This article gives an overview of the most important topics that need to be examined when a patent owner is confronted with an infringement (or potential infringement) that arises in more than one European jurisdiction. While such a situation could of course give rise to multiple litigation in a number of countries, a well-advised IP specialist will not make a decision to launch such multiple proceedings without contemplating a number of issues that could help him in making his choice of where to start first, and how to proceed next.
Discovery and other procedures to find evidence of infringement
The first step when starting IP litigation consists of gathering evidence of the alleged infringement. There is a large choice of procedures available in Europe, each having its own peculiarities. A patent owner often has a strategic interest in going for a procedure in one country while at the same time keeping open all options to start main proceedings and to use the gathered evidence in other jurisdictions when necessary.
The disclosure procedure in the English courts (formerly known as discovery) offers numerous advantages, since the defendant can be compelled to produce documents that would otherwise be unavailable or even unknown to the plaintiff and/or a description of their product and process. The results of the disclosure are, however, meant for the English proceedings only, although the English court can give leave to use them abroad. The procedure is also available before proceedings have been launched in certain circumstances.
In the civil law countries, the saisie description is a very popular pre-trial alternative: it is an ex parte procedure that allows the IP owner to enter – without prior warning – the premises of any third party to find evidence of infringement before taking a decision on launching main proceedings. The procedure already exists in France, Belgium, Italy and Scotland (while in England and Wales the now little-used Anton Piller order is also available); and the European directive on enforcement of intellectual property rights mandates that this type of procedure should become available everywhere. In Italy and France, the saisie description is even available prior to the date of grant of a patent; this can be very interesting in the early stage of a suspected infringement. In Belgium, the saisie has other attractive features: it can be obtained even without holding a Belgian patent, and the information gained from that procedure can be freely exported and used in main proceedings elsewhere in the European Union.
In Germany, recent court decisions have authorised some type of discovery after a major shift in the leading case law in 2002 when the Federal Supreme Court issued its decision in Faxkarte. In the Netherlands, discovery was not available until 2002. Now a Dutch court can order the disclosure of certain documents and appoint an expert who can perform enquiries at the premises of the party who is suspected of infringement.
The relationship between validity and infringement proceedings
In all European countries, except Germany, the courts deal with questions of infringement and validity simultaneously. An important consequence is that the patent owner will almost inevitably face a counterclaim fortinvalidity in the main proceedings, which must be handled at the same time as the question of infringement. This of course complicates and/or delays the proceedings. Germany is the only country with a dual system, where proceedings for validity and infringement are entirely disconnected from each other and where invalidity issues rarely delay the outcome of infringement litigation. This offers the advantage of speedy and less complex infringement proceedings, and explains why Germany is a preferred venue for patent enforcement litigation.
Effect of EPO opposition proceedings
When a European patent has been granted, and has been converted into a bundle of national patents that are enforceable, it remains open to a centralised challenge via opposition proceedings before the European Patent Office.
The completion of these proceedings takes (unfortunately) many years, and this has a delaying effect on parallel litigation before certain national courts: in Belgium and France, opposition proceedings before the EPO cause the courts very often (if not systematically) to stay the main proceedings if an invalidity action is pending there, until a final decision has been reached by the EPO.
In Holland, Italy, Germany and, most particularly, the UK, to the contrary, such a stay is not automatic and the courts will in most cases go ahead notwithstanding the opposition. The German courts will stay the infringement proceedings only when there is a high likelihood that the patent will be revoked. Another peculiarity of the German litigation system is that national nullity proceedings cannot be started before the Federal Patent Court until the EPO opposition proceedings have been concluded or the opposition period has expired.
All courts in the EU provide, at least in theory, for quick relief via preliminary injunctions. However, not all of them use that possibility to the same extent. The Dutch kort geding is by far the most advanced and efficient preliminary injunction procedure because of the ease with which the Dutch courts accept urgency (always presumed in case of IP enforcement), the speed of the proceedings (a trial date is obtained within weeks of commencement of the proceedings) and the in-depth study of both validity and infringement issues of the patent.
Other jurisdictions, such as the UK, only grant preliminary injunctions in exceptional circumstances, typically when irreparable harm for the plaintiff is likely and the defendant would not suffer irreparable damage from a temporary injunction. If both parties risk suffering irreparable harm, the English court must decide on the balance of convenience. Preliminary injunctions are less frequently granted in the UK and in Germany because the main proceedings can come there to trial in less than a year.
A preliminary injunction is granted in Germany only in urgent matters when the infringement is clear and the patent is shown to be valid, sometimes even on an ex parte basis. To protect itself against such an ex parte action, the alleged infringer can file in advance a Schutzschrift with the German courts to make sure that its defence arguments are heard before the application is granted. In France, a preliminary injunction is possible, but only when the patent is no longer open to opposition. In Italy, preliminary injunction proceedings are by far the most efficient enforcement action, benefiting from a very generous urgency requirement.
In Belgium, meanwhile, a preliminary injunction can be granted, even during opposition proceedings, and regardless of the outcome of the first instance decision at the EPO. Whereas urgency is required in inter partes preliminary injunction proceedings (kort geding) that is not the case for the ex parte saisie description, where measures of seizure can be obtained if they are reasonable in view of the circumstances.
The efficient protection of a patent depends on the availability of measures that encompass the largest possible volume of potential infringement. Ideally, these measures should therefore extend beyond the national borders and have a European-wide reach. But since a European patent is still a bundle of national patents, subject to their respective national rules for assessing infringement, there is fierce debate as to what grounds a national court could judge on the infringement (or the lack thereof) of a patent granted in another country.
The Dutch courts have, first via their well-known kort geding procedure, but also in main proceedings, introduced the concept of a cross-border injunction and are still issuing them notwithstanding some restrictions imposed since 1998. Other national courts, such as those in Germany, have also issued cross-border injunctions, taking advantage of the fact that in their proceedings, invalidity arguments do not have to be dealt with. Also the Belgian courts have demonstrated their readiness to do so, starting from theassumption, developed by case law, that a European patent is prima facie valid.
However, other courts, such as those in the UK or in France, have been reluctant to grant any cross-border relief at all. They take the view that they cannot deal with the infringement question of a foreign patent when issues of infringement and validity are so intertwined with each other that it is not possible to judge one without the other, taking into account that a national court has no jurisdiction to invalidate a foreign patent. But the matter remains highly controversial, and of crucial importance in view of the fact that the Community patent will not become available for many years to come while the demand for cross-border relief is greater than ever before. Two decisions are now eagerly awaited from the European Court of Justice in the GAT v Luk and Hoffmann La Roche v Primus cases. It is hoped that these will provide final answers to the questions set out here above.
Declaration of non-infringement and torpedo actions
In patent infringement proceedings, it is vital to be in the driver’s seat and to take all initiatives. For an alleged infringer, the best way to achieve this is by way of launching an action for declaration of non-infringement. When such a claim is formulated, in addition, in respect of more than one country, it has the effect of blocking national infringement proceedings in other countries by virtue of the rules of lis pendens that govern the rules of jurisdiction in the European Union.
Although the legal basis for justifying cross border jurisdiction in a typical torpedo action (ie, when the patent owner is not located in the country where the proceedings are filed) has been rejected by the highest courts in Sweden, Belgium and Italy, the patent courts in Germany continue to recognise the blocking effect of these foreign proceedings relating to the same patent and the same subject matter as long as they are pending by staying their infringement proceedings in favour of the declaration action abroad. Hence, the torpedo strategy still works there.
An action for declaration of non-infringement should not necessarily be filed just to block foreign proceedings. It is the only available remedy for an alleged infringer that wants to undo preliminary injunction or seizure measures that have been enforced against him, or to present them. In Belgium, such a declaration can only be obtained via main proceedings and not as a preliminary measure, since that would amount to an illegal anti-suit injunction.
Award of costs and recovery of attorneys’ fees
Court systems in the European Union have a variety of ways of dealing with the award of costs and fees arising from litigation. In Italy, for instance, although the law states that losing parties should pay the costs of the litigation, the courts are reluctant to order them to pay the entire amount requested. Moreover, when the subject matter of the litigation is particularly complex or when the plaintiff does not obtain a full victory, the Italian court can divide the costs between the parties. By contrast, the English courts are more inclined to award litigation costs at the expense of the losing party; or they can award the costs against a party that has unnecessarily provoked costs by raising futile arguments or causing unnecessary procedures, even if that party wins. In Germany, costs also have to be borne by the losing party but they are strictly calculated according to formal rules resulting in the Streitwert of the proceedings. In Belgium, the Supreme Court has recently allowed the recovery of attorneys’ fees but it remains to be seen how this will now be implemented further.
These diverse rules should be harmonised soon as a result of European Directive 2004/48/EC of 29th April 2004 concerning the enforcement of intellectual property rights. It requires that: “All the member states shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this.” This rule may prove particularly helpful for patent owners in smaller jurisdictions like Belgium, Luxembourg and the Netherlands, where damage awards can never be large due to the small market, but where the costs for successful enforcement of a patent may not necessarily be lower than elsewhere.
Use of languages
In a Babel-like region such as Europe, language can be an important factor in a patent dispute. Patent holders sometimes pick their preferred jurisdiction having regard to the applicable language, because it allows them to maintain better control of the case and/or to reduce costs when there is no need for translations.
As a general rule, there is no choice of language in national patent proceedings: the language that must be used is the language of the country where the proceedings are held. The court in Brussels (Belgium) offers the plaintiff a choice of language for the proceedings (French or Dutch) when thedefendant has no domicile in Belgium or has domicile in the Brussels district.
The language of the proceedings also determines the language in which testimony (written or oral) must be submitted. Documents of evidence must also be translated into the language of the proceedings. Belgian courts generally accept that documents in English should not be translated, and the Dutch courts do not require translation of documents in English or German.
To assess infringement or validity of a European patent, a national court must take the original prosecution language before the EPO into account. However, this does not exclude that all documents may have to be translated according to the above guidelines once prosecution and procedural languages are different. Thus, in some countries the parties are burdened with high costs for translation of relevant documents.
Preservation of confidentiality and protective orders
Because of the broad scope of discovery in the UK, parties and their legal counsel can be ordered to respect the confidentiality of certain information that is obtained through the disclosure process. Also, during the trial, it is possible to keep certain witness testimony or confidential documents away from the public record. In the Netherlands, it has become possible over the last few years to obtain a type of protective order prior to the start of a patent action. In all other civil law countries, there is no rule that prevents the further dissemination of documents that have been made available in patent proceedings.
In the framework of a saisie description against an alleged infringer, the French courts impose certain measures of confidentiality, including an order “for attorneys’ eyes only”. In Belgium and Italy, the court-appointed expert should guard the confidentiality of certain information that in his opinion has no relationship to the alleged infringement. But everything that is relevant to the infringement can be produced and disseminated without restriction.
There is no standard answer for the venue and type of procedure that a patent owner must choose when it wants to start a multijurisdictional dispute. The recommended approach is often to combine the best available procedures and remedies in more than one country and to co-ordinate each of them closely.
First published in the August 2005 issue of Patents in Europe.