American Chamber of Commerce in the Czech Republic. Position Paper. Questionnaire. On the patent system in Europe. Answering.

Transcription

1 First Vice Second Vice Czech American Chamber of Commerce in the Czech Republic Position Paper Answering Questionnaire On the patent system in Europe Section 5 General 5.5 Are there other issues than those in this paper you feel the Commission should address in relation to the patent system?

2 First Vice Second Vice Czech IMPLEMENTATION OF IP ENFORCEMENT DIRECTIVE NO. 2004/48/EC INTO CZECH LAW Directive 2004/48/EC (the Directive ) has been implemented by means of adopting a new law on IP enforcement and making partial amendments to the Copyright Act and to the Civil Procedure Code. The Czech Industrial Property Office was in charge of preparing the draft of the new law on IP enforcement, the Ministry of Culture was in charge of the Copyright Act and the Ministry of Justice in charge of the Civil Procedure Code. Certain amendments have been already adopted by the Parliament (i.e. those related to preliminary injunctions) but the majority of changes have still to be adopted. It is still possible that the deadline of 30 April 2006 will be met. The expectations of legal practitioners are quite high as the enforcement of intellectual property rights ( IPRS ) has been problematic, despite several amendments to material and procedural law in the past and the extended powers of the customs authorities. The current situation in respect of the effective enforcement of IPRS has been troublesome. This is due to a) slow court procedures, b) difficulty the IPRS holders face when proving the amount of damages due to lack of access to the relevant evidence, which is at the disposal of the infringing party, c) ineffective enforcement of court interlocutory injunctions and injunctions issued on the merits, d) the absence of the right of the court to order a recall from the channels of commerce, the definitive removal from the channels of commerce or the destruction of the infringing goods, and e) the absence of the express right to request the court to issue a seizure order for infringing goods by means of an interlocutory injunction before the proceedings on the merits. In order to effectively enforce IPRS, there must be a change in the civil procedure and the reluctance of judges to utilize the current procedural rules (and the new procedural rules to come).

3 First Vice Second Vice Czech In view of the current draft amendments to Czech law legal practitioners still see the following as remaining a problem: Article 4 - Persons entitled to apply for the application of the measures, procedures and remedies The collective rights management bodies (in respect of copyright- and copyrightrelated rights) are entitled to claim damages, but they are not authorized to sue for other remedies related to copyright infringement. Article 6 Evidence Czech law does not implement at all the provision that on application by a party which has presented reasonably available evidence sufficient to support its claims and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the competent judicial authorities may order that such evidence be presented by the opposing party or if the infringement was committed on a commercial scale the competent judicial authorities may order the communication of banking, financial or commercial documents under the control of the opposing party. thing is expected to change in the near future in this respect. Article 7 - Measures for preserving evidence To date, the national law has theoretically provided for prompt provisional measures in order to preserve relevant evidence in the event that there is a threat that the evidence may not last until the end of the proceedings on the merits or that the court will not be able (or will be able only with great difficulty) to read the evidence in the proceedings on the merits. Unfortunately, this measure has never been utilized by the courts in IPRS infringement cases. The courts are to easily able to claim that there is no urgent need to preserve the evidence. Legal practitioners are rather skeptical about the practical application of the new provision as the courts have no personnel or material capabilities to fulfill such measures in practice. Article 8 - Right to information The right to information is not going to be implemented to its full extent: A) the right to information is not applicable against the infringer himself, but only against third parties, B) the only means of enforcing this right is separate litigation against the third party. The only means the IPRS holder has for enforing the judgement is for it to ask the court to enforce fines of up to EUR 3,000. The enforcement of such fines usually

4 First Vice Second Vice Czech takes between six months to one year or even longer. The IPRS holder has no right to review complete documentation pertaining to the counterfeit goods so he is not capable of evaluating whether the provided information is true and complete. Therefore, this right of information will in practice do little to bring about any effective enforcement of the IPRS. Article 9 - Provisional and precautionary measures Courts do not have an express right to order the seizure of allegedly infringing goods by means of an interlocutory injunction. Anyhow the courts have no personnel or material capabilities to fulfill such measures in practice. Article 10 - Corrective measures Even though the provisions of the Directive will be implemented into Czech law the courts have no personnel or material capacities to fulfill such measures in practice. The draft does not specify that the corrective measures are to be carried out at the expense of the infringer. What remains unclear is how the corrective measures will be implemented by the court if the infringing goods are not owned by the infringer. Under the current law it is not possible to enforce an injunction issued against the infringer if the goods in the meantime became the property of a third party. Article 11 - Injunctions Czech law provides for an injunction, as described in the Directive, but the enforcement of such injunction remains problematical, because penalties are not enforced effectively. Article 14 - Legal Costs Czech law provides for a statutory amount of legal costs to be reimbursed by the unsuccessful party to the other party. The amount of legal costs that the unsuccessful party is to reimburse the other party is set at a lump sum of EUR 200 (unless damages are successfully claimed). In the light of the Directive this hardly represents reasonable and proportionate legal costs to be reimbursed to the successful IPRS holder. changes in the law are expected in the near future.

5 First Vice Second Vice Czech Contact details (1) (2) (a) (b) (c) (d) (e) (f) (g) (h) (i) Are you replying as a citizen / individual or on behalf of an organisation? On behalf of an organization. The name of your organisation/contact person: American Chamber of Commerce in the Czech Republic Contact person: Iveta Havlová Your address: law@amcham.cz Your postal address: Dusni Praha 1 The Czech Republic Your organisation s website (if available): In which Member State do you reside / are your activities principally located? Czech Republic Are you involved in cross-border activity? Yes If you are a company: how many employees do you have? --- What is your area of activity? Legal Reforms and Economic Development

6 First Vice Second Vice Czech (j) (k) (l) (m) (n) Do you own any patents? If yes, how many? Are they national / European patents? Do you license your patents? Are you a patent licensee? Have you been involved in a patent dispute? Do you have any other experience with the patent system in Europe?