Patents In Europe 2011-2012

Transcript

Patents in Europe 2011/2012 Contents Welcome By Sara-Jayne Clover 3 The E PO as a d riving force behind positive developments in t he patent s ystem By Benoît Battistelli European Patent Office 2010t:hE e PO’yseairsntatistics By Joff Wild 5 9 ProtectingsoftwareandbusinessmethodsviatheEPO By Dulce M Miranda Garrigues Abogados y Asesores Tributarios, SLP 12 PatentingbiotechnologyinventionsviatheEPO By Ralph Minderop, Arwed Burrichter, Meikel Diepholz and Natalie Kirchhofer COHAUSZ & FLORACK 15 EUpatentsandtheUnifiedPatentCourt By Rainer K Kuhnen and Michael Zeitler Kuhnen & Wacker 20 Albania By Gjergji Gjika and Evis Jani Drakopoulos Law Firm 25 Austria By Peter Israiloff Barger, Piso & Partner 29 Belgium 33 By Kristoff Roox, Christian Dekoninck and Sarah van den Brande Crowell & Moring www.iam-magazine.com Cyprus By Phivi Tramountanelli Michael Kyprianou & Co LLC 38 Denmark By Claus Elmeros and Louise Aagaard Høiberg A/S 42 Finland By Petri Eskola Backström & Co Attorneys Ltd 46 France By Patrick Dunaud, Nathalie Hadjadj-Cazier and Gwendaline Sarrat Winston & Strawn 49 Germany By Gottfried Schüll COHAUSZ & FLORACK 54 Greece By Eleni Lappa Drakopoulos Law Firm 57 Iceland By Gunnar Örn Hardarson and Asdis Magnusdottir Arnason Faktor 61 Patents in Europe 2011/20121 Contents continued Ireland By Yvonne McKeown MacLachlan & Donaldson 65 Italy By Rossella Solveni and Giuseppe Mercurio Rapisardi Intellectual Property 69 Montenegro By Lidija B Djeric Popovic Popovic Samardzija & Popovic 73 Netherlands By Peter Claassen, Martin Hemmer and Eliëtte Vaal AKD 76 Poland By Katarzyna Karcz Patpol 81 Romania By Margareta Oproiu Cabinet M Oproiu 85 Serbia By Katarina Kostic Popovic Popovic Samardzija & Popovic 89 Spain By Miguel Vidal-Quadras Trias de Besand Oriol Ramon Sauri Amat i Vidal-Quadras Advocats 93 Sweden By Peter Kenamets and Fabian Edlund Awapatent 97 Switzerland By Regula Rüedi and Rainer Schalch E Blum & Co AG 101 Turkey By Ersin Dereligil and Oktay Simsek Destek Patent Inc 105 UnK iteindgdom By Richard C Price and Gareth E Morgan Winston & Strawn 110 Fdiirrm ectory 115 Editorial board Bruce Berman President, Brody Berman Associates Scott Frank President, AT&T Intellectual Property Daniel M McGavock Vice President and Global IP Practice Leader, CRA International Ruud Peters Welcome CEO Philips IP & Standards Marshall Phelps Former Corporate Vice President for Intellectual Property, Microsoft Corp. Herbert C Wamsley Executive Director, Intellectual Property Owners Association Rob Willows Vice President, Thomson Scientific Industrial Property Markets Division Editor Joff Wild [email protected] Finance editor Nigel Page [email protected] Contributing editors Richard Marsland [email protected] Adrian Preston [email protected] Reporter Sara-Jayne Clover [email protected] Sub-editors Carolyn Boyle [email protected] Jo Moore [email protected] Design and production Natalie Clarke Nicky Phillips Subscriptions and marketing manager Alan Mowat [email protected] Publications manager Cihan Narin [email protected] Circulation Amanda Green Welcome to the fifth edition ofPatents in Europe: Helping business compete in the global economy . Produced in partnership with the European Patent Office,Patents in Europe has become an indispensable guide for all those who use or have an interest in the European patent system. Over the past year the movement towards creating a single European patent has once again gained momentum. However, long plagued by bureaucratic hurdles and resistance to the suggested translation agreement – under which applications would be filed in either English, French or German, and grants translated into the two languages not used in the srcinal filing – this attempt to achieve Europe-wide harmonisation will be no simple task. While enhanced cooperation has now been agreed by 25 of the 27 EU member states, Spain and Italy are challenging the right to proceed towards a unitary patent on this basis. Whether this obstacle can be overcome and a unitary patent will become a reality for Europe remains uncertain. Until that happens, patent applicants must still adopt a country-bycountry approach to protection and prosecution; and this can take time, cost dearly and yield contradictory results. It is with all this in mind thatIntellectual Asset Management (IAM) magazine has produced Patents in Europe 2012. This special supplement to the magazine has been designed to provide an overview of the way in which companies can secure effective patent protection in Europe and how they can enforce their rights should the need arise. At the front end of the publication, we have introductory chapters that look in some detail at specific aspects of the European patenting process. These chapters are then followed by a series of in-depth, country-based contributions in which correspondents consider how patents are enforced in their jurisdictions. In this way, the aim is to build a tool that will be of practical use to European patent owners, as well as those from other parts of the world. To ensure the highest quality, we have invited only those firms with acknowledged expertise in European patent law and practice to submit editorial. We are grateful to all contributors for taking the time to do so. Sara-Jayne Clover Reporter, IAM magazine [email protected] Evette Scott Associate publishers John Eborall [email protected] Patrick Speedie [email protected] Group publisher Gavin Stewart [email protected] Publishing director Tony Harriss [email protected] Globe White Page Ltd New Hibernia House Winchester Walk London SE1 9AG, UK Tel +44 20 7234 0606 Fax +44 20 7234 0808 Email [email protected] Web www.iam-magazine.com Patents in Europe 2011/2012 is a free supplement to IAM magazine. Contact Alan Mowat at [email protected] to subscribe to IAM magazine. ISSN 1741-1424 Printing and srcination by Buxton Press Ltd, Derbyshire, UK © Globe White Page Ltd Copyright applies. No photocopying. For licensed photocopying please call +44 20 7234 0606 This publication does not purport to provide investment advice. The publishers do not bear the responsibility for any errors or omissions contained in the magazine. Cover image: ©istockphoto.com/Nikada www.iam-magazine.com Patents in Europe 2011/20123 Not yet a subscriber? SUBSCRIBE NOW Subscribe to IAM now and receive: • • • • • Six issues of IAM magazine Instant online access Weekly news by email Regular supplements Complete seven-year archive To subscribe go t o www.iam-magazine.com or email [email protected] The EPO as a driving force behind positive developments in the patent system The EPO as a driving force behind positive developments patent system in the The European Patent Office plays a key role in reforms of the European patent system and is a central pillar of both European and global innovation By Benoît Battistelli, European Patent Office On signing the European Patent Convention (EPC) at the Munich Diplomatic Conference over 30 years ago, the signatory states laid the foundations for the world’s most successful regional patent system. After years of political standstill, development of the European patent system has gained new momentum. The EU member states’ recent decision to use enhanced cooperation to introduce unitary patent protection in Europe has now brought that system a crucial step closer to completion. The move has also boosted efforts at international level to harmonise the patent systems of the largest economic regions. Other major systems, such as that of the United States, are also undergoing a process of reform and closer alignment of the various systems now seems a feasible possibility. The European Patent Office (EPO) plays a key role in all of these processes. Although the EPO is not an EU institution and has no place at the negotiating table, the EU member states want it to be responsible for granting and administering the unitary patent. European businesses especially profit from this new approach and can expect considerable reductions in costs and red tape from a unitary patent. From regional office to global player The facts speak volumes: from a core of seven founding states in 1977, the European www.iam-magazine.com Patent Organisation has grown to comprise 38 contracting states and three associate states. Together, they cover a territory with a population of almost 600 million, which outnumbers that of the United States, Japan and Korea combined. At the same time, the EPO, with a staff of almost 7,000 located in Munich, The Hague, Berlin, Vienna and Brussels, has grown to become the secondlargest European institution. This growth reflects the success and economic importance of the European patent: the record number of 235,000 European patent applications filed in 2010 was almost eight times higher than the srcinally predicted maximum of 30,000, and the figure is still growing. Applicants from European countries file roughly 40% of patent applications. The EPO has witnessed considerable growth in filings by Chinese, Korean and Japanese firms over the past two years. These firms file many of their applications as Euro-Patent Cooperation Treaty (PCT) filings, thereby capitalising on the EPO’s central role as a PCT authority. It acts as an international searching authority in more than 40% of all international procedures, making it a nerve centre of the global patent system. Similarly, many European companies use the international procedure before the EPO to file their applications for patent protection in other continents, mainly America and Asia. The EPO is thus a central pillar of not only European, but also global innovation. The European economy benefits enormously from this, as it means that European patents and patent applications play a key role in both innovation transfer within Europe and the export of European innovation to other regions. Patent quality, efficiency, transparency The success of the European patent boils Patents in Europe 2011/20125 The EPO as a driving force behind positive developments in the patent system Patents are instruments of economic competition: any improvement of the patent system must be designed to optimise its economic benefit to businesses down, in essence, to three things. First of all, the EPO grants procedures, which rigorously aim for high patent quality and provide legal certainty for innovation on the technology market. The EPO’s quality policy manifests itself in a restrictive patenting practice and a strong presumption of validity for European patents. The outstanding quality of European patents has been repeatedly acknowledged by independent experts. The EPO’s eminent status among the PCT authorities, despite growing competition from other offices, is a further the stimulus that European patents provide for the competitiveness of European industry. Patents are instruments of economic competition: any improvement of the patent system must be designed to optimise its economic benefit to businesses. Broadly speaking, the priorities forthe European patent system must be set in three areas. First, it is necessary to enhance the patenting procedure through reforms designed to ensure that it continues to provide European industry with a highquality service at the lowest possible cost. Benoît Battistelli clear sign of the confidence that globally operating companies have in its competence, the quality it isues and the pace at which it delivers its search report. Second, due to the efficiency and transparency of the European procedure, information on the patentability of an invention is available from an early stage: the applicant and the general public can find out whether an invention is likely to be patented as early as six months after filing. Few other offices with an international remit can provide information so quickly and reliably at such an early procedural stage. Finally, the harmonising nature of the European patent system proves useful in integrating new member states into the European innovation process and is conducive to the prompt dissemination of new technologies. That is why associate status is so attractive to neighbouring countries as is shown by the validation agreement with Morocco, and why more and more aspiring regions, such as the Association of Southeast Asian Nations, see the European patent system as a suitable model for developing their own IP systems. This requires optimisation of the EPO’s procedural operations, including the technical tools deployed. In addition, the plans to introduce a unitary patent will mean that the EPO has a new task to perform. Harmonisation of the post-grant phase and patent litigation in Europe is a much longed-for step and should entail a significant reduction in costs and red tape, above all for small and medium-sized enterprises. Finally, global innovation calls for harmonisation of the various patent systems as an effective support for the global economy. Although it is politically more difficult to take this step (given the various states’ sovereign rights), technical cooperation projects already allow for extensive procedural alignment and so help to avoid unnecessary duplication of work. The appropriate platform for this is the IP5 cooperation between the EPO and the patent offices of the United States, Japan, China and Korea, which together handle 80% of the world’s patent applications. Thanks to its widely recognised expertise in the area of international cooperation projects, the EPO plays a leading role in this process. Administrative Council of the European Patent Organisation in March 2009, after serving as vice chairman of the council from December 2006 onwards. Priorities Given this success, the EPO must now set clear priorities with a view to enhancing 6 Patents in Europe 2011/2012 President, European Patent Office Benoît Battistelli took up his duties as president of the European Patent Office (EPO) on 1st July 2010 following his election in March of that year. Prior to joining the EPO, he was director general of the French National Institute for Industrial Property, a post to which he was appointed in May 2004. Mr Battistelli also served as chairman of the Supervisory Board of the European Patent Academy from July 2005 to July 2008, and was elected chairman of the Enhancing European procedure The EPO recently began to take the first www.iam-magazine.com The EPO as a driving force behind positive developments in the patent system steps towards significant procedural reform by implementing the Raising the Bar Initiative. No fewer than 15 EPC rules had to be amended, which required that the EPO engage in close consultation with its users. The reforms made clear, once again, that the stability and predictability of the European patent system are extremely important factors underlying its benefit to the economy. Consultation with user groups is therefore a fundamental element of this stability and the process must be improved and consolidated. I consider it one of my chief responsibilities to engage regularly in open and constructive talks with user groups. This also helps the EPO to strike a better balance between conflicting interests. It will not always be possible to do equal justice to all interests, but consultation is an important step towards developing the legal framework and EPO practice in accordance with users’ needs. That is why the EPO plans, as its next reform, to take measures that will encourage third parties to exercise their right, under Article 115 of the EPC, to present observations during proceedings. This is based on the fact that virtually all applicants will inevitably also find themselves in the position of a third party directly affected by the grant of a patent. must make improvements if it is to remain at the vanguard and achieve the desired efficiency gains. The EPO’s policy here is to develop the best possible IT tools and share them with other patent offices – first of all within but also outside Europe – so as to improve the efficiency of the system as a whole, including that of the EPO procedures, at the lowest possible cost for users. The infrastructure reforms will, of course, be accompanied by procedural improvements and the EPO is currently working on these too. In the years to come, the EPO’s financial policy will likewise be geared towards strengthening its operational capacity in its core business. Its chief aim is to ensure that innovative businesses are not burdened with unnecessary costs, while at the same time safeguarding its own financial independence. The idea behind the measures is to enhance the European patent system’s positive impact on innovation by making improvements to quality on the basis of such observations. Council’s adoption of the European Commission’s draft regulations sees one of the longest-ever European integration projects enter the home straight. It is an important step in finally ensuring that innovative European businesses can compete with their Asian and US rivals under the same IP conditions. Under the draft regulations, the EPO is to be responsible not only for granting the unitary patent, but also for its central administration. The fact that EU member states have entrusted the EPO with these tasks is a major vote of confidence in its competence and the quality of its work. Its activity to date has been a crucial factor in developing an eminent technology portfolio in Europe. The unitary effect of the new patent will serve to promote innovation further. The unitary patent will also give businesses more options in devising an appropriate IP strategy, as it will co-exist alongside national patents and the traditional European patent. The EU unitary patent will succeed only if it offers businesses the relief they seek from current administrative and financial burdens. The EU member states must therefore be congratulated on having chosen to maintain the EPO’s tried and tested language regime and, in the interests of Increasing operational efficiency Another important area on which the EPO must concentrate is the operational and cost efficiency of the European patent system. The EPO has always sought to set the pace in the development of electronic tools which make it possible to offer applicants fast, high-quality search and examination procedures at a reasonable cost. The success of its EPOQUE suite of search applications proves that this was the right strategy: more than 40 patent offices, including the Chinese State Intellectual Property Office, now use it as their standard patent-search tool. The EPO’s considerable ongoing investment in the development and optimisation of EPOQUE has produced a benchmark tool which unquestionably sets global standards. It is important that the EPO continues this strategy because, in the face of a worldwide increase in filings, it is predominantly through electronic tools that significant efficiency gains will be realised. A recent analysis of the EPO’s IT infrastructure clearly showed that the EPO www.iam-magazine.com Unitary patent protection An efficient IT structure and the resulting enhancement of the EPO’s operational potential will bear fruit when it comes to granting and administering the planned European patent. The decision of 25 EU member states to introduce this patent after years of stalemate amounts to a political breakthrough. The European Patents in Europe 2011/20127 The EPO as a driving force behind positive developments in the patent system economy, to dispense with any need to translate the granted patent into all the official EU languages. The absence of such translation requirements and the central administration of the patents will save applicants around 70% of the cost of a comparable European patent valid in 25 states. Nevertheless, the EPO takes misgivings as to potential language barriers seriously, and has therefore concluded a non-exclusive agreement with Google on a machine translation service for patents. The new tool should enable users searching for information in the EPO’s public databases to quickly obtain a fit-for-purpose translation of published patents into the language of any EPO member state. To that end, the EPO is making the existing collections of professional translations of European patents into the various official languages of its member states available to Google for upload, so as to ensure that the machine translations are of good quality. The agreement also covers Chinese, Japanese, Korean and Russian patents. This global information tool will undoubtedly increase the benefit the economy derives from the patent system. The service should be fully operational in all the languages mentioned by 2014. The second element of the unitary patent of the global economy. This shared vision has given rise to 10 technical foundation projects aimed at harmonising procedures for processing patent applications at the five major offices. This is needed in view of the growing interdependence of technology markets and the ever-greater influence that this has on businesses’ global IP strategies, leading them to file parallel patent applications for the same invention in various countries. The priorities here are procedural economy and quality assurance. Given the rapidly growing demand for patents, immediate action is required to ensure that the patent system continues to play an important part in disseminating new technologies. Businesses must find comparable conditions in all markets if their innovation strategies are to succeed. In this respect, the EPO can draw on its considerable technical expertise and its experience as a forerunner in cooperation while, at the same time, safeguarding European interests. The first important step was an agreement with the US Patent and Trademark Office on establishing a Cooperative Patent Classification, building on the EPO’s own European Patent Classification system. This will serve as a basis for harmonising the IP5 offices’ working methods. The agreement is a system is a specialist unified European patent court. The establishment of this court is another important step in increasing legal certainty and lowering the costs associated with European patents. After the European Court of Justice rejected the European Commission’s first specific proposal on such a court, the commission has developed a revised version of the proposal for consideration by the European Council. promising start to creating a joint classification system, especially now that Japan is also considering adopting the Cooperative Patent Classification. The IP5 cooperation is a long-term project designed to establish the legal andtechnical infrastructure needed for a sustainable global patent system. Close cooperation, based on trust, with the IP5 partner offices and the World Intellectual Property Organisation is crucial to achieving this aim. That iswhy the further development of the PCT, which is the preferred international filing route for innovative businesses, can be considered pioneering. In this connection too, the EPO sees itself as the advocate of Europe’s interests. The recent developments in the European and international IP systems have clearly added to the EPO’s profile as a global player in the patent field. The EPO will make every effort to play its part in the development of a sustainable and efficient patent system which responds to the needs of the economy both in Europe and beyond. In that regard, its true potential and capacity as a facilitator for innovation have yet to be seen. International harmonisation The positive developments in Europe have given fresh impetus to efforts to harmonise the patent systems of the largest economic regions. The EPO’s international outlook has long made it a global player in the patent field, but its central role in the planned unitary patent scheme will also strengthen its position in relations with the other major regions. The first meeting of the heads of the IP5 in 2006 laid the foundations for close cooperation between these institutions. The aim of this cooperation is to reduce unnecessary duplication of work in the global patent system, while guaranteeing the quality and sustainability of patents as key instruments 8 Patents in Europe 2011/2012 www.iam-magazine.com 2010: the EPO’s year in statistics 2010: the EPO’s year in statistics A busy year at the EPO saw a record number of applications, with filings from China soaring. And once again, the office was recognised for the quality of the patents it grants By Joff Wild It was a record year for patent applications in 2010 at the European Patent Office (EPO). After a decline in 2009, the numbers bounced back to record an 11% rise at just over 235,000 – the most filings recorded in a single year during the EPO’s 34-year history. The country from which most applications came was the United States (with 60,588), followed by Japan (41,917) and Germany (33,139). While these countries usually make up the top three, fourth place this time round was taken by a relative newcomer. With 12,968 applications, the People’s Republic of China just pipped Korea, at 12,342. The rise in the number of Chinese patent filings is truly extraordinary, having grown 96% since 2008. During 2010 the EPO issued 135,000 final decisions on grant proceedings, not including oppositions and appeals. Of the total, 58,000 – or 43% – were grants. Top for quality The EPO has long been recognised for the quality of the patents that it grants and this reputation was confirmed again in early 2011 with the publication of the second IAM /Thomson Reuters IP benchmarking survey. Among other things, this annual exercise asks both senior in-house practitioners and those in private practice to www.iam-magazine.com rate the quality of the patents issued by the world’s granting authorities. This year, over 650 individuals responded. According to the survey, 74% of in-house counsels thought that the quality of patents granted by the EPO is “excellent or very good” (up from 71% last year), with 62% of private practice attorneys sharing this view (up from 56% last year). The Japan Patent Office (JPO) came in second, with 57% and 43% respectively, followed by the US Patent and Trademark Office (USPTO) (50% and 37%), the Korean Intellectual Property Office (KIPO) (34% and 24%) and the State Intellectual Property Office of the People’s Republic of China (SIPO) (23% and 13%). The survey also found that the quality of patents granted by the EPO is seen to have improved from previous years: 22% of in-house attorneys and 2 6% of their counterparts in private practice agreed with this view, while roughly two-thirds of the respondents thought that it had stayed the same. Just 7% and 9%, respectively, answered that the quality had deteriorated. These are impressive findings, but the EPO recognises that it must not be complacent. Reacting to the survey, EPO President Benoît Battistelli said: “Quality has always driven the EPO’s policy, as only high-quality patents provide the legal certainty that makes them such a valuable tool for companies, individual inventors and third parties alike. The EPO continues to invest heavily in boosting quality, especially by streamlining procedures and improving IT systems. And this study shows that our efforts at establishing a quality-based patent system are paying off.” The figures overleaf illustrate the statistics discussed here. Patents in Europe 2011/20129 2010: the EPO’s year in statistics Total European patent filings Direct European filings under the EPC and international filings under the PCT 210 800 Five-year development After steady growth until 2007, the number of patent filings (direct European under the European Patent Convention (EPC) and international under the Patent Cooperation Treaty (PCT)) grew at a much lower rate in 2008 and decreased markedly in 2009 at the time of the recession. In 2010, they grew substantially by 11% to exceed the precrisis level, partly as a result of the economic recovery and partly as a side-effect of the EPO’s introduction of new regulations which led applicants to file certain applications before the end of 2010. 20 0 6 222 600 226 000 2 0 07 2 00 8 235 000 211 300 20 0 9 2010 Source: European Patent Office Granted patents 136 700 121 200 112 800 108 800 112 800 18% Outcome of grant proceedings From 2007 to 2010 there was a steady 124 600 136 700 22% 121 200 23% 124 600 24% 28% 34% 108 800 21% 35% 26% 29% increase in the number of final decisions on grant proceedings, patents granted, applications refused by the EPO and applications withdrawn by the applicant, especially in 2010 when there was a 10% increase over 2009. Since 2008, a patent has been granted in under 50% of all cases. Please note that oppositions and appeals are not included in these figures. 56% 49% 50% 42% 43% Abandoned after search Stopped during examination 2006 2007 2008 2009 2010 Granted Source: European Patent Office Private practice. Patent quality The EPO has the highest perceived level of patent quality over the past year. China has the lowest quality level but has the highest number of respondents who have seen an improvement in the quality of patents over the past year Percent rating patent quality is excellent/very good Perceived change from prior years EPO 62% EPO 26% 65% 9% JPO 43% JPO 20% 78% 2% USPTO 37% USPTO 31% 52% 17% KIPO 24% KIPO 33% 64% 3% SIPO 13% SIPO 65% 29% 6% Improved Stayed the same No improvement/worse Source: Intellectual Asset Management magazine, Issue 48 10 Patents in Europe 2011/2012 www.iam-magazine.com 2010: the EPO’s year in statistics Top 25 applicants (based on European patent applications filed before the EPO) 1. Siemens 2135 2. Philips 1765 3. BASF 1707 4. Samsung 1691 5. Qualcomm 6. Panasonic 1400 7. Robert Bosch 1682 1400 8. Sony 1286 9. LG 1263 10. Bayer 1123 11. Mitsubishi 1096 1095 12. Ericsson 13. General Electric 1084 14. Research in Motion 907 811 15. Hoffman - La Roche 16. Alcatel 773 17. Hitachi 741 18. Huawei 730 19. 3M 710 20. Johnson & Johnson 21. EADS 709 688 653 651 22. Canon 23. Toyota 24. Fujitsu 642 25. Honeywell 642 Source: European Patent Office In-house counsel. Patent quality The EPO has the highest perceived level of patent quality over the past year. China has the lowest quality level, but has the highest number of respondents who have seen an improvement in the quality of patents over the past year Percent rating patent quality is excellent/very good Perceived change from prior years EPO 74% EPO 22% 70% JPO 57% JPO 19% 75% 6% USPTO 50% USPTO 30% 51% 19% KIPO 34% KIPO 27% 67% 6% SIPO 23% SIPO 63% 31% 6% 7% Improved Stayed the same No improvement /worse Source: Intellectual Asset Management magazine, Issue 48 www.iam-magazine.com Patents in Europe 2011/201211 Protecting software and business methods via the EPO Protecting software and business methods via the EPO Many patent applications filed at the European Patent Office (EPO) refer, in one patentability for, among other things, “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers”, to the extent to which the European patent application relates to such subject matter “as such” (Article 52(3)). This final clarification basically means that these exclusions should be narrowly interpreted. It is significant that computer programs were not included in the list of subject matter that is not considered to constitute an invention under Article 52 in the first way or another, to computer-implemented inventions covering markets as diverse as mobile telephones, the automotive industry, digital photography and television. They are products or procedures that are present in our daily lives and which can function only with software. This market is worth hundreds of millions of euros, and it is thus important to protect the results of its research and development and legal security adequately and correctly. Although in some jurisdictions, such as the United States, there are no legal obstacles to the patentability of computer programs, this is not the case for European patents. Article 52(1) of the European Patent Convention (EPC) states that: “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.” This article of the EPC does not define what can be considered an “invention”, but rather expresses the fundamental maxim of the general entitlement to patent protection for any inventions in all technical fields. The second paragraph of Article 52 of the EPC is a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Article 52(1). Specifically, Article 52(2) excludes drafts of the European Patent Convention. This shows that right from the start, this issue has been the subject of much discussion. To date, all efforts made to extend patentability to computer programs have failed. In 2002 the European Commission put forward a proposal for a directive to regulate the patentability of computer-implemented inventions, but this initiative failed in July 2005, when the European Parliament rejected the proposed common position and declared the legislative procedure closed. The above notwithstanding, the fact is that over the years, the EPO has granted protection to hundreds, even thousands, of inventions which involve a business method or a computer program. This article examines some of the most relevant decisions of the EPO in this field and some of the issues related to such patents that have been the subject of debate. One of the most relevant aspects of this approach to the question is to clarify the criteria that the EPO has applied to decide on the patentability of computer programs. At the beginning, the decisions of the examiners and the EPO Board of Appeal on this subject followed an approach based on the “contribution to the art” of the subject matter claimed, whereby it was considered The European Patent Office has, over the years, granted protection to hundreds, even thousands, of inventions involving a business method or computer program By Dulce M Miranda, Garrigues Abogados y Asesores Tributarios, SLP, Madrid 12 Patents in Europe 2011/2012 www.iam-magazine.com Protecting software and business methods via the EPO www.iam-magazine.com that a computer program did not fall under the exclusions of Article 52(2) if it made a technical contribution to what had existed until then in the state of the art. This was the criteria applied in the Vicom case (T208/84, 15th July 1986), which dealt with a method for digitally processing images in the form of a two-dimensional array. In this decision the Board of Appeal made a first distinction between a computer program “as such” and an invention that makes a technical contribution and is therefore patentable, stating that “an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art ” (emphasis added). Also remarkable in this sense is the decision in the Sohei case (T 762/92, 31st May 1994), which dealt with a patent for a computer system and method for several types of independent management, including at least financial and inventory management. In this case the Board of Appeal granted the patent based on the step than for deciding on possible exclusion under Article 52(2) and (3)”. As mentioned, in the IBM case, instead of the contribution approach, the Board of Appeal applied the technical character test when issuing a decision on an appeal lodged against a decision of the examining division that refused an application on the grounds that the subject matter of some of its claims was a computer program, stating that “a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the program (software) and the computer (hardware) on which it is run” (emphasis added). In its decision the board clarified that physical modifications of the hardware (eg, causing electrical currents) cannot constitute such technical character per se, as they are a common feature of all computer programs. The IBM decision concludes that “a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining argument that “if a contribution to that art can be found either in a technical problem (to be) solved, or in a technical effect achieved by the solution, said mix may be not excluded form patentability”. However, this interpretation of the issue was soon abandoned. At is generally known, in order for an invention to be patentable, it must fulfil the requirements of novelty and inventive step: the practical consequence of applying the contribution approach was that examiners had to examine both novelty and inventive step not only as regards fulfilment of the requirements of an invention in order to be protected by a patent, but also as regards Articles 52(2) and (3) of the EPC (ie, to determine whether the subject matter claimed could be considered an invention). Therefore, that approach was soon superseded by the so-called “technical character test”. In this regard, the decision handed down in the IBM case (T 1173/97, 1st July 1998) should be highlighted. In this case the Board of Appeal considered inappropriate any comparison with the prior art in order to determine the presence of an invention, and stated that “determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive a technical effect”. A similar viewpoint can be applied to business methods, since pure business methods “as such” are not patentable under Article 52(2). In Decision T 931/95, regarding a method of controlling a pension benefits programme, the Board of Appeal stated that the question to be answered is whether the method represents a method of doing business “as such”, because if the method is technical or has a technical character, it may still be a method for doing business, but not a method for doing business “as such”. In the case in question, the board considered that all features of the claim were steps for processing and producing information having purely administrative, actuarial and/or financial character, which are typical steps of business and economic methods, and that therefore the method claimed was excluded from patentability since it did not have technical character. Decision T 258/03 regarding an automatic auction method executed in a server computer applied the same criteria. Thus, while the examining division concluded that an auction method was a business method and therefore was not patentable, the board declared that the use of technical means to carry out a method Patents in Europe 2011/201213 Protecting software and business methods via the EPO for performing mental acts, whether totally or partially without human intervention, may give that method a technical character. Therefore, an invention that consists of a mixture of technical and non-technical features may be regarded as an invention. Following the analysis of the criteria that continue to be applied to define a computer program as an invention, the next key issue to consider is the difference between a computer program and a method implemented in a computer. This difference was defined by Decision T 424/03. This case involved a patent application filed by Microsoft that disclosed a method in a computer system having a clipboard for performing data transfer of data in a clipboard system. The Board of Appeal established that: a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on a computer. Thus, the Board holds that the claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data protection… The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter. into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program. patentable due to lack of inventive step (it naturally would not be patentable if it was not new or did not involve an inventive step). Thus, the Enlarged Board of Appeal concluded that there was no contradiction between the decisions, since in Decision T 424/03 the same criteria were applied: the technical effect of the subject matter claimed. The conclusion reached in light of the above discussion is that according to the case law of the EPO Board of Appeal, by having technical character any product or method, even if formally relating to the list set out in paragraph 2, is an invention and therefore potentially patentable. One of the claims of the patent in question referred to a computer-readable medium having executable instructions adapted to cause the computer system to perform such method. As regards this claim, the board decided that a computer-readable medium (ie, a technical product involving a carrier) has technical character: Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of It appears that there was a contradiction between the decisions in theIBM and Microsoft cases, as in IBM the decision emphasised the function of the computer program, rather than the manner in which it is claimed, while inMicrosoft the board emphasised the manner in which the computer program is claimed. This apparent contradiction was one of the questions referred by former EPO President Alison Brimelow to the EPO Enlarged Board of Appeal in October 2008 – she asked whether a computer program can be excluded as a computer program as such only if it is explicitly claimed as a computer program. The Enlarged Board of Appeal handed down its opinion on May 12 2010, stating that a computer-readable medium is not excluded from patentability under Article 52(2) as it always has the technical effect of being capable of storing data, although such computer-readable medium could fail to be Dulce M Miranda has been a partner in the IP department of Garrigues Abogados y Asesores Tributarios, SLP since 2005. Her work focuses on patents, and in this field she handles licensing work across a wide spectrum of industries, with a particular emphasis on biotech. She has extensive litigation experience in patent infringement/validity cases. She is an arbitrator of the Arbitration and Mediation Centre of the World Intellectual Property Organisation and has been recognised as a leading lawyer in the area of patents by international directories such as Chambers and Partners, Best Lawyersand Legal 500. She is a member of the Madrid Bar Association, the American Intellectual Property Law Association and the International Association for the Protection of Intellectual Property. 14 Patents in Europe 2011/2012 Dulce M Miranda Partner [email protected] +34 91 514 52 00 Garrigues Abogados y Asesores Tributarios, SLP Spain www.garrigues.com www.iam-magazine.com Patenting biotechnology inventions via the EPO Patenting biotechnology inventions via the EPO As one of the key enabling technologies of biotechnological inventions in Europe is indispensible. In 1998 the European Parliament passed Directive 98/44/EC, which provides the legal framework for the protection of biotechnological inventions in the European Union. The directive was subsequently implemented into both national laws and the European Patent Convention (EPC), and is therefore binding for patent prosecutions concerning biotechnological inventions before the European Patent Office (EPO). Under the EPC, biological material the 21st century, modern biotechnology has become a major source of innovation and a global driver of economic growth in various industries, including healthcare, diagnostics and agro-food. With annual net sales exceeding US$90 billion and double-digit growth rates in the last five years, biopharmaceuticals and diagnostics are of paramount importance to the pharmaceutical industry today. The biotech industry largely depends on a strong patent system. In its 2010 EU Industrial Research & Development (R&D) Investment Scoreboard, the European Commission identified the biotechnology industry to have the highest R&D intensity (21.2%) of all industries. In comparison, according to the report the automotive and parts industry had an R&D intensity of 2% to 5%. In addition to skyrocketing R&D costs, the biotechnological sector is confronted with high regulatory burdens which must be counterbalanced and renumerated by patent-enforced market exclusivity. Finally, solid IP protection is the cornerstone for the business model of many small biotech start-up companies, which often build on a single invention as their major intangible asset. Therefore, from an economic perspective, strong and harmonised IP protection for isolated from its natural environment or otherwise technically produced is considered patentable. This includes inanimate biologically active material such as proteins (eg, antibodies or enzymes), genes and DNA and RNA sequences. On the other hand, animate matter (eg, microorganisms, genetically modified animals) are considered patentable under the EPC. The EPC contains several exceptions to patentability which pertain to biotechnological inventions in the wider sense. In contrast to the United States, where, according to the Supreme Court’s decision in Diamond v Chakrabarty (447 US 303 (1980)), “anything under the sun made by man” is considered patentable, the following biotechnological inventions are generally excluded from patentability in Europe, mostly in view of moral or ethical considerations: • Inventions contrary to public order public or morality (Article 53a of the EPC), in particular those listed in Rule 28 of the EPC: • Processes for cloning human beings. • Processes for modifying the germline genetic identity of human beings. By patenting a biotechnological invention via the European Patent Office, a patent owner can ensure the protection of its patent across Europe By Ralph Minderop, Arwed Burrichter, Meikel Diepholz and Natalie Kirchhofer, COHAUSZ & FLORACK, Dusseldorf www.iam-magazine.com Patents in Europe 2011/201215 Patenting biotechnology inventions via the EPO • • • • • Uses of human embryos for industrial or commercial purposes. • Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal. Plant or animal varieties (Article 53b). Essentially biological processes for the production of plants or animals (Article 53b). Methods for treatment of the human or animal body by surgery or therapy (Article 53c). Diagnostic methods practised on the human or animal body (Article 53c). Despite these limitations, the protection afforded by the EPC is generally viewed as strong and adequate. Monsanto (C-428/08) the European Court of Justice held that in order to be protected, a gene must be fulfilling its function at the time of the alleged infringing act. The decision may change how such patent claims will be construed in the future when it comes to assessing their protective scope in litigation; patent practitioners may try to draft basic chemical-type claims on industrially produced inactive DNA, which would not be encompassed by the definition of genetic/biologically active material stipulated in the directive. However, many patent practitioners view Monsanto as a setback to the enforceability of patents directed to DNA sequences. DNA and gene patents There is no a priori bar to the patentability of genes or DNA sequences under the EPC. In fact, Rule 29(2) positively acknowledges that human gene sequences are patentable. However, as for all patent applications before the EPO, biotechnological inventions must meet the basic criteria of patentability (ie, novelty (Article 54), inventive step (Article 56) and industrial applicability Peptides and proteins (enzymes and antibodies) In claims, proteins and peptides are often characterised by structural features, their physiological activity and/or particular functional facts. In the prosecution of such applications before the EPO, the allowable breadth of the claims greatly depends on the detail of the disclosure of the claimed protein or peptide in the description of the application. Proteins may be structurally defined by their full amino acid sequence or just by the sequence of that part of the protein that is (Article 57)). Moreover, the invention must be sufficiently disclosed in the specification and claimed in a clear manner (Articles 83 and 84). To date, the majority of genes claimed in patent applications are derived from nature. Similar to new chemical compounds, genes as well as proteins are considered novel if they are isolated or produced for the first time, even if they are already present in nature (Rule 27(a)). In the post-genomics era, where the sequence of the human genome has been unravelled and most human genes have been cloned, patentable inventions can be expected to shift from srcinal gene sequences as such to genetically modified sequences, special splice variants with surprising technical effects or purposeful selections of subsequences. For human gene sequences, Rule 29(3) requires the applicant to disclose the industrial application (ie, function) in the patent application. Mere DNA sequences without indication of a function or practical use are considered to contain no technical teaching and are therefore not patentable under the EPC. The particular function of the DNA sequence may also have an effect on the scope of the claims in patent litigation. In necessary for its function. Regarding claims directed to antibodies, the minimum structural information necessary would be the heavy and light chain variable region sequences of the antibody, or at least the sequences of the complementarity determining regions of the heavy and light chain. The EPO is rather reluctant to grant patents directed to antibodies which, for example, are defined by the heavy chain variable region sequence or by single chain variable fragments only. If sufficient sequence determinants are included in the claim, the EPO will often grant protection of the antibody as such. However, patent protection is thereby limited to antibodies containing exactly these structural features. An even narrower scope of protection applies to an antibody defined by reference to the deposition of a cell line producing the new and inventive monoclonal antibody with a recognised depositary institution (Rule 31(1)(a)). Such definition is generally accepted by the EPO, but provides protection only for the specific antibody produced by the deposited cell line. To obtain a broader scope of protection, the applicant may try to claim antibodies or proteins with a minimum identity to specific sequences of the antibody or protein. For this, the applicant may disclose 16 Patents in Europe 2011/2012 www.iam-magazine.com Patenting biotechnology inventions via the EPO www.iam-magazine.com in the application several sequences with modifications in one or more amino acids, all providing the same desired technical effect. The question is whether under such conditions the claims must be directed to the specific embodiments disclosed, or whether the scope of the claims can be broadened by defining a minimum identity to one of the disclosed sequences or allows protection for the disclosed embodiments only. A generalisation beyond the exact sequence of a monoclonal antibody or peptide (eg, by using the phrase “at least 90% identity with...”) is possible for a claim which also includes a functional feature of the antibody or the peptide which cannot be derived from the state of the art. Thus, applicants would be well advised to include such functional features in the application in addition to the sequence data, since this may enable them to seek claims with a generalisation of the subject matter beyond the exact antibody sequence disclosed in the application. In summary, generalisations in claims directed to antibodies are allowable only if the solution of the problem underlying the invention was made credible over the full range of claimed antibodies or proteins. available only at the time of publication of the grant of the European patent or, where no patent is granted, 20 years from the date of filing. Microorganisms The majority of patents in the field of microbiology are directed to either a microorganism itself or a method employing a microorganism for the generation of a specific product. In contrast to the scientific definition of “microorganism”, in patent law the term also includes animal and plant cells as well as viruses and prions. The patenting of microorganisms generally requires deposition of the microorganism at an international depository authority (IDA). This is necessary since it is not usually possible to define a newly generated microorganism by a written description in enough detail to enable third parties to carry out the invention as required by Article 83. The Budapest Treaty ensures that deposition at one IDA is sufficient for all member states and organisations. However, this would mean that the deposited microorganism would become available to any third party upon publication of the patent application. In order to protect the rights of the applicant, the EPC has adopted the socalled “expert solution”, where the deposited sample may be made available only to an expert nominated by the applicant. Under the EPC, these samples then become freely destruction of the blastocyst, the board regarded this method as a case of “uses of human embryos for industrial or commercial purposes”, which is excluded specifically by Rule 28(c). Thus, products and methods related to embryonic stem cells are excluded from patentability. Methods and products related to the use of adult human stem cells do not fall under this prohibition and are thus patentable under the EPC. Stem cells Stem cells are particularly promising for the development of novel therapies. There are two types of stem cell: embryonic and adult. In principle, like all parts of the human body, cells are patentable only in an isolated form and in case the provision of the cell goes beyond a mere discovery. While products or methods related to adult human stem cells were always principally regarded as patentable, the patenting of products or methods related to human embryonic stem cells was a highly debated topic which was recently clarified by a decision of the Enlarged Board of Appeal. In Case G2/06 the board had to decide on a patent application by the Wisconsin Alumni Research Foundation on a method for obtaining embryonic stem cell lines which, at the filing date, could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which they were derived. Although the patent application did not include the step of isolating cells from a blastocyst, which inevitable leads to the Transgenic plants and animals According to Article 53(b), “animal and plant varieties or essentially biological processes for the production of plants or animals” are excluded from patent protection for lack of technical character. A process for the production of plants or animals is considered essentially biological if it consists entirely of natural phenomena such as crossing or selection (Rule 26(5)). On the other hand microbiological processes per se are not excluded from patentability under Article 53(b). The definition of “essentially biological processes” according to the EPC was recently clarified when the Enlarged Board of Appeal ruled on two referrals relating to processes for the production of tomatoes (G2/07) and broccoli (G1/08). Decision Patents in Europe 2011/201217 Patenting biotechnology inventions via the EPO G1/08 dealt with a patent application claiming a process for crossing and selecting broccoli hybrids which allegedly prevented cancer. In the claimed method molecular markers were used for the selection of specific hybrids for further breeding. The board decided that the mere fact of using technical means such as molecular markers in a breeding process was insufficient to confer technical character onto the process as a whole. However, the board concluded that a method for breeding plants which comprises a technical step that by itself adds a trait to a plant or an animal (eg, a step involving genetic engineering) is still to be considered patentable under the EPC. The same applies to transgenic plants and animals which are the products of genetic engineering. In Decision G1/98 the Enlarged Board of Appeal held that patent protection of transgenic plants is allowable as long as the transgenic plant is not considered a plant variety. This ruling was later confirmed for the patenting of transgenic animals (T315/03), although there is no sui generis protection system for animal varieties. Finally, moral issues present an additional bar to the patenting of transgenic animals. Rule 28(c) excludes from patent protection processes for modifying the performed on the human or animal body in vivo are excluded from patentability. Substances or devices for use in such methods, as well as all ex vivo or in vitro diagnostic methods, are patentable. Article 53(c) does not exclude products (in particular, biotechnological subject matter), pharmaceutical compounds and compositions for use in methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body. According to Article 54(4), known substances already comprised in the state of the art can still be patented if the invention constitutes the first use of such substances as a medicament. In addition, second (and further) medical use claims are allowable under Article 54(5) if the substance has already been used as a medicament, but only in a different medical indication. Instead of the Swiss-type claim, which was commonly used in the past, according to a recent Enlarged Board of Appeal decision (G2/08), claims directed to a second (or further) medical application should read “Sequence/Biopharmaceutical X for use in treating disease Y”. In the same decision the board ruled that claims directed to a known medicament for use in a known treatment of a disease are protectable by a second genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal and animals resulting from such processes. To address this exception, the EPO has developed a utilitarian balancing test which aims to assess the potential benefits of a claimed invention against its negative aspects. In T315/03 the Technical Board of Appeals had to decide on the patentability of the OncoMouse®, developed by Harvard researchers in the early 1980s for cancer research. The board held that the benefits outweighed the suffering of the animal and granted a patent. medical use claim, even if the only distinguishing feature with respect to the prior art is the provision of an – inventive – novel dosis regimen. Outlook Patenting of biotechnological inventions has come a long way since its advent in the early 1970s. With the expiry of the first patents on recombinant drugs (eg, insulin), generic products are surging onto the market. Biopharmaceutical innovator companies must weather this storm through smart patent lifecycle management and cultivation of a broad biotechnological patent portfolio. Recent years have shown that biotechnology offers cures and technologies beyond the Diagnostics and therapy In contrast to US patent law, methods for reach of conventional small molecules. The treatment of humans or animals by surgery or patent protection offered for biotech therapy and diagnostic methods are excluded inventions in Europe allows these from patentability under Article 53(c). innovations to translate into economic Under the EPC, only diagnostic methods success stories. 18 Patents in Europe 2011/2012 www.iam-magazine.com Patenting biotechnology inventions via the EPO Ralph Minderop is a senior partner with the law firm COHAUSZ & FLORACK. He has wide experience in the prosecution and litigation of cases in chemistry, pharmaceutical chemistry and biochemistry on behalf of German and international clients and gives strategic IP advice. He obtained his PhD in biochemistry. Ralph Minderop Senior partner [email protected] +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de www.iam-magazine.com Arwed Burrichter is a senior partner with the law firm COHAUSZ & Arwed Burrichter FLORACK. He isattorney. a renowned andobtained highly experienced European andthe German patent Having a PhD in chemistry from University of Southern California, Los Angeles, he prosecutes and litigates patents in the fields of chemistry, polymer chemistry, pharmaceutical chemistry and biochemistry and gives advice on strategic IP decisions. Senior partner [email protected] +49 211 90 490 0 Meikel Diepholz studied biotechnology in Braunschweig and San Diego and received a PhD at the European Molecular Biology Laboratory Heidelberg in the field of cryoelectron microscopy, protein structure and biochemistry. Dr Diepholz has authored and co-authored several high impact scientific publications. He joined COHAUSZ & FLORACK in September 2009 and is currently being trained as a patent attorney. Meikel Diepholz Natalie Kirchhofer obtained a graduate degree in biochemistry from the University of Tübingen. As a Fulbright scholar she attended Rockefeller University, New York and subsequently obtained a PhD at the MaxPlanck Institute of Biochemistry in Munich, investigating DNA double-strand break repair mechanisms. Dr Kirchhofer joined COHAUSZ & FLORACK in October 2010 and is currently being trained as a patent attorney. Natalie Kirchhofer COHAUSZ & FLORACK Germany www.cohausz-florack.de Technical expert [email protected] +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de Technical expert [email protected] +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de Patents in Europe 2011/201219 EU patents and the Unified Patent Court EU patents and the Unified Patent Court Progress towards the establishment of a single EU patent system has gained momentum recently, bringing the creation of a unified patent court closer to realisation By Rainer K Kuhnen and Michael Zeitler, Kuhnen & Wacker, Freising After almost half a century of striving for unified patent protection throughout the European Union, one of the biggest single markets on the planet, there is still no such system in place. However, after several years of stalemate, the development of a single EU patent system picked up new momentum at the end of 2009 and progress seems to have accelerated since the beginning of this year. In March 2011, 25 out of 27 EU member states finally agreed to an enhanced cooperation in order to resolve the language regime and move towards the creation of a unified patent protection system. On 27th June 2011 EU Commissioner Michel Barnier said, “We are now entering the home straight. Working closely with the European Parliament, the final objective – the creation of unitary patent protection – is within reach. If we maintain our present momentum and cooperative spirit, a unitary patent in Europe could be a reality within the next two years.” Background Today, inventions can be protected in Europe either by national patents or by socalled “European patents”. However, contrary to the name, a European patent does not actually provide protection throughout Europe by one unitary patent. European patents are granted by the European Patent Office (EPO) – an organ of 20 Patents in Europe 2011/2012 the European Patent Organisation established by the European Patent Convention (EPC) of 5th October 1973, which currently has 38 contracting states, including all 27 EU member states plus 11 non-EU states such as Switzerland, Turkey and Norway. However, rather than being one single patent after grant, a European patent is actually a bundle of national patents. The transformation of a European patent into an enforceable national patent requires an individual “validation” in each contracting state for which protection is sought. This usually requires that the patent specification be translated into the official national language of the contracting state. As a result, administrative costs can reach up to €32,000 when protection is sought in all 27 EU member states, of which approximately €23,000 can result from translation fees alone. In comparison, a US patent costs €1,850 on average. In addition to high post-grant costs, the EPC fails to provide for a centralised court system to adjudicate the validity of European patents, along with any infringement issues that might arise. The bundle of national patents resulting from a European patent must be individually administered and can be enforced only on a strictly national basis, even in cases of EUwide infringement where the claim wording is the same in each contracting state, leading to high litigation costs. Hence, while the current EPC system provides for a fairly reasonable centralised patent granting procedure, it is less than ideal in view of the exorbitantly high postgrant costs and the legal uncertainty with regard to infringement and invalidation. The EU patent reform process This complex and expensive system is the result of years of failed attempts to create a www.iam-magazine.com EU patents and the Unified Patent Court Figure 1 Overview of the EPC procedure Filing of European patent application Formal examination European search Central prosecution European publication of the application Substantive examination of application Validation required for all EPC member states Grant Opposition EPCH EPDE EPFR unified patent protection system for the European Union. In 1962 a first attempt to create a unified Community patent was initiated by A new way forward In March 2007, after various new debates and consultations, the commission set out its vision for reforming the European patent system and proposed a package deal. This included two proposed regulations for a future EU patent and a proposal for a mixed agreement regarding a future litigation system. In addition, the deal would include new regulations for cooperation between national patent offices and the EPO, as well as a revision of the EPC. The entry into force of the Lisbon means of an intergovernmental agreement, the so-called Community Patent Convention (CPC). However, CPC negotiations finally collapsed in 1989 due to a variety of unresolved issues regarding the language regime, an appropriate jurisdictional arrangement and constitutional problems in some member states. In 2000 the European Commission launched a new attempt to create a single Community patent. In order to avoid the constitutional problems that impeded the implementation of the CPC, this new approach was in the form of a proposal for a council regulation (COM (2000) 412 final) – unlike directives, which need to be transposed into national law, regulations become immediately enforceable as law in all EU member states simultaneously. Under the commission’s new proposal, Community patents would be issued by the EPO, thereby making use of the EPC’s wellestablished granting procedure. Under this plan, both national and European patents would co-exist with the Community patent system, leaving inventors free to choose which type of protection best suited their needs. With regard to affordability, the commission suggested reducing translation costs by not requiring any translation Treaty on 1st December 2009 introduced a new legal framework for the European Union, which explicitly provides a legal basis for creating an EU patent by two regulations: one for creating a unified EU patent to be decided under the ordinary legislative procedure and another separate regulation regarding the language regime, which would have to be decided under a special legislative procedure requiring a unanimous vote. In July 2010 the commission published a proposal for a council regulation on translation arrangements for the future EU patent. The language issue remained a sticking point and on 10th November 2010 the Competition Council held an extraordinary meeting to discuss the draft regulation on a future EU patent system. However, this attempt to reach unanimity was blocked by Spain, which was keen to prevent any discrimination against the Spanish language that might result by the EPC language regime (ie, English, German and French) being used as the basis for a future EU patent. In view of the fact that the Lisbon Treaty required unanimity on the language issue, the process appeared to have reached yet another dead end. However, after more than a decade of debating, the overwhelming majority of EPGB EPES EPIT Bundle of national patents Limitation www.iam-magazine.com beyond that already prescribed in the EPC for the patent grant. With regard to legal certainty, the proposal suggested setting up a new centralised Community tribunal within the framework of the European Court of Justice (ECJ), which would hear infringement and validity cases. On 3rd March 2003 negotiations on the proposed regulation resulted in a common political approach towards the Community patent by the EU Council. However, the council then failed to reach the requisite unanimous agreement for all aspects of the draft regulation on a number of occasions, in particular with regard to translation arrangements. Negotiations stalled without a final agreement in 2004. Patents in Europe 2011/201221 EU patents and the Unified Patent Court member states were now keen to solve the language issue with regard to both an EU patent and a unified patent court system. In December 2010, 12 member states proposed using the so-called “enhanced cooperation procedure”, which allows nine or more member states to move forward on a particular area if no agreement can be reached; other member states can opt to join at any stage before or after an enhanced cooperation has been launched. In the following months this proposal was supported by almost all member states except Spain and Italy – a total of 25 out of 27. This left Spain and Italy outside the process and without a vote to block any further progress towards an EU patent that would cover nearly all EU member states. On 15th February 2011 the European Parliament gave its consent to proceed with the enhanced cooperation and on 10th March 2011 the council authorised the launch of the enhanced cooperation. Figure 2 Future EPC procedure including EP patents with unitary effect 22 Patents in Europe 2011/2012 Formal examination European search Central prosecution European publication of the application Validation still required for non-EU member states and Spain and Italy Substantive examination of application Only one translation for 25 EU member states required Grant Opposition EPCH EPES EPIT European patent with unitary effect Classic European patents + European patents with unitary effect Limitation EU patent under enhanced cooperation On 13th April 2011 the commission presented two proposals for regulations implementing the enhanced cooperation: one on the EU patent itself and the other on the applicable translation arrangements. In a general approach, the EU Council agreed to the commission’s proposals on 27th June 2011. These two proposals would radically reduce the cost of patents in Europe (by up to 80%) and allow companies and individuals to protect their inventions through a single European patent granted by the EPO, which would then be valid in every EU member state participating in the enhanced cooperation (currently 25 of 27). The key points of the proposed regulations are as follows: • The patentee of an EP patent may apply for protection in participating member states at the EPO. • Patent applications can be submitted in any language. However, building on its existing working procedures, the EPO will continue to examine and grant applications in the three EPO languages – English, French and German. EU applicants which file their patent application in a language other than these three will be compensated for any translation costs they incur. Finally, after the patent is granted, the claims defining the scope of protection must be translated into the other two official languages. • For a transitional period of up to 12 years, European patents with unitary effect that are granted in French or Filing of European patentapplication German must be translated into English. Those granted in English must be translated into one other official language until high-quality machine • translations become available, in order to ensure the accessibility of patent information. EU patents with unitary effect will be administered by the EPO, including patentees’ requests for unitary effect, collecting, administering and remitting renewal fees and keeping a register of unitary EU patents, which would include legal information such as licences, transfers, limitations, revocations or lapses. The European and EU Patents Court These latest attempts to set up a unified patent jurisdiction resulted in a draft agreement on the European and EU Patents Court (EEUPC), a mixed agreement between the European Union and some EPC contracting states that are not EU members. The draft agreement proposes setting up the EEUPC, consisting of a Court of First Instance (with local and central divisions) and a Court of Appeal, with exclusive jurisdiction for both European and EU patents (ie, European patents with unitary effect). The ECJ would be responsible for ensuring the primacy of EU law and its uniform interpretation. In June 2009 the EU Council submitted a request to the ECJ on the compatibility of www.iam-magazine.com EU patents and the Unified Patent Court If the enhanced cooperation is not rejected by the ECJ, the creation of a unified EU patent by the two proposed regulations seems achievable by 2013 the draft agreement with the EU treaties. The ECJ rendered Legal Opinion 1/09 on 8th March 2011. Although it stated that the current draft for such a mixed agreement is incompatible with European law, this would not exclude appropriate amendments to bring it into line. Moreover, the ECJ confirmed that a court set up by member states through an international agreement could be compatible with the treaties. On 26th May 2011, after analysing the opinion and consideringways to address the ECJ’s concerns, the commission adopted a non-paper on solutions for a unified patent litigation system and a way forward (www.register.consilium.europa.eu/pdf/en/11/ st10/st10630.en11.pdf). According tothe nonpaper, any future patent litigation system should be based on the following pillars: • A unified patent court set up only by member states; participation of third states should be excluded. The European Union would not be a party. • Exclusive jurisdiction with regard to civil litigation relating to infringement and validity for both classic European patents and EU patents with unitary effect. Limiting the jurisdiction of the specialised patent court to classic European patents would render the unified patent protection unattractive and may even impede its creation, whereas limiting jurisdiction could lead to the establishment of two different common patent courts. Such duplication www.iam-magazine.com would not be reasonable, in particular given the limited number of competent judges and the risk of contradictory judgments. The unified patent court could therefore be set up by an agreement between member states on the creation of a common jurisdiction. The basic institutional architecture of the unified patent court as foreseen for the EEUPC should, however, be maintained. Remaining issues In addition to the fact that without Spain and Italy on board, complete EU coverage is not possible, substantial additional problems remain: • On 30th May 2011 Italy and Spain sued to block the enhanced cooperation for creating an EU patent on the basis that their exclusion constituted inadmissible language discrimination within the single market. • Other EU member states that are part of the enhanced cooperation (eg, Slovakia) have indicated that they may choose to withdraw from the procedure in light of ECJ Opinion 1/09, which was rendered just two days before the enhanced cooperation was adopted by the EU Council. • High-quality machine translations are not yet a reality. Although in March 2011 the EPO and Google entered into a longPatents in Europe 2011/201223 EU patents and the Unified Patent Court • • term agreement to collaborate on machine translations of patents into multiple European, Slavic and Asian languages, there are significant doubts as to whether the requisite quality is actually achievable within the transitional period. Regarding the EEUPC, a number of issues – including the composition of court panels, the competence of the divisions of the Court of First Instance, the concept of technically qualified judges and the language regime – still have to be resolved. Experienced infringement judges will have to educate their new colleagues. However, few German judges (almost 75% of all litigation in Europe takes place in Germany) have the capacity to educate non-German speaking colleagues with little or no experience of patent infringement. Summary If the enhanced cooperation is not rejected by the ECJ, the creation of a unified EU patent by the two proposed regulations seems achievable by 2013. In addition, with regard to the EEUPC, the European Commission’s non-paper appears to provide an appropriate solution to address the concerns set out in the ECJ’s opinion. Moreover, the establishment of the enhanced cooperation by 25 EU member states indicates, for the first time, that there is a strong political will to implement a unified patent system. According to insiders at the commission, Italy might soon join the enhanced cooperation, putting further pressure on Spain to give up its seemingly intransigent position. It seems that the European Union has never been closer to a solution for its current complicated and expensive patent system. Rainer K Kuhnen is a partner at Kuhnen & Wacker, based in Freising/Munich. He specialises in patent prosecution in the fields of Rainer K Kuhnen electrical engineering/electronics, physics, information and computer technology and network technology. Mr Kuhnen has a master’s degree in electrical engineering from the Technical University of Munich and also studied European IP law at Fernuniversität Hagen. He is a qualified German and European patent attorney, as well as a European trademark and design attorney. Mr Kuhnen is a member of the American Bar Association, the International Association for the Protection of Intellectual Property (AIPPI), the German and International Association for the Protection of Intellectual Property (GRUR), the American Intellectual Property Law Association (AIPLA), the European Patent Institute (EPI), the Licensing Executives Society (LES) and the Association of Intellectual Property Experts (VPP), among others. He is frequently invited to lecture on German and European patent practice, and has attended conferences and given presentations in several Asian countries. [email protected] +49 8161 608 318 Michael Zeitler is a partner at Kuhnen & Wacker. He joined the firm in 2008 as a specialist for the prosecution of sophisticated patents in the field of physics (in particular semiconductors, solid state physics and material sciences), as well as in electronic engineering. After studying physics, Dr Zeitler was awarded his master’s degree and subsequently his PhD from the University of Augsburg. He is a qualified German and European patent attorney, as well as a European trademark and design attorney. Before joining Kuhnen & Wacker, Dr Zeitler was head of patent and trademark prosecution at Qimonda AG, an IP manager at Infineon Technologies and a patent expert at Infineon Technologies AG. He worked on his diploma thesis in close cooperation with Hoechst AG. He is a member of AIPPI, GRUR, AIPLA, EPI, VPP and LES. Michael Zeitler 24 Patents in Europe 2011/2012 Patent attorney and partner Kuhnen & Wacker Germany www.kuhnen-wacker.com Patent attorney and partner [email protected] +49 8161 608 318 Kuhnen & Wacker Germany www.kuhnen-wacker.com www.iam-magazine.com Albania Albania By Gjergji Gjika and Evis Jani, Drakopoulos Law Firm, Tirana The court may order preliminary measures against the infringer if the plaintiff submits documents proving that 1. What are the most effective ways for its a rights have been infringed or that European patent holder whose rights infringement is very likely to occur; and cover your jurisdiction to enforce its provided that the plaintiff requests such rights in your jurisdiction? preliminary measures immediately after A patent right may be enforced through becoming aware of the infringement. administrative or civil proceedings. However, the rights holder must initiate Administrative proceedings may be civil proceedings within a time period initiated based on Decision of the Council defined by the court, which may not be of Ministers (DCM) 547/2008 on more than 15 days from the date on which amendments to DCM 205/1999 on the preliminary measures are granted. implementing provisions of the Custom Code. By virtue of DCM 547/2008, the holder of a patent right may submit a request for action to the General Customs Directory (GCD) if it has grounds to suspect a potential infringement of its IP rights. Following examination and control at the border, if the GCD’s regional offices identify goods as indicated in the decision, it should seize such goods and inform the patent holder, which should commence court proceedings within 20 days; otherwise, the goods will be released. A simplified procedure for the destruction of the suspected infringing goods may be applied by Customs without the need to determine whether the patent rights have been infringed, provided that the owner of the suspected infringing goods has submitted, within 10 days of notification of seizure of the goods, a declaration agreeing to the destruction the goods. Civil proceedings may be initiated based on Law 9947/2008. When ruling on the case, the court may decide to order: • Cessation of the infringement. • Destruction of the infringing items. • Damages. www.iam-magazine.com 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The courts are often assisted in their determination of patent validity or infringement issues by reports from technical experts with specialist knowledge of the particular subject matter of the patent at issue. With the guidance of local patent attorneys, the court can thus be assisted in highlighting the key issues of the matter at hand. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? In Albania, dual jurisdiction exists in relation to patent matters. As such, a matter involving the validity of a patent (eg, a nullity action) must be decided at first instance by the Board of Appeals of the Albanian Patent and Trademark Office (ALPTO). A decision of the ALPTO may be appealed to the Tirana District Court. However, patent infringement is handled by the Tirana District Court. In light of these subject-matter jurisdictional issues, the consolidation of a nullity and an infringement action is not feasible, and this often benefits the patent owner. Patents in Europe 2011/201225 Albania 4. To what extent is cross-examination parties can select to represent them in a of witnesses permitted during dispute? proceedings? Before the ALPTO, a party must be Cross-examination is permitted to the represented by a patent attorney, duly extent needed to complete and clarify the licensed by the ALPTO, while during court answers given by a witness; however, this proceedings a party must be represented by can take place only with the court’s an attorney who is a member of the Bar permission. Association. 5. What role can and do expert witnesses 11. Are the courts willing to consider the play in proceedings? reasoning of courts in other Expert witness reports play a decisive role jurisdictions that have dealt with in court proceedings involving patents with similar cases? regard to the technical part of the case. In ruling on IP cases, the courts will However, for the purpose of a final decision, consider the views of courts from other the expert’s witnesses and reports are jurisdictions on the same issues, reviewed in conjunction with other particularly if such opinions derive from the submitted evidence at the court’s European Patent Office (EPO) or other EU discretion. member states. 6. Is pre-trial discovery permitted? If to what extent? Under the Civil Procedure Code, if there are grounds to believe that particular evidence is important to the fact-finding process of a case, or that such evidence may be destroyed or be difficult to submit at a later stage, at the request of the interested party the court may decide to secure such evidence before the filing and/or initiation of a lawsuit. so, 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? In practice, defendants may delay proceedings by requesting the postponement of hearings for justified reasons, the appointment of new attorneys (who would then request time to become acquainted with the case) or the dismissal of a particular judge for valid reasons. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? At the request of the plaintiff, the court may issue a preliminary injunction where 7. Do the courts in your jurisdiction there is reason to believe that execution of the final decision may prove difficult. The apply a doctrine of equivalents? Neither statute nor case law follows the court may order preliminary measures doctrine of equivalents, although this may against the infringer if the plaintiff: change in the future. • Is the owner or rights holder. • Submits documents proving that its 8. Are certain patent rights (eg, those rights have been infringed or that infringement is likely to occur. relating to business methods, software and biotechnology) more diff icult to • Requests the application of preliminary measures immediately after becoming enforce than others? In principle, business methods and software aware of the infringement. are not patentable under Albanian law. However, biotechnology-related rights may The court may order the following be protected. preliminary measures: • Prevention of actual or expected 9. How far are courts bound by previous infringement. decisions in cases that have covered • Prevention of the entry of the suspect similar issues? goods into circulation. The Albanian courts are not bound by the • Protection of key evidence, provided decisions of any other courts covering that confidential information is similar issues, with the exception of protected in accordance with the decisions of the Unified College of the applicable law. Supreme Court, which is the highest civil • Seizure or recall from circulation of the court instance in Albania. suspected infringing goods or seizure of the facilities used to manufacture such goods. 10. Are there any restrictions on who Such evidence shall be secured by the court provided that the plaintiff justifies the reasons for such action and the facts that such evidence shall prove. 26 Patents in Europe 2011/2012 www.iam-magazine.com Albania Should experts be appointed during proceedings, their fees will vary based on their experience and the volume of work • Blocking of immovable and movable property owned by the suspected infringer, including bank accounts and other assets, in order to ensure that damages can be recovered. However, the rights holder must initiate civil proceedings within a time period defined by the court, which may not be more than 15 days from the date on which 17. How are damages awards calculated? Is it possible to obtain punitive damages? In order to calculate damages, the court shall take into account the negative aspects of such infringement, including lost profits, any unfair profits made by theinfringer, the moral damage caused to the rights holder and the royalties that the infringer wouldhave paid had authorisation foruse been granted. Punitive damages are not available in preliminary measures are granted. Albania. 14. How much should a litigant plan to 18. How common is it for courts to grant pay to take a case through to a decision permanent injunctions to successful at first instance? plaintiffs and under what circumstances The administrative tariff for submitting a will they do this? claim is Lek12,000 (approximately €86) for If the plaintiff can prove the infringement of claims with a value up to Lek100,000 its patent rights, the court will issue a (approximately €715), and 3% of the value of permanent injunction ordering the the claim for claims over Lek100,000. defendant to stop the infringement. Attorneys’ fees are agreed between the parties. In addition, should experts be 19. How long does it take to obtain a appointed during proceedings, their fees decision at first instance and is it will vary based on their experience and the possible to expedite this process? volume of work. There is no mandatory term for the completion of court proceedings at first instance; however, in practice, the courts 15. Is it possible for the successful party in a case to obtain costs from the losingtend to close legal proceedings within one year of filing of the relevant lawsuit. party? Under Article 106 of the Civil Procedure Code, court expenses must be borne by the 20. Under what circumstances will the losing party for the part of the claim losing party in a first instance case be accepted by the court. granted the right to appeal? How long does an appeal typically take? Any party wishing to appeal the first 16. What are the typical remedies granted to a successful plaintiff by the instance decision may submit an appeal to the appeal court within 15 days of courts? Typical remedies granted by the courts are publication of the first instance decision. cessation of the infringement and The Civil Procedure Code does not set compensation for damages (to be paid by down a timeframe within which appeal the infringing party). proceedings should be initiated or completed. www.iam-magazine.com Patents in Europe 2011/201227 Albania 21. Are parties obliged to undertake any23. Has your jurisdiction signed up to type of mediation/arbitration prior to the London Agreement on Translations? bringing a case before the courts? Is If not, how likely is it to do so? Albania has not signed the London ADR a realistic alternative to litigation? Mediation/arbitration procedures can be Agreement on Translations however, it is used if agreed by the parties. The agreement expected to do so in the near future due to reached through mediation and the decision the harmonisation of the national of any properly constituted arbitration legislation with EU law. tribunal is final for the parties. International arbitration awards are also 24. Are there any other issues relating to enforceable if they accord with the the enforcement system in your country applicable provisions of the New York that you would like to raise? Convention 1958. To date, all searches with the ALPTO for registered IP rights may be performed only 22. In broad terms, how pro-patentee are by physically filing a request with the ALPTO. In order to improve the search the courts in your jurisdiction? The courts are always pro-patentee if such process, as well as to reduce the time taken patent is registered with the ALPTO to perform such searches, the ALPTO, in through national, international (World cooperation with WIPO, plans to prepare and Intellectual Property Organisation (WIPO) implement an online database system, which Patent Cooperation Convention) or EU will make it easier for interested parties to (EPO) proceedings. search all registered IP rights online. Gjergji Gjika graduated from the Law School of the University of Tirana. He has several years’ experience of prosecution and contentious work for various IP rights. He is a trademark agent registered with the ALPTO and a European patent attorney registered with the EPO. Mr Gjika represents foreign and domestic clients in a variety of IP matters and is involved in various local and international publications. He joined Drakopoulos Law Firm in 2008 as a senior associate and was made partner in 2010. Gjergji Gjika Evis Jani graduated from the Law School of the University of Tirana and holds an LLM in European law from the University of Geneva. She is a trademark and patent agent registered with the ALPTO and a European patent attorney registered with the EPO. She has experience of the broad spectrum of IP rights protection locally and follows international IP developments by attending various seminars overseas hosted by, for example, WIPO. She joined Drakopoulos Law Firm in 2008 as a senior associate. Evis Jani 28 Patents in Europe 2011/2012 Partner [email protected] +355 42 400 900 Drakopoulos Law Firm Albania www.drakopoulos-law.com Senior associate [email protected] +355 42 400 900 Drakopoulos Law Firm Albania www.drakopoulos-law.com www.iam-magazine.com Austria Austria By Peter Israiloff, Barger, Piso & Partner, Vienna instance court consists of two professional judges and one expert, usually a patent attorney. One of the professional judges is 1. What are the most effective ways for a the chairperson. It is also common for the court to appoint an expert whose opinion is European patent holder whose rights cover your jurisdiction to enforce its also taken into account. rights in your jurisdiction? In civil matters, actions and requests for 3. How do your country’s courts deal interim injunctions based on alleged with validity and infringement? Are they infringement may be brought exclusively handled together or separately? before the Vienna Commercial Court. The civil court rules on infringement only. If Jurisdiction in criminal matters rests with the defendant objects to the validity of the the Vienna Provincial Court for Criminal patent or SPC, the proceedings will be Matters. Furthermore, a patent holder may interrupted so that it can file a nullification apply to Austrian Customs for seizure of any infringing goods when they are imported into Austria, as part of the European Economic Area, for the first time; thereafter, a court action may be commenced. A patent or supplementary protection certificate (SPC) holder or its exclusive licensee may apply to the Nullity Department of the Austrian Patent Office for a declaratory decision against anybody that allegedly infringes the patent or SPC. Declaratory proceedings may be launched even in case of the mere intention to take such steps. Furthermore, the owner of a senior patent may apply to the Nullity Department for a decree that the commercial use of a junior patent entails the full or partial use of its invention. Moreover, the holder of a senior patent or SPC, or any third party, may file an opposition against a junior patent application or nullification proceedings against a junior patent based on lack of novelty and/or inventiveness. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? As any infringement proceedings must be launched before a single court, it may be assumed that the judges have specialist experience. In civil matters the first www.iam-magazine.com action with the Austrian Patent Office or, in case of a European patent that has been in force for less than nine months, an opposition with the European Patent Office. Upon a final, uncontestable decision on the patent’s validity, the court action will continue. 4. To what extent is cross-examination of witnesses permitted during proceedings? The court proceedings are oral, direct and open to the public. The court must rule based on the evaluation of evidence (ie, documents, private expert opinions, court expert opinions, witness testimony). In the course of the oral hearings, which may be preceded by several preparatory writs, the case is discussed and cross-examined. 5. What role can and do expert witnesses play in proceedings? The opinion provided by the courtappointed expert helps the court to understand the matter. However, private expert opinions submitted by all parties must be considered. 6. Is pre-trial discovery permitted? If so, to what extent? Unlike, for example, the United States, Austria has no discovery system. However, the defendant must assist in providing Patents in Europe 2011/201229 Austria evidence if the plaintiff has difficulties in proving the facts. If a request for a preliminary injunction has been issued alongside infringement proceedings, this request may be directed to securing not only the claim itself, but also measures for preserving evidence. Such a preliminary injunction may be ordered without hearing the defendant if a delay might result in irreparable damage to the plaintiff or if there is a risk that evidence will be destroyed. Either during or outside of an infringement suit, any party which has suffered infringement of a right granted to it by the patent may request information about the srcin and distribution channels of the infringing goods or services. The request for information must be directed either to the infringer itself or to any person that has dealt directly or indirectly with the infringing goods or services. If necessary, the request may be followed by legal action. In criminal proceedings the infringer’s premises may be searched for evidence to be seized. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Two types of equivalent are distinguished: those that are still covered by the scope of the patent (so-called technical equivalents) or should be regarded as ineffective. Such patents are therefore sometimes difficult to enforce. The same may hold true for biological patents, because there exist some restrictions to patentability of biological matters on which a defendant may rely. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Case law is unknown in Austria – courts are bound only by statutory law. However, courts may choose to cite related previous decisions. If one of the parties refers to a previous decision, the court must deal with it in its reasoning; failure to do so may give rise to a complaint or appeal. 10. Are there any restrictions on whom parties can select to represent them in a dispute? Before the courts, parties must be represented by an attorney at law or anotary public. In patent matters the representativ es may be accompanied by patent attorneys. Before the Austrian Patent Office or the Supreme Patent and Trademark Board, there is no statutory requirement for representation provided that the party is based in the European Economic Area or in Switzerland. However, before these and those that are already beyond the scope of the patent (ie, patentable or inventive equivalents). A mere technical equivalent (ie, where just some features have been exchanged without altering the subject of the invention and lying within the knowledge of a person skilled in the art at the priority date of the patent) is covered by the scope of protection granted by the patent and therefore constitutes an infringement. On the contrary, an inventive equivalent isnot regarded as infringement. authorities, a party is usually represented by a patent attorney rather than anattorney at law or a notary public. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There exist some measures that are, as such, not regarded by law as inventions, including discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts and computer programs. However , all of these measures are patentable, provided that they are directed to or combined with technical features. If the plaintiff is the holder of a patent combining such mental features with technical features, the defendant may argue that the patent actually covers, for example, a business method or a piece of software, and thus either should never have been granted 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? In proceedings before the court each party has the opportunity to submit requests for extension of terms or postponement of hearings. If such a request is filed by both parties, it is usually granted. If such a request is filed by the defendant with due grounds for consideration, it will also be granted. Otherwise, especially upon a counterrequest by the plaintiff, any request for delay will be rejected. In case of nullification proceedings in the course of interruption of infringement proceedings, the parties cannot request a delay because such proceedings are accelerated. In regular nullification proceedings or an action for a declaratory 30 Patents in Europe 2011/2012 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Decisions of courts in other jurisdictions are not binding on the Austrian courts. However, if one of the parties cites such a case, the court must refer to it in its statement of grounds. www.iam-magazine.com Austria 17. How are damages awards calculated? Is it possible to obtain punitive damages? The appropriate monetary compensation is usually calculated based on equivalent licence fees. The profits realised by the 13. Is it possible to obtain preliminary defendant are calculated on the basis of the injunctions? If so, under what defendant’s accounts. However , in most cases the monetary remedy consists of circumstances can this be done? Preliminary injunctions may be requested double the usual licence fee because, in together with the demand for a judgment in general, the plaintiff does not want to infringement proceedings, even if no risk is publish the profits it has lost. Punitive proven. damages are not available in civil court proceedings, although publication of the 14. How much should a litigant plan to judgment in several newspapers or pay to take a case through to a decision at magazines, which is usually very costly, is regarded as a form of punitive damages. In first instance? The costs of a patent attorney assessing an criminal patent infringement matters the infringement before litigation may range from infringer may be fined up to 360 times the €4,000 to €12,000. The costs for daily rate of calculating fines or, in case of a infringement proceedings depend on the professional infringement, sentenced to value in dispute, which hasa statutory imprisonment of up to two years. As a minimum of €36,000. The overall costs for a private participant to the criminal case, the patent holder until a first instance decision patent holder may also claim compensation, regarding a preliminary injunctionrange from which may be regarded as punitive damages. €9,000 to €22,000. Until a first judgment regarding a permanent injunction, the costs 18. How common is it for courts to grant range from €9,000 to €42,000. However, permanent injunctions to successful these figures reflect only a range of costs and plaintiffs and under what circumstances may be higher in complicated matters. will they do this? The first claim of a plaintiff in infringement 15. Is it possible for the successful partyproceedings is generally for discontinuance decision, several extensions of terms may be granted on request. After a while, such requests by the defendant will be granted only with the plaintiff’s consent. in a case to obtain costs from the losing of the infringement. When a claim is party? successful the court must order a permanent The losing party must refund the costs of the injunction. However, in cases in which the proceedings and representation to the infringed patent has already lapsed, so that winning party. However, the refund is the plaintiff’s request will be directed to calculated on basis of statutory law, so it will monetary remedies only (eg, compensation, not cover all of the winning party’s costs. damages), the court will primarily order, in case of proven infringement, the drawing up of accounts. It will also rule on the liquidated 16. What are the typical remedies granted to a successful plaintiff by thecourts? demand of the plaintiff. The remedies granted to a successful plaintiff encompass interim or permanent 19. How long does it take to obtain a injunctions, destruction of infringing goods, decision at first instance and is it drawing up of accounts and publication of possible to expedite this process? the decision or judgment, as well as In main proceedings (ie, those directed monetary remedies depending on the type of towards a permanent injunction), a infringement. In case of mere unauthorised judgment might take several years. use of a patent, the plaintiff may demand Provisional proceedings (which are usually appropriate monetary compensation, or launched by the plaintiff together with the double that compensation if the main proceedings and are directed towards infringement was based on gross negligence an interim injunction) usually lead to a first or intent. instance decision after several months to In case of wilful patent infringement, the one year. There are few ways to expedite plaintiff may demand damages instead of this process, because even in provisional appropriate monetary compensation, proceedings there is usually at least one oral including the profits which it has lost or hearing, which may be postponed for surrender of the profits gained by the different reasons (eg, at the defendant’s defendant from the infringement. request). Disadvantages suffered as a result of wilful patent infringement, but not leading to 20. Under what circumstances will the monetary loss, may also be claimed. losing party in a first instance case be www.iam-magazine.com Patents in Europe 2011/201231 Austria granted the right to appeal? How long does an appeal typically take? The losing party at first instance may appeal to the court of second instance (ie, the Vienna Upper Provincial Court). The second instance judgment must then contain a decision on whether an ordinary (regular) revision to the Supreme Court is admissible. Even if it is not admissible, the losing party might file an extraordinary revision, which need not be accepted by the Supreme Court, but rather may be rejected before trial. The timeframe for an appeal or revision is around two years for each. A first instance decision (of the Nullity Department) in nullification proceedings launched after the interruption of court proceedings takes around 18 months. Such decision may be appealed to the Supreme Patent and Trademark Board, whose final decision will take a similar time. effective against the plaintiff (eg, in case of a claimed right of prior use). The question of meritorious validity is to be solved by the Nullity Department in a nullification action. Given a valid patent, it is the court’s task to decide whether infringement occurred, whereby the scope of protection is defined by the patent claims, supported, if necessary, by the description and drawings, if available. Mere technical but not inventive equivalents are to be regarded as falling under the scope of the patent. In light of the abovementioned criteria, it is not possible to state whether the courts are pro-patentee. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? To date, Austria has not signed the London Agreement. A legal amendment in 2009 cancelled the relevant passages of the law referring to translations into German of 21. Are parties obliged to undertake any European patents issued in English or type of mediation/arbitration prior to French. The amendment will come into force bringing a case before the courts? Is ADRalong with Austrian ratification of the London Agreement, and will have effect only a realistic alternative to litigation? There is no obligation to undertake on European patents granted after thatdate. mediation and/or arbitration before going to At present, it appears that ratification has court. However, it is usual to try to settle the been postponed for several years. problem by negotiations. On the other hand, it is important for a patent holder to send a 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Austrian Product Piracy Act strengthens the position of rights holders, in addition to the EU Regulation on Customs Action against Goods Suspected of Infringing Certain IP Rights. Goods seized by Customs on a granted application for action willbe destroyed with the consent of the rights holder, provided that the importer (and alleged infringer) does not file an opposition within10 days. Even if a 22. In broad terms, how pro-patentee arerights holder has not applied for acustoms action, its Austrian representative (eg, patent the courts in your jurisdiction? The court is obliged to decide only on the attorney) will be informed by Customs if preliminary questions of whether the patent goods are to be imported which clearly is or was valid and whether it is or was infringe an IP right. cease and desist letter to an infringer before launching a suit, because from receipt of such letter, patent infringementis regarded as wilful, which affects monetary remedies in infringement proceedings. In general, ADR is not a realistic alternative to litigation because it is not usually prearranged between a patent holder and an infringer. Moreover, ADR decisions do not exclude an eventual court case. After studying industrial technology, since 1969 Peter Israiloff has worked in the IP field. He holds an engineer diploma and is a doctor of technical sciences from the Vienna Technical University. He is a member of the International Association for the Protection of Intellectual Property and handles patents and utility models in all fields of technology except biochemistry. In addition, Mr Israiloff is a specialist in Austrian, EU and international trademark matters, and as such member of and Austrian contributor to the International Trademark Association. 32 Patents in Europe 2011/2012 Peter Israiloff Partner [email protected] +43 1 512 33 99 Barger, Piso & Partner Austria www.bapipat.at www.iam-magazine.com Belgium Belgium By Kristoff Roox, Christian Dekoninck and Sarah van den Brande, Crowell & Moring, Brussels is recommended only in clear cases of infringement where there are no doubts as to the infringer’s intentions. 1. What are the most effective ways for 2.aWhat level of expertise can a patent European patent holder whose rights owner expect from the courts in your cover your jurisdiction to enforce its jurisdiction? Belgium has no specialist patent courts. rights in your jurisdiction? A patent holder has several options to However, the Patent Act provides that only enforce its rights in Belgium. It can initiate five Belgian courts can hear patent cases, in proceedings on the merits, summary order to ensure a degree of specialisation. proceedings, ex parte proceedings or saisieBelgian judges typically have a purely legal, contrefaçon proceedings. non-scientific background. Therefore, in Two types of proceedings on the merits are available: classic and accelerated. Classic proceedings take longer, but in such proceedings the patent holder can apply for both injunctive relief for the future and damages for past infringements, as well as for other measures available under the Patent Act (see Question 16). Accelerated proceedings are also on the merits, but the procedure is the same as in summary proceedings, with no need for urgency. In accelerated proceedings the patent holder can apply only for injunctive relief and publication measures, butnot for damages. When urgency is established, the patent holder can also initiate summary proceedings in order to obtain preliminary injunctions (see Question 13).In extremely urgent matters requiring an immediate decision to prevent or stop the infringement, the patent holder can apply forex parte measures. Another option is saisie-contrefaçon– which is an ex parte procedurespecifically tailored to the infringement of IP rights which can be used to secure evidence and, as an accessory, to freeze allegedly infringing goods(see Question 6). Finally, the patent holder can file a criminal complaint as patent infringements are considered to be criminal offences. This www.iam-magazine.com complex patent litigation the courts tend to use a court-appointed expert to provide technical or scientific advice. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? The Belgian courts are competent to deal with infringement and validity; there are no separate courts for validity issues. Although infringement and validity are not always dealt with simultaneously, this is often the case. Indeed, in most patent infringement cases the defendant will invoke the invalidity of the patent as a defence and file a counterclaim based on one of the grounds for nullification set out in the Patent Act. If, on the other hand, the alleged infringer initiates proceedings in order to obtain a declaratory judgment for noninfringement or invalidity, in most cases the patent holder will file a counterclaim for patent infringement. 4. To what extent iscross-examination of witnesses permitted during proceedings? The Judicial Code establishes a set of rules for calling witnesses. Witnesses will testify before the judge who conducts the examination. The parties’ Patents in Europe 2011/201233 Belgium lawyers cannot conduct an examination or cross-examination. In patent cases (and commercial matters in general), witnesses are rarely heard. Commercial proceedings such as patent litigation are mostly based on written evidence. the same result) as the patented invention. discovery measure. This is anex parte procedure which can be used for two purposes: for a descriptive seizure (ie, securing evidence to prove the existence, extent and srcin of the patent infringement) and as an accessory for an effective seizure (ie, freezing allegedly infringing goods). To obtain an order for a descriptive seizure, it is sufficient that there be a prima facie valid and enforceable patent and that the allegation of infringement be plausible. These conditions are usually met. An effective seizure can be ordered only on the additional conditions that the existence of the infringement cannot be reasonably contested (eg, on the basis of a foreign judgment or an expert report), and that the interests of the patent holder prevail over those of the alleged infringer or the general interest. The judge can also request the deposit of a guarantee before granting anymeasure. can represent parties in court. It is possible for a party to represent itself, but this is not recommended in patent cases. Patent attorneys are not allowed to represent parties in court. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? 5. What role can anddo expert witnesses In general, no type of patent is more play in proceedings? difficult to enforce than others. However, As stated above, patent litigation is complex patents of any typeare unlikely mostly based on written evidence. The to be dealt with in summary parties are free to submit any evidence proceedings, as it will be difficult to they wish. In patent litigation, technical establish prima facie infringement. For reports from patent attorneys or other such complex matters, where the experts are usually submitted. Such difficulty lies in the technology itself reports have the same valueas a party’s rather than in the legal questions, the statement. If there is still any doubt as to Belgian courts will most likely appoint a technical issues, the court can appoint judicial expert. an independent expert. 9. How far are courts bound by previous 6. Is pre-trial discovery permitted? Ifdecisions so, made in cases that have to what extent? covered similar issues? There is no pre-trial discovery in As a general rule, Belgian courts are not Belgium. A party can request that the bound by decisions of other courts in other party submit specific documents similar cases, whether Belgian or foreign. only if such documents are relevant to the case and if the other party should 10. Are there any restrictions on who have or is presumed to have these parties can select to represent them in documents. a dispute? Moreover, the Judicial Code provides Only Belgian or foreign lawyers for a “counterfeit seizure” – a kind of registered with one of the Belgian bars 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Equivalents are liable for patent infringement when they produce a similar technical effect in a similar way (same function) and a similar result that is not necessarily identical (leading to 34 Patents in Europe 2011/2012 11. Are courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Even though Belgian courts are not bound by it, they can take into account the reasoning of other courts that have handed down decisions in similar cases. The Brussels courts tend not to look at foreign judgments, whereas theAntwerp courts are more inclined to do this. It is unlikely that foreign judgments can be used to overcome the prima facie validity of a European patent, but they might play a role in establishing noninfringement. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Usually, a defendant will invoke the nullity of the plaintiff’s patent to delay proceedings. It can file a counterclaim within the framework of the infringement proceedings or initiate separate proceedings in order to obtain a www.iam-magazine.com Belgium declaratory judgment of the invalidity of the plaintiff’s patent. If separate proceedings are initiated, the courts may stay the infringement proceedings. If still possible, the defendant may file an opposition before the European Patent Office (EPO); in such cases the Belgian courts tend to stay the proceedings, although this is not the case in summary proceedings. To counter these delaying tactics, in urgent matters the plaintiff can initiate summary proceedings to obtain a preliminary injunction. attorney is required. The costs of litigation on the merits at first instance in a matter may amount to between €50,000 and €150,000. • publication of the judgment. If infringement is proven, the court will usually grant damages and an injunction against the infringer. In the event of bad faith on the part of the infringer (which is rarely accepted), the patent holder can apply to forfeit infringing goods and an account of profits by way of compensation. However, such alternatives will be deducted from the final compensation. 15. Is itpossible for the successful party in a case to obtain costs from the losing party? In principle, costs are recoverable. A distinction should be made between legal costs on the one hand, and lawyers’fees on the other. As a rule, the unsuccessful party will be ordered to bear all legal costs (ie, costs related to service of documents, registration on the court 13. Is it possible to obtain preliminary docket, court-appointed expert fees, injunctions? If so, under what witness hearings (if any) and other circumstances? expenses). Lawyers’ fees are recoverable In urgent matters, patent holders can initiate only on a fixed-rate basis, in principle summary proceedings in order to obtain determined on the amount claimed. preliminary injunctions. Preliminary Despite the fact that these rates were injunctions will be granted under the recently increased, generally they do not following conditions: cover all lawyers’ fees. • Preliminary injunction proceedings are available only when there is“urgency”– 16. What are the typical remedies granted that is, when the patent holder has to a successful plaintiff by the courts? reason to fear imminent damage in the The Patent Act provides for several absence of a preliminary injunction and remedies, such as injunctions against the when the mere initiation of proceedings infringer and intermediaries, damages, on the merits would not lead to a timely supply of information regarding the decision to prevent such imminent (scope of) infringement, recall and damage. destruction of the infringing goods and • To obtain a preliminary injunction, the patent holder must establish the existence of a prima facie valid patent and provide prima facie evidence of the infringement. In preliminary injunction proceedings, no full legal analysis of the parties’ IP rights is carried out. Belgian courts generally presume that European patents areprima facie valid, even if opposition proceedings are pending before the EPO. Preliminary injunctions will be granted only after considering the various interests at stake (ie, the interests of both the patent holder and the alleged infringer, as well as those of third parties and the general public). In general, however, the courts often findin favour of the patent holders in order to protect investments, research and development. 17. How are damages awards calculated? Is it possible to obtain punitive damages? In principle, all damages caused by patent infringement must be compensated: direct damage (ie, the loss of profits caused by the sale of a competing infringing product) and indirect damage (ie, loss of reputation or exclusivity). The Belgian courts enjoy a 14. How much should a litigant plan tolarge degree of discretion inawarding pay to take a case through to a decision damages. In certain cases a detailed at first instance? calculation of the damages is made based It is difficult to provide for a range of on, for example, accounting evidence costs on patent litigation, as these submitted by the claimant and/or an depend on several factors (eg, the expert. The importance of the complexity of the case, the number of infringement and the duration thereof pleadings to be filed, possible expert are often taken into consideration when testimony, pre-trial costs). Moreover, in determining damages. When the most cases the assistance of a patent compensation cannot be determined by www.iam-magazine.com Patents in Europe 2011/201235 Belgium the court on the basis of objective criteria, the court may grant compensation as a lump sum based on an assessment in equity (ex aequo et bono). Punitive damages are not allowed under Belgian law. However, in certain cases the courts may order the forfeiture of infringing goods. In practice, this may be equivalent to an award of punitive damages. appealed. The grounds for appeal are not limited and no permission to appeal is required. Appeal proceedings are a re-hearing of both the facts and the legal issues. As a rule, an appeal must be lodged within 30 days of serving the first instance judgment. This period is extended for parties located abroad. Appeals relating to substantive proceedings take between two and three years, depending on the circumstances of 18. How common isit for courts to grant the case (eg, its complexity and the permanent injunctions to successful number of parties involved). Appeals plaintiffs and under what circumstances relating to injunction proceedings or will they do this? summary proceedings generally take less A permanent injunctioncan be ordered time (six months to one year). only by the judge dealing with the merits. Appeal court decisions can be If patent infringement is established, the appealed to the Supreme Court, but only court must issue an injunction against all on points of law. These proceedings take infringers designed to stop the around two years. infringement; the Patent Act does not allow the court to establish infringement 21. Are parties obliged to undertake any but not to issue an injunction. The type of mediation/arbitration prior to injunction will remain valid for as longas bringing a case before the courts? Is the patent remains valid. ADR a realistic alternative to litigation? There is no obligation to undertake any 19. How long does it take to obtain a type of mediation or arbitration before decision at first instance and is it bringing a case before the courts. Patent possible to expedite this process? disputes may be handled by ADR. The A classic infringement trial on the Belgian Mediation and Arbitration merits may take 12 to 15 months at first Centre has built up a strong reputation instance. Accelerated proceedings on the merits may take four to eight months. Summary proceedings may take anywhere from six to eight weeks to four to eight months. Everything depends on the court’s schedule, the speed of the production of evidence, thecomplexity of the case, the number of parties involved, the exchange of written pleadings by the parties and the appointment of an expert. over the years. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? As a rule, the Belgian courts are impartial – but in practice, they tend to be rather pro-patentee. However, the court’s approach depends on the particular circumstances of the case. 23. Has your jurisdiction signed up to the London Agreement on Translations? 20. Under what circumstances will theIf not, how likely is it to do so? losing party in a first instance case beBelgium has not yet ratified the London granted the right to appeal? How long Agreement on Translations. As language does an appeal typically take? issues are usually sensitive in Belgium, it Almost all first instance judgments, might take some time before Belgium including interim judgments, may be ratifies the London Agreement. 36 Patents in Europe 2011/2012 www.iam-magazine.com Belgium Kristof Roox specialises in IP litigation in a variety of technological and commercial fields, with a particular focus on complex patent litigation in the pharmaceutical and life sciences sector. He advises on many aspects of IP portfolio management, including licensing, protection of trade and domain names, trade secrets, counterfeiting and piracy, technology transfer and strategic IP planning. He also has extensive experience in a wide variety of media law issues. In addition to traditional IP litigation and counselling, Mr Roox is regarded as an expert in the regulatory aspects of life sciences, and Kristof Roox Partner [email protected] +32 2 282 4082 Crowell & Moring Belgium www.crowell.com assists in procedures before the European Medicines Agency. Mr Rooxclients also regularly speaks and publishes on patent law. He is recommended by several legal guides, such as Chambers Europe.The recent IAM publication The World’s Leading Life Sciences Patent Litigators 2010 describes him as “tenacious” and recognises his work in the biotechnology field. www.iam-magazine.com Christian Dekoninck specialises in IP law, focusing on trademark and patent litigation, as well as advertising law. He obtained his law degree from the Catholic University of Leuven and his LLM in IP law from the Catholic University of Brussels. In 2000 he began working as in-house counsel for a record company, but soon became a member of the Brussels Bar. He is active in several professional associations, such as the International Association for the Protection of Intellectual Property (AIPPI), the Benelux Association for Trademark and Design Law (BMM) and the Belgian Copyright Association (ABA). He regularly speaks and publishes on trade practices and IP law. Christian Dekoninck Sarah van den Brande specialises in IP and general commercial law, focusing on patents, trademarks and copyright. She obtained her LLM in 2006 from the University of Ghent and her LLM in IP law in 2007 from the Catholic University of Brussels. She has been a member of the Brussels Bar since 2007 and is active in several professional associations, such as the AIPPI, the BMM and the ABA. She occasionally speaks and publishes on IP law. Sarah van den Brande Lawyer [email protected] +32 2 282 4082 Crowell & Moring Belgium www.crowell.com Lawyer [email protected] +32 2 282 4082 Crowell & Moring Belgium www.crowell.com Patents in Europe 2011/201237 Cyprus Cyprus By Phivi Tramountanelli, Michael Kyprianou & Co LLC, Nicosia • The patent does not reveal the invention in a satisfactory manner, clearly and fully so that the invention can be executed by an expert in the field. The right to the patent did not belong to the person to which the patent was granted. 1. What are the most effective ways for a European patent holder whose rights • cover your jurisdiction to enforce its rights in your jurisdiction? The most effective way for a European patent holder to enforce its rights in Cyprus The court then has the right to request is to file a court application for a freezing whatever it needs for the case from the order until its case is heard by the courts. patent owner. Every invalid patent, claim or part of the claims is considered to be invalid 2. What level of expertise can a patent from the date of grant of the patent. owner expect from the courts in your jurisdiction? In December 1997 Cyprus entered the European Patent Organisation and became a member of the Patent Cooperation Treaty. On 1st April 1998 the new Cypriot Patent Law was enacted as Law 16(I)/1998 and amending laws. The new law revised the existing Patent Law to deal with current legal issues. There are no specialised courts in Cyprus that deal with IP rights. The courts have only basic expertise and knowledge because very few patent cases come before the district courts or the Supreme Court. The majority of cases are settled at the time of anapplication for an interim order (injunction).However, some cases do proceed to full trial. Whena case proceeds to full trial the parties are expected to call experts in the specific area of the patent in question to explain to the judges the technical aspects of the patent. An infringement action is tried by the district court in the district where the cause of action arose. An appeal may be made to the Supreme Court in its appellate capacity. The court may also issue an injunction. Proceedings may not be instituted more than five years after the infringing act. Any interested person may, by instituting proceedings against a patent owner, ask the court to declare that the performance of a specific act does not constitute an infringement of the patent. If the person making the request proves this assertion, the court shall grant a declaration of non-infringement. 4. To what extent is cross-examination of witnesses permitted during proceedings? The cross-examination of witnesses is permitted during proceedings; however, one cannot mislead, misdirect or confuse the 3. How do your country’s courts deal witnesses or ask them the same questions with validity and infringement? Are theyon the same issue. The questions asked at the cross-examination must comply with handled together or separately? After the filing of an application by any the details set down in the pleadings and interested party, the district courts have the must not extract additional material and right to invalidate the patent wholly or information. partially in the following circumstances only: • The object of the invention does not fall 5. What role can and do expert witnesses under the definition of the term. play in proceedings? 38 Patents in Europe 2011/2012 www.iam-magazine.com Cyprus Any interested person may, by instituting proceedings against a patent owner, ask the court to declare that the performance of a specific act does not constitute an infringement of the patent and biotechnology) more difficult to enforce than others? Business methods and software are not patentable under the Patent Law and, until the amendments introduced by Law 163(I)/2002 came into force, biotechnology was not patentable either. Biotechnology patent rights are much harder to enforce than other rights, since a forced permit is needed in order to be able to use a biotechnology patent. In addition, special requirements exist in relation to the 6. Is pre-trial discovery permitted? If so, description of biotechnology patents. Expert witnesses play a vital role in proceedings, since an expert witness can help the judge to reach a decision. If the expert witness is convincing, he or she can determine the judge’s decision. An expert witness must provide evidence of his or her expertise and cannot be questioned as he or she is there to help the judge and lawyers understand the specific field. An expert witness can help the judge to reach a decision beyond reasonable doubt. to what extent? Pre-trial discovery is permitted. The party that wishes to carry out such discovery must obtain a court order in order to do so. Pre-trial discovery is granted when the court is satisfied that the discovery will help to shed light on the case. The pre-trial discovery must not take place merely to fish for witness statements or evidence from the other party. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? As a former British colony, Cyprus inherited a rather unusual system of law, the essence of which has not fundamentally altered since Cyprus’s independence. The system is based on a series of codifications of the English common law in the form of Cypriot statutes, coupled with a general 7. Do the courts in your jurisdiction provision that in the absence of a statutory provision, the law of Cyprus is to be found apply a doctrine of equivalents? The doctrine of equivalents is not applied in in the common law. the Cypriot courts. As a former British This system is still used today. However, colony, Cyprus follows UK law on several in respect of the question under matters. Neither the United Kingdom nor consideration, the common law does not Cyprus has ever employed a “doctrine of apply because there are specific sections of equivalents” approach. As a signatory to the the Patent Law. However, as the Cypriot European Patent Convention, Cyprus courts have a long tradition of referring to follows the Protocol on the Interpretation of UK law, in appropriate cases the Cypriot Article 69 of the Convention, which courts will look to English authorities for requires member states to strike a balance guidance. This is not to suggest that they between interpreting patent claims in a will definitely apply these authorities or strictly literal manner (with the description will consider themselves bound by them. and drawings helping only to resolve any Nevertheless, it is likely that they will look ambiguity) and regarding the claims as mere at these authorities and, if the guidelines only. jurisprudence is in line with common sense, they will follow and apply them. 8. Are certain patent rights (eg, those As Cyprus has a common law system, relating to business methods, software the courts are bound by previous decisions www.iam-magazine.com Patents in Europe 2011/201239 Cyprus issued by the U K courts in cases covering similar issues. The common law provides for the condition precedent, which states that the lower courts are bound by the previous case law of the higher courts and must follow those decisions. standard amounts based on court procedures and regulations, the legal requirements of each case and the judge’s requirements. 15. Is it possible for the successful party in a case to obtain costs from the losing 10. Are there any restrictions on who party? parties can select to represent them in The losing party usually pays the successful party’s legal expenses. The successful party’s a dispute? There are no restrictions as to who parties expenses are calculated by the registrar who can select to represent them in a dispute, takes into consideration the list of expenses provided that those selected are qualified filed by the successful party. lawyers. 16. What are the typical remedies 11. Are the courts willing to consider the granted to a successful plaintiff by the reasoning of courts in other courts? The remedies granted by the courts depend jurisdictions that have dealt with similar cases? on each case. A judge’s decision is based on The courts are willing to consider the previous case law and remedies. The reasoning of courts in other jurisdictions decision will depend on the facts of the case that have dealt with similar cases. The and the damage caused to the plaintiff. Cypriot courts follow the common law, Possible remedies include special damages, based on UK case law, as well as EU general damages, nominal damages, punitive directives and case law, since Cyprus joined damages, preliminary injunctions, final the European Union in May 2004. In case of injunctions, permanent injunctions and a conflict between case law and legislation, court orders. according to the Cypriot Constitution EU law prevails over any national law. 17. How are damages awards calculated? Is it possible to obtain punitive 12. How easy is it for defendants to delay damages? proceedings and how can plaintiffs prevent them from doing so? It is not easy for defendants to postpone court proceedings since according to Cypriot law, certain civil procedures require the defendant to follow strict case procedures in order to reach the final stage. For example, if the defendant wishes to stall, there is always another action that the other party can take or request to make things more difficult for the defendant. Damages awards are calculated based on previous case law and decisions in cases with identical or similar facts. The judge will look for previous cases with similar facts and then issue a decision based on the damages granted in that case. The judge will issue a very similar ruling in regard to the damages, as the calculation of damages depends on the damage caused and the damage proved. Nevertheless, the judge has discretionary power to issue a ruling that is different from those in previous cases and 13. Is it possible to obtain preliminary less than the damages suggested by the law. injunctions? If so, under what Punitive damages (ie, aggravated damages) do exist in Cyprus, but only for torts (ie, circumstances? It is possible to obtain preliminary civil wrongs). injunctions. A preliminary injunction can be obtained only under certain circumstances 18. How common is it for courts to grant – for example, when an ex parte application permanent injunctions to successful is filed and the filer proves to the court that plaintiffs and under what circumstances it is extremely urgent that the injunction be will they do this? granted as it has a serious case; or if serious The courts are inconsistent in their granting damage will be caused without an of permanent injunctions to successful injunction. plaintiffs. The plaintiff obtains a preliminary injunction, which it issues to 14. How much should a litigant plan to the defendant. The defendant then objects pay to take a case through to a decision to the preliminary objection and the interim at first instance? hearing takes place. If the plaintiff is The cost of taking a case through to a first successful, the preliminary injunction instance decision depends on the scale becomes permanent upon the ruling in chosen by the registrar. The scale sets down the case; however, if the plaintiff loses, the 40 Patents in Europe 2011/2012 www.iam-magazine.com Cyprus preliminary injunction becomes void. If the trial finishes and the plaintiff loses while a preliminary injunction is still pending, that preliminary injunction is automatically cancelled. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? There is no fixed timeframe for obtaining a decision at first instance – it depends on the number of cases pending and for how long a case has been pending. The court usually gives priority to cases that have been pending for three to four years. It takes a minimum of three to four years for a case to be tried and a ruling to be issued. Due to this priority system, it is not easy to expedite the process. However, if the matter is of great medical urgency (eg, serious illness, death) and this is proven to the court by expert testimony, the case may be treated more quickly. case before the courts. ADR is a realistic alternative to litigation; however, an ADR decision must be approved by the court in order to be enforceable. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? There are no special procedures or techniques in relation to this; nonetheless, the courts are there to serve justice. Procedures are in place to deal with the invalidity of a patent, both at the application stage and after a patent has been granted, and to provide remedies when a patent is infringed. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Cyprus has not signed up for the London Agreement on Translations because the authorities consider it to be easier and quicker for a translation of the validation of a patent to be submitted in Greek, the 20. Under what circumstances will the official language of Cyprus. This is in line losing party in a first instance case be with existing procedures, as the staff of the granted the right to appeal? How long Registrar of Intellectual Property Department cannot easily access and does an appeal typically take? The losing party in a first instance case examine the patent if it is in a language always has the right to appeal. The other than Greek. However, it is possible appealing party has the right to file an that this may be amended in future. application with the court requesting it to postpone enforcement of the first instance decision. It takes approximately 18 months for an appeal decision to be issued. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Cyprus has no specialised courts dealing 21. Are parties obliged to undertake anywith IP rights and infringements. Cypriot type of mediation/arbitration prior to industry contains only a small number of bringing a case before the courts? Is manufacturers and producers of inventions; therefore, infringement does not occur ADR a realistic alternative to litigation? Parties are not obliged to undertake frequently. As a result, the Cypriot courts are mediation or arbitration prior to bringing a not experienced in dealing with IP cases. Phivi Tramountanelli obtained an LLB from the University of Warwick, United Kingdom and a master’s degree in international financial law from the University of Manchester, United Kingdom. She is also a member of the Cyprus Bar Association. She specialises in intellectual property and corporate law. She mainly represents domestic and international clients in obtaining, maintaining and enforcing IP rights in Cyprus and abroad. www.iam-magazine.com Phivi Tramountanelli Advocate and head of IP department [email protected] +357 22 44 77 77 Michael Kyprianou & Co LLC Cyprus www.kyprianou.com.cy Patents in Europe 2011/201241 Denmark Denmark By Claus Elmeros and Louise Aagaard, Høiberg A/S, Copenhagen qualified judges hearing patent cases all have solid experience in the patent field from either private practice or industry. Decisions 1. What are the most effective ways for a of the Maritime and Commercial Court may be appealed to the Supreme Court, which European patent holder whose rights cover your jurisdiction to enforce its comprises only legally qualified judges with no special patent expertise. rights in your jurisdiction? In Denmark, a preliminary injunction is a fast and effective way of stopping infringing 3. How do your country’s courts deal acts. Proceedings to obtain a preliminary with validity and infringement? Are they injunction can be initiated in the Bailiff’s handled together or separately? Court; a preliminary injunction will be The Maritime and Commercial Court deals issued if the patentee can prove that the with both validity and infringement, and requested injunction relates to acts covered such issues are usually handled in the same by its patent and it is probable that infringement will take place. If a preliminary injunction is issued, the Bailiff’s Court can assist the patentee to enforce the injunction by, for example, seizing goods suspected of being used for infringing acts. However, once a preliminary injunction has been obtained, it must be followed up by main proceedings, usually before the Maritime and Commercial Court. The Maritime and Commercial Court may order a permanent injunction, as well as payment of damages. proceeding. Any party may requestreexamination of a patent at the Danish Patent and Trademark Office (PTO), but such a request cannot be made while a court case regarding the patent is pending. If, however, such a request is made before the instigation of a court case, validity may be examined by the PTO while infringement is determined by the Maritime and Commercial Court. In general, the court will stay the proceedings until a final decision regarding the patent has been issued by the PTO. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Cases regarding preliminary injunctions are heard by the Bailiff’s Court, whereas main proceedings relating to patent infringement are usually heard by the Maritime and Commercial Court. The Bailiff’s Court has no specialist patent judges and claims for preliminary injunctions are usually heard by only one legally qualified judge. Since a reform in 2006, patent cases may be heard by the Maritime and Commercial Court; this has allowed that court to gain experience of patent cases. Cases at the Maritime and Commercial Court are usually heard by one legally qualified judge, assisted by two technically qualified judges. The technically 4. To what extent is cross-examination of witnesses permitted during proceedings? During main proceedings, witnesses primarily give testimony in oral form at an oral hearing. At the hearing, witnesses may be cross-examined by both parties. It is usually also possible for parties to submit statements by witnesses during the written proceedings. However, during written proceedings the other party is not generally allowed to examine the witnesses. Witnesses are frequently called to substantiate the existence and extent of infringement. 42 Patents in Europe 2011/2012 5. What role can and do expert witnesses play in proceedings? During proceedings at the Maritime and Commercial Court, the court may appoint www.iam-magazine.com Denmark impartial experts to be questioned during the proceedings. Experts will be appointed by the court only at the request of at least one of the parties. The experts will prepare a written report answering questions set by the parties. The questions must be concrete, clear, neutral and relevant, andapproved by the court. Thus, questions relating directly to validity or infringement cannot be posed. The impartial expert may also be called to the oral hearing to answer further questions. The parties may suggest use of a particular expert, but the experts are ultimately appointed by the court. In general, it is not possible for the parties to present one-sided technical expert statements. In contrast, in proceedings at the Bailiff’s Court it is not only possible, but also common to present one-sided technical expert statements during proceedings, and parties also often call their own technical experts during oral hearings. obvious to the skilled person. Claim features limited due to prior art during examination proceedings may be interpreted narrowly. taken place or will take place, and if there is reason to believe that evidence regarding the infringement can be found in the location to be investigated. The investigation may include all material presumed to be of relevance. If evidence of infringement is found, this may be seized. A request for investigation will be declined if it is presumed that the damage or inconvenience that would be inflicted is disproportionate to the patentee’s interest in the investigation. In practice, the investigation is carried out by the bailiff, usually accompanied by one or more impartial experts, and may be undertaken without prior notice. The patentee may also be present at the investigation. reasoning of courts in other jurisdictions that have dealt with similar cases? In Denmark, there are few patent cases and many of these are settled out of court before the conclusion of court proceedings. Accordingly, the available Danish case law is very limited. However, the Danish courts are willing to consider the reasoning of courts in other jurisdictions, although they are not bound by foreign decisions. In particular, decisions from jurisdictions with a similar patent law and tradition may be considered, such as decisions from other Scandinavian countries. In matters regarding validity, the courts will also consider case law from the European Patent Office Boards of Appeal. 8. How far are courts bound by previous decisions in cases that have covered similar issues? In Denmark, a court decision has legal binding effect only for that particular case. However, earlier court decisions may set a precedent for later cases and represent an important source of law. In Danish law, there is no clear principle regarding the extent to which a previous decision sets precedent; however, in general, Supreme Court decisions are considered to be of greater importance than other court rulings. 9. Are there any restrictions on who parties can select to represent them in a dispute? Only attorneys at law can represent clients ni court disputes. Accordingly, patent attorneys, 6. Is pre-trial discovery permitted? If so,who usually have a technical background, to what extent? cannot represent clients before the Danish At the request of the patentee, the Bailiff’s courts. In practice, during patent disputes a Court may undertake an investigation in patent attorney frequently works in close order to ensure that there is evidence of collaboration with the appointed attorney at infringement and/or the extent of law. infringement. This can be done only if it is rendered probable that infringement has 10. Are the courts willing to consider the 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Danish courts do apply a doctrine of equivalents. They start the analysis by identifying the core of the patent - according to the latest case law, this comprises the characteristics of the invention which the patent claims identify as significant. Products or methods containing the core of the patent may be considered infringing if they fall within the literal scope of the patent claims, except that one or more parts have been exchanged for technical equivalents www.iam-magazine.com 11. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Since the 2006 court reform it has become more difficult to delay court proceedings. Patent disputes are generally heard by the Maritime and Commercial Court and, early in the proceedings, all time limits are fixed by the parties and the court. The timeframe for written preparation of the case and the date for the oral hearing are also fixed. Once these time limits have passed, the court may refuse to accept new evidence, allegations or claims in the absence of special reasons – Patents in Europe 2011/201243 Denmark for example: • It could not reasonably have been presented earlier. • The other party may still be able to ensure its interests sufficiently. • A disproportionate loss for the party may arise. fees can be fully refunded, whereas costs for legal assistance from an attorney at law are refunded based on standard rates. Other justifiable costs may also be fully refunded, such as costs for court-appointed experts, expert reports and witness compensation. Patent attorney costs are normally not refunded. After the time limits have been fixed, requests for delays must be justified. 15. What are the typical remedies granted to a successful plaintiff by thecourts? 12. Is it possible to obtain preliminary Several different remedies for patent injunctions? If so, under what infringement are available in Denmark. An infringer must generally pay reasonable circumstances? Preliminary injunctions are available in compensation for having used a patented Denmark and are issued by the Bailiff’s invention, as well as compensation for Court. The requirements for a preliminary additional damages. Both preliminary injunction are that: injunctions and permanent injunctions may • It is probable that the acts to be be granted. The patentee may also request prohibited infringe the rights of the the confiscation or destruction of infringing patentee. products or machines or production • It is likely that the acts will be equipment, or the surrender of the infringing performed. products. Penalties for purposeful • The aim (ie, prevention of infringement) infringement in the form of fines or even would be forfeited by waiting for a imprisonment are foreseen under Danish normal court case. law, but rarely implemented. The third requirement is always considered to be fulfilled in patent cases. The validity of the patent may be examined by the Bailiff’s Court; however, if invalidity is 16. How are damages awards calculated? Is it possible to obtain punitive damages? Reasonable compensation for having used a patented invention, as well as reasonable asserted based on facts which have already been examined in relation to the patent, there is a strong presumption of validity. Even if no infringement has yet taken place, a preliminary injunction can still be obtained if an infringing act is likely to occur. damages and reimbursement of any losses that the patentee has suffered because of the infringing act, must be rewarded irrespective of whether the infringing act took place in good or bad faith. To determine the amount of damages, issues such as lost revenue and the profits of the infringer are taken into 13. How much should a litigantplan to account, as well as market disturbance, including estimated future loss of sales and pay to take a case through to a decision at first instance? loss of goodwill. The damages may also be The costs of patent litigation are case cumulative, taking more issues into account. dependent. The costs forpreparation of the Compensation for having used the patented case depend on the difficulties in meeting the invention may be based on the licence fee burden of proof of an infringement and on that the patentee could reasonably have the extent of potentialinvalidity arguments. charged on the market. Punitive damages are The costs for taking a casethrough to a first not available in Denmark. instance decision may be from €40,000 for a simple case to €450,000 for acomplex 17. How common is it for courts to grant pharmaceutical case. In main proceedings the permanent injunctions to successful costs for a court-appointed technical expert plaintiffs and under what circumstances opinion will be at least €10,000, depending will they do this? on the complexity of the case. It is quite common for a successful party to obtain a permanent injunction. If the Bailiff’s 14. Is it possible for the successful partyCourt has issued a preliminary injunction, this in a case to obtain costs from the losing can be made permanent by a decision in the party? main proceedings before the Maritime and The successful party may obtain its costs Commercial Court. A permanent injunction from the losing party. The courts are can also be obtained directly after main generally conservative when awarding costs proceedings at the Maritime and Commercial and the costs awarded are typically less than Court without a preceding preliminary the actual costs of the successful party. Court injunction. If an injunction is granted, the 44 Patents in Europe 2011/2012 www.iam-magazine.com Denmark bailiff should prevent the prohibited act, possibly with the help of the police. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The court reform of 2006 was designed to streamline patent cases andaccelerate the process, and the courts now aim to conclude patent cases within oneyear. The latest statistics show that theaverage pendency of patent cases at the Maritime and Commercial Court in 2009 was 19 months. Proceedings may be stayed awaiting a decision from the PTO on a re-examination or from the European Patent Office on an opposition. Denmark has no split jurisdiction, so infringement and validity may be prosecuted in the same court proceedings. This system tends to reduce the likelihood of favouritism towards any party during main proceedings. However, the Bailiff’s Court usually considers an issued patent to be valid unless new evidence to the contrary, which was not previously considered by the PTO, is presented. 21. Has your jurisdiction signed up to the London Agreement on Translations? Denmark is a party to the London Agreement. To validate a European patent in Denmark, the claims must be translated into Danish, while the description may be filed in 19. Under what circumstances will the English or Danish. However, a full translation losing party in a first instance case be into Danish may be required in relation to patent infringement proceedings if either the granted the right to appeal?How long does an appeal usually take? defendant or the court requests such In Denmark, any adverse first instance translation. decision is subject to appeal. Decisions of the Maritime and Commercial Court are 22. Are there any other issues relating to appealed directly to the Supreme Court, the enforcement system in your country which is obliged to hear the appeal. that you would like to raise? Decisions of the Bailiff’s Court are appealed In Denmark, unlike in other European to the High Court. The appeal proceedings countries, it is possible for both third parties usually take from one to two years. and patentees to request re-ex amination of a patent at any time. This provides a useful tool 20. In broad terms, how pro-patentee arefor testing the validity of a Danish patent or the courts in your jurisdiction? www.iam-magazine.com the Danish part of a European patent. Claus Elmeros is a partner at Høiberg A/S, chairman of Høiberg’s board of directors and a qualified European patent attorney. He specialises in mechanical technology, medico-technology, processing equipment, manufacturing technology, control systems and software. Mr Elmeros started in the patent profession in 1990 as a patent examiner at the European Patent Office in the Netherlands. Since 1995 he has advised on patents and registered design protection. He co-founded a patent practice in 1998 and took over its Copenhagen office in 2005, before merging the practice with Høiberg in 2006. Mr Elmeros is also an authorised European design attorney at the Office for Harmonisation in the Internal Market and teaches IP rights on the CEIPI course in Copenhagen. He is treasurer of the Association of Danish Patent Agents. Claus Elmeros Louise Aagaard is a partner at Høiberg A/S, a member of Høiberg’s board of directors and a qualified European patent attorney. She has a background as a biochemist and graduated with an Msc in biochemistry from the University of Copenhagen and a PhD in genetics from the University of Vienna. Since 2001 Ms Aagaard has advised on patent-related issues, particularly in the area of life sciences, including biotech, pharmaceuticals, the food industry and green-tech. She qualified as a European patent attorney in 2004. In addition, she lectures for IP rights courses and patent conferences and is chairman of EPCtutors, an organisation which organises the CEIPI basic course in Copenhagen. Louise Aagaard European patent attor ney, partner [email protected] +45 33 32 03 37 Høiberg A/S Denmark www.hoiberg.com European patent attor ney, partner [email protected] +45 33 32 03 37 Høiberg A/S Denmark www.hoiberg.com Patents in Europe 2011/201245 Finland Finland By Petri Eskola, Backström & Co Attorneys Ltd, Helsinki 4. To what extent is cross-examination of witnesses permitted during proceedings? is permitted according 1. What are the most effective ways for Cross-examination a European patent holder whose rights to general procedural rules. Specific rules cover your jurisdiction to enforce its for patent matters do not exist. rights in your jurisdiction? A patent infringement suit can be filed with 5. What role can and do expert witnesses the Helsinki District Court, which has play in proceedings? exclusive jurisdiction in patent matters at Expert witnesses have traditionally played a first instance. If the situation is urgent (eg, key role in patent proceedings. The expert’s due to an imminent threat of patent role is usually to draft a written statement infringement), an application for an and subsequently to appear as a witness in injunction can be filed with the same court before filing a patent infringement suit. The court can rule on an ex parte injunction within a few days without hearing the opposing party, provided that sufficient grounds are presented by the patent holder. the oral hearing. As a starting point, the parties have a right to appoint their expert witnesses freely. 6. Is pre-trial discovery permitted? If so, to what extent? The discovery system is not used in Finland. 2. What level of expertise can a patent However, a party can request that certain owner expect from the courts in your evidence and documentation be secured by a jurisdiction? court order and enforced with the assistance When hearing patent matters, the Helsinki of officials. The applicant must lodge security District Court appoints two independent as stipulated in the special legislation experts to assist with technical questions. The covering such securing ofevidence. level of expertise of these court-appointed experts is very high. The judges who officially 7. Do the courts in your jurisdiction decide the matter do not have in-depth apply a doctrine of equivalents? technical skills. The situation is different at The local courts apply the doctrine of the appeal courts and the Supreme Court, equivalents as stipulated by the European where no court-appointed experts are used. At Patent Convention. the appeal courts and the Supreme Court, patent cases are decided by panels of judges 8. Are certain patent rights (eg, those with purely legal backgrounds. relating to business methods, software and biotechnology) more diff icult to 3. How do your country’s courts deal enforce than others? with validity and infringement? Are theyIt is hard to draw conclusions on this issue, handled together or separately? since only a few patent matters are filed The general principle is to handle validity monthly and there is no extensive case law. and infringement matters at the same time. In recent years most of the cases filed, for This is based on a recommendation issued example, related to pharmaceutical patents, by the Helsinki District Court on 9th whereas business method or software January 2008. patents have not been litigated. 46 Patents in Europe 2011/2012 www.iam-magazine.com Finland Preliminary injunctions may be granted in cases where infringement is likely to occur, taking into account the urgency of the matter 9. How far are courts bound by previousdeadline, provided that reasonable grounds to support such a request exist. The courts decisions in cases that have covered similar issues? usually grant the extension if the requested Only Supreme Court decisions can be additional time is not unreasonable. The considered as binding case law. Since there opposing party has no way of stopping the is little Supreme Court precedent on patent extension as the courts do not usually seek matters, the parties also refer to appeal the other party’s opinion in respect of the court decisions, even though such decisions requested extension. In order to avoid delays, cannot be considered legally binding. the other party can notify the court of any suspected stalling and request that any 10. Are there any restrictions on who extensions not be granted. parties can select to represent them in a dispute? 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions may be granted in cases where infringement is likely to occur, taking into account the urgency of the matter and by weighing up the overall advantages and disadvantages of granting an 11. Are the courts willing to consider the reasoning of courts in other injunction for each party. jurisdictions that have dealt with similar cases? 14. How much should a litigant plan to Foreign decisions should not have decisive pay to take a case through to a decision effect. However, since the Finnish patent at first instance? legislation was drafted in cooperation with The costs of patent litigation may vary other Nordic countries, some decisions of considerably depending, for example, on the other Nordic countries – in particular from field of the invention and issues in dispute. the supreme courts – are frequently referred At first instance, the costs may range from to by the Finnish courts. Other than the €20,000 to €300,000. Nordic countries, however, decisions from other jurisdictions are not generally given 15. Is it possible for the successful party significant weight in Finland. in a case to obtain costs from the losing party? 12. How easy is it for defendants to delay The procedural rule is that the losing party proceedings and how can plaintiffs compensates the winner’s costs. prevent them from doing so? If the case does not involve urgent injunction 16. What are the typical remedies granted procedures, the delay tactics are usually to a successful plaintiff by thecourts? based on deadline extensions. During The main remedies in an infringement revocation or infringement proceedings, the situation are an injunction, reasonable parties are requested to file their briefs by a compensation for the unauthorised use of certain deadline set by the court. In such the patented invention and compensation cases a party can request an extension to the for damages. There are no restrictions other than the conflict of interest stipulations under the local rules of the Finnish Bar Association. However, according to the procedural laws, the representative must have a law degree. www.iam-magazine.com Patents in Europe 2011/201247 Finland 17. How are damages awards calculated?approximately 12 to 18 months. Is it possible to obtain punitive damages? 21. Are parties obliged to undertake any Actual damages are based on the losses type of mediation/arbitration prior to suffered by the patent holder which can be bringing a case before the courts? Is proven. Such losses include the loss of sales ADR a realistic alternative to litigation? profits and costs that the infringement may There is no obligation to arrange mediation have caused. Punitive damages are not before bringing a case before the court. At available. present, ADR does not appear to be a realistic alternative to litigation. 18. How common is it for courts to grant permanent injunctions to successful 22. In broad terms, how pro-patentee are plaintiffs and under what circumstancesthe courts in your jurisdiction? In the sense that patent invalidation cases will they do this? One of the main remedies under the Patents seldom succeed, it could be argued that the Act is a permanent injunction for the courts are slightly pro-patentee; but in infringer. If an infringement is confirmed to regard to infringement cases, the court tend be occurring or to have occurred, a to be neutral. permanent injunction should be ordered. 23. Has your jurisdiction signed up to 19. How long does it take to obtain a the London Agreement on Translations? decision at first instance and is it If not, how likely is it to do so? possible to expedite this process? Finland has signed up to the London Currently, the average time taken to obtain a Agreement and it was ratified by Parliament first instance decision is around two years. on 11th March 2011. Proceedings are rarely expedited. 24. Are there any other issues relating to 20. Under what circumstances will the the enforcement system in your country losing party in a first instance case be that you would like to raise? granted the right to appeal? How long There are well-established plans to set up a does an appeal typically take? separate, specialist court for IP rights In practice, the losing party always has a right to appeal. The appeal process takes disputes, but it remains to be seen whether these plans will ever come to fruition. Petri Eskola trained with the Helsinki District Court from 1996 to 1997, and was admitted to the Finnish Bar in 2001. He has experience in all IP matters and advises clients on all related aspects, as well as major areas of business law. He joined Backström & Co in 1998, where he is now a partner. Petri Eskola Attorney [email protected] +358 9 6689 9415 Backström & Co Attorneys Ltd Finland www.backstrom.fi 48 Patents in Europe 2011/2012 www.iam-magazine.com France France By Patrick Dunaud, Nathalie HadjadjCazier and Gwendaline Sarrat, Winston & Strawn, Paris Instance. In practice, such cases are submitted to the third chamber of the court. There is a clear trend towards improving the level of specialisation not only of the 1. What are the most effective ways for courts, a but also of judges. For this reason European patent holder whose rights the number of competent jurisdictions has cover your jurisdiction to enforce its been reduced from seven (Paris, Marseille, Bordeaux, Strasbourg, Lille, Lyon and rights in your jurisdiction? According to the applicable French patent Toulouse) to one. The Ministry of Justice is rules, a European patent holder may choose also said to be in favour of such to bring either a criminal or a civil action in specialisation, notably by ensuring the order to enforce its rights. Although suitability of judges for the job and by criminal judges have investigation and enhancing the training requirements. coercion powers to collect evidence (which civil judges do not have), the criminal courts are not specialised in IP matters. Except under specific conditions, criminal damages may not be higher than €300,000 and the infringer shall face a three-year prison term (Article L615-14 of the IP Code). However, in practice, criminal actions are rare. Actions may be brought before the arbitration courts (Article L615-17 of the IP Code), but the decision obtained has limited effect. Moreover, actions shall not be brought to the arbitration courts each time that such a court takes over a public organisation’s prerogatives. Therefore, this route might not be appropriate for litigation on validity or cancellation, but could be appropriate for litigation on infringement, ownership and the enforcement of agreements. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? Article L615-17 of the IP Code and Article D211-6 of the Judicial Organisational Code state that all litigious matters arising from patents fall under the exclusive jurisdiction of the Paris Court of First Instance. However, validity and infringement matters must follow specific requirements (under Articles L613-25 and L615-1 of the IP Code) - both are dealt with by the Paris court and are closely linked. A patent must be valid in order for the holder to initiate an infringement action. Validity is usually contested as a mean of defence by the infringer. 4. To what extent is cross-examination of witnesses permitted during proceedings? 2. What level of expertise can a patent Unlike in the United Kingdom, and despite owner expect from the courts in your the fact that patent infringement may be proven by any means, cross-examination of jurisdiction? Patent litigation falls under the exclusive witnesses is not permitted during jurisdiction of the courts of first instance. proceedings. This is because French The Decree of 9th October 2009, which proceedings take place exclusively in implemented the Law of 29th October 2007, writing. Only attorneys are allowed to speak gave exclusive jurisdiction for patent at oral hearings before the civil courts. litigation to the Paris Court of First However, expert evidence is often used. www.iam-magazine.com Patents in Europe 2011/201249 France 5. What role can and do expert witnesses produce the same results, but do not have the same technical effects and structure. play in proceedings? When acting before the civil courts in France, a plaintiff must be represented by an 8. Are certain patent rights (eg, those attorney at law. The assistance of an expert relating to business methods, software is not mandatory, but may be vital to the and biotechnology) more diff icult to outcome of the trial. enforce than others? In cases where the issues are complex or Article L611-10 of the IP Code stipulates require a high degree of expertise, attorneys that “patents shall be granted for any are assisted by patent agents, who cannot inventions, in all fields of technology plead, but provide technical expertise and [including biological products], provided assistance. Court experts are frequently that they are new, involve an inventive step asked to help to calculate the damage and are susceptible of industrial awards to be paid to the rights holder. application”. Patents shall not be granted for only “(a) discoveries, scientific theories and 6. Is pre-trial discovery permitted? If so, to what extent? mathematical methods; (b) aesthetic Pre-trial discovery is not only permitted, creations; (c) schemes, rules and methods but encouraged by French law. A special for performing mental acts, playing games feature of the French pre-trial discovery or doing business, and programs for procedure is the saisie-contrefaçon, which is computers; (d) presentations of processed through an ex parte procedure. information”. Once a patent has been Article L615-5 of the IP Code stipulates granted, there is no particular difficulty that any party that is entitled to initiate a with its enforcement unless the claims are lawsuit due to counterfeit goods may obtain written in a way that may render a court decision authorising it to send a infringement difficult to prove. Nonbailiff to the defendant’s premises. The patentable inventions, such as business bailiff may proceed with the description or methods, are difficult to enforce, as their physical seizure of the infringing products, protection often relies on keeping them including copies of invoices and any other secret. documents that may prove the alleged Software is not patentable unless its infringement. Under the Law of 29th October 2007, seizure may also cover the devices and instruments that contributed to the production or distribution of the infringing goods. The time limit for the patent owner to initiate the action on the merits has been increased from 15 days to 20 working days or 31 calendar days from the date of the bailiff’s report. If the patent owner fails to do so, the seizure will be considered void and the infringer will be entitled to claim damages in compensation. The 2007 law also introduced a right of information, which is aimed at helping to identify networks of counterfeiters, rather than at proving the infringement. The high number of judgments issued using this right demonstrates the interest in such a provision. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The French courts do apply a doctrine of equivalents. This means that a patent may be considered to infringe a prior patent where both are aimed at producing the same technical effect and results, even if the patented means differ. However, no doctrine of equivalents applies when the opposed patented devices 50 Patents in Europe 2011/2012 implementation produces additional technical effects. However, it may be granted protection and thus enforced under the copyright legislation (Articles L111-1 and following and L331-1 and following of the IP Code). 9. How far are the courts bound by previous decisions in cases that have covered similar issues? As opposed to the common law system, French courts are not bound by previous decisions that may have been rendered in similar cases. However, the judges may be influenced by or willing to consider the reasoning of other courts or jurisdictions, especially EU courts. Even if the French courts do not apply a doctrine of precedent, they may be influenced by a kind of case law constituted of general principles set out by the courts of appeal and the Supreme Court. 10. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? French proceedings are conducted in writing and the schedules are set by the judges at their sole discretion. There is always the possibility for defendants to delay proceedings by providing documents and www.iam-magazine.com France evidence at the last minute or by requesting the postponement of the procedural hearings. However, with the trend towards enhanced effectiveness, judges are increasingly less disposed to accept suchbehaviour. A defendant may also delay a patent infringement case by opposing the European patent evoked. 11. Is it possible to obtain preliminary injunctions? If so, under what circumstances can this be done? The French patent regulatory system has always granted patent owners the right to request preliminary injunctions. These can be obtained on condition that the action on the merits appears to be serious and initiated within a short term. Under Article L615-3 of the IP Code, as amended by the Law of 29th October 2007, a patent owner (or the grantee of an exclusive right of exploitation) may initiate a summary proceeding and obtain a court order to: • Prevent any impending infringement. • Prevent the continuation of infringing actions. • Ensure the indemnification of the plaintiff, notably by awarding damages or ordering the seizure of the infringer’s assets. in the fairest way and in consideration of the economic situation of the losing party. The costs awarded are usually less than those requested by the parties. Due to recent changes in the law, the costs awarded have increased and in one case reached €300,000. 14. How common is it for the courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? French judges may rule on both the question of liability and the nature and amount of remedies to be awarded at their sole discretion, in consideration of the right to be protected and the infringement. Often, once the judge has found that an infringement has taken place and has granted the successful party an account of profits, he or she may order that the damages be appraised by experts in order to help to calculate the amount owed. Typical remedies granted include injunctions, damages or account of damages, and destruction of the infringing goods. 15. How are damages awards calculated? Is it possible to obtain punitive damages? Under French law, the courts have sole jurisdiction to assess the amount of damages that shall be awarded in compensation for the damage suffered. The applicable principle is “the whole prejudice, but only the prejudice”. Therefore, punitive damages are not available. The Law of 29th October 2007 introduced new methods for calculating damages (Article L615-7 of the IP Code). Courts shall now take into consideration the losses and moral prejudice suffered by the plaintiff, as well as the infringer’s profits. At the plaintiff’s request, the courts may also grant a lump sum that shall not amount to less than the royalties that the infringer 12. How much should a litigant plan to would have been obliged to pay had it pay to take a case through to a decision sought the right to use the patent. at first instance? It is always difficult to estimate the costs to 16. How long does it take to obtain a take an action through to a decision at first decision at first instance and is it instance, as these depend on the complexity possible to expedite this process? of the case, the arguments of the It takes approximately 18 months to obtain counterparty and the length of the a court decision. However, the new policy of proceedings. In addition to attorneys’ fees, the Third Chamber of the Paris Court of the parties must often pay expert fees and, First Instance is that each party cannot in some cases, translation costs. enter written arguments more than twice. This means that decisions should now be 13. Is it possible for the successful party issued earlier. in a case to obtain costs from the losing As the schedule of the proceedings is party? set by the judges, the parties cannot Yes. The amount awarded is set by the court expedite the proceedings. The judge may also act on a motion from the patent owner where the circumstances require that the decision not be made after hearing both parties - for example, where any delay could cause detriment to the plaintiff. In order to obtain a preliminary injunction, whether acting on a motion or initiating a summary proceeding, the patent owner must provide the judge with “reasonably accessible” evidence demonstrating that its rights have been or are likely to be infringed. www.iam-magazine.com Patents in Europe 2011/201251 France Figure 1 Trademarks 13% Copyright 10% IT and telecom 18% Patents 37% Other 22% 17. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? A losing party that wishes to contest a first encourage parties to opt for mediation. Arbitration and mediation procedures are available at the World Intellectual Property Centre (WIPO) Arbitration and Mediation Centre or at the Paris Mediation instance decision may lodge an appeal (unless otherwise stated or if the decision has been rendered without appeal) within one month of notification of the judgment (three months for foreign residents or companies). Before the adoption of the Law of 25th January 2011 regarding representation before the appeal courts, appellants had to designate an avoué who had the exclusive power to represent the parties before the courts of appeal. However, from 1st January 2012, the profession of avoué will no longer exist and attorneys at law will be entitled to represent their clients in both first instance and appeal proceedings. An appeal takes approximately 18 to 24 months. However, the Decree of 28th December 2010 on appeal procedures shortened the time limit for an appeal proceeding to six months, which should help to make the IP enforcement system more efficient. and Arbitration Chamber. While mediation/arbitration is not conceivable in some cases, patent cases represent the highest percentage of cases submitted to the WIPO centre (see Figure 1). 19. In broad terms, how pro-patentee are the courts in your jurisdiction? The Third Chamber of the Paris Court of First Instance pays great attention to IP rights enforcement. Since the implementation of the Law of 29th October 2007, the amount of damages awarded has increased and the damage caused has been appraised and evaluated in a better way. 20. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? France signed the London Agreement on 29th June 2001. On 14th April 2010 the Paris Court of Appeal issued 24 similar court decisions, holding that since France 18. Are parties obliged to undertake anyhas ratified the London Agreement, no type of mediation/arbitration prior to French translation need be filed before the bringing a case before the courts? Is French Patent Office with respect to European patents amended after opposition ADR a realistic alternative to litigation? The parties may decide to undertake any proceedings, and that this also applies to type of mediation/arbitration before European patents for which the mention of bringing a case before the courts, but there grant was published before the entry into is no obligation to do so. Judges increasingly force of the London Agreement. 52 Patents in Europe 2011/2012 www.iam-magazine.com France www.iam-magazine.com Patrick Dunaud heads the litigation department of Winston & Strawn in Paris. His practice focuses on IP and antitrust litigation, particularly in the media, luxury industry, information technology, digital convergence and e-commerce sectors. He also has extensive experience in the corporate and securities litigation areas, advising financial institutions and major corporations on litigation and non-litigation matters. An active trial lawyer for 30 years, Mr Dunaud is experienced before civil, commercial and criminal courts, as well as the European Court of Justice. He has also represented corporations before international arbitration panels in a wide range of matters. Before joining Winston & Strawn, Mr Dunaud headed the Paris litigation department of Latham & Watkins. He holds a graduate degree from the Institut d’Etudes Politiques de Bordeaux (1976), a DEA in European law (1977) and a DEA in international law (1978) from the University of Bordeaux. Patrick Dunaud Nathalie Hadjadj-Cazier focuses her practice on IP counselling, transactional and litigation matters. She has extensive experience in developing IP rights. Ms Hadjadj-Cazier assists clients with licensing, Nathalie Hadjadj-Cazier franchising and merchandising involving the use, patents, commercialisation, pledge and agreements tax optimisation of trademarks, and copyrights, as well as know-how, designs and models. Her transactional experience includes implementing IP rights transfers in joint venture transactions; structuring and allocating IP rights and corresponding payments within groups of companies for the purpose of economic and tax efficiency; and brand and domain name licence agreements. She also represents clients in a range of trademark, design and copyright litigation, from urgent protective proceedings to full trial before national courts. Ms Hadjadj-Cazier’s experience prior to Winston & Strawn includes developing the IP practices at several other international law firms. She is an authorized agent at the Office for Harmonisation in the Internal Market and a former IP counsel. +33 1 53 64 81 50 Gwendaline Sarrat concentrates her practice on IP matters covering trademarks, designs and models, copyrights, know-how, patents and domain names. She has seven years’ experience advising national and international clients on setting up strategies for the protection, management and defence of their IP rights. This experience includes managing IP rights portfolios, including following up on national and international registration procedures, conducting opposition procedures, advising on the availability and validity of trademarks and designs and drafting and negotiating co-existence, licence and assignment agreements. She recently represented inventors at the Commission Nationale des Inventions de Salariés. Ms Sarrat received a master’s degree in IP law in 2001 and an MBA in luxury brand marketing and international management in 2010. Gwendaline Sarrat Partner [email protected] +33 1 53 64 82 12 Winston & Strawn France www.winston.com Partner [email protected] Winston & Strawn France www.winston.com IP legal adviser [email protected] +33 1 53 64 82 47 Winston & Strawn France www.winston.com Patents in Europe 2011/201253 Germany Germany By Gottfried Schüll, COHAUSZ & FLORACK, Dusseldorf 4. To what extent is cross-examination of witnesses permitted during proceedings? 1. What are the most effective ways for In a practice, only court-appointed expert European patent holder whose rights witnesses are cross-examined during cover your jurisdiction to enforce its proceedings. rights in your jurisdiction? The silver bullet of patent enforcement in 5. What role can and do expert witnesses Germany is an infringement action on the play in proceedings? merits to be filed with one of the German Expert witnesses appointed by the parties “Ivy League” patent infringement courts. The themselves will be heard via written expert choice of venue must be made in view of the opinions. The Landgericht, the first instance complexity of the case and time constraints. court, rarely appoints expert witnesses. At The “big four” patent infringement courts – second instance before theOberlandesgericht, Dusseldorf, Mannheim, Hamburg and Munich (with Dusseldorf taking a clear lead) – handle about 1,000 patent litigation actions each year. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Due to the extraordinarily high number of patent infringement actions, the competent German courts handle patent infringement cases almost exclusively. Hence, the standard of expertise in all technological areas, as well as in the IP law field, is high at all levels of jurisdiction handling patent infringement actions. expert witnesses are appointed more frequently. However, only in validity proceedings before theBundesgerichtshof is it common for the court to appoint expert witnesses. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery, as used in UK and US proceedings, does not exist in Germany. If there is a substantial likelihood of patent infringement but material evidence is not available, the patent owner may request inspection of the potential infringer’s premises and/or infringing devices (eg, exhibition at a trade fair). 3. How do your country’s courts deal 7. Do the courts in your jurisdiction with validity and infringement? Are theyapply a doctrine of equivalents? handled together or separately? In principle, yes. In the course of the EUValidity and infringement are handled wide harmonisation of jurisdiction, the separately in two court processes, both requirements that must be met in order to finalised by the X Senate of the find equivalent patent infringement have Bundesgerichtshof. The infringement process been considerably raised; thus, it is rare that is considerably quicker than the validity infringement is based on the doctrine of process. Only if the patent asserted is likely equivalents. to become invalid due to lack of novelty in view of new facts will the infringement 8. Are certain patent rights (eg, those court stay proceedings until validity has relating to business methods, software been confirmed. and biotechnology) more diff icult to 54 Patents in Europe 2011/2012 www.iam-magazine.com Germany enforce than others? As the infringement courts will accept a patent granted by the European Patent Office (EPO) as it stands, the validity of the patent becomes an issue only in case of obvious invalidity based on new facts. The technological field as such could hardly be a reason to reconsider validity of the patent granted. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Due to the high number of cases, patentrelated case law is prolific in Germany. Some of this precedent can be used to provide the background for each individual case. But to answer the question, previous decisions have no binding effect in Germany. 10. Are there any restrictions on who parties can select to represent them in dispute? In patent infringement cases, parties must be represented by attorneys at law who are members of the German Chamber of Lawyers. For validity proceedings, parties can be represented by either a patent attorney admitted at the German Chamber of Patent Lawyers or an attorney at law. In practice, parties are typically represented by within four weeks of becoming aware of the infringement. Furthermore, the infringement and the validity of the patent must be apparent. Validity can be assumed to be apparent if the patent has already been the subject of post-grant validity proceedings. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? As a guideline, a patent owner can expect litigation to cost about 3% of the value of litigation (ie, the estimated economic value of the lawsuit for the plaintiff, assuming that the claims asserted will be fully confirmed by the court). The minimum is around €50,000, based on the statutory minimum fees set out by the Attorneys Remuneration Law. Depending on the circumstances, attorneys may ask for additional fees. These costs include the aconsiderable statutory court fees. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes, the statutory attorneys’ fees – for both attorneys at law and patent attorneys – and the court fees are fully reimbursable. 16. What are the typical remedies granted to a successful plaintiff by thecourts? The remedies granted in Germany to a successful plaintiff are injunctions and claims to render accounts. The court will also decide whether the plaintiff is entitled 11. Are the courts willing to consider the reasoning of courts in other to claim damages. jurisdictions that have dealt with similar cases? 17. How are damages awards calculated? Yes, the German courts are willing to Is it possible to obtain punitive consider the reasoning of courts in other damages? jurisdictions, but within the framework of The courts have developed three methods of German law. calculating damages: • The cost of a licence granted between 12. How easy is it for defendants to delay reasonable parties. • The loss of profits suffered by the proceedings and how can plaintiffs prevent them from doing so? patent owner. Infringement proceedings can be delayed for • The profits gained by the infringer. only very limited reasons. Of practical relevance is the delay of proceedings due to In practice, the calculation based on an obvious lack of validity in view of new royalty fees is the most common method facts. Depending on the venue, the used to calculate damages awards. Although complexity of the case may extend the it is not possible to obtain punitive schedule of infringement proceedings. damages, the courts have confirmed elements in the damages calculations with 13. Is it possible to obtain preliminary moderately punitive effects. injunctions? If so, under what circumstances? 18. How common is it for courts to grant Yes, it is possible to obtain preliminary permanent injunctions to successful injunctions and these are immediately plaintiffs and under what circumstances enforceable. A preliminary injunction will be will they do this? issued if the patent owner applies for one If the court confirms infringement and the a team of attorneys at law and patent attorneys in both patent infringement and validity proceedings. www.iam-magazine.com Patents in Europe 2011/201255 Germany patent is in force and not obviously invalid based on new facts, the court will always grant a permanent injunction. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? In case of infringement actions on themerits, the Ivy League courts will render a decision within six to 12 months, depending mainly on the venue. A decision on a request for a preliminary injunction will be issued within one to six weeks. Expedition of this process is possible, mainly based on the choice of venue. is not seen as a realistic alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Statistically, patentees win about 40% of the patent litigation actions filed in Germany. Another 40% of complaints filed are dismissed, while the remaining 20% are stayed due to validity issues. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Yes, Germany has signed up to the London 20. Under what circumstances will the Agreement on Translations. losing party in a first instance case be granted the right to appeal? How long 24. Are there any other issues relating to does an appeal typically take? the enforcement system in your country The losing party in a first instance case will that you would like to raise? always be granted the right to appeal. Even The competent Germanpatent litigation on appeal, the successful party may enforce courts have a clear understanding that a the first instance decision on condition of a patentee is entitled to enjoy protection for security bond to cover potential damages patents granted by either the EPO or the due to enforcing a decision that may yet be German Patent and Trademark Office. revised. An infringement appeal typically Accordingly, the courts not only are takes 18 months to two years. reasonably pro-patentee, but also apply strict measures to enforce injunction claims once 21. Are parties obliged to undertake anygranted. The Patent Act qualifies patent type of mediation/arbitration prior to infringement as a criminal act. Although bringing a case before the courts? Is criminal actions based onpatent infringement ADR a realistic alternative to litigation? are rare, patent infringers are not treated with In practice, the parties are not obliged to kid gloves in Germany. Finally, the German undertake any type of mediation or customs authorities are very cooperative in arbitration before bringing a case before the identifying patent-infringing goods and in courts. In light of the number of cases, ADR seizing such goods. Gottfried Schüll is a prominent and highly renowned patent litigator. He has handled various high-profile cases for global clients, both as lead counsel and as part of an international legal counsel team. The Dusseldorf Appeals Court has appointed him as an independent court expert. Based on his degree in physics from RWTH Aachen University, Mr Schüll handles cases related to various sophisticated technologies. 56 Patents in Europe 2011/2012 Gottfried Schüll Partner [email protected] +49 211 90 490 0 COHAUSZ & FLORACK Germany www.cohausz-florack.de www.iam-magazine.com Greece Greece By Eleni Lappa, Drakopoulos Law Firm, Athens with validity and infringement? Are they handled together or separately? In Greece, the civil courts have jurisdiction both nullity and infringement actions 1. What are the most effective ways for over a European patent holder whose rights for patent rights (as opposed to trademark cover your jurisdiction to enforce its rights, where jurisdiction is split between the rights in your jurisdiction? administrative and civil courts, respectively). Historically, the enforcement of patent It is not uncommon for an infringer to put rights in Greece has been a challenging forward an invalidity objection oreven a issue. One of the key factors to bear in mind nullity action as a counterclaim purely as a is vigilance through local units and defence tactic. Even if that does not occur, representatives in order to ensure that although unlikely, the court may touch on infringements are brought to the patent the validity of the patent at the heart of the holder’s attention quickly and that swift action is taken. This is important because, in general, a patent infringement claim will be brought alongside an unfair competition claim, and the latter requires the prompt initiation of court proceedings. Although the previously applicable six-month prescription period was extended to 18 months more than a year ago, promptness in taking action is still always advisable. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The Greek courts have developed some practical expertise in patent matters, although the set-up of the court system still far from enables a clear focus on patent issues from the judiciary. As such, although an IP court department has existed since 2006, there is still no patent court department within it. It is hoped that in future, the courts will acquire expertise through practice. Therefore, the safest approach is for a patent owner to expect to have to deal with all aspects of its patent, including validity (ie, novelty, inventive step and industrial application), when challenging infringement before the courts. 3. How do your country’s courts deal www.iam-magazine.com infringement action. As there is no separate court sector with jurisdiction for patent nullity and infringement actions, the advantage of this particular system is the avoidance of delay, as in most cases actions for nullity and infringement of the same patent are consolidated and heard in a single proceeding. 4. To what extent is cross-examination of witnesses permitted during proceedings? A typical court hearing involves the examination of one witness per adversary. The court hearing primarily focuses on the questions addressed to each side’s witness by its own counsel, followed by crossexamination by the other side. Lawyers representing the parties do not argue the case orally, but rather via their writs and pleadings. The court panel may also ask questions (especially the court rapporteur and the presiding judge) if certain issues remain unclear to the court. The proceedings are short, and therefore the questions raised and the answers put forward by witnesses play a significant role in the process. 5. What role can and do expert witnesses play in proceedings? Due to the court’s lack of specialisation in Patents in Europe 2011/201257 Greece patent matters, the use of expert witnesses has repeatedly proven to be of paramount importance in such proceedings. Aside from the court hearing witnesses, the parties can submit sworn affidavits from expert witnesses (either Greek or foreign), provided that the other side is given sufficient and timely notice. If the expert witness is truly an authority on the subject, the courts will likely be influenced, and in any case they will rely heavily on the expert witness testimonies to fully consider the matter. binding effect. However, over the past 10 to 15 years the Greek courts have tended to welcome decisions on the same issue from other jurisdictions, particularly those with more advanced or specialised patent courts. They also consider any such decisions from other Greek courts. It is always a good strategy to cite any past decisions on the same issue. 10. Are there any restrictions on who parties can select to represent them in a dispute? As Greece has no registered patent 6. Is pre-trial discovery permitted? If so, attorneys, there are no restrictions on using regular attorneys. Nevertheless, due to the to what extent? Greek law makes no provision for pre-trial complexity of the issues involved and the discovery. In fact, adversaries try to keep lack of regular attorney specialisation on their cards close to their chests until the patent issues, the best policy is to retain last minute and often use the element of specialist patent agents or attorneys who surprise in the court proceedings if feasible. are familiar with international jurisprudence and other resources, and can 7. Do the courts in your jurisdiction address the key issues effectively. apply a doctrine of equivalents? The courts follow Article 17(6) of the Patent 11. Are the courts willing to consider the Law (1733/1987), whereby if the same result reasoning of courts in other is proven to be achieved, then by default the jurisdictions that have dealt with same or equivalent method or process is similar cases? deemed to have been applied to achieve that Yes. As there is an effort to direct IP result. matters through the specialist IP court department set up some years ago, the 8. Are certain patent rights (eg, those Greek courts have not yet acquired the relating to business methods, software substantive expertise in patent matters to be found in other jurisdictions. Therefore, and biotechnology) more diff icult to enforce than others? they are keen to consider judgments on the Under Article 5(2) of the Patent Law, the same issue from other jurisdictions. following do not qualify as inventions: • Scientific theories and mathematical 12. How easy is it for defendants to delay methods. proceedings and how can plaintiffs • Aesthetic creations; designs. prevent them from doing so? • Rules and methods for exercising mental Defendants commonly delay proceedings by activities, games and financial activities. requesting postponements; under the Greek • Computer software programs and data court system, such requests are granted presentation. more often than not if it is the first time that such a request has been made. In addition, in order to be considered Plaintiffs always have the opportunity to patentable under the Patent Law, a patent oppose such requests, especially if right must meet the criteria of novelty, witnesses from overseas are due to attend inventive step and industrial application, hearings. which is applicable in most jurisdictions. As Greece is not a substantive examination 13. Is it possible to obtain preliminary jurisdiction, these criteria come into play injunctions? If so, under what whenever enforcement issues arise and circumstances? become the subject of judicial scrutiny in Preliminary injunctions are granted in order to ensure that a granted patent is an urgent cases where the judge can establish a enforceable patent right. prima facie actionable claim for the petitioner. Given the complexity of patent 9. How far are courts bound by previousissues, the main problem is that a certain decisions in cases that have covered amount of preparation is required in order to initiate preliminary injunctive relief similar issues? As Greece is not a common law jurisdiction, proceedings, and in most cases the courts precedent – although important – has no tend to be sympathetic to the circumstances 58 Patents in Europe 2011/2012 www.iam-magazine.com Greece There is no set formula for calculating damages and the chosen calculation depends on the court’s discretionary judgment and the claim put forward by the plaintiff surrounding a patent infringement matter. • Publication of the court order in the press (if so requested by the plaintiff) at 14. How much should a litigant plan to the defendant’s cost and under the plaintiff’s supervision. pay to take a case through to a decision at first instance? This depends on the case and cannot be 17. How are damages awards calculated? assessed arbitrarily. In comparison with Is it possible to obtain punitive damages? Damages in patent infringement cases are usually calculated either as the applicable equivalent of royalties or as loss of profits. There is no set formula for calculating 15. Is it possible for the successful party in a case to obtain costs from the losingdamages and the chosen calculation depends on the court’s discretionary party? Yes. Based on the applicable provisions, the judgment and the claim put forward by the winning party is almost always guaranteed plaintiff. to secure its court fees for the matter if they are claimed appropriately in the action. 18. How common is it for courts to grant permanent injunctions to successful 16. What are the typical remedies plaintiffs and under what circumstances granted to a successful plaintiff by the will they do this? It is not uncommon for courts to grant courts? The typical remedies are: permanent injunctions that are immediately enforceable if there are circumstances that • An injunction, which may be temporary require this, particularly in relation to or permanent (depending on the irreparable harm and damage. circumstances) and may also be enforceable immediately or not 19. How long does it take to obtain a (depending on the claim submitted). decision at first instance and is it • A fine for violation of a court order, possible to expedite this process? which is measured per infringing item The length of time needed for proceedings found, calculated in regard to a at first instance depends on the caseload of monetary amount requested by the the court at the time when the matter plaintiff and assessed by the court. proceeds to a hearing. An injunction • Seizure of infringing items and possible petition proceeding takes a few months, retention by a court-appointed while a main infringement action may take garnishee, which may also be the more than a year, depending on possible plaintiff’s legal representative. postponements. The process can be other jurisdictions, Greece is considered to be one of the least expensive jurisdictions for filing suit against an infringer. www.iam-magazine.com Patents in Europe 2011/201259 Greece 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Although there are no official statistics, 20. Under what circumstances will the from practical experience there are grounds losing party in a first instance case be for suggesting that the Greek courts tend to granted the right to appeal? How long be pro-patentee; however, even on anex does an appeal typically take? officio basis, they always examine the An appeal is possible only for the decision validity of the patent which forms the legal on the main action (and not for the basis of the action. Although this is not injunction, which may be stayed in certain always a pro-patentee approach, it stems circumstances). The right to appeal the main from the fact that Greek national patents action decision is not subject to the granting are not subject to substantive examination of a relevant right to appeal; provided that before granting. Overall empirical data there are grounds to appeal, the interested indicates that the Greek courts are often party may do so and the appeal court will pro-patentee. examine ex officio whether the appeal has grounds. The adjudication of an appeal court 23. Has your jurisdiction signed up to proceeding takes more than 18 months. the London Agreement on Translations? If not, how likely is it to do so? 21. Are parties obliged to undertake anyTo date, 16 of the 38 European Patent type of mediation/arbitration prior to Convention member states have signed up to the London Agreement, but Greece is not bringing a case before the courts? Is ADR a realistic alternative to litigation? one of them. It seems unlikely that Greece In the main infringement action, and will sign up to the London Agreement in the provided that the proceeding is before the foreseeable future. three-member court of first instance (this depends on the legal grounds for the 24. Are there any other issues relating to action), the Code of Civil Procedure requires the enforcement system in your country the parties to attempt mediation before the that you would like to raise? hearing. This takes the form of the plaintiff Efforts should be made to streamline the requesting to meet with the defendant and process of protecting patent rights in the expedited by requesting an earlier court hearing, if available. filing with the court a report on the outcome of the meeting before the hearing. If the meeting has a successful outcome and the parties settle, the safest option is to enter a consent award judgment with the court – that is, the court will confirm the settlement agreement in the form of a court order, which is then enforceable as such. Greek courts by instituting an exclusive division within the IP court department for the adjudication of patent matters. This will help to advance the knowledge and sophistication of the Greek courts, and will also enhance the credibility and reliability of procedures to enforce patent owners’ legitimate rights. Eleni Lappa graduated with an LLB (hons) from Kingston University, United Kingdom and has a combined knowledge of the UK, US and Greek legal systems, having worked for a considerable time in all three jurisdictions in various positions and firms. She has extensive experience in IP law and international alternative dispute resolution. Ms Lappa has been an active member of the International Trademark Association for several years and an elected Institute of Trademark Attorneys overseas member; she is also a member of the European Communities Trademark Association and the Pharmaceutical Trademarks Group. For the past decade, she has been involved in various international IP law publications. She advises major multinational corporations on infringement matters in respect of patents, trademarks and unfair competition, and has extensive experience in Uniform Domain Name Dispute Resolution Policy matters. In 2009 Ms Lappa joined Drakopoulos Law Firm as a partner. 60 Patents in Europe 2011/2012 Eleni Lappa Partner [email protected] +30 210 6836 561 Drakopoulos Law Firm Greece www.drakopoulos-law.com www.iam-magazine.com Iceland Iceland By Gunnar Örn Hardarson and Asdis Magnusdottir, Arnason Faktor, Reykjavik 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? 1. What are the most effective ways for There a are no specialist patent courts in European patent holder whose rights Iceland. Patent cases, like all other cases, are cover your jurisdiction to enforce its tried before general courts, although cases involving patents are all tried by the rights in your jurisdiction? An important remedy for a patent holder in Reykjavik District Court. Iceland is the possibility of obtaining a To date, the number of patent cases preliminary injunction against the allegedly tried before the Icelandic courts has been infringing act. Such an injunction is not very low, although it is increasing. granted by courts, but by a government Therefore, judicial expertise is very limited. authority, the district magistrate. This However, the courts can call on experts to action is relatively swift and a ruling can be assist them in specific cases, such as patent issued within a few weeks. However, a preliminary injunction must be verified by the court; an application to the court must be filed within one week of the court issuing the injunction. General court proceedings are also possible without any prior injunction measures. The court system is made up of two stages: eight district courts and the Supreme Court. All patent cases, including verification cases following injunctions, are dealt with in the Reykjavik District Court. Under the new Collection of Evidence Act (53/2006), under certain circumstances a rights holder can obtain the assistance of sheriffs to collect evidence following a court order to that effect. Where the court considers that there is a risk that evidence will be hidden, destroyed or altered, or that a delay in the case may cause harm, it may decide to proceed without notifying the alleged infringer. Remedies are also available under customs laws. If there is a belief that infringing products are being imported, such products can be held by Customs at the request of the rights holder. In such cases the rights holder must submit an indemnity to cover any financial damage caused if it turns out that the seizure was not justified. www.iam-magazine.com cases. Such experts need not be lawyers, but are usually professionals in the relevant technical field. Another option is to appoint outside assessors to give an expert assessment regarding certain questions or uncertainties in the case at hand. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? In infringement cases, the defendant can counter-summon the plaintiff claiming invalidity of the patent. In such cases the validity of the patent is dealt with at the same time as the infringement claim. 4. To what extent is cross-examination of witnesses permitted during proceedings? Both parties have the right to question witnesses; the party which called the witness asks questions first and the opposing party then has an opportunity to cross-examine. All cases before the Icelandic courts go through oral proceedings. Parties present their case and explain the submitted materials and other evidence that they have put forward. Evidence can comprise statements from parties before the court, statements from other witnesses, expert Patents in Europe 2011/201261 Iceland assessments and their statements before the court, written materials and other substantial materials. Therefore, there are no provisions in Icelandic law that would act as an obstacle to the enforcement of European patents in this respect. Again, however, there is little 5. What role can and do expert witnesses case law in the field and it is therefore difficult to predict the possible outcome in play in proceedings? There are general rules with which parties such cases. must comply in order to have a courtRegarding computer software-related appointed expert assessor. An expert inventions, to date the practice of the assessor can answer questions that pertain Icelandic Patent Office has been to follow to, for example, the facts in a given case. European Patent Office practice. The role of an expert assessor is limited so Consequently, one would expect that this as to not overlap with the role of the judge would also apply to the courts. – that is, the assessor cannot answer general questions that pertain to the 9. How far are the courts bound by interpretation of the law or questions, as previous decisions in cases that have these are within the role of the judge. The covered similar issues? judge then decides the evidential value of an In general, the courts look to precedent if expert assessment. In general, an expert the cases in question are similar and there assessment is usually considered strong have been no changes in the laws. Supreme evidence with regard to the questions that it Court precedent is of particular importance covers. in this respect. 6. Is pre-trial discovery permitted? If so, 10. Are there any restrictions on who to what extent? parties can select to represent them in a The pre-trial discovery phase, as it is dispute? known in the United States, does not exist Although parties can represent themselves in Iceland. in the Icelandic courts, this rarely happens, and particularly not in complex matters such as those involving patents. In order to 7. Do the courts in your jurisdiction apply a doctrine of equivalents? represent others in court, one must be an According to Icelandic law, the scope of the patent is based on the patent claims. The claims are constructed with reference to the description given in the patent. In general, the courts will, to some extent, use the doctrine of equivalents in resolving infringement matters. However, limited court precedent means that detailed rules are not available. Moreover, as Iceland has been a European Patent Convention (EPC) member state since 2004, it is bound by the Protocol on the Interpretation of Article 65 of the EPC, although the protocol is not directly applicable in Icelandic law. To date, the courts have indicated that they will exercise the doctrine of equivalents, but the full extent of how much they will use the protocol and the doctrine of equivalents remains to be seen. attorney at law specially legalised before the Icelandic courts. Patent attorneys (patent agents) are not allowed to represent others in court. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the Icelandic courts are willing to consider reasoning and precedents given by courts in the other Nordic countries. This also applies in the field of IP rights. Court decisions from other countries might also be relevant, particularly if they are related to the interpretation of international agreements to which Iceland is a party. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? 8. Are certain patent rights (eg, those Parties to a court proceeding cannot delay a relating to business methods, software case in accordance with their own will, even and biotechnology) more diff icult to if they both agree. The judge should deny pointless extensions of terms to ensure that enforce than others? Since 1st November 2004, the patent the case will be resolved quickly and legislation has been fully harmonised with effectively. This rule prevents parties from the EPC. Icelandic law has also been delaying a procedure either on their own or amended to comply with the EU Directive in agreement with the other party. on the Legal Protection of Biotechnology Inventions. 13. Is it possible to obtain preliminary 62 Patents in Europe 2011/2012 www.iam-magazine.com Iceland injunctions? If so, under what circumstances can this be done? Preliminary injunctions are granted by a government authority, the district magistrate. Such actions are relatively swift and a ruling should be issued within a few weeks. An injunction is possible if the rights holder can prove that: • An act is likely to infringe its legitimate rights. • The act has already begun or is pending. • The owner’s rights will be substantially harmed if it is forced to wait for a court resolution. Furthermore, it must be proven that the general rules on torts will provide insufficient protection for the rights holder. There is also a comparison of the interests of the rights holder to have the injunction granted and the interests of the alleged infringer to pursue its actions. If an injunction is granted, a case will immediately follow in the courts in order to verify the preliminary injunction (such case must be filed within one week of the issuance of the preliminary injunction). The alleged infringement will be dealt with in the same case. the patent, as well as damages for possible further injury. For more serious infringement where intent is proven, punishment by fine is provided for, and in very serious circumstances an infringer can be imprisoned for up to three months. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Punitive damages are not possible, but only damages meant to cover harm done. It is up to the party claiming damages to prove the harm or costs incurred by the infringement. It is left to the judge to decide the amount when deciding reasonable compensation for exploitation of the patent. It is likely that the court will take into account agreements in general within the field in question, such as licence agreements. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Again, it is difficult to make general assumptions due to the limited number of precedents at hand. However, in general, injunctions are considered to be an important and effective legal remedy for rights holders in Iceland. The limited 14. How much should a litigant plan to practice in Iceland has been in line with the pay to take a case through to a decision view in the other Nordic countries in this regard. at first instance? This is difficult to estimate. The number of cases has been very limited in the past and 19. How long does it take to obtain a those that have arisen have not been very decision at first instance and is it complex. To give some guidelines, the cost possible to expedite this process? is likely to be from €20,000 to €30,000 to It takes from six to 12 months to complete a take a non-complex patent case through the case at first instance – a substantial part of first instance court. the time can be used to obtain an expert assessment if requested. A request for an 15. Is it possible for the successful party expert assessment therefore usually delays a in a case to obtain costs from the losingfinal decision in the case. party? There is a special procedure before the According to the laws on court procedures, a courts for cases requiring quick resolution. party can make a claim to obtain costs from However, this procedure is generally not the losing party. The judge can decide to available in a typical infringement case. An award costs; in general, if a party loses a IP-related matter might fall under the case in all major aspects, it will bear the category of cases dealt with through this costs. The decision regarding the amount of special procedure if the matter relates costs to be paid is within the powers of the directly to a decision of government judge. authorities. 16. What are the typical remedies granted to a successful plaintiff by the courts? It is hard to make general assumptions regarding typical remedies, due to the limited number of cases tried before the Icelandic courts. The Patent Act allows for reasonable compensation for exploitation of www.iam-magazine.com 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal from the district courts to the Supreme Court is possible. The criteria for granting an appeal are not strict, but relate mainly to the minimum amount claimed if Patents in Europe 2011/201263 Iceland 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The general issue of concern in Iceland in relation to IP enforcement and, in particular, patent enforcement is the courts’ lack of experience in dealing with such cases. Therefore, it is difficult to predict a likely 21. Are parties obliged to undertake anyoutcome and uncertainty is high. The rules on proof are not well defined type of mediation/arbitration prior to bringing a case before the courts? Is in Icelandic law and practice relating to patent infringement and invalidity. This is ADR a realistic alternative to litigation? It is of course possible to solve cases mainly due to the lack of court precedent. through arbitration in Iceland. However, The basic rule is that the burden of proof arbitration is rarely used in IP matters and regarding infringement lies with the party is not recommended as a realistic alleging the infringement. The judge then alternative, due to the lack of experienced decides, in accordance with general rules on arbitrators in such cases in Iceland. proof in Iceland, whether the facts have been proven. However, there are special rules regarding the burden of proof in an 22. In broad terms, how pro-patentee are the courts in your jurisdiction? infringement case involving process patents. It is difficult to categorise Icelandic courts If the alleged infringer makes the same in respect to how pro-patentee they might product as the process patent covers, it has be, primarily due to the low number of the burden of showing that the product is cases brought before the courts. not made with the patented process. In cases involving patent invalidity, the 23. Has your jurisdiction signed up to party alleging invalidity has the burden of proving that to be the case. Here again it is the London Agreement on Translations? If not, how likely is it to do so? within the general role of the judge to Iceland was one of the signatory states to the decide whether the claim has been proven. London Agreement and the agreement took In addition, it is important to emphasise the claim involves a certain amount of money or the estimation of the overall interests at stake. The minimum amount is around €2,000. An appeal must be lodged within three months of a court decision of first instance. The appeal process takes about six to eight months. effect in Iceland on 1st May 2008. In fact, the Patent Regulation was amended as early as 2001 in line with the London Agreement, so from that time only the translation of claims into Icelandic has been required. that the Icelandic patent laws have been amended to comply with the EPC. It remains to be seen to what extent the Icelandic courts will look to court precedents in relation to the EPC. Gunnar Örn Hardarson is a European patent attorney and has a BSc in mechanical engineering. After more than 25 years in the IP field he has extensive industry and private practice experience. His practice focuses on drafting and prosecution in the mechanical field, opinion work, infringements, appeals and litigation support. Mr Hardarson is a member of various international organisations including the International Federation of Intellectual Property Attorneys, the International Trademark Association (INTA), the Union of European Practitioners in Intellectual Property (UNION), the International Association for the Protection of Intellectual Property (AIPII) and the Institute of Professional Representatives before the European Patent Office (epi). Gunnar Örn Hardarson Asdis Magnusdottir is an attorney at law with 10 years’ experience in the IP field, in private practice, at the Icelandic Patent and Trademark Office and as an IP law lecturer at Reykjavik University Law Faculty. Ms Magnusdottir graduated from the Law Faculty of the University of Iceland, where her final thesis was entitled “The legal protection of biotechnology inventions”. She completed an LLM in law, science and technology at Stanford University, California. Ms Magnusdottir holds a part-time teaching position in IP law at Reykjavik University. Her practice focuses on trademarks, licensing and consulting in IP disputes. She is a member of various international organisations, including INTA, the European Communities Trademark Association, AIPPI, UNION and epi. Asdis Magnusdottir 64 Patents in Europe 2011/2012 Managing director and partner [email protected] +354 5400200 Arnason Faktor Iceland www.arnasonfaktor.is Attorney at law and partner [email protected] +354 5400200 Arnason Faktor Iceland www.arnasonfaktor.is www.iam-magazine.com Ireland Ireland By Yvonne McKeown, MacLachlan & Donaldson, Dublin with validity and infringement? Are they handled together or separately? Validity and infringement are heard by the Irish courts. Validity can be 1. What are the most effective ways for together a European patent holder whose rights challenged by petition to either the Irish cover your jurisdiction to enforce its Patents Office or the High Court. If any rights in your jurisdiction? other proceedings concerning the patent Enforcement of a European patent in Ireland have already been instigated before the is available only by petition to the High court, the Patents Office may not be used as Court in civil proceedings. Infringement the forum for challenging validity. In the proceedings are handled by the Chancery event of a revocation action being Division of the High Court. A special commenced in the courts, a counterclaim section of the High Court, known as the for infringement may be made and the court Commercial Court, has powers to hear and fast track IP disputes. The Commercial Court is empowered to hear general commercial disputes of high value and all IP cases. High Court proceedings can be transferred to the Commercial Court on application by either party to the dispute. Unlike in the Chancery High Court, judges handling Commercial Court disputes case manage the litigation and short deadlines are imposed. The Irish Patents Office plays no role in infringement proceedings. will hear the two together. Alternatively, if an infringement action is taken first, the defendant can counterclaim for revocation of the patent. 4. To what extent is cross-examination of witnesses permitted during proceedings? Pre-trial exchanges of reports prepared by expert witnesses usually occur in cases before the Commercial Court. Such reports address questions of both validity and infringement. The Commercial Court encourages the parties to narrow the issues in dispute as much as possible before trial, 2. What level of expertise can a patent so that the examination and crossowner expect from the courts in your examination of experts and witnesses during the trial can be restricted to the core jurisdiction? Ireland has no specialist patent court; nor areas in dispute. does it traditionally have a specialist patent In cases handled by the Chancery High bar. Since the establishment of the Court, expert witnesses assist the court in Commercial Court, it has become usual for invalidity or infringement challenges patent disputes to be transferred to it; through oral evidence. consequently, Commercial Court judges have gained experience in handling patent 5. What role can and do expert witnesses disputes. The Patents Act enables a court to play in proceedings? appoint a scientific assessor to assist the In Ireland, the role of the expert witness is judge on technical aspects of a case and the to assist the court and experts have a duty courts have some history of using this to be impartial. Any suspicion that an provision in technically complex cases. expert is biased towards the position of the party instructing him or her can damage the credibility of the expert. 3. How do your country’s courts deal www.iam-magazine.com Patents in Europe 2011/201265 Ireland Pre-trial exchanges of expert reports are the norm in the Commercial Court. The role of the expert witness is to explain to the court the state of the art in the field at the date of the patent in question. Experts also explain to the court what they, as persons skilled in the art, understand to be the teaching of the patent document. In infringement attacks experts may opine on technical issues relating to the alleged infringement. Expert witnesses may also be called on to conduct experiments and to supervise experiments conducted by the other party to the dispute. While experts may assist the court on technical issues, it is the sole prerogative of the court to determine the meaning and scope of the patent claims. and biotechnology) more diff icult to enforce than others? The Irish courts take the same approach to enforcement, irrespective of the technological field. Complex technologies may require a higher level of explanation for the court than less complex ones and this can be done by way of expert evidence. The court also has the power to appoint an assessor to assist it in understanding scientific or technical complexities. are both relevant and necessary for the fair disposal of the case or to save costs. and barristers have the right of representation before the courts, and it is the normal course to instruct both solicitors and barristers in any proceedings before the courts. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Judgments issued by higher courts are binding on that court and lower courts. In Ireland, invalidity may be considered by the Patents Office or the High Court. Decisions 6. Is pre-trial discovery permitted? If soof , the Patents Office are appealable to the to what extent? High Court and all High Court judgments – Pre-trial discovery is a usual part of the whether at first instance or on appeal from proceedings and arises either by agreement the Patents Office – can be appealed to the between the parties or by court order made Supreme Court. Appeals to the Supreme following an application to the court by one Court can be made only on a point of law. of the parties. Both parties make discovery of all documents presently or formerly in 10. Are there any restrictions on who their possession, custody or power which parties can select to represent them in are pertinent to the issues in dispute and a dispute? which are not privileged. Discovery is Patent attorneys can represent clients limited to those documents sought which before the Patents Office. Only solicitors 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Ireland does not apply a doctrine of equivalents. The scope of protection conferred by a patent is determined by the claims, with the description and drawings being available to assist in interpreting the claims. It is specifically provided under Irish law that when interpreting patent claims, the Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC) shall be applied. This protocol requires that in determining the scope of a claim, a balance should be found which gives the patent proprietor fair protection, while providing third parties with reasonable certainty as to what is covered by the claims. Elements which are equivalent to elements specified in a claim are to be taken into account when determining the protection conferred. It falls exclusively to the court to determine the scope and meaning of the claim, and the judge must do this assuming the mantle of the person skilled in the art. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Under Irish patent law, the courts must take notice of any decision or expression of opinion under the EPC by a competent authority on any question concerning the convention. Additionally, Irish courts are willing to consider judgments emanating from other jurisdictions on points which have not already been ruled on in Ireland. In particular, the courts are amenable to hearing the outcome of proceedings in other convention contracting states. Furthermore, Irish courts are willing to hear how other common law jurisdictions have dealt with a point of law. Judgments from other countries are not binding on Irish courts, but may be persuasive. Concerning invalidity, if an application for revocation of a patent is filed in Ireland while an opposition or appeal is pending at the European Patent Office (EPO), the court 8. Are certain patent rights (eg, those may delay the Irish proceedings pending a relating to business methods, software final decision from that office. 66 Patents in Europe 2011/2012 www.iam-magazine.com Ireland 12. How easy is it for defendants to delaymade by both parties to proceedings. The unsuccessful party will then bear the legal proceedings and how can plaintiffs prevent them from doing so? costs of the winning party. In practice, the Cases before the Chancery High Court costs are assessed by the taxing master of proceed slowly and it is relatively easy for a the High Court, who is empowered to make defendant to delay matters even further (eg, an order concerning the percentage of the by seeking extra time for taking actions). winner’s costs which should be paid. However, most patent disputes are transferred to the Commercial Court and 16. What are the typical remedies granted thus the best way for a plaintiff to minimise to a successful plaintiff by thecourts? a defendant’s delaying tactics is to apply at Remedies typically available are: an early stage for the case to be moved to • A permanent injunction against the Commercial Court. Once transferred, a infringement. case is actively managed by the Commercial • An order for delivery up or destruction Court judge, who will take a poor view of of infringing products. any attempts by the defendant to delay and • A declaration that the patent is valid. will make orders to prevent delaying tactics. • Costs. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are available in Ireland. Although short emergency injunctions are available, more usually applications for interlocutory injunctions are sought, with both sides having an opportunity to be heard. Speed is of the essence in requesting an interlocutory injunction and any delay in applying can be fatal. The court must consider whether there is a serious question to be tried and, if The court can also order that the infringer pay damages or make an account of profits arising from the infringement. Plaintiffs usually request damages rather than an account of profits. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are assessed in respect of the different acts of infringement which are proven – namely, making, offering, putting on the market, importing or stocking an infringing product, or using a patented so, whether monetary damages could be an inadequate remedy for the party seeking the injunction. It assesses where the balance of convenience lies. For an injunction to be granted, the party seeking it must give an undertaking to the other side to pay damages to it if, at full trial, it emerges that the injunction should not have been granted. Conversely, if the injunction is refused, the other party must undertake to compensate the plaintiff for harm caused by the absence of interlocutory relief. process. Damages are awarded to compensate a patent owner for loss arising due to infringement. Punitive damages are not available. No award of damages can be made against a defendant which proves that at the date of the infringement, it was unaware of and had no reasonable grounds to suppose that a patent existed. To avoid this, the plaintiff should engage in pre-trial correspondence to notify the defendant of the existence of the patent. If a patent was amended, damages for 14. How much should a litigant plan to infringement which occurred before the pay to take a case through to a decision amendment can be denied unless the patent at first instance? owner proves that the patent as granted was Costs in excess of €175,000 for a relatively drafted in good faith and with reasonable non-technically complex case should be skill and knowledge. Damages may also be anticipated. For technically complex cases, restricted where a court finds that the costs can be substantially higher. For a case patent is valid only in part. To the extent which is before the Commercial Court, costs that the partially valid patent is infringed, will mount up earlier in the proceedings the court may exercise its discretion to than for cases in the Chancery High Court, award damages, provided that it is satisfied since detailed pleadings are exchanged at an that the patent specification was drafted in early stage, as are expert reports, good faith and with reasonable skill and experiments and discovery, if any. knowledge. 15. Is it possible for the successful party 18. How common is it for courts to grant in a case to obtain costs from the losingpermanent injunctions to successful party? plaintiffs and under what circumstances Yes. An award of costs is a usual request will they do this? www.iam-magazine.com Patents in Europe 2011/201267 Ireland A permanent injunction against a defendant that has been found to infringe a valid patent is a statutory right and will be granted by the court as a normal remedy. arbitration before bringing a case to the courts. The Commercial Court takes a favourable view of ADR and encourages parties to use it. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Proceedings in the Chancery High Court are slow and several years can pass before a first instance judgment is handed down. It is relatively easy for the defendant to delay the proceedings by seeking extra time to complete a procedural step. Cases which are transferred to the Commercial Court proceed much faster and judgment can be expected within about two years. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Very few patent cases are heard in Ireland and those that are begun are usually settled before trial. There is no evidence of bias in either direction. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Ireland has not yet ratified the London Agreement; consequently, if a European patent is in French or German, it is 20. Under what circumstances will the necessary to file a full English translation at losing party in a first instance case be the Irish Patents Office. Ratification is granted the right to appeal? How long expected to occur in the near future. does an appeal typically take? Leave to appeal is not required as both 24. Are there any other issues relating to parties have the right to make an appeal. the enforcement system in your country Supreme Court appeals can be made only on that you would like to raise? a question of law. The Supreme Court has a Caution should be exercised when claiming substantial backlog of cases and patent rights before starting infringement consequently two to three years can elapse proceedings. Irish law includes provisions to before it hears an appeal. punish the making of unjustified threats of patent infringement. Anyone who feels 21. Are parties obliged to undertake anyaggrieved by threats can complain to the type of mediation/arbitration prior to courts and seek an injunction and damages, bringing a case before the courts? Is unless it is shown that the threats were justified. A party which makes or imports a ADR a realistic alternative to litigation? There is no requirement in Ireland for product for disposal or usinga process cannot parties to undertake mediation or take action to restrain unjustified threats. Yvonne McKeown graduated from Trinity College, Dublin with a degree in genetics. She was awarded a PhD in molecular biology from Trinity College in 1984. Dr McKeown worked as a researcher at the Organisation for Applied Scientific Research in the Netherlands, Plant Genetic Systems in Belgium and the Department of Zoology, University College, Dublin. Dr McKeown joined MacLachlan & Donaldson in 1988. She is a European patent attorney with extensive experience in advising clients in the life sciences, healthcare and food sectors, including the pharmaceuticals and medical devices fields. She has experience in due diligence, preparation of infringement opinions and patent litigation. Dr McKeown is a former council member of the European Patent Institute and a member of the Association of Patent and Trademark Attorneys, the Copyright Association of Ireland, UNION, the Licensing Executives Society and the International Association for the Protection of Intellectual Property. 68 Patents in Europe 2011/2012 Yvonne McKeown European patent attorney [email protected] +353 1 6763465 MacLachlan & Donaldson Ireland www.maclachlan.ie www.iam-magazine.com Italy Italy By Rossella Solveni and Giuseppe Mercurio, Rapisardi Intellectual Property, Milan written opinions with the judge’s expert. 3. How do your country’s courts deal with validity and infringement? Are they 1. What are the most effective ways for handled a together or separately? European patent holder whose rights Patent validity and infringement issues can cover your jurisdiction to enforce its be, and usually are, handled together in the same proceeding before the same court. In rights in your jurisdiction? In urgent cases the following preliminary both infringement and invalidity remedies are available to the patent owner: proceedings, technical issues are dealt with • Seizure – an order to seize products, by the court-appointed expert. tools and production plants, books of account and invoices and advertising 4. To what extent is cross-examination • • materials. Description – an order to inspect products, production plants, books of account, advertising and any associated documents in order to collect documentary evidence of the infringement and the extent thereof. Injunction – an order to cease the manufacture, trade and use of the infringing items or to remove the infringing items from the marketplace. In order to seek compensation for damages caused by the infringement, the patent owner should start a proceeding on the merits. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? A patent owner can expect a high level of expertise from the Italian IP courts. In Italy, IP civil litigation is handled by 12 specialised IP courts (Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice). Although the judges do not have specific technical backgrounds, during the trial the judge may appoint an expert to deal with technical issues. In addition, each party may appoint a technical expert, who can exchange both oral and www.iam-magazine.com of witnesses permitted during proceedings? In Italy, patent cases are largely based on written evidence. Witness examination is permitted at the request of the interested party and is authorised by the judge on a case-by-case basis. Witnesses can be heard only in relation to specific queries previously submitted and approved by the court, subject to evaluation of the relevance and admissibility of those queries. Although witnesses are not cross-examined, in addition to the submitted queries the court may ask them to provide further clarification in respect of the circumstances on which the relevant queries are based. 5. What role can and do expert witnesses play in proceedings? Expert opinions are frequently filed by the parties to support their technical arguments. There are no restrictions regarding the use of expert evidence. In patent cases the experts appointed by the parties participate actively by filing the relevant technical briefs and documents with the court-appointed expert. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is not permitted. The Patents in Europe 2011/201269 Italy Italian legal system does not provide for discovery in the common law sense. Pursuant to Article 129 of the IP Code, the patent holder can ask for description as a pre-trial measure. This allows the patent holder access to the infringer’s premises, production facilities, warehouses and/or accounts in order to describe the infringing items, as well as the means used to manufacture them, evidence as to the alleged violation and the extent thereof. If summoning the infringer before the court may prejudice enforcement of the order, the measure may be grantedex parte. When description is granted before the start of the case on the merits, the judge’s order shall also fix a mandatory time limit (no longer than 20 working days, or 31 calendar days should these represent a longer time period) for commencement of the case on the merits. The order becomes ineffective if it is not enforced within 30 days or if the case on the merits is not filed within the fixed deadline. Usually the court authorises the applicant to participate in the enforcement activities and appoint its own technical expert. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Even before the recent introduction of Article 52(3bis) of the IP Code (pursuant to which equivalents must be taken into consideration in order to determine a patent’s scope of protection), the doctrine of equivalents was commonly applied in infringement actions. According to some court decisions, infringement occurs when the main inventive idea underlying the invention is found in the alleged counterfeited goods. The Supreme Court, in line with the courts of other EU member states, has held that in order to find that a product infringes a patent, it is necessary first to consider the problem that the invention seeks to solve, and then to decide whether the way in which the alleged infringing product solves the same problem either belongs to the prior art or is patentable in itself. If so, the product does not infringe the patent; if not, then it constitutes infringement. the judge usually requests an expert witness to draft technical advice in order to grant such measure. Accordingly, the proceedings can often take more time than patent cases in other technical fields. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Italian courts are not bound by decisions rendered in previous similar cases, but they can certainly consider them. Precedents set by the most important courts (Milan, Turin, Rome and Naples) have some influence on the other IP courts. However, at the same time the various IP courts can take divergent positions on complex technical issues, particularly in infringement cases, creating conflicting lines of reasoning that a patent holder must take into account when choosing the venue. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers admitted to practise and enrolled in the Italian Bar Association can represent parties in an Italian dispute. The parties must grant a written power of attorney. In general, in patent litigation the parties designate a lawyer and, if the judge appoints an expert witness, also an expert specialised in the relevant technical field to liaise with the official expert. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the reasoning and decisions of courts in other jurisdictions have little influence in Italy; the Italian courts tend to be independent. Nevertheless, mostly with regard to interim measures, if the European Patent Office or a foreign court repeals the patent (or a corresponding foreign patent), the Italian court will take the relevant decision into consideration when assessing the applicant’s likelihood of success on the merits. 12. How easy is it for defendants to delay proceedings and how can plaintiffs 8. Are certain patent rights (eg, those prevent them from doing so? relating to business methods, software A defendant may delay proceedings each time it files a new request with its defence and biotechnology) more diff icult to enforce than others? briefs (eg, by claiming invalidity of the Business methods, software and plaintiff’s patent within an infringement biotechnology patents could be more action). However, if it is proven that the difficult to enforce, particularly in interim defence is groundless, the judge will take measures cases. Due to the complexity of this into account. In particular, should the the underlying technical scientific issues, losing party stay in proceedings in bad faith 70 Patents in Europe 2011/2012 www.iam-magazine.com Italy or with gross negligence, it will have to bear all relevant costs and can be ordered by the judge to pay damages to the other party pursuant to Article 96 of the Code of Civil Procedure. issued by the Italian Bar Association (with regard to lawyer fees) and usually amount to around 30% of the total costs incurred. 16. What are the typical remedies granted to a successful plaintiff by the 13. Is it possible to obtain preliminary courts? The typical remedies granted to a successful injunctions? If so, under what circumstances? plaintiff in a patent infringement action The IP Code provides a wide range of are: interim remedies: • A permanent injunction to cease the • An injunction to cease the infringing manufacture and sale of the infringing activities. products. • A penalty for non-compliance with the • An order to withdraw the infringing injunction. products from the market or to deliver • Seizure of the infringing products and them to the patent holder - a penalty the means of manufacturing them, as used in case the infringer does not well as evidence of infringement. comply promptly with any measure • Publication of the interim decision in ordered by the court. one or more newspapers or trade • Compensation for damages. magazines. • Publication of an abstract of the decision in one or more newspapers or The prerequisites of any interim remedy trade magazines. are the existence of a danger in delay and a prima facie case. The danger in delay 17. How are damages awards calculated? requirement means that the claimant must Is it possible to obtain punitive prove that the activity of the alleged damages? infringer will cause irreparable harm before The criteria to determine damages for the issuing of a first-instance decision. The patent infringement are set out in Article 125 of the IP Code as follows: prima facie case requirement means that the claimant must prove that it is allowed to • An amount equal to the lost profits of enforce its alleged rights and that there are good reasons to believe that such rights are being infringed by the defendant. Interim measures are usually granted after the court has heard both parties, but may also be granted ex parte where the claimant can prove that the defendant’s knowledge of the application or any delay in ruling may seriously affect the enforceability and effectiveness of the interim measure. • the patent owner. The royalties that the infringer should have paid under a licence agreement. In any event, the patent owner can claim the restitution of the profits earned by the infringer as an alternative to compensation for lost profits or in the amount that they exceed such compensation. Punitive damages are not allowed under Italian IP law. 14. How much should a litigant plan to pay to take a case through to a decision 18. How common is it for courts to grant at first instance? permanent injunctions to successful The overall cost of patent litigation is plaintiffs and under what circumstances significantly influenced by the complexity will they do this? of the case and of the issues involved. On It is quite common for courts to grant average, the costs of interim proceedings permanent injunctions in IP rights may vary from €25,000 to €35,000, and the infringement proceedings. An injunction costs of proceedings on the merits from can also be ordered against any intermediate €75,000 to €100,000, up to a first instance that had a part in the proceedings. When decision. issuing a permanent injunction, the judge may also fix a fine for each subsequent 15. Is it possible for the successful party violation of the order, as well as for any in a case to obtain costs from the losingdelay in compliance. There are no specific party? provisions requiring conditions for granting The winning party is usually entitled to permanent injunctions. recover part of the costs incurred from the However, unlike preliminary losing party. Recoverable costs include court injunctions, permanent injunctions cannot costs, lawyer fees and expert fees. Such be granted if the patent application is still costs are calculated on the basis of tariffs pending. Moreover, courts tend to be www.iam-magazine.com Patents in Europe 2011/201271 Italy reluctant to grant this measure when a patent is near to expiry. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? First instance proceedings on the merits may last as long as three to four years, depending on the complexity of the case at hand. If the relevant conditions are met, an application for interim measures before and during the pending proceedings on the merits may expedite the process. available as a possiblealternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Italian courts are motivated to assess and uphold the rights of patent owners. This has been particularly so in recent years, with the creation of 12 IP courts with highly qualified judges and the issue of the new IP Code. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Italian government has not signed the 20. Under what circumstances will the London Agreement and has made no losing party in a first instance case be announcements regarding its position on granted the right to appeal? How long this matter. does an appeal typically take? A first instance decision in patent 24. Are there any other issues relating to proceedings can always be appealed by the the enforcement system in your country losing party before the IP Division of the that you would like to raise? Court of Appeal within one month of The limited number of specialised IP courts notification of the judgment (or six months allows for a fairly homogeneous and if the judgment has not been served). The predictable ruling pattern, with only limited appeal proceedings usually take between jurisprudential differences among the two and three years. Occasionally the Court various IP judges. It is usually possible to of Appeal reconsiders the technical issues choose a specific competent court in which that were examined during the first instance to start an IP action. The selected court can proceedings and orders a supplementary be in either the place where the defendant is expert; in such case, the duration of the located or one of the places where the proceedings may be significantly longer. infringement took place. For example, if the infringed item is sold across the whole 21. Are parties obliged to undertake anyItalian market, the plaintiff can choose any type of mediation/arbitration prior to of the 1 2 relevant IP courts. bringing a case before the courts? Is Furthermore, one of the most relevant issues in the Italian IP system is the ADR a realistic alternative to litigation? The parties are not obliged to undertake possibility to apply for interim measures mediation or arbitration before bringing a and commence proceedings on the merits case before the courts. However, mediation is on the basis of a patent application. Rossella Solveni, attorney at law and member of the Milan Bar Association, has been with Rapisardi Intellectual Property since 1998. With several years of experience in the IP legal consultancy field, she directly handles court litigation in Italy while coordinating and supervising litigation in foreign countries. Her activities include dispute resolution, arbitration, contracting and extrajudicial procedures for patents, utility models, designs, trademarks, domain names and all internet-related issues. She is fluent in Italian, English and French. Rossella Solveni Giuseppe Mercurio, nuclear engineer and European and Italian patent attorney, joined Rapisardi Intellectual Property in 2002. Highly skilled in patent drafting, filing and prosecution, and with extensive experience in all IP-related matters, he provides assistance in litigation and all extrajudicial procedures for patents, designs and utility models, including oppositions, assignments and licensing. A member of the International Association for the Protection of Intellectual Property, he is also a technical expert before the Court of Milan. His particular area of technical expertise is mechanics. He is fluent in Italian, English and French. Giuseppe Mercurio 72 Patents in Europe 2011/2012 Attorney at law [email protected] +39 02 763011 Rapisardi Intellectual Property Italy www.rapisardi.com Patent attorney [email protected] +39 02 763011 Rapisardi Intellectual Property Italy www.rapisardi.com www.iam-magazine.com Montenegro Montenegro By Lidija B Djeric, Popovic Popovic Samardzija & Popovic, Belgrade of witnesses permitted during proceedings? The Montenegrin courts have little of dealing with patent 1. What are the most effective ways for experience a European patent holder whose rights infringement cases. According to the Law on cover your jurisdiction to enforce its Civil Procedure, after answering the general rights in your jurisdiction? questions, a witness shall be invited to The owner of a patent or holder of an discuss the relevant facts, which may be exclusive licence can institute civil followed by the witness being asked proceedings against any person infringing additional questions in order to confirm, its right to the patent. Preliminary supplement or clarify particular issues. The injunctions and measures to secure court may have the witnesses confront each evidence are provided by the Law on other if important facts from their Patents. statements conflict. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Cases concerning patent infringement in Montenegro have been rare since the country declared its independence on 3rd June 2006. This declaration officially terminated the former State Union of Serbia and Montenegro. The Montenegrin Intellectual Property Office officially commenced work on 28th May 2008 and the new Law on Patents came into force on 8th November 2008. 5. What role can and do expert witnesses play in proceedings? In patent infringement matters, expert witnesses play a significant role, since the judges often rely on expert opinion in respect of patent infringement. 6. Is pre-trial discovery permitted? If so, to what extent? No pre-trial discovery is provided for in Montenegro. Evidence is presented in court proceedings. The securing of evidence can be requested in a plaint, or even earlier, but such plaint must be filed within 30 days of the execution of the request to secure 3. How do your country’s courts deal with validity and infringement? Are theyevidence. handled together or separately? Matters concerning patent validity and 7. Do the courts in your jurisdiction patent infringement are handled separately. apply a doctrine of equivalents? Patent validity falls under the competence The doctrine of equivalents is not applied of the administrative courts, while patent by the Montenegrin courts. The Law on infringement is dealt with by the civil Patents provides that the scope of courts of first instance. The commercial protection acquired by a patent shall be courts are competent to handle disputes determined by the content of the claims, between legal entities, while the courts of whereby the description and drawings shall general competence deal with disputes be used to interpret the claims. involving natural persons. 8. Are certain patent rights (eg, those 4. To what extent is cross-examination relating to business methods, software www.iam-magazine.com Patents in Europe 2011/201273 Montenegro and biotechnology) more diff icult to enforce than others? According to Article 5(4) of the Law on Patents, business methods and computer programs are not to be considered as inventions within the meaning of this law. We believe that it is more difficult to enforce technically complex patents. injunction), together with the lawsuit or even during the litigation. The plaintiff must prove that its right has been or will be infringed. Pending a final decision, the court may order the following preliminary injunctions: • Seizure and/or withdrawal from the market of products made or obtained by patent infringement. • Seizure and/or withdrawal from the 9. How far are the courts bound by previous decisions in cases that have market of implements (eg, equipment, tools) predominantly used in the covered similar issues? The courts are not bound by previous protection of infringing products. decisions made in similar cases. Rulings of the • Prohibition of further infringing acts. Supreme Court ar e published and the lower courts value these rulings in similar cases. The court may ask the plaintiff to furnish additional evidence of the patent 10. Are there any restrictions on who infringement or of the demonstrable risk of parties can select to represent them in patent a infringement, and may order it to provide a security bond in order to prevent dispute? The parties may undertake actions in the any abuse. proceedings personally or through their attorneys. Foreign legal entities and natural 14. How much should a litigant plan to persons must be represented by the pay to take a case through to a decision attorney at law. at first instance? The estimation of court costs and attorney’s 11. Are the courts willing to consider the fees depend on the value of the dispute. The translation, verification and certification reasoning of courts in other jurisdictions that have dealt with costs for documents and the costs to obtain expert opinions should be also taken into similar cases? The Montenegrin courts are not obligated account. A rough estimation of the cost to to consider the reasoning of courts in other jurisdictions that have dealt with similar cases. However, as there is little court practice in patent dispute matters, the courts are likely to monitor legally valid and binding decisions from other jurisdiction. reach a first instance decision is between €12,000 and €20,000. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The losing party must compensate the 12. How easy is it for defendants to delay expenses of the other party. When deciding which expenses shall be compensated, the proceedings and how can plaintiffs prevent them from doing so? court shall take into consideration only the The defendants might delay proceedings by expenses that were necessary to conduct the starting proceedings before the proceedings. Such expenses and their administrative courts for annulment of the amounts shall be decided by the court after infringed patent. These proceedings shall be careful consideration of the circumstances. considered as preliminary questions in the The attorney’s fees are calculated according patent infringement litigation until a legally to the Fee Tariff; the real costs of valid and binding decision is issued in engagement of representative as well as respect of the validity of the subject patent. translation and certification costs are often In order to try to avoid such delays in much higher than costs determined by court. litigation, the plaintiff might request a preliminary injunction to prohibit further 16. What are the typical remedies granted infringing actions. to a successful plaintiff by thecourts? According to the Law on Patents, the 13. Is it possible to obtain preliminary following remedies are available following an infringement claim: injunctions? If so, under what circumstances? • Establishment of the fact that a patent Preliminary injunctions can be granted on infringement exists. request before filing a lawsuit for patent • Prohibition of acts constituting patent infringement (providing that the litigation infringement. is subsequently started within 30 days of • Compensation for damages caused by the execution of the preliminary infringement. 74 Patents in Europe 2011/2012 www.iam-magazine.com Montenegro • • • Publication of the court decision at the defendant’s expense. Seizure and/or destruction of products made or obtained by means of patent infringement (but no compensation). Seizure and/or destruction of material or articles (eg, equipment, tools) predominantly used in the creation of infringing products (but no compensation). competence, and within eight days in proceedings before the commercial courts. It takes more than one year to obtain an appeal decision. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties are not obligated to undertake any type of mediation/arbitration prior to 17. How are damages awards calculated?brining a case before the courts. During the Is it possible to obtain punitive procedure the court will encourage the parties to reach a settlement. If the court damages? The relevant provisions of the Law on considers that the dispute may successfully Contracts and Torts shall apply to damages, be resolved through mediation, it shall which comprise actual loss and lost profits. instruct the parties to participate in the If the infringement was committed meditation procedure and interrupt the intentionally or as a result of gross proceedings. If the parties do not resolve negligence, the plaintiff may claim up to the dispute through mediation, the court triple the amount of the actual losses and will schedule a new hearing within 90 days. lost profits. 22. In broad terms, how pro-patentee are 18. How common is it for courts to grant the courts in your jurisdiction? permanent injunctions to successful The Montenegrin courts have little experience in patent infringement matters plaintiffs and under what circumstances will they do this? and in future they are not likely to be proA permanent injunction can be ordered only patentee since the local courts usually take in the court judgment, and will take effect the side of domestic companies. once the judgment is legally valid and binding. 23. Has your jurisdiction signed up to 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It can take more than two years to obtain a first instance decision. In order to expedite the proceedings, it is possible to ask the court to issue a partial decision in respect of the legal grounds of the plaint, while the compensation for damages can be determined during further proceedings. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party always has the right to appeal within 15 days of the decision in proceedings before the courts of general Lidija Djeric was born in 1970 and admitted to the Bar in 1997. She obtained an LLB from the Education: Faculty of Law, University of Belgrade in 1996. She is a member of the International Association for the Protection of Intellectual Property, the International Trademark Association and the Chartered Institute of Patent Agents. Her practice areas include intellectual property, litigation, corporate law, bankruptcy and liquidation. She speaks English. www.iam-magazine.com the London Agreement on Translations? If not, how likely is it to do so? Montenegro has not signed the London Agreement on Translations. However, only translations of the claims of a European patent must be furnished within three months of the date on which the granted European patent was published. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Agreement on the Extension of European Patents to Montenegro entered into force on 1st March 2010. An extension to Montenegro is available for any European and international patent application filed on or after 1st March 2010. Lidija B Djeric Associate [email protected] +381 11 3239 442 Popovic Popovic Samardzija & Popovic Montenegro www.ppsp.rs Patents in Europe 2011/201275 Netherlands Netherlands By Peter Claassen, Martin Hemmer and Eliëtte Vaal, AKD, Breda with validity and infringement? Are they handled together or separately? There is no requirement for Dutch courts to 1. What are the most effective ways for deal a with validity and infringement European patent holder whose rights together. However, if opposition cover your jurisdiction to enforce its proceedings are pending regarding a rights in your jurisdiction? European patent, in most cases the court In the Netherlands, an effective system of will stay the proceedings pending the short notice proceedings is in place which decision in the opposition proceedings. makes it possible to obtain an injunction in four to eight weeks. As a result of the EU IP 4. To what extent is cross-examination Rights Enforcement Directive of witnesses permitted during (2004/48/EC), the option to obtainex parte proceedings? injunctions has been introduced into the Dutch legal system for IP rights. However, short notice proceedings and ex parte proceedings are relatively rare for patent infringements in comparison with the enforcement of other IP rights, due to the complexity of most patent cases. Another reason for this may be that the Hague District Court provides for accelerated proceedings on the merits of the case (the “VRO regime”) in patent infringements. This procedure follows a pre-set timeframe and, although it has some limitations, it is highly effective because it usually results in a verdict within one year. In the Netherlands, it is possible to file a request to initiate witness examinations before the start of legal proceedings. Cross examination is possible in standard proceedings on the merits of the case, but not in short notice proceedings. 5. What role can and do expert witnesses play in proceedings? Similar to the witness examinations, it is possible to file a request to obtain the opinion of an expert appointed by the court before the start of legal proceedings. During the proceedings, experts can be heard on the court’s initiative and at the request of the parties. These can be experts appointed by 2. What level of expertise can a patent the courts or testifying on behalf of a party. owner expect from the courts in your In accelerated proceedings on the merits of the case there is only limited room to hear jurisdiction? All patent cases are dealt with at first experts (testifying on behalf of a party) instance by a specialised chamber of the during the scheduled pleadings. Hague District Court. Therefore, the judges’ level of expertise is high. Judgments of the 6. Is pre-trial discovery permitted? If so, Hague District Court can be appealed to the to what extent? Hague Court of Appeal (together, “the Since the implementation of the IP Rights Hague patent courts”). After appeal Enforcement Directive, the court can order proceedings, appeal on cassation may be preliminary measures to preserve evidence instituted with the Supreme Court, but only in respect of the alleged infringement, with regard to issues of law. subject to the protection of confidential information. Such measures may include a detailed description and the taking of 3. How do your country’s courts deal 76 Patents in Europe 2011/2012 www.iam-magazine.com Netherlands reasoning of courts in other jurisdictions that have dealt with similar cases? The Hague patent courts consider the reasoning of courts in other jurisdictions that have dealt with similar matters. It is well known that historically, the UK and German patent courts have used different strategies to determine the scope of protection of a patent granted under the European Patent Convention. The UK approach involved a literal interpretation of 7. Do the courts in your jurisdiction apply a doctrine of equivalents? the claims, while German courts focused on Yes, the Dutch courts apply a test to assess the subject matter of the invention. In the whether an implementation of the Netherlands, the underlying reasoning of invention should be considered equivalent. the invention has been prominent in determining the scope of protection. The Protocol on the Interpretation of 8. Are certain patent rights (eg, those relating to business methods, software Article 69 of the European Patent Convention has resulted in changes to both and biotechnology) more difficult to enforce than others? the UK and German approaches. Article 69 Under the Patent Act 1995, two types of determines that patents should not be patent exist: traditional inventions and interpreted as meaning that the extent of processes. Insofar as an invention and a the protection is to be understood as that process qualify as patentable, no difference defined by the strict, literal meaning of the exists in the scope of protection and wording used in the claims; nor should it be enforceability. Business matters and taken to mean that the claims serve only as software as such are not patentable under a guideline. Rather, it determines that it is the Patent Act. to be interpreted as defining a position between these extremes which combines 9. How far are the courts bound by fair protection for the patent proprietor samples, and the physical seizure of infringing goods and, in appropriate cases, materials used in the production and/or distribution of these goods and documents relating thereto. Usually these measures are taken without the allegedly infringing party being heard. However, the applicant will be given access to the information and materials obtained only after the other party has been heard by the court. previous decisions in cases that have covered similar issues? The Dutch courts are not formally bound by previous decisions in cases which cover similar issues. However, all patent cases are dealt with by the Hague District Court at first instance and on appeal by the Hague Court of Appeal. Since the same courts deal with all patent litigation, it is highly unlikely that similar issues would be treated differently. However, the judges of the Hague patent courts regularly speak at conferences and have stated that they follow with great interest developments in the UK and German patent courts. with a reasonable degree of legal certainty for third parties. In addition, the description and drawings of the patent (together with the history of the granting procedure) can help to resolve any ambiguity in the claims. The Dutch courts apply the protocol and keep a close eye on developments in the United Kingdom and Germany. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The vast majority of patent cases are summary proceedings andaccelerated proceedings. The Hague patent courtsstrictly 10. Are there any restrictions on who enforce the VRO regime. At the start of the parties can select to represent them in acase, the court issues a timetable to which the parties must adhere – no deviations are dispute? The Civil Procedure Rules require that both allowed. As a consequence, defendants have the plaintiff and the defendant be no opportunity to delayproceedings. represented by a lawyer admitted to the Bar. Given the often technical nature of patent 13. Is it possible to obtain preliminary litigation, the lawyers are usually assisted by injunctions? If so, under what patent agents who have a statutory right to circumstances? speak on behalf of the parties during the oral Preliminary measures such as injunctions hearings. The only exception is for summary and seizure of evidence can be obtained. An proceedings – the defendant may defend injunction can be obtained if an urgent itself and can bring in other advisers. interest is present. In the Netherlands, an urgent interest is presupposed to be present in the first year. 11. Are the courts willing to consider the www.iam-magazine.com Patents in Europe 2011/201277 Netherlands Over the last four years, few ex parte injunctions have been granted by the Hague patent courts. The reason for the court to be cautious when issuing ex parte injunctions in patent infringement cases lies in the complexity of the subject matter, which is often not fully disclosed by the plaintiff. Preliminary measures, such as measures to preserve evidence or to obtain an order for the seizure of goods suspected of infringing a patent, are regularly issued by the Hague courts. income realised from the infringing acts. Because the amount of profits can be calculated more easily than the amount of compensation, it is used as an alternative for the compensation of damages. The surrender of profits is calculated by calculating the net or gross profits (depending on the claim) made from the sale of the infringing products by the infringer. The court may also order the infringer to pay the rights holder’s expenses, including the appropriate attorneys’ fees, 14. How much should a litigant plan to even where the infringer did not knowingly, pay to take a case through to a decision or did not have reasonable grounds to know, at first instance? Is it possible for the engage in infringing activity. successful party in a case to obtain costs Sometimes, surrender of profits is considered to be punitive damages. Apart from the losing party? The costs of patent litigation consist mainly from this, no punitive damages can be of two components: attorneys’ fees and the obtained. fee of the patent agents. In relatively “simple” cases the costs vary between 17. How common is it for courts to grant €50,000 and €150,000. In pharmaceutical permanent injunctions to successful and biotechnical cases the costs of litigation plaintiffs and under what circumstances easily reach amounts of between €250,000 will they do this? and €800,000. The judgment holds an Permanent injunctions are regularly issued by executable title with regard to the costs of the courts in order to stop the infringement litigation. The winning party obtains a of a patent right. Courts can hand down a money order. permanent injunction on condition that it is claimed by the rights holderor a party 15. What are the typical remedies authorised by the rights holder. granted to a successful plaintiff by the courts? In patent cases the typical remedies are an injunction and the distribution of earned profits or compensation of damage inflicted on the patent holder. All court orders are issued on pain of serious penalties; these are easily enforceable and therefore effective. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It takes between 18 months and two years for a judgment to be rendered in a normal proceeding on the merits. The proceeding is initiated if a writ of summons is served containing the arguments and claims of the plaintiff. Thereafter, the defendant files a 16. How are damages awards calculated?statement of defence and possible Is it possible to obtain punitive counterclaims. Based on these written documents, the court decides whether damages? In accordance with international treaties additional written briefs may be exchanged (eg, the Agreement on T rade-Related to explain the arguments and claims further, Aspects of IP Rights), the infringer must or whether parties must explain their pay the patent holder damages adequate to arguments, claims and counterclaims in an compensate for the injury that the patent oral hearing. The court then renders its final holder has suffered due to the infringement. judgment six weeks later. Parties can This applies only to infringers which expedite this proceeding if they allow the knowingly, or with reasonable grounds to other party only limited extensions for the know, engaged in infringing activity. exchange of briefs. Under Dutch law, the right to The party initiating proceedings on the compensate for damages and the right to merits has the option to choose the VRO obtain the surrender of profits cannot regime by requesting the court to apply this accumulate. The patent holder has a right to procedure before it initiates the proceeding. choose between the distribution of earned If the VRO regime is chosen, the court preprofits or compensation for damages schedules the data to serve the writ and file caused. So that the plaintiff can make this the briefs, and schedules the oral hearing. choice, the court will order the infringing After this decision, parties no longer have party to provide a full account of all relevant the opportunity to extend the timeframe. 78 Patents in Europe 2011/2012 www.iam-magazine.com Netherlands Patent disputes concerning invalidity are suitable for ADR because under the Patent Act, the patent holder can abandon its patent or patent application Special procedural rules apply to this type of proceeding. The accelerated proceeding is characterised by the fact that the parties are suitable for ADR because under the Patent Act, the patent holder can abandon its patent or patent application. In addition, must file all of their legal argument and exhibits at the earliest opportunity. Under the VRO regime a judgment will be issued between nine and 12 months after the writ was filed. patent disputes concerning licence agreements can be subjected to ADR. 21. In broad terms, how pro-patentee are the courts in your jurisdiction? In the Netherlands, the courts often nullify 19. Under what circumstances will the patents – they have found a good balance in losing party in a first-instance case be determining the scope of protection of the granted the right to appeal? How long rights of the patentee. does an appeal typically take? Disputes can be reviewed in full by the 22. Has your jurisdiction signed up to Hague Court of Appeal. Parties can file an the London Agreement on Translations? appeal within three months of the first If not, how likely is it to do so? instance judgment. The Netherlands has signed up to the An appeal takes about 18 months. There London Agreement. The Netherlands falls is no separate accelerated proceeding for under the Type 2 jurisdictions, as it does patent cases on appeal, although the parties not have English, French or German as an can ask the court to expedite the appeal official language. The Netherlands has proceedings. selected English as its language for translation, but requires translation of the claims into Dutch. 20. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is 23. Are there any other issues relating to ADR a realistic alternative to litigation? the enforcement system in your country Under Dutch law, the parties are not obliged that you would like to raise? to undertake any type of mediation and or In a VRO regime the parties – particularly arbitration. The Patent Act 1995 does not the plaintiff – must be aware that all mention ADR and grants the authority to grounds for the claim, together with the declare a patent invalid only to the court. supporting evidence, must be presented to However, parties can always agree on the defendant on the date on which the case ADR. Patent disputes concerning invalidity is introduced in court. www.iam-magazine.com Patents in Europe 2011/201279 Netherlands Peter Claassen studied law at Nijmegen University, where he obtained his master’s degree. He also obtained an LLM from Miami Law School. In 1984 he worked for Arnall Golden & Gregory, Atlanta, and in 1985 he started working at AKD, becoming a partner in 1992. Mr Claassen’s main expertise is in IP areas such as patents, trademarks, designs and copyright, and he is also an experienced litigator. Further, he has wide experience with the legal aspects of brand development, parallel trading and drafting of IP agreements. His clients include both nationally and internationally renowned companies. Mr Claassen chairs both the IP and technology practice group and the retail and consumer products branch group, and is a member of leading organisations such as the International Trademark Peter Claassen Attorney at law [email protected] +31 88 253 5980 AKD Netherlands www.akd.nl Association andlectures MARQUES. He regularly teaches on seminars. trademark and patent law, and at national and international Martin Hemmer graduated in law from Radboud University Nijmegen in 2002, having spent some time studying at Montpellier 1 University. His studies focused on IP rights. Mr Hemmer joined AKD as a lawyer in 2003. As a member of the IP and technology practice group, he handles a variety of legal cases concerning breaches of IP rights affecting trademarks, copyright and patents. He has also pursued cases in the field of media law, relating particularly to unlawful publications. Another aspect of his work focuses on IP-related agreements, such as licensing contracts and research and development agreements between businesses or groups of companies. Mr Hemmer leads courses and regularly publishes and lectures on intellect ual property. He is a member of several professional organisations, including the Benelux Association for Trademark and Design Law) and the European Communities Trademark Association. Martin Hemmer Eliëtte Vaal joined the IP and technology practice group in October 2009. During her legal studies Ms Vaal specialised in IP law, as well as media, privacy and advertising law. She also spent a term at Tulane University, New Orleans, where her focus was on international aspects of IP law. Eliëtte Vaal Attorney at law [email protected] +31 88 253 5916 AKD Netherlands www.akd.nl Attorney at law [email protected] +31 88 253 5908 AKD Netherlands www.akd.nl 80 Patents in Europe 2011/2012 www.iam-magazine.com Poland Poland By Katarzyna Karcz, Patpol, Warsaw administrative courts. In practice, a pending case on the validity of a patent may influence the infringement proceedings. If 1. What are the most effective ways for the a alleged infringer claims invalidity of the European patent holder whose rights patent at issue in the course of the cover your jurisdiction to enforce its infringement proceedings, the civil court may suspend the infringement proceedings rights in your jurisdiction? The holder of a European patent which is until the invalidation case is resolved. effective in Poland enjoys basically the same rights as the holder of a patent issued by 4. To what extent is cross-examination the Polish Patent Office (PPO). In case of of witnesses permitted during infringement, a lawsuit may be brought proceedings? against an alleged infringer before a civil In Polish civil proceedings, witnesses testify court. Prior to initiating court action, it is about facts that may be relevant to the advisable to request a preliminary injunction in order to restrain the alleged infringer from further infringement. Another effective way to stop infringing acts is to use border measures undertaken in accordance with the EU Customs Regulation (1383/2003). litigation. The party calling a witness is obliged to define precisely all facts to which that witness will testify during the trial. First, the court may ask a witness general questions about the case; the witness then testifies by responding to the parties’ questions. Each witness testifies separately. Witnesses whose testimonies contradict 2. What level of expertise can a patent each other may be questioned by the court. owner expect from the courts in your jurisdiction? 5. What role can and do expert witnesses There are no special patent courts in Poland. play in proceedings? Patent infringement matters are handled by The role of a court-appointed expert is common civil courts and the judges essential. Proceedings related to patent adjudicating patent infringement cases have infringement frequently involve expert no technical background. Therefore, the opinions. The judges examining patent court may appoint independent experts to infringement matters have no technical submit written or oral opinions when education and need the opinion of a person specialist knowledge is necessary. trained in the relevant technical field. The appointed expert may be chosen from among the registered Polish patent 3. How do your country’s courts deal with validity and infringement? Are theyattorneys or any other well-qualified handled together or separately? specialists in the relevant field. The court Infringement and validity cases are heard by can also turn to a research or scientific different authorities in Poland: institute for expertise. The expert opinion infringement cases are handled in civil is usually requested in writing, but the proceedings before a civil court, while expert may subsequently be examined by invalidation proceedings are dealt with in the court to verify his or her opinion. The administrative proceedings before the expert’s role is to explain technical aspects Litigation Division of the PPO. PPO of the invention and the allegedly infringing decisions may be subject to appeal to the product or method. Although the www.iam-magazine.com Patents in Europe 2011/201281 Poland assessment of the infringement is the court’s domain, in practice, the court will rely on the opinion of an expert witness. rulings guarantee the certainty and reliability of the law. 10. Are there any restrictions on who 6. Is pre-trial discovery permitted? If so, parties can select to represent them in a to what extent? dispute? A patent owner may demand that the court In patent infringement cases parties may by require the defendant or a third party to represented in court by professional provide information regarding: representatives (ie, advocates, legal counsel • The srcin of the infringing goods. and patent attorneys). A legal entity may • The distribution network of the also be represented by an employee. The infringing goods. only exception is cassation before the • The names and addresses of Supreme Court, which may be brought only manufacturers and suppliers. by an advocate or legal counsel. • The amount and price of goods which were manufactured, sold or put on the 11. Are the courts willing to consider the market. reasoning of courts in other jurisdictions that have dealt with During court proceedings the court may similar cases? also order a party to submit any relevant The Polish courts are not bound by the documents in its possession, unless the reasoning of foreign courts that have tried documents contain state secrets. If a party similar cases. However, foreign court to the proceedings refers to trade books, the judgments on similar legal issues may be court may require the submission of those presented as auxiliary arguments. books. 12. How easy is it for defendants to delay 7. Do the courts in your jurisdiction proceedings and how can plaintiffs apply a doctrine of equivalents? prevent them from doing so? Under Polish patent law, particular The basic way to delay a court case is to emphasis is placed on the clear and start litigation proceedings before the PPO unequivocal wording of patent claims. The seeking invalidation of the patent in strict interpretation of patent claims is incompatible with the concept of the interpretation of patent exclusivity set out in the Protocol on Interpretation of Article 69 of the European Patent Convention (EPC). Given that the EPC is binding in Poland, the practice of the PPO and the courts should be consistent with the practice resulting from the EPC. question. As the two issues are dealt with by two separate authorities, the commencement of invalidation proceedings often causes the suspension of the infringement proceedings until the issue of a decision regarding validity. The court is obliged to respect a final decision on the grant of a patent until the patent has been declared valid. Thus, it is questionable whether the court should suspend 8. Are certain patent rights (eg, those infringement proceedings on the grounds relating to business methods, software that invalidation proceedings are pending. and biotechnology) more diff icult to enforce than others? 13. Is it possible to obtain preliminary The enforcement of software patents may injunctions? If so, under what be difficult because the PPO is reluctant to circumstances? grant protection to software patents; thus, A patent holder is entitled to file a request such patents may be more susceptible to for a preliminary injunction before invalidation by the PPO. initiating court proceedings or simultaneously with those proceedings. If 9. How far are courts bound by previousthe request is filed before court proceedings decisions in cases that have covered are initiated, the court granting the similar issues? preliminary injunction will appoint a twoAs a rule, Polish courts are not bound by the week deadline for filing a statement of claim opinions and decisions of other courts in with the court. If the plaintiff fails to similar cases. The exceptions are decisions comply with the deadline, the preliminary of the Supreme Court and the Supreme injunction will lapse. Administrative Court. In practice, the In order to obtain a preliminary opinions and decisions of other courts are injunction, the patent holder should taken into consideration when ruling in convince the court that its claim is likely to similar cases. Consistent and uniform court succeed. At this stage of the proceedings it 82 Patents in Europe 2011/2012 www.iam-magazine.com Poland is not required to prove the claim. The patent holder must indicate its patent rights through an official document and should also indicate that its exclusive rights have been infringed. Preliminary injunctions should not aim to satisfy the plaintiff’s claims. If the plaintiff loses the lawsuit or decides to withdraw the court action before the verdict, the alleged infringer is entitled to demand compensation for damages arising from the preliminary injunction. Damages for patent infringement may be either calculated in accordance with general principles of Polish law or awarded as an equivalent of the amount of money corresponding to the licensing royalties or other suitable remuneration which would be due to the patent holder. According to the general rules, compensation for damages shall include actual lost earnings as well as any profits which the patent holder would have earned had the infringement not occurred. The plaintiff must prove the 14. How much should a litigant plan to direct causal relationship between the pay to take a case through to a decision damage that it has suffered and the at first instance? infringing actions. It is difficult to predict the level of costs The monetary remedies have associated with infringement proceedings. compensatory rather than punitive The costs depend on the complexity of the character. There are no punitive damages matter and the value of the litigation. The under Polish law for patent infringement. costs connected with preparation and lodging of suitable documents, translations 18. How common is it for courts to grant and court attendance by professional permanent injunctions to successful representatives, as well as the court fees, plaintiffs and under what circumstances must all be taken into account. will they do this? A permanent injunction is issued as a result of full examination of the case and is granted 15. Is it possible for the successful party in the case to obtain costs from the within the scope of the claims raised by the plaintiff in the statement of claims. losing party? As a rule, the losing party is burdened with the costs of the court proceedings. These 19. How long does it take to obtain a costs cover the court fees and the costs of decision at first instance and is it possible to expedite this process? Patent infringement proceedings in Poland can take between one and two years until a first instance decision is issued, depending on the complexity of the case, the strategy undertaken by the parties and the number of cases pending before the court. However, 16. What are the typical remedies there is no general rule and in some cases it granted to a successful plaintiff by the may take longer to complete the court? proceedings. In infringement proceedings the plaintiff may demand: 20. Under what circumstances will the • Cessation of the infringement. losing party in a first instance case be • Surrender of unlawfully obtained granted the right to appeal? How long profits. does an appeal typically take? • Compensation for damages, if the A decision of the first instance court may be infringement was deliberate. subject to appeal to a second instance court by both parties. The appeal should be filed At the plaintiff’s request, the court may within two weeks of receiving the judgment order publication of the court decision on in writing, along with the reasons. The infringement, either in whole or in part. second instance court examines all The court may also decide what will happen substantive and procedural issues, the to the infringing products or other means breach of which may provide grounds for and materials which were used for their the appeal. In general, the court of appeal manufacture. In particular, the court may reviews the case within the limits of the order the withdrawal from the market and appeal. Only nullity of the appealed court destruction of the infringing products. decision is considered ex officio. It may take approximately one year before a verdict is 17. How are damages awards calculated?issued in the appeal proceedings. Is it possible to obtain punitive Under some circumstances explicitly set forth by the law, a decision of the second damages? representation. The costs of representation are limited to one representative and are calculated in accordance with the official rates provided by the law. The losing party may also be obliged to reimburse the winning party’s expenses. www.iam-magazine.com Patents in Europe 2011/201283 Poland instance court may be subject to cassation to the Supreme Court. Cassation is an extraordinary legal remedy and may be based only on a breach of substantive law involving the incorrect interpretation or application of substantive law or a breach of procedural provisions which had a major impact on the result of the case. A cassation should be filed within two months of receipt of the appeal judgment. the courts in your jurisdiction? The courts in Poland are obliged to respect the exclusive rights deriving from a patent. The courts should not be biased and are obliged to review cases on their merits. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Poland has not yet signed the London Agreement and is not expected to do so in 21. Are parties obliged to undertake anythe near future. type of mediation/arbitration prior to bringing a case before the courts? Is 24. Are there any other issues relating to ADR a realistic alternative to litigation? the enforcement system in your country There is no obligation to undertake any type that you would like to raise? of mediation or arbitration before bringing a Court proceedings relating to the case before the court. If both litigating enforcement of patents in Poland are very parties are business entities, the patent formal. According to the rule of evidence holder is obliged to send a cease and desist preclusion, all statements relevant to the letter to the alleged infringer before case must be mentioned in the statement of initiating the litigation. A cease and desist claims and all evidence must be attached to letter is a final demand that the alleged support those statements. The parties are infringer stop infringing practices and satisfy generally precluded from submitting further the patent holder’s demands voluntarily. A evidence once the proceedings have copy of the cease and desist letter, along with commenced. The plaintiff may submit the reply of the alleged infringer, should be further evidence during the course of the attached to the statement of claims lodged proceedings only where the evidence is with the court. The cease and desist letter is unlikely to have been known at the time of perceived as evidence of the plaintiff’s bringing the action or arose only after the goodwill to settle the matter amicably. In action had been started. practice, ADR is not commonly used for patent disputes in Poland. This article was co-authored by Malgorzata Zielinska-Lazarowicz, formerly a patent and 22. In broad terms, how pro-patentee are trademark attorney with Patpol. Katarzyna Karcz has an MSc in civil engineering from Warsaw University of Technology, a certificate of postgraduate IP and studies from Jagellonian University, Krakow. She has been a Polish patent and trademark attorney since 1999 and a European patent attorney since 2004. Formerly employed by the Polish Patent Office and now a partner at Patpol, Ms Karcz’s activities focus on the prosecution and enforcement of mechanical patents. In June 2009 she was appointed the managing director of Patpol. A member of the Polish Chamber of Patent Attorneys and the International Association for the Protection of Intellectual Property (AIPPI). Ms Karcz is also a vice president of the Polish group of the AIPPI. She regularly participates in the AIPPI’s work and frequently attends seminars, forums and congresses. 84 Patents in Europe 2011/2012 Katarzyna Karcz Patent attorney [email protected] +48 22 644 9657 Patpol Poland www.patpol.pl www.iam-magazine.com Romania Romania By Margareta Oproiu, Cabinet M Oproiu, Bucharest • 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The owners of European patents validated in Romania enjoy full and exclusive rights of exploitation over their patents during the term of validity – that is, they can prohibit third parties from performing the following acts without their consent: • • For product inventions, the manufacture, marketing, offering for sale, use, import or storage for the purposes of selling, offering for sale or use. For process inventions, the use of the process. If the subject matter of the European patent validated in Romania is a process, the protection conferred by the patent shall extend to products directly obtained by such process. The patent holder can make use of the following procedures: • A cease and desist letter. • Civil proceedings, including claims for patent infringement, damages and interim injunctions. • Seizure at the border. causing irreparable prejudice, or if there is a risk that evidence may be destroyed. Order specific measures to stop acts of patent infringement performed by a third party by placing the infringing goods on the market. Available remedies in cases of patent infringement include a permanent injunction prohibiting the manufacture, marketing and use of anything constituting patent infringement, confiscation of the infringing goods and the destruction thereof. However, no order for the removal or destruction of infringing goods may be given if such goods belong to persons who use them in good faith for personal or domestic purposes. In a patent infringement case, the burden of proof rests with the claimant. However, if the patent subject matter is a process to obtain a new product, the burden of proof is reversed and, in the absence of proof to the contrary, any identical product produced without the consent of the patent owner shall be deemed to have been obtained by the patented process in at least one of the following circumstances: • The product obtained by the patented process is new. • There is a substantial likelihood that the identical product was made by the process and the patent owner has been unable through reasonable efforts to determine the process actually used. Infringement proceedings may be instituted by the patent owner. However, the beneficiary of an exclusive right to work the patent may, unless the licensing agreement prevents it, institute 2. What level of expertise can a patent infringement proceedings if the patent owner expect from the courts in your owner does not. jurisdiction? The patent owner may request the court to:In civil proceedings, three levels of court • Order interim measures where there is a have jurisdiction. Currently, there are IP risk of infringing the rights arising from specialist divisions of the courts in which a patent and if such infringement risks specialist IP judges have jurisdiction for all www.iam-magazine.com Patents in Europe 2011/201285 Romania IP-related cases. However, in patent litigation the court usually appoints a technical expert in order to clarify the technical aspects under consideration. The recent decisions of specialist divisions show a good level of expertise from the judges. where the infringing product or method is not completely covered by the wording of the patent claims, equivalent infringement is referred to. The courts appoint appropriate technical experts to determine the patent infringement either literally or according to the doctrine of equivalents. The parties are allowed to appoint their 3. How do your country’s courts deal with validity and infringement? Are theyexperts, who may submit their own opinions on the infringement and on the handled together or separately? The Romanian courts specialising in IP court expert’s report. matters usually deal with patent validity and infringement in the same proceedings. 8. Are certain types of patent right (eg The invalidity action may be brought either those relating to business methods, independently or as a defence or software and biotechnology) more counterclaim to a patent infringement difficult to enforce than others? claim. The infringement proceedings will be No one type of patent right is harder to stayed until the final decision on validity. enforce. All patents enjoy the same protection and are equally enforceable. 4. To what extent is cross-examination of witnesses permitted during 9. How far are the courts bound by proceedings? previous decisions in cases that have During the litigation, in order to assess the covered similar issues? patent infringement, the extent of damage Case law is not recognised as a source of and generally all aspects of the rights by the Romanian courts. However, infringement, all evidentiary means are case law may be used as a reference to lawfully allowed: cross-examination, clarify the case. Particularly when granting written evidence,ex parte opinions and supplementary protection certificates expert evidence ordered by the court or (SPCs) as governed by EU regulations, requested by the parties. The Civil relevant EU case law is considered. Procedural Code imposes no restrictions on 10. Are there any restrictions on who parties can select to represent them in a 5. What role can and do expert witnesses dispute? play in proceedings? The legal representative in a patent dispute Written expert opinions may be submitted may have the right to practise before the by the parties to support the technical court. Attorneys at law admitted and aspects in proceedings. The expert may enrolled in the Romanian Bar Association attend the court-appointed expert’s can represent the parties before the court. meetings and may submit statements and Patent attorneys enrolled in the National documents in support of the courtChamber of IP Attorneys can also represent appointed expert’s report. parties at the first instance and appeal levels, but not before the High Court of Cassation and Justice. The patent attorneys’ 6. Is pre-trial discovery permitted? If so, to what extent? opinions are allowed by the court, and it is The Romanian civil system sets out no prerecommended that the claim be prepared trial discovery procedure. The burden of jointly by the patent attorney and the proof lies with the claimant, which must barrister. produce evidence regarding the imitation or illegal commercial use of its patented 11. Are the courts willing to consider the invention. Infringement can be proven by reasoning of courts in other jurisdiction any means. that have dealt with similar cases? The Romanian courts are not bound by 7. Do the courts in your jurisdiction decisions of courts in other jurisdictions. apply a doctrine of equivalents? However, they may take into consideration In a patent infringement action, the scope foreign decisions on identical issues. of patent protection refers to the content of the claims. However, according to the Patent 12. How easy is for defendants to delay Law, for the purpose of determining the proceedings and how can plaintiffs extent of protection, account shall be taken prevent them from doing so? of any element which is equivalent to an The customary strategies of defendants to element specified in the claims. In cases delay proceedings are to file a counterclaim the evidence or opinion of experts. 86 Patents in Europe 2011/2012 www.iam-magazine.com Romania for patent cancellation and to request further technical expertise, occasionally adding new matters that appear to be pertinent to the case. A counterclaim for patent cancellation cannot be avoided. The defendant is allowed only one technical expert, except in cases where the subject matter is difficult to understand or in case of non-literal patent infringement. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A preliminary injunction is available where, during civil infringement proceedings, there is an imminent risk of evidence under the defendant’s control being destroyed, or where it is likely to cause irreparable harm to the rights holder. In such cases the court may order an inspection of the defendant’s premises, assisted by a court executor, in order to preserve evidence, subject to the protection of confidential information, and, where necessary, subject to a security award in order to provide the defendant with appropriate compensation for any injury caused by such measures. In addition, the court may order a preliminary injunction for cessation of the infringement. In order to obtain a preliminary injunction, it is not necessary to provide complete and unequivocal evidence of the plaintiff’s right; rather, it is sufficient to demonstrate the plaintiff’s rights beyond reasonable doubt. As an alternative, should the claimant have sufficient evidence or information regarding the infringement, the patent holder can use a preliminary injunction to obtain more information and evidence regarding the actual volume of infringing goods. Within the interim injunction procedure the court can also order the infringer to preserve all evidence in respect of the srcin of the infringing goods. costs are higher. When claiming damages, an official fee of 1% of total damages is payable. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes – the successful party may be reimbursed by the losing party in respect of barristers’ fees, patent attorneys’ fees and reasonable expenses. 16. What are the typical remedies granted to a successful plaintiff by the courts? Remedies in civil proceedings include a permanent injunction, damages, the seizure and possible destruction of infringing products and comminatory awards. An interim injunction order is valid until the final decision in the main legal action on the merits. Comminatory awards can be granted against the defendant for each day that it fails to comply with the court order. Once final, court decisions are applied by parties or the court executor. Punitive damages are not available in civil proceedings. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The court can grant damages based on the evidence submitted by the plaintiff, on the basis of either the profits lost by the plaintiff or the profits achieved by the defendant. The court usually appoints an expert to advise on the volume of damages, based on the evidence submitted by the parties. Punitive damages are not available in civil proceedings. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? 14. How much should a litigant plan to No specific legal provision sets down the pay to take a case through to a decision conditions for granting a permanent injunction. However, a permanent injunction at first instance? The costs largely depend on the subject is commonly granted when the court finds matter, the volume of work and the that the patent has been infringed and the evidence available or to be found. Usually, patentee has suffered damages. for a reasonable level of representation and to prepare a claim, assistance for the first 19. How long does it take to obtain a three hearings costs between €10,000 and decision at first instance and it is €15,000, and between €1,500 and €2,000 possible to expedite this process? for each further hearing. For advanced First instance proceedings for patent matters – for example, in the infringement may take from 12 to 18 months pharmaceutical field, where related matters if no counterclaim for cancellation of the may be considered (eg, the incidence of data patent is filed. There is no way to expedite exclusivity or the existence of a SPC) – the these proceedings. www.iam-magazine.com Patents in Europe 2011/201287 Romania 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? According to the Civil Law, any decision at first instance may be appealed. Within the appeal, no new matter may be submitted – only the correctness of the first judgment may be the object of the appeal. Appeal proceedings may take less time than the first instance proceedings, usually up to one year. The Civil Law allows a second appeal before the High Court of Justice and Cassation, which must relate exclusively to the review of questions of law. but no case law has been created to date. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Romanian courts are considered to be pro-patentee. In the past two years, the courts have reversed around 10 Patent Office decisions to reject SPC requests based on a better understanding of the SPC regulation. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is to do so? Romania has not signed up to the London Agreement. 21. Are parties obliged to undertake any type of mediation/arbitration prior to 24. Are there any other features of the bringing a case before the courts? Is enforcement system in your jurisdiction ADR a realistic alternative to litigation? that you would like to point out? There is no obligation to undertake Border seizure is the most efficient way to mediation or arbitration before litigating prevent infringing products from entering before the court. The mediation or Romania. The relevant customs measures arbitration of a patent dispute is possible, are well implemented and enforced. Margareta Oproiu is a qualified European patent attorney. She graduated from the University of Bucharest with a PhD in physics, and until 1990 worked as a researcher for technologies using plasma physics. She now has vast experience in all aspects of domestic and foreign IP counselling. Ms Oproiu is particularly strong in patent and trademark litigation, with an in-depth knowledge of both patent matters and the legal aspects of patent infringement and unfair competition, and is involved in cancellation and infringement actions. According to a global annual survey conducted by Managing Intellectual Property magazine, for the past six years the firm has been ranked on the first tier in the patent and trademark fields. Ms Oproiu is a member of the National Chamber of Romanian Industrial Property Attorneys Association, the Institute of Professional Representatives before the European Patent Office, the European Communities Trademark Association, the International Association for the Protection of Intellectual Property and the International Trademark Association. 88 Patents in Europe 2011/2012 Margareta Oproiu Founding partner [email protected] + 40 21 260 28 34 Cabinet M Oproiu Romania www.oproiu.ro www.iam-magazine.com Serbia Serbia By Katarina Kostic, Popovic, Popovic, Samardzija & Popovic, Belgrade infringement are dealt with inseparate procedures conducted before different courts. At first instance, patent validity is dealt 1. What are the most effective ways for a with by the IP Office in an administrative European patent holder whose rights procedure. At second instance, patent validity is considered in an administrative cover your jurisdiction to enforce its rights in your jurisdiction? court procedure held before the The owner of a patent or holder of an Administrative Court. exclusive licence is entitled to commence civil Patent infringement matters are dealt proceedings against any person infringing its with in a litigation procedure before the civil right to a patent. The complaint has courts – either the Commercial Court (for maximum effect if a preliminary injunction to disputes between legal persons and prohibit further infringing action isobtained commercial entities) or the Higher Court (for during the litigation proceedings. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Court cases concerning patent infringements are rare in Serbia, and therefore no courts specialise in patent infringement or other IP rights cases. Therefore, the Serbian courts do not have a high level of expertise in patent matters. However, patent infringement matters are heard before the higher courts; at first instance, cases concerning the infringement of IP rights are heard by the courts of higher jurisdiction. This is an exception to the general rule, according to which the lower courts are competent at first instance. Patent infringement matters between legal/commercial entities at first instance fall under the jurisdiction of the Commercial Court, a higher-level court. Patent infringement matters involving natural persons are heard by the courtsof general competence, so the Higher Court is competent at first instance. disputes involving one or more natural persons). 4. To what extent is cross-examination of witnesses permitted during proceedings? In procedures before the Commercial Court and patent matters in general, the hearing of witnesses is rare, as the procedures and evidence are mostly in written form. However, if there is a need to do so, a witness can be examined. The rules of procedure do not explicitly mention cross-examination. The examination procedure is that the witness first gives his or her statement, and then the judge and the parties can ask questions in order to check or clarify this statement. 5. What role can and do expert witnesses play in proceedings? Experts play an important role in patent infringement matters, as most of the issues that arise require expertise. In order to determine or clarify facts that require expert knowledge, the court must engage an expert and often bases its decision on his or her opinion. 3. How do your country’s courts deal with validity and infringement? Are they 6. Is pre-trial discovery permitted? If so, handled together or separately? to what extent? In Serbia, patent validity andpatent There is no pre-trial discovery procedure in www.iam-magazine.com Patents in Europe 2011/201289 Serbia Serbia. Evidence is collected in court procedures. It is possible to request only the preliminary securing of evidence. The Patent Law provides that if the plaintiff can prove that it is probable that its right has been infringed and that evidence may be destroyed or difficult to collect, it can request the court to secure evidence by ordering an inspection of the alleged infringer’s premises, books, documents and database, as well as seizure and examination. It is possible to ask the court to secure evidence even before filing a complaint, provided that such complaint is filed within 30 days of submission of the request. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Patent Law does not explicitly provide for the doctrine of equivalents. It provides only that the scope of protection conferred by a patent is determined by the claims, while the description and drawings shall be used to interpret the claims. To our knowledge, the courts have not applied this doctrine. However, for European patents, thecourt may apply this doctrine on the grounds of Article 69 of the European Patent Convention (EPC) and the Protocol on the Interpretation of Article 69, according to which “for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is an equivalent to an element specified in the claims”. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are generally not bound by other court decisions. However, the lower courts often rely on decisions of the Supreme Court. In addition, if a particular issue is disputed in a large number of cases before the first instance courts, the Supreme Court will adopt and publish a legal position for ruling on the disputed issue. Such legal positions are binding on the lower courts. To date, there are no legal positions concerning patent issues. 10. Are there any restrictions on who parties can select to represent them in a dispute? In Serbia, there are no restrictions concerning the representation of parties before the courts in patent infringement disputes, except in procedures regarding extraordinary legal remedies, in which representation by an attorney at law is necessary. In procedures before the IP Office (which include patent invalidation proceedings at first instance), foreign legal entities and natural persons must be represented by either a representative entered in the Register of Representatives held with the IP Office or a local (Serbian) attorney at law. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Courts in Serbia are not usually willing to 8. Are certain patent rights (eg, those consider foreign case law. As the Serbian relating to business methods, software courts do not have enough experience in patent matters, particularly in matters based and biotechnology) more difficult to enforce than others? on European patents, if a party notifies the There is a unique procedure for the court of a decision in a similar case from enforcement of all patent rights. However, another EPC jurisdiction, the court should business methods and software as such are consider the reasoning from that decision. not considered to be inventions (according to However, the Serbian court cannot base its the Patent Law and Article 52 of the EPC). decision on the foreign decision, as foreign Therefore, in cases of patents for computercourt practice cannot be used as a source of implemented inventions or business law. methods, it is likely that it would be more difficult to enforce such patents as the 12. How easy is it for defendants to delay question of their patentability could be proceedings and how can plaintiffs raised. prevent them from doing so? Moreover, it is certainly more difficult to The most efficient way for defendants to enforce technically complicated or complex delay infringement proceedings is to initiate patents, especially if a preliminary injunction a procedure for nullity or invalidation of the or the securing of evidence is requested. In infringed patent. The nullity procedure is order to obtain these measures, a plaintiff conducted through an administrative must demonstrate that infringement is procedure before the IP Office (at first probable, which is easier for less complicated instance) and then before an administrative patents and in matters where the probability court (at second instance). The court must of the infringement could be made obvious treat patent validity as a preliminary to the court without an expert report. question and suspend the litigation until a 90 Patents in Europe 2011/2012 www.iam-magazine.com Serbia 15. Is it possible for the successful party in a case to obtain costs from the losing party? The general rule is that a losing party must compensate the reasonable and justified costs of the other party. In its judgment, the court rules on costs. In practice, the court does not usually accept a refund of all costs, but only the costs incurred in the court procedure (eg, court fees, expert fees and attorneys’ fees). Attorneys’ fees are calculated in accordance with the tariffs for attending hearings and preparation of plaint and petitions, even though the actual costs are often much higher; therefore, attorneys’ fees are partly non-refundable. 13. Is it possible to obtain preliminary The court does not usually allow the refund of costs for translation, verification injunctions? If so, under what circumstances? and certification of documents, which could Issuance of a preliminary injunction is be significant. possible. It may be requested at any time before commencing civil proceedings for 16. What are the typical remedies granted infringement (provided that such to a successful plaintiff by thecourts? proceedings are commenced within 30 days According to the Patent Law, the following of execution of the injunction), together with remedies to infringement claims are the lawsuit or during the procedure. The available: main condition is to prove reasonable • Determination of patent infringement. probability that the right is or shall be • Prohibition of infringing acts. infringed. The court may order the following • Compensation for damages caused by the measures: infringement. • Seizure and/or withdrawal from the • Publication of the court decision at the legally valid and binding decision on patent validity has been issued, which may take several years. The plaintiff could try to prevent the negative effects of delay by requesting a preliminary injunction in the lawsuit or immediately upon commencing litigation. If the court allows the injunction and if other factual and legal conditions are met, the prohibition of infringing actions can remain in force during the procedure for patent invalidation (although initiation of a procedure for patent invalidation couldserve as legal grounds for cancellation of the issued preliminary injunction). • • market of products made or obtained by patent infringement. Seizure and/or withdrawal from the market of implements (eg, equipment, tools) used in the production of infringing products. Prohibition of further infringing actions. • • defendant’s expense. Seizure and/or destruction of products made or obtained by means of patent infringement. Seizure and/or destruction of material or articles (eg, equipment, tools) used in the creation of infringing products. If there is a risk that the injunction might cause irreparable harm to the defendant, the court may order the plaintiff to place a bond as security in order to prevent any abuse. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are calculated in accordance with the general principles and rules ofthe Law on Obligations and Torts, and consist of actual losses and lost profits. The Patent Law 14. How much should a litigant plan to provides an additional rule that if an pay to take a case through to a decision at infringement was committed intentionally or through gross negligence, the plaintiff may first instance? It is difficult to give a general estimation of claim up to triple the amount of royalties that costs. The court fees depend on the value of it would usually receive if the exploitation of the dispute, with a maximum of the invention had beenlegally conducted. approximately €4,000. At first instance, court fees are charged for the complaint andthe 18. How common is it for courts to grant decision, as well as for a request and related permanent injunctions to successful decision on the issuance of preliminary plaintiffs and under what circumstances injunction. Attorneys’ fees depend on the will they do this? complexity of the case, and the costs of the Permanent injunctions to prohibit future translation, verification and certification of infringing acts, seizure and/or destruction of documents could also be significant. The infringing products and materials can be costs to reach a first instance decision can be ordered in the judgment and remain valid for between €12,000 and €22,000. as long as the patent is valid. www.iam-magazine.com Patents in Europe 2011/201291 Serbia 19. How long does it take to obtaina decision at first instance and is it possible to expedite this process? The Patent Law states thatprocedures to deal with patent infringement are urgent. However, first instance proceedings take at least one year. To expedite the procedure, it is possible to ask the court to issue a partial decision in which it decides on only some of the claims (eg, the claim for determination of infringement and injunction), and then decides on the other claims (eg, the claim for compensation of damages) later on. However, this does not help if a question of patent validity is raised in a patent invalidation procedure, as the court must interrupt the procedure, prolonging the first instance proceedings (see Question 12). First instance proceedings for the issuance of a preliminary injunction usually last from six months to one year. The parties are not obliged to undertake any kind of mediation or arbitration before bringing case before the court. Once court proceedings have commenced, the parties may at any time resolve the matter in court or through an out-of-court settlement. During the proceedings, the court may suggest that the parties try to resolve the matter through mediation, but it cannot require or order the parties to do so. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Serbian courts cannot be considered as pro-patentee. In the past, under previous Patent Laws, it was almost impossible to enforce patent rights successfully, particularly in cases in which the holder of the patent was a foreign company and the defendant was a Serbian company. In recent years the new patent legislation has served as stronger legal grounds for the efficient 20. Under what circumstances will the enforcement of IP rights. However, there are losing party in a first instance case be not enough court cases to determine granted the right to appeal? How long whether the courts are now more propatentee than previously. does an appeal typically take? The losing party always has the right to appeal. The grounds for appeal are: 23. Has your jurisdiction signed up to the • Severe violation of civilprocedure. London Agreement on Translations? If • Erroneous or incomplete facts. not, how likely is it to do so? • Erroneous application of substantive law. Serbia has not signed the London The term for filing an appeal is 15 days before a court of general competence and eight days before the Commercial Court. Appeal proceedings in Serbia are slow. It usually takes at least one year before the second instance court decides on an appeal. Appeal procedures against a preliminary injunction decision take from six months to one year. Agreement. The Patent Law provides that a holder of a patent, within a term of three months from publication, must submit to the IP Office a translation into Serbian of the patent specification, claims and abstract. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? A new Patent Law is expected at the end of 21. Are parties obliged to undertake any 2011. This will result from harmonisation type of mediation/arbitration prior to with the EPC, the Patent Law Treaty and EU bringing a case before the courts? Is ADRdirectives, as well as the correction of a realistic alternative to litigation? weaknesses in the current Patent Law. Katarina Kostic is an associate attorney at law at Popovic, Popovic, Samardzija & Popovic. She graduated from the Faculty of Law, University of Belgrade with an LLB in 1990 and is a registered IP agent. Her practice areas include patent and trademark invalidations, litigation, IP infringement, industrial property, the protection of IP rights before the Customs Office and the market supervision of counterfeit goods. 92 Patents in Europe 2011/2012 Katarina Kostic Associate [email protected] +381 11 3239 442 Popovic, Popovic, Samardzija & Popovic Serbia www.ppsp.rs www.iam-magazine.com Spain Spain By Miguel Vidal-Quadras Trias de Besand Oriol Ramon Sauri, Amat i Vidal-Quadras Advocats, Barcelona 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? The commercial courts have jurisdiction to 1. What are the most effective ways for hear a cases on both infringement and nullity. European patent holder whose rights A common defence in infringement cases is cover your jurisdiction to enforce its that the patent is invalid. This is often useful to prove to the judge where the rights in your jurisdiction? In Spain, European patent holders may bring invention stands in the state of the art, civil court actions against any possible while also presenting the technical infringers through the relevant legal contribution that it has made in order to proceedings. In exceptional circumstances, defend the infringement. Invalidity may be if a crime has been committed, a criminal alleged either as an objection in order to action may be brought. The administrative courts cannot revoke a patent, since the civil courts have jurisdiction for all proceedings related to patents. The Spanish courts also have exclusive jurisdiction to hear cases related to patent rights granted for Spain. Action may be brought either in the court with jurisdiction in the territory where the defendant is resident or in the competent court in the territory where the infringement was committed. 2. What level of expertise can a patent owner expect from the courts of your jurisdiction? Specific courts (the tribunales mercantilesor commercial courts) specialise in commercial cases, including IP rights and unfair competition. Most of these cases are heard in Barcelona and Madrid, where there are eight and 12 commercial courts, respectively. The courts of these cities also have specialised sections in their appeal courts. There is no body of judicial technical experts; nor are judges technical specialists or supported by judicial technical specialists. It is normal practice for the judge to agree to a party’s petition for the appointment of an independent expert in order to issue an opinion on the issues involved in the case. www.iam-magazine.com petition for the claim to be dismissed or by bringing a counterclaim. If this is accepted by the court, the Spanish part of the patent will be declared null and void and the patent’s registration at the Spanish Patent and Trademark Office will be cancelled, with the resulting effects for third parties. 4. To what extent is cross-examination of witnesses permitted during proceedings? Spanish procedural law allows witnesses, the parties or court-appointed experts to be cross-examined at the request of the parties where deemed appropriate. During the hearing, the parties, witnesses and experts are cross-examined and questioned. The judge may intervene when he or she considers it necessary. 5. What role can and do expert witnesses play in proceedings? As far as patents are concerned, the expert’s duty is to act as an expert on the matter concerned. However, this does not mean that he or she must adopt a decision on the legal issues raised, since this duty rests solely with the court. The expert’s duty is merely to inform the court and the parties in regard to the technical elements of which they may be unaware; the conclusions Patents in Europe 2011/201293 Spain 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more diff icult to 6. Is pre-trial discovery permitted? If so, enforce than others? to what extent? There are no previous cases in Spain from In Spain, there is a specific court which statistics can be obtained. The examination procedure to determine Spanish courts have not yet ruled on certain whether infringement has been committed issues that are currently“hot topics” in some – diligencias de comprobación de hechos . The European countries and the United States. procedure is carried out at the premises of the allegedly infringing party to ascertain 9. How far are courts bound by previous whether the latter has infringed a patent decisions in cases that have covered right or is about to do so. If so, the similar issues? necessary documents are drawn up and a Both Section 28 of the Madrid Provincial copy is provided to the petitioner so that it Court and Section 15 of the Barcelona can bring the appropriate patent Provincial Court sometimes resort to their infringement claim. own precedents when they issue judgments. Another way to obtain evidence related Under the Civil Procedures Act, not all to the case is through preliminary patent cases can be appealed to the Supreme proceedings specifically designed for IP Court; thus, there is little case law and what cases. Provided that there is enough exists is very old. evidence of the infringement, the court may be petitioned to allow the infringing party 10. Are there any restrictions on who to be cross-examined before bringing an parties can select to represent them in a infringement case regarding its suppliers, dispute? customers and distribution channels, as There are no restrictions. However, in well as the product quantities, sales and the Spain, a party must be represented by legal reference of the product in the market. A counsel, who is responsible for the client’s petition may also be made for commercial, legal defence, and a court liaison, who is the customs, accounting and financial client’s representative in the legal documents to be provided in order to proceedings and is responsible for providing reached by the expert are not determining factors, but merely his or her explanations. prepare the case. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is now beginning to be routinely accepted by the Spanish courts. Some judgments have also taken into account the patent’s registration background in order to determine the specific scope of a particular patent right. Specifically, the Madrid and Barcelona appeal courts apply the protocol set out in Article 69 of the European Patent Convention, and its Article 2, which state that claims must be interpreted according to the description and that the description cannot substitute the claims and effects of certain assertions and limitations made during the prosecution background. However, it is possible to find judges in the first instance courts who are not used to applying these concepts. In recent years the doctrine of equivalents has begun to replace the traditional approach adopted by the Supreme Court, which is based on the essential nature of a patent’s elements. This has given rise to the possibility of disregarding the elements of the claim considered secondary by the (generally court-appointed) expert. 94 Patents in Europe 2011/2012 all judicial notifications between the court and the legal counsel. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Spanish courts and parties in litigation increasingly refer to judgments laid downby other European courts concerning the infringement or invalidity of the same patent. Such background tends to be accepted as a relevant exhibit by the courts. However, the parties must prove to the Spanish courtthat the facts put before it are the sameas those on which the foreign court based its decision. In some recent cases the Barcelona Appeal Court has decided not to follow decisions adopted in other EU countries. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The terms stipulated by Spanish law for the parties’ actions are strict. Along with their respective initial documents, the parties must provide all evidence that they have. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? www.iam-magazine.com Spain Preliminary injunctions may be requested for urgent reasons. There must beprima facie justification that an infringement has been committed in a plausible manner and that there will be costly consequences for the plaintiff if an injunction is not ordered. The rights holder must also prove that it uses the patent or that serious and effective preparations are being made for such use. The parties are usually summoned to a hearing, although such an injunction may be granted ex parte. In view of the arguments put forward by the parties, the judge will decide whether the injunction should be granted. If it is granted, the defendant may petition a suspension by offering a counterguarantee, which the judgessometimes deny. consequences, which should take into account the profits obtained by the defendant as a result of the infringement as well as the plaintiff ’s loss of profits, or the cost of a possible licence to use the patent. Compensation can also be given for the harm caused to the prestige of the invention, if this can be proven (eg, the inadequate or defective presentation of the product in the market). In addition, the law has recently been amended to include the possibility of claiming compensation for moral damages. Spanish law makes no reference to the possibility of claiming punitive damages in the sense this is understood in US law. According to the EU IP Rights Enforcement Directive (48/2004/EC), the award of 14. How much should a litigant plan to punitive damages is not allowed. pay to take a case through to a decision at first instance? 18. How common is it for courts to grant Although the cost of court proceedings permanent injunctions to successful depends on the complexity of the case, on plaintiffs and under what circumstances average a decision costs between €50,000 will they do this? and €150,000. Permanent injunctions can be granted after a full trial on the merits of a patent 15. Is it possible for the successful party infringement action. The plaintiff bears the in a case to obtain costs from the losingburden of proof; if the court considers the party? facts of the claim to be doubtful at the end The court can order the losing party to pay of the proceedings, it must reject the action. the legal costs. In such cases, the lawyers’ Permanent injunctions related to the fees are calculated according to the official rates and added to the expenses incurred to translate documents or obtain expert opinions, and any other costs that the successful party can demonstrate that it incurred. exploitation of the patent are bound to the validity or the expiry date of the exclusive right, so if the patent is declared invalid or the registration lapses, the injunctions related to exploitation of the product will become ineffective. The expiry date of the patent will not affect remedies unrelated to 16. What are the typical remedies the exploitation of the object of the granted to a successful plaintiff by the exclusive right for example, compensation courts? for the damage and prejudice suffered or Legal actions may be brought to stop the publication of the judgment. infringement, seize or destroy the infringing products or machinery and moulds 19. How long does it take to obtain a exclusively used for such purpose, and decision at first instance and is it prohibit the infringing actions from being possible to expedite this process? recommenced. In addition, compensation Depending on the courts involved and their may be imposed for damages and loss. workload, first instance proceedings usually In addition, in Spain, as in other take between 18 and 26 months in Barcelona European countries, a claim may be brought and between 20 and 30 months in Madrid. against actions that have contributed to the The main circumstances that may delay a infringement, provided that those who case are bringing a claim against a party contributed to the infringement were aware which is resident abroad, needing to provide that the elements provided to the infringing technical expert evidence, the complexity of party were to be used to manufacture the certain evidence (eg, carrying out trials, infringing products. analyses and reproductions or plant inspections in Spain or abroad) and the 17. How are damages awards calculated? number of experts or witnesses and their Is it possible to obtain punitive damages? nationality. Damages are determined according to the economic criteria of EU competition law by 20. Under what circumstances will the calculating the negative economic losing party in a first instance case be www.iam-magazine.com Patents in Europe 2011/201295 Spain granted the right to appeal? How long does an appeal typically take? An appeal before the second instance court is common in patent cases and there are no special requirements. The losing party must merely serve notice that it disagrees with the decision within five days of the ruling and submit the grounds for its appeal within the 20-day term granted by the court. The appeal court will review the judgment and rule on the assessment of the facts by the first instance court, and whether its judgment was in accordance with the law. The appeal ruling may take one to two years to be laid down (12 to 16 months in appeals against judgments ruled on interim injunctions), depending on the court hearing the appeal and its workload and whether the court decides, exceptionally, to allow evidence that was denied by the first instance court. technology transfer agreement cases if the parties agree to go to arbitration or conciliation, which does not usually happen unless there is a special reason (eg, both parties’ need for discretion and confidentiality regarding the proceedings) or in the case of agreements which include an arbitration clause accepted by both parties. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? In recent years certain courts, such as those in Barcelona and the first instance court in Granada, have become more pro-patentee. The 1995 establishment by the General Council of Judicial Power of a private foundation, controlled by the main pharmaceutical companies, to train judges in patent matters has resulted in some judges becoming more likely to favour patent holders. 23. Has your jurisdiction signed up to 21. Are parties obliged to undertake anythe London Agreement on Translations? type of mediation/arbitration prior to If not, how likely is it to do so? bringing a case before the courts? Is Spain has not yet signed up to the London Agreement of Translations and is not ADR a realistic alternative to litigation? ADR may occur only in infringement or expected to do so in the near future. Miguel Vidal-Quadras Trias de Bes is head of the firm’s industrial property, IP and pharmaceutical law department. He graduated in 1993 from the University of Barcelona with a PhD in law and has been a member of the Barcelona Bar Association since 1997. He is the author of various IP publications and a professor of patent law at Universitat Ramon Llull and Universitat de Barcelona. His areas of expertise include litigation, intellectual property, technology transfer and pharmaceutical law. He speaks Spanish, Catalan, English and French. Miguel Vidal-Quadras Trias de Bes Oriol Ramon Sauri graduated in law in 2002 from Universitat Autònoma de Barcelona and holds an LLM in industrial property, IP and competition law from ESADE, Universitat Ramon Llull. He joined the Barcelona Bar Association in 2004 and joined the firm in the same year. He is a member of the International Association for the Protection of Intellectual Property. His main areas of expertise are litigation, intellectual property, competition, advertising and pharmaceutical law. He speaks Spanish, Catalan and English. Oriol Ramon Sauri 96 Patents in Europe 2011/2012 Partner [email protected] +34 93 321 1053 Amat i Vidal-Quadras Advocats Spain www.avqadvocats.com Associate [email protected] +34 93 321 1053 Amat i Vidal-Quadras Advocats Spain www.avqadvocats.com www.iam-magazine.com Sweden Sweden By Peter Kenamets and Fabian Edlund, Awapatent, Gothenburg heard simultaneously. Generally, the cases are joined and heard together, but there are exceptions. 1. What are the most effective ways for a European patent holder whose rights 4. To what extent is cross-examination cover your jurisdiction to enforce its of witnesses permitted during rights in your jurisdiction? proceedings? No government institutions outside the Witnesses may be cross-examined during court system are authorised to enforce trial and there are very few restrictions. As patent rights. This means that the holder of long as the questions are relevant to the a European patent must turn to the courts case, they will generally be admissible. to enforce its rights if it cannot resolve the situation amicably. 5. What role can and do expert witnesses 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases (concerning both infringement and invalidity) are tried by the same department of the Stockholm City Court. This effectively makes the Stockholm City Court a specialist patent court. On appeal, patent cases are tried by the Svea Appeal Court in Stockholm. These two courts are composed of both legally trained judges and experts in the specific technical field, who are well versed in patent law. To date, few cases have been tried by the Supreme Court. It is fair to say that the general view is that the judgments handed down by the Swedish courts in patent cases are well reasoned and based on a good understanding of the technical and legal issues. play in proceedings? Expert witnesses can be appointed by the court itself, as well as by either party. The latter is more common. Expert witnesses are frequently used by the parties, especially regarding technical and scientific issues, but sometimes also regarding legal questions. Weight will be given to the expert witness’s testimony depending on the relation to the party which called the expert witness and the importance of the expert witness in his or her field of expertise. Sometimes expert witnesses can play an important role in the proceedings. 6. Is pre-trial discovery permitted? If so, to what extent? The concept under Swedish law most similar to pre-trial discovery is the infringement investigation, which stems from the Agreement on Trade-Related Aspects of IP Rights. Under these rules, a patent owner or licensee which can show 3. How do your country’s courts deal “probable cause” for infringement can with validity and infringement? Are theyobtain a court decision allowing it access to handled together or separately? the premises of the alleged infringer to In Sweden, as a formal matter, patent search for and preserve evidence. A rule of infringement and validity issues are tried in proportionality also applies (ie, it must be separate proceedings. The court has reasonable to assume that the reasons for discretion to decide whether the conducting the investigation outweigh the infringement and validity cases should be hardship to the alleged infringer). www.iam-magazine.com Patents in Europe 2011/201297 Sweden 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is recognised under Swedish patent law. However, in general, the courts rarely find infringement under the doctrine of equivalents. Instead, the courts will typically reject the application of the doctrine of equivalents to a certain feature with reference to one of the following six situations: • The invention relates to a simple design solution (small inventive step). • The feature is described in the patent as central to the invention. • The feature and the corresponding part of the allegedly infringing device solve different problems. • A person skilled in the art would have been unable to overcome the differences between the invention and the infringing object. • Application of the doctrine of equivalents would conflict with the state of the art on the date of application. • An intentional restriction of the feature has been made during the prosecution of the application (comparable to UStype prosecution history estoppel). However, there are still cases where the Swedish courts have relied on the doctrine difficult to defend after the EPO developed its practice of “non-technical hindsight” (eg, T641/00 and T258/03). 9. How far are courts bound by previous decisions in cases that have covered similar issues? Since Sweden has a codified system, not a case law system, the courts are not formally bound by previous decisions. However, in practice, the courts always follow the decisions of a higher court. Hence, a district court always follows the decisions of the Supreme Court or (if there is no Supreme Court decision) the appellate courts, and the appellate courts always follow the decisions of the Supreme Court. 10. Are there any restrictions on who parties can select to represent them in a dispute? Specialist representation is not formally required in patent cases in Sweden. A party is usually represented by one lawyer with patent litigation experience and one patent attorney (eg, a European patent attorney). In complex cases, more people (eg , lawyers, patent attorneys, technical experts) are sometimes added to the litigation team. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Swedish courts are not formally bound by decisions or opinions of foreign courts relating to, for example, foreign counterparts of Swedish patents at issue in infringement or invalidity lawsuits. It is difficult to state with any precision the extent to which Swedish courts are (informally) influenced by foreign decisions. If there is a well-reasoned foreign decision based on facts that are identical to those of the Swedish case (eg, same claim scope, same accused device), one can assume that this will have some influence on the 8. Are certain patent rights (eg, those Swedish court. When it comes to EPO case relating to business methods, software law, the Swedish courts frequently make reference to EPO Board of Appeal decisions, and biotechnology) more diff icult to enforce than others? based on the argument that Swedish patent Swedish patent law is intended tobe law is intended to be harmonised with the harmonised with the practice of the European European Patent Convention with respect to Patent Office (EPO), so that all granted patentability. The Swedish courts have also European patents should be enforceable in been criticised by some practitioners for Sweden. In the case of software-related referring to the EPO Guidelines for inventions, the Swedish courtshave followed Examination, on the grounds that this the EPO standards of patentability closely . document is not legally binding, but is only This means, for example, that claims directed a guiding document for examiners. to a computer program product are enforceable. However, it also means that the 12. How easy is it for defendants to delay validity of business methodpatents may be proceedings and how can plaintiffs of equivalents to find that there is an infringement. For example, a few years ago the Svea Appeal Court upheld a decision of the Stockholm City Court finding infringement under the doctrine of equivalents in a case relating to a robotic milking system. The Swedish courts may consider the prosecution history of a patent application in order to assess the scope of the granted patent. Any statement made during prosecution may thus limit the scope of the granted patent. However, the court will carefully consider the context within which such a statement was made. 98 Patents in Europe 2011/2012 www.iam-magazine.com Sweden prevent them from doing so? A party seeking to delay a court procedure may reply late and may continually add new arguments, facts and evidence. Such behaviour may slow down the process, but it may prove to be a dangerous tactic. For reasons of procedural efficiency, the court may order that no new matter (eg, arguments, evidence) from an obstructing party will be considered. Delay tactics may also result in lost credibility, which is of course undesirable. If the obstructing party is deemed to have been negligent, this might also be reflected in the litigation costs. The plaintiff can counter by continually requesting the court to speed up the procedure, which may have some effect. However, no formal expedited procedure is available. The typical remedies for patent infringement in Sweden are injunctions (under penalty of fine) and damages, which are calculated as a reasonable royalty and compensation for further loss (eg, lost profits). of 60 infringement cases during the same period. A preliminary injunction is available for a patent owner or licensee that can establish, with a sufficient degree of certainty, that infringement is ongoing and that the continued infringement may reasonably be expected to depreciate the value of the patent. In order to obtain a preliminary injunction, the plaintiff must also post security, as a bond or bank guarantee, that is sufficient to protect the defendant and to prevent abuse. Rights Enforcement Directive (2004/48/EC), the Patents Act provides that the following five factors should specifically be taken into account when the amount of damages is determined: • The patent owner’s lost profit. • The infringer’s profit from the infringement. • The harm done to the reputation of the invention. • The non-economic loss. • The patent owner’s interest in preventing patent infringement. 17. How are damages awards calculated? Is it possible to obtain punitive damages? As indicated briefly above, damages for patent infringement under Swedish law are calculated as a reasonable royalty and compensation for further loss. The patent owner is always entitled to a reasonable royalty in case of an infringement without showing that it suffered any loss. The general intention is that a reasonable royalty shall be determined so that it reflects what the 13. Is it possible to obtain preliminary patent owner and the infringer would have agreed on had they concluded a licensing injunctions? If so, under what circumstances? deal before the infringement started. Preliminary injunctions are quite common If the patent owner can show that it has in Sweden. One survey indicates that the suffered loss as a result of the infringement, first instance patent court ruled on 23 it is entitled to compensation for that loss. requests for preliminary injunctions This compensation is normally related to between 2001 and 2005 (15 injunctions were reduced sales and lost orders; however, it granted and eight denied). As a comparison, can also concern loss caused by price the same survey indicates that the patent pressure and similar. court determined (ie, tried or settled) a total In order to comply with the EU IP 14. How much should a litigant plan to Punitive damages (eg, treble damages) pay to take a case through to a decision at first instance? are not available. An average first instance infringement case Finally, a patent owner can claim costs between €100,000 and €150,000 a compensation only for the five years party, but there is considerable variation. If immediately before the patent owner there is a counterclaim for invalidity (which started its infringement action before court. is common), the costs will rise significantly. 18. How common is it for courts to grant 15. Is it possible for the successful party permanent injunctions to successful in a case to obtain costs from the losingplaintiffs and under what circumstances party? will they do this? As a general rule, the losing party pays the As a general rule, a permanent injunction is winning party’s costs. awarded to a successful plaintiff. There is no need for the patent owner to show that it is not adequately compensated by damages. 16. What are the typical remedies granted to a successful plaintiff by the Such injunctions are generally issued under penalty of a fine. The court sets the amount courts? www.iam-magazine.com Patents in Europe 2011/201299 Sweden of the fine high enough to ensure that the injunction is effective. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The normal timeframe from filing of a lawsuit to a judgment is about two years, but there is considerable variation (perhaps one to four years). There is no formal expedited procedure, but the parties’ manner of pursuing and defending the claim can be expected to have an impact on the timetable. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Since Autumn 2008 the losing party in a first instance case must ask for leave to appeal. In order to obtain leave to appeal, one of the following three criteria must be fulfilled: • There is reason to doubt the accuracy of the district court’s decision. • It is not possible to assess the accuracy of the district court’s decision without leave to appeal. • The case has precedential value. The decision regarding leave to appeal can take up to two months. The time for the actual proceedings then depends on the complexity of the case, but a timeframe of one to two years can be expected. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? The parties are not obliged to undertake any type of mediation or arbitration before bringing a case before the courts, unless they are bound by an agreement. ADR is thus very unusual in patent cases. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Even though there are no exact figures, a patent owner has reason to be fairly optimistic about its chances of success in a patent infringement and invalidity case in Sweden. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Sweden has ratified the London Agreement; it requires that the text of a patent be available in English or Swedish and that the claims be translated into Swedish. Peter Kenamets is an attorney at law and partner at Awapatent’s Gothenburg office. His practice principally concerns IP disputes. He represents clients before the Swedish courts (especially in patent disputes). He also provides assistance in connection with patent disputes outside Sweden, particularly in the fields of medical technology and implants. Mr Kenamets’ practice further includes assisting clients in relation to contractual IP issues (licensing etc), mergers and acquisitions and due diligence investigations. He also advises on issues relating to infringement and validity assessments, research and development collaborations, employee inventions and contracts in general. Peter Kenamets Fabian Edlund is a European patent attorney and the managing partner of Awapatent’s Gothenburg office. He drafts and prosecutes patent applications for many different clients, primarily before the EPO. He acts as a strategic adviser for small and medium-sized IT companies, focusing on software development to help them improve their business with the support of intellectual property. Mr Edlund is active in Awapatent’s practice group for patenting software and business methods, and has given numerous lectures in the United States, Japan and Sweden on European practice and the patenting of software inventions in Europe. He is secretary general and a member of the UNION software commission. Fabian Edlund 100 Patents in Europe 2011/2012 Partner [email protected] +46 31 63 02 72 Awapatent Sweden www.awapatent.com Partner [email protected] +46 31 63 02 22 Awapatent Sweden www.awapatent.com www.iam-magazine.com Switzerland Switzerland By Regula Rüedi and Rainer Schalch, E Blum & Co AG, Zurich 1. What are the most effective ways for European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent holder can send a warning letter and seek an out-of-court settlement with an alleged infringer. A successful warning letter is the most effective way to enforce rights, since it is subject to no formalities and costs little. If no solution can be found in this way, or through arbitration or mediation (to which the alleged infringer must agree), the patent holder has no option other than to enforce its patent through a court action. No warning letter need be served before commencing a patent suit. Patent rights are enforceable through cease and desist orders which, if granted by the court, require a third party to stop using – in particular manufacturing, importing, advertising, offering or selling – an infringing product or method. In addition, financial compensation is available to the patent holder. The cease and desist order can be requested in the form of a preliminary injunction; this is often advisable in view of the time it takes to obtain a final decision in patent matters. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? At present, Switzerland has no specialist patent courts. However, the Federal Patent Court of First Instance will start work in January 2012. The new court will have technical judges with expertise in patent law. Hitherto, the patent law prescribes that each canton shall designate a competent court. Of the 26 courts so defined, four are commercial courts located in the cantons of Argovia, Berne, St Gaul and Zurich. These courts www.iam-magazine.com attract the majority of patent cases and therefore have experience in patent matters. Expertise is brought to these courts by the a commercial judges, who include scientists, engineers and patent attorneys. In addition, an external expert is regularly appointed by the court. The other designated courts are ordinary first instance civil courts. The Federal Court, which acts as the court of second instance, has experience in patent law, but no technical judges sit on the bench. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? The courts are competent to deal with validity and infringement. Thus, validity and infringement are dealt with simultaneously by the same court, although this is not mandatory. Depending on the domicile of the parties (ie, national or foreign) and the order in which the proceedings have been started, different courts may be competent and become active. Even if different courts are competent and seized, the last involved court may transfer the case to the first court. Once the Federal Patent Court of First Instance has started work, it is competent to hear both issues. 4. To what extent is cross-examination of witnesses permitted during proceedings? In January 2011 the Federal Civil Procedure Code came into force. The code provides that witnesses are primarily examined by the court, but the court may also allow the parties to pose questions directly. 5. What role can and do expert witnesses play in proceedings? Patent proceedings are predominantly based on written evidence, but any type of evidence that is allowed in civil proceedings is also allowed in patent proceedings. Withregard Patents in Europe 2011/2012101 Switzerland to expert opinions provided by the parties, the Federal Civil Procedure Code does not recognise such opinions as evidence, so they are regarded as party allegations only. However, the parties may be able to submit expert opinions by citing the expert as an expert witness under the new code. Expert opinions provided by court-appointed experts are still potential evidence. infringing products may present problems for the patentee and the courts. In mid-2008 an amended Swiss patent law entered into force, setting out more restrictive regulations for Swiss national applications in the field of biotech and genetic engineering than the European Patent Convention (EPC). Whether these differences will cause problems for the enforcement of European patents is controversial and relevant court decisionsare 6. Is pre-trial discovery permitted? If so, not yet available. to what extent? There is no pre-trial discovery. However, the 9. How far are courts bound by previous Federal Civil Procedure Code sets down decisions in cases that have covered unified general rules for provisional measures similar issues? in IP cases and, in particular, a new means of Courts are not bound by the opinions and securing evidence in patent cases, similar to decisions of other courts at the same level, the procedure known as “saisie contrefaçon” in but lower courts are usually bound by the France. The “saisie helvétique” is intended not decisions of higher courts. In patent matters to provide evidence, but rather to secure the courts are usually willing to consider the evidence in cases whereprima facie evidence opinions of other courts, provided that no of an infringement exists. In such cases a contradictory opinions exist. member of the court, in some cases accompanied by an expert or person skilled in 10. Are there any restrictions on who the relevant field, may visit theproduction parties can select to represent them in facilities of an alleged possible infringer and a dispute? make a detailed description of the method Representation is limited to attorneys holding applied, the products made and the means of the Swiss attorney at law qualification or a production. The claimant may be excluded recognised equivalent attorney at law from the saisie and receives no documents qualification of an EU or European Free Trade before the opposing party has had the Agreement member state. Assistance and coopportunity to file comments. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents has been accepted for many years and is provided for in the Patents Act. The act explicitly distinguishes between infringement by counterfeit and infringement by imitation. Imitation – supported by long-established case law – encompasses embodiments using equivalent means. representation by a Swiss patent attorney are recommended in most cases. In cases that will be dealt with by the Federal Patent Court of First Instance and that are restricted to the question of patent nullity, Swiss patent attorneys may be appointed as the sole representative. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? To a certain extent, the Swiss cantonal courts are willing to consider the reasoning 8. Are certain patent rights (eg, those of foreign courts of similar expertise and relating to business methods, software legal background. In particular, the four and biotechnology) more difficult to commercial courts are often willing to consider and discuss German court practice. enforce than others? All types of patent right granted by the European Patent Office are enforceable in 12. How easy is it for defendants to delay Switzerland. However, the evidential proceedings and how can plaintiffs requirements may present problems for the prevent them from doing so? enforcement of certain types of patent right. Once the case is pending before the court, Since the burden of proof rests with the the possibilities for delaying the case are plaintiff, method patents may present limited since the court handles proceedings problems if the use of the method cannot be according to a strict timeframe. In order to ascertained by the product itself or if no delay, the defendant can seek the maximum number of time extensions, while the prima facie evidence of infringement can be provided to lead to asaisie helvétique(see plaintiff may try to accelerate the Question 6) or a reversal of the burden of proceedings by responding to a court order proof. On the other hand, the complexity of immediately. At the beginning of the software-related or biotech patents and the proceedings, the defendant may try to 102 Patents in Europe 2011/2012 www.iam-magazine.com Switzerland convince the court that the plaintiff’s demand for relief is not sufficiently concise and that this question must be decided first before going into the merits of the case; however, these tactics fail in most cases since the courts are reluctant to dismiss a case on these grounds alone. In patent cases the time taken by the court-appointed expert to deliver his or her opinion is a relevant factor. If the defendant contests the validity of the patent, this will delay the case considerably, since the court often concentrates on this question first and the expert will initially give an opinion on validity alone. Only if validity is ascertained will the expert consider the question of infringement. The forthcoming Federal Patent Court is expected to implement swifter proceedings. party. Thus, the defeated party must bear costs of around Sfr160,000 to Sfr450,000, comprising the parties’ costs, the costs of the court expert and court costs. In addition, the plaintiff must show that it has not delayed the case. As a ruleof thumb, a request for a preliminary injunction must be filed within three to six months of the infringement becoming known to the patent holder. The term varies depending on the details of the case and the practice of the court. Preliminary injunctions are sought by filing a request that includes a demand for relief and reasoned statements and proof of the infringement. The court will then ask the defendant for its response.Ex parte injunctions are the exception to the rule and are available only in case of imminent danger (eg, during a trade fair). The court will usually appoint an expert in preliminary injunction cases aswell, which may lead to considerable delays in the ssue i of the decision. Due to thebroad variety of scientifically and technically skilled judges, the Federal Patent Court might abstain rfom appointing court experts, resulting in speedier proceedings. infringer’s profits or the amount of the infringer’s unjust enrichment. Previously, claims were often made for damages calculated on the basis of usual royalties. However, according to a recentFederal Court decision, payment of an amount equal to a licence fee under the title of damages may be demanded only if the plaintiff can prove that in the absence of the infringement, the claimed licence fee income would have been earned. This and other types of damages are usually very difficult to prove. Accordingly, the plaintiff must now provide evidence of the profits made by the infringer in order to claim restitution of the infringer’s profits. Punitive damages are not available. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. The court will calculate the successful party’s attorney costs and the court costs based on an official fee schedule that depends on the complexity of the case, the number of writs and the value in litigation. The successful party’s patent attorney’s costs and expert’s costs are reimbursed based on actual costs. 16. What are the typical remedies granted to a successful plaintiff by thecourts? 13. Is it possible to obtain preliminary It is usual to request a cease and desist order injunctions? If so, under what and reimbursement of damages or lost profits. If a cease and desist order is granted, circumstances? Preliminary injunctions are readily available, the defendant must stop using the infringing provided that the plaintiff can provideprima product or method. In addition, financial facie evidence of: compensation is available to the patent • The infringement. holder, which may include compensation for • The validity of the patent. actual damage inflicted. • A detriment that cannot easily be remedied (eg, by the payment of 17. How are damages awards calculated? damages). Is it possible to obtain punitive damages? The plaintiff may claim its own damages, 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Unless the plaintiff and the defendant come to an agreement before a final decision, the court will grant a permanent injunction. In 14. How much should a litigant plan to specific circumstances the court may abstain pay to take a case through to a decision from an unlimited permanent injunction. For example, in pharmaceutical cases, if the at first instance? The costs for a first instance decision complete unavailability of the infringing amount to around Sfr80,000 to Sfr200,000 product would pose a health risk to patients per party, and the costs of the winning party already treated with the product, limited are at least partially imposed on the losing availability may be provided for such patients. www.iam-magazine.com Patents in Europe 2011/2012103 Switzerland 19. How long does it take to obtaina decision at first instance and is it possible to expedite this process? Since the entry into force of the new Federal Civil Procedure Code, the time taken to obtain a first instance decision should depend less on the court than on the complexity of the case. An expert opinion is usually required; in less complicated cases some courts – particularly the commercial courts and, once it is up and running, the Federal Patent Court –may decide directly. The average duration of first instance proceedings is 18 months to three years and it is not possible to expedite the process. A shorter duration is hoped for with the Federal Patent Court and the Federal Civil Procedure Code. There is no obligation to undertake any mediation or arbitration before bringing a case before the courts. However, provided that both parties agree, mediation or arbitration may speed up the case. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? As Switzerland has 26 first instance courts, there is a broad spectrum, from pro-patentee to contra-patentee courts. The commercial courts dealing with the majority of patent cases will protect the patentees’ rights, provided that there is sufficient evidence. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Switzerland has signed up to the London 20. Under what circumstances will the Agreement. Two of the languages of the EPC losing party in a first instance case be are official Swiss languages, so no translation granted the right to appeal? How long of the claims need be filed. does an appeal typically take? In main proceedings an appeal to the Federal 24. Are there any other issues relating to Court is possible. The Federal Court has full the enforcement system in your country jurisdiction in appeal proceedings. The that you would like to raise? appeal procedure is usually swift, often The patent enforcement system in taking less than one year. Switzerland has been unified by the enactment of the Federal Civil Procedure 21. Are parties obliged to undertake any Code, and will be further enhanced by the type of mediation/arbitration prior to establishment of the Federal Patent Court of bringing a case before the courts? Is First Instance, which is expected to begin ADR a realistic alternative to litigation?work in 2012. Regula Rüedi studied chemistry and received a PhD in organometallic chemistry at the Swiss Federal Institute of Technology (ETH), Zurich. She has several years of practical experience in industry in the fields of analytical chemistry, materials and surface analysis. Dr Rüedi became a patent attorney in 1990 and has been admitted as a European patent attorney since 1994. Her main activities with E Blum & Co AG are in the field of patent law, in particular expert opinions and litigation work in patent infringement and invalidity cases, the drafting and prosecution of patent applications and supplementary protection certificates, opposition and appeal procedures, especially in the fields of chemistry, materials, pharmacy, foodstuffs and genetic engineering, and the counselling of clients in patent matters. Dr Rüedi is a partner of the firm and a member of various industry associations. She works in German and English. Regula Rüedi Rainer Schalch studied electrical engineering and received his degree by the ETH, Zurich. He was employed in industry in the fields of power system management and digital computer design. After joining E Blum & Co AG he studied law at the University of Zurich and passed the bar examination in 1989. His main activities with E Blum & Co AG cover patent law, in particular patent litigation, opinions on infringement and validity of patents as court expert or private expert, as well as the drafting and prosecution of a patent applications. He is a judge at the Argovia Commercial Court. Mr Schalch is a partner of the firm and a member of various industry associations. He works in German and English. Rainer Schalch 104 Patents in Europe 2011/2012 Partner [email protected] +41 43 222 56 00 E Blum & Co AG Switzerland www.eblum.ch Partner [email protected] +41 43 222 56 00 E Blum & Co AG Switzerland www.eblum.ch www.iam-magazine.com Turkey Turkey By Ersin Dereligil and Oktay Simsek, Destek Patent Inc, Istanbul of which are expected to be resolved soon. 2. What level of expertise can a patent 1. What are the most effective ways for owner a expect from the courts in your European patent holder whose rights jurisdiction? cover your jurisdiction to enforce its The judges at the specialised IP courts are rights in your jurisdiction? trained in IP disputes. Although they hear If a European patent owner successfully cases on all aspects of patent infringement validates its patent in Turkey, it enjoys the and thus are experienced in patent same rights as a conventional Turkish judgments, in principle they have no patent holder. Thus, it has several options technical expertise. to enforce its rights, the most common of The court usually appoints a panel of which are: independent experts to examine all legal • • • • Sending a cease and desist letter (preferably via a Turkish notary, although this is not mandatory). Initiating civil and/or criminal proceedings before the courts. Requesting an interlocutory injunction before or together with civil court proceedings. Obtaining border seizure at Customs and then initiating proceedings. Turkey has 21 specialised IP courts in Ankara, Istanbul and Izmir; elsewhere, only appointed courts are responsible for hearing IP matters, including patent cases. Civil and criminal proceedings cannot be held at the same court. A preliminary injunction to stop the infringement and/or to seize the infringing products can be claimed before or alongside the civil proceedings. However, such an injunction is rarely granted, unless very strong evidence of infringement is available. For criminal proceedings, a rights holder must file a complaint against the infringer with the public prosecutor. Although criminal actions were previously a commonly used and effective tool in patent enforcement, this course of action is no longer advisable due to legislative gaps and a major backlog at the criminal courts, both www.iam-magazine.com and technical facts, which are considered at first instance only. 3. How do your country’s courts deal with validity and infringement? Are they handled together or separately? As is common international practice, a patent infringement action is likely to face a counteraction by the defendant for the invalidity of the patent based on one of the grounds for nullification set out in the Patent Law (Decree-Law 551). There are no separate specialised courts for validity and infringement cases in Turkey. Both types of proceeding are generally joined and dealt with simultaneously in the first instance court where the first action is lodged. The Turkish Patent Institute does not handle post-grant invalidation proceedings and administrative proceedings cannot be used to enforce patent rights in Turkey. 4. To what extent is cross-examination of witnesses permitted during proceedings? Turkish patent litigation is always based on written evidence and does not normally involve the hearing or cross-examination of witnesses. However, it is at the court’s discretion whether to accept crossexamination requests. Patents in Europe 2011/2012105 Turkey 5. What role can and do expert witnesses same result, that element shall generally be deemed to be equivalent to the elements as play in proceedings? Expert reports play a major role in Turkish expressed in the patent claim(s) at issue. patent judgments. Usually, a panel of independent experts is appointed by the 8. Are certain patent rights (eg, those court to examine the technical and legal relating to business methods, software facts, the costs of which are paid by the and biotechnology) more diff icult to plaintiff. enforce than others? Each panel of appointed experts usually Neither business methods nor software comprises three professionals, (ie, an constitutes patentable subject matter in academic, a lawyer and a patent attorney. A Turkey. Software can be protected under the printed copy of the case file is submitted to Copyright Code. Although software for the experts once the petition exchange and technical effects may enjoy patent submission of evidence stages have been protection, the scope of such protection is completed. The experts or their reports can still disputable in Turkey, as in most be challenged by either party on reasonable European countries. Any patent for software grounds, which would then lead to the characteristics can be subject to an preparation of a second and generally final invalidity action due to the non-patentable report. nature of software under the patent law. However, the parties may adduce However, it cannot be said that certain external expert reports in support of patent rights are harder to enforce than evidential and legal facts at a very early others in Turkey, due to the fact that, in stage in the proceedings. These may rarely principle, each case requires examination by be relied on by the courts, but the facts a panel of experts specifically selected and raised therein and thus included in the case appointed by the court after considering all file may be considered by the official legal and technical facts and requirements of experts appointed by the court. the case. 6. Is pre-trial discovery permitted? If so, 9. How far are the courts bound by to what extent? previous decisions in cases that have Disclosure of evidence is the first step of covered similar issues? patent infringement proceedings. In addition to pre-trial discovery, in the absence of sufficient evidence of infringement it is possible for the plaintiff to initiate a separate lawsuit before the civil court to find and secure evidence of infringing acts. The judge then assigns a panel of experts and assesses the infringing acts without notifying the infringer ( ex parte proceedings). The expert report is strong evidence of infringement and can be used later for the main civil and criminal proceedings. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Turkish patent legislation accepts the doctrine of equivalents to some extent. According to the Patent Law, the scope of patent protection is determined by its claims. Claims cannot be interpreted as being confined to their strict literal wording. When determining the scope of patent protection at the time of infringement, all elements that are equivalent to the elements expressed in the claim(s) are taken into consideration. Where such an equivalent element performs substantially the same function in a substantially similar manner and gives the 106 Patents in Europe 2011/2012 The Turkish courts are not bound by the decisions of other national or foreign courts. Nevertheless, decisions of the Supreme Court of Appeals are authoritative and are usually followed by the first instance courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers who are registered with one of the Turkish bars can represent parties before the courts. Patent attorneys cannot represent a party in legal proceedings or formally appear before the Turkish courts. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Turkish courts are not bound by the decisions of other courts. It is at the judge’s discretion to take foreign decisions on the same issues into consideration; such decisions can be submitted as complementary facts and evidence in the early stages of proceedings. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? www.iam-magazine.com Turkey A defendant can delay proceedings by: • Counterclaiming the nullity of the patent at issue. • Filing objections against experts and their reports, and requesting a new panel of experts and new expert reports. • Requesting time extensions at every possible stage. • patented process. The placement of security or a guarantee for damages to be compensated. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The litigation costs of first instance In case of nullity actions, the court will proceedings vary greatly, depending on the first render a decision on the validity of the attorneys’ charging policy, any translation patent and then rule on the infringement costs, the downpayment required for issue. If the other attempts are not well preliminary injunctions and any extra reasoned, the defendant’s intention to delay official fees for the compensation of is usually spotted by the judge and is not damages. allowed to continue to the next stages. The official costs, including experts’ The plaintiff should be well prepared for fees, range from €2,000 to €4,000, plus the submission of all facts and evidence in 1.35% of the amount of compensation, if advance, even before the start of claimed. All of these fees are reimbursed by proceedings, and should use the time the successful plaintiff. Attorneys’ fees are allowed wisely without requiring further the dominant factor in litigation costs, time extensions during the proceedings. usually varying from €25,000 to €50,000, but may be much higher depending on the 13. Is it possible to obtain preliminary complexity of the case, the disclosure of injunctions? If so, under what evidence, a counteraction for invalidity by the defendant and other requirements for circumstances? According to the patent legislation, it is court jurisdiction, site visits and special possible for a patent holder to seek reports from external professionals. These preliminary injunctions before civil courts fees cannot be reimbursed. in order to forestall an imminent threat of infringement against a wide range of 15. What are the typical remedies infringing parties, from direct infringers to suppliers, importers, wholesalers and distributors. However, such injunctions are rarely granted unless clear facts and strong evidence of infringement are available. If this is the case, the plaintiff must provide a financial payment or a letter of bank guarantee as security. The patent holder may request all possible options when a patent infringement decision is issued, including the investigation and cessation of production of infringing products and confiscation of all infringing products at Customs and other locations where the products are held for commercial reasons (eg, places where the products are produced, stored, sold, offered, exported or imported). The court will order an expert report to determine the infringement. Precautionary measures should fully secure the effectiveness of the judgment, and particularly provide for the following measures: • Cessation of infringing acts. • An injunction to seize within Turkey – including at Customs, free ports or free trade area – and to keep in custody goods produced or imported that infringe rights conferred by the patent or the means used to implement the www.iam-magazine.com granted to a successful plaintiff by the courts? The Patent Law provides for several remedies, such as damages, injunctions and the recall and destruction of infringing goods. If infringement is proven, the court will usually grant damages and an injunction against the infringer. 16. How are damages awards calculated? Is it possible to obtain punitive damages? There are three options for the calculation of damages in Turkey: the infringer’s profit, the patentee’s lost profits and reasonable royalties. However, if a patentee has not fulfilled the use requirement, the damages shall be calculated according to reasonable royalties (see Question 23). When damages are being calculated, all circumstances having an effect on the case (ie, the value of the patent, the remaining patent protection term at the time of infringement and the number of licences granted) shall be taken into consideration. The compensation for moral damages as granted by the courts is of nominal value and rather symbolic. Punitive damages are not available in civil proceedings, whereas the criminal courts may order a punitive fine of between €12,000 and €23,000. Patents in Europe 2011/2012107 Turkey The Code of Criminal Procedure obliges criminal courts to invite parties to settle during criminal proceedings 17. How common is it for courts to grant established in 2000 and the following permanent injunctions to successful specialised courts now exist: plaintiffs and under what circumstances• In Istanbul, seven civil and six criminal courts. will they do this? Permanent injunctions are often granted to • In Ankara, four civil and one criminal the successful plaintiff at the end of the court. proceedings. • In Izmir, one civil and two criminal courts. 18. How long does it take to obtain a Ninety percent of infringing activities decision at first instance and is it possible to expedite this process? takes place in these three cities. Most The civil first instance IP courts usually judges have been trained within the issue a decision within 24 to 36 months, framework of a joint project between the depending on the number of hearings and petitions exchanged and the number of expert reports (see Question 12). Ministry of Justice and the European Commission. As the judges are harsh on infringement, they are likely to be propatentee when solid facts and supporting 19. Under what circumstances will the evidence are provided. losing party in a first instance case be granted the right to appeal? How long 22. Has your jurisdiction signed up to does an appeal typically take? the London Agreement on Translations? Any party can appeal the case before the If not, how likely is it to do so? Supreme Court within 15 days of issuance of Turkey has not yet signed up to the London the court decision; this stage takes another Agreement and there is no appointed 15 to 18 months. schedule for negotiations to ratify the agreement. 20. Are parties obliged to undertake any type of mediation/arbitration prior to 23. Are there any other issues relating to bringing a case before the courts? Is the enforcement system in your country ADR a realistic alternative to litigation? that you would like to raise? The Turkish legal system does not A patentee must put to use its protected specifically legislate for alternative dispute invention and must file a certified resolution. However, the Code of Criminal document to the Turkish Patent Institute Procedure obliges criminal courts to invite within three years of the date on which the parties to settle during criminal patent was granted. Otherwise, any proceedings. The Patent Law refers only to interested person may request that a arbitration by the Turkish Patent Institute compulsory licence be granted. Legitimate for obtaining a contractual patent licence excuses for failure to meet this requirement for those parties wishing to apply for a include technical, economic or legal reasons compulsory licence. beyond the control and will of the patentee, which may include officially required clinical test periods or delays in product 21. In broad terms, how pro-patentee are the courts in your jurisdiction? registration procedures before the health The specialised IP courts were first authorities for pharmaceuticals. 108 Patents in Europe 2011/2012 www.iam-magazine.com Turkey www.iam-magazine.com Ersin Dereligil is a registered European and Turkish patent attorney. He advises on all areas of patent law, including obtaining and enforcing patent rights, avoiding infringement and due diligence and development. He holds an MSc in chemical engineering from the Middle East Technical University in Ankara. He has lectured on patents and industrial designs to engineering departments at Uludag University for seven years, and also serves as an expert before the Istanbul Specialist IP Court. He has published more than 50 articles on the Turkish IP system and a book, Understanding Patents For Engineers, and has attended many seminars as a speaker. He is president of the Licensing Executives Society-Turkey and a founding member of the International Association for the Protection of Intellectual Property Turkey and KALDER Bursa. He is also a member of the Institute of Professional Representatives before the European Patent Office, MARQUES and the International Trademark Association. He speaks Turkish and English. Ersin Dereligil Oktay Simsek is head of the foreign affairs department at Destek Patent and a registered Turkish patent and trademark attorney. He is highly specialised in patent drafting, filing and prosecution, and has extensive experience in all IP-related matters. He has advised on all aspects of patent and utility model enforcement, including oppositions, assignments and licensing. He graduated in international relations from Dokuz Eylül University, Izmir, and his particular area of technical expertise is mechanics. He speaks Turkish, French and English. Oktay Simsek Managing partner [email protected] +90 212 444 4344 Destek Patent Inc Turkey www.destekpatent.com Head of foreign affairs department [email protected] +90 224 444 4344 Destek Patent Inc Turkey www.destekpatent.com Patents in Europe 2011/2012109 United Kingdom United Kingdom By Richard C Price and Gareth E Morgan, Winston & Strawn, London judges in the Patents County Court and the Patents Court usually have science degrees as well as long experience practising in the 1. What are the most effective ways for IP a field. European patent holder whose rights cover your jurisdiction to enforce its 3. How do your country’s courts deal rights in your jurisdiction? with validity and infringement? Are they The United Kingdom, and more to the point handled together or separately? England, is one of the most flexible and Validity and infringement are nearly always experienced jurisdictions in the world in heard together. However, if a sufficiently which to litigate IP rights. Depending on the compelling reason is presented to the court, value of the dispute, a European patent it is occasionally possible to bifurcate the holder can enforce its rights either in the action. The courts consider that where both UK civil courts or at the Intellectual Property Office (IPO). A broad spectrum of procedures is available, ranging from nonbinding opinions regarding infringement from the IPO, through to High Court litigation (in the specialist Patents Court) and the reformed Patents County Court (all in London). A full range of remedies are available, including injunctions, damages, an account of the defendant’s profits and delivery up. The Patents County Court sits between the IPO and the Patents Court. The Patents County Court will hear low to mid-value cases concerning less complex technology on expedited timetables with limited evidence and abbreviated trial length compared to the Patents Court. The Patents County Court has limited powers to award legal costs (on a fixed scale up to £50,000) and a limited power to award damages (up to £500,000). infringement and validity of a patent are at issue, it is important that the same court hears the patentee’s arguments on construction in light of the infringement and invalidity arguments. This procedure leads to the development of what are often called “squeeze” arguments, where the infringer argues that if the patent is construed broadly enough to catch the infringement, then it is invalid on the basis of the cited prior art. This procedure has the added virtue of ensuring that, if a final injunction is to be granted, the validity case will also have been heard and the patent found to be valid. 4. To what extent is cross-examination of witnesses permitted during proceedings? Each party can request that the other party’s witnesses attend at trial (but not during any deposition) in order to be cross-examined orally on their written evidence. Where a witness cannot attend in person, evidence 2. What level of expertise can a patent can be given through a video link. If a owner expect from the courts in your witness is not produced at trial and his or jurisdiction? her evidence is challenged, the court must All English tribunals hearing disputes on decide what weight can be given to the patents have technical and/or extensive legal untested written evidence in light of the experience in the patents field. Cases at the particular challenge. Where an adverse IPO are heard by hearing officers with witness is not willing to come to court and experience in prosecuting patents, and the is resident abroad, there are international 110 Patents in Europe 2011/2012 www.iam-magazine.com United Kingdom procedures to compel the witness to be cross-examined. may be enforced unless the claims are drafted such that infringement is difficult to prove. Business method inventions are not patentable under the EPC and, in general 5. What role can and do expert witnesses play in proceedings? terms, software is patentable only if the In high-value High Court litigation, partyprogram has a patentable technical effect in appointed expert witnesses are crucial to the the real world (eg, speeding up a computer success or failure of a party’s case. For and allowing it to process data faster). lower-value cases, expert evidence is deployed less, as the costs of securing such 9. How far are courts bound by previous evidence may outweigh the value of the case. decisions in cases that have covered It is important that a witness with similar issues? appropriate professional experience is England and Wales is a common law selected. The parties must always be mindful jurisdiction and operate on a system of that the duty owed by an expert witness is binding precedent. Lower courts are bound primarily to assist the court and not the by the decisions of the higher appellate party paying him or her. An expert witness courts on points of legal interpretation and who appears to be partisan or who cannot principle. The Court of Appeal is bound by justify the positions taken in opinion Supreme Court authority and can depart evidence will suffer under the scrutiny of from its previous decisions in only limited cross-examination in the UK courts. circumstances. The Supreme Court can also depart from its previous decisions. 6. Is pre-trial discovery permitted? If so, to what extent? 10. Are there any restrictions on who Pre-trial disclosure is permitted through parties can select to represent them in application to the courts. To qualify, the a dispute? parties to the application must be likely to Usually, a firm of solicitors will be be parties to any subsequent litigation. appointed to conduct the litigation on Also, the disclosure must be of documents behalf of each party and the solicitor will that would properly be disclosed if retain a barrister to act as the party’s proceedings were to be brought and would: advocate in court. In most litigation, • • • Dispose fairly of the proceedings. Assist the dispute to be resolved without proceedings. Save costs. The courts will not entertain “fishing expeditions” (ie, speculative disclosure applications that seek to gain a commercial or tactical advantage over another party). 7. Do the courts in your jurisdiction apply a doctrine of equivalents? No. The House of Lords (now the Supreme Court) has specifically disapproved of applying such a doctrine. However, the UK courts will construe a patent in a “purposive” manner. This is broader than a strict literal interpretation of the words found in the claims. It requires the court to construe the patent through the eyes of the skilled person and to determine what the skilled person would have understood the patentee to mean by the words used. solicitors and barristers operate as a team, with the senior solicitor being the team manager responsible for the selection and evidence of expert and factual witnesses, for the disclosure of documents, experiments and generally for the preparations for trial. Previously, only solicitors could conduct litigation before the courts. However, patent attorneys and patent attorney litigators can now also conduct IP litigation and so provide an alternative to solicitors in some situations. The trial advocate is usually a barrister, but there is some flexibility. Solicitors may appear on all applications up to the trial including in the High Court; they are also able to attain qualifications, known as “higher rights of audience”, which allow them to present cases at trial. Patent attorneys, as well as solicitors, have rights of audience in the Patents County Court. 11. Are the courts willing to considerthe reasoning of courts in other jurisdictions 8. Are certain patent rights (eg, those that have dealt with similar cases? relating to business methods, software The English courts will pay deference to wellreasoned foreign court judgments. The courts and biotechnology) more difficult to enforce than others? that are referred to the most are thoseof Provided that the invention is deemed to be Germany and the Netherlands. The English patentable subject matter under the courts also respect decisions of the Enlarged European Patent Convention (EPC), a patent Board of Appeal of the European Patent www.iam-magazine.com Patents in Europe 2011/2012111 United Kingdom at first instance? The approximate cost of taking a case to a first instance decision in the available forums is as follows: • IPO – £2,500 to £50,000. • Patents County Court – £25,000 12. How easy is it for defendants to delay to £300,000. • Patents Court – £500,000 to proceedings and how can plaintiffs prevent them from doing so? £2.5 million. It is becoming more difficult for litigants to adopt procedural tactics to delay actions. Although successful parties can recover English High Court procedure aims to bring costs on a fixed scale only at the IPO and the parties to trial in 10 to 18 months, and the Patents County Court, there is no limit more than a few months’ delay through to the maximum amounts that parties can procedural manoeuvring is unusual. The spend. High Court will “actively manage” cases and can penalise obstructive behaviour through 15. Is it possible for the successful party adverse costs awards. Currently the time to in a case to obtain costs from the losing trial in the Patents County Court is even party? quicker than in the Patents Court, at around Yes. Costs orders are made in favour of the six months from serving the claim form on successful party. In the IPO and the Patents the defendant. County Court these will be on a scale (ie, amounts fixed by law). The total amount 13. Is it possible to obtain preliminary awarded in the Patents County Court will injunctions? If so, under what not normally exceed £50,000. The Patents Court has the power to make higher awards, circumstances? Yes. In order to decide whether a often reflecting 60% to 80% of the actual preliminary injunction should be granted, costs incurred by the successful party. The the court will ask: Patents Court will approach the calculation • Is there a serious case to be tried? of the costs award issue by issue, which can • Would damages be an adequate remedy greatly reduce the costs awarded. Office (EPO) (its highest appellate body) as highly persuasive on points of law and the interpretation of the EPC (on which the UK Patents Act 1977 is based). However, foreign decisions are not binding. for either party and could the other pay if it were to lose at trial? If there is no clear indicator as to whether the injunction should be granted, the court will take into account the “balance of convenience”, with a presumption that the status quo (ie, the circumstances before the alleged infringement) should be maintained. Diverse factors can be taken into account, such as whether the patentee has delayed bringing the action and whether the defendant is already on the market. In the past, a patentee could expect to be granted a preliminary injunction where the alleged infringer had failed to “clear the way” before launching its product. However, the recent Cephalon decision cast doubt on this. Now, although a failure to take steps to clear the way will still be taken into account, it will not necessarily be decisive. If an injunction is granted, the successful applicant must give a crossundertaking in damages to the injuncted party. This cross-undertaking can be claimed on to compensate the injuncted party should the patent ultimately be revoked or found not to have been infringed. 16. What are the typical remedies granted to a successful plaintiff by thecourts? The remedies available include a final injunction, damages or an account of profits and delivery up or destruction of the infringing products. Patent cases in England have split liability and quantum hearings. Infringement or validity is determined first; then a separate hearing is arranged to decide the damages or profits to award. In practice, the vast majority of patent cases settle after the liability hearing. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Successful patentees can obtain monetary compensation by way of compensatory damages or an account of the profits made from the infringement by the infringer. Punitive damages are not awarded. The patentee must prove that the amount of compensation is due for the damage caused by the infringement (subject to the damage being reasonably foreseeable). Proving an account of profits claim can be complex, as often the patented invention is part of a broader product offering or one step in a lengthy process. In such cases the 14. How much should a litigant plan to court must assess the contribution that the pay to take a case through to a decision patented invention has made to the overall 112 Patents in Europe 2011/2012 www.iam-magazine.com United Kingdom 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? There is no obligation to undertake ADR prior to litigation, although it must be 18. How common is it for courts to grant considered and the English patents judiciary, particularly in lower-value permanent injunctions to successful plaintiffs and under what circumstances disputes in the Patents County Court, actively encourages parties to explore nonwill they do this? A patentee is usually entitled to a litigious methods of resolving their dispute permanent, final injunction. An injunction where appropriate. London is a vibrant may be withheld where the effect of the centre for both mediation and arbitration, injunction would be grossly and both can lead to the resolution of disproportionate to the right protected. disputes without the need for a public trial. This is a much stricter test than the “balance of convenience” test for 22. In broad terms, how pro-patentee are preliminary injunctions (see Question 13). the courts in your jurisdiction? Patentee win rates in England are among the lowest in Europe. 19. How long does it take to obtain a decision at first instance and is it Judges hearing patent cases in England take seriously their responsibility to review possible to expedite this process? Usually, a case in the Patents Court will the validity of the monopoly right in suit. reach trial in 10 to 18 months (four to six The detailed court procedure subjects months if expedited). The High Court has patents to greater scrutiny than is possible an optional procedure known as the under more limited systems with less scope “streamlined procedure” that can be used to for evidence, disclosure, experiments and speed up the process. The court can also cross-examination. Even the Patents order a trial to be expedited in urgent cases. County Court provides for longer trial times Cases in the Patents County Court are than most other first instance patents currently being heard six months after the courts in Europe, including Germany and profits made by the infringer. Account of profits hearings are rare in the United Kingdom, but the option for an account can increase the compensation likely to be awarded. claim form is served. In the Patents Court, judgment is usually given within one to three months of the trial, and the Patents County Court currently sets a date on which judgment is to be given, which is usually within one month of the trial. the Netherlands. As a result, the English courts will be less swayed by, and more likely to question on the basis of the evidence before them, EPO Opposition Division and Technical Board of Appeal decisions on particular patents than their counterparts in other EU jurisdictions. The low patentee win rates in England 20. Under what circumstances will the have also, to some extent, become a selflosing party in a first instance case be fulfilling prophecy, as it has encouraged granted the right to appeal? How long applicants seeking to revoke patents to does an appeal typically take? come to London in order to take advantage The losing party may apply to the trial judge of the high level of scrutiny to which for permission to appeal and, if refused, patents are subject in the Patents Court. As may make a further application to the Court a result, and particularly in the of Appeal. Permission to appeal may be pharmaceutical sector, litigation on granted only if the appeal has a real prospect secondary and tertiary incremental of success or if there is another compelling inventions has maintained a relatively low reason why the appeal should be heard. patentee win rate. It tends not to be so low An appeal will typically be heard within in other areas of technology. six to 12 months of the trial. The appeal is heard on points of law only, although some 23. Has your jurisdiction signed up to limited reassessment of evidential matters the London Agreement on Translations? is usually necessary in reviewing the first If not, how likely is it to do so? instance court’s application of the law. Yes, the United Kingdom has signed up to Appellate courts will generally be cautious the London Agreement on Translations. of interfering with the first instance findings in relation to the evidence, as they 24. Are there any other issues relating to adhere to a principle that the first instance the enforcement system in your country judge was in the best position to assess the that you would like to raise? reliability of the evidence presented at trial. The flexibility of the English system is now a www.iam-magazine.com Patents in Europe 2011/2012113 United Kingdom major advantage to patent holders, providing options that can be tailored to the value of any particular right or infringing act. Note on jurisdiction Most comments in this chapter refer to the jurisdiction of England and Wales. “England and Wales” and “Scotland” ar e different legal jurisdictions. For ease of reference, throughout this chapter, England and Wales are referred to as “the United Kingdom ”. Scotland isa civil law jurisdiction, whereas England and Wales is a common law jurisdiction. The patent law is the same, but court procedure differs. Scottish courts are much less likely than those in England and Wales to have specialist judges and the volume of patent litigation is smaller. At the time of writing, the Patents County Court reforms implemented in England and Wales are not applicable in Scotland, reducing the degree of choice available to litigants in that jurisdiction. Richard C Price heads up Winston & Strawn’s London IP practice and is one of the United Kingdom’s leading patent and trademark litigators. He litigates all aspects of IP law and has a high success rate in securing victories for his clients before the highest courts, including the House of Lords (now the Supreme Court) and the Privy Council. Mr Price’s IP practice focuses on representing clients on patents, trademark, trade dress and copyright matters. His industry knowledge covers several sectors, with experience in deriving IP solutions for clients working in medical devices, carbon emissions, water purification, genetically modified crops, consumer products, electronic equipment and computer technology in the United Kingdom and across Europe. Mr Price is named as a leading individual in 2011 Chambers for patent litigation. Richard C Price Gareth E Morgan is a partner in Winston & Strawn’s London IP practice with experience in all areas of contentious and non-contentious IP law, and a particular focus in the life sciences and healthcare sectors. Dr Morgan has acted in many landmark IP matters (patents, copyright and supplementary protection certificates before the English courts, particularly in the biotechnology/pharmaceutical field. He has also advised clients in relation to judicial review proceedings in the medicines regulatory field in both English and European courts. Dr Morgan is listed as a leading individual in 2011 Chambers for life sciences regulatory work and the IAM Global 250 directory of patent litigators. He has a degree in biochemistry and a PhD in molecular biology, both from Oxford University. Gareth E Morgan 114 Patents in Europe 2011/2012 Partner [email protected] +44 20 7011 8735 Winston & Strawn United Kingdom www.winston.com Partner [email protected] +44 20 7011 8726 Winston & Strawn United Kingdom www.winston.com www.iam-magazine.com Firm directory AKD Bijster 1, 4817 HX Breda Postbus 4714, 4803 ES Breda, Netherlands Tel +31 88 253 6050 Fax +31 88 253 5945 Web www.akd.nl Awapatent AB Matrosgaten 1, PO Box 5117, 200 71 Malmö, Sweden Tel +40 98 51 00 Fax +40 26 05 16 Web www.awapatent.com Other offices Copenhagen, Gothenburg, Helsingborg, Horsens, Jönköping, Linköping, Lund, Munich, Östersund, Söderhamn, Stockholm, Växjö Cabinet M Oproiu Str Popa Savu, no. 42, Sector 1, Bucharest, Romania Tel +4021 260 2834 Fax +4021 260 2836 Web www.oproiu.ro Amat i Vidal-Quadras Advocats Av Pau Casals 14, 5º, 08021 Barcelona, Spain Tel +93 321 10 53 Fax +93 419 31 47 Web www.avqadvocats.com Backström & Co Attorneys Ltd Kasarmikatu 44, FI-00130 Helsinki, Finland Tel +358 9 6689 940 Fax +358 9 6689 9410 Web www.backstrom.fi COHAUSZ & FLORACK Bleichstrasse 14, D-40211 Düsseldorf, Germany Tel +49 211 90 490 0 Fax +49 211 90 490 49 Web www.cohausz-florack.de Arnason Faktor Gudridarstig 2-4, IS-113 Reykjavik, Iceland Tel +354 5 400 200 Fax +354 5 400 201 Web www.arnasonfaktor.is Barger, Piso & Partner Mahlerstraße 9, Vienna A-1010, Austria Tel +43 1 512 33 99 Fax +43 1 513 37 06 Web www.bapipat.at Crowell & Moring Koningsstraat 71 Rue Royale, B - 1000, Brussels, Belgium Tel +32 2 282 40 82 Fax +32 2 230 63 99 Web www.crowell.com Other offices Anchorage, Cairo, Jeddah, London, Los Angeles, New York, Orange County, Riyadh, San Francisco, Washington DC www.iam-magazine.com Patents in Europe 2011/2012115 Firm directory Destek Patent Inc Polaris Plaza Ahi Evran Cad, No:1 K:17, Maslak, Istanbul 81570, Turkey Tel +90 212 346 0260 Fax +90 212 346 0264 Web www.destekpatent.com Other offices Adana, Ankara, Bursa, Gaziantep, Izmir, Konya Garrigues Abogados y Asesores Tributarios, SLP Hermosilla 3, Madrid 28001, Spain Tel +34 91 514 5200 Fax +34 91 399 2408 Web www.garrigues.com Other offices A Coruña, Alicante, Almeria, Badajoz, Barcelona, Bilbao, Brussels, Burgos, Caceres, Casablanca, Granada, Las Palmas, Leon, Lisbon, Logroño, London, Malaga, Murcia, New York, Oviedo, Palma de Mallorca, Pamplona, Porto, Rio de Janeiro, San Sebastian, Seville, Shanghai, Santa Cruz de Tenerife, Tangiers, Toledo, Valencia, Valladolid, Vigo, Vitoria, Warsaw, Zaragoza MacLachlan & Donaldson 47 Merrion Square, Dublin 2, Ireland Tel +353 1 676 3465 Fax +353 1 661 2083 Web www.maclachlan.ie Drakopoulos Law Firm 332 Kifissias Avenue, Halandri, Athens 15233, Greece Tel +30 210 683 6561 Fax +30 210 683 6538 Høiberg A/S European Patent and Trademark Attorneys St Kongensgade 59 A, 1264 Copenhagen K, Denmark Tel +45 3332 0337 Fax +45 3332 0384 Web www.hoiberg.com Other offices Aarhus Michael Kyprianou & Co LLC Corner Stasinos & Ayias Elenis 2, Stasinos Building, 6th floor, 1060 Nicosia, Cyprus PO Box 21150, PO Zip 1502, Nicosia Tel +357 22 44 77 77 Fax +357 22 76 78 80 Web www.kyprianou.com.cy Other offices Athens, Limassol, Paphos Kuhnen & Wacker Prinz-Ludwig-Str. 40 A, 85354 Freising, Germany Tel +49 8161 608 0 Fax +49 8161 608 100 Web www.kuhnen-wacker.com Patpol 162J, Nowoursynowska Str, 02-776 Warsaw, Poland Tel +48 22 644 9657 Fax +48 22 644 4402 Web www.patpol.pl ABA Business Centre Papa Gjon Pali II Street, Tirana, Albania Tel +355 42 400 900 Fax +355 42 400 901 Web Otherwww.drakopoulos-law.com offices Bucharest E Blum & Co AG Vorderberg 11, CH-8044 Zurich, Switzerland Tel +41 43 222 56 00 Fax +41 43 222 56 01 Web www.eblum.ch 116 Patents in Europe 2011/2012 www.iam-magazine.com Firm directory Popovic, Popovic, Samardzija & Popovic Takovska 19, 11120 Belgrade 35, Serbia Tel +381 11 32 39 442 Fax +381 11 32 42 646 Web www.ppsp.rs Rapisardi Intellectual Property Via Serbelloni 12, 20122 Milan, Italy Tel +39 02 763 011 Fax +39 02 763 01300 Web www.rapisardi.com Other offices London, Lugano Winston & Strawn CityPoint, 1 Ropemaker Street, London EC2Y 9HU, United Kingdom Tel +44 20 7011 8700 Fax +44 20 7011 8800 25 Avenue Marceau, CS 31621, 75773 Paris Cedex 16, France Tel +33 1 53 64 82 82 Fax +33 1 53 64 82 20 Web www.winston.com Other offices Beijing, Charlotte, Chicago, Geneva, Hong Kong, Houston, Los Angeles, Moscow, New York, Newark, San Francisco, Shanghai, Washington DC www.iam-magazine.com Patents in Europe 2011/2012117 ©iStockphoto.com/lillisphotography Register now at the super early bird price of €1,150 and save €350 “A great networking event for CIPOs.” Jon Harwood Intellectual Property Manager, Fisher & Paykel Healthcare Limited Are you responsible for IP value creation in your company? Then the IPBC is simply your must-attend event for 2012. Find out more here: www.ipbusinesscongress.com