In association with. Patents in Europe 2013/2014. Helping business compete in the global economy

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1 In association with Patents in Europe 2013/2014 Helping business compete in the global economy

2 Yes, we win That is why world s leading companies have trusted us for their IP counseling and litigation since

3 Patents in Europe 2013/2014 Helping business compete in the global economy

4 Editorial board Bruce Berman President, Brody Berman Associates Scott Frank President, AT&T Intellectual Property Daniel M McGavock Vice President and Global IP Practice Leader, CRA International Ruud Peters CEO, Philips IP & Standards Marshall Phelps Former Corporate Vice President for Intellectual Property, Microsoft Corp. Herbert C Wamsley Executive Director, Intellectual Property Owners Association Rob Willows Vice President, Thomson Scientific Industrial Property Markets Division Managing editor Joff Wild jwild@iam-magazine.com Contributing editor Veronique Musson Senior reporter Sara-Jayne Clover sclover@iam-magazine.com Reporter Jack Ellis jellis@iam-magazine.com Editors Carolyn Boyle cboyle@iam-magazine.com Jo Moore jmoore@iam-magazine.com Design and production Raymond Foley Paul Stoneham Publications assistant Elisha Jadav ejadav@theipmediagroup.com Circulation Amanda Green agreen@theipmediagroup.com Associate publisher (EMEA & Americas) Graham Day gday@theipmediagroup.com Publisher (EMEA & Americas) John Eborall jeborall@theipmediagroup.com Group publisher Gavin Stewart gstewart@theipmediagroup.com Publishing director Tony Harriss tharriss@iam-magazine.com Globe White Page Ltd New Hibernia House, Winchester Walk London SE1 9AG, UK Tel Fax Globe Business Publishing (Asia) Ltd 2/F, Shui On Centre, 6-8 Harbour Road Wan Chai, Hong Kong Tel Fax info@iam-magazine.com Web Patents in Europe 2013/2014 is a free supplement to Intellectual Asset Management (IAM) magazine. Contact Mary Sy msy@theipmediagroup.com to subscribe to IAM magazine. ISBN ISSN Printing and origination by Advent Colour, Hampshire, UK Globe White Page Ltd Copyright applies. No photocopying. For licensed photocopying please call 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. 2 Patents in Europe 2013/2014

5 In association with Contents Welcome 5 By Joff Wild Patents in Europe 2013/2014 Helping business compete in the global economy Cover image istockphoto/fpm Introduction Information is everything 7 By Benoît Battistelli European Patent Office The man at the top 11 By Joff Wild Europe focus Unitary patent and Unified Patent Court: the 14 proposed framework By Rainer K Kuhnen KUHNEN & WACKER Intellectual Property Law Firm How and when to bring a case before the UPC 21 Central Division By Axel Casalonga Casalonga et Associés The revival of cross-border injunctions 26 By Mari Korsten, Marion Bruin and Jaap Bremer NLO (Nederlandsch Octrooibureau) and BarentsKrans The must-know facts about patent term extensions 31 in Europe Ralph Minderop, Arwed Burrichter and Natalie Kirchhofer COHAUSZ & FLORACK Biotechnology patentability the latest from the EPO 37 By Pamela Tuxworth, Lee Chapman and Andrew Bentham J A Kemp Country Q&As Austria 43 By Peter Israiloff Barger, Piso & Partner Czech Republic 49 By Michal Pospisil PATENTSERVIS Praha, as Denmark 54 By Claus Elmeros and Louise Aagaard Høiberg A/S Finland 59 By Petri Eskola Backström & Co Attorneys France 63 By Caroline Casalonga Casalonga Avocats Patents in Europe 2013/2014 3

6 Contents Germany 67 By Gottfried Schüll COHAUSZ & FLORACK Greece 71 By Helen Papaconstantinou and Maria Athanassiadou Dr Helen Papaconstantinou, John Filias and Associates Iceland 76 By Gunnar Örn Hardarson and Asdis Magnusdottir Arnason Faktor Italy 82 By Rossella Solveni and Giuseppe Mercurio Rapisardi Intellectual Property Netherlands 87 By Peter Claassen, Martin Hemmer and Eliëtte Vaal AKD Advocaten & Notarissen Norway 92 By Rune Nordengen Bull & Co Advokatfirma AS Poland 97 By Krystyna Szczepanowska-Kozlowska DLA Piper Wiater spk Romania 102 By Dragosh Marginean Ratza & ratza Spain 107 By Miguel Vidal-Quadras Trías de Bes and Oriol Ramon Sauri Amat & Vidal-Quadras Advocats Sweden 112 By Peter Kenamets and Fabian Edlund Awapatent AB Switzerland 118 By Regula Rüedi and Rainer Schalch E Blum & Co AG Turkey 123 By Ersin Dereligil and Oktay Simsek Destek Patent Inc United Kingdom 128 By Ilya Kazi and Catherine Booth Mathys & Squire Firm directory Patents in Europe 2013/2014

7 Welcome It is a pleasure to welcome you to the sixth edition of Patents in Europe: Helping business compete in the global economy. Produced in partnership with the European Patent Office (EPO), Patents in Europe has become an indispensable guide for all those who use or have an interest in the European patent system. This latest edition comes at a time when the European patent system is at the start of what promises to be a momentous few years. As the member states of the European Patent Organisation celebrate the 40th anniversary of the signing of the European Patent Convention, many are now in the process of preparing for the creation of a unitary patent regime in the European Union, after an agreement to create one was finally signed in Brussels earlier this year. The challenges that this new system will present for patent applicants and owners, as well as the EPO itself, are among the subjects addressed in this guide. However, until that system comes fully into play (which will not be for a few years yet), owners of patents granted by the EPO will still need to adopt a country-by-country approach to protection and prosecution - something that can take time and cost significant amounts of money, while potentially yielding contradictory results. It is with all that in mind that Patents in Europe has been published. This special supplement to Intellectual Asset Management provides an overview of how 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 guide, we have introductory chapters that take a detailed look at specific aspects of the European patenting process. These are followed by a series of country-based contributions in which correspondents answer a number of set questions on 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 applicants and 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 their efforts, and to the EPO for its help in producing this guide. Joff Wild Editor, Intellectual Asset Management Patents in Europe 2013/2014 5

8 Do you know what you are missing? More applicants choose the EPO for their international (PCT) patent search than any other. They need objective reliable analysis, and the EPO search has the speed, depth and quality for successful decision making. Our databases have documents from over 100 countries, in dozens of languages, making our search the most complete available. Our preliminary patentability opinions further help applicants plan for the future. The best business decisions depend on the right information. Don t miss out!

9 Information is everything Information is everything By Benoît Battistelli, European Patent Office We live in an information age. The knowledge economy has been with us for quite some time. Access to information has become central to so many businesses and ways of life that we now take things such as high-speed wireless internet access for granted. In just a few short years, we have moved from having a shortage of information on which to base decisions to being overwhelmed. Now, the challenge is to sift, sort, rank and prioritise the abundance of information, so that what matters most is not overlooked. The fundamental mission of the European Patent Office (EPO) is the support of innovation. As users expectations about the quality and relevance of information have developed in recent years in keeping with what technology can deliver so the EPO must play its part at the centre of the revolution in patent data. Users rely on the information that they extract from EPO databases so as to inform their business decision makers about technology trends, R&D investments and potential markets. Research scientists need access to the broadest range of documents, with a minimum of noise, but they also need help understanding what they retrieve. Therefore, the EPO has a key role to play in both the quantity and the variety of the services it provides. Over the last 18 months the EPO has concluded agreements with key IP offices from around the world to share more patent data than ever before. Deals with the IP offices of China, Japan, Korea, Brazil, Russia and several other countries have led to the inclusion of their patent archives in the EPO s own vast database of over 80 million documents. This has the potential to increase the robustness of the EPO search, already recognised by users as having the highest quality (Intellectual Asset Management Patent Users Survey 2010, 2011 and 2012). But simply expanding the number and range of documents in Espacenet would never be enough in isolation. We often use the metaphor of the patent search being like looking for a needle in a haystack. Adding more hay to the stack does not necessarily make it easier to find that needle so the EPO must continually adapt and improve its search engines and retrieval tools, as well as helping users to understand the impact and relevance of the documents they find more easily. I will explain three developments in this regard. First, we have rolled out the most refined patent classification scheme anywhere in the world. By combining the knowledge and experience of examiners from both the US Patent and Trademark Office (USPTO) and the EPO, and by taking the best features of both their former classification systems, the new Cooperative Patent Classification (CPC) scheme features over 250,000 symbols for defining specific technologies with great precision. Based on our former European Classification scheme (itself a refinement of the International Patent Classification administered by the World Intellectual Property Organisation already used by most of the patent offices worldwide), the CPC has the potential to become the next global standard in patent classification. We are already supporting its usage in over 45 national patent offices in our member states and other countries. The CPC incorporates the EPO s Y scheme for tagging a variety of sustainable technologies for mitigating climate change, developed and expanded over the Patents in Europe 2013/2014 7

10 Information is everything past two years. For scientists researching in emerging technologies, our new classification helps them to find the most relevant documents efficiently. Second, we are tackling the language barrier head-on by providing free instant machine translation in Espacenet. For several years we have provided a search interface in a multitude of languages, but now we can help users to make sense of the documents that they retrieve. Otherwise, what would be the point of adding so many foreign-language patent collections to our databases, when the majority are unintelligible? It is now a fact that whatever languages users speak, most documents will not be in their mother tongue. In just its first year (2012), our Patent Translate service has offered translation into English from Chinese and 13 European languages (Danish, Dutch, German, Finnish, French, Greek, Hungarian, Italian, Norwegian, Polish, Portuguese, Spanish and Swedish), thereby covering more than 90% of all patent documents in Europe. During 2013, developments are in hand to double the number of European languages on offer, as well as to provide Korean, Japanese and Russian modules. The software is adaptive, learning from human translations to understand technical terms in context to try to create a meaningful translation. It may not give a translation strong enough to rely on in legal proceedings, but for regular searching it certainly renders text adequate to take decisions (if only to know whether a human translation would be worthwhile). However, perhaps the most important impact of Patent Translate has been its role in facilitating the conclusion of the lengthy negotiations for the unitary patent. For over four decades, the arguments over the language regime for patent rights in Europe have rumbled on. Where politicians had failed to reach agreement in the past, technology has now provided a solution. Soon it will not matter in which language a patent was granted at the click of a button, all users will know what the patent excludes in their own language. Third, we are improving access to legal status information on the patents we have granted, through a federated register supplied with information from the national patent offices of our member states. When a user finds a European patent document of interest, it is reasonable to ask: Where was it validated after grant? Was it kept in force? For many years, the answers to such simple questions could be found only in the EPO s worldwide legal status database, or required a tedious trek away from our website to each national patent office website. By working in partnership with these offices, we will be able to offer an increasing amount of information about the status of national rights based on granted European patents in a single register. At a glance, a user will be able to see where rights remain or where they have lapsed or expired. This ability of the EPO to provide central and transparent access to register data for patent rights in Europe will become even more important in the near future as we take on responsibility for granting patents with unitary effect and manage the renewal fee system therefor. Users will see the EPO providing register information on unitary patents, and understandably will look to us to provide comparable register information for the national rights derived from European patents too. All three of the improvements described above come from a focus on users needs. They are all different, but they all concentrate on making sense of the rapidly expanding volume of technical and legal information to hand, and arranging it in a fashion that helps users quickly to identify what matters to them and to make the best-informed decisions. These developments benefit the EPO, and the patent community as a whole, through quality. By promoting better understanding of the prior art, applicants file higher-quality applications. Our examiners have access to the broadest collection of documents and the best classification tools to help them to perform high-quality search and examination, resulting in high-quality granted rights. These are the foundation of a reputable and reliable patent system in Europe, in which patentees and consumers can have great confidence. Of the 15 Patent Cooperation Treaty international search authorities around the world, the EPO still has the lion s share of requests (around 40%), thanks to the quality of the searches performed by our examiners. 8 Patents in Europe 2013/2014

11 Information is everything Users from around the world clearly value the comprehensive international search report, as well as the subsequent analysis contained in the international preliminary report on patentability, which gives them a timely early indication as to the likely success (or failure) of the application if taken further. This serves the global innovation culture as a whole, because it provides the evidence which supports tough business decisions (eg, abandoning an application which has proven to be less inventive than had been hoped). Money saved on hopeless patent applications (and hopeless research and development) is money that can be invested sooner in better innovations and better patent applications, which will bring better products and processes to consumers and provide market growth, jobs and prosperity to industry. Workloads for patent professionals and patent offices are increasing at the EPO in 2012 we received a record 257,700 filings and the demands for efficiency savings likewise. For several years the five biggest IP offices (the EPO, the USPTO, the State Intellectual Property Office of China (SIPO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) which between them handle 85% of all patent activity) have been exploring what can be gained by sharing information on patent applications for the same invention filed in parallel at multiple offices. This makes sense the existing systems contain much repetition and duplication of effort. The number of applicants applying for patent protection far from their home market is increasing markedly, as we have noted at the EPO, where the share of patent filings by non-europeans has risen from just below 50% to around 62% in only four years (2009 to 2012). This trend is set to continue as globalisation increases. So, by sharing what we know about an application (eg, relevant citations), examiners in these major offices can complement each other s work and collectively contribute to enhanced quality. One area where information exchange is already showing positive results has been the introduction of the Common Citation Document (accessible through Espacenet), which lists all the documents cited against patent family members by several participating patent offices (eg, the EPO, the JPO, the KIPO and the USPTO, and soon to include SIPO citations) and several other offices covered by the information acquisition activities of the EPO. A further initiative to enhance transparency will be the inclusion in EPO search reports of details about the search strategy undertaken by the examiner. By knowing where an examiner searched and what he or she was looking for, applicants can better understand why certain documents were found and considered relevant. For the EPO, another efficiency gain that can be made is to re-engineer our patent grant procedure. In time for the likely impact of unitary patent applications (hopefully in 2014, depending on national ratifications of the agreements reached at EU level), the EPO will introduce a new electronic case management system as part of the broader IT Roadmap to overhaul many of our electronic tools and operations. The new system will provide digital processing of applications through search, publication, examination and grant, and even beyond into opposition and appeal if needs be. To accompany these developments, we will increase the extent to which applicants and attorneys interact with the EPO purely electronically, for the exchange of search reports, written opinions, citations and responses. The system will provide secure access to the unpublished part of an application case file, allowing better management of the case and transparency for the applicant and its representative. In addition, certain time-saving automated procedures (eg, for issuing forms or notifying when examiners responses can be expected) have been introduced. Through its various external and internal patent information tools and services, the EPO is keeping itself fit for the future. Applicants and users deserve the best information and analysis on which to base their important decisions. They rely on complete and accurate information if they are to prosper in challenging and competitive global markets. In turn, we can ensure that the rights we grant are of the highest quality. This is a partnership between users and regulators, for the benefit of society and the economy as a whole. Patents in Europe 2013/2014 9

12 Contributing profiles European Patent Office European Patent Office Munich Germany Web Benoît Battistelli President, European Patent Office Benoît Battistelli took up his duties as president of the European Patent Office (EPO) on July Prior to joining the EPO, he had been director general of the French National Institute for Industrial Property since May Mr Battistelli also served as chairman of the Supervisory Board of the European Patent Academy from July 2005 to July 2008, and was elected chairman of the Administrative Council of the European Patent Organisation in March During his career he has held several high-profile positions concerned with innovation, competitiveness or external economic relations, for example as French trade commissioner to Poland, Italy, India and Turkey. 10 Patents in Europe 2013/2014

13 The man at the top The man at the top Benoît Battistelli has been president of the European Patent Office since July He believes that the office - and the European patent system generally - is heading in the right direction By Joff Wild The European Patent Office (EPO) is a great European success story that should be seen not only as a centre of patent granting excellence, but also as a means of generating European soft power across the world. So says the EPO s current president, Benoît Battistelli. Speaking exclusively to IAM at the EPO Patent Information Conference in Hamburg in November 2012, Battistelli stated that the fact that developing economies such as those in China, Brazil and Southeast Asia are working closely with the EPO to build their patent systems is good news for European companies, as it makes it easier for them to protect and exploit their rights in those jurisdictions. On top of that, it ensures that Europe s influence is felt far and wide. We should be proud that China is using our tools, methods and procedures, said Battistelli said. It is a further demonstration that we are a world leader. European unity As the EPO gears up to celebrate the 40th anniversary of the signing of the European Patent Convention (EPC) in October this year, there is no doubt that Battistelli is pleased about the direction in which it is headed. With the agreement to create a unified patent finally signed, the EPO could soon be issuing single patents that cover all EU member states, with the exception of Spain and Italy. In terms of the way that a patent is granted after the new system comes into place, nothing will change at the EPO, Battistelli confirmed: awards will be made according to current criteria. At the end of the process, successful applicants will be able to designate EU-wide coverage (minus Spain and Italy, of course), just as they can designate individual European countries. Instead, he explained, the major issue still to be decided is the fee structure. Two principles underpin this: the unitary patent must be self-financing; but at the same time, if it is to succeed, the fees cannot be set too high. The final decision on this will be made by a steering committee comprising representatives from the 25 member states that are participating in the project, based on recommendations made by Battistelli himself. Proponents of the patent have stated that the new regime will be a much cheaper option than the current system, with claims that it could save patentees as much as 70% of the current amount it takes to obtain coverage across the 25 member states. Of course, as the fees have not yet been set, that must be regarded as an estimate; while very few patentees actually request EU-wide protection at the moment instead, the average number of countries designated is actually eight, with the average lifespan of a patent around nine to 10 years. But as Battistelli pointed out, the EU patent is not just about saving on official fees - there will also be substantial administration expense savings, as much current duplication will be eliminated. Companies may have a tendency to underestimate these costs, he stated. One option that the EPO president is keen to explore is the possibility of differential fees with small and medium-sized enterprises (SMEs) paying less than larger entities. I did it in France when I ran the national office Patents in Europe 2013/

14 The man at the top there, and they have been doing it in the United States for a number of years, he said. I would like to look seriously at whether this is something we can do. However, this may prove tricky to get through the steering committee. We will need to get a large consensus both politically and legally, Battistelli acknowledged. Improved relationships Those who have followed the fortunes of the EPO for any length of time will know that historically there have often been tensions between its central management and the national patent offices of the member states of the European Patent Organisation. Subjects such as areas of responsibility and competence, as well as how the money raised in application, registration and renewal fees should be shared out, have often raised hackles; while animated, even bitter, discussions in the Administrative Council in which heads of national patent offices sit with the EPO president to oversee the EPO s activities - have been far from unusual. The bottom line always seemed to be that when push comes to shove, the EPO and the national registries have competing interests the more work that the former gets, the less the latter have to do. This has an impact on budgets, influence and jobs. As a result, in the past there has often been a high degree of dysfunctionality in the European decisionmaking process to the detriment of actual and potential patentees across the continent. However, Battistelli believes that times have changed. Our relationship with the member states is excellent - it has never been better, he said. The debate that we had a few years ago on the role of the EPO and the national offices is behind us. We have now reached an understanding based on the EPC that is very clear: the EPO and the national offices play complementary roles. Once, people may have feared that the EU level would develop to the detriment of individual countries, but that is no longer the case. It is now clear that there is a two-tier system the European level and the national one, he stated, and each is as valid as the other. The EPO s role is not to take functions from national offices, Battistelli explained; instead, it is to work with them and support them in what they are trying to achieve. He identified three keys areas for cooperation: developing IT infrastructure; training national experts in both the public and private spheres (eg, increasing the number of patent attorneys in member states in which the numbers are currently low); and framing patent awareness and information projects. I was the head of the French national office for six years, so I know the issues from both sides, Battistelli said. Each country should be free to develop its own national strategy and to work with us in the way that suits it best. In practice, this means that some will transfer certain competences to the EPO, while others will maintain a national capacity. So, for example, while France decided long ago to ask the EPO to conduct searches and compile the subsequent reports for its national applications, the British have decided to do this for themselves. Thus, while France has 80 examiners handling 17,000 or so annual applications, a much larger number in the United Kingdom handle approximately 20,000. The EPO is happy either way, said Battistelli. When it comes to the office s user community, Battistelli was also confident that relationships are improving. An important point is that users cannot all be bracketed together: There are different points of view - big companies, SMEs, research institutions, patent attorneys and so on. It would be wrong to talk of one user. We have to take into account all opinions. That said, he believes that thanks to various IT initiatives, both ongoing and completed, the EPO is more user friendly than in the past; while examiners have also been encouraged to be much more responsive in their dealings with applicants. In general, discussions with users are more transparent than they were previously. We don t always follow what they want, but we will always take their suggestions seriously, he said. Battistelli acknowledged that the raising the bar project designed to upgrade the quality of applications and disincentivise what he called petty applications has proved controversial, but was unapologetic. However, he confirmed that should it emerge over time that certain things are not working, he is 12 Patents in Europe 2013/2014

15 The man at the top open to change but that will not happen for a while. We will have to wait one or two more years before we can make any serious assessments, he said. In the final analysis, the EPO s job is to maintain the balance between applicants and third parties, and that is what it will continue to do, he summed up. In certain parts of Europe, anti-patent sentiment is on the rise with pirate parties in various countries making electoral breakthroughs and the mainstream press giving ever-growing coverage to those sceptical of the benefits that the patent system brings. Battistelli, though, was sanguine about events. The more successful something becomes, the more critics it will have, he said. The best way to deal with them is to deliver quality results: We must be more and more rigorous. It has to be difficult to obtain a patent, and only those who can fulfil a high level of conditions on things such as novelty and inventive step should get one. Each patent that is granted should deserve it. We have to be sure, even though that is difficult when you are receiving 250,000 applications a year. Patents in Europe 2013/

16 Unitary patent and Unified Patent Court: the proposed framework Unitary patent and Unified Patent Court: the proposed framework The adoption of two key regulations late last year has paved the way for the longawaited unitary patent and Unified Patent Court By Rainer K Kuhnen, KUHNEN & WACKER Intellectual Property Law Firm On December the European Parliament adopted, at first reading, the EU Council s compromise patent package made up of two draft regulations establishing a unitary patent for Europe and an agreement on a unified patent court (UPC). The first regulation (1257/2012) concerns the unitary patent, while the second (1260/2012) sets out the translation arrangements for such protection. The regulations were adopted under the European Union s legislative procedure of enhanced cooperation. That procedure allows nine or more member states to move forward in a particular area as a last resort if no agreement can be reached by the European Union as a whole within a reasonable timeframe. Other member states can opt to join at any stage, before or after enhanced cooperation has been launched. Here, with the notable exception of Italy and Spain, 25 EU member states have opted to create unitary patent protection for their territories, using the enhanced cooperation procedure. The UPC Agreement is an international agreement open only to EU member states (which are a sub-group to the 38 member states to the European Patent Convention (EPC)). The agreement aims to address the problems involved with litigation of European bundle patents on a national basis by establishing a specialised patent court with exclusive jurisdiction for litigation relating to European patents and European patents with unitary effect (unitary patents). The agreement was opened for signature from February and all EU member states, except Poland and Spain, have signed so far. The agreement will need to be ratified by at least 13 contracting states including France, Germany and the United Kingdom to enter into force. This chapter outlines the framework of the future unitary patent and UPC. European patent with unitary effect Following the implementation of Regulation 1257/2012, applicants seeking patent protection in Europe will have another option beside national patents and traditional European patents. Essentially, a unitary patent will be a normal European patent granted by the European Patent Office (EPO) under the provisions of the EPC. However, the patent will be given a unitary effect for the territory of the 25 participating states on request of the patent holder after the patent has been granted. As the request for unitary effect is possible only post-grant, the unitary patent will benefit from using the well-established EPC system. Moreover, the fact that the unitary effect can be requested only after the patent has been granted means that the EPO s daily work (ie, searching, examining and granting) should not be affected by the introduction of this new type of patent. The new structure is outlined in Figure 1 below. The unitary patent will come into effect only after the central prosecution phase at the EPO and will be optional for patent holders. 14 Patents in Europe 2013/2014

17 Unitary patent and Unified Patent Court: the proposed framework Figure 1. New patent application structure Filing of European patent application Formal examination Validation still required for non-eu member states and Spain and Italy European search European publication of the application (European patent publication) Substantive examination of application Grant Only one translation for 25 EU member states required Central prosecution Opposition European patent - Switzerland European patent - Spain European patent - Italy European patent with unitary effect Classic European patents and European patents with unitary effect Limitation Translation regime The ultimate goal of the unitary patent is that after grant of the European patent, no translation will be required. This would significantly reduce the prosecution costs of patent protection for 25 EU countries. An EPO programme called Patent Translate will offer free online access, for information purposes, to automated translations of any European patent application and patent. Only in case of a dispute and at the request of either a court or an alleged infringer will the patent holder have to provide a full, human-generated translation in the relevant language. However, as provided by Regulation 1260/2012, this will become reality only after a transitional period of up to 12 years. The following transitional measures have been put in place: Where the language of proceedings at the EPO was French or German, the patent holder will have to provide a translation of the patent into English; and Where the language of proceedings at the EPO was English, the patent holder will have to provide a translation of the patent into any official language of the European Union. The unitary patent features a compensation scheme for some applicants. The costs of prosecution incurred by small and medium-sized enterprises (SMEs), natural persons, non-profit organisations, universities and public research organisations whose residence or principal place of business is in an EU member state will be reimbursed (up to a ceiling), provided that the applications have been filed in another of the three official languages of the European Union (English, French or German). Entry into force While the regulations came into force on January , they will be applicable only from January or, since they are part of the patent package, from the date of entry into force of the UPC Agreement, whichever is the later. Accordingly, a unitary patent may be requested from January or from the date of entry into force of the UPC Agreement. Patents in Europe 2013/

18 Unitary patent and Unified Patent Court: the proposed framework UPC Currently, with the EPC bundle patents, only national courts of the EPC contracting states are competent to decide on the infringement and validity of European patents. This creates a number of difficulties for patent holders trying to enforce a European patent or when a third party seeks the revocation of a European patent in several countries. First, multiple litigation incurs high costs in the form of attorneys fees and court fees. Second, the involvement of multiple national courts applying different claim construction bears the risk of divergent decisions, which thus results in a lack of legal certainty. Forum shopping is also inevitable, as parties seek to take advantage of differences in: national courts interpretation of harmonised European patent law; procedural laws; length of proceedings; and levels of damages awarded. The UPC Agreement addresses the above problems by creating a specialised patent court with exclusive jurisdiction for litigation relating to traditional European patents and unitary patents. UPC structure The UPC comprises a Court of First Instance and a Court of Appeal. An illustrative chart of the basic court structure and the composition of the panels is outlined in Figure 2 below. The Court of First Instance is made up of: a central division; and decentralised local divisions (for each contracting state) or regional divisions (for two or more contracting states, if they prefer to establish a common division). The seat of the central division will be in Paris, with sections in London and Munich. The London section will hear cases related to patent classifications A and C (chemistry, including pharmaceutical and human necessities). The Munich section will deal with cases related to patent classification F (mechanical engineering). A local division may be set up in a contracting state upon its request; the contracting state hosting a local division shall designate its seat. There may be up to three additional local divisions in one contracting state for every 100 patent cases per year in that contracting state. The number of infringement cases in Europe in 2009 is illustrated below. The German courts alone hear over 1,400 cases a year. Accordingly, Germany may request up to four local divisions. A regional division may be set up for two or more contracting states upon their request; they shall designate the seat of the division concerned. The regional division may hear cases in multiple locations. For example, the Scandinavian contracting states (Sweden, Finland and Denmark) may request a regional division. The seat of the Court of Appeal will be in Luxemburg. Although it is clear that the Court of First Instance and the Court of Appeal may refer questions to the European Court of Justice (ECJ), it is unclear whether this includes questions on patent infringement or solely questions on the interpretation of EU law. This issue itself may be subject to an opinion of the ECJ. Panel composition The panels of the local/regional divisions are multinational and made up of three legally qualified judges. In addition, for any panel of local/regional divisions a technically qualified judge may be allocated from a pool of judges, either on request of one of the parties or on the panel s own initiative, where it deems this appropriate. Any panel of the central division will comprise: two legally qualified judges who are nationals of different contracting member states; and one technically qualified judge with qualifications and experience in the field of technology concerned. Competence of UPC The UPC will have jurisdiction over both traditional European patents and unitary patents. The underlying principle for the competence of the UPC is that the central division will have jurisdiction to hear independent actions for nullity, whereas 16 Patents in Europe 2013/2014

19 Unitary patent and Unified Patent Court: the proposed framework Figure 2. New court structure European Court of Justice Structure of UPC 2. Instance Court of Appeal (Luxembourg) 1. Instance Local divisions Regional divisions Central divisions (Optional) (Optional) Legally qualified judge Technically qualified judge patent infringement actions will be heard before local/regional divisions of the contracting state where the infringement occurred or where the defendant is domiciled. The local/regional divisions will be competent to hear: infringement actions; actions for damages or compensation for provisional protection conferred by a published patent application; actions for provisional and protective measures and injunctions; and actions relating to prior use rights. The central division will be competent to hear: actions for declarations of non- infringement (although the central division will suspend the case if an infringement action related to the same patent between the same parties is initiated before a local or regional division); actions for revocation of patents (including counterclaims for revocation referred by a local/regional division); actions for the grant or revocation of compulsory licences; actions on compensation for licences; and actions against defendants domiciled outside the territory of the contracting states. Where an infringement action is pending before the local/regional division and a Patents in Europe 2013/

20 Unitary patent and Unified Patent Court: the proposed framework Figure 3. Infringement cases in Europe Germany 1450 Netherlands 60 United Kingdom 110 France 200 >90% of all cases in six countries (2009) counterclaim for revocation of the patent at issue is made, the local/regional division will be able to choose from three options. First, it may proceed with both the infringement action and counterclaim for revocation (and, if appropriate, request the appointment of a technically qualified judge with qualifications and experience in the field of technology concerned). Second, it may refer the counterclaim for revocation to the central division and then either suspend or proceed with the infringement case (similarly to the German bifurcation system ). Third, it may refer the entire case to the central division, upon the parties agreement. Commencement The UPC Agreement will enter into force on whichever of the following dates is the latest: January ; the first day of the fourth month following the deposit of the 13th instrument of ratification or accession (France, Germany and the United Kingdom must be among these 13 states); or the first day of the fourth month following the entry into force of the amendments to Regulation 1215/2012 (on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters). Regulation 1215/2012 was amended on December , but not with regard to Spain 70 Italy 150 Others 200 the unitary patent. Consequently, a further amendment proposal will have to go through the whole EU legislative process, which may significantly delay the entry into force of the patent package. Opt out, opt in During a transitional period of seven years, a proprietor of, or applicant for, a traditional European patent may opt out from the exclusive competence of the UPC for actions for infringement or revocation. Unless an action has already been brought before a national court, the proprietors of, or applicants for, traditional European patents that opted out may withdraw their opt-out at any moment (an option called opt-in ). Remaining issues and risks Will it be cheaper? As regards costs, unitary protection in 25 European countries by one patent may prove to be more cost effective than is currently the case. However, as neither the maintenance fees nor the ceiling to the proposed compensation scheme for human translations has been announced, the cost of a unitary patent may prove prohibitive for SMEs, which may seek patent protection for only a few countries, such as France, Germany and the United Kingdom. As the UPC court fees are equally unknown, it would be purely speculative to say that the UPC will be beneficial for SMEs costwise. Don t miss opt-out A foreseeable risk for users is to miss the opt-out. Unless the patent holder or applicant notifies the UPC registry of the opt-out, the UPC will have exclusive jurisdiction over traditional European patents issued or pending after the entry into force of the UPC Agreement. This means that in future, a patent holder may find itself before the UPC Central Division for a declaration of non-infringement, even though it never requested a unitary effect for its traditional European patent designating only, say, Germany and France. Applicants should therefore monitor the entry into force of the UPC in order not to miss the opt-out. Unitary enforcement and revocation A further consideration for applicants is 18 Patents in Europe 2013/2014

21 Unitary patent and Unified Patent Court: the proposed framework that invalidation of a unitary patent will be as centrally managed as its enforcement. Thus, the perceived risk of putting all of one s eggs in one basket is not limited to the examination phase; it also applies later on in the patent s life. Large filers of patents, such as pharmaceutical companies, dislike taking such risk and are thus likely to opt out of the untested unitary patent and UPC system in the beginning. However, this may in turn lengthen the time it will take until a sufficient number of cases has been reached to allow for a evaluation of the UPC system. enforcement in the European Union will change radically, and European IP risk assessment will become an even more important and complex consideration than it is today. Ratification risk and duration The last hurdle facing the agreement is the national ratification process, which has been the downfall of many a treaty (eg, the Community Patent Conventions of 1975 and 1989, due to constitutional problems in some member states). This is because national ratification processes are often misused for political interests (eg, in public votes in May and June 2005, France and Denmark voted against the adoption of the proposed EU Constitution Treaty). The risk is particularly high in the United Kingdom, where an anti-eu mood prevails that may seduce politicians into requesting a public vote against the ratification of the UPC Agreement. If the United Kingdom rejects the agreement, the whole package will collapse. Even if the agreement is ultimately ratified, it will still take a few years before the whole unitary patent and UPC system is up and running. This is because the current momentum enjoyed by the agreement will inevitably slow down once the proposal falls into the hands of individual countries parliaments and consultations with stakeholders take place especially when national taxpayers ask who will fund the new system. Final remarks The European Parliament s vote on December on the EU Council s compromise proposals demonstrates the great political momentum that is now behind the patent package. While predictions at this stage are still premature, it looks increasingly likely that the package will be implemented in accordance with the suggested timetable. When this happens, the landscape of patent protection and Patents in Europe 2013/

22 Contributing profiles KUHNEN & WACKER Intellectual Property Law Firm KUHNEN & WACKER Intellectual Property Law Firm Prinz-Ludwig-Str 40 A Freising, Germany Tel Fax Web Rainer K Kuhnen Partner rkj@patentfirm.de Rainer K Kuhnen is a partner at KUHNEN & WACKER, based in Freising (Munich). He specialises in patent prosecution in the fields of electrical engineering/ electronics, physics, information technology and network technology. Mr Kuhnen has a master s in electrical engineering from the Munich Technical University. He is a qualified German and European patent attorney, as well as a European trademark and design attorney, and holds an LLM in European IP law. Mr Kuhnen is a member of the American Bar Association, the International Association for the Protection of Intellectual Property, the German and International Association for the Protection of Intellectual Property, the European Patent Institute and the Licensing Executives Society, among others. He frequently lectures on German and European patent practice, and has attended conferences and given presentations in several Asian countries. 20 Patents in Europe 2013/2014

23 How and when to bring a case before the UPC Central Division How and when to bring a case before the UPC Central Division As the reality of the Unified Patent Court draws closer, patent holders should now familiarise themselves with the rules governing the competence of the court s Central Division By Axel Casalonga, Casalonga et Associés Long in the making, the agreement establishing the Unified Patent Court (UPC) is now in the process of being ratified. Patent holders should ensure that they understand the court s structure and are familiar with the features of each division so that they can adopt appropriate strategies when the court is up and running. Composition and features The UPC will be composed of a Court of First Instance, a Court of Appeal and a register. The Court of First Instance will be a single court with a Central Division and a number of local and regional divisions, which will be established in the contracting states. The headquarters of the court will be in Paris, where the president of the court will also sit. The language of proceedings before the Central Division will be the language of the granted patent that is, English, German or French. This may constitute a significant advantage over proceedings before a local or regional division, where the language will be one of the official languages of the country in which the division is located (or one agreed on by the countries that set up a regional division). The language of any appeal following a decision of the Central Division will also be English, German or French, since the language before the Court of Appeal will always be the language used at first instance. In many circumstances, therefore, plaintiffs may want to bring their case before the Central Division rather than before a local or regional division. The following situations will arise: The competence of the Central Division in the case at issue is governed by the UPC Agreement; the parties have no choice and must bring the case before the Central Division. The plaintiff can freely choose to bring the case before the Central Division, even if the other party or the court disagrees. The plaintiff must obtain the defendant s agreement to bring the case before the Central Division. The case was first filed with a local or regional division but the plaintiff wants to transfer it to the Central Division; the division s panel must agree before the case can be transferred to the Central Division. This chapter considers each of these situations in turn. Exclusive competence Revocation actions Direct actions for revocation of European patents and unitary patents must be initiated before the Central Division, as long as no infringement action is pending before a local or regional division. However, according to Article 33(7) of the UPC Agreement, the parties may agree to bring a direct revocation action before a local or regional division. The agreement expressly mentions patents in Article 32, which according to the definition given in Article 2(g) comprise both classic European bundle patents and European patents with unitary effect (ie, patents granted under the provisions of the European Patent Patents in Europe 2013/

24 How and when to bring a case before the UPC Central Division Convention that benefit from unitary effect in the territories of the participating member states by virtue of the regulation implementing enhanced cooperation in the area of the creation of unitary patent protection). If the nine-month opposition period has not expired, the revocation of the patent can be requested at the European Patent Office (EPO) by way of an opposition procedure or, alternatively, directly before the Central Division. The plaintiff therefore has the choice between these two venues (Article 33(8)). If an opposition is pending before the EPO, the Central Division may stay proceedings if a rapid decision may be expected from the EPO (Article 33(10)). This probably means that if a revocation action is filed before the Central Division within the nine-month opposition period, or even some months after the beginning of an opposition procedure, the Central Division will not stay proceedings and will issue its decision before the EPO. However, this will have to be established by case law, since Rule 295 of the present draft of the Rules of Procedure provides more generally that the court may stay proceedings if an opposition or a limitation (including appeal procedure) is pending before the EPO or a national authority. Invalidity of supplementary protection certificates Actions for invalidity of supplementary protection certificates (SPCs) also fall within the competence of the Central Division (Article 32(d)). The main ground for nullity of an SPC will be the nullity of the patent. However, the agreement contains no provision forbidding a party from requesting the invalidity of an SPC on other grounds (eg, linked with the marketing authorisation). Apart from exceptional cases, the Central Division will not hear opposition proceedings since the nine-month opposition period will have already expired. Declarations of non-infringement According to Article 33(4), actions for declaration of non-infringement (for patents and SPCs) fall within the competence of the Central Division. This applies to both classic European and unitary patents. According to Article 33(6), the Central Division shall stay proceedings concerning declarations of non-infringement if an infringement action between the same parties is brought before a local or regional division within three months of commencement of the action for declaration. It is unclear what will happen to the stayed action for declaration of non-infringement. It will probably be closed following a decision on infringement by the local or regional division, as long as the infringing acts correspond exactly to the definition given in the declaration for noninfringement. If, on the contrary, the definition is broader, it may be worth pursuing the action for a declaration of non-infringement following the decision of the local or regional division. Administrative actions According to Article 33(9), the actions referred to in Article 32(1)(i) shall be brought before the Central Division. This could apply, for example, to an appeal against an EPO decision concerning a request for restoration of a unitary patent that lapsed after the patent holder failed to pay an annual fee. Free choice Non-contracting member state defendants The plaintiff will have the choice to bring an infringement action before the Central Division if one of the defendants is domiciled outside the territory of the contracting member states. Such a defendant may be accused, for example, of infringement consisting of importing a product into the territory of a contracting member state (Article 25(a)). Even if the user of the product is domiciled in the territory of one of the contracting member states, it will thus be possible to sue all of the defendants before the Central Division. The plaintiff s decision cannot be contested by any of the defendants. Of course, consideration must be given to Article 33(1)(b), which states that the defendants must have a commercial relationship and the action must relate to the same infringement (product or process). No local or regional division According to the last sentence of Article 33(1), 22 Patents in Europe 2013/2014

25 How and when to bring a case before the UPC Central Division if the contracting member state in which the infringement took place has no local division and does not participate in a regional division, the case is brought before the Central Division. Similarly, according to Article 18(4) of the Statute of the Court, if a local or a regional division ceases to exist, all cases pending before that division are transferred to the Central Division. If, therefore, one or several member states decide not to create a local division or join a regional division, or decide to dismantle their local division or cease their participation in a regional division, all infringement cases that could have been brought before a local or regional division of that member state will be handled by the Central Division. Such a decision not to create a local division or not to join a regional division may be based on economic grounds, since the member states hosting a local or regional division must provide the necessary facilities and support the costs of establishing and running such local or regional division (Article 37(1)). The reason for this seemingly strange provision is that the competence of a division can always be defined on the basis of the place where an infringing act took place. If there is no local or regional division at that place, an alternative must be provided; this alternative is the Central Division. Infringement actions following revocation According to Article 33(5), if a revocation action is pending before the Central Division, an infringement action based on the same patent may also be brought before the Central Division. The defendant in the infringement action which had first initiated a revocation action must bring its case before the Central Division. Therefore, the plaintiff in the infringement action (which was the defendant in the revocation action) will have, in this case, the possibility of choosing the Central Division, so that the Central Division will rule on both cases (infringement and revocation). However, according to the present wording of Rules 70 and 71, where a plaintiff has applied for revocation or a declaration of non-infringement before the Central Division and the defendant subsequently initiates an infringement action before a local or regional division against the plaintiff in respect of the same patent, the president of the Court of First Instance shall, unless otherwise agreed by the parties, require the panel of the Central Division to stay proceedings, pending a decision of the panel hearing the action for infringement. This provision is unsatisfactory, as there is no need to consider the infringement claim if the patent is revoked. It shows the preference of the drafters of the Rules of Procedure for joined actions being brought before local or regional divisions instead of the Central Division. Agreement Infringement actions According to Article 33(7), the parties may agree to bring an infringement action before the division of their choice, including the Central Division. It is unclear how this could work in practice, however. If the plaintiff alone decides to bring an infringement action before the Central Division on the basis of this provision, how will the plaintiff know that the defendant will agree with its choice? The only possibility would be for the plaintiff first to contact the alleged infringer (by a warning letter?) and request an agreement to have the case heard by the Central Division. Otherwise, the defendant can challenge the plaintiff s choice and immediately argue before the Central Division that it objects to the case being heard by that division. Numerous infringements According to Article 33(2), if an infringement action is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the Central Division. The purpose of this provision may be to try to prevent forum shopping by the plaintiff. Here, the choice of the Central Division is reserved to the defendant, not to the plaintiff. This may also be a strategy used by the plaintiff in order to have the case heard by the Central Division. In any case, the point may be moot, since it is unlikely that more than three regional divisions will be established. Patents in Europe 2013/

26 How and when to bring a case before the UPC Central Division Infringement action, with revocation action pending According to the last sentence of Article 33(2), if an action is pending before a division (which could be the Central Division seized of an invalidity action), and another action is brought before another division (eg, an infringement action) between the same parties and concerning the same patent, the division first seized shall be competent for the whole case. This means that if a revocation action is pending before the Central Division, a subsequent infringement action must be brought before the Central Division, which will then handle both the invalidity and the infringement actions. This, however, is contradicted by Article 33(5), which states that in such a situation it is possible, but not compulsory, to bring the action before the Central Division. In any case, it shows that a patent holder will be free to bring an infringement action before the Central Division if the alleged infringer has already initiated a revocation action. Moreover, in such a case, a single decision on both validity and infringement will be issued, thus avoiding any bifurcation. By contrast, a third party filing first a revocation action against a patent will run the risk (or have the advantage) that the Central Division be chosen by the patent holder in case of a subsequent infringement action. Agreement between parties and panel According to Article 33(3)(c), if a counterclaim for revocation is made in an infringement action that is pending before a local or regional division, that local or regional division has the option, with the agreement of the parties, to refer the entire case (infringement and counterclaim for revocation) to the Central Division. Article 33(3) further provides that in such a situation the local or regional division must first hear the arguments of both parties. If both parties agree to refer the entire case to the Central Division, the panel is unlikely to disagree. Both parties must agree to this complete referral. If only one party is in favour of the referral, the division must either keep the whole case or proceed with a partial referral relating only to the validity of the patent. In addition, Article 33(3)(a) provides that the relevant division may decide to refer the counterclaim for revocation to the Central Division at its discretion, without an express agreement of the parties; the local or regional division need only hear the parties on that question before making a decision of referral. It may be that one party (or even both) is against this partial referral, which would lead to a bifurcation if the local or regional division still decides to refer the validity question to the Central Division. In such case Rule 40 provides that the judge-rapporteur shall accelerate the procedure before the Central Division. It is difficult to predict what will happen in practice, but the idea is clearly that the local division, having referred the counterclaim to the Central Division, need not stay infringement proceedings for too long. Conclusion Plaintiffs will have many opportunities, besides those imposed by statute, to bring their actions before the Central Division instead of a local or regional division. Deciding on a strategy before initiating an action will be crucial. The language of proceedings and the possibility of obtaining evidence of infringement will be important considerations when deciding on the UPC division before which an action should be brought. 24 Patents in Europe 2013/2014

27 Contributing profiles Casalonga et Associés Casalonga et Associés 8 avenue Percier Paris, France Tel Fax Web Axel Casalonga Senior partner a.casalonga@casalonga.com Axel Casalonga is a French and European patent attorney, as well as a European trademark attorney. He was admitted to the Paris Bar in Mr Casalonga s practice focuses on French patent litigation in the fields of mechanics and electronics. He also handles numerous opposition procedures before the European Patent Office, where his skills in oral proceedings before the Opposition Division and Board of Appeal are well known. Mr Casalonga was president of the French Patent and Trademark Association from 1993 to He is now chairman of the Litigation Committee of the European Patent Institute, which is preparing position papers for the European Commission and Council relating to the Unified Patent Court and its proposed Rules of Procedure. Mr Casalonga is recognised as one of the leading French patent specialists. Patents in Europe 2013/

28 The revival of cross-border injunctions The revival of crossborder injunctions The European Court of Justice recently breathed new life into the phenomenon of cross-border injunctions a cost-effective tool originally developed by the Dutch courts to stop infringement By Mari Korsten, Marion Bruin and Jaap Bremer, NLO (Nederlandsch Octrooibureau) and BarentsKrans A cross-border injunction, which enables a patent holder to start proceedings in a single country instead of all countries in which its patents are infringed, is a great time and money saver. The Dutch courts used to issue such injunctions routinely, both in cases on the merits and in preliminary proceedings, but over the years this practice had been considerably limited by the European Court of Justice (ECJ). However, a recent ECJ decision (Solvay v Honeywell, C-616/10, July ) appears to have reversed the trend, at least as far as cross-border measures in preliminary proceedings are concerned. The ECJ stated that if one or more companies infringe the same European patent with the same product in multiple EU member states, the patent holder may be entitled to claim and obtain a cross-border injunction before the court of one of those countries that is applicable in all those states. This is a significant development for patent holders, such as pharmaceutical companies, since conducting infringement proceedings in multiple EU countries is very costly in terms of both time and money. EU Regulation 44/2001 The question of where a party that has committed patent infringement can be sued is a matter of private international law. In Europe, the jurisdiction issue is governed by EU Regulation 44/ 2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. According to the general rule stated in Article 2 of Regulation 44/2001, a party whose domicile is in a EU member state may be sued in the courts of that member state, irrespective of its nationality. However, Article 5(3) of the regulation states that with respect to claims relating to an unlawful act, a defendant may also be sued before the courts of the member state where the unlawful event occurred or may occur. In addition, according to Article 6(1), if the case involves multiple defendants domiciled in various countries, they may all be sued in a country where any one of them is domiciled, provided that the claims against them are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. Past Dutch practice The practice of granting cross-border injunctions in patent cases started in the Netherlands in the 1990s. The Dutch courts considered that they had jurisdiction in many of the international patent disputes that were filed. Not only did the courts assume jurisdiction to rule on infringement in the Netherlands, they also ruled on infringement outside the Netherlands in relation to parallel IP rights in other European countries (eg, Interlas v Lincoln, Supreme Court, November , BIE 1991, 23, p86; NJ 1992, 404). If necessary, the Dutch courts would apply foreign law to non-dutch patents in order to assess validity and infringement outside the Netherlands. The Dutch courts issued cross-border injunctions 26 Patents in Europe 2013/2014

29 The revival of cross-border injunctions in cases on the merits and in preliminary proceedings. For this, the courts relied on a broad interpretation of Article 6(1) of the Brussels Convention (now Article 6(1) of Regulation 44/2001). However, the Dutch practice was not followed in other European countries, and courts in several EU countries in particular, the United Kingdom strongly opposed it. In view of this growing criticism, in 1998 the Court of Appeal of The Hague held in two decisions (EGP/Boston Scientific, April , BIE 2002, 8, p25 and Boston Scientific/Cordis, November , BIE 2002, 10, p46) that the Dutch courts could assume jurisdiction for codefendants domiciled outside the Netherlands in relation to infringements committed in their own country only if there was also a Dutch defendant the so-called spider in the web, that was coordinating the infringing acts of the co-defendants. This considerably narrowed the interpretation of Article 6(1) of the Brussels Convention and thus limited the possibilities to obtain a cross-border injunction from the Dutch courts. Past ECJ practice In 2006 the cross-border injunction practice was further restricted by two ECJ decisions. In Roche v Primus (C-539, July ) the ECJ held that Article 6(1) of the Brussels Convention did not apply in European patent infringement proceedings involving a number of companies domiciled in various contracting states in respect of acts committed in one or more of those states, even where those companies belonged to the same group and may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them. This effectively meant that, according to the ECJ, Article 6(1) did not allow for the spider in the web doctrine developed by the Dutch Court of Appeal. In Gesellschaft für Antriebstechnik mbh & Co KG v Lamellen und Kupplungsbau Beteiligungs KG (GAT v LuK, C-4/03, July ) the ECJ was asked to interpret Article 16(4) of the Brussels Convention (now Article 22(4) of Regulation 44/2001), which states that the court of the member state in which an IP right has been registered has exclusive jurisdiction to assess the right s validity. The question addressed in the case at issue was whether this provision was applicable only to proceedings that were started with the goal of declaring a patent invalid, or also to proceedings in which a defendant in a patent infringement case pleaded the invalidity of the patent by way of defence against the infringement claim. The ECJ ruled that the exclusive jurisdiction provided for by Article 16(4) applied to the proceedings in which the issue of a patent s validity was raised (eg, a nullity action or a nullity defence) at the time the case was brought or at a later stage in the proceedings. This means, in essence, that a national court that is asked to grant a cross-border injunction in proceedings regarding the infringement of a European patent has no jurisdiction to assess the infringement of the foreign parts of the patent if the validity of such parts has been challenged. This effectively barred crossborder decisions in cases on the merits, as the invalidity of the patent in question was nearly always argued by way of defence against the infringement claims. However, after GAT v LuK the Dutch courts relied on Article 31 of Regulation 44/2001 to adopt the position that it was still possible to issue cross-border injunctions in preliminary injunction proceedings (eg, Bettacare v H3 Products, Preliminary Relief Judge of The Hague, September ; PTC v APE Holland, Preliminary Relief Judge of The Hague, October , (IEPT ); and YPM v Yell, The Hague Court of Appeal, July , (IEPT )). According to Article 31, proceedings may be started before the court of a member state for provisional measures, even if under the regulation the court of another member state has jurisdiction as to the substance of the matter (ie, the validity of the patent). According to the Dutch courts, this meant that the court still had jurisdiction to grant a preliminary cross-border injunction, even if the validity of the patent was challenged. Solvay v Honeywell In the eagerly awaited decision in Solvay v Honeywell, the ECJ was asked to provide its views on cross-border injunctions and, in particular, on the Dutch practice of granting such injunctions as an interim measure, even Patents in Europe 2013/

30 The revival of cross-border injunctions after GAT v LuK and Roche v Primus. In Solvay v Honeywell a number of companies from the Honeywell group domiciled in different EU jurisdictions, including the Netherlands, had marketed the same product in several EU jurisdictions covered by a European patent owned by Solvay. The product was said to infringe the relevant national parts of the European patent, excluding the Netherlands. Solvay had commenced infringement proceedings on the merits against the Honeywell companies before the Hague District Court. In these proceedings, Solvay requested, among other things, a provisional cross-border injunction for the relevant countries in which Honeywell was claimed to have infringed Solvay s patent. In its defence, Honeywell argued that the patent was invalid. The Hague District Court, which had until then assumed that it had jurisdiction to grant preliminary cross-border injunctions, referred some preliminary questions to the ECJ. The ECJ reiterated, with reference to its judgment in Roche v Primus, that for there to be a risk of irreconcilable judgments, there must be a risk of diverging decisions arising from the same situation of law and facts. However, in the case at hand the Honeywell companies were all accused of having committed the same infringements (ie, selling the same product in all of the relevant EU member states). Therefore, they had all committed the same infringement in the same territories. This, said the ECJ, could lead to irreconcilable judgments. In other words, in such circumstances, all defendants could be sued before a single national court, based on Article 6(1) of Regulation 44/2001. Furthermore, the ECJ held that Article 31 of Regulation 44/2001 allows a national court to grant a claim for a provisional injunction based on a national part of a European patent even if the invalidity of that patent is asserted and another national court would have exclusive jurisdiction to decide on that point under Article 22(4) of the regulation. The ECJ observed that Article 22(4) seeks to avoid conflicting decisions on the validity of a national part of a European patent. It further noted that although in such a situation, the application of the jurisdiction rule based on Article 31 can be affected by Article 22(4), this did not apply in the case at hand. The Hague District Court had made it clear that in the ongoing proceedings in which a provisional cross-border injunction had been requested, it would not make a final decision on the validity of the foreign parts of the European patent, but rather would make a (preliminary) assessment of how the court with jurisdiction under Article 22(4) would rule on the validity of the patent. In addition, the Hague District Court had indicated that if it came to the conclusion that there was a reasonable, nonnegligible chance that the foreign court with jurisdiction under Article 22(4) ruled that the foreign part of the patent was invalid, the request for a cross-border injunction would be rejected. Under these circumstances, the ECJ held, there was no risk of conflicting decisions and the Hague District Court could assume jurisdiction to grant a cross-border injunction, even though the invalidity of the patent had been asserted. After Solvay v Honeywell The ECJ appears to have confirmed that the Dutch practice of granting cross-border injunctions on a preliminary or provisional basis, even if the validity of the patent has been disputed, is permitted, as long as the assessment of the patent s validity is purely preliminary. This applies not only to defendants domiciled in the country where the court is located, but also to a group of defendants from different countries, provided that one of them is domiciled in the country where the court is based, and provided that they have all committed the same infringing acts (eg, selling the same infringing product) in the same countries. Therefore, the ECJ appears to have re-opened the door to cross-border enforcement practice, which was previously closed by the GAT v LuK and Roche v Primus judgments. This certainly appears to be how the Dutch courts have interpreted Solvay v Honeywell, as illustrated by the decisions granting such injunctions handed down since July For instance, in Boehringer Ingelheim v Teva the preliminary relief judge of the Hague District Court ordered Teva to refrain from acting unlawfully against Boehringer Ingelheim by promoting or facilitating the infringement of 28 Patents in Europe 2013/2014

31 The revival of cross-border injunctions Boehringer Ingelheim s Portuguese patent, even though Teva had argued that the Portuguese patent was invalid. The judge held that even though he had to assess the validity of the foreign patent, there was no risk that the decision would conflict with the decision on the merits of the Portuguese judge since the Dutch judge did not give a final ruling on the validity of the Portuguese national patent. However, a point to bear in mind is that in Van Uden v Decoline (C-391/95, November ) the ECJ held that there had to be a real link between the subject matter of the measures sought and the territorial jurisdiction of the member state of the court before which those measures are sought. For instance, in Boehringer Ingelheim v Teva the court ruled that there was a real connecting link because the defendants were domiciled in the Netherlands. On the other hand, if the measure claimed (ie, an order to cease and desist from infringing a foreign part of a European patent) must also be complied with abroad, and all of the defendants are domiciled abroad, it is unlikely that a court will assume jurisdiction under Article 31 to grant a cross-border injunction. For instance, in Delaval v Boumatic (Preliminary Relief Judge of The Hague, December ), in which the defendant was domiciled outside the Netherlands, the judge ruled that the court did not have jurisdiction to grant an injunction with effect outside the Netherlands against a Swedish defendant as there was no real connecting link between the requested crossborder injunction and the Dutch territory. An interesting issue is whether courts in other EU countries will interpret Solvay in the same way as the Dutch courts. The ECJ may have found that the Dutch provisional measure procedures create no risk of conflicting decisions because the assessment made of the patent s validity is purely preliminary; however, it remains to be seen whether courts in other jurisdictions will also find that their national procedures for granting provisional or preliminary injunctions fulfil the criteria set by the ECJ (for a non-dutch perspective on Solvay, see for instance Trimble, M, Solvay v Honeywell and an Alternative Route to a Central Patent Court in Europe, Patently-O, September ). However, an opening has now been created at a European level and it will be interesting to see whether (and if so, in what circumstances) courts in other EU countries will also grant cross-border injunctions. Unified Patent Court With the reality of the unitary patent and the Unified Patent Court (UPC) getting closer each day, the possibility of dealing with infringement in all participating countries through a single procedure before the UPC (regardless of whether patent validity is challenged) is also getting nearer. However, as the UPC proceedings will potentially prove risky for patent holders and applicants (effectively putting all of their eggs in one basket), they may opt out of the UPC during the transitional period, preferring the option of possible cross-border injunctions. Patents in Europe 2013/

32 Contributing profiles NLO (Nederlandsch Octrooibureau) BarentsKrans NLO (Nederlandsch Octrooibureau) JW Frisolaan JS The Hague, Netherlands Tel Fax Web BarentsKrans Lange Voorhout EA The Hague, Netherlands Tel Fax Web Mari Korsten Dutch and European patent attorney NLO (Nederlandsch Octrooibureau) korsten@octrooibureau.nl Before joining NLO, Mari Korsten worked as a Dutch and European patent attorney at Novartis Pharma in Switzerland and at international law firm Bird & Bird in The Hague. Mr Korsten specialises in pharma and food technology. He has been engaged in several litigations, representing international pharmaceutical companies, among others, before the Dutch and Belgian courts. He also assists small and mediumsized life sciences companies in building, maintaining and out-licensing their IP portfolios. Mr Korsten is a tutor at the European Patent Institute and a member of the Dutch Chemistry Association. Marion Bruin Dutch and European patent attorney NLO (Nederlandsch Octrooibureau) bruin@octrooibureau.nl Marion Bruin previously worked as a project leader at Avantium Technologies where she was engaged in process research and development (R&D) for the pharmaceutical industry. She also worked as a research scientist in the field of polymer chemistry at Utrecht University (Netherlands) and Ciba-Geigy (Switzerland). Ms Bruin s areas of expertise are organic, organo-metallic and polymer chemistry, homogeneous catalysis, pharmaceutical process R&D and laboratory automation. Her clients include universities and chemical and pharmaceutical companies. Jaap Bremer Lawyer BarentsKrans jaap.bremer@barentskrans.nl Jaap Bremer s practice focuses on IP litigation, in particular with respect to patents, trademarks and advertising. Mr Bremer has extensive experience in infringement and invalidity litigation, as well as in parallel import, anti-counterfeiting and customs enforcement matters, particularly for clients in the pharmaceutical, life sciences, food and beverage and consumer products industries. He also regularly advises clients on non-contentious matters, including the negotiation and drafting of licence and coexistence agreements. 30 Patents in Europe 2013/2014

33 The must-know facts about patent term extensions in Europe The must-know facts about patent term extensions in Europe Patent term extensions are key tools for the protection of drugs in Europe. Understanding their complex legal framework is just as crucial By Ralph Minderop, Arwed Burrichter and Natalie Kirchhofer, COHAUSZ & FLORACK With over 15 referrals on the subject to the European Court of Justice (ECJ) in the past three years, the interpretation of the law governing patent term extensions has become increasingly complex. This article provides up-to-date answers to the most frequently asked questions on supplementary protection certificates (SPCs). What is an SPC? Similarly to the patent term extensions available in the United States under 35 USC 156, European patent law offers the possibility to apply for an SPC in order to compensate patent holders for the regulatory delays caused by marketing authorisation procedures for medicinal and plant protection products. By way of an SPC, the statutory 20- year maximum patent term can be extended by up to five years. What is the significance of SPCs compared to regular patent filings? The most recent statistics of the European Patent Office show that around 12,300 pharmaceutical and biotech patent applications were filed on average each year between 2009 and By contrast, between 2009 and 2012, only 58 SPC applications were filed on average each year with the national patent authorities of Germany and the United Kingdom the EU countries with the highest patent filings. This discrepancy results from the fact that SPCs can be obtained only for products that have been authorised for the first time as medicinal products in the European Union. With only about 20 to 40 new molecular entities being authorised for medicinal use each year (see the number of possible SPC applications is limited. Despite the scarcity of SPCs, they have tremendous economic significance for pharmaceutical and biotech companies. Unlike most patents, each granted SPC protects a commercialised medicinal product. Because of the immense upfront R&D costs incurred to bring a drug to market, the usual 20-year patent term is often insufficient to allow for any return on investment. Against this background, SPCs are indispensable tools to amortise the costs that accrue before a marketing authorisation can be obtained. Thus, at the end of the patent term when, in the case of best-selling drugs, billion-dollar revenues are at stake each day of additional patent term extension gained through an SPC counts. For which European countries can SPCs be obtained? SPCs for medicinal products in the European Union are governed by EU Regulation 1768/92, which came into force on January and was codified and replaced by EU Regulation 469/2009 (referred to further below as the MP-SPC Regulation). A similar legislative framework is in place for SPCs for plant protection products, although this is not discussed further in this article. These regulations are binding and directly applicable in all 27 EU member states. Of the non-eu countries for which European patents can be granted, several including Switzerland, Patents in Europe 2013/

34 The must-know facts about patent term extensions in Europe Macedonia and Albania offer national provisions that are similar to the MP-SPC Regulation. Turkey is a notable exception in that no SPC-like patent term extension is available there. In this article, only SPCs within the European Union are discussed. What is the duration of an SPC? SPCs extend the patent term for a period that is equal to the time that elapsed between the filing date of the patent application and the date of the first marketing authorisation in the European Union, minus five years. The overall term of an SPC may not exceed five years. Consequently, an SPC may afford a maximum patent duration of 25 years, or when calculated from the date of first marketing approval an effective patent exclusivity period of 15 years after first marketing authorisation. Importantly, in calculating the duration of SPCs, the first marketing authorisation in the European Community (ie, the European Union plus the EEA states) is important, which can differ from the first marketing authorisation in the country in which the SPC application is being filed (Article 13 of the MP-SPC Regulation). The term of an SPC can be further extended by six months if the marketing authorisation preparations included all of the studies required in compliance with an agreed paediatric investigation plan. This special possibility for SPC extension was introduced by the EU Paediatric Medicines Regulation (1901/2006), which came into force in late This regulation provides further incentives for the pharmaceutical industry to include clinical trials specifically addressing paediatric uses of a drug. The ECJ recently clarified in Merck (C- 125/10) that an SPC can also be granted with a zero or negative term. The grant of such an SPC can be desirable, as the paediatric extension is possible only if an SPC is in place. Hence, for example, a six-month extension of a negativeterm SPC, provided that the negative term is less than six months, can result in a positive patent term extension for the proprietor. What is the deadline for filing an SPC application? An SPC application must be filed with each competent national IP office within six months of receiving the marketing authorisation for that country or within six months of obtaining the basic patent, whichever is the later (Article 7 of the MP-SPC Regulation). Calculation of the SPC filing deadline takes into account the first market approval in the country of filing, not the first market approval in the European Economic Area. The marketing authorisation relevant for the six-month deadline can be issued either by the European Medicines Agency under the centralised procedure of EU Regulation 2309/93 or at national level by the competent national drug approval body. The application for the six-month paediatric extension of an SPC under EU Regulation 1901/2006 can be filed together with the SPC application, as well as at a later stage although no later than two years before the expiry of the SPC. What subject matter is eligible for SPC protection? Only an active pharmaceutical ingredient or combination of active pharmaceutical ingredients that is protected by a basic patent and has obtained an administrative marketing authorisation before being placed on the market as a medicinal product can be the subject of an SPC. The active pharmaceutical ingredient protected by the SPC will generally be interpreted so as also to include any closely related derivatives, such as salts or esters, as long as they are also protected by the basic patent (Farmitalia/Idarubicin, C-392/97). As defined in Article 1 of the MP-SPC Regulation, basic patent means: a patent protecting the active pharmaceutical ingredient as such; a process to obtain the product; or an application of the product. This also includes claims for use and method of treatment, as well as claims relating to the active principle of the product. Formulation patents and medical device patents cannot be the object of SPCs. What are the conditions for obtaining an SPC? Applications for SPCs must be filed with each national IP office on a country-by-country basis (Article 9 of the MP-SPC Regulation). 32 Patents in Europe 2013/2014

35 The must-know facts about patent term extensions in Europe An SPC may be granted only to the holder of the basic patent or its successor in title (Article 6). In accordance with Article 3 of the MP-SPC Regulation, an SPC can be granted only if, at the filing date of the SPC application: the basic patent protecting the product is in force; a valid marketing authorisation has been granted in accordance with EU Directive 2001/83/EC (pharmaceutical products) or EU Directive 2001/82/EC (veterinary products); the product has not already been the subject of an SPC belonging to the same person; and the marketing authorisation is the first to have been granted for this product in the country for which the SPC application is filed. What criteria should be used to determine whether a product is protected by a basic patent according to Article 3(a) of the MP- SPC regulation? Opinion and practice were divided across Europe regarding the test to be used to determine properly whether a product for which a marketing authorisation has been issued is protected by a basic patent according to Article 3(a). Some jurisdictions (most notably Germany, the United Kingdom, the Netherlands and France) relied on the express wording of the basic patent (the disclosure test), whereas courts in other jurisdictions (eg, Belgium) resorted to the patent s scope of protection (the infringement test). In November 2011 the ECJ provided some clarification on this issue in its decision in Medeva BV ( C-322/10), Georgetown University (C-422/10), Yeda (C-518/10), University of Queensland (C-630/10) and Daiichi (C-6/11). The ECJ ruled in favour of the disclosure test, stipulating that an SPC can be granted for a combination product only if all active pharmaceutical ingredients in the combination are specified [or identified] in the wording of the claims of the basic patent. Hence, a patent claiming active pharmaceutical ingredient A cannot serve as a basic patent for a combination SPC directed to active pharmaceutical ingredients A+B if the combination of active pharmaceutical ingredient A with active pharmaceutical ingredient B is not specified/identified in the wording of the claims. Thus, even though the combination of active pharmaceutical ingredients would infringe the patent claiming the single active pharmaceutical ingredient, the combination is not protected by the basic patent in the sense of Article 3(a). What degree of specification/identification in the wording of the claims is necessary and sufficient is, however, unclear. This question has been referred to the ECJ for clarification (Cases C-493/12 and C-443/12). When prosecuting patent applications for new active pharmaceutical ingredients, it seems advisable to direct a sub-claim to the product for which an SPC will most likely be applied for and to ensure that this product is expressly mentioned in the claim. Is it possible to obtain a single-product SPC based on a marketing authorisation for a combination product comprising multiple active pharmaceutical ingredients? This question has also been clarified by the ECJ in the November 2011 case quintet referred to above. The ECJ held that the SPC product can be defined as a single active pharmaceutical ingredient (or as a sub-combination active pharmaceutical ingredient), even when the combination drug or vaccine for which the marketing authorisation was obtained includes further active pharmaceutical ingredients. Hence, an SPC for product A can be obtained based on a marketing authorisation for a combination product A+B. What is the scope of protection afforded by an SPC? According to Article 4 of the MP-SPC Regulation, the protection conferred by an SPC shall within the limits of the protection conferred by the basic patent extend only to the product covered by the marketing authorisation and for any use of the product as a medicinal product that has been authorised before the expiry of the SPC. In obiter dicta in the ECJ case quintet mentioned above and the subsequent decision in Novartis v Actavis concerning valsartan (C 442/11 and C 574/11), the ECJ clarified that an SPC provides the same protection as the basic Patents in Europe 2013/

36 The must-know facts about patent term extensions in Europe patent against an unauthorised use of the product in the form of any medicinal product that contains that product. Accordingly, sale of a combination product A+B would infringe an SPC to product A. Is it possible to cover several products with an SPC or to obtain several SPCs per basic patent? As a rule, an SPC can cover only a single product that is, an active pharmaceutical ingredient or combination of ingredients. Combinations of two or more active pharmaceutical ingredients can be the subject of an SPC only if the basic patent identifies the specific combination in the wording of the claims (see above). Until recently, it was established case law that if a patent protected different products, each could be subject to different SPCs. To the surprise of many, the ECJ appears to have concluded in the case quintet of November 2011 that there might be only one SPC per basic patent. However, it is questionable whether the ECJ really intended to change case law in this way. Possibly, what the ECJ meant was that there can be only one SPC per product per basic patent. National courts in the United Kingdom and the Netherlands have referred this issue to the ECJ for clarification (Cases C-443/12 and C-484/12). Until the ECJ issues its decision, it may be advisable to separate the subject matter of an originally filed patent application into several divisional applications in order to ensure that separate patents are granted for the different products. Despite the uncertainties regarding the number of SPCs that can be obtained per patent, it is established case law that it is impossible to obtain more than one SPC for the same product and indication. A notable exception to this rule is when the underlying patents are owned by different parties, which is known as a third-party SPC (see AHP Manufacturing BV v Bureau voor de Industriele Eigendom, C-482/07, and Biogen Inc v Smithkline Beecham, C181/95). What must be considered when filing SPCs for combination products? In Article 1 of the MP-SPC Regulation, the product that can be the subject of an SPC is defined as the active [pharmaceutical] ingredient or combination of active ingredients of a medicinal product. Hence, in terms of SPC law, a product comprising a single active pharmaceutical ingredient and a product comprising the same ingredient in combination with another are two different products, with each potentially eligible for separate SPCs. For an SPC covering a combination product to be granted, it is generally necessary that the summary of product characteristics accompanying the marketing authorisation specify the combination of active pharmaceutical ingredients in the qualitative and quantitative composition section. It is generally insufficient for the summary of product characteristics to stipulate that the product is authorised (only) for use in combination therapy with another drug. Hence, strictly speaking, only fixeddose combination products (ie, a formulation of two or more active ingredients combined in a single dose form) can be covered by a combination SPC. How can SPCs be forfeited or lost? SPCs are linked to the validity of the basic patent for which they were issued. Therefore, an SPC becomes invalid if the underlying basic patent has lapsed or is revoked, or is limited to an extent that it no longer protects the product for which the SPC was granted (Article 15 of the MP-SPC Regulation). Moreover, an SPC lapses if: the certificate holder surrenders it; the certificate holder fails to pay the annual fees in time; or the marketing authorisation for the respective medicinal product is withdrawn (Article14). Furthermore, SPCs can be invalidated by third parties in national nullity proceedings before the competent national courts. What needs to be observed during prosecution of SPC applications? As noted above, even in Germany and the United Kingdom, under 60 SPC applications are filed each year. In EU countries with less economic weight, the number of SPC filings is even smaller. The tremendous economic 34 Patents in Europe 2013/2014

37 The must-know facts about patent term extensions in Europe importance of SPCs means that it is advisable to appoint a lead counsel in Europe to manage, coordinate and oversee the diverse national SPC examination proceedings. Furthermore, the prosecution strategy and claim language of the basic active pharmaceutical ingredient patent should be adapted well before the patent is granted, to allow for effective and comprehensive filing of an SPC. For cost and strategic reasons, it is expedient to adopt a single wording for the SPC product description in the applications and one consistent response strategy to possible objections raised in the different national examination proceedings. Patents in Europe 2013/

38 Contributing profiles COHAUSZ & FLORACK COHAUSZ & FLORACK Patent und Rechtsanwälte, Bleichstrasse 14 D Dusseldorf, Germany Tel Fax Web Ralph Minderop Senior partner rminderop@cohausz-florack.de Ralph Minderop is a senior partner with COHAUSZ & FLORACK and a European and German patent attorney. Dr Minderop provides strategic IP advice and has extensive experience in the prosecution and litigation of patents in the fields of life sciences, pharmaceutical chemistry and general chemistry on behalf of German and international clients. He holds a PhD in biochemistry. Arwed Burrichter Senior partner aburrichter@cohausz-florack.de Arwed Burrichter is a senior partner with COHAUSZ & FLORACK, and a renowned and highly experienced European and German patent attorney. Dr Burrichter prosecutes and litigates patents in the fields of pharmaceuticals, general chemistry, polymer chemistry and biochemistry; he also advises on strategic IP decisions. Dr Burrichter obtained his PhD in chemistry from the University of Southern California, Los Angeles. Natalie Kirchhofer Technical expert nkirchhofer@cohausz-florack.de Natalie Kirchhofer is a graduate in biochemistry from the University of Tubingen. She attended Rockefeller University, New York as a Fulbright scholar and subsequently obtained a PhD from the Max-Planck Institute of Biochemistry in Munich, investigating DNA double-strand break repair mechanisms. Dr Kirchhofer joined COHAUSZ & FLORACK in October 2010 and is currently training as a patent attorney. 36 Patents in Europe 2013/2014

39 Biotechnology patentability the latest from the EPO Biotechnology patentability the latest from the EPO The European Patent Office s approach to biotechnology patentability is evolving along with the industry. The latest developments are reviewed in three key areas By Pamela Tuxworth, Lee Chapman and Andrew Bentham, J A Kemp Since the European Patent Office (EPO) was founded 35 years ago, biotechnology has become an established industry albeit one that changes constantly. In order to keep pace with that sector, the EPO needs to revisit frequently its own rules on what is patentable and what it means in practice. This chapter reviews the developments in patentability in three key areas of biotechnology: therapeutic monoclonal antibodies; stem cells; and plant biotechnology/breeding. Therapeutic monoclonal antibodies The success of existing therapeutic monoclonal antibodies has resulted in an upsurge of activity in this field in recent years. Antibodies have acquired significant commercial importance as highly specific drugs for the treatment of diseases including cancers and autoimmune diseases. A wave of patent filings has accompanied these developments. No specific directives govern the patentability of antibodies in Europe. The EPO s requirements have instead evolved with the technology. Some of these requirements arise from decisions of the EPO s Board of Appeal, but examiners are also guided to an extent by the EPO s internal policies. Patents covering antibodies to novel and inventive targets are routinely granted by the EPO. The EPO considers it straightforward to obtain antibodies to a new protein and so does not require such antibodies to be exemplified. This approach was developed in the era when many new genes and proteins were being cloned and patented, and it was therefore common for targets to be novel and inventive (non-obvious). However, most new antibodies are now to known targets. The antibodies must be clearly defined in order for the EPO to determine that they are novel. This can be an issue where the antibodies are defined functionally in terms of their binding properties or activities, rather than structurally. In such cases data showing that the antibodies in the prior art do not possess the same properties may be required. However, the biggest hurdle is that of nonobviousness. This hurdle cannot be overcome at the EPO purely because the structure of the antibody is not obvious. It has long been accepted that nonobviousness can be established by demonstrating that an antibody to a known target produced by a known method has an unexpected technical effect. This is generally the best approach if there is data demonstrating a difference between the new antibody and the antibodies in the prior art. Sometimes it may be possible to establish that there was no reasonable expectation of obtaining a particular antibody using known methods. In 2011, for example, the EPO s Board of Appeal found human monoclonal antibodies to be inventive over a mouse antibody that neutralised the same protein. This was because the likelihood of obtaining neutralising human antibodies using the known techniques would not have been reliably predicted. Because Patents in Europe 2013/

40 Biotechnology patentability the latest from the EPO the known human antibodies were nonneutralising antibodies, the newly invented ones exhibited an unexpected technical effect. In 2012 the Board of Appeal held an antibody to be inventive even though it did not offer an improvement over a known antibody specific for the same protein. The new antibody was held to be inventive because it bound to a particular part of the protein that could be considered to be a novel target. Binding to that part of the protein could therefore be viewed as an unexpected effect of the antibody. Treating a specific part of a known protein as a novel antibody target is consistent with the EPO s original approach based on treating wholly new proteins as novel targets. A patent must also describe the claimed antibodies in a manner that enables them to be obtained without excessive difficulty. What constitutes sufficient disclosure depends on the manner in which the antibodies are defined and what is known in the prior art. The EPO has granted even recently patents to antibodies defined only by functional properties. In such cases, either the specification or the prior art must describe tests to determine whether an antibody satisfies the functional definition. It has, however, become more common for antibodies to be defined by reference to: a structural feature (eg, amino acid sequence); or both structural and functional features. Structurally, an antibody is composed of heavy and light polypeptide chains, each having constant and variable regions. Within each variable region, three sub-regions known as complementarity determining regions (CDRs) are key to the antigen binding properties that make antibodies useful. EPO examiners generally insist that any structural definition include the sequences of all six CDRs. However, where data shows that fewer CDRs are required to achieve a technical effect, or that the CDRs may be modified while maintaining a technical effect, the antibody may be defined accordingly. Non-obviousness is increasingly an issue in obtaining patents for antibodies and there is a trend towards more precise structural and functional definitions. The EPO may therefore appear to be getting stricter in this area. However, as each case is judged on its facts and by reference to the ever-increasing amount of prior art, the changes reflect natural developments in a fast-advancing field, rather than a tightening of the EPO s underlying standards. Stem cells The European Patent Convention (EPC) does not allow an invention to be patented if exploiting it commercially would be contrary to morality. Since biotechnology sometimes has an ethical component, the European Union provided in 1998 some legislative guidance in the form of a directive concerning which biotechnological inventions are contrary to morality. The EPO subsequently updated the EPC to include these rules. In addition to human cloning, the directive renders uses of human embryos for industrial or commercial purposes unpatentable. Stem cells can differentiate into many specialised adult cell types, such as liver cells or heart cells. They can thus self-renew to produce more of themselves. Of particular interest are pluripotent stem cells capable of differentiating into any adult cell type. A key aim of stem cell technology is to repair damaged tissues or replace damaged organs using these cells. The idea is that pluripotent stems cells can be stored and used when needed. If so-called autologous pluripotent stem cells derived from the patient s own tissues are used, then the new tissue or organ will avoid the problems of rejection that arise with donated tissues or organs. Such proposals have been championed in recent times by celebrities with serious injuries or degenerative disorders, such as Christopher Reeve and Michael J Fox. There are two key types of pluripotent stem cell: embryonic stem cells (ESCs) and induced-pluripotent stem cells (ipscs). As their name suggests, ESCs are derived from early stage embryos. ipscs are adult cells (usually skin cells) that are devolved to an embryonic stage using genetic modification. In October 2011 the European Court of Justice (ECJ) ruled in Brüstle v Greenpeace that any invention involving the use of human ESCs 38 Patents in Europe 2013/2014

41 Biotechnology patentability the latest from the EPO is unpatentable. The ECJ s reasoning was that such cells are inherently derived from human embryos and as such constitute use of human embryos for industrial or commercial purposes. Interestingly, the ECJ held that it does not matter when the use of human embryos takes place in the context of the invention. Thus, it does not matter that a person could implement the invention without actually using an embryo for instance, by purchasing a human ESC from a stem cell bank. The decision remains controversial. The ECJ seemed to focus on the exact wording of the directive and to ignore its overriding purpose. The ECJ did not consider in detail whether EU countries see human ESCs as contrary to morality. Commentators have noted that it is odd to conclude that human ESCs are immoral when their derivation, sale and use are sanctioned throughout the European Union (albeit with strict controls to avoid misuse). It is perhaps especially surprising to draw this conclusion when ESCs are typically derived from spare embryos created during in vitro fertilisation, with parents giving their consent in the hope of helping others or advancing scientific knowledge. The fact that the ECJ focused on the exact wording of the exclusion is also surprising because there was no public knowledge of human ESCs when the directive was drafted. The discovery of human ESCs was made public a few months after the directive came into force in The scientific community reacted negatively to the ECJ decision. For instance, Professor Sir Ian Wilmut, one of the creators of the cloned sheep Dolly, was quoted as saying: It is very much to be regretted that the [ECJ] has taken this view. It will unfortunately make it less likely that companies in Europe will invest in the research to develop treatments to use embryonic stem cells for treatment of human diseases. However, the ECJ decision may not be the final word on this issue. There may be commercial and political pressure to reverse the ruling once patients are being treated using human ESCs. Incidentally, UK Prime Minister David Cameron was asked whether he will do what he can to clear this blockage during Prime Minister s Questions in the House of Commons in January For the time being, the EPO has at least partially implemented the ECJ decision and grants no patents that concern the use of human ESCs if, when the patent application was filed, the ESCs could be made only by destroying human embryos. However, the EPO will grant patents that concern products such as culture apparatus or culture media that are suitable for use with human ESCs because their production normally does not require the use of human embryos. In any case, many other types of stem cell and their uses can be patented in Europe. The exclusion concerns uses of human embryos and so has no bearing on the patentability of non-human ESCs. Nor does it affect the patentability of stem cells derived from adults, such as adult stem cells or ipscs. Lastly, most countries outside the European Union (including the United States and Japan) consider human ESC-related inventions to be patentable. Practice in Europe may liberalise in the future, although there are no signs of when that may happen. Plant biotechnology/breeding Also excluded from patentability are plant (and animal) varieties and essentially biological processes for the production of plants (and animals). Plant varieties have historically been excluded to avoid overlap with plant variety rights a separate form of intellectual property applicable to new varieties of plant. Such rights still have a valuable role, but some plant innovations are increasingly of a type to which patents are better suited. Genetically modified (GM) crops brought these issues to the fore in the 1990s. Although EU regulators have been reluctant to permit their commercialisation, they are in principle now clearly patentable if the patent claims are written correctly. In 2000, the Novartis decision of the EPO s Enlarged Board of Appeal confirmed that plants are patentable, notwithstanding the variety exclusion, provided that the patent claims do not specify individual varieties. An individual GM variety would be excluded, but the invention that a GM plant represents is usually amenable to a broader, allowable definition. Other related aspects, such as transformation processes and Patents in Europe 2013/

42 Biotechnology patentability the latest from the EPO transformed plant cells, can also be claimed. Although the position is reasonably clear for GM technology, it is less so for plant breeding. One might imagine that classically bred plants would be excluded from patentability and protectable only by variety rights. One might also imagine that nonbiotech breeding processes that produce plants by crossing would be excluded as essentially biological. However, recent technologies such as marker-aided selection, which speeds up breeding processes have caused the EPO s Enlarged Board of Appeal to examine the issues in its Broccoli and Tomatoes cases. The Enlarged Board of Appeal concluded that inclusion of such technical steps in what is otherwise a claim to a breeding process does not avoid the essentially biological process exclusion. This rules out, for example, claims to marker-aided selection processes and methods that begin with transformation to produce a first-generation transformant, but are then continued to produce downstream generations by breeding. This is unfortunate for patent holders, but claims to transgenic plants as products per se cover any generation and the EU Biotechnology Directive also confers some additional protection on downstream generations. Taking account of practice following the Broccoli and Tomatoes cases and the legislative exclusions themselves, there are some positive aspects to the EPO s established position on plant-related inventions. However, that position is considerably more restrictive than the position in the United States, where there are no policy-based restrictions and even individual plant varieties can be patented if novel and inventive. Elsewhere, the position varies widely: some countries are more liberal than the EPO, whereas others forbid claims to plants entirely. The response to the Broccoli and Tomatoes cases has been to claim non-gm plant inventions in product format. Although an essentially biological process for the production of plants cannot be patented, the EPC does not preclude explicitly the patenting of the product of such a process for example, a plant obtainable by a breeding process. This is vital for so-called native trait applications that are becoming more common in light of improvements in technologies such as molecular markers. Here, the invention is the identification of the part of a plant s genome responsible for a beneficial trait, which may not be a single gene as in a GM situation, but can nonetheless be transferred from one genetic background to another by breeding. Such inventions are therefore not confined to a single variety and can be claimed generically in line with the EPO s Enlarged Board of Appeal s Novartis decision. These inventions also cannot adequately be protected by plant variety rights, because such rights relate to single varieties, whereas a native trait is a more broadly based contribution requiring more extensive protection. Such product claims are in practice often hard to secure for other reasons, but current case law supports them in principle. This position is controversial, however. The seed industry considers that it needs and deserves such claims to protect its investment in the development of new plants. By contrast, breeders groups argue that, compared to the narrower and weaker protection of a plant variety right, patent claims on non-gm plants unduly restrict their members freedom to develop new varieties. There is also criticism from lobby groups opposed to patenting in agriculture. The EPO s Enlarged Board of Appeal is therefore considering the question of whether products of processes excluded from patentability should also be unpatentable. For procedural reasons, it is uncertain whether it will be able to provide an answer or on what timescale. However, the issue has also been raised by an anti-patent group in another case and so will have to be resolved at some point. It is possible that another door for patentees in Europe will be closed as a result, but in the meantime applicants can work only to the current practice and await developments. 40 Patents in Europe 2013/2014

43 Contributing profiles J A Kemp J A Kemp 14 South Square, Gray s Inn London WC1R 5JJ, United Kingdom Tel Fax Web Pamela Tuxworth Partner ptuxworth@jakemp.com Pamela Tuxworth is a partner of J A Kemp with over 10 years professional experience. Much of her day-to-day practice involves prosecuting patent applications at the European Patent Office (EPO) and elsewhere, and handling oppositions and appeals before the EPO. She handles European patent applications across a range of biotechnology and life sciences subject matter. Her substantial experience of oppositions and appeals at the EPO includes, in particular, multi-party oppositions on antibody cases. Dr Tuxworth s client base includes US and European antibody companies, academic institutions and government bodies. She also handles both European and foreign applications for small biotech companies developing new technologies. Notably, she acted for BioVex Limited, handling its patent portfolio and several EPO oppositions prior to its high-value acquisition by Amgen. Lee Chapman Partner lchapman@jakemp.com Lee Chapman is a partner of J A Kemp, experienced in drafting and prosecuting patent applications, particularly in the United Kindgom, the United States and Japan, and before the EPO. Dr Chapman is also experienced in preparing and handling oppositions and appeals before the EPO and conducting due diligence and freedom to operate exercises. He handles cases across a broad range of biotechnology subject matter, but has particular drafting and prosecution experience in the fields of stem cells, nanopore sequencing and sensing, antibodies, genes and proteins, new administration regimes and medical uses. In the stem cell field, Dr Chapman acted on behalf of Wisconsin Alumni Research Foundation in the landmark case that led to the EPO s Enlarged Board of Appeal Decision G2/06 on the patentability of human embryonic stem cells. Andrew Bentham Partner abentham@jakemp.com Andrew Bentham is a partner of J A Kemp whose patent practice concentrates on EPO prosecution and opposition/appeal work and representation of universities in the life sciences fields. With an academic background in plant sciences, he has a particular interest in plant biotech and breeding and can advise on plant variety right issues, as well as patents in the agricultural sector. He has been involved in some 50 EPO opposition proceedings, many involving multiple opponents and including cases relating to second medical uses, antibodies and genes, as well as plant science aspects such as transformation and gene silencing. Among his clients are UK and foreign academic institutions, small and medium-sized biotechs, multinational pharmaceutical companies and agriculture-sector businesses, including one of the world s largest seed companies. Patents in Europe 2013/

44 IP equals money. Read why. IAM combines a mix of news, analysis, specialist columns and feature articles, focusing on how IP rights and other intangibles can be used to drive revenue, improve profitability and increase shareholder value. Articles in the latest issue include: Nightmare on EU unitary patent street Why financial services is shaping up for IP war How to maximise innovation capacity Register for a free trial at

45 Austria Austria By Peter Israiloff, Barger, Piso & Partner 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In civil matters, actions and requests for interim injunctions based on alleged infringement may be brought exclusively before the Vienna Commercial Court. Jurisdiction in criminal matters rests with the Vienna Provincial Court for Criminal Matters. Furthermore, a patent holder may apply to Austrian Customs for seizure of any infringing goods when they are imported into Austria, as part of the European Economic Area, for the first time; thereafter, a court action may be commenced. A patent or supplementary protection certificate (SPC) holder or its exclusive licensee may apply to the Nullity Department of the Austrian Patent Office for a declaratory decision against anybody that allegedly infringes the patent or SPC. Declaratory proceedings may be launched even in case of the mere intention to take such steps. Furthermore, the owner of a senior patent may apply to the Nullity Department for a decree that the commercial use of a junior patent entails the full or partial use of its invention. Moreover, the holder of a senior patent or SPC, or any third party, may file an opposition against a junior patent application or nullification proceedings against a junior patent based on lack of novelty and/or inventiveness. In the course of a universal amendment of the administrative jurisdiction, discussions are ongoing as to whether the competence of the Nullity Department should be passed to the Vienna Commercial Court from January What level of expertise can a patent owner expect from the courts in your jurisdiction? As any infringement proceedings must be launched before a single court, it may be assumed that the judges have specialist experience. In civil matters the first instance court consists of two professional judges and one expert, usually a patent attorney. One of the professional judges is the chairperson. It is also common for the court to appoint an expert whose opinion is taken into account. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The civil court rules on infringement only. If the defendant objects to the validity of the patent or SPC, the proceedings will be interrupted so that it can file a nullification action with the Austrian Patent Office or, in case of a European patent that has been in force for less than nine months, an opposition with the European Patent Office. Upon a final, uncontestable decision on the patent s validity, the court action will continue. However, if the competence of the Nullity Department is passed to the Vienna Commercial Court, validity and infringement will be handled together. 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. Patents in Europe 2013/

46 Austria 5. What role can and do expert witnesses play in proceedings? The opinion provided by the court-appointed 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 evidence if the plaintiff has difficulties in proving the facts. If a request for a preliminary injunction has been issued alongside infringement proceedings, this request may be directed to securing not only the claim itself, but also measures for preserving evidence. Such a preliminary injunction may be ordered without hearing the defendant if a delay might result in irreparable damage to the plaintiff or if there is a risk that evidence will be destroyed. Either during or outside of an infringement suit, any party which has suffered infringement of a right granted to it by the patent may request information about the origin and distribution channels of the infringing goods or services. The request for information must be directed either to the infringer itself or to any person that has dealt directly or indirectly with the infringing goods or services. If necessary, the request may be followed by legal action. In criminal proceedings the 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 ) and those that are already beyond the scope of the patent (ie, patentable or inventive equivalents). A mere technical equivalent (ie, where just some features have been exchanged without altering the subject of the invention and lying within the knowledge of a person skilled in the art at the priority date of the patent) is covered by the scope of protection granted by the patent and therefore constitutes an infringement. On the contrary, an inventive equivalent is not regarded as infringement. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There exist some measures that are, as such, not regarded by law as inventions, including discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts and computer programs. However, all of these measures are patentable, provided that they are directed to or combined with technical features. If the plaintiff is the holder of a patent combining such mental features with technical features, the defendant may argue that the patent actually covers, for example, a business method or a piece of software, and thus either should never have been granted or should be regarded as ineffective. Such patents are therefore sometimes difficult to enforce. The same may hold true for biological patents, because there exist some restrictions to patentability of biological matters on which a defendant may rely. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Case law is unknown in Austria courts are bound only by statutory law. However, courts may choose to cite related previous decisions. If one of the parties refers to a previous decision, the court must deal with it in its reasoning; failure to do so may give rise to a complaint or appeal. 10. Are there any restrictions on whom parties can select to represent them in a dispute? Before the courts, parties must be represented by an attorney at law or a notary public. In patent matters the representatives may be accompanied by patent attorneys. Before the Austrian Patent Office or the Supreme Patent and Trademark Board, there is no statutory requirement for representation provided that the party is based in the European Economic Area or in Switzerland. However, before these authorities, a party is usually represented by a patent attorney rather than an attorney 44 Patents in Europe 2013/2014

47 Austria at law or a notary public. Due to a universal amendment of the administrative jurisdiction, the Supreme Patent and Trademark Board will be dissolved as of January Its competence is likely to be passed to the Vienna Upper Provincial Court, in the course of which the parties may be represented by a patent attorney as previously. 11. Are courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Decisions of courts in other jurisdictions are not binding on the Austrian courts. However, if one of the parties cites such a case, the court must refer to it in its statement of grounds. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? In proceedings before the court each party has the opportunity to submit requests for extension of terms or postponement of hearings. If such a request is filed by both parties, it is usually granted. If such a request is filed by the defendant with due grounds for consideration, it will also be granted. Otherwise, especially upon a counter-request 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 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. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances can this be done? Preliminary injunctions may be requested together with the demand for a judgment in infringement proceedings, even if no risk is proven. 14. How much should a litigant plan to pay to take a case through to decision at first instance? The costs of a patent attorney assessing an infringement before litigation may range from 4,000 to 12,000. The costs for infringement proceedings depend on the value in dispute, which has a statutory minimum of 36,000. The overall costs for a patent holder until a first instance decision regarding a preliminary injunction range from 9,000 to 22,000. Until a first judgment regarding a permanent injunction, the costs range from 9,000 to 42,000. However, these figures reflect only a range of costs and may be higher in complicated matters. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The losing party must refund the costs of the proceedings and representation to the winning party. However, the refund is calculated on basis of statutory law, so it will not cover all of the winning party s costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies granted to a successful plaintiff encompass interim or permanent injunctions, destruction of infringing goods, drawing up of accounts and publication of the decision or judgment, as well as monetary remedies depending on the type of infringement. In case of mere unauthorised use of a patent, the plaintiff may demand appropriate monetary compensation, or double that compensation if the infringement was based on gross negligence or intent. In case of wilful patent infringement, the plaintiff may demand damages instead of appropriate monetary compensation, including the profits which it has lost or surrender of the profits gained by the defendant from the infringement. Disadvantages suffered as a result of wilful patent infringement, but not leading to monetary loss may also be claimed. 17. How are damages awards calculated? Is it possible to receive punitive damages? The appropriate monetary compensation is usually calculated based on equivalent licence fees. The profits realised by the defendant are calculated on the basis of the defendant s accounts. However, in most cases the monetary remedy consists of double the usual licence fee because, in general, the plaintiff Patents in Europe 2013/

48 Austria does not want to publish the profits it has lost. Punitive damages are not available in civil court proceedings, although publication of the judgment in several newspapers or magazines, which is usually very costly, is regarded as a form of punitive damages. In criminal patent infringement matters the infringer may be fined up to 360 times the daily rate of calculating fines or, in case of a professional infringement, sentenced to imprisonment of up to two years. As a private participant to the criminal case, the patent holder may also claim compensation, which may be regarded as punitive damages. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs, and under what circumstances will they do this? The first claim of a plaintiff in infringement proceedings is generally for discontinuance of the infringement. When a claim is successful the court must order a permanent injunction. However, in cases in which the infringed patent has already lapsed, so that the plaintiff s request will be directed to monetary remedies only (eg, compensation, damages), the court will primarily order, in case of proven infringement, the drawing up of accounts. It will also rule on the liquidated demand of the plaintiff. 19. How long does it take to obtain a decision at first instance, and is it possible to expedite this process? In main proceedings (ie, those directed towards a permanent injunction), a judgment might take several years. Provisional proceedings (which are usually launched by the plaintiff together with the main proceedings and are directed towards an interim injunction) usually lead to a first instance decision after several months to one year. There are few ways to expedite this process, because even in provisional proceedings there is usually at least one oral hearing, which may be postponed for different reasons (eg, at the defendant s request). 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 at first instance may appeal to the court of second instance (ie, the Vienna Upper Provincial Court). The second instance judgment must then contain a decision on whether an ordinary (regular) revision to the Supreme Court is admissible. Even if it is not admissible, the losing party might file an extraordinary revision, which need not be accepted by the Supreme Court, but rather may be rejected before trial. The timeframe for an appeal or revision is around two years for each. A first instance decision (of the Nullity Department) in nullification proceedings launched after the interruption of court proceedings takes around 18 months. Such decision may be appealed to the Supreme Patent and Trademark Board, whose final decision will take a similar time. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? There is no obligation to undertake mediation and/or arbitration before going to court. However, it is usual to try to settle the problem by negotiations. On the other hand, it is important for a patent holder to send a cease and desist letter to an infringer before launching a suit, because from receipt of such letter, patent infringement is regarded as wilful, which affects monetary remedies in infringement proceedings. In general, alternative dispute resolution (ADR) is not a realistic alternative to litigation because it is not usually prearranged between a patent holder and an infringer. Moreover, ADR decisions do not exclude an eventual court case. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The court is obliged to decide only on the preliminary questions of whether the patent is or was valid and whether it is or was effective against the plaintiff (eg, in case of a claimed right of prior use). The question of meritorious validity is to be solved by the Nullity Department in a nullification action. Given a valid patent, it is the court s task to decide whether infringement occurred, whereby the scope of protection is defined 46 Patents in Europe 2013/2014

49 Austria 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 above-mentioned criteria, it is not possible to state whether the courts are pro-patentee. If the Nullity Department s competence is passed to the Vienna Commercial Court in January 2014, it will have to decide on questions of validity as well as of infringement. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? To date, Austria has not signed the London Agreement. A legal amendment in 2009 cancelled the relevant passages of the law referring to translations into German of European patents issued in English or French. The amendment will come into force along with Austrian ratification of the London Agreement, and will have effect only on European patents granted after that date. At present, it appears that ratification has been postponed for several years. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Austrian Product Piracy Act strengthens the position of rights holders, in addition to the EU Regulation on Customs Action against Goods Suspected of Infringing Certain IP Rights. Goods seized by Customs on a granted application for action will be destroyed with the consent of the rights holder, provided that the importer (and alleged infringer) does not file an opposition within 10 days. Even if a rights holder has not applied for a customs action, its Austrian representative (eg, patent attorney) will be informed by Customs if goods are to be imported which clearly infringe an IP right. Patents in Europe 2013/

50 Contributing profiles Barger, Piso & Partner Barger, Piso & Partner Mahlerstraße 9 Vienna A-1010, Austria Tel Fax Web Peter Israiloff Partner office@bapipat.at After studying industrial technology, since 1969 Peter Israiloff has worked in the IP field. He holds an engineering 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 is a member of and Austrian contributor to the International Trademark Association. 48 Patents in Europe 2013/2014

51 Czech Republic Czech Republic By Michal Pospisil, PATENTSERVIS Praha, as 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 Prague Municipal Court has exclusive jurisdiction to enforce rights arising from European and national patents. Arbitration is available if both parties to the dispute agree to it, but mediation should be tried first. However, in light of the length and cost of court proceedings, it is advisable to enter into an agreement, such as a licence agreement, with the infringer wherever possible. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? As mentioned above, the court competent to hear patent infringement cases at first instance is the Prague Municipal Court, through a panel of three judges. The competent appellate court is the Prague High Court, also through a panel of three judges. An extraordinary remedy is available in the form of an appeal to the Supreme Court in Brno. However, the only appeals that may be filed to the Supreme Court are those: based on procedural issues; or in which the court finds that a new decision would have significant legal implications for other patent disputes. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Patent validity and patent infringement disputes are conducted separately. Where an infringement case also involves a validity claim, the court set to rule on the infringement will stall proceedings until a decision on validity is issued. However, this is not a legal requirement. 4. To what extent is cross-examination of witnesses permitted during proceedings? Witnesses may be cross-examined at the request of one of the parties and with the court s approval. The court may not allow such examination of witnesses if it considers that this would not help to clarify the matter at issue. Generally, in a lawsuit testimony can mean facilitating the presentation of the evidence. However, in patent cases it is of much less importance, because the documentary evidence (in which all relevant facts relating to the patent infringement are presented) usually prevails perhaps with the exception of trade secret violations. 5. What role can and do expert witnesses play in proceedings? It is more common in patent cases for the courts to admit evidence from expert opinions than through the examination of witnesses. Expert opinions can clarify the nature of the dispute in a field that judges do not fully grasp (eg, chemistry or genetics). Thus, an expert opinion that is written not only in professional, but also in accessible language will help the court which is otherwise unlikely to be able to distinguish between different technical solutions to understand the nature of the dispute and decide competently. 6. Is pre-trial discovery permitted? If so, to what extent? A preparatory hearing is compulsory under Patents in Europe 2013/

52 Czech Republic Czech law. During the hearing, the parties must describe in broad terms the evidence that they will be using and explain what that evidence will prove. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? Czech courts apply the doctrine of equivalents in interpreting the scope of patent protection. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? The law makes no distinction between the enforcement of individual kinds of patent. However, practice shows that in terms of prosecution, those relating to pharmaceuticals and plant protection compositions take the longest. Some inventions are not patentable at all, such as business methods and software. In this, Czech law is similar to that of other countries. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are not required to decide uniformly, except when: the appellate court orders the first instance court to do so as part of its review of the first instance judgment; or the Supreme Court rules accordingly during appeal proceedings. However, professional and scientific practitioners exert pressure on the courts to rule consistently in order to ensure the legal certainty of future disputes. It is obviously helpful in terms of the consistency of court opinions that only one court is competent to hear patent disputes for the whole Czech Republic. 10. Are there any restrictions on who parties can select to represent them in a dispute? Parties to a patent dispute need not be represented by solicitors or barristers before a court of either first instance or appeal: they may represent themselves (although this is extremely unusual). Patent attorneys can also represent the parties. However, any proceedings before the Supreme Court will involve a barrister. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Czech courts do not have to respect the opinions of courts from other countries, with the exception of decisions of the European Court of Justice. However, in practice, it is possible to submit a foreign court decision, which the Czech court may then be willing to consider. In addition, the Czech courts must respect foreign decisions on the basis of either an applicable international agreement or the principle of reciprocity for example, in the case of seizure or divorce although this rarely applies to patent disputes. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is impossible to delay proceedings unreasonably as only two or three hearings take place in a patent dispute. The first hearing is held during pre-trial proceedings, when the parties describe the evidence in broad terms, as discussed in Question 6 above. During the second hearing (the first on the merits), the parties can present their evidence; they can submit further evidence at a potential subsequent hearing only in response to evidence already presented. Essentially, proceedings can be delayed only if a witness, expert or lawyer is excused from a hearing, which is allowed only for a serious reason. If the court does not accept the reason presented as serious, it will proceed, even if the absentee is the legal representative of one of the parties. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A preliminary injunction may be issued in a patent dispute if requested by the plaintiff, especially when the patent violation poses a risk that would be irreparable later (ie, after a final court decision). The claimant should file an application for a preliminary injunction as quickly as possible after it discovers the infringement; otherwise, such interim measure will not be granted, as the court will consider 50 Patents in Europe 2013/2014

53 Czech Republic that there is no acute and dangerous violation. The advantages of a preliminary injunction are that: the court will issue its decision within seven days of receiving the application; and it must be complied with within three to 10 days. A disadvantage is that the applicant must pay a deposit of about 2,000, which will serve as compensation for damages if the infringement is not proven during the case on the merits. A preliminary injunction is usually valid until the decision on the merits becomes final. As part of a preliminary injunction, the court may order that evidence be secured (eg, goods produced following a procedure that violates the patent at issue) to be used in the main proceedings, if there is, for example, a risk that such evidence may be destroyed. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The losing party must pay the litigation costs of the successful party if the court rules accordingly (which is common). However, the court can award only such amount as is permitted by the relevant decree of the Ministry of Justice. In patent litigations, the court can award a maximum of about 1,000 for proceedings at both first and second instance. The decree also establishes compensation for court fees and the costs of presenting an expert opinion. Unfortunately, only a fraction of the costs is reimbursed. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The successful litigant may be awarded the costs incurred in connection with the dispute, as well as the damages requested in the legal action. However, it is up to the court to decide whether to award costs fully or only partially. As noted in Question 14 above, the court may not award more than what is allowed under the relevant decree of the Ministry of Justice. 16. What are the typical remedies granted to a successful plaintiff by the courts? In the author s opinion, the financial compensation awarded by the Czech courts for patent infringement is inadequate. According to special legislation on the enforcement of industrial property rights, the courts can award compensation for financial and nonpecuniary damages in the amount of: the usual licence fee where the defendant s conduct is unintentional; and twice the usual licence fee where the defendant was aware that its actions were harmful. Unfortunately, the courts rarely exercise this option, as they are reluctant to allow financial gain from a patent dispute, regardless of the type of damages caused. Thus, the courts award damages only if their amount is clearly proven and they were caused exclusively by the defendants actions, which is often impossible to prove conclusively. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Any party that causes damages is liable to indemnify for them, unless responsibility can be excluded for instance, under a claim of necessary defence. Any plaintiff claiming compensation for damages must prove that: the damage actually occurred; and it was caused by the activities of the defendant. Further, the amount must be provably calculated. The court will determine this, upon the plaintiff s application, on the basis of the so-called licence analogy. Thus (and as discussed in Question 16 above), where the damage is caused intentionally, the court may award compensation in the amount of up to twice the licence fee that is usual in the relevant business field. For unintentional damage, the court may award damages of up to the normal licence fee. In its decision, the court must take into account all relevant circumstances, such as loss of profits. However, compensation for damages in relation to industrial rights cannot include punitive damages. The plaintiff may apply only for adequate cash compensation (as well as non-cash compensation, such as an apology). It is extremely difficult to determine accurately the amount to apply for when claiming compensation for non-pecuniary damages. Patents in Europe 2013/

54 Czech Republic Unfortunately, the courts are reluctant to award large amounts of compensation. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If the complaint includes a request to restrain from wrongful conduct and if the court grants such permanent injunction, any subsequent violation may be sanctioned (even repeatedly) by seizure proceedings. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Patent infringement proceedings take about 18 months at first instance. Czech law provides no means to accelerate proceedings; it is possible, however, to ask the court to convene a hearing earlier than originally scheduled if the circumstances justify this. The average length of proceedings in administrative matters (ie, legal actions against a decision of the Industrial Property Office) is three years; it is not possible to expedite this process. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal against a first instance decision must be filed within 15 days of delivery of the judgment. If formal notice of the appeal only is filed by this date, it must be supplemented by the grounds on which the appeal is based within the timeframe specified by the appellate court. The appeal shall be decided by the High Court in Prague. The court decides as a panel of three judges. A decision of the High Court can be expected within about one year of filing. The court may: uphold the first instance decision; send the case back to the court of first instance for reconsideration, with the instruction that the court follow the legal opinion of the High Court; or issue a new decision itself (which is rare). 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? Parties to a patent dispute are under no obligation to undertake mediation or arbitration before bringing the case to court. The court, however, must invite the parties to try to negotiate a settlement prior to, or during, the hearings. The High Court may do so too before ruling on the case. If the parties agree to submit their dispute to arbitration, they must then respect the decision of the arbitrator(s), as it is judicially enforceable. Similarly, the parties can commence mediation proceedings by electing a mediator who will propose solutions to the dispute. However, the parties are not obliged to comply with such proposals. In any case, arbitration and mediation cannot be conducted in disputes that require a decision of the Industrial Property Office (eg, if patent revocation is claimed). 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Patent case law is relatively uniform in the Czech Republic compared to other areas of law. This may be because patent litigation is relatively rare in the Czech Republic, compared to trademark litigation, for instance. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Czech Republic has not acceded to the London Agreement on Translations and is unlikely to do so in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? A specialised court has been established to hear cases involving infringement of industrial property rights. The judges in that court are also in charge of the commercial judiciary. As at first instance, appeal proceedings cannot be expedited significantly. 52 Patents in Europe 2013/2014

55 Contributing profiles PATENTSERVIS Praha, as PATENTSERVIS Praha, as Na Podkovce 280/10 Prague 4, Czech Republic Tel Fax Web Michal Pospisil Supervisory board member Michal Pospisil is an attorney at law and a member of the supervisory board of PATENTSERVIS Praha, as. He graduated with an LLM from Charles University, Faculty of Law (1996) and holds a JD from the same university (2003). He also obtained an LLM from Metropolitan University Prague in international and regional relations in IP law in Lastly, he completed his PhD with West Bohemian University, Faculty of Law, in commercial and IP law in Mr Pospisil s areas of particular experience include IP law (especially trademarks) and commercial law. His practice includes both litigation and commercial advice in these areas. Patents in Europe 2013/

56 Denmark Denmark By Claus Elmeros and Louise Aagaard, Høiberg A/S 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In Denmark, a preliminary injunction is a fast and effective way of stopping infringing acts. Presently, proceedings to obtain a preliminary injunction can be initiated in the Bailiff s Court; however, due to a change in the legislation in future, the Maritime and Commercial Court will also be entitled to hear preliminary injunction cases. A preliminary injunction will be issued if the patentee can prove that the requested injunction relates to acts covered by its patent and it is probable that infringement will take place. If a preliminary injunction is issued, the 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. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Cases regarding preliminary injunctions are currently 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 2006 reform patent cases may be heard by the Maritime and Commercial Court; this has allowed that court to gain experience of patent cases. Cases at the Maritime and Commercial Court are usually heard by one legally qualified judge, assisted by two technically qualified judges. The technically qualified judges hearing patent cases all have solid experience in the patent field from either private practice or industry. As mentioned above, in future the Maritime and Commercial Court will also hear cases regarding preliminary injunctions, thus allowing these cases to benefit from the expertise of the specialised court. Decisions of the Maritime and Commercial Court may be appealed to the Supreme Court, which comprises only legally qualified judges with no special patent expertise. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The Maritime and Commercial Court deals with both validity and infringement, and such issues are usually handled in the same proceeding. Any party may request re-examination of a patent at the Danish Patent and Trademark Office (DKPTO), 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 DKPTO or the European Patent Office (EPO), 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 DKPTO. 4. To what extent is cross-examination of witnesses permitted during proceedings? During main proceedings, witnesses primarily 54 Patents in Europe 2013/2014

57 Denmark give testimony in oral form at an oral hearing. At the hearing, witnesses may be cross-examined by both parties. It is usually also possible for parties to submit statements by witnesses during the written proceedings. However, during written proceedings the other party is not generally allowed to examine the witnesses. Witnesses are frequently called to substantiate the existence and extent of infringement. 5. What role can and do expert witnesses play in proceedings? During proceedings at the Maritime and Commercial Court, the court may appoint impartial experts to be questioned during the proceedings. Experts will be appointed by the court only at the request of at least one of the parties. The experts will prepare a written report answering questions set by the parties. The questions must be concrete, clear, neutral and relevant, and approved by the court. Thus, questions relating directly to validity or infringement cannot be posed. The impartial expert may also be called to the oral hearing to answer further questions. The parties may suggest use of a particular expert, but the experts are ultimately appointed by the court. In general, it is not possible for the parties to present onesided technical expert statements. In contrast, during 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. 6. Is pre-trial discovery permitted? If so, to what extent? At the request of the patentee, the Bailiff s Court may undertake an investigation in order to ensure that there is evidence of infringement and/or the extent of infringement. This can be done only if it is rendered probable that infringement has taken place or will take place, and if there is reason to believe that evidence regarding the infringement can be found in the location to be investigated. The investigation may include all material presumed to be of relevance. If evidence of infringement is found, this may be seized. A request for investigation will be declined if it is presumed that the damage or inconvenience that would be inflicted is disproportionate to the 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. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Danish courts do apply a doctrine of equivalents. They start the analysis by identifying the core of the patent - according to the latest case law, this comprises the characteristics of the invention which the patent claims identify as significant. Products or methods containing the core of the patent may be considered infringing if they fall within the literal scope of the patent claims, except that one or more parts have been exchanged for technical equivalents obvious to the skilled person. Claim features limited due to prior art during examination proceedings may be interpreted narrowly. 8. How far are courts bound by previous decisions in cases that have covered similar issues? In Denmark, a court decision has legal binding effect only for that particular case. However, earlier court decisions may set a precedent for later cases and represent an important source of law. In Danish law, there is no clear principle regarding the extent to which a previous decision sets precedent; however, in general, Supreme Court decisions are considered to be of greater importance than other court rulings. 9. Are there any restrictions on who parties can select to represent them in a dispute? Only attorneys at law can represent clients in court disputes. Accordingly, patent attorneys, who usually have a technical background, cannot represent clients before the Danish courts. In practice, during patent disputes a patent attorney frequently works in close collaboration with the appointed attorney at law. 10. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In Denmark, there are few patent cases and many of these are settled out of court before the conclusion of court proceedings. Accordingly, the available Danish case law is Patents in Europe 2013/

58 Denmark 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 other Scandinavian countries. In matters regarding validity, the courts will also consider case law from the EPO Boards of Appeal. 11. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Since the 2006 court reform it has become more difficult to delay court proceedings. Patent disputes are generally heard by the Maritime and Commercial Court and, early in the proceedings, all time limits are fixed by the parties and the court. The timeframe for written preparation of the case and the date for the oral hearing are also fixed. Once these time limits have passed, the court may refuse to accept new evidence, allegations or claims in the absence of special reasons for example: it could not reasonably have been presented earlier; the other party may still be able to ensure its interests sufficiently; or a disproportionate loss for the party may arise. After the time limits have been fixed, requests for delays must be justified. 12. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are available in Denmark and are currently issued by the Bailiff s Court. It is expected that in future, cases regarding preliminary injunctions can also be heard by the Maritime and Commercial Court. The requirements for a preliminary injunction are that: it is probable that the acts to be prohibited infringe the rights of the patentee; it is likely that the acts will be performed; and the aim (ie, prevention of infringement) would be forfeited by waiting for a normal court case. The third requirement is always considered to be fulfilled in patent cases. The validity of the patent may be examined by the Bailiff s Court; however, if invalidity is asserted based on facts which have already been examined in relation to the patent, there is a strong presumption of validity. Even if no infringement has yet taken place, a preliminary injunction can still be obtained if an infringing act is likely to occur. 13. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of patent litigation are case dependent. The costs for preparation of the case depend on the difficulties in meeting the burden of proof of an infringement and on the extent of potential invalidity arguments. The costs for taking a case through to a first instance decision may be from 40,000 for a simple case to 450,000 for a complex pharmaceutical case. In main proceedings the costs for a court-appointed technical expert opinion will be at least 10,000, depending on the complexity of the case. 14. Is it possible for the successful party in a case to obtain costs from the losing party? The successful party may obtain its costs from the losing party. The courts are generally conservative when awarding costs and the costs awarded are typically less than the actual costs of the successful party. Court fees can be fully refunded, whereas costs for legal assistance from an attorney at law are refunded based on standard rates. Other justifiable costs may also be fully refunded, such as costs for court-appointed experts, expert reports and witness compensation. Patent attorney costs are normally not refunded. 15. What are the typical remedies granted to a successful plaintiff by the courts? Several different remedies for patent infringement are available in Denmark. An infringer must generally pay reasonable compensation for having used a patented invention, as well as compensation for additional damages. Both preliminary injunctions and permanent injunctions may be granted. The patentee may also 56 Patents in Europe 2013/2014

59 Denmark request the confiscation or destruction of infringing products or machines or production equipment, or the surrender of the infringing products. Penalties for purposeful infringement in the form of fines or even imprisonment are foreseen under Danish law, but rarely implemented. 16. How are damages awards calculated? Is it possible to obtain punitive damages? Reasonable compensation for having used a patented invention, as well as reasonable damages and reimbursement of any losses that the patentee has suffered because of the infringing act, must be rewarded irrespective of whether the infringing act took place in good or bad faith. To determine the amount of damages, issues such as lost revenue and the profits of the infringer are taken into account, as well as market disturbance, including estimated future loss of sales and loss of goodwill. The damages may also be cumulative, taking more issues into account. Compensation for having used the patented invention may be based on the licence fee that the patentee could reasonably have charged on the market. Punitive damages are not available in Denmark. 17. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is quite common for a successful party to obtain a permanent injunction. If the Bailiff s Court has issued a preliminary injunction, this can be made permanent by a decision in the main proceedings before the Maritime and Commercial Court. A permanent injunction can also be obtained directly after main proceedings at the Maritime and Commercial Court without a preceding preliminary injunction. If an injunction is granted, the 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 2006 court reform was designed to streamline patent cases and accelerate the process, and the courts now aim to conclude patent cases within one year. The latest statistics show that the average pendency of patent cases at the Maritime and Commercial Court in 2011 was 21 months. Proceedings may be stayed awaiting a decision from the DKPTO on a re-examination or from the EPO on an opposition. 19. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal usually take? In Denmark, any adverse first instance decision is subject to appeal. Decisions of the Maritime and Commercial Court are appealed directly to the Supreme Court, which is obliged to hear the appeal. Decisions of the Bailiff s Court are appealed to the High Court. The appeal proceedings usually take from one to two years. 20. In broad terms, how pro-patentee are the courts in your jurisdiction? Denmark has no split jurisdiction, so infringement and validity may be prosecuted in the same court proceedings. This system tends to reduce the likelihood of favouritism towards any party during main proceedings. However, the Bailiff s Court usually considers an issued patent to be valid unless new evidence to the contrary, which was not previously considered by the DKPTO, is presented. 21. Has your jurisdiction signed up to the London Agreement on Translations? Denmark is a party to the London Agreement. To validate a European patent in Denmark, the claims must be translated into Danish, while the description may be filed in English or Danish. However, a full translation into Danish may be required in relation to patent infringement proceedings if either the defendant or the court requests such translation. 22. Are there any other issues relating to the enforcement system in your country that you would like to raise? In Denmark, unlike in other European countries, it is possible for both third parties and patentees to request re-examination of a patent at any time. This provides a useful tool for testing the validity of a Danish patent or the Danish part of a European patent. Patents in Europe 2013/

60 Contributing profiles Høiberg A/S Høiberg A/S European Patent and Trademark Attorneys St Kongensgade 59 A, 1264 Copenhagen K, Denmark Tel Fax Web Claus Elmeros Partner Claus Elmeros is a partner and European patent attorney at Høiberg A/S, where he is head of the Aarhus office and chairman of the board of directors. After graduating in mechanical engineering from Aalborg University, Mr Elmeros started in the patent profession in 1990 as a patent examiner at the European Patent Office (EPO). Since 1995 he has been advising clients on almost all aspects of intellectual property, ranging from drafting of patent applications, freedomto-operate opinions, patent infringement assessments, validity assessments and opposition and appeal proceedings before the EPO as well as litigation support in Denmark and other countries. He is a member of the standing panel of technical judges at the Maritime and Commercial Court and regularly acts as the courtappointed technical expert in patent-related legal disputes. Louise Aagaard Partner lad@hoiberg.com 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 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. 58 Patents in Europe 2013/2014

61 Finland Finland By Petri Eskola, Backström & Co Attorneys 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent infringement suit can be filed with the Helsinki District Court, which has exclusive jurisdiction in patent matters at first instance. If the situation is urgent (eg, due to an imminent threat of patent infringement), an application for an injunction can be filed with the same court before filing a patent infringement suit. The court can rule on an ex parte injunction within a few days without hearing the opposing party, provided that sufficient grounds are presented by the patent holder. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? When hearing patent matters, the Helsinki District Court appoints two independent experts to assist with technical questions. The level of expertise of these court-appointed experts is high. The judges who officially decide the matter do not have in-depth technical skills. The situation is different at the appeal courts and the Supreme Court, where no court-appointed experts are used. At the appeal courts and the Supreme Court, patent cases are decided by panels of judges with purely legal backgrounds. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The general principle is to handle validity and infringement matters at the same time. This is based on a recommendation issued by the Helsinki District Court on January To what extent is cross-examination of witnesses permitted during proceedings? Cross-examination is permitted according to general procedural rules. Specific rules for patent matters do not exist. 5. What role can and do expert witnesses play in proceedings? Expert witnesses have traditionally played a key role in patent proceedings. The expert s role is usually to draft a written statement and subsequently to appear as a witness in the oral hearing. As a starting point, the parties have a right to appoint their expert witnesses freely. 6. Is pre-trial discovery permitted? If so, to what extent? The pre-trial discovery system is not used in Finland. However, a party can request that certain evidence and documentation be secured by a court order and enforced with the assistance of officials. The applicant must lodge security as stipulated in the special legislation covering such securing of evidence. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The local courts apply the doctrine of equivalents as stipulated by the European Patent Convention. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? It is hard to draw conclusions on this issue, since only a few patent matters are filed each month Patents in Europe 2013/

62 Finland and there is no extensive case law on different types of invention. In recent years most of the cases filed, for example, related to pharmaceutical patents, whereas business method or software patents have not been litigated. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Only Supreme Court decisions can be considered as binding case law. Since there is little Supreme Court precedent on patent matters, the parties also refer to appeal court decisions, even though such decisions cannot be considered legally binding. 10. Are there any restrictions on who parties can select to represent them in a dispute? There are no restrictions other than the conflict of interest stipulations under the local rules of the Finnish Bar Association. However, according to the procedural laws, the representative must have a law degree and be either a member of the Bar Association or a licensed court counsel. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Foreign decisions should not have decisive effect. However, since the Finnish patent legislation was drafted in cooperation with other Nordic countries, some decisions of other Nordic countries in particular from the supreme courts are frequently referred to by the Finnish courts. Other than the Nordic countries, however, decisions from other jurisdictions are not generally given significant weight in Finland. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? If the case does not involve urgent injunction procedures, the delay tactics are usually based on deadline extensions. During revocation or infringement proceedings, the parties are requested to file their briefs by a certain deadline set by the court. In such cases a party can request an extension to the deadline, provided that reasonable grounds to support such a request exist. The courts usually grant the extension if the requested additional time is not unreasonable. The opposing party has no way of stopping the extension as the courts do not usually seek the other party s opinion in respect of the requested extension. In order to avoid delays, the other party can notify the court of any suspected stalling and request that any extensions not be granted. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions may be granted in cases where infringement is likely to occur, taking into account the urgency of the matter and by weighing up the overall advantages and disadvantages of granting an injunction for each party. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of patent litigation may vary considerably depending, for example, on the field of the invention and issues in dispute. At first instance, the costs may range from 40,000 to 300, Is it possible for the successful party in a case to obtain costs from the losing party? The procedural rule is that the losing party compensates the winner s costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? The main remedies in an infringement situation are an injunction, reasonable compensation for the unauthorised use of the patented invention and compensation for damages. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Actual damages are based on the losses suffered by the patent holder which can be proven. Such losses include the loss of sales profits and costs that the infringement may have caused. Punitive damages are not available. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? 60 Patents in Europe 2013/2014

63 Finland One of the main remedies under the Patents Act is a permanent injunction for the infringer. If an infringement is confirmed to be occurring or to have occurred, a permanent injunction should be ordered. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Currently, the average time taken to obtain a first instance decision is around two years. Proceedings are rarely expedited. patent litigation forum, has been established and is due to commence work in late Under existing plans, an appeal against the IP court s decision can be lodged only with the Supreme Court, subject to granting of leave to appeal. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? In practice, the losing party always has a right to appeal. The appeal process takes approximately 12 to 18 months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? There is no obligation to arrange mediation before bringing a case before the court. At present, alternative dispute resolution does not appear to be a realistic alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? In the sense that patent invalidation cases seldom succeed, it could be argued that the courts are slightly pro-patentee; but in regard to infringement cases, the court tend to be neutral. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Finland has signed up to the London Agreement and it was ratified by Parliament on March Are there any other issues relating to the enforcement system in your country that you would like to raise? A specialist court for IP rights disputes, replacing the Helsinki District Court as a Patents in Europe 2013/

64 Contributing profiles Backström & Co Attorneys Backström & Co Attorneys Kasarmikatu 44 FI Helsinki, Finland Tel Fax Web Petri Eskola Partner petri.eskola@backstrom.fi Petri Eskola has wide experience in all IP matters and frequently advises clients on IP-related issues. He also represents clients in IP and general civil law litigation and arbitration. In addition, he advises on all major areas of business law, including contracts, corporate law, distributorship and competition. 62 Patents in Europe 2013/2014

65 France France By Caroline Casalonga, Casalonga Avocats 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? France is known for its very effective seizure procedure (saisie-contrefaçon), which allows patent holders to request, in ex parte proceedings, a seizure action at the defendant s place of business and any other place where the allegedly infringing products may be found or where the allegedly infringing process is carried on. The court generally authorises: the seizure of samples of the allegedly infringing products; a description of the allegedly infringing acts; photographs of the products or machines; and the seizure of any relevant documents (eg, invoices, orders and accounting documents). A seizure is conducted by a bailiff with the assistance of a patent attorney. Confidential information is normally retained by the bailiff and sorted afterwards under the court s supervision. The patent holder must file a complaint before the court within 30 days of the seizure. In addition, the court may grant a preliminary injunction against the use of the infringing products or processes within a very short timeframe usually between two weeks and three months, depending on the urgency of the matter. Preliminary injunctions in patent matters are usually granted only in cases where: the patent has been maintained following an opposition procedure or previous infringement action in which a counterclaim of invalidity had been raised; and there are clear infringing acts. An action on the merits involving validity, infringement and damages claims will take between 12 and 18 months at first instance. Damages granted without expertise or prior to the expertise being performed may be high. For instance, in 2012 the court ordered a company to pay 6 million in provisional damages for patent infringement. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases are heard by a single specialised IP court in Paris, both at first instance and on appeal. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The court handles validity and infringement claims together. 4. To what extent is cross-examination of witnesses permitted during proceedings? There is no cross-examination of witnesses under the French system, resulting in a relatively inexpensive and efficient procedure. 5. What role can and do expert witnesses play in proceedings? Each party may request expert witness opinions for the analysis of the allegedly infringing products or process. These opinions are not decisive to the proceedings. Expert witnesses may also be appointed by the court to advise on technical questions. If ordered by the court, such expert opinions will play a significant role in the proceedings and the court s decision. The court may also request the opinion of expert witnesses for the calculation of damages. Patents in Europe 2013/

66 France 6. Is pre-trial discovery permitted? If so, to what extent? There is no discovery under French law. However, as mentioned above, French law provides for infringement seizures that enable plaintiffs to obtain evidence of the infringement, as well as information on the origin and extent of the infringing acts. In addition, plaintiffs may ask the court to order the defendant to provide further evidence relating to the allegedly infringing acts and their origin. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? The French courts apply the doctrine of equivalents. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Business methods and software as such are not patentable in France, as in the rest of the European Union. Nevertheless, a patent relating to a computer-implemented invention in which a technical effect can be found is enforceable as any other patent before the courts. The same can be said of patents relating to biotech inventions. In both cases, evidence of infringement can be obtained through an infringement seizure authorised by the court, in order to obtain technical information from the premises of the allegedly infringing party. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? French courts are not bound by previous cases that have covered similar issues. This is a general principle of the French legal system. 10. Are there any restrictions on who parties can select to represent them in a dispute? Parties must be represented by a lawyer who is a member of the Paris Bar. The lawyer may be assisted by a patent attorney. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? French courts will not consider the reasoning of courts in other jurisdictions that have dealt with similar or identical cases. However, the Paris court with jurisdiction over patent cases generally follows the decisions of the European Patent Office (EPO). 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Once the court has scheduled hearings in a case, it is difficult for defendants to delay proceedings. However, defendants may try to do so by sending their briefs late. Plaintiffs can prevent them from doing so by always sending their briefs before the deadline set by the court. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions may be requested in ex parte or inter partes proceedings. In patent cases, preliminary injunctions are rarely granted in ex parte proceedings, which are reserved for cases of extreme urgency where the infringing acts are so detrimental that to allow them to continue would cause irreparable harm to the patent holder (eg, during temporary exhibitions or fairs). Preliminary injunctions are generally granted in cases where the patent has been maintained after an opposition procedure or a previous court case in which a counterclaim of invalidity had been raised. The infringement must be obvious. In ex parte proceedings, the decision is granted immediately by the judge. Inter partes proceedings take between one and three months. After the grant of the preliminary injunction order, the patent holder must file an action on the merits within 30 days. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of a patent infringement action include both validity and infringement claims. The costs depend on the type of patent, the amount of prior art cited and the number of exchanges between the parties. The average attorneys fees in a patent infringement and validity action range between 50,000 and 90,000 at first instance, if an infringement seizure has been performed. There are no 64 Patents in Europe 2013/2014

67 France court fees in France, resulting in comparatively cheap proceedings. 15. Is it possible for the successful party in a case to obtain costs from the losing party? French courts always order the losing party to bear at least part of the costs of the successful party. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies granted to a successful plaintiff are as follows: permanent injunction; destruction of the infringing products; destruction of the moulds and machines used for the manufacture of the infringing products; recall of the infringing products; publication of the decision or extracts of the decision in magazines and newspapers; damages; and reimbursement of part of the attorneys fees. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Since 2007 damages awards have been calculated in consideration of both the patent holder s lost profits and the infringer s profits. Accordingly, damages may be higher than the patent holder s lost profits if the infringer s profits are greater. Alternatively, damages may be determined on the basis of a royalty fee. In many cases, the court will base the determination of damages on lost profits when the patent holder uses the invention in France by manufacturing the patented product or using the patented process. Damages based on a royalty fee will be applied when the patent holder does not use the invention in France or merely imports the patented products into France. Punitive damages are prohibited under French law. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? In most cases, successful plaintiffs will obtain an order for permanent injunction from the first instance court. A permanent injunction is always obtained if the decision is final (ie, there is no appeal) or if the plaintiff succeeds on appeal. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? A decision on infringement and the validity of the patent at first instance takes between 12 and 18 months. In urgent cases, plaintiffs may obtain a decision on the merits within four to six months. The expedited procedure with a fixed date for oral pleadings should be limited to very straightforward cases, as the plaintiff may not submit evidence other than that submitted with the brief of summons. This expedited procedure is not recommended in patent cases; preliminary injunction requests should be preferred. 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? There are no restrictions on the circumstances in which a losing party may appeal a first instance decision may always be appealed. An appeal takes between 12 and 18 months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? The parties have no obligation to undertake any type of mediation or arbitration prior to bringing a case before the court. Alternative dispute resolution may be an option where the parties want to keep the decision confidential. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The courts tend to follow the decisions of the EPO. If a European patent has been maintained after opposition, the court will usually recognise the validity of the patent, unless more pertinent prior art is presented. 23. 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 Translations on July The agreement entered into force on May Patents in Europe 2013/

68 Contributing profiles Casalonga Avocats Casalonga Avocats 5/7 avenue Percier Paris, France Tel Fax Web Caroline Casalonga Partner c.casalonga@casalonga.com Caroline Casalonga is a French lawyer, who specialises in IP litigation. She represents technology companies in patent litigation and in litigation involving other forms of intellectual property. She has extensive experience in litigation before the French IP courts. She is very reactive and understands the business needs of clients. Her pleadings are clear and assertive. Ms Casalonga obtained her law degree from the University of Paris Assas in 1991 and an LLM from Cornell University in She was admitted to the Paris Bar in Ms Casalonga is a member of the International Association for the Protection of Intellectual Property, the European Patent Lawyer Association, the Licensing Executives Society and the International Trademark Association. 66 Patents in Europe 2013/2014

69 Germany Germany By Gottfried Schüll, COHAUSZ & FLORACK 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? The silver bullet is an infringement action on the merits to be filed with one of the German Ivy League courts for patent infringement. The choice of venue must be made in view of complexity of the case and time constraints. The big four patent infringement courts Dusseldorf, Mannheim, Hamburg and Munich (with Dusseldorf taking a clear lead) handle about 1,000 patent litigation actions every year. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Due to the extraordinarily high frequency of patent infringement actions. the chambers and senates of the competent German courts handle practically only patent infringement cases. Hence, the level of expertise in all technological areas, as well as the field of IP-related law, is outstanding across all levels of jurisdiction handling patent infringement actions. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Validity and infringement are handled separately in two court processes, both finalised by the X Senate of the Federal Court of Justice. The German infringement court process is still considerably faster than the validity court process whenever the measures taken to accelerate the validity proceedings seem to gain traction. Only if the patent asserted is likely to be invalidated due to lack of novelty in view of new facts will the infringement courts stay the proceedings until validity has been confirmed. 4. To what extent is cross-examination of witnesses permitted during proceedings? In practice, only court-appointed expert witnesses are cross-examined during proceedings. 5. What role can and do expert witnesses play in proceedings? Expert witnesses appointed by the parties themselves will be heard via written expert opinions. The Regional Court, as the first level of jurisdiction, rarely appoints expert witnesses itself. At second instance before the Higher Regional Court, expert witnesses are appointed frequently. Encouraging the parties to present expert witness reports by themselves seems to be part of the measures taken to accelerate the proceedings by the Federal Court of Justice. This deviates from past practice of appointing court experts on a regular basis. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery as known in UK and US proceedings does not exist in Germany. If there is a high likelihood of patent infringement but material evidence is unavailable, the patent owner may request inspection of the potential infringer s premises and/or infringing devices (eg, as exhibited at a trade fair. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? In principle, yes. In the course of EUwide harmonisation of jurisdiction, the Patents in Europe 2013/

70 Germany prerequisites for finding equivalent patent infringement have been tightened considerably, and accordingly it is rare that infringement is found based on the doctrine of equivalents. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? As the German infringement courts will accept a patent granted by the European Patent Office (EPO) as it stands, the validity of the patent will become an issue only in case of obvious invalidity based on new facts. The technological field as such could hardly be a reason to reconsider the validity of the patent granted. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Due to the high number of cases, rich precedent in the field of patent law is available in Germany. Some of this precedent builds the background for each individual case. In addition, previous decisions issued in other jurisdictions now have binding effect in Germany. 10. Are there any restrictions on who parties can select to represent them in a dispute? In patent infringement cases parties must be represented by attorneys at law who are members of the German Chamber of Lawyers. For validity proceedings, parties can be represented by either a patent attorney admitted at the German Chamber of Patent Lawyers or an attorney at law. In practice, in view of the legal and technical tasks to be dealt with, parties are represented by a team of attorneys at law and patent attorneys in both patent infringement and validity proceedings. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Yes, German courts are willing to consider the reasoning of courts in other jurisdictions but, of course, within the framework of German law. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The reasons for delaying infringement proceedings are very limited. Of practical relevance is only the delay of proceedings due to an obvious lack of validity in view of new facts. Depending on the venue, the complexity of the case may add some time to the schedule of the infringement proceedings. The Dusseldorf Regional Court has just established a third patent litigation chamber and the Dusseldorf Higher Regional Court is to open a further patent litigation senate soon. This should further accelerate proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Yes, it is possible to obtain preliminary injunctions, which are immediately enforceable. In practice, the patent owner must file a request for an injunction within four weeks of becoming aware of the patent infringement. Furthermore, both infringement and validity must be apparent. Validity can be assumed to be apparent if, for example, the patent has already been the subject of postgrant validity proceedings. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? About 3% of the value of the litigation (ie, the value that the patent owner ascribes to its claims) is generally a good guideline, with the minimum amount being around 50,000. These numbers are based on the statutory minimum fees under the Attorneys Remuneration Law. Depending on the circumstances, attorneys may ask for additional fees. The costs mentioned also include the relatively high 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 court fees are fully reimbursable. 16. What are the typical remedies granted to a successful plaintiff by the courts? The remedies granted in Germany to a 68 Patents in Europe 2013/2014

71 Germany successful plaintiff are the injunction claim and the claim to render accounts. At the same time, the court will decide whether the plaintiff is entitled to claim damages. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The courts have developed three ways to calculate damages: by analogy to a licence granted between reasonable parties; loss of profits by the patent owner; and profits of the patent infringer. In practice, a calculation based on royalty fees is the most common way to calculate damage awards. It is not possible to obtain punitive damages, at least not comparable to triple damages. The courts have confirmed elements in the damage calculation with moderate punitive effects. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If the German court confirms infringement and the patent is not obviously invalid based on new facts and, of course, the patent is in force - the court will always grant a permanent injunction. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? In case of infringement actions on the merits, the German Ivy League courts will render a decision as quickly as within six to 12 months, depending mainly on the venue. A decision based on a request for a preliminary injunction will be issued within a few days to six weeks. Expedition of this process is mainly possible based on the choice of venue. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party in a first instance case will always be granted the right to appeal. Even on appeal, the successful party may enforce the first instance decision if it issues a security bond to cover potential damages due to enforcement of a decision that may be revised on appeal. The infringement appeal typically takes 18 months to two years. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? In practice, the parties are not obliged to undertake any type of mediation or arbitration prior to bringing a case before the courts. In view of the number of cases, alternative dispute resolution is not seen as a popular alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Statistically, patentees win about 40% of all patent litigation actions filed in Germany. Another 40% of the complaints filed are dismissed. The remaining 20% of cases filed are stayed due to apparent validity issues. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Germany has signed up to the London Agreement on Translations. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The German patent litigation courts have the clear understanding that a patentee is entitled to protection for patents granted by either the EPO or the German Patent and Trademark Office. Accordingly, the courts not only are reasonably pro-patentee, but also apply strict measures to enforce injunction claims once granted. The German Patent Act qualifies patent infringement as a criminal act. Although criminal actions based on patent infringement are rare, patent infringers are not treated with kid gloves in Germany. Finally, it should be noted that German customs authorities are very cooperative in identifying patentinfringing goods and in seizing these goods. Patents in Europe 2013/

72 Contributing profiles COHAUSZ & FLORACK COHAUSZ & FLORACK Patent und Rechtsanwälte, Bleichstrasse 14 D Dusseldorf, Germany Tel Fax Web Gottfried Schüll Partner 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. 70 Patents in Europe 2013/2014

73 Greece Greece By Helen Papaconstantinou and Maria Athanassiadou, Dr Helen Papaconstantinou, John Filias and Associates 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 first and quickest defence against infringement is for the patent holder to apply for a temporary restraining order, which is granted if the petitioner shows that there exists a prima facie serious infringement as a matter of exceptional urgency. Such a request must be filed concurrently with a petition for injunction. If granted, the temporary restraining order is usually effective until the injunction hearing takes place. A petition for injunction is granted if the element of urgency is evident in the circumstances of the case. Within this framework, the patent holder may ask for both cessation of the infringing act and removal of the infringing products from the market. The patent owner has a right of information and is entitled to certain measures to preserve evidence. The next step is to initiate an action on the merits, which becomes statute barred: five years after the date on which the patent holder became aware of the infringement or damage and the name of the infringer; or in any case, 20 years after the date on which the infringement was committed. The patent owner may request compensation and moral damages. It may also claim payment of the profits derived from the infringing acts or payment of an amount equal to the value of a licence for the exploitation of the invention by the infringer. The court may order the destruction of the infringing products. In order to ensure effective protection of their rights, patent holders should adopt prevention strategies involving efficient monitoring systems. This can be achieved by filing a general request with the Central Customs Directorate, which will notify rights holders or their representatives upon intercepting suspected infringing goods. Patent holders must then institute court proceedings within 10 days, which may be extended by another 10 days. A simplified procedure is also available, under which the customs authorities can order the immediate destruction of counterfeit goods, without the need for court proceedings but with the agreement of the rights holder and the holder or owner of the infringing goods. The agreement of the owner of the goods is presumed if it does not explicitly oppose their destruction within 10 days. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? There are two specialised Community trademark and patent courts in Greece, one based in Athens and one in Thessaloniki. These courts are staffed with judges who received special IP training during their studies at the National School of Judges before their appointment to the bench. Nonetheless, despite their improved knowledge of IP matters in comparison to the past, these judges still have no technical background. This means that the courts do not have the necessary level of expertise when it comes to complex technical issues. Consequently, expert opinions may play a key role in the outcome of a case. Patents in Europe 2013/

74 Greece 3. How do your country s courts deal with validity and infringement? The recognition of a patent, or part thereof, as null can be made through either an independent legal action or a counterclaim. Although the law provides for separate procedures before the competent civil courts for actions challenging the validity of a patent and infringement actions, invalidity objections or nullity actions are among the most commonly used defences raised during both preliminary and main patent infringement proceedings. 4. To what extent is cross-examination of witnesses permitted during proceedings? Each party is entitled to present three sworn affidavits and one witness. Cross-examination of witnesses by the lawyers representing the parties is permitted. Each party s witness is expected to testify on all facts of the case. Each party s lawyer may cross-examine the other party s witness, but the court may also address questions to the witnesses. 5. What role can and do expert witnesses play in proceedings? Expert witnesses may testify orally before the court or by submission of an affidavit. Given that patent judges have no technical background, the opinions of expert witnesses may prove decisive to the outcome of the case where complex issues are involved, even though under the Code of Legal Proceedings these testimonies are not binding on the court s decisions. 6. Is pre-trial discovery permitted? If so, to what extent? Greek law does not provide for pre-trial discovery. Patent holders may take measures for preserving evidence and ask the infringer for information, such as invoices or the amount of products that have been distributed, but only within the framework of a trial. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? Greek courts apply the doctrine of equivalents whereby, if the invention relates to a process for the manufacture of a product, each product of the same nature is presumed to have been manufactured according to the protected process. However, case law does not address this matter in great detail. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Certain rights, such as software and business methods, are exempt from protection under Greek patent law, even though they are considered protectable in other jurisdictions. However, the main obstacle to the effective enforcement of certain patent rights is the judges lack of technical knowledge and the paucity of case law in complex technical fields. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are not bound by precedential court cases. However, they take into account the established case law and tend to stay in line with it. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers (attorneys at law) who are members of a Greek bar association are entitled to represent parties before the civil courts, without any restriction. Because of the complexity of most patent disputes, litigants should seek the advice of lawyers who specialise in IP protection. (There is no qualification system for patent attorneys in Greece; thus, patent attorneys even holders of the European Patent Office (EPO) qualification may not represent parties before the Greek courts, unless they are also qualified lawyers.) 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Although the courts are not bound by decisions from other jurisdictions, they seem to take such decisions into consideration where the cases are similar. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? 72 Patents in Europe 2013/2014

75 Greece In addition to the delay caused by the backlog of cases pending before the courts, the Greek judicial system regrettably allows defendants to delay proceedings significantly. The courts tend to grant defendants first request of postponement as a matter of routine. In addition, since there is no limitation to the number of times that a hearing can be postponed, defendants usually request and obtain several subsequent postponements. Plaintiffs have the right to object to such postponements; however, the courts are rather lenient insofar as delays are concerned. The appointment of technical experts, which can be made upon the defendant s request, can also cause delays of 18 months or more. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A petitioner can obtain a preliminary injunction, provided that it shows that there is a prima facie serious infringement as a matter of urgency. Irrespective of the decision in the preliminary proceedings, the petitioner must also file a main infringement action. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of taking a case through to a decision at first instance are difficult to estimate, since they depend on the complexity of the case, the length of the proceedings, the involvement of experts and possible translation costs. That said, costs in Greece are considerably lower than those in other EU countries. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Greece has recently amended the relevant legal provisions to ensure that court fees are reimbursed to the successful party. Thus, the losing party must pay the legal fees (including attorneys fees) of the winning party, provided that the latter has raised such a claim in the action. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies granted to a successful plaintiff are: a temporary or permanent injunction; compensation for damages; and seizure and/or destruction of the infringing goods. In many cases, the court may threaten the losing party with a monetary penalty for every breach of the judgment. The court may also order publication of a summary of the decision in newspapers. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Patent holders may request compensation and moral damages. For both remedies, the plaintiff must prove the infringer s negligence. Compensation claims can be calculated on the basis of: the actual loss; the defendant s profits; or the licence analogy. However, it is often difficult to prove the exact amount of damage or enrichment, as patent holders can rarely prove the exact number of products distributed and the damage caused by these. Where it is impossible to find sufficient evidence with regard to the compensation claim, patent holders may ask the infringer for information, including invoices or the number of products that have been distributed. The amount of compensation obviously depends on the facts of the case. Unfortunately, no data is available on the outcome of compensation actions in Greece. In addition to the compensation claim, patent holders may request moral damages, the amount of which is difficult to estimate. The courts rarely accept claims for moral damages over 45, How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions are granted by the courts only if the petitioner has shown that there exists serious infringement as well as novelty and inventiveness (in the latter two cases, if the defendant has raised related objections). Patents in Europe 2013/

76 Greece 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The main shortcoming of patent litigation in Greece is the delays involved. Court hearings are commonly scheduled more than a year after the petition is filed and can be postponed ex officio several times. Even if the first hearing takes place without postponements, the decision will be issued at the earliest six to 10 months after the hearing. A first instance decision will thus take at least 18 months from filing to be issued. Most commonly, though, the case is postponed at least once and the proceedings take two to four years. In addition, in case of patent nullity actions, the courts often order a court expert opinion on the technical issues of the case, which may delay proceeding by at least 18 months. To obtain a swift decision, it is therefore crucial that action against the infringer is taken urgently upon discovering the infringement by filing a petition for preliminary injunction. 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? All final decisions of the first instance courts are open to appeal: within 30 days of notification to the losing party in the case of Greek nationals; and within 60 days of notification if the losing party is a non-national. If no official notification has taken place, the decision may be appealed within three years of publication. The losing party has the right to contest all aspects of the judgment that relate to legal issues or incorrect findings of fact. However, new facts cannot be brought before the Court of Appeal. This right to appeal applies to main infringement proceedings only; decisions in preliminary injunction proceedings cannot be appealed. Appeal proceedings take about 18 months on average, although they may take even longer in some circumstances. alternative dispute resolution a realistic alternative to litigation? The Code of Civil Procedure provides that the parties may choose to attempt to reach an outof-court settlement. The parties also have the option of undertaking mediation/arbitration procedures. However, this is a route which has not yet been sufficiently tested. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The lack of official data does not allow for a precise reply. However, experience shows a pro-patentee tendency among the Greek courts. Nullification of validated European patents, compared to national patents, is rare, since European patents are granted after substantial examination and matters of novelty and/or inventive step have already been dealt with by the EPO. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Greece has not acceded to the London Agreement and is unlikely to become a party to it in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The recent agreement on the specialised Unified Patent Court with exclusive jurisdiction for litigation relating to European patents and unitary patents will bring major changes to patent practice throughout Europe. It remains to be seen whether and to what extent the new practices will change the IP landscape in Greece. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the court? Is 74 Patents in Europe 2013/2014

77 Contributing profiles Dr Helen Papaconstantinou, John Filias and Associates Dr Helen Papaconstantinou, John Filias and Associates 2 Coumbari Street, Kolonaki Athens, Greece Tel Fax Web Helen G Papaconstantinou Senior partner mail@hplaw.biz Helen Papaconstantinou is senior partner of the firm Dr Helen Papaconstantinou, John Filias & Associates and head of the Law Office Dr PD Theodorides Dr HG Papaconstantinou (established in 1920 by Dr Theodorides). She graduated from the University of Athens and earned a doctorate from the University of Berlin. She has also held an academic teaching position in the IP sector at the University of Athens for several years. Under her direction, the firm has evolved into one of the leading IP law firms in Greece. Dr Papaconstantinou is recognised as a leading expert in the IP field and has distinguished herself in patent and trademark litigation on behalf of major companies in several sectors, including pharmaceuticals, fashion, food and service providers. She is an active member of numerous professional organisations. Maria Athanassiadou Associate m_athanasiadou@hplaw.biz Maria Athanassiadou graduated from the University of Athens with a law degree and is admitted to practise before the Supreme Court and the Council of State. She joined the firm in 1994 and was admitted to the Athens Bar in With extensive experience of almost 20 years in a broad spectrum of IP matters, she focuses her practice on all aspects of patents, supplementary protection certificates, utility models and industrial designs. She is an active member of the International Trademark Association and contributes to various trademark and patent publications. She speaks English, Spanish, French and German. Patents in Europe 2013/

78 Iceland Iceland By Gunnar Örn Hardarson and Asdis Magnusdottir, Arnason Faktor 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? An important remedy for a patent holder in Iceland is the possibility of obtaining a preliminary injunction against the allegedly infringing act. Such an injunction is not granted by courts, but by a government authority, the district magistrate. This action is relatively swift and a ruling can be issued within a few weeks. However, a preliminary injunction must be verified by the court; an application to the court must be filed within one week of issuance of the injunction. The rights holder must also, before obtaining an injunction, submit a security deposit to indemnify any financial damage caused by the injunction. The district magistrate decides on the amount of the deposit. 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 Collection of Evidence Act (53/2006), under certain circumstances a rights holder can obtain the assistance of the district magistrate 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. The rights holder must, before seeking assistance from the district magistrate, submit a security deposit to cover the cost of collecting the evidence and indemnify for any possible financial damage. The amount of the deposit is decided by the district magistrate. Remedies are also available under customs laws. If there is a belief that infringing products are being imported, such products can be held by Customs at the request of the rights holder. In such cases the rights holder must submit an indemnity to cover any financial damage caused if it turns out that the seizure was not justified. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? There are no specialist patent courts in Iceland. Patent cases, like all other cases, are tried before general courts, although cases involving patents are all tried by the Reykjavik District Court. To date, the number of patent cases tried before the Icelandic courts has been very low, although it is increasing. Therefore, judicial expertise is very limited. However, the courts can call on experts to assist them in specific cases, such as patent cases. Such experts need not be lawyers, but are usually professionals in the relevant technical field. Another option is to appoint outside assessors to give an expert assessment regarding certain questions or uncertainties in the case at hand. 3. How do your 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 76 Patents in Europe 2013/2014

79 Iceland 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 of other witnesses, expert assessments and their statements before the court, written materials and other substantial materials. 5. What role can and do expert witnesses play in proceedings? There are general rules with which parties must comply in order to have a courtappointed expert assessor. An expert assessor can answer questions that pertain to, for example, the facts in a given case. The role of an expert assessor is limited so as to not overlap with the role of the judge that is, the assessor cannot answer general questions that pertain to the interpretation of the law or questions, as these are within the role of the judge. The judge then decides the evidential value of an expert assessment. In general, an expert assessment is usually considered strong evidence with regard to the questions that it covers. 6. Is pre-trial discovery permitted? If so, to what extent? The pre-trial discovery phase, as it is known in the United States, does not exist in Iceland. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? According to Icelandic law, the scope of the patent is based on the patent claims. The claims are constructed with reference to the description given in the patent. In general, the courts will, to some extent, use the doctrine of equivalents in resolving infringement matters. However, limited court precedent means that detailed rules are not available. Moreover, as Iceland has been a European Patent Convention (EPC) member state since 2004, it is bound by the Protocol on the Interpretation of Article 65 of the EPC, although the protocol is not directly applicable in Icelandic law. To date, the courts have indicated that they will exercise the doctrine of equivalents, but the full extent of how much they will use the protocol and the doctrine of equivalents remains to be seen. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Since November , the patent legislation has been fully harmonised with the EPC. Icelandic law has also been amended to comply with the EU Directive on the Legal Protection of Biotechnology Inventions. Therefore, there are no provisions in Icelandic law that would act as an obstacle to the enforcement of European patents in this respect. Again, however, there is little case law in the field and it is therefore difficult to predict the possible outcome in such cases. Regarding computer software-related inventions, to date the practice of the Icelandic Patent Office has been to follow European Patent Office practice. Consequently, one would expect that this would also apply to the courts. 9. How far are courts bound by previous decisions in cases that have covered similar issues? In general, the courts look to precedent if the cases in question are similar and there have been no changes in the laws. Supreme Court precedent is of particular importance in this respect. 10. Are there any restrictions on who parties can select to represent them in a dispute? Although parties can represent themselves in the Icelandic courts, this rarely happens, and particularly not in complex matters such as those involving patents. In order to represent others in court, one must be an attorney at law specially legalised before the Icelandic courts. Patent attorneys (patent agents) are not allowed to represent others in court. Patents in Europe 2013/

80 Iceland 11. Are courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the Icelandic courts are willing to consider reasoning and precedents given by courts in the other Nordic countries. This also applies in the field of IP rights. Court decisions from other countries might also be relevant, particularly if they are related to the interpretation of international agreements to which Iceland is a party. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Parties to a court proceeding cannot delay a case in accordance with their own will, even if they both agree. The judge should deny pointless extensions of terms to ensure that the case will be resolved quickly and effectively. This rule prevents parties from delaying a procedure either on their own or in agreement with the other party. 13. Is it possible to obtain preliminary 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; or 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 in having the injunction granted and the interests of the alleged infringer in pursuing its actions. The rights holder must, before obtaining an injunction, submit a security deposit to indemnify for any financial damage that may be caused by the injunction. If an injunction is granted, a case will immediately follow in the courts in order to verify the preliminary injunction (such case must be filed within one week of the issuance of the preliminary injunction). The alleged infringement will be dealt with in the same case. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? This is difficult to estimate. The number of cases has been very limited in the past and those that have arisen have not been very complex. To give some guidelines, the cost is likely to be from 20,000 to 30,000 to take a non-complex patent case through the first instance court. 15. Is it possible for the successful party in a case to obtain costs from the losing party? According to the laws on court procedures, a party can make a claim to obtain costs from the losing party. The judge can decide to award costs; in general, if a party loses a case in all major aspects, it will bear the costs. The decision regarding the amount of costs to be paid is within the powers of the judge. Usually the costs awarded by the court will cover only part of the total litigation costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? It is hard to make general assumptions regarding typical remedies, due to the limited number of cases tried before the Icelandic courts. The Patent Act allows for reasonable compensation for exploitation of the patent, as well as damages for possible further injury. For more serious infringement where intent is proven, punishment by fine is provided for, and in very serious circumstances an infringer can be imprisoned for up to three months. Furthermore, the Patent Act allows for measures to prevent further infringements of patent rights, such as by demanding that a certain object be destroyed or altered in order to prevent repeated infringement of the patent in question. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Punitive damages are not possible; rather, only damages meant to cover harm done can 78 Patents in Europe 2013/2014

81 Iceland be awarded. It is up to the party claiming damages to prove the harm or costs incurred by the infringement. It is for the judge to decide the amount when deciding reasonable compensation for exploitation of the patent. It is likely that the court will take into account agreements in general within the field in question, such as licence agreements. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Again, it is difficult to make general assumptions due to the limited number of precedents at hand. However, in general, injunctions are considered to be an important and effective legal remedy for rights holders in Iceland. The limited practice in Iceland has been in line with the view in the other Nordic countries in this regard. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? It takes from six to 12 months to complete a case at first instance a substantial part of the time can be used to obtain an expert assessment if requested. A request for an expert assessment therefore usually delays a final decision in the case. There is a special procedure before the courts for cases requiring quick resolution. However, this procedure is generally not available in a typical infringement case. An IPrelated matter might fall under the category of cases dealt with through this special procedure if the matter relates directly to a decision of government authorities. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal from the district courts to the Supreme Court is possible. The criteria for granting an appeal are not strict, but relate mainly to the minimum amount claimed if the claim involves a certain amount of money or the estimation of the overall interests at stake. The minimum amount is around 2,000. An appeal must be lodged within three months of a court decision of first instance. The appeal process takes about six to eight months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? It is of course possible to solve cases through arbitration in Iceland. However, arbitration is rarely used in IP matters and is not recommended as a realistic alternative, due to the lack of experienced arbitrators in such cases in Iceland. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? It is difficult to categorise Icelandic courts in respect of how pro-patentee they might be, primarily due to the low number of cases brought before the courts. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Iceland was one of the signatory states to the London Agreement and the agreement took effect in Iceland on May In fact, the Patent Regulation was amended as early as 2001 in line with the London Agreement, so from that time only the translation of claims into Icelandic has been required. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The general issue of concern in Iceland in relation to IP enforcement, and in particular patent enforcement, is the courts lack of experience in dealing with such cases. Therefore, it is difficult to predict a likely outcome and uncertainty is high. The rules on proof are not well defined in Icelandic law and practice relating to patent infringement and invalidity. This is mainly due to the lack of court precedent. The basic rule is that the burden of proof regarding infringement lies with the party alleging the infringement. The judge then decides, in accordance with general rules on proof in Iceland, whether the facts have been proven. However, there are special rules regarding Patents in Europe 2013/

82 Iceland the burden of proof in an infringement case involving process patents. If the alleged infringer makes the same product as the process patent covers, it has the burden of showing that the product is not made with the patented process. In cases involving patent invalidity, the party alleging invalidity has the burden of proving that to be the case. Here again it is within the general role of the judge to decide whether the claim has been proven. In addition, it is important to emphasise that the Icelandic patent laws have been amended to comply with the EPC. It remains to be seen to what extent the Icelandic courts will look to court precedents in relation to the EPC. 80 Patents in Europe 2013/2014

83 Contributing profiles Arnason Faktor Arnason Faktor Gudridarstig 2-4 IS-113 Reykjavik, Iceland Tel Fax Web Gunnar Örn Hardarson Managing director and partner goh@arnasonfaktor.is Gunnar Örn Hardarson is a European patent attorney, and has a BSc in mechanical engineering and an ML degree. After more than 25 years in the IP field, he has extensive industry and private practice experience. His practice focuses on drafting and prosecution in the mechanical field, opinion work, infringements, appeals and litigation support. Mr Hardarson is a member of various international organisations including the International Federation of Intellectual Property Attorneys, the International Trademark Association (INTA), the Union of European Practitioners in Intellectual Property (UNION), the International Association for the Protection of Intellectual Property (AIPII) and the Institute of Professional Representatives before the European Patent Office (epi). Asdis Magnusdottir Attorney at law and partner am@arnasonfaktor.is Asdis Magnusdottir is an attorney at law with more than 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 IP consulting in general, as well as dispute resolution and litigation. She is a member of various international organisations, including INTA, the European Communities Trademark Association, AIPPI, UNION and epi. Patents in Europe 2013/

84 Italy Italy By Rossella Solveni and Giuseppe Mercurio, Rapisardi Intellectual Property 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In urgent cases the following preliminary remedies are available to the patent owner: Seizure an order to seize products, tools and production plants, books of account and invoices and advertising materials. Description an order to inspect products, production plants, books of account, advertising and any associated documents in order to collect documentary evidence of the infringement and the extent thereof. Injunction an order to cease the manufacture, trade and use of the infringing items or to remove the infringing items from the marketplace. In order to seek compensation for damages caused by the infringement, the patent owner should start a proceeding on the merits. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? A patent owner can expect a high level of expertise from the Italian IP courts. In Italy, IP civil litigation is handled by 12 specialised IP courts (Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice). Although the judges do not have specific technical backgrounds, during the trial the judge may appoint an expert to deal with technical issues. In addition, each party may appoint a technical expert, who can exchange both oral and written opinions with the judge s expert. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Patent validity and infringement issues can be, and usually are, handled together in the same proceeding before the same court. In both infringement and invalidity proceedings technical issues are dealt with by the courtappointed expert. 4. To what extent is cross-examination of witnesses permitted during proceedings? In Italy, patent cases are largely based on written evidence. Witness examination is permitted at the request of the interested party and is authorised by the judge on a case-by-case basis. Witnesses can be heard only in relation to specific queries previously submitted and approved by the court, subject to evaluation of the relevance and admissibility of those queries. Although witnesses are not cross-examined, in addition to the submitted queries the court may ask them to provide further clarification in respect of the circumstances on which the relevant queries are based. 5. What role can and do expert witnesses play in proceedings? Expert opinions are frequently filed by the parties to support their technical arguments. There are no restrictions regarding the use of expert evidence. In patent cases the experts appointed by the parties participate actively by filing the relevant technical briefs and documents with the court-appointed expert. 6. Is pre-trial discovery permitted? If so, to what extent? 82 Patents in Europe 2013/2014

85 Italy Pre-trial discovery is not permitted. The 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 granted ex 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. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Business methods, software and biotechnology patents could be more difficult to enforce, particularly in interim measures cases. Due to the complexity of the underlying technical scientific issues, the judge usually requests an expert witness to draft technical advice in order to grant such measure. Accordingly, the proceedings can often take more time than patent cases in other technical fields. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Italian courts are not bound by decisions rendered in previous similar cases, but they can certainly consider them. Precedents set by the most important courts (Milan, Turin, Rome and Naples) have some influence on the other IP courts. However, at the same time the various IP courts can take divergent positions on complex technical issues, particularly in infringement cases, creating conflicting lines of reasoning that a patent holder must take into account when choosing the venue. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers admitted to practise and enrolled in the Italian Bar Association can represent parties in an Italian dispute. The parties must grant a written power of attorney. In general, in patent litigation the parties designate a lawyer and, if the judge appoints an expert witness, also an expert specialised in the relevant technical field to liaise with the official expert. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? In general, the reasoning and decisions of courts in other jurisdictions have little influence in Italy; the Italian courts tend to be independent. Nevertheless, mostly with regard to interim measures, if the European Patent Office or a foreign court repeals the patent (or a corresponding foreign patent), the Italian court will take the relevant decision into consideration when assessing the applicant s likelihood of success on the merits. Patents in Europe 2013/

86 Italy 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? A defendant may delay proceedings each time it files a new request with its defence briefs (eg, by claiming invalidity of the plaintiff s patent within an infringement action). However, if it is proven that the defence is groundless, the judge will take this into account. In particular, should the losing party stay in proceedings in bad faith or with gross negligence, it will have to bear all relevant costs and can be ordered by the judge to pay damages to the other party pursuant to Article 96 of the Code of Civil Procedure. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? The IP Code provides a wide range of interim remedies: an injunction to cease the infringing activities; a penalty for non-compliance with the injunction; seizure of the infringing products and the means of manufacturing them, as well as evidence of infringement; and publication of the interim decision in one or more newspapers or trade magazines. The prerequisites of any interim remedy are the existence of a danger in delay and a prima facie case. The danger in delay requirement means that the claimant must prove that the activity of the alleged infringer will cause irreparable harm before the issuing of a first instance decision. The prima facie case requirement means that the claimant must prove that it is allowed to enforce its alleged rights and that there are good reasons to believe that such rights are being infringed by the defendant. Interim measures are usually granted after the court has heard both parties, but may also be granted ex parte where the claimant can prove that the defendant s knowledge of the application or any delay in ruling may seriously affect the enforceability and effectiveness of the interim measure. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The overall cost of patent litigation is significantly influenced by the complexity of the case and of the issues involved. On average, the costs of interim proceedings may vary from 25,000 to 35,000, and the costs of proceedings on the merits from 75,000 to 100,000, up to a first instance decision. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The winning party is usually entitled to recover part of the costs incurred from the losing party. Recoverable costs include court costs, lawyer fees and expert fees. Recoverable costs usually amount to around 30% of the total costs incurred. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies granted to a successful plaintiff in a patent infringement action are: a permanent injunction to cease the manufacture and sale of the infringing products; an order to withdraw the infringing products from the market or to deliver them to the patent holder a penalty used in case the infringer does not comply promptly with any measure ordered by the court; compensation for damages; and publication of an abstract of the decision in one or more newspapers or trade magazines. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The criteria to determine damages for patent infringement are set out in Article 125 of the IP Code as follows: an amount equal to the lost profits of the patent owner; and 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. 84 Patents in Europe 2013/2014

87 Italy 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is quite common for courts to grant permanent injunctions in IP rights infringement proceedings. An injunction can also be ordered against any intermediate that had a part in the proceedings. When issuing a permanent injunction, the judge may also fix a fine for each subsequent violation of the order, as well as for any delay in compliance. There are no specific provisions requiring conditions for granting permanent injunctions. However, unlike preliminary injunctions, permanent injunctions cannot be granted if the patent application is still pending. Moreover, courts tend to be reluctant to grant this measure when a patent is near to expiry. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? First instance proceedings on the merits may last as long as three to four years, depending on the complexity of the case at hand. If the relevant conditions are met, an application for interim measures before and during the pending proceedings on the merits may expedite the process. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? A first instance decision in patent proceedings can usually be appealed by the losing party before the IP Division of the Court of Appeal within one month of notification of the judgment (or six months if the judgment has not been served). However, the Court of Appeal carries out a preliminary evaluation as to the admissibility of the appeal and may reject it if it is deemed inadmissible or apparently ungrounded. The appeal proceedings usually take between two and three years. Occasionally the Court of Appeal reconsiders the technical issues that were examined during the first instance proceedings and orders a supplementary expert; in such case, the duration of the proceedings may be significantly longer. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? The parties are not obliged to undertake mediation or arbitration before bringing a case before the courts. However, mediation is available as a possible alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Italian courts are motivated to assess and uphold the rights of patent owners. This has been particularly so in recent years, with the creation of 12 IP courts with highly qualified judges and the issue of the new IP Code. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Italian government has not signed the London Agreement and has made no announcements regarding its position on this matter. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The limited number of specialised IP courts allows for a fairly homogeneous and predictable ruling pattern, with only limited jurisprudential differences among the various IP judges. It is usually possible to choose a specific competent court in which to start an IP action. The selected court can be in either the place where the defendant is located or one of the places where the infringement took place. For example, if the infringed item is sold across the whole Italian market, the plaintiff can in principle choose any of the relevant IP courts. Furthermore, one of the most relevant issues in the Italian IP system is the possibility to apply for interim measures and commence proceedings on the merits on the basis of a patent application. Patents in Europe 2013/

88 Contributing profiles Rapisardi Intellectual Property Rapisardi Intellectual Property Via Serbelloni Milan, Italy Tel Fax Web Rossella Solveni Attorney at law Rossella Solveni, attorney at law and member of the Milan Bar Association, has been with Rapisardi Intellectual Property since 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 internetrelated issues. She is fluent in Italian, English and French. Giuseppe Mercurio Patent attorney Giuseppe Mercurio, nuclear engineer and European and Italian patent attorney, joined Rapisardi Intellectual Property in 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. 86 Patents in Europe 2013/2014

89 Netherlands Netherlands By Peter Claassen, Martin Hemmer and Eliëtte Vaal, AKD Advocaten & Notarissen 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In the Netherlands, an effective system of short notice proceedings is in place which makes it possible to obtain an injunction within four to eight weeks. Under the EU IP Enforcement Directive (2004/48/EC), the option to obtain an ex parte injunction was introduced into the Dutch legal system. However, short notice proceedings and ex parte proceedings are relatively rare with regard to 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 District Court of the Hague provides for accelerated proceedings on the merits of the case (the VRO regime ) in patent infringements. This procedure follows a pre-set schedule. Although this procedure has some limitations, it is highly effective because it normally leads to a verdict within one year. In a VRO regime, the plaintiff must be aware that all the grounds for the claim, together with the evidence supporting it, must be presented to the defendant on the date when the case is introduced in court. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases are dealt with at first instance by a specialised chamber of the District Court of the Hague. The level of expertise of the judges is therefore high. Judgments of the District Court of the Hague can be appealed to the Court of Appeal of the Hague (together, the Hague patent courts ). After the appeal proceedings, appeal on cassation may be instituted with the Dutch Supreme Court, but only with regard to issues of law. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Dutch courts are competent to deal with validity and infringement together. In practice, in most patent infringement cases the defendant will invoke the validity of the patent involved as a counterclaim. 4. To what extent is cross-examination of witnesses permitted during proceedings? In the Netherlands, it is possible to file a request to initiate witness examinations before the start of legal proceedings. Crossexamination is possible in standard proceedings on the merits of the case. In short notice proceedings, cross-examination is not possible. 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 an opinion of an expert appointed by the court before the start of legal proceedings. During the proceedings experts can be heard on the initiative of the court and on the request of the parties. These can be experts appointed by the courts, or an expert testifying on behalf of a party. In accelerated proceedings on the merits of the case there is only limited room for hearing experts (testifying on behalf of a party) during the scheduled pleadings. 6. Is pre-trial discovery permitted? If so, to what extent? Patents in Europe 2013/

90 Netherlands Since the implementation of the Enforcement Directive the court can allow preliminary measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Such measures may include detailed description, with or without the taking of samples, or physical seizure of the infringing goods, and, in appropriate cases, the materials and tools used in the production and/or distribution of these goods and the documents relating thereto. Normally these measures are taken without the allegedly infringing party being heard. However, the applicant will be given access to the obtained information or materials only after the other party has been heard by the court. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? Yes, Dutch courts apply the function way result test to assess whether an implementation of the invention should be considered equivalent. 8. Are certain patent rights (eg. those relating to business methods, software and biotechnology) more difficult to enforce than others? Under the Dutch Patent Act 1995, two types of patent exist: traditional inventions and processes. In as far as inventions and processes qualify as patentable no difference exists in the scope of protection and enforceability. It should be noted that business matters and software as such are not patentable under the Patent Act. 9. How far are courts bound by previous decisions in cases that have covered similar issues? The Dutch courts are not formally bound by previous decisions in cases which cover similar issues. However, all patent cases are dealt with at first instance by the District Court of the Hague and on appeal by the Court of Appeal of the Hague. Since the same courts deal with all patent litigation, it is highly unusual that similar issues are treated differently. Having said that, judges of the Hague patent courts regularly speak at conferences and expressed on these occasions that the Hague patent courts follows with great interest the developments in the UK and German patent courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? The Rules of Civil Procedure demand that both the plaintiff and the defendant are represented by a lawyer admitted to the Bar. Given the often technical nature of patent litigation the lawyers are usually assisted by patent agents who have a statutory right to speak on behalf of the plaintiff or the defendant during the oral hearings. The only exception from the obligation to be represented by a lawyer admitted to the bar lies with the defendant in summary proceedings - the defendant is allowed to defend himself and can bring in other advisers. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Hague patent courts certainly consider the reasoning of courts in other jurisdictions that have dealt with similar matters. It is a well-known fact that historically, the UK and German patent courts have used a different strategy to determine the scope of protection of a patent granted under the European Patent Convention. The UK approach construed a literal interpretation of the claims, while the German courts focused on the subject matter of the invention. In the Netherlands, the underlying reasoning of the invention was leading in determining the scope of protection of the invention. The Protocol on the Interpretation of Article 69 of the European Patent Convention made changes to both the UK and German approach. Article 69 determines that patents should not be interpreted as meaning that the extent of the protection is to be understood as that defined by the strict, literal meaning of the wording used in the claims nor should it be taken to mean that the claims serve only as a guideline. It determines that it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent owner with a reasonable degree of legal certainty for third parties. Next to that, the description and drawings of the patent (together with the 88 Patents in Europe 2013/2014

91 Netherlands history of the granting procedure) can help to resolve ambiguity found in the claims. The Dutch courts apply the protocol and keep track of developments in the United Kingdom and Germany closely. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The vast majority of patent cases are summary proceedings and accelerated proceedings. The Hague patent courts operate the VRO regime very strictly. At the start of the case the court issues a timetable to which the parties must adhere. The court does not allow deviations from this timetable. As a consequence, defendants do not have the opportunity to delay proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary measures such as an injunction and seizure of evidence can be obtained. An injunction can be obtained if an urgent interest is present. In the Netherlands, an urgent interest is presupposed to be present in the first year. Over the last four years very 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 obtain an order for the seizure of goods suspected of infringing a patent are regularly issued by the Hague courts. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? Is it possible for the successful party in a case to obtain costs from the losing party? The costs of patent litigation consist of two components: attorneys fees and the fee of the patent agents. In relatively simple cases the costs vary between 50,000 and 150,000. In pharmaceutical and biotechnical cases the costs of litigation easily go up to between 250,000 and 800, Is it possible for the successful party in a case to obtain costs from the losing party? The judgment holds an executable title with regard to the costs of litigation. The winning party obtains a money order, which can be executed easily. 16. What are the typical remedies granted to a successful plaintiff by the courts? In patent cases the typical remedies are an injunction and the distribution of earned profits or compensation of damage inflicted on the patent holder. All court orders are on pain of serious penalties, easily enforceable and therefore effective. 17. How are damages awards calculated? Is it possible to obtain punitive damages? In accordance with international treaties (eg, the Agreement on Trade-Related Aspects of IP Rights), the infringer has to pay the patent holder damages adequate to compensate for the injury that the patent holder has suffered because of an infringement of a patent right. This applies only to infringers which knowingly, or with reasonable grounds to know, engaged in infringing activity. Under Dutch law the right to compensate for damages and the right to obtain the surrender of profits cannot accumulate. The patent holder has a right to make a choice between distribution of earned profits or compensation for inflicted damages. In order to be able to make this choice, the court will order the infringing party to provide a full account of all relevant income realised with 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 compensation of damages. The surrender of profits is calculated by calculating the net or gross profits (depending on the claim) made by the sale of the infringing products by the infringing party. The court may also order the infringer to pay the rights holder s expenses, which include appropriate attorneys fees even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity. Sometimes, surrender of profits is considered to be punitive damages. Next to that, no punitive damages can be obtained. Patents in Europe 2013/

92 Netherlands 18. How common is it for courts to grant permanent injunctions to successful plaintiffs, and under what circumstances will they do this? Permanent injunctions are regularly issued by the courts for the purpose of cessation of infringement of a patent right. Courts can hand down a permanent injunction on the condition that it is claimed by the patent holder or a party authorised by the patent holder. 19. How long does it take to obtain a decision at first instance, and is it possible to expedite this process? A normal proceeding on the merits takes about 18 months to two years before a judgment is rendered. The proceeding is initiated if a writ of summons is served containing the arguments and claims of the plaintiff. Thereafter, the defendant files a statement of defence and possible counterclaims. Based on these written documents, the court decides whether additional written briefs may be exchanged to explain the arguments and claims further, or whether parties have to explain their arguments, claims and counterclaims in an oral hearing. Then, after six weeks the court renders its final judgment. Parties can expedite this proceeding if they allow the other party only limited extensions in the exchange of briefs. The party initiating proceedings on the merits has the option to choose for the VRO regime by requesting the court to apply this proceeding before it initiates the proceeding by serving the writ. The court then pre-schedules the data to serve the writ, file the briefs and schedules the oral hearing. After this decision parties no longer have the opportunity to extend the terms. To this type of proceedings, special procedural rules apply. The accelerated proceeding is characterised by the fact that parties have to file all their legal arguments and exhibits at the earliest opportunity. In the VRO regime the plaintiff can trust that it will obtain a judgment between nine and 12 months after the writ was filed. 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 Court of Appeal of the Hague can review disputes. Parties are competent to file an appeal within three months after the first instance court renders judgment. An appeal regularly takes about 18 months. There is no separate accelerated proceeding for patent cases on appeal. Nevertheless, parties can request the court to expedite the appeal proceedings. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? Under Dutch law, the parties are not obliged to undertake any type of mediation and or arbitration. The Patent Act 1995 does not mention alternative dispute resolution and grants the authority to declare a patent invalid to the court only. Nevertheless, parties can always agree on alternative dispute resolution. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? In the Netherlands, the courts do often nullify patents. The courts find a balance in determining the scope of protection of the rights of the patentee. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The Netherlands has signed up to the London Agreement. The Netherlands falls under the Type 2 jurisdictions as it does not have English, French or German as an official language. The Netherlands has selected English as its language for translation but requires translation of the claims into Dutch. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Netherlands is one of the 25 member states participating in the new European patent system (unitary patent, language regime and Unified Patent Court). The implementation of the system, through the entering into force of the agreement and the application of the regulations, is planned for April Patents in Europe 2013/2014

93 Contributing profiles AKD Advocaten & Notarissen AKD Advocaten & Notarissen Bijster 1, 4817 HX Breda, Postbus ES Breda, The Netherlands Tel Fax Web Peter Claassen Attorney at law 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 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 of the legal aspects of brand development, parallel trading and drafting of IP agreements. His clients include both nationally and internationally renowned companies. Mr Claassen chairs both the IP and technology practice group and the retail and consumer products branch group, and is a member of leading organisations such as the International Trademark Association and MARQUES. He regularly teaches on trademark and patent law, and lectures at national and international seminars. Martin Hemmer Attorney at law mhemmer@akd.nl Martin Hemmer graduated in law from Radboud University Nijmegen in 2002, having spent some time studying at Montpellier 1 University. His studies focused on IP rights. Mr Hemmer joined AKD as a lawyer in As a member of the IP and technology practice group, he handles a variety of legal cases concerning breaches of IP rights affecting trademarks, copyright and patents. He has also pursued cases in the field of media law, relating particularly to unlawful publications. Another aspect of his work focuses on IP-related agreements, such as licensing contracts and research and development agreements between businesses or groups of companies. Mr Hemmer leads courses and regularly publishes and lectures on intellectual property. He is a member of several professional organisations, including the Benelux Association for Trademark and Design Law and the European Communities Trademark Association. Eliëtte Vaal Attorney at law evaal@akd.nl Eliëtte Vaal joined the IP and technology practice group in October 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. Patents in Europe 2013/

94 Norway Norway By Rune Nordengen, Bull & Co Advokatfirma AS 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? Cases concerning patent infringement must be brought before the ordinary courts in Norway. A preliminary injunction is the fastest and most effective way of stopping infringing acts. The conditions for obtaining a preliminary injunction are described below in Question 13. Once a preliminary injunction has been obtained, it must be followed by main proceedings. Main proceedings involving patents are generally brought directly before: the district court with jurisdiction over the area where the infringer is based; or the court with jurisdiction over the area in which the damage originated, or in which its effect occurred or may occur. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Norway has no specialised patent courts. Professional judges are educated and trained in law and rarely have any technical expertise. However, if requested by one of the parties for the proper conduct of the case, the court shall appoint lay judges, who may be experts. In patent cases it is usual for one or both parties to request the appointment of judges with special technical knowledge relevant to the case and/or expertise related to the patent system. The Oslo City Court is the mandatory venue for cases involving patent invalidity claims. Consequently, that court is also the venue for most Norwegian patent infringement cases. Many professional judges of that court are therefore highly experienced in patent cases. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The starting point is that these two cases are separate. The defendant may, however, bring counterclaims for example, a claim for invalidity against the claimant and request that the cases be joined. A prerequisite to joining an invalidity case with an infringement case is that the court be the correct venue for one of the claims. As discussed above, a claim for invalidity must be brought before the Oslo City Court. Consequently, if as is often the case invalidity is raised as a counterclaim, the plaintiff in the invalidity case can request that the two cases be joined, but only before the Oslo City Court. A request to join an infringement case and an invalidity case is usually accepted. 4. To what extent is cross-examination of witnesses permitted during proceedings? Witnesses give oral testimony. The witness should normally provide a continuous account of all or certain parts of the facts of the case, before more detailed questions are asked. Written statements made for the purpose of the case may be presented as evidence if the parties have the opportunity to examine the person who has made the statement. Crossexamination of witnesses is thus permitted during the proceedings. 5. What role can and do expert witnesses play in proceedings? Expert witnesses play an important role, as 92 Patents in Europe 2013/2014

95 Norway patent cases often involve complex technical assessments. Professional judges and attorneys will not usually possess a formal technical/ scientific education and expert witnesses can thus offer valuable help and insight into specialist areas. Expert witnesses may be appointed by the court itself and the parties may call witnesses to give expert testimony. It is common for the parties to call expert witnesses. An expert witness may attend the hearing throughout and may be allowed to ask questions to parties, witnesses and experts. 6. Is pre-trial discovery permitted? If so, to what extent? Before submission of the writ of summons, a party may request that evidence be secured by judicial examination of parties and witnesses, and by providing access to and inspecting real evidence. A petition to secure evidence shall, as a rule, be submitted to the court before which a lawsuit will subsequently be brought. In order to succeed in an action to secure evidence, such evidence must be significant to a dispute to which the petitioner may become a party or intervener. There must also be a clear risk that the evidence would be either lost or considerably impaired, or other reasons why it is particularly important to obtain access to the evidence before a lawsuit is instigated. The petitioner shall cover expenses incurred by its opponents in this regard, but may later claim costs from the opponent in a subsequent court case if the evidence thus secured is used in a trial. After a writ of summons is submitted, the parties must ensure that the factual basis of the case is properly and completely explained. The parties must provide such accounts and present such evidence as is necessary to fulfil this duty; they must give testimony and grant access to anything that may constitute evidence in the legal proceedings. All parties must disclose the existence of important evidence of which they are aware, even if such evidence is not in their possession and if they have reason to believe that their opponent is unaware of it. This applies irrespective of whether such evidence favours their case. A party or witness may refuse to provide access to evidence that cannot be made available without revealing trade or business secrets. The court may nevertheless order the disclosure of such evidence if, after balancing the relevant interests, the court finds this necessary. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? The Supreme Court confirmed in 2009 what had been claimed in legal theory namely, that the doctrine of equivalents exists in Norway. The criteria for applying the doctrine are that: the allegedly infringing object solve the same problem as the patented invention; the modifications be obvious to the skilled person; and the allegedly infringing object be made not using free available techniques. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? To the author s knowledge, no specific rights are more difficult to enforce than others. The assessment depends on the strength of the individual patent. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Courts are not formally bound by previous decisions. However, judgments in similar cases, especially judgments of higher courts in particular, the Supreme Court are followed in practice. In assessing the question of invalidity, the courts have full power of judicial review. However, in practice the Norwegian courts exercise restraint when reviewing of the opinion of the Norwegian Industrial Property Office. 10. Are there any restrictions on whom parties can select to represent them in a dispute? The parties must select an attorney at law to represent them before the courts. The appointed attorney usually cooperates closely with a patent attorney, as well as with other experts. Patents in Europe 2013/

96 Norway 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The courts are willing to consider the reasoning of courts in other jurisdictions, but they do not feel bound by decisions in individual cases. The courts assess the individual merit of the decisions from other jurisdictions. Decisions are then taken based on an assessment of the facts of the Norwegian case. It is common for the courts in Norway to reach a conclusion that differs from that of courts in other jurisdictions in similar cases. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is difficult to delay proceedings. The courts must schedule a case within six months of the date of submission of the writ of summons. The case may be scheduled later than six months only if special circumstances make it necessary. District courts usually manage to schedule cases within the specified timeframe. However, processing times at the appeal courts are significantly longer, due to a lack of capacity. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? The court may grant a preliminary injunction if the claim in respect of which the petition for a preliminary injunction is made and the basis for security are proven on a balance of probabilities. The court will grant a temporary injunction if either: the defendant s conduct makes it necessary to secure the claim provisionally, as the action or execution of the claim would otherwise be considerably impeded; or the court finds it necessary to establish a temporary arrangement in relation to a disputed legal issue in order to avert considerable loss or inconvenience. Further, a preliminary injunction cannot be granted if the loss or inconvenience to the defendant would be clearly disproportionate to the interests of the petitioner in the preliminary injunction being granted. The court has some discretion in assessing whether an injunction shall be granted. If the court finds that delay poses a risk, it may grant a preliminary injunction even if the petitioner s claim is not proven. The court may decide that a preliminary injunction shall become effective and executed only if the petitioner provides security determined by the court, to cover any compensation to the defendant for which the petitioner may eventually be found liable. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? In the author s experience, the legal fees for each side of a full patent trial before a court of first instance will often amount to between Nkr750,000 and Nkr1.5 million, sometimes even more. The costs of other experts and advisers are additional. The cost is, of course, dependent on the complexity of the case, the amount of evidence to consider and the need for consultations and assistance from expert advisers and witnesses. If a case involves both an infringement and invalidity claim that may be joined in one hearing, the costs may be somewhat higher although, as the technical difficulties are essentially the same, it is cost efficient to join the cases. A case for a preliminary injunction will amount to approximately the same as an ordinary court case if a full oral hearing is required. In addition to legal fees, the parties will be required to pay court fees and the fees of the expert lay judges. Court fees are not high, but expert lay judges normally command the same hourly rates as legal counsel and expert consultants. 15. Is it possible for the successful party in a case to obtain costs from the losing party? In most cases the winning party will be awarded all costs. The losing party may consequently end up paying all costs on both sides, as well as the court fees and the fees of the lay judges. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies in a patent infringement case are an injunction order (ie, ordering the infringer to stop the infringing actions) and damages. 94 Patents in Europe 2013/2014

97 Norway 17. How are damages awards calculated? Is it possible to obtain punitive damages? The main rule for calculating damages/ compensation is that damages shall provide compensation for the exploitation of someone else s property. The amount is calculated using one of two methods either the licence fee (royalty) approach or the loss of sales approach. The patent holder may also claim additional damages beyond compensation for exploitation, provided that it can prove additional losses, such as increased marketing or sales costs. Further, the court may apply two different rules for limiting or modifying the compensation based on minor blame or mitigating circumstances (eg, where the infringed acted with care and in good faith). The court may not award punitive damages. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? The court will grant permanent injunctions to successful plaintiffs. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? According to the Civil Proceedings Act, a hearing shall be scheduled within six months of the filing of a writ of summons. After the the hearing has concluded, the court should issue its decision within four weeks, although in more complex cases (typically, patent cases) the court usually needs more time. It is difficult to expedite the process. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? The losing party in a first instance case usually has the right to appeal. An appeal against a judgment in an asset claim shall not be referred for hearing without leave of the court of appeal if the value of the subject matter of the appeal is less than Nkr125,000. This limitation is seldom problematic in patent cases, because the enforcement of a patent often relates to higher values, and because enforcement of a patent right also has a value beyond the monetary value of the damages claim. An appellate court may also refuse leave to appeal a judgment if it is clear that the appeal will be unsuccessful. The application of this right for the appeal court to refuse leave is limited. The appeal courts are bound by the same rules as those described under Question 19 above. However, processing times are currently longer than the six-month rule. Decisions should not be expected within one year of filing the appeal. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? Mediation is not mandatory. However, the Dispute Act especially mentions that the parties to a dispute may agree to out-of-court mediation and/or mediation before the courts. Alternative dispute resolution may be a realistic alternative, but this depends on the facts of the case and the willingness of the parties. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The author s experience is that the courts assessment depends on the strength of the individual patent and is usually quite balanced. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Norway has not signed the London Agreement on Translations and is unlikely to do so in the near future. Patents in Europe 2013/

98 Contributing profiles Bull & Co Advokatfirma AS Bull & Co Advokatfirma AS Observatoriegt 1B, PB 2583 Solli 0203 Oslo, Norway Tel Fax Web Rune Nordengen Senior associate Rune Nordengen specialises in IP and general commercial law, focusing on patents, trademarks marketing and copyright. He obtained his cand jur from the University of Oslo and his LLM from the University of Leicester in He acts for a number of Norwegian and international companies on questions of IP rights and marketing law, as well as providing general legal advice. His clients include household-name brand, as well as pharmaceutical companies. He has broad experience in pursuing infringements of IP rights. Mr Nordengen has litigation experience - especially in the areas of patent, trademark and marketing law - before all Norwegian courts, including the Supreme Court. He is a member of the Norwegian Bar Association and several professional associations, such as the Norwegian group of the International Association for the Protection of Intellectual Property. 96 Patents in Europe 2013/2014

99 Poland Poland By Krystyna Szczepanowska-Kozlowska, DLA Piper Wiater spk 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In the event of an infringement, a patent holder may file its claims before a civil court. Requests for preliminary injunctions based on alleged infringement may also be brought before civil courts. The patent holder may also file an application for custom actions under the EU Customs Regulation (1383/2003). Custom actions involve suspending the release of or detaining goods suspected of infringing a patent when these goods are imported into Poland (as a part of the European Economic Area) for the first time. The holder of a senior European patent or supplementary protection certificate may file with the Polish Patent Office either: an opposition against a junior patent; or a motion for invalidation of such 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? Patent infringement cases are heard by the ordinary courts. The judges in these courts have no technical education. If specialised knowledge is required, it is common practice for a court to appoint independent experts to submit written or oral opinions. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Patent infringement and validity cases are heard by different authorities. Patent infringement cases are heard by the civil courts (a district court at first instance and a court of appeal at second instance). The parties can also file an appeal of last resort (cassation) with the Supreme Court under certain conditions. Patent invalidation cases are heard by the Litigation Division of the Polish Patent Office. The office s decisions may be appealed before the administrative courts. 4. To what extent is cross-examination of witnesses permitted during proceedings? Cross-examination of witnesses is not regulated under the Code of Civil Procedure. In practice, the courts ask general questions regarding the witnesses knowledge of the facts of the case. The witnesses subsequently respond to the detailed questions of the parties representatives. 5. What role can and do expert witnesses play in proceedings? The role of an expert is to explain the technical aspects of an invention and the allegedly infringing product or method. In practice, the court will rely on the opinion of an expert witness even though the assessment of infringement is its domain. An expert opinion is usually provided in written form, but the expert may subsequently be questioned by the court to provide clarification on his opinion. An expert is appointed by the court from either a list of court experts held by the district courts or among the community of wellqualified specialists in the relevant field (including research or scientific institutes). The parties may put forward experts Patents in Europe 2013/

100 Poland names, but the court is not bound by these suggestions. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is permitted under Polish law both against the alleged infringer and in certain circumstances against third parties. The scope of information is limited to information on: the origin of the infringing goods; the distribution network of the infringing goods; the names and addresses of manufacturers and suppliers; and the amount and price of the goods that were manufactured, sold or introduced onto the market. A request for pre-trial disclosure of this information may be submitted either before filing a lawsuit or during the course of the patent infringement proceedings. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? Under Polish law, the scope of the protection sought is determined by the claims contained in the patent specification. The patent specification and drawings may be used to interpret the claims. The question of whether the extent of patent protection is limited to the literal wording of the patent claims remains open. Usually, judges in infringement proceedings focus on the scope of the claims to determine whether a violation of the patent has occurred. Recently, the Polish courts have tended to take into account elements that are equivalent to elements specified in a claim when determining the protection conferred. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? The Polish Patent Office is still opposed to software-implemented inventions. Consequently, securing protection for such inventions or enforcing such rights may be difficult in Poland. Such patents are often the subject of invalidation proceedings. Under Polish law, schemes, rules and methods for doing business are not regarded as inventions. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? Previous judgments of Polish courts covering similar issues are not binding on the civil courts. In practice, the judges may be influenced by, or willing to consider, the reasoning of other courts. In particular, the civil courts may be influenced by case law consisting of general principles established by the courts of appeal and the Supreme Court or the Supreme Administrative Court. 10. Are there any restrictions on whom parties can select to represent them in a dispute? In patent infringement proceedings before civil courts, the rules of representation are the same as in ordinary civil proceedings namely, a party may be represented by a legal attorney, an employee (in the case of legal persons) or a family member, as well as by a patent attorney. In proceedings before the Supreme Court and the Constitutional Tribunal, only a legal attorney can represent a party. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Since the Polish courts have not yet acquired substantive expertise in patent matters, they are keen to consider both EU directives and the patent case law of the EU member states, but within the framework of Polish law. Court decisions from other jurisdictions may also be important where the dispute involves the interpretation of international agreements to which Poland is a party. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The possibilities for delaying a case are limited, since Polish court procedures are designed to keep the parties in check. During proceedings the court may request that the parties file their pleadings and motions for evidence by a certain deadline. Once these 98 Patents in Europe 2013/2014

101 Poland deadlines have passed, the court may not accept new claims, allegations or evidence, unless the filing party proves that special reasons exist to accept such claims, allegations or evidence. A defendant can try to delay proceedings by: filing objections against experts and their opinions or reports; requesting the appointment of a new expert or panel of experts; filing documents and new evidence at the last minute; or requesting adjournment of the hearing. The plaintiff may only oppose such motions of the defendant. In practice, when infringement proceedings are instigated, the alleged infringer immediately files a motion with the Polish Patent Office for invalidation of the patent. If the alleged infringer claims that the patent in question is invalid, the civil court may suspend the infringement proceedings until the invalidation case is concluded. However, a decision on the suspension of proceedings is not compulsory and should be justified by its purpose. The practice of the Polish courts in this regard is inconsistent. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? It is possible to obtain preliminary injunctions either before proceedings on the merits are instituted or during such proceedings. A patent holder can initiate preliminary injunction proceedings by filing an application in order to secure the claims that it intends to establish in subsequent ordinary proceedings. The patent holder will be entitled to a preliminary injunction only if it can show that its claims are credible, and that it has a legal interest in obtaining the injunction. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? It is difficult to predict the total costs of a case, which include court fees and the remuneration of a legal representative. The costs will vary depending on the total value and complexity of the case. The maximum court fee for a lawsuit is PLN100,000 (approximately 25,000). This fee accounts for 5% of the value of the dispute; however, it cannot be lower than PLN30 (approximately 7.50). An application for an injunction filed on its own prior to submission of the lawsuit is subject to a fee of PLN100 (approximately 25). 15. Is it possible for the successful party in a case to obtain costs from the losing party? In general, the losing party is ordered to pay the costs of the proceedings. These include court fees and legal costs. Court fees vary depending on the litigation value of the case. In practice, the amount of costs awarded by the court is far lower than the actual costs of the proceedings. The minimum rate for cases in which the value of the subject matter is PLN200,000 (around 50,000) or higher totals PLN7,200 (about 1,800). The costs of the legal representatives may not exceed the value of the subject matter or more than six times the minimum rate described above. For this reason, the maximum legal costs that can be awarded for a case whose value is PLN200,000 or higher totals PLN43,200 (approximately 10,800). 16. What are the typical remedies granted to a successful plaintiff by the courts? The patent holder may apply for the following: cessation of infringement; surrender of unlawfully obtained profits; compensation for damages; publication of the judgment; reasonable compensation; and disposal of unlawfully manufactured or marketed goods. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damage is regarded as the difference between the actual economic situation of the patent holder and the economic situation that it would potentially have been in if the infringement had not occurred. Damages can be calculated on the basis of the amount of damage caused or on the basis of a licence fee or other reasonable fee that Patents in Europe 2013/

102 Poland would have been paid to use the patent at issue under authorisation. Punitive damages cannot be awarded under Polish law. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? The courts will grant a permanent injunction if the patent holder applies for such an injunction in ordinary proceedings and the conditions for granting the injunction are met. The courts will grant an injunction if they are satisfied, with sufficient evidence, that patent infringement has occurred, or that there is a risk that an infringement may occur. The courts will reject an application for a permanent injunction if the interests of the patent holder can be safeguarded in a different way. It is worth mentioning that the court will hear the case in camera unless any dues for patent infringement (including damages) are claimed by the patent holder. Oral hearings are exceptional. Accordingly, it is usually easy to obtain an injunction in the Polish courts. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? While there are no rules governing the length of time in which a decision at first instance should be issued, in practice it takes two to three years. The delay depends on the court hearing the case and on the number of cases pending before that court. While it is not possible to expedite the process, the procedural strategy of the claimant, including the absence of any redundant motions, may help to speed up examination of the case by the court. 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? Each party may lodge an appeal against a judgment passed by a court of first instance. The appeal must be lodged by the specified deadline (ie, within two weeks of receiving the judgment together with its justification) and a court fee must be paid. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? Parties are not obliged to undertake any type of mediation or arbitration before bringing a case before the courts. Under the current legal framework, the patent holder may (but need not) request that the defendant cease the infringement voluntarily. This letter is treated as evidence of the plaintiff s goodwill to settle the case amicably. Alternative dispute resolution is not a realistic alternative to litigation. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Poland is governed by the constitutional principle of the system of justice, according to which the courts are independent. The principle of a court s independence means, among other things, that the court remains impartial in relation to the participants in the proceedings. However, the author s experience shows that the courts respect IP rights and adjudicate in accordance with patent holders requests if an infringement claim is justified. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Poland has not ratified or signed the London Agreement on Translations. As far as the author is aware, the Polish government is not planning to sign the agreement, so it is unlikely that it will be enforced in Poland in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Plans are afoot to establish a specialised patent court in the near future. Such a court would arguably improve the quality of decisions issued in patent cases and speed up the litigation process. 100 Patents in Europe 2013/2014

103 Contributing profiles DLA Piper Wiater spk DLA Piper Wiater spk ul Emilii Plater 53 PL Warsaw, Poland Tel Fax Web Krystyna Szczepanowska- Kozlowska Partner dlapiper.com Krystyna Szczepanowska- Kozlowska heads the IP and technology practice at DLA Piper Wiater spk in Warsaw. She managed the IP, media and technology practice in the Warsaw office of Hogan Lovells between 2007 and 2010, and the IP department of the Warsaw office of Linklaters from 2001 to Professor Szczepanowska-Kozlowska qualified as an attorney at law in 1993 and since then has developed wide-ranging practical experience in matters concerning the protection of intellectual property, in particular in the fields of trademarks, patents and unfair competition. She also has experience in advising on IP issues in the pharmaceutical sector and on EU IP law. Professor Szczepanowska-Kozlowska is the author of many academic and research publications on IP law. Patents in Europe 2013/

104 Romania Romania By Dragosh Marginean, Ratza & ratza 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent holder can enforce its rights through civil proceedings, criminal proceedings and/or customs actions. Civil proceedings are probably the most effective, as they give the patent holder access to specialised IP judges (in most cases) and trained technical experts. In addition, the plaintiff in civil proceedings has significant control over the course of the trial, compared to criminal proceedings. Preliminary injunctions are available in order to stop the infringement, pending a final decision on the merits. Criminal proceedings can be preferable in some cases. They offer the advantage of being cost effective. However, the absence of specialised judges and the lack of experience of the lower courts in patent cases mean that the outcome is less predictable. The plaintiff also has limited control over the course of the proceedings. Border enforcement measures can be extremely effective, especially if the allegedly infringing products come from outside the European Union. However, border officers will act only on the basis of clear information from the patent holder, since it is highly unlikely that they are qualified to decide on the existence of infringement on their own accord. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? Specialised IP sections were established in the civil courts nearly 10 years ago and the level of expertise has risen steadily since then. In addition, the Ministry of Justice has taken important steps recently to update and enhance the expertise level of industrial property experts, as well as of experts in different fields of activity who may be appointed by the courts to clarify the technical aspects of patent cases. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? There are no specific rules pertaining to patent cases. Therefore, the general rules of civil procedure apply. The court may (but need not) stay the infringement proceedings pending the validity decision, on the request of one party. It will base its decision on the particulars of each case, including whether the evidence is relevant to both proceedings and what stages the proceedings are at. Similarly, the court will consider requests to join infringement and validity proceedings on a case-by-case basis. The court must also consider the material competence of a specific court for each proceeding. The Bucharest Tribunal has exclusive jurisdiction to hear all validity claims based on the special provisions of the Patent Law, while in infringement proceedings the competence is established using the general civil procedure laws. If a validity counterclaim is brought in an infringement case before a court other than the Bucharest Tribunal, the solution will most likely be to separate the two cases, with the validity claim being sent to the Bucharest Tribunal, while the infringement action will be heard by the court where the infringement action was originally filed. As mentioned above, the latter court has the option to stay proceedings pending a resolution in the validity claim. 102 Patents in Europe 2013/2014

105 Romania 4. To what extent is cross-examination of witnesses permitted during proceedings? Here again, no specific rules govern patent cases; therefore, general civil procedure rules apply. Cross-examination of witnesses is permitted, but in most cases the court will not consider the witness testimony as relevant. The evidence most commonly submitted in such cases consists of documents and written expert reports. Although the experts can also be requested to appear in court for cross-examination, this is a rare occurrence, especially in civil cases. (A criminal court might be more inclined to accept such a request.) 5. What role can and do expert witnesses play in proceedings? The role of the expert in patent cases is crucial. The court will usually appoint an expert to answer the technical questions. Both parties can propose questions that they consider to be relevant to the case. The final decision on which questions to include rests with the judge. The parties are entitled to appoint expert witnesses, who will work together with the courtappointed expert and clarify their position in the final report (or in a separate document). The parties can object to the findings contained in the final report and the court can request the expert to respond to the objections. Given that the judges have no technical background, the position of the courtappointed expert is key to the final outcome of the trial. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery is not provided for in the Civil Procedure Code. All evidence is administered by the parties in court during the proceedings and only if it is considered relevant by the judge. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? The doctrine of equivalents is applicable in Romania. The court (or rather, the courtappointed expert) will take into consideration not only the literal meaning of the claim, but also any element equivalent to any element contained in the claim. An element is considered to be equivalent if, to the skilled individual, it is obvious that by using it, one will obtain essentially the same result. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There should be no difference in the way that a patent is enforced based only on the subject under protection. The courts can call on experts covering a wide range of fields of activity. However, finding experts (whether court-appointed experts or expert witnesses) to handle a complex patent case can be challenging in some areas of expertise. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The courts are not legally bound by previous decisions. However, should substantial national jurisprudence exist on a certain legal matter, it will most likely be taken into consideration. The decisions of the European Court of Justice are also taken into consideration by the national courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? The parties can be represented in court by an attorney at law or a legal counsel. A patent attorney can represent clients in court as long as he or she also has the status of attorney at law or legal counsel. Since most attorneys at law have no technical background, it is advisable to set up a team consisting of an attorney at law and a patent attorney. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Romanian courts are willing to consider similar decisions from other jurisdictions, especially those issued in EU member states. If the reasoning concerns technical issues, it is the court-appointed expert who will review it. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Defendants have a range of procedural Patents in Europe 2013/

106 Romania measures at their disposal to delay proceedings. Plaintiffs can object to the continuance of the proceedings to some extent, but requests by defendants to delay proceedings will be granted if they are justified. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? The court will grant a preliminary injunction if the plaintiff can prove: the existence of its right; the appearance of infringement; and the risk of irreparable harm in case the infringement is not stopped immediately. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The cost of a patent infringement case before a court of first instance ranges from 10,000 to 15, Is it possible for the successful party in a case to obtain costs from the losing party? Upon request, the court may award the successful party the legal costs incurred directly during litigation. The court may limit the amount of legal costs if it considers that the amount requested is unjustified by the complexity of the case. 16. What are the typical remedies granted to a successful plaintiff by the courts? The court typically orders the defendant to cease all infringing activities and to remove the infringing products from the market. Additionally, the court can order the destruction of the infringing products, as well as award damages (see Question 17 below). The court will also grant the successful plaintiff legal costs as mentioned in Question 15 above. Lastly, upon the request of the plaintiff, the court can order publication of the decision (with all related costs to be borne by the defendant). 17. How are damages awards calculated? Is it possible to obtain punitive damages? Upon the request of the plaintiff, the court can award damages if the infringement action is successful. Damages are calculated on the basis of either: the loss of profits of the patent holder; or the unfair profits made by the infringer. The moral prejudice suffered by the patent holder is also taken into consideration in the calculation of damages. Alternatively, the court can award a fixed amount based on the normal cost of a licence. Punitive damages are not permitted under Romanian law. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Should an infringement action succeed, the court will usually order the defendant to cease any infringing activities. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Civil proceedings before a court of first instance take between 12 and 18 months. The most time-consuming element is the appointment of the experts and the drafting and filing of their reports (followed by the objections of the parties and the response to the objections filed by the court-appointed expert). As the entire procedure is undertaken under the supervision of the court, for each procedural step the parties must appear before the judge. The hearings are set according to the court schedule and are usually one or two months apart, regardless of how much time a particular procedural step takes. Although good preparation of the case by the plaintiff can help to expedite proceedings to some extent, it will make no significant difference. 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? All first instance decisions are subject to appeal. The appeal period starts from the communication date. Appeal proceedings can be slightly quicker than those at first instance (typically, six to 12 months from the first hearing). However, a few months might elapse between filing of the appeal and the first hearing. Appeals are not limited to legal 104 Patents in Europe 2013/2014

107 Romania issues: the Court of Appeals considers all facts and evidence. Should the court consider that the expert report filed before the court of first instance is null and void, a new expert will be appointed and a new report will be drafted and filed. In such case the appeal proceedings can take even longer than those at first instance. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? There is no obligation to undertake any mediation or arbitration procedure. The Romanian authorities have been trying to promote mediation in an effort to relieve the courts, which have a significant backlog of cases. However, the mediator profession is relatively new in Romania and, so far, mediators have been unable to accrue a satisfactory level of expertise. The author is unaware of any instance in which a mediator handled an industrial property case. A new statute came into force in February 2013 requesting the plaintiff in a civil (pecuniary) matter to attend an information meeting regarding the benefits of mediation. Under one interpretation (with which the author disagrees), this provision will also apply to industrial property matters. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The author considers that the decisions of the Romanian courts are generally balanced, although a slight pro-patentee inclination can be observed. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Romania has not signed the London Agreement and there is no indication that the authorities are planning to do so in the near future. Patents in Europe 2013/

108 Contributing profiles Ratza & ratza Ratza & ratza Ratza Building, AI Cuza Blvd Bucharest 1 - Romania Tel Fax Web Dragosh Marginean Partner dm@ratza-ratza.com Dragosh Marginean has been working in the IP field since He graduated from law school in In 2003, he cofounded the fastest-growing IP firm in Romania, Ratza & ratza, which provides a full range of IP prosecution and litigation services. Mr Marginean is primarily involved in trademark and patent litigation work, but also dedicates time to law reforms, as well as writing articles on various IP topics. 106 Patents in Europe 2013/2014

109 Spain Spain By Miguel Vidal-Quadras Trías de Bes and Oriol Ramon Sauri, Amat & Vidal-Quadras Advocats 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? In Spain, European patent holders may bring civil court actions against potential infringers through the relevant legal proceedings. In exceptional circumstances, if a crime has been committed a criminal action may be brought. The administrative courts cannot revoke a patent, since the civil courts have jurisdiction for all proceedings related to patents. The Spanish courts also have exclusive jurisdiction to hear cases related to the validity of patent rights granted for Spain. An 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 (tribunals mercantiles or commercial courts) specialise in commercial cases, including IP rights and unfair competition. Most of these cases are heard in Barcelona and Madrid, where there are 10 and 12 commercial courts, respectively. The appeal courts of these cities also have specialised sections. Since January 2012 all patent cases in Barcelona are handled by Commercial Courts Nos 1, 4 or 5. Under an agreement of the Spanish Council of Judicial Power (November ) these three courts were designated specialists in patent cases. At present, no other commercial courts have such specialisation. 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 technical aspects involved in the case. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? The commercial courts have jurisdiction to hear cases on both infringement and nullity. A common defence in infringement cases is the invalidity of the patent. This is often useful to show where the invention stands in the state of the art, while also presenting the technical contribution that it has made in order to defend the infringement. Invalidity may be alleged either as an objection in order to petition for the claim to be dismissed or by bringing a counterclaim. If this is accepted by the court, the Spanish part of the patent will be declared null and void and the 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. If the judge is not familiar with Patents in Europe 2013/

110 Spain patent issues, he or she will be receptive to explanations beyond the specific technical issues from the experts. 5. What role can and do expert witnesses play in proceedings? 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 reached by the expert are not determining factors, but merely his or her explanations. 6. Is pre-trial discovery permitted? If so, to what extent? In Spain, there is a specific court examination procedure to determine whether infringement could have been committed diligencias de comprobación de hechos. The procedure is carried out at the premises of the allegedly infringing party to ascertain whether the latter has infringed a patent right or is about to do so. If so, the necessary documents are drawn up and a copy is provided to the petitioner so that it can bring the appropriate patent infringement claim. Another way to obtain evidence related to the case is through preliminary proceedings specifically designed for IP cases. Provided that there is enough evidence of the infringement, the court may be petitioned to allow the infringing party to be crossexamined before bringing an infringement case regarding its suppliers, customers and distribution channels, as well as the product quantities, sales and the reference of the product in the market. A petition may also be made for commercial, customs, accounting and financial documents to be provided in order to prepare the case. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents is now beginning to be routinely accepted by specialised 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, particularly Article 69(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. 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 courtappointed) expert. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? There are no previous cases in Spain from which statistics can be obtained. Although the Spanish courts have not yet ruled on certain issues that are currently hot topics in some European countries and the United States, a recent Madrid Appeal Court judgment held that a computer program was an invention subject to protection when, according to European Patent Office case law, the European patent could be considered not to refer to a computer program as such. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Both Section 28 of the Madrid Provincial Court and Section 15 of the Barcelona Provincial Court sometimes resort to their own precedents when they issue judgments. Under the Civil Procedures Act, not all patent cases can be appealed to the Supreme Court; thus, there is little case law and what exists is quite old. 10. Are there any restrictions on who parties can select to represent them in a dispute? There are no restrictions. However, in Spain a party must be represented by legal counsel, who is responsible for the client s legal defence, and a court liaison, who is the client s representative in the legal proceedings and is responsible for 108 Patents in Europe 2013/2014

111 Spain providing all judicial notifications between the court and the legal counsel. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? The Spanish courts and parties in litigation increasingly refer to judgments laid down by other European courts concerning the infringement or invalidity of the same patent. Such background tends to be accepted as a relevant exhibit by the courts. However, the parties must prove to the Spanish court that the facts put before it are the same as those on which the foreign court based its decision. In some recent cases the Barcelona Appeal Court has decided not to follow decisions adopted in other EU countries. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? The time limits within which documents must be filed in Spain cannot be extended; Spanish procedural law is very strict in this regard. A hearing can be adjourned in certain situations stated in the law, where this can be sufficiently justified. Groundless delays may be considered as claims filed in abuse of the law or breaches of procedural good faith, and the courts can impose fines in such cases. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions may be requested for urgent reasons. There must be prima facie justification that an infringement has been committed in a plausible manner and that there will be costly consequences for the plaintiff if an injunction is not ordered. The rights holder must also prove that it uses the patent or that serious and effective preparations are being made for such use. The parties are usually summoned to a hearing, although such an injunction may be granted ex parte. In view of the arguments put forward by the parties, the judge will decide whether the injunction should be granted. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? Although the cost of court proceedings depends on the complexity of the case, on average a decision costs between 50,000 and 150, Is it possible for the successful party in a case to obtain costs from the losing party? The court can order the losing party to pay the legal costs. In such cases, the lawyers fees are calculated according to the official rates and added to the expenses incurred to translate documents or obtain expert opinions, and any other costs that the successful party can demonstrate that it incurred. 16. What are the typical remedies granted to a successful plaintiff by the courts? Legal actions may be brought to stop the infringement, seize or destroy the infringing products or machinery and moulds exclusively used for such purpose, and prohibit the infringing actions from being recommenced. In addition, compensation may be imposed for damages and loss. In addition, in Spain, as in other European countries, a claim may be brought against actions that have contributed to the infringement, provided that those who contributed to the infringement were aware that the elements provided to the infringing party were to be used to manufacture the infringing products. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages are determined according to the economic criteria established by the EU directives by calculating the negative economic consequences, which should take into account the profits obtained by the defendant as a result of the infringement as well as the 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, as well as compensation for moral damages. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions can be granted after a Patents in Europe 2013/

112 Spain full trial on the merits of a patent infringement action. The plaintiff bears the burden of proof; if the court considers the facts of the claim to be doubtful at the end of the proceedings, it must reject the action. Permanent injunctions related to the exploitation of the patent are bound to the validity or the expiry date of the exclusive right, so if the patent is declared invalid or the registration lapses, the injunctions related to exploitation of the product will become ineffective. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? Depending on the courts involved and their workload, first instance proceedings usually take between six and 12 months in Barcelona and between 20 and 30 months in Madrid. The main circumstances that may delay a case are bringing a claim against a party which is resident abroad, needing to provide technical expert evidence, the complexity of certain evidence (eg, carrying out trials, analyses and reproductions or plant inspections in Spain or abroad) and the number of experts or witnesses and their nationality. 20. Under what circumstances will the losing party in a first instance case be 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 submit the grounds for its appeal within 20 days after notification of the judgment. 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. alternative dispute resolution a realistic alternative to litigation? There is no obligation to undertake mediation or arbitration before bringing a case before the courts. Alternative dispute resolution may occur in infringement or technology transfer agreement cases if the parties agree to go to arbitration or mediation. Arbitration clauses are commonly included in technology transfer agreements. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Some judges known to be pro-patentee have recently been hired by law firms as lawyers. 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. Actually, the Supreme Court in the past four years has experienced a swift to pro-patentee approach. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Spain has not yet signed up to the London Agreement of Translations and is not expected to do so in the near future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? In a widely discussed 2012 decision, the Supreme Court accepted the extension of protection of a European patent by means of revising the translation of the Spanish validation which accepted the inclusion of claims granted not for Spain but for other countries designated by the applicant. In addition, in a heavily criticised 2012 decision the Supreme Court established that a patentee could claim damages not from the date of publication in the Spanish IP Bulletin but from the date of publication in the European Patent Bulletin. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is 110 Patents in Europe 2013/2014

113 Contributing profiles Amat & Vidal-Quadras Advocats Amat & Vidal-Quadras Advocats Av Pau Casals 14, 6º Barcelona, Spain Tel Fax Web Miguel Vidal-Quadras Trías de Bes Partner Miguel Vidal-Quadras Trías 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 He is the author of various IP publications and a professor of patent law at Universitat Ramon Llull and Universidad de Barcelona. His areas of expertise include litigation, IP, technology transfer and pharmaceutical law. Oriol Ramon Sauri Associate ors@avqadvocats.com 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, IP, competition, advertising and pharmaceutical law. He speaks Spanish, Catalan and English. Patents in Europe 2013/

114 Sweden Sweden By Peter Kenamets and Fabian Edlund, Awapatent AB 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? No government institutions outside the court system are authorised to enforce patent rights. This means that the holder of a European patent must turn to the courts to enforce its rights if it cannot resolve the situation amicably. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? All patent cases (concerning both infringement and invalidity) are tried by the same department of the Stockholm City Court. This effectively makes the Stockholm City Court a specialist patent court. On appeal, patent cases are tried by the Svea Appeal Court in Stockholm. These two courts are composed of both legally trained judges and experts in the specific technical field, who are well versed in patent law. To date, few cases have been tried by the Supreme Court. It is fair to say that the general view is that the judgments handed down by the Swedish courts in patent cases are well reasoned and based on a good understanding of the technical and legal issues. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? In Sweden, as a formal matter, patent infringement and validity issues are tried in separate proceedings. The court has discretion to decide whether the infringement and validity cases should be heard simultaneously. Generally, the cases are joined and heard together, but there are exceptions. 4. To what extent is cross-examination of witnesses permitted during proceedings? Witnesses may be cross-examined during trial and there are very few restrictions. As long as the questions are relevant to the case, they will generally be admissible. 5. What role can and do expert witnesses play in proceedings? Expert witnesses can be appointed by the court itself, as well as by either party. The latter is more common. Expert witnesses are frequently used by the parties, especially regarding technical and scientific issues, but sometimes also regarding legal questions. Weight will be given to the expert 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 probable cause for infringement can obtain a court decision allowing it access to the premises of the alleged infringer to search for and preserve evidence. A rule of proportionality also applies (ie, it must be reasonable to assume that the reasons for conducting the investigation outweigh the hardship to the alleged infringer). 112 Patents in Europe 2013/2014

115 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 US-type prosecution history estoppel). However, there are still cases where the Swedish courts have relied on the doctrine of equivalents to find that there is an infringement. For example, a few years ago the Svea Appeal Court upheld a decision of the Stockholm City Court finding infringement under the doctrine of equivalents in a case relating to a robotic milking system. The Swedish courts may consider the prosecution history of a patent application in order to assess the scope of the granted patent. Any statement made during prosecution may thus limit the scope of the granted patent. However, the court will carefully consider the context within which such a statement was made. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Swedish patent law is intended to be harmonised with the practice of the European Patent Office (EPO), so that all granted European patents should be enforceable in Sweden. In the case of software-related inventions, the Swedish courts have followed the EPO standards of patentability closely. This means, for example, that claims directed to a computer program product are enforceable. However, it also means that the validity of business method patents may be difficult to defend after the EPO developed its practice of non-technical hindsight (eg, T258/03 and T0154/04). 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 Patents in Europe 2013/

116 Sweden that this will have some influence on the Swedish court. When it comes to EPO case law, the Swedish courts frequently make reference to EPO Board of Appeal decisions, based on the argument that Swedish patent law is intended to be harmonised with the European Patent Convention with respect to patentability. The Swedish courts have also been criticised by some practitioners for referring to the EPO Guidelines for Examination, on the grounds that this document is not legally binding, but is only a guiding document for examiners. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? A party seeking to delay a court procedure may reply late and may continually add new arguments, facts and evidence. Such behaviour may slow down the process, but it may prove to be a dangerous tactic. For reasons of procedural efficiency, the court may order that no new matter (eg, arguments, evidence) from an obstructing party will be considered. Delay tactics may also result in lost credibility, which is of course undesirable. If the obstructing party is deemed to have been negligent, this might also be reflected in the litigation costs. The plaintiff can counter by continually requesting the court to speed up the procedure, which may have some effect. However, no formal expedited procedure is available. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are quite common in Sweden. One survey indicates that the first instance patent court ruled on 23 requests for preliminary injunctions between 2001 and 2005 (15 injunctions were granted and eight denied). As a comparison, the same survey indicates that the patent court determined (ie, tried or settled) a total of 60 infringement cases during the same period. A preliminary injunction is available for a patent owner or licensee that can establish, with a sufficient degree of certainty, that infringement is ongoing and that the continued infringement may reasonably be expected to depreciate the value of the patent. In order to obtain a preliminary injunction, the plaintiff must also post security, as a bond or bank guarantee, that is sufficient to protect the defendant and to prevent abuse. The orthodox view in Sweden, although not codified, is that the time limits for filing a request for preliminary injunction are not critical. The patentee can generally file such a request at any time (provided that the patentee has not already initiated legal proceedings against the alleged infringer). Two decisions issued in Autumn 2012 have given some guidance on this issue. In the first case, the patentee waited one year after its initial contact with the alleged infringer and 10 months after it had sent a warning letter before requesting a preliminary injunction. The district court granted the request and the appeal court confirmed the decision. The district court observed that there was no real support under Swedish law for the standpoint that a preliminary injunction must be requested within a certain timeframe. At any rate, the patentee had not waited so long that the request for a preliminary injunction appeared to be unwarranted. The second case related to a request for a preliminary injunction filed in legal proceedings that had been ongoing for two years. The patentee argued that the financial situation of the alleged infringer was such that the patentee s chances of recovering damages for the infringement were jeopardised. At the time when the patentee requested the preliminary injunction, the district court had already set the date for a final hearing, five months later. The court dismissed the request, specifically referring to the fact that the patentee had made its request at such a late stage of the proceedings. This indicated that the patentee did not have a strong interest in obtaining a preliminary injunction. The patentee s argument that the alleged infringer was making a financial loss did not change this conclusion, according to the court. The decision was not appealed. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? 114 Patents in Europe 2013/2014

117 Sweden An average first instance infringement case costs between 100,000 and 150,000 a party, but there is considerable variation. If there is a counterclaim for invalidity (which is common), the costs will rise significantly. 15. Is it possible for the successful party in a case to obtain costs from the losing party? As a general rule, the losing party pays the winning party s costs. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies for patent infringement in Sweden are injunctions (under penalty of fine) and damages, which are calculated as a reasonable royalty and compensation for further loss (eg, lost profits). 17. How are damages awards calculated? Is it possible to obtain punitive damages? As indicated briefly above, damages for patent infringement under Swedish law are calculated as a reasonable royalty and compensation for further loss. The patent owner is always entitled to a reasonable royalty in case of an infringement without showing that it suffered any loss. The general intention is that a reasonable royalty shall be determined so that it reflects what the patent owner and the infringer would have agreed on had they concluded a licensing deal before the infringement started. If the patent owner can show that it has suffered loss as a result of the infringement, it is entitled to compensation for that loss. This compensation is normally related to reduced sales and lost orders; however, it can also concern loss caused by price pressure and similar. In order to comply with the EU IP Rights Enforcement Directive (2004/48/EC), the Patents Act provides that the following five factors should specifically be taken into account when the amount of damages is determined: the patent owner s lost profit; the infringer s profit from the infringement; the harm done to the reputation of the invention; the non-economic loss; and the patent owner s interest in preventing patent infringement. Punitive damages (eg, treble damages) are not available. Finally, a patent owner can claim compensation only for the five years immediately before the patent owner started its infringement action before court. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? As a general rule, a permanent injunction is awarded to a successful plaintiff. There is no need for the patent owner to show that it is not adequately compensated by damages. Such injunctions are generally issued under penalty of a fine. The court sets the amount 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; and 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 Patents in Europe 2013/

118 Sweden 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 alternative dispute resolution 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. Alternative dispute resolution 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. 116 Patents in Europe 2013/2014

119 Contributing profiles Awapatent AB Awapatent AB Matrosgaten 1, PO Box Malmo, Sweden Tel Fax Web Peter Kenamets Partner 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 s 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. Fabian Edlund Partner fabian.edlund@awapatent.com 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 European Patent Office. 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 of UNION-IP ( and a member of the association s Software Commission. Patents in Europe 2013/

120 Switzerland Switzerland By Regula Rüedi and Rainer Schalch, E Blum & Co AG 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? A patent holder can send a warning letter and seek an out-of-court settlement with an alleged infringer. A successful warning letter is the most effective way to enforce rights, since it is subject to no formalities and costs little. If no solution can be found in this way, or through arbitration or mediation (to which the alleged infringer must agree), the patent holder has no option other than to enforce its patent through a court action. No warning letter need be served before commencing a patent suit. Patent rights are enforceable through cease and desist orders which, if granted by the court, require a third party to stop using an infringing product in particular its manufacturing, importing, advertising, offering or selling or an infringing 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? Since January 2012, Switzerland has a specialist patent court: the Federal Patent Court of First Instance. This court has technical judges on the bench with expertise in patent law. The technical judges are primarily patent attorneys with a technical background in diverse scientific and technical fields. In specific cases, an external expert may be appointed by the court. 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 Federal Patent Court of First Instance is competent to deal with validity and infringement, and deals with them simultaneously. 4. To what extent is cross-examination of witnesses permitted during proceedings? In January 2011 the Federal Civil Procedure Code came into force. The code provides that witnesses are primarily examined by the court, but the court may also allow the parties to pose questions directly. 5. What role can and do expert witnesses play in proceedings? Patent proceedings are predominantly based on written evidence, but any type of evidence that is allowed in civil proceedings is also allowed in patent proceedings. With regard 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 naming the expert as an expert witness under the new code. Expert opinions provided by court-appointed experts are evidence. 6. Is pre-trial discovery permitted? If so, to what extent? 118 Patents in Europe 2013/2014

121 Switzerland There is no pre-trial discovery in Switzerland. However, the Patents Act has been amended to allow for a description by the court of potentially infringing methods, products or means for their manufacturing. It must be made credible to the court that a claim to which the claimant is entitled has been infringed. In such cases a member of the court, in some cases accompanied by an expert or person skilled in the relevant field, may visit the production facilities of an alleged possible infringer and make a detailed description of the method applied, the products made and the means of production. The claimant may be excluded from the description procedure and receives no documents before the opposing party has had the opportunity to file comments. Legal representatives of the claimant (attorneys at law and patent attorneys) may be allowed to attend the description procedure, but they are obliged to keep confidential any information exceeding the information handed over to the claimant by the court. Other pre-trial measures ordered by the court are possible, but under the limits of provisional measures, requiring the claimant to make it credible that the claimant is threatened by a detriment that cannot be easily remedied and provided that the claimant has not delayed the case (see Question 13). 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The doctrine of equivalents has been accepted for many years and is provided for in the Patents Act. The act explicitly distinguishes between infringement by counterfeit and infringement by imitation. Imitation supported by long-established case law encompasses embodiments using equivalent means. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? All types of patent right granted by the European Patent Office are enforceable in Switzerland. However, the evidential requirements may present problems for the enforcement of certain types of patent right. Since the burden of proof rests with the plaintiff, method patents may present problems if the use of the method cannot be ascertained by the product itself or if no prima facie evidence of infringement can be provided to lead to a description by the court (see Question 6) or a reversal of the burden of proof. On the other hand, the complexity of software-related or biotech patents and the infringing products may present problems for the patentee and the courts. In mid-2008 an amended Swiss patent law entered into force, setting out more restrictive regulations for Swiss national applications in the field of biotech and genetic engineering than the European Patent Convention. Whether these differences will cause problems for the enforcement of European patents is controversial and relevant court decisions are not yet available. 9. How far are courts bound by previous decisions in cases that have covered similar issues? Since Switzerland now has one single patent court the Federal Patent Court of First Instance it is likely that this court will consider earlier decisions in similar cases unless upturned by the last instance Federal Court. In general, courts are not bound by the opinions and decisions of other courts at the same level, but lower courts are usually bound by the decisions of higher courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? Representation is limited to attorneys holding the Swiss attorney at law qualification or a recognised equivalent attorney at law qualification of an EU or European Free Trade Agreement member state. Assistance and corepresentation by a Swiss patent attorney is recommended in most cases. In cases that are to be heard by the Federal Patent Court of First Instance and that are restricted to the question of patent nullity, a Swiss patent attorney 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? Since the Federal Patent Court of First Instance started work in January 2012, so far there is Patents in Europe 2013/

122 Switzerland no established practice. However, it is likely that similar to the former commercial courts, the Federal Patent Court of First Instance will also be willing to consider the reasoning of foreign courts of similar expertise and legal background (eg, German court practice). 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Once the case is pending before the court, the possibilities for delaying the case are limited since the court handles proceedings according to a strict timeframe. In order to delay, the defendant can seek the maximum number of time extensions, while the plaintiff may try to accelerate the proceedings by responding to a court order immediately. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are readily available, provided that the plaintiff can provide prima facie evidence of: infringement; validity of the patent; and a detriment that cannot easily be remedied (eg, by the payment of damages). In addition, the plaintiff must show that it has not delayed the case. As a rule of thumb, a request for a preliminary injunction must be filed within three to six months of the infringement becoming known to the patent holder. The term varies depending on the details of the case. 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). Due to the broad variety of scientifically and technically skilled judges, the Federal Patent Court of First Instance abstains from appointing court experts, resulting in swift proceedings. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs for a first instance decision depend on the value in litigation but in general amount to around Sfr80,000 to Sfr200,000 per party, and the costs of the winning party are at least partially imposed on the losing party. Thus, the losing party must bear costs of around Sfr160,000 to Sfr450,000, comprising the parties costs, possibly the costs of the court expert and court costs. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes the court will calculate the successful 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 the courts? It is usual to request a cease and desist order and reimbursement of damages or lost profits. If a cease and desist order is granted, the defendant must stop using the infringing product or method. In addition, financial compensation is available to the patent holder, which may include compensation for actual damage inflicted. 17. How are damages awards calculated? Is it possible to obtain punitive damages? The plaintiff may claim its own damages, 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, but according to a recent Federal Court decision, payment of an amount equal to a licence fee under the title of damages may be demanded only if the plaintiff can prove that in the absence of the infringement, the claimed licence fee income would have been earned. This and other types of damages are usually very difficult to prove. Accordingly, the plaintiff must now provide evidence of the profits made by the infringer in order to claim restitution of the infringer s profits. Punitive damages are not available. 18. How common is it for courts to grant permanent injunctions to successful 120 Patents in Europe 2013/2014

123 Switzerland plaintiffs and under what circumstances will they do this? Unless the plaintiff and the defendant come to an agreement before a final decision, the court will grant a permanent injunction. In specific circumstances the court may abstain from an unlimited permanent injunction. For example, in pharmaceutical cases, if the complete unavailability of the infringing product would pose a health risk to patients already treated with the product, limited availability may be provided for such patients. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The Guidelines of the Federal Patent Court of First Instance set the following time limits for usual cases: for payment of the advance on costs two weeks; for submission of the statement of defence and of the reply/defence to counter-claim six weeks; and for submission of the reply to a counterclaim and the rejoinder to a counter-claim four weeks. Based on a valid request, the time limit for payment of the advance on costs may be extended by one week, and the time limit for filing submissions by two weeks. Since an informal hearing takes place after the first full exchange of writs (eg, statement of claims, statement of defence and only for a nullity counterclaim the rejoinder or reply to a counterclaim), the whole first instance procedure may be finished within about six months. In complicated cases, these time limits may be substantially longer. type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? There is no obligation to undertake any mediation or arbitration before bringing a case before the courts. However, provided that both parties agree, mediation or arbitration may speed up the case. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? The Federal Patent Court of First Instance will protect the patentees rights, provided that there is sufficient evidence. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Switzerland has signed up to the London Agreement. Two of the languages of the European Patent Convention are official Swiss languages, so no translation of the claims need be filed. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? The Federal Patent Court of First Instance has had a successful start and its decisions published so far seem well founded. This court accepts English as the language of proceedings, if both parties agree, and may thus become an attractive alternative to other patent courts in Germany, the United Kingdom, Italy or France. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? In main proceedings an appeal to the Federal Court is possible. The Federal Court has full jurisdiction in appeal proceedings. The appeal procedure is usually swift, often taking less than one year. 21. Are parties obliged to undertake any Patents in Europe 2013/

124 Contributing profiles E Blum & Co AG E Blum & Co AG Vorderberg 11 CH-8044 Zurich, Switzerland Tel Fax Web Regula Rüedi European patent attorney and Swiss patent attorney rruedi@eblum.ch Regula Rüedi holds a PhD in organometallic chemistry from the Swiss Federal Institute of Technology and has several years of industry experience in the fields of analytical chemistry, materials and surface analysis. Dr Rüedi became a patent attorney in 1990 and was admitted as a European patent attorney in Her main activities cover patent law, in particular expert opinions and litigation work in patent infringement and invalidity cases and counselling clients in patent matters. She is a nonpermanent judge at the Federal Patent Court of First Instance. Rainer Schalch Attorney at law and Swiss patent attorney rschalch@eblum.ch Rainer Schalch holds a degree in electrical engineering from the Swiss Federal Institute of Technology. He worked in industry in the fields of power system management and digital computer design. Mr Schalch s main activities cover patent law, in particular patent litigation, opinions on infringement and validity as a court or private expert and drafting and prosecuting patent applications. He has several years experience as a judge at the Argovia Commercial Court. Mr. Schalch works in German and English. 122 Patents in Europe 2013/2014

125 Turkey Turkey By Ersin Dereligil and Oktay Simsek, Destek Patent Inc 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? If a European patent owner successfully validates its patent in Turkey, it enjoys the same rights as a conventional Turkish patent holder. Thus, it has several options to enforce its rights, the most common of which are: sending a cease and desist letter (preferably via a Turkish notary, although this is not mandatory); initiating civil and/or criminal proceedings before the courts; requesting an interlocutory injunction before or together with civil court proceedings; and obtaining border seizure at Customs and then initiating proceedings. Turkey is a civil law country. The first specialised IP court was established in 2000 and there are now 22 civil and criminal 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 civil proceedings. However, such an injunction is rarely granted, unless very strong evidence of infringement is available. For criminal proceedings, a rights holder must file a complaint against the infringer with the public prosecutor. Although criminal actions were previously a commonly used and effective tool in patent enforcement, this course of action is no longer advisable due to legislative gaps and a major backlog at the criminal courts, both of which are expected to be resolved soon. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The judges at the specialised IP courts are trained in IP disputes. Although they hear cases on all aspects of patent infringement and thus are experienced in patent judgments, in principle they have no technical expertise. The court usually appoints a panel of independent experts to examine all legal and technical facts, which are considered at first instance only. 3. How do your 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. Patents in Europe 2013/

126 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. 5. What role can and do expert witnesses play in proceedings? Expert reports play a major role in Turkish patent judgments. Usually, a panel of independent experts is appointed by the court to examine the technical and legal facts, the costs of which are paid by the plaintiff. Each panel of appointed experts usually comprises three professionals, (ie, an academic, a lawyer and a patent attorney). A printed copy of the case file is submitted to the experts once the petition exchange and submission of evidence stages have been completed. The experts or their reports can be challenged by either party on reasonable grounds, which would then lead to the preparation of a second and generally final report. However, the parties may adduce external expert reports in support of evidential and legal facts at a very early stage in the proceedings. These may rarely be relied on by the courts, but the facts raised therein and thus included in the case file may be considered by the official experts appointed by the court. 6. Is pre-trial discovery permitted? If so, to what extent? Disclosure of evidence is the first step of patent infringement proceedings. In addition to pre-trial discovery, in the absence of sufficient evidence of infringement it is possible for the plaintiff to initiate a separate lawsuit before the civil court to find and secure evidence of infringing acts. The judge then assigns a panel of experts and assesses the infringing acts without notifying the infringer (ex parte proceedings). The expert report is strong evidence of infringement and can be used later for the main civil and criminal proceedings. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The Turkish patent legislation accepts the doctrine of equivalents to some extent. According to the Patent Law, the scope of patent protection is determined by its claims. Claims cannot be interpreted as being confined to their strict literal wording. When determining the scope of patent protection at the time of infringement, all elements that are equivalent to the elements expressed in the claim(s) are taken into consideration. Where such an equivalent element performs substantially the same function in a substantially similar manner and gives the same result, that element shall generally be deemed to be equivalent to the elements as expressed in the patent claim(s) at issue. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Neither business methods nor software constitutes patentable subject matter in Turkey. Software can be protected under the Copyright Code. Although software for technical effects may enjoy patent protection, the scope of such protection is still disputable in Turkey, as in most European countries. Any patent for software characteristics can be subject to an invalidity action due to the non-patentable nature of software under the patent law. However, it cannot be said that certain patent rights are harder to enforce than others in Turkey, due to the fact that, in principle, each case requires examination by a panel of experts specifically selected and appointed by the court after considering all legal and technical facts and requirements of the case. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The Turkish courts are not bound by the decisions of other national or foreign courts. Nevertheless, decisions of the Supreme Court of Appeals are authoritative and are usually followed by the first instance courts. 10. Are there any restrictions on who parties can select to represent them in a dispute? Only lawyers who are registered with one of the Turkish bars can represent parties before 124 Patents in Europe 2013/2014

127 Turkey 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? 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; or requesting time extensions at every possible stage. In case of nullity actions, the court will first render a decision on the validity of the patent and then rule on the infringement issue. If the other attempts are not well reasoned, the defendant s intention to delay is usually spotted by the judge and is not allowed to continue to the next stages. The plaintiff should be well prepared for the submission of all facts and evidence in advance, even before the start of proceedings, and should use the time allowed wisely without requiring further time extensions during the proceedings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? According to the patent legislation, it is possible for a patent holder to seek preliminary injunctions before civil courts in order to forestall an imminent threat of infringement against a wide range of infringing parties, from direct infringers to suppliers, importers, wholesalers and distributors. However, such injunctions are rarely granted unless clear facts and strong evidence of infringement are available. If this is the case, the plaintiff must provide a financial payment or a letter of bank guarantee as security. The patent holder may request all possible options when a patent infringement decision is issued, including the investigation and cessation of production of infringing products and confiscation of all infringing products at Customs and other locations where the products are held for commercial reasons (eg, places where the products are produced, stored, sold, offered, exported or imported). The court will order an expert report to determine the infringement. Precautionary measures should fully secure the effectiveness of the judgment, and particularly provide for the following measures: cessation of infringing acts; an injunction to seize within Turkey including at Customs, free ports or free trade area and to keep in custody goods produced or imported that infringe rights conferred by the patent or the means used to implement the patented process; and the placement of security or a guarantee for damages to be compensated. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The litigation costs of first instance proceedings vary greatly, depending on the attorneys charging policy, any translation costs, the down payment required for preliminary injunctions and any extra official fees for the compensation of damages. The official costs, including experts fees, range from 2,000 to 4,000 plus 1.35% of the amount of compensation, if claimed. All of these fees are reimbursed by the successful plaintiff. Attorneys fees are the dominant factor in litigation costs, usually varying from 25,000 to 50,000, but may be much higher depending on the complexity of the case, the disclosure of evidence, a counteraction for invalidity by the defendant and other requirements for court jurisdiction, site visits and special reports from external professionals. These fees cannot be reimbursed. 15. What are the typical remedies granted to a successful plaintiff by the courts? Patents in Europe 2013/

128 Turkey 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 calculating damages, 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, How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? Permanent injunctions are often granted to the successful plaintiff at the end of the proceedings. 18. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The civil first instance IP courts usually issue a decision within 24 to 36 months, depending on the number of hearings and petitions exchanged and the number of expert reports (see Question 12). 19. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? Any party can appeal the case before the Supreme Court within 15 days of issuance of the court decision; this stage takes another 15 to 24 months. 20. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? The Turkish legal system does not specifically legislate for alternative dispute resolution. At an early stage of proceedings the parties are invited to negotiate for settlement, but a positive outcome is unlikely. The Patent Law refers only to arbitration by the Turkish Patent Institute in order to obtain a contractual patent licence for those parties wishing to apply for a compulsory licence. 21. In broad terms, how pro-patentee are the courts in your jurisdiction? Most judges have been trained within the framework of a joint project between the Ministry of Justice and the European Commission. As the judges are harsh on infringement, they are likely to be propatentee when solid facts and supporting evidence are provided. 22. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? Turkey has not yet signed up to the London Agreement and there is no appointed schedule for negotiations to ratify the agreement. 23. Are there any other issues relating to the enforcement system in your country that you would like to raise? A patentee must put to use its protected invention and must file a certified document to the Turkish Patent Institute within three years of the date on which the patent was granted. Otherwise, any interested person may request that a compulsory licence be granted. Legitimate excuses for failure to meet this requirement include technical, economic or legal reasons beyond the control and will of the patentee, which may include officially required clinical test periods or delays in product registration procedures before the health authorities for pharmaceuticals. 126 Patents in Europe 2013/2014

129 Contributing profiles Destek Patent Inc Destek Patent Inc Destek Patent AS, Polaris Plaza Ahi Evran Cad No:1 K:17, Maslak, Istanbul 81570, Turkey Tel Fax Web Ersin Dereligil Managing partner 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. He is the founding president and a board member of the Licensing Executives Society Turkey and a founding member of the International Association for the Protection of Intellectual Property Turkey. Oktay Simsek Head of foreign affairs department oktay.simsek@destekpatent.com.tr 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. Patents in Europe 2013/

130 United Kingdom United Kingdom By Ilya Kazi and Catherine Booth, Mathys & Squire 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? European patent holders can enforce their rights in two forums: the appropriate UK civil court and the Intellectual Property Office (UKIPO), which is the official government body responsible for granting IP rights in the United Kingdom. The civil courts include: the specialist patent division of the High Court of England and Wales, which typically hears complex cases with potentially high damages awards; and the Patents County Court, which is intended to be a faster and lower-cost route to judgment for less complex cases. Decisions of either court may be appealed to the Court of Appeal (or alternatively to the High Court from the Patents County Court). The UKIPO offers several services, including mediation and non-binding infringement opinions. It can also, if both parties agree, issue a binding decision in inter partes proceedings, which can be appealed to the High Court. Independent mediation or arbitration can also be used. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The High Court and the Patents County Court are presided over by some of the most experienced patent judges in the world. Most have many years experience in IP matters and have practised at the patent bar; many also have a scientific background. Decisions of the UK courts often attract much interest and commentary. For example, the Patents County Court judge for 2013 is Judge Birss QC, who made the headlines in 2012 when (sitting in the High Court) he famously described Samsung s tablet design as not as cool as Apple s registered design, while finding the design not infringed. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? Validity and infringement claims are usually handled together during the same proceedings. It is common for a party against which an action is brought for one claim to counterclaim for the other that is, a claim brought against a party for infringement will often result in that party counterclaiming for invalidity. This enables the same judge to decide on each matter at the same time and leads to a consistent construction of the patent claims for both actions. For example, if a patent claim is construed narrowly in light of certain prior art, the same narrow construction is also applied for determining infringement. 4. To what extent is cross-examination of witnesses permitted during proceedings? If a party introduces testimony or evidence from a witness in the written proceedings before the hearing, the other party can request that the witness attend the hearing at the High Court or Appeal Court for cross examination. Failure to produce the witness may result in the evidence being given lesser or no weighting in the decision. While cross-examination may be permitted in the Patents County Court, this court aims to keep trials short and cost 128 Patents in Europe 2013/2014

131 United Kingdom effective, and so strictly controls crossexamination. The judge may not allow any cross-examination at all if it does not pass a cost-benefit test. 5. What role can and do expert witnesses play in proceedings? Expert witnesses can be very influential and much of the trial may be taken up by their cross-examination. Expert evidence should be restricted to what is required to resolve the proceedings. Choosing the right experts is crucial, as they must be able to deal with the pressures of the case and answer the questions put to them in a clear, consistent and unbiased manner. Badly chosen expert witnesses may be detrimental to the case. 6. Is pre-trial discovery permitted? If so, to what extent? Pre-trial discovery or disclosure is permitted and is governed at the case management conference held before the hearing. Each party must provide to the other party: the documents on which it relies; any documents that adversely affect its own or another party s case; and any documents that support another party s case. However, privileged documents need not be provided. In the Patents County Court, disclosure is more strictly controlled and may be refused if the benefit does not justify the cost. 7. Do the courts in your jurisdiction apply the doctrine of equivalents? The UK courts do not apply the doctrine of equivalents; the scope of the claims defines the extent of protection. However, the claims are given a purposive construction, which is what the person skilled in the art would have understood the patent holder to mean by the language of the claim. Therefore, it is possible that claims could be construed more broadly than their strict, literal interpretation. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Certain inventions are excluded from patentability, including business methods, computer programs per se and some biological processes. Therefore, enforcement of a granted patent that arguably covers excluded subject matter may be more difficult because the court will consider whether the claim is unallowable on this ground. Also, there is some disagreement between the Board of Appeal of the European Patent Office (EPO) and the UK courts when determining what constitutes a computer-implemented invention. Therefore, even a patent that has been granted by the EPO might be deemed invalid by the UK courts on the grounds that the claimed subject matter is excluded from patentability. 9. How far are the courts bound by previous decisions in cases that have covered similar issues? The High Court and the Patents County Court are bound by the reasons and principles in decisions of the Court of Appeal. The Court of Appeal is bound in turn by the reasons and principles in decisions of the UK Supreme Court and, except in some circumstances, by its own decisions. Decisions of the EPO Board of Appeal are not binding on the UK courts, though they are often persuasive and taken into consideration by the judge. This will change, however, if the unitary patent comes into force. 10. Are there any restrictions on who parties can select to represent them in a dispute? In the courts, a party is usually represented by a barrister or a solicitor advocate; a solicitor typically conducts matters leading up to the trial, or a patent attorney may instruct a barrister directly. A patent attorney litigator can conduct litigation in the High Court (and in any subsequent appeal), and a patent attorney or solicitor can conduct litigation in the Patents County Court (and in any subsequent appeal). 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? While not binding on the UK courts, decisions of courts in other jurisdictions on similar matters may be persuasive, particularly Patents in Europe 2013/

132 United Kingdom where they are well reasoned and issued by a respected authority. In particular, decisions of the EPO Board of Appeal are often highly regarded and decisions of other courts in EU member states may be followed. An example where there has been much disagreement between EU member states, however, is pharmaceutical patent extensions (called supplementary protection certificates). 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is difficult for any party to delay proceedings significantly before the UK courts, as the timetable for the various stages of litigation is strict and good reasons must be given for any extensions. This is especially so for the Patents County Court, because the procedure is meant to be fast and cost effective for smaller claims and clients. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? A preliminary injunction can be obtained if certain criteria are satisfied. However, they are not commonly issued and the balance of convenience will be considered by the courts. Generally, a preliminary injunction will be granted where there is a real prospect of obtaining a permanent injunction at the end of the trial and where damages would not be an adequate remedy for the patent holder if the interim injunction were not granted. The pharmaceutical industry is an example where damages might not be an adequate remedy, because a generic product will significantly damage the market value of the originator product and such damage cannot be reversed. Preliminary injunctions are often granted in these cases. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? The costs of taking a case through to a first instance decision will depend on many factors, including the choice of forum, the complexity of the case, the need for witnesses and/ or disclosure, the number of issues at hand and whether the defendant counterclaims. The Patents County Court is designed to be a faster, lower-cost route to a decision for less complex cases and has a fixed scale of recoverable costs capped at 50,000, as well as a limit on the value of any damages awarded of 500,000. High Court cases are likely to be considerably more costly, from 200,000 to significantly upwards of 1 million for a complex case taken to trial. 15. Is it possible for the successful party in a case to obtain costs from the losing party? The successful party will usually be awarded costs from the losing party, though the award will not cover all costs actually incurred by the successful party and may be reduced for many reasons (eg, if the successful party did not win on all points). As mentioned in Question 14 above, in the Patents County Court recoverable costs are capped at 50, What are the typical remedies granted to a successful plaintiff by the courts? A successful patent holder may be granted: damages (or an account of profits at its choice); a final injunction preventing the infringer from committing any further acts of infringement; delivery up or destruction of any existing infringing products; and an award of costs. A successful claimant in revocation proceedings will be granted an order revoking the patent and probably an award of costs. 17. How are damages awards calculated? Is it possible to obtain punitive damages? A successful patent holder can choose whether damages should be based on lost profits from sales, a royalty for sales by the infringer or an account of profits. This latter option may be a higher award than could be recovered for damages, but often requires a complex calculation. Thus, it is rarely chosen. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? A successful patent holder will usually be 130 Patents in Europe 2013/2014

133 United Kingdom granted a permanent injunction for a valid and infringed patent, unless there are compelling reasons not to grant the remedy. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? To obtain a decision at first instance takes up to about 18 months in the High Court. A trial can be expedited if requested and should be significantly quicker than a standard trial. The Patents County Court aims to streamline and control proceedings. Thus, from filing the claim to obtaining a decision could take under half the time taken by the High Court. 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 can apply for leave to appeal either to the court of first instance or directly to the Court of Appeal. The appeal must have a genuine prospect of success or another compelling reason for leave to be granted. The appeal hearing is confined to points of law and will not revisit all matters decided upon at first instance. In most cases the appeal will be heard within about 12 months of the first instance trial. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is alternative dispute resolution a realistic alternative to litigation? Although parties are not obliged to undertake alternative dispute resolution (ADR), the courts actively encourage parties to consider whether an agreement can be reached via ADR. At the case management conference, the judge will ask whether the parties have been advised about ADR and whether an adjournment is being sought to allow ADR to take place. The parties legal representatives should also have discussed ADR with them before commencing litigation. A mediation service is provided by the UKIPO using accredited mediators with extensive experience of dealing with IP disputes. The UK courts appear less pro-patent holder than those in other EU countries: the success rate for patent holders in the United Kingdom is about one-third of that in France, Germany and the Netherlands. This relatively low UK figure does not reflect the full reality either, as due to the structured nature of the way that a case is handled the likelihood is low of an unsuccessful defendant having to pay costs and damages, as well as face a permanent injunction. The statistics are also affected by the fact that the proactive steps taken by UK judges to encourage settlements mean that, essentially, only cases in which the defendants have a genuine prospect of defeating the infringement claims go all the way to a decision. Furthermore, the UK courts hear many pharmaceutical and biotechnology cases, but secondary patents in these fields (eg, those covering formulations, methods of use, polymorphs, isomers, prodrugs, esters and salts) have a very low success rate. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? The United Kingdom has signed up to the London Agreement, so translations have not been required by the UKIPO since February Are there any other issues relating to the enforcement system in your country that you would like to raise? The newly adopted Unified Patent Court Agreement will have a significant impact on patent litigation in the UK courts. The agreement is designed to ensure the uniform applicability of patent law throughout the participating EU member states. The agreement, which establishes a unified patent court, is expected to enter into force on January or after 13 contracting states have ratified it, provided that the United Kingdom, France and Germany are among them. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Patents in Europe 2013/

134 Contributing profiles Mathys & Squire Mathys & Squire 120 Holborn, London EC1N 2SQ United Kingdom Tel Fax Web Ilya Kazi Partner Ilya Kazi holds a master s in natural sciences from Cambridge University and qualified as a patent attorney in His technical specialities include information technology, networking and communications technologies, video and audio processing, transmission and electronics, gridtie and charge control. Mr Kazi has practised at a major Silicon Valley law firm, enabling him to give clients comprehensive advice on obtaining maximum worldwide patent protection and dealing with competitors portfolios. He has extensive experience of European Patent Office opposition and appeal proceedings, and has been involved in commercial dispute resolution within formal mediation proceedings and litigation. Mr Kazi has also negotiated positive outcomes for clients charged with infringement. In addition, he advises on exploitation and licensing, as well as on commercial portfolio development. Catherine Booth Associate clbooth@mathys-squire.com Catherine Booth has an honours degree in physics and a PhD relating to optical spectroscopy of semiconductors, both from the University of East Anglia. She qualified as both a chartered and a European patent attorney in She has worked in private practice and in-house with a major pharmaceutical company, handling its entire mechanical IP portfolio, before joining Mathys & Squire. Dr Booth s practice covers a wide range of technical fields, with particular expertise in medical devices and related pharmaceuticals, healthcare and hygiene, optics, engineering, semiconductors, telecommunications and electromechanical devices. She advises on a variety of IP matters, including invention harvesting, portfolio management, due diligence, freedom to operate, litigation and risk mitigation. Dr Booth regularly drafts, files and prosecutes patent applications in the United Kingdom, Europe and internationally. 132 Patents in Europe 2013/2014

135 Firm directory Austria Barger, Piso & Partner Mahlerstraße 9 Vienna A-1010, Austria Tel Fax Web Finland Backström & Co Attorneys Kasarmikatu 44 FI Helsinki, Finland Tel Fax Web Czech Republic PATENTSERVIS Praha, as Na Podkovce 280/10 Prague 4, Czech Republic Tel Fax Web France Casalonga et Associés 8 avenue Percier Paris, France Tel Fax Web Denmark Høiberg A/S European Patent and Trademark Attorneys St Kongensgade 59 A, 1264 Copenhagen K, Denmark Tel Fax Web France Casalonga Avocats 5/7 avenue Percier Paris, France Tel Fax Web Patents in Europe 2013/

136 Firm directory Germany COHAUSZ & FLORACK Patent und Rechtsanwälte, Bleichstrasse 14 D Dusseldorf, Germany Tel Fax Web Iceland Arnason Faktor Gudridarstig 2-4 IS-113 Reykjavik, Iceland Tel Fax Web Germany KUHNEN & WACKER Intellectual Property Law Firm Prinz-Ludwig-Str 40 A, Freising, Germany Tel Fax Web Italy Rapisardi Intellectual Property Via Serbelloni Milan, Italy Tel Fax Web Greece Dr Helen Papaconstantinou, John Filias and Associates 2 Coumbari Street, Kolonaki,10674 Athens, Greece Tel Fax Web Netherlands AKD Advocaten & Notarissen Bijster 1, 4817 HX Breda, Postbus ES Breda, The Netherlands Tel Fax Web Patents in Europe 2013/2014

137 Firm directory Netherlands NLO (Nederlandsch Octrooibureau) JW Frisolaan JS The Hague, Netherlands Tel Fax Web Poland DLA Piper Wiater spk ul Emilii Plater 53 PL Warsaw, Poland Tel Fax Web Netherlands BarentsKrans Lange Voorhout 3, 2514 EA The Hague, Netherlands Tel Fax Web Romania Ratza & ratza Ratza Building, AI Cuza Blvd Bucharest 1 - Romania Tel Fax Web Norway Bull & Co Advokatfirma AS Observatoriegt 1B, PB 2583 Solli 0203 Oslo, Norway Tel Fax Web Spain Amat & Vidal-Quadras Advocats Av Pau Casals 14, 6º Barcelona, Spain Tel Fax Web Patents in Europe 2013/

138 Firm directory Sweden Awapatent AB Matrosgaten 1, PO Box Malmo, Sweden Tel Fax Web United Kingdom J A Kemp 14 South Square, Gray s Inn London WC1R 5JJ, United Kingdom Tel Fax Web Switzerland E Blum & Co AG Vorderberg 11 CH-8044 Zurich, Switzerland Tel Fax Web United Kingdom Mathys & Squire 120 Holborn, London EC1N 2SQ United Kingdom Tel Fax Web Turkey Destek Patent Inc Destek Patent AS, Polaris Plaza Ahi Evran Cad No:1 K:17, Maslak, Istanbul 81570, Turkey Tel Fax Web Patents in Europe 2013/2014

139 Bull & Co on your side! Do you have great ideas? Copyrights? Trademarks? Designs? Inventions? Patents? Know-How? Bull & Co has protected Norwegian and international IPR for generations. Our goal is to help you through the entire value chain of exploiting your IPR, from protecting the first brilliant idea through R & D to capitalization, to management of extensive IPR portfolios and IPR litigation. We help your start-up with adequate protection of IPR, we buy IPR portfolios, we wash commercials, we fight counterfeits, we do IPR Due Diligence, we help you develop an IPR-strategy, we help you establish IPR Management from A to Z. We assist all IPR-intensive industries from museums and the arts to retail, from apparel and consumer goods to international design icons, from film and entertainment to high-tech and pharmaceutics, from the IT-start-up to international electronic commerce. Bjarte Bogstad Tom Eilertsen Amund Grimstad Bente Holmvang Kristine M. Madsen Rune Nordengen Harald Sommerstad Jenny Sveen Hovda Andreas C. Wahl bbo@bullco.no te@bullco.no ag@bullco.no bho@bullco.no kmm@bullco.no rn@bullco.no hs@bullco.no jsh@bullco.no acw@bullco.no We have extensive international networks and several of our lawyers are highly recognized by our peers, in Chambers, Legal 500, Martindale Hubble, and PLC. Our business is to mind your business!