Cross-border patent litigation in Belgium: the next generation

13 April 2005

Bruno Vandermeulen

Not so long ago, at the end of the twentieth century, patent litigation in Belgium was considered complex and not rewarding because of the slowness of legal proceedings, the appointment of court experts who knew hardly more about patents than the judges who appointed them, law practitioners who were unwilling to read and understand technical issues, and the court’s reluctance to award damages that adequately compensated a patent owner for his loss of investments in pursuing the infringement.

These deficiencies culminated during the end of the last century in the so-called “Belgian torpedo”-strategy, whereby the Belgian (more particularly the Brussels) court was flooded with claims for cross border declaratory judgment of non-infringement. These claims were filed with as sole purpose to frustrate foreign infringement proceedings, taking (unfair) advantage of the rule of lis pendens contained in the Brussels Convention (now the EEX-Regulation). Conducting such a procedure was the ultimate experience of Belgian judicial surrealism: plaintiffs behaved in fact like defendants, by delaying the procedure as much as possible, and avoiding that the court would take any decision whatsoever. The defendant / patent holder, on the other hand, either did nothing and let the case rest with the Belgian court, or complained before the foreign court about the incapacity of the Belgian court to deal with this practice and the necessity to terminate it. No attempt was made by any Belgian practitioner to challenge this practice from within the system.

The new landscape

This situation changed dramatically at the dawn of the new century. There are basically three reasons for this. First, because a new generation of patent practitioners realised that there was an as yet untapped business opportunity for bringing a patent case rapidly to trial, instead of keeping it asleep for many years, causing only unhappy clients, long lasting conflicts of interest and generating much less billing. Second, because a new generation of non-politically appointed judges had come to the bench in the late nineties, importing fresh air and modern thinking in the court rooms . Thirdly, more in general, because the Belgian judiciary became more and more receptive for the international impact of patent infringement proceedings, and realised that something needed to happen.

The first step was made by the Belgian Supreme Court in September 1999, when it rendered its landmark decision authorising a “saisie description” (an ex parte discovery measure) without requiring the existence of a patent in Belgium. Reminding that article 24 of the Brussels Convention gave a judge jurisdiction to issue preliminary measures even if the main proceedings had to be conducted in another member state, it welcomed owners of foreign patents to come and search for evidence in Belgium of infringement of their foreign patent. In very clear terms, the court said that the results of the Belgian discovery were not exclusively meant for the Belgian court, but could very well be “exported” and used in foreign court proceedings. There was even no need to launch main proceedings in Belgium at all.

That same year, the Antwerp court of appeal issued the very first Belgian cross border injunction, directed against a Belgian company. The decision was reported only many years later, and remained unnoticed for most practitioners.

Then, in the first months of the year 2000, the Brussels court of first instance, endorsed by its court of appeal, issued a number of decisions that curtailed abusive “torpedo” tactics, but that left the way open for “genuine” cross border actions aiming at obtaining an injunction or a declaration of non-infringement. The decisions analysed and applied carefully the case law of the European court of justice, banned abuses of the procedure, but did not exclude cross border actions as such, whether injunctive or declaratory.

These decisions were rendered by dynamic judges who wanted to reverse the negative image that Belgian patent courts had acquired in the recent years. Not only efforts were made to reduce the judicial backlog and speed up main proceedings, but the courts also became receptive to entertain preliminary injunction proceedings, in matters that became increasingly technical and complex. This explains why, on one hand, the Brussels court of appeal did away with most of the “torpedo” practice in its two judgments of 20 February 2001 (Roche / Glaxo) and, on the other hand, the Brussels court of first instance issued on 14 September 2001 another and much wider disseminated pan-European preliminary injunction (Unilever / Colgate).

Good news for patent owners

Patent rights have since long been well protected in Belgium via the ex parte procedure of “saisie description”, that also offers the possibility to obtain an ex parte injunction. The discovery action, contrary to other jurisdictions, offers the advantage of appointing patent attorneys, IT specialists or any other type of professional as court experts. This enhances the efficiency and speed of the discovery. In recent years, inter partes preliminary injunction proceedings have also seen the light, and the Belgian courts have shown a clear willingness to entertain also complex patent litigation relating to medical devices, biotechnology and pharmaceuticals.

The key element for justifying injunctive relief in such proceedings is the presumption of validity that is attached to a European patent. This presumption is awarded because the patent has been examined on novelty and substantive grounds by the European Patent Office. In its landmark decision of 12 June 1990 in the Improver / Remington case (the Belgian version of the Epilady litigation), the Antwerp court of appeal had accepted the prima facie validity of a European patent even though the patent had been revoked by the EPO Opposition Division and that revocation was under appeal, whereby the decision to revoke was suspended. That reasoning applies until today and allows Belgian judges, when they sit in preliminary injunction proceedings, to take the text of the granted patent for granted regardless of what happens (or has happened) before the European Patent Office.

By systematically accepting, in the framework of preliminary injunction proceedings, the prima facie validity of a European patent, Belgium has become a preferred venue for patent owners who wish to quickly enforce their patent rights even when opposition proceedings are pending. Because the validity of their patent cannot be questioned during those proceedings, even when opposition proceedings are pending before the European Patent Office.

Another advantage is that, if in the main proceedings the patent owner ultimately looses on infringement although he had prevailed in the preliminary injunction proceedings, that does not mean that the patent owner is automatically liable for the enforcement of that preliminary injunction. The defendant can only obtain damages for unlawful enforcement of a preliminary injunction if he can show that the patent owner did not act carefully, i.e. when he has withheld information or when the patent appears afterwards to be invalid. This gives a patent owner extra protection.

This situation has encouraged many patent owners to try their luck in Belgium, and the Belgian courts have in recent years isued several judgments that have not only refined the criteria for granting provisional relief, but that have dealt with legal issues such as reversal of the burden of proof for products directly obtained by a patented process, the doctrine of equivalence, double patenting, and indirect patent infringement. So in only a few years time, the much criticised “Belgian torpedo” actions have been replaced by legal actions that truly address the merits of the patent dispute.

The defendant's options

To escape these generous preliminary injunctions, potential infringers must now go to the Belgian court for a declaration that their products do not fall under the scope of a particular patent. Such actions are not (any longer) intended to delay (foreign) infringement proceedings, but to seek genuine protection via a rapid court decision. In two judgments of June 2004 (Eurogenerics / SKB) and October 2004 (Eurogenerics & Ratiopharm / Lundbeck), the Brussels court denied such declaratory relief via preliminary injunction proceedings: such actions were held to be anti-suit injunctions, prohibited by the Belgian Constitution. This meant, as a matter of fact, that a patent holder has always the right to draw first blood in Belgium, at least when it comes to launching preliminary injunction proceedings. Hence, a declaratory action on the merits is the only solution for an alleged infringer who really has assets to protect, and who feels strong about his patent position.

A nice example of this modern strategy via a declaratory action is the “Senseo” judgment of the Antwerp court of first instance of 20 February 2004, where manufacturers of alternative coffee brands obtained a declaratory judgment of non-infringement in less than thirteen months between the launch of the action and the date of judgment. The decision lifted the ex parte seizure actions that had been enforced against them, and shielded them from further seizures. Such declaratory action has now become the only available countermeasure for an alleged infringer in a court system where infringement is easily accepted in preliminary injunction proceedings, and very often even on an ex parte basis.

First published in the April 2005 issue of Managing IP magazine.