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Ian Harvey The growing threat of IP mismanagement lawsuits in the US

Chairman, The keys to better benchmarking of patent quality How SFAS 141 has changed the M&A rules for intangibles Inside the survey that reveals non-core licensing myths Intellectual Property Institute Why better valuation leads to more royalty rate deals & UK government adviser” on IP The goodfellas Detkin and Mhyrvold on patents, trolls and Intellectual Ventures

The patent pendency crisis and the way to respond • How to make open source pay IAM is an excellent Why Europe needs a new IP intermediary market • Putting a price on the value of customers publication for helping with the management of an intellectual Intellectual property and other types Subscribers to IAM include: “property portfolio. There is always of intellectual asset are now of major 3M; Air Liquide; AT&T; Avaya; BHP one article in each issue, and importance to companies. Intellectual Billiton; Bird & Bird; Boeing; Brown Asset Management (IAM) is the first University Research Foundation; BTG often more, which is relevant to magazine specifically designed as a International; California Institute of our current business situation. single source of IP information for senior Technology; Cargill; Chevron; Cleary decision makers in companies, as well as Gottlieb Steen & Hamilton; Clifford Paul Johnston for investors and analysts. Chance; Covington & Burling; Danfoss; Group Trade Mark Counsel Dolby Laboratories; Dow Chemical; A combination of news, case studies, ICI Group Intellectual Property Ericsson; Fujitsu Siemens Computers; GE; interviews, profiles, feature articles and ” GlaxoSmithKline; Halliburton; Herbert data, IAM ensures that its readers are Smith; Howrey; Johnson Matthey; Jones always at the cutting edge of the latest Day; Lockheed Martin; Lucent thinking and therefore best placed to As intellectual property Technologies; Marsh; Merchant & Gould; make the right decisions about IP. achieves greater and greater Motorola; Nortel Networks; Novozymes; recognition as a key strategic asset IAM is designed for: Oracle; QinetiQ; Roche; Smart & Biggar. “of our business, IAM is unique in • General counsel, IP counsel, patent counsel, trademark counsel For subscription details or to request a giving me a really up-to-date • CFOs, CTOs, CIOs, CEOs free trial, visit the IAM website or call us overview of developments and (or equivalent positions) at on +44 20 7234 0606 or email us at thinking in this area. IP-owning companies [email protected]

Paula Nelson • Lawyers in private practice General Counsel (Intellectual Property), • Fund managers, brokers, analysts, Vice-President, heads of research at investment banks, Nestlé S.A. ” venture capitalists www.iam-magazine.com Contents

Chapters

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

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

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

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

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

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

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

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

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

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

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

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

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

Enforcing patents in France 59 By Pascal Moutard, Brevalex

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

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

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

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

www.iam-magazine.com Patents in Europe 2006 1 Contents

Chapters Continued

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

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

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

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

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

Enforcing patents in Sweden 98 By Helena Östblom, Zacco Sweden

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

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

Directory 110

2 Patents in Europe 2006 www.iam-magazine.com Editorial board Bruce Berman Welcome President, Brody Berman Associates, New York Mike Carr Director of Enterprise Venturing, BT Exact, UK Michael Cleare Welcome Executive Director, Columbia University Enterprises Bruce Lehman Chairman of the International Intellectual Property Institute, Washington DC Douglas R Elliott Founder and CEO, TEQ Development LLC, Chicago Morag Macdonald Head of the International IP Group, Bird & Bird, London Marshall Phelps Corporate Vice President for Intellectual Property, Microsoft Corp. Herbert C. Wamsley Executive Director, Intellectual Property Owners Association, Washington DC Rob Willows Vice President, Thomson Derwent Industrial Property Markets Division

Editor Joff Wild [email protected] Finance Editor Nigel Page [email protected] Deputy Editor (North America) It is a pleasure to welcome readers to the essentially national patents, when it comes Victoria Slind-Flor [email protected] second edition of Patents in Europe: Helping to enforcement, patent owners have to take a Contributing editors business compete in the global economy. country-by-country approach. Something that Richard Marsland [email protected] There are very few patent owners who can take time, cost a lot of money and Adrian Preston can afford to ignore the importance of provide contradictory results. Efforts to [email protected] Europe to their businesses. As home to a change this situation are ongoing but, at Reporter population of over 500 million, as well as present, show little sign of nearing resolution. Liz Rutherford-Johnson [email protected] innumerable world-class technology-based It is with all this in mind that IAM has Sub-editor companies, the continent is not only a produced Patents in Europe 2006. This Carolyn Boyle potentially very lucrative market for those special supplement to the magazine has been [email protected] Design and production from elsewhere in the world, it is also where designed to provide concise information about Russell Anderson many of their competitors are to be found. a host of key issues facing those looking to [email protected] For those actually based there, Europe’s obtain patent protection in Europe and then, if Subscriptions and marketing manager markets are the lifeblood that keeps them necessary, to enforce it. At the front end of Alan Mowat going. As a consequence, understanding the the publication we have a number of [email protected] intricacies of how the patent system operates introductory chapters that look in some detail Circulation manager Amanda Green is essential: get it wrong and valuable at specific aspects of the European patenting Publisher resources invested in research and process. These are then followed by a series Dan Rabey development will end up having been wasted. of country-based contributions in which [email protected] Publishing director But the problem with Europe is that it is correspondents answer questions relating to Tony Harriss made up of a collection of sovereign states – the way in which patents are enforced in their [email protected] each one with its own patenting rules and jurisdictions. In this way, the aim is to build a Globe White Page Ltd New Hibernia House ways of deciding disputes. For companies tool that will be of practical use to European Winchester Walk wishing to understand the complicated patent patent owners, as well as those from other London SE1 9AG United Kingdom infrastructure on the continent, this is the first parts of the world. Tel +44 20 7234 0606 lesson: Europe is not one, it is many. To ensure the highest quality, we Fax +44 20 7234 0808 There is a way, however, in which the approached only those firms with Email [email protected] Web www.iam-magazine.com patenting process can be simplified and that acknowledged expertise in European patent IAM is published bi-monthly by is to use the European Patent Office (EPO) as law and practice to submit editorial. We are Globe White Page Ltd the starting point for a protection strategy grateful to all contributors for taking the time ISSN 1741-1424 that covers the continent. Established by to do so. Above all, however, we are Individual subscription rate GB£365 signatories to the European Patent indebted to officials at the European Patent Printing and origination by Convention (EPC) in the 1970s, the EPO acts Office, who not only provided copy and Pyramid Press, Nottingham, UK as a one-stop location for securing granted statistics, but also gave much invaluable © Globe White Page Ltd patents in each of the current 31 member general help as Patents in Europe 2006 was Copyright applies. No photocopying. For licensed photocopying please states of the EPC, or in as many as the conceived and produced. call +44 20 7234 0606 applicant wishes to nominate. This publication does not purport to provide investment What the EPO cannot do, though, is to Joff Wild, advice. The publishers do not grant a unitary patent that covers all EPC Editor, IAM magazine bear the responsibility for any errors or omissions contained in countries. Because what it grants are www.iam-magazine.com the magazine.

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

Feature Facing up to Europe's challenges

Facing up to Europe’s patent challenges

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

In 2005 the EPO granted 53,300 patents, By Joff Wild, Editor, IAM magazine which means that by the end of that year it had granted a total of 760,700 since it The European Patent Office (EPO) was started to operate, equivalent to a figure of established by the contracting states to the 6.3 million national patents. European Patent Convention (EPC) back in Over the years, the EPO has established the 1970s and made its first grants in a reputation for the quality of the patents it 1980. In its first few years of existence it grants. It is an issue to which the Office was handling an annual workload of continues to pay close attention. With close approximately 10,000 applications. By the to 3,500 examiners, expertise across a wide end of 2005, this figure stood at 128,679 a variety of technical areas and access to a year, a rise of 4% on the 2004 total. Of database of 56 million patent documents – these applications, 49.5% came from people as well as a library composed of over 55 or organisations based in EPC member million facsimile patent documents and non- states, while 25.4% came from the United patent literature – applicants and other States and 16.7% from Japan. interested parties know that every application The EPO, which is headquartered in submitted to the EPO receives close scrutiny. Munich and has satellite offices in Berlin, The opposition and appeals process also Vienna and The Hague, is now established, ensures that there is the opportunity to along with the US Patent and Trademark address any problems that do occur during Office and the Japanese Patent Office, as the examination stage before embarking upon one of the three most important patent potentially costly civil litigation in member offices in the world. Between them, the so- states’ courts. Oppositions must be filed called trilateral authorities handle well over within nine months of a patent being granted 50% of the world’s patent applications. and in 2005, 2,960 were filed, meaning an What makes the EPO unique is the fact opposition rate of 5.4%. The Boards of that it grants rights that have the potential to Appeal, meanwhile, registered 1,684 new cover all contracting states to the EPC (with cases during 2005, representing a 9.8% the accession of Latvia in 2005, there are now increase on 2004’s figure of 1,533; settled 31 of these, with five more extension states appeals in 2005 numbered 1,499, slightly up also recognising European patents). The EPC on the previous year. During 2005, there was allows organisations to take advantage of a also some progress on dealing with the single grant procedure by filing an application backlog of cases waiting to be heard by the in one of the three official languages of the various boards of appeal – by the end of the EPO – English, French and German – to gain year, 753 appeals had been pending for over protection that potentially covers an area with two years, which represented a 9% a population of close to 500 million people. improvement on 2004’s total of 832. Two Not that every European patent covers all 31 new boards of appeal were also created. member states of the EPC – it is up to the These handle issues relating to chemistry applicant itself to nominate those jurisdictions and electricity. There are now 24 boards of where it would like its granted patent to apply. appeal in total.

www.iam-magazine.com Patents in Europe 2006 5 Facing up to Europe's challenges

Pendency times, of course, are not a Applications filed in 2005 problem limited to the appeals process. They Change in % remain a significant challenge for the whole 2005 60762 Direct European filings +3.8 of the Office. Although around 25% of patent 2004 58523 grants are now made inside the current Euro-PCT applications filed 2005 132861 +8.8 target period of 36 months from application, (international phase) 2004 122139 the average time to grant remains high, at Total European applications 2005 193623 45.3 months (though this does represent an +7.2 improvement of nearly a month on the 2004 (incl. Euro-PCT international phase) 2004 180662 average). Over the medium to long term, it is 2005 67917 Euro-PCT applications entering the regional phase +4.1 hoped that the introduction of an enhanced 2004 65252 service relating to the delivery of first opinions from examiners to applicants will be European applications 2005 128679 (incl. Euro-PCT regional phase) +4.0 help to reduce waiting times. 2004 123775 Designed to enhance the EPO’s reputation for quality and to help applicants make earlier, At the European level, there is Source: European Patent Office, Annual Report 2005 and therefore less expensive, decisions with acknowledgement that solutions have to be regards to their patenting strategies, the found to the current problems, especially as service aims to provide a first opinion from a strong patent system is a cornerstone of the examiner on an application within an the Lisbon Agenda, agreed by European average of six months from the original leaders back in 2000. The Lisbon submission of the application. In the opinion Agreement aims to establish Europe as the the examiner outlines his impressions of the world’s most competitive knowledge-based strength of the application based on the economy by 2010. claims and on the prior art. He can advise Although EU leaders have consistently that in its current state the application does stressed their commitment to the development not look like a potential candidate for grant or, of a unitary patent for the European Union – alternatively, that there appear to be few known as the Community patent – that would problems. Similarly, the examiner also makes be granted by the EPO and would be suggestions as to how the application can be automatically valid in all member states of the altered in order to stand a greater chance of EU, and enforceable under a single set of legal making it through to grant. In providing this principles, progress towards seeing this come service at such an early stage in the into force has been painfully slow. application process, the aim is to allow the By establishing a Community patent, the Office’s customers to manage their patenting idea is that patents will be less expensive to risks more effectively and so gain greater obtain and that patentees will have more value from their IP portfolios. certainty because the rights they own will be subject to only one set of rules and Looking outwards procedures. However, while there seems to be The EPO does not issue patents that are general consensus that the Community patent enforceable across Europe. Instead, an is needed, the devil is in the detail. There are applicant will nominate those countries in a number of issues that still have to be which it wants to be protected and, if the resolved before it can take effect, most of application gets the green light, the EPO will which resolve around language and, to a effectively grant national patent rights for lesser extent, the nature of the enforcement each of those countries. And while the EPO framework. Although talks are ongoing there route makes life easier for applicants and seems little prospect of a breakthrough in the also means that potential patents are short to medium term, as the negotiating subjected to highly rigorous scrutiny, the parties struggle to design a system that not current system does present major only makes patenting in Europe less expensive problems; specifically in the areas of cost and more certain, but also satisfies those that and litigation, should this arise. It remains worry about issues such as translations. the case that getting Europe-wide protection Although the EPO has made clear that it is significantly more expensive than it is to supports the introduction of the Community get protection for the whole of the US or patent, it is also pragmatic enough to realise Japan; while enforcement of rights is far less that the chances of it actually happening any certain. Courts in, say, Germany and the UK time soon are remote. That means, of will often reach completely different course, that European patentees and decisions in cases that are to all intents and applicants are still faced with the purposes about the same thing. disadvantages the current patent

6 Patents in Europe 2006 www.iam-magazine.com Facing up to Europe's challenges

Applications by residence of infrastructure presents – points that were as the defendant were domiciled in a applicant in 2005 underlined during a European Commission contracting state. consultation process on Europe’s patent In this way, the infringement and validity system and its future that started at the of European patents would be litigated in the beginning of 2006 and culminated in a same proceedings, while any decision to others 8.4% public hearing in Brussels in July. revoke a European patent would be DE 18.5% applicable in all contracting states to the The need to harmonise EPLA. In effect, this would make the JP 16.7% What became apparent during this European patent a unitary right in those consultation process, which saw a total of countries that signed up to the Agreement. FR 6.2% 2,515 submissions from individuals and In the past, the Internal Market DG had various interested organisations, was that been hostile to the EPLA, regarding it as very NL 6.1% while support for the principles behind the much a second best to the Community Community patent remained strong, those patent, while at the same time casting doubt CH 3.9% thinking that it was a viable prospect in its on its legality under EU law. However, it GB 3.6% US 25.4% current form were almost non-existent. seems that minds have been changed. In his IT 3.3% This was something that was recognised public hearing testimony, McCreevy 7.9% AT, BE, BG, CY, CZ, DK, by the Commissioner of the Internal Market described the EPLA as “a promising route” EE, ES, FI, GR, HU, IE, Directorate General Charlie McCreevy in a and is reported to have instructed officials IS, LI, LT, LU, LV, MC, PL, PT, RO, SE, SI, SK, TR speech he made in Prague in October 2006. to work on taking the project forward. “Industry is not enamoured by the Furthermore, McCreevy told a committee EPO 49.5% ±0.0% compromise reached by the Council in 2003 meeting of the European Parliament in June US 25.4% −0.9% on the Community patent in terms of the that he was determined to ensure that JP 16.7% ±0.0% proposed solution in respect of language and Europe’s patent system is reformed. Others 16.7% +0.0% the jurisdictional system because they don't “Businessmen, faced with a 21st-century achieve the cost reductions and the global economy, scratch their heads in Source: European Patent Office, Annual Report 2005 simplification of the system that industry disbelief when they see us stuck in wants,” he said. Instead of the Community discussions about language regimes and patent, therefore, McGreevy hinted that the regional distribution of courts. What they Commission may throw its weight behind two want is a cheaper and reliable patent other initiatives supported by the EPO: the system. That’s why I think we should look at European Patent Litigation Agreement (EPLA) all possible routes forward, be they on jurisdiction and the London Agreement (or Community or non-Community initiatives.” Protocol) on the language regime. “Before the As a voluntary agreement only those end of this year,” he explained, “I will be countries that wish to be bound by the EPLA proposing that the Commission adopt a need to sign up, although in practice the communication and action plan aimed at endorsement of Germany, the UK and France tackling the patent issues all in one approach. takes care of Europe’s three biggest markets: In particular, I want to tackle the jurisdictional this will increase certainty for patentees and issue so that we don't have different courts also reduce the costs of pan-European in different countries delivering divergent litigation. An added attraction is that because interpretations on the same patented this is an agreement between contracting invention.” In a telling final sentence states of the EPC, there is no need for any McCreevy stated: “We cannot aspire to being green light from all EU member states or the the most competitive economy in the world if European Parliament. However, in a vote on we don't find workable solutions to patent 12th October, the European Parliament, while application and protection.” supporting the broad principles behind the EPLA, made clear that it had substantial Progress on the EPLA reservations about the EPLA as currently A draft of the EPLA has been agreed by worded. Although this does not, of itself, officials from a number of member states of preclude the Agreement being ratified, it does the European Patent Convention, including make it politically much more difficult. the UK, Germany, France, Sweden, Switzerland and the Netherlands. This The Protocol advances envisages the creation of a European Patent But the EPLA is not the only initiative that Court that would have exclusive jurisdiction looks like moving forward. Also at the July to hear cases concerning actual or public hearings, EPO chief Alain Pompidou threatened infringements of European stated that he believed the French patents, and actions and counterclaims for government was now ready to ratify the the revocation of European patents, as long Agreement on the application of Article 65 of

www.iam-magazine.com Patents in Europe 2006 7 The European Inventor of the Year Awards

• SME category – Stephen Fodor, Michael Pirrung, Leighton Read and Lubert Stryer for their invention of the DNA chip while working for the Dutch company Affymax’s US research institute. • Universities and research institutions category – Peter Grünberg, of Germany’s Jülich Research Centre, for his discovery of the giant- magnetoresistance effect, or GMR. • New EU member states category – John Starrett, Joanne Bronson, John Martin, Group photo of the winners of the first European Inventor of the Year Awards Muzammil Mansuri and David Tortolani, whose work – based on research done at On the evening of 3rd May 2006, at the the Academy of Sciences of the Czech Autoworld Museum in Brussels, over 400 Republic – resulted in a breakthrough people attended a gala dinner and ceremony with chemical compounds, called to discover the names of the first recipients prodrugs of phosphonates. of the European Inventor of the Year Awards. • Non-European countries category – Hosted by veteran BBC journalist Michael Larry Gold and Craig Tuerk, of NeXstar Buerk and jointly organised by the European Pharmaceuticals, Boulder, United Patent Office and the European Commission, States, who found out that nucleic acids the Awards were designed to showcase the can bind a protein to potentially importance of innovation for Europe’s future intercept other proteins that cause and to strengthen the continent’s position as diseases such as AMD. a dynamic centre for science and R&D in the • Lifetime achievement category – context of the EU’s Lisbon Agenda. Federico Faggin, an Italian scientist now Commission Vice-President and Enterprise living in California, who developed the and Industry Commissioner Günter first microprocessor chip, allowing huge Verheugen and EPO President Alain Pompidou EPO President Alain Pompidou with volumes of data to be processed and were both present to honour the winners. Commission Vice President Günter Verheugen unleashing a revolution in computer To establish the first set of Award technology. recipients, an international jury chaired by jurors drew on the technical expertise of the former Dutch Prime Minister Wim Kok Office’s 3,500 patent examiners. Speaking at the event, Professor Pompidou nominated inventors from 11 nations. The Awards were made in a total of six said that inventors should be “treated like nominees represented nine countries in categories and were handed to the following pop stars”, while Commissioner Verheugen Europe, plus Australia and the United States. inventors: expressed his hope that one day “the The list the jury drew up covered inventions • Industry category – Zbigniew Janowicz European Inventor of the Year will have the from all the fields of technology in which the and Cornelis Hollenberg, who invented a same prestige as the Nobel Prize”. The EPO granted European patents between 1991 method for making proteins in Hansenula Awards will now be held on an annual basis. and 2000. It granted over 380,000 patents in yeast, which is used to produce an that period, so in making their choice the affordable vaccine against hepatitis B. All photographs by Rupert Warren, © European Patent Office the Convention on the Grant of European should the Protocol come into force, it would Patents (the London Protocol) and predicted cut the cost of translations in Europe by 50%. that it would do so before the country’s May A number of countries have ratified the 2007 elections. Protocol, but it cannot come into force without Under the Protocol, member states of the the sign-up of France, the UK and Germany. EPC which share an official language with the And although the latter two have given it the EPO, ie English, French and German, would green light, France has been reluctant up to not require any translation of European now, citing concerns about the effect the patents in one of their official languages. Protocol would have on the French language Other countries, meanwhile, would have to and its role in the dissemination of scientific choose one of the official languages of the knowledge (in 2001, for example, the EPO as a “prescribed language”, in which European Parliamentary Regional Assembly of European patents would be translated, the Francophonie (French-speaking countries) although they would also retain the right to passed a resolution rejecting the Protocol). A require translation of the claims in one of major breakthrough in this regard came at the their official languages. It is estimated that end of September 2006, when the French

8 Patents in Europe 2006 www.iam-magazine.com Facing up to Europe's challenges

The top filers with the EPO in 2005 But with France on board, it will just be a matter of time for the Protocol. More Rank Company Application for which European grant proceedings were instituted in 2005 problematic is the future of the EPLA. Here, 1 Philips 4883 there are bigger issues to confront. These 2 Siemens 1863 include exactly how the new system will 3 Samsung Electronics 1585 function and how much it will cost. More 4 Matsushita Electric 1390 significant, however, is that the anti-software 5 LG Electronics 1152 patent lobby has decided that the EPLA is yet 6 Sony 1117 another back-door attempt to introduce 7 Bosch 1030 software patents into Europe and, as a result, 8 Microsoft 879 is now beginning to organise in opposition to it. Although McCreevy’s Internal Market DG 9 Fujitsu 837 may be getting more relaxed about the 10 BASF 778 desirability and legality of the EPLA, this 11 Nokia 688 does not guarantee that other parts of the 12 Thomson 577 Commission will be equally sanguine; while 13 DSM IP Assets 575 strong lobbying could begin to make the 14 IBM 573 whole issue less comfortable for individual 15 General Electric 567 member states. Certainly the vote of the 16 Alcatel 552 European Parliament indicates that many 17 Seiko Epson 521 politicians have yet to be fully convinced of 18 Bayer 519 the Agreement’s merits. 19 3M 517 20 Canon 499 Difficult steps 21 Hitachi 492 Because Europe remains a collection of sovereign states, it is always going to be 22 Fuji 462 difficult to construct a patent regime on the 23 L’Oréal 448 continent that matches those found in the 24 Delphi Technologies 447 United States and Japan, and that we will 25 NEC 431 see, in the future, in places such as China and India. Each of these countries has the Source: European Patent Office, Annual Report 2005 Constitutional Council ruled that the Protocol advantage of operating under a single patent did not run contrary to the French regime that is administered by an office Constitution, so clearing the way for formal responsible to just one government. Law French ratification. If this were now to occur, it making and policy discussions will inevitably would be a major step towards the Protocol be easier in such circumstances. coming into force and good news for all One only has to look at the failed attempt companies that patent inventions in Europe. to get the Computer Implemented Inventions Directive approved by the European Parliament, Obstacles ahead as well as efforts to force countries to So for European patentees, the signs are implement the Biotechnology Directive (which good. But it would be wise to remember that itself took a decade to get through the nothing has yet been agreed. And nothing is Brussels decision-making process) to see the guaranteed. But with Community patent task patent owners face in Europe. All they can negotiations looking as if they have stalled, do is to educate those that take decisions so attention has shifted to the Protocol and that, in time, they realise just how important the EPLA. patents are to the future of Europe’s economy. Of the two, the Protocol looks to be the While uncertainty and delay seem to be most likely to progress quickly as its aim is the natural state of things in a Europe that one that everybody shares – a much cheaper often seems to be fonder of grand statements patenting process in Europe. That said, rather than hard-nosed action, what is clear is language can be an emotive issue in France that the EPO remains committed to ensuring and there is no guarantee that, with that it not only grants high-quality patents, but elections looming, the Protocol will not be also keeps the whole issue of intellectual seized on as an issue in the run-up to polling property and patenting in particular on the day. In addition, even if France does ratify, political agenda. Ultimately, it is up to rights that does not guarantee the Protocol will owners to force the politicians to take their come into force, as a minimum of eight EPC needs seriously. They can be sure, however, member states must accede before it does. that as they attempt to do this they will have So far, this number has not been reached. a loyal friend in Munich.

www.iam-magazine.com Patents in Europe 2006 9 Quality at the EPO Feature

Quality at the European Patent Office

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

by the EPO are stringent. The three By Professor Alain Pompidou, President, conditions of novelty, inventive step and European Patent Office, Munich technical character are interpreted in the widest sense (EPC, Article 52(1)). This For the European patent system and the implies extensive search and examination European Patent Office (EPO), quality is not prior to the granting of patents, and requires an option: it is the heart of its identity, a highly skilled examiners with appropriate distinctive characteristic. European patents initial and continuing training. are granted on the basis of a uniquely thorough search and examination procedure. Recruitment and training of examiners They offer a degree of legal certainty that is Examiner recruitment is a thorough operation. unmatched anywhere in the world. They offer First, the EPO’s recruitment procedure is very guarantees of this quality that are competitive and demanding, and we benefit unparalleled. This commitment to quality from a strong interest from skilled applicants. originates in the mandate of the EPO, as laid Second, the EPO provides common training to down in the European Patent Convention ensure that all examiners follow, legally and (EPC), and in the will of European technically, a consistent approach. Particular governments and European society. attention is given thereafter to the individual Nevertheless, quality remains a permanent training needs of examiners, according to both challenge and a concrete objective for the their individual background and their field of EPO, as reflected in the formal quality work. New technological developments and management system initiated in 2004. trends also require us to reassess our training policy and needs continuously. Quality a defining characteristic At the recent EU hearing on Patent Policy in Documentation Europe, held in Brussels on 12th July 2006, Skilled examiners rely on extensive and high- civil society and, in particular, the quality documentation. Since the state of the representatives of large and small and art considered for the purpose of novelty medium enterprises, expressed their strong assessment is held to comprise “everything support for the high quality of the European made available to the public” (EPC, Article 54 patent. The desired reduction of cost should (2)), examiners need access to a vast stock not come at the expense of quality, they of patents and other documents. In this area argued, as the high quality of patents is a too, the EPO sets a benchmark: its virtual major asset for Europe and its knowledge library for examiners now comprises over 62 economy. The Commission and the Union’s million documents. The quality of this member states also showed that they share documentation is guaranteed by strict this vision of quality as a distinctive feature monitoring: 4.6 million documents were of the intellectual property system in Europe. reviewed in 2005, resulting in 314,000 It is the mandate of the EPO to grant manual corrections. Espacenet makes this high-quality patents. The requirements for patent literature publicly and freely accessible. patentability set out in the EPC and applied Unlike a number of patent offices

10 Patents in Europe 2006 www.iam-magazine.com Quality at the EPO

worldwide (notably the US office), the EPO developing a fourth level of quality control, takes global knowledge in all its forms as the which I shall detail below. Each of these yardstick of inventiveness. This includes levels of quality checking precedes a traditional knowledge, an area where the EPO decision. Any of them can result in a request has partnerships with many non-European for further search and examination. countries. These partnerships aim at Practices and procedures are under incorporating traditional knowledge into the EPO continual scrutiny, and they are reviewed on data banks. It also has the side effect of the basis of, for example: feedback from the making traditional knowledge available to the examination process, in particular from the public in the English language and thus quality control measures; the jurisprudence constitutes a very efficient way to protect and of the boards of appeal and other promote it. A database of traditional Chinese developments in the interpretation of patent medicine, for example, has been integrated in law; and feedback from users. the EPO stock of patent documents, ensuring With the changing European and global that techniques derived from traditional technological environment, patents in Chinese medicine are not patentable in Europe. sensitive areas require special attention, Professor Alain Pompidou supplementing our normal procedures. This is EPO President Stringent conditions for patentability the case with biotechnology, business The requirement of technical character for methods that show significant technical Patent quality patents is also, in my view, another token of character, and computer-implemented is at the heart the high quality European society expects from inventions. For such sensitive cases, the EPO its patents, as it helps to make the European is assisted by a network of experts who are of the EPO’s knowledge economy a safer and more consulted on a case-by-case basis. Issue philosophy predictable environment for entrepreneurs. The management groups have also been set up so-called ethical exclusions from patentability – within the Office. They systematically review such as the refusal to grant patents to every application in their area of concern, inventions that are contrary to ordre public or providing an additional level of quality control. morality – also contribute towards making the European patent system one of the most Possibilities of review demanding in the world. The first line of defence against low-quality patents is thus provided by the examiners Processes and the grant procedure and processes. The In addition to the quality aspects outlined second line consists of the opposition and above – the skills of the examiners, the appeal procedures. The fact that these are extent of our documentation and the high not heavily used proves the quality of the standards we apply – the EPO follows first line. Fewer than 7% of patents granted meticulously designed procedures that are by the Office are challenged in an opposition continuously reviewed and updated. The or appeal proceeding (two-thirds of these examination procedure in particular involves contested patents are amended or rejected). a high number of redundancies, which is one Recourse to the third line of defence, of the Office’s distinctive features. revocation proceedings in national court, is Examiners, of course, bear the primary very little used, as it should be. At 1%, the responsibility for maintaining high-quality litigation rate for the EPO is on par with that standards. They assess their own work of the world’s top patent offices. against systematic checklists and the The transparency of the patent grant requirements for the justification of their procedure and the multiple possibilities for recommendations are high, especially with third parties to challenge its outcome are regards to documentation and compliance further guarantees of the quality of the with the EPC. European patent. Applications are published Individual examiners are, therefore, the from the 19th month of the procedure, which prime actors in the operational quality enables third parties to present comments control processes. However, any decision on and facilitates public debates on inventions the granting of a patent is checked further and patentability in the early stages of the by an examining division, with a second patenting process. examiner, who reviews formal aspects, and a chairman, who checks the substance of the Principles of EPO Quality Policy patent application. After this second review, The objectives of the EPO are to support a third check on selected files is carried out innovation, competitiveness and economic by directors. In addition, the Quality growth in Europe. Defining what quality Management Directorate is currently means for us therefore entails identifying the

www.iam-magazine.com Patents in Europe 2006 11 Quality at the EPO

key factors in the fulfilment of these goals. It principle of continuous improvement is central is on this basis that the four principles of to our quality policy, which in turn involves the Quality Policy were specified: ensuring the Office’s responsiveness to • The first principle of the Quality Policy is change. legal certainty. A primary goal of the The environment in which the EPO patent system is to provide certainty to operates has seen some very obvious inventors, investors and enterprises with changes in recent years. The main new regards to the protection and the use of development posing a challenge is the inventions. The task of the EPO is to growth in our workload, with nearly 194,000 grant patents and to ensure that the filings in 2005, amounting to an increase of rights granted by the patent are 148% in 10 years. Other such factors commensurate with the contribution include the emergence of new types of made to technology. inventions in fields such as biotechnology or • Service is the second principle. The EPO telecommunications and IT, the evolving legal is at the service of European society. It background, the ongoing debate on EPO has to be reliable and flexible on the cooperation with national patent offices and basis of a balanced understanding of changes in the filing behaviour of applicants. that society’s needs and values. The fact This is why in 2004 I initiated the that the Office now provides applicants implementation of a formal Quality with an early opinion on patentability is a Management System, with a natural focus on good illustration of its commitment to quality in the examination area (ie, search, this principle. Its commitment to examination and opposition), and, as part of reducing the delays in the patenting the reorganisation of the EPO in 2005, the procedure is another. creation of a Principal Directorate for Quality • Third, the openness policy of the Office Management, and the integration of the has at least three advantages. The internal audit department under my direct transparency of the patent grant supervision. procedure facilitates comments by third The main added value of a formal quality parties early in the process (the public management system lies in the file inspection procedure allows anyone to systematisation of our approach to quality. submit comments on an application to The role of the European patent system is to the relevant examiner from the 19th provide certainty and predictability for the month of the process). The indication of European economy. Faced with the what applications have already been filed challenging environment of global innovation, also provides a powerful tool for it is only natural that the EPO should economical intelligence, and the endeavour to make the quality of its work publication of patents is a strong catalyst certain and predictable, further enhancing for research and innovation. the general reputation it already enjoys. • Fourth, the Office strives for continuous The Office’s efforts to formalise its improvement, in a permanent quality system have already borne fruit in a commitment to enhance quality, on the number of significant areas. basis of our five cardinal virtues: thoroughness, consistency, transparency, Customer satisfaction fairness and timeliness. The first recent development connected with the reorganisation of the Office is an Let me now turn to the details of the enhanced attention to the needs and EPO’s effort to secure and reinforce the high expectations of its users. That service is one level of quality already attained. of the four principles of the quality policy already indicates the Office’s intention to Formal quality management in the EPO open itself still further to European society. Quality at a given time, and even a history of This service reorientation is reflected in quality like that of the EPO, is not a guarantee the activities of the new Metric and Standards of future quality. On the contrary, the whole Directorate, which has taken over the task of point of a quality system is to ensure that redesigning the Users’ Satisfaction Survey quality is sustained with certainty beyond the with a view to exploiting its results more unavoidable changes of the environment and systemically. The incorporation of this unit of the organisation. As this requires continual within the Principal Directorate for Quality reassessment and adjustment, there is no Management will ensure that the EPO pays other way to secure quality than aiming at still closer attention to customer satisfaction constantly raising its level. Therefore, the when assessing the quality of its products

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and updating its processes and procedures work. This is done by closely scrutinising a accordingly. limited number of randomly sampled files, The handling of complaints has also been which are checked against legal, procedural integrated into the Office’s general quality and technical standards. Moreover, the management system. Complaints received by criticisms and suggestions of the internal the Office were invariably taken up by the audit department are an additional input into persons directly concerned; now they are the improvement loop described above. processed and analysed by the department which oversees the quality policy. European patent quality system The opening of the Office to society is The EPO acts as a coordinator and an clearly apparent in the work of the examining authority for the grant of European Communication Department, which was set patents. It does by its nature collaborate with up in 2004 to unify and enhance the ways in the national patent offices, which eventually which the Office presents itself. Significantly grant national patents and also receive a improved attendance at press conferences major (though diminishing) share of first filings. and briefings, wider dissemination of our The quality of European patents publications, clarification of our message therefore depends not only on the work of and image, coordinated communication with the EPO, but also on the contributions of the the European Commission – these are just national patent offices and their cooperation some examples of our renewed relations with the Office. This is why the member with the press, the public, policymakers, states of the EPC wish to implement a industry and society at large. European quality system, to provide a foundation for participating offices to Systematising the improvement loop achieve continuous improvement to the Another significant part of the quality effort quality of their products and services, and to relates to the systematisation and the enable them to participate in any utilisation strengthening of the so-called improvement of their searches by the Office. loop. Throughout the Office, as in the user The EPO, with its long experience and satisfaction surveys and the processing of strong track record for quality, has drafted a complaints, every issue, doubt or suggestion mandate for a working group to make that arises is analysed and integrated into proposals on this matter. This is being done the process of quality enhancement. Thus on the basis of the experiences of the EPO the Office is able to spot early signs of and national patent offices, and paying due problematic situations. regard to the need to adapt the proposed An example of the reinforced quality system to the particular improvement loop is the creation of an circumstances of a given office. additional level of operational quality control within the technical clusters. Randomly Conclusion sampled patent applications are to be The quality of the European patent system, surveyed and checked against electronic complying with the high standards demanded check-lists. This will provide us with by European society, relies on the EPO’s statistically relevant information on a procedures for granting patents and controlling continual basis for each technical field on the their quality. This is backed by the transparency most common flaws in the patent granting of the Office’s work, its attention to feedback procedure, and will thus allow for immediate from applicants, and its strengthened quality targeted actions to be taken for control and internal auditing. improvement. As these checks will also On this basis, and to continue fulfilling measure the effectiveness of the actions its wider mission to provide certainty for taken, resources can be applied in a industry in Europe, the EPO intends to targeted, efficient and economic way. remain the world benchmark for quality. In these efforts however, the Office’s main Internal audit asset – and the ultimate assurance of Another important aspect of the new quality quality – remains the unstinting commitment management system is the reinforcement of of its entire staff. our internal audit system, which now has a dedicated unit for auditing search and grant products, and which reports directly to me. It is therefore entirely separate from the examining area. Its primary role is to provide confidence in the quality of the Office’s

www.iam-magazine.com Patents in Europe 2006 13 The reform of the EPC Feature

The reform of the European Patent Convention: grant and opposition proceedings

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

protection; and the grounds for revocation. In By Pascal Moutard, Brevalex, Paris particular, Article 69, which defines the scope of protection of a European patent, is The economic value of European patents is a amended to include a special provision matter of growing importance for patentees, requiring that equivalents be taken into in particular in view of the evaluation of account, although no definition is given of companies’ intellectual assets. what an equivalent is. Most European In order to adapt the European Patent countries, however, already have a doctrine of Convention (EPC) more closely to the role of equivalents. patents in today’s economy and to users’ needs, the EPC was heavily modified in Filing, states designation and priority 2000. The so-called EPC2000 will replace claiming under EPC2000 the Convention presently in force by A general feature of the EPC2000 is that December 2007 at the latest, the exact date many provisions are harmonised with the depending on the ratification process in the Patent Law Treaty (PLT). In particular, the different EPC countries. This article is a applicant will have the following additional review of grant and opposition procedure filing possibilities: before the EPO, and also of the most • An application in any language, provided significant amendments which the EPC2000 a translation into one of the EPO’s will introduce. official languages is filed within three The EPC2000 has not affected the months of the filing of the application. important principle according to which only • A mere reference to a previous grant and opposition procedures are unified application, provided the last one and before the EPO. National courts of the states possibly its translation is filed within two designated in the European patent system months of the filing of the application. remain competent for any infringement within • A description without claims, provided their own territorial jurisdiction. Thus the claims are filed shortly after. However EPC2000 does not establish a single unitary the well-established case law regarding patent. Initiatives such as the Community Article 123(2) will still apply under the patent may cause this state of affairs to new Convention and it will be probably change in the future. Another possible very difficult in certain cases to extract alternative, although of a different nature, is a concise claim from a description in the European Patent Litigation Agreement which all features are intermingled. In (EPLA). other words, filing a description without The EPC, and in particular the EPC2000, claims can lead to situations where nevertheless contains some provisions there is no clear basis for a concise unifying to some extent the rights conferred definition of the invention. This by a European patent application after possibility of filing without claims will publication, and then by a European patent certainly be useful in some urgent, after grant; the authentic text of a patent cases but will probably be a source of application or of a patent; the scope of difficulties for some applicants.

14 Patents in Europe 2006 www.iam-magazine.com The reform of the EPC

With respect to priority claiming, the redraft a set of claims based on a prior EPC2000 is also very liberal. Claiming of application before filing in Europe. priority is possible up to 16 months from the Introducing different concise definitions priority claimed or until the filing of a request of the invention in the description is also for early publication. It also gives the recommended when preparing the applicant the possibility of having its rights re- application. This, together with broadened established with respect to the priority period dependencies of the dependent claims, will of 12 month. Re-establishment has to be be very helpful and will save time – and the requested within two months of expiry of the corresponding costs – at any further stage of 12 month period. As to the translation of the the examination or opposition procedure. priority document, it will be requested only if Preparing the application with these the priority claim is relevant to the principles in mind gives some potential determination of patentability. This should flexibility in view of the future grant result in significant cost savings for the procedure, reduces legal risks and is applicant. essential to the value of a future patent. The territorial extent of protection Concerning substantive patent law, the remains a strategic tool for the applicant with EPC2000 was signed at a time when the respect to competitors. As of now, 31 states recently withdrawn EC Directive, designed to have joined the EPC, which represents a harmonise the national laws of EU member huge territory and a huge market. Norway will states on the patentability of computer- also join the EPC in the near future. related inventions (CRI), was still a According to the EPC2000, all contracting possibility. Computer programs as such states will be deemed to be designated upon therefore remain excluded from patentability, filing in every application. This means that although the case law of the EPO today the application will provisionally designate all seems quite well established and national contracting states. And, regardless of the decisions regarding patentability of CRIs are designated states, any published European increasingly in line with it. This case law and application will form part of the state of the the legal basis in the EPC for CRI will art for novelty in view of any latter European probably remain as they are for a long time. application, each application being A legal basis is now included for second considered with its relevant filing or priority therapeutic application, which was formerly a date. The applicant can still choose (or construction of the case law. designate) the states in which protection for the invention is wanted (designated states), The grant procedure normally within six months of the publication Claims are definitions of the invention and of the search report. will be the reference when assessing whether any product or process is infringing The European patent application the patent or not. Claims are therefore The EPC2000 does not change what a essential. European patent application should basically During the grant procedure most of the comprise: a description of the invention in prosecution work done by the applicant or its terms of structural features and/or method European patent attorney (EPA) will concern steps and/or technical functions. the claims. The EPC sets out substantive Advantages, comparative results and criteria that have to be fulfilled by the examples should also be included, when claims; these mainly relate to novelty and available. inventive step. Prosecution work is essential Explaining the invention in terms of a as it determines the value of the patent, not problem-solution approach with respect to only in judicial but also in economic terms. the published prior art is very often a good The EPO grant procedure first comprises basis for any future discussion with the EPO a prior art search. A search report (SR) is on patentability. The EPO examiner could still drafted and published by the EPO. There is consider another technical problem, but no duty of disclosure, unlike the US practice. nevertheless the approach presented by the However, according to the EPC2000, the EPO applicant will be helpful. may now invite the applicant to provide Claims, which define what the applicant information on prior art taken into wants to protect, are very important. Some consideration in national or regional patent patent applications are filed with claims proceedings. If the applicant fails to reply, the which are adequate for another legal system application is deemed to be withdrawn. Is (the US for example), but not for European this the beginning of a duty of disclosure at practice. It is therefore often advisable to the EPO? The applicant should evaluate

www.iam-magazine.com Patents in Europe 2006 15 The reform of the EPC

whether any document cited by the EPO losses in the long term. should be disclosed in the context of any The EPO has made many efforts to make prosecution abroad, including, of course, in the whole grant procedure shorter than it used the United States. to be. Some periods have been shortened or If the application as filed contains many are no longer extendable, for example the one independent claims of the same category, for responding to the so-called Rule 51(4) and/or very broad claims, the SR will not be Communication. And the fees for further very well focused on the invention. Even processing are also much higher than in the more problematic is the situation where the past. In addition, the EPO still offers claims are too vague or cover non-searchable applicants the chance to file a request for subject matter. Indeed, in such cases the accelerated examination. This is very efficient, EPO does not carry out any search: the incurs no additional costs and is very helpful subsequent stages of the grant procedure to applicants who are interested in a rapid are normally based on the SR and a patent grant, for example because of a licence cannot be granted if there is no SR. Such a agreement or a potential litigation, or because situation is very common with business they are start-up companies whose investors method applications, but also in other fields; are not demanding only patent applications, for example, when therapeutical or surgical but also granted patents. methods are claimed. In such cases it is strongly recommended that the claims be Limitation proceedings redrafted before filing in order to claim The EPC2000 establishes limitation subject matter not excluded from the search. proceedings which did not exist before. The Together with the SR, the EPO now owner of a granted patent will be able to file issues an opinion on whether the application a request for limitation of its own patent. and the invention meet the requirements of The Examining Division will examine whether the EPC, the opinion and the SR forming the amended claims filed by the owner are a so-called Extended Search Report (ESR) limitation of the granted claims, are clear A careful consideration of this ESR is and comply with Article 123(2)(3) EPC. If essential to evaluate possible future legal not, the patentee will have one opportunity risks. At this stage, the applicant can amend to amend the patent. The request for the application, which is a good opportunity limitation can be re-filed again at any time. to prepare for the substantive examination. Opposition procedure will take precedence Amending the claims during substantive over the limitation procedure: a limitation examination is often very delicate work. A cannot be filed if opposition proceedings are typical difficulty arises when the applicant pending and any limitation procedure will be instructs his EPA merely to file a set of claims terminated if an opposition is filed. already granted by another patent office, such as the USPTO. These sets of claims are Opposition proceedings usually not adapted to EPO practice. Any third party can file an opposition within The EPO is very strict with any added nine months of the grant of any European subject matter, or any amendment which patent. It is, of course, a legal risk which introduces technical information not has to be taken into account if an economic contained, at least implicitly, in the application evaluation of a patent application is as initially filed. For example, a generalisation performed at a very early stage. The of a particular feature very often introduces consequences of an opposition can be added subject matter. Certain – but not all – dramatic, as most oppositions are usually patents granted with added subject matter filed after a long grant procedure, and after may be totally revoked in post-grant validation of the patent in several contracting opposition or by a national court without any states. In addition, it applies to all possibility for the patentee to overcome an contracting states covered by the patent. objection of added subject matter. Other The opponent seeks to challenge the patent offices may be more flexible in this patentability of the protected invention. It respect and sometimes the applicant just usually files evidence which was not taken instructs the EPA to file another set of claims into consideration by the EPO before grant. already granted by another patent office. This Noteworthy is the fact that there is no is a major risk, as this other set of claims estoppel effect as in the inter partes re- may contain some added subject matter examination in the United States. Not citing forbidden according to EPO criteria. The mere a document which the opponent could have filing of such a set of claims can be a short- known about when filing the opposition will term cost saving, but can also result in huge not prevent the opponent from using such a

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document at a later stage; for example, during any litigation procedure. The opponent is usually a competitor who feels threatened by the granted patent or someone who has already been directly threatened by the patentee. For this reason it is preferable for the patentee to wait, as much as possible, for the expiration of the nine-month period after grant before approaching any third party with not only peaceful intentions but also the thought to trigger infringement action. However, this is not always possible, usually for strategic reasons. In response to an opposition, the patentee has limited opportunities to amend the claims. In addition to being forbidden to add subject matter, the patentee has to deal with another constraint: it cannot extend the scope of the claims. The chances for the patentee to amend the claims are therefore much more limited than during the grant procedure. An opposition procedure can extend over two or three years. It should be noted that a request for accelerated processing of an opposition is possible when an infringement action is pending before a national court of a contracting state. The EPC2000 has introduced a legal basis for giving the opposition division the right to examine of its own motion grounds not invoked by the opponent if these could prejudice the maintenance of the patent.

Conclusion As already explained above, national courts will decide any litigation relating to a European patent. In courts and among judges, awareness of the value of IP assets, and of the necessity to stop any infringement and to award adequate compensation for damages to IP owners, is growing. The European Union is also aware of the problem of infringement in Europe: see for example Directive 2004/48 on the enforcement of IP rights and Regulation 2003/1383 on customs action against infringing goods, which was extended to patents. The difficulties of the various procedural steps and the consequences of oversight in dealings before the EPO should therefore be considered very seriously by applicants. Underestimating the consequences of a particular prosecution strategy can have huge consequences, in both legal and economic terms. The EPC2000 offers some flexibility with respect to the former EPC but one should never underestimate the difficulties of the procedure before the EPO.

www.iam-magazine.com Patents in Europe 2006 17 Boards of Appeal Feature

The Boards of Appeal at the EPO

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

There is no suspensive effect on By Pascal Moutard, Brevalex, Paris national procedures; for example, on infringement actions based on a patent This article introduces some legal and subject to appeal. In certain cases, practical aspects of the appeal procedure however, a national judge will stay an before the Boards of Appeal (BoA) of the infringement action until a final decision is European Patent Office (EPO). issued by the BoA, but there is no obligation The BoA have a particular place in the to do so, at least not in the United EPO since they are independent: they are Kingdom, Germany and France. bound only by the European Patent Convention (EPC). In addition, they have their Persons entitled to appeal own rules of procedure. New Rules of Any party to proceedings adversely affected Procedure of the BoA (RPBA) entered into by a decision may appeal. A party is adversely force in 2003. They have led to greater affected if its requests were not completely efficiency and shorter appeal proceedings. satisfied. Such party can be an applicant, a The EPC2000, which will come into force at patentee or an opponent. A person having the latest in December 2007, does not some economic link with a party to the significantly change the role of the BoA. proceedings is not entitled to appeal. Over the last 10 years, the BoA have Let us consider the example of an developed their own procedural rules which opponent requesting the revocation of a are very specific. Some of these are patent in its entirety and the patentee explained below, in particular with respect to requesting the rejection of the opposition. If the rights of the different parties in the the opposition division decides to maintain same appeal procedure. the patent in an amended form, none of the Very different principles apply to requests has been completely satisfied. examination appeal (ex parte) proceedings Hence both parties may appeal. and opposition appeal (inter partes) Theses principles may seem to be proceedings. obvious. However, a dramatic situation may occur when a patent is assigned to a Decisions subject to appeal transferee who has not registered the Decisions by the Receiving Section, the assignment at the EPO. Only the registered Examining Divisions, the Opposition Divisions patentee or applicant may file an appeal and and the Legal Division at the EPO are subject a late registration of a transfer does not to appeal. However, opinions by the Search retroactively validate an appeal. Division on lack of unity, decisions by the Any other party to the same proceedings President of the EPO and decisions by the who has not filed an admissible appeal is BoA themselves are not subject to appeal. party to the appeal as of right. However, a The first main effect of an appeal is party as of right has weaker rights than the suspensive: the appealed decision does not appellant filing an appeal, as it can not come into force and does not have any legal request “more” than that which it obtained effect until the BoA issues its decision. before the first instance and it has no right

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to continue an appeal procedure if the sole accept amended claims at any stage of the appellant should withdraw its appeal. appeal proceedings. They used to admit new requests in appeal proceedings: for example, Filing a notice of appeal when they were filed to overcome objections, A notice of appeal has to be filed within two or when late filings could be justified and months of the date of notification of the when the new requests were prima facie decision being appealed. It must contain a admissible. However, the new RPBA specify statement indicating, in particular, the extent conditions under which a late filed to which an amendment or a cancellation of submission is admissible and these seem to the decision is requested. Within four months be more restrictive than before. after the date of the same notification, New requests are refused when their filing written statements specifying in detail the is seen as an abuse of procedural rights. legal or factual reasons why the decision should be set aside have to be filed. A mere Opposition appeal proceedings reference to previous submissions made Very delicate situations may occur in the during an opposition procedure is usually not course of opposition appeal proceedings. considered sufficient. In particular, a question was raised Another principle is that an appeal whether and to what extent a BoA could should be within the same legal and factual depart from the request formulated in the framework as the opposition proceedings or notice of appeal when deciding opposition should remain within the same legal and appeal proceedings to the disadvantage of factual framework of the decision made in the appellant. the first instance. The Enlarged Board (G 9/92 and G Incomplete notice of opposition or 4/93) concluded that: incomplete grounds of appeal will result in 1. If the patentee is sole appellant against the appeal being considered as an interlocutory decision maintaining his inadmissible. The question of admissibility patent in amended form, neither the may be raised at any stage of the appeal Board of Appeal nor the non-appealing procedure, even during oral proceedings. opponent (as party to the proceedings as Filing an appeal is a very delicate matter; of right) can challenge maintenance of many decisions reject appeals just because the patent as thus amended. they are inadmissible. Appellants should be 2. If the opponent is sole appellant against aware that filing an appeal is not merely a an interlocutory decision by an formal matter, instead the action should be opposition division maintaining the conducted with great care. Once a notice of patent in amended form, the patentee is appeal has been filed, the appellant should primarily restricted in the appeal not wait until the end of the four-months proceedings to defending the patent as period to prepare the written statements thus maintained. setting out the grounds for appeal. The appellant should always consult a If it is the intention of one party to obtain European patent attorney to draft the notice “more” or a “better result” than that which of appeal and the written statement: the was obtained in the first instance, it should initial “request” determines the extent of the not rely on the fact that the other party has proceedings already filed an appeal, it should also file an appeal. In other words, a party as of right Amendments to granted patents does not have the same rights as parties As a general rule, the EPO proceedings that have filed an admissible appeal. Instead, should be conducted expeditiously, in the parties as of right are limited to defending interests of the public and of the parties. the result obtained in the first instance. Such rules apply not only to examination and opposition proceedings, but also to the Patentability requirements under examination corresponding appeal proceedings. The Enlarged BoA has established that only This means that a patentee who has lost the grounds for opposition already cited at before an opposition division has the right to the opposition stage can be considered on have rejected requests reconsidered by the appeal. New ones can be introduced only BoA, but has no right to file new requests with the consent of the patentee, whose raising issues which the first instance did not power of veto is applied regardless of the look at (the role of an appeal is, in principle, relevance of the new grounds. limited to reviewing the appealed decision). In other important decisions (G 1/95 However, the BoA can, at their discretion, and G 7/95), the Enlarged BoA explained

www.iam-magazine.com Patents in Europe 2006 19 Boards of Appeal

that “a fresh ground for opposition” means a proceedings is also admissible. An intervening new legal basis for objecting to maintenance party can raise any of the grounds for of the patent which was neither raised and opposition under Article 100 EPC. An substantiated in the notice of opposition nor intervention is dependent, however, on the introduced into the proceedings by the extent to which opposition or appeal opposition division. proceedings are still pending. Should a Opposition appeal proceedings are very patentee sue or threaten a third party for specific and should be planned with great infringement before the end of the nine-months care. In addition, a party to an opposition period for filing an opposition, the alleged appeal procedure will not have the same infringer will certainly file an opposition. rights, depending upon its status of What is the influence of such an appellant or of party as of right. opposition and of a possible subsequent appeal on the infringement action? The Examination appeal proceedings situation differs from state to state. Let us The situation is completely different in take the example of UK and France. examination appeal proceedings: the above In UK, the judge usually considers that principles, applicable to inter partes staying is the preferred option; however, the proceedings, do not apply to ex parte decisive question is whether staying the proceedings. procedure would cause any injustice. Several The Enlarged BoA has ruled that where factors are considered, including the delays the examining division refuses an application, which are considered a feature of the EPO the BoA has the power to examine whether opposition and subsequent appeal the application or the invention to which it procedures, and the means available to the related meets the requirements of the EPC. parties for fighting their case. This also holds for requirements the division In General Hospital Corporation’s has not considered in the examination European Patent, a revocation action in the proceedings or regards as fulfilled. In such UK was running parallel to opposition circumstances, the BoA should, where proceedings and infringement proceedings in appropriate, decide either to rule on the case other countries. A stay was granted by the itself or send it back to the examining Patent Court because of the injustice to the division. This follows from the fact that an ex patentee if the UK proceedings went ahead parte review is not contentious by nature. (the patentee having shown that it could not afford the costs of both proceedings, so being Accelerated processing placed in the position of having to surrender Parties with a legitimate interest may ask the patent if no stay had been granted). the BoA to deal with their appeals rapidly. In Kimberly-Clark v Procter & Gamble, the The BoA can speed up an appeal as far as judge decided in a similar situation not to stay the procedural regulations allow. the infringement action, considering that this Requests for accelerated processing would write into the UK proceedings the delays must be submitted to the competent BoA which are a feature of EPO oppositions. either at the beginning of or during In France there is no provision obliging a proceedings. They should contain reasons French judge to stay the infringement action for the urgency together with relevant in such a case. As a general trend, however, documents; no particular form is required. the French judge decides to stay the By way of example, the following infringement action and to wait for a final circumstances could justify an appeal being decision by the EPO with respect to “a fair dealt with particularly rapidly: administration of justice” (TGI Paris – Bonzel • Infringement proceedings have been and Schneider Europe AG v Carbo France – brought or are envisaged. 18th April 1991; TGI Paris – Pall Corporation • Decision of potential licensees of the v Flot, Cuno Europe and Cuno Inc – 16th patent in suit hinges upon the outcome April 1989). of the appeal proceedings. In some other cases the French judge • An opposition which is to be given has not felt that it was necessary to wait for accelerated processing has been made the final decision by the EPO (TGI Paris – the subject of an appeal. Henlopen Manufacturing Co Inc v Lab Payot, Sofadis, Geka France and Georg Karl Brush Appeal proceedings and infringement GmbH, 10th July 1991). An alleged infringer may, subject to specific conditions, intervene in opposition Decisions by the Boards of Appeal proceedings. Intervention during appeal The BoA may hand down a final decision in a

20 Patents in Europe 2006 www.iam-magazine.com Boards of Appeal

case or may send it back to the first instance department which originally issued the appealed decision. Remittance to the first instance occurs, in particular, when a new piece of prior art is cited in the course of the appeal proceedings, which the BoA decides to take into consideration; or because of a substantial procedural error made by the first instance; or because of substantial amendments made by the appellant. The first instance department to which the case is remitted is bound by the reasons or findings that support the BoA’s decision or that are essential to that decision. The binding effect is only for the case remitted to the first instance, not for any other case and not for any other instance. For example, if a BoA issues a decision cancelling a former decision of an examining division regarding inventive step, an opposition division is not bound by this. There is, in principle, no binding effect on national procedures. For example, according to the 10th Civil Senate of the German Federal Court of Justice, comments made in the grounds for a decision in an EPO opposition or in a subsequent appeal procedure are considered as expert opinions which must be taken into account, no more and no less.

Enlarged Board of Appeal The Enlarged BoA is not a third degree of jurisdiction. Its job is to ensure uniform application of the law, or it decides or gives opinions when an important point of law arises. According to Article 112 EPC, it is responsible for: deciding points of law referred to it by BoA; or for giving opinions on points of law referred to it by the President of the EPO when two BoA have given different decisions on that question. According to new Article 112a of EPC 2000, the Enlarged BoA will also be responsible for deciding on petitions for review of decisions of the BoA. Such petitions may, in particular, be filed on grounds such as a fundamental violation of the right to be heard or any fundamental procedural defect.

www.iam-magazine.com Patents in Europe 2006 21 A dangerous hobby? Feature

Filing divisional applications in Europe: a dangerous hobby?

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

In recent decisions of the Boards of By Hans Hutter, Nederlandsch Appeal (BoA) of the EPO, very important Octrooibureau, The Hague questions of law as to divisional applications have been referred to the Enlarged Board of In the United States, it is quite common for Appeal (EBoA). This article discusses and applicants to file one or more divisional or explains these questions. Moreover, some continuation applications for important issues not addressed by the BoA’s will technological developments. To that end, be addressed. patent attorneys sometimes try to draft new claims in a still pending application that may Questions referred to EBoA in read on products already on the market from decision T39/03 competitors and file these claims in such a In decision T39/03, dated 26th August divisional or continuation application. The 2005, BoA 3.4.2 decided to refer several parent application of the divisional or questions of law to the EBoA and these continuation application may itself be a questions are now pending as G1/05. divisional or continuation application. Basically, the main question addressed by The great advantage is, of course, that T39/03 is: “Is a divisional application one sees the competitor’s product and one containing added matter on the date of filing can seek the proper words from the a valid or invalid application and can it be description or drawings, and try to map a corrected during proceedings before the EPO, new claim on the existing product. Of course, even if the parent is not pending anymore?” also in the United States, care should be BoA 3.4.2 had already dealt with some taken not to extend the subject matter of the other issues relating to divisional application as originally filed. However, the applications in earlier decisions T720/02 United States Patent and Trademark Office and T797/02. These were issued the same (USPTO) is, in practice, rather flexible. day and have largely the same content. The European Patent Office allows In T720/02, the BoA was confronted divisional applications to be filed from a with the following situation. The decision pending patent application, although the under appeal related to a patent application concept of continuation applications, whereby that itself was a divisional application from the USPTO allows subject matter to be an earlier application (the parent added, is missing in Europe. But by filing one application), where the parent application or more divisional applications from a itself was in turn a divisional application divisional application in a sequence, it seems from a still earlier application (the that some European patent applicants are grandparent application). The examining attempting to copy the United States division examining the application had continuation application practice. However, decided that the application contained an adding subject matter is not allowed: the extension of subject matter as the main European Patent Office (EPO) has always claim was missing a feature that had been been stricter in its requirements as to presented consistently as being essential. extension of subject matter than the USPTO. With reference to earlier decision

22 Patents in Europe 2006 www.iam-magazine.com A dangerous hobby?

T1158/01, this BoA concluded that the EPC However, the essential issue here was does allow the filing of a divisional related to another legal problem of divisional application from an earlier application that applications. In T39/03, the decision under itself is a divisional application. However, the appeal related not to a divisional from a issue discussed at length in T720/02 was divisional application, but to a first generation the time limit for filing a divisional application divisional application. Again, the problem was from another divisional application. The BoA that the examining division was of the opinion referred to Rule 25(1) EPC which reads as that a feature that was presented in the follows: “The applicant may file a divisional earlier application as being essential was application relating to any pending earlier missing from the divisional claims such that European patent application.” they contained added subject matter. The Afraid of the possibility of filing an almost BoA supported this point of view. endless chain of divisional applications, However, the BoA raised the issue that it something that would leave the public in great may well be that this cannot be corrected uncertainty as to which potential rights are anymore in proceedings before the EPO since outstanding, the BoA observed that Rule Article 76(1) requires: “A European divisional 25(1) establishes the time period in which all application must be filed directly with the possible divisional applications should be filed European Patent Office in Munich or its (ie, all possible divisional applications from a branch at The Hague. It may be filed only in parent application can be filed only while the respect of subject-matter which does not parent application is pending). In the Board’s extend beyond the content of the earlier view, it should be evident to the public which application as filed; in so far as this provision other inventions will be claimed by the is complied with, the divisional application applicant of the parent application before it is shall be deemed to have been filed on the granted. Any other solution would be date of filing of the earlier application and detrimental to the public interest: “By the shall have the benefit of any right to priority.” mere filing of recurrent cascading divisional The BoA considered Article 76(1) to applications, to leave the public completely imply that, if the requirements of Article uncertain during most of the life of a patent 76(1) are not met, the divisional application as to how much of the subject-matter of the cannot be afforded a filing date and is, original patent application might still be therefore, invalid. claimed. This would indeed pave the way for In its decision, the BoA devoted much potential misuse by applicants of the attention to the consequences of this line of possibility afforded by the EPC to file reasoning to chains of divisional applications: divisional applications.” if in a chain of divisional applications an The BoA even expressly denounced the intermediate application turns out to be current US system in this respect: “The invalid due to being filed inclusive of added obviously unacceptable consequences of the subject matter, all the divisional applications position advocated by the appellant, which in being filed after this intermediate application effect would result in the setting up of a and being (in)directly dependent upon this system of ‘continuation applications’ of the intermediate application should be type explicitly provided for in the US patent considered “invalid” too. law, but for which there is no basis in the Understanding the great legal [European Patent] Convention.” consequences of this reasoning for many Therefore, the BoA decided that, in order applicants and patent proprietors, the BoA for a divisional application of which the decided to refer the following questions to parent application is itself a divisional the EBoA: application to meet the requirements of 1. Can a divisional application which does Article 76 and Rule 25(1) EPC, it must be not meet the requirements of Article directed to an object that is already claimed 76(1) EPC because, at its actual filing in the parent application. In other words, a date, it extends beyond the content of first divisional must contain in its claims all the earlier application, be amended later subject matter that is eventually to be in order to make it a valid divisional divided from an application. application? Interestingly enough, the BoA expressly 2. If the answer to question (1) is yes, is stated that this view was so obvious that it this still possible when the earlier concerned a referral to the EBoA as application is no longer pending? unnecessary. 3. If the answer to question (2) is yes, are In T39/03, the same BoA supported its there any further limitations of substance earlier views as expressed in T720/02. to this possibility beyond those imposed

www.iam-magazine.com Patents in Europe 2006 23 A dangerous hobby?

by Articles 76(1) and 123(2) EPC? Can parent application. Any support, even in the the corrected divisional application in description or drawings, in any earlier particular be directed to aspects of the application is enough. earlier application not encompassed by Moreover, it concluded that public those to which the divisional as filed had uncertainty as to when subject matter is been directed? divided from a pending application (that itself may be a divisional in a chain of divisional Note that the last portion of question 3 applications), possibly resulting in misuse or (“Can the corrected divisional application in unfairness, is no legal concept. It even particular be directed to aspects of the earlier observed that uncertainty is inherent to the application not encompassed by those to patent system where applications remain which the divisional as filed had been secret for a period of 18 months after the directed?”) seems a little strange. If it asks first priority date! for an express denial of the option to change As to whether a divisional application can the original subject matter of the divisional be declared invalid due to the application application to subject matter not forming unity containing added subject matter in view of of invention with this original subject matter, its parent, as defended in T39/03, this BoA there seems to be no way of getting a has no doubts whatsoever: “There is no positive answer. There is no way claims in a basis in the EPC for the concept of an pending application in Europe can be “invalid” application and it does not seem substituted by a set of claims that are appropriate to draw legal consequences from directed at a different invention. Maybe this the perceived properties of non-existent legal portion of question 3 is an attempt to categories. In fact, the terms ‘valid’ or smuggle a question relating to chains of ‘invalid’ do not occur in the EPC.” divisional applications into the referral, in the So, the conclusion of this BoA is that sense that it requests the EBoA to give an every pending application should have been opinion about whether a first divisional should accorded a filing date. In its view, the already claim all subject matter that should requirements of Article 76(1) are mere be divided out of the parent application (a requirements for grant (ie, the legal question that could not expressly be asked consequence of not meeting the since the case at hand was not about a requirements of Article 76(1) is that the divisional from a divisional application). application shall not be allowed to proceed to grant). The requirements of Article 76(1) Questions referred to EBoA in are, thus, similar to requirements such as decision T1409/05 novelty and inventive step. In T1409/05, BoA 3.4.03 found several So, according to this BoA, a divisional issues where it had great difficulty in application cannot become simply invalid supporting the point of view expressed in due to one of its predecessors in a chain of earlier decisions such as T720/02 and divisional applications being invalid for being T39/03. filed with claims that contained added T1409/05 dealt with a situation where a matter relative to one or more earlier divisional was filed from a parent application applications in the chain. that itself was also a divisional application. In fact, the legal remedy to all So, it could officially raise all issues dealt uncertainties as referred to by these earlier with by BoA 3.4.2 both in T720/02 and in BoA decisions seems to be straightforward T39/03. And so it did. for this BoA: just check whether any subject For deciding whether a divisional matter is “smuggled in” in a divisional application contains added subject matter application by comparing its content with all which is not allowed by Article 76(1), earlier applications in the chain as filed: “On T1409/05 refers to still earlier case law. This this board’s interpretation it would suffice earlier case law has consistently shown over for compliance with Article 76(1) EPC that the years that “content of the application” as what is disclosed in the application be referred to in Article 76(1) is to be directly, unambiguously and separately interpreted as “the total technical information derivable from what is disclosed in each of content of the disclosure”, including claims the preceding applications as filed.” and description. So, its conclusion is that Even though this BoA based its Article 76(1) does not provide any basis for interpretation on well-established case law, it the point of view that a divisional application recognised the conflicts with the reasonings of of a divisional application can be directed several recent other decisions, and it referred only to subject matter already claimed in the the following questions of law to the EboA:

24 Patents in Europe 2006 www.iam-magazine.com A dangerous hobby?

1. In the case of a sequence of applications application be directly, unambiguously consisting of a root (originating) and separately derivable from what is application followed by a divisional disclosed in each of the preceding applications, each divided from its applications as filed.” However, this is predecessor, is it a necessary and not exactly the same as what is required sufficient condition for a divisional by Article 76(1), which says: “It may be application of that sequence to comply filed only in respect of subject-matter with Article 76(1) EPC, second sentence, which does not extend beyond the that anything disclosed in that divisional content of the earlier application as application be directly, unambiguously filed.” So, Article 76(1) seems to allow a and separately derivable from what is test of extension of subject matter disclosed in each of the preceding relative only to the direct parent applications as filed? application and not to each earlier 2. If the above condition is not sufficient, application. Of course, a test relative to does said sentence impose the all earlier applications is much better additional requirement from a legal point of view (no one can a. that the subject-matter of the claims smuggle subject matter into the of said divisional be nested within the description of a divisional and then later subject-matter of the claims of its claim it in a divisional from that predecessors? or divisional anymore), but it would have b. that all the divisional predecessors clarified things if this issue had been of said divisional comply with Article referred to the EBoA too. 76(1) EPC? • In T1409/05, the BoA states that the EPC does not define valid or invalid Question referred to EBoA in patent applications. Thus T1409/05 decision T1040/04 concludes that the requirement of Article In the last decision to be discussed here, 76(1) that the divisional “may be filed T1040/04, BoA 3.2.03 had to decide about only in respect of subject-matter which a case where it had found that a patent does not extend beyond the content of opposed in opposition proceedings contained the earlier application as filed” cannot extended subject matter in its description result in invalid patent applications. Thus, (so, not in its claims). This BoA recognised the BoA concludes that the filing date is that this situation could result in similar the filing date of the parent application. questions as those referred to the EBoA in However, Article 76(1) seems to T39/03. However, the BoA also recognised support another possible interpretation as that in view of T39/03, the EBoA would most it also states: “In so far as this provision probably not deal with granted patents in is complied with, the divisional application opposition proceedings. Therefore, in order shall be deemed to have been filed on the to avoid the risk of obtaining a decision of date of filing of the earlier application and the EBoA that did not deal with this shall have the benefit of any right to situation, in T1040/04 BoA decided to refer priority.” So, in the writer’s view, not the following question to the EBoA: “Can a meeting the requirement of avoiding patent which has been granted on a extension of subject matter can also divisional application which did not meet the result in the observation that the claim of requirements of Article 76(1) EPC because the application of being a divisional at its actual filing it extended beyond the application is not granted. Then, the content of the earlier application, be sanction would be that the effective filing amended during opposition proceedings in date is not the filing date of the parent order to overcome the ground of opposition application but the actual filing date with under Article 100(c) EPC and thereby fulfil the EPO. Of course, if correction is said requirements?” allowed during prosecution, this can be corrected (like an improper claim of Still open issues not referred to EBoA priority due to extension of subject matter In the writer’s view, in T1409/05, the BoA can be corrected during prosecution). has missed at least two issues that could Of course, this interpretation would have been referred to the EBoA: result in other problems: • As indicated above, this BoA concluded: 1. the parent would become prior art to “On this board’s interpretation it would the application where the parent may suffice for compliance with Article 76(1) provide serious inventive step EPC that what is disclosed in the problems;

www.iam-magazine.com Patents in Europe 2006 25 A dangerous hobby?

2. moreover, this interpretation would introduce similar problems as encountered in the analysis made in T720/02: a divisional application from an earlier divisional application could all of a sudden lose its effective date if the earlier divisional application turns out to contain added matter. This problem can still be present after all divisional applications in a chain of applications have been granted, resulting in great legal uncertainty for patent proprietors.

Thus, bearing all these uncertainties in mind and being unsure about what the EBoA is going to decide, the writer’s advice would be the following: if one is considering protecting more than one other invention than the one already claimed in a patent application, either file a separate divisional application per separate invention within the time limit prescribed by Rule 25(1) or file one divisional application with separate sets of independent claims per invention within that time limit.

26 Patents in Europe 2006 www.iam-magazine.com Feature Spiders and torpedoes

A tale of spiders and torpedoes

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

judge on patent infringements committed by By Christophe Ronse, ALTIUS Law Firm, defendant companies belonging to the same Brussels group or otherwise cooperating in the infringing activities pursuant to a joint plan, when the For reasons inspired by the cost and entity responsible for the implementation complication of patent litigation, many thereof is domiciled either in the Netherlands patentees have traditionally sought ways to or outside Europe. Other national courts, such avail themselves of patent protection through as the English courts, have been much more cross-border injunctions covering as many reluctant to grant such pan-European relief. countries of the European Union as possible. Conversely, potential infringers have In pursuing such endeavours, however, sought ways to prevent patentees from the patentee is restricted by the rule that a asserting their rights in certain countries by defendant established in the European Union bringing actions for declaration of non- should normally be sued before the courts of infringement, or so-called torpedo actions, in its country of domicile; this under the general other countries – such as Belgium or Italy – principles on jurisdiction established by the where courts are allegedly less diligent in Brussels Convention (now superseded by EC furthering patent cases. In doing this, they Regulation 44/2001) and the Lugano seek to block the infringement proceedings in Convention. Only under certain exceptions can the former countries through the application a defendant be sued in another member state of the rules of lis pendens available in the of the European Union or the European European Union. Although such attempts are Economic Area. This particularly raises an based on a doubtful assumption – at least as issue where the allegedly infringing products far as the speed of Belgian proceedings is are marketed in various European countries concerned – and have consistently been by separate legal entities. rejected (by the Belgian courts, for example), Furthermore, as a European patent the strategy has to some extent been consists only of a bundle of national patents effective. This is particularly the case in subject to their respective national rules on Germany, whose courts have traditionally enforcement and infringement, there has acknowledged the suspensive effect of non- always been a high degree of uncertainty as to infringement proceedings in other European whether and how a national court could judge countries relating to the same patent and on the infringement or absence thereof of subject matter. foreign (parallel) patents. In view of the All this may now be changing, however. connection existing between the various Following the long-awaited decisions of the national claims, the German, Belgian and, in European Court of Justice (ECJ) in GAT v LuK particular, Dutch courts have shown a certain (case C-4/03) and Roche v Primus (case C- willingness to assert jurisdiction vis-à-vis 539/03) rendered on 13th July 2006, defendants established in various European patentees seeking pan-European relief are Union member states. Applying the so-called likely to find it much harder to get. The spider in the web theory, the Dutch courts decisions highlight the inadequacy of the have considered themselves competent to present European rules on international

www.iam-magazine.com Patents in Europe 2006 27 Spiders and torpedoes

jurisdiction when it comes to the enforcement brought infringement proceedings in the of European patents. Netherlands against the local Roche subsidiary and various other affiliates Invalidity as a ground for opposing established in other member states of the jurisdiction European Union. As the defendants objected GAT v LuK concerned a dispute between two to the territorial jurisdiction of the Dutch German companies active in the automotive courts vis-à-vis the defendants established in industry. The plaintiff sought a declaratory other member states of the European Union, judgment before the Düsseldorf Landgericht the Dutch Hoge Raad decided to seek a that it had not infringed the defendant’s preliminary ruling from the European Court of French patents, which it alleged to be invalid. Justice on the interpretation of Article 6(1) of The lower court accepted jurisdiction, but on the Brussels Convention (presently Article appeal the Oberlandesgericht decided to 6(1) of Regulation 44/2001). This provides seek a preliminary ruling from the ECJ on the that a defendant established in another interpretation of Article 16(4) of the Brussels member state of the European Union may Convention (presently Article 22(4) of also be sued, where he is one of a number of Regulation 44/2001). This provides for the defendants, in the courts of the place where exclusive jurisdiction of the courts of the any one of them is domiciled. The provision country where a patent has been issued in had previously been interpreted by the ECJ as proceedings concerned with the validity of applying only in those cases where the claims such patents. are so closely connected that it is expedient In line with the opinion of the Advocate- to hear and determine them together to avoid General, the ECJ gave a broad interpretation the risk of irreconcilable judgments resulting to this rule and stated that it applied to all from separate proceedings. This proceedings relating to the registration or interpretation has since been espoused by validity of a patent, irrespective of whether Regulation 44/2001. the issue is raised by way of an action or a In its ruling, the ECJ held that the plea in objection. In short, national courts of requirement for a connection is not met in a member states other than in which the situation where patent infringement patent has been issued are precluded from proceedings based on the same European assessing the validity of the patent. patent are brought in different European Needless to say, even if this limitation Union member states, involving a number of does not apply to the infringement claim per defendants domiciled in those states, in se, the practical downside of this ruling will respect of acts committed in their territory. probably be that a defendant in pan-European This is so even if those defendants belong to patent proceedings will only have to raise a the same group of companies and may have defence based on the alleged invalidity of the acted in an identical or similar manner in foreign patent(s) at stake to frustrate the accordance with a common policy elaborated efforts of the patentee to obtain a cross- by one of them. According to the Court, only border injunction. Indeed, a national court will an identical legal and factual situation can be reluctant to allocate a claim on give rise to irreconcilable decisions and it infringement in the presence of a serious does not suffice that there could be a invalidity defence and will undoubtedly prefer divergence in the outcome of the dispute. to stay the proceedings until this matter has With regard to pan-European patent been decided upon by the national court infringement, the Court considered that the having jurisdiction in the matter. same situation of fact cannot be inferred, One can thus only conclude that GAT v since defendants are different and the LuK has created a new type of torpedo for alleged infringements are not the same. alleged patent infringers confronted by cross- Neither will the same legal situation arise, as border patent claims, provided that they the infringement of a European patent must can invoke a validity defence which has be assessed in the light of the national law sufficient merit. of each country for which it has been granted. The fact that European patents are No more multiple defendants governed by common rules (particularly when Even if no invalidity issue is at stake, the ruling it comes to defining their scope of protection) of the Court of Justice in the Roche v Primus and that decisions by the various national case is likely to render any centralisation of courts should presumably present a certain patent infringement proceedings impossible in degree of harmony was thus held insufficient many other instances. by the Court to consider that a sufficient In this case, two US patentees had connection was present in order to allow

28 Patents in Europe 2006 www.iam-magazine.com Spiders and torpedoes

foreign defendants to be sued in another avail to the patentee, as summary member state of the European Union. proceedings need to be followed up by proceedings on the merits. The end of cross-border injunctions? The present situation thus remains quite Even if their wording is not always crystal unsatisfactory and severely restrains a clear, the joint reading of the above patentee’s opportunities to seek adequate decisions of the ECJ are likely to mean that cross-border relief at an acceptable cost cross-border enforcement of patent rights in within a reasonable period of time. proceedings on the merits will become much Undoubtedly, this will further stoke the more arduous, if not practically impossible, debate relating to the European Patent under the present Community rules on Litigation Agreement (EPLA) or the jurisdiction. In order to avoid any defence introduction of the Community patent, based on the lack of jurisdiction, the something that the ECJ may have intended. patentee will be obliged to sue potential This process is, however, expected to take infringers in each separate country where several years and the outcome remains they are established and/or can be proven uncertain. In the meantime, cross-border to have committed infringing acts. patent litigation will remain in turmoil, with Of course, it will remain possible to claim only a limited number of options for cross- cross-border relief against a single party which border litigation remaining available. has committed alleged infringements in various European states before the courts of the latter’s home state, at least provided this party does not challenge the validity of the foreign patent. Depending upon the provisions of national judicial law, such proceedings could possibly also be extended to include any non- European defendants who cannot avail themselves of the provisions of EC Regulation 44/2001 or the Lugano Convention. However, it is doubtful that such a concourse of circumstances will frequently arise. More importantly, patentees might take some comfort from the fact that the ECJ’s jurisprudence should not affect the patentee’s ability to seek a cross-border injunction on a preliminary basis in application of Article 31 of Regulation 44/2001, respectively Article 24 of the Lugano Convention, which needs to be interpreted separately from the other provisions of these legal instruments. In order to prevail in summary proceedings and obtain provisional measures – according to the present jurisprudence of the ECJ – the patentee must demonstrate the existence of a real connecting link between the subject matter of the measures sought and the territorial jurisdiction of the country of the court before which those measures are sought. This threshold is undoubtedly much lower than that imposed by Roche v Primus (identity of the factual and legal situation). Depending on the facts of the case, it will most probably allow patentees to obtain cross-border preliminary relief in certain countries against alleged infringers established in other European countries in respect of infringements committed abroad. It remains to be seen, however, whether the possibility of preliminary relief will be of any

www.iam-magazine.com Patents in Europe 2006 29 Patent litigation in Europe Feature

Strategic issues concerning patent litigation in Europe

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

need to consider in which forum to litigate. By Tom Carver and Nigel Stoate, However, it is more common that a patentee Taylor Wessing, London will hold multiple designations of a European patent and an alleged infringer will be In the absence of any European legislation operating in several countries at the same providing specifically for pan-European patent time, and this means that both parties will litigation, patent owners have had to think have a choice of jurisdiction in which to laterally about how to enforce their European resolve any dispute. patents. Until recently, the Dutch courts Generally speaking, following the recent used to interpret the Brussels Convention on clarification of the law in GAT v LuK, a patent Jurisdiction and the Enforcement of owner will have to bring separate Judgments in Civil and Commercial Matters proceedings in each country where its rights as permitting them to grant injunctions in are infringed. It is tactically important to every EU member state in which a patentee decide where best to bring the proceedings held a designation of a European patent, as and in what order, because early decisions in long as one of the related infringing one country may set a precedent for later companies was based in the Netherlands. proceedings, particularly if the earlier However, the European Court of Justice (ECJ) decision was from a specialist court. ruled in GAT v LuK that cases against a The three countries often regarded as group of companies based in different EU having the most developed patent litigation member states, each infringing equivalent systems in Europe are the Netherlands, national designations of European patents, Germany and the UK. Each of these three cannot be joined in one action in one country jurisdictions has a specialised patent court and, in Roche v Primus, that courts in one and a range of procedures available to both jurisdiction may not entertain proceedings in the patentee and the alleged infringer which the validity of patents registered in including injunctions, revocation actions and other jurisdictions is raised. infringement actions, and each will generally produce a decision in infringement Forum shopping proceedings at first instance within about a The ECJ’s decision means that until the year (validity proceedings in Germany will take Community patent, the EPLA or the London up to two years). However, the judgments are Agreement becomes a reality, there are still reached by quite different processes. multiple jurisdictions with different The most obvious difference between the procedures and characteristics, and common law system in the UK and the civil companies need to choose carefully the law systems on the continent is that jurisdiction in which they are most likely to disclosure is available to parties in the UK. achieve their aim – be it to enforce patent Clearly, disclosure of documents relating rights or to defend against such either to an allegedly infringing article or to enforcement. Clearly, if a patent is held only the making of the alleged invention provides in one country, or if an infringer is operating useful ammunition to the receiving party, only in one country, then there will be no which may (subject to confidentiality and

30 Patents in Europe 2006 www.iam-magazine.com Patent litigation in Europe

court rules) be used in other jurisdictions. each national court does not necessarily The adversarial nature of the UK system interpret the Protocol, and therefore patents, is reflected in the preparation of evidence. In in the same way. In addition, the quirks of the Netherlands and Germany the court each national system make harmonised appoints an expert to prepare an interpretation very difficult. unexamined report (parties may appoint In Germany, courts use a doctrine of their own experts but these are generally equivalents to construe claims and they considered not to be independent and their have a bifurcated system, hearing trials of views are therefore not given much weight), infringement and validity in separate courts. whereas in the UK both parties appoint their The combination of an absence of squeeze own expert and both parties have the arguments (caused by the bifurcated system) opportunity to cross-examine the other and a doctrine of equivalents means that it party's expert. This enables a very thorough is sometimes easier to obtain a judgment of examination of the merits of the case to be infringement in Germany than it is in the UK, conducted by the court. where infringement and validity are tried A further difference between the together, thus enabling so-called jurisdictions is the rigour with which validity/infringement squeeze arguments, experimental evidence is gathered. For and where there is no doctrine of example, experimental evidence can be equivalents. The Netherlands sits neatly in submitted in Germany and the Netherlands, the middle using a doctrine of equivalents but there is no requirement in these but hearing issues of validity and jurisdictions for the experiment to be infringement together. witnessed by the opponent and therefore the Jurisdictions also vary in terms of the results cannot be given the same weight as procedures for interim injunctions. In the UK in the UK, where experiments which are a patent is presumed valid and an injunction relied on must be repeated in the presence can be granted within a matter of days based of representatives of the other side. on technical evidence that there is an Additionally, following a recent change to the arguable case that the patent is infringed, practice in the UK, the protocol and results and commercial evidence that the balance of of any work-up experiments preceding the convenience is in favour of an injunction. This actual witnessed experiments must also be contrasts with the Netherlands, where there disclosed to the other side. This procedure is a full preliminary review of the merits of ensures that a party cannot practise an the case based on expert affidavits and experiment in private and submit only one witness statements, and the time from writ to result to the court: all the practice results hearing is likely to be about six weeks with a need to be disclosed. further two weeks until judgment. Likewise, in Of course, one consequence of the Germany an interim injunction hearing is thorough analysis of a patent action almost a mini-trial, which will consider the conducted by the UK courts is that it will cost strength of the patent and the likelihood of more than a case in, say, the Netherlands or infringement as well as the commercial Germany. However, this is balanced by the arguments, usually taking between two and fact that the winning party will normally four months to obtain a decision. recover a large proportion of its costs in the As for the other jurisdictions in Europe, UK, but not in Germany or the Netherlands. they all have patent litigation conducted in In Germany, the winning party will recover courts ranging from the very experienced to some of its costs on a fee scale, but this the comparatively untested. While by no rarely compensates it for the costs actually means binding, an earlier judgment from one incurred. The position in the Netherlands is of the more experienced patent countries is similar to Germany in that only some fixed likely to be persuasive. costs are recoverable, although it remains to be seen whether this will change since EC EPO proceedings Directive 2004/84, which seeks to There is one further very important harmonise the position across Europe, came ‘jurisdiction’ which has not been mentioned into force in April 2006. and that is the European Patent Office (EPO). The national designations of a Legal aspects European patent are all the result of a single In theory, the scope of every European application to the EPO. The application is patent is interpreted according to the examined by the EPO and, if deemed to fulfil Protocol on the Interpretation of Article 69 of the criteria, is granted as a bundle of the European Patent Convention. However, national patents. Once a patent is granted by

www.iam-magazine.com Patents in Europe 2006 31 Patent litigation in Europe

the EPO any third party has nine months in provide the BlackBerry service. which to register an Opposition and attempt Clearly, this was not satisfactory and RIM to have the patent revoked. Oppositions can therefore brought proceedings in the UK to last many years but culminate in what is revoke the UK designation of the same usually a one-day hearing at which the patent patent with the aim of obtaining a favourable can be maintained, amended or revoked on result in the UK which might be useful in the basis of written submissions and an oral convincing the Düsseldorf court that the hearing, if requested. If the patent is infringement proceedings in Germany should revoked by the EPO, it is revoked ab initio be stayed until the validity proceedings had and every national designation is revoked been heard. Infringement hearings in with it. The same applies if the result of the Germany are stayed on the basis of pending Opposition is an amendment. validity actions only if there is strong EPO proceedings affect national evidence that the revocation is likely to proceedings in different ways. If there is an succeed. In the event, the UK action was not EPO Opposition on foot against a patent then necessary because the Federal Patent Court in Germany it is not possible to commence of Germany managed to hear the case in national revocation proceedings. So the good time and revoked the patent in advance patentee may sue an alleged infringer for of the infringement hearing. infringement and the infringer cannot retaliate with a revocation (at least not in Germany: Future developments in European retaliatory proceedings in the UK, the patent litigation Netherlands or any other jurisdiction are, It may be that forum shopping will soon be however, perfectly possible). At the opposite reduced in importance. There have been a end of the spectrum the UK courts are number of developments (possibly prompted unlikely to grant a stay of revocation or by the ECJ's decision in GAT v LuK) which infringement proceedings on the basis that mean that the pipedreams that have been there is an Opposition in the EPO (but note the European Patent Litigation Agreement that it is possible for a patentee to win in the (EPLA), the Community patent and the UK and then for the EPO to revoke a patent, London Agreement may one day be realised. and in such circumstances the infringer will still be required to pay any damages already London Agreement granted by the UK court). As usual, the The London Agreement aims to create a Netherlands sits in the middle and will grant cost-effective post-grant translation regime a stay of national revocation proceedings on for European patents. The parties to the the basis of an EPO Opposition if certain agreement waive the requirement for requirements are fulfilled. translations of European patents to be filed in their national language, meaning that all RIM v InPro European patents will be translated into only The recent judgments in the United Kingdom a few languages. and Germany in the patent litigation in The chief remaining obstacle to the Research in Motion v InPro Licensing SARL London Agreement coming into force has have highlighted the differences between the been ratification by France, but France’s jurisdictions and demonstrated the lengths Constitutional Council recently ruled that the to which parties will forum shop to steal Agreement complies with the French maximum tactical advantage. constitution and this enables parliament and Early in 2005 InPro commenced action the president to proceed with the ratification against T-Mobile in the District Court in process. If/when it comes into force it Düsseldorf alleging that T-Mobile was should significantly reduce the cost of infringing its European patent by offering and obtaining European patents, but not the cost implementing the BlackBerry system in of litigating them. Germany. RIM intervened in the proceedings in support of T-Mobile, its customer, and European Patent Litigation Agreement (EPLA) retaliated in the usual way by commencing It is hoped that the EPLA will help reduce the revocation proceedings against the patent. cost of litigation. The European Commission However, RIM was faced with the serious is due to make a formal proposal on patent problem that the infringement trial seemed litigation, centred around the EPLA, before certain to be decided several months in the end of the year. The EPLA is a non-EU advance of the validity trial, thus leaving a treaty which would establish a European gap of several months during which T-Mobile Patent Judiciary (EPJ) to create and run a might be injuncted and not be able to European Patent Court which would hear

32 Patents in Europe 2006 www.iam-magazine.com Patent litigation in Europe

litigation concerning infringement and validity which they cannot understand? Obviously, the of patents granted by the EPO. This will issue of language also applies to the EPLA enable European patents to be litigated on a but can be sidestepped more easily because pan-European basis in one court rather than the EPLA is not required to operate in the the current system of litigating in each language of each EU member state. country where the patent is in dispute, which should significantly reduce litigation costs Conclusion given that there will be only one trial. As you can see, it has been an interesting Charles McCreevy, European year in patent litigation, what with pan- Commissioner for Internal Market and European injunctions being ruled out and Services, broadly supported the EPLA in a litigants becoming ever more sophisticated speech he gave on 8th September. However, about forum shopping. It would be good if if the EPLA conflicts with the acquis these jolts to the system encouraged the communautaire of the EU then member parties behind the various treaties to states would not be free to sign up to the finalise their arrangements and create an EPLA independently, being reliant on the EU accessible and effective system of pan- to accede to the agreement on their behalf. European patent litigation. The potential conflict is being examined by the European Commission's legal department and in the meantime the European Parliament voted on 12 October to postpone the EU's accession so that 'significant improvements' could be made to it in terms of democratic control, judicial independence and litigation costs. Clearly, if there is no conflict with the acquis communautaire then member states would be free to sign up to the EPLA independently.

Community patent The agenda behind the EU’s opposition to the EPLA is that it has its own project in the Community patent. The Community patent will be, as the name implies, an EU patent system created by directive or regulation and regulated and enforced by the European Commission. It was first suggested as long ago as the 1970s but politics, in particular the politics of languages, has always prevented it becoming a reality. This scenario is unlikely to change as there are important issues to resolve which stem from the commitment of the EU to operate in each language of the Community. The EU ideal would be to translate every Community patent into every language, but given that there are 20 official languages the cost of this would be prohibitive. Accordingly, it has been suggested that Community patents should be published in only a few languages (as is the proposal for European patents under the London Agreement). However, this resolves neither what language a patent should be litigated in, nor the relative weight given to the meaning of translations of the patent claims as opposed to claims in their original language. In addition, if a Community patent were only translated into, say, three languages, then is it right that people can be affected by a third-party right

www.iam-magazine.com Patents in Europe 2006 33 Patent enforcement in Norway Feature

Patent enforcement in Norway

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

reached, a preliminary injunction or regular By Jens Fredrik C Langfeldt, Zacco infringement suit may be filed. Norway AS, Oslo A court in a patent suit normally has one professional judge and two appointed lay Following two referendums, Norway is still judges, the lay judges being familiar with not a member of the European Union and patent rights and in most cases also with membership is currently not on the agenda. the technical art of the patent at issue. Although the Norwegian Patent Act has to a However, lay judges are not mandatory. large extent been harmonised with the An appointed Norwegian lawyer (attorney European Patent Convention (EPC), Norway at law) normally represents the patentee. has still not joined the EPC. This has over Further, the patentee or other representative the years largely been due to the of the patentee, as well as any opposing controversial issue of patent protection for party or its representative, may also be biotechnology inventions, a bar no longer present in the courtroom. As a lawyer is not present. The government decided in early expected to be an expert on the invention in 2006 that Norway should join the EPC by no question, the patent attorney who processed later than the end of 2007, and, after a the patent application will normally assist the hearing in 2006, Parliament is likely to lawyer prior to and during court proceedings. decide upon the government proposal before Further, the lawyer of the opposing party may the end of 2006 or very early in 2007. be assisted by a patent attorney. In order to obtain patent protection in Norway, national filing through Convention or The role of the Oslo District Court non-Convention application or via the PCT is Invalidation suits (which, in many cases, therefore necessary at present. Designation defendants file as a countermeasure) must of Norway via the EPC/European patent is be dealt with at the Oslo District Court. Both not yet possible. the lawyer representing the defendant and With its stable and strong economy, wide the lawyer representing the plaintiff cross- variety of industries, oil and gas installations, examine witnesses, as do the professional and hydro-electric power, Norway has proved judge and any appointed lay judges. to be a country in which foreign companies Preliminary proceedings are based on wish to obtain patent protection. established facts, such as proof of Approximately 5,000 to 5,500 patent infringement or harmful prior art. Oral and applications of foreign origin are filed each written evidence from experts is normal. year, most of them through the PCT system. If the defendant, through a separate suit Compared with countries belonging to for invalidation, counteracts a suit for the EPC, Norway is not all that different claimed infringement, the invalidation issue when it comes to enforcement of patent will be dealt with first. If the infringement rights. Notably, marking on products or suit has been brought before any court other brochures is not mandatory. Normally, an than the Oslo District Court, both suits are infringer is initially warned through a warning normally then moved to Oslo in order to save letter and if an amicable settlement is not time and expenses. A precondition for

34 Patents in Europe 2006 www.iam-magazine.com Patent enforcement in Norway

requesting consolidation of court enforcement is straightforward. In certain proceedings is normally that the plaintiff or cases, infringement of method patents may the defendant is the same person or legal be difficult to prove, unless it is fairly evident entity in both cases. Evidence and that there is no other way to arrive at the arguments in writing must be provided at the end result. In such case, pre-trial discovery time a petition for a suit is filed, although may be required. further documentation may be filed up to the point at which oral proceedings take place. Influence of foreign judgments The opposing party has a right to consider It seems that the Norwegian courts are not the evidence before the oral proceedings. In necessarily persuaded by decisions of courts the oral proceedings, witnesses may present in other countries. Foreign court decisions evidence in support of either claim. must be presented merely as facts along Pre-trial discovery is permitted, provided with other exhibits, and the court may it can be carried out in a legal manner. A choose to rely on such an exhibit to some common procedure is to let the plaintiff and extent or not at all. Further, the outcome of defendant agree on a neutral person or proceedings or even opposition proceedings entity that will carry out the discovery at patent offices in other countries, and prior operation. The alternative is to obtain a art relied upon thereat, in particular prior art court order for discovery prior to the main not revealed in the Norwegian patent case, oral proceedings. may have some bearing on how the court may look at the claims in a Norwegian Doctrine of equivalents applied patent, especially if the claims in such Courts generally refrain from judging the foreign patent are substantially different wording of claims in a restrictive manner. from, or in particular more restricted than, However, if a patent states that the claimed the claims in the Norwegian patent. subject matter is technically equivalent to Reasoning given by foreign courts that some other solution, and this other solution have handed down decisions in similar is proved to be prior art, then the validity of cases may be considered by a Norwegian the patent may be in jeopardy. Furthermore, court if a copy of a foreign court ruling is an if the patentee during prosecution of a exhibit, but the court may simply choose not patent application indicates in writing to the to rely upon it, in particular if witnesses or Patent Office how the novelty and inventive other statements made in the court step of the invention are to be understood, proceedings indicate some doubt as to the such statement cannot later be reversed in quality of the reasoning. Also, if arguments court, in particular if it limits the scope of other than those in the foreign case are the invention as claimed. Thus, if claims are presented in the Norwegian case, the foreign narrowed during the prosecution in order to reasoning may be considered irrelevant. let a patent issue, the patentee cannot later From a tactical point of view, a defendant claim a broader interpretation of the granted might seek to delay a case from going to claims. The basis for claiming equivalence trial, mostly through asking for extensions of or alternatives is normally found in the the reply term due to, for example, illness of patent specification, and if the patentee has the defendant or his lawyer, presentation of not suggested alternatives or equivalents, further defence material, additional time to the court may rely entirely on the collect evidence or objection to the court specification and drawings when judging the selection of lay judges. The plaintiff may scope of the claims. Consideration must be counter such tactics if it can be proved that given to what the patentee in an objective infringement is still ongoing, the plaintiff is sense intended to protect and arguments suffering substantial economic or market are made in that respect. losses as a result thereof, or the additional Some types of patent, for example those evidence presented by the defendant does relating to biotech, may be harder to enforce not support supplementary arguments. in litigation because they often require Once both the plaintiff and the defendant expert witnesses and also expert lay judges, have had the opportunity to present claims, as the art is complex and difficult to evidence and counter-arguments, the court understand. Enforcement in this context is will set the date for oral proceedings. primarily related to the substantial efforts of providing and explaining evidence, and how Preliminary injunctions available the prior art and the invention work, all in a Preliminary injunctions are generally manner that the court readily understands. available at any district court and a suit for As soon as a court ruling is made, preliminary injunction must be filed with

www.iam-magazine.com Patents in Europe 2006 35 Patent enforcement in Norway

sufficient evidence. Normally, both parties to any damages awarded by the court. may have to provide an economic guarantee Further, if the plaintiff is unsuccessful, it against damage if it is proved through a may also risk losing its patent rights through subsequent regular suit that the claim for a an invalidity suit ruling. However, there are preliminary injunction was unjustified and cases where the patent is held valid, but the has caused substantial damages to one court nonetheless rules no infringement. In party. A decision made by such preliminary cases where the losing party must meet the injunction court may be appealed. Normally, costs of the winning party, the court is free however, a conventional infringement suit to reduce the costs if these are considered follows instead. disproportionate. Approximately one to two years normally elapse between the filing of a suit at first Available remedies instance (in a city court or district court) and The court may prohibit the defendant from the issue of a ruling. Unless public interests working the invention and/or specify a sum are potentially affected, it is hard to expedite to be payable within a set term to cover a ruling. However, in district courts outside damages and expenses. As a rule, the Oslo, if an invalidation suit does not profits that the defendant has gained by accompany the infringement suit, the violating the patent rights must be commencement of oral court proceedings surrendered. Also, damages may be awarded may take less time, depending on the in an amount to be specified at the court’s backlog. Within reasonable time after discretion of the court and in addition to any the suit is filed, a date for oral court claims by the plaintiff. proceedings is set. This effectively requires Many disputes are, however, resolved by the defendant and the plaintiff to present the parties without a court ruling, and the arguments in writing as efficiently as judge has an obligation to urge the parties possible and in good time before the oral to compromise. If an attempt at compromise court proceedings. fails, a claim for compulsory licence may be An adverse decision at first instance may made (this is rare in practice), provided the be appealed to the High Court. Recent conditions of the Patents Act are met. Either indications are that in order to do this, the the Oslo District Court or the Norwegian alleged damages in question must be above Competition Authority will consider issues a certain level (a figure of Euros 20,000 has relating to a claim for compulsory licence. been mentioned in this regard). The defeated Alternatively, the patentee may consider party may claim that, for example: the offering a licence or cross-licensing in cases decision at first instance is wrong for where the defendant possesses patent(s) of particular reasons; important issues have interest. Another option is to consider a joint not been considered or have been venture with the defendant. The attorney of considered incorrectly by the court; damages record will normally advise on the available awarded are out of step with reality; the options, which depend on prevailing court has not fully understood the invention conditions, the status and reputation of the or the prior art cited by the defendant; defendant, and the economic situation of evidence presented has not been relied the defendant. upon; or the court processed the suit In some cases the Act on Marketing inappropriately. An appeal will add at least Control (which replaced the old Unfair one and a half to two years to the case, Competition Act) is applied in addition to, or depending on the caseload of the court at instead of, a claim for patent infringement, the time. and the Act provides for remedies related to unfair competition. Copyright (unregistered) High costs may under some circumstances be applied. Unfortunately, processing a suit is If the dispute relates to an article, a expensive, even according to Norwegian registered design may be useful (EU standards, and seldom costs less than NOK registered designs are not enforceable in 160,000 (approximately Euros 20,000); Norway). Finally, the Patents Act provides for figures of NOK 300,000 to NOK 600,000 the administrative re-examination of an (Euros 39,000 to Euros 58,000), and even issued patent at the request of the higher, are commonplace. patentee. If the patentee holds a Norwegian If a party loses the case entirely, it will patent that is considered to have been normally have to bear the costs of the other infringed, and essential foreign party, including prosecution charges, court corresponding patents are more restrictive in charges, witness expenses etc, in addition view of identical or other prior art, the

36 Patents in Europe 2006 www.iam-magazine.com Patent enforcement in Norway

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

Much to be gained In summary, much is to be gained from obtaining a patent in Norway: the Patent Office’s substantive examination is professional and all professional patent attorneys have a university degree from a technical university. Although translation of an application into Norwegian is mandatory, processing charges are normally low and allowance of a corresponding EPC application often triggers allowance of the Norwegian application.

www.iam-magazine.com Patents in Europe 2006 37 Country Q&As Feature

Country Q&As

In this section of the publication, contributors from a number of member states of the European Patent Organisation answer the same set of questions based around the enforcement of European patents in their respective jursidictions.

38 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Austria

Enforcing patents in Austria

cases. Consequently, the judges staffing By Alexander Cizek, DLA Piper Weiss- these departments are well versed in patent Tessbach, Vienna law issues. They sit in panels of three, consisting of two judges and one lay-judge who is usually a patent agent. The competent 1. What options are open to a European court for criminal patent matters is the patent holder, whose rights cover your Criminal Court of Vienna (Landesgericht für jurisdiction, when seeking to enforce its Strafsachen Wien). rights in your jurisdiction? The European patent holder has several 3. Is it possible to cross-examine witnesses options when seeking to enforce its rights in at trial? How far are proceedings based on Austria. It may initiate civil proceedings written evidence? Are there restrictions on claiming (preliminary and permanent) injunctive the use of evidence from experts? relief, removal and destruction of infringing A witness is regarded as a means of products, rendering of accounts, payment of evidence for either party; thus, as a matter compensation and damages, and publication of equal fighting chances, either party may of the verdict concerning the injunction. interrogate the witness and the law does not In the case of wilful infringement, the formally distinguish between examination patent owner may also instigate criminal and cross-examination. It is usually the judge proceedings against the infringer or unknown who examines the witness first, followed by perpetrator and pursue the case as a so-called the party representatives who are allowed to “private prosecutor”. Where infringing products ask supplemental questions. originate from countries outside the European Admissible evidence in civil court Economic Area and are being imported into proceedings includes witness testimony, Austrian territory, the patent holder may expert opinions and expert witness additionally file for a product piracy order and testimony, party testimony, documents, respective border seizure measures through inspection of objects or on-site inspections. Austrian customs authorities. Written statements of witnesses are Furthermore, the patent holder may file a admissible in preliminary proceedings but not request with the Austrian Patent Office for a in full-scale proceedings. By law, all forms of declaratory decision establishing the fact of evidence are given equal weight and are whether a specific object or process falls subject to the judge’s free evaluation. within the scope of its patent. Such request However, in practice, written documents tend needs to be filed prior to an infringement to be the most important form of evidence. action concerning the same subject matter. There are no particular restrictions on The decision of the Patent Office is binding the use of evidence from experts. The court upon the courts. may appoint an expert to submit a written report on technical aspects of the claim and 2. Does your jurisdiction have specialist to answer, in an oral hearing, questions put patent courts? forward by the judge and the parties. In No. However, as a matter of statutory patent addition, the parties tend to retain their own law, the Commercial Court of Vienna experts and file party expert opinions with (Handelsgericht Wien) has exclusive the court in order to support their case. jurisdiction over all civil patent matters. Within this Court, only three departments 4. Are infringement and invalidity dealt with hear and adjudicate patent infringement simultaneously? What level of proof is

www.iam-magazine.com Patents in Europe 2006 39 Enforcing patents in Austria

necessary to demonstrate one or the other? however, as a matter of fact, the Commercial Infringement and invalidity are not usually Court of Vienna does not often get the dealt with simultaneously. Infringement chance to adjudicate rare patents such as issues lie within the exclusive jurisdiction of biotech patents. the judiciary whereas issues of invalidity are decided separately by the Patent Office. 8. To what extent are courts willing to Where the validity of a patent is contested in consider, or bound by, the opinions and infringement proceedings, the court may decisions of other courts that have dealt have to suspend its proceedings until the with similar cases? Patent Office has ruled on the validity issue. As the Commercial Court of Vienna has This does not apply in preliminary exclusive jurisdiction in patent infringement proceedings, however. issues and consequently no other national No particular level of proof is required in court deals with patent infringement cases, either proceeding. Pursuant to the Austrian there are no other decisions that the Code of Civil Procedure, the court and the Commercial Court of Vienna could consider. Patent Office respectively are required to However, declaratory decisions by the Patent consider the results of the hearings and Office as to whether a specific object or evidence proceeding carefully in their process falls within the scope of a patent, or deliberations. However, they are free in their decisions on the nullity of a patent, are decision as to which party has successfully binding upon the court. established its case and thus is to prevail under the law. 9. To what extent are courts willing to consider the reasoning given by foreign 5. To what extent is pre-trial discovery courts that have handed down decisions in permitted? similar cases? Principally, the taking of evidence is Austrian courts are not bound by law to take considered the sole prerogative of the state. the reasoning given by foreign courts in Therefore, pre-trial discovery is not permitted similar cases into consideration. However, the in Austria. However, on the criminal route the panel hearing the case might consider the patent holder assumes the position of the reasoning given on a discretionary basis. (private) prosecutor and thus may file all available criminal pre-trial discovery motions 10. What options are open to a defendant with the investigating judge. seeking to delay a case? How can a plaintiff counter delaying tactics? 6. To what extent does any doctrine of The defendant can delay a case by equivalents apply in an infringement action? counterclaiming that the plaintiff’s patent is Besides literal infringement, Austrian courts partially or completely invalid and thus have also recognised infringement under the subject to nullity; issues of invalidity are doctrine of equivalents. As a matter of Austrian decided separately by the Austrian Patent case law, infringement under the doctrine of Office. Hence, the court has to examine equivalents occurs when, on the priority date of whether the objection is founded and the patent in question, a person skilled in the suspend the civil proceedings if it concludes art, equipped with general technical expertise that the invalidity of the patent is likely. The and knowledge of the state of the art laid down defendant then must file a motion for nullity in the patent specification, without an inventive of the patent with the Patent Office within endeavour would infer the modified features as one month and the court will resume and a solution equivalent to those defined in the continue the infringement proceedings only patent claims. By contrast, the usage of upon issuance of the Patent Office’s features having the same effect but essentially decision. The plaintiff can only counter this altering the protected solution idea or delaying tactic by convincing the court of the contradicting the fundamental idea of the validity of its patent and thus preventing the invention would not be considered equivalent suspension of the infringement proceedings. under the doctrine. The defendant may also file for a negative declaratory decision seeking the Patent 7. Are there certain types of patent rights Office’s finding that its product or process that may be granted by the EPO – biotech or does not infringe the plaintiff’s patent. computer software-related, for example – that Although not strictly required by statutory law, are more difficult to enforce than others? the first instance court sometimes stays the There are no patent rights that are more infringement proceedings as contradicting difficult to enforce by virtue of the law; decisions may give rise to a re-opening of the

40 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Austria

proceedings. Again, the plaintiff can only may file an appeal within two weeks. The counter this delaying tactic by convincing the same grounds and formal requirements court otherwise. apply. The appeal process in the preliminary proceedings usually takes between two and 11. How available are preliminary four months. injunctions and how do you get them? Infringement of patent rights generally 14. To take a case through to a first entitles a plaintiff to preliminary injunctive instance decision, what level of cost should relief irrespective of any urgency requirement a party to a litigation expect to incur? even prior to the commencement of full-scale A court fee is payable upon filing the legal proceedings. To this end, the patent holder action, the amount depending upon the value must present a clear and well-founded case of the claim. In patent infringement cases, the but need not prove danger of recurrence, fee usually starts at Euros 1,082 and goes up which is regularly presumed through the to 1.2% of the value of the claim plus Euros present infringement, or irrecoverable loss. 1,509. Moreover, as a matter of statutory civil Having applied for preliminary injunctive procedural rules, the defeated party must relief prior to filing legal action, the patent reimburse the legal costs of the prevailing holder must commence full-scale party, amounting to 100% in the event of a proceedings within a certain period of time total defeat and a respective portion thereof to be determined by the court. in case of partial defeat. Legal costs comprise court fees, attorneys’ fees 12. How long does it take to get a decision (calculated upon the statutory fee schedule) at first instance? Is it possible to expedite and possible costs of witnesses, expert these proceedings? witnesses and expert opinions. For a patent infringement action of medium complexity, the average length of a first 15. Who can represent parties in court? Is instance trial is one to two years, provided the specialist representation required? proceedings have not been suspended due to In patent infringement proceedings, an an objection of invalidity of the patent. attorney at law must represent the parties. Preceding preliminary proceedings being Specialist representation is not required but subject to interlocutory appeal may also delay highly recommended. A patent agent usually the full-scale decision. Besides preliminary assists the attorney at law with regard to injunction proceedings, there are no expedited technical patent aspects of the litigation. proceedings available in Austrian courts. 16. What remedies are available for 13. What avenues for appeal are open to the infringement and how are these typically defeated party in a first instance case? What applied? Are punitive damages available criteria are there for granting an appeal? How and in what circumstances? long does the appeal process take? The remedies in civil proceedings include The party defeated in the first instance of (preliminary and permanent) injunctive relief, the full-scale proceedings may file an appeal removal and destruction of infringing items, against the judgment within a period of four rendering of accounts, payment of weeks based upon one or more of the compensation and damages, and publication following grounds: nullity; violation of of the verdict over the injunction. Damages procedural law; false or incomplete will be awarded if the plaintiff can prove ascertainment of facts; and/or false actual loss suffered which was caused by assessment or misinterpretation of the law. the defendant, and that the defendant acted In appeal proceedings, no new facts may be wilfully or negligently. contended and no motions for taking new The plaintiff may be strictly liable for all evidence may be brought forward. The damages suffered by the defendant if a opponent may file a reply to the appeal. preliminary injunction is lifted in subsequent Oral hearings can be directed by the court full-scale proceedings for reasons which of appeals but are usually rare. In most rendered the preliminary injunction cases, the court of appeals will decide unjustified from the very beginning. based upon the written appellate briefs of The Austrian legal system does not the parties. The appeal process in patent provide for punitive damages; however, in infringement cases usually takes between the case of gross negligence or wilfulness on six months and one year. the part of the infringer, the plaintiff is In relation to the first instance entitled to double damages, comprising twice preliminary proceedings, the defeated party the amount of adequate compensation,

www.iam-magazine.com Patents in Europe 2006 41 Enforcing patents in Austria

without having to prove the amount of the actually incurred loss.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? No. In Austria, the usual alternative dispute resolution schemes such as arbitration and mediation exist, but they are hardly ever used to settle patent disputes. The usual course of action is to send a demand letter for cease and desist to the infringer before bringing legal action. If no out-of-court settlement can be reached, court proceedings are immediately initiated.

18. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? There is no specific cause of action for groundless threats of patent infringement proceedings under Austrian law; however, a respective liability may be considered under general tort rules. Moreover, the civil remedies of the patent holder are subject to a statute of limitation of three years, starting to run from the point at which the patentee first learns of the infringement and the identity of the particular infringer. Also, the Austrian civil procedural laws do not provide for representative legal actions (Prozessstandschaft); only the rights holder, ie, the patent owner or the exclusive licensee, may legally pursue a patent infringement in court.

42 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Belgium

Enforcing patents in Belgium

matters, which arise under their respective By Christophe Ronse and Paul territorial jurisdiction. However, it appears Maeyaert, ALTIUS Law Firm, Brussels from the latest legislative proposals tabled within the framework of the transposition of the IP Enforcement Directive 2004/48/EC 1. What options are open to a European that the Brussels Court of Commerce will be patent holder, whose rights cover your designated as solely competent to deal with jurisdiction, when seeking to enforce its patent litigation. rights in your jurisdiction? At present, most patent cases are There are basically three possible courses of litigated in Brussels and Antwerp. action which are open to a patentee seeking to enforce its rights in Belgium. 3. Is it possible to cross-examine witnesses The most obvious option is to start at trial? How far are proceedings based on proceedings on the merits in order to obtain written evidence? Are there restrictions on an injunction and the grant of damages, and the use of evidence from experts? any other form of relief available under the Belgian civil proceedings are mainly based Belgian Patent Act of 28th March 1984. on written evidence which must be However, proceedings on the merits are exchanged between the parties together with often preceded by a so-called descriptive their written submissions. attachment proceeding (saisie description), Any witness examination must be which is a specific ex parte procedure aimed requested and authorised by the court. We at establishing the existence and/or the extent have knowledge of only one recent patent of the infringement, and possibly securing the case where a witness examination was seizure of any infringing materials. ordered. In any case, proof by witnesses can In urgent matters, the patentee can initiate be authorised only in view of proving certain summary proceedings aimed at the immediate facts or highlighting certain factual or cessation of the patent infringement. technical issues. Patent proceedings can be preceded by Furthermore, Belgian judicial law does the sending of a notice letter to the alleged not provide for the possibility of cross- infringer, although this is not required and examining witnesses at trial. Questions are also is not advisable if ex parte proceedings directed only by the court (possibly at the are envisaged. request of either party). On the other hand, parties in patent 2. Does your jurisdiction have specialist litigation usually submit written affidavits or patent courts? If not, what level of declarations from patent attorneys in order to expertise can a patent owner expect from strengthen their case. There are no limitations the courts? on the use of such written documents. Belgium does not (yet) have specialist patent courts. Judges as a rule also have no 4. Are infringement and invalidity dealt with technical background, although they can simultaneously? What level of proof is seek the assistance of court-appointed necessary to demonstrate one or the other? judicial experts. When an infringement action is brought The Belgian Patent Act of 28th March against an alleged infringer, the latter has 1984 provides that only the courts of first the right to invoke the possible invalidity of instance of Brussels, Antwerp, Ghent, Liège the patent at stake and to file a and Mons have jurisdiction in patent counterclaim based on one of the grounds of

www.iam-magazine.com Patents in Europe 2006 43 Enforcing patents in Belgium

nullification provided for by the Patent Act. In but may not judge the alleged infringement such cases, both infringement and invalidity as such. will be dealt with simultaneously. In addition to descriptive measures, the Where the alleged infringer brings judge can also order the person against separate invalidity proceedings, it can be whom the descriptive measure is sought not expected that such proceedings will also be to dispose of the infringing goods upon joined to the main infringement proceedings forfeiture of a financial penalty. The judge on the basis that they could otherwise lead can further appoint a custodian to seize the to contradictory decisions. infringing goods or revenues derived from In such proceedings both parties are infringing activities. Obtaining such allowed to use all available means of measures, however, usually requires the evidence, provided it is in written form or can patentee to demonstrate that the requested otherwise be filed with the court. As will be relief is reasonably justified under the further described below, the descriptive circumstances, having regard to the various attachment proceedings allow for a very interests at stake. efficient means for the patentee to establish In many cases, the judge will also the proof of an infringement. request that a guarantee be posted before the saisie description can be carried out. 5. To what extent is pre-trial discovery Upon granting of the authorisation, the permitted? If it is permitted, how is expert will visit the alleged infringer’s discovery conducted? premises together with a bailiff who will Belgian judicial law does not recognise any serve the judge’s decision. Once he has discovery proceedings within the usual gathered the required evidence, the expert meaning of the term. But Article 877 of the will draft a sworn report containing a Belgian Judicial Code allows a judge to order detailed and objective description of the a party to the suit or a third party to submit a alleged infringements, and will subsequently document (or a copy thereof) which contains file this report with the court of first instance the evidence of a relevant fact when there are and send a copy to the parties. The important specific and concurring patentee must initiate proceedings before presumptions that such party possesses this the competent court of first instance within document. 30 days of the date of this filing. If this does Where insufficient evidence of the not happen the report becomes devoid of existence and/or scope of the infringement any legal value. is available, a patentee can, before starting any contradictory proceedings, establish the 6. To what extent does any doctrine of infringement by requesting on an ex parte equivalents apply in an infringement action? basis the granting of a descriptive In the absence of a literal infringement of attachment (saisie description) from the the patent, it is possible for the patentee to judge. In order to obtain this, the existence invoke the doctrine of equivalents. of a prima facie valid patent must be Although there is only very limited case established (the production of a copy of the law available, it appears that the function- patent is normally sufficient) and prima facie plus-result approach will probably be applied, evidence of infringement must be provided. ie, that a certain means will be considered The request is aimed at the appointment of to be equivalent to the infringement if it an expert who is empowered to enter the realises the same technical function in the premises of the alleged infringer or any same way and with a similar result. location where relevant evidence can be found. The judge may also authorise the 7. Are there certain types of patent right that patentee to be represented during the may be granted by the EPO – biotech or description operations by its lawyers or other computer software-related, for example – that representatives. are more difficult to enforce than others? The patentee may further request the One should take into account that technically judge to provide for any adequate complex patents such as pharmaceutical accompanying measures, such as allowing patents will as a rule be more difficult to the expert to enter the premises as many enforce than those patents which can be times as necessary for the carrying out of understood by a layman. A particular effort his task, to obtain access to computers, should therefore be made to translate any files, etc. The expert will be required to technical issues into plain language. In describe the allegedly infringing processes or complex matters, the Belgian courts will try products or any materials involved therein, to compensate for their lack of technical

44 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Belgium

expertise by appointing a judicial expert. law to create obstacles and/or postpone the In addition, biotechnological patents case. This includes, in particular, the failure could give rise to further difficulties in view to file submissions or to agree on a of the limitations imposed by the Belgian timetable for the filing of submissions. The Patent Act. Although the Patent Act has been plaintiff can, however, counter this by amended in order to transpose the requesting the court to determine a provisions of the European Biotechnology procedural calendar. Directive 98/44/EC, the legislator has added some further limitations including, in 11. How available are preliminary particular, a newly worded research injunctions and how do you get them? exemption which will be discussed below. It is possible to request the president of the For software-related inventions, there is court of first instance to impose a no case law available from which to draw any preliminary injunction on a patent infringer relevant conclusion as to their enforcement within the framework of summary in Belgium. proceedings, pending the outcome of the proceedings on the merits. 8. To what extent are courts willing to In order to succeed, the patentee must consider, or bound by, the opinions and meet two conditions: decisions of other courts that have dealt • It must demonstrate the so-called with similar cases? appearance of rights, ie, that the acts for Belgian courts are not bound in any way which a preliminary injunction is sought whatsoever by the opinions and decisions of prima facie infringe on its patent. Within any other (Belgian or foreign) courts that this context, the president will, as a rule, have dealt with similar cases, even if they assume that the European patent invoked concern parallel national patents to the is valid (foi est due au titre), having patent at stake. already been the object of an examination That said, Belgian judges will usually take by the European Patent Office, unless the into account the decisions reached in parallel defendant can demonstrate that this cases by the more specialised courts of patent is prima facie invalid and should other European countries such as Germany therefore be disregarded. and the Netherlands or, in exceptional • The patentee must also demonstrate circumstances, even the US courts. that its claim is urgent, ie, that it will suffer serious harm or prejudice in the 9. To what extent are courts willing to absence of a preliminary injunction and consider the reasoning given by foreign that the proceedings on the merits will courts that have handed down decisions in not allow it to obtain the necessary relief similar cases? in a timely fashion. Accordingly, if the Belgian judges are willing to consider the urgency has been caused by the reasoning given by foreign courts, particularly patentee’s negligence or inaction, its in parallel patent cases; although they will claim will be rejected for lack of urgency. not necessarily agree with the reasoning. A decision on whether or not to grant a 10. What options are open to a defendant preliminary injunction will usually be handed seeking to delay a case? How can a down within a couple of weeks or months at plaintiff counter delaying tactics? the most. It is possible to request The possibilities of delaying a case which preliminary measures on an ex parte basis, are open to a defendant will vary depending but only in cases of absolute necessity, ie, if upon the particular circumstances of each an immediate decision is required in order to case and the strategy and tactics adopted by safeguard the plaintiff’s interests. the defendant. Summary proceedings sometimes give Classical means of defence include the rise to the balancing of the parties’ interests, contestation of the available evidence of particularly if the case is not clear-cut. infringement (including starting opposition proceedings against the saisie description 12. How long does it take to get a decision which the patentee may have obtained, in at first instance? Is it possible to expedite order to delay the infringement proceedings) this process? or the filing of a counterclaim for the The length of proceedings on the merits nullification of the patent. depends mainly on the court in question, the Many defendants also try to exploit the complexity of the case and the diligence of possibilities available under Belgian judicial the parties.

www.iam-magazine.com Patents in Europe 2006 45 Enforcing patents in Belgium

While there are certain exceptions (such involved, whether or not the court appoints a as the proceedings before the French- judicial expert, etc. Any estimate will therefore language Court of First Instance of Brussels, have to be considered as very approximate, as which suffers backlogs of up to three years one usually knows where this kind of or more), one can say that it is possible to undertaking starts but cannot predict how and obtain a judgment in a standard patent case where it will end. within one or two years. Where the court Based on prior experience, we would say decides on the appointment of a judicial that a case on the merits involving a not too expert, further delays must be anticipated, complex patent dispute will cost between as the expert will have to hear the parties, Euros 50,000 and Euros 100,000, up to the investigate the issues and draft a report point where a first instance judgment is which will then be debated before the court. rendered (this amount would cover the Considering that the furtherance of the drafting of summons and arguments, as well proceedings mainly depends on the parties as the appearances in court, the preparation themselves – the court being mainly reactive of the case, correspondence and follow-up, to their initiatives – the plaintiff can expedite etc). One should also take into account that the case to some extent by acting proactively the assistance of a specialised patent and diligently in setting deadlines for the attorney is required in most cases to help exchange of submissions and exhibits, and prepare the briefs. The cost of the fixing a hearing date. proceedings can further increase if the court renders only an interlocutory judgment, eg, if 13. What avenues for appeal are open to the a judicial expert is appointed and the defeated party in a first instance case? What proceedings are lengthened as a result. criteria are there for granting an appeal? How In addition, one needs to take into long does the appeal process take? account the possibility that certain The defeated party can appeal any (even submissions and exhibits will have to be interlocutory) judgment before the territorially translated (for the benefit of the client or competent court of appeal (at Brussels, sometimes at the request of the judge). Antwerp, Ghent, Mons or Liège). Where this Finally, note that (some of the) legal happens, the whole case is devolved to the costs could possibly be recovered from the court of appeal, which will review it and defendant if one can convince the court that decide on the claims (raised in appeal or such costs are part of the damage incurred possibly also in counter-appeal). by the plaintiff as a result of the patent Proceedings before the court of appeal infringement. usually take longer than those at first instance and one should count on a 15. Who can represent parties in court? Is timeframe of about two to three years before specialist representation required? a decision is taken on the merits (or Litigating parties must be represented by sometimes less, depending upon the court one or more attorneys at law. It is possible involved). Appeals against decisions by the for a party to represent itself, but this is president of the court of first instance in almost never done in patent cases and could summary proceedings take much less time prove dangerous in view of the complexities and are normally dealt with in one year or of Belgian judicial and substantive laws. less, depending upon the circumstances. The judgment of the court of appeal can 16. What remedies are available for be appealed to the Supreme Court (Court de infringement and how are these typically Cassation). However, the Supreme Court will applied? Are punitive damages available not review the facts, but only the legal issues. and in what circumstances? Such procedures can take two years or more. Article 27 of the Belgian Patent Act allows the patentee to prevent any unauthorised 14. To take a case through to a first third party from: (1) producing, offering, instance decision, what level of cost should marketing, using or importing or storing with a party to a litigation expect to incur? a view to the aforementioned the patented It is very difficult to give an assessment of the subject matter; (2) in the case of a patented cost of patent litigation in Belgium, as the cost process, applying or offering this process for of litigation (and patent litigation in particular) use in Belgium; and (3) producing, offering, will vary to a great extent depending upon the marketing, using or importing or storing with type of the proceedings and the complexity of a view to the aforementioned any material the case, in addition to some other elements directly resulting from a patented process. such as the rates applied by the legal counsel In addition, the Patent Act also sanctions

46 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Belgium

indirect patent infringements, ie, where the It is noteworthy that the experimental use defendant knowingly or negligently offers or exception has been fundamentally modified supplies means relating to an essential following the review of the Belgian Patent feature of the patented invention. Act with regard to the transposition of the Any such injunction is normally imposed Biotechnology Directive. Whereas under the under forfeiture of substantial fines in case old law, the rights conferred by a patent did of continued infringement and can possibly not extend to experiments relating to the be combined with publicity measures at the subject matter of the patented invention, cost of the infringing party. this exception now applies to acts which are In addition, the patentee (and any performed on and/or with the subject registered licensee) is entitled to seek matter of the patented invention, for damages (to be increased with interest at scientific purposes. the legal rate of 7%) in order to compensate The Belgian legislator has thus completely for the prejudice resulting from the abandoned the distinction between infringement. The same principles apply here experiments on the patented subject matter as in tort cases, the aggrieved party being and experiments with the patented subject entitled to the full reparation of its prejudice matter, and provides for the exemption of both caused by the infringement. One should, types of experiment. As a result, it has however, take into account that the Belgian become much more difficult to enforce patent courts have a rather conservative approach rights relating to so-called research tools. in the assessment of damages, eg, taking Furthermore, one should take into as a basis the level of royalties usually account that the Belgian Patent Act and the claimed by the patentee. relevant procedural rules will be further Within this context, it is out of the amended at the occasion of the question that punitive damages can be transposition of the IP Enforcement granted, although the amount and level of Directive. The main anticipated new features damages granted seems to be growing. are the centralisation of patent cases at the Finally, if the bad faith of the defendant level of the Brussels Court of Commerce and is established, the court can order the the possibility of obtaining final injunctions confiscation of the infringing products and on the merits on an expedited basis. the means specifically intended for their manufacture.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? Alternatives to litigation are either arbitration or mediation, but these require the agreement and cooperation of the infringing party and might therefore not always be of relevance.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? Belgium has not yet signed or ratified the London Protocol and has not yet expressed its support for the European Patent Litigation Agreement. Although one can expect that such will eventually happen, it is impossible to make any prediction on the timing thereof. Also, it remains to be seen whether the dispensation of translations provided by the London Protocol will cause any problems at the political level.

19. Are there any other features of the enforcement system in your jurisdiction that you would like to point out?

www.iam-magazine.com Patents in Europe 2006 47 Enforcing patents in the Czech Republic Feature

Enforcing patents in the Czech Republic

in Prague shall decide all IP infringement cases By Lukas Lorenc, Cermák Horejs Myslil – including cases involving patent infringement. a spol, Prague As the new regulation on the enforcement of all IP rights became effective only in May 2006, the City Court judges do not yet have high 1. What options are open to a European levels of expertise. patent holder, whose rights cover your jurisdiction, when seeking to enforce its 3. Is it possible to cross-examine witnesses rights in your jurisdiction? at trial? How far are proceedings based on According to Article 35c of Czech Act No written evidence? Are there restrictions on 527/1991 Coll on Inventions and the use of evidence from experts? Rationalisation Proposals (hereinafter Litigation is based on written evidence referred to as the Patent Act), a European supported by witness statements. Witnesses patent has the same effects as a patent may be cross-examined by the other party at granted by the Czech Patent Office in trial. There are no restrictions on the use of accordance with the Patent Act. The owner of evidence from experts. IP infringement a European patent therefore has the proceedings are so-called concentrated exclusive right to use the invention, to proceedings, which means that all evidence authorise others to use the invention or to has to be submitted or at least proposed assign the patent to others. According to within the first hearing. The judge has to Article 4 of the new Act 221/2006 Coll on consider all evidence (including witness Enforcement of Intellectual Property Rights, statements) proposed by each party in the in case of infringement of patent rights, the litigation and give reasons for its rejection. owner of the patent has the right to apply to the court for an order prohibiting the 4. Are infringement and invalidity dealt with infringement or the impending infringement, simultaneously? What level of proof is and to ask for the consequences of the necessary to demonstrate one or the other? infringement to be remedied; the owner of Courts deal with any infringement of the patent may also claim appropriate patent rights and its consequences. On the satisfaction, including monetary other hand, only the Patent Office decides recompense. The right to claim the surrender on revocation (invalidity) of a patent. It is of unjustified enrichment and to claim very usual that in case of infringement of damages shall not be affected. It is also patent rights the defendant files a request possible to apply to the court to issue a for revocation of the patent; the court may preliminary injunction against an infringer then suspend infringement proceedings ordering immediate cessation of the until the Patent Office decides on the infringement, an option which is a fast and revocation request. effective measure. To succeed in infringement proceedings the patent owner should submit at least one 2. Does your jurisdiction have specialist direct piece of evidence proving the fact that patent courts? If not, what level of the defendant’s activity infringes the patent expertise can a patent owner expect from – for example, any expert opinion comparing the courts? the defendant’s product with the product There are no special patent courts in the Czech protected by the patent. Republic. However, according to Article 6 of the In invalidation proceedings before the Act on Enforcement of IP Rights, the City Court Patent Office, the plaintiff has to prove that:

48 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in the Czech Republic

(a) the invention does not meet the of the ECJ in particular cases and rulings of conditions of patentability (novelty, inventive the Constitutional Court. However, decisions step, industrial application); (b) the and opinions of other courts (and especially invention is not disclosed in the patent so higher courts, ie, high courts and the clearly and completely that it can be worked Supreme Court) in similar cases are very by a person skilled in the art; and (c) the often taken into account when the court has subject matter of the patent extends beyond to decide an identical or similar matter. This the content of the invention application as practice helps courts to establish consistent filed, or the subject matter of the patent interpretation and application of the law. granted on the divisional application extends beyond the content of the invention 9. To what extent are courts willing to application as filed, or that the extent of the consider the reasoning given by foreign protection arising from the patent has been courts that have handed down decisions in extended. The evidence in invalidity similar cases? proceedings therefore consists of quoting a Czech courts generally do not like to consider number of registered patents, books, decisions or reasoning given by foreign dictionaries and prior art in general. courts, except certain rulings of the ECJ (see above). If, however, the foreign legislation is 5. To what extent is pre-trial discovery identical or similar to the Czech law and the permitted? If it is permitted, how is reasoning of a foreign court is persuasive, it discovery conducted? can influence the approach of a Czech court. There is no pre-trial discovery under Czech law. Evidence or documents are discovered 10. What options are open to a defendant before the judge during the hearing. seeking to delay a case? How can a plaintiff counter delaying tactics? 6. To what extent does any doctrine of In patent infringement actions, the defendant equivalents apply in an infringement action? may file a revocation request with the Patent Czech courts hesitate to apply a doctrine Office, which may substantially protract the of equivalents in an infringement action case. If the court decides to suspend the case based on patent rights. The doctrine of until the Patent Office rules on the revocation equivalents is applied in infringement actions request, the plaintiff’s position is difficult. The based on unfair competition provisions of defendant may also request the court to ask the Czech Commercial Code. The argument the ECJ for a preliminary ruling in cases where based on patent rights is therefore often a provision of EU law is applicable. The combined with argument based on unfair plaintiff is authorised to object to this request. competition provisions. Long-lasting litigations and trials are a major problem for Czech courts. Preliminary 7. Are there certain types of patent right injunctions may be a good solution for the that may be granted by the EPO – biotech or plaintiff until the final decision is issued. computer software-related, for example – that are more difficult to enforce than others? 11. How available are preliminary Software-related, biotech and pharmaceutical injunctions and how do you get them? patents are usually more difficult to enforce Preliminary injunctions are fast and effective than technical patents, because it is more protective measures. The court has to decide difficult to prove infringement by comparing on the request for preliminary injunction the solution used by the defendant and the within seven days of the date of filing. solution protected by the patent. This applies According to the amended Article 75b of the also to patented methods of manufacturing. Czech Civil Procedure Code, the plaintiff has to deposit a security in the amount of CZK 8. To what extent are courts willing to 50,000 – and in commercial matters (ie, also consider, or bound by, the opinions and in cases of patent infringement and unfair decisions of other courts that have dealt competition actions) CZK 100,000 with similar cases? (approximately Euros 3,000) – at the latest The courts are bound primarily by the on the same day on which it files the request wording of the law. After the accession of the for the issuance of a preliminary injunction Czech Republic to the EU, European law is with the court. This security serves the part of Czech law and must be applied by purpose of securing compensation for Czech courts. In general, decisions or damage or other harm that could be caused opinions of other courts are not binding on by the preliminary injunction if the final the Czech courts, except preliminary rulings decision goes against the plaintiff.

www.iam-magazine.com Patents in Europe 2006 49 Enforcing patents in the Czech Republic

12. How long does it take to get a decision before the first and second instance courts at first instance? Is it possible to expedite generally. The patent owner may defend its this process? rights personally. Parties may be It takes approximately one to one and a half represented by any individual, by an attorney years to get a decision at first instance. There at law, by a notary public and, except in is scant possibility of expediting the process. appeals, also by a patent attorney. Representation by an IP litigation specialist 13. What avenues for appeal are open to the is recommended, however. defeated party in a first instance case? What criteria are there for granting an appeal? How 16. What remedies are available for long does the appeal process take? infringement and how are these typically The defeated party in patent infringement applied? Are punitive damages available proceedings may appeal the first instance and in what circumstances? decision to the High Court within 15 days of For remedies in case of patent infringement the date of the delivery of the first instance please see the answer to question 1. The decision. There are two high courts in the remedy called appropriate satisfaction can Czech Republic: in Prague and in Olomouc. be considered as equivalent to punitive The defeated party may appeal the whole damages. It is intended to indemnify the decision or only a part of it. It is not possible aggrieved party for any harm which cannot to appeal only the reasoning behind the be calculated by direct damages. decision. An appeal may be based only on certain circumstances stated in Article 205 17. Are there any realistic alternatives to (2) of the Civil Procedure Code, for example: litigation in cases relating to patent the conditions of the proceedings were not disputes? met; the decision was issued by a first At the moment there is no alternative to instance court that was not materially litigation in case of patent infringement. If the competent; the decision of the first instance parties do not conclude an out-of-court court was issued by an excluded judge settlement or settlement before the court, only (assessor) or the first instance court was litigation can secure the enforcement of rights. composed incorrectly; the first instance court did not take account of the facts asserted by the appellant or of the evidence identified by it; or, although the requirements for appeal stated by the Civil Procedure Code were not met, the procedure was affected by another defect that could have caused an incorrect decision on the merits of the case. Appellate proceedings are regulated by Articles 201 to 226 of the Civil Procedure Code. The appeal process takes one and a half to two years.

14. To take a case through to a first instance decision, what level of cost should a party to a litigation expect to incur? The costs of first instance proceedings depend on the complexity of the matter. It usually takes at least 20 hours of a lawyer’s time to take a case through to a first instance decision. The level of cost increases where an expert opinion is drafted and submitted to the court. Court fees may be considerably high, especially if extensive damages are requested.

15. Who can represent parties in court? According to Article 24 of the Civil Procedure Code, any party may choose a representative to represent it in the proceedings. There is no compulsory representation required

50 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Denmark

Enforcing patents in Denmark

attorney and one or more technical By Pernille Thorsboe, Zacco A/S, experts in the relevant field, preferably Copenhagen university professors.

3. Is it possible to cross-examine witnesses 1. What options are open to a European at trial? How far are proceedings based on patent holder, whose rights cover your written evidence? Are there restrictions on jurisdiction, when seeking to enforce its the use of evidence from experts? rights in your jurisdiction? The parties put a series of questions in Denmark ratified the European Patent writing to the experts, who may also be Convention as late as 1st January 1990. asked to conduct or supervise experiments Since that date most patent protection in relevant to the case. The experts then Denmark has been established by way of a present written testimony containing their European patent designating Denmark. A answers to the questions. European patent application that designates During the final court hearing, the expert Denmark has the same effect in Denmark as witnesses are cross-examined. The experts a national application filed at the Danish may not express any opinion of legal Patent Office from its date of filing. Thus, character, ie, they may not state whether the when a patent is granted it confers the same patent is infringed or not. The judges then right on the patent holder as a national patent. reach a decision, based on the written In order to secure provisional protection testimony and the cross-examination of the before grant, the patent applicant must file a expert witnesses. translation of the patent claims into Danish. Once a translation has been filed, an 4. Are infringement and invalidity dealt with applicant has the right to reasonable simultaneously? What level of proof is compensation in cases of infringement from necessary to demonstrate one or the other? the date when the translated claims are The validity of the patent-in-suit is not made available to the public. Obviously, filing automatically an issue – at least not an issue a translation also serves as a warning to raised by the court. But the defendant party potential infringers. may, and often does, file a counterclaim for invalidity at the same high court. The 2. Does your jurisdiction have specialist counterclaim should be supported by new patent courts? If not, what level of prior art and/or arguments challenging novelty expertise can a patent owner expect from and inventive step. If an invalidity suit is filed, the courts? the proceedings are consolidated, unless the A patent holder seeking to enforce its rights parties agree to a bifurcation. The validity suit in Denmark can file an infringement suit with proceeds much like the infringement suit, ie, one of the two Danish high courts, where the it includes written testimony from expert case will be tried before three legally witnesses and cross-examination, followed by qualified judges. Due to the small number of a court decision taken by the judges. litigation cases in Denmark, we have no specialist patent courts. In order to 5. To what extent is pre-trial discovery compensate for the lack of technical permitted? If it is permitted, how is expertise in the high courts, the courts discovery conducted? nominate neutral expert witnesses, who No formal pre-trial discovery is permitted in normally include an experienced patent Denmark. The parties are able to request

www.iam-magazine.com Patents in Europe 2006 51 Enforcing patents in Denmark

voluntary information from each other, such court the parties plead their case primarily as samples of an alleged infringing product based on legislation and decisions of Danish for further investigation, but they have no courts. However, if the case concerns a obligation to meet any requirements in this European patent, then relevant decisions respect. Instead, a company that wants to from European case law will be cited and the sue an infringer will normally investigate evaluation from the European Patent Office publicly available information, such as the of the validity of a patent will be referred to. file history of the patent-in-suit and patent The decisions and opinions of foreign courts databases. A company may also consult in similar cases would, however, normally experts in the technical field, such as have little effect on the final decision in a university professors. Where technical Danish court. experts are consulted prior to a trial, it is important for the company to keep clear 9. What options are open to a defendant some selected experts to act as court – seeking to delay a case? How can a appointed witnesses in the later trial. plaintiff counter delaying tactics? It takes two to three years from the start of 6. To what extent does any doctrine of the proceedings in an infringement case equivalents apply in an infringement action? before a decision can be expected from the The extent of protection conferred by a high court. The parties may request an European patent is determined by the terms extension of the time limits set by the court of the claims (Article 69 EPC). The Protocol during the preparatory work, and these on the Interpretation of Article 69 is an extensions are widely granted by the court. integral part of the Convention, but attempts The plaintiff may object if the defendant to harmonise the interpretation of abuses this privilege and deliberately delays equivalents in the contracting states have the case unduly. been unsuccessful. However, the doctrine of equivalents cited in the Protocol’s last 10. How available are preliminary sentence is much in harmony with the injunctions and how do you get them? situation according to Danish case law. It is possible, and in most cases Thus, the protection conferred by the recommended, to seek a preliminary claims in a European patent enforced in injunction in the city court. The formal Denmark extends beyond the literal wording of request for injunction is filed at the city court the claim to cover, to some extent, products, where the alleged infringer is resident. The processes, etc, that are equivalent in case is tried before one judge, who is structure, technical function, use, etc. The unlikely to be familiar with patent cases. decision is taken on a case-by-case basis on In injunction proceedings, testimonies a balanced overall judgment, taking into are allowed from experts consulted by only account all essential steps in a process (if the one of the parties, and both parties will patent relates to a process) or all essential normally support their case with expert elements (if the patent relates to a product). testimonies. The final hearing is often very The protection must combine fair protection comprehensive, since the parties have a for the patent holder and a reasonable degree legitimate interest in presenting as many of certainty for third parties. technical details as possible; this is normally allowed by the city court. In an injunction 7. Are there certain types of patent right that case, a challenge from the defendant on the may be granted by the EPO – biotech or validity of the patent will, according to computer software-related, for example – that present practice, be taken into consideration are more difficult to enforce than others? only if new prior art anticipating the novelty Only a few cases relating to the enforcement of the invention is presented to the court. of patents within new technical fields, such as A decision of the city court to grant a biotech or software, have reached the courts, preliminary injunction must be confirmed and these have not yet given rise to any afterwards in a confirmatory action in the diverging trend that would suggest that such high court. patents may be more difficult to enforce. 11. How long does it take to get a decision 8. To what extent are courts willing to at first instance? Is it possible to expedite consider, or bound by, the opinions and this process? decisions of other courts that have dealt In an injunction case in a city court one can with similar cases? expect a decision within one to six months. During the final hearing of a case in high The timeframe depends on the

52 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Denmark

circumstances and the desire of the parties representative is not formally required by the to speed up or delay the case. court, but the patent attorney plays an In an infringement case in high court a important role as adviser and assessor to decision may be taken within six to 24 the attorney at law and the client in technical months, depending on the circumstances matters both during the pre-trial preparation and the parties’ willingness to speed up of the suit and during the final hearing. preparation of the case by, for example, The patent attorney is responsible for getting a statement from the court- drafting the written questions which are the nominated patent expert and technical basis for the testimonies presented by the expert witnesses. court-nominated experts, and the patent attorney also contributes during the drafting 12. What avenues for appeal are open to the of the pleading documents. Written defeated party in a first instance case? What declarations and testimonies are also often criteria are there for granting an appeal? How given by a patent attorney, who may be long does the appeal process take? nominated by the court as an expert witness. A decision of the city court to grant or reject a preliminary injunction may be appealed to 15. What remedies are available for the high court. In an appeal relating to a infringement and how are these typically preliminary injunction, testimonies from one- applied? Are punitive damages available sided experts are also allowed. The and in what circumstances? timeframe for an appeal case, following a The Danish Patents Act was amended on 1st preliminary injunction case, depends on the January 2006 in accordance with Directive circumstances and the desire of the parties 2004/48/EC from the European Union, to speed up or delay the case, but it is which enumerates a number of minimum possible to have an appeal decision within requirements. According to the amended Act, another three to nine months. any person who intentionally or negligently An infringement decision from the high infringes an exclusive patent right must pay court may be appealed to the Supreme remuneration for the use and compensation Court, from which it may take several years for any damages caused by the infringement. to get a decision. In aggravating circumstances, in particular if the infringement is with intent to gain a 13. To take a case through to a first significant and obviously unlawful profit, the instance decision, what level of cost should penalty may increase to imprisonment. a party to a litigation expect to incur? In practice, this means that the patent The official fee for an injunction case is holder has the right to reasonable modest, whereas a larger fee depending on compensation for the use of the patented the value of the case must be paid for an invention, which would frequently be based on infringement case before the high court. In a normal licence fee within the relevant field, principle, the losing party must pay the as well as damages for the unauthorised use. winner’s legal expenses, but the amount to be The compensation is based on an estimate paid is set by court by way of an estimate, and made by the court and in this connection it this estimate seldom reflects the winner’s should be noted that compensation is actual costs. The losing party normally pays generally very modest in Denmark. the expenses of the expert witnesses. It should be added that since pre-trial 16. Are there any realistic alternatives to discovery is not possible in Denmark, the litigation in cases relating to patent costs are smaller than in countries where disputes? pre-trial discovery is allowed. However, there A European patent holder seeking to enforce are, of course, costs for the preparatory its patent in Denmark can, in principle, opt work of a suit, involving both a patent for mediation as an alternative to litigation. attorney and an attorney at law, and possible The chance of solving a conflict through expert witnesses. Naturally, the cost varies mediation before litigation must be depending on the technical field, but evaluated on a case-by-case basis, taking generally pharmaceutical cases are the most the subject matter of the patent and the expensive to prepare. purpose of the litigation into account.

14. Who can represent parties in court? Is 17. Has your jurisdiction signed up to either specialist representation required? the London Protocol or the European Patent Only attorneys-at-law can represent the Litigation Agreement? parties in a Danish court. A specialist Denmark signed the London Agreement on

www.iam-magazine.com Patents in Europe 2006 53 Enforcing patents in Denmark

the application of Article 65 EPC on 17th dependent on a patent which belongs to October 2000. On 4th June 2003, the Danish another person, may obtain a compulsory Parliament amended the Danish Patents Act licence for use of the protected invention of in order to implement the London Agreement the latter patent if the former invention so that it will be compulsory to translate the represents an essential technical progress claims into Danish, while the description of substantial economic importance. The must be available in English. The date of same applies in the case of the non-working deposit of the instrument of ratification and of a patent within the EU. These rules have thus of entry into force of the amendment to rarely been utilised in practice, but they the Patents Act will be decided by the probably have a preventive effect. competent minister.

18. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? The European patent holder can strengthen its position by having the patent re-examined by the Patent Office. This system, introduced in 1993, permits administrative re- examination of both Danish and European patents which have been registered in Denmark. The patent holder can amend the claims and description of its patent in order to take newly discovered and relevant prior art into account. This procedure may improve the chances of success in a preliminary injunction suit. If a European patent application is still pending, it is also possible to speed up the right to enforcement by filing an application for a utility model, preferably with a limited scope, that is tailor-made for an infringement suit. A utility model right can be enforced in the same way as a patent right, provided that the utility model has been examined by the Patent Office. In most cases it is possible to have an examined utility model granted within a few months and then to file a suit for preliminary injunction against an infringer at the city court. A potential countermove from a defendant sued for infringement is to challenge the validity of the patent in high court or to request administrative re- examination at the Patent Office in order to have the patent invalidated or the scope of protection limited. However, where infringement proceedings are brought before a court prior to a final decision on re- examination, the Patent Office will temporarily shelve the prosecution of the re-examination case pending the decision from the court. Because the climate for preliminary injunctions is generally favourable in Denmark, we have also seen an increase in the number of non-infringement suits filed by prospective defendants. Finally, the rules on compulsory licences should be mentioned. These state that the owner of a patent, the use of which is

54 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Finland

Enforcing patents in Finland

The second instance in patent By Ben Rapinoja and Aura Soininen, infringement cases is the Helsinki Court of Borenius & Kemppinen Ltd, Helsinki Appeal and the final instance is the Supreme Court. Neither the court of appeal nor the Supreme Court has technical experts 1. What options are open to a European assisting it. patent holder, whose rights cover your jurisdiction, when seeking to enforce its 3. Is it possible to cross-examine witnesses rights in your jurisdiction? at trial? How far are proceedings based on Finland has been a member of the European written evidence? Are there restrictions on Patent Convention ever since 1996. the use of evidence from experts? European patents are treated as national The preparatory phase of the court action in patents after they have been granted and patent litigation is based on written have come into effect in Finland. Therefore, documentation, while witnesses may be cross- the possibilities for European patent holders examined in the main hearing. Scientific to enforce their rights in Finland correspond experts are quite often used as expert to those of national patent holders. Patent witnesses. infringement cases can be trialled on a civil All material which illustrates that an or criminal basis, although the former is infringement has taken place can be normally what happens in practice. considered relevant. The same applies to material proving the claimed invalidity of a 2. Does your jurisdiction have specialist patent if the case concerns annulment patent courts? If not, what level of issues. Written documents, letters, expertise can a patent owner expect from brochures, drawings and photographs or the courts? pictures of the product or process in The District Court of Helsinki is the sole question, findings by the witnesses etc, can competent court of first instance with be presented to the court. Rules of evidence respect to patent infringement and invalidity are applied in accordance with the Civil matters in Finland. As all court actions in Procedural Code of Finland. patent cases are handled before the district court of Helsinki, certain judges in one 4. Are infringement and invalidity dealt with division of the court are specialised in simultaneously? What level of proof is hearing these cases. necessary to demonstrate one or the other? The competent court of first instance in It is quite usual in Finland that an patent infringement actions consists of one infringement action includes two combined legally trained judge and two technical proceedings: the patent infringement action experts in the preparatory hearings. The of the claimant and the invalidation main hearing consists normally of three proceeding against the patent claimed to be legally trained judges and two technical infringed, initiated by the defendant. If both experts. Technical experts are appointed by infringement and invalidation matters are the court and they are regarded not as combined, the court has first to decide the judges but as assistants of the court. It is to question of invalidity of the patent if the be noted that in the proceedings for patent defendant so requests. The infringement invalidation, the court shall at its own proceedings are then stayed until the validity discretion also request the expert opinion of has been finally determined. This carries the Patent Office. procedural benefits, because if the patent is

www.iam-magazine.com Patents in Europe 2006 55 Enforcing patents in Finland

finally declared invalid, no penalty, payment infringe the patent claims literally, but which of compensation or other measures may be solve the technical problem in an equivalent ordered by the court as no infringement has manner compared to the elements explicitly taken place. mentioned in the patent claims. Instead, they In Finland, the Patents Act does not have applied the doctrine indirectly and have define the level of proof necessary in order considered whether there is only an to demonstrate patent infringement or insubstantial difference between the patented invalidity. Basically the courts may freely invention and the allegedly infringing consider the evidence on the basis of which product/process, or whether technical they determine what is right in the case. solutions are functionally similar. Only with respect to precautionary measures is there a defined standard for the issuance. 7. Are there certain types of patent right that Thus, the probability of the existence of may be granted by the EPO – biotech or alleged infringement is assessed by the computer software-related, for example – that court in these cases. are more difficult to enforce than others? With regard to patents granted for computer- 5. To what extent is pre-trial discovery related inventions, the Finnish Patent Office permitted? If it is permitted, how is has taken the position that it follows the discovery conducted? practice of the European Patent Office (EPO) Finnish patent law does not permit so-called and accepts so-called product claims. pre-trial discovery, as it is known to many However, to our understanding, the common law jurisdictions. However, parties enforceability of these patents has not so far may request the court to order certain been tested in court. When it comes to identified documents or other pieces of certain biotech-related inventions, the evidence to be presented in the court if situation corresponds to that of computer- these are necessary for determining the related inventions: the practice of the Finnish level of damages, for example. Patent Office is largely consistent with that of the EPO, but the Finnish courts have not 6. To what extent does any doctrine of so far given decisions on the matter. equivalents apply in an infringement action? The basic rule for the interpretation of patents 8. To what extent are courts willing to by the Finnish courts is set out in Section 39 consider, or bound by, the opinions and of the Finnish Patents Act. According to this, decisions of other courts that have dealt the scope of protection conferred by a patent with similar cases? is determined by the claims and the Finnish courts do take the opinions and description may serve as guidance for decisions of other courts into account, but interpreting them. as a general rule they are not bound by them Finnish case law, however, is not with the exception of the precedents given by coherent with regard to the interpretation of the Supreme Court. the patent claims in accordance with the statute and also to the application of the 9. To what extent are courts willing to doctrine of equivalents. Nevertheless, it can consider the reasoning given by foreign be said that while the courts have courts that have handed down decisions in traditionally based their assessment in similar cases? patent infringement cases first and foremost Finnish courts are to some extent willing to on the literal wording of the patent claims, take into consideration the reasoning given by they may also take into consideration the foreign courts in similar matters, as well as patent description, drawings and prior art the decisions of the EPO Board of Appeals. when interpreting them. Furthermore, in They are not bound to do so, however. practice the courts assess the patent claims as a whole, taking into account technical 10. What options are open to a defendant knowledge, intuition, legal tradition and seeking to delay a case? How can a expert opinions. The claims may thus be plaintiff counter delaying tactics? construed more broadly than their literal The defendant may delay the court interpretation would give rise to. proceedings by requesting extensions for its Irrespective of what has been said above, statements. This kind of delaying tactics may in their reasoning the Finnish courts have not prolong the process for several months. been keen on referring to the doctrine of Furthermore, if the defendant challenges the equivalents, according to which patent scope validity of the patent claimed to be infringed, also entails such elements which do not the court will set a certain period of time

56 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Finland

during which the defendant must file the Supreme Court in order to ensure the invalidity proceedings against the patent. consistency of jurisdiction in similar cases, Handling of the invalidity action before the or if it is considered otherwise necessary court takes normally from one and a half to due to an error in the proceedings or two years in the first instance. otherwise in the case that would ultimately lead to the reversal of the judgment or for 11. How available are preliminary some other weighty reason. In practice, injunctions and how do you get them? permission to appeal is granted in less than A preliminary injunction action may be one-tenth of all cases. In patent matters, the initiated in Finland in the district court before number is even lower. the main subject matter is pending. In order to succeed with such a claim, there must be 14. To take a case through to a first a danger that the other party will hinder or instance decision, what level of cost should undermine the realisation of the patent a party to a litigation expect to incur? holder’s right by deed, action or negligence or Costs of patent litigation are relatively high in some other manner, or will essentially in Finland. Parties should take into account decrease its value or significance. that, in addition to attorneys’ fees, the work Furthermore, probability of the existence of a of patent agents and, in most cases, valid right is needed, and the granting of the scientific experts (cross-examined as expert preliminary injunction is tied to an interest witnesses in the main hearing) add to the balance: the other party must not suffer legal costs of the case. Parties should be undue inconvenience in comparison with the prepared for costs varying between Euros benefit to be secured. Preliminary injunctions 80,000 and Euros 400,000 to get to a first are sought quite often by patentees, instance decision depending on the case. especially in certain fields of industry, but the The costs are dependent on the amount of courts are cautious in awarding them. work needed for the court proceedings (the In addition to a preliminary injunction preparation in writing, oral preparatory potentially awarded prior to the initiation of hearings and the main hearing). The more the main action, it is possible to request the writs and pleading papers in the proceedings court in the course of the proceedings to there are, the higher the costs. grant an interlocutory injunction on use of It should be also taken into account that the patent or to order that certain objects of in principle the winning party is entitled to property be seized for the duration of the have its legal costs compensated by the proceedings. losing party.

12. How long does it take to get a decision 15. Who can represent parties in court? Is at first instance? Is it possible to expedite specialist representation required? this process? The representative of the party in dispute The timeline for the patent cases at the first must have a law degree, but no other instance is generally from one and a half to specialist representation is required under two years, depending on the case. There are the law. Normally parties are represented by no specific provisions for expedited process. attorneys who are members of the Finnish Bar Association and specialise in patent law 13. What avenues for appeal are open to the and intellectual property litigation. defeated party in a first instance case? What criteria are there for granting an appeal? How 16. What remedies are available for long does the appeal process take? infringement and how are these typically The parties in a patent infringement case applied? Are punitive damages available are entitled to appeal the decision to the and in what circumstances? Helsinki Court of Appeal in accordance with In civil cases, the primary remedy for patent the instructions given by the district court. infringement in Finland is injunctive relief. These appeal proceedings last generally Thus, if infringement is confirmed, the court from one to two years. typically forbids the infringer from continuing The decisions and judgments of the or repeating the infringing act. Furthermore, court of appeal can be further appealed to the infringer is as a general rule liable for the third instance, the Supreme Court. In paying reasonable compensation for the patent proceedings, as in other civil exploitation of the invention, which is often proceedings, permission to appeal has to be determined on the basis of licence analogy. given. Permission is granted only if it is Damages for other injury may also be important to bring the matter to the awarded. These damages may only include

www.iam-magazine.com Patents in Europe 2006 57 Enforcing patents in Finland

those incurred during the last five years prior to instituting the court proceedings, however. Moreover, if the patent infringement is intentional, the infringer may be liable to a fine. If requested, the court may also order that the infringing products must be altered or destroyed. If the patent infringement case is litigated on a criminal basis, the remedies available include a fine and imprisonment. Punitive damages are not available in Finland and the reasonable compensation and damages awarded by the courts are typically rather low.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? If the parties so agree, they can settle their case in arbitration or in mediation.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? Finland has signed neither the London Protocol nor the European Patent Litigation Agreement. As of October 2006, no official decisions regarding the signing of the said agreements or the timeline for doing so had been made. Principally, Finland has had a positive approach towards the agreements, but prior to signing them there are still studies to be conducted with respect to the implications of the implementation of the agreements in Finland.

58 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in France

Enforcing patents in France

There is no cross-examination of witnesses. By Pascal Moutard, Brevalex, Paris The whole procedure is in writing. In principle, any kind of evidence can be used, but it is very rare for a judge to rely on oral 1. What options are open to a European evidence. Experts’ reports can be ordered by patent holder, whose rights cover your the judge and both parties have the right to jurisdiction, when seeking to enforce its see the report and findings, and to comment rights in your jurisdiction? on them, just as they can with any other A European patent holder has exactly the arguments and facts taken into account same rights as the owner of a French patent. during the process. The expert report is only It is, in particular, entitled to have an one piece of information for the judge and infringement seizure carried out, which is a does not bind him. He is entirely free to very efficient way of collecting evidence of follow the expert’s conclusions or not. infringement. After having brought Accounting experts are also very frequently proceedings before the court it may further designated to evaluate damages. Sometimes request a preliminary injunction. experts’ reports from foreign jurisdiction are Custom detention is now also available taken into account by the French judge. on the basis of a patent. Although probably more difficult to enforce than custom 4. Are infringement and invalidity dealt with detention of goods infringing trademarks, it simultaneously? What level of proof is can be a useful tool for patentees. necessary to demonstrate one or the other? The court which is competent to decide the 2. Does your jurisdiction have specialist infringement is also competent to decide patent courts? If not, what level of validity. It makes the decision on expertise can a patent owner expect from infringement coherent with the analysis of the courts? the patent first performed by the judge to All litigation on patent matters falls within decide on the validity. As a general rule, any the jurisdiction of seven first instance courts kind of evidence can be used. However, and of the relevant courts of appeals. judges tend to rely on written evidence. In However, 70% of the litigation is handled by most cases an infringement seizure carried the courts of Paris and Lyon. In the Paris out by a bailiff is decisive for the decision on court, one chamber specialises in IP infringement. In the case of a patent matters. More than 300 patent infringement covering a process for the manufacture of a cases are filed each year in France and product, the court may, subject to certain therefore the French courts are used to conditions, order the defendant to prove that dealing with complicated IP cases. As a the process used to manufacture an result, a patent owner can expect a high identical product is different from the level of competence from French judges. patented process. It is a reversal of the Expertise may be ordered by the judge on burden of the proof. As to the validity of the technical questions but is not very frequent, patent, this is very often challenged by the except when evaluating damages. defendant on the basis of written documents. 3. Is it possible to cross-examine witnesses at trial? How far are proceedings based on 5. To what extent is pre-trial discovery written evidence? Are there restrictions on permitted? If it is permitted, how is the use of evidence from experts? discovery conducted?

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There is no discovery process as, for think that practice will progressively example, in the US. The French Intellectual harmonise between the different European Property Code (CPI), however, has provisions countries. on conducting an infringement seizure, a procedure which is very often used before a 8. To what extent are courts willing to litigation. It allows a patentee to get relevant consider, or bound by, the opinions and evidence in respect of the alleged decisions of other courts that have dealt infringement. The investigations may include with similar cases? the detailed description (saisie descriptive) – No French court is bound by any previous with or without the taking of samples – or decisions on similar cases. But, of course, the physical seizure of the infringing goods some principles have become well- (saisie réelle). It is also possible to seize established case law and are well observed other items, such as the materials and and applied by judges, particularly in view of implements used in the production of these the specialisation of the courts, as already goods and the documents relating thereto, mentioned. to identify the infringers. These measures are taken ex parte, without the other party 9. To what extent are courts willing to having been heard. Only the president of the consider the reasoning given by foreign court of first instance can order an courts that have handed down decisions in infringement seizure and only the bailiff similar cases? assisted by an expert (usually the patent Here again French judges are totally free to attorney) is entitled to carry it out. It is a evaluate or consider any decision or opinion very efficient way to prove the infringement. from any other jurisdiction. In particular, It is possible for the person against whom when deciding on the validity of a patent they the seizure is directed to ask the judge to are not even bound by the decisions or retract or limit the order. Damages can also opinions of the EPO Boards of Appeal on the be claimed if the seizure is misused. With same patent, though this does not mean regard to the saisie réelle there is a time they will not consider them. In addition, limit of 15 days as from the date on which application of Article 69 EPC is not yet the seizure is carried out to bring an action harmonised across Europe, so certain cases on the merits. If this does not happen, the will be decided differently from one seizure is void. jurisdiction to another. This is one of the reasons why professionals are so impatient 6. To what extent does any doctrine of to have a system like the EPLA. equivalents apply in an infringement action? Of course it applies. According to well- 10. What options are open to a defendant established French case law, means are seeking to delay a case? How can a equivalent if, despite being in a different plaintiff counter delaying tactics? form or structure, they have the same If a patentee sues a third party on the basis technical function to perform a similar of a European patent before the end of the result. This technical function has to be new. opposition period, the assumed infringer will If it is known from the art then the doctrine certainly file an opposition and the judge will of equivalents does not apply. The amended consider whether it is appropriate to stay the version of Article 69 of the European Patent proceedings. Convention 2000 requires courts to take due The so-called torpedo strategy seems to account of equivalents, although it does not be confirmed since the decision of the ECJ in give a precise definition of the term. the case Gasser v Misat of December 2003. A torpedo action is an action for declaration 7. Are there certain types of patent right that of non-infringement of a patent. It is filed by a may be granted by the EPO – biotech or plaintiff who feels threatened by a patentee computer software-related, for example – that before the latter files an infringement action. are more difficult to enforce than others? According to European Council Regulation Regarding CRI (computer-related inventions), 44/2001 (and the former Brussels there are some reasonable decisions in this Convention), in such a case the jurisdiction of field. French judges may apply the exclusion the state where the infringement proceedings from patentability more strictly than the EPO. are brought has to stay the proceedings until The analysis is not yet performed entirely on the jurisdiction of the court first seized is the basis of the same criteria (in particular, established. In the past, it was not the “further technical effect”) that the now uncommon to see plaintiffs first seizing the well-established EPO case law applies. I courts of a country reputed for its slow

60 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in France

proceedings, in particular in patent matters, 13. What avenues for appeal are open to the for declaration of non-infringement of a defeated party in a first instance case? What European patent in other countries. Any criteria are there for granting an appeal? How infringement action before other courts long does the appeal process take? (seized after the first court) in these other The judgment of the first instance court can countries was therefore frozen until the court be appealed within one month of the first seized decided on its competency. And decision being handed down. The appeal since the court first seized was particularly automatically suspends the decision of the slow, the action before the second courts first instance court, although this can be was frozen for a long time. Some courts (the declared enforceable notwithstanding second courts) in other countries, such as appeal. And the decision of the Appeal Court France, decided not to stay infringement can be appealed before the Supreme Court actions in such circumstances, particularly on (Court of Cassation) on points of law only. the grounds that the action for declaration of non-infringement was filed in bad faith. But 14. To take a case through to a first the ECJ has confirmed that the second court instance decision, what level of cost should seized has to stay, regardless of any other a party to a litigation expect to incur? consideration. It depends very much on the nature of the case and on its complexity (number of 11. How available are preliminary parties involved, need for an expertise, etc). injunctions and how do you get them? Statistics recently published by the EPO The owner or the exclusive licensee, upon indicate amounts of about Euros 50,000 to certain conditions, may request such a Euros 200,000 for a small to medium-scale preliminary injunction. But proceedings on patent litigation, which seems quite realistic the merits must first be brought before the and is confirmed by our experience. court for infringement of a patent and the injunction (or guarantees) is granted only if 15. Who can represent parties in court? Is the proceedings on the merits appear well specialist representation required? founded (that is, on the basis of the The parties have to be represented by an provided information, the patent is regarded attorney at law (avocet) before the first as likely to be valid and the infringement instance court and by an avoué for action is likely to be successful) and have procedural matters before the Court of been initiated within a short time (usually Appeal. Very few attorneys may represent within six months of when the patentee parties before the Supreme Court (Cassation became aware of the infringing acts). The Court). Patent attorneys have no right of injunction is provisional and, under penalty audience, although they deal with of a daily fine, enjoins the defendant from substantive matters and play an important committing the suspected infringing acts. role in any patent litigation. The judge may grant the injunction only when the plaintiff has provided a guarantee to 16. What remedies are available for cover possible indemnification of damages infringement and how are these typically suffered by the defendant if the infringement applied? Are punitive damages available proceedings are subsequently judged to be and in what circumstances? unfounded. Or he may not grant the Different sanctions may be ordered by the preliminary injunction and instead require judge and these do not relate only to the defendant to post a guarantee to cover damages. Usually, the judge also decides to indemnification of the patentee in case it is bar the infringer from continuing the successful in its infringement action. Of infringing acts, under penalty of a fine (which course, the decision can be appealed. can be quite high). Depending on the case, he may also order destruction or 12. How long does it take to get a decision confiscation of the infringing articles. He at first instance? Is it possible to expedite may even order the confiscation of the this process? means and devices that were used to realise No accelerated examination of the case is the infringement, or bar the infringer from available. The approximate duration of a operating elements such as machines or typical infringement case is between 18 and processes in order to cease the 30 months in first instance, depending on infringement, under penalty of a fine. The the complexity of the case. It should be kept solutions available in this regard are in mind that a decision is on both validity and numerous. Publication of the judgment in the infringement. press (which can be a problem for the

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reputation of some firms) is also sometimes ordered, as well as provisional execution of the decision, if needed. As to damages, there are no punitive damages in France. Damages are intended to compensate the patentee for the harm suffered. They are calculated on the basis of the infringing asset (number and value of articles) and the commercial and technical capacity of the claimant in order to determine whether it could have satisfied the demand of the infringer’s clients. For the part of the infringing asset which the plaintiff could have sold, lost profits will be determined, taking into account the profit margin of the plaintiff. For the part of the infringing asset which the plaintiff could not have sold, the damage will be estimated on the basis of a royalty rate (a higher rate than would willingly be agreed on). If the plaintiff does not exploit the invention in France or only imports into France, damages are calculated on the basis of a royalty rate (here again a higher rate than would willingly be agreed on). Directive EC 2004/48 on the enforcement of IP rights opens the possibility of increasing damages if necessary, in particular on the basis of the unfair profits made by the infringer.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? Mediation and arbitration are open to patent disputes. The validity of the patent cannot be decided by an arbitrator, but most of the questions raised in a patent dispute can be settled through mediation or decided in the frame of arbitration.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? France is participating in the EPLA project and has signed the London Protocol.

19. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? Very often the plaintiff files additional claims for unfair competition. Combining different IP rights can also be very efficient in some cases, in particular for customs detention. And last, but not least, French judges are increasingly aware of the problem posed by infringement in general and damages awarded tend to be higher than in the past. I again mention Directive EC 2004/48, which opens the possibility of increasing damages if necessary.

62 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Germany

Enforcing patents in Germany

3. Is it possible to cross-examine witnesses By Bernd Allekotte, Grünecker Kinkeldey at trial? How far are proceedings based on Stockmair & Schwanhäusser, Munich written evidence? Are there restrictions on the use of evidence from experts? Although in any litigation an oral hearing takes 1. What options are open to a European place before the court, it appears to be the patent holder, whose rights cover your written briefs – rather than oral arguments – jurisdiction, when seeking to enforce its that make the courts come to a decision. rights in your jurisdiction? In practice, witnesses will be heard by the A European patent designating Germany court and examined by the parties if crucial affords the same rights as those conferred and decisive underlying facts of the case are by a German patent. The holder of such in dispute (eg, if the defendant has a valid European patent has, in particular, the defence based on prior use). Experts are following options: heard by the court to provide it with • The right to send out a cease and knowledge it does not have, in particular desist letter. when, say, the technology is extremely • The right to apply for a preliminary difficult to grasp for the court or when the injunction or a decision on the merits. subject which is alleged to be infringing does • The right to obtain evidence of an not fall literally under the plaintiff’s patent, infringement (to some extent only, though). but is said to be infringing under the so-called • The right to request border seizure. doctrine of equivalents.

2. Does your jurisdiction have specialist 4. Are infringement and invalidity dealt with patent courts? If not, what level of simultaneously? What level of proof is expertise can a patent owner expect from necessary to demonstrate one or the other? the courts? As opposed to other countries, German Specialised patent infringement chambers of courts hearing infringement matters a few selected district courts handle patent exclusively deal with infringement of the infringement cases. In total, there are 12 patent, ie, they do not have the competence such chambers in Germany. The patent to decide on the validity of a patent. As a infringement chambers of the District Court consequence, the defendant needs to attack of Düsseldorf have the highest filing rate the validity in separate proceedings (which is among all of them, while those of the district why the German system is commonly referred courts in Mannheim, Munich, Hamburg and to as the dual system), to be initiated at the Frankfurt also hear a very substantial Federal Patent Court, the European Patent amount of infringement cases. The judges Office or the German Patent and Trademark hearing patent infringement matters are Office, as the case may be. trained jurists and do not need to have a Although the defendant may not request technical background. Due to their being that the court hearing an infringement matter exposed to all facets of patent infringement invalidate the plaintiff’s patent, it may continuously, the German patent request that the infringement proceedings be infringement chambers are widely held in stayed until the invalidity proceedings are high esteem by parties and practitioners, resolved, ie, until it has been determined and understand even complex and difficult whether the patent is valid. As a matter of patents and technology. The same is true fact, in almost all cases where a party files with respect to the courts of appeal. a complaint on grounds of patent

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infringement, the defendant will respond by to well-established German case law, a initiating invalidity proceedings. However, the modification still falls under the scope of a infringement courts will honour requests to patent if: (1) the modified means have stay the infringement trial only in cases objectively the same effect as the means of where there is an overwhelming likelihood the patent; (2) a person skilled in the art that the patent which is allegedly infringed was able to find such modified means; and will be invalidated; otherwise, the (3) the person skilled in the art would also infringement trial continues to run during the consider such modified means as a solution parallel invalidity proceedings. In practice, of equal quality to what is patented when the defendant may succeed in convincing the reading the patent. infringement court to stay its proceedings if In practice, courts appoint experts to it can present a novelty-destroying prior art assist them in determining whether these document which has not been examined requirements are met. Such experts are during prosecution. It is only rarely that a de ultimately appointed by the court, yet the novo review of other prior art will lead to a parties are given the opportunity – and are, stay of infringement proceedings, in in fact, invited – to propose experts in the particular when it has already been particular technical field of the patent. The examined and reviewed during prosecution. appointed expert is asked to submit a written opinion on factual questions that will allow 5. To what extent is pre-trial discovery the court to find for or against equivalence. permitted? If it is permitted, how is Once the court receives the opinion, the discovery conducted? parties may comment on it in written briefs German law contains no process similar to as well as in a follow-up hearing at which the that of pre-trial discovery. Basically, a expert may be ordered to appear to defend plaintiff needs to know all the relevant facts his opinion. Depending on the complexity of before suing. There are, however, some the issues raised and the time the expert limited ways to obtain evidence from a needs to render an opinion, a trial may be defendant. Currently, under a rather recent delayed significantly, ie, for about a year. ruling of the Federal Supreme Court, a plaintiff may request that a device or object 7. Are there certain types of patent right that is not readily available to the plaintiff be that may be granted by the EPO – for inspected by an expert appointed by the example, biotech computer software-related court. Such a claim will be granted by the – that are more difficult to enforce than courts only if a balancing of interests (ie, a others? likelihood of infringement on the side of the There are no specific types of patent granted plaintiff, as opposed to the justified by the EPO that should be regarded as being interests of secrecy on the side of the more difficult to enforce than others. defendant) results in favour of the plaintiff. Moreover, German courts allow for 8. To what extent are courts willing to independent proceedings for taking evidence, consider, or bound by, the opinions and according to section 485 of the Civil decisions of other courts that have dealt Procedure Code. Please note that the with similar cases? current regime of German laws is under German courts are not bound by opinions review, as European Directive 2004/48 and decisions of other courts that have (Enforcement Directive) will be transposed dealt with similar cases. Even at the appeal into national law by the beginning of 2007. level, one will notice that in particular questions of law different views exist 6. To what extent does any doctrine of between the courts, but in practice these equivalents apply in an infringement action? differences are rather minor. The scope of a patent is defined by the infringement court, which takes into 9. To what extent are courts willing to consideration the meaning of the claims. consider the reasoning given by foreign These are interpreted in light of the courts that have handed down decisions in description and the drawings of the patent. similar cases? If the subject matter fulfils all features of Although a party may find it worthwhile to the patent literally, this constitutes introduce a reasoning given by a foreign court infringement. However, modifications of the in a parallel or similar case in its favour to subject matter vis-à-vis one or more features bolster its position, it should not anticipate of the patent may also be caught under the that German courts will be overly impressed so-called doctrine of equivalents. According by this.

64 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Germany

10. What options are open to a defendant a period of one to two months upon notice of seeking to delay a case? How can a the infringing actions. plaintiff counter delaying tactics? A defendant seeking to delay a case will 12. How long does it take to get a decision primarily consider initiating invalidity at first instance? Is it possible to expedite proceedings against the plaintiff’s patent this process? and will try to convince the infringement As compared to other jurisdictions, most court to stay proceedings until a decision patent infringement disputes are decided has been rendered as regards the validity of relatively quickly in Germany. As a rule of the patent. thumb, the plaintiff may expect the district Another means to delay the infringement court to render its decision about one year trial is to persuade the court to appoint and after the filing date if no expert is appointed hear an expert. The defendant may succeed and heard by the court. if the technology (patent) is difficult to understand and/or the patent is not infringed 13. What avenues for appeal are open to the literally (ie, the subject matter contained defeated party in a first instance case? What modifications vis-à-vis the patent claim). criteria are there for granting an appeal? How Potential defendants may also consider long does the appeal process take? filing a motion for a negative declaratory Any judgment in a patent infringement matter judgment in a foreign jurisdiction where may be appealed. However, it is rather courts may render a decision rather slowly, difficult to introduce new facts during appeal such as Belgium or Italy. If the foreign proceedings, ie, facts which were not complaint of the potential defendant is introduced when the case was heard by the pending before it is sued in Germany, the district court. In practice, therefore, appeal German courts need to stay the German trial proceedings often turn out to be limited to until a decision is rendered by the foreign reviewing whether the court of first instance court. At least until recently, this resulted in applied the laws correctly. Appeal severe delays to some German trials. proceedings may take up to another year as Recently, however, there has been a from the date of filing the appeal. noticeable decrease in choosing such a It is only under very narrow strategy. One reason is a legislative change circumstances that a further appeal – which in the applicable European regulation now goes to the German Federal Supreme Court governing the point of time when a complaint – will be heard; such appeals are, in any is regarded to be pending for all EU member case, limited to a review of questions of law. states equally. Also, in cases where it is obvious that the action of the defendant in 14. To take a case through to a first the foreign jurisdiction is designed merely to instance decision, what level of cost should delay German infringement proceedings, a party to a litigation expect to incur? courts have held that this may constitute an In Germany, the losing party needs to abuse of procedural means and have heard reimburse the winning party for legal fees, the case in spite of a parallel foreign trial. consisting of: (1) court fees; (2) attorneys’ fees; (3) patent attorneys’ fees; and (4) 11. How available are preliminary reasonable expenditures. The fees depend injunctions and how do you get them? on the value in dispute, which is a number in The plaintiff may consider obtaining a Euros that reflects the plaintiff’s interest in preliminary injunction – which is limited to the case. In practice, it turns out that a ordering that the defendant cease and desist plaintiff should consider being exposed to a from committing infringing acts. minimum of about Euros 40,000 in legal Whether trying to obtain a preliminary fees if it loses the suit. The cost risk injunction is an option for the patentee increases in more important cases, but in needs to be decided on a case-by-case almost all cases the plaintiff may assess it basis. In practice, it is particularly interesting pretty accurately before suing. in less complex cases where the plaintiff In appeal proceedings, the same principles can show a clear case of infringement. In apply, but the cost risk is roughly 20% higher any case, should the patentee consider filing than in the proceedings before the court of a motion for a preliminary injunction, it first instance. The cost risk for an invalidity needs to act very quickly because courts action depends on the specific action initiated. grant preliminary injunctions only if the matter is urgent; this requires the plaintiff to 15. Who can represent parties in court? file a motion for a preliminary injunction with In patent infringement matters, the parties

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need to be represented by an attorney at law who is admitted to the German Bar. There is no need for the attorney at law to be domiciled at the court hearing the matter; rather, any German attorney at law may represent clients at both the district court and the court of appeals level. It is quite unusual for an attorney at law representing a client in a patent infringement trial also to have a technical background. In practice, therefore, the litigators are always assisted by patent attorneys who provide them with the technical background required by the specific case.

16. What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances? The usual remedies sought by the plaintiff include: (1) cease and desist; (2) payment of damages; and (3) rendering of accounts for infringing actions in the past. Damages may be calculated by the plaintiff on the following bases: (1) actual losses of the plaintiff; (2) reasonable licence fee; or (3) profit generated by the defendant. Due to a recent holding of the German Federal Supreme Court, claiming the profit made by the defendant may often turn out to be the most rewarding method for the plaintiff. Under certain circumstances, the plaintiff may also request that infringing devices be destroyed. If the court finds in favour of the plaintiff, it may enforce the judgment by depositing security (in an amount which is fixed by the court) by way of, for example, a bank guarantee.

17. Are there any realistic alternatives to litigation, in cases relating to patent disputes? Although alternative dispute resolution techniques such as mediation or arbitration are, in general, available, they do not play an important role.

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

19. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? A patentee should always consider filing a request for border seizures to stop infringing devices from entering the country.

66 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Hungary

Enforcing patents in Hungary

usually appoints an expert for those fact- By Dr Gábor Faludi and Dr Gusztáv finding issues that require special expertise. Bacher, Szecskay Ügyvédi Iroda – Attorneys at Law, Budapest 4. Are infringement and invalidity dealt with simultaneously? What level of proof is necessary to demonstrate one or the other? 1. What options are open to a European Patent cancellation claims shall be initiated patent holder, whose rights cover your before the HPO. If the defendant in the jurisdiction, when seeking to enforce its infringement proceedings challenges the rights in your jurisdiction? validity of the patent (this is a separate A European patent is subject to the same proceeding) and the patent cancellation conditions as a patent granted by the proceedings are pending (either before the Hungarian Patent Office (HPO). A European HPO or after appeal before the court), the patent is considered granted when the notice infringement proceedings are suspended. At is published in the European Patent Journal. the request of either party, patent The patent’s effect is subject to the filing of cancellation proceedings shall be conducted the Hungarian text of the European patent expeditiously if patent infringement litigation with the HPO within three months of its has been commenced on the basis of the grant. Should the patent owner fail to file the same patent. However, the pending Hungarian text, the patent shall be regarded cancellation proceedings may not prevent the as ineffective in the territory of Hungary. court from ordering an interim injunction against the alleged infringer. In the course of 2. Does your jurisdiction have specialist the court's review as to whether the interim patent courts? If not, what level of injunction is necessary for the special expertise can a patent owner expect from protection of the claimant's rights (for the the courts? details see section 11), the court shall In patent cases, the Metropolitan Court of consider whether the patent has already been Budapest has exclusive jurisdiction, as a cancelled by the non-final decision of the HPO court of first instance. A specialised council or the court of first instance, or whether a composed of a three-judge panel, where two European patent with effect for the territory of the three professional judges are required of the Republic of Hungary has been revoked to have a technical degree, handles cases. by the Opposition Division of the European The Metropolitan Court is an assigned Patent Office (EPO), or whether it has been higher-level court. The Metropolitan Circuit cancelled in another member state of the Court hears appeals against its decisions. EPO in a final or non-binding decision. Legal revision (exceptional relief) falls within There are no specific rules on level of the power of the Supreme Court. proof in IP matters. With respect to process patents, the Patent Act grants a presumption 3. Is it possible to cross-examine witnesses for the patent holder – pursuant to the TRIPs at trial? How far are proceedings based on Agreement – that, pending proof to the written evidence? Are there restrictions on contrary, a product shall be deemed to be the use of evidence from experts? produced through the patented process if the It is not possible to cross-examine witnesses product is new, or it is highly probable that at trial in the way the question suggests. the product has been manufactured through However, the court hears witnesses and the the patented process, and the patent holder parties may ask them questions. The court cannot define the applied process, even after

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having taken the steps generally expected in mere guidelines for a person skilled in the art the given situation. In particular, it is highly to determine the claimed invention. The probable that the product has been produced official reasoning of the Patent Act explains through the patented process if this is the that due to this provision governing the scope only known process. of protection, it is not necessary to define the doctrine of equivalents in the Patent Act. 5. To what extent is pre-trial discovery permitted? If it is permitted, how is 7. Are there certain types of patent right that discovery conducted? may be granted by the EPO – biotech or Even before the commencement of the computer software-related, for example – that litigation, the court may – on request of the are more difficult to enforce than others? interested party – order preliminary fact- In principle, there is no difference between finding proceedings if it is likely that the the enforcement of different types of patent. carrying out of such fact finding during the The legal preconditions for the granting of proceedings or at a later time would not be patents are in conformity with the EPC. successful or would be more difficult; or would enable the court to finish the 8. To what extent are courts willing to proceedings within a reasonable period of consider, or bound by, the opinions and time. Further, preliminary fact-finding may be decisions of other courts that have dealt carried out if the holder of the patent has with similar cases? already substantiated the infringement or While binding case law (precedents) per se threat of infringement to a reasonable extent. does not exist in Hungary, the Supreme Court Preliminary fact-finding may also be ordered sets guidelines based on principles and also in ex parte procedures, where any delay is publishes opinions on issues of principle in likely to cause irreparable harm or where order to give guidelines to all courts. Such there is a demonstrable risk of evidence directives and decisions on issues of principle being destroyed. These circumstances will be as set forth by the Supreme Court are binding treated as a case of urgency. on all courts in Hungary. There is no obligation under Hungarian law for a litigant to disclose documents to 9. To what extent are courts willing to the other litigant. Discovery proceedings consider the reasoning given by foreign similar to those found in US courts are courts that have handed down decisions in unknown in Hungary. It should be noted, similar cases? however, that while there is no general duty Jurisprudence in Hungary does not take into of disclosure, the tribunal could order a account the decisions rendered by the courts litigant, at the request of the counterparty, to of other countries. Hungarian courts may disclose certain documents, including decide only on the basis of the legislation in documents that could be harmful to the force in the Republic in Hungary and the disclosing party (notwithstanding the facts of the case revealed by the Hungarian protection of trade secrets). In IP litigation, courts. Following Hungary's accession to the the burden of proof can be reversed if the European Union, it is no longer possible to plaintiff has substantiated its statements to apply without reservation the former a reasonable extent. As a result, the precedents, according to which a foreign opposing party can be ordered to present decision, rendered upon similar facts of the and allow for review documents and other case, cannot substantially bind the Hungarian physical evidence in its possession, and to court (formal binding force undoubtedly does present bank, financial or commercial not exist), as the decisions rendered by the information and documents in its possession. courts of the member states are based on mandatory harmonised substantive law. 6. To what extent does any doctrine of As indicated above under section 4, in equivalents apply in an infringement action? the course of evaluating the grounds of an The scope of protection conferred by a patent interim injunction, the court may consider shall be determined by the claims. The whether a European patent has been claims shall be interpreted on the basis of revoked by the Opposition Division of the the description and the drawings. Patent EPO or whether it has been cancelled in protection shall cover any product or process another member state of the EPO. in which all the characteristics of the claim are embodied. The terms of the claims shall 10. What options are open to a defendant not be confined to their strict literal wording; seeking to delay a case? How can a neither shall the claims be considered as plaintiff counter delaying tactics?

68 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Hungary

If the patent holder starts an infringement decision is executed. Upon being notified of case, the defendant may claim, from the HPO, the decision, the affected party may request the revocation of the patent on the basis that a hearing and that the decision ordering the the patent is not eligible for protection. provisional measures or the preliminary Although commencing cancellation evidence be modified or revoked. proceedings per se does not prevent the In a similar way to so-called Mareva Metropolitan Court from rendering a injunctions and under the conditions set forth preliminary injunction, the court shall also above relating to the preliminary injunction, consider whether the patent has already been the patent holder may request the court to cancelled by a non-final decision of the HPO. order: (1) protective measures under the provisions of the Act on Judicial Enforcement, 11. How available are preliminary if it can be substantiated that any injunctions and how do you get them? subsequent attempts for the recovery of According to Section 156(1) of the Hungarian profits made by the infringement or the Civil Procedure Code, a court may, upon payment of damages are in jeopardy; and/or application, issue a preliminary injunction in (2) the infringer to provide or disclose bank, order to: prevent imminent damage; maintain financial or commercial information and the status quo during a legal dispute; or documents for the purposes of ordering such protect the claimant's rights if it is found that protective measures. they need special protection. This is the case The party requesting the court to grant the as long as the burdens imposed by such a preliminary injunction or protective measures measure do not exceed the benefits that may may be obliged by the court to provide be gained by it. The facts relating to the appropriate security. The security serves as a reasoning of the request for a preliminary deposit to satisfy claims for the recovery of injunction must be of a probable nature. financial disadvantages suffered by the The request for a preliminary injunction in opposing party. If the opposing party fails to infringement litigation can be filed prior to enforce its claim for recovery within three filing the statement of claim. In court actions months of the operative date of the judgment instituted on the grounds of alleged for repealing the measure, the depositor of the infringement of a patent, a preliminary security may request the court to release the injunction will be considered necessary for security. This provision provides compensation the special protection of the claimant's rights for those who suffer from an unfounded if the claimant can prove that the patent is request to apply the said measures. protected and that it is the patent holder or a user which is authorised to institute court 12. How long does it take to get a decision proceedings due to an infringement in its own at first instance? Is it possible to expedite name. Upon weighing the potential benefits this process? and disadvantages of the preliminary Section 2 of the Code of Civil Procedure injunction, the court shall take into account provides that court proceedings must be whether such injunction is manifestly and completed within a reasonable time. However, substantially contrary to public interest or the it often takes years to obtain a judgment, interests of third parties. depending upon the workload of the court and Instead of an injunction, the court may the complexity of the matter. It is worth order the defendant to provide appropriate mentioning that the reform of the judicial security in lieu of continuing the allegedly system – namely the setting up of the Court infringing acts. of Appeals between the second level (county The court shall rule on a preliminary and metropolitan courts) and the Supreme injunction in special proceedings no later Court – has considerably accelerated the than 15 calendar days following the proceedings at the appellate courts. submission of a petition for such measures. The same rules apply to the court of second 13. What avenues for appeal are open to the instance regarding appeals against the defeated party in a first instance case? What decisions of the court of first instance. The criteria are there for granting an appeal? How preliminary injunction is enforceable even if long does the appeal process take? the defendant files an appeal against such In infringement proceedings, an appeal can decision. The parties must be heard be filed against a judgment of the personally, unless the urgency of the Metropolitan Court to the Metropolitan Court situation makes a hearing impossible. Where of Appeal. Further, the party may request any measures are taken ex parte, the from the Supreme Court, on the basis of opposing party shall be given notice when the violation of law, a judicial review of the

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second instance judgment rendered by the • Compensation of damages other than Court of Appeal. the financial profit achieved by the infringer in case of culpable infringement 14. To take a case through to a first under the Civil Code. instance decision, what level of cost should a party to a litigation expect to incur? Further, the court may order the Depending on the complexity of the case, defendant to pay general (estimated) from Euros 1,500 upwards. compensation for damages if the extent of damage (usually the lost profit element of the 15. Who can represent parties in court? Is damage) cannot be precisely – even if only in specialist representation required? part – calculated. The estimated damages In patent cases, attorneys-at-law or patent should suffice to provide the injured party attorneys may represent the parties. with full financial compensation. A sentence on estimated damages constitutes res 16. What remedies are available for judicata, even if it turns out in the future that infringement and how are these typically the extent of actual damage did not applied? Are punitive damages available subsequently reach the amount of the and in what circumstances? estimated damages. If, however, the Hungarian law has been adapted to the IP defendant pays an annuity (a recurring Enforcement Directive (2004/48/EC). Claims amount) as estimated damages, the reduction can be initiated against the infringer of the thereof or the reduction of the payment period patent right and some of them (injunction can be claimed in accordance with any and data provision, as set forth below) may substantial changes in the conditions. also be initiated against third parties. In the Hungary does not have the concept of event of infringement, the patent holder may punitive damages. The damages award is – in accordance with the circumstances of meant to provide full repair, ie, to compensate the case – have the following civil law claims a party from the loss actually suffered. against the infringer: Some of the claims as listed above can • Establishment of the fact that patent also be enforced against persons other than infringement has occurred. the infringer. The claim for injunction can be • Cessation of the infringement or threat enforced against any party whose service is of infringement and injunction from used in relation to the infringement. Claims further infringement or the provision of to provide information can be enforced security (guarantee) by the infringer in against third parties, namely parties to the case the allegedly infringing behaviour infringement who are: were to continue. • Found in possession of the infringing • Provision of data on parties taking part goods on a commercial scale. in the manufacture of and trade in goods • Found to be using the infringing services or performance of services which infringe on a commercial scale. on the patent, as well as on business • Found to be providing, on a commercial relationships established for the use of scale, services used in infringing activities. the infringer. • Named by the persons referred to above • Amendments of the infringement – by as being involved in the production, declaration or in some other appropriate manufacture or distribution of the goods manner – and, if necessary, publication of or the provision of services. such amendments by and at the expense of the infringer. The information to be provided by either • Recovery of economic profits achieved the infringer or the party aiding infringement through infringement. covers: • In relation to those assets and materials • The names and addresses of the used exclusively or primarily in the producers, manufacturers, distributors, infringement, seizure, delivery up thereof suppliers and other previous holders of the to a particular person, recall and definite goods or services involved in the withdrawal thereof from commercial infringement, as well as the intended circulation, or destruction. wholesalers and retailers or those actually • Appropriate measures for the involved. dissemination of the information • The quantities produced, manufactured, concerning the decision at the expense delivered, received or ordered, as well as of the infringer as decided at the the price paid or received for the goods discretion of the court. or services in question.

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Assets, materials and goods can be seized even if they are possessed by an owner other than the infringer if the owner acts in bad faith, ie, it was aware of the infringement or should have been aware of same with proper care.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? Settlement by the parties. Mediation proceedings under a separate Act preceding a lawsuit are possible in patent cases (except for a challenge to a decision of the HPO) as well. If the mediation fails, the parties are free to commence a lawsuit.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? Hungary has not signed up to either the London Protocol or the European Patent Litigation Agreement. The issue of signing is under professional discussion.

www.iam-magazine.com Patents in Europe 2006 71 Enforcing patents in Iceland Feature

Enforcing patents in Iceland

Finally, we would like to mention that By Gunnar Örn Harðarson and Ásdís there are some remedies available under Magnúsdóttir, Árnason Faktor, Reykjavik Icelandic customs laws. It is possible, if there is a belief that products infringing intellectual property rights are being 1. What options are open to a European imported, to have those products withheld in patent holder, whose rights cover your customs clearance. This is possible upon jurisdiction, when seeking to enforce its request from the relevant IP rights holder rights in your jurisdiction? while it seeks justice before the competent An important remedy for a patent holder in authorities. In these cases, the rights holder Iceland is the possibility of having a must submit an indemnity to cover any preliminary injunction against the allegedly financial damage for withheld products which infringing act. Such an injunction is granted are subsequently found to have been not by courts but by governmental authorities, imported legally. somewhat similar to sheriffs. Such actions are relatively swift and one can expect a ruling 2. Does your jurisdiction have specialist within a few weeks. An injunction is possible patent courts? If not, what level of upon proving, or showing that it is plausible, expertise can a patent owner expect from that an act is likely to infringe one’s legitimate the courts? rights, that the act has already begun or that There are no specialist patent courts in it is pending, and that the owner’s rights will Iceland. Patent cases, like all other cases, are be diminished or harmed substantially if it is tried before general courts, although cases forced to wait for a court’s decision. The involving patents are all tried within the same most important condition is that it must be jurisdiction, the district court of Reykjavik. proven that general rules on torts or Only a few patent cases have been tried punishment will not provide for sufficient before Icelandic courts, although it is our protection for the rights holder. There is also opinion that the number is increasing. a comparison of the interests of the rights Expertise among judges is therefore not great. holder to have the injunction granted with the It is possible, however, to call for experts in a interests of the alleged infringer to pursue certain field to sit as assisting judges in a its actions. patent case. These experts do not have to be If an injunction is granted, a case will lawyers but are usually professionals in the immediately follow in the courts in order to relevant technical field. Another option is to confirm the preliminary injunction (must be filed appoint outside assessors to give expert within one week of issuance of the preliminary assessments regarding certain questions or injunction). The alleged infringement will be uncertainties relevant to the case at hand. dealt with in that same case. General court proceedings are also 3. Is it possible to cross-examine witnesses possible without any prior injunction at trial? How far are proceedings based on measures. The court system in Iceland is written evidence? Are there restrictions on made up of two stages: district courts (eight the use of evidence from experts? courts in eight jurisdictions around the Yes, it is possible to cross-examine country) and the Supreme Court. All patent witnesses. The rule is that the party bringing cases, including verification cases following the witness first asks questions. The injunctions, are dealt with in the district court opposing party then has an opportunity to of Reykjavik. cross-examine.

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The main rule is that all cases before been amended to comply with the EPC. It Icelandic courts go through oral remains to be seen how much Icelandic proceedings. Parties present the case and courts will look to court precedents in explain the submitted materials and other relation to the Convention. evidence they have put forward. Evidence in a case can be statements of parties before 5. To what extent is pre-trial discovery the court, statements of other witnesses, permitted? If it is permitted, how is expert assessments and statements before discovery conducted? the court, written materials and other Pre-trial discovery phase as it is known in substantial materials. the US does not exist in Iceland. There are general rules that one must comply with in order to have a court- 6. To what extent does any doctrine of appointed expert assessor. An expert equivalents apply in an infringement action? assessor can answer questions that pertain According to Icelandic laws, the scope of the to, for example, what is a fact in a given patent is based on the patent claims. The case. The role of an expert assessor is, claims are constructed with reference to the however, limited by the role of the judge - description given in the patent. In general, it that is, he cannot be used to answer general is also safe to say that courts will to some question that pertain to interpretation of the extent use some kind of doctrine of law or questions that one only needs general equivalents in resolving infringement knowledge or education to be able to matters. However, again, we have to answer. Those are within the role of the emphasise lack of court precedents in this judge in each matter. The judge then decides regard, so it is difficult to lay down detailed the evidential value of an expert rules in this respect. Courts would, however, assessment. In general, though, it is safe to look to precedents in other Nordic countries. state that expert assessment is usually Moreover, as Iceland is now a party to the considered very strong evidence with regard EPC, its courts are bound by the Protocol on to the questions it covers. interpretation of article 65 of the EPC, although the Protocol is not directly a part of 4. Are infringement and invalidity dealt with Icelandic laws. It remains to be seen how simultaneously? What level of proof is much courts will refer to the the Protocol in necessary to demonstrate one or the other? relation to its interpretation of the scope of In an infringement case the defendant can patent claims. counter-summon the plaintiff claiming invalidity of the patent. When this happens 7. Are there certain types of patent right the validity of the patent is dealt with that may be granted by the EPO – biotech simultaneously with the infringement claim. or computer software related, for example – Rules on proof are not very well defined that are more difficult to enforce than in Icelandic law and practice in matters others? relating to patent infringement and invalidity. Since 1st November 2004, the patent laws This is true mainly due to lack of precedents of Iceland have been harmonised with the in courts. The basic rule is that the burden of EPC. Icelandic laws have also been amended proof regarding infringement lies on the party to comply with the EU directive on the legal alleging the infringement. The judge then protection of biotechnology inventions. decides in accordance with general rules on Therefore, there are no provisions in proof in Iceland whether a fact has been Icelandic laws that would act as an obstacle proven or not. There are, however, special for enforcement of European patents in this rules regarding the burden of proof in an respect. But, again, there is very little case infringement case involving process patents. law in the field so it is very difficult to predict If the alleged infringer is making the same the possible outcomes in such cases. product as the process patent covers it has Regarding computer software-related the burden of proving that the product is not inventions the practice by the Icelandic made with the patented process. Patent Office up until now has been to follow In cases involving invalidity of patents, EPO practice. Consequently one would expect the party alleging invalidity has the burden of that that would apply also for the courts. proving that to be the case. Here again it is In this respect we would, however, also within the general role of the judge to decide like to draw attention to recent changes in whether the claim has been proven or not. the patent laws of Iceland to comply with EU In addition to the above, we would like to Directive 2004/27/EC of 31st March 2004, emphasise that Icelandic patent laws have which changed Directive 2001/83/EC. A

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certain limitation was added to the scope of protection for the rights holder. There is also patent protection on 8th March 2005 (Bolar a comparison of the interests of the rights type exception) with regard to research and holder to have the injunction granted with testing, and other necessary means to allow the interests of the alleged infringer to applications for marketing authorisation of, pursue its actions. If an injunction is for example, generics. granted, a case will immediately follow in court in order to confirm the preliminary 8. To what extent are courts willing to injunction (this must be filed within one consider, or bound by, the opinions and week of issuance of the preliminary decisions of other courts that have dealt injunction). The alleged infringement will be with similar cases? dealt with in that same case. In general, courts look to precedents when deciding cases if the cases in question are 12. How long does it take to get a decision similar and there have been no changes in at first instance? Is it possible to expedite the laws. Precedents of the Supreme Court this process? of Iceland are of particular importance in It takes about six to 12 months to complete this respect. District court precedents are of a case at first instance. An expert lesser importance. assessment, however, usually takes up a large chunk of time, if one is requested. 9. To what extent are courts willing to Deciding to have an expert assessment consider the reasoning given by foreign therefore usually delays a final decision. courts that have handed down decisions in There is a special procedure before the similar cases? courts for cases requiring quick resolution, In general, Icelandic courts are often willing to but this procedure is in general not available consider reasoning and precedents given by in a typical infringement case. An IP-related courts in the other Nordic countries. This also matter might qualify for this special applies in the field of intellectual property procedure if the matter revolves around a rights. Court decisions from other countries decision of government authorities. might also be relevant, especially if they are related to the interpretation of international 13. What avenues for appeal are open to the agreements to which Iceland is a party. defeated party in a first instance case? What criteria are there for granting an appeal? How 10. What options are open to a defendant long does the appeal process take? seeking to delay a case? How can a An appeal from the district courts in Iceland plaintiff counter delaying tactics? is possible to the Supreme Court. The criteria Parties to a court proceeding cannot by for granting an appeal are not very strict but themselves, even if they both agree, delay a mainly relate to the minimum amount case. The judge is supposed to deny granting claimed, if the claim involves a certain of useless extensions of terms to ensure amount of money. The minimum amount that the case will be resolved quickly and today is around Euros 5,500. An appeal must effectively. This rule prevents parties from be lodged within three months of a court’s delaying a case out of the ordinary, on their decision in a first instance case. The appeal own or in agreement with the other party. process takes about six to eight months.

11. How available are preliminary 14. To take a case through to a first injunctions and how do you get them? instance decision, what level of cost should Preliminary injunctions are granted by a party to a litigation expect to incur? governmental authorities, somewhat similar This is very difficult to estimate. The number to sheriffs. Such actions are relatively swift of cases has been very limited in the past and one can expect a ruling within a few and they have not been very complex. To weeks. An injunction is possible upon give some guidelines we would estimate the proving or showing that it is plausible that cost to be in the range of Euros 30,000 to an act is likely to infringe one’s legitimate Euros 50,000 for taking a non-complex rights, that the act has already begun or patent case through the first instance court. that it is pending and that the owner’s rights will be diminished or harmed substantially if 15. Who can represent parties in court? Is it is forced to wait for a court resolution. specialist representation required? The most important condition is that it must Although parties can represent themselves be proven that general rules on torts or in Icelandic courts, that rarely happens and punishment will not provide for sufficient especially not in complex matters such as

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patent cases. To be able to represent others enforcement system in your jurisdiction that in court one must be an attorney at law you would like to point out? authorised to practise before the courts of We would like to draw special attention to Iceland. Patent attorneys (patent agents) are new legislation (Law 53, 13th June 2006), not allowed to represent others in court. which entered into force on 1st July 2006, concerning obtaining proof in relation to 16. What remedies are available for infringement of IP rights, including patents. infringement and how are these typically The law stipulates that following a court applied? Are punitive damages available order, where a patent holder needs to show and in what circumstances? that infringement is already likely to have Upon proving infringement the remedies occurred, a search may be conducted by available are damages for the injury which government authorities (sheriffs) to collect the infringement may have caused. Some evidence - such as products, equipment for compensation for the exploitation of the production, computer data or other relevant patent is also possible. If the infringement is material - of the infringement. This procedure conducted intentionally the punishment can is designed to be relatively swift and it is be a fine or, under aggravated worth noting that under certain circumstances, imprisonment for up to three circumstances the judge does not need to months. Other measures may be demanded advise the alleged infringer of the court by the court upon a claim thereon to prevent proceedings or of the upcoming search. the abuse of products manufactured in accordance with the patented invention or of any apparatus, tool or other article the use of which would involve patent infringement. Punitive damages are, however, not available under Icelandic laws.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? It is, of course, possible to solve cases through arbitration in Iceland. That has not been used much in IP-related matters, however, and we would not recommend it as a realistic alternative, due to lack of experience in such cases.

18. Has your jurisdiction signed up to the London Protocol or the European Patent Litigation Agreement? If not how likely, is it that it will do so? Iceland acceded to the London Agreement on 31st August 2004 when depositing its instruments for EPC membership. In practice, the principles of the London Agreement have actually been followed in Iceland since 1st January 2002. This means that only a translation of claims into Icelandic is required, provided the description is filed in English. If the description of an issued European patent is in German or French, the proprietor can choose to file either an Icelandic or English translation or validation. This rule applies to all European patents validated in Iceland and having an effective filing date after Iceland’s accession to the EPC. This is worth special attention as it reduces the cost of validating European patents in Iceland considerably.

19. Are there any other features of the

www.iam-magazine.com Patents in Europe 2006 75 Enforcing patents in Ireland Feature

Enforcing patents in Ireland

expertise can a patent owner expect from By John Whelan and Ciara Cullen, A&L the courts? Goodbody, Dublin Ireland does not have specialist patent courts. Choosing the right court is thus a key early consideration for patent owners. In 1. What options are open to a European general, patent infringement proceedings will patent holder, whose rights cover your be commenced in the High Court, in either jurisdiction, when seeking to enforce its the chancery division or in the relatively new rights in your jurisdiction? Commercial List, the latter commonly The holder of a European patent may bring civil referred to as the Commercial Court. proceedings to enforce its rights in Ireland. Although the High Court has general Ireland recently transposed into national law jurisdiction to hear patent claims, the Irish the EC Directive on the Enforcement of Commercial Court has been conferred with Intellectual Property Rights, which had the specific jurisdiction over intellectual property effect of harmonising enforcement procedures disputes both at first instance and on throughout the European Union. Thus the appeal. However, specific permission from holder of a European patent can expect to the Commercial Court has to be obtained have similar enforcement remedies available before bringing proceedings before it. There to it in Ireland as in other member states. are a number of advantages for parties In practice, civil proceedings commence involved in patent proceedings to make such after the claimant has issued a letter before an application for entry into the Commercial action and the allegedly infringing party has Court. The Commercial Court rules have been given an opportunity to remedy any been designed to provide for strict damage caused. The onus rests upon the timeframes and more efficient and less plaintiff rights holder to prove its case, costly trials, important factors in any patent although certain presumptions of ownership case. In addition, the judges in the general and the subsistence of rights in the plaintiff High Court may not have had any significant (until the contrary is proved) may apply in patent litigation experience, whereas the certain circumstances. judges of the Commercial Court are more As a general rule, the patent owner may likely to have been involved in such cases. commence proceedings to enforce its rights An application to have the claim heard by the in the event that a third party makes, offers Commercial Court is made by a motion to for sale, puts on the market, imports or uses the court on notice to the other parties to a product or process which is the subject the proceedings at the commencement of matter protected by the patent, without the proceedings or shortly thereafter. Given its patent owner’s consent. However, patent specific jurisdiction for IP disputes, most if owners should be aware that there are not all future patent cases are likely to be certain limitations placed on their right to brought in the Commercial Court. commence court proceedings to enforce their rights under a patent, such as where the 3. Is it possible to cross-examine witnesses allegedly infringing act is done for private or at trial? How far are proceedings based on non-commercial purposes and where acts are written evidence? Are there restrictions on done for experimental purposes. the use of evidence from experts? Yes, cross-examination of witnesses at trial 2. Does your jurisdiction have specialist is possible. The Commercial Court does, patent courts? If not, what level of however, favour – where possible – the

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exchange of written statements based on 6. To what extent does any doctrine of agreed evidence between the respective equivalents apply in an infringement action? parties’ experts. The Commercial Court may The Irish courts have not adopted a doctrine also require the parties to set out their of equivalents in patent proceedings and the cases in writing and use the witness doctrine does not as such form part of Irish statements, sworn under affidavit, as the patent law. main evidence of the witnesses. It is a The Irish courts have, on the other unique feature of the Commercial Court to hand, endorsed the purposive approach to allow parties to exchange witness construction of patent claims in line with statements and expert reports pre-trial, the approach under Article 69 of the aimed at reducing the length of proceedings. Protocol to the European Patent Convention. If a matter is pursued in the chancery The purposive approach, being narrower division of the High Court, then the more than the approach taken when applying the traditional method of oral argument and doctrine of equivalents, means that patent cross-examination of witness at trial is likely, claims will be construed by the Irish courts and the case can therefore probably be objectively through the eyes of the skilled expected to progress more slowly. addressee.

4. Are infringement and invalidity dealt with 7. Are there certain types of patent right that simultaneously? What level of proof is may be granted by the EPO – biotech or necessary to demonstrate one or the other? computer software-related, for example – that Yes, infringement and invalidity are usually are more difficult to enforce than others? dealt with simultaneously: any defence There are no specific legal rules relating to mounted to a claim for infringement on biotech or computer software-related patents grounds that the patent is invalid would as such which makes them more difficult to generally and logically be coupled with a enforce in Ireland: the rules governing counterclaim by the defendant for invalidity enforcement of patents are indiscriminate. of the patent. Practically speaking, however, if the subject The burden of proof is on the party matter constitutes newly emerging alleging infringement of its rights under the technology, and the patent rights are patent to demonstrate, on the balance of complex and require specialised expertise to probabilities (that it is more likely than not), assist in their enforcement, they may be that the patent has been infringed. A regarded as more difficult, costly or time defendant may seek to argue, in response to consuming to enforce than patents for a a claim that its actions have infringed the more traditional subject matter. patent owner’s rights, that the existing patent is invalid. In that case the defendant bears 8. To what extent are courts willing to the burden of proof to show on the balance consider, or bound by, the opinions and of probabilities that the patent is invalid. decisions of other courts that have dealt with similar cases? 5. To what extent is pre-trial discovery As a general rule, Irish courts are bound by permitted? If it is permitted, how is the doctrine of precedent such that lower discovery conducted? courts will be bound by decisions of the There are no specific rules governing pre-trial superior courts. discovery in relation to patent disputes. As a general rule, when legal proceedings 9. To what extent are courts willing to are issued, the right to obtain discovery arises consider the reasoning given by foreign automatically and both parties are required to courts that have handed down decisions in provide full discovery of all documents relating similar cases? to the dispute which are, or have been, in their There have been only a limited number of possession, custody or power, except those patent cases decided in Ireland; thus, there documents protected by privilege. Discovery is a likelihood that particular points of patent may be effected voluntarily, by agreement law may not have been considered by an between the parties or by order of the court Irish court. In the absence of any existing following a successful application by one or Irish case law on a particular issue, Irish other party. As a general rule, discovery will be courts may look to the case law of other, required in respect of all documents relevant particularly common law, jurisdictions for to matters in issue in the proceedings and guidance. Historically, Irish courts have which are necessary for the fair disposal of demonstrated a preference to follow the the proceedings or to save costs. decisions of the English courts.

www.iam-magazine.com Patents in Europe 2006 77 Enforcing patents in Ireland

10. What options are open to a defendant This is a marked improvement from the seeking to delay a case? How can a chancery division of the High Court which can plaintiff counter delaying tactics? take as long as 18 months to hear a case. In In the High Court, a defendant may either court, however, complex and contested repeatedly miss deadlines in an attempt to patent cases will still be likely to take longer delay the court proceedings. However, if the than the typical commercial or IP dispute. matter has been transferred to the Commercial Court, which for the reasons 13. What avenues for appeal are open to the mentioned above is now likely to be the case defeated party in a first instance case? What for most patent proceedings, such delay criteria are there for granting an appeal? How tactics, if adopted, are a dangerous strategy long does the appeal process take? for a defendant. In the Commercial Court An aggrieved party may appeal a decision of interim costs orders will be made to penalise the High Court only on a point of law to the late compliance with time limits. If a plaintiff Supreme Court. There is no avenue for brings any such tactics to the attention of appeal on a question of fact. the court it will result in swift and stern measures by the court against the defendant 14. To take a case through to a first to move the case on. instance decision, what level of cost should a party to a litigation expect to incur? 11. How available are preliminary This is very difficult to answer as there have injunctions and how do you get them? not been enough patent trials in Ireland to In the High Court, an application may be give an informed view. made for an interlocutory injunction restraining the defendant from any possible 15. Who can represent parties in court? Is or actual act of infringement. The principles specialist representation required? upon which an injunction will be granted are Parties are represented by qualified well settled in Ireland and apply to patent solicitors and barristers – we have a two-tier cases in the same way they apply to other system as in the United Kingdom, where cases. Basically, the claimant must solicitors prepare the case and barristers demonstrate that there is a serious question argue it before the court at trial. Although to be tried and that damages would be an specialist representation is not required it is inadequate remedy. The grant of an advisable to use a solicitor and barrister with injunction is a discretionary power and the experience in patent disputes, in addition to court will assess whether to exercise that a patent agent where the technology covered power according to the balance of by the patent is complex. convenience. The plaintiff is also likely to be required to give an undertaking as to 16. What remedies are available for damages (to cover the situation where it is infringement and how are these typically ultimately determined that it should not have applied? Are punitive damages available obtained the injunction). Injunctions are and in what circumstances? more common in the High Court in general, The remedies typically available on a finding as judges in the Commercial Court may be of patent infringement include: order for more inclined to grant a speedy and early delivery up or destruction of infringing goods; trial rather than interlocutory injunctive relief. an injunction preventing further infringement; damages or an account of profits; and costs. 12. How long does it take to get a decision Punitive damages are generally not at first instance? Is it possible to expedite available in a patent infringement case. this process? Furthermore, an award of damages will not The Commercial Court, in operation since be awarded against an innocent infringer who January 2004, has been widely acclaimed as was genuinely not aware, nor should have a major success with regard to the speed at been aware, of the existence of the patent. which it brings matters to trial. The system of rigorous case management which it has 17. Are there any realistic alternatives to employed and its ability to offer early hearing litigation in cases relating to patent dates have ensured the speedy resolution of disputes? disputes – the average time from start to Recent law reforms have encouraged the use finish of a case at the end of the last legal of alternative dispute resolution (ADR) as a term was a mere nine weeks, with the means to solve IP-related conflicts. allocation of a trial date taking approximately Arbitration and mediation are the most five weeks from institution of proceedings. common ADR procedures in Ireland. In

78 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Ireland

arbitration, the dispute is settled by an impartial expert or arbitrator who issues a binding decision. Mediation, on the other hand, does not involve a binding decision but helps bring both parties towards an amicable resolution. ADR procedures have the advantage that a greater degree of control is retained by the parties. In addition to the time and cost- effective benefits of ADR, the arbitrator/mediator is usually an expert in the field of the dispute and confidentiality is assured. There are many institutions that offer ADR advice and expertise; however, the WIPO Arbitration and Mediation centre is the best international institution as it focuses on IP and technology-related disputes. A patent dispute is often centred on specific technical details, such as modifications to mechanical inventions or alterations to chemical entities. As such, it can often be a highly complex matter that involves a qualitative examination of the state of the art, on which the parties simply cannot agree. Thus, unfortunately, litigation may often be the only realistic option available.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? Ireland has not yet acceded to the London Protocol or the EPLA.

19. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? Under the Brussels Regulation, which has now succeeded the Brussels Convention on the Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters 1968, a defendant must be sued in his home state. However, there is an exemption in tort law that allows the defendant to be sued in the country in which the patent infringement takes place. So, for example, an Irish domiciled defendant infringing a French patent may be sued either in France or in Ireland. Although this may lead to a split in proceedings if the defendant challenges the validity of the patent (as validity is a matter for the courts in the country where the patent is registered), where to sue can be an important consideration in multi-jurisdictional disputes. Although not uniquely an Irish point, it means that it is open to a plaintiff to decide on the courts where it is most likely to obtain the fastest and most effective relief.

www.iam-magazine.com Patents in Europe 2006 79 Enforcing patents in Italy Feature

Enforcing patents in Italy

often patent litigation is decided on the basis By Giovanni Antonio Grippiotti, Società of an assessment rendered by court-appointed Italiana Brevetti, Rome counsel, who are more technically experienced that the court itself.

1. What options are open to a European 3. Is it possible to cross-examine witnesses patent holder, whose rights cover your at trial? How far are proceedings based on jurisdiction, when seeking to enforce its written evidence? Are there restrictions on rights in your jurisdiction? the use of evidence from experts? Civil and criminal litigation are both In principle, it is possible to cross-examine available to a patent owner wishing to witnesses, but according to the Italian enforce its rights in Italy. Civil actions are Procedural Code the right to question more frequent as judges in civil courts are witnesses lies with the judge only. Each generally more experienced in patent party’s attorney must therefore go through the matters than criminal judges. judge to have any questions answered by the An ordinary civil court action may be witnesses. However, in patent litigation preceded by a request for a preliminary witnesses are rare, while the use of technical injunction, which may consist of a request for briefs is very frequent. These briefs are, of seizure of the infringing products, an order to course, drafted by patent counsel. stop the infringing activity and an evidence- Usually the judge appoints a technical gathering procedure known as description. expert to assist the court. During proceedings Such measures can be required even ex parte, a sort of internal technical trial takes place, in ie, without hearing the defendant. which the court-appointed expert exchanges Another option is the seizure of goods briefs with the parties’ patent counsel and suspected of infringing intellectual property renders a concluding assessment which is rights at customs. This is provided for by a quite often the basis for the judge’s final European regulation and the Italian Customs decision. Patent counsel are subject to no are very proactive in applying it. A seizure restrictions and may submit any kind of means that the importation of the infringing available evidence. goods is suspended by the Customs Authority on the basis of evidence supplied by the 4. Are infringement and invalidity dealt with patent holder, which must then bring either a simultaneously? What level of proof is criminal or a civil action, even if in most necessary to demonstrate one or the other? cases criminal actions are started Infringement and invalidity actions can take automatically. place simultaneously. It is quite usual for a defendant in a patent infringement action to 2. Does your jurisdiction have specialist counterclaim the invalidity of the patent as patent courts? If not, what level of expertise part of the same proceedings. Likewise, where can a patent owner expect from the courts? a declaratory judgment for non-infringement of In 2003 Italy introduced specialised industrial a patent is sought, the patent holder may property sections in the courts of Turin, Milan, counterclaim infringement of the patent. Venice, Trieste, Genoa, Bologna, Florence, Each party bears the burden of proving the Rome, Naples, Bari, Catania and Palermo. The alleged invalidity or infringement, and may experience of these courts is increasing due submit any kind of evidence. to the fact that they have sole jurisdiction over first instance patent matters. However, quite 5. To what extent is pre-trial discovery

80 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Italy

permitted? If it is permitted, how is discovery decisions of other courts, they may be conducted? influenced by case law, particularly where Italy provides for a sort of pre-trial inspection several decisions consistently espouse the called a description. This is a type of same opinion. Decisions issued by the preliminary injunction allowing the plaintiff, Italian Supreme Court (Corte di Cassazione) upon authorisation by the judge, to inspect the are taken into account, although first and defendant’s premises, means or products second instance courts have been known to relating to the infringing activities. The diverge from Supreme Court guidance. inspection takes place in the presence of the Different views among Supreme Court bailiff of the court and ex parte experts. judges are also possible and have resulted The report of the description, drafted by in conflicting decisions. the bailiff, can be used to obtain another preliminary injunction in the form of a seizure 9. To what extent are courts willing to or an inhibitory order, or as evidence in an consider the reasoning given by foreign ordinary court action. Usually these orders are courts that have handed down decisions in requested inaudita altera parte (ie, without similar cases? hearing the defendant) in order to avoid the While Italian courts must take into risk of the evidence being removed. consideration European Court of Justice During the trial another form of decisions, they are not bound by foreign inspection that may be requested is an judgments. However, in view of the order for the defendant to produce harmonisation of all basic patent principles documents or information concerning the throughout Europe, decisions rendered by subject matter of the court action. The party other European courts in comparable cases requesting this order must show the court can be referred to as case law, and may that the action is sufficiently grounded. This provide useful arguments, if suitably kind of inspection mostly concerns presented. accounting evidence which may be useful in view of a quantification of damages. 10. What options are open to a defendant seeking to delay a case? How can a plaintiff 6. To what extent does any doctrine of counter delaying tactics? equivalents apply in an infringement action? In order to delay proceedings, the defendant Although the doctrine of equivalents applies in may file a separate action seeking a infringement actions in Italy, there is little declaration of invalidity of the plaintiff’s patent case law and therefore a finding of as opposed to counterclaiming in the same equivalence largely depends on the specific proceeding. This action would be filed with the circumstances. The criteria adopted by the court where the plaintiff has its domicile, European Patent Office or by courts in other which may be a different court. European Union member states can be In such cases, depending on the proposed where appropriate. circumstances, the judge may suspend the infringement proceedings and wait for the 7. Are there certain types of patent right that decision concerning invalidity. As a may be granted by the EPO – biotech or countermove, the plaintiff may, depending on computer software-related, for example – that the circumstances, request a preliminary are more difficult to enforce than others? injunction in order to anticipate the effects In principle, the enforcement of patents does of the final decision or try to concentrate not differ depending on their subject matter. proceedings. However, Italian judges, who normally have no technical background, often have difficulty 11. How available are preliminary injunctions understanding technical matters, particularly and how do you get them? when a case involves sophisticated technical Preliminary injunctions are provided for in Italy. fields such as biotechnology or computer As already explained under point 1, they science. Therefore, courts usually appoint consist of seizure, an inhibitory order and a technical experts to assist them in the description. A preliminary injunction can be decision-making process. obtained in a shorter time than an ordinary court decision and approximately takes two to 8. To what extent are courts willing to eight months. This usually depends on consider, or bound by, the opinions and whether the judge is able to reach a decision decisions of other courts that have dealt with autonomously or needs to appoint a technical similar cases? expert. In the past, most case law indicated Although Italian courts are not bound by the that technical expertise in a preliminary

www.iam-magazine.com Patents in Europe 2006 81 Enforcing patents in Italy

injunction was inconsistent with the urgency of could reach up to Euros 200,000 for the first this kind of provision, but this trend seems to instance. Higher figures than this are unusual. have reversed and technical experts are now The winning party may obtain a sum as quite often involved, particularly in technically recovery of costs incurred, but this will never sophisticated cases. cover the complete expense. In practice, it is usually possible to recover approximately 35% 12. How long does it take to get a decision of the actual costs incurred, while under at first instance? Is it possible to expedite certain circumstances recoveries in the region this process? of 50% to 60% of costs are possible. It usually takes two to three years to reach a decision at first instance, depending on the 15. Who can represent parties in court? Is evidence required and on whether a technical specialist representation required? expert is appointed. Only Italian lawyers or foreign lawyers New rules of procedure were introduced a registered with Italian bars are admitted to year ago for proceedings concerning represent before Italian courts. intellectual and industrial property matters, Patent attorneys in Italy are not allowed to with the aim of reducing their length. Although represent clients before the courts but they it is too early to tell whether that aim has been can appear as ex parte experts. It is advisable achieved, it is foreseeable that under the new to rely on lawyers who specialise in intellectual rules courts will be able to issue decisions in and industrial property law. one to three years, depending on circumstances. 16. What remedies are available for infringement and how are these typically 13. What avenues for appeal are open to the applied? Are punitive damages available and defeated party in a first instance case? What in what circumstances? criteria are there for granting an appeal? How Remedies available in cases of infringement long does the appeal process take? are seizure of the infringing products and of Any of the parties involved may file an appeal the means related to the infringement activity, against the first instance decision before the inhibitory orders, such as an order to the competent court of appeal, depending on the infringer to immediately stop the infringing first instance court’s location. The appeal activity, publication of the decision, destruction must be filed within 30 days of the serving of or assignment of infringing goods and the decision by one party on the other or one damages (the latter only at the end of an year from publication of the decision if no ordinary court action). serving takes place. The burden of proving damages is on the After the decision of the court of appeal, plaintiff, which must also quantify the relevant appeals on points of law may be filed with the amount – usually not a simple task. In Supreme Court. First instance decisions are principle, there are three different criteria for immediately enforceable, even if they have determining damages: loss of profit for the been appealed. However, the court of appeal patent holder; income of the infringer; and may suspend the enforcement if a sufficiently reasonable royalty. In recent years, it has persuasive request is submitted. become quite customary to request the It normally takes two to three years to appointment of an expert to help the court reach a decision in appeal proceedings. assess damages and to rely on an order for the defendant to produce accounting evidence. 14. To take a case through to a first instance Italian law does not provide for punitive decision, what level of cost should a party to damages. a litigation expect to incur? Cost depends on the fees charged by lawyers 17. Are there any realistic alternatives to as well as by patent counsel to the parties litigation in cases relating to patent and to the court. Any patent litigation is disputes? unlikely to cost a party less than Euros The only alternative to court action is to send 15,000 to 20,000 in preliminary proceedings, a cease and desist letter, which may be and no less than Euros 25,000 to Euros effective depending on the circumstances. It 30,000 through to a decision in ordinary should be borne in mind, however, that a proceedings at the first instance court. cease and desist letter might trigger the Higher costs are possible, depending on recipient to commence an action for invalidity specific circumstances. In complex cases, of the patent or file a request for a declaratory costs can climb to between Euros 60,000 and judgment. Euros 70,000 in preliminary proceedings and

82 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in the Netherlands

Enforcing patents in the Netherlands

is implemented in new Article 1019e By Hans Bottema, Nederlandsch CVP providing for an ex parte injunction Octrooibureau, The Hague where there is a chance of irreparable damage to the plaintiff. • Article 14, relating to legal costs, is 1. What options are open to a European implemented in new Article 1019h CVP, patent holder, whose rights cover your which states that the unsuccessful party jurisdiction, when seeking to enforce its in a case must bear the other party's rights in your jurisdiction? reasonable and proportionate costs, A holder of a European patent designating instead of the fixed rates formerly the Netherlands can start a court action prevailing. This may increase the risk for against unauthorised making, using or smaller companies exerting their Dutch selling of the patented product in the patent rights against larger companies Netherlands. Also transit of goods through that are able to afford extensive legal the Netherlands can be prohibited based on assistance in IP proceedings. patent infringement. • Article 260 of the old CVP, implementing On 29th April 2006, the EC Enforcement Article 50 under 6 of the TRIPs Directive 2004/48/EC should have come agreement, is changed to new Article into force, but implementation is still 1019i CPV although its content remains pending. As well as changing Article 70 of unchanged. For provisional measures to the Dutch Patents Act of 1995, relating to remain effective, proceedings on the enforcement, and introducing changes to merit should be commenced at the latest other intellectual property laws, within 31 days. implementation of the directive will see the Code of Civil Procedure (CVP), which gives Contributory infringement can be acted the basic framework of enforcement of IP against for goods relating to an essential rights, modified as follows: element of the invention, provided that they • To accommodate Article 6 of the are both intended and suitable for an directive regarding evidence, a new infringing use within the Netherlands. Article 1019a of the CVP has been In court proceedings not only injunctions, drawn up specifying that evidence other but also lost profits and damages can be than written documents can be ordered claimed, the latter after the alleged infringer to be produced. Violation of knew or had "reasonable grounds to know" confidentiality may be a ground for about the infringing nature of its acts (cf refusal of the provision. Article 45 TRIPs), or in any case after 30 • Article 7 of the directive on measures for days from the date on which the infringing producing evidence is implemented party is put on notice of the infringing nature through new Articles 1019b-1019d CVP. of its acts. Serving a writ in which the The new articles provide for physical infringing act is clearly set out serves as a seizure of the infringing goods, but also trigger for the 30-day notice period. for a descriptive seizure or the taking of Disputes can be adjudicated in summary samples of infringing goods or documents preliminary injunction proceedings, which and tools relating to such goods. This may be concluded within the timeframe of may be ordered in ex parte proceedings. two months, or in proceedings on the merits • Article 9 of the directive relating to with an accelerated regime, resulting in a provisional and precautionary measures verdict in a period just short of a year.

www.iam-magazine.com Patents in Europe 2006 83 Enforcing patents in the Netherlands

Parties can also agree on alternative for performing essentially the same function in dispute resolution to resolve their disputes, essentially the same way, or the insubstantial such as arbitration under the Rules of the differences test (in chemical cases). In Netherlands Arbitration Institute. crowded prior art fields, the courts will adhere to a more literal claim interpretation. 2. Does your jurisdiction have specialist patent courts? If not, what level of 7. Are there certain types of patent right that expertise can a patent owner expect from may be granted by the EPO – biotech or the courts? computer software-related, for example – that Patent cases are dealt with exclusively by an are more difficult to enforce than others? expert court (the district court) of first Enforcement of biotech patents and of instance and in appeal (the court of appeals) computer and software-related patents is residing in The Hague. well provided for. These generally complex cases are often less suitable for dealing with 3. Is it possible to cross-examine witnesses in summary proceedings and may be allowed at trial? How far are proceedings based on only in proceedings on the merits. written evidence? Are there restrictions on the use of evidence from experts? 8. To what extent are courts willing to Witnesses are not cross-examined at trial. A consider, or bound by, the opinions and court can order a hearing of witnesses at decisions of other courts that have dealt the request of one of the parties or in an with similar cases? interlocutory decision. The court will mainly High court decisions are authoritative and rely on written evidence. are followed by the lower courts. There are no restrictions on the use of evidence from experts, although certain 9. To what extent are courts willing to pieces of information during trial may be consider the reasoning given by foreign labelled confidential and may be accessible courts that have handed down decisions in only to an independent expert and not similar cases? directly to the parties. The Dutch courts do take into account verdicts of foreign courts that have dealt 4. Are infringement and invalidity dealt with with the equivalent patent, but will form their simultaneously? What level of proof is own opinion based on all facts. Dutch cross- necessary to demonstrate one or the other? border injunctions based on the spider-in-the- Infringement and invalidity are dealt with in web doctrine may be affected by the recent the same proceedings. The level of proof for ECJ decision in Roche v Primus that this infringement is a level of beyond reasonable Dutch cross-border practice is in doubt. For invalidity, lack of novelty or lack of contravention of the Brussels Convention. inventive step can be based on public prior use, supported by witness statements in the 10. What options are open to a defendant form of written declarations. Parties to the seeking to delay a case? How can a proceedings or employees of parties to the plaintiff counter delaying tactics? proceedings may also serve as witnesses. There are very few options open for the plaintiff or defendant to delay proceedings in 5. To what extent is pre-trial discovery the accelerated proceedings (which are almost permitted? If it is permitted, how is always used). At the start of the proceedings a discovery conducted? time schedule is set for submission of briefs Pre-trial discovery is not available. In case of and documents with no extensions. alleged infringement of a process claim, Dutch law provides for a reversal of the burden of 11. How available are preliminary proof (to the defendant) where: (1) the product injunctions and how do you get them? directly resulting from the patented process is A preliminary injunction is easily available a novel product; or (2) the plaintiff has made a and the required urgency is almost always credible case of infringement and cannot presumed. submit more evidence. 12. How long does it take to get a decision 6. To what extent does any doctrine of at first instance? Is it possible to expedite equivalents apply in an infringement action? this process? In infringement actions the doctrine of Disputes can be adjudicated in summary equivalents is applied in the sense of the preliminary injunction proceedings, which tripartite test of essentially the same means may be concluded within the timeframe of

84 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in the Netherlands

two months or, in proceedings on the merit When litigating a Dutch patent (either EP/NL with an accelerated regime, resulting in a or a Dutch national registration patent which verdict in a period just short of a year. has been granted without substantive examination), the patent may be partially 13. What avenues for appeal are open to the invalidated in view of lack of novelty or defeated party in a first instance case? What inventive step. In the 1996 case of Spiro criteria are there for granting an appeal? How Research v Flamco, the High Court ruled that long does the appeal process take? in case of invalidity a new and valid claim Appeals may be filed from decisions of the may be formulated only when it is clear to district court at first instance to the Court of the skilled person where the scope of Appeals and from there to the Supreme protection shall lie and that a more limited Court. The latter proceedings can be based patent is obtained which is not different from only on procedural violations or violation of the invalidated patent. This differs from the the law; no factual re-assessment of the case interpretation the European Patent Office is undertaken. The appeal process before the gives under Article 123 (2) EPC relating to Court of Appeals and before the Supreme amendments of a patent application not Court may take about one and a half years. being allowable in case of extension of subject matter. In Parteurosa v Fokker, the 14. To take a case through to a first Dutch Court of Appeal in early 2005 ruled instance decision, what level of cost should that in the absence of validity of the main a party to a litigation expect to incur? claim no partial validity was allowed as to In first instance, costs of litigation may the remaining sub-claims. This is at variance amount to between Euros 30,000 and Euros with the Spiro Flamco doctrine. The same 100,000. ruling may be expected in cases of a voluntary restriction of a Dutch patent by the 15. Who can represent parties in court? patentee filing new claims. The parties are represented by a lawyer, mostly in combination with a patent attorney 19. Has your jurisdiction signed up to either who has a right to plead, which is often used the London Protocol or the European Patent to elucidate the technical side of the case. Litigation Agreement? If not, how likely is it Detention by the customs authorities of that it will do so? goods suspected of infringing an intellectual The Netherlands has signed up to both the property right under Council Regulation EC Londen Protocol and the Litigation 1383/2003 can be requested in an Agreement. The state law changing article administrative procedure before the customs 52.1 of the Dutch Patents Act of 1995 was authorities without legal representation being published on 17th January 2006. This now required. Within 10 days of a seizure, a states that European patents designating the period that is extendable by 10 days, legal Netherlands must be translated into Dutch proceedings requiring representation by a or English. Where an English translation is lawyer need to be commenced. submitted, the claims need to be translated into the Dutch language. 16. What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances? The injunction is the most popular remedy for infringement. Damages may be awarded and submission of sales figures may be ordered for calculating lost profits. Punitive damages are not available.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? Alternatives to litigation are mediation or arbitration.

18. Are there any other features of the enforcement system in your jurisdiction that you would like to point out?

www.iam-magazine.com Patents in Europe 2006 85 Enforcing patents in Poland Feature

Enforcing patents in Poland

significant effect upon the scope of By Katarzyna Karcz and Malgorzata protection covered by the European patent. Zielinska-Lazarowicz, Patpol, Warsaw When the alleged infringer has been notified of the claim of infringement, the patent holder may collect damages from the 1. What options are open to a European date of notification. The aforesaid makes patent holder, whose rights cover your further infringement wilful. The European jurisdiction, when seeking to enforce its patent holder may also claim a preliminary rights in your jurisdiction? injunction. A holder of a European patent in which Poland has been designated, and which is 2. Does your jurisdiction have specialist effective in Poland, enjoys basically the patent courts? If not, what level of same rights as a holder of a patent issued expertise can a patent owner expect from by the Polish Patent Office under the the courts? national route. The exclusive rights may be There are no specialist patent courts in enforced by the patent holder or they may be Poland. Common civil courts handle patent assigned to third parties. infringement matters and the judges In cases of infringement, claims may be adjudicating patent infringement, cases lodged with a civil court. Namely, the patent have no technical training. Therefore, the holder may lodge a claim demanding that the court is allowed to appoint independent alleged infringer cease the infringing activities experts to submit written or oral opinions and redress the consequences of when specialised knowledge is necessary. infringement, as well as surrender unlawfully In particular, an expert may be asked to obtained profits and compensate for damages. compare the invention covered by the patent Moreover, at the patent holder’s request, the with the infringing product or other infringing alleged infringer may also be required to activities of the defendant so that the court publish an appropriate statement in the press can estimate whether the acts of the and, if the infringement was wilful, to pay an alleged infringer fall within the scope of the adequate amount of money to a social patent protection. organisation enhancing inventive activity. Damages resulting from patent 3. Is it possible to cross-examine witnesses infringement may be claimed after the grant at trial? How far are proceedings based on of the patent. However, damages may be written evidence? Are there restrictions on collected from a date prior to the grant of the use of evidence from experts? the patent, provided that information In civil proceedings regarding patent concerning availability of the Polish infringement all and any evidence must be translation of the patent claims as filed has indicated and, if possible, produced by the been published in the Bulletin of the Polish party relying on the facts which have to be Patent Office (PPO). Such information (which proved. As a rule, the court does not take follows filing of the translation of the claims into consideration any evidence ex officio. In with the PPO) may be published only at the a lawsuit between business entities, the explicit request of the applicant and after the plaintiff is obliged to indicate all the relevant European publication of the application. It evidence in the statement of claim. If this is should be noted that although the not done, the right to submit additional publication of the above information in the evidence during the proceedings before the Bulletin of the PPO is voluntary, it has a court is generally lost. The plaintiff is

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allowed to submit further evidence during obliged to prove its legal interest as well as the course of the court proceedings only on the claimed non-patentability of the invention condition that the evidence is unlikely to in question. If it comes to an appeal, the have been known at the moment of bringing administrative courts examining a decision the action before the court, or where the of the Patent Office issued in an invalidity evidence relevant to the case occurred after proceeding will generally base their decision the action had started. on the evidence collected by the Patent Each party in a lawsuit is entitled to Office. But where there are doubts regarding submit written evidence, such as private or evidence essential to the case, the court official documents or written opinions of may examine additional evidence (only private experts (eg, experts who were not documents are permissible). appointed by the court). Opinions of private experts are regarded as documents not 5. To what extent is pre-trial discovery issued by official bodies. permitted? If it is permitted, how is The situation of an expert appointed by discovery conducted? the court is different. The choice of the Where both litigating parties (the patent expert depends first of all on the character holder and the alleged infringer) are business and complexity of the matter in hand. The entities, the patent holder is obliged to send appointed expert may be chosen from a cease and desist letter to the alleged among registered Polish patent attorneys or infringer before filing the statement of claim other highly qualified specialists in the with the court. A cease and desist letter (so- relevant field. The court is also entitled to called warning letter) is a final invitation to expertise from a research or scientific resolve the claim amicably through institute. In patent infringement trials, the settlement. A copy of the cease and desist expert should aim to explain the technical letter along with the alleged infringer’s reply aspects of the invention. should be attached to the statement of claim Cross-examination of witnesses is also lodged with the court. permitted. The warning letter shall, in particular, indicate the right of the patent holder to use 4. Are infringement and invalidity dealt with the invention within the territory of Poland, simultaneously? What level of proof is as well as the allegedly infringing activities. necessary to demonstrate one or the other? The warning letter is treated as evidence of Infringement and validity cases are dealt with the plaintiff’s goodwill to settle the matter in Poland by different authorities: outside court. If discovery of evidence is infringement is handled by common civil requested by the infringer to prove the courts, while invalidation is the province of holder’s claims, it should be indicated by the the Litigation Division of the Polish Patent patent holder before the trial, on pain of Office. The decisions of the Patent Office are charging the plaintiff with extra procedural subject to appeals to administrative courts. fees for the lack of goodwill to settle the Under some circumstances, the issues dispute amicably. regarding a patent’s validity may influence During the court proceedings the court the infringement proceedings. If the may summon any person to submit any defendant (alleged infringer) claims invalidity documents relevant to the proceedings which of the patent at issue, the court may are in that person’s possession, unless the suspend the infringement proceedings until document contains state secrets. If any party the invalidity case is resolved. refers to trade books, the court may require The level of proof necessary in the surrender of those books to the court. infringement cases results from the general The adaptation of Polish law to European rules of civil procedure, which means that a Directive 2004/48/EC as of 29th April 2004 party is generally entitled to request oral on the enforcement of intellectual property examination of witnesses, to appoint rights is expected to bring some new experts, to produce documents (private or discovery options to IP matters. official) and/or to demonstrate samples, if necessary. All and any evidence should 6. To what extent does any doctrine of prove the circumstances relevant to the equivalents apply in an infringement action? lodged demands. According to Polish patent law, particular The evidence allowable in invalidity emphasis should be placed on clear and proceedings is generally comparable to the unequivocal wording of patent claims. Such evidence in infringement proceedings. The strict interpretation of the patent claims is party demanding invalidation of a patent is not compatible with the concept of

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interpretation of patent exclusivity set out in authorities hear the two cases, starting the Protocol on interpretation of Article 69 of invalidation proceedings often causes the the European Patent Convention (EPC). suspension of the infringement proceedings Bearing in mind that the EPC is binding in until validity is decided. The plaintiff can Poland, it should be expected that the counter such delaying tactics by, for practice of the Polish Patent Office and the example, trying to convince the court that courts will be consistent with the practice the invalidation claim is inappropriate or that resulting from the EPC. it constitutes a misuse of law. Another way of delaying or even blocking 7. Are there certain types of patent right that an infringement case in the court is to may be granted by the EPO – biotech or anticipate the infringement claim by filing a computer software-related, for example – that claim requesting a finding that the alleged are more difficult to enforce than others? infringer is exploiting its own rights and Enforcement of software patents may be consequently is not infringing. If the difficult because the Polish Patent Office is supposed plaintiff does not file its claim in reluctant to grant protection to those patents time, the case charging infringement will be and is frequently inclined to invalidate them. unallowable by statute until the first case is As regards biotech patents, enforcement is resolved. One way to avoid such a situation usually more complicated because of the is to file a preliminary injunction or the specific nature of the subject matter. infringement claim as soon as possible (after sending a cease and desist letter first). 8. To what extent are courts willing to consider, or bound by, the opinions and 11. How available are preliminary decisions of other courts that have dealt injunctions and how do you get them? with similar cases? A patent holder is entitled to file a request As a rule, courts are not bound by the for a preliminary injunction before initiating opinions and decisions of other courts which court proceedings (before lodging a claim to have handed down decisions in similar the court), as well as simultaneously with cases. The two exceptions are the decisions those proceedings. If the request is filed of the Supreme Court and the Supreme before initiating the court proceedings, the Administrative Court. In practice, opinions court, upon issuing a decision to grant the and decisions of other courts are frequently preliminary injunction, will appoint a two- taken into consideration by courts when week deadline for the filing of the statement judging similar cases. Coherent and uniform of claim. court decisions guarantee certainty and If the plaintiff misses the deadline, the reliability of the law. court will reverse the preliminary injunction. In order to obtain a preliminary injunction, it 9. To what extent are courts willing to is necessary to prove the legal interest in consider the reasoning given by foreign requesting the preliminary injunction, justify courts that have handed down decisions in the grounds for filing the request and similar cases? indicate the way in which the injunction The Polish courts are generally not bound by should take place (eg, seizure of goods in the reasoning of foreign courts that have the infringer’s warehouse, ban on further tried similar cases. However, they may draw sale, etc). The patent holder has to prove its conclusions from foreign courts’ judgments patent rights with an official document and when solving similar legal problems that are should also prove that the exclusive rights not precisely regulated by Polish law. The have been infringed. individual character and particular provisions Preliminary injunctions should not aim to of foreign legal systems, as well as the satisfy the claims raised by the plaintiff, but background of a specific case, have to be in practice they often lead to a court order in taken into account before taking the foreign which the alleged infringer is requested to reasoning into consideration. stop its activities under the sanction of compulsory enforcement of the said order. 10. What options are open to a defendant An important consequence resulting from seeking to delay a case? How can a claiming a preliminary injunction is that if the plaintiff counter delaying tactics? plaintiff loses the lawsuit or decides to The basic way of delaying a court case is to withdraw the court action before the verdict, start litigation proceedings before the Polish the alleged infringer is entitled to demand Patent Office claiming invalidation of the compensation for the damages arising from patent in question. As two separate the preliminary injunction order.

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12. How long does it take to get a decision associated with infringement proceedings. at first instance? The potential costs depend on the complexity Patent infringement proceedings in Poland of the matter and the value of the object of can last from approximately three to five the litigation. The costs of representation, or years, depending on the complexity of the the costs connected with entering and case, the strategy undertaken by the parties handling the court proceedings, as well as and the number of cases at the court the costs of preparing the relevant pending examination. However, there is no documents, have to be taken into account. general rule and in some cases it may take As a rule, the losing party is burdened with longer to complete the proceedings. the costs of the court proceedings.

13. What avenues for appeal are open to the 15. Who can represent parties in court? Is defeated party in a first instance case? What specialist representation required? criteria are there for granting an appeal? How As a rule, the parties in patent infringement long does the appeal process take? cases may by represented in court by A decision of the court of first instance is professional representatives, ie, lawyers subject to an appeal to the court of second (attorneys or legal counsel) or by patent instance. The appeal should be filed with the attorneys. A legal entity may also be court that issued the initial judgment within represented by an employee. two weeks of the date of delivery of the reasoned court decision to the party. 16. What remedies are available for The court of second instance examines infringement and how are these typically all substantive and procedural issues, the applied? Are punitive damages available breach of which may have provided grounds and in what circumstances? for the appeal. It is worth emphasising that A patent holder or any other entitled person the court of appeal judges the case within (ie, an exclusive licensee entered onto the the limits of appeal and only nullity of the patent register) whose patent has been appealed decision is considered ex officio. infringed may demand cessation of the Therefore, broadening the claims or adding infringement, redress of its consequences new claims once the appeal has been filed and surrender of unlawfully obtained profits is not allowed. as well as compensation for damages. At the The court of second instance judges the patent holder’s request, the patent infringer cases on the basis of the evidence collected may also be required to publish an both in the first instance proceedings and in appropriate statement in the press and, if the appeal proceedings. However, the facts the infringement was wilful, to pay an and evidence which were available to the adequate amount of money to a social party during the first instance proceedings organisation supporting inventive activity. may not be taken into consideration in the The responsibility for compensation for appeal proceedings unless they are damages applies only where the infringement specifically relevant to the appeal. It may was wilful. Compensation for damages take a few years before a verdict in the includes the actual lost earnings as well as appeal proceedings is issued. any profits which the patent holder would Under some circumstances explicitly have achieved if the infringement had not provided for by law, a decision of the court occured. A readily applicable method of of second instance may be subject to a measuring the damages is licence analogy. cassation pleading to the Supreme Court. It Thus, lost profits can reside in the possible is an extraordinary legal remedy and may be lost royalties and/or in the decline in sales. It based only on breach of substantive law is worth emphasising that the plaintiff has to involving incorrect interpretation or incorrect prove the direct causal relationship between application of such law or on breach of the damage that it has suffered and the procedural provisions, which should have infringing activities. had relevant effect on the result of the case. The monetary remedies have more of a The appeal should be filed within a fixed compensatory than a punitive character. term of two months from the date of delivery Furthermore, anyone who appropriates of the appeal decision. someone else’s authorship, misleads another party regarding authorship of an 14. To take a case through to a first invention or otherwise infringes the rights of instance decision, what level of costs the creator to an inventive project shall be should a party to litigation expect to incur? liable to a fine, limitation of freedom or It is difficult to anticipate the range of costs imprisonment for a period of up to one year.

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A person committing such an act for material or personal profit shall be liable to imprisonment for a period of up to two years.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? Alternative means for resolution of patent disputes are available, but not commonly used in Poland (arbitration and mediation).

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is that it will do so? Poland has signed neither the London Protocol nor the European Patent Litigation Agreement yet.

19. Are there any features of the enforcement system in your jurisdcition that you would like to point out? The main feature of the patent enforcement proceeding is the so-called rule of evidence preclusion. Pursuant to this rule, it is necessary for the plaintiff to mention in the statement of claim all the statements relevant to the case and attach all evidence to support those statements, under the penalty of being precluded from serving the court with further evidentiary materials after the proceedings have started.

90 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in the Slovak Republic

Enforcing patents in the Slovak Republic

intellectual property law, including unfair By Andrea Povazanova, Cermák Horejs competition cases, as the courts of first Myslil a spol, Bratislava instance. Consequently, the regional courts in Bratislava, Banská Bystrica and Kosice are the courts of second instance. Due to 1. What options are open to a European the fact that patent cases are heard by patent holder, whose rights cover your Slovak courts rather rarely, the level of jurisdiction, when seeking to enforce its expertise of the judges is average. rights in your jurisdiction? According to Article 63 para 1 of the Slovak 3. Is it possible to cross-examine witnesses Act No 435/2001 Coll on Patents, at trial? How far are proceedings based on Supplementary Protection Certificates and written evidence? Are there restrictions on on Amendment of Some Acts as Amended the use of evidence from experts? (hereinafter referred to as the Patent Act), a Court proceedings in the Slovak Republic are European patent shall have the same effects based on written evidence supported by as a patent granted by the Slovak Patent witness statements. Witnesses may be Office. Thus, the owner of a European patent cross-examined by the other party at trial. has the exclusive right to use the invention, There are no restrictions concerning the use to authorise others to use the invention, to of evidence from experts. All evidence must assign the patent to others or to abandon be submitted by the relevant party in the the patent. In cases of unauthorised court proceedings before the issuing of the interference with the patent rights, the court decision. patent owner is entitled to claim that the infringement or jeopardising of its patent 4. Are infringement and invalidity dealt with right be prohibited and the consequences of simultaneously? What level of proof is infringement removed. The patent owner is necessary to demonstrate one or the other? also entitled to request that the party that Courts deal with any infringement of patent jeopardises or infringes its rights submit rights and its consequences. But only the data relating to the origin of the product and Slovak Patent Office decides on revocation the circumstances of its placement on the (invalidity) of a patent. It is very usual that in market; and to claim compensation for cases of infringement of patent rights the damage caused, including lost profits and defendant files a request for revocation of adequate satisfaction, which may be the patent and the court then suspends represented by pecuniary compensation. The infringement proceedings until the Patent court may issue a preliminary injunction Office decides on the revocation request. upon the request of the patent owner. The patent owner should submit in the infringement proceedings before the court (if 2. Does your jurisdiction have specialist appropriate) a sample of the product patent courts? If not, what level of manufactured by the patent owner and a expertise can a patent owner expect from sample of the product, which is manufactured the courts? by the infringing person, including the proof There are no special patent courts in the that both products are available in the Slovak Slovak Republic. However, according to market, ie, sale receipts. current legislation, three district courts – in In invalidation proceedings before the Bratislava, Banská Bystrica and Kosice – are Patent Office, the plaintiff has to prove that: entitled to decide cases concerning (a) requirements for granting of a patent have

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not been met; (b) the invention is not courts that have handed down decisions in disclosed and described in the patent so similar cases? clearly and so fully that it can be carried out It is possible to file decisions or reasoning by a person skilled in the art; (c) the subject given by foreign courts with Slovak courts. matter of the patent exceeds the specification However, these are not binding. Such foreign as filed; (d) the scope of protection following decisions or reasoning may inspire the from the patent is too broad; or (e) the owner Slovak judges in some cases, however. does not have the right to the patent. Therefore, the evidence in invalidation 10. What options are open to a defendant proceedings is rather specialising consisting seeking to delay a case? How can a of quoting a number of registered patents, plaintiff counter delaying tactics? books, dictionaries and prior art in general. In patent infringement actions a defendant may file a revocation request, which may 5. To what extent is pre-trial discovery substantially delay a case. If the court permitted? If it is permitted, how is decides to suspend the case until the Patent discovery conducted? Office issues a decision on the revocation According to the Slovak law, there is no pre- request, the plaintiff’s position is difficult. trial discovery. Evidence or documents are The defendant may also propose to the court discovered within an oral hearing. to ask the ECJ for a preliminary ruling if EU law is applicable in the matter. The plaintiff 6. To what extent does any doctrine of may challenge each request of the opposing equivalents apply in an infringement action? party and finally the court decides. Slovak courts have not yet applied a doctrine of equivalents in an infringement action based 11. How available are preliminary on patent rights. The doctrine of equivalents injunctions and how do you get them? has been applied in infringement actions It is possible to file with the court a request based on unfair competition provisions of the for preliminary injunction. The court has to Slovak Commercial Code. In such cases, decide in commercial matters within 30 days argument based on patent rights is often of the date of its filing. combined with unfair competition provisions. 12. How long does it take to get a decision 7. Are there certain types of patent right that at first instance? Is it possible to expedite may be granted by the EPO – biotech or this process? computer software-related, for example – that It takes approximately one to one and a half are more difficult to enforce than others? years to get a decision at first instance. Software-related, biotech and pharmaceutical There is no legal possibility of expediting patents are usually more difficult to enforce the process. than technical patents due to the difficulty concerning the comparison of the solution 13. What avenues for appeal are open to used by the defendant and the solution the defeated party in a first instance case? protected by the patent. This applies also to What criteria are there for granting an patented methods of manufacturing. appeal? How long does the appeal process take? 8. To what extent are courts willing to The defeated party may file an appeal consider, or bound by, the opinions and against the first instance’s decision within decisions of other courts that have dealt 15 days as of the day of its delivery. In with similar cases? patent infringement proceedings, the appeal According to the Slovak Constitution, judges should be filed with the regional court in are bound by the Constitution, constitutional Bratislava, Banská Bystrica or Kosice, acts, international treaties and by national according to the local competency. The legislation. After the accession of the Slovak defeated party may appeal the whole Republic to the European Union, European decision or only a part thereof. It is not law is applicable in the Slovak Republic as possible to appeal against the decision’s well. Decisions and opinions of other courts reasoning only. The defeated party has to are not binding, although they may be taken indicate against which decision the appeal is into account if the court has to decide the filed, the extent of the appeal, why the first same or similar matter. instance decision or the precedent proceedings were wrong and how the case 9. To what extent are courts willing to should be decided. The appeal process consider the reasoning given by foreign takes one and a half to two years.

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14. To take a case through to a first instance decision, what level of cost should a party to a litigation expect to incur? The costs of first instance proceedings depend on the complexity of the matter. It usually takes at least 20 hours of lawyers’ work to take a case through to a first instance decision. The level of cost increases if any expert opinion is drafted and submitted to the court. Court fees may be considerably high if extensive damages are requested.

15. Who can represent parties in court? The patent owner may defend its rights in person, but parties may be represented by any individual, attorney at law, notary public and, except for appeals, also by a patent attorney. Generally, there is no compulsory representation before the first and second instance courts, nevertheless a representation by an IP litigation specialist is recommended.

16. What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances? For a full discussion of this, see the answer to the first question. The remedy called “adequate satisfaction” (see answer to first question above) can be considered as punitive damages. It is intended to indemnify the aggrieved party for any harm that cannot be calculated as damages.

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Enforcing patents in Spain

3. Is it possible to cross-examine witnesses By Miguel Vidal-Quadras and at trial? How far are proceedings based on Oriol Ramon Sauri, Amat i Vidal-Quadras written evidence? Are there restrictions on Advocats the use of evidence from experts? Although it is not normal practice, Spanish procedural laws do allow witnesses, the 1. What options are open to a European parties or court-appointed experts to be patent holder, whose rights cover your cross-examined at the request of the parties jurisdiction, when seeking to enforce its or the judge, providing the latter deems it rights in your jurisdiction? appropriate. In the Kingdom of Spain, European patent Evidence submitted in patent holders may bring civil court action against infringement proceedings is initially based on any possible infringers of their rights. In the technical opinions provided by the exceptional circumstances, if a crime has parties’ expert advisers. These are classed actually been committed, criminal action may as court-recognised experts and must swear be brought. The administrative courts cannot on oath to perform their duties objectively be petitioned to revoke a patent, as the civil and impartially, taking into account courts are competent for all proceedings everything that might be beneficial or related to patents. The Spanish courts also prejudicial to either party. The technical hold exclusive jurisdiction to hear cases opinions usually include the documents related to patent rights granted for Spain. required to prove that an infringement has Action may either be brought in the court been committed, such as laboratory analysis with jurisdiction in the territory where the or voice, image or data recordings. Experts defendant is resident or in the competent may attach any exhibits or evidence to their court in the territory where the infringement reports that they consider necessary to had been committed. support their statements. Any relevant documents must be translated into Spanish. 2. Does your jurisdiction have specialist During the hearing, the parties, patent courts? If not, what level of witnesses and experts are examined and expertise can a patent owner expect from questioned. The judge may intervene when the courts? he/she considers it necessary. As the cross- Since September 2004, there have been examination is oral and takes place in front specific courts that specialise in certain of the judge, good preparation is important. commercial matters, including intellectual property rights and unfair competition. The 4. Are infringement and invalidity dealt with main courts where most of these kinds of simultaneously? What level of proof is cases are heard are in Barcelona and Madrid. necessary to demonstrate one or the other? They have increasingly specific knowledge of A common defence in infringement cases patents. There is no body of judicial technical tends to involve alleging that the patent is experts; neither are judges specialists from a invalid. This often also tends to be useful to technical point of view or supported by court show the judge where the invention stands in technical specialists. However, it is normal the state of the art, while also presenting the practice for them to agree to a request by the technical contribution made by it in order to parties in litigation for an independent expert present the defence against the infringement. to be appointed to issue an opinion on the Invalidity may be alleged either as an questions the case concerns. objection, in order to call for the claim to be

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dismissed due to the patent being invalid, or Supreme Court doctrine according to which else by means of bringing a counter-claim. If questions of validity or infringement were this is accepted by the court, the Spanish technical questions that could not be taken part of the patent will be declared invalid, and into account in an appeal for annulment by a the patent’s registration entry in the Spanish higher court (cassation). Patent and Trademark Office will be cancelled, In recent years, the doctrine of with the consequent effect for third parties. equivalents has been replacing the traditional approach taken by the Supreme 5. To what extent is pre-trial discovery Court, based on the essential nature of a permitted? If it is permitted, how is patent’s elements. This has given rise to the discovery conducted? possibility of disregarding the elements of There is a specific procedure in Spain to the claim considered secondary by the determine whether an infringement may have expert, generally the court-appointed expert. been committed called diligencias de comprobación de hechos, court inspection 7. Are there certain types of patent right that proceedings to verify a possible infringement may be granted by the EPO – biotech or in situ. This basically consists of the plaintiff computer software-related, for example – that being able to petition the court, when there are more difficult to enforce than others? are signs that an infringement has been There are no past cases from which committed for which it lacks proof, to appoint statistics can be produced. The Spanish one or more experts (normally one technical courts have not ruled on certain issues that specialist and one IT specialist) to assist the are currently hot topics in some European judge in the diligencias. The procedure is countries and the United States. carried out at the facilities of the potentially infringing party to find out whether the latter 8. To what extent are courts willing to has actually infringed a patent right. If so, the consider, or bound by, the opinions and necessary documents are drawn up and a decisions of other courts that have dealt copy is provided to the party that requested with similar cases? the procedure so that it can bring the The Spanish courts and parties in litigation appropriate patent infringement claim. are increasingly referring to judgments laid Provided there is enough evidence of the down by other European courts concerning infringement, the court may also be the infringement or invalidity of the same petitioned to allow the infringing party to be patent. Background such as this tends to be cross-examined prior to the initiation of an accepted as a relevant exhibit by the courts. infringement case about its suppliers, However, the parties must prove to the customers and distribution channels, as well Spanish court that the facts put before it are as the product quantities, sales and the the same as those on which the foreign product in the market. A petition may also be court based its decision. made for commercial, customs, accounting and financial documents to be provided in 9. To what extent are courts willing to order to prepare the case. This measure is consider the reasoning given by foreign carried out before the party concerned is courts that have handed down decisions in served notice. similar cases? The courts indirectly take into account the 6. To what extent does any doctrine of arguments put forward in foreign decisions in equivalents apply in an infringement action? their own judgments, albeit by taking them for The doctrine of equivalents is starting to be their own. This is quite normal practice, as routinely accepted by the courts. The courts the judgment handed down by the Spanish (such as the Provincial Court of Barcelona) court is the one that will be submitted to the now even quote landmark judgments such as appeal court. Therefore, just as in any other Catnic, Improver and Formstein. Some kind of proceedings, the parties must be judgments have also taken into account the aware of the need to allege and prove patent’s registration background in whether facts may be required to convince the determining the specific scope of a court, without relying on a foreign judgment as particular patent right. being sufficient to win the case in Spain. It is worth pointing out that the appeal courts currently tend to lean more towards 10. What options are open to a defendant technical issues and to assess judicially the seeking to delay a case? How can a statements made by experts. This did not plaintiff counter delaying tactics? use to be the case, which gave rise to a The terms stipulated by Spanish law for the

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parties’ actions are very strict. Along with and there are no special requirements. The their respective initial documents, the party against which the first instance parties must provide all the evidence they judgment is made merely needs to serve have available. The courts do not allow notice that it does not agree with the documents or experts’ opinions to be decision within a term of five days after the provided later on if they could have been ruling and must then submit the reason for submitted or announced previously. However, its appeal within a 20-day term granted by in the past, it was common practice to the court. The appeal court will review the employ delaying tactics based on procedural judgment and decide the case having rules. Now it is not quite so easy for the assessed the facts available to the court of defendant to interrupt court proceedings first instance and whether its judgment was through procedural strategies. Adjournment in accordance with the law. The appeal ruling of a hearing may be petitioned if, for usually takes one to two years, depending on example, witnesses or experts will be unable the court hearing the appeal and its to attend. However, this always runs the risk workload, and whether the court decides, that it could harm the party who requests it, exceptionally, to allow evidence that had if the judge decides to go ahead without been denied by the court of first instance. cross-examining someone. In exceptional circumstances, an appeal for annulment by a higher court (cassation) 11. How available are preliminary may be brought against the appeal court’s injunctions and how do you get them? decision. If the hearing of the appeal is Preliminary injunctions may be requested, accepted, the Supreme Court will rule on either before bringing the infringement claim whether to accept the appeal within a term or together with the claim. They must be of about two or three years and will lay down requested for urgent reasons and there must its judgment on the annulment within five be prima facie justification that an years. The Supreme Court is currently infringement has been committed and that endeavouring to shorten the time taken to there will be costly consequences for the lay down its judgments, so it is refusing to plaintiff if the injunction is not ordered. The hear many appeals for annulment. rightholder must also prove that it is making use of the patent or that serious and 14. To take a case through to a first effective preparations are being made for instance decision, what level of cost should that purpose. The parties are usually a party to a litigation expect to incur? summoned to a hearing. After hearing the Although the cost of court proceedings arguments the parties put forward, the judge depends on the complexity of the case, it will decide whether or not the injunction can be estimated at between Euros 30,000 should be granted. If it is granted, the and Euros 100,000 on average. defendant may request suspension of it by offering a counter-guarantee. 15. Who can represent parties in court? Is specialist representation required? 12. How long does it take to get a decision The parties are represented in legal at first instance? Is it possible to expedite proceedings in Spain by their lawyers and this process? formally by a court liaison officer (procurador Depending on the courts involved and their in Spanish). The latter is a legal professional workload, first instance proceedings normally who acts as an intermediary between the last between 12 and 18 months. The main court and the party’s lawyer. The lawyer does circumstances that may hold up a case are not need to have any specific technical bringing a claim against a party resident qualifications. However he/she is often a abroad, needing to provide technical expert specialist in patent law who is familiar with evidence, the complexity of certain evidence the subject matter. (such as carrying out trials, analyses and reproductions, or inspections in plants in 16. What remedies are available for Spain or abroad) or the number of experts or infringement and how are these typically witnesses and their nationality. applied? Are punitive damages available and in what circumstances? 13. What avenues for appeal are open to the Legal actions may be brought to cease and defeated party in a first instance case? What desist from the infringement, seize or destroy criteria are there for granting an appeal? How the infringing products or machinery and long does the appeal process take? moulds exclusively used for that purpose, An appeal is quite normal in patent cases prohibit the recommencing of the infringing

96 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Spain

actions and pay compensation for damages and losses. Damages and losses are determined by calculating the profits earned by the defendant as a result of the infringement, the profits that the plaintiff has not obtained or the cost of a possible licence. Compensation can also be included for the harm caused to the prestige of the invention if this actually took place and can be proven (eg, inadequate or defective presentation of the product in the market). Spanish law has recently also included the possibility of claiming compensation for moral damages. There is no reference in Spanish law to the possibility of claiming punitive damages in the same sense as US law. In addition, in Spain, as in other European countries, a claim may be brought against actions that have contributed to the infringement, provided those who contributed to the infringement were aware that the means delivered to the infringing party were to be used to manufacture the infringing products.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? This may happen only if the parties agree to go to arbitration or conciliation, which does not usually take place unless there is a special reason (eg, both parties’ needs for discretion and confidentiality regarding the proceedings) or in the case of agreements in which there is an arbitration clause accepted by both parties.

18. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? One should particularly take into account that until 7th October 1992, chemical and pharmaceutical products could not be patented in Spain. For patents filed before this date, which have new products as their subject matter, the holder may ask the courts to consider the benefit of inverting the burden of the proof, placing it on the defendant and presuming, unless otherwise proven, that the patented process is being used.

www.iam-magazine.com Patents in Europe 2006 97 Enforcing patents in Sweden Feature

Enforcing patents in Sweden

written evidence? Are there restrictions on By Helena Östblom, Zacco Sweden, the use of evidence from experts? Stockholm At the main hearing it is possible to cross- examine witnesses. It is also possible for the judge to ask the witnesses questions. Written 1. What options are open to a European evidence is allowed and is used to a great patent holder, whose rights cover your extent, but written statements of witnesses jurisdiction, when seeking to enforce its are in principle not allowed. There are no rights in your jurisdiction? restrictions on the use of written formal Sweden has been a member of the European reports from experts and it is common for Patent Convention since 1978, which means the experts also to be examined at the trial. that a significant proportion of the patents that are granted in the country today are European 4. Are infringement and invalidity dealt with patents. Designating Sweden through a simultaneously? What level of proof is European patent application results in a patent necessary to demonstrate one or the other? with the same legal status and scope of In some cases, one of the parties may wish protection as a national Swedish patent. to declare a patent invalid during the course Enforcing a European patent in Sweden is, of, for example, a trial for infringement. In from a litigation perspective, therefore, very this respect, it should be noted that similar to enforcing a national patent. There invalidity cannot be used as a counterclaim are three ways of enforcing a patent in in an infringement trial. If the defendant in Sweden: through litigation, arbitration or a an infringement trial wishes to claim settlement between the parties. invalidity of the patent, a separate writ of summons with a claim for cancellation of the 2. Does your jurisdiction have specialist patent has to be filed. The two cases are patent courts? If not, what level of thereafter in principle handled and decided expertise can a patent owner expect from jointly by the court. the courts? The level of proof to demonstrate that a The District Court of Stockholm (first patent should be declared null is rather high instance), The Svea Court of Appeal (second in Sweden and the court demands that the instance) and the Supreme Court (final plaintiff be able to prove beyond doubt, instance) are exclusive venues for patent through written evidence, that the invention proceedings. The courts have technical does not meet the conditions of patentability experts within the different technical fields (such as lack of novelty and/or lack of and these sit as judges in patent cases. A inventive step). Usually this written evidence high level of expertise can thus be expected - such as dictionaries, books and quotations from the courts. In some very specialised of prior art - is combined with witnesses and fields of technology, for example, advanced formal reports from experts. biotech, the courts’ level of expertise might be limited. In such cases, litigation is likely to 5. To what extent is pre-trial discovery be rather time consuming and will demand a permitted? If it is permitted, how is significant amount of work and expertise discovery conducted? from the parties and the attorneys. The holder of a patent may request that an infringement investigation be conducted in 3. Is it possible to cross-examine witnesses order to collect evidence of the infringement at trial? How far are proceedings based on and the extent of the infringement. A claim

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for an investigation is filed at the competent is difficult for a plaintiff to counter court and is carried out by the enforcement delaying tactics. agency. The plaintiff can be present at the investigation but is not allowed to take an 10. How available are preliminary active role – it can only respond to questions injunctions and how do you get them? from the enforcement officers. The plaintiff Preliminary injunctions are a relevant option has to provide security for the possible for many parties, not just for legal purposes damages that might be caused to the but also as an efficient way to persuade a alleged infringer due to the investigation. hesitant counterparty to negotiate. In short, the procedure for requesting a preliminary 6. To what extent does any doctrine of injunction in Sweden can be described as equivalents apply in an infringement action? follows. Requests for preliminary injunction Swedish courts may apply the doctrine of can be filed at the time of filing the writ of equivalents in patent cases. To what extent summons, as well as before the writ of and, in particular, how generously this summons or later on in the litigation. If the doctrine is used by the courts is difficult to plaintiff shows that it is probable that an say. There are very few patent cases in infringement is occurring and that one may Sweden each year and practice is not easy reasonably fear that the defendant will, by to foresee. In general terms, however, the continuing the infringement, reduce the value application of the doctrine of equivalents has of the exclusive right to the patent, the court in recent years become stricter. may impose a prohibition under penalty of fine for the period until the case has been 7. To what extent are courts willing to finally decided or another decision has been consider, or bound by, the opinions and made. Together with the request for a decisions of other courts that have dealt preliminary injunction, the plaintiff has to file with similar cases? security at the court for the damages that For international litigators, it may be may be caused to the defendant due to the worthwhile knowing that Swedish courts are injunction if the court later judges that no not bound by decisions of other Swedish infringement has occurred. Before a courts, except with regard to the Supreme prohibition is imposed, the defendant has the Court. This court sets precedents that all opportunity to comment on the request for lower courts in Sweden are bound to follow. the injunction, unless a delay would involve a risk for further damages to the plaintiff. 8. To what extent are courts willing to consider the reasoning given by foreign 11. How long does it take to get a decision courts that have handed down decisions in at first instance? Is it possible to expedite similar cases? this process? The only circumstances under which a Patent proceedings in Sweden are a Swedish court will be bound by a decision of a relatively long process. It takes about one to non-Swedish court are when a case has been three years to get a decision in the first referred from Sweden to the European Court instance. In principle, it is not possible to of Justice. However, judges in patent cases expedite the process (except through a may be prepared to look at the decisions of preliminary injunction). foreign courts that have tried similar matters and will also look at decisions from the EPO. 12. What avenues for appeal are open to the defeated party in a first instance case? What 9. What options are open to a defendant criteria are there for granting an appeal? How seeking to delay a case? How can a long does the appeal process take? plaintiff counter delaying tactics? The decision from the district court may be Parties in litigation may often, for strategic appealed to the Court of Appeal. The decision or economic reasons, seek to delay the from the Court of Appeal can be appealed to trial proceeding. There are a number of ways the Supreme Court only if a leave to appeal is to do this in Sweden; for example, requests granted. Such a leave to appeal is granted for extension of time to respond, late filing only if the case is considered to set of evidence, filing of extensive evidence and precedent or if it is evident that the lower arguments and unclear statements tend to court has made a judicial mistake. The appeal delay cases. These are all informal ways of process to the Court of Appeal usually takes delaying the proceedings. As in many between 12 and 24 months. If a leave to jurisdictions, there are no formal ways of appeal is granted the process will at least achieving a delay and consequently it take another 12 to 24 months.

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13. To take a case through to a first amended the Swedish Patents Act in order instance decision, what level of cost should to implement the London Agreement a party to litigation expect to incur? (compulsory translation of the claims into Cost-wise, litigation in Sweden is rather low Swedish, description must be available in by international comparison. The costs differ English). The date of deposit of the from case to case but one should be instrument of ratification, and thus of the prepared for costs of between SEK 1 million entry into force of the amendments to the and SEK 3 million depending on the case, Patents Act, will be decided by the evidence adduced, witnesses, experts etc. Government. Furthermore, in general, the losing party must pay the winning party’s legal costs.

14. Who can represent parties in court? Is specialist representation required? Compared to many other countries, specialist representation is not required in Swedish courts, although it is still recommended. Attorneys specialising in intellectual property and patent law usually handle court proceedings.

15. What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances? The remedies available are imprisonment or a fine (in criminal cases), injunction under penalty of fine and damages. Punitive damages are not available, only damages for use of the invention and further damages, for instance market damages or loss of profit. Damages are often quite low in Sweden. The damage for use is calculated as an estimated licence fee. The court may also order infringing goods to be destroyed.

16. Are there any realistic alternatives to litigation in cases relating to patent disputes? Mediation is an alternative to litigation. Usually, the parties meet and reach a settlement agreement shortly after litigation has been initiated. This causes no procedural problems, as court proceedings may be cancelled at any time if all involved parties concur. Indeed, the courts often encourage parties to reach a settlement out of court, even after litigation has been initiated. In cases where the parties for some reason do not want the publicity that court litigation might provoke, arbitration is an alternative. There are a number of individuals and organisations that specialise in arbitration; most significant is the Stockholm Chamber of Commerce.

17. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? If not, how likely is it that it will do so? On 18th May 2006, the Swedish Parliament approved the London Agreement and

100 Patents in Europe 2006 www.iam-magazine.com Feature Enforcing patents in Switzerland

Enforcing patents in Switzerland

at trial? How far are proceedings based on By Michael Stierwald, Braunpat Braun written evidence? Are there restrictions on Eder AG, Basel the use of evidence from experts? Cross-examination is not possible and proceedings are based on written evidence. 1. What options are open to a European It is up to the court to appoint and patent holder, whose rights cover your question the experts. However, the parties can jurisdiction, when seeking to enforce its also appoint their own experts. Such expert rights in your jurisdiction? opinions may be considered by the court. In case of an alleged infringement the patent holder may file court actions for the award of 4. Are infringement and invalidity dealt with an injunction and for the award of damages. simultaneously? What level of proof is Infringement suits can be filed only after the necessary to demonstrate one or the other? issuance of the patent; the suits can be Infringement and invalidity are dealt with at civil or criminal. Damages may be claimed the same court but not simultaneously. All from the time at which the defendant should allegations must be substantiated and the have become aware of the content of the level of proof is rather high, based on written patent application, but the action may be evidence or witnesses. introduced only after grant of the patent. Only when the patent infringement has been 5. To what extent is pre-trial discovery committed intentionally can criminal permitted? If it is permitted, how is proceedings be instituted. discovery conducted? A court may also order the confiscation, Pre-trial discovery is not permitted in sale or destruction of the infringing articles. Switzerland. Discovery can, in rare cases, be Declaratory judgment as to non-infringement conducted by the judge. or as to the validity of a particular patent may be requested by any interested party. 6. To what extent does any doctrine of The right of suing a given patent infringer is equivalents apply in an infringement action? granted to an exclusive licensee but not to In Switzerland the patent protection provided non-exclusive licensees. is broader than the literal scope of the claim, as demonstrated by case law. Thus a doctrine 2. Does your jurisdiction have specialist of equivalents applies to patent cases. patent courts? If not, what level of expertise can a patent owner expect from 7. Are there certain types of patent right that the courts? may be granted by the EPO – biotech or There are no special patent courts. computer software-related, for example – that Switzerland is a federal state and is divided are more difficult to enforce than others? into 26 cantons. In patent matters, the No. cantonal procedural laws are applicable and for each canton there is a court designated 8. To what extent are courts willing to which receives the civil actions. The level of consider, or bound by, the opinions and expertise is very heterogeneous. In decisions of other courts that have dealt principle, commercial courts have a higher with similar cases? level of expertise. Cantonal courts are independent and therefore not bound by the decisions of 3. Is it possible to cross-examine witnesses other courts. However, the decisions of other

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cantonal courts in similar cases may be years. Besides consequent adherence to considered, at the discretion of the court, to time limits, there is no possibility to expedite a high extent. this process.

9. To what extent are courts willing to 13. What avenues for appeal are open to the consider the reasoning given by foreign defeated party in a first instance case? What courts that have handed down decisions in criteria are there for granting an appeal? How similar cases? long does the appeal process take? Swiss courts are willing, at the discretion of The Swiss law provides only one possibility the court, to consider the reasoning given by for appeal. An appeal can be taken from the foreign courts to a high extent, depending on cantonal court to the Supreme Court of things such as the country from which a Switzerland regardless of the values in decision is cited and the seniority of the litigation. court that handed down the judgment. 14. To take a case through to a first 10. What options are open to a defendant instance decision, what level of cost should seeking to delay a case? How can a a party to a litigation expect to incur? plaintiff counter delaying tactics? Depending on the amount in dispute and the The prolongation of time limits is the only complexity of the case – for example, if it means to delay a case. A judge may suspend requires expert opinions – costs for a first- the procedure or defer the judgment where instance decision are about CHF 50,000 to the validity of a European patent has been CHF 1 million, or even more. contested and where one of the parties to the dispute gives evidence that opposition 15. Who can represent parties in court? Is may yet be filed with the European Patent specialist representation required? Office or that a final decision on the subject Parties in court may be represented only by of a pending opposition has not been taken. attorneys at law admitted to the bar of the corresponding canton. Patent attorneys 11. How available are preliminary provide the technical know-how. injunctions and how do you get them? Precautionary measures are provided by law 16. What remedies are available for in the event of infringement. Provisional infringement and how are these typically measures may be ordered to secure applied? Are punitive damages available evidence, to maintain the actual state of and in what circumstances? affairs and to enforce disputed rights Punitive damages are not available in provisionally. The party requesting such Switzerland (see also 1, above). Whoever measures at court will have to furnish wilfully or by negligence or imprudence equitable security. The petitioner must unlawfully utilises a patented invention shall provide prima facie evidence that the other be bound to pay damages to the injured party has committed or intends to commit party. The prerequisites for the liability for an act contrary to law and that it is damages are given by the Swiss Code of threatened by a loss which is not easily Obligations (damage, illegality, fault, causal reparable, and which can be avoided only by connexion). The injured party has to assess provisional measures. Before a beforehand the amount of damages or the precautionary measure is granted, the judge may be requested to award damages opposing party will be heard, but if there is at his discretion on the basis of the an imminent danger urgent measures may evidence. The judge may also authorise the be taken even before hearing the opposing successful party to publish the decision at party, provided that it is informed thereof the expense of the other party. In criminal immediately after such measures are taken. cases the infringer may be liable to If precautionary measures are granted, an imprisonment not exceeding one year or to a infringement action has to be brought within fine not exceeding CHF 100,000. a set term that shall not exceed 30 days. 17. Are there any realistic alternatives to 12. How long does it take to get a decision litigation in cases relating to patent disputes? at first instance? Is it possible to expedite Besides negotiation or arbitration, there are this process? no realistic alternatives to litigation. Depending on the case, the technical field, expert opinions etc, a decision at first 18. Has your jurisdiction signed up to either instance can be obtained within one to three the London Protocol or the European Patent

102 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in Switzerland

Litigation Agreement? If not, how likely is it that it will do so? Switzerland has signed up to the London Protocol and is a member of the sub-group of the Working Party on Litigation to produce a draft agreement.

19. Are there any other features of the enforcement system in your jurisdiction that you would like to point out? A revision of the Swiss Patent Act is on the way. As well as changes to the cantonal procedural law, the establishment of a federal patent court with specialised judges is also up for discussion.

www.iam-magazine.com Patents in Europe 2006 103 Enforcing patents in the UK Feature

Enforcing patents in the UK

issue of infringement and then use those to By Gary Moss, Taylor Wessing, London put pressure on the alleged infringer.

2. Does your jurisdiction have specialist 1. What options are open to a European patent courts? If not, what level of patent holder, whose rights cover your expertise can a patent owner expect from jurisdiction, when seeking to enforce its the courts? rights in your jurisdiction? The United Kingdom in fact comprises three The primary option is to commence separate jurisdictions namely: England and proceedings for infringement in the appropriate Wales; Scotland; and Northern Ireland. court, as to which see section 2 below. Of these, England and Wales is by far the Normally a patentee will seek by way of relief largest, covering approximately 53 million an injunction restraining further infringements, people out of a total population of 60 damages or an account of profits and delivery million. By far the largest proportion of up of any infringing materials. We discuss patent infringement suits are determined in these in greater detail in section 16. the courts of England and Wales. However, court proceedings are not the England and Wales has three specialist only route available and alternative forms of tribunals for the determination of patent dispute resolution are discussed in section disputes. The first is the Patents Court, 17 below. which is a division of the Chancery Division In addition, under Section 61(3) of the of the High Court. The High Court is the Patents Act 1977 the proprietor of a patent primary court of first instance in England and and an alleged infringer may, by agreement, Wales for dealing with significant disputes, refer to the Comptroller of Patents at the generally reckoned to be those over Patent Office the question of whether there £50,000. There are currently two main is infringement. Note that such reference patents judges, Mr Justice Pumfrey and Mr has to be by agreement of the parties. Justice Kitchin. Prior to their elevation to the Where such a reference is made then the bench, both were practitioners at the Comptroller may award only damages or an intellectual property bar and had significant account of profits – he does not have power experience in patent matters. In addition, to award an injunction or delivery up. Note there are a number of Chancery judges who also that under Section 61(5) if the are designated as able to hear patent cases Comptroller reaches a conclusion that the – in practice, they tend to deal with the less question referred would be more properly technically complex cases. determined by the court, he may decline to The second tribunal is the Patents deal with it and thereafter the court would County Court (PCC). The PCC was originally have jurisdiction. established in 1990 at a time when the Additionally, under a recently introduced county court was generally the court procedure a patent proprietor may request the designated for dealing with smaller claims. Comptroller to issue an opinion as to whether a The concept behind the PCC was to have a particular act constitutes an infringement of the more streamlined procedure enabling the patent. In these circumstances the consent of hearing of smaller, less complex disputes. It the alleged infringer is not required. However, was envisaged as a way of giving SMEs the any such opinions are not binding. They were ability to have their patent disputes generally thought useful to enable proprietors determined both speedily and relatively to obtain opinions from the Comptroller on the inexpensively. The PCC continues to fulfil

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that role although in practice, following the difficult to establish in the case of a witness Woolf Reforms of 1998, the streamlined whose attendance by way of video link or procedure is now available in all courts. written deposition could be compelled The primary judge of the PCC is His through an overseas court. Honour Judge Fysh. Before going to the There are no restrictions on the use of bench, Judge Fysh was an intellectual evidence from experts as such. However, in property practitioner of many years’ practice courts will endeavour to limit the standing. Where the workload of the court number of experts used by each party. requires additional judges, deputy judges are Usually the court will seek to limit each side recruited from among senior practitioners at to one expert per technical discipline, the patent bar. although cases involving complex areas of As indicated under section 1 above, it is technology can involve a number of also possible (by agreement) to have disciplines which can lead to each party infringement issues determined by the utilising more than one expert. Patent Office, the members of which will be As regards experts generally, it should specialists (from both a patent and technical be noted that the courts have stressed that standpoint). the function of such witnesses is to assist In Scotland, patent actions will normally be the court and not to act as an advocate for determined by the Court of Session. Because the case of the party from whom they have of the relatively few number of patent cases received instructions. This rule is applied which are heard, there is no specialist very strictly and the court will take a dim jurisdiction in Scotland. We are not aware of view of an expert who it believes is simply there having been any patent cases before the putting forward the best case possible for courts of Northern Ireland in recent times. his or her instructing party.

3. Is it possible to cross-examine witnesses 4. Are infringement and invalidity dealt with at trial? How far are proceedings based on simultaneously? What level of proof is written evidence? Are there restrictions on necessary to demonstrate one or the other? the use of evidence from experts? In the vast majority of cases infringement and In the majority of cases in the UK oral validity are dealt with by the same court at testimony by witnesses (both lay and expert) the same time. All of the jurisdictions remains the norm. However, over the past 15 mentioned under section 2 above have years or so, in an effort to streamline the jurisdiction to hear both infringement and process, the English courts have tended to validity issues. Under UK law it is not possible dispense with oral testimony in chief. to “infringe” an invalid patent and therefore Instead, witness statements and expert the invalidity of a patent is a complete reports are exchanged by the parties in defence to a charge of infringement. written form some time in advance of the trial In all cases the level of proof required is (in most major cases there will be two rounds the normal standard, namely balance of of evidence, in chief and in reply). The probabilities. Note that in the United Kingdom witnesses will then confirm the truthfulness there is no presumption of validity of a granted of those written statements under oath at the patent requiring a higher level of proof to trial. They are then tendered for cross- establish invalidity, as is the case in the examination by the opposing party. United States. Moreover, the fact that a Patent The ability to challenge forensically a Office Examiner may have considered a piece witness’s evidence by means of cross- of prior art prior to granting the patent will be examination is still regarded as a of no evidential value whatsoever if that prior fundamental aspect of the British legal art is raised again in any invalidity suit. system. A party will not be allowed to adduce evidence from a witness who has not 5. To what extent is pre-trial discovery been tendered for cross-examination unless permitted? If it is permitted, how is that party can establish that it does not discovery conducted? have the ability to require the witness to Pre-trial discovery is a key feature of the attend the court or to be cross-examined in United Kingdom legal system. However, in an some other way, eg via a video link. This effort to reduce the costs of litigation over would require the party wishing to rely on the the past few years its general scope has written evidence to show that the witness is been reduced to a significant extent. This has too ill to attend, or has died, or cannot be now been further restricted in patent cases. compelled, eg because they are not within Prior to the changes coming about as a the jurisdiction. Even the latter may be result of the civil justice reforms at the

www.iam-magazine.com Patents in Europe 2006 105 Enforcing patents in the UK

beginning of this decade, the UK rules on In addition to the above, it is open to a discovery obliged each party to disclose any party to seek disclosure over and above document in its possession, custody or standard discovery. In deciding whether or control which was relevant to the matters in not to order a specific disclosure order, the issue or which might lead to a chain of court takes into account all the enquiry which was relevant to the matter in circumstances of the case and in particular issue. This made documentary discovery the Overriding Objective of the Rules of Civil quite wide ranging, although it was never as Procedure which requires the court to deal wide ranging as US discovery. with cases proportionately, expeditiously and Under the new procedure a party must fairly. In practice, this places an obligation now provide “standard disclosure”. Standard on the party seeking specific disclosure to disclosure requires a party to disclose only: establish to the satisfaction of the court that • The documents on which it relies. the standard disclosure is inadequate and • The documents which: that the additional disclosure sought is 1. adversely affect its own case; necessary for the just disposal of the case. 2. adversely affect another party’s case; or 6. To what extent does any doctrine of 3. support another party’s case. equivalents apply in an infringement action? • Documents which it is required to This is an extremely complex issue. In Kirin- disclose by a relevant practice direction. Amgen Inc v Transkaryotic Therapies Inc [2004] UKHL 46, the House of Lords ruled It should be noted that the above is that under United Kingdom law there is no considerably more limited than the previous doctrine of equivalents. Rather the patent obligations. claims are to be given a purposive These obligations have been further construction having regard to the purpose of limited in the case of patents in the following the patentee as would be determined on manner: reading the specification as a whole by the • Where a defendant has produced a person skilled in the art. The claims should product description it is not obliged to not be given a strict literal interpretation; at provide documents relating to the issue the same time it is the claims which of infringement. determine the monopoly and they should not • In the case of validity, neither party is be regarded merely as a guideline. obliged to disclose any documents falling For a more detailed explanation as to outside a period beginning two years how patent claims are to be construed before the priority date of the patent in please see the judgment of Lord Justice suit and ending two years after the priority Jacob in Rockwater v Technip France SA & date. Technip Offshore UK Limited [2004] RPC 46 • In relation to allegations of commercial (which was generally cited with approval in success, instead of providing documentary Kirin-Amgen) and in Mayne Pharma v discovery the party relying on such Pharmacia Italia SPA [2005] EWCA Civ 137 allegations must serve a schedule setting (which was given after the decision in Kirin- out the details of the alleged commercial Amgen, but took into account the comments success covering such issues as the of the House of Lords). product in question, the level of sales, the period of sales etc. 7. Are there certain types of patent right that may be granted by the EPO – biotech or The disclosure process imposes computer software-related, for example – that significant obligations on the parties’ are more difficult to enforce than others? lawyers. As officers of the court they have In general the answer to this question is no. an overriding duty to ensure that the court However, it should be noted that there has rules are complied with by the party for been very limited judicial pronouncement in whom they are acting. That duty outweighs the UK regarding computer software-related their duties to their client. This includes inventions and the degree to which these making searching enquiries to ascertain that may be patentable. There is still uncertainty all relevant documents required to be as to how readily these may be enforced. disclosed have been disclosed. It also imposes obligations to ensure that items 8. To what extent are courts willing to such as product descriptions fully and consider, or bound by, the opinions and accurately describe the product in question decisions of other courts that have dealt and are not defective to any material degree. with similar cases?

106 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in the UK

The United Kingdom courts operate on a United Kingdom court is that any perceived basis of precedent in which previous prejudice incurred by proceeding with the UK decisions will be binding upon them. This action in the meantime, which usually comes rule relates particularly to decisions given by down to a question of wasted expense, can the higher courts (Court of Appeal or House be dealt with by appropriate orders in costs. of Lords). Where there are prior decisions of Circumstances which may justify a stay are: courts on the same level, the later court • Where the defendant is an individual or might be willing to depart from a previous small entity and can show that having to decision if it is satisfied there are new facts spend money fighting the UK action while or new arguments which were not considered an opposition is pending will cause it by that prior tribunal. significant prejudice. • Where the patentee has delayed until 9. To what extent are courts willing to well into the opposition period before consider the reasoning given by foreign commencing proceedings despite having courts that have handed down decisions in known about the alleged infringement. similar cases? These will be of significant persuasive effect. 11. How available are preliminary The United Kingdom judges have been at the injunctions and how do you get them? forefront of attempts to harmonise patent Theoretically, preliminary injunctions are law throughout Europe. This necessarily available where the claimant can show that it involves giving appropriate consideration and will suffer irreparable harm and damage if respect to prior decisions of judges in other the defendant’s activities are allowed to jurisdictions where they have been continue pending the trial. In practice, they considering essentially the same patent and have become relatively rare in patent the same alleged infringement while at the actions, save in cases involving the launch same time applying the same law. of generic pharmaceuticals. This is because of the timescales for UK patent actions (see 10. What options are open to a defendant section 12 below) and the possibility for seeking to delay a case? How can a even further expedition. In practice, in most plaintiff counter delaying tactics? instances if a claimant seeks a preliminary Generally the abilities for a party to delay a injunction they will be met by the response case are very limited. In the recent past the from the court that, rather than arguing over Patents Court has made significant strides in the preliminary injunction, it would be more ensuring that patent cases are disposed of sensible to have a full trial of all the issues reasonably expeditiously. The court is very in three to four months. reluctant to allow a party to delay the disposal of the case once commenced 12. How long does it take to get a decision unless there are very good reasons for doing at first instance? Is it possible to expedite so. It will also not necessarily rubber stamp this process? an agreement between the parties to delay The Patents Court has made great strides the disposal of the case unless it is satisfied over the past few years in ensuring that that there are good reasons for doing so. patent actions are disposed of expeditiously. One tactic which has sometimes been The normal timescales for even a reasonably employed is to seek a stay of the litigation complex patent action are in the region of proceedings pending the outcome of nine to 12 months from commencement of oppositions in the European Patent Office the action through to trial. Decisions can be (EPO). Although the courts have been at expected within four to six weeks thereafter. pains to stress that there is no hard and Furthermore, the court has been fast rule and that each case turns on its own amenable to expedition in appropriate cases facts, in practice it can be difficult to secure where, for example, one of the parties can such a stay. This is because of the length of demonstrate that it has a real need to have time which oppositions take including a definitive ruling within a relatively short appeals – currently the estimate is at least space of time. A timescale of four to six five years. The court is unwilling to allow a months from commencement of the action to patentee’s rights to be frozen for that length trial is not uncommon. of time and will be similarly reluctant to require a defendant to have hanging over it 13. What avenues for appeal are open to the an allegation of infringement for that length defeated party in a first instance case? What of time. Where the parties comprise sizeable criteria are there for granting an appeal? How commercial organisations, the view of the long does the appeal process take?

www.iam-magazine.com Patents in Europe 2006 107 Enforcing patents in the UK

Appeals from both the Patents Court and the One of the drawbacks of the United Kingdom Patent County Court are to the Court of system is that it is relatively expensive Appeal. Appeals from decisions of the compared with other European systems. Patents Office go first to the Patents Court Even in the most relatively simple patent and then on to the Court of Appeal – this is cases, a litigant can expect to pay between one of the drawbacks of commencing any £150,000 and £250,000 if the case goes infringement litigation in the Patent Office in all the way through to trial. For a case of that one is adding an extra level of appeal. medium complexity those costs would rise to Appeals from first instance to the Court of £500,000 to £750,000. Very complex Appeal may now be made only with patent trials involving significant permission. A litigant must seek the technologies would rise into the low millions. permission of the first instance court to One point which should be noted is that appeal. If that is refused then one may apply the United Kingdom has the rule that for permission to the Court of Appeal. If the generally the loser pays the successful Court of Appeal, without a hearing, refuses party’s costs. The basis of award means that permission to appeal then a request may be the actual recovery is usually somewhere made that the decision be reconsidered at a between 60% and 80% of the actual costs hearing. But if leave is refused at the hearing incurred. However, over the past few years no further appeal is possible. In theory, there has grown up a market in after-the- appeals can be raised on a point of law or event insurance which enables litigants to against a finding of fact, but in practice one insure against that potential liability. would struggle to bring an appeal on a finding It should also be noted that United of fact alone as the Court of Appeal is Kingdom lawyers are now able to take on reluctant to overturn a first instance court litigation on a no win, no fee basis. However decision on fact. This is because the Court of the amount of uplift which they are permitted Appeal, unlike the court of first instance, does to charge is significantly restricted not have the opportunity to hear the witnesses (depending on the perceived likelihood of in person. However, often litigants try to dress success) and cannot in any event be more up factual issues as points of law by saying than 100% of the costs which would have that the judge should not have found for the been incurred on a normal charging basis. other party on the preponderance of facts. One interesting feature is that 15. Who can represent parties in court? Is obviousness/inventive step is a mixed specialist representation required? question of law and fact of which only the Both solicitors and chartered patent factual element should be determined by the attorneys can represent parties in the first instance judge. The Court of Appeal Patents County Court and also can act as has on several occasions cautioned against the advocate at the trial. Barristers can also litigants appealing against decisions on be instructed, by either the chartered patent factual issues alone purely in the hope that attorney or the solicitor, to appear at a another tribunal may take another view of Patents County Court trial where specialist those facts. It remains to be seen whether cross-examination and advocacy are the first instance court will utilise that in required. In the Patents Court (part of the order to cut down a party’s ability to appeal High Court) a chartered patent attorney with on those issues. additional advocacy qualifications can There may be a further level of appeal to conduct litigation, but will have a right of the House of Lords. Again that has to be audience (ie, be allowed to act as advocate) with the permission of the Court of Appeal or only for cases on appeal from the Patent the consent of the House of Lords if Office. In all other cases in the Patents permission is refused by the Court of Court advocacy and cross-examination may Appeal. In practice, the House of Lords will be conducted only by a barrister or a solicitor hear only appeals raising a point of law of with a right of audience. public importance. Appeals from the first instance to the 16. What remedies are available for Court of Appeal take approximately 12 infringement and how are these typically months. Appeals to the House of Lords will applied? Are punitive damages available take a further 12 months. and in what circumstances? The normal remedies are: 14. To take a case through to a first • Injunction to restrain further infringements. instance decision, what level of cost should • Damages or an account of profits (these a party to a litigation expect to incur? are alternatives and the claimant has to

108 Patents in Europe 2006 www.iam-magazine.com Enforcing patents in the UK

elect which of these remedies he wishes to adopt). • Delivery up of any infringing materials. • Costs expended in pursuing the litigation.

Damages can be based on the amount of profits lost by the patentee by reason of the defendant’s infringing acts. In order to establish an entitlement to lost profits the claimant has to show that on the balance of probabilities it would have made the infringing sales had the defendant not done so. Where the claimant cannot show this, damages will be based on a national royalty based on the rate a willing licensor would agree with a willing licensee. A defendant may avoid liability for damages or an account of profits if it can show that at the date of the agreement it was not aware and had no reasonable grounds for supposing that the patent existed. Given the public nature of the Patent Office register it is difficult to succeed in such a defence. Punitive damages are available only in exceptionally rare circumstances in the UK.

17. Are there any realistic alternatives to litigation in cases relating to patent disputes? It is open to the parties to adopt alternative forms of dispute resolution, notably arbitration. Arbitrations are not common in the field of intellectual property infringement, mainly because there is no pre-existing agreement between the parties under which the arbitration can be initiated. Nevertheless it is open to the parties to agree to arbitrate once the dispute has arisen.

18. Has your jurisdiction signed up to either the London Protocol or the European Patent Litigation Agreement? The UK has ratified the London Protocol but the European Patent Litigation Agreement is still being debated.

www.iam-magazine.com Patents in Europe 2006 109 Directory

ALTIUS Law Firm ALTIUS Law Firm Avenue du Port 86C B.414 continued 1000 Brussels, Belgium Tel: +32 2 426 14 14 Fax: +32 2 426 20 30

www.altius.com

Paul Maeyaert Christophe Ronse Partner Partner [email protected] [email protected]

Paul Maeyaert heads the IP practice of Christophe Ronse is a partner with ALTIUS, ALTIUS. His daily practice focuses on in charge of the litigation practice. He trademark and patent litigation, as well as specialises in patent litigation, particularly in media & entertainment law. During recent the life sciences sector, and has litigated years he has obtained particular experience various important pharmaceutical patent in assisting clients in cross-border litigation cases before the Belgian courts. disputes. He has been a member of the Brussels Bar He has been a member of the Brussels since 1988 and obtained a law degree cum Bar since 1984 and obtained a law degree laude from the Catholic University of Leuven magna cum laude at the Free University of and a master of laws degree from the Brussels and a master’s in European law at University of Illinois at Urbana-Champaign. the College of Europe. He is active in various professional He is a frequent speaker at IP seminars associations such as AIPPI, LES and EPLaw, and regularly publishes articles on IP topics and presently serves as a board member of of interest. He is also active in various the Belgian section of AIPPI. He occasionally professional associations, such as AIPPI, speaks and publishes on various legal INTA, LIDC, Marques and BMM, and is a subjects. member of the editorial board of IRDI, a leading Belgian IP journal.

110 Patents in Europe 2006 www.iam-magazine.com A&L Goodbody A&L Goodbody Amat i Vidal-Quadras Advocats International Financial Services Centre continued Pau Casals, 14, 5è North Wall Quay, 08021 Barcelona, Spain Dublin 1, Ireland Tel: +34 93 321 10 53 Tel: +353 1 649 2234 Fax: +34 93 419 31 47 Fax: +353 1 649 2649

www.algoodbody.ie www.avqadvocats.com

John Whelan Ciara Cullen Miguel Vidal-Quadras Trías de Bes Partner Solicitor Partner [email protected] [email protected] [email protected]

John Whelan is Head of IP & Technology at Ciara Cullen is a member of the IP & Mr Vidal-Quadras is head of the firm’s A&L Goodbody. John’s practice areas include Technology Group at A&L Goodbody. Ciara’s industrial and intellectual property and both the contentious and non-contentious areas of specialisation include trademarks, pharmaceutical law department. A doctor of aspects of intellectual property, information patents, designs and copyright law. law, he graduated in 1993 from Universidad de technology, telecoms and life sciences. Ciara has experience in a wide range of Barcelona. He has been a member of Before joining A&L Goodbody as a intellectual property matters dealing with all Barcelona Bar Association since 1997. He is a partner in 2003, John previously worked with forms of intellectual property rights covering member of the AIPPI and LES. Before joining a leading international law firm in London a range of sectors and technologies. Her Amat i Vidal-Quadras he was a lawyer at and Hong Kong. His return to Ireland contentious experience includes a number of Bufete Roig Aran (1995-1997), Garrigues- coincided with the subsequent establishment patent, trademark and copyright cases Andersen (2000-2002) and Torrents & of the Irish Commercial Court in January before the Irish High Court and Commercial Advocats (1997-2000 and 2002-2003). He is 2004 and he has been involved in most of Court. Her non-contentious experience the author of various publications on the significant IP cases before that court includes advising on licences, sponsorship intellectual property and the coordinator of the since its inception, including a number of agreements, distribution and franchise protection of technology module at ESADE, complex and high-profile patent proceedings. arrangements and other intellectual property- Universitat Ramon Llull, as well as being a John has spoken at conferences on IP focused transactions. lecturer at the Patent Centre, Universidad de topics in a number of jurisdictions and is Ciara worked in the financial sector for a Barcelona, where he also teaches various recommended as a lawyer of choice for IP period before qualifying as a solicitor with other courses on industrial property. and IT matters by a number of international A&L Goodbody. She holds a law degree (LLB) His main areas of expertise are legal publications. John was educated at from Trinity College Dublin. litigation, intellectual property, competition, University College Dublin and holds a law advertising, technology transfer and degree (BCL) and a masters in commercial pharmaceutical law. He speaks Spanish, law (LLM). Catalan, English and French.

www.iam-magazine.com Patents in Europe 2006 111 Amat i Vidal-Quadras Advocats Árnason Faktor Árnason Faktor continued Gudridarstig 2-4, IS 113 continued Reykjavik, Iceland Tel: +354 540 0200 Fax: +354 540 0201

www.arnasonfaktor.is

Oriol Ramon Sauri Gunnar Örn Harðarson Ásdís Magnúsdóttir Associate Founding partner and managing director Partner [email protected]; [email protected] [email protected]

Oriol Ramon Sauri graduated in law in 2002 Gunnar has a BSc in mechanical engineering Ásdís has over seven years’ experience in IP from Universitat Autònoma de Barcelona and and is a European patent attorney. After 20 matters in private practice as well as at the also has a master’s degree in industrial and years in the IP field, Gunnar has extensive Icelandic PTO. She graduated from the Law intellectual property and competition law industry and private practice experience, and Faculty of the University of Iceland and her from ESADE, Universitat Ramon Llull. He has has served on various government IP final thesis was in the field of patents: “The ben a member of the Barcelona Bar advisory committees. He focuses on drafting legal protection of biotechnology inventions.” Association since 2004 and joined Amat i and prosecuting mechanical patent She completed an LLM degree in law, Vidal-Quadras in the same year. Before applications, opinion work, appeals and science & technology at Stanford University joining the firm he was a lawyer at H & C litigation support. Gunnar was secretary of in California in May 2005. Advocats i Consultors (2001-2003). the Association of Icelandic Patent Agents Ásdís also works on trademark matters, His areas of expertise are intellectual from 2000 to 2005, and is a council and such as the prosecution of trademark property, competition and advertising law. He board member of the EPI. registrations, as well as consulting on other speaks Spanish, Catalan and English. intellectual property matters. She is a member of the INTA.

112 Patents in Europe 2006 www.iam-magazine.com Borenius & Kemppinen Ltd Borenius & Kemppinen Ltd Braunpat Braun Eder AG Yrjönkatu 13 A, continued Reussstrasse 22 00120 Helsinki, Finland Postfach Tel: +358 9 615 333 CH-4015 Basel, Switzerland Fax: +358 9 615 33499 Tel: +41 61 307 90 30 Fax: +41 61 307 90 39

www.borenius.com www.braunpat.ch

Ben Rapinoja Aura Soininen, Michael Stierwald Partner Associate Patent specialist [email protected] [email protected] [email protected]

Ben Rapinoja is a partner in the IP & Aura Soininen is an associate lawyer at Michael Stierwald prosecutes patent and Technology practice group of Borenius & Borenius & Kemppinen Ltd. She advises on design grant procedures in Switzerland, Kemppinen Ltd. His practice is focused on IP-related matters with a specific focus on Europe and internationally. He specialises in commercial utilisation of intellectual and patent law, IPR strategies and questions biotech and chemistry inventions. In industrial property rights (especially patents related to the pharmaceutical field and particular, he devotes his attention to IP and trademarks), technology-driven biotechnology. Aura received her master of valuation and strategies in IP. transactions and the legal aspects of life laws degree in 2002. She also studied He holds a PhD in molecular biology from sciences and pharmaceuticals. Ben has biochemistry at the University of Oulu and the University of Basel and a master’s particular expertise in the fields of patent later in the University of Helsinki, and is degree in advanced studies in IP from the and IP litigation. currently in the process of completing her Swiss Federal Institute of Technology, Zurich Prior to joining Borenius & Kemppinen, doctoral studies (econ) on patents at the (ETHZ). As well as his native German, he Ben worked for the Ministry of Trade and Lappeenranta University of Technology, speaks fluent English and French. Industry as legal adviser and governmental Department of Business Administration. Prior secretary responsible for legal affairs relating to joining B&K, Aura worked for several years to intellectual property rights, especially as a researcher at the Helsinki Institute for patents, trademarks and design rights. He Information Technology (HIIT). During her also represented the Finnish government in employment at HIIT she spent a year and a various expert groups of the EU institutions, half at the UC Berkeley, US, where she was a the European Patent Organisation and visiting scholar at the School of Information international organisations in the field of Management and Systems. intellectual property (WIPO, WTO).

www.iam-magazine.com Patents in Europe 2006 113 Brevalex Cermák Horejs Myslil a spol, Cermák Horejs Myslil a spol, 3 rue du Docteur Lancereaux Národní 32, 110 00 Praha 1, continued 75008 Paris, France Czech Republic Tel: +33 1 53 83 94 00 Tel: +420 296 167 111 Fax: +33 1 45 63 83 33 Fax: +420 224 946 724

www.brevalex.com www.cermakhorejsmyslil.cz

Pascal Moutard Lukas Lorenc Andrea Povazanova Partner Attorney at law Attorney at law [email protected] [email protected] [email protected]

Pascal Moutard is a French and European Lukas Lorenc studied at the Faculty of Law Andrea Povazanová completed her studies at patent and trademark attorney, and is also at Charles University in Prague, gaining a the Faculty of Law of Komensky University in joint manager of Brevalex, an IP law firm with master’s degree in 2000. He joined Cermák Bratislava in 1998. She has participated in headquarters in Paris and offices in Horejs Myslil a spol as a legal trainee in expert traineeships with the Constitutional Grenoble and Tolouse. He graduated as an 2000, and was admitted to the Bar in 2002. Court in Koice (1997), the Council of Europe in engineer from the Ecole Nationale His main practice areas are Czech Strasbourg (1999), the International Institute Supérieure des Mines (Saint Etienne), and intellectual property, commercial law and for Public Administration in Paris (1999), and also has a doctorate in physics and a litigation. He also has experience in advising the European Court of Justice in Luxembourg master’s degree in law (industrial property) on unfair competition issues and on EU (2002 – 2003). Between 1998 and 2002, she from the University of Lille. He is a graduate regulations and EU law. He speaks Czech, was a legal adviser at the Ministry of Justice of the European patent litigation course of English and German, and also has a working of the Slovak Republic. Since 2003. she has the University of Strasbourg. knowledge of Russian. been a legal assistant with Cermak Horejs Mr Moutard was a patent examiner at the Myslil a spol. She specialises mainly in European Patent Office for six years and has industrial property law and the civil law. She 14 years’ experience as a patent engineer speaks Czech, Slovak, English and French. and a patent attorney. He now works for both SMEs and large French, Japanese and US companies, with a focus on physics, electronics, computer-related inventions, semiconductors, nanotechnologies, microelectronics and data processing. He has wide experience in prosecuting opposition cases before the EPO, but also before foreign offices (mainly US and Japanese, in cooperation with a wide range of associate firms). He has also acquired wide experience in IP litigation cases, mainly in France but also in different European countries in cooperation with local attorneys. Mr Moutard is a member of the IEAM (Institute for Expertise, Arbitration and Mediation - Paris) for IP matters and an expert of the French committee of the International Chamber of Commerce.

114 Patents in Europe 2006 www.iam-magazine.com DLA Piper Weiss-Tessbach Grünecker Kinkeldey Stockmair & Intellectual Asset Management magazine Rotenturmstrasse 13 Schwanhäusser Globe White Page Ltd, New Hibernia House, A-1010, Vienna, Austria Maximilianstrasse 58, Winchester Walk, London SE1 9AG, UK Tel: +43 1 531 78 0 80538 Munich, Germany Tel: +44 20 7234 0606 Fax: +43 1 533 52 52 Tel: + 49 89 21 23 50 Fax: +44 20 7234 0808 Fax: + 49 89 22 02 87

www.dlapiper.com www.grunecker.de www.iam-magazine.com

Alexander Cizek Dr Bernd Allekotte Joff Wild Partner Partner Editor [email protected] [email protected] [email protected]

Alexander Cizek was admitted to the New Dr Bernd Allekotte is an attorney at law at Joff Wild is a journalist who has specialised York bar in 1996 and to the Austrian bar in the Munich office of Grünecker Kinkeldey in covering IP since 1992. He has been 2000. He has been a partner with DLA Piper Stockmair & Schwanhäusser. His practice editor of a number of IP publications, Weiss-Tessbach since 2001; he heads the IP focuses on litigation, in particular patent, including Copyright World, Patent World and team of DLA Piper Weiss-Tessbach’s Vienna trademark and unfair competition cases. He Managing Intellectual Property. He has also office. He is also responsible for the IP also advises his clients on related licensing written on IP for a number of other practice in the firm’s CEE offices. matters, with particular emphasis on publications including the Times, the Alexander Cizek specialises in all areas German and EU antitrust concerns. He has Financial Times and the American Lawyer. of intellectual property law including patents, focused on intellectual property law since he From 1998 to 2000 he was publisher of all trademarks, designs, copyrights and unfair first started practising with a New York law intellectual property products at Euromoney competition practices. He advises both firm in 1996. He is admitted to the Bars of Institutional Investor. He has been editor of national and international clients on IP- New York and Germany. IAM since it launched in July 2003. related issues and has represented them in Dr Allekotte’s technical experience licensing and know-how transfer encompasses mechanical and electrical negotiations. He has substantial litigation technologies, chemistry/pharmaceuticals, experience both in court and before the biotechnology and telecommunications. He is Austrian Patent and Trademark Office. His permanently engaged in a number of domestic and foreign patent clients mostly litigations involving patent infringement stem from the chemical and mechanical actions in various district courts and courts engineering field but also include other of appeal in Germany. He continuously deals industries. Alexander Cizek also advises and with aspects of international patent litigation, represents clients on general commercial in that he works out strategies and legal issues and in transport insurance and represents clients to enforce patent shipment law cases. portfolios in a number of jurisdictions, as well as advising on strategies to defend clients against patent infringement in several jurisdictions. Dr Allekotte has written several articles and lectures from time to time on aspects of intellectual property law.

www.iam-magazine.com Patents in Europe 2006 115 Nederlandsch Octrooibureau Nederlandsch Octrooibureau Patpol PO Box 29720 continued 02-776 Warsaw, NL-2502 LS, The Hague, the Netherlands 162J, Nowoursynowska Str, Poland Tel: +31 70 331 2500 Tel: +48 22 644 96 57 Fax: +31 70 352 7528 +48 22 546 91 18 Fax: +48 22 644 44 02

www.octrooibureau.nl www.patpol.com.pl

Hans Bottema H J Hutter Katarzyna Karcz Managing partner Partner Patent Attorney, Partner [email protected] [email protected] [email protected]

Hans Bottema is managing partner of Hans Hutter is a partner of Nederlandsch Katarzyna Karcz has an MSc degree in civil Nederlandsch Octrooibureau in The Hague. Octrooibureau in The Hague and heads the engineering from Warsaw University of He is a Dutch and European patent electronics section. He is a Dutch and Technology, as well as a certificate in attorney and his areas of practice include European patent attorney and his areas of postgraduate intellectual property studies mechanics, process and packaging practice include computer-implemented from Jagellonian University in Kraków. Since technology and physics. Hans works for inventions, semiconductor technology, 1999, she has been a Polish patent and multinational companies in the offshore and lithography machines, telecommunications, trademark attorney, and since 2004 a brewing industry, as well as for medium- optical discs and smart cards. Hans works European patent attorney. sized companies in automotive technology. for a wide variety of national and Formerly at the Polish Patent Office and Hans joined Nederlandsch Octrooibureau international companies. now a partner at Patpol, Mrs Karcz’s in 1995. Prior to this he was a European Hans joined Nederlandsch Octrooibureau activities focus on the prosecution of patent attorney with Procter & Gamble in in 1991. He started his patent career with mechanical patents. In June 2005, she was Brussels, Newcastle and Frankfurt. With P&G the Netherlands Industrial Property Office in appointed as the Head of the Patents and he was engaged in prosecution and litigation 1988. Before that, he studied electrical Designs Department at Patpol. in the paper product technology area. He engineering at Twente University (1982). As a member of AIPPI she participates started his training as a patent attorney in Here he worked as a teacher in computer regularly in the work done by this association 1987 with Philips Electronics in Eindhoven in science. Hans holds a PhD in the history of and is also a frequent attendee of its the field of medical systems and electron science and technology from Eindhoven seminars, forums and congresses. beam imaging devices. Hans holds an MSc in University of Technology (1988). technical physics from Delft University of Technology at the Faculty of Reactor Physics (1987).

116 Patents in Europe 2006 www.iam-magazine.com Patpol Società Italiana Brevetti Szecskay Ügyvédi Iroda – Attorneys at Law continued Piazza di Pietra, 38-39 H-1055 Budapest, 00186 Rome, Italy Kossuth Tér 16-17, Hungary Tel: +39 06 69 54 41 Tel: +36 1 472 3000 Fax: +39 06 69 54 4810/20 Fax: +36 1 472 3001

www.sib.com www.szecskay.com

Malgorzata Zielinska-Lazarowicz Giovanni Antonio Grippiotti Dr Gábor Faludi Lawyer Partner Attorney [email protected] [email protected] [email protected]

Malgorzata Lazarowicz has a master of law Giovanni Grippiotti is a member of the Rome Dr Gábor Faludi is a Hungarian attorney degree from Warsaw University, where she Bar as well as being an Italian and admitted to the Budapest Bar. Dr Faludi also undertook postgraduate studies in Community trademark attorney and a received his JD, summa cum laude, from intellectual property law (2003) and in Community design attorney. Eötvös Loránd Faculty of State and Legal European law (2005). Since 2005, Mrs In over 20 years’ practice in association Science in 1976. He obtained his PhD Lazarowicz has been a trainee patent attorney. with SIB’s Rome office he has covered the through a thesis on copyright licensing At Patpol, Mrs Lazarowicz’s practice full range of IP rights and handled a large agreements. He also attended Columbia focuses on infringement and enforcement of number of disputes in a number of IP-related University (graduate of the summer intellectual property rights, including patents, fields, including patents, trademarks, programme in American law, 1981). designs, trademark protection, administrative designs and copyrights. His clients are world Dr Faludi is an associate professor of and litigation proceedings, as well as unfair industry leaders, international companies, law at Eötvös Loránd University. He is also a competition and copyrights. She is universities and research organisations. He board member of the Hungarian Association experienced in drawing up appeals against is particularly experienced in obtaining for the Protection of Industrial Property, and decisions of the Patent Office issued as part preliminary injunctions and seizures in a member of the Copyright Experts of litigation proceedings (opposition and patent disputes. Committee, the Council for the Protection of invalidation proceedings) or when it has Mr Grippiotti regularly contributes case Intellectual Property at the National Patent refused to grant a patent, drafting cease and comments to specialist journals and he Office and the Electronic Telecommunication desist letters to alleged infringers of lectures on IP matters. He belongs to INTA, Arbitration Board. Dr Faludi is the author of exclusive rights, and giving legal opinions on AIPPI, FICPI, ECTA, MARQUES and LES, as numerous articles on intellectual property many aspects of Polish intellectual property well as to the INDICAM Council, the Italian law. He currently specialises in civil, law to national and foreign clients. Industrial Property Consultants Institute and commercial and IP law and litigation. Dr the Italian College of Industrial Property Faludi is fluent in English and German. Consultants. He speaks English.

www.iam-magazine.com Patents in Europe 2006 117 Szecskay Ügyvédi Iroda – Attorneys at Law Taylor Wessing Taylor Wessing continued Carmelite continued 50 Victoria Embankment, Blackfriars London EC4Y 0DX, United Kingdom Tel: +44 20 7300 7000 Fax: +44 20 7300 7100

www.taylorwessing.com

Dr Gusztáv Bacher Gary Moss Nigel Stoate Attorney Partner Partner [email protected] [email protected] [email protected]

Dr Gusztáv Bacher is a Hungarian attorney Gary is a senior partner in the Intellectual Nigel is a partner in the Intellectual Property admitted to the Budapest Bar. He received Property Department of leading European Department of Taylor Wessing, specialising his JD, summa cum laude, from Eötvös law firm Taylor Wessing. He specialises in in patent litigation and advice, and licensing Loránd Faculty of State and Legal Science in both contentious and non-contentious and technology transfer in the engineering, 1998. Dr Bacher lectures at the university in issues, with particular emphasis on patents, chemical, pharmaceutical and biotechnology seminars on contract law. He received his pharmaceuticals, biotechnology, information industries. master of laws (LLM) degree in international technology and technology transfers. Gary He graduated from Southampton University business law from the Central European has over 25 years' experience practising in with a BEng in mechanical engineering and University in 2001. He worked for three these areas and during that time has worked in industry before retraining as a months in the Max Planck Institute for handled many major patent cases. Gary also solicitor. In 1995 he joined Taylor Joynson Intellectual Property (Munich) in 2005. has extensive experience in cross-border Garrett (which became Taylor Wessing in Dr Bacher is a member of the executive patent litigation involving both Europe and September 2002). Nigel has also obtained a committee of the Hungarian group of AIPPI, the United States. postgraduate diploma in intellectual property assistant secretary general of the Ligue law from Bristol University. Internationale du Droit de la Concurrence Nigel writes regularly, contributing (LIDC) and in 2004 was international articles to a number of specialist intellectual rapporteur of the LIDC on comparative property and life sciences publications. He advertising. He is the author of a number of also lectures and speaks regularly at articles on civil law, IP and e-commerce. Dr conferences on patent-related matters. He Bacher joined Szecskay Ügyvédi Iroda in 1999. has appeared on television commenting on He currently specialises in civil, competition, patent issues, in particular the proposals for advertising and IP law and litigation. Dr Bacher the Community patent. is fluent in English and German.

118 Patents in Europe 2006 www.iam-magazine.com Taylor Wessing Zacco A/S Zacco Norway AS continued Hans Bekkevolds Allé 7 Haakon VII’s gate 2, PO Box 2003 Vika, DK-2900 Hellerup Denmark NO-0125 Oslo, Norway Tel: +45 39 48 80 00 Tel: +47 22 91 04 00 Fax: +45 39 48 80 80 Fax: +47 22 91 05 00

www.zacco.com www.zacco.no

Tom Carver Pernille Thorsboe Jens Fredrik C Langfeldt Solicitor Partner Senior adviser [email protected] [email protected] [email protected]

Tom is an associate in the Intellectual Pernille Thorsboe graduated in 1980 with an Jens Fredrik C Langfeldt was born in 1942 Property Department of Taylor Wessing and MSc in chemical engineering from Denmark’s and graduated in 1970 with a BSc degree specialises in patent litigation. Tom has Technical University. Mrs Thorsboe started from Queens University in Belfast, particular experience of acting for clients her career in the patent business Department of Applied Science and in the pharmaceutical, medical devices and immediately and worked from 1982 to 2000 Technology, Electrical & Electronics biotechnology sectors, but has also at the Danish Patent Office, from 1988 as Engineering Division. Mr Langfeldt started his assisted on cases in a variety of other head of various chemical divisions and finally career as a patent consultant in 1971 and technology fields. as Head of Patents. joined Bryns Patentkontor (now Zacco Norway) Tom gained a BSc in genetics from the During her years at the Patent Office, in 1985. He has considerable expertise in the University of Nottingham and a diploma in Mrs Thorsboe had the responsibility of area of intellectual property rights, and intellectual property law and practice from managing and developing Danish patent particularly patent and design rights. the University of Bristol. He trained as a practice within chemistry, and she has Mr Langfeldt has completed a number of solicitor at Taylor Wessing, qualifying in participated in harmonisation work in courses in the areas of international patent March 2005. relation to patents at WIPO, the EPO, the EU rights and Norwegian intellectual property and the North. She was the head Danish rights. He is president of the Association of delegate in the negotiation of the EU Norwegian Patent Agents. Further, he is a Directive on Biotechnological Inventions member of the Norwegian Society of between 1988 and 1996. Chartered Engineers, NIR, FICPI, AIPPI, UNION Mrs Thorsboe joined Zacco Denmark as a and the Scandinavian Patent Attorney Society. patent attorney in 2000 and became Head of Mr Langfeldt is a partner in Zacco A/S. the Life Science and Chemistry Department Zacco Norway is part of the in 2004. In Zacco Denmark she works within Scandinavian group of companies Zacco organic chemistry, food technology and A/S, which has offices in Copenhagen, pharmaceuticals, and with patent litigation for Aarhus, Oslo, Trondheim, Stockholm, the pharmaceutical industry. Skellefteå, Gothenburg and Malmoe. Zacco A/S is a Scandinavian company, which has offices in Copenhagen, Aarhus, Oslo, Trondheim, Stockholm, Skellefteå and Malmoe.

www.iam-magazine.com Patents in Europe 2006 119 Zacco Sweden AB Sveavägen 151 Box 23101 SE-104 35, Stockholm, Sweden Tel: +46 8 729 95 63 Fax: +46 8 31 83 15

www.zaccolegal.com

Helena Östblom Attorney at law [email protected]

Helena Östblom has more than 10 years’ experience in advising on legal matters relating to commercial law with special expertise in intellectual property law. She specialises in litigation relating to infringement of intellectual property rights such as trademarks, patents, designs and copyrights, as well as litigation regarding matters relating to the Marketing Practices Act. She also advises on other legal matters relating to intellectual property law, marketing law and competition law. Helena Östblom graduated in 1989 with a master of laws degree from Stockholm University. She has worked as an assistant judge at the District Court of Västervik. Between 1991 and 1998 she was a member of the Swedish Bar Association and worked as a lawyer at Advokatbyrån Frie in Stockholm (merged with Gedda & Ekdahl Advokatbyrå 1997). She joined Zacco Sweden AB in 1999. In addition to her work as an attorney at Zacco Legal, Helena is the secretary of the board of the Swedish Anti Counterfeiting Group (SACG). Zacco Sweden is part of the Scandinavian group of companies Zacco A/S, which has offices in Copenhagen, Aarhus, Oslo, Trondheim, Stockholm, Skellefteå and Malmö.

120 Patents in Europe 2006 www.iam-magazine.com P_in_E_2006_Cover:LICENSING 2005_COVER 23/10/06 10:50 Page 4

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