit may be brought against an alleged infringer before a civil court. Prior to initiating court action, it is advisable to request a preliminary injunction in order to restrain the alleged infringer from further infringement. Another effective way to stop infringing acts is to use border measures undertaken in accordance with the EU Customs Regulation (1383/2003). 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? There are no special patent courts in Poland. Patent infringement matters are handled by common civil courts and the judges adjudicating patent infringement cases have no technical background. Therefore, the court may appoint independent experts to submit written or oral opinions when specialist knowledge is necessary. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Infringement and validity cases are heard by different authorities in Poland: infringement cases are handled in civil proceedings before a civil court, while invalidation proceedings are dealt with in administrative proceedings before the Litigation Division of the PPO. PPO decisions may be subject to appeal to the
administrative courts. In practice, a pending case on the validity of a patent may influence the infringement proceedings. If the alleged infringer claims invalidity of the patent at issue in the course of the infringement proceedings, the civil court may suspend the infringement proceedings until the invalidation case is resolved. 4. To what extent is cross-examination of witnesses permitted during proceedings? In Polish civil proceedings, witnesses testify about facts that may be relevant to the litigation. The party calling a witness is obliged to define precisely all facts to which that witness will testify during the trial. First, the court may ask a witness general questions about the case; the witness then testifies by responding to the parties questions. Each witness testifies separately. Witnesses whose testimonies contradict each other may be questioned by the court. 5. What role can and do expert witnesses play in proceedings? The role of a court-appointed expert is essential. Proceedings related to patent infringement frequently involve expert opinions. The judges examining patent infringement matters have no technical education and need the opinion of a person trained in the relevant technical field. The appointed expert may be chosen from among the registered Polish patent attorneys or any other well-qualified specialists in the relevant field. The court can also turn to a research or scientific institute for expertise. The expert opinion is usually requested in writing, but the expert may subsequently be examined by the court to verify his or her opinion. The experts role is to explain technical aspects of the invention and the allegedly infringing product or method. Although the
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assessment of the infringement is the courts domain, in practice, the court will rely on the opinion of an expert witness. 6. Is pre-trial discovery permitted? If so, to what extent? A patent owner may demand that the court require the defendant or a third party to provide information regarding: The origin of the infringing goods. The distribution network of the infringing goods. The names and addresses of manufacturers and suppliers. The amount and price of goods which were manufactured, sold or put on the market. During court proceedings the court may also order a party to submit any relevant documents in its possession, unless the documents contain state secrets. If a party to the proceedings refers to trade books, the court may require the submission of those books. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Under Polish patent law, particular emphasis is placed on the clear and unequivocal wording of patent claims. The strict interpretation of patent claims is incompatible with the concept of the interpretation of patent exclusivity set out in the Protocol on Interpretation of Article 69 of the European Patent Convention (EPC). Given that the EPC is binding in Poland, the practice of the PPO and the courts should be consistent with the practice resulting from the EPC. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? The enforcement of software patents may be difficult because the PPO is reluctant to grant protection to software patents; thus, such patents may be more susceptible to invalidation by the PPO. 9. How far are courts bound by previous decisions in cases that have covered similar issues? As a rule, Polish courts are not bound by the opinions and decisions of other courts in similar cases. The exceptions are decisions of the Supreme Court and the Supreme Administrative Court. In practice, the opinions and decisions of other courts are taken into consideration when ruling in similar cases. Consistent and uniform court
rulings guarantee the certainty and reliability of the law. 10. Are there any restrictions on who parties can select to represent them in a dispute? In patent infringement cases parties may by represented in court by professional representatives (ie, advocates, legal counsel and patent attorneys). A legal entity may also be represented by an employee. The only exception is cassation before the Supreme Court, which may be brought only by an advocate or legal counsel. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Polish courts are not bound by the reasoning of foreign courts that have tried similar cases. However, foreign court judgments on similar legal issues may be presented as auxiliary arguments. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The basic way to delay a court case is to start litigation proceedings before the PPO seeking invalidation of the patent in question. As the two issues are dealt with by two separate authorities, the commencement of invalidation proceedings often causes the suspension of the infringement proceedings until the issue of a decision regarding validity. The court is obliged to respect a final decision on the grant of a patent until the patent has been declared valid. Thus, it is questionable whether the court should suspend infringement proceedings on the grounds that invalidation proceedings are pending. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A patent holder is entitled to file a request for a preliminary injunction before initiating court proceedings or simultaneously with those proceedings. If the request is filed before court proceedings are initiated, the court granting the preliminary injunction will appoint a twoweek deadline for filing a statement of claim with the court. If the plaintiff fails to comply with the deadline, the preliminary injunction will lapse. In order to obtain a preliminary injunction, the patent holder should convince the court that its claim is likely to succeed. At this stage of the proceedings it
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is not required to prove the claim. The patent holder must indicate its patent rights through an official document and should also indicate that its exclusive rights have been infringed. Preliminary injunctions should not aim to satisfy the plaintiffs claims. If the plaintiff loses the lawsuit or decides to withdraw the court action before the verdict, the alleged infringer is entitled to demand compensation for damages arising from the preliminary injunction. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? It is difficult to predict the level of costs associated with infringement proceedings. The costs depend on the complexity of the matter and the value of the litigation. The costs connected with preparation and lodging of suitable documents, translations and court attendance by professional representatives, as well as the court fees, must all be taken into account. 15. Is it possible for the successful party in the case to obtain costs from the losing party? As a rule, the losing party is burdened with the costs of the court proceedings. These costs cover the court fees and the costs of representation. The costs of representation are limited to one representative and are calculated in accordance with the official rates provided by the law. The losing party may also be obliged to reimburse the winning partys expenses. 16. What are the typical remedies granted to a successful plaintiff by the court? In infringement proceedings the plaintiff may demand: Cessation of the infringement. Surrender of unlawfully obtained profits. Compensation for damages, if the infringement was deliberate. At the plaintiffs request, the court may order publication of the court decision on infringement, either in whole or in part. The court may also decide what will happen to the infringing products or other means and materials which were used for their manufacture. In particular, the court may order the withdrawal from the market and destruction of the infringing products. 17. How are damages awards calculated? Is it possible to obtain punitive damages?
Damages for patent infringement may be either calculated in accordance with general principles of Polish law or awarded as an equivalent of the amount of money corresponding to the licensing royalties or other suitable remuneration which would be due to the patent holder. According to the general rules, compensation for damages shall include actual lost earnings as well as any profits which the patent holder would have earned had the infringement not occurred. The plaintiff must prove the direct causal relationship between the damage that it has suffered and the infringing actions. The monetary remedies have compensatory rather than punitive character. There are no punitive damages under Polish law for patent infringement. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? A permanent injunction is issued as a result of full examination of the case and is granted within the scope of the claims raised by the plaintiff in the statement of claims. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Patent infringement proceedings in Poland can take between one and two years until a first instance decision is issued, depending on the complexity of the case, the strategy undertaken by the parties and the number of cases pending before the court. However, there is no general rule and in some cases it may take longer to complete the proceedings. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? A decision of the first instance court may be subject to appeal to a second instance court by both parties. The appeal should be filed within two weeks of receiving the judgment in writing, along with the reasons. The second instance court examines all substantive and procedural issues, the breach of which may provide grounds for the appeal. In general, the court of appeal reviews the case within the limits of the appeal. Only nullity of the appealed court decision is considered ex officio. It may take approximately one year before a verdict is issued in the appeal proceedings. Under some circumstances explicitly set forth by the law, a decision of the second
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instance court may be subject to cassation to the Supreme Court. Cassation is an extraordinary legal remedy and may be based only on a breach of substantive law involving the incorrect interpretation or application of substantive law or a breach of procedural provisions which had a major impact on the result of the case. A cassation should be filed within two months of receipt of the appeal judgment. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing acase before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake any type of mediation or arbitration before bringing a case before the court. If both litigating parties are business entities, the patent holder is obliged to send a cease and desist letter to the alleged infringer before initiating the litigation. A cease and desist letter is a final demand that the alleged infringer stop infringing practices and satisfy the patent holders demands voluntarily. A copy of the cease and desist letter, along with the reply of the alleged infringer, should be attached to the statement of claims lodged with the court. The cease and desist letter is perceived as evidence of the plaintiffs goodwill to settle the matter amicably. In practice, ADR is not commonly used for patent disputes in Poland. 22. In broad terms, how pro-patentee are
the courts in your jurisdiction? The courts in Poland are obliged to respect the exclusive rights deriving from a patent. The courts should not be biased and are obliged to review cases on their merits. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Poland has not yet signed the London Agreement and is not expected to do so in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Court proceedings relating to the enforcement of patents in Poland are very formal. According to the rule of evidence preclusion, all statements relevant to the case must be mentioned in the statement of claims and all evidence must be attached to support those statements. The parties are generally precluded from submitting further evidence once the proceedings have commenced. The plaintiff may submit further evidence during the course of the proceedings only where the evidence is unlikely to have been known at the time of bringing the action or arose only after the action had been started. This article was co-authored by Malgorzata Zielinska-Lazarowicz, formerly a patent and trademark attorney with Patpol.
Katarzyna Karcz has an MSc in civil engineering from Warsaw University of Technology, a certificate of postgraduate IP and studies from Jagellonian University, Krakow. She has been a Polish patent and trademark attorney since 1999 and a European patent attorney since 2004. Formerly employed by the Polish Patent Office and now a partner at Patpol, Ms Karczs activities focus on the prosecution and enforcement of mechanical patents. In June 2009 she was appointed the managing director of Patpol. A member of the Polish Chamber of Patent Attorneys and the International Association for the Protection of Intellectual Property (AIPPI). Ms Karcz is also a vice president of the Polish group of the AIPPI. She regularly participates in the AIPPIs work and frequently attends seminars, forums and congresses.
Katarzyna Karcz Patent attorney katarzyna.karcz@patpol.com.pl +48 22 644 9657 Patpol Poland www.patpol.pl
Romania
Romania
By Margareta Oproiu, Cabinet M Oproiu, Bucharest 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The owners of European patents validated in Romania enjoy full and exclusive rights of exploitation over their patents during the term of validity that is, they can prohibit third parties from performing the following acts without their consent: For product inventions, the manufacture, marketing, offering for sale, use, import or storage for the purposes of selling, offering for sale or use. For process inventions, the use of the process. If the subject matter of the European patent validated in Romania is a process, the protection conferred by the patent shall extend to products directly obtained by such process. The patent holder can make use of the following procedures: A cease and desist letter. Civil proceedings, including claims for patent infringement, damages and interim injunctions. Seizure at the border. Infringement proceedings may be instituted by the patent owner. However, the beneficiary of an exclusive right to work the patent may, unless the licensing agreement prevents it, institute infringement proceedings if the patent owner does not. The patent owner may request the court to: Order interim measures where there is a risk of infringing the rights arising from a patent and if such infringement risks
causing irreparable prejudice, or if there is a risk that evidence may be destroyed. Order specific measures to stop acts of patent infringement performed by a third party by placing the infringing goods on the market. Available remedies in cases of patent infringement include a permanent injunction prohibiting the manufacture, marketing and use of anything constituting patent infringement, confiscation of the infringing goods and the destruction thereof.
However, no order for the removal or destruction of infringing goods may be given if such goods belong to persons who use them in good faith for personal or domestic purposes. In a patent infringement case, the burden of proof rests with the claimant. However, if the patent subject matter is a process to obtain a new product, the burden of proof is reversed and, in the absence of proof to the contrary, any identical product produced without the consent of the patent owner shall be deemed to have been obtained by the patented process in at least one of the following circumstances: The product obtained by the patented process is new. There is a substantial likelihood that the identical product was made by the process and the patent owner has been unable through reasonable efforts to determine the process actually used. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? In civil proceedings, three levels of court have jurisdiction. Currently, there are IP specialist divisions of the courts in which specialist IP judges have jurisdiction for all
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IP-related cases. However, in patent litigation the court usually appoints a technical expert in order to clarify the technical aspects under consideration. The recent decisions of specialist divisions show a good level of expertise from the judges. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The Romanian courts specialising in IP matters usually deal with patent validity and infringement in the same proceedings. The invalidity action may be brought either independently or as a defence or counterclaim to a patent infringement claim. The infringement proceedings will be stayed until the final decision on validity. 4. To what extent is cross-examination of witnesses permitted during proceedings? During the litigation, in order to assess the patent infringement, the extent of damage and generally all aspects of the infringement, all evidentiary means are lawfully allowed: cross-examination, written evidence, ex parte opinions and expert evidence ordered by the court or requested by the parties. The Civil Procedural Code imposes no restrictions on the evidence or opinion of experts. 5. What role can and do expert witnesses play in proceedings? Written expert opinions may be submitted by the parties to support the technical aspects in proceedings. The expert may attend the court-appointed experts meetings and may submit statements and documents in support of the courtappointed experts report. 6. Is pre-trial discovery permitted? If so, to what extent? The Romanian civil system sets out no pretrial discovery procedure. The burden of proof lies with the claimant, which must produce evidence regarding the imitation or illegal commercial use of its patented invention. Infringement can be proven by any means. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? In a patent infringement action, the scope of patent protection refers to the content of the claims. However, according to the Patent Law, for the purpose of determining the extent of protection, account shall be taken of any element which is equivalent to an element specified in the claims. In cases
where the infringing product or method is not completely covered by the wording of the patent claims, equivalent infringement is referred to. The courts appoint appropriate technical experts to determine the patent infringement either literally or according to the doctrine of equivalents. The parties are allowed to appoint their experts, who may submit their own opinions on the infringement and on the court experts report. 8. Are certain types of patent right (eg those relating to business methods, software and biotechnology) more difficult to enforce than others? No one type of patent right is harder to enforce. All patents enjoy the same protection and are equally enforceable. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Case law is not recognised as a source of rights by the Romanian courts. However, case law may be used as a reference to clarify the case. Particularly when granting supplementary protection certificates (SPCs) as governed by EU regulations, relevant EU case law is considered. 10. Are there any restrictions on who parties can select to represent them in a dispute? The legal representative in a patent dispute may have the right to practise before the court. Attorneys at law admitted and enrolled in the Romanian Bar Association can represent the parties before the court. Patent attorneys enrolled in the National Chamber of IP Attorneys can also represent parties at the first instance and appeal levels, but not before the High Court of Cassation and Justice. The patent attorneys opinions are allowed by the court, and it is recommended that the claim be prepared jointly by the patent attorney and the barrister. 11. Are the courts willing to consider the reasoning of courts in other jurisdiction that have dealt with similar cases? The Romanian courts are not bound by decisions of courts in other jurisdictions. However, they may take into consideration foreign decisions on identical issues. 12. How easy is for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The customary strategies of defendants to delay proceedings are to file a counterclaim
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for patent cancellation and to request further technical expertise, occasionally adding new matters that appear to be pertinent to the case. A counterclaim for patent cancellation cannot be avoided. The defendant is allowed only one technical expert, except in cases where the subject matter is difficult to understand or in case of non-literal patent infringement. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A preliminary injunction is available where, during civil infringement proceedings, there is an imminent risk of evidence under the defendants control being destroyed, or where it is likely to cause irreparable harm to the rights holder. In such cases the court may order an inspection of the defendants premises, assisted by a court executor, in order to preserve evidence, subject to the protection of confidential information, and, where necessary, subject to a security award in order to provide the defendant with appropriate compensation for any injury caused by such measures. In addition, the court may order a preliminary injunction for cessation of the infringement. In order to obtain a preliminary injunction, it is not necessary to provide complete and unequivocal evidence of the plaintiffs right; rather, it is sufficient to demonstrate the plaintiffs rights beyond reasonable doubt. As an alternative, should the claimant have sufficient evidence or information regarding the infringement, the patent holder can use a preliminary injunction to obtain more information and evidence regarding the actual volume of infringing goods. Within the interim injunction procedure the court can also order the infringer to preserve all evidence in respect of the origin of the infringing goods. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs largely depend on the subject matter, the volume of work and the evidence available or to be found. Usually, for a reasonable level of representation and to prepare a claim, assistance for the first three hearings costs between 10,000 and 15,000, and between 1,500 and 2,000 for each further hearing. For advanced matters for example, in the pharmaceutical field, where related matters may be considered (eg, the incidence of data exclusivity or the existence of a SPC) the
costs are higher. When claiming damages, an official fee of 1% of total damages is payable. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes the successful party may be reimbursed by the losing party in respect of barristers fees, patent attorneys fees and reasonable expenses. 16. What are the typical remedies granted to a successful plaintiff by the courts? Remedies in civil proceedings include a permanent injunction, damages, the seizure and possible destruction of infringing products and comminatory awards. An interim injunction order is valid until the final decision in the main legal action on the merits. Comminatory awards can be granted against the defendant for each day that it fails to comply with the court order. Once final, court decisions are applied by parties or the court executor. Punitive damages are not available in civil proceedings. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The court can grant damages based on the evidence submitted by the plaintiff, on the basis of either the profits lost by the plaintiff or the profits achieved by the defendant. The court usually appoints an expert to advise on the volume of damages, based on the evidence submitted by the parties. Punitive damages are not available in civil proceedings. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? No specific legal provision sets down the conditions for granting a permanent injunction. However, a permanent injunction is commonly granted when the court finds that the patent has been infringed and the patentee has suffered damages. 19. How long does it take to obtain a decision at first instance and it is possible to expedite this process? First instance proceedings for patent infringement may take from 12 to 18 months if no counterclaim for cancellation of the patent is filed. There is no way to expedite these proceedings.
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20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? According to the Civil Law, any decision at first instance may be appealed. Within the appeal, no new matter may be submitted only the correctness of the first judgment may be the object of the appeal. Appeal proceedings may take less time than the first instance proceedings, usually up to one year. The Civil Law allows a second appeal before the High Court of Justice and Cassation, which must relate exclusively to the review of questions of law. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake mediation or arbitration before litigating before the court. The mediation or arbitration of a patent dispute is possible,
but no case law has been created to date. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Romanian courts are considered to be pro-patentee. In the past two years, the courts have reversed around 10 Patent Office decisions to reject SPC requests based on a better understanding of the SPC regulation. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is to do so? Romania has not signed up to the London Agreement. 24. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? Border seizure is the most efficient way to prevent infringing products from entering Romania. The relevant customs measures are well implemented and enforced.
Margareta Oproiu is a qualified European patent attorney. She graduated from the University of Bucharest with a PhD in physics, and until 1990 worked as a researcher for technologies using plasma physics. She now has vast experience in all aspects of domestic and foreign IP counselling. Ms Oproiu is particularly strong in patent and trademark litigation, with an in-depth knowledge of both patent matters and the legal aspects of patent infringement and unfair competition, and is involved in cancellation and infringement actions. According to a global annual survey conducted by Managing Intellectual Property magazine, for the past six years the firm has been ranked on the first tier in the patent and trademark fields. Ms Oproiu is a member of the National Chamber of Romanian Industrial Property Attorneys Association, the Institute of Professional Representatives before the European Patent Office, the European Communities Trademark Association, the International Association for the Protection of Intellectual Property and the International Trademark Association.
Margareta Oproiu Founding partner moproiu@oproiu.ro + 40 21 260 28 34 Cabinet M Oproiu Romania www.oproiu.ro
Serbia
Serbia
By Katarina Kostic, Popovic, Popovic, Samardzija & Popovic, Belgrade 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The owner of a patent or holder of an exclusive licence is entitled to commence civil proceedings against any person infringing its right to a patent. The complaint has maximum effect if a preliminary injunction to prohibit further infringing action is obtained during the litigation proceedings. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Court cases concerning patent infringements are rare in Serbia, and therefore no courts specialise in patent infringement or other IP rights cases. Therefore, the Serbian courts do not have a high level of expertise in patent matters. However, patent infringement matters are heard before the higher courts; at first instance, cases concerning the infringement of IP rights are heard by the courts of higher jurisdiction. This is an exception to the general rule, according to which the lower courts are competent at first instance. Patent infringement matters between legal/commercial entities at first instance fall under the jurisdiction of the Commercial Court, a higher-level court. Patent infringement matters involving natural persons are heard by the courts of general competence, so the Higher Court is competent at first instance. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? In Serbia, patent validity and patent
infringement are dealt with in separate procedures conducted before different courts. At first instance, patent validity is dealt with by the IP Office in an administrative procedure. At second instance, patent validity is considered in an administrative court procedure held before the Administrative Court. Patent infringement matters are dealt with in a litigation procedure before the civil courts either the Commercial Court (for disputes between legal persons and commercial entities) or the Higher Court (for disputes involving one or more natural persons). 4. To what extent is cross-examination of witnesses permitted during proceedings? In procedures before the Commercial Court and patent matters in general, the hearing of witnesses is rare, as the procedures and evidence are mostly in written form. However, if there is a need to do so, a witness can be examined. The rules of procedure do not explicitly mention cross-examination. The examination procedure is that the witness first gives his or her statement, and then the judge and the parties can ask questions in order to check or clarify this statement. 5. What role can and do expert witnesses play in proceedings? Experts play an important role in patent infringement matters, as most of the issues that arise require expertise. In order to determine or clarify facts that require expert knowledge, the court must engage an expert and often bases its decision on his or her opinion. 6. Is pre-trial discovery permitted? If so, to what extent? There is no pre-trial discovery procedure in
Serbia
Serbia. Evidence is collected in court procedures. It is possible to request only the preliminary securing of evidence. The Patent Law provides that if the plaintiff can prove that it is probable that its right has been infringed and that evidence may be destroyed or difficult to collect, it can request the court to secure evidence by ordering an inspection of the alleged infringers premises, books, documents and database, as well as seizure and examination. It is possible to ask the court to secure evidence even before filing a complaint, provided that such complaint is filed within 30 days of submission of the request. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Patent Law does not explicitly provide for the doctrine of equivalents. It provides only that the scope of protection conferred by a patent is determined by the claims, while the description and drawings shall be used to interpret the claims. To our knowledge, the courts have not applied this doctrine. However, for European patents, the court may apply this doctrine on the grounds of Article 69 of the European Patent Convention (EPC) and the Protocol on the Interpretation of Article 69, according to which for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is an equivalent to an element specified in the claims . 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There is a unique procedure for the enforcement of all patent rights. However, business methods and software as such are not considered to be inventions (according to the Patent Law and Article 52 of the EPC). Therefore, in cases of patents for computerimplemented inventions or business methods, it is likely that it would be more difficult to enforce such patents as the question of their patentability could be raised. Moreover, it is certainly more difficult to enforce technically complicated or complex patents, especially if a preliminary injunction or the securing of evidence is requested. In order to obtain these measures, a plaintiff must demonstrate that infringement is probable, which is easier for less complicated patents and in matters where the probability of the infringement could be made obvious to the court without an expert report.
9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are generally not bound by other court decisions. However, the lower courts often rely on decisions of the Supreme Court. In addition, if a particular issue is disputed in a large number of cases before the first instance courts, the Supreme Court will adopt and publish a legal position for ruling on the disputed issue. Such legal positions are binding on the lower courts. To date, there are no legal positions concerning patent issues. 10. Are there any restrictions on who parties can select to represent them in a dispute? In Serbia, there are no restrictions concerning the representation of parties before the courts in patent infringement disputes, except in procedures regarding extraordinary legal remedies, in which representation by an attorney at law is necessary. In procedures before the IP Office (which include patent invalidation proceedings at first instance), foreign legal entities and natural persons must be represented by either a representative entered in the Register of Representatives held with the IP Office or a local (Serbian) attorney at law. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Courts in Serbia are not usually willing to consider foreign case law. As the Serbian courts do not have enough experience in patent matters, particularly in matters based on European patents, if a party notifies the court of a decision in a similar case from another EPC jurisdiction, the court should consider the reasoning from that decision. However, the Serbian court cannot base its decision on the foreign decision, as foreign court practice cannot be used as a source of law. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The most efficient way for defendants to delay infringement proceedings is to initiate a procedure for nullity or invalidation of the infringed patent. The nullity procedure is conducted through an administrative procedure before the IP Office (at first instance) and then before an administrative court (at second instance). The court must treat patent validity as a preliminary question and suspend the litigation until a
Serbia
legally valid and binding decision on patent validity has been issued, which may take several years. The plaintiff could try to prevent the negative effects of delay by requesting a preliminary injunction in the lawsuit or immediately upon commencing litigation. If the court allows the injunction and if other factual and legal conditions are met, the prohibition of infringing actions can remain in force during the procedure for patent invalidation (although initiation of a procedure for patent invalidation could serve as legal grounds for cancellation of the issued preliminary injunction). 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Issuance of a preliminary injunction is possible. It may be requested at any time before commencing civil proceedings for infringement (provided that such proceedings are commenced within 30 days of execution of the injunction), together with the lawsuit or during the procedure. The main condition is to prove reasonable probability that the right is or shall be infringed. The court may order the following measures: Seizure and/or withdrawal from the market of products made or obtained by patent infringement. Seizure and/or withdrawal from the market of implements (eg, equipment, tools) used in the production of infringing products. Prohibition of further infringing actions. If there is a risk that the injunction might cause irreparable harm to the defendant, the court may order the plaintiff to place a bond as security in order to prevent any abuse. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? It is difficult to give a general estimation of costs. The court fees depend on the value of the dispute, with a maximum of approximately 4,000. At first instance, court fees are charged for the complaint and the decision, as well as for a request and related decision on the issuance of preliminary injunction. Attorneys fees depend on the complexity of the case, and the costs of the translation, verification and certification of documents could also be significant. The costs to reach a first instance decision can be between 12,000 and 22,000.
15. Is it possible for the successful party in a case to obtain costs from the losing party? The general rule is that a losing party must compensate the reasonable and justified costs of the other party. In its judgment, the court rules on costs. In practice, the court does not usually accept a refund of all costs, but only the costs incurred in the court procedure (eg, court fees, expert fees and attorneys fees). Attorneys fees are calculated in accordance with the tariffs for attending hearings and preparation of plaint and petitions, even though the actual costs are often much higher; therefore, attorneys fees are partly non-refundable. The court does not usually allow the refund of costs for translation, verification and certification of documents, which could be significant. 16. What are the typical remedies granted to a successful plaintiff by the courts? According to the Patent Law, the following remedies to infringement claims are available: Determination of patent infringement. Prohibition of infringing acts. Compensation for damages caused by the infringement. Publication of the court decision at the defendants expense. Seizure and/or destruction of products made or obtained by means of patent infringement. Seizure and/or destruction of material or articles (eg, equipment, tools) used in the creation of infringing products. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are calculated in accordance with the general principles and rules of the Law on Obligations and Torts, and consist of actual losses and lost profits. The Patent Law provides an additional rule that if an infringement was committed intentionally or through gross negligence, the plaintiff may claim up to triple the amount of royalties that it would usually receive if the exploitation of the invention had been legally conducted. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions to prohibit future infringing acts, seizure and/or destruction of infringing products and materials can be ordered in the judgment and remain valid for as long as the patent is valid.
Serbia
19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The Patent Law states that procedures to deal with patent infringement are urgent. However, first instance proceedings take at least one year. To expedite the procedure, it is possible to ask the court to issue a partial decision in which it decides on only some of the claims (eg, the claim for determination of infringement and injunction), and then decides on the other claims (eg, the claim for compensation of damages) later on. However, this does not help if a question of patent validity is raised in a patent invalidation procedure, as the court must interrupt the procedure, prolonging the first instance proceedings (see Question 12). First instance proceedings for the issuance of a preliminary injunction usually last from six months to one year. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party always has the right to appeal. The grounds for appeal are: Severe violation of civil procedure. Erroneous or incomplete facts. Erroneous application of substantive law. The term for filing an appeal is 15 days before a court of general competence and eight days before the Commercial Court. Appeal proceedings in Serbia are slow. It usually takes at least one year before the second instance court decides on an appeal. Appeal procedures against a preliminary injunction decision take from six months to one year. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation?
The parties are not obliged to undertake any kind of mediation or arbitration before bringing case before the court. Once court proceedings have commenced, the parties may at any time resolve the matter in court or through an out-of-court settlement. During the proceedings, the court may suggest that the parties try to resolve the matter through mediation, but it cannot require or order the parties to do so. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Serbian courts cannot be considered as pro-patentee. In the past, under previous Patent Laws, it was almost impossible to enforce patent rights successfully, particularly in cases in which the holder of the patent was a foreign company and the defendant was a Serbian company. In recent years the new patent legislation has served as stronger legal grounds for the efficient enforcement of IP rights. However, there are not enough court cases to determine whether the courts are now more propatentee than previously. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Serbia has not signed the London Agreement. The Patent Law provides that a holder of a patent, within a term of three months from publication, must submit to the IP Office a translation into Serbian of the patent specification, claims and abstract. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? A new Patent Law is expected at the end of 2011. This will result from harmonisation with the EPC, the Patent Law Treaty and EU directives, as well as the correction of weaknesses in the current Patent Law.
Katarina Kostic is an associate attorney at law at Popovic, Popovic, Samardzija & Popovic. She graduated from the Faculty of Law, University of Belgrade with an LLB in 1990 and is a registered IP agent. Her practice areas include patent and trademark invalidations, litigation, IP infringement, industrial property, the protection of IP rights before the Customs Office and the market supervision of counterfeit goods.
Katarina Kostic Associate katarina.kostic@ppsp.rs +381 11 3239 442 Popovic, Popovic, Samardzija & Popovic Serbia www.ppsp.rs
Spain
Spain
By Miguel Vidal-Quadras Trias de Bes and Oriol Ramon Sauri, Amat i Vidal-Quadras Advocats, Barcelona 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In Spain, European patent holders may bring civil court actions against any possible infringers through the relevant legal proceedings. In exceptional circumstances, if a crime has been committed, a criminal action may be brought. The administrative courts cannot revoke a patent, since the civil courts have jurisdiction for all proceedings related to patents. The Spanish courts also have exclusive jurisdiction to hear cases related to patent rights granted for Spain. Action may be brought either in the court with jurisdiction in the territory where the defendant is resident or in the competent court in the territory where the infringement was committed. 2. What level of expertise can a patent owner expect from the courts of your jurisdiction? Specific courts (the tribunales mercantiles or commercial courts) specialise in commercial cases, including IP rights and unfair competition. Most of these cases are heard in Barcelona and Madrid, where there are eight and 12 commercial courts, respectively. The courts of these cities also have specialised sections in their appeal courts. There is no body of judicial technical experts; nor are judges technical specialists or supported by judicial technical specialists. It is normal practice for the judge to agree to a partys petition for the appointment of an independent expert in order to issue an opinion on the issues involved in the case.
3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The commercial courts have jurisdiction to hear cases on both infringement and nullity. A common defence in infringement cases is that the patent is invalid. This is often useful to prove to the judge where the invention stands in the state of the art, while also presenting the technical contribution that it has made in order to defend the infringement. Invalidity may be alleged either as an objection in order to petition for the claim to be dismissed or by bringing a counterclaim. If this is accepted by the court, the Spanish part of the patent will be declared null and void and the patents registration at the Spanish Patent and Trademark Office will be cancelled, with the resulting effects for third parties. 4. To what extent is cross-examination of witnesses permitted during proceedings? Spanish procedural law allows witnesses, the parties or court-appointed experts to be cross-examined at the request of the parties where deemed appropriate. During the hearing, the parties, witnesses and experts are cross-examined and questioned. The judge may intervene when he or she considers it necessary. 5. What role can and do expert witnesses play in proceedings? As far as patents are concerned, the experts duty is to act as an expert on the matter concerned. However, this does not mean that he or she must adopt a decision on the legal issues raised, since this duty rests solely with the court. The experts duty is merely to inform the court and the parties in regard to the technical elements of which they may be unaware; the conclusions
Spain
reached by the expert are not determining factors, but merely his or her explanations. 6. Is pre-trial discovery permitted? If so, to what extent? In Spain, there is a specific court examination procedure to determine whether infringement has been committed diligencias de comprobacin de hechos. The procedure is carried out at the premises of the allegedly infringing party to ascertain whether the latter has infringed a patent right or is about to do so. If so, the necessary documents are drawn up and a copy is provided to the petitioner so that it can bring the appropriate patent infringement claim. Another way to obtain evidence related to the case is through preliminary proceedings specifically designed for IP cases. Provided that there is enough evidence of the infringement, the court may be petitioned to allow the infringing party to be cross-examined before bringing an infringement case regarding its suppliers, customers and distribution channels, as well as the product quantities, sales and the reference of the product in the market. A petition may also be made for commercial, customs, accounting and financial documents to be provided in order to prepare the case. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is now beginning to be routinely accepted by the Spanish courts. Some judgments have also taken into account the patents registration background in order to determine the specific scope of a particular patent right. Specifically, the Madrid and Barcelona appeal courts apply the protocol set out in Article 69 of the European Patent Convention, and its Article 2, which state that claims must be interpreted according to the description and that the description cannot substitute the claims and effects of certain assertions and limitations made during the prosecution background. However, it is possible to find judges in the first instance courts who are not used to applying these concepts. In recent years the doctrine of equivalents has begun to replace the traditional approach adopted by the Supreme Court, which is based on the essential nature of a patents elements. This has given rise to the possibility of disregarding the elements of the claim considered secondary by the (generally court-appointed) expert.
8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There are no previous cases in Spain from which statistics can be obtained. The Spanish courts have not yet ruled on certain issues that are currently hot topics in some European countries and the United States. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Both Section 28 of the Madrid Provincial Court and Section 15 of the Barcelona Provincial Court sometimes resort to their own precedents when they issue judgments. Under the Civil Procedures Act, not all patent cases can be appealed to the Supreme Court; thus, there is little case law and what exists is very old. 10. Are there any restrictions on who parties can select to represent them in a dispute? There are no restrictions. However, in Spain, a party must be represented by legal counsel, who is responsible for the clients legal defence, and a court liaison, who is the clients representative in the legal proceedings and is responsible for providing all judicial notifications between the court and the legal counsel. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Spanish courts and parties in litigation increasingly refer to judgments laid down by other European courts concerning the infringement or invalidity of the same patent. Such background tends to be accepted as a relevant exhibit by the courts. However, the parties must prove to the Spanish court that the facts put before it are the same as those on which the foreign court based its decision. In some recent cases the Barcelona Appeal Court has decided not to follow decisions adopted in other EU countries. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The terms stipulated by Spanish law for the parties actions are strict. Along with their respective initial documents, the parties must provide all evidence that they have. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances?
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Preliminary injunctions may be requested for urgent reasons. There must be prima facie justification that an infringement has been committed in a plausible manner and that there will be costly consequences for the plaintiff if an injunction is not ordered. The rights holder must also prove that it uses the patent or that serious and effective preparations are being made for such use. The parties are usually summoned to a hearing, although such an injunction may be granted ex parte. In view of the arguments put forward by the parties, the judge will decide whether the injunction should be granted. If it is granted, the defendant may petition a suspension by offering a counterguarantee, which the judges sometimes deny. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? Although the cost of court proceedings depends on the complexity of the case, on average a decision costs between 50,000 and 150,000. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The court can order the losing party to pay the legal costs. In such cases, the lawyers fees are calculated according to the official rates and added to the expenses incurred to translate documents or obtain expert opinions, and any other costs that the successful party can demonstrate that it incurred. 16. What are the typical remedies granted to a successful plaintiff by the courts? Legal actions may be brought to stop the infringement, seize or destroy the infringing products or machinery and moulds exclusively used for such purpose, and prohibit the infringing actions from being recommenced. In addition, compensation may be imposed for damages and loss. In addition, in Spain, as in other European countries, a claim may be brought against actions that have contributed to the infringement, provided that those who contributed to the infringement were aware that the elements provided to the infringing party were to be used to manufacture the infringing products. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are determined according to the economic criteria of EU competition law by calculating the negative economic
consequences, which should take into account the profits obtained by the defendant as a result of the infringement as well as the plaintiffs loss of profits, or the cost of a possible licence to use the patent. Compensation can also be given for the harm caused to the prestige of the invention, if this can be proven (eg, the inadequate or defective presentation of the product in the market). In addition, the law has recently been amended to include the possibility of claiming compensation for moral damages. Spanish law makes no reference to the possibility of claiming punitive damages in the sense this is understood in US law. According to the EU IP Rights Enforcement Directive (48/2004/EC), the award of punitive damages is not allowed. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions can be granted after a full trial on the merits of a patent infringement action. The plaintiff bears the burden of proof; if the court considers the facts of the claim to be doubtful at the end of the proceedings, it must reject the action. Permanent injunctions related to the exploitation of the patent are bound to the validity or the expiry date of the exclusive right, so if the patent is declared invalid or the registration lapses, the injunctions related to exploitation of the product will become ineffective. The expiry date of the patent will not affect remedies unrelated to the exploitation of the object of the exclusive right for example, compensation for the damage and prejudice suffered or publication of the judgment. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Depending on the courts involved and their workload, first instance proceedings usually take between 18 and 26 months in Barcelona and between 20 and 30 months in Madrid. The main circumstances that may delay a case are bringing a claim against a party which is resident abroad, needing to provide technical expert evidence, the complexity of certain evidence (eg, carrying out trials, analyses and reproductions or plant inspections in Spain or abroad) and the number of experts or witnesses and their nationality. 20. Under what circumstances will the losing party in a first instance case be
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granted the right to appeal? How long does an appeal typically take? An appeal before the second instance court is common in patent cases and there are no special requirements. The losing party must merely serve notice that it disagrees with the decision within five days of the ruling and submit the grounds for its appeal within the 20-day term granted by the court. The appeal court will review the judgment and rule on the assessment of the facts by the first instance court, and whether its judgment was in accordance with the law. The appeal ruling may take one to two years to be laid down (12 to 16 months in appeals against judgments ruled on interim injunctions), depending on the court hearing the appeal and its workload and whether the court decides, exceptionally, to allow evidence that was denied by the first instance court. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? ADR may occur only in infringement or
technology transfer agreement cases if the parties agree to go to arbitration or conciliation, which does not usually happen unless there is a special reason (eg, both parties need for discretion and confidentiality regarding the proceedings) or in the case of agreements which include an arbitration clause accepted by both parties. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? In recent years certain courts, such as those in Barcelona and the first instance court in Granada, have become more pro-patentee. The 1995 establishment by the General Council of Judicial Power of a private foundation, controlled by the main pharmaceutical companies, to train judges in patent matters has resulted in some judges becoming more likely to favour patent holders. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Spain has not yet signed up to the London Agreement of Translations and is not expected to do so in the near future.
Miguel Vidal-Quadras Trias de Bes is head of the firms industrial property, IP and pharmaceutical law department. He graduated in 1993 from the University of Barcelona with a PhD in law and has been a member of the Barcelona Bar Association since 1997. He is the author of various IP publications and a professor of patent law at Universitat Ramon Llull and Universitat de Barcelona. His areas of expertise include litigation, intellectual property, technology transfer and pharmaceutical law. He speaks Spanish, Catalan, English and French.
Miguel Vidal-Quadras Trias de Bes Partner mvq@avqadvocats.com +34 93 321 1053 Amat i Vidal-Quadras Advocats Spain www.avqadvocats.com
Oriol Ramon Sauri graduated in law in 2002 from Universitat Autnoma de Barcelona and holds an LLM in industrial property, IP and competition law from ESADE, Universitat Ramon Llull. He joined the Barcelona Bar Association in 2004 and joined the firm in the same year. He is a member of the International Association for the Protection of Intellectual Property. His main areas of expertise are litigation, intellectual property, competition, advertising and pharmaceutical law. He speaks Spanish, Catalan and English.
Oriol Ramon Sauri Associate ors@avqadvocats.com +34 93 321 1053 Amat i Vidal-Quadras Advocats Spain www.avqadvocats.com
Sweden
Sweden
By Peter Kenamets and Fabian Edlund, Awapatent, Gothenburg 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? No government institutions outside the court system are authorised to enforce patent rights. This means that the holder of a European patent must turn to the courts to enforce its rights if it cannot resolve the situation amicably. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases (concerning both infringement and invalidity) are tried by the same department of the Stockholm City Court. This effectively makes the Stockholm City Court a specialist patent court. On appeal, patent cases are tried by the Svea Appeal Court in Stockholm. These two courts are composed of both legally trained judges and experts in the specific technical field, who are well versed in patent law. To date, few cases have been tried by the Supreme Court. It is fair to say that the general view is that the judgments handed down by the Swedish courts in patent cases are well reasoned and based on a good understanding of the technical and legal issues. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? In Sweden, as a formal matter, patent infringement and validity issues are tried in separate proceedings. The court has discretion to decide whether the infringement and validity cases should be
heard simultaneously. Generally, the cases are joined and heard together, but there are exceptions. 4. To what extent is cross-examination of witnesses permitted during proceedings? Witnesses may be cross-examined during trial and there are very few restrictions. As long as the questions are relevant to the case, they will generally be admissible. 5. What role can and do expert witnesses play in proceedings? Expert witnesses can be appointed by the court itself, as well as by either party. The latter is more common. Expert witnesses are frequently used by the parties, especially regarding technical and scientific issues, but sometimes also regarding legal questions. Weight will be given to the expert witnesss testimony depending on the relation to the party which called the expert witness and the importance of the expert witness in his or her field of expertise. Sometimes expert witnesses can play an important role in the proceedings. 6. Is pre-trial discovery permitted? If so, to what extent? The concept under Swedish law most similar to pre-trial discovery is the infringement investigation, which stems from the Agreement on Trade-Related Aspects of IP Rights. Under these rules, a patent owner or licensee which can show probable cause for infringement can obtain a court decision allowing it access to the premises of the alleged infringer to search for and preserve evidence. A rule of proportionality also applies (ie, it must be reasonable to assume that the reasons for conducting the investigation outweigh the hardship to the alleged infringer).
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7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is recognised under Swedish patent law. However, in general, the courts rarely find infringement under the doctrine of equivalents. Instead, the courts will typically reject the application of the doctrine of equivalents to a certain feature with reference to one of the following six situations: The invention relates to a simple design solution (small inventive step). The feature is described in the patent as central to the invention. The feature and the corresponding part of the allegedly infringing device solve different problems. A person skilled in the art would have been unable to overcome the differences between the invention and the infringing object. Application of the doctrine of equivalents would conflict with the state of the art on the date of application. An intentional restriction of the feature has been made during the prosecution of the application (comparable to UStype prosecution history estoppel). However, there are still cases where the Swedish courts have relied on the doctrine of equivalents to find that there is an infringement. For example, a few years ago the Svea Appeal Court upheld a decision of the Stockholm City Court finding infringement under the doctrine of equivalents in a case relating to a robotic milking system. The Swedish courts may consider the prosecution history of a patent application in order to assess the scope of the granted patent. Any statement made during prosecution may thus limit the scope of the granted patent. However, the court will carefully consider the context within which such a statement was made. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Swedish patent law is intended to be harmonised with the practice of the European Patent Office (EPO), so that all granted European patents should be enforceable in Sweden. In the case of software-related inventions, the Swedish courts have followed the EPO standards of patentability closely. This means, for example, that claims directed to a computer program product are enforceable. However, it also means that the validity of business method patents may be
difficult to defend after the EPO developed its practice of non-technical hindsight (eg, T641/00 and T258/03). 9. How far are courts bound by previous decisions in cases that have covered similar issues? Since Sweden has a codified system, not a case law system, the courts are not formally bound by previous decisions. However, in practice, the courts always follow the decisions of a higher court. Hence, a district court always follows the decisions of the Supreme Court or (if there is no Supreme Court decision) the appellate courts, and the appellate courts always follow the decisions of the Supreme Court. 10. Are there any restrictions on who parties can select to represent them in a dispute? Specialist representation is not formally required in patent cases in Sweden. A party is usually represented by one lawyer with patent litigation experience and one patent attorney (eg, a European patent attorney). In complex cases, more people (eg, lawyers, patent attorneys, technical experts) are sometimes added to the litigation team. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Swedish courts are not formally bound by decisions or opinions of foreign courts relating to, for example, foreign counterparts of Swedish patents at issue in infringement or invalidity lawsuits. It is difficult to state with any precision the extent to which Swedish courts are (informally) influenced by foreign decisions. If there is a well-reasoned foreign decision based on facts that are identical to those of the Swedish case (eg, same claim scope, same accused device), one can assume that this will have some influence on the Swedish court. When it comes to EPO case law, the Swedish courts frequently make reference to EPO Board of Appeal decisions, based on the argument that Swedish patent law is intended to be harmonised with the European Patent Convention with respect to patentability. The Swedish courts have also been criticised by some practitioners for referring to the EPO Guidelines for Examination, on the grounds that this document is not legally binding, but is only a guiding document for examiners. 12. How easy is it for defendants to delay proceedings and how can plaintiffs
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prevent them from doing so? A party seeking to delay a court procedure may reply late and may continually add new arguments, facts and evidence. Such behaviour may slow down the process, but it may prove to be a dangerous tactic. For reasons of procedural efficiency, the court may order that no new matter (eg, arguments, evidence) from an obstructing party will be considered. Delay tactics may also result in lost credibility, which is of course undesirable. If the obstructing party is deemed to have been negligent, this might also be reflected in the litigation costs. The plaintiff can counter by continually requesting the court to speed up the procedure, which may have some effect. However, no formal expedited procedure is available. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are quite common in Sweden. One survey indicates that the first instance patent court ruled on 23 requests for preliminary injunctions between 2001 and 2005 (15 injunctions were granted and eight denied). As a comparison, the same survey indicates that the patent court determined (ie, tried or settled) a total of 60 infringement cases during the same period. A preliminary injunction is available for a patent owner or licensee that can establish, with a sufficient degree of certainty, that infringement is ongoing and that the continued infringement may reasonably be expected to depreciate the value of the patent. In order to obtain a preliminary injunction, the plaintiff must also post security, as a bond or bank guarantee, that is sufficient to protect the defendant and to prevent abuse. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? An average first instance infringement case costs between 100,000 and 150,000 a party, but there is considerable variation. If there is a counterclaim for invalidity (which is common), the costs will rise significantly. 15. Is it possible for the successful party in a case to obtain costs from the losing party? As a general rule, the losing party pays the winning partys costs. 16. What are the typical remedies granted to a successful plaintiff by the courts?
The typical remedies for patent infringement in Sweden are injunctions (under penalty of fine) and damages, which are calculated as a reasonable royalty and compensation for further loss (eg, lost profits). 17. How are damages awards calculated? Is it possible to obtain punitive damages? As indicated briefly above, damages for patent infringement under Swedish law are calculated as a reasonable royalty and compensation for further loss. The patent owner is always entitled to a reasonable royalty in case of an infringement without showing that it suffered any loss. The general intention is that a reasonable royalty shall be determined so that it reflects what the patent owner and the infringer would have agreed on had they concluded a licensing deal before the infringement started. If the patent owner can show that it has suffered loss as a result of the infringement, it is entitled to compensation for that loss. This compensation is normally related to reduced sales and lost orders; however, it can also concern loss caused by price pressure and similar. In order to comply with the EU IP Rights Enforcement Directive (2004/48/EC), the Patents Act provides that the following five factors should specifically be taken into account when the amount of damages is determined: The patent owners lost profit. The infringers profit from the infringement. The harm done to the reputation of the invention. The non-economic loss. The patent owners interest in preventing patent infringement. Punitive damages (eg, treble damages) are not available. Finally, a patent owner can claim compensation only for the five years immediately before the patent owner started its infringement action before court. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? As a general rule, a permanent injunction is awarded to a successful plaintiff. There is no need for the patent owner to show that it is not adequately compensated by damages. Such injunctions are generally issued under penalty of a fine. The court sets the amount
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of the fine high enough to ensure that the injunction is effective. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The normal timeframe from filing of a lawsuit to a judgment is about two years, but there is considerable variation (perhaps one to four years). There is no formal expedited procedure, but the parties manner of pursuing and defending the claim can be expected to have an impact on the timetable. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Since Autumn 2008 the losing party in a first instance case must ask for leave to appeal. In order to obtain leave to appeal, one of the following three criteria must be fulfilled: There is reason to doubt the accuracy of the district courts decision. It is not possible to assess the accuracy of the district courts decision without leave to appeal. The case has precedential value.
The decision regarding leave to appeal can take up to two months. The time for the actual proceedings then depends on the complexity of the case, but a timeframe of one to two years can be expected. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties are not obliged to undertake any type of mediation or arbitration before bringing a case before the courts, unless they are bound by an agreement. ADR is thus very unusual in patent cases. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Even though there are no exact figures, a patent owner has reason to be fairly optimistic about its chances of success in a patent infringement and invalidity case in Sweden. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Sweden has ratified the London Agreement; it requires that the text of a patent be available in English or Swedish and that the claims be translated into Swedish.
Peter Kenamets is an attorney at law and partner at Awapatents Gothenburg office. His practice principally concerns IP disputes. He represents clients before the Swedish courts (especially in patent disputes). He also provides assistance in connection with patent disputes outside Sweden, particularly in the fields of medical technology and implants. Mr Kenamets practice further includes assisting clients in relation to contractual IP issues (licensing etc), mergers and acquisitions and due diligence investigations. He also advises on issues relating to infringement and validity assessments, research and development collaborations, employee inventions and contracts in general.
Peter Kenamets Partner peter.kenamets@awapatent.com +46 31 63 02 72 Awapatent Sweden www.awapatent.com
Fabian Edlund is a European patent attorney and the managing partner of Awapatents Gothenburg office. He drafts and prosecutes patent applications for many different clients, primarily before the EPO. He acts as a strategic adviser for small and medium-sized IT companies, focusing on software development to help them improve their business with the support of intellectual property. Mr Edlund is active in Awapatents practice group for patenting software and business methods, and has given numerous lectures in the United States, Japan and Sweden on European practice and the patenting of software inventions in Europe. He is secretary general and a member of the UNION software commission.
Fabian Edlund Partner fabian.edlund@awapatent.com +46 31 63 02 22 Awapatent Sweden www.awapatent.com
Switzerland
Switzerland
By Regula Redi and Rainer Schalch, E Blum & Co AG, Zurich 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent holder can send a warning letter and seek an out-of-court settlement with an alleged infringer. A successful warning letter is the most effective way to enforce rights, since it is subject to no formalities and costs little. If no solution can be found in this way, or through arbitration or mediation (to which the alleged infringer must agree), the patent holder has no option other than to enforce its patent through a court action. No warning letter need be served before commencing a patent suit. Patent rights are enforceable through cease and desist orders which, if granted by the court, require a third party to stop using in particular manufacturing, importing, advertising, offering or selling an infringing product or method. In addition, financial compensation is available to the patent holder. The cease and desist order can be requested in the form of a preliminary injunction; this is often advisable in view of the time it takes to obtain a final decision in patent matters. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? At present, Switzerland has no specialist patent courts. However, the Federal Patent Court of First Instance will start work in January 2012. The new court will have technical judges with expertise in patent law. Hitherto, the patent law prescribes that each canton shall designate a competent court. Of the 26 courts so defined, four are commercial courts located in the cantons of Argovia, Berne, St Gaul and Zurich. These courts
attract the majority of patent cases and therefore have experience in patent matters. Expertise is brought to these courts by the commercial judges, who include scientists, engineers and patent attorneys. In addition, an external expert is regularly appointed by the court. The other designated courts are ordinary first instance civil courts. The Federal Court, which acts as the court of second instance, has experience in patent law, but no technical judges sit on the bench. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? The courts are competent to deal with validity and infringement. Thus, validity and infringement are dealt with simultaneously by the same court, although this is not mandatory. Depending on the domicile of the parties (ie, national or foreign) and the order in which the proceedings have been started, different courts may be competent and become active. Even if different courts are competent and seized, the last involved court may transfer the case to the first court. Once the Federal Patent Court of First Instance has started work, it is competent to hear both issues. 4. To what extent is cross-examination of witnesses permitted during proceedings? In January 2011 the Federal Civil Procedure Code came into force. The code provides that witnesses are primarily examined by the court, but the court may also allow the parties to pose questions directly. 5. What role can and do expert witnesses play in proceedings? Patent proceedings are predominantly based on written evidence, but any type of evidence that is allowed in civil proceedings is also allowed in patent proceedings. With regard
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to expert opinions provided by the parties, the Federal Civil Procedure Code does not recognise such opinions as evidence, so they are regarded as party allegations only. However, the parties may be able to submit expert opinions by citing the expert as an expert witness under the new code. Expert opinions provided by court-appointed experts are still potential evidence. 6. Is pre-trial discovery permitted? If so, to what extent? There is no pre-trial discovery. However, the Federal Civil Procedure Code sets down unified general rules for provisional measures in IP cases and, in particular, a new means of securing evidence in patent cases, similar to the procedure known as saisie contrefaon in France. The saisie helvtique is intended not to provide evidence, but rather to secure evidence in cases where prima facie evidence of an infringement exists. In such cases a member of the court, in some cases accompanied by an expert or person skilled in the relevant field, may visit the production facilities of an alleged possible infringer and make a detailed description of the method applied, the products made and the means of production. The claimant may be excluded from the saisie and receives no documents before the opposing party has had the opportunity to file comments. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents has been accepted for many years and is provided for in the Patents Act. The act explicitly distinguishes between infringement by counterfeit and infringement by imitation. Imitation supported by long-established case law encompasses embodiments using equivalent means. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? All types of patent right granted by the European Patent Office are enforceable in Switzerland. However, the evidential requirements may present problems for the enforcement of certain types of patent right. Since the burden of proof rests with the plaintiff, method patents may present problems if the use of the method cannot be ascertained by the product itself or if no prima facie evidence of infringement can be provided to lead to a saisie helvtique (see Question 6) or a reversal of the burden of proof. On the other hand, the complexity of software-related or biotech patents and the
infringing products may present problems for the patentee and the courts. In mid-2008 an amended Swiss patent law entered into force, setting out more restrictive regulations for Swiss national applications in the field of biotech and genetic engineering than the European Patent Convention (EPC). Whether these differences will cause problems for the enforcement of European patents is controversial and relevant court decisions are not yet available. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Courts are not bound by the opinions and decisions of other courts at the same level, but lower courts are usually bound by the decisions of higher courts. In patent matters the courts are usually willing to consider the opinions of other courts, provided that no contradictory opinions exist. 10. Are there any restrictions on who parties can select to represent them in a dispute? Representation is limited to attorneys holding the Swiss attorney at law qualification or a recognised equivalent attorney at law qualification of an EU or European Free Trade Agreement member state. Assistance and corepresentation by a Swiss patent attorney are recommended in most cases. In cases that will be dealt with by the Federal Patent Court of First Instance and that are restricted to the question of patent nullity, Swiss patent attorneys may be appointed as the sole representative. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? To a certain extent, the Swiss cantonal courts are willing to consider the reasoning of foreign courts of similar expertise and legal background. In particular, the four commercial courts are often willing to consider and discuss German court practice. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Once the case is pending before the court, the possibilities for delaying the case are limited since the court handles proceedings according to a strict timeframe. In order to delay, the defendant can seek the maximum number of time extensions, while the plaintiff may try to accelerate the proceedings by responding to a court order immediately. At the beginning of the proceedings, the defendant may try to
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convince the court that the plaintiffs demand for relief is not sufficiently concise and that this question must be decided first before going into the merits of the case; however, these tactics fail in most cases since the courts are reluctant to dismiss a case on these grounds alone. In patent cases the time taken by the court-appointed expert to deliver his or her opinion is a relevant factor. If the defendant contests the validity of the patent, this will delay the case considerably, since the court often concentrates on this question first and the expert will initially give an opinion on validity alone. Only if validity is ascertained will the expert consider the question of infringement. The forthcoming Federal Patent Court is expected to implement swifter proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are readily available, provided that the plaintiff can provide prima facie evidence of: The infringement. The validity of the patent. A detriment that cannot easily be remedied (eg, by the payment of damages). In addition, the plaintiff must show that it has not delayed the case. As a rule of thumb, a request for a preliminary injunction must be filed within three to six months of the infringement becoming known to the patent holder. The term varies depending on the details of the case and the practice of the court. Preliminary injunctions are sought by filing a request that includes a demand for relief and reasoned statements and proof of the infringement. The court will then ask the defendant for its response. Ex parte injunctions are the exception to the rule and are available only in case of imminent danger (eg, during a trade fair). The court will usually appoint an expert in preliminary injunction cases as well, which may lead to considerable delays in the issue of the decision. Due to the broad variety of scientifically and technically skilled judges, the Federal Patent Court might abstain from appointing court experts, resulting in speedier proceedings. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs for a first instance decision amount to around Sfr80,000 to Sfr200,000 per party, and the costs of the winning party are at least partially imposed on the losing
party. Thus, the defeated party must bear costs of around Sfr160,000 to Sfr450,000, comprising the parties costs, the costs of the court expert and court costs. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. The court will calculate the successful partys attorney costs and the court costs based on an official fee schedule that depends on the complexity of the case, the number of writs and the value in litigation. The successful partys patent attorneys costs and experts costs are reimbursed based on actual costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? It is usual to request a cease and desist order and reimbursement of damages or lost profits. If a cease and desist order is granted, the defendant must stop using the infringing product or method. In addition, financial compensation is available to the patent holder, which may include compensation for actual damage inflicted. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The plaintiff may claim its own damages, infringers profits or the amount of the infringers unjust enrichment. Previously, claims were often made for damages calculated on the basis of usual royalties. However, according to a recent Federal Court decision, payment of an amount equal to a licence fee under the title of damages may be demanded only if the plaintiff can prove that in the absence of the infringement, the claimed licence fee income would have been earned. This and other types of damages are usually very difficult to prove. Accordingly, the plaintiff must now provide evidence of the profits made by the infringer in order to claim restitution of the infringers profits. Punitive damages are not available. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Unless the plaintiff and the defendant come to an agreement before a final decision, the court will grant a permanent injunction. In specific circumstances the court may abstain from an unlimited permanent injunction. For example, in pharmaceutical cases, if the complete unavailability of the infringing product would pose a health risk to patients already treated with the product, limited availability may be provided for such patients.
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19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Since the entry into force of the new Federal Civil Procedure Code, the time taken to obtain a first instance decision should depend less on the court than on the complexity of the case. An expert opinion is usually required; in less complicated cases some courts particularly the commercial courts and, once it is up and running, the Federal Patent Court may decide directly. The average duration of first instance proceedings is 18 months to three years and it is not possible to expedite the process. A shorter duration is hoped for with the Federal Patent Court and the Federal Civil Procedure Code. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? In main proceedings an appeal to the Federal Court is possible. The Federal Court has full jurisdiction in appeal proceedings. The appeal procedure is usually swift, often taking less than one year. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation?
There is no obligation to undertake any mediation or arbitration before bringing a case before the courts. However, provided that both parties agree, mediation or arbitration may speed up the case. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? As Switzerland has 26 first instance courts, there is a broad spectrum, from pro-patentee to contra-patentee courts. The commercial courts dealing with the majority of patent cases will protect the patentees rights, provided that there is sufficient evidence. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Switzerland has signed up to the London Agreement. Two of the languages of the EPC are official Swiss languages, so no translation of the claims need be filed. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The patent enforcement system in Switzerland has been unified by the enactment of the Federal Civil Procedure Code, and will be further enhanced by the establishment of the Federal Patent Court of First Instance, which is expected to begin work in 2012.
Regula Redi studied chemistry and received a PhD in organometallic chemistry at the Swiss Federal Institute of Technology (ETH), Zurich. She has several years of practical experience in industry in the fields of analytical chemistry, materials and surface analysis. Dr Redi became a patent attorney in 1990 and has been admitted as a European patent attorney since 1994. Her main activities with E Blum & Co AG are in the field of patent law, in particular expert opinions and litigation work in patent infringement and invalidity cases, the drafting and prosecution of patent applications and supplementary protection certificates, opposition and appeal procedures, especially in the fields of chemistry, materials, pharmacy, foodstuffs and genetic engineering, and the counselling of clients in patent matters. Dr Redi is a partner of the firm and a member of various industry associations. She works in German and English.
Regula Redi Partner rruedi@eblum.ch +41 43 222 56 00 E Blum & Co AG Switzerland www.eblum.ch
Rainer Schalch studied electrical engineering and received his degree by the ETH, Zurich. He was employed in industry in the fields of power system management and digital computer design. After joining E Blum & Co AG he studied law at the University of Zurich and passed the bar examination in 1989. His main activities with E Blum & Co AG cover patent law, in particular patent litigation, opinions on infringement and validity of patents as court expert or private expert, as well as the drafting and prosecution of a patent applications. He is a judge at the Argovia Commercial Court. Mr Schalch is a partner of the firm and a member of various industry associations. He works in German and English.
Rainer Schalch Partner rschalch@eblum.ch +41 43 222 56 00 E Blum & Co AG Switzerland www.eblum.ch
Turkey
Turkey
By Ersin Dereligil and Oktay Simsek, Destek Patent Inc, Istanbul 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? If a European patent owner successfully validates its patent in Turkey, it enjoys the same rights as a conventional Turkish patent holder. Thus, it has several options to enforce its rights, the most common of which are: Sending a cease and desist letter (preferably via a Turkish notary, although this is not mandatory). Initiating civil and/or criminal proceedings before the courts. Requesting an interlocutory injunction before or together with civil court proceedings. Obtaining border seizure at Customs and then initiating proceedings. Turkey has 21 specialised IP courts in Ankara, Istanbul and Izmir; elsewhere, only appointed courts are responsible for hearing IP matters, including patent cases. Civil and criminal proceedings cannot be held at the same court. A preliminary injunction to stop the infringement and/or to seize the infringing products can be claimed before or alongside the civil proceedings. However, such an injunction is rarely granted, unless very strong evidence of infringement is available. For criminal proceedings, a rights holder must file a complaint against the infringer with the public prosecutor. Although criminal actions were previously a commonly used and effective tool in patent enforcement, this course of action is no longer advisable due to legislative gaps and a major backlog at the criminal courts, both
of which are expected to be resolved soon. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The judges at the specialised IP courts are trained in IP disputes. Although they hear cases on all aspects of patent infringement and thus are experienced in patent judgments, in principle they have no technical expertise. The court usually appoints a panel of independent experts to examine all legal and technical facts, which are considered at first instance only. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? As is common international practice, a patent infringement action is likely to face a counteraction by the defendant for the invalidity of the patent based on one of the grounds for nullification set out in the Patent Law (Decree-Law 551). There are no separate specialised courts for validity and infringement cases in Turkey. Both types of proceeding are generally joined and dealt with simultaneously in the first instance court where the first action is lodged. The Turkish Patent Institute does not handle post-grant invalidation proceedings and administrative proceedings cannot be used to enforce patent rights in Turkey. 4. To what extent is cross-examination of witnesses permitted during proceedings? Turkish patent litigation is always based on written evidence and does not normally involve the hearing or cross-examination of witnesses. However, it is at the courts discretion whether to accept crossexamination requests.
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5. What role can and do expert witnesses play in proceedings? Expert reports play a major role in Turkish patent judgments. Usually, a panel of independent experts is appointed by the court to examine the technical and legal facts, the costs of which are paid by the plaintiff. Each panel of appointed experts usually comprises three professionals, (ie, an academic, a lawyer and a patent attorney. A printed copy of the case file is submitted to the experts once the petition exchange and submission of evidence stages have been completed. The experts or their reports can be challenged by either party on reasonable grounds, which would then lead to the preparation of a second and generally final report. However, the parties may adduce external expert reports in support of evidential and legal facts at a very early stage in the proceedings. These may rarely be relied on by the courts, but the facts raised therein and thus included in the case file may be considered by the official experts appointed by the court. 6. Is pre-trial discovery permitted? If so, to what extent? Disclosure of evidence is the first step of patent infringement proceedings. In addition to pre-trial discovery, in the absence of sufficient evidence of infringement it is possible for the plaintiff to initiate a separate lawsuit before the civil court to find and secure evidence of infringing acts. The judge then assigns a panel of experts and assesses the infringing acts without notifying the infringer (ex parte proceedings). The expert report is strong evidence of infringement and can be used later for the main civil and criminal proceedings. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Turkish patent legislation accepts the doctrine of equivalents to some extent. According to the Patent Law, the scope of patent protection is determined by its claims. Claims cannot be interpreted as being confined to their strict literal wording. When determining the scope of patent protection at the time of infringement, all elements that are equivalent to the elements expressed in the claim(s) are taken into consideration. Where such an equivalent element performs substantially the same function in a substantially similar manner and gives the
same result, that element shall generally be deemed to be equivalent to the elements as expressed in the patent claim(s) at issue. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Neither business methods nor software constitutes patentable subject matter in Turkey. Software can be protected under the Copyright Code. Although software for technical effects may enjoy patent protection, the scope of such protection is still disputable in Turkey, as in most European countries. Any patent for software characteristics can be subject to an invalidity action due to the non-patentable nature of software under the patent law. However, it cannot be said that certain patent rights are harder to enforce than others in Turkey, due to the fact that, in principle, each case requires examination by a panel of experts specifically selected and appointed by the court after considering all legal and technical facts and requirements of the case. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Turkish courts are not bound by the decisions of other national or foreign courts. Nevertheless, decisions of the Supreme Court of Appeals are authoritative and are usually followed by the first instance courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers who are registered with one of the Turkish bars can represent parties before the courts. Patent attorneys cannot represent a party in legal proceedings or formally appear before the Turkish courts. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Turkish courts are not bound by the decisions of other courts. It is at the judges discretion to take foreign decisions on the same issues into consideration; such decisions can be submitted as complementary facts and evidence in the early stages of proceedings. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?
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A defendant can delay proceedings by: Counterclaiming the nullity of the patent at issue. Filing objections against experts and their reports, and requesting a new panel of experts and new expert reports. Requesting time extensions at every possible stage. In case of nullity actions, the court will first render a decision on the validity of the patent and then rule on the infringement issue. If the other attempts are not well reasoned, the defendants intention to delay is usually spotted by the judge and is not allowed to continue to the next stages. The plaintiff should be well prepared for the submission of all facts and evidence in advance, even before the start of proceedings, and should use the time allowed wisely without requiring further time extensions during the proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? According to the patent legislation, it is possible for a patent holder to seek preliminary injunctions before civil courts in order to forestall an imminent threat of infringement against a wide range of infringing parties, from direct infringers to suppliers, importers, wholesalers and distributors. However, such injunctions are rarely granted unless clear facts and strong evidence of infringement are available. If this is the case, the plaintiff must provide a financial payment or a letter of bank guarantee as security. The patent holder may request all possible options when a patent infringement decision is issued, including the investigation and cessation of production of infringing products and confiscation of all infringing products at Customs and other locations where the products are held for commercial reasons (eg, places where the products are produced, stored, sold, offered, exported or imported). The court will order an expert report to determine the infringement. Precautionary measures should fully secure the effectiveness of the judgment, and particularly provide for the following measures: Cessation of infringing acts. An injunction to seize within Turkey including at Customs, free ports or free trade area and to keep in custody goods produced or imported that infringe rights conferred by the patent or the means used to implement the
patented process. The placement of security or a guarantee for damages to be compensated.
14. How much should a litigant plan to pay to take a case through to a decision at first instance? The litigation costs of first instance proceedings vary greatly, depending on the attorneys charging policy, any translation costs, the downpayment required for preliminary injunctions and any extra official fees for the compensation of damages. The official costs, including experts fees, range from 2,000 to 4,000, plus 1.35% of the amount of compensation, if claimed. All of these fees are reimbursed by the successful plaintiff. Attorneys fees are the dominant factor in litigation costs, usually varying from 25,000 to 50,000, but may be much higher depending on the complexity of the case, the disclosure of evidence, a counteraction for invalidity by the defendant and other requirements for court jurisdiction, site visits and special reports from external professionals. These fees cannot be reimbursed. 15. What are the typical remedies granted to a successful plaintiff by the courts? The Patent Law provides for several remedies, such as damages, injunctions and the recall and destruction of infringing goods. If infringement is proven, the court will usually grant damages and an injunction against the infringer. 16. How are damages awards calculated? Is it possible to obtain punitive damages? There are three options for the calculation of damages in Turkey: the infringers profit, the patentees lost profits and reasonable royalties. However, if a patentee has not fulfilled the use requirement, the damages shall be calculated according to reasonable royalties (see Question 23). When damages are being calculated, all circumstances having an effect on the case (ie, the value of the patent, the remaining patent protection term at the time of infringement and the number of licences granted) shall be taken into consideration. The compensation for moral damages as granted by the courts is of nominal value and rather symbolic. Punitive damages are not available in civil proceedings, whereas the criminal courts may order a punitive fine of between 12,000 and 23,000.
Turkey
The Code of Criminal Procedure obliges criminal courts to invite parties to settle during criminal proceedings
17. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions are often granted to the successful plaintiff at the end of the proceedings. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The civil first instance IP courts usually issue a decision within 24 to 36 months, depending on the number of hearings and petitions exchanged and the number of expert reports (see Question 12). 19. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Any party can appeal the case before the Supreme Court within 15 days of issuance of the court decision; this stage takes another 15 to 18 months. 20. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The Turkish legal system does not specifically legislate for alternative dispute resolution. However, the Code of Criminal Procedure obliges criminal courts to invite parties to settle during criminal proceedings. The Patent Law refers only to arbitration by the Turkish Patent Institute for obtaining a contractual patent licence for those parties wishing to apply for a compulsory licence. 21. In broad terms, how pro-patentee are the courts in your jurisdiction? The specialised IP courts were first
established in 2000 and the following specialised courts now exist: In Istanbul, seven civil and six criminal courts. In Ankara, four civil and one criminal court. In Izmir, one civil and two criminal courts. Ninety percent of infringing activities takes place in these three cities. Most judges have been trained within the framework of a joint project between the Ministry of Justice and the European Commission. As the judges are harsh on infringement, they are likely to be propatentee when solid facts and supporting evidence are provided. 22. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Turkey has not yet signed up to the London Agreement and there is no appointed schedule for negotiations to ratify the agreement. 23. Are there any other issues relating to the enforcement system in your country that you would like to raise? A patentee must put to use its protected invention and must file a certified document to the Turkish Patent Institute within three years of the date on which the patent was granted. Otherwise, any interested person may request that a compulsory licence be granted. Legitimate excuses for failure to meet this requirement include technical, economic or legal reasons beyond the control and will of the patentee, which may include officially required clinical test periods or delays in product registration procedures before the health authorities for pharmaceuticals.
Turkey
Ersin Dereligil is a registered European and Turkish patent attorney. He advises on all areas of patent law, including obtaining and enforcing patent rights, avoiding infringement and due diligence and development. He holds an MSc in chemical engineering from the Middle East Technical University in Ankara. He has lectured on patents and industrial designs to engineering departments at Uludag University for seven years, and also serves as an expert before the Istanbul Specialist IP Court. He has published more than 50 articles on the Turkish IP system and a book, Understanding Patents For Engineers, and has attended many seminars as a speaker. He is president of the Licensing Executives Society-Turkey and a founding member of the International Association for the Protection of Intellectual Property Turkey and KALDER Bursa. He is also a member of the Institute of Professional Representatives before the European Patent Office, MARQUES and the International Trademark Association. He speaks Turkish and English.
Ersin Dereligil Managing partner ersin@destekpatent.com +90 212 444 4344 Destek Patent Inc Turkey www.destekpatent.com
Oktay Simsek is head of the foreign affairs department at Destek Patent and a registered Turkish patent and trademark attorney. He is highly specialised in patent drafting, filing and prosecution, and has extensive experience in all IP-related matters. He has advised on all aspects of patent and utility model enforcement, including oppositions, assignments and licensing. He graduated in international relations from Dokuz Eyll University, Izmir, and his particular area of technical expertise is mechanics. He speaks Turkish, French and English.
Oktay Simsek Head of foreign affairs department oktay@destekpatent.com +90 224 444 4344 Destek Patent Inc Turkey www.destekpatent.com
United Kingdom
United Kingdom
By Richard C Price and Gareth E Morgan, Winston & Strawn, London 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The United Kingdom, and more to the point England, is one of the most flexible and experienced jurisdictions in the world in which to litigate IP rights. Depending on the value of the dispute, a European patent holder can enforce its rights either in the UK civil courts or at the Intellectual Property Office (IPO). A broad spectrum of procedures is available, ranging from nonbinding opinions regarding infringement from the IPO, through to High Court litigation (in the specialist Patents Court) and the reformed Patents County Court (all in London). A full range of remedies are available, including injunctions, damages, an account of the defendants profits and delivery up. The Patents County Court sits between the IPO and the Patents Court. The Patents County Court will hear low to mid-value cases concerning less complex technology on expedited timetables with limited evidence and abbreviated trial length compared to the Patents Court. The Patents County Court has limited powers to award legal costs (on a fixed scale up to 50,000) and a limited power to award damages (up to 500,000). 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All English tribunals hearing disputes on patents have technical and/or extensive legal experience in the patents field. Cases at the IPO are heard by hearing officers with experience in prosecuting patents, and the
judges in the Patents County Court and the Patents Court usually have science degrees as well as long experience practising in the IP field. 3. How do your countrys courts deal with validity and infringement? Are they handled together or separately? Validity and infringement are nearly always heard together. However, if a sufficiently compelling reason is presented to the court, it is occasionally possible to bifurcate the action. The courts consider that where both infringement and validity of a patent are at issue, it is important that the same court hears the patentees arguments on construction in light of the infringement and invalidity arguments. This procedure leads to the development of what are often called squeeze arguments, where the infringer argues that if the patent is construed broadly enough to catch the infringement, then it is invalid on the basis of the cited prior art. This procedure has the added virtue of ensuring that, if a final injunction is to be granted, the validity case will also have been heard and the patent found to be valid. 4. To what extent is cross-examination of witnesses permitted during proceedings? Each party can request that the other partys witnesses attend at trial (but not during any deposition) in order to be cross-examined orally on their written evidence. Where a witness cannot attend in person, evidence can be given through a video link. If a witness is not produced at trial and his or her evidence is challenged, the court must decide what weight can be given to the untested written evidence in light of the particular challenge. Where an adverse witness is not willing to come to court and is resident abroad, there are international
United Kingdom
procedures to compel the witness to be cross-examined. 5. What role can and do expert witnesses play in proceedings? In high-value High Court litigation, partyappointed expert witnesses are crucial to the success or failure of a partys case. For lower-value cases, expert evidence is deployed less, as the costs of securing such evidence may outweigh the value of the case. It is important that a witness with appropriate professional experience is selected. The parties must always be mindful that the duty owed by an expert witness is primarily to assist the court and not the party paying him or her. An expert witness who appears to be partisan or who cannot justify the positions taken in opinion evidence will suffer under the scrutiny of cross-examination in the UK courts. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial disclosure is permitted through application to the courts. To qualify, the parties to the application must be likely to be parties to any subsequent litigation. Also, the disclosure must be of documents that would properly be disclosed if proceedings were to be brought and would: Dispose fairly of the proceedings. Assist the dispute to be resolved without proceedings. Save costs. The courts will not entertain fishing expeditions (ie, speculative disclosure applications that seek to gain a commercial or tactical advantage over another party). 7. Do the courts in your jurisdiction apply a doctrine of equivalents? No. The House of Lords (now the Supreme Court) has specifically disapproved of applying such a doctrine. However, the UK courts will construe a patent in a purposive manner. This is broader than a strict literal interpretation of the words found in the claims. It requires the court to construe the patent through the eyes of the skilled person and to determine what the skilled person would have understood the patentee to mean by the words used. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Provided that the invention is deemed to be patentable subject matter under the European Patent Convention (EPC), a patent
may be enforced unless the claims are drafted such that infringement is difficult to prove. Business method inventions are not patentable under the EPC and, in general terms, software is patentable only if the program has a patentable technical effect in the real world (eg, speeding up a computer and allowing it to process data faster). 9. How far are courts bound by previous decisions in cases that have covered similar issues? England and Wales is a common law jurisdiction and operate on a system of binding precedent. Lower courts are bound by the decisions of the higher appellate courts on points of legal interpretation and principle. The Court of Appeal is bound by Supreme Court authority and can depart from its previous decisions in only limited circumstances. The Supreme Court can also depart from its previous decisions. 10. Are there any restrictions on who parties can select to represent them in a dispute? Usually, a firm of solicitors will be appointed to conduct the litigation on behalf of each party and the solicitor will retain a barrister to act as the partys advocate in court. In most litigation, solicitors and barristers operate as a team, with the senior solicitor being the team manager responsible for the selection and evidence of expert and factual witnesses, for the disclosure of documents, experiments and generally for the preparations for trial. Previously, only solicitors could conduct litigation before the courts. However, patent attorneys and patent attorney litigators can now also conduct IP litigation and so provide an alternative to solicitors in some situations. The trial advocate is usually a barrister, but there is some flexibility. Solicitors may appear on all applications up to the trial including in the High Court; they are also able to attain qualifications, known as higher rights of audience which allow , them to present cases at trial. Patent attorneys, as well as solicitors, have rights of audience in the Patents County Court. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The English courts will pay deference to wellreasoned foreign court judgments. The courts that are referred to the most are those of Germany and the Netherlands. The English courts also respect decisions of the Enlarged Board of Appeal of the European Patent
United Kingdom
Office (EPO) (its highest appellate body) as highly persuasive on points of law and the interpretation of the EPC (on which the UK Patents Act 1977 is based). However, foreign decisions are not binding. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is becoming more difficult for litigants to adopt procedural tactics to delay actions. English High Court procedure aims to bring the parties to trial in 10 to 18 months, and more than a few months delay through procedural manoeuvring is unusual. The High Court will actively manage cases and can penalise obstructive behaviour through adverse costs awards. Currently the time to trial in the Patents County Court is even quicker than in the Patents Court, at around six months from serving the claim form on the defendant. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Yes. In order to decide whether a preliminary injunction should be granted, the court will ask: Is there a serious case to be tried? Would damages be an adequate remedy for either party and could the other pay if it were to lose at trial? If there is no clear indicator as to whether the injunction should be granted, the court will take into account the balance of convenience with a presumption that , the status quo (ie, the circumstances before the alleged infringement) should be maintained. Diverse factors can be taken into account, such as whether the patentee has delayed bringing the action and whether the defendant is already on the market. In the past, a patentee could expect to be granted a preliminary injunction where the alleged infringer had failed to clear the way before launching its product. However, the recent Cephalon decision cast doubt on this. Now, although a failure to take steps to clear the way will still be taken into account, it will not necessarily be decisive. If an injunction is granted, the successful applicant must give a crossundertaking in damages to the injuncted party. This cross-undertaking can be claimed on to compensate the injuncted party should the patent ultimately be revoked or found not to have been infringed. 14. How much should a litigant plan to pay to take a case through to a decision
at first instance? The approximate cost of taking a case to a first instance decision in the available forums is as follows: IPO 2,500 to 50,000. Patents County Court 25,000 to 300,000. Patents Court 500,000 to 2.5 million. Although successful parties can recover costs on a fixed scale only at the IPO and the Patents County Court, there is no limit to the maximum amounts that parties can spend. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. Costs orders are made in favour of the successful party. In the IPO and the Patents County Court these will be on a scale (ie, amounts fixed by law). The total amount awarded in the Patents County Court will not normally exceed 50,000. The Patents Court has the power to make higher awards, often reflecting 60% to 80% of the actual costs incurred by the successful party. The Patents Court will approach the calculation of the costs award issue by issue, which can greatly reduce the costs awarded. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies available include a final injunction, damages or an account of profits and delivery up or destruction of the infringing products. Patent cases in England have split liability and quantum hearings. Infringement or validity is determined first; then a separate hearing is arranged to decide the damages or profits to award. In practice, the vast majority of patent cases settle after the liability hearing. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Successful patentees can obtain monetary compensation by way of compensatory damages or an account of the profits made from the infringement by the infringer. Punitive damages are not awarded. The patentee must prove that the amount of compensation is due for the damage caused by the infringement (subject to the damage being reasonably foreseeable). Proving an account of profits claim can be complex, as often the patented invention is part of a broader product offering or one step in a lengthy process. In such cases the court must assess the contribution that the patented invention has made to the overall
United Kingdom
profits made by the infringer. Account of profits hearings are rare in the United Kingdom, but the option for an account can increase the compensation likely to be awarded. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? A patentee is usually entitled to a permanent, final injunction. An injunction may be withheld where the effect of the injunction would be grossly disproportionate to the right protected. This is a much stricter test than the balance of convenience test for preliminary injunctions (see Question 13). 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Usually, a case in the Patents Court will reach trial in 10 to 18 months (four to six months if expedited). The High Court has an optional procedure known as the streamlined procedure that can be used to speed up the process. The court can also order a trial to be expedited in urgent cases. Cases in the Patents County Court are currently being heard six months after the claim form is served. In the Patents Court, judgment is usually given within one to three months of the trial, and the Patents County Court currently sets a date on which judgment is to be given, which is usually within one month of the trial. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party may apply to the trial judge for permission to appeal and, if refused, may make a further application to the Court of Appeal. Permission to appeal may be granted only if the appeal has a real prospect of success or if there is another compelling reason why the appeal should be heard. An appeal will typically be heard within six to 12 months of the trial. The appeal is heard on points of law only, although some limited reassessment of evidential matters is usually necessary in reviewing the first instance courts application of the law. Appellate courts will generally be cautious of interfering with the first instance findings in relation to the evidence, as they adhere to a principle that the first instance judge was in the best position to assess the reliability of the evidence presented at trial.
21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake ADR prior to litigation, although it must be considered and the English patents judiciary, particularly in lower-value disputes in the Patents County Court, actively encourages parties to explore nonlitigious methods of resolving their dispute where appropriate. London is a vibrant centre for both mediation and arbitration, and both can lead to the resolution of disputes without the need for a public trial. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Patentee win rates in England are among the lowest in Europe. Judges hearing patent cases in England take seriously their responsibility to review the validity of the monopoly right in suit. The detailed court procedure subjects patents to greater scrutiny than is possible under more limited systems with less scope for evidence, disclosure, experiments and cross-examination. Even the Patents County Court provides for longer trial times than most other first instance patents courts in Europe, including Germany and the Netherlands. As a result, the English courts will be less swayed by, and more likely to question on the basis of the evidence before them, EPO Opposition Division and Technical Board of Appeal decisions on particular patents than their counterparts in other EU jurisdictions. The low patentee win rates in England have also, to some extent, become a selffulfilling prophecy, as it has encouraged applicants seeking to revoke patents to come to London in order to take advantage of the high level of scrutiny to which patents are subject in the Patents Court. As a result, and particularly in the pharmaceutical sector, litigation on secondary and tertiary incremental inventions has maintained a relatively low patentee win rate. It tends not to be so low in other areas of technology. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Yes, the United Kingdom has signed up to the London Agreement on Translations. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The flexibility of the English system is now a
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major advantage to patent holders, providing options that can be tailored to the value of any particular right or infringing act. Note on jurisdiction Most comments in this chapter refer to the jurisdiction of England and Wales. England and Wales and Scotland are different legal jurisdictions. For ease of reference, throughout this chapter, England and Wales are referred to as the United Kingdom Scotland is a civil . law jurisdiction, whereas England and Wales is a common law jurisdiction. The patent law is the same, but court procedure differs. Scottish courts are much less likely than those in England and Wales to have specialist judges and the volume of patent litigation is smaller. At the time of writing, the Patents County Court reforms implemented in England and Wales are not applicable in Scotland, reducing the degree of choice available to litigants in that jurisdiction.
Richard C Price heads up Winston & Strawns London IP practice and is one of the United Kingdoms leading patent and trademark litigators. He litigates all aspects of IP law and has a high success rate in securing victories for his clients before the highest courts, including the House of Lords (now the Supreme Court) and the Privy Council. Mr Prices IP practice focuses on representing clients on patents, trademark, trade dress and copyright matters. His industry knowledge covers several sectors, with experience in deriving IP solutions for clients working in medical devices, carbon emissions, water purification, genetically modified crops, consumer products, electronic equipment and computer technology in the United Kingdom and across Europe. Mr Price is named as a leading individual in 2011 Chambers for patent litigation.
Richard C Price Partner rprice@winston.com +44 20 7011 8735 Winston & Strawn United Kingdom www.winston.com
Gareth E Morgan is a partner in Winston & Strawns London IP practice with experience in all areas of contentious and non-contentious IP law, and a particular focus in the life sciences and healthcare sectors. Dr Morgan has acted in many landmark IP matters (patents, copyright and supplementary protection certificates before the English courts, particularly in the biotechnology/pharmaceutical field. He has also advised clients in relation to judicial review proceedings in the medicines regulatory field in both English and European courts. Dr Morgan is listed as a leading individual in 2011 Chambers for life sciences regulatory work and the IAM Global 250 directory of patent litigators. He has a degree in biochemistry and a PhD in molecular biology, both from Oxford University.
Gareth E Morgan Partner gmorgan@winston.com +44 20 7011 8726 Winston & Strawn United Kingdom www.winston.com
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Patents in Europe 2011/2012

Patents in Europe 2011/2012 1

Sara-Jayne Clover Reporter, IAM magazine

Patents in Europe 2011/2012 3

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To subscribe go to www.iam-magazine.com or email amowat@theipmediagroup.com

8 Patents in Europe 2011/2012

2010: the EPOs year in statistics

2010: the EPOs year in statistics

Patents in Europe 2011/2012 9

2010: the EPOs year in statistics

136 700 136 700 22%

35% 28% 34%

Source: European Patent Office

Private practice. Patent quality

62% 43% 37% 24% 13%

EPO JPO USPTO KIPO SIPO

26% 20% 31% 33% 65%

65% 78% 52% 64% 29%

Stayed the same

Source: Intellectual Asset Management magazine, Issue 48

10 Patents in Europe 2011/2012

2010: the EPOs year in statistics

In-house counsel. Patent quality

Perceived change from prior years

Source: Intellectual Asset Management magazine, Issue 48

Patents in Europe 2011/2012 11

Protecting software and business methods via the EPO

Protecting software and business methods via the EPO

Protecting software and business methods via the EPO

Protecting software and business methods via the EPO

14 Patents in Europe 2011/2012

Patenting biotechnology inventions via the EPO

Patenting biotechnology inventions via the EPO

Patenting biotechnology inventions via the EPO

Patenting biotechnology inventions via the EPO

Patenting biotechnology inventions via the EPO

18 Patents in Europe 2011/2012

Patenting biotechnology inventions via the EPO

Patents in Europe 2011/2012 19

EU patents and the Unified Patent Court

EU patents and the Unified Patent Court

EU patents and the Unified Patent Court

Figure 1 Overview of the EPC procedure

Filing of European patent application

European search Central prosecution

European publication of the application

Validation required for all EPC member states

Substantive examination of application

Bundle of national patents

EU patents and the Unified Patent Court

Figure 2 Future EPC procedure including EP patents with unitary effect

Filing of European patent application

European search Central prosecution

Substantive examination of application

European patent with unitary effect

Classic European patents + European patents with unitary effect

EU patents and the Unified Patent Court

EU patents and the Unified Patent Court

24 Patents in Europe 2011/2012

28 Patents in Europe 2011/2012

32 Patents in Europe 2011/2012

36 Patents in Europe 2011/2012