Bird & Bird Brussels successfully defends Belgian government and the Belgian Patent Act in a peculiar constitutional challenge

10 October 2017

Our Belgian team, led by Bruno Vandermeulen, obtained an important decision from the Constitutional Court last 28 September, as they successfully defended the Belgian government and the Belgian Patent Act against a constitutional challenge about alleged discrimination of certain provisions in this law.

Since most of the patent laws in Europe, and particularly article 25.b of the Agreement on a Unified Patent Court (UPC) contain the same provision that was attacked in Belgium on constitutional grounds, this decision has also relevance outside Belgium.

The alleged discrimination was about the extra legal requirement for making the offer of a patented process an infringement, whereas that requirement does not exist for making the offer of a patented product an infringement. To constitute infringement, the offering of a patented process must not only take place on the territory where the patent has effect, but in addition the offer must be made for applying the patented process in that same territory where the patent has effect. Belgian and many other patent laws do not require such extra condition for making the offer of a patented product an infringement: it suffices that the offer of the product is made in the territory where the patent has effect, regardless of whether the product is ultimately sold, or whether it is sold in the territory where the offer took place.

Many companies base their business plan and existence on this different treatment between the protection conferred to a product claim and a process claim: they make machines, devices or software programs exclusively for export, hence do not have to take process patent claims of their competitors into account in their home country, but only in those country/countries where the products they will actually offer their products sale. This benefits an industry which targets exclusively the Far East, Latin America or other countries where patents are not always filed because too expensive or too difficult to enforce.

An English company (P2I) who owns of a process patent in Europe had attacked such a Belgian company (Europlasma) who made machines that were exclusively sold outside the EU and that, only when effectively in operation, infringed a process patent owned by P2I in Europe. The patentee argued that the different treatment between product claims and process claims was discriminatory and unconstitutional. So the question was put before the Belgian Constitutional court. 

That constitutional challenge has now been rejected, for reasons that relied on the "Records of the Luxembourg Patent Conference of 1973" where all European member states had to agree on a text for the Community Patent (the predecessor of the UPCA that never entered into force). During that Luxembourg Conference, a political compromise needed to be reached between the European member states who defended very opposite opinions. Whereas some delegations (incl. Belgium, France and Germany) wanted to prohibit not only the application, but also the offer of the patented process, other member states (notably the UKL and most of all The Netherlands) only wanted to prohibit the application of the patented process, not its mere offer. The argument of the Dutch delegation for not prohibiting the offer of a patented process was very interesting: the Dutch delegates took the position that such offer would prevent third parties from showing their own know-how for putting the process of the patentee into effect. They argued that every offer of a patented process is accompanied by know-how from the supplier, and that this supplier should not be discouraged from finding customers only because those customers might infringe a third parties' patent.

We successfully assisted the Belgian government – and ultimately convinced the Constitutional Court – that the negotiation history of the Luxembourg Patent Convention, and the delicate balance that was reached by way of compromise - justified this subtle but important difference of standard of protection between product and process claims in the European patent laws.

Our team was led by IP partner Bruno Vandermeulen with assistance from Marc Martens (Partner) Domien Op de Beeck (Senior Associate) and Sylvia de Graaf (Associate).