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Patents

in 38 jurisdictions worldwide

Contributing editor: Stuart J Sinder

®

2012

Published by

Getting the Deal Through

in association with:

Anand and Anand

ARS-Patent

Barger, Piso & Partner

Brann AB

Bufete Mejía & Asociados

Bureau Casalonga & Josse

CMS Cameron McKenna LLP

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E Blum & Co AG

Estudio Colmenares & Asociados

Fabara & Guerrero Intellectual Property

Formosa Transnational, Attorneys at Law

Freedman

Hoet Peláez Castillo & Duque

Iulia Burbea Law Office

Kenyon & Kenyon LLP

Law Office Pepeljugowski

Lilla, Huck, Otranto, Camargo Advogados

Liu, Shen & Associates

Malamis & Malamis

Markides, Markides & Co LLC

Moeller IP Advisors

Momo-o, Matsuo & Namba

Monard-D’Hulst

OlarteMoure

Olivares & Cia

ONC Lawyers

Patpol

Pham & Associates

Price Plinner Law Offices

Raul César Ferreira (Herd) SA

Rominvent SA

Sandel, Løje & Partnere

Strachan Partners

Studio Legale Bird & Bird

Thompson Associates

Vossius & Partner

Yasaman Law Firm


Patents 2012

Contributing editor:

Stuart J Sinder

Kenyon & Kenyon LLP

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Patents 2012

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CONTENTS

Global Overview Stuart J Sinder Kenyon & Kenyon LLP 3

European Patent Convention Elard Schenck zu Schweinsberg Vossius & Partner 8

Angola António Vicente Marques Raul César Ferreira (Herd) SA 12

Argentina Mariano Municoy Moeller IP Advisors 16

Austria Peter Israiloff Barger, Piso & Partner 22

Belgium Ben Hermans Monard-D’Hulst 30

Brazil Alexandre Domingues Serafim, Lucas Garcia de Moura Gavião and Juliana Krueger Pela

Lilla, Huck, Otranto, Camargo Advogados 37

Canada Gordon Freedman and Mark Weir Freedman 43

China Jianyang (Eugene) Yu Liu, Shen & Associates 51

Colombia Carlos R Olarte and Andres Rincon OlarteMoure 57

Cyprus Hermione Markides Markides, Markides & Co LLC 64

Denmark Johan Løje and Mette Højlund Sandel, Løje & Partnere 70

Ecuador María Rosa Fabara-Vera Fabara & Guerrero Intellectual Property 76

France Gérard Dossmann Bureau Casalonga & Josse 83

Germany Sandra Pohlman, Oliver Schulz and Rainer Friedrich df-mp 88

Greece Alkisti-Irene Malamis Malamis & Malamis 96

Honduras Ricardo Anibal Mejía M Bufete Mejía & Asociados 102

Hong Kong Hans Lee ONC Lawyers 108

India Archana Shanker and Gitika Suri Anand and Anand 114

Israel Sa’ar Plinner Price Plinner Law Offices 123

Italy Massimiliano Mostardini and Daniele De Angelis Studio Legale Bird & Bird 128

Japan Koichi Nakatani Momo-o, Matsuo & Namba 136

Macedonia Valentin Pepeljugoski Pepeljugoski Law Office 143

Malaysia Benjamin J Thompson Thompson Associates 149

Mexico César Ramos Jr, Alejandro Luna, Juan Luis Serrano and Erwin Cruz Olivares & Cia 157

Mozambique António Vicente Marques Raul César Ferreira (Herd) SA 164

Nigeria Olusola Mesele and Aderonke Adejugbe Strachan Partners 168

Peru Carmen Arana Courrejolles Estudio Colmenares & Asociados 174

Poland Katarzyna Karcz and Jaromir Piwowar Patpol 182

Portugal Patricia Rodrigues Raul César Ferreira (Herd) SA 189

Romania Cosmina Fierascu and Mihaela Teodorescu Rominvent SA

and Iulia Burbea-Milescu Iulia Burbea Law Office 195

Russia Vladimir Rybakov ARS-Patent 202

Sweden Kristian Fredrikson Brann AB 207

Switzerland Daniel Müller and Rainer Schalch E Blum & Co AG 213

Taiwan Yulan Kuo, Hsiaoling Fan and Charles Chen Formosa Transnational, Attorneys at Law 219

Turkey Hamdi Yasaman and Fülürya Yusufog˘ lu Yasaman Law Firm 226

United Kingdom Nick Beckett and Jeremy Morton CMS Cameron McKenna LLP 232

United States Stuart J Sinder, Michelle M Carniaux and Shawn W O’Dowd

Kenyon & Kenyon LLP 242

Venezuela Carlos Pacheco and María M Nebreda Hoet Peláez Castillo & Duque 256

Vietnam Pham Vu Khanh Toan Pham & Associates 262

www.gettingthedealthrough.com


BELGIUM Monard-D’Hulst

Belgium

Ben Hermans

Monard-D’Hulst

Patent enforcement proceedings

1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing

patent rights against an infringer? Are there specialised courts in

which a patent infringement lawsuit can or must be brought?

As a result of a comprehensive judicial reform relating to the

enforcement of intellectual property rights that entered into force on

1 November 2007, material competence relating to patent litigation

(including claims relating to infringement and invalidity of patents)

was transferred from Belgium’s courts of first instance to the courts

of commerce, which now have exclusive competence in this area. The

Belgian legislature furthermore opted to concentrate patent litigation

in five jurisdictions only (Antwerp, Brussels, Ghent, Liège and Mons)

with the stated aim of fostering increased specialisation relating to

patent litigation within the aforementioned commercial courts. As a

result of the fairly recent transfer of competence to the commercial

courts, this goal appears to be far from accomplished. Belgian courts

will, however, typically appoint external experts to provide technical

(non-binding) advice before ruling on the merits on the case.

In line with the transposition of European Directive 2004/48/EC

of 29 April 2004 on the enforcement of intellectual property rights

in Belgian law, a prospective litigant has several procedural options

available under Belgian law.

Anton Piller order (ex parte procedure to obtain evidence and

attach infringing goods)

To obtain evidence of the existence of a suspected patent infringement,

of the parties involved (including third parties) and of the

extent and origin of the infringement, a party can petition the president

of the court of commerce in an ex parte procedure to grant it an

Anton Piller order. The ex parte nature of the procedure entails that

the alleged infringer is unaware of the petition to appoint an expert

and the decision of the court to grant the petition.

If there are prima facie indications of infringement of a prima

facie valid patent (which can be a foreign patent), the president will

order a purely descriptive measure whereby an expert is appointed

by the president to draw up a descriptive report providing guidance

on the existence, the extent and origin of the alleged infringement.

It should be noted that petitions of this nature are generally granted

as their aim is to gather evidence of an alleged infringement. The

court-appointed expert has wide ranging powers (provided the petition

is properly drafted) to gain entry to the premises of the alleged

infringing party even in the absence of the alleged infringer, gather all

relevant information and make copies of all and any relevant documents

found at the site including computer files and samples, require

the cooperation of the infringing party’s staff to override password

protections, etc.

The expert’s report should be filed within the delay specified

by the Anton Piller order and will be forwarded to both the petitioner

and the alleged infringer. Once the expert has filed his or her

report, a case on the merits should be filed within 20 working days or

31 calendar days, whichever is the longer period. Failure to do so

will result in the expert’s report being inadmissible as evidence in all

legal procedures.

A petitioner seeking an Anton Piller order can not only petition

the president of the court of commerce for a purely descriptive

measure but can also, as an accessory to such a request, seek the

attachment (seizure) of the allegedly infringing goods. The aim of

such an ancillary attachment is to prevent or impede further commercialisation

or distribution of the allegedly infringing goods. Since

the impact of such a measure on the alleged infringer’s business is

much more profound, namely, all existing stock cannot be sold and

is placed under seal, the burden of proof on the petitioner is more

extensive. More specifically, the petitioner will need to establish that

the existence of the infringement cannot be reasonably contested and

that the interests of the petitioner prevail over those of the alleged

infringer or public policy considerations. In theory, the president can

hear the alleged infringer prior to ordering the attachment of the

allegedly infringing goods but in practice this rarely happens.

Proceedings on the merits

A patent holder has a choice between two types of procedures on

the merits.

First of all, through an injunctive relief procedure the patent

holder can seek an injunction prohibiting the infringer from committing

any further acts of infringement, usually under penalty of

payment of a lump sum per infringement. Ancillary measures (such

as a publication of the judgment in trade magazines or a recall of

infringing products) may be imposed as well. The injunctive relief

procedure is an accelerated procedure akin to summary proceedings

for interim relief, but there is no need to show urgency. The president

cannot award damages or order other measures of a similar nature.

The finding of the existence of an infringement is, however, a final

decision on the merits (subject to appeal) that can serve as a starting

point for an action for damages.

Such claims for damages are reserved for the traditional procedure

on the merits before a chamber of three judges, which, as a rule,

takes far longer than a procedure for a prohibitory injunction.

If the patent holder can show the existence of urgency (namely,

other procedural means cannot lead to a timely outcome), the holder

may apply to the president of the court of commerce to obtain an

order for interim relief through summary proceedings. The assessment

of the court will be limited to a prima facie appraisal of the

parties’ rights and claims. Invalidity arguments (which are frequently

raised in patent proceedings) are usually ruled to be beyond the scope

of such a prima facie assessment, in particular because there is a presumption

iuris tantum of the validity of European patents (which is

usually not reversed even when an opposition procedure is pending

before the European Patent Organisation (EPO) or when the patent

was held to be invalid in a different member state of the EPO).

30 Getting the Deal Through – Patents 2012


Monard-D’Hulst BELGIUM

Whether or not a petition for interim relief is granted will therefore

be incumbent upon the prima facie assessment of the president of

the arguments raised to demonstrate non-infringement. Interim relief

measures will only remain valid pending a decision on the merits.

It should be noted that if the urgency is such that even summary

proceedings cannot lead to a timely result and the infringement is

happening on a commercial scale, an ex parte petition for interim

relief can be made with the president of the court of commerce who

can order attachment of, inter alia, bank accounts.

2 Trial format and timing

What is the format of a patent infringement trial?

There are no specific procedural rules applying to patent litigation.

As a result, a case on the merits will be heard by three judges, the

president (who is permanently attached to the court) and two other

judges who are lay people with a business or private sector background.

Injunctive relief procedures as well as Anton Piller orders

are decided upon by a single judge, one of the presidents of the court

of commerce.

Legitimately obtained evidence of infringement (or invalidity)

can be provided by any means. Pre-trial discovery is unknown in the

Belgian legal system, wherein each party carries its own burden of

proof subject to certain exceptions such as the Anton Piller procedure

described in question 1. There is therefore no requirement to turn

over all evidence to the opposing party. In most cases Belgian courts

rely on written proof only. In patent cases courts often rely on expert

advice by court-appointed experts for technical advice. Affidavits,

documents, witness statements and court submissions from other

related proceedings, foreign and domestic, are as a rule admissible.

Witnesses are rarely called and cross-examined. The same applies

even to court-appointed experts.

In the rare cases that it does happen, cross-examination happens

under the direction of the court and lawyers cannot address the witness

directly.

Depending on the caseload of a particular court, traditional procedures

on the merits may require upwards of a year. Injunctive relief

procedures can take up to eight months. Summary proceedings for

interim relief are usually dealt with in two to four months minimum.

One of the determining factors (other than the number of cases on

the docket of the court) is the time a court-appointed expert requires

to present his or her final report.

It should be noted that in all proceedings, oral pleadings usually

never exceed three hours, which underlines the importance of submitting

fully fleshed-out written submissions to the court.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity

and unenforceability of a patent?

As noted previously, each party bears the proof of its own allegations.

If a party claims a patent was infringed, the burden of proof

of said infringement rests with that party. Likewise, if the defendant

in a patent litigation case maintains that a patent is invalid (for

example, for lack of novelty), it bears the burden of proof of said

allegation, hence the importance of the Anton Piller procedure

described above. While there is a general principle that each party

should cooperate loyally with the fact finding, in practice there is no

requirement to turn over potentially damaging evidence to the other

party (no discovery). Each party can however petition the court to

force the other party to produce a specific piece of evidence in the

presence of clear and convincing presumptions that said party is in

possession of such evidence.

4 Standing to sue

Who may sue for patent infringement? Under what conditions can

an accused infringer bring a lawsuit to obtain a judicial ruling or

declaration on the accusation?

As a rule, only the patent holder has standing to sue. Under the

Belgian Patent Act, however, an exclusive licence holder may bring

proceedings against an infringing party if the patent holder has failed

to do so after having been advised of the intentions of the exclusive

licence holder and unless the licence agreement provides differently.

A non-exclusive licence holder has no standing to bring procedures

on its own and can only join proceedings initiated by a party with

standing (the patent holder or exclusive licensee).

An action to obtain a judgment with a finding of non-

infringement can in principle be brought by any party with a personal

interest. The same holds true for an action seeking invalidity of a

patent. It should be noted that an action to obtain a finding of noninfringement

or invalidity of a patent cannot be brought within the

framework of an accelerated injunctive relief procedure. A defendant

in an injunctive relief procedure on the merits can, however,

raise the argument of invalidity of a patent and obtain a finding of

invalidity.

5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing

to patent infringement? Can multiple parties be jointly liable for

infringement if each practises only some of the elements of a patent

claim, but together they practise all the elements?

Pursuant to the provisions of the Belgian Patent Act, indirect infringement

can give rise to liability. Any third party offering or supplying

means relating to an essential element of the patented invention on

Belgian soil to non-authorised persons will be considered an indirect

infringer if this third party was knowingly contributing or if it was

apparent from the circumstances that the means supplied were suitable

and intended for such infringing application. Multiple parties

can be held jointly liable if it can be demonstrated to the court that

they collaborated or concerted with each other, namely, they were

aware of each other’s activities and knowingly proceeded to pursue

their activities. It should be noted that the fact that a party acted

in good faith (namely, was unaware of the infringing nature of its

activities) is irrelevant under Belgian law to establish the existence of

infringement and ensuing liability.

If the means are generic or staple articles, there will only be a

finding of indirect infringement if the party that is supplied with these

means is induced to commit an infringement.

6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If

so, what are the requirements? Must all of the defendants be accused

of infringing the same patents?

In accordance with the Belgian Procedural Code, it is perfectly possible

to join other defendants in one and the same lawsuit. This is, in

fact, more the rule than the exception. Other defendants are usually

defendants that have some commercial ties (for example, suppliers,

distributors, etc) with the main defendant. Since it is not unusual

for a patent holder to petition for an ex parte Anton Piller order

before initiating a procedure on the merits, the patent holder will, on

the basis of the report of the court-appointed expert, usually have a

fairly good view on the supply and distribution channels of the main

defendant. The underlying procedural rule is that cases that are so

closely linked to one another may be joined because it is opportune to

handle and judge them together in order to avoid outcomes that may

be incompatible if the cases are handled separately. The court has a

wide discretion to decide whether it is opportune to join cases (and

as a result, defendants) and could indeed decide to join defendants

www.gettingthedealthrough.com 31


BELGIUM Monard-D’Hulst

who are making, using or selling substantially similar methods or

products without a requirement to do so. It should be noted however

that this applies to Belgian defendants only. If defendants are located

(as is often the case) in other EU countries, article 6 of EU Regulation

44/2001 of 22 December 2000 on jurisdiction and the recognition

and enforcement of judgments in civil and commercial matters

applies. Article 6 contains a number of exceptions to the general

rule that a person or company should be sued in the member state

where they are domiciled. Article 6.1 in particular states that a person

domiciled in one member state may also be sued ‘where he is one

of a number of defendants, in the courts for the place where any one

of them is domiciled, provided the claims 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’.

Since this provision provides an exception to the general rule, it is

interpreted rather restrictively by the Court of Justice. Since patent

infringement is considered a tort, article 5.3 of the aforementioned

regulation may also provide an avenue by stating that a person may

be sued ‘in matters relating to tort, delict or quasi-delict, in the courts

for the place where the harmful event occurred or may occur’. In the

event, the said regulation does not apply and there are no bilateral or

multilateral treaties in force that govern competence, article 86 of the

Belgian Code of Private International Law provides for competence

for Belgian courts in so far as the action is limited to the protection

of an intellectual property right on Belgian soil (for example, through

an action for injunctive relief). With respect to the registration and

filing and the validity of intellectual property rights, Belgian courts

only have international competence to the extent the registration or

filing took place in Belgium or can be deemed to have taken place

there on the basis of an international treaty.

7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction

support a charge of patent infringement?

Belgian courts in principle only consider actions relating to the

infringement of Belgian patents in Belgium.

There is no legal impediment for Belgian courts to take into

account the activities of an alleged infringer in other jurisdictions. If

there is a finding in a foreign jurisdiction that a patent was infringed,

a Belgian court can take this element into consideration, especially if

the jurisdiction in question is another EU court. A finding of infringement

of a Belgian patent solely on the basis of a foreign judgment

would, however, appear to deny the legal reality that there is no

Community patent with one single, uniform legal substance. In the

end, whether or not a patent was infringed should be decided in

accordance with the national law applying to said patent.

If the alleged infringer (whatever his or her nationality) is domiciled

in Belgium within the meaning of article 2 of EU Regulation

44/2001 of 22 December 2000 on jurisdiction and the recognition

and enforcement of judgments in civil and commercial matters, a

Belgian court will also have jurisdiction over acts committed in other

EU countries.

While Belgian courts will as a rule recognise and enforce crossborder

injunctions handed down by other EU jurisdictions, Belgian

case law on granting cross-border prohibitory injunctions is far from

settled, with some courts granting and other courts denying such

cross-border effect. In principle, and on the basis of the case law of

the European Court of Justice, such cross-border injunctions could

be based on article 31 of Regulation 44/2001, provided that there

is a real connecting link between the subject matter of the measures

sought and the territorial jurisdiction of the court where relief is

sought.

In general, however, Belgian courts tend to shy away from granting

a cross-border effect to their rulings (relating to infringement and

invalidity).

8 Infringement by equivalents

To what extent are ‘equivalents’ of the claimed subject matter liable

for infringement?

Equivalents are liable for infringement when a similar technical effect

is produced in a similar manner (same function) and a similar result

is produced that is not necessarily entirely identical but leads to the

same result as the patented invention.

9 Discovery of evidence

What mechanisms are available for obtaining evidence from an

opponent, from third parties or from outside the country for proving

infringement, damages or invalidity?

The patent holder can apply for an ex parte Anton Piller order as

described above. This procedure is available to holders of foreign

patents and even when the invention is not protected by a patent

in Belgium.

10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the

trial and appellate courts?

Depending on the caseload of a particular court, traditional procedures

on the merits may require upwards of a year. Injunctive relief

procedures can take up to eight months. Summary proceedings for

interim relief are usually dealt with in two to four months minimum.

One of the determining factors (other than the number of cases on

the docket of the court) is the time a court-appointed expert requires

to present a final report. It should furthermore be noted that the

right of appeal is automatic in Belgium and that an appeal will at

least double the required time frame. An appeal is not automatically

suspensive, however, which means that the initial judgment should

be executed pending the outcome of the appeal. This applies to all

prohibitory injunctions obtained through an injunctive relief procedure

on the merits.

11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit

before trial, during trial and for an appeal?

Costs depend to a large degree on the complexity of the case (namely,

the technicality of the patented invention and the technical field to

which it relates). Pre-trial costs, attorneys’ and experts’ fees are

between e10,000 and e15,000 within the framework of an Anton

Piller procedure. Within the framework of actual litigation, these

costs are between e20,000 and e40,000 per instance, depending on

the type of procedure and, again, the complexity of the case.

It should be noted that if a litigant prevails in court, experts’

fees can be recovered from the opposing party as well as attorneys’

fees, albeit if for the latter only in a limited form based on the value

of a claim and never more than between e16,500 and e33,000 per

instance. For injunctive relief procedures, the maximum amount that

can be recuperated as attorneys’ fees is limited to e1,320 to e11,000,

depending on the complexity of the case.

12 Court appeals

What avenues of appeal are available following an adverse decision in

a patent infringement lawsuit?

In principle, any decision of the court of commerce or its president

is open to appeal in Belgium. The case will be heard by the courts

of appeal in Antwerp, Brussels, Ghent, Liège or Mons, depending

on the territorial competence. There is no requirement to request

permission to lodge an appeal and the appeal will not be limited

to points of law (namely, the court of appeal will re-examine every

factual and legal element of the case if the parties wish it to do so).

32 Getting the Deal Through – Patents 2012


Monard-D’Hulst BELGIUM

A ruling by the court of appeal can be challenged before Belgium’s

Supreme Court, but this appeal is limited to points of law and

requires the intervention of a lawyer who is authorised to file such

appeals following positive advice by said lawyer with respect to the

chances of overturning the ruling of the court of appeal.

13 Competition considerations

To what extent can enforcement of a patent expose the patent owner

to liability for a competition violation, unfair competition or a businessrelated

tort?

In certain limited circumstances set out by the European Court of

Justice in its case law relating to articles 101 and 102 of the Treaty on

the Functioning of the European Union (TFEU) (formerly articles 81

and 82 of the EC Treaty), which are mirrored in Belgium’s national

competition law, a patent holder may expose itself to claims based on

the argument that competition is unduly restricted by the way it exercises

its rights as a patent holder or a claim that such exercise may

constitute an abuse of a dominant position. Belgian case law is very

scarce on this issue. In a similar vein, a court might consider the exercise

of certain rights attached to a patent to be abusive (namely, tortious)

in very specific circumstances or that such exercise constitutes

a case of unfair competition. There is little to no case law with respect

hereto. There is, however, more case law with respect to patent holders

who have obtained ex parte Anton Piller orders on the basis of

incomplete or inaccurate information or who have used the ancillary

attachment measures ordered by the court in a harmful manner

(for example, with a view to eliminating or seriously hampering a

competitor).

14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available

to resolve patent disputes?

Patent disputes can be resolved through ADR mechanisms, but

in the absence of a contractual provision imposing ADR, there is

no requirement for either party to do so. The Belgian Procedural

Code now comprises a section on mediation, but no party can be

forced to enter into a mediation process or to remain in a mediation

process.

If both parties agree, the dispute can be resolved either through

mediation or binding arbitration or a combination of both. It is also

possible for both parties to agree that a third party will be called in

to render binding advice.

Respected Belgian mediation and arbitration institutes include

CEPANI, the Belgian Centre for Mediation and Arbitration.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including

software, business methods and medical procedures?

The Belgian Patent Act contains the same exclusions as the European

Patent Convention (articles 52-53).

Therefore, the following are inter alia excluded from patent

protection:

• discoveries, scientific theories and mathematical methods;

• aesthetic creations;

• schemes, rules and methods for performing mental acts, playing

games or doing business, and programs for computers;

• presentations of information; and

• methods for treatment of the human or animal body by surgery

or therapy and diagnostic methods practised on the human or

animal body.

16 Patent ownership

Who owns the patent on an invention made by a company employee,

an independent contractor or multiple inventors? How is patent

ownership officially recorded and transferred?

When an employee of a company makes an invention within the

performance of an employment contract, the employer is considered

the owner of the invention and can therefore file a patent application

for said invention. The actual inventor has, however, the right to have

his or her name mentioned on the patent. On the other hand, if the

invention is made outside the scope of the performance of his or her

employment contract, an employee will be considered as the owner

of the invention and can therefore file for a patent. A third scenario

is the invention made by an employee outside the performance of

an employment contract but with company means. These mixed

inventions may give rise to legal complications, which is why it is

recommended practice to deal with this issue by including language

in the employment contract stating that in this case the employer will

own the invention and will have the right to file for patent protection.

Similar language will be required in contracts with independent

contractors such as consultants. Failing that, any inventions made by

independent contractors will be owned by them. If there is more than

one inventor, a situation of co-ownership arises. Patent ownership is

recorded in the patent registry of the Belgian Intellectual Property

Office of the Economic Affairs Department. Any transfer or assignment

of a patent should be notified to the Office for such transfer to

be enforceable against third parties.

Defences

17 Patent invalidity

How and on what grounds can the validity of a patent be challenged?

Is there a special court or administrative tribunal in which to do this?

Any party with a personal interest can initiate legal proceedings to

have a patent declared null and void. A patent will be annulled if it

does not meet the requirements for patent protection, namely, if it

lacks novelty, does not present an inventive step, cannot be applied

in industry or if the invention is not patentable by law. There are no

specialised courts or tribunals dealing solely with patent invalidity

claims (or infringement claims).

18 Absolute novelty requirement

Is there an ‘absolute novelty’ requirement for patentability, and if so,

are there any exceptions?

A requirement of absolute novelty does apply. A patent may not

be granted for an invention that is already part of the state of the

art or that was already made public prior to the filing of the patent

application. There are a number of exceptions to this stringent

requirement. The first exception relates to a disclosure of the invention

no more than six months prior to the filing of the patent application

if the disclosure happened without the consent of the applicant,

who was a victim of foul play. A second exception relates to disclosure

by displaying the invention at an international exhibition within

the meaning of the Paris Convention on international exhibitions.

Another important exception relates to a disclosure by a party that

was bound by a non-disclosure agreement.

19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is

‘obvious’ or ‘inventive’ in view of the prior art?

An invention is considered inventive if it does not obviously or selfevidently

follow from the state of the art to a person skilled in the

art (but who is not an expert in the particular field of the invention).

As a rule, Belgian courts will apply the problem-solution approach

adopted by the European Patent Office to determine the existence of

a sufficient degree of inventiveness.

www.gettingthedealthrough.com 33


BELGIUM Monard-D’Hulst

Update and trends

While it does not strictly relate to Belgian law alone, the most

significant development in Belgian patent law is no doubt the

apparently imminent advent of a unitary patent, which through a

single application would cover 25 of the 27 EU member states

(including Belgium). Unitary patents will be valid across the

territory of the participating member states. This should pave the

way for a true supranational patent system in Europe, something

that has been discussed for decades but has never materialised.

Unitary patents will have identical and uniform legal effects

in all participating EU member states and would be governed by

a single regulation covering all relevant legal aspects as is the

case now for community trademarks and community designs. The

European Patent Office has been asked by the EU member states

to administer the unitary patent system. The most significant

difference between the current EPO patent application procedure

and the unitary patent system would be in the post-grant phase

when the patent applicant decides on what geographical coverage

is needed.

After the patent is granted, the patent proprietor can opt

for a European patent with individual territorial protection in

the designated states or a unitary patent with unitary territorial

protection in all the EU member states participating in the

enhanced co-operation scheme. The patent proprietor can also

combine both schemes and request a European patent in a

selection of those EPO member states not belonging to the

enhanced co-operation scheme and a unitary patent for those

belonging to the scheme.

20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be

deemed unenforceable owing to misconduct by the inventors or the

patent owner, or for some other reason?

There are no grounds on which an otherwise valid patent can be

deemed unenforceable owing to the misconduct by the inventors or

the patent owner. It should be noted, however, that the European

Court of Justice has held that in certain specific circumstances the

exercise of an intellectual property right may unduly restrict competition

or be tantamount to an abuse of a dominant position. The

same principles apply to Belgian competition law, which mirrors EU

competition law.

21 Prior user defence

Is it a defence if an accused infringer has been privately using the

accused method or device prior to the filing date or publication date

of the patent? If so, does the defence cover all types of inventions? Is

the defence limited to commercial uses?

Article 30 of the Belgian Patent Act of 28 March 1984 enshrines this

defence in Belgian patent law. A person or entity, who or which prior

to the date the patent application was filed or the date of priority

of the patent, was using the invention on Belgian soil or acquired

it, has the right to continue to exploit the invention irrespective of

the existence of the patent. The right to exploitation covers commercial

exploitation and covers all types of patentable inventions

but is intuitu personae, namely, it is a personal right that can only be

transferred together with the undertaking or enterprise that enjoyed

this right.

Remedies

22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer?

When do damages start to accrue? Do damage awards tend to be

nominal, provide fair compensation or be punitive in nature?

The courts operate a distinction between direct and indirect damage.

Direct damage is the loss of profit caused by the sale of a competing

infringing product. Indirect damage includes damage to reputation,

diminished exclusivity, etc. Both types of damage can affect both

licensor and licensee. The patent holder can also petition the court to

forfeit the infringing goods or even, in the case of bad faith infringement,

forfeit the profits of the infringing party (account on profits).

Since patent infringement is considered a tort, damages (and interests)

accrue from the moment of infringement without any requirement

to give notice to the infringing party. Belgian tort law is based

on the principle of restitutio in integrum (namely, it aims to put the

victim of a tort in the same situation it would have been in if no

infringement had taken place). This allows for a lot of latitude on the

part of the courts when awarding damages. As a result, some courts

will simply rely on the findings of a court-appointed expert to assess

the damage or even the findings of the damage expert of the plaintiff,

while other courts will assess the damage ex aequo et bono, namely,

equitably or, more rarely, come up with a detailed assessment of the

damages incurred. Belgian law does not permit punitive damages to

be imposed.

23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a

final injunction against future infringement? Is an injunction effective

against the infringer’s suppliers or customers?

As outlined in question 1, it is possible to obtain a prohibitory injunction

either through summary proceedings by way of interim relief or

through an accelerated action for injunctive relief on the merits. It

is also possible to petition the president of the court of commerce to

grant an attachment of the infringing products as an ancillary to an

Anton Piller order. An injunction cannot be enforced against suppliers

and customers unless they are a party to the proceedings.

24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing

products into the country? Is there a specific tribunal or proceeding

available to accomplish this?

For infringing products entering the market in Belgium, it is possible

to obtain specific custom measures pursuant to EC Customs Regulation

1383/2003 (Regulation concerning customs action against

goods suspected of infringing certain intellectual property rights and

the measures to be taken against goods found to have infringed such

rights). The Regulation is designed to protect the intellectual property

rights of constituents of EU member states.

The Customs Regulation encourages EU member states to

facilitate cooperation between their respective customs agencies in

preventing infringement of intellectual property rights and permits

owners of intellectual property rights to prohibit entry, export or reexport

of goods infringing trademarks, copyright, patents, national

or Community plant variety rights, designations of origin or geographical

indications and geographical designations.

Where the customs authorities have sufficient grounds for suspecting

that goods infringe an intellectual property right, they may

suspend the release of the goods or detain them for three working

days from the moment of receipt of the notification by the rightholder

and by the declarant or holder of the goods, if the latter is

known, in order to enable the rightholder to submit an application

for action. The period of suspension may subsequently be increased

to one year.

Where customs authorities have detained or suspended the

release of goods that are suspected of infringing an intellectual property

right, the member states may provide, in accordance with their

national legislation, for a simplified procedure to be used with the

rightholder’s agreement that enables customs authorities to have such

goods abandoned for destruction under customs control, without

there being any need to determine whether an intellectual property

right has been infringed under national law. This is the case under

Belgian law.

34 Getting the Deal Through – Patents 2012


Monard-D’Hulst BELGIUM

Once a product is freely circulating within the single market with

its free movement of goods and services, the concept of ‘border’ loses

its meaning and patent holders have to resort to taking legal action

in the court of commerce.

25 Attorneys’ fees

Under what conditions can a successful litigant recover costs and

attorneys’ fees?

There is no specific regime for recovery of attorneys’ fees within the

framework of a patent infringement action. Belgian procedural law

does allow for very limited recovery of attorneys’ fees based on the

value of the claim. The absolute maximum that can be recovered

per distinct action is e33,000 for claims above e1 million, but this

is available only if the court is persuaded that the case is sufficiently

complex to warrant such fees. The normal limit is e16,500. It should

be noted that, within the framework of obtaining injunctive relief

(such as a prohibitory injunction), recovery of attorneys’ fees is limited

to e11,000 with a standard amount of e1,320.

Legal costs are, however, fully recoverable and include court

costs, cost of service of writs and, most importantly, fees of courtappointed

experts (whether ex parte or otherwise).

26 Wilful infringement

Are additional remedies available against a deliberate or wilful

infringer? If so, what is the test or standard to determine whether the

infringement is deliberate?

In the case of deliberate or wilful infringement, the court can be

petitioned to order the destruction of the infringing goods. The court

can also order an account of profits. It should be noted that these

two measures are only available to a plaintiff in a traditional action

on the merits and not, for example, in an action for injunctive relief

on the merits.

It should furthermore be noted that some acts of deliberate and

wilful infringement (such as piracy on a commercial scale) are criminal

offences following the enactment of the Statute of 15 May 2007.

The existence of a criminal offence requires both an infringing act

and criminal intent (namely, fraudulent or malicious intent).

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

As long as the patent infringement is ongoing, an infringement action

can be brought. Damages can, however, only be claimed for infringements

that took place no more than five years prior to filing the

action for damages.

28 Patent marking

Must a patent holder mark its patented products? If so, how must the

marking be made? What are the consequences of failure to mark?

What are the consequences of false patent marking?

Under Belgian law no patent marking is required. The presence of

such marking could, however, facilitate a finding of wilful infringement.

If it can be demonstrated that a party intentionally misrepresented

an invention as patented, this would be considered a tort that

would prompt an action for injunctive relief by any interested party

or a claim for damages, or both.

Licensing

29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent

owner may license a patent?

Competition law, both on a national and EU level, may impose some

restrictions on the contractual terms of patent licence agreements. EC

Regulation 772/2004 of 27 April 2004 on the application of article

101(3) TFEU to categories of technology transfer agreements, however,

also applies to patent licence agreements. Article 101(1) TFEU

shall, as a rule, not apply to patent licensing agreements entered into

between two undertakings permitting the production of the contractual

products covered by the patent, to the extent that such agreements

contain restrictions of competition falling within the scope

of article 101(1) TFEU. The exemption shall apply for as long as

the patent covering the licensed technology has not lapsed or been

voided.

30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a

patent? How are the terms of such a licence determined?

Belgian patent law recognises the principle of compulsory licences

but this principle is without any practical relevance to date.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to

obtain a patent?

Obtaining a Belgian patent does not require any examination (including

an examination of the novelty of the invention). Contrary to a

European patent, a Belgian patent may therefore be obtained after a

few weeks. Costs are very limited and take the form of an application

fee and taxes and payment of an optional examination that is

not binding.

32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Belgian law does not provide for such procedures.

33 Patent application contents

What must be disclosed or described about the invention in a

patent application? Are there any particular guidelines that should

be followed or pitfalls to avoid in deciding what to include in the

application?

Since there is no examination with respect to the substance of the

patent (novelty, inventive step, application in industry), a patent

application under Belgian law is easy to obtain. Article 15, section 1

of the Belgian Statute on Patents of 28 March 1984 requires, inter

alia, a description of the invention and one or more claims without

giving any (detailed) guidance as to the content of said description

nor of the claims. The vast majority of patent applications are handled

through specialised private sector patent and IP agencies, which

also handle PCT and EPO patent applications, and will therefore be

likely to conform to these standards, especially because a Belgian

patent is in quite a few cases only a precursor to a patent application

with the EPO.

www.gettingthedealthrough.com 35


BELGIUM Monard-D’Hulst

34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

Belgian patent law does not impose a duty on the inventor to disclose

any prior art he or she is aware of. This would in any case be pointless,

since there is no requirement to examine prior art.

35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue

additional claims to an invention disclosed in its earlier filed

application? If so, what are the applicable requirements or limitations?

An applicant may file one or more later applications to pursue additional

claims to an invention provided such applications remain

within the scope of the original application.

36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a

court of law?

Since there is no examination of the conditions of patentability,

including novelty, patents are granted virtually automatically and

there are therefore no refusals to challenge.

37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant

of a patent?

No opposition procedure is provided for. Once a patent has been

granted, it can be challenged in a competent court of law.

38 Priority of invention

Does the patent office provide any mechanism for resolving priority

disputes between different applicants for the same invention? What

factors determine who has priority?

Priority issues need to be raised before a competent court of law

and cannot be dealt with by the Patent Office since there is no

examination.

39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining

or revoking a patent? May a court amend the patent claims during a

lawsuit?

The Belgian Intellectual Property Office cannot modify, re-examine

or revoke a patent. A competent court of law may annul a patent

or partially annul a patent and redraft the claims. The Belgian Intellectual

Property Office will record the ruling.

40 Patent duration

How is the duration of patent protection determined?

Patent protection lasts for 20 years as of the application date.

It should be noted that for pharmaceutical products, a supplementary

protection certificate may grant additional protection for an

additional five years maximum.

Ben Hermans ben.hermans@monard-dhulst.be

Avenue de Tervurenlaan 270 Tel: +32 2 234 67 10

1150 Brussels Fax: +32 2 280 47 79

Belgium www.monard-dhulst.be

36 Getting the Deal Through – Patents 2012


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