Patent Litigation in Europe

Patent Litigation in Europe
An overview of national law and practice in the EPC contracting states
4th edition
2016
European Patent Academy

Foreword
The success story of the European patent began in October 1973 when the European Patent Convention (EPC) was signed in Munich, providing the legal framework for a single, harmonized patent granting procedure in Europe.

The Academy of the European Patent Organization, better known as the European Patent Academy, has since 2005 fostered the development and harmonization of education and training in the field of European and international patent related intellectual property law and practice by offering training and exchange platforms for key users and target groups. In this context, the Academy has also supported and developed training initiatives aimed at harmonizing patent enforcement and litigation practice in Europe for the judiciary.

Post-grant enforcement and litigation procedures and court structures differ widely across the 38 EPC contracting states. In this framework the Academy, in partnership with the national patent offices of the member states, has compiled the fourth edition of “Patent Litigation in Europe”, to provide an overview of litigation practice with regard to patents in each national system.

This edition has been updated to reflect changes in legislation where new procedures or court structures have been created, and includes additional information about post-grant revocation proceedings, remedies, bifurcated proceedings, parallel proceedings between national courts and the EPO, and which authority in each country is responsible for the enforcement of orders.

Following the agreement on the unitary patent package creating an EU Regulation on a unitary patent as well as the signature of the Unified Patent Court (UPC) Agreement, this edition includes a chapter on the UPC providing an overview of its structure, competences, and current status.
I hope you will find this publication useful.

Raimund Lutz
Vice President
DG5 Legal/International Affairs
European Patent Office
November 2016

ALBANIA
I. Administrative procedure

Opposition
Post-grant opposition is available. Any person may file notice of opposition with the appeal board within nine months from the date of publication of the grant of a patent (Art. 33(1) PA). A copy of the opposition is sent to the owner of the patent, who may submit written observations within three months from the date of receipt of the notification (Art. 33(3) PA). Both parties have the right to participate in the opposition proceedings, to submit essential materials and to provide oral explanations in support of the notice of opposition (Art. 33(4) PA). The appeal board decides whether to revoke the patent in whole or in part or reject the opposition (Art. 33(5) PA).

Appeal
A decision of the Albanian General Directorate of Patents and Trademarks (hereinafter GDPT) rejecting a patent may be appealed to the appeal board within three months from the date of receipt of notification, subject to payment of a fee. The Board of Appeal consists of three members who are selected by the General Director of GDPT and are GDPT employees (Art. 193(1) PA). The appeal board’s decision may be appealed to the court within a period of 30 days from the date of receipt of notification (Art. 28(3) PA). The parties may appeal an appeal board decision revoking a patent or rejecting an opposition to the court within 30 days from the date of receipt of the decision (Art. 33(6) PA).

II. Civil procedure

Infringement
The Court has jurisdiction over disputes relating to violation of the rights to a patent or a patent application (Art. 94(1a) PA). The right to sue for violation of such rights belongs to the patent holder and the exclusive holder of a license (Art. 184(a) PA).

Nullity/counterclaim for revocation
The Court has jurisdiction over disputes relating to revocation of a patent or a patent counterclaim (Art. 94(1b) PA). Each patent claim or part of a claim that is canceled is considered null and void from the outset (Art. 74(1) PA). If the grounds for revocation affect the patent only in part, partial revocation of the patent is performed. Restrictions can be applied in the form of amendments to the claims
(Art. 74(2) PA). Decisions of the court are recorded in the patent register (Art. 74(3) PA). If the patent owner or licensee brings an action for infringement against a person, that person has the right to file a counterclaim to prove that his acts do not constitute infringement of the patent. The above action can be filed along with a request to repeal the patent (Art. 188/a(3) PA). The patent holder and the exclusive licensee have the right to sue any person who violates their rights and may request:
– Prohibition of further actions that violate their rights.
– Removal of objects that constitute a violation of their rights from civil circulation, or destruction of those objects.
– Removal of the means used exclusively or almost exclusively for the creation of the infringing products, or their destruction.

Publication of the final decision of the court in public media at the expense of the person who committed the violation (Art. 184/b(1)(a)(b)(c) PA). According to national law, patent claim amendment is possible during the post-grant procedure (Art. 25(1) PA), but it never happens in practice.

Remedies
Formal changes and corrections to the application can be made at the initiative of the applicant himself or at the request of the GDPT until the date of grant of the patent, which occurs only after payment of a fee (Art. 25(1) PA). The owner of a patent has the right to ask GDPT to make changes to a patent for the correction of formal errors or unintentional inaccuracies (Art. 70(1) PA).

Other actions
Declaration of non-infringement of patent rights:
Any interested person may file a lawsuit against the patent owner to prove in court that a particular act does not constitute infringement of the patent. The holder of an exclusive license must be summoned to court as a defendant along with the patent owner (Art. 188/a(1) PA). If the patent owner or licensee brings an action for infringement against a person, that person has the right to file a counterclaim to prove that his acts do not constitute patent infringement. The above action can be filed together with a request to revoke the patent (Art. 188/a(3) PA). The court may require the patent owner to submit for examination publications and other documents showing prior art referred to in the patent application or taken into account by other examining offices (Art. 73(3) PA).

Appeal
The deadline for appealing to the Court of Appeal against final decisions of the first court is 15 days (Art. 443 CCP).

Parallel proceedings
None to date.

Arbitration/mediation
Arbitration or mediation procedure is not provided for in the national law.

III. Enforcement

The authority responsible for enforcing an order is bailiff. The Court is also responsible for issuing an order for execution of the final decision after termination of the procedure.

IV. Compulsory license

Upon request, the court has the right to grant a compulsory license to any person who proves that he has the ability to exploit an invention which is the subject of a patent granted in the Republic of Albania and meets all the requirements stipulated in the relevant regulations issued pursuant to the law, provided that:
– four years have passed from the filing of the patent application or three years from the grant of the patent;
– the patent owner has not exploited the patent for a long period; and
– every effort has been made to obtain authorization from the patent owner on reasonable terms and conditions and these efforts have not been successful (Art. 50(1)(a)(b)(c) PA).

A compulsory license is valid until the expiration of the time period appointed by the court (Art. 50(6) PA). Compulsory licenses are recorded in the Patent Register (Art. 50(7) PA). The patent owner has the right to receive appropriate compensation for any compulsory license (Art. 50(8) PA). The holder of a compulsory license may dispose of it at any time (Art. 50(9) PA). The court has the right to grant compulsory licenses for patents and supplementary protection certificates for the production and sale of pharmaceutical products if such products are intended to be exported to importing countries (Art. 50(3) PA).

V. Relevant national law

Law No. 9947 of 7 July 2008 on Industrial Property, as amended [cited as: PA] Amending bylaws: No. 10/2013 No. 55/2014 Law No. 8116 of 29 March 1996 on Code of Civil Procedure, as amended by Law No. 8491 of 27 May 1999 [cited as: CCP]

AUSTRIA
I. Administrative procedure

Opposition
Anyone may bring an action within four months from the date on which mention of grant is published (Section 102 PA). The decision is taken by the “Senate” (Head of Technical Department, one examiner and one further member who, depending on the case, has to be technically or legally qualified (Section 62(3), (4) PA)). If the opposition action is withdrawn, the proceedings are closed. Furthermore, after publication of the application anyone can make observations on the application (Section 101b PA).

Appeal
The appeal must contain a formal request and be substantiated. Every decision of a technical or legal department can be contested by an appeal. There are ex parte (e.g. negative decision on a patent application) and inter partes proceedings (e.g. appeal against an opposition procedure). Appeals must be lodged within two months of notification of the decision which is challenged; the opposing party will be notified and will have the opportunity to submit objections (Section 139 PA).
– Preliminary decisions (Section 139 PA): the department which issued the decision at first instance can deal with the appeal by preliminary decision. It may refuse the appeal, set the original decision aside, or amend it.
– Higher Regional Court (of Vienna): appeal from the decision of the Technical and Legal Department (Section 138 PA). New facts and evidence may only be introduced to support or refute facts and evidence submitted at first instance (prohibition of amendment – Section 139 PA). A case of serious procedural defect will be referred back to the department of first instance.
– Higher Regional Court (of Vienna): appeal from the decisions of the Nullity Department (Section 141 PA). Appeals have suspensive effect.

Revocation
The Nullity Department functions as the first instance. It is composed of two legally and three technically qualified members of the Austrian Patent Office (hereinafter the “Patent Office”) (Section 63 PA).
– The proceedings can be continued if the action is withdrawn (Section 112(1) PA).
– Decisions have retroactive effect. Partial nullification is available.
– Any party which considers itself adversely affected by a decision of the Nullity Department may appeal to the Higher Regional Court, within two months from the decision (Section 141 PA). Patent claim amendment is allowable, but does not often occur.

II. Civil procedure

Infringement
Infringement disputes are dealt with before the Commercial Court of Vienna. Any person who has suffered infringement of one of the rights belonging to him under a patent or who fears that such infringement might take place may bring an action (Section 147 PA) (registered and non-registered patent owner, exclusive licensee). Claim is subject to civil law; however, criminal proceedings (Section 159 PA) before the Regional Court for Criminal Matters in Vienna may also be initiated in the case of willful infringement.
– If the Patent Office or the instances for appeal have taken a decision on the validity or effectiveness of a patent different from that of the court in infringement litigation, an action for a re-trial (Section 530(1) of the Code of Civil Procedure) may be based thereon (Section 156(6) PA).

Nullity/counterclaim for revocation
Invalidity of a patent may be used as a defense, which will be considered by the court as a preliminary issue (Section 156 PA). The court will suspend proceedings if it thinks that nullity is probable. Optionally, it may request a report from the Patent Office on whether nullity is likely (Section 156(3) PA). Subsequently, the defendant has one month to apply for nullification of the patent at the Patent Office. After one month the claimant may re-establish the infringement proceedings and the court has to take the decision irrespective of the question of nullity.

Remedies
Preliminary injunction, destruction of infringing products, publication of the decision, compensation, and damages (Sections 148-152 PA).

Other actions
Any person who industrially produces, places on the market, offers for sale or uses an article, industrially applies a process or intends to take such measures may apply to the Nullity Department for a declaratory decision against the owner of a patent or its exclusive licensee, to the effect that the subject matter of the process or product marketed or to be marketed is neither partially nor wholly covered by the patent.
– The owner of a patent or its exclusive license may apply to the Nullity Department for a declaratory decision against any person who industrially produces, places on the market, offers for sale or uses an article, industrially applies a process or intends to take such measures, to the effect that the subject-matter of the process or product marketed or to be marketed is partially or wholly covered by the patent.

Appeal
The decision at first instance may be followed by the usual stages of appeal available in civil cases. Appeal on points of law and fact is available from the decision of the Commercial Court of Vienna at first instance. Incomplete assessment will be referred back to the first instance for completion of the procedure for the taking of evidence.

Parallel proceedings
Invalidity of a patent may be used as a defense, which will be considered by the court as a preliminary issue (Section 156 PA). The court will suspend proceedings if it thinks that nullity is probable. Subsequently, the defendant has one month to apply for nullification of the patent at the Patent
Office or to initiate opposition proceedings at the EPO. After one month the claimant may re-establish the infringement proceedings and the court has to take the decision irrespective of the question of nullity. If the Patent Office or the EPO or the instances for appeal have taken a decision on the validity or effectiveness of a patent different from that of the court in infringement litigation, an action for a re-trial (Section 530(1) of the Code of Civil Procedure) may be based thereon (Section 156(6) PA).

Arbitration/ Mediation
According to national law (Code of Civil Procedure), proceedings concerning the infringement of patents are in principle open to arbitration. Arbitration is not available for requests for patent invalidation.

III. Enforcement

The bailiff is responsible.

IV. Compulsory license

May be issued by the Nullity Department in cases of dependent and non-working patents and public interest (Section 36 PA). Under certain circumstances a patent may be revoked if the grant of a compulsory license for nonworking is not sufficient (Section 47 PA).

V. Relevant national law

Patent Act – Patentgesetz 1970, BGBl 1970/259 as last amended by BGBl I 2013/126 – [cited as: PA]
Patent Litigation in Europe 13

BELGIUM
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. The findings of the search report and the written opinion delivered by the European Patent Office have no formal influence on the grant procedure (Art. XI.24, §4 CEL). It is up to the applicant to decide, at his own risk, on the basis of the search report and the written opinion, if he still wants his patent granted.

Appeal
No possibility of appeal.

II. Civil procedure

Infringement
Civil action can be brought by the owner or usufructuary of a patent (by the compulsory licensee if the owner does not bring an action) (Art. XI.60, §2 CEL).
– At first instance the Brussels Commercial Court has exclusive jurisdiction in patent matters: Tribunal de
Commerce/Rechtbank van koophandel established at the seat of the Brussels Court of Appeal (Art. XI.337 CEL and Art. 633quinquies JC). If only an injunction is demanded, the plaintiff has the choice to introduce the case at first instance (i) before the President of the Tribunal de commerce / Rechtbank van koophandel (dealt with “as in summary proceedings”) or (ii) before a chamber of that court, where the tribunal is composed of one legally qualified judge and two “juges consulaires”. If damages are demanded (either separately from the injunction or not), the plaintiff has to introduce the case at first instance before a chamber of the court. In appeal proceedings the court is composed of one judge or three legally qualified judges.
– Invalidity can be used as a defense or counterclaim. Nevertheless it is possible for an action for infringement and a related action on validity to be separately introduced before two courts. In such a case, one of the parties can ask the second judge to join the cases in the hands of the first judge (with a so-called “exception of incompetence”). When the actions for infringement and for validity are pending before the same judge, he can take the initiative to join the cases (Art. 856 JC).
– Infringement proceedings become barred five years after the infringement was committed (Art. XI.61 CEL). Criminal sanctions are also available (Art. XV.103 CEL). Criminal sanctions may include custodial sentences (from 1 to 5 years) and/or monetary fines up to EUR 600 000 (Art. XV.70 CEL).

Nullity/counterclaim for revocation
Patents can be annulled or revoked by the Brussels Commercial Court (Tribunal de Commerce/Rechtbank van koophandel). Annulment or revocation is retroactive (Art. XI.58, §1 CEL). Partial annulment or revocation is possible (Art. XI.56, §2 CEL).
– Appeal: Annulment or revocation decisions may be appealed before a Court of Appeal. An appeal against the annulment or revocation of a patent does not have suspensive effect.
– “Cassation”: after the appeal procedure mentioned in the second paragraph, an appeal before the “court of cassation” can be lodged based only on “points of law”. An appeal before the court of cassation against revocation of the patent has suspensive effect (Art. XI.59, §2 CEL). The post-grant scope of a patent can be amended in two ways:
– First, the applicant can waive the scope of application of the patent in full or in part through a declaration directed to the Minister responsible for intellectual property (Art. XI.55 CEL). This “renunciation” procedure has no retroactive effect.
– Second, the applicant can revoke the scope of application of the patent in full or in part through a declaration directed to the Minister responsible for intellectual property (Art. XI.56 CEL). Revocation has retroactive effect (Art. XI.58, §1 CEL). (There are no statistics available on the frequency of use of these options.)

Remedies
Injunction, compensation, damages, publication of decisions and assignment of benefits (Art. XI.334 and XI.335 CEL).

Other actions
Where an application has been filed for an invention taken from an inventor unlawfully or in violation of a legal or contractual obligation, the injured party may claim before the court the transfer of the application or the granted patent (Art. XI.10, §1 CEL).

Appeal
The parties in a trial always have the right to appeal the decision of the court of first instance. The appeal has to be made within one month from service of the judgment (Art. 1051 JC). The Court of Appeal will conduct a full rehearing of the matter (limited to the points which have been appealed by the opposing parties). The defendant on appeal has the right to file a so-called “incidental appeal” with respect to those elements which have not been appealed by the claimant (Art. 1054 JC).

Parallel proceedings
The Belgian court may decide to stay the proceedings (there is no obligation to do so – it is at the discretion of the judge) in order to await the outcome of the opposition/appeal proceedings before the EPO.

Arbitration/mediation
Arbitration or mediation is available, except in litigation concerning compulsory licenses and forfeitures.
There is no specific authority designated to deal with arbitration or mediation in patent disputes.

III. Enforcement

During and after the judicial procedure, the bailiff is the competent authority for enforcing court orders (Art. 519 JC).

IV. Compulsory license

Compulsory licenses may be granted in cases of non-working and dependent patents (Art. XI.37 CEL). The request has to be filed with the Minister responsible for intellectual property, who will decide on it in cooperation with the Compulsory License Commission (Art. XI.41 CEL). The parties should in principle decide on their own on the conditions of the license. If no agreement is reached, the court will decide
(Art. XI.42 CEL). A compulsory license may also be granted in case of public health interests (Art. XI.38 CEL). The request has to be filed with the Minister responsible for intellectual property, who will decide on it after consulting a bioethics committee and hearing the title holder. The Minister also makes a proposal concerning the conditions of the license. The decision is taken by royal decree after consultation of the Council of Ministers on the basis of the proposal of the competent Minister.

V. Relevant national law

– Code of Economic Law of 28 February 2013, as last amended on 22 April 2016 [cited as: CEL]
– Judicial Code (10 October 1967) [cited as: JC].

BULGARIA
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. Within three months following publication of the application, any persons other than parties to the application proceedings may file written substantiated objections as to the patentability of the subject-matter of the application.
The persons filing objections may not be participants in the application proceedings (Art. 46(d) PA).

Appeal
The decision of the Examination Department to refuse to grant a patent and to close the patent application procedure may be appealed, within three months from the date of receiving the decision, before a specialized (three-member) board of the Disputes Department appointed ad hoc by the
President of the Patent Office of the Republic of Bulgaria (hereinafter the “Patent Office”) (Art. 55(1), 57(2) PA). The Disputes Department begins proceedings within one month of receipt of the appeal (Art. 58 PA). The application may be referred for renewed consideration (Art. 58(3) PA) – the re-examined decision may be subject to further appeal to the Disputes Department (Art. 58(4) PA). The final decisions of the Disputes Department must be confirmed by the President (Art. 58(6) PA). Any party adversely affected by a decision of the Disputes Department may, within three months following receipt of the decision, bring an appeal before the Sofia Administrative Court (Art. 59 PA). Further appeal is possible to the Supreme Administrative Court within 14 days after the date of receipt of the lower court’s decision.

Revocation
The Disputes Department also considers requests for invalidation of a granted patent, these being heard by a specialized (five-member) board appointed ad hoc by the President of the Patent Office (Art. 26(3), 55(2), 57 PA). The Disputes Department begins proceedings within one month of receipt of the request for invalidation. Anyone can file a request for invalidation of a granted patent; there is no time limit for this. The interested parties may participate in the proceedings. Written and oral evidence is admissible.
The Disputes Department sends a copy of the request to the patent owner or to the parties concerned and gives them a three-month time limit to respond (Art. 58(2) PA). The decisions of the Disputes Department must be confirmed by the President. Partial invalidation is possible (Art. 26(5) PA). Invalidation has retroactive effect (Art. 26(6) PA). If the action is withdrawn, proceedings do not continue. Pursuant to Art. 42(1) PA an application or a patent may be amended during the proceedings for the application until such time as a decision is taken or during patent invalidation proceedings. The amendments may not extend beyond the content of the application as filed. During invalidation proceedings, no amendments may be made to the patent claims which would extend the scope of protection (Art 42(3) PA). It does not happen frequently, but in the event of a declaration of partial invalidation of the granted patent the granted patent is replaced by a new one (Art. 58(8) PA).

II. Civil procedure

Infringement
The patent owner and the holder of an exclusive license may institute patent infringement proceedings at the Sofia City Court, as may the holder of a compulsory license if the patent owner does not exercise his own right to institute infringement proceedings within six months of receipt of a written invitation to do so from the licensee. Any licensee may join patent infringement proceedings instituted by the patent owner, and the same applies to the patent owner when proceedings have been instituted by the licensee (Art. 27 PA).
– Expert opinions are possible, but they are not binding on the court.
– Administrative penal provisions are available with regard to a person who publishes the essential features of a secret patent application under Art. 24 PA or files an application abroad contrary to the patent secrecy provisions of Art. 25 PA, and also with regard to a person who marks a product as protected by a patent without identifying the patent upon request as referred to in Art. 28a(5) PA.

Nullity/counterclaim for revocation
Where the defendant in an infringement action has filed a request for nullity of the patent with the Patent Office, the court suspends proceedings until a final decision is taken on the request (by the Patent Office or, if appealed, by the courts) (Art. 64(2) PA).
– Where the action is instituted by the applicant prior to the grant of a patent, the proceedings are suspended until a decision is taken by the Patent Office (Art. 64(3) PA).
– In the latter case the Patent Office is required to reach a decision within one year following the date of notification of the suspension of court proceedings (Art. 64(4) PA).

Remedies
Preliminary injunction, damages, destruction of infringing products, declaration that an act has infringing character (Art. 28 PA).

Other actions
Not available.

Appeal
Appeal may be to the Sofia Court of Appeal.

Parallel proceedings
In case of EPO opposition when there are parallel proceedings at the national patent office, e.g. for an invalidation claim filed against a European patent validated in Bulgaria, the proceedings before the national patent office are suspended until a final decision on the opposition has been delivered. EPO decisions in proceedings for invalidation of a European patent designating Bulgaria are valid in the territory of the Republic of Bulgaria (Art. 72h. PA).

Arbitration/mediation
According to the Civil Procedure Code, in court proceedings the parties to a property dispute may agree that it may be resolved by a court of arbitration. There is also a Mediation Centre within the Bulgarian Chamber of Commerce and Industry. The law stipulates mediation as an alternative form of settlement for legal and non-legal disputes. Mediation will not be an option if law or other legislative acts stipulate a different means of settlement.

III. Enforcement

During and after the judicial procedure the responsible authority is the bailiff.

IV. Compulsory license

May be granted by the Patent Office in cases of non-working, dependent patents and public interest (Art. 32, 55(2) No.3 PA). Disputes concerning the amount of remuneration for the grant of a compulsory license are settled by the Sofia City Court (Art. 66 PA).

V. Relevant national law

Law on Patents and Utility Model Registration (title amended, State Gazette No. 64/2006; in force as from 9 November 2006 – as amended; No. 38/18 May 2012 [cited as: PA].

SWITZERLAND
I. Administrative procedure

The Swiss Federal Institute of Intellectual Property (hereinafter the “Patent Office”) is the competent authority for granting patents in Switzerland and Liechtenstein. Switzerland and Liechtenstein have the same patent regulations based on a Patent Treaty (Treaty between the Swiss Confederation and the Principality of Liechtenstein on Patent Protection of 22 December 1978 – OJ EPO 1980, 407). A Swiss patent is valid in Liechtenstein, and a Liechtenstein patent is equally valid in Switzerland. The two countries form a unified territory of patent protection.

Opposition
Any person may give notice of opposition to the grant of a patent within nine months of publication of the entry in the Patent Register (Art. 59c PatA). Opposition may be based only on the grounds that the subject-matter of the patent is not patentable under Arts. 1a, 1b and 2 PatA (Art. 59c PatA).

Appeal
The decisions of examiners, legal services and opposition divisions of the Patent Office may be appealed before the Swiss Federal Administrative Court. Any party to proceedings adversely affected by a decision or a person whom the decision has excluded from the procedure may appeal. Judgments of the Federal Administrative Court can be appealed to the Swiss Federal Supreme Court.

II. Civil procedure

In patent matters only, the Principality of Liechtenstein has a common court structure with Switzerland. The Court of Appeal (“Obergericht”) has competence for patent issues in Liechtenstein at first instance. Appeals against its judgments in patent matters, in as far as substantive issues are concerned, can be filed with the Swiss Federal Supreme Court. On 1 January 2012, the Swiss Federal Patent Court Act (PatCA) entered into force and created a specialized patent court in Switzerland. The Swiss Federal Patent Court is now exclusively competent for all patent validity and infringement disputes and other matters having a factual connection to patents (Art. 26 PatCA). However, in other civil patent matters (concerning the right to patents or their assignment) the 26 cantonal courts may have parallel competence to the Federal Patent Court. The Federal Patent Court ensures the necessary expertise and effective legal protection for technical inventions. The court comprises both legally and technically qualified judges to take account of the fact that patent disputes are at the interface of technology and law. The applicable procedural law is the Swiss Civil Procedure Code (CPC), as well as special provisions in the PatCA (Art. 27 et seq.) and the PatA relating to the particularities of patent law.

Infringement
The patentee or exclusive licensee may take action under civil or penal law against a person who uses the patented invention unlawfully (Art. 66 PatA).
– Competence: the Federal Patent Court has exclusive jurisdiction over infringement disputes and actions for issuing a license in respect of patents (Art. 26(1) PatCA).
– If a preliminary question or plea on the validity of the patent infringement in a civil litigation case is put before a cantonal civil court, proceedings will be suspended. The cantonal judge will set an appropriate deadline for filing the validity action before the Federal Patent Court. The cantonal court stays the proceedings until a final decision has been rendered on the action (Art 26(3) PatCA). Where the defendant party files a counterclaim for nullity of a patent, the cantonal court refers both actions to the Federal Patent Court (Art. 26(4) PatCA).
– Criminal proceedings: upon request of the injured party, criminal proceedings may be initiated before a criminal court against a party who willfully commits an infringement (Art. 81 PatA). If the accused party claims the nullity of a patent, the court may grant him an appropriate deadline to file an action for declaration of patent nullity, with a warning of the consequences of his failure to do so (Art. 86 PatA).

Nullity/counterclaim for revocation
Any person having a legitimate interest may claim the nullity of a patent before the Federal Patent Court
(Art. 26 PatA; Art. 26(1) PatCA).
– Partial nullification is possible (Art. 27 PatA).
– Cancellation of a patent due to non-working (Art. 38 PatA):
If the grant of licenses does not suffice to meet the demand of the Swiss market, any person with a proven interest may request the cancellation of the patent after a period of two years from the grant of the first license under Art. 37(1) PatA before the Federal Patent Court. In the nullity proceedings before the Federal Patent Court the patentee may, and in practice often will, present amended claims, also as auxiliary requests.

Remedies
Injunction, suspension, seizure, confiscation or destruction of products manufactured unlawfully; additionally, publication of the judgment can be ordered; the infringer may also be liable for damages (Art. 69-73 PatA).

Other actions
Any person demonstrating a legitimate interest may request a declaratory judgment as to the infringing character of one or more acts (Art. 74 No. 3 PatA).

Appeal
A further appeal may be filed with the Swiss Federal Supreme Court, irrespective of the value in dispute.
The Swiss Federal Supreme Court is generally bound by the findings of fact of the lower instance, and its reviews are usually confined to points of law.

Parallel proceedings
A party may invoke the nullity of the Swiss part of a European patent, be it as a request or as a defense, regardless of any parallel proceedings at the EPO. The Swiss judge may however suspend the proceedings in case of parallel opposition or appeal proceedings at the EPO (Art. 128 PatA).

Arbitration/mediation
The structure of the procedure before the Federal Patent Court fosters settlements between the parties. It includes, for example, preparatory hearings with opportunities for the parties to negotiate, if desired with the assistance of the court. The court may at any time attempt to reach a settlement agreement between the parties (Art. 124(3) CPC). The settlement rate at the Federal Patent Court is therefore
high (above 75%). In Switzerland, there is no official authority for arbitration or mediation. The Federal Patent Court may recommend mediation to the parties at any time, and the parties may also make a joint request for mediation at any time. The parties are responsible for organizing and conducting the mediation (Art. 215 CPC).

III. Enforcement

The Federal Patent Court is competent for the enforcement of its preliminary or final decisions, as well as for measures for preserving evidence. There is a specific patent-related procedure for the preservation of evidence handled by the Federal Patent Court, similar to the French “saisiecontrefaçon” (Art. 77 PatA). To enforce a decision, the court may request the assistance of other authorities (e.g. the police, customs administration etc., Art. 343(3) CPC). If a decision relates to the payment of money or provision of security, it is enforced according to the provisions of the Federal Act on Debt Enforcement and Bankruptcy (DEBA) (Art. 335(2) CPC), and the Debt Recovery and Bankruptcy Office is the competent authority.

IV. Compulsory license

Swiss patent law includes several grounds for granting compulsory licenses, such as the non-working of a patent; the interest of the public; anti-competitive practices in the field of semiconductor technology; for research tools; for diagnostics; or for the export of pharmaceutical products to developing countries (Art. 36-40e PatA). A compulsory license is granted by the Federal Patent Court (Art. 40e PatA, Art. 26(1)(a) PatCA). Compulsory licenses are issued only if efforts by the applicant to obtain a contractual license on appropriate market terms within a reasonable period of time have been unsuccessful (Art. 40e(1) PatA). The patent holder has the right to appropriate remuneration (Art. 40e(5) PatA).

V. Relevant national law

– Federal Act on Patents for Inventions of 25 June 1954 (Patents Act; PatA SR 242.14) [cited as: PatA]
– Federal Act on the Federal Patent Court of 20 March 2009 (Patent Court Act; PatCA SR 173.41) [cited as: PatCA]
– Swiss Civil Procedure Code of 19 December 2008 (CPC SR 272) [cited as: CPC]

CYPRUS
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available.

Appeal
Any person may file an appeal to the Administrative Tribunal from acts of the Department of Registrar of Companies and Official Receiver (hereinafter the “Registrar”). The judicial review is conducted by the Administrative Tribunal and is followed by an appeal to the Supreme Court on a point of law. There is a review before one Administrative Tribunal judge and a further appeal before five Supreme Court judges.
The time limit for a review is 75 days, and 14 days for an appeal from a review.

II. Civil procedure

Infringement
The owner of the patent may institute legal proceedings against anyone who infringes his rights as patentee.
– Unless the licence contract provides otherwise, any licensee may request the proprietor of the patent to institute court proceedings for any infringement indicated by the licensee, who must specify the relief desired. If the licensee proves that the proprietor of the patent has received the request but refuses or fails to institute proceedings within three months of receipt of the request, the licensee may institute proceedings in his own name, after notifying the proprietor of his intention (Art. 61(4)(a), (b) PA).
– The defendant in the infringement proceedings may request the invalidation of the patent in the same proceedings. The provisions and requirements of the invalidation procedure apply (Art. 61(3), 58 PA).
– Infringement actions become statute-barred five years from the act of infringement (Art. 61(1) PA).
– The Supreme Court of Cyprus may decide to stay any proceedings brought before it in respect of unauthorized acts performed in relation to an invention that is the subject of a published application until a final decision has been made by the Registrar to grant or to refuse a patent on the application (Art. 28(2) PA).

Nullity/counterclaim for revocation
The Supreme Court of Cyprus may, on the application of any person, invalidate a patent, in whole or in part, on any of the grounds named in Art. 58 PA. Invalidation works retroactively (Art. 59 PA).
– If the action is withdrawn, the invalidation proceedings will not continue. Under national patent law (PA), it is not possible to amend a patent in relation to a post-grant procedure.

Remedies
Injunction, damages.

Other actions
Any interested party has the right to institute proceedings against the proprietor of the patent. The Supreme Court may declare that the performance of a specific act does not constitute infringement of a patent (Art. 62(1) PA).
– The patent proprietor has to prove that the act in question does not constitute infringement. If infringement proceedings are already pending, the defendant in the infringement proceedings may not institute proceedings for a declaration of non-infringement (Art. 62(2) PA).

Appeal
There is a review before one Supreme Court judge and a further appeal before five Supreme Court judges.

Parallel proceedings
There is no provision for parallel proceedings under national patent law. The EPO procedures are completed independently and concern only the substantive examination of the patent application. The only available procedure in case of opposition by any person is that described under Article 146 of the
Constitution. This procedure is initiated by filing a complaint against a decision of the Registrar before a judge of the Supreme Court (recourse to the Supreme Court as an administrative court). As from 1 February 2016 this complaint may be only filed before a judge of the Administrative Tribunal. Appeal lies on a point of law before the Supreme Court.

Arbitration/mediation
There is no arbitration or mediation in patent litigation in Cyprus.

III. Enforcement

During the procedure, enforcement is performed by the court bailiffs or any other person authorized by the court (see Section 4 of the Civil Procedure Law, Cap. 6). After termination of the procedure or the final decision of the court, the court decision which awards damages is overseen by the same court and its bailiffs. Payment of damages is enforced by the same court which imposed the damages through the relevant provisions of the Civil Procedure Law.

IV. Compulsory license

May be granted in cases of non-working, refusal to grant a license for a product for which demand in Cyprus is not (or not reasonably) met, dependent patents, economic needs, unfair conditions imposed by the proprietor, or public interest (Art. 49-51 PA).
– The proprietor of a patent or any other person wishing to oppose an application for a compulsory license may give the Registrar notice of opposition, which the Registrar considers in deciding whether to grant the application (Art. 52(1) PA).
– Where an application for a compulsory license is opposed and either the parties consent or the proceedings require an extended examination of documents or any scientific research which cannot in the opinion of the Registrar conveniently be made before him, the Registrar may at any time order the whole proceedings or any issue of fact to be referred to an arbitrator or mediator. The arbitrator or mediator reports his findings to the Registrar, who then proceeds with his decision (Art. 52(2), (3) PA).

V. Relevant national law

Patents Law – No. 16(I) of 1998 as amended by Law 21(I)/1999; 153(I)/2000; 163(I)/2000; 122(I)/2006 [cited as: PA]

CZECH REPUBLIC
I. Administrative procedure

Opposition
No formal pre-grant opposition procedure is available.
– Any person may submit observations concerning the patentability of the invention after the application is published (Section 32(1) PA). The Industrial Property Office (hereinafter the “Patent Office”) takes such observations into consideration when carrying out the full examination of the application. Those who submit observations do not become party to the proceedings for the application. However, the applicant is informed of any observations submitted (Section 32(2) PA).
– Furthermore, the applicant or another person may, within 36 months as from the filing date of the application for an invention, request substantive examination of a patent application (Section 33(2), (3) PA).

Appeal
Patent Office decisions may be appealed to the President within one month of their notification (Section 68 PA). The President decides on the appeal on the basis of the proposals of the expert commission that he establishes. The appeal has suspensive effect. The President’s decisions are generally final, but:
– they can be reviewed by the Municipal Court in Prague, in proceedings initiated by the filing of a claim. The claim has to be filed within two months of notification of the challenged decision. The claim does not have suspensive effect. The Court may revoke the contested decision, return the matter to the Patent Office for further proceedings, or dismiss the claim. In case of a complaint of inaction against the Patent Office, the Court may oblige the Patent Office to issue a decision within a prescribed time limit.
– no ordinary appeal is available against the decision of the Court. The decision may be contested only through an annulment (“cassation”) complaint filed with the Supreme Administrative Court in Brno.

Revocation
Any person may file a request for revocation of a patent with the Patent Office (Section 23 PA).
– The request may be filed even after lapse of the patent – proof of legal interest is necessary (Section 23(4) PA).
– Revocation has retroactive effect (Section 23(3) PA).
– Partial revocation is available (Section 23(2) PA – will be carried out as an amendment of the claims).
A patent may be amended to limit the scope of protection by the Patent Office, the Municipal Court in Prague or the Supreme Administrative Court in Brno, and this occasionally happens in practice.

II. Civil procedure

Infringement
Claims resulting from the imminent or existing infringement of industrial property rights acquired to the prejudice of their beneficiary fall within the exclusive competence of the Municipal Court in Prague (Section 6, Act No. 221/2006).
– Proceedings are initiated at the request of either the patent owner or another person entitled to use the rights (Section 75 PA).
– Representation by a lawyer is not obligatory.

Nullity / counterclaim for revocation
The Court may itself decide or alternatively may suspend the proceedings until the Patent Office decides (see “Declaratory proceedings” below). However, the Court is not bound to follow a final decision of the Patent Office. The Court usually takes its decision on the basis of an authorized expert’s opinion or reports made by independent experts.
– The invalidity of a patent cannot be used as a defense.

Remedies
Right to information, preliminary injunction, recall of products from the market, permanent removal, destruction (products and tools), pecuniary compensation, damages (Sections 3, 4, 5, Act No. 221/2006 Coll., Section 75 PA).

Other actions
Declaratory proceedings: Any person proving legal interest may file a request with the Patent Office to determine whether the production process, the given products, their exploitation or their presence on the market fall within the scope of the patent (Section 67 PA). The Patent Office does not decide on infringement as such.

Appeal
May be made to the High Court in Prague. For further appeal, recourse to the Supreme Court in Brno is available as an extraordinary legal remedy.

Parallel proceedings
The Patent Office suspends the revocation procedure for the European patent if opposition proceedings on the same matter are pending before the EPO. If the European patent is not revoked in the opposition proceedings, the Patent Office will upon request continue with the revocation procedure.

Arbitration/mediation
Both arbitration and mediation are possible in patent litigation proceedings. Arbitration is governed by Act No. 216/1994 Coll. On Arbitration Proceedings and Enforcement of Arbitral Awards. Arbitration may be conducted by one or more arbitrators appointed by the disputing parties for the particular dispute (ad hoc arbitration) or as proceedings before an institutionalized arbitration court established by an act
(Institutional arbitration). Mediation is governed by Act No. 202/2012 Coll. On Mediation and Amendments to Certain Legislation (“Mediation Act”), which relates to mediation activities carried out by mediators registered in the list of mediators maintained by the Czech Ministry of Justice. The Association of mediators and arbitrators in intellectual property matters (Asociace prostředníků a rozhodců ve věcech duševního vlastnictví) is a voluntary association of professionals who are prepared to participate in resolving disputes in the field of intellectual property and unfair competition as:
– mediators (brokers, intermediaries)
– arbitrators in the broad sense of the word
– ad hoc arbitrators pursuant to Law No. 216/1994 Coll.

III. Enforcement

During the procedure:
As regards enforcement of intellectual property (including patents), the Customs Administration authorities have the competence to
a) implement measures in co-operation with parties authorized to enforce intellectual property rights;
b) supervise compliance with obligations and prohibitions in connection with the enforcement of intellectual property rights.
Pursuant to Act No. 634/1992 Coll. on Consumer Protection (Consumer Protection Act), it is prohibited to offer for the purposes of sale, to sell and to store products that breach certain intellectual property rights. Compliance with these duties is monitored by the Czech Trade Inspection Authority. Supervision in the area of agricultural products, foods and tobacco products is performed by the State Agricultural and Food Inspection Authority and in the area of pharmaceuticals by the State Institute for Drug Control.
Pursuant to the Civil Procedure Code (Act No. 99/1963 Coll.), in matters relating to intellectual property rights, the court acting on a motion of the person who witnessed the infringement of intellectual property rights may secure the evidence prior to the trial. Competence to secure evidence is exercised by the court which has jurisdiction over the place where the evidence is physically located. Prior to the trial, the court may also issue a preliminary injunction if the situation of the parties must be temporarily adjusted or if it fears that execution of the judicial decision could be endangered. The court that is competent to hear the case is also competent to issue a preliminary injunction. After termination or final court decision:
If the obliged person does not voluntarily comply with that which is imposed upon him by an enforceable decision, the entitled person may file a petition for judicial enforcement or a petition for enforcement under a special law (Act No. 120/2001 Coll. on Court Executors and Execution, Enforcement Procedure). In this case, it is an executor who independently carries out enforcement activities.

IV. Compulsory license

May be granted by the Patent Office in cases of non-working and serious public interest (Section 20 PA).

V. Relevant national law

– Act No. 527/1990 Coll. on Inventions and Rationalization Proposals, as follows from amendments implemented by Act No. 519/1991 Coll., Act No. 116/2000 Coll Act No. 207/2000 Coll. and 3/2001 Coll. [cited as: PA]
– Act No. 221/2006 Coll. of 25 April 2006 on Enforcement of Industrial Property Rights and on the Amendment of Industrial Property Protection Acts [cited as: Enforcement of Industrial Property Rights Act]

GERMANY
I. Administrative procedure

Opposition
Any person may file notice of opposition within nine months of the date of publication of the grant (Section 59(1) 1 PatG) (no restitutio in integrum in case of failure to observe the nine-month time limit (Section 123(1) No. 1 PatG)).
– Opposition may be based only on the allegation that one of the grounds for revocation under Section 21 PatG exists (Section 59(1) PatG). Grounds of unlawful deprivation (Section 21(1) No. 3 PatG) may be invoked only by the injured party (Section 59(1) 1 PatG). The facts which justify the opposition must be stated in detail (Section 59(1) 2, 3 and 4 PatG).
– If an action for infringement of a patent has been filed, the defendant may intervene in pending opposition proceedings relating to the patent in suit. Upon expiry of the period for opposition it must declare its intention to intervene within three months of the filing of the infringement action. The same applies to a third party who has started proceedings for a ruling for a declaration of non-infringement upon the patent proprietor’s request to cease alleged infringement of the patent (Section 59(2) PatG).
– Patent Divisions (three members: at least two technical members, one additional legal member in case of particular legal difficulty; Section 27(3) PatG) at the German Patent and Trade Mark Office (hereinafter the “Patent Office”) have competence for opposition proceedings (Sections 27(1) No. 2, 61 PatG). Under certain conditions the Federal Patent Court (Appeal Chamber – three technical members and one legal member, Section 67(1) No. 2 PatG) may decide on the opposition (Section 61(2) PatG).
– If the opposition is withdrawn, the proceedings are continued (Section 61(1) 2 PatG).

Appeal
An appeal may be filed against the decisions of the Examining Sections and Patent Divisions (Sections 73(1), 27 PatG). One of the requirements is that the appealed decision does not, or does not fully, comply with the appellant’s request. The appeal must be filed with the Patent Office within one month after service of a decision (Section 73(2) PatG). A statement of grounds for the appeal is not compulsory.
If there are no other parties to the appeal proceedings and if the authority whose decision is contested finds the appeal justified, the authority will rectify its decision (Section 73(3) 1 and 2, (4) PatG). Otherwise it will transfer the appeal to the Federal Patent Court for decision without comment as to its merits within one month (Section 73(3) 3 PatG).
– The Federal Patent Court is an autonomous and independent federal court. It is inter alia competent for appeals from decisions of the Patent Office’s Examining Sections or Patent Divisions (Section 65(1) PatG). The decisions of the Federal Patent Court on appeals are handed down by the Appeal Chamber (Beschwerdesenat – Section 66(1) No.1 PatG).
– Further appeal against decisions of the Federal Patent Court (restricted to legal questions) may be made to the Federal Supreme Court within one month of the appeal decision if the Federal Patent Court decision specifically grants leave to appeal (mandatory leave – Section 100(1), (2) PatG) or if no grant of leave is required on account of certain procedural deficiencies (such as denial of the right to be heard) (Section 100(3) PatG).

Revocation
Under German law, revocation proceedings are strictly separated from infringement proceedings (bifurcation system). A German patent may be revoked or maintained during opposition proceedings by a Patent Division of the Patent Office (Section 61 PatG, see Part I “Opposition”). The patent may be revoked or upheld with its originally granted claims or with amended claims (Section 61(1) PatG). Amendment of the claims – with the consent of the patent owner – in opposition proceedings is possible, but the amended claims may not be subject to grounds for revocation under Section 21 PatG.
A German patent or the German part of a European patent may also be revoked or limited by the Patent Division upon request of the patent owner without time limit (Section 64 PatG). Limitation of the claims is possible subject to certain requirements (Sections 44, 64(2) PatG). Statistics on the outcome of opposition proceedings with the Patent Office are published annually in the Blatt für Patent-, Muster- und Zeichenwesen. Further, a German patent or the German part of a European patent may be declared invalid by the German Federal Patent Court in response to a nullity action (Section 81 PatG).

– Anyone may bring a nullity action (grounds of unlawful deprivation may be invoked only by the injured party (Section 81(3) PatG)). An action against a German patent may be based on the allegation that one or more of the grounds for revocation listed in Section 21(1) PatG apply or that the scope of the patent has been broadened (Section 22 PatG). An action against the German part of a European patent may be based on one or more of the grounds for revocation listed in Article II Section 6 IntPatÜbkG, which are the same as those in Sections 21(1) and 22 PatG, apart from the ground of unlawful deprivation, which is almost the same.
– There is no time limit for a nullity action; but a revocation action against a patent may not be filed as long as opposition proceedings may be initiated or are still pending (Section 81(2) PatG). However, after expiry of a patent a nullity action is admissible only if the claimant has a legal interest in a court declaration that the patent is nullified (with retroactive effect), which is generally recognized when the claimant is accused of having infringed the patent, e.g. by the patent proprietor in a pending infringement action.
– The defendant has to object to the nullity action within one month after service of the action. If no objection is filed in time, the Federal Patent Court may decide without a hearing, assuming that the facts put forward by the claimant are true (Section 82(2) PatG). The defendant may defend the patent as granted but also in his main request or one or more auxiliary requests in an amended set of claims.
– At first instance, the proceedings are handled by a Revocation Chamber (“Nichtigkeitssenat” – Section
66(1) No. 2 PatG) of the Federal Patent Court, generally consisting of two legal and three technical members (Section 67(2) PatG).
– After submission of the statement of defence the court refers in a written communication to issues that are likely to be of particular importance for deciding the case. It may set a time limit for the parties to comment, e.g. by revising their requests or supplementing their allegations. Failure to observe the time limit may make it inadmissible to defend the patent in an amended set of claims or to submit new documents or facts.
– The hearing is held before the panel and under the control of the presiding judge. At the beginning the presiding judge or the reporting judge states the essential content of the file, followed by a hearing of the party’s pleadings and, possibly, a taking of evidence, e.g. the hearing of witnesses, rarely of experts since three out of the five judges on the panel are technically qualified in the patent’s field of technology. Most of the time, the final decision is given at the end of the hearing, while the reasons are given at a later point in time.
– Decisions have retroactive effect (ex tunc).
– Appeal may be made to the Federal Supreme Court within one month of delivery (i.e. service) of the full judgment (Section 110(3) PatG) for a review of legal and factual aspects. (Under the revised law enacted on 1 September 2009 and applicable to all nullity actions instituted from then on, the review is restricted to legal aspects. New facts can be introduced into the proceedings only if certain conditions are met [e.g. no negligently late presentation of the new facts] (Section 111 PatG).) Cross-appeal is admissible. A panel of five legally qualified judges will decide on the appeal after a hearing. The decision can be rejection of the appeal or full or partial reversal of the judgment or remittal of the case to the Federal Patent Court or a decision to take evidence and, after another hearing, rejection of the appeal or full or partial reversal of the judgment.

II. Civil procedure

Infringement
Infringement claims are subject to civil law (Sections 139-141 PatG). Criminal sanctions are available (criminal action on complaint of the aggrieved party, except in cases of public interest, where prosecution is ex officio (Section 142 PatG)).
– The competent court for all claims based on infringement of a patent under German law is the District Court (LG, “Zivilkammern der Landgerichte” – Section 143 PatG). Due to federal regulations, specific District Courts are wholly or partially competent for deciding all patent actions (Patentstreitsachen) in a particular federal state (Bundesland) without regard to the value in dispute: LG Mannheim (Baden-Württemberg); LG Munich I and LG Nuremberg-Fürth (Bavaria); LG Berlin (Berlin, Brandenburg), LG Hamburg (Bremen, Hamburg, Mecklenburg-Western Pomerania, Schleswig-Holstein), LG Düsseldorf (North Rhine-Westphalia); LG Frankfurt (Hessen, Rhineland-Palatinate); LG Braunschweig (Lower
Saxony); LG Leipzig (Saxony); LG Magdeburg (Saxony-Anhalt); LG Erfurt (Thuringia); LG Saarbrücken (Saarland).
– Parties are required to bring forward all facts and available evidence or offer of evidence in written statements within time limits set by the court. Panels of three legally qualified judges decide on the infringement action after a hearing.
– The standard limitation period for actions for patent infringement is three years (Section 141 PatG, Section 195 BGB). The standard limitation period commences at the end of the year in which the claim arises and the claimant obtains knowledge of the infringement and of the identity of the infringer or would have obtained such knowledge if he had not shown gross negligence (Section 141 PatG, Sections 195, 199(1) BGB). Irrespective of such knowledge, claims become statute-barred ten years after they arise or thirty years from the date of the infringement (Section 141 PatG, Sections 195, 199(3), (4) BGB).

Nullity/counterclaim for revocation
– Under German patent law, only the Federal Patent Court may declare a patent invalid (the so-called bifurcation system; see Part I “Revocation”).
– The invalidity of a patent may not be put forward as a defense or counterclaim defense in infringement proceedings, since civil courts are bound by the patent as an administrative act issued by the Patent Office which can only be revoked in opposition proceedings or declared invalid in nullity proceedings.
– Infringement proceedings may, however, be stayed if opposition or nullity proceedings are pending and the District Court is of the view that there is a high likelihood that the patent claims relevant for the infringement will be revoked or held invalid (Section 148 ZPO).

Remedies
– Remedies available for patent infringement in a trial on the merits are permanent injunctive relief (Section 139(1) PatG), claim for information and rendering account on profits due to the infringement (Sections 140b PatG and 242, 259 BGB), claim for recall, removal and destruction of the infringing product (Section 140a PatG), declaration of liability for damages (Section 139(2) PatG), and publication of the decision (Section 140e PatG).
– A claim for the award of damages is generally put forward in separate proceedings after the court has found that the defendant is liable for damages due to patent infringement and the case is not settled out of court.

Other actions
– Declaration of non-infringement is available in civil proceedings (Section 256 ZPO).
– Preliminary injunctions or preliminary seizure may be ordered in preliminary proceedings (Sections 140a PatG, 935, 940 ZPO).
– An order for inspection of the allegedly infringing product or process (Section 140c PatG) is also available before or during proceedings on the merits.
– Border seizure measures may be available under the requirements of national law (Section 142a PatG) and/or European regulations.

Appeal
The Higher District Court (“Oberlandesgericht” – OLG) has jurisdiction on appeals from decisions of the District Court. Legal review by the Federal Supreme Court is available, only if leave to seek review is granted by the Higher District Court or if on appeal the decision of the Higher District Court not to grant leave is set aside by the Federal Supreme Court (Sections 543-545 ZPO). Grounds for granting leave are that the case gives rise to a legal issue of general importance or that the development of law or the safeguarding of unitary case law requires a decision from the Federal Supreme Court. Violations of the right to be heard are also a ground for granting leave.

Parallel proceedings
See Part II “Nullity/counterclaim for revocation”.

Arbitration/mediation
Alternative dispute resolution including means of mediation may be available in civil proceedings such as patent infringement proceedings (see for example Sections 278, 278a ZPO). Arbitration (Schiedsverfahren) may be possible in civil proceedings. German law contains certain provisions for arbitration in Section 1025 et seqq. ZPO.

III. Enforcement

– Enforcement of the decisions of civil courts is subject to the provisions of German civil procedural law (Section 704 et seqq. ZPO).
– A decision on the merits is enforceable when it is final.
– A district court decision on the merits is provisionally enforceable when the decision has been serviced upon the defendant, a court certificate of enforceability (Vollstreckungsklausel) has been issued and security, as determined by the court, has been posted. The appeal court, upon request of the defendant, may in exceptional cases suspend the enforceability of the decision if it has been appealed. A court of appeal decision is also provisionally enforceable. For preliminary injunctions see also Sections 936, 929 ZPO.
– The party that has enforced a provisionally enforceable decision is liable for damages if the decision is subsequently reversed (Section 717(2) ZPO). If the subsequently reversed decision is a decision from a court of appeal, the liability of the party that enforced the decision is limited to the extent of unjustified enrichment (Section 717(3) ZPO).
– Non-compliance with the orders in the court decision may, upon request of the other party, be subject to a penalty or imprisonment (non-compliance with an injunction, section 890 ZPO) or a coercive measure (noncompliance with an order to give information and render account, Section 888 ZPO). Award of damages is enforced in the same way as a decision for payment in general.

IV. Compulsory license

A non-exclusive compulsory license may be granted by the Federal Patent Court at the request of a party (subject to further conditions – Section 24 and Section 81 et seqq PatG).
– The decision may be appealed to the Federal Supreme Court within one month (Section 110 PatG).

V. Relevant national law

Patent Act as promulgated on 16 December 1980 (Federal Gazette 1981 I p.1), last amended by Article 2 of the Law of 4 April 2016 (Federal Gazette I p. 558) [cited as: PatG] Act on International Patent Treaties of 21 June 1976 (Federal Gazette II p. 649), last amended by Article 19 of the Regulation of 31 August 2015 (Federal Gazette I p. 1474) [cited as: IntPatÜbkG] German Code of Civil Procedure in the version of the announcement of 5 December 2005 (Federal Gazette I p. 3202; 2006 I p. 431; 2007 I p. 1781), last amended by Article 3 of the Law of 11 March 2016 (Federal Gazette I p. 396) [cited as: ZPO]

DENMARK
I. Administrative procedure

The law of Denmark covers the autonomous outlying regions of Greenland and the Faroe Islands; however, the EPC has not been approved for those regions and does not in any way cover them.

Opposition
Post-grant opposition is available. It must be filed within nine months from publication of the grant (Section 21 PA). The opposition may be considered by the Danish Patent and Trademark Office (hereinafter the “Patent Office”) even if the opposition is withdrawn or the patent has lapsed
(Section 23(2) PA).
– A third party may also file pre-grant observations on an application. They will be considered by the examiner, and the applicant is informed of them.
– If a third person claims before the Patent Office to be entitled to the invention, the Patent Office may invite him to bring the case before the court within a specific period (Section 17 PA). If that happens, the grant proceedings can be suspended until a final decision in the legal proceedings has been given (pre-grant disputes – Section 17(2) PA).

Re-examination
Any person may file a request with the Patent Office to have a granted patent reexamined. A request may not be filed during the period allowed for opposition or as long as an opposition remains to be finally decided upon (Section 53b PA).
– The Patent Office suspends re-examination until a case before the court has been finally decided upon, unless the request has been filed by the proprietor of the patent (Section 53b(3) PA).
– The proprietor of the patent may request that his patent be limited by amendment of the description, claims or drawings as long as there is no pending opposition (Section 53e PA). There are only a few such amendments per year.

Appeal
Final decisions of the Patent Office may be appealed to the Board of Appeal (Section 24 PA). Any party may bring an action within two months. New evidence not previously used may be submitted. The Board is independent of the Patent Office. An unfavorable decision of the Board of Appeal may be appealed to the Maritime and Commercial Court and further to the Supreme Court.

II. Civil procedure

Infringement
Civil actions must be brought to the Maritime and Commercial Court. The panel of the Maritime and Commercial Court uses both legally and technically qualified judges.
– Action should be brought by the injured party or at the request of the injured party by public authorities (Section 57 PA).
– Invalidity of the patent may only be raised as a defense if a claim for revocation is made against the proprietor of the patent under special proceedings summoning the patentee before the court (the defendant may adduce the nullity of the patent only against the owner of the patent if a claim is raised and is properly communicated – Sect. 61 PA).

Nullity/counterclaim for revocation
Any person may institute proceedings for full or partial invalidation of a patent at any time after grant (Section 52 PA). The action may be brought before the Maritime and Commercial Court.
– Partial invalidation is available.
– Invalidation proceedings concerning a patent in respect of which opposition is pending may be suspended by the Court until a final decision on the opposition has been taken by the Patent Office (Section 53a PA).
– Proceedings on the grounds that the patent has been granted to a person other than the one entitled to it may be instituted only by the person claiming entitlement. Such proceedings must be brought within one year after the entitled person obtained knowledge of the grant of the patent and of the other circumstances on which the proceedings are based. If the proprietor received the patent in good faith, action may not be brought later than three years after grant (Section 52(4) PA).

Remedies
Fines, damages, confiscation of infringing products, additional decision on prevention of the abuse of products manufactured in accordance with the patent, imprisonment. The patent owner may also seek a preliminary injunction at the City Court (Section 58, 59, 62 PA).

Other actions
Can be achieved through a civil lawsuit against the patent owner.

Appeal
Appeals from the Maritime and Commercial Court may be made to the Supreme Court. Also see Part I “Appeal”.

Parallel proceedings
Proceedings for revocation instituted while the examination of an opposition is pending at the EPO may be suspended by the court until a final decision has been taken (Section 53a PA).

Arbitration/mediation
No information available.

III. Enforcement
The Maritime and Commercial Court may, when so requested, decide that a product constituting patent infringement is to be withdrawn or removed definitively from the market, destroyed, surrendered to the injured party or altered in a specific manner (Section 59 PA). Any person who intentionally or negligently commits patent infringement must pay reasonable compensation to the injured party for the exploitation of the invention and damages for the further injury which the infringement has caused. The court decides the amount of the damages (Section 58 PA).

IV. Compulsory license

Can be granted by the Maritime and Commercial Court, e.g. in cases of non-working, dependent patents or public interest (Sections 45-48 PA). The Court may, at the request of either party, modify the conditions of a compulsory licence or even revoke it.

V. Relevant national law

The Consolidated Patents Act (Consolidated Act No. 108 of 24 January 2012) [cited as: PA] Order on Patents and Supplementary Protection Certificates (Order No. 25 of 18 January 2013)

ESTONIA
I. Administrative procedure

Opposition
No formal pre-grant opposition procedure is available. Post-grant opposition is available at the Board of Appeal. Any person may file an application for revocation with the Board of Appeal and request the revocation of a patent within nine months of the publication date of the notice of issue of the patent (Section 50 PA). The person who filed the revocation application or the proprietor of the patent may contest the decision of the Board of Appeal at the Harju County Court within three months of the date on which the decision was made (Section 50(6) PA).

Appeal
An applicant may file an appeal against a decision of the Estonian Patent Office (hereinafter the “Patent Office”) with the Board of Appeal (Section 30 PA).
– Any applicant may file an appeal within two months of the date on which the decision is made (Section 30(2) PA). The Board of Appeal has the right to dismiss an appeal, or to require the Patent Office to annul its decision and to continue the proceedings, taking into account the circumstances set forth in the Board’s decision (Section 30(3) PA).
– Harju County Court (civil court) is responsible for all substantive matters of patent law and for appeals against the decisions of the Board of Appeal (Harju County Court is located in Tallinn, seat of the Patent Office). Other county courts are responsible for infringement cases only.

II. Civil procedure

Infringement
Civil county courts have jurisdiction (jurisdiction over the place of alleged infringement – according to the general rules of civil procedure).
– The patent owner may bring the action (Section 53 PA).
– Criminal sanctions are available, but separate criminal proceedings have to be established (Sections 219, 226 Penal Code).
– Opinions from experts are possible, but are not binding on the court.
– Nullity of a patent can be used as a counterclaim (Section 54(6) PA). The court has to suspend the infringement proceedings until the final decision on revocation is reached. If the patent is revoked, the action for alleged infringement will be discontinued.

Nullity/counterclaim for revocation
Any person who considers that a granted patent does not fulfil all the criteria for patentability (Section 8 PA) may file an action for revocation in the Court against the proprietor of the patent (Section 49(4) PA).
– An action may be brought to the Harju County Court even after the patent has lapsed (Section 49(5) PA).
– A patent may be partially revoked. The decision of the Court has retroactive effect (Section 49(6) PA).
– If the action is withdrawn, the court will end the proceedings. No ex officio actions are provided for by
Estonian law. The proprietor of a patent may restrict the scope of patent protection by amending patent claims and correcting any bibliographical data and obvious spelling or calculation errors in the patent specification during the entire term of validity of the patent (Section 39(1) PA). During proceedings related to the contestation of a patent before the Board of Appeal or at court, the proprietor of the patent cannot file a request to amend the patent with the Patent Office (Section 39(5) PA). There is little practice in relation to post-grant procedures for patents, so it can be said that this does not occur frequently.

Remedies
Compensation, termination of unlawful use (Section 53 PA).

Other actions
May be requested by any person at the Harju County Court. Action must be filed at the court against the patentee (Section 54(5) PA).

Appeal
An ordinary appeal may be filed at the Court of Appeal.

Parallel proceedings
There is no provision for these in the legislation, therefore it is not obligatory to allow for them in relation to EPO proceedings. Estonia has very little relevant practice with parallel proceedings.

Arbitration/mediation
Conciliation proceedings are available under the Conciliation Act (Section 1(1)) and do not constitute mandatory pretrial procedure. The competent authority for dealing with conciliations is a conciliator. A conciliator for the purposes of the Conciliation Act can be a natural person to whom the parties have entrusted the task of carrying out the activity, with restrictions a sworn advocate, with restrictions a notary and, in the cases provided for by law, a conciliation body of the government or local authority (e.g. the Estonian Association of Mediators) (Section 2 of the Conciliation Act).

III. Enforcement

A bailiff is responsible for enforcing an order both during the procedure and after termination or final decision of the court.

IV. Compulsory license

May be granted by the County Court in cases of nonworking, economic importance for Estonia, and public interest (Section 47 PA). Government use of a patent without the authorization of its owner in situations of national emergency or other circumstances of extreme urgency is possible (Section 47 PA).

V. Relevant national law

Patent Act – passed on 16 March 1994 (RT I 1994, 25, 406) [cited as: PA] Penal Code – passed on 6 June 2001 (RT I 2001, 61, 364) Principles of Legal Regulation of Industrial Property Act – passed on 28 January 2003 (RT I 2003, 18, 98) Conciliation Act – passed on 17 November 2009 (RT I 2009, 59, 385) Code of Civil Procedure – passed 20 April 2005 (RT I 2005, 26, 197)

SPAIN
I. Administrative procedure

Opposition
Any interested party may file notice of opposition against applications which have undergone substantive examination within a period of two months from the date of publication of the request for substantive examination in the Official Gazette.
– In such cases, opposition may not be founded on the grounds of lack of right to apply for the patent, which constitutes an issue that would have to be settled by the Spanish civil courts.
– The Spanish Patent and Trademark Office (OEPM; hereinafter the “Patent Office”) informs applicants of any oppositions it receives and supplies them with its findings on novelty, inventive step and sufficiency.
– The Patent Office sets a two-month time limit for applicants to reply or to make appropriate amendments to the application.
– If the applicant files additional comments or makes amendments to the application, these are once again subjected to re-examination by the Patent Office, which in addition informs the applicant of the existence of any possible objection that might prevent the patent from being granted. A supplementary one-month period is then provided for the applicant to make additional comments or amendments to the application. Applications processed in the general grant procedure and hence without substantive examination of the invention are not subject to opposition.
– However, in such cases, any third party may file observations referring to the Patent Office’s prior art report. The time limit for submitting third-party observations is two months from the date of publication of the resumption of the general grant procedure in the Official Gazette.
– The Patent Office informs the applicant of the existence of any such observations, to which he may reply. Therefore, the applicant will be granted an additional two-month period within which he may also make additional remarks concerning the prior art report or suggest any amendments to the claims.

Appeal
Decisions of the Patent Office are only subject to direct appeal before the Appeals Unit of the Patent Office. If the appeal is not settled within the three-month period from the date on which it was lodged, the request to overturn the decision may be presumed to have been dismissed. Therefore, the lack of an administrative decision within the legal term will not prevent the appellant from pursuing his legal claims. Decisions of the Appeals Unit can be challenged in the administrative courts of justice. There is a judicial appeal to the High Court of Justice and the possibility of a final appeal to the Supreme Court.

II. Civil procedure

Infringement
The owner of a patent and the exclusive licensee may take civil and criminal actions for infringement. Civil actions are aimed at preventing or redressing damages, whilst criminal actions seek punishment of the person held responsible for the crime. It is frequent to find infringement actions taken in joint proceedings with revocation actions brought by the defendant as counterclaims. During both civil and criminal proceedings, the Court may request expert evidence from public bodies and institutions, possibly with the collaboration of Patent Office experts.
– Spanish public security forces may proceed against crimes against IP rights, acting on the basis of their own investigations. Such crimes may also be prosecuted as a result of the crime being reported by any third party to the public security forces, which then conduct the necessary investigations to seek evidence of the reported crime.

Nullity/counterclaim for revocation
Revocation actions can be brought by anyone except in cases of lack of right to the patent, where only the person who claims a better right to the invention would be entitled to act. A verdict declaring the revocation of a patent may not affect agreements already enforced. The Spanish courts may declare partial revocation of the patent. In Spain, civil or administrative courts may declare the partial revocation of a patent; but in current practice this happens only after administrative resolution.

Remedies
In civil proceedings, the patent owner may resort to the following remedies: injunction, compensation for damages, seizure and destruction of infringing goods or the filing of notices in public registries.

Other actions
Other actions are declaration of non-infringement and right of prior use (Art. 62-71 and 54 of the Spanish Patent Act).

Appeal
Appeals from the Commercial Court are made to the Court of Appeal (Audiencia Provincial).

Parallel proceedings
In Spain, administrative proceedings prevail over civil ones when they relate to administrative resolutions. Criminal proceedings prevail over all types of judicial proceedings. EPO decisions are considered of great importance, but they have a non-binding effect and the courts may adjudicate without taking EPO proceedings into account.

Arbitration/mediation
The new patent law expressly mentions the possibility of arbitration or mediation for patent matters and gives powers to the Patent Office to create an arbitration and mediation service. The new law expressly provides that the following are excluded from arbitration or mediation: matters related to the grant, opposition or appeal procedures as far as those matters relate to patentability requirements, maintenance or validity.

III. Enforcement

Judicial authorities are responsible for ordering the implementation of the Court decision. The Ministry of Justice must ensure such implementation. For that purpose there are bailiffs with special functions. The police are also involved in actions ensuring global respect for the judicial mandate of the Court in accordance with the rule of law. The new Spanish Patent Act that will enter into force in 2017 affects the enforcement of patents. For example, the new law has incorporated the legal regime dealing with
“post-grant” amendments contained in EPC 2000. Another significant change is that the calculation of damages will be postponed until the so-called “execution phase.” This will avoid the time and cost involved in the calculation of damages in the “declaratory phase”, i.e. before it has been established whether or not the patent has been infringed. Another change is that the term for filing a statement of defense has been extended to two months. Until now it was just 20 working days. Another notable change is that the new law limits the competence to deal with patent cases to Commercial Courts specialized in dealing with patent cases. Prior to this, the only specialized courts were Commercial Courts 1, 4 and 5 in Barcelona. One of the “collateral effects” of the new law is that it has prompted Commercial Courts in Madrid to also designate a few courts to specialize in patent cases. Unless
Courts from other Spanish Autonomous Communities follow suit, under the new law only the Commercial Courts of Barcelona and Madrid will be competent to deal with patent cases.

IV. Compulsory license

The Spanish Patent Act provides for compulsory licenses, which may be granted in cases of non-working of the invention, public interest and dependence between patents.

V. Relevant national law

Spanish Patent Act – Ley 11/1986 de 20 de marzo de 1986, de patentes de invención y modelos de utilidad – as amended by: Ley 21/1992 de 16 de Julio de 1992 de Industria (in force until 31 March 2017); Patent Law 24/2015, of 24 July 2015 (in force on 1 April 2017)

FINLAND
I. Administrative procedure

Opposition
A post-grant opposition procedure is available. Within nine months from the date of the grant of the patent anyone may file notice of opposition (Section 24 PA). The Finnish Patent and Registration Office (hereinafter the “Patent Office”) may take an opposition into account even if it is withdrawn or after the patent has lapsed. If the opposing party withdraws his opposition, he may not appeal against the Patent Office’s final decision (Section 24(5) PA). Anyone may file pre-grant observations which are of importance for the examination of the application. The Patent Office notifies parties of the possibility of filing an opposition if the patent is granted (Section 26a PD).

Appeal
Appeals against final decisions of the Patent Office may be filed with the Market Court within 60 days (Section 27 PA). Appeals may be filed by the applicant, proprietor or opponents or by persons claiming to be the owner of the invention (Sections 26 and 54 PA). Further appeal may be made to the Supreme Administrative Court within 30 days after receipt of the decision of the Market Court. However, leave has to be granted first.

II. Civil procedure

Infringement
The patent owner may bring a civil action to the Market Court. A licensee may sue the infringer in his own name, provided that he duly notifies the owner.
– A dispute on infringement, entitlement, compulsory licensing, a declaratory judgment or compensation relating to a European patent may not be heard by the Market Court if the same dispute between the same parties is pending before the court of another country that is party to the EPC. If the competence of the foreign court is contested, the Market Court postpones its hearing of the case until the question of competence has been finally decided upon by the foreign court.
– In patent infringement matters the Market Court may ask the Patent Office for an opinion. Nullity can be used as a defense, provided that a nullity action against the patent is pending or will be brought to the court within a period determined by the Market Court. Infringement and nullity actions are as a rule dealt with in the same proceedings. However, the Market Court may stay the infringement proceedings until the counterclaim for nullity has been decided if there are particular reasons for doing so.

Nullity/counterclaim for revocation
Any person who suffers prejudice on account of the patent, or a public authority appointed by the government for reasons of public interest, may institute proceedings for the invalidation of a patent. The action must be brought before the Market Court. In patent invalidation matters the Market Court may ask the Patent Office for an opinion. Patent claim limitation is allowable in nullity/counterclaim for revocation proceedings. Also, in practice requests for limitation do exist, but they are not very common.

Remedies
Damages, compensation, interlocutory injunction, destruction, seizure, alteration or surrender of the infringing articles (Sections 57–60a PA).

Other actions
May be issued by the Market Court. Any person carrying on or intending to carry on commercial activities may bring an action against the patent owner (Section 63 PA).

Appeal
Decisions and judgments of the Market Court may be appealed against before the Supreme Court, provided that the Supreme Court grants leave to appeal.

Parallel proceedings
In a patent invalidation case the court may, at its discretion, postpone the taking of a decision on a principal claim referred to it if the action has been brought in a competent authority before expiry of the time limit for filing opposition after the grant of the patent or before a final decision has been issued on the opposition. In practice the court takes its decision whether or not to stay the proceedings on a case-by-case basis after consultation of the parties.

Arbitration/mediation
Arbitration is in principle available in patent litigation proceedings, with the exception of nullity/counterclaim for revocation actions. The parties are in principle free to agree whether to use the Arbitration Institute of the Finland Chamber of Commerce or ad hoc arbitration.

III. Enforcement

The authority responsible for enforcing an order both during the proceedings and after termination or final decision of the court is the bailiff (Enforcement Code No. 705/2007).

IV. Compulsory license

May be granted by the Market Court in cases of non-working, public interest, dependent patents and prior use (Sections 45–50 PA).

V. Relevant national law

– Patents Act – No. 550/1967, as amended by Acts No. 575/71, No. 407/80, No. 387/85, No. 801/91, No. 577/92, No. 1034/92, No. 1409/92, No. 593/94, No. 717/95, No. 1695/95, No. 243/97, No. 650/00, No. 990/04, No. 896/05, No. 295/06, No. 684/2006, No. 392/10, No. 954/10, No. 478/11, No. 743/11, No. 863/11, No. 101/13 and No. 23/2016 [cited as: PA] – Patents Decree – No. 669/1980, as amended by Decrees No. 505/1985, No. 583/1992, No. 71, No. 595/1994, No. 104/1996, No. 246/1997, No. 674/2000, No. 1200/2004, No. 144/2006, No. 1118/2007, No. 603/2008, No. 1097/2011 and No. 580/2013 [cited as: PD]
– Market Court Procedure Act No. 100/2013, as amended by Acts No. 594/2013 and No. 23/2014
– Enforcement Code No. 705/2007, as amended by Acts 987/2007, 365/2009, 521/2009, 932/2009, 1417/2009, 1614/2009, 1756/2009, 397/2010, 652/2010, 99/2011, 1161/2013, 741/2014, 408/2015, 637/2015, 26/2016, 323/2016

FRANCE
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure is available.
– Third parties may, within three months from the date of publication of the application, submit written observations that may affect the patentability of the invention (R. 612-63 IPC). Such observations are communicated to the applicant, who can submit his counter-observations or a new wording of the claims (within three months) (R. 612-64 IPC).

Appeal
Action for annulment of any decisions regarding the grant, refusal or maintenance of patents should be filed with the Paris Court of Appeal (L. 411-4, R. 411-19 IPC).
– The action may be brought within one month by the applicant or patent proprietor or by a third party having an interest in the proceedings and residing in France, within two months if the party resides in overseas administrative departments of France, and within three months if the party resides in another country outside France (R. 411-20, R. 411-24 IPC). The action has no suspensive effect.
– Further appeal can be made to the Supreme Court (L. 411-4(2) IPC).

II. Civil procedure

Infringement
Patent infringement in France gives rise to both civil (L. 615-1 IPC) and criminal liability (L. 615-14 IPC provides for a maximum of three years’ imprisonment and a fine of EUR 300 000 or, if the offence is committed by an organized criminal group or if the products are considered dangerous for the health and security of humans or animals, a maximum of five years’ imprisonment and a fine of EUR 500 000). These penalties are doubled if the offence is repeated or if the offender was contractually bound to the aggrieved party (L. 615-14-1). Deprivation of the right to elect and be elected to commercial courts, chambers of commerce and industry and professional chambers and to joint conciliation boards is also possible.
– Action may be brought by the owner of the patent or a licensee (if the patentee fails to do so – L. 615-2 IPC).
– All patent litigation matters fall under the special jurisdiction of the first instance court in Paris (Tribunal de grande instance de Paris) and the Paris Court of Appeal (L. 615-17 IPC; Art. D 211-6 Code of Judicial Organization). Infringement cases are tried by three judges, who do not have formal technical or scientific training. Judges at the Tribunal de grande instance deal exclusively with IP cases and the court has the power to appoint experts.
– Infringement actions may also be brought in respect of acts committed before grant but after the application became open to public inspection. The Court will then postpone its decision until the patent has been granted (L. 615-4 IPC).
– Nullity of a patent can be raised as a counterclaim or defense.

Nullity/counterclaim for revocation
The validity of a patent can be disputed only by initiating a nullity action before a court of general jurisdiction (Tribunal de grande instance de Paris). An invalidity action can be brought only after the patent has been granted.
– Any party which considers that a patent is invalid and should not have been granted can initiate an invalidity action; the public prosecutor may act ex officio (L. 613-26 IPC). Revocation decisions have retroactive and absolute effect (L. 613-27 IPC). Revocation may also be partial (L. 613-25, L. 613-27 IPC – claims limitation). Patent claim amendment is allowable in the following cases:
– The owner can file for a limitation of his patent, for example in the course of a revocation action. The request for limitation must be filed before the National Institute of Industrial Property (hereinafter the “Patent Office”). The Patent Office’s decision to accept or reject the limitation request is subject to appeal before the Paris court of appeal (L. 613-25 IPC).
– In the course of a revocation action, if the grounds for revocation affect the patent in part only, revocation is pronounced by the court in the form of a corresponding limitation of the claims (L. 613-25 IPC). Where a decision partially revokes a claim, the owner of the patent is referred to the Patent Office in order to submit a modified wording of the claim in accordance with the terms of the decision. The Patent Office is empowered to reject the modified claim for lack of conformity with the decision, subject to appeal to the Paris court of appeal (L. 613-27 IPC). An average of 30 limitations per year are filed under Art. L. 613-25 IPC. Limitations under L. 613-27 IPC are infrequent (less than one per year).

Remedies
Civil and criminal penalties – damages, fines, interim injunction, confiscation, seizure, publication of the decision, recall of the infringing products from the channels of commerce or removal from the channels of commerce, destruction of the infringing products.

Other actions
Anyone who proves they are working on an invention that may infringe an existing one has the right to request a judgment that such use does not infringe a certain patent (L. 615-9 IPC). The court’s declaration court does not exclude a later suit for infringement or nullity. “Saisie-contrefaçon” is available – if a claimant does not already have evidence in its possession, the President of a court of first instance may be asked for an order of saisiecontrefaçon, a means of obtaining evidence that heavily favors the patentee, e.g. inspection of the defendant’s premises (L. 615-5 IPC).

Appeal
The losing party has one month (two months for a foreign party) to file an appeal against the decision at first instance. In the Court of Appeal the parties will follow the same stages of procedure as at first instance (full rehearing).
– Further appeal to the Supreme Court is available but restricted to points of law. If the Supreme Court disagrees with the Court of Appeal’s decision, that decision is quashed and the case remanded to the Court of Appeal for further consideration.

Parallel proceedings
The Court’s decision whether to stay national proceedings depends on the circumstances of the case.
– If the court considers that the pending proceedings before the EPO have a good chance of affecting the national litigation, it may postpone them (e.g. if the patent revocation claims are the same before the EPO and the Court and have a good chance of succeeding).
– On the other hand, if the opposition before the EPO is considered not to be serious, or if the stay would result in overlong national proceedings, the Court may proceed to decide the case regardless of the outcome of the EPO proceedings.

Arbitration/mediation
Arbitration or mediation is not available in patent validity/revocation litigation. Arbitration and mediation are available in litigation over patent ownership, use, agreements (e.g. license) and infringement and, as an incidental issue only, patent validity. The Médiateur des entreprises, the permanent court of arbitration (CAIP), the National commission for employees’ inventions (CNIS) and the WIPO arbitration center are competent to deal with arbitration and mediation.

III. Enforcement

A bailiff is responsible for enforcing an order both during the procedure and after termination or final decision of the court.

IV. Compulsory license

May be granted by the Tribunal de grande instance.

V. Relevant national law

– Intellectual Property Code – as amended by Act. No. 2003-706 [cited as: L-IPC]
– Regulations concerning the Intellectual Property Code (R-IPC), Decree No. 95-385 of 10 April, 1995 [cited as: R-IPC]

UNITED KINGDOM
I. Administrative procedure

Patents granted by the Intellectual Property Office (hereinafter the “Patent Office”) cover England, Wales, Scotland, Northern Ireland and the Isle of Man. The Patent Office also operates as a tribunal dealing with ownership issues (e.g. entitlement, inventorship, compensation of employees, joint applicant disputes), technical issues (e.g. revocation, declarations of non-infringement) and licenses
(e.g. applications to decide on the terms of licenses which can be given under a patent and applications for a compulsory license under a patent). The Patent Office also decides various opposition matters, e.g. opposition to post-grant corrections and amendments, and surrender.

Opposition
No pre-grant opposition procedure is available. A third party may only file pre-grant observations on the patentability of the application (Section 21 PA). The Patent Office will consider such observations, but the observing party does not become a party to the proceedings. No post-grant opposition to the grant of a patent is available; however, third parties may seek revocation of a patent (see below) and may oppose certain post-grant actions.

Appeal
An appeal against decisions of the Patent Office must be filed with the Patents Court (Section 97(1) PA), unless the proceedings have been held in Scotland, in which case appeal lies with the Outer House of the Court of Session (Section 97(4) PA).
– The period for filing an appeal is specified in the decision by the Hearing Officer responsible for that decision; this is usually set at 28 days from the date of the decision. Permission to appeal is not required.

Revocation
The validity of a patent may be challenged before the Patent Office (in its capacity as a tribunal).
– Anyone may apply to revoke a patent (Section 72 PA).
– The Patent Office may also revoke patents on its own initiative (i) where the invention formed part of the state of the art under Section 2(3) (Section 73(1) PA); (ii) where there is a GB patent and a European patent (UK), the patents being for the same invention with the same priority date and the applications having been filed by the same applicant or his successor in title (Section 73(2) PA); or (iii) where a non-binding opinion of the Patent Office indicates that the patent is not valid due to lack of novelty or inventive step (Section 73(1A)-(1C) PA).
– In all cases, before any revocation occurs, the proprietor of the patent is given an opportunity to make observations and/or to amend the specification so as to exclude any matter which may give reasons for the revocation or so as to prevent there being two patents for the same invention.

II. Civil procedure

Infringement
Patent infringement is not a criminal offence. The patent owner or exclusive licensee may bring a civil action to the court of their choice (Sections 61(1), 66, 67 PA).
– The proceedings may be instituted against any person who is alleged to have performed an act of direct or indirect infringement under Section 60(1), (2) PA.
– The Patent Office can also hear infringement claims if the parties agree on that course of action (Section 61(3) PA), but in practice this has never happened.
– If it appears to the Patent Office that the question of infringement referred to it would more properly be determined by the court, it may decline to deal with it, and the court then has jurisdiction to determine the question (Section 61(5) PA). The United Kingdom comprises three separate jurisdictions:
1) England and Wales;
2) Scotland – patent actions are brought before the Outer House of the Court of Session, with appeals being heard by the Inner House; and
3) Northern Ireland – patent actions are brought before the Northern Ireland High Court, with appeals being heard by the Northern Ireland Court of Appeal. All three jurisdictions have the Supreme Court as the final appeal court. The Isle of Man is its own jurisdiction, and patent actions are brought before the High Court of Justice of the Isle of Man.

For England and Wales: in relation to patent disputes, there is no formal separation of jurisdiction between the Intellectual Property Enterprise Court and the Patents Court, and both form part of the Chancery Division of the High Court.
– Normally, less complicated cases will be considered by the Intellectual Property Enterprise Court. There is no legal limitation on jurisdiction due to the complexity of the facts but it will only consider cases up to GBP 500 000 in damages (unless the parties agree otherwise). Costs are capped for each stage of a case, with a maximum total cap of GBP 50 000 for the case as a whole. The Intellectual Property Enterprise Court cannot consider appeals on decisions by the Patent Office.
– The Patents Court has the jurisdiction to transfer to the Intellectual Property Enterprise Court any proceedings which it is satisfied should have been filed there. The Intellectual Property Enterprise Court may also transfer proceedings to the Patents Court. If a party wishes proceedings transferred from one court to another, it needs to make an application to the court that currently has jurisdiction over the proceedings.

Nullity/counterclaim for revocation
Invalidity of a patent may be used as a defense in an infringement action and the defendant may counterclaim for revocation of the patent. Both validity and infringement are handled within the same action, although case management decisions by the court may lead to one being decided before the other.
– If validity is put in issue in infringement proceedings and it is found that the patent is only partially valid, the court or the Patent Office may grant relief only in respect of the part of the patent which is found to be valid and infringed, or reduce the damages accordingly (subject to further conditions – Section 63 PA). Standalone actions for invalidity of a patent may be brought before the Patent Office, the Intellectual Property Enterprise Court or the Patents Court. Anyone may apply to revoke a patent (Section 72 PA). In any action involving invalidity, the proprietor of the patent is able to request amendment of the specification so as to exclude any matter which may give reasons for the revocation. If the action is before the court, the Patent Office must be notified, so that the amendment can be advertised for possible opposition (Section 75 PA).

Remedies
The court may order an injunction against future infringements, compensation by damages or an account of profits, or delivery up or destruction of infringing materials. The court will not, in respect of the same infringement, both award damages to the proprietor of a patent and order that they be given an account of the profits (Section 61(2) PA). The Patent Office has more limited remedies available than
the courts – the proprietor of the patent may only make claims for damages and/or for a declaration that the patent is valid and has been infringed (Section 61(3) PA).

Other actions
A declaration that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the Patent Office in proceedings between the person performing or proposing to perform the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor (Section 71 PA). A person who, in good faith and before the priority date of the invention, carries out an act which would constitute an infringement of a patent granted for that invention, or makes effective and serious preparations to do so, has the right to continue to do so even if such a patent has been granted. However, this does not extend to licensing another person to do that act, except in specific circumstances (Section 64 PA). A claimant can choose to launch proceedings before either the Patent Office or the courts in a dispute concerning employee compensation (Section 40 PA).

Appeal
Appeals from decisions of the Patent Office go to the Patents Court (Section 97(1) PA). Permission to appeal is not required. Appeals from decisions of the Intellectual Property Enterprise Court go to either the Chancery Division of the High Court (for interim orders) or the Civil Division of the Court of Appeal
(for final orders). Permission is required, either from the deciding judge or the appeal court. Appeals from decisions of the Patents Court go to the Court of Appeal (Civil Division). There is no automatic right of appeal; a party must ask the trial judge for permission. If permission is refused, an application for permission can be presented to the Court of Appeal, where a single Lord Justice will consider whether to grant permission to appeal.
– Where the Patents Court decision is an appeal from a decision of the Patent Office, only certain decisions can be the subject of a further appeal to the Court of Appeal (Section 97(3) PA).
– The appeal panel of three judges normally includes a judge specialized in patent cases. An appeal is not a rehearing; facts are taken to be as found by the judge at the first instance, and the appeal examines whether that judge correctly applied the law to those facts. Further appeal can be filed with the Supreme Court. Permission to do so is given by either the Court of Appeal itself, or by the Supreme Court on application to it. The appeal can only be on an important question of law.
– In certain circumstances, it is possible to appeal directly from the Patents Court to the Supreme Court.

Parallel proceedings
A decision on whether or not to stay national proceedings where EPO proceedings are underway is made on a case-by case basis; the default option is to grant a stay, and it is for the party resisting to show why it should not be granted. A number of factors are considered, with the ultimate question being where the balance of justice lies.

Arbitration/mediation
Parties are strongly encouraged by the courts to resolve civil disputes before litigation, particularly through use of alternative dispute resolution (ADR), and this includes patent proceedings. Not doing so does not affect the merits of the case, but may have implications for costs following a court judgment.
There are no mandatory authorities for ADR, and parties are free to choose the type and provider of ADR they wish to use; the Patent Office offers mediation as a commercial service.

III. Enforcement

Enforcement of civil judgments is not automatic; the person awarded the judgment must apply to the court for the order to be enforced. There are various options available for enforcement, including execution against goods, imposing a charge against assets, and freezing bank accounts. Because of the United Kingdom’s multiple jurisdictions, the mechanism for enforcement of civil judgments depends on the jurisdiction the enforcement takes place in:
– In England and Wales, court bailiffs and Enforcement Officers are responsible for carrying out an enforcement order.
– In Scotland, Sheriff Officers and Messengers-at-Arms have responsibility.
– In Northern Ireland, this is the responsibility of the Enforcement of Judgments Office.
– In the Isle of Man, Coroners and Lockmen act to execute enforcement orders.
The nature of the enforcement proceedings will also depend on where the order has originated (whether the enforcement is across jurisdictions, for example); however, there is no difference between enforcement of an interim order and a final judgment. The Patent Office has no powers to enforce its judgments; enforcement must be done by the courts.

IV. Compulsory license

Compulsory licenses may be granted by the Patent Office (Section 48 PA). An application may not be made before three years have elapsed from grant of the patent. Grant of a license may be opposed by any person, not just the proprietor of the patent (Section 52 PA).

V. Relevant national law

Patent Act 1977 as amended (October 2014) [cited as: PA] 54 Patent Litigation in Europe

GREECE
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. No observations can be made by third parties; third parties may only obtain copies of the application and search report (Art. 7(12), (13) PA).

Appeal
No formal appeal is available. A decision of Industrial Property Organization refusing a patent application for lack of susceptibility of industrial application or for exclusion from patentability (Art. 8(2) PA) can be contested following a petition for annulment before the Council of State.

II. Civil procedure

Infringement
The Civil Court of First Instance is competent (the civil courts in Athens and Thessaloniki are the only courts in Greece competent in patent litigation matters (Law No. 2943/2001)). Additionally, both courts have judges specializing in IP law.
– Infringement claims may be brought to the court before the patent is granted; however, in such a case the court may postpone the proceedings until the patent has been granted (Art. 17(3) PA).
– The owner or the exclusive licensee may bring a civil action (Art. 17(1), (3) PA).
– No criminal sanctions are provided for.
– Invalidity may be raised as a defense following an objection. In the case of a pending invalidity action, the court trying the infringement case is not obliged to stay proceedings. Infringement cases are tried according to the provisional measures procedure, which is speedy, whereas an invalidity action takes some time before a decision is issued on the merits of the case.
– The infringement is statute-barred after five years from the date on which the owner of the patent noted the infringement or the damage and the person who is obliged to give compensation, and at most 20 years after the infringement took place (Art. 17(4) PA).

Nullity/counterclaim for revocation
Nullification may be requested during the entire life of a granted patent. The patent will be invalidated by the court on grounds named in Art. 15 PA (lack of novelty, lack of patentability, scope of the patent or insufficient disclosure).
– A nullification action may be brought before the competent civil court by any person having a legitimate interest (Art. 15 §2 PA). While different panels of the civil court hear nullity and infringement claims, provisional measures can be requested during invalidity proceedings.
– Patentees who are not residents of Greece are sued or bring action in the courts of the capital (Art. 15 §2 PA).
– The nullification of a granted patent has retroactive effect and also entails nullification of licenses granted under that patent.
– Partial nullification is available (Art. 15 §3 PA).
– Amendment of patent claims is not possible.

Remedies
Injunction, damages, payment of the derived benefits, recall or removal from the channels of commerce, destruction of infringing products (Art. 17(1), 17B, 17D PA).

Other actions
Not available.

Appeal
Ordinary appeal to the Civil Court of Appeal of Athens or Thessaloniki. Under certain circumstances an annulment (“cassation”) complaint can be filed at the Supreme Court.

Parallel proceedings
A national court may stay proceedings in case of EPO opposition until a final decision is issued. According to the case law (decision 5249/2005 of the Court of First Instance in Athens), Article 249 of the Greek Code of Civil Procedure allows the court to stay proceedings ex officio or upon petition of an interested party if the contested matter under review is pending before an administrative authority such as the EPO’s boards of appeal.

Arbitration/mediation
Both mediation and arbitration are available for patent matters upon agreement of the parties. An independent accredited mediator is the competent authority for recourse to mediation. In the case of arbitration, an arbitrator will decide the case, according to the relevant agreement of the parties.

III. Enforcement

A bailiff is responsible for enforcing an order both during the procedure and after termination or final decision of the court.

IV. Compulsory license

The competent court for the grant of a compulsory license is the three-member Court of First Instance at the place of residence of the petitioner (Art. 13(10) PA). A compulsory license may be granted in cases of non-working, dependent patents or public interest such as national defense or public health (in the latter case the license is granted by a competent minister) (Art. 13, 14 PA).

V. Relevant national law

Law 1733/1987 on Technology transfer, inventions and technological information, as amended [cited as: PA]

CROATIA
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available in the case of patents. In the case of consensual patents (patents which are granted without substantive examination – Art. 41, 42 PA) any person may, within six months, file notice of opposition to the grant of a consensual patent (Art. 43 PA).
The applicant for a consensual patent may, within six months from receipt of notification of the opposition, file a request for the grant of a patent on the basis of the substantive examination procedure. If the applicant for a consensual patent does not file a request, the State Intellectual Property Office (hereinafter the “Patent Office”) rejects the patent application (Art. 44, 45 PA).

Appeal
The Boards of Appeal for Industrial Property Rights (as an independent body) are responsible for deciding on appeals against the decision issued by the Patent Office at first instance (Art. 88-94 PA). The appeal should be filed within 30 days from the date of communication of the decision. Administrative disputes may be brought before the Administrative Courts of First Instance in accordance with ADA. On appeal the High Administrative Court (second instance) will examine the legality of the Administrative
Court’s first-instance judgment.

Revocation
The decision on the grant of a patent may be revoked prior to expiry of the term of a patent for deficiencies in the deposited viable biological material (Art. 85-86 PA). A decision to grant can be declared null and void if it is established that the conditions stipulated by law for granting a patent are not satisfied. A request can be submitted by anyone and at any time throughout the life of the patent, and should be filed with the Patent Office (Art. 79-83 PA). The proceedings may be continued even if the request for nullification is withdrawn by the person who filed it (Art. 82 PA). In the procedure concerning the proposal for the declaration of nullity of a patent (Art. 79-83 PA), the claims may be amended, provided that the subject-matter of the protection does not extend beyond the content of the patent as granted. Patent claim amendment after grant must always involve a restriction of the originally requested scope of protection and must always have support in the original specification. Patent claim amendments in such cases have ex tunc, erga omnes effect.

II. Civil procedure

Infringement
The patent owner or exclusive licensee is entitled to bring a civil action before the competent civil court (commercial courts in Zagreb, Rijeka, Osijek and Split) against any person who infringes the patent by performing any of the infringing activities (Art. 95 PA).
– The burden of proof rests with the defendant if the subject-matter of the infringement is a patent-protected process (Art. 95.h PA).
– Nullity can be used as a defense.
– An action for damages for infringement of a patent may be initiated within three years from the day of learning of the infringement and the infringer, but not after expiry of five years from the day on which the infringement was committed (Art. 95.e PA). An action for infringement of a patent may be initiated within five years from the day on which the infringement was committed.

Nullity/counterclaim for revocation
Within infringement proceedings, a counterclaim for revocation of a patent cannot be brought before the Court deciding on the infringement. If a defendant decides to use a counterclaim for revocation as a classical means of defense, it must submit the request for nullification to the Patent Office. The Patent Office subjects this request to expeditious proceedings. The judge decides whether or not to wait for the final decision on nullity, taking into consideration the circumstances of the case, but he is not obliged to do so (Art. 95.m PA); in any case, the judge has no competence to decide on revocation of the patent within this procedure.

Remedies
Provisional measures (Art. 95.j PA), prohibition of certain acts (Art. 95.c and 95.f PA), damages (Art. 95.e and 95.f PA), seizure (Art. 95.j and 95.k PA) and destruction (Art. 95.d PA).

Other actions
A patent has no effect against a person who had, prior to the filing date of the application or prior to the date of granted priority, in good faith and as part of his economic activities, exploited or manufactured the product which is the subject-matter of the invention or had made real and serious preparations for such exploitation of the invention in the Republic of Croatia (Art. 64 PA).

Appeal
Ordinary appeal can be brought to the High Commercial Court of the Republic of Croatia.

Parallel proceedings
Although Croatian courts retain exclusive jurisdiction over validity and infringement after a European patent has been granted, in practice the outcome of the proceedings will be taken into consideration, firstly because these are decisions of the expert legal instances (the EPO’s boards of appeal and Enlarged Board of Appeal) and secondly because EPO case law on the interpretation of the EPC is considered relevant for the interpretation of the EPC by national courts.

Arbitration/mediation
The Permanent Arbitration Court at the Croatian Chamber of Economy organizes arbitration proceedings for domestic and foreign entrepreneurs. The Arbitration Court enables the parties to have their disputes settled by trusted experts, within a reasonable period of time.

III. Enforcement

All measures and orders are within the competence of territorially competent commercial courts.

IV. Compulsory license

Compulsory licenses may be granted by the Commercial Court in Zagreb in cases of insufficient exploitation of a patent, national emergencies, the need for protection from unfair market competition, exploitation of another patent or protected plant variety, cross-licensing, and for the manufacture of pharmaceutical products intended for export to countries having public health problems (Art. 67.a–69.a PA).

V. Relevant national law

– Patent Act – Patent Act and Amending Patent Act and Act on Amendments to the Patent Act (OG No. 173/2003 of 31 October 2003, OG No. 87/2005 of 18 July 2005, OG No. 76/2007 of 23 July 2007, OG No. 30/2009 of 9 March 2009, OG No. 128/2010 of 17 November 2010, OG No. 49/2011 of 29 April 2011, OG No. 76/2013 of 21 June 2013) [cited as: PA]
– Administrative Disputes Act (OG No. 20/2010 of 12 February 2010, OG No. 143/2012 of 20 December 2012, OG No. 152/2014 of 22 December 2014) [cited as: ADA]
– Law on Arbitration (OG No. 88/2001 of 11 October 2001).

HUNGARY
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure. During the patent grant procedure any person may file observations with the Hungarian Intellectual Property Office (HIPO; hereinafter the “Patent Office”) on the patentability of the application. Such observations will be considered by the examiner. The person making observations is not a party to the proceedings and has no right to request a review of the Patent Office’s decision; however, he is notified of the outcome of the observations (Art. 71 PA).

Appeal
Only the Budapest-Capital Regional Court is competent to hear requests for the review of Patent Office decisions in accordance with the rules of non-contentious civil procedure (Art. 88, 86, 85 PA). The Patent Office is not a party to the court proceedings; however, it can submit its opinion in writing. The request has to be made within 30 days of the date of communication of the decision of the Patent Office, which forwards it to the Budapest-Capital Regional Court within 15 days (Art. 85(6), (9) PA).
– A request can be made by any party, by any person excluded from, or limited in, the inspection of files or by any person whose legal status as a party to the proceedings has been denied (Art. 85(4) PA). The public prosecutor may request the review of decisions of grant or revocation. Any other party to proceedings before the Patent Office may submit an independent request for review of the decision or a provision of the decision relating to him (Art. 85(5) PA).
– Any person having a legal interest may intervene in the proceedings, until the court’s decision becomes final (Art. 93(1) PA).
– The Budapest-Capital Regional Court sits in a chamber consisting of three professional judges, one legal and two technical, the latter having a technical university degree or equivalent (Art. 87 PA).
– If the court amends Patent Office decisions, the judgment replaces the Patent Office’s decision (Art.
100(1) PA). The court repeals a decision and orders the Patent Office to start new proceedings if:
– the decision was taken with the participation of a person who could be objected to on the grounds of incompatibility/exclusion;
– substantive rules of procedure which cannot be remedied by the court were infringed during the proceedings before the Patent Office (Art. 100(2) PA). If a party requests a court decision on a matter which was not the subject of the proceedings before the Patent Office, the court will refer the request to the Patent Office. If the request is referred the court will, if necessary, repeal the Patent Office’s decision (Art. 100(3) PA).
– The review of a decision taken in ex parte proceedings before the Patent Office will be handled in ex parte proceedings before the court; in the case of inter partes proceedings before the Patent Office, the same parties take part in the court proceedings, as plaintiff and defendant.

Revocation
Anyone (except the patentee) may make a request for revocation to the Patent Office (Art. 80, 42 PA). If a patent has been granted to a person not entitled to it, only a person who is thus entitled may make a request (Art. 80(2) PA).
– A decision is taken by a panel of three Patent Office employees (two technically qualified employees from the Patent Department, one lawyer – Art. 46(2) PA). The patent can be revoked (ex tunc) or limited, or the request can be refused. If the request is withdrawn, the proceedings can be continued ex officio (Art. 81(3) PA). If the request for revocation is rejected by a final decision, no new procedure on the same grounds may be instituted by any person (Art. 42 PA).
– In revocation proceedings and in actions for a decision on non-infringement, the Patent Office examines the facts within the framework of the request, on the basis of the allegations or statements of the parties and of data substantiated by them (Art. 47(2) PA). In both procedures, the parties may request accelerated proceedings if patent infringement proceedings are initiated or a request for provisional measures is filed and the fact is proved (Art. 81/A, 83(4) PA). There are no other post-grant procedures. The applicant is entitled to amend the description, claims and drawings as laid down in the PA only until the day on which the decision on the grant of the patent is delivered.

II. Civil procedure

Infringement
Action must be brought before the Budapest-Capital Regional Court (Art. 104 PA). Claims are subject to private law. Criminal sanctions are available in separate proceedings. The action may also be filed before the grant of a patent; however, the proceedings will be suspended until the final decision on the grant is reached (Art. 36 PA).

Nullity / counterclaim for revocation
The court usually suspends its proceedings if the validity of the patent is questioned (revocation proceedings pending at the Patent Office); however, there is no legal obligation to do so.

Remedies
Denunciatory measures, injunction, surrender of enrichment, seizure, destruction, damages (Art. 35, 35/A PA), provisional and precautionary measures (Art. 104 PA).

Other actions
Any person who believes that infringement proceedings may be initiated against him may apply. The decision is taken by the Patent Office. The request can be filed only prior to any infringement proceedings being instituted. Infringement proceedings may not be instituted in respect of a product where the declaration has been issued (Art. 37 PA). For further information on non-infringement proceedings, see Part I “Revocation”.

Appeal
Ordinary appeal from the decisions of the Budapest-Capital Regional Court to the Budapest-Capital Regional Court of Appeal. Further appeal to the Curia of Hungary only on important points of law; this is not an ordinary remedy available against all decisions. IP matters are decided by the civil division.

Parallel proceedings
If an opposition has been filed against a European patent, or if limitation or revocation of the same European patent has been requested in accordance with the EPC, the procedure before the Patent Office for revocation of the European patent is suspended in justified cases until the final termination of the opposition, limitation or revocation procedure before the EPO. The suspended revocation procedure will be continued at the request of any party after the final termination of the limitation procedure or final termination of the opposition or revocation procedure before the EPO does not result in revocation of the European patent (Art. 84/M (2)-(3) PA). See Part I ”Revocation”.

Arbitration/mediation
Mediation is available in patent litigation proceedings. The minister in charge of the judicial system maintains a register of mediators.

III. Enforcement

The bailiff is responsible for enforcing an order for provisional measures and also for enforcing the final decision in patent infringement matters. Enforcement is based on a judicial enforcement order issued by the competent court.

IV. Compulsory license

May be granted by the Budapest-Capital Regional Court in cases of lack of exploitation or a dependent patent (Art. 31-33 PA). Additionally, the Patent Office grants compulsory licences under the Doha system (Art. 33/A PA).

V. Relevant national law

ACT XXXIII of 1995 on the Protection of Inventions by Patents – consolidated text of 1 March 2015 [cited as: PA]

IRELAND
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. A third party may only oppose the restoration of a patent or amendments to a granted patent (Sections 36(5), 38(5) PA).

Appeal
All decisions or orders of the Controller can be appealed to the High Court (Section 96 PA).
– The notice of appeal to the High Court must be given within three months of the date of the order or decision that is to be appealed (Section 96(6) PA).
– Further appeal to the Supreme Court may only be based on a question of law (Section 96(7) PA).

II. Civil procedure

Infringement
Civil action should be brought before the High Court (Section 47(1) PA).
– The patent owner or the co-owner may bring the action (Sections 47(1), 48 PA). An exclusive licensee has the right to institute proceedings in respect of any infringement of the patent committed after the date of the license (Section 51(1) PA).
– Invalidity may be used as a defense (Section 61(1)(a) PA).
– In an action or proceedings for infringement or revocation of a patent, the High Court or the Supreme Court may, if it thinks fit, and must, if requested by all parties to the proceedings, call in the aid of an assessor specially qualified in the opinion of the Court, and try the case wholly or partially with his assistance (Section 95 PA).
– The Court may not, in respect of the same infringement, both award damages to the proprietor of a patent and order that he be given an account of the profits (Section 47(2) PA).
– Infringement proceedings in respect of a short-term patent may be brought before the Circuit Court (irrespective of the amount of the claim). The proceedings may not be instituted until the patent proprietor has made a request for a search report from the Controller and has received a copy of it (Section 66 PA).

Nullity/counterclaim for revocation
Any person may apply to the High Court or the Controller for the revocation of a patent (Sections 57(1), 59(1) PA) (subject to further exceptions – Section 57(2) PA).
– An application may be filed even if the patent has lapsed (Section 57(3) PA).
– If proceedings with respect to the patent are pending in the Court, no application for revocation may be made to the Controller without the leave of the Court (Section 57(5) PA).
– If an application is made to the Controller and the Controller has not disposed of an application, the applicant may not apply to the Court for revocation unless either the proprietor of the patent agrees that the applicant may do so or the Controller certifies in writing that in his opinion the matter would more properly be determined by the Court (Section 57(6) PA).
– Partial revocation is available (Section 59(3) PA).
– If it appears to the Controller that an invention for which a patent has been granted was described in an earlier patent, he may on his own initiative by order revoke the patent. The owner should be given an opportunity to make observations and to amend the patent specification (Section 60(1) PA). Section 38(1) PA provides for post-grant amendment of the patent claims by the proprietor – unless proceedings on patent validity are already in train before either the Controller or the Court. Section 38(1) PA amendments do occur on a regular basis, e.g. six cases per year. Amendments under Section 38(2) PA arising directly from validity proceedings before either the Controller or the Court also occur, but on a very infrequent basis, e.g. one case every few years.

Remedies
Injunction, an order requiring the defendant to deliver up or destroy any product covered by the patent, damages, account of profits, declaration that the patent is valid and has been infringed by the defendant (Section 47(1)(a)-(e) PA).

Other actions
A declaration that the use by any person of any process, or the making or use or sale by any person of any product, does not and would not constitute an act of infringement of a patent may be made by the Court in proceedings between the person and the proprietor of the patent or the holder of an exclusive license under the patent, notwithstanding the fact that no assertion to the contrary has been made by the proprietor or licensee (Section 54 PA). The validity of a patent in whole or in part may not be called
into question in proceedings for a declaration made by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent must not be deemed to imply that the patent is valid.

Appeal
From the decisions of the High Court at first instance, appeal may be lodged directly with the Supreme Court (restricted to points of law) – Section 96(7) PA.

Parallel proceedings
There are no formal provisions as such, but there have been a few instances where cases before an Irish court have been put on hold pending the outcome of proceedings before the EPO.

Arbitration/mediation
There is no provision in Irish law affording the Controller the power to offer any form of arbitration or mediation.

III. Enforcement

There are no provisions in the Patents Act covering these issues – they are all dealt with by the rules of the Court. Patent-specific infringement actions are provided for in Section 47 PA, as mentioned previously.

IV. Compulsory license

May be granted by the Irish Patents Office in cases of nonworking, dependent patents and public interest (Section 70-75 PA).

V. Relevant national law

Patents Act 1992, No. 1 of 27 February 1992 [cited as: PA]

ICELAND
I. Administrative procedure

Opposition
Post-grant opposition is available (Section 21(1) PA). Anyone may file notice of opposition against the grant of a patent within nine months after publication of the grant. The opposition must be made in writing and must be reasoned. The fact of filing will be published. Opposition may be filed only on certain grounds (Section 21(2) PA).
– The owner of the patent will be notified of the opposition filed and will be given an opportunity to file
his arguments (Section 23(1) PA).
– The Icelandic Patent Office (hereinafter the “Patent Office”) may accept opposition for processing even though a patent has lapsed or will cease to have effect due to its termination, the opposition has been withdrawn, or the opponent is deceased or has lost the right to proceed with such a case (Section 23(2) PA). Pre-grant observations on an application may also be filed (Section 29 PR).
– An applicant will be informed and the Patent Office will take the observations into consideration.
– If the observation concerns a third-party claim of entitlement, the person concerned will be invited to bring the matter before Court within a set time limit (Section 17 PA). If such a matter is proceeded with, the Patent Office proceedings will be postponed until a Court decision has been given (Section 17(2) PA).

Appeal
An appeal against a final decision of the Patent Office concerning an application or a granted patent may be lodged with the Board of Appeal (Section 24 PA). There are restrictions as to the persons who can legitimately file an appeal:
– The applicant may file an appeal against a final decision concerning a patent application.
– The patent owner may file an appeal against a decision reached in opposition proceedings which declares the patent invalid or maintains its validity in amended form.
– The opponent may file an appeal against a decision reached in opposition proceedings according to which the patent continues to be valid un-amended or may continue to be valid with amendments. If the opponent withdraws his appeal, the case may nonetheless be examined if special circumstances support this course of action. An appeal may also be lodged against decisions other than those mentioned in Section 24 (Section 67 PA).The persons who may legitimately file an appeal under Section 67 PA are: an applicant, a patent holder, a person requesting invalidation or other parties with legitimate interests. An appeal to the Board of Appeal, based on either Section 24 or 67 PA, must be lodged within two months from notification of the decision concerned (Sections 25(1) and
67(1) PA). Proceedings concerning Patent Office decisions which may be appealed to the Board of Appeal may not be brought before the courts until the decision of the Board of Appeal has been given (Section 25(3) PA). A further appeal may be brought to the Reykjavik City Court against decisions of the Board of Appeal refusing a patent application or declaring a patent to be invalid, within two months from the date on which the party concerned was notified of the decision (Sections 25(3) and 64 PA).
An ordinary appeal from the decision of the Reykjavik City Court can be brought to the Supreme Court, which acts as the court of second instance according to ACP and LCP rules.

II. Civil procedure

Infringement
Action in infringement cases is to be brought before the Reykjavik City Court (Section 64 PA determines the competence of the Court). There is no chamber specializing in IP rights.
– Proceedings must be brought by the injured party (Section 57(3) PA). On complaint of an aggrieved party, criminal proceedings may be instituted against intentional infringement according to the LCP rules of procedure.
– In each particular case, the Chairman of the Reykjavik City Court can decide if a claim should be decided by a single judge or by a panel of three judges (two of whom can be technically qualified) (Section 2 ACP; Section 3 LCP). Court-appointed experts are further allowed upon request of either party, subject to ACP or LCP rules. The expert’s opinion has a persuasive effect on the court’s decision, but is not formally binding.
– In infringement proceedings, invalidity may be raised as a defense, provided that revocation of the patent has been or is requested (Section 61 PA).
– If the patent owner institutes proceedings for infringement of a patent and the defendant wishes to claim revocation of the patent, the defendant must inform the Patent Office and registered licensees that he intends to claim revocation. In this case revocation must be claimed within a prescribed period (Section 63(3) and (4) PA).
– Infringement action may also be brought in respect of commercial exploitation of the invention made without the consent of the applicant before the grant of the patent but after the application has been made available to the public (subject to further restrictions) (Section 60 PA).

Nullity/counterclaim for revocation
Revocation proceedings may be instituted by any person, subject to one exception (Section 52(3) and (4) PA). The Patent Office should be informed (Section 63(1) PA).
– Proceedings on the grounds that the patent has been granted to a person other than the one entitled to it may only be instituted by the person claiming entitlement, within one year after the entitled person obtained knowledge of the grant of the patent and of the other circumstances on which the proceedings are based (Section 52(4) PA). Furthermore, if a patent has been granted to a person other than the one entitled to it, the court transfers the patent to the entitled person if he so claims (Section 53 PA).
– A patent may be revoked in whole or in part by decision of the Reykjavik City Court (Section 52 PA). In each particular case the court will decide on the retroactivity of the final decision.
– In cancellation cases, a patent owner is obliged to inform judges of requests that have been submitted for patent limitation (Section 40.b(4) PA). A patent owner may request limitation of the scope of protection of his patent either as a counterclaim in court proceedings or before the Patent Office. Limitation allows the patent claims and, if necessary, also the description to be modified (Section 40.a(1) PA).
– It is not possible to file a limitation request if a patent is the subject of enforcement actions, a mortgage or a court case (Section 40.a(2) PA).
– Limitation of a patent in proceedings before the Patent Office takes effect upon publication of a notice thereof in the Patent Gazette (Section 40.b(3) PA). Post-grant proceedings are very rare in Iceland. One case concerned a request based on Section 40.a PA, namely Board of Appeal case No. 13/2014, where a request for limitation was rejected.

Remedies
Injunction, compensation, damages, alteration and destruction of infringing products (Sections 57-59 PA).

Other actions
Not available.

Appeal
Ordinary appeal may be filed with the Supreme Court, which acts as the court of second instance according to ACP and LCP rules.

Parallel proceedings
A decision to stay national proceedings when there are parallel proceedings before the EPO or possibly the Court of Justice of the European Union (CJEU) is taken on a case-by case basis.
– No case law is available from national courts in relation to patents.
– In case No. 7/2009, the Board of Appeal decided to stay proceedings, following a request from the appellant, and await the decision of the CJEU in case No. C-125/10.
– The Patent Office stays proceedings on a regular basis in case of EPO oppositions and/or appeals or proceedings before the CJEU which may possibly have an impact on national procedures. A patent holder may, according to Section 40.a PA (cf. item (b) above), request limitation of the scope of protection of a validated European patent. If he has, however, previously submitted a comparable request to the EPO, the Patent Office will postpone the processing of the request until the
EPO’s decision is available (Section 60 PR).

Arbitration/mediation
Not available.

III. Enforcement

During enforcement procedures, sheriffs and their legally trained assistants render assistance in collecting evidence following a court order (Section 2 ACE).
– If a sheriff lacks the competence to take action, the Minister of Justice appoints another competent person (Section 2(3) ACE). The petitioner sends a district court order permitting collection of evidence to the sheriff in the area of office where the evidence is to be collected (Section 10 ACE).
– The sheriff collects evidence by means of a search at the respondent’s (Section 12 ACE). A petitioner’s request for collection of evidence must be sent to the district court of the respondent’s home venue
– As soon as possible after receiving the case for a decision, the district court judge issues a court order specifying whether evidence is to be collected (Section 9 ACE).
– The petitioner must, within four weeks from when evidence becomes available to him, initiate legal action against the respondent on the basis of the evidence. If no legal action has been initiated when the period expires, the petitioner must return the evidence collected (Section 21 ACE).
– Damages or other remedies are decided by the courts in accordance with ACP procedures.
– After a final decision of the court, the parties in question are responsible for enforcing any awards for compensation or damages. Requests for seizure or injunction are handled by sheriffs and their legally trained assistants in accordance with the ASI rules of procedure. Enforcement of orders for destruction of infringing products is ordered by the courts, e.g. to the Directorate of Customs.

IV. Compulsory license

Requests for the grant of compulsory licenses may be made to the Reykjavik City Court in cases of non-working or dependent patents, prior commercial exploitation and public interest (Sections 45-48 PA). The Court decides on the grant and scope of the license, the compensation for the owner of the patent and any further issues (Section 50 PA).

V. Relevant national law

– Patents Act No. 17/1991, with amendments according to Acts No. 92/1991, No. 67/1993, No. 36/1996, No. 91/1996, No. 132/1997, No. 82/1998, No. 28/2002, No. 72/2003, No. 22/2004, No. 53/2004, No. 54/2004, No,12/2005, No. 127/2005, No. 108/2006, No. 167/2007, No. 98/2009, No. 25/2011 and No. 126/2011 [cited as: PA]
– Regulation on patents No. 477/2012 [cited as: PR]
– Act on Civil Procedure No. 91/1991 [cited as: ACP]
– Law on Criminal Procedure No. 88/2008 [cited as: LCP]
– Act on Collection of Evidence Relating to Alleged Violations of Intellectual Property Rights No. 53/2006 [cited as: ACE]
– Act No. 31/1990 on seizure, injunction etc. [cited as: ASI]

ITALY
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. Third parties may only submit petitions during the examination process, pointing out the existence of prior patents; however, the observations will not have any further legal impact.

Appeal
Appeal from refusal of the application must be filed within 60 days after notification by the Italian Patent and Trademark Office (hereinafter the “Patent Office”). The Appeal Committee will hear the interested parties or their agents and a Patent Office representative. The Appeal Committee is considered a judicial instance, as declared by the Constitutional Court. Any appeal from a decision of the
Committee will therefore not go to an administrative court but to the Supreme Court.

II. Civil procedure

Legislative Decree 1/2012, converted into Law 27/2012, has established 21 Courts for enterprises (district courts and appellate courts), with a Court of Appeal in each region, apart from Aosta. Each of these has jurisdiction for cases in corporate, competition and intellectual property law and public procurement. In Rome and Milan the Court for enterprises is composed of two sections, one dealing with company and public procurement law cases, the other with IP, competition and public procurement law as well. Only professional and experienced judges are appointed to the specialized sections.

Infringement
Civil and criminal actions are available. A civil action may be brought by a patentee, a patent applicant or the licensee (in the latter case, depending on the terms of the licensing contract) (Art. 120 IPA, modified by D. lgs. 131/2010).
– An action will be heard by the specialized division of the civil courts.
– During the investigative phase, and even in urgent cases, an expert appointed by the Court can be required to give an expert opinion on the existence of the infringement or the validity of the patent during the court proceedings. The judge is not bound by the evidence of the technical expert. The judge will evaluate it and may challenge it. However, if the judge does not agree with the expert, he has a duty to justify why he has rejected the expert’s evidence.
– The expert can also be appointed to calculate damages caused by the infringement.
– A panel consisting of three judges will take the decision.
– The criterion for jurisdiction is based on the Brussels Regulation: the forum commissi delicti (the place where the infringing activity is carried out) or where damages have been incurred (Supreme Court decision 95/1996: where the initial damage occurred). If a nullity action is pending before a different court, staying the proceedings is not compulsory. Invalidity will be decided in the same proceedings, and the burden of proof is on the defendant.
– Infringement can also be punished with a fine or imprisonment in criminal proceedings.

Nullity/counterclaim for revocation
A nullity action may be brought by any interested party or a public prosecutor (Art. 76 et. seq. IPA).
– Nullity actions are judged by the same courts as infringement actions.
– If the action is withdrawn, the proceedings may be continued.
– Partial nullification is available; nullification has retroactive effect (ex tunc) (Art. 77 IPA).
– The burden of proof lies with the person contesting the patent.
– Post-grant patent claim amendment (limitation) is allowable even during nullity actions at every stage and level of the judicial proceedings (Art. 79 IPA).
– Depending on the expert’s opinion and the party’s motion, the judge may also order the conversion of a null patent into another valid title (e.g. utility model), provided that the scope of protection is not extended (Art. 76 IPA).

Remedies
– Urgent measures: description and/or seizure of products; prohibition of manufacture, trade and use of products; recall of products from trade; civil penalties for non-compliance with or delay in execution of court orders; order to provide information, including third parties acting on a commercial scale, on the origin and distribution networks of the goods or on the provision of services (discovery implementing the Enforcement Directive).
– Final measures: definitive prohibition of manufacture, trade and/or use of the products; recall of products from trade; seizure of infringing products. With regard to machinery and products: removal or destruction; assignment in property to the right holder; seizure until the expiration date of the IP right; award of product to the right holder on payment of a price; publication of the decision, or destruction of infringing articles; civil penalties for non-compliance with or delay in execution of court orders. Publication of the decision, compensation for damages (calculated according to three alternative criteria: costs and loss of profits incurred by the IPR owner, disgorgement of the profits earned by the infringer, amount of negotiated or reasonable license fees).

Other actions
Declaratory judgment on non-infringement is available, also as an urgent measure (Art. 76 et seq. IPA).

Appeal
Questions both of law and of fact can be appealed to the territorially competent Court of Appeal (see Civil procedure above). A collegiate body of three judges will review the decisions rendered by the Court of First Instance. Further appeal: The Supreme Court (Corte di Cassazione) may review the decisions rendered by the lower courts exclusively on matters of law. Access to the Supreme Court is also allowed with a view to enforcing “defects of reasoning”, except in cases of “double conformity” (when an appeal decision is based on the same established facts as the first-instance decision). No specialist section has been established in the Supreme Court.

Parallel proceedings
When there are parallel proceedings (e.g. in case of EPO oppositions and/or appeals) between national courts and the EPO, the court may stay national proceedings or proceed to decide the case regardless of the outcome of the EPO proceedings (Art. 56 and 120 IPA): staying the national proceedings is not mandatory, because EPO divisions and boards of appeal do not represent a “jurisdiction” and there is no relationship of a preliminary nature with them.

Arbitration/mediation
Arbitration may be resorted to. A judicial statement during the trial procedure is provided for, but it is not compulsory and is seldom successful.
– As the decisions concerning liability and the calculation of damages may be separate, the parties often settle once liability has been decided on and before damages are calculated. No specific arbitration or mediation authority is competent to deal with IPR disputes. However, a patent can never be revoked by way of a settlement or a private resolution: only the judge is allowed to declare the invalidity of the patent with erga omnes effect.

III. Enforcement
Bailiffs at local courts of appeal are responsible for enforcing an order during the procedure (e.g. preliminary injunctions, orders for preserving evidence, freezing orders) and after termination or final decision of the court (e.g. orders for award of damages).

IV. Compulsory license

May be granted by the Patent Office in cases of nonworking and dependent patents. Inability to obtain a contractual license must be proven. The owner and those who have the right in the patent may start opposition proceedings. If reconciliation between the parties on granting of a compulsory license is unsuccessful, the Ministry of Production Activities will take a decision (Art. 70-73 IPA).

V. Relevant national law

– Industrial Property Code – Codice della proprietà industriale, 2005 [cited as: IPA]; D. lgs. 10 February 2005, No. 30
– Legislative Decree of 27 June 2003, No. 168 – Institution of Specialized Courts for Industrial and Intellectual Property located at the Courts of Appeal and Tribunals according to Art. 16 of the Law of 12 December 2002, No. 273, as modified by Decree No. 1/2012, converted (with amendments) in Law No. 27/2012 (D.L. 24 January 2012, No. 1, supplemented by D.L. 24 March 2012, No. 29, and converted, with amendments, into Law 24 March 2012, No. 27, in force from 25 March 2012.

LIECHTENSTEIN
The Swiss Federal Institute of Intellectual Property (hereinafter the “Patent Office”) is the competent authority for granting patents in Liechtenstein.

LITHUANIA
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure is available.
– After publication of a patent application any person may inspect it (Art. 27 PL).

Appeal
Appeals Division of the State Patent Bureau of the Republic of Lithuania (hereinafter the “Patent Office”) is responsible for settling all pre-grant disputes between the applicant and the examiner with respect to the filing date, the priority date, the examination findings and refusal to grant a patent (Art. 51 PL). The appeal has to be filed within three months from the date of dispatch of the decision of the examiner.
– The applicant may appeal to the Vilnius County Court against the decision of the Appeals Division within three months.
– The decision of the Vilnius County Court can be appealed to the Court of Appeal. Annulment (“cassation”) is possible and will be dealt with in the Supreme Court of Lithuania, but this court does not rule on points of fact, only on the application of the law.

II. Civil procedure

The Vilnius County Court is solely responsible for disputes regarding:
1) decisions of the Patent Office’s Appeals Division;
2) assignment of a patent application or patent ownership to a different person;
3) full or partial invalidity of a granted patent;
4) infringement of a patent application for which temporary protection is granted;
5) infringement of a granted patent;
6) declaration of non-infringement of a patent;
7) granting, revocation and change of conditions for compulsory licenses (as described in Articles 48 and 49 PL);
8) revocation of a patent (Art. 51 PL).

Infringement
Infringement proceedings must commence in the Vilnius County Court.
– The action may be brought by the applicant, the proprietor or successor in title, or by an exclusive licensee.
– Temporary legal protection will be provided for a published patent application from the date of its publication until the date of patent grant (Art. 26 PL). The applicant temporarily acquires the rights of the owner of the patent; he can apply for the application of remedies, and can request the termination of infringing acts as well as compensation for the material damage incurred, etc. (Art. 52 PL).
– Experts can be involved in the proceedings; however, their opinion is not binding on the court.
– Invalidity can be used as a defense. If the invalidity procedure is already pending, the court will suspend the infringement proceedings until the question of invalidity or revocation is resolved.

Nullity/counterclaim for revocation
On the basis of the action, any person concerned may institute proceedings to invalidate a patent (Art. 63 PL).
– Partial invalidation is available. Invalidation has retroactive effect (Art. 63 PL).
– If the action is withdrawn, the proceedings will not be continued. A patent owner who wishes to narrow the legal protection of a granted patent has the right after paying a fee to request the Patent Office to make patent amendments (Art. 61 PL). In addition, requests for limitation exist in practice, but do not occur frequently.

Remedies
Temporary or permanent injunction, damages, expenses (Art. 52 PL).

Other actions
Any person concerned may institute court proceedings against the owner and request the court to declare that the performance of a specific act does not constitute infringement of the patent (Art. 59 PL). If the person concerned proves that the acts performed by him do not constitute infringement of the patent, the court issues a decision of non-infringement.

Appeal
Decisions of the Vilnius County Court can be appealed to the Court of Appeal within 30 days after the decision date. Annulment (“cassation”) is possible and will be dealt with in the Supreme Court of Lithuania (on questions of the application of the law).

Parallel proceedings
Lithuanian national legislation does not directly regulate such cases, but under Article 162 of the Code of Civil Procedure the court may suspend national proceedings if the EPO proceedings would be important for correct examination of the national case; this practice of suspending cases has been applied in courts.

Arbitration/mediation
Disputes over patent registration may not be referred to commercial arbitration (Art. 12(2) Law on Commercial Arbitration of the Republic of Lithuania). Other disputes over patents can be referred to commercial arbitration, but if one party to the dispute is a state or municipality institution or organization other than the Bank of the Republic of Lithuania, the prior consent of the founder of the institution or organization to refer the dispute to commercial arbitration must be obtained (Art. 12(3) Law on Commercial Arbitration of the Republic of Lithuania).

III. Enforcement

During and after the proceedings a bailiff is responsible for enforcing an order.

IV. Compulsory license

May be granted by the Vilnius County Court. Applicants must demonstrate that:
1) they have applied unsuccessfully to the owner of the patent for a biological invention or the holder of a plant variety right to obtain a contractual license;
2) the plant variety or the biological invention constitutes significant technical progress of considerable economic interest compared with the invention claimed in the patent or the protected plant variety (Art. 48 PL).
Compulsory licenses concerning pharmaceutical products may be granted by the State Medicines Control Agency under the Ministry of Health of the Republic of Lithuania. An invention may be exploited with the authorization of the Government (Art. 50 PL): the Government may adopt a resolution to permit a person to market, without the consent of the owner of a patent, a patented invention within the territory of the Republic of Lithuania if:
1) an invention protected by a patent is related to public needs, national security, public health protection or the development of economically important sectors;
2) the court determines that a method for exploiting an invention employed by the proprietor or licensee is anticompetitive.

V. Relevant national law

Patent Law of the Republic of Lithuania of 18 January 1994, No. I-372; new edition of the Patent Law of the Republic of Lithuania in force since 3 February 2012 [cited as: PL]

LUXEMBOURG
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available.
– Third parties may make observations on the patentability of the invention from the date on which the application is laid open to public inspection and up to the date on which the patent is granted (Art. 34-1 PA). The applicant may comment on them within four months, and these comments will be delivered to the party who made the observations (Art. 34-2 PA).
– The observations have no legal impact; they are only a measure for public consultation on the findings.

Appeal
An appeal may be lodged with the Minister of Economic Affairs within three months of notification of the decision concerned (Art. 91 PA).
– An appeal with the Minister cannot be used by third parties to challenge the validity of a granted patent.
– Further appeal may be filed at the Administrative Court within three months of notification of the decision.

II. Civil procedure

Infringement
Action is subject to civil law and may be brought by the owner (Art. 76, 77-1 PA). However, the holder of an exclusive exploitation right may, except as otherwise stipulated in the licensing contract, institute infringement proceedings if, after notification, the owner of the patent does not institute such proceedings. The patentee is entitled to take part in the infringement proceedings instituted by the licensee (Art. 77-2 PA). No criminal action is possible.
– Infringement proceedings are heard by the District Court, regardless of the value of the claim (Art. 80 PA).
– Nullity may be used as a defense or counterclaim in infringement proceedings (the claim must be recorded in a register) (Art. 80-3 PA). The court is not obliged to stay the infringement proceedings if the nullity issue is raised.
– Action is statute-barred after three years from the last infringing act.

Nullity/counterclaim for revocation
An action for nullification of the patent may be directed, after grant, to the court of the elected domicile of the patent owner (Art. 73, 74 PA). Action may be brought even if the patent has lapsed (Art. 74 No. 6 PA).
– Anyone may bring an action. The public prosecutor may apply ex officio for nullification of a patent (Art. 74, No. 5 PA).
– Partial nullification is possible (Art. 73-2 PA).
– Nullification has retroactive effect.
There is no practice in relation to patent claim amendment, as there has been no patent nullification case in the past 25 years.

Remedies
Injunction, compensation for damages, prohibition from continuing the infringement, confiscation, destruction, and publication of the court decision (Art. 79, 80, 81 PA).

Other actions
There is no provision for such actions.

Appeal
Ordinary appeal may be filed with the Court of Appeal within 40 days after notification of the first-instance decision. Further appeal to the Court of Cassation may be filed within two months after notification of the decision.

Parallel proceedings
It is not possible to provide information regarding national practice, because there have been no parallel proceedings under the current practice.

Arbitration/mediation
Arbitration is possible at the request of both parties, who are free to choose the arbitrator. In Luxembourg, there is no mediation forum specifically for IP matters, but for civil and commercial matters in general there is the Centre d’Arbitrage de la Chambre de Commerce du Grand-Duché de Luxembourg (http://www.cc.lu/services/avis-legislation/centre-darbitrage/).

III. Enforcement

The authority responsible for enforcing an order both during the procedure and after termination or final decision of the court is the bailiff (“huissier de justice”).

IV. Compulsory license

May be granted by the court in cases of non-working, dependent patents and public interest (ex officio – order by the Grand Duke on advice of the State Council; in such cases the question of remuneration will be considered by a court – Art. 59-66 PA).

V. Relevant national law

Patent Law of 20 July 1992, as last amended on 22 May 2009 [cited as: PA]

LATVIA
I. Administrative procedure

Opposition
The grant of a patent may be contested in the court on the basis of the requirements laid down in the Patent Law (Section 57 PL), according to the procedures specified by the Civil Procedure Law (hereinafter CPL). A statement of claim regarding invalidation of a granted patent may be lodged with the court by any person.

Appeal
If an applicant or another addressee of a decision of the Patent Office of the Republic of Latvia (hereinafter the “Patent Office”) (the owner of the patent, the former owner of the patent, the successor in title, the licensee) disagrees with the decision taken in registration or post-registration proceedings by the Patent Office, he is entitled, within three months from the date of notification of the decision and after payment of the appeal fee, to file a substantiated written appeal with the Patent Office. The filing of an appeal suspends execution of the Patent Office’s decision (Section 39 PL; Law on Industrial Property Institutions and Procedures).

II. Civil procedure

Infringement
– The patent owner or licensee can bring a claim to the City of Riga Vidzeme District Court concerning the infringement of exclusive rights of the owner. The licensee has the right to bring a claim to court regarding illegal use of a patent, with the consent of the owner. The consent of the owner is not necessary if he does not bring the claim to court, even though the exclusive licensee has invited
him to do so in writing (Section 62(2) PL). The dispute will be reviewed by the court in accordance with the Civil Procedure Law.
– Responsibility for patent infringement arises only from the date when the patent is granted and only for acts performed after that date.
– A person against whom a claim is brought to the court in relation to illegal use of a patent may not object to the claim purely on the basis that the patent is not being exploited or its use has to be discontinued for other reasons. The defendant may bring a counterclaim to court for invalidation of the patent in conformity with the PL. In such cases, patent infringement may be established if the patent is declared valid (Section 63(3) PL).
– In an infringement case the patent owner or licensee has to prove the fact of patent infringement and the guilt of the infringer (exception: when patents are granted for a process of making a new product – any identical product is considered as manufactured according to the patented process, unless otherwise proved) (Section 63(1) and (2) PL).
– Action for infringement is barred after three years from the date when the aggrieved party discovers or should have discovered the fact of the infringement (Section 67(1) PL).

Nullity/counterclaim for revocation
A nullity claim may be brought to the City of Riga Vidzeme District Court, based on the grounds of Sections 56, 57 and 65 PL. The action may be brought by any person, taking into account the preconditions stated in Section 56, (1), (2) and (3), PL (Section 57(2) PL).
– Exception: if the patent has been granted to a person who had no right to receive it, nullity may be requested by a person who has the right to the invention in accordance with Section 12 PL. Partial invalidation is available (Sections 57(3) and 58(1) PL).
– Nullity has retroactive effect: the invention is deemed to lose the legal protection provided for in the PL as from the filing date of the patent application to the extent that the patent has been declared invalid (Section 59(1) PL).
– If the claim is withdrawn, the proceedings will be continued. Statistics: court cases in Latvia relating to granted patents are rare. In decided cases the court has taken different decisions – revocation of the patent, amendment of claims or maintenance of the patent in granted form.

Remedies
Compensation for the losses incurred and moral damages, seizure of infringing products, allotment of the profits to the aggrieved party, to be reviewed by the City of Riga Vidzeme District Court as the court of first instance according to the CPL (Sections 64 and 65 PL, Section 250 CPL).

Other claims
Any person may lodge a claim with the court for a declaration of non-infringement. Determination of the non-existence of an infringement will be reviewed by the City of Riga Vidzeme District Court as the court of first instance according to the CPL (Section 65(2) PL).

Appeal
Any interested person may dispute the granted patent according to the CPL, and this dispute will be reviewed by the City of Riga Vidzeme District Court as the court of first instance. Parties may submit an appellate complaint regarding a judgment (supplementary judgment) to the Riga Regional Court according to the CPL (Sections 413 and 414 CPL).

Parallel proceedings
The Patent Office stays proceedings until proceedings at the EPO relating to the relevant patent have been finalized. There is no available information on any national court case where parallel proceedings at the EPO are involved.

Arbitration/mediation
Arbitration/mediation in patent litigation is not provided for.

III. Enforcement

The enforcement of orders is handled by bailiffs (Section 548 CPL).

IV. Compulsory license

May be granted by the Administrative Court in cases of nonworking and vital importance for ensuring the interests of Latvian citizens. A compulsory license is granted for utilization in the internal market of Latvia. The owner of a compulsory license has to pay compensation to the owner of the patent, in an amount to be determined by the court in the light of the economic value of the license, the extent of utilization of an invention and other circumstances (Section 54 PL).

V. Relevant national law

– Patent Law of 15 February 2007, in force since 1 March 2007, with the latest amendments in force since 1 January 2016 [cited as: PL]
– Law on Industrial Property Institutions and Procedures of 18 June 2015, in force since 1 January 2016
– Civil Procedure Law of 14 October 1998, in force since 1 March 1999, with the latest amendments in force since 1 March 2016 [cited as: CPL]

MONACO
I. Administrative procedure

Opposition
No formal opposition procedure is available.

Appeal
There is no possibility of appeal against the decision on the application, as no publication to third parties is available.
– Third parties will only learn of the patent at the end of the filing stage, at which time it will be announced in a decree by the State Ministry (Art. 11, Law 606). However, this announcement may be subject to an action at the Supreme Court (Art. 89-92 of the Constitution) for abuse of power based on failure to respect the terms of Art. 6 of Law 606. To date there has been no such action.

II. Civil procedure

Infringement
Civil and criminal proceedings are provided for.
– Criminal sanctions (Law 606) include fines and imprisonment in case of recidivism. These actions can be brought before a first-instance criminal court, but only by the infringed party. The owner of the patent may request a detailed description by a bailiff of infringing goods with or without seizure of same. In such cases the requester must institute civil or criminal proceedings within one week. Invalidity may be used as a defense both in the first-instance civil court (Art. 382, CPC) and in the first-instance criminal court (Art. 48, Law 606). There are no opposition proceedings for national patents, so infringement proceedings are not affected. However, in the case of a European patent designating Monaco, a stay could be declared at the discretion of the judge. This situation has never occurred.

Nullity/counterclaim for revocation
Any interested party may request nullification before the court.
– Nullity actions do not have to be lodged as separate proceedings. Although a nullity action may be lodged on its own, it can also be introduced during the first instance infringement proceedings. Before criminal proceedings a nullity action can be raised only in defense of criminal infringement proceedings.
– Representation is mandatory in civil proceedings (Art. 179 CPC) and discretionary in criminal proceedings.
– If the action is withdrawn in civil proceedings, the proceedings will, if the parties agree, also be withdrawn (Art. 412 CPC).
– A judgment of nullity has retroactive effect (Art. 24, Law 606).
– Appeals may be lodged at the Court of Appeal.

Remedies
Seizure, damages, confiscation of infringing articles, fine, imprisonment.

Other actions
There is no provision for this.

Appeal
Appeals are heard at the Court of Appeal of Monaco for both civil and criminal proceedings. A further appeal may be lodged before the Court of Revision following the general principles of law and procedure.

Parallel proceedings
To date there have been no cases of parallel proceedings in national courts and the EPO.

Arbitration/mediation
The legislation does not cover arbitration or mediation.

III. Enforcement

The bailiff is the authority responsible for enforcing an order (Art. 50. Law 606).

IV. Compulsory license

May be granted by the court.

V. Relevant national law

Law 606 of 20 June 1955 on patents of invention [cited as: Law 606] Code de procédure civil [cited as: CPC]

MACEDONIA
I. Administrative procedure

Opposition
No formal pre- or post-grant opposition procedure is available. Patents are granted without substantive examination for patentability.

Appeal
Decisions of the State Office of Industrial Property (hereinafter the “Patent Office”) are final (Art. 19(1) PA). Administrative disputes may be brought before the Administrative Court of the Republic of Macedonia within 30 days from the date of the decision. Decisions of the Administrative Court can be appealed before the Supreme Court.

Revocation
According to Art. 275 PA, the Patent Office will declare a decision to grant a patent null and void if it establishes that the conditions stipulated by Articles 25(3), 27 and 30 for granting a patent are not satisfied. The procedure may be initiated at any time throughout the life of a patent by the party concerned or ex officio. According to Art. 50 PA, a patent application which has been accorded a date of filing may not be additionally altered by extending the subject-matter for which protection is requested.
However, if, as a result of an opposition, the scope of the protection in a European patent is changed (limited), then, after notification from the holder, the patent will be maintained with the changed scope.

II. Civil procedure

Infringement
The patent owner may bring a civil action before the competent civil court (Art. 291(1) PA). Proceedings may be instituted against any person who is alleged to have performed an act of infringement under Art. 298(1) PA.
– The inventor may ask to be named in the application and other documents by filing a lawsuit to the competent court (Art. 306 PA). This is a separate procedure.

Nullity/counterclaim for revocation
In civil proceedings, where there is a counterclaim for revocation or nullity, the civil court will stay the proceedings (subject to a deadline) pending evidence from the substantive examination of one of the PCT authorities or an authority for substantive examination under a bilateral agreement (e.g. Hungary or Romania). The administrative procedure for nullity, should it be successful, is as follows:
Article 276 PA:
– The decision for recognizing the right may be announced void permanently during the time of protection ex officio or if proposed by the party concerned.
– The proposal for announcing a decision as void shall be submitted to the Patent Office in writing.
– The submitter shall be bound to submit all the evidence required to the proposal of paragraph (2) of this Article.
– The Patent Office shall be bound within 15 days upon receipt of the proposal to submit the proposal to the holder of the right and invite him to provide an opinion within 60 days from the date of receiving the notice at the latest.
Article 277 PA:
The decision announcing as void the decision for recognizing the industrial property right shall be registered in the appropriate Register and published in the official newsletter of the Patent Office.
Article 278 PA:
The Patent Office may continue the procedure ex officio if the submitter of the proposal during the procedure renounces his proposal to announce void the decision for recognizing the right.

Remedies
Determination and cessation of the violation, compensation by damages, confiscation and destruction of infringing materials, alternative measures (the competent court may order payment of cash compensation to the damaged party as an alternative measure if the person was acting unintentionally and without negligence, and if implementation of the relevant measures would have caused him disproportionate damage and if the damaged party is satisfied with the cash compensation), civil punishment (if rights acquired on the basis of the Patent Law are violated, intentionally or with ultimate negligence, the holder of the right may ask for payment of the regular compensation increased to 200%, regardless of whether, due to the violation, he has suffered property loss in that amount), publication of the verdict (Arts. 298‒301, 303‒304 PA).

Other actions
No information available.

Appeal
Specialised departments of 13 Courts of First Instance with enhanced competence have jurisdiction over cases related to intellectual property law. The Courts of Appeal are competent to decide on appeals against decisions of the Courts of First Instance. The Supreme Court is competent to decide at third and final instance on appeals against decisions of the Courts of Appeal.

Parallel proceedings
In case of an appeal during the examination proceedings before the EPO, if the EP application has already entered the national phase, the national patent office will not take any decision until the entire grant procedure before the EPO has been completed. In case of an opposition after the final decision, the holder has to notify the national patent office of the outcome of the opposition procedure, after which the national patent office will proceed in accordance with the final outcome (revocation or limitation).

Arbitration/mediation
Mediation is available in patent litigation proceedings. Mediators can be used during the proceedings. The Ministry of Justice is responsible for training and issuing licenses to mediators. In disputes with a foreign element, a mediator may be a foreign citizen if he is authorized to conduct mediation in his home state.

III. Enforcement

Responsibility for enforcing an order during the procedure lies with the court of the proceedings. After the final decision of the court, only in case of forced execution, responsibility lies with private bailiffs. There are also procedures for administrative execution, for which the administrative bodies are responsible.

IV. Compulsory license

May be granted by the competent court in cases of insufficient exploitation, national emergencies, public interest in the area of public health (in the pharmaceutical industry), food, protection and promotion of the environment or if it is of particular interest to a certain industrial field or if it is necessary for implementing the judicial and administrative procedure related to protection of competition (Art. 97, 101(1) PA).

V. Relevant national law

Law on Industrial Property No. 21/09 of 2009 [cited as: PA] Patent Regulations No. 92/09 of 2009

MALTA
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure is available. A pre-grant opposition procedure is planned.

Appeal
Decisions refusing the grant of a patent are appealable. Any appeal has suspensive effect (Art. 58 PA).
– Notice of appeal is to be filed with the Office of the Comptroller of Industrial Property (hereinafter the “Patent Office”) within two months from notification of the decision concerned. Grounds/reasons must be indicated.
– Within three months the Patent Office may consider the appeal to be admissible and well-founded and rectify his previous decision. The applicant should be informed of the rectified decision within a further three-month period; otherwise the applicant may lodge an appeal with the Court of Appeal within two months from expiry of the two-month period from notification of the decision to be appealed against, or within two months from notification from the Patent Office that he has not rectified his decision, whichever period expires earlier.
– If the Patent Office rectifies his decision in full, no further appeal is available. In the case of partial rectification, the part that is not rectified is still appealable.

II. Civil procedure

Infringement
Infringement actions are to be brought before the Patents Tribunal (Art. 48 PA).
– The Court may stay proceedings for infringement in respect of a patent application until a final decision has been made by the Patent Office to grant or refuse a patent on that application.
– The defendant in infringement proceedings may in the same proceedings request nullification of the patent concerned on any of the grounds for nullification.
In such a case the Patent Office will be made a party to the proceedings (Art. 48(4) PA).
– Infringement actions become statute-barred after five years from the date on which the aggrieved party became aware of the infringement.
– Patent infringement is also a criminal offence; proceedings may be initiated on complaint (Art. 50 PA).

Nullity / counterclaim for revocation
In December 2015 the PA was amended in order to allow revocation before the Patent Office or before the Patents Tribunal depending on the grounds cited for revocation. In this context reference is made to Arts. 44A-D PA. Action may be taken during the lifetime of a patent and after the patent has lapsed.
Revocation has retroactive effect (subject to some exceptions – final and enforced decisions prior to revocation; contract concluded prior to the revocation decision, in so far as it has been performed before that decision). Partial revocation is available. It is possible for the proprietor of the patent to limit the patent claims as per Art. 41(1) PA by submitting a request for the Patent Office to make changes in the patent in order to limit the extent of the protection it confers. No such change in the patent may go beyond what has been disclosed in the application as filed. The Court may also issue a court judgment in a case involving a patent which requires the limitation of the patent claims. Requests for the limitation of a patent claim whether filed directly before the Patent Office or via a Court judgment are not frequent.

Remedies
Injunctions, damages, confiscation of the machinery and other means used to infringe the patent, as well as of the infringing articles and the apparatus destined for their manufacture, and their delivery up to the owner of the patent. A claim for damages arising from patent infringement will continue to be determined by the First Hall, Civil Court (Art. 58A PA), the Court responsible for patent actions before the patent law was reformed.

Other actions
Any interested party may institute proceedings before the Patents Tribunal against the owner of a patent for a declaration that the performance of a specific act does not constitute infringement of the patent. Licensees have to be informed of the proceedings by the patentee and have the right to join them (Art. 49 PA).

Appeal
Further ordinary appeal to the Court of Appeal.

Parallel proceedings
In this regard it is stated that the Patents Tribunal will stay any proceedings for infringement in respect of: (a) a patent application filed with the Patent Office until after a final decision has been made by the Patent Office to grant or refuse a patent on the application; (b) a patent application filed at the EPO until after a final decision has been made by the EPO to grant or refuse a patent on the application.

Arbitration/mediation
Arbitration in Malta is regulated by the Arbitration Act (Cap 387 of the Laws of Malta). The Malta Arbitration Centre has been set up with the function of providing for the conduct of domestic and international arbitration in Malta and providing the necessary facilities for arbitration to be conducted within Malta.

III. Enforcement

The Court or the Patent Tribunal as appropriate.

IV. Compulsory license

May be requested at the Civil Court, First Hall, by any person who proves his ability to work the patented invention in Malta if the patented invention is non-working or is insufficiently worked in Malta (Art. 39 PA). The Court will direct the Patent Office to grant a compulsory license.
– Furthermore, the Minister responsible for IP may authorize the license in cases of national security or
public safety (Art. 40 PA).

V. Relevant national law

Patents and Designs Act, making provision for the registration and regulation of patents and designs. 1 June 2002, ACT XVII of 2000, as amended by Acts IX of 2003 and XVIII of 2005; Legal Notices 181 and 186 of 2006, and 426 of 2007; and the Patents and Designs (Amendment) Act 2014 [cited as: PA]

THE NETHERLANDS
I. Administrative procedure

Opposition
No formal opposition procedure is available. For national patents the “advice procedure” (Art. 84–86 PA) is available. Any person may request the Netherlands Patent Office (hereinafter the “Patent Office”) in a written statement to provide reasons why the claims of a national patent are invalid. The patent owner may file a response to the petitioner’s objections within a time limit set by the Patent Office. The case will be orally presented before a committee of the Patent Office (one lawyer, two technicians and a secretary). After the hearing, the written advisory report is given within two months. The advisory report consists of a reasoned evaluation of the objections stated in the request. When the invalidity case is continued in court, in general the judges follow the advice of the Patent Office, but it is not legally binding on the court.

Appeal
The decision on restoration may be appealed (“bezwaar”) within six weeks after receipt of the decision. The appeal will be reviewed by a legal advisor of the Patent Office. On the final decision of the Patent Office on “bezwaar”, a further appeal (“beroep”) may be filed, within six weeks, at the District Court (Administrative Chamber). The decision of the District Court of The Hague can be further appealed at the Council of State (“Raad van State”). The Council has a special department for administrative procedures and is the highest court for administrative disputes.

II. Civil procedure

Infringement
The District Court (Civil Chamber) and the Court of Appeal (Civil Chamber) in The Hague are designated as court of first and second instance respectively, responsible for dealing with disputes regarding patents (Art. 80, 70 PA). The judges working on patent cases are specialized IP judges (legally qualified, some having a technical background).
– A claim is subject to private law (certain special provisions for patent disputes are found in Art. 1019–
1019i of the Code of Civil Procedure – implemented on the basis of the Enforcement Directive 2004/48/EC). Furthermore, in first-instance patent cases the parties can request accelerated court proceedings.
– Infringement proceedings can be brought only after grant of the patent.
– Infringement claims for damages and surrender of profits can be initiated: by the proprietor (on behalf of himself and licensees or pledgees) or by licensees or pledgees only, provided they have been authorized by the proprietor (Art. 70(6) PA). Only the patent owner may sue for the suspension of infringing acts (Art. 70(1) PA).
– A search report on prior art relating to the subject matter of the patent, as published by the Patent Office or the EPO, is obligatory when pursuing infringement proceedings (Art. 70(2) PA). Furthermore, the Patent Office is obliged to provide the court with all information and technical advice that it may require for a decision in legal proceedings (Art. 87 PA).
– Invalidity may be used as a defense (as an estoppel – the infringement claim will be dismissed if the court considers the patent to be invalid), or a counterclaim for nullity may be made. As a rule, the claim for infringement and counterclaim for nullity are not bifurcated. Where it appears to the court that a decision on an infringement may be affected by invalidity proceedings which have been or may be instituted, the court may stay the infringement proceedings, with or without setting a time limit. It may also do so where a decision on infringement may be affected by proceedings instituted on different grounds, as well as when opposition is pending before the EPO (Art. 83 PA). The judge may declare the patent wholly or partially invalid outside of the infringement proceedings.

Nullity/counterclaim for revocation
A nullity request has to be made to the District Court (Civil Chamber) of The Hague (Art. 80, 75 PA). In the case of national patents an advisory report from the Patent Office on the validity of national patents is required (Art. 76, 84-86 PA).
– Any party can institute nullity proceedings at any time against a patent that is in force (Art. 75 – subject to exceptions).
– Nullification has retroactive effect, but this will not influence decisions given in infringement proceedings relating to the nullified patent, where such decisions have become final and have been executed prior to nullification. Partial nullification is available (Art. 75(5), (6) PA).
– The writ initiating nullification proceedings must be recorded in the Patent Register within eight days
(Art. 75(4) PA). During the proceedings it is possible to amend claims in accordance with Article 138(3) EPC, provided that such an amendment is not in violation of due process. It frequently happens that auxiliary requests are brought into the proceedings by the patent proprietor. Furthermore, partial surrender in relation to Art. 63 PA is not possible without the consent of the plaintiff if the plaintiff has registered his writ initiating nullification in the Patent Register according to Art. 75(4) PA.

Remedies
Provisional injunction, permanent injunction, damages, legal costs, compensation, recall and surrender of infringing goods, provision of information on suppliers, (professional) customers, turnover and profits, denunciatory measures, penalties (Art. 70, 71 PA and Art. 1019–1019i of the Code of Civil
Procedure – implemented on the basis of the Enforcement Directive 2004/48/EC).

Other actions
Interested parties may request this at the District Court of The Hague (Art. 80(2) PA).

Appeal
Civil appeal is possible at the The Hague Court of Appeal (Civil Chamber) within three months from the taking of the decision. Further appeal is possible at the Supreme Court in The Hague.

Parallel proceedings
The Court can suspend the proceedings with or without time limits in the event of opposition proceedings at the EPO (Art. 83(4) PA). There are few cases where suspension is applied while awaiting the outcome of opposition proceedings. In a recent case the request for suspension was refused by the Court.

Arbitration/mediation
There is no provision for arbitration/mediation in patent litigation proceedings.

III. Enforcement

During and after the proceedings a bailiff is responsible for enforcing an order.

IV. Compulsory license

May be granted in civil or administrative procedure.
– Administrative procedure: The Minister of Economic Affairs may grant a compulsory license in the case of public interest (Art. 57(1) PA). An administrative appeal lies from this decision. First there is an objection (“bezwaar”) to the Minister, then an administrative appeal (“beroep”) against the Minister’s decision to The Hague District Court (Administrative Chamber). Further appeal (“hoger beroep”) may be made to the Council of State (“Raad van State”).
– Civil procedure: If a compulsory license founded on nonuse (Art. 57(2) PA) or dependence (Art. 57(4) PA) is not granted by the patentee, a third party can start a civil procedure. Then the District Court of The Hague (Civil Chamber) can grant the compulsory license. The decision may be appealed before The Hague Court of Appeal (Civil Chamber) and after that before the Supreme Court (“Hoge Raad” – Civil Chamber).

V. Relevant national law

Patents Act of 13 December 1994 [cited as: PA]

NORWAY
I. Administrative procedure

Opposition
No pre-grant opposition procedure is available, but it is possible to file a protest. A protest to the grant of a patent will not result in any litigation party rights (Section 35 PA).
– Post-grant opposition: Any person (including the holder) may file notice of opposition to a granted patent. Notice must be filed in writing, must state the grounds for opposition and must reach the Norwegian Industrial Property Office (hereinafter the “Patent Office”) within nine months from the date of grant of the patent. Under special circumstances, the Patent Office may grant a short additional time limit for the filing of arguments (Section 24 PA). There is no opposition fee.
– Opposition founded on the claim that the patent has been granted to someone other than the person entitled to it may only be filed by the person claiming entitlement.
– The patent holder will be notified of the opposition and may file his observations within the set period (normally three months).
– Even if the opposition is withdrawn, processing may be continued, provided that there are special reasons for doing so.
– If the opposition is based on a possible breach of Section 1b PA (public order), the time limit for filing opposition is three years (Section 24, second paragraph, PA). Opposition filed after expiry of the nine-month general opposition period is subject to an opposition fee (of NOK 5 500).
– Anyone may request administrative review, which may result in invalidity or limitation. The request must be filed with the Patent Office, and the fee is NOK 8 800. The Oslo District Court may, subject to appeal, review the decision on validity or limitation.

Appeal
If the Patent Office’s final decision on an application has gone against the applicant, he may file an appeal against the decision with the Board of Appeal (Section 26 PA).
– If the Patent Office’s final decision in an opposition case has gone against the patent holder or the opponent, the party against whom the decision has gone may file an appeal with the Board of Appeal.
– Appeal must be filed within two months from the date on which the decision was sent to the party concerned (Section 27 PA), and the appeal fee (NOK 5 700) must be paid on demand.
– If the appellant withdraws the appeal, it may still be considered ex officio.
– A decision of the Board of Appeal refusing a patent application, revoking a patent or maintaining a first decision to revoke a patent may be further appealed to the Oslo District Court – not later than two months from the date on which the applicant or the patent holder was notified of the decision. Thus it is only the applicant/holder who can bring the decision before the Court. A third party must file a claim for invalidity in civil procedure.

II. Civil procedure

The following issues must be brought before the Oslo District Court (Section 63 PA):
1) right to an invention for which a patent application has been filed;
2) decision in which the Patent Office’s Board of Appeal has refused an application for a patent, has revoked a patent or confirmed a first-instance decision to revoke a patent;
3) request for patent limitation;
4) invalidation or transfer of a patent;
5) compulsory licenses;
6) request for amendment of administrative review;
7) civil action on infringement of a patent right.

Infringement
Civil action must be brought before the Oslo District Court (see above). Criminal action may be brought at the request of the aggrieved party (restricted to intentional and negligent infringement).
– The patent owner or the licensee (with notification of the owner) may sue the infringer.
– A decision of non-infringement may not be based on the invalidity of a patent or the conditions for transfer being fulfilled without a prior judgment stating the invalidity or transfer of the patent. A dismissal may, however, be based on the patent having been revoked or transferred (Section 61 PA).
– If a nullity action is pending, the proceedings in the infringement case are stayed. There is also the possibility of joining the cases, based on the merits of the cases.

Nullity/counterclaim for revocation
Validity actions must be brought to the Oslo District Court on the grounds listed in Section 52 PA.
– Anyone may bring an action; legal proceedings on the grounds that the patent has been granted to someone other than the party entitled to it may only be brought by the party claiming entitlement (such proceedings must be brought within one year from the date on which the entitled party obtained knowledge of the grant of the patent and of the other facts on which the proceedings are based).
– Validity actions may be brought during the entire lifetime of the patent (subject to exceptions). Patent claims can be amended either in limitation proceedings before the Patent Office (Sections 39a to 39e
PA) or in administrative re-evaluation proceedings (Sections 52a to 52e PA) and also before the court (Section 52, first paragraph, last sentence, PA). Patent claim amendments are allowed during post-grant procedure; however it is done relatively infrequently.

Remedies
Destruction, confiscation or alteration of products, damages, compensation, fine, imprisonment (Sections 57–62 PA).

Other actions
Any claimant able to show a genuine need to have a claim for declaration of non-infringement determined against the defendant may bring the claim before the Oslo District Court. Anyone who, at the time when the patent application was filed, was exploiting the invention commercially in Norway may, notwithstanding the patent, continue the exploitation, whilst retaining its general character, provided that the exploitation does not constitute an evident abuse in relation to the applicant or his predecessor in title. Such right of exploitation may also, on similar conditions, be enjoyed by anyone who had made substantial preparations for commercial exploitation of the invention in Norway (Section 4 PA). This right may only be transferred to others in conjunction with the enterprise in which it arose or in which exploitation was intended.

Appeal
An appeal from a judgment of the Oslo District Court must be filed within one month with the Borgarting High Court, and the case must involve claims in excess of NOK 125 000. Further appeal to the Supreme Court must be filed within one month. The appeal will be subject to the approval of the Appeals Division of the Supreme Court and will be allowed only if the case has importance beyond the actual case or if other reasons make it especially important.

Parallel proceedings
In actions concerning infringement or the validity of a European patent, the court may stay the proceedings until the EPO has taken a final decision in proceedings on revocation or limitation of the patent or until the patent may no longer be revoked by the EPO (Section 63 PA).

Arbitration/mediation
Mediation is used during proceedings before the Patent Office, the Board of Appeal for Industrial Property rights and before the courts in order to arrive at a mutually agreed solution. Arbitration may be used by parties to inter partes cases when agreed upon between the parties.

III. Enforcement

The enforcement officer (bailiff) (“Namsmannen”) is responsible for enforcing orders both during the proceedings and after final decisions of the courts.

IV. Compulsory license

May be granted by the Competition Authority and the Oslo District Court in cases of non-working, dependent patents and public interest (Sections 43-50a PA). In addition, compulsory licenses may be granted in accordance with the decision of the WTO Council in respect of certain pharmaceuticals, as implemented in the Patent Regulations, Sections 97, 98 and 99.

V. Relevant national law

Patents Act – Act No. 9 of 15 December 1967, as last amended by Act 2015-09-04-91, in force on 1 January 2016 [cited as: PA]

POLAND
I. Administrative procedure

Opposition
Post-grant opposition is available. Notice of opposition may be filed within six months from the date of publication of the mention of the grant in the official bulletin. Any interested party may give reasoned notice of opposition to a final decision of the Patent Office of the Republic of Poland (hereinafter the “Patent Office”) on the grant of a patent, a right of protection or a right in registration (Art. 246 IPL). The right holder will be informed that an opposition has been filed, and the Patent Office will invite him to file his observations within a fixed time limit (Art. 247 IPL). After inspection, the right holder may agree with the claims raised and accept the opposition as justified. The proceedings will then be closed and the right obtained will be retroactively cancelled. If the applicant disagrees with the claims and finds them to be unjustified, the opposition proceedings will be settled in litigation proceedings before the Patent Office (Art. 247(2) IPL). A complaint against the decision may be lodged with the Administrative Court within 30 days. The applicant may apply for re-examination of any matter decided by the Patent Office (Art. 244 IPL). The matter will be re-examined by an expert appointed by the President of the Patent Office.
– The time limit for submitting a request for reexamination of the matter in which a decision has been made or an order issued is respectively two months or one month from the day on which the party is served with the decision or the order.
– The Patent Office takes a decision in which it:
– maintains the appealed decision, or
– reverses the appealed decision in whole or in part and in that scope decides on the merits, or
– reverses the appealed decision in whole or in part and in that scope discontinues the proceedings, or
– discontinues the proceedings in part and in the remaining scope maintains the appealed decision, or it reverses the appealed decision and decides on the merits, or
– discontinues the proceedings.

Appeal
The IPL provides for two ways of instituting judicial review proceedings:
– For decisions made and orders issued by the Patent Office on issues which are explicitly listed by the IPL (Art. 257, 255 IPL), a party can file a complaint through the Patent Office with the Administrative Court in Warsaw (contentious administrative appeal). There is no need for re-examination proceedings at the Patent Office.
– All other decisions made and orders issued by the Patent Office are subject to complaint to administrative courts (Art. 248 IPL – non-contentious administrative appeal) only if the decision was reached within prior re-examination proceedings.
– The President of the Patent Office appoints an expert to examine whether or not the complaint is justified. Following examination of the complaint, the Patent Office either admits the complaint in full or conveys the reply to the complaint together with the files of the case to the Administrative Court (Art. 249 IPL).
– The complaint has to be made within 30 days from the decision.
– Decisions of the Administrative Court can be subject to annulment (“cassation”) proceedings at the Supreme Administrative Court.

Revocation
A patent may be declared invalid at the request of any person having a legitimate interest who is able to prove that:
– the statutory requirements for the grant of a patent have not been satisfied,
– the invention has not been presented in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art,
– the patent has been granted for an invention not covered by the content of the application or of the original application. There is no restriction on the time limits for any requests,
– Additionally, the General Prosecutor or the President of the Patent Office may, in the public interest, request that a patent be invalidated or intervene in a pending invalidation action (Art. 89(2) IPL).
– The decision will be taken in the litigation proceedings at the Patent Office. Partial nullification is available.
The Industrial Property Law does not provide for the possibility of modifying the scope of the granted patent through modification of the patent claims. It does not provide for a procedure analogous to Article 105a EPC. It is possible to invalidate the patent in part (Art. 89 IPL) or for the patent holder to surrender the patent (Art. 90(1)(2) IPL). Surrender in part is possible only in cases in which the protected solution is divisible.

II. Civil procedure

Infringement
Civil action has to be brought by the patentee, his assignee or licensee to the District Court. Jurisdiction is mainly determined by the defendant’s domicile or place of business (Art. 27, 30 of CCP).
– The procedure is governed by provisions of the CCP on litigation or commercial matters. Criminal sanctions are available upon request.
– Action should be brought within three years from the date of infringement. Claims become barred five years after the date on which the infringement was committed.
– At first instance the case will be heard by one judge (legally qualified, no technical background required).

Nullity/counterclaim for revocation
Nullity can be used as a defense in infringement proceedings, but invalidation of the patent has to be the subject of separate special litigation proceedings before the Patent Office.

Remedies
Court decision to recall goods from the channels of commerce, destruction of goods, preservation of evidence or claims, publication of judicial decisions, desistance from infringement, handing over unjustly obtained benefits, pecuniary compensation.

Other actions
It is possible to apply to the court with a request to establish the authorship of the inventive project, to establish the right to the patent, to establish the right to use the invention or to transfer the patent obtained by an unauthorized party.

Appeal
Action should be brought to the Court of Appeal (Art. 367 CCP).
– The Court of Appeal will hear the case only within the motions contained in the appeal; only the nullity of the proceedings will be considered (Art. 378 CCP).
– New evidence may be presented only if this was not possible before the first instance.
– Appeal is heard by a panel of three judges (all legally qualified).
– Further appeal to the Supreme Court is restricted to breaches of substantive law or violation of procedural regulations (Art. 398 et seq. CCP).

Parallel proceedings
The court can stay the proceedings ex officio if settlement of the case depends on the outcome of other ongoing civil proceedings or a decision of a public administration body. The court assesses whether in a given case the proceedings should be suspended (Art. 177 CCP).

Arbitration/mediation
In proceedings before the courts on matters of industrial property, mediation or settlement is also possible. Mediation is voluntary. It is conducted on the basis of a mediation agreement or a decision by a court referring the parties to mediation. The function of a mediator can be performed by a natural person having full legal capacity to perform acts in law and enjoying full civil rights. A judge cannot be a mediator. Non-governmental organizations within the scope of their statutory tasks and universities can keep lists of mediators and establish mediation centers. Information on lists of mediators and mediation centers is made available to the president of the district court (Art. 183 et seq. CCP). Conciliation proceedings, which can end with a settlement, are conducted by a court (Art. 184 et seq. CCP).

III. Enforcement

Enforcement proceedings fall within the competence of regional courts and bailiffs acting through the regional courts. Enforcement actions are performed by bailiffs, except for matters reserved for courts. This rule applies both to the enforcement of final judgments in legal proceedings and for instance to decisions on securing the claim (Art. 730 et seq. CCP).

IV. Compulsory license

May be granted by the Patent Office only under certain circumstances, in cases of national emergency, abuse of patent rights or dependent patents (Art. 82 IPL).

V. Relevant national law

– Act of 30 June 2000 – Industrial Property Law (Journal of Laws of 2013, item 1410, as amended) [cited as: IPL]
– Code of Civil Procedure [cited as: CCP]

PORTUGAL
I. Administrative procedure

Opposition
Opposition may be filed within two months of the date of publication of the patent application in the Industrial Property Bulletin. The applicant will be notified by letter that opposition has been filed, and from that moment has two months to reply. Only then will the Portuguese Institute of Industrial Property (hereinafter the “Patent Office”) take a decision on the opposition.

Appeal
After publication of the final decision, any interested party may appeal to the Intellectual Property Court in Lisbon (with jurisdiction for all territory and in operation since 30 March 2012) within two months from publication. The judge may uphold or revoke the initial decision.
– The administrative decision may also be appealed to the Arbitration Court (ARBITRARE) as an alternative to judicial appeal.
– Further ordinary appeal to the Court of Appeal of Lisbon within 30 days from the date of the decision.

II. Civil procedure

Infringement
Criminal infringement proceedings can be conducted in any criminal court of first instance (criminal action according to jurisdiction of the court where the infringement takes place); civil infringement proceedings can be conducted in the Intellectual Property Court (with jurisdiction for all territory and in operation since 30 March 2012).
– Action may be brought by the patent holder, his licensee or any person who considers himself adversely affected.
– Expert opinions are allowable. The Court may ask the Patent Office to indicate an expert or ask other institutions (e.g. universities). The Court usually follows the opinion of the expert, but the opinion of an expert or any other expertise does not legally bind the Court.
– No judicial decision based on provisional protection can be issued before a final decision to grant or refuse the patent, which is taken by the Patent Office.
– Invalidity of a patent may be used as a defense. The Court will wait for the final decision on nullity if a previous action has to deal with a demand for nullity, or at the request of one of the parties the case may be sent to the Court where the first action was lodged (bearing in mind that, for cases lodged since 30 March 2012, jurisdiction lies exclusively with the Intellectual Property Court).
– If there is no previous action the court will simultaneously decide on validity, infringement and also the award of damages if requested for any of the parties.

Nullity/counterclaim for revocation
– At first instance, exclusive jurisdiction rests with the Intellectual Property Court.
– In nullity actions, it is possible to bring counterclaims of infringement. As a rule, the court will decide on both, and also on the award of damages if requested by one of the parties.
– Invalidity proceedings may be initiated by any interested party or by the Public Prosecutor Services during the entire lifetime of a patent.
– Partial nullification is possible.
– The decision of the Court has retroactive effect (ex tunc).
Patent claim amendment is allowable under Art. 11(10) IPC: “After a decision has been issued, during the time limit for appeals or, if an appeal has been lodged, until the ruling has been confirmed, applicants may transfer the rights pertaining to an application, limit its object or add documents or statements to the case file”; under Art. 101(5) IPC: “A patentee may ask the Patent Office, on payment of a fee, to limit the scope of protection of the invention by altering the claims”; and under Art. 114(2) IPC: “In court proceedings, a patentee may limit the scope of protection of an invention by altering the claims.” In practice, requests for limitation do not occur very frequently.

Remedies
Damages, seizure of infringing articles, fine and imprisonment (for criminal infringement).

Other actions
Interested parties may request a declaration of non-infringement, and the same procedure applies as under “Nullity/counterclaim for revocation”.

Appeal
To the Court of Appeal of Lisbon within 30 days, or 45 if the facts declared proven are also disputed, in both cases from the date of the decision. Further appeal only on points of law to the Supreme Court, within 30 days from the date of the decision. Appeal to the Supreme Court depends on the value of the lawsuit, but because damages are also dealt with together with validity and infringement, the cases normally go to the Supreme Court.
– Appeal to the Supreme Court depends on the value of the lawsuit and is admissible only in some cases.
If the first-instance decision is upheld without a dissenting vote in the Appeal Court of Lisbon and with full acceptance of all the arguments of the Intellectual Property Court, there will be no appeal to the Supreme Court. However, appeal to the Supreme Court is always possible in order to clarify important points of law or contradictions in case law. In these cases, appeal to the Supreme Court is mandatory for the Public Prosecutor Services even if the parties do not appeal.
– The Arbitration Court (ARBITRARE) is also available as an alternative to judicial courts, with appeal to the Court of Appeal of Lisbon when parties agree to that in the arbitration agreement.

Parallel proceedings
The court stays national proceedings if the Patent office considers that the parallel proceedings are a prejudicial cause likely to affect the decision.

Arbitration/mediation
This is available in patent litigation proceedings, voluntary or obligatorily, in the case of generic medicines and the reference products. ARBITRARE (Arbitration Centre for Industrial Property,
Domain names, Trade names and Corporate names) and ad hoc courts are the competent authorities.
In litigation between patent-based medication and generics arbitration is mandatory. The Intellectual Property Court has no jurisdiction in litigation of this type. The applicable law in matters concerning the compulsory Arbitration Tribunal is Law No. 62/2011 of 12 December 2011.

III. Enforcement

In principle, for the abovementioned functions of enforcement, it is an agent that is external to the Intellectual Property Court, called the “agente de execução”, that is chosen by the interested party or nominated by the corresponding corporation, the “Ordem dos Solicitadores e Agentes de Execução” (upon request of the Court). A bailiff intervenes in exceptional cases, such as when the interested party is the State or when there is no available agent (cf. Art. 722 of the Portuguese Civil Procedure Code).

IV. Compulsory license

May be granted by the Patent Office in cases of nonworking patents. In cases of public interest the license will be granted by the Government.

V. Relevant national law

Industrial Property Code [cited as: IPC] http://www.marcasepatentes.pt/files/collections/pt_PT/1/2/14/CPI%202003.pdf Voluntary Arbitration Law https://www.arbitrare.pt/sbo/downloads/Nova_Lei_de_Arbitragem%20_L63_2011.pdf Arbitration Law http://www.pgdlisboa.pt/leis/lei_mostra_articulado.php?nid=1576&tabela=leis Arbitrare Regulations https://www.arbitrare.pt/sub_regulamentos.php

ROMANIA
I. Administrative procedure

Opposition
The opposition procedure is possible only after the decision is taken within substantive or preliminary examination. The appeal must be formulated within three months of communication of the decision, according to PA. The appeal against the decision taken within substantive examination, filed in writing and on firm grounds, accompanied by proof of payment, must be settled (released pending) by a Board of Appeal within the Appeal Department of the State Office for Inventions and Trademarks (hereinafter the “Patent Office”) within three months of its registration (Art. 50 PA). Opposition against the decision taken within preliminary examination, made in writing and on solid grounds, accompanied by proof of payment of the legal fees, must be settled (released pending) by a Board of Appeal within the Legal Department of the Patent Office within three months of its registration (Art. 50 PA).

Appeal
The decision of the Board of Appeal of the Patent Office may be appealed against before the Bucharest Tribunal within 30 days from communication (Art. 54 PA).
– Judicial review: further appeal against Bucharest Tribunal decisions may be lodged, within 30 days from communication, with the Court of Appeal of Bucharest (Art. 54 PA and Art. 468 Code of Civil Procedure).
– The Bucharest Tribunal has specialized IP judges (judges at the Bucharest Tribunal are trained in the area of IP, but there is no specialized IP section).

Revocation
Any interested third person is entitled to apply to the Patent Office, in writing, on valid grounds, for revocation of a patent. Action may be brought within six months from publication of the mention of grant of the patent (Art. 49 PA).
– Where the grounds for revocation relate to only a part of the patent, the patent may be revoked in part. The revocation request must be settled by the Board of Appeal within three months of its registration. Patent claim amendment is possible if the disclosure does not extend beyond the content of the application at the date of filing. Such situations do not occur very frequently. The Patent Office may revoke its decisions ex officio, for failure to comply with the conditions laid down by the
Patent Law, until notification (Art. 28 PA).

II. Civil procedure

Infringement
Action may be brought by the patent owner and will be considered by ordinary courts of first instance (Art. 60 PA). Litigation concerning inventor, patent ownership or other rights arising from the patent is subject to the jurisdiction of the ordinary courts of first instance. If the patent owner, his successors in title or any other person asserting the industrial property right with the owner’s consent provides credible evidence that his patent protected industrial right is subject to a current or imminent illegal act that is likely to cause him irreparable prejudice, he may request the law court to order provisional measures, such as:
– Prohibition or provisional cessation of the infringement.
– Appropriate measures for preserving evidence.
Infringement is also considered a criminal offence and is punishable by a fine or imprisonment. The proceedings are initiated ex officio (Art. 56 PA). Expert opinions are permissible and binding on the court as regards the technical aspects of the patent (if experts are appointed by the court).

Nullity/counterclaim for revocation
An invalidation request can be made during the entire lifetime of a patent. Invalidation of a patent granted by the Patent Office may be requested at the Bucharest Tribunal after the time limit for a revocation request has elapsed (Art. 51 PA). (See Part I “Opposition”).
– Partial annulment is available.
– If the nullity action is withdrawn by the claimant, the proceedings will not be continued.

Remedies
Damages under civil law, seizure, destruction, criminal sanctions (imprisonment, fine).

Other actions
There is no provision for this.

Appeal
The Bucharest Tribunal decision may be appealed within 30 days to the Court of Appeal in Bucharest (Art. 52 PA). The decisions of the Court of Appeal of Bucharest may be appealed before the High Court of Cassation and Justice within 30 days from communication.

Parallel proceedings
When there are parallel proceedings (e.g. in case of EPO oppositions and/or appeals) between national courts and the EPO, the court stays national proceedings until the EPO proceedings are finished.

Arbitration/mediation
Mediation is available as a procedure for settling disputes concerning patents and is performed by authorized mediators. The legal framework for the conduct of such proceedings is provided by Law No. 196/2006 on mediation and the mediator profession, as amended and supplemented.

III. Enforcement

During court proceedings, the courts have the competence to order provisional measures, such as prohibition or provisional cessation of the infringement or appropriate measures for preserving evidence, under the terms of the Code of Civil Procedure. The public ministry is the authority responsible for enforcing an order.

IV. Compulsory license

According to Art. 43 PA, at the request of any interested person, the Bucharest Tribunal may grant a compulsory license in the following situations:
– Where the invention has not been exploited or has been insufficiently exploited in the territory of Romania, and the patent owner cannot justify his inaction, and where no agreement has been reached with him regarding the conditions and commercial methods for applying the invention
– In cases of national emergency.
– In other cases of extreme emergency.
– In cases of public use for non-commercial purposes.

V. Relevant national law

Patent Law No. 64/1991 – as last amended by Law No. 28/2007, republished in 2014 [cited as: PA]

SERBIA
I. Administrative procedure

Opposition
Not available.

Appeal
– Decisions of the Intellectual Property Office of the Republic of Serbia (hereinafter the “Patent Office”) may be appealed with the Government (Administrative Commission) within 15 days from receipt of the decision, unless the Patent Law provides otherwise (Art. 67 PL).
– The Patent Office’s findings pursuant to the provisions of the Patent Law may not be appealed, unless the Patent Law provides otherwise (Art. 67 PL).
– Extraordinary remedies are allowed against decisions of the Administrative Courts. The Supreme Court of Cassation decides on extraordinary legal remedies (Art. 144 PL).

Revocation
– The validity of a patent may be challenged before the Patent Office.
– At any time, any third person is entitled to submit a request for revocation.
– On valid grounds for revocation, the Patent Office will revoke a decision on the grant of a patent (Art. 128 PL).
– On the basis of the revocation proceedings, the Patent Office will either take a decision to revoke the decision to grant the patent in full or in part, or refuse the request for revocation.
– The Patent Office will publish particulars of the revoked patent in the Official Gazette within three months from the date on which the decision becomes final (Art. 131 PL).
– The Patent Office may take the decision to revoke the patent in part, whereby the patent is maintained in force with amended patent claims. This situation does not often occur.

II. Civil procedure

Infringement
– The owner of a patent or holder of an exclusive license is entitled to institute civil proceedings against any person infringing his right (Art. 132 PL).
– The competent court in civil cases between natural persons is the Higher Court at first instance; the competent court between legal persons is the Commercial Court.
– In IPR cases, review is always allowed (as an extraordinary remedy); the Supreme Court of Cassation decides on reviews.

Nullity/counterclaim for revocation
See Part I “Revocation”.

Remedies
Establishment of the fact that a patent infringement exists, damages under civil law, publication of the court decision at the expense of the defendant, seizure, destruction, supply of information on third parties involved in the infringement, criminal sanctions.

Other actions
1) Prior user: A patent has no effect against a person acting in good faith who has, before the date of priority, already started exploiting a protected invention in production in the territory of the Republic of Serbia, or has made all necessary preparations to initiate such use (Art. 23 PL).
2) Action for establishment of the right to protection: In a civil action, the inventor, his successor in title or employer is entitled to require the court to establish his right to the protection of a given invention or to establish that he is the right holder, instead of or together with the person who has already filed an application for that invention. This action may be brought before the right has been granted, or prior to expiry of the right if the decision to grant a patent has already been taken by the competent authority (Art. 140 PL).
3) Action for the protection of employers’ or employees’ rights: An employer and/or an employee entitled to the protection or commercial use of an invention made in the course of his employment may institute court proceedings for the establishment and protection of his rights. Legal proceedings for the establishment of employees’/employers’ rights may be instituted within two years from the date of publication of the patent application, but not after expiry of two years from the date of termination of the employment during which the invention was made (Art. 141 PL).
4) Action for recognition of the status of inventor If the patent/petty patent application or any other document provided by the law has designated any other person as an inventor, the inventor is entitled to institute civil proceedings requesting the court to establish his status as inventor or to order the entry of his name in the patent documents and registers kept by the Patent Office. There is no time limit for the institution of proceedings (Art. 142 PL).

Appeal
Decisions may be appealed to a Court of Appeal and the Commercial Appellate Court.

Parallel proceedings
If a request for revocation of a European patent is filed with the Patent Office after initiation of the EPO opposition procedure referred to in Article 99 EPC or of the limitation or revocation procedure referred to in Article 105a EPC, the Patent Office will stay its revocation proceedings until the proceedings before the EPO have terminated (Art. 157 PL).

Arbitration/mediation
– Mediation is available in patent litigation proceedings (Art. 3 ML) on the basis of a written agreement on mediation between the parties (Art. 19 ML).
– The mediator must meet the requirements prescribed in the Law on Mediation (Art. 33 ML).

III. Enforcement

– The competent court is responsible for enforcing orders during the proceedings, such as provisional measures (Art. 134 PL), precautionary measures (Art. 135 PL) or preservation of evidence (Art. 136 PL).
– After the final court decision, the competent court or bailiff may be responsible for the enforcement of compensation for damages.

IV. Compulsory license

At the request of an interested party, a non-exclusive compulsory license may be granted by the authority competent in the field in which the invention is designed to be employed (subject to further conditions, Art. 26 PL).

V. Relevant national law

– Law on Patents (OG RS No. 99/11) [cited as: PL]
– Law on mediation in resolving disputes (OG RS No. 55/14) [cited as: ML]

SWEDEN
I. Administrative procedure

Opposition
Post-grant opposition is available. Anyone, except for the patent holder, may file notice of opposition within nine months from the date on which the patent was granted (Section 24(1) PA).
– The patent proprietor is given the opportunity to file a response within four months from the date on which the Swedish Patent and Registration Office (hereinafter the “Patent Office”) sent the opposition (Section 24(2) PA).
– If the opposition is withdrawn by the opponent, the process may still be continued if there are particular reasons (Section 24(3) PA).
– In the event that opposition is not filed with the Patent Office within nine months after grant, the patent may only be wholly or partly nullified by the court.

Appeal
A final Patent Office decision on a patent application may be appealed by the applicant if the decision is not in his favor. A final decision on an opposition to a patent is appealable by the proprietor of the patent and by the opponent if the decision is not in favor of the appealing party. If the opponent withdraws his appeal, the proceedings will not be continued.
– The appeal should be filed with the Patent Office within two months from the date of the decision; however, it will be considered by the Patent and Market Court – a new court with exclusive jurisdiction in all patent cases (Section 65(1) PA).
– Further review: by the Patent and Market Court of Appeal (Chapter 1, Section 3, PMCA). The appeal must be received by the Patent and Market Court of Appeal within three weeks from the decision of the Patent and Market Court. Leave is required. The main rule stipulates that the verdict of the Patent and Market Court of Appeal is not open to appeal, but where this is found essential, permission to appeal may be given, although leave to appeal must be given by the Supreme Court as well.

II. Civil procedure

Infringement
– The Patent and Market Court has exclusive jurisdiction for patent litigation. The court organization is the same as for the administrative procedure, although the procedure follows the general Swedish Code on Judicial Procedure instead of the otherwise applicable administrative procedural rules. The new arrangements will have no substantive effect on the procedure in litigation cases; however, in some circumstances it is possible for the court to merge administrative and litigation cases if this is deemed appropriate (Chapter 3, Section 6, PMCA).
– Patent infringement cases are as a rule heard by four judges (two legally trained and two technically qualified), and decisions are taken by majority vote (Chapter 4, Section 1, PMCA).
– The patent owner may bring an action for infringement.
– Nullity may be used as a defense or counterclaim; in that case, however, it may only be considered after an invalidity claim has been raised. The Court orders the party asserting invalidity to bring action within a certain period of time. If patent infringement action and patent invalidity action are brought in the same court proceedings and if it is suitable to decide independently on whether there is patent infringement, a separate judgment may be rendered on this issue at the request of one of the parties. If a separate judgment is rendered, the Court may decide that invalidity proceedings are to be stayed until the judgment has taken legal effect (Section 61(2)(3) PA).
– Criminal actions are brought only at the complaint of the aggrieved party.
– At the preparatory stage, the courts are required to investigate the possibility of settling the case.

Nullity/counterclaim for revocation
Court action may be brought by anyone who suffers damage or by a public authority designated by the government (Section 52 PA).
– A patent may not be declared invalid on the grounds that the person who has obtained it was entitled to only a part of it.
– Partial nullification and limitation is available.
– Patent amendment is allowable as far as it reduces the actual scope of the patent. Overall, the rules and practice fully correspond to the EPC/EPO situation. Compared to the entire number of patents granted, this has not been a frequent action to date.
– If the action is withdrawn, the proceedings will not be continued.

Remedies
Preliminary relief, compensation, destruction of infringing articles (Sections 57-62 PA).

Other actions
Any person who carries on or intends to carry on an activity may bring an action to the Patent and Market Court against the proprietor of the patent for a declaratory judgment in order to establish whether a specific patent constitutes an obstacle to that activity (Section 63 PA).

Appeal
Appeal is addressed to the Patent and Market Court of Appeal, which must receive it within three weeks from the decision of the Patent and Market Court. Leave is required. The main rule stipulates that the verdict of the Patent and Market Court of Appeal is not open to appeal, but where this is found essential, permission to appeal may be given, although leave to appeal must given by the Supreme Court as well.

Parallel proceedings
According to the Swedish Code of Judicial Procedure there is an explicit decree giving the court extensive powers to stay any national proceedings for special reasons, including awaiting the outcome of EPO proceedings.

Arbitration/mediation
Arbitration is a common way to handle patent litigation. The Arbitration Institute of the Stockholm Chamber of Commerce (SCC) – which is not a public authority – provides dispute resolution services in this field.

III. Enforcement

The Swedish Enforcement Authority (“Kronofogdemyndigheten”) is responsible for enforcing orders during the proceedings as well as after a final decision of the court.

IV. Compulsory license

A request to the Patent and Market Court may be granted in cases of dependent patents, public interest and, exceptionally, in cases of prior use in good faith (Sections 45-50 PA).

V. Relevant national law

The Swedish Patent Act – Act No. 837 of 1967, as amended by Acts Nos. 149 of 1978, 433 of 1983, 937 of 1984, 233, 1156 of 1986, 1330 of 1987, 296 of 1991, 1688 of 1992, 1406 of 1993, 234, 1511 of 1994, 1158 of 2000, 159, 161 of 2004, 289, 692 of 2005, 254, 625, 682 of 2006, 242, 516, 518 of 2007, 111 of 2009, 1395 of 2010, 580 of 2011, 84 of 2013, 289, 434 of 2014, 317 of 2015 and 192 of 2016 [cited as: PA] The Swedish Patent and Market Courts Act – Act No. 188 of 2016 [cited as: PMCA]

SLOVENIA
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure is available.

Appeal
There is no appeal against the decision of the Slovenian Intellectual Property Office (SIPO; hereinafter the “Patent Office”). Nevertheless, if a patent application is refused, an action for judicial review may be lodged with the Administrative Court in Ljubljana within 30 days from the date on which the applicant or his representative received the decision of refusal (Art. 71 IPA). The Patent Office has competence for administrative procedures related to matters regulated by the IPA. A lawsuit (on points of law and fact) against the Patent Office’s decision is allowed and must be filed with the Administrative Court in
Ljubljana. In certain cases, an appeal may be filed (e.g. against decisions on procedural matters). Decisions on the merits are final; however, extraordinary legal remedies against such decisions may be filed with the Supreme Court.

II. Civil procedure

Infringement
Entitlement to sue for infringement rests with the patent holder or exclusive licensee or with professional associations established for the protection of industrial property rights (Art. 120a IPA).
– A civil action may be filed with the District Court of Ljubljana (ordinary court – responsible for all IP cases in Slovenia), which has exclusive jurisdiction over all patent infringement cases in Slovenia (Art. 121 IPA). Patent infringement is also a criminal offence (in which case one of the county courts is competent).
– The District Court of Ljubljana has exclusive jurisdiction over disputes related to intellectual property rights in civil law matters. An appeal may be lodged against a decision of the District Court with the High Court of Ljubljana; the decision of the High Court may be challenged to the Supreme Court only through extraordinary legal remedies (e.g. revision).
– Where the infringement action relates to infringement of a national patent which has not been examined for substantive patentability requirements, the court will suspend proceedings until the Patent Office issues a declaratory decision on whether the written evidence filed by the patent holder meets the patentability requirements (Art. 122(2) IPA).
– Nullity of a patent can be used as a defense or counterclaim.
– An infringement lawsuit becomes statute-barred in accordance with the general rules of the Civil Code.

Nullity/counterclaim for revocation
Any interested party may, at any time during the entire lifetime of the patent or after the patent has expired, bring an action for invalidation to the District Court of Ljubljana (Art. 111, 112 IPA). The court immediately notifies the Patent Office of the receipt of an action and of the final decision (Art. 72 IPA). The court submits its judgment together with confirmation of the judicial enforceability of the judgment to the Patent Office for execution. Nullification has retroactive effect. Partial nullification is available. There are not many court cases regarding the validity of a patent. Patent claim amendment is allowable, but only if such an amendment would narrow the already granted patent claims.

Remedies
When filing an action, the plaintiff may claim prohibition of infringement, recall of infringing goods from the channels of commerce, restoration of the previous situation, irrevocable removal of infringing goods from the channels of commerce, destruction of infringing goods, destruction of means of infringement that are owned by the infringer and intended or used exclusively or principally for infringement, publication of judgment, surrender of infringing goods against reimbursement of production costs, damages according to general tort law (all the claims may be decided in a separate or the same civil procedure) (Art. 121, 121a IPA). Interim decisions and other measures are regulated in Articles 123 to 124(b) IPA.

Other actions
Not available.

Appeal
Ordinary appeal may be filed within 15 days at the High Court of Ljubljana. A further extraordinary appeal to the Supreme Court is available (restricted to points of law).

Parallel proceedings
In case of action under Article 121 IPA relating to infringement of a patent or published European patent application, the court stays the proceedings until the Patent Office issues a declaratory decision (under paragraph (a) or (b) of Article 93 IPA) until the date of entry of the European patent in the patent register at the Patent Office (Art. 122(2) IPA).

Arbitration/mediation
The IPA does not contain any provision regarding arbitration or mediation. However, the Act on Alternative Dispute Resolution in Judicial Matters (hereinafter AADRJM), which is a special law regulating settlements of legal disputes in alternative dispute resolution proceedings, applies to disputes arising from commercial, labor, family and other civil law relations. The AADRJM may therefore also be used in patent disputes. There are several providers of mediation and/or arbitration. Some of them are grouped in the association of mediation organizations known as MEDIOS. The courts also offer their own mediation (so-called “court-adjoined mediation”) based on the provisions of the AADRJM.

III. Enforcement

Where the court decision is based on the IPA (i.e. patent grant, patent validity), except in lawsuits for infringement, the court sends its final and enforceable decision to the Patent Office for execution (Art. 72 IPA). Where the court decision is related to infringement lawsuits and other non-IPA-based claims (e.g. law of contracts), the executors are responsible for enforcing an order; in some cases these executors must be bailiffs.

IV. Compulsory license

May be granted by the court in cases of public interest, or if the court determines that the owner or licensee is abusing the right to a patent (Art. 125 IPA).

V. Relevant national law
Industrial Property Act of 23 May 2001 as last amended on 27 November 2013 as in force from 21 December 2013 [cited as: IPA]

SLOVAKIA
I. Administrative procedure

Opposition
No pre- or post-grant opposition procedure is available.
– After publication of the application any person may file observations on the patentability of its subject-matter. These observations will be taken into consideration during substantive examination. The persons filing them do not become parties to the application proceedings (Art. 42 PA).
– Third parties may, within 36 months from the filing date, request substantive examination of a patent application (Art. 43 PA).

Appeal
An appeal against the Industrial Property Office of the Slovak Republic (hereinafter the “Patent Office”) decision may be lodged with the Patent Office within 30 days from delivery of the decision (Art. 55 PA). Only a party to the proceedings or a person who may be directly affected is entitled to appeal. Once lodged, an appeal has suspensive effect. The President of the Patent Office decides on appeals on the basis of the proposals of the Appeal Commission’s experts. Extraordinary remedies:
– Renewal of the proceedings: will be ordered by the Patent Office upon request, but only in certain cases (new facts, irregular practices of the administrative authority, untrue evidence). The request must be submitted within three months after a day when the party became aware of the reasons for recovery (renewal of the proceedings), but not later than three years after the final decision.
– Review of the final decision outside of the appeal procedure: if the final decision is contrary to the binding legal rules, the Patent Office may amend it (ex officio or upon request) or declare it null and void. This new decision is subject to further appeal.
– Proceedings at the request of a prosecutor: if the decision is unlawful, a request must be submitted within three years from the date of validity of the decision.
– Judicial review: the final administrative decision may be contested by an annulment (“cassation”) complaint filed at the Regional Court of Banská Bystrica. The complaint can be filed for an alleged illegality of the contested decision within two months of its notification.

Revocation
The Patent Office’s Disputes Proceedings Department is competent for taking decisions at first instance.
The proceedings may be initiated at the request of a third party or ex officio (Art. 46 PA).
– The request can be made during the entire lifetime of a patent (even after the patent has lapsed if the person requesting revocation proves a legal interest).
– Partial revocation is available (amendment of patent claims, description and drawings).
– The patent owner is entitled to request partial revocation, which will be handled by the Patent Office without examining the grounds for revocation (Art. 46(2) PA). Revocation has retroactive effect.
– The Patent Office delivers the revocation request to the patent owner and invites him to respond within a set time period (Art. 47 PA).

II. Civil procedure

Infringement
The first instance court (the District Court of Banská Bystrica) has exclusive competence to hear and adjudicate infringement cases (Art. 33 PA, Art. 25 of the Civil Disputes Procedure Code).
– The person whose rights have been infringed or jeopardized is entitled to bring an action (Art. 32 PA).
– Representation by an attorney at law (advocate) before the court (of all instances) is compulsory (Art. 90 of the Civil Disputes Procedure Code).

Nullity/counterclaim for revocation
If a request for revocation is filed during infringement proceedings, the court may suspend the infringement proceedings until the Patent Office decides on the revocation request. The court has no competence either for revocation actions or for counterclaims for revocation.

Remedies
Preliminary injunction, permanent injunction, removal of infringement consequences, prevention of further infringement, destruction of infringing products, information on the origin of the product, compensation for damages (actual damage and loss of profits), immaterial injury, unjust enrichment, compensation for the costs of the proceedings (Art. 32, 32a, 33, 34, 54 PA, Art. 442a, 458a of the Civil Code, Art. 255 et seq. of the Civil Disputes Procedure Code).

Other actions
Declaration of non-infringement, prior user, ownership or inventorship can be invoked by positive or negative action of determination in accordance with Art. 137(c) of the Civil Disputes Procedure Code.

Appeal
An appeal against a ruling of the first-instance court (the District Court of Banská Bystrica) may be lodged with the Regional Court in Banská Bystrica within 15 days from delivery of the contested decision (Art. 362 of the Civil Disputes Procedure Code). Only an unsuccessful party to the proceedings is entitled to appeal. Once lodged, an appeal has suspensive effect.

Parallel proceedings
If, at the time of revocation proceedings for a European patent before the Patent Office, opposition proceedings against the same European patent have started or have been pending before the EPO, the Patent Office will suspend revocation proceedings. After termination of proceedings before the EPO in which the European patent was not revoked, the Patent Office will, at the request of any party, continue its own European patent revocation proceedings. If a request for further proceedings on patent revocation is not submitted within six months from the date of validity of an EPO decision, the Patent Office will suspend patent revocation proceedings (Art. 65(6) PA).

Arbitration/mediation
No arbitration is admissible unless a bilateral arbitration clause has been concluded between the parties before or during the court proceedings (Act No. 244/2002 Coll. On arbitration proceedings, as amended). The parties are free to use the services of a professional mediator (Act No. 420/2004 Coll. on mediation, as amended). The Patent Office does not provide such services.

III. Enforcement

The court ruling, decision or order, regardless of whether it was issued during the proceedings or after the final decision, may be enforced at the request of the beneficiary by the court bailiff (Act No. 233/1995 Coll. on court bailiffs and enforcement, as amended). The court bailiffs are not employees of the courts in Slovakia, but they need a judicial warrant to start enforcement in each individual case.

IV. Compulsory license

The competent court may grant a non-exclusive license in cases of non-working and public interest (Art. 27, 28 PA).

V. Relevant national law

Act No. 435/2001 Coll. on Patents, Supplementary Protection Certificates and amended Acts as Amended by Act No. 402/2002 Coll. [cited as: PA]

SAN MARINO
I. Administrative procedure

Opposition
No formal opposition procedure is available. Third parties may only submit observations on the patentability of the invention. Third parties do not become parties to the proceedings before the State Office for Patents and Trademarks of the Republic of San Marino (hereinafter the “Patent Office”).

Appeal
Appeal from refusal of the application must be filed within 60 days after notification by the Patent Office. The appeal must be addressed to the Administrative Judge of First Instance. The Administrative Judge of Appeal is competent to deal with appeals against decisions of the Administrative Judge of First Instance. The San Marino legal system provides that, in order to be final, an administrative judgment must meet the so-called “doppia conforme” requirement (two concordant decisions). According to this principle, if the first-instance judgment differs from the appeal judgment, a third-instance judgment must be pronounced by the Judge of Third Instance for Administrative Matters.

II. Civil procedure

Infringement
The owner of the patent may request a detailed description by a bailiff of infringing goods with or without seizure. In such cases the requester must institute civil proceedings within 30 days. Actions will be heard by the Commissario della Legge (Law Commissioner). During the investigative phase an expert appointed by the Law Commissioner may be required to give an expert opinion on the existence of the infringement or the validity of the patent.

Nullity/counterclaim for revocation
Any interested party may request nullity before the Law Commissioner. A judgment of nullity has retroactive effect. The Law Commissioner’s decision may be appealed to the Judge of Civil Appeal.
Patent claim amendment is allowable but is not common.

Remedies
Injunction, seizure of infringing products, publication of the decision, destruction of infringing articles, compensation, damages.

Other actions
Not available.

Appeal
The Law Commissioner’s decision may be appealed to the Judge of Civil Appeal. The San Marino legal system provides that, in order to be final, civil judgments must meet the so-called “doppia conforme” requirement (two concordant decisions). According to this principle, if the first-instance judgment differs from the appeal judgment, a third-instance judgment must be pronounced by the Judge of Third Instance in Civil Matters.

Parallel proceedings
There is no specific provision or case law covering parallel proceedings.

Arbitration/mediation
Arbitration is not available in patent litigation proceedings.

III. Enforcement

The bailiff is the authority responsible for enforcing an order.

IV. Compulsory license

May be granted by the Patent Office in cases of unexploited patents within a period of four years from the date of filing. Those who wish to obtain a compulsory license must address a reasoned request to the Patent Office. The owner of the patent may start opposition proceedings against the grant of a compulsory license. The decision on the opposition may be referred to arbitration.

V. Relevant national law

– Law No. 79 of 25 May 2005 – Industrial Property Consolidation Act
– Law No. 114 of 20 July 2005 – Amendments to Law No. 79 of 25 May 2005 – Industrial Property Consolidation Act
– Regulation No. 5 of 2 July 2007 – Regulation for the Practice of the Profession of Industrial Property

TURKEY
I. Administrative procedure

Opposition
The Turkish Patent Institute (hereinafter the “Patent Office”) has introduced a system of pre-grant observations and opposition aimed at the restoration of rights.
Pre-grant observations:
– In the case of patents with pre-grant examination, any third party may, within six months from the date of publication of the search report for the patent application, submit to the Patent Office written objections that may affect the patentability of the invention (Art. 62 PA).
– In the case of patents without pre-grant examination, anyone may, within the same period, file written observations on the search report. These will be communicated to the applicant, who may respond to them (Art. 60 PA).
Oppositions aimed at the restoration of rights:
– Restoration of a previous stage of the proceedings: available in cases where objections are lodged by an applicant who has an objection to formal deficiencies in the administrative procedure for the grant of a patent (Art. 70 PA). If the objections are well-founded, the effect of this action will be annulment of the administrative action pertaining to the grant of the patent retroactively to the stage of the procedure where the deficiency concerned occurred and resumption of the procedure from that stage onwards so as to perform all such actions anew (Art. 71 PA).
– Due to a negative third examination report:
If a patent application is refused because of a negative third examination report, opposition for restoration may be lodged (Art. 62 PA). The applicant is required to submit his comments regarding the report.

Appeal
With respect to decisions taken by the Patent Office in registration procedures, an applicant or third party may appeal to the Re-examination and Evaluation Board (President, Vice-President and two further members appointed by the President). Generally, there is no further appeal from the decisions of the Patent Office in patent cases. An appeal from a decision of the Re-examination and Evaluation Board can be made to the Ankara Specialized IPR Civil Court (first-instance court in civil judiciary) within 60 days after notification of the decision. This court examines the decisions of the Re- examination and
Evaluation Board on points of both law and fact.

II. Civil procedure

In total there are 21 specialized IPR courts in Ankara, İstanbul and İzmir (eight civil and six criminal IPR courts in Istanbul, four civil and one criminal in Ankara, one civil and one criminal in İzmir). These courts are the first-instance courts dealing with all intellectual and industrial property cases. General civil courts of first instance and general criminal courts at first instance are competent to deal with IPR cases where specialized IPR courts do not exist. (If there are one or two general civil or criminal courts, the first is competent to deal with IPR cases. If there are three or more general civil or criminal courts, the third is competent to deal with IPR cases.) The Supreme Court examines the decisions taken by the courts of first instance both on points of law and on points of fact. It has 23 civil chambers and 23 criminal chambers. The Eleventh Civil Chamber examines appealed decisions in IPR civil cases. The Seventh Criminal Chamber examines appealed decisions in IPR criminal cases.

Infringement
Actions can be brought to specialized IPR Civil Courts in Ankara, İstanbul and İzmir and to the general civil courts of first instance (numbered first or third) where specialized IPR civil courts do not exist – depending on the domicile of the claimant or on the place where effects of infringement have occurred.
– Proceedings may be instituted by the proprietor of a patent or an exclusive licensee, unless otherwise provided in the contract; in any case the patent owner has to be informed (Art. 137, 148 PA).
– In any proceedings based on infringement, the court cannot take into consideration any defense regarding invalidity unless the defendant brings a counteraction based on invalidity. According to Turkish law, counteraction means an independent case rather than an ordinary defense.
– Criminal proceedings: There are no criminal sanctions for patent infringement for two reasons:
1) The Constitutional Court has abolished the criminal effect of Art. 136/I-a and b PA (direct infringement regarding product patents) by decision No.: E.: 2005/57, K.: 2009/19; dated 5 February 2009.
2) The new Turkish Criminal Code No. 5237, Art. 5, has abolished the enforceability of Art. 73/A PA
(all criminal sanctions regarding patents).

Nullity/counterclaim for revocation
Patents can be invalidated only by decision of a court (Art. 129 PA) – competent specialized IPR courts or the general civil courts.
– The inventor, his successor, persons adversely affected or interested official authorities, acting through the public prosecutor, may bring a nullity action before the courts (Art. 130 PA).
– A nullity action may be instituted during the entire lifetime of a patent and within five years subsequent to the termination of a patent right (Art. 130(2) PA).
– The court’s decision has retroactive effect (Art. 131 PA). Partial nullification is allowed (Art. 129(3) PA).
– There is no post-grant procedure for patents.

Remedies
Cessation of actual infringement and prevention of probable infringement, damages, determination of evidence, seizure, destruction, pecuniary measures, disclosure by means of publication of the court judgment (Art. 137-145 PA).

Other actions
May be issued by the court. Prior to the initiation of proceedings, the claimant must require the owner of the patent to express his views through a notice served by the notary public. Service of notice is a pre-condition for the institution of an action.

Appeal
Appeal against the court’s decision is possible and must be submitted to the Supreme Court. During appeal, only objections on procedural issues are evaluated; technical objections are not examined, as there is no technical judge at the Supreme Court.

Parallel proceedings
There is no provision in the law regarding parallel proceedings between national court and the EPO.

Arbitration/mediation
There is no arbitration or mediation procedure in patent litigation proceedings.

III. Enforcement

After the court’s decision, the bailiff is responsible for enforcing orders during the proceedings (e.g. preliminary injunctions, orders for preserving evidence, freezing orders, etc.).

IV. Compulsory license

The competent courts (specialized IPR civil courts or the general civil courts of first instance) may grant compulsory licenses in cases of non-working, dependent patents and public interest (Art. 99, 100 PA).

V. Relevant national law

Decree-Law No. 551 pertaining to the protection of patent rights, in force as from 27 June 1995, as amended by Law No. 4128 of 7 November 1995 [cited as: PA]

THE UNIFIED PATENT COURT

The Unified Patent Court (UPC) will be a specialized patent court common to the European Union’s Member States. It will be established to decide on disputes relating to European patents and Unitary Patents (European patents with unitary effect). The UPC is based on an international agreement – the
“Agreement on a Unified Patent Court” of 19 February 2013 (UPC Agreement) – which was signed by 25 Member States of the European Union. It will enter into force once ratified by at least 13 Member States, including the three States in which the highest number of European patents had effect in 2012.
By mid-2016, eleven Member States had ratified the UPC Agreement (Austria, Belgium, Bulgaria, Denmark, Finland, France, Luxembourg, Malta, Netherlands, Portugal and Sweden), and several other States had declared their intention to ratify soon. However, as the exact ramifications of the referendum on 23 June 2016 on the United Kingdom’s membership of the European Union are at this point in time not yet fully clear, the date of the UPC Agreement’s entry into force is not known.

Institutional provisions
The UPC will comprise of a Court of First Instance, a Court of Appeal and a Registry. The decentralized Court of First Instance will comprise a central division – with seat in Paris and sections in London and in Munich – as well as a number of local and regional divisions set up in the Member States. The common Court of Appeal will have its seat in Luxembourg. A training center for judges has opened in Budapest and the first training sessions for judges have already taken place. A patent arbitration and mediation center will be shared between Lisbon and Ljubljana.

Competence ratione materiae
The UPC will have exclusive competence to hear (a) infringement actions, (b) actions for declarations of non-infringement, (c) actions for provisional and protective measures and injunctions, (d) revocation actions, (e) actions for damages or compensation derived from the provisional protection conferred by a published European patent application, (f) actions relating to rights based on prior use of an invention and (g) actions for compensation for licenses of right. It will also deal with counterclaims for revocation and other defenses (e.g. counterclaims relating to licenses, Bolar exemption). Finally, it will hear actions (ex parte) against decisions which the EPO takes when carrying out tasks related to Unitary Patent protection. The UPC will also deal with the infringement and validity of supplementary protection certificates issued for products protected by a European patent or a Unitary Patent. The national courts of the Member States will remain competent for actions which do not come within the exclusive competence of the UPC, e.g. cases relating to compulsory licensing of Unitary Patents.

Competence ratione loci
As regards the competence of the particular divisions of the Court of First Instance, infringement actions and actions for provisional and protective measures and injunctions will in general be brought before either:
– the local division hosted by the Member State where the actual or threatened infringement has occurred or may occur, or the regional division in which the Member State participates, or
– the local division hosted by the Member State where the defendant is domiciled, or the regional division in which this Member State participates.
The central division of the Court of First Instance will hear:
– actions for declarations of non-infringement,
– revocation actions,
– actions (ex parte) against decisions of the EPO, and
– actions which would have been brought to a local or regional division in a Member State, if that State neither sets up a local division nor participates in a regional division. The central division may also hear infringement actions in the following cases:
– a plaintiff may bring an infringement action before the central division against a defendant domiciled outside the Member States;
– where a revocation action is already pending at the central division, the patent proprietor may bring an infringement action before the central division;
– finally, where an infringement action is pending before a regional division and the infringement has occurred in the territories of three or more regional divisions, the defendant may obtain that the action be referred to the central division.
Parties may agree to bring actions before the division of their choice (except ex parte actions, which will always be heard by the central division).

Allocation of cases to the central division’s seat and sections
The central division’s seat in Paris will deal with cases relating to patents in Classification Sections B (performing operations; transporting), D (textiles; paper), E (fixed constructions), G (physics) and H (electricity). The section in London will deal with patents in Classification Sections A (human necessities) and C (chemistry, including pharmaceuticals), while the section in Munich will deal with patents in Classification Section F (mechanical engineering).

Discretion of local and regional divisions to deal with counterclaims for revocation
When the defendant raises a counterclaim for revocation in the course of infringement proceedings, four options are available to a panel of a local or regional division. It may:
– deal with the whole case (infringement action and counterclaim for revocation) once a technically qualified judge has been allocated to it,
– refer the counterclaim to the central division and deal with the infringement action,
– refer the counterclaim to the central division and stay the infringement action, or
– refer the whole case to the central division.

Amendment and revocation
Whenever the validity of a patent is challenged in proceedings before the UPC – be it in a revocation action or by a counterclaim for revocation – the patent proprietor may lodge an application to amend the patent. The UPC may revoke a European patent or a Unitary Patent, either in full or in part, only on the grounds listed in Articles 138(1) and 139(2) EPC. If the grounds for revocation affect the patent only in part, the patent will be limited by a corresponding amendment of the claims and revoked in part. Decisions will have retroactive effect.

Parallel proceedings at the UPC and at the EPO
A party may bring a revocation action to the UPC:
– without having to start opposition proceedings at the EPO beforehand, or
– even though it has already started opposition proceedings at the EPO.
Where parallel proceedings are pending, the UPC will have discretionary power to either stay its proceedings or proceed with the case. The UPC may in particular stay proceedings when a rapid decision may be expected from the EPO. It may also request that opposition proceedings before the EPO be accelerated in accordance with EPO procedures. In any event, where an action has been brought before the UPC, a party will have to inform the UPC of any opposition, limitation or revocation proceedings pending at the EPO.

Role of the CJEU
The UPC will apply EU law in its entirety and respect its primacy. As any national court, whenever a question of interpretation of EU law arises, the UPC will send a request for a preliminary ruling to the Court of Justice of the European Union (CJEU). EU law which could be of particular relevance in patent litigation includes (a) Directive 98/44/EC on the legal protection of biotechnological inventions, (b) Directive 2004/48/EC on the enforcement of IP rights, (c) Regulation 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels I) (d) Regulations 1257/2012 and 1260/2012 on Unitary Patent Protection and (e) Articles 101 and 102 TFEU.

Composition of panels
At first instance, a panel of a local and regional division will in general be composed of three legally qualified judges. A fourth technically qualified judge will often be allocated to the panel (on request by a party or when a counterclaim for revocation is to be dealt with). All panels of the UPC will have a multinational composition. At first instance,
– on the panel of a local division hearing more than 50 cases per year, two judges have to come from the State hosting the division and one from another State;
– on the panel of a local division hearing fewer than 50 cases per year, one judge has to come from the State hosting the division and two from other States;
– on the panel of a regional division, two judges have to come from States hosting the division and one from another State.
In the central division, a panel will in general comprise two legally qualified judges (who are nationals of different Member States) and one technically qualified judge. Only when it hears actions (ex parte) against decisions of the EPO will the panel sit in a composition of three legally qualified judges of different nationalities. Parties may agree to have their case heard by a single legally qualified judge.
In the Court of Appeal, a panel will sit in a multinational composition of five judges (three legally and two technically qualified). Only in ex parte cases will the panel sit in a composition of three legally qualified judges.

Parties to proceedings and representation
Actions may be brought by the patent proprietor and by the holder of an exclusive license. In addition, any other natural or legal person, or anybody concerned by a patent and entitled to bring actions in accordance with its national law, may bring actions before the UPC. Parties must be represented either by lawyers authorized to practice before a court of a Contracting Member State (attorneys-at-law) or by European Patent Attorneys entitled to represent parties before the EPO with appropriate qualifications in patent litigation, such as the “European Patent Litigation Certificate”. Representatives may be assisted by patent attorneys who may address the UPC.

Powers of the UPC and award of damages
Inspired by Directive 2004/48 on the enforcement of IPR, the UPC Agreement provides the UPC with wide powers to issue orders and impose measures, procedures and remedies. The UPC may for example:
– order provisional measures to preserve evidence,
– order the inspection of premises,
– order a party to produce evidence (even inaudita altera parte),
– appoint court experts,
– order a party not to remove from its jurisdiction any assets, or not to deal with any assets (freezing orders),
– grant provisional and protective measures against an alleged infringer, including seizure and delivery up of products suspected of infringing a patent.
Where the UPC finds that a patent has been infringed, it may:
– grant permanent injunctions aimed at prohibiting continuation of the infringement,
– order corrective measures such as recalling the infringing products from the channels of commerce or even their destruction or
– order the infringer to communicate information such as origin and distribution channels of the infringing products, quantities produced and identity of any third person involved in the production or distribution of the infringing products.
The UPC may also award the injured party damages appropriate to the harm actually suffered as a result of the infringement. However, damages must not be punitive.

Appeal and rehearing
An appeal against a decision of the Court of First Instance may be brought before the UPC’s Court of Appeal by any party which has been unsuccessful, in whole or in part, in its submissions. The appeal may be based on points of law and matters of fact. Very exceptionally – in the event of a fundamental procedural defect or on discovery of a decisive and unknown fact (based on an act which has subsequently been held to constitute a criminal offence) – the Court of Appeal may set aside a final decision of the UPC and re-open the proceedings for a new trial and decision.

Opt-out scheme
The UPC Agreement provides applicants and patent proprietors with a possibility to opt out from the exclusive jurisdiction of the UPC. The opt-out scheme is available for:
– any European patent granted before the end of a seven-year transitional period (which will start on the date of entry into force of the UPC Agreement), and
– any European patent application filed before the end of the seven-year transitional period.
The opt-out scheme only concerns European patent applications and European patents. For Unitary Patents there is no possibility to opt out from the exclusive jurisdiction of the UPC. An opt-out must be notified to the UPC’s Registry by the applicant or the patent proprietor no later than one month before the end of the seven-year transitional period. The Registrar will be responsible for keeping and publishing a list of opt-out notifications, so that third parties can ascertain in advance that a particular application or patent will not fall under the jurisdiction of the UPC. Where an opt-out has not been notified for a European patent application or European patent and proceedings in respect of that patent are brought before the UPC, an opt-out for that patent can no longer be notified. This applies whether proceedings have been brought by the applicant, the patent proprietor or a third party. Where a patent proprietor has notified an opt-out for a particular European patent, litigation relating to that patent must be brought before the national courts or other competent authorities of the Member States. Finally, applicants and patent proprietors may withdraw an opt-out at any moment, unless proceedings have been brought in respect of the patent before a national court.

Choice of forum during transitional period
As regards European patents, a seven-year transitional period is provided in which plaintiffs – whether patent proprietors, license holders or third parties – may freely decide to initiate infringement actions and revocation actions either before the UPC or before the national courts or other competent authorities of one or more Member States. Once a plaintiff has chosen a particular forum (having jurisdiction under either national law or the UPC Agreement), that forum will have exclusive jurisdiction to deal with the action. Where proceedings are pending before a national court at the end of the seven-year transitional period, the action will be dealt with by the national court concerned.

Period of limitation
Actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action. Preparations for the start of UPC operations shortly after signing the UPC Agreement on 19 February 2013, the Signatory States established a Preparatory Committee tasked with preparations for the start of. The many tasks to be carried out have been distributed among five Working Groups which are in charge, respectively, of matters relating to (a) the UPC’s IT systems, including an electronic case management system, (b) the UPC’s facilities, including offices, court rooms and stationery, (c) human resources and the training of judges and other staff, (d) finances and (e) the legal framework, including the UPC’s Rules of Procedure and fee scheme, Rules governing the UPC’s Registry, Rules on Mediation and Arbitration, Rules on a European patent litigation certificate for members of epi wishing to represent parties before the UPC, and a Code of conduct for representatives. By mid-2016, the work of the Preparatory Committee was far advanced and expected to be completed before the end of 2016.

Further information about the UPC can be found via its website: https://www.unified-patent-court.org/about.

Benelux Trademark Law

By: Tjeerd Overdijk and Silvie Wertwijn
Benelux Trademark Legal Framework

From a trademark law point of view, the Benelux countries (Belgium, the Netherlands and Luxembourg) are to be regarded as one entity. Consequently, the registration of a trademark can relate only to Benelux as a whole. On September 1 2006 the Benelux Convention on Intellectual Property (Trademark Convention) came into force. The Benelux countries are (as a single trademark entity) a signatory to:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement on the International Registration of Marks; and
• the Madrid Protocol.
As the Benelux countries are (as a single trademark entity) a member state of the European Union, the Community Trademark Regulation (40/94) is applicable.

Unregistered marks

Protection
Article 2(2) of the Trademark Convention states that trademark protection is acquired through registration of a trademark. Article 2(19) further states that only the holder of a registered mark can claim protection, with the exception of the holder of a well-known trademark in the sense of Article 6bis of the Paris Convention. Examples of well-known trademarks are COCA-COLA and NOKIA. Therefore, in general it is not possible to claim protection for unregistered trademarks, even if the trademark is genuinely used throughout Benelux. In other words, a trademark owner can rely on a trademark in court proceedings only insofar as it is registered. Although prior use does not establish trademark rights, it can play an important role in relation to a subsequent trademark application made by a third party. If a trademark applicant knows or should have known of a third party’s prior use in Benelux of an identical or similar trademark for identical or similar goods, its application may be regarded as having been made in bad faith.
Bad faith is one of the grounds for a nullification action. Furthermore, in its landmark Winner Taco judgment of June 2004, the Benelux Court of Justice held that an absolute first user of a trademark which decides to register the mark after noticing that a third party has started using and/or has registered that same trademark can maintain its trademark registration. The third party which has used and/or registered the trademark in the meantime cannot successfully seek nullification of the later registration by the absolute first user, for instance on the grounds that the application was made in bad faith or too late.

Registered marks

Ownership
Any natural or legal person can apply for registration with the Benelux Office for Intellectual Property (BOIP) and own a Benelux trademark. The Trademark Convention sets no conditions regarding the place of business or nationality of the registrant. It is also possible to register a Benelux trademark in the name of more than one person or undertaking. In the case of multiple registrants, each registrant must cooperate if the trademark is assigned or licensed. If the applicant does not appoint a trademark representative with a registered address within the European Economic Area (EEA), the applicant must have a registered address or principal place of business within the EEA or provide the BOIP with an address for correspondence within the EEA.

Scope of protection
Article 2(1) of the Trademark Convention provides that trademarks may consist of any sign capable of being represented graphically – in particular, words (indications), designs, prints, stamps, letters and numerals, and shapes of goods or their packaging – provided that the sign is capable of distinguishing the goods or services of a company. This list is not exhaustive. Therefore, it may be concluded that, for example, sounds, smells and variable signs can be registered as trademarks. However, in practice, the fact that graphical representation is required may present an obstacle to registration. A sign must possess distinctive character in relation to the goods and/or services for which protection is sought. Signs that are devoid of distinctive character cannot be registered as trademarks; neither can purely descriptive marks. The Trademark Convention further indicates that there are three exceptions which are excluded from trademark protection:
• signs that consist exclusively of a shape which results from the nature of the goods themselves;
• signs that consist exclusively of a shape which gives substantial value to the goods; and
• signs that consist exclusively of a shape which is necessary to obtain a technical result.
It is irrelevant whether such a shape has acquired a distinctive character through use; these shapes simply cannot be monopolized. Further, the following marks will not be granted trademark protection:
• marks that are contrary to public policy or accepted principles of morality, or that have not been authorized by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
• marks that are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
• marks that are similar to an older collective trademark for similar goods or services which has lapsed in the three years prior to filing;
• marks that are similar to an older trademark for similar goods or services which has expired in the two years prior to filing, unless the owner of the older trademark has consented to registration or the older trademark has not been genuinely used in Benelux for an uninterrupted period of five years;
• marks that are confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention;
• marks that are the result of a trademark application made in bad faith; and
• marks that consist of a denomination of origin for wines or spirits that originated elsewhere.
There is no limit as to the goods and/or services for which trademark protection can be sought, with the exception of goods or services that conflict with public policy and accepted principles of morality.

Procedures

Examination
The BOIP, based in The Hague, the Netherlands, is the official institution responsible for the registration of trademarks and designs. The applicant can file its trademark online via BOIP Online Filing (in Dutch or French). Alternatively, the applicant may file a paper form (in Dutch or French) by post, by fax or by hand. Upon request of the applicant an availability search will be conducted (before September 1 2006 this availability search was obligatory) to find out if there are any existing trademarks for specific products or services that can obstruct the registration of a trademark. The BOIP provides a search report within three weeks, composed on the basis of specific search criteria for verbal and visual elements. This list is for information purposes only. Upon receipt of the report, the applicant can consider the older trademarks and decide whether to withdraw its application before it is published in the Benelux Trademarks Bulletin. The costs for such availability search are €150 for the basic search (for up to three classes; any additional class costs €20). The BOIP has the authority to refuse a trademark application based on the following absolute grounds:
• The sign is not a trademark in the sense of Article 2(1) of the Trademark Convention (see above);
• The trademark is devoid of distinctive character;
• The trademark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
• The trademark consists exclusively of signs or indications that have become customary in the current language or in the genuine and good-faith practices of the trade;
• The trademark is contrary to public policy or accepted principles of morality;
• The trademark is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services; or
• The trademark consists of a denomination of origin for wines or spirits that originated elsewhere.
Further, EU Regulation 510/2006 on the protection of geographical indications and designations of origin (for agricultural products and foodstuffs) provides that an application for registration of a trademark shall be refused if it relates to product names concerning products of the same class that are registered in accordance with the regulation or if it corresponds to one of the situations referred to in Article 13 of the regulation, provided that the application for registration of the trademark was submitted after the date of publication of the protected status of the geographical indication or designation of origin. A refusal must concern the trademark as a whole. However, refusal of part of the list of goods and services applied for is possible. Testing on absolute grounds also applies to international trademark applications. The BOIP will notify forthwith the applicant of its intention to refuse (partially) the registration and the applicant can object thereto within three months of notification. This period can be extended at the applicant’s request or ex officio by the BOIP. It has become common practice for the BOIP to grant the applicant six months in which to object.

If the BOIP issues a final refusal, the applicant can file an appeal with the competent court of appeal in Brussels, The Hague or Luxembourg, depending on the address given in its application. If neither the applicant nor its trademark representative has an address within Benelux, the applicant can choose one of the three courts of appeal. It is possible to appeal against a court of appeal decision in cassation with the competent supreme court in Belgium, the Netherlands or Luxembourg. Cassation has suspensory effect. The appeal must be filed within two months of the applicant’s notification of the refusal. In the Bovemij (Europolis) case the Benelux Court of Justice held that a court may take into consideration new facts and additional evidence (eg, acquired distinctiveness through use) when deciding the validity or otherwise of a refusal by the BOIP to register the application. However, the Benelux court stated that the applicant may not make any such new factual claims if the aim is to obtain an order for a partial registration or for a registration with restrictions, which would deviate from the application as examined by the BOIP.

Opposition
The owner of an older trademark has a two month period in which to file an opposition with the BOIP, starting from the first date of the month following publication of the application. Once the BOIP has notified the parties that the opposition is admissible, a two-month ‘cooling-off’ period will start to give the parties the opportunity to come to an amicable settlement. This period may be extended at the parties’ joint request. When the cooling-off period has ended the BOIP will notify the parties of the commencement of opposition proceedings. The opposing party must then file its written arguments and further evidence within two months of the notification. The applicant can, within two months of the end of the period for written arguments, reply to these and can also request evidence demonstrating the genuine use of the older trademark. If this evidence is requested, the opposing party will be granted a two-month period to submit this evidence. The opposition proceedings close if the opposing party fails to meet this requirement. If the opposing party succeeds in providing the evidence, the applicant will be granted a two month period to comment on this evidence and, if it has not done so already, to reply to the written arguments initially submitted by the opposing party. If the applicant does not request evidence demonstrating the genuine use of the older trademark, the period for reply is also two months.
Possible grounds for opposition include the following:
• The older trademark is identical and registered for identical goods and/or services;
• The older trademark is identical or confusingly similar and registered for identical or similar goods and/or services and there is a likelihood of confusion (ie, likelihood of association with the older trademark) on the part of the public; or
• The older trademark is a well-known trademark in the sense of Article 6bis of the Paris Convention and the younger trademark is liable to create confusion.

Opposition proceedings can take place only against trademark applications for similar goods and services – on the basis of either an older registration or an unregistered well-known mark in the sense of Article 6bis of the Paris Convention. Opposition proceedings cannot be brought against applications for trademarks which could be infringing on the basis of Article 5(2) of the EU First Trademarks Directive (89/104/EEC). In such cases the trademark owner has recourse to infringement proceedings before the courts of common jurisdiction. The BOIP’s decision on the opposition is subject to appeal and ultimately to an appeal in cassation. The same rules for appeal and cassation apply.

Registration
In general, if no complications (eg, refusal/opposition) arise during the application proceedings, registration will take place within approximately six months of filing. A Benelux trademark registration will remain valid for a period of 10 years, starting from the date of filing. The trademark can be renewed indefinitely for further consecutive 10-year periods. The ® and ™ symbols have no legal status in Benelux. However, the use of these symbols is permitted only for registered trademarks and trademark applications, respectively; otherwise such use will be considered misleading.

Removal from register
Cancellation/surrender: The holder of a Benelux trademark can order the registration of the trademark to be (partially) removed from the register at any time. The removal applies to the whole Benelux area. The trademark will also be removed from the register if the validity period of the registration has expired.

Nullification: Any interested party, including the Public Prosecutions Department, can seek the nullification of a trademark that:
• is not a trademark in the sense of Article 2(1) of the Trademark Convention;
• is devoid of any distinctive character;
• consists exclusively of signs or indicationswhich may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
• has become customary in the current language or in trade;
• is contrary to public policy or accepted principles of morality;
• is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
• is a denomination of origin for wines or spirits that originated elsewhere;
• conflicts, pursuant to EU Regulation 510/2006, with registered names of agricultural products and foodstuffs that are granted protection under this regulation; or
• is similar to an older collective trademark for similar goods or services which lapsed in the three years prior to application, provided that the nullity is invoked within five years of the date of registration.
Further, any interested party (but not the Public Prosecutions Department) can seek the nullification of a trademark that is:
• younger than the application for a similar trademark;
• similar to an older trademark for similar goods or services which expired in the two years prior to application, unless the owner of the older trademark has consented to the registration or the older trademark has not been genuinely used in Benelux for an uninterrupted period of five years (Article 2(4)(d) of the Trademark Convention);
• confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention (Article 2(4)(e) of the Trademark Convention); or
• the result of a trademark application made in bad faith (Article 2(4)(f) of the Trademark Convention).
Nullity under Article 2(4)(d) must be invoked within a period of three years following expiry of the prior registration; nullity under Articles 2(4)(e) and (f) must be invoked within a period of five years following the date of registration. This period of five years shall not apply to trademark registrations referred to in Article 2(4)(e), which were filed in bad faith. The interested party can seek nullification based on these grounds only if the owner of the older trademark participates in the court proceedings. Not mentioned in the Trademark Convention, but accepted in Dutch case law, is the nullification of a trademark based on the fact that the owner is an unknown entity (not to be confused with erroneous spelling of the name of the owner). Depending on the grounds, the action must be brought within three or five years of the date of registration of the trademark in question. An exception is made for a trademark that was applied for in bad faith and that is confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention: in such case no time limit applies.

Revocation: Any interested party can seek the revocation of a trademark for non-use if the trademark is not genuinely used for the goods and services for which it is registered, in the course of trade in Benelux, for an uninterrupted period of five years. Such genuine use also exists if the trademark is used by the manufacturer only in its trade with distributors which sell the product under their own trademark.
Other grounds for revocation include the following:
• The trademark has become a generic term due to the trademark owner’s inactivity; or
• The trademark may deceive the public, for instance as to the nature, quality or geographical origin of the goods or services. Revocation can no longer be sought if the trademark owner starts to use or resumes use of its trademark before the action is filed. This ‘revival’ of the trademark is often referred to as ‘Heilung’. However, Heilung is not possible if an imminent revocation action comes to the attention of the trademark owner and the trademark owner begins using or resumes use of its trademark in the three months prior to the revocation action. Further, where a trademark is at risk of revocation for non-use, the trademark owner can no longer enforce its trademark rights against a third party that registers a conflicting mark while its own trademark is vulnerable to revocation; nor can the trademark owner oppose the use of that new trademark. The nullification or revocation of a trademark must be sought in court. If the court decides that the trademark is indeed null and void or is liable to revocation, it will order the cancellation thereof ex officio. Invalidation: A third party cannot have a trademark registration declared invalid because it has been incorrectly registered – for example, because a three-dimensional trademark is registered as a two-dimensional trademark. In certain circumstances the third party can seek revocation of the trademark because it is not genuinely used as registered – for example, if a registered figurative trademark is restyled and used in a completely different way by the trademark owner. If the trademark owner itself wishes to amend its trademark registration because it was incorrectly registered, the only option is to file a new application.

Enforcement
Benelux trademark law: It is not possible to claim protection for unregistered trademarks in Benelux. Prior use of a trademark plays a role only if nullification is sought of a bad-faith trademark application, meaning that the trademark applicant knew or should have known of a third party’s prior use of an identical or similar mark in Benelux. If a trademark application is pending, it is possible to claim ‘reasonable compensation’ from a party that infringes the trademark right between publication of the trademark application and registration. If necessary, the trademark applicant can obtain an accelerated trademark registration upon payment of an additional fee.
In Benelux, enforcement of a registered trademark is possible against:
• identical trademarks for identical goods or services;
• confusingly similar trademarks for identical or similar goods or services;
• identical or similar trademarks for different goods or services, if the earlier trademark is well known in Benelux and the later trademark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark; and
• identical or similar signs that are not used as trademarks (eg, company names) if the sign takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark and there is no valid reason for use of this particular sign.
A valid reason might be an older company name, use of a sign in comparative advertising or use related to free speech (eg, in a news item). It is also possible to enforce a registered trademark right which is well known in Benelux against an identical or similar trademark registered for identical or similar goods or services if the later trademark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark. In Benelux, there is no separate court action based on dilution. Since dilution results from damage caused to the distinctive character of an earlier trademark, dilution is one of the possible grounds for an infringement action.

Procedural law: The enforcement of a registered trademark right is a matter of national civil law, which varies in the different Benelux countries. An injunction will be allowed for the entire Benelux area. Further, damages and legal costs can be claimed. In the Netherlands, for example, any party with an urgent interest of any kind may seek temporary injunctive relief and temporary court orders from the summary judge of a competent district court. In IP infringement cases the urgent interest is normally assumed. In most cases a court order will be enforceable with the help of a penalty that will be due if the defendant fails to comply with the order.

Ownership changes and rights transfers
The BOIP does not require the provision of legalised documents in order to assign (partially) a trademark to a new owner. It is sufficient to furnish the BOIP with any document which clearly demonstrates that the trademark has been assigned. This document can be a deed of assignment, or an agreement or extract thereof. However, it must be an original document signed by the parties or a certified copy. In order for the assignment to have external effect with respect to third parties, the assignment must be recorded in the Benelux Trademarks Register. This also applies to a licence in respect of a trademark.

Related rights
In Benelux, a figurative mark or threedimensional trademark can also be eligible for protection as a design or as a copyrighted work of art, provided that the requirements for such protection are satisfied. A design can be protected in Benelux if it is new and has individual character in relation to existing designs. A work of art with individual and original character is eligible for copyright protection. Signs that cannot be considered as a trademark – for example, because they are too complicated to distinguish the goods or services of an undertaking – may be eligible for copyright protection.

Online issues
There is no special legislation governing trademark use and protection on the Internet. Trademark law plays an important role in relation to third-party registration of domain names and the use of metatags. Domain names are usually registered on a first come, first served basis and in principle a third party cannot oppose the registration. If the domain name is a registered trademark, however, the trademark owner can oppose the domain name under the Trademark Convention. It is even possible to oppose a domain name if it is not used as a trademark (to distinguish identical or similar goods and/or services). In such case the trademark owner must establish that:
• the domain name takes unfair advantage of, or is detrimental to, the distinctive character or repute of its earlier trademark; and
• the domain name registrant has no valid reason to use this particular domain name.
The same applies to third-party use of a trademark as a metatag.

Japan Trademark Law

By Hitomi Iwase, Tamao Shinbo and Shinichiro Hara
Japan Trademark Legal Framework

National
The Trademark Law and its related regulations govern the registration and protection of trademarks in Japan. In addition, the Unfair Competition Prevention Law protects well-known trademarks, both registered and unregistered, as well as certain configurations of goods, from unauthorized use.

International
The following international treaties apply in Japan:
• the Paris Convention for the Protection of Industrial Property;
• the Trademark Law Treaty;
• the Nice Agreement on the International Classification of Goods and Services;
• the Madrid Protocol; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

Unregistered marks

Trademark Law
Under the Trademark Law, unregistered marks are protected only in certain circumstances. Prior user’s rights: Even if an unregistered mark is identical or similar to another’s registered mark, a prior user may continue to use the mark provided that:
• at the time of the subsequent trademark application the unregistered mark is well known to consumers or dealers in Japan for goods or services relating to the prior user’s business; and
• the prior user has no intention of engaging in unfair competition in its use of the unregistered mark.
The prior user:
• may not seek an injunction or compensatory damages against the infringer;
• may use its unregistered mark only within the specific region in which the mark was used at the time of the subsequent trademark application, and only in relation to the goods or services for which it was used at the time; and
• may assign the mark only along with its business.

Unfair Competition Prevention Law
Unregistered marks that are well known or famous, as well as certain configurations of goods, are protected under the Unfair Competition Prevention Law. The law provides that where unfair competition causes damage to a person’s business, that person may seek an injunction and, if the damages were caused negligently or intentionally, compensatory damages. ‘Unfair competition’ includes:
• use of another’s mark that is well known to consumers or dealers as identifying its goods or business, thus causing confusion (or the likelihood of confusion) with that party’s goods or business;
• use as one’s own of another’s mark that is famous to consumers or dealers as identifying its goods or business; or
• imitation of the configuration of another’s goods (except when such configuration is indispensable for ensuring the function of the goods themselves).

Registered marks

Ownership
An individual or corporation that intends to use a trademark for goods or services related to its business may apply for trademark registration and own a trademark right. Actual use is not a requirement for trademark registration.

Scope of protection
Protected: The Trademark Law provides that a trademark should be recognisable by human perception and shall consist of characters, figures, signs, three-dimensional (3D) shapes, colours or any combination thereof, or sounds, and be used for goods or services relating to the applicant’s business. In April 2015, motion marks, hologram marks, colour marks per se, sound marks and position marks also became registrable as trademarks. A trademark right is granted when an examiner of the Japan Patent Office (JPO) determines that the mark meets all registration requirements. It is an exclusive right to use the mark with respect to designated goods or services, which becomes effective throughout Japan upon registration of the trademark with the JPO. The Trademark Law follows the first-to-file principle.

Not protected: Under the Trademark Law, a trademark application will be rejected unless the following substantive requirements are satisfied:
• The mark is sufficiently distinctive for consumers to distinguish the applicant’s goods or services from those of others;
• The mark qualifies as registrable under the Trademark Law; and
• The application does not violate any treaties.
Some trademarks that lack distinctiveness – excluding generic terms – may still be registered if the applicant can prove that they have acquired distinctiveness for specific uses. Further, a well-known trademark consisting of a geographical name and a generic term for a product or service that is owned by an industrial business cooperative association, a commerce and industry association, a chamber of commerce and industry or a specified non-profit corporation (including an equivalent foreign legal entity) may be registered, provided that it fulfils the other requirements. Even if a mark is sufficiently distinctive, it will be rejected if it falls under one of the various bars set out in Section 4 of the Trademark Law concerning the public interest or an individual interest.

Examples of public interest prohibitions include:
• trademarks that consist of a national flag, coat of arms or other insignia of Japan or any foreign nation, the Red Cross or similar;
• trademarks offending public order or morality;
• trademarks that are misleading as to the quality of the goods or services;
• 3D trademarks comprising solely functional features that are essential to the use or purpose of the goods or their packaging; and
• trademarks that comprise foreign well-known trademarks and are used in bad faith.

Examples of individual interest prohibitions include:
• trademarks comprising the name or portrait of another person;
• trademarks that are identical or similar to another’s well-known mark and used for identical or similar goods or services;
• trademarks that conflict with a prior registration;
• trademarks that cause confusion with respect to the source of the goods or services;
• trademarks for wines or spirits that indicate regional origin in a manner prohibited by the TRIPs Agreement or the JPO; and
• trademarks that are identical or similar to another’s well-known trademark in Japan or abroad as identifying the relevant goods or services if the applicant uses such mark in bad faith.

Measures against non-use of trademark: Where there is justifiable doubt as to whether the applicant is conducting, or is planning to conduct, business in connection with the designated goods or services, the examiner will preliminarily reject the mark and notify the applicant of the reasons why. This refusal may then be overturned if the applicant certifies the use or intended use of the trademark under the application where it has designated:
• a wide range of goods or services;
• two or more dissimilar retail services; or
• general retail services.

Procedures

Examination
An applicant may file a trademark application with the JPO in person, by mail or online. Once formal registration requirements are satisfied, the examiner will consider whether the application meets the substantive requirements for registration. If the examiner finds reasons to reject the application, he or she will notify the applicant accordingly within 18 months. The applicant may submit written arguments or amendments in response. If the applicant does not reply to the JPO’s notice, or if its written arguments or amendments fail to overturn the reasons for rejection, the JPO will issue a refusal decision. The applicant may appeal the JPO’s decision, which will become final and conclusive if no appeal is sought. If an appeal is requested, the application will be scrutinised by a panel of trial examiners. If the panel issues an unfavourable ruling, the applicant may appeal to the IP High Court; if it fails to do so, the rejection decision becomes final.

Registration
If the examiner determines that there are no reasons to reject the application, or if such reasons are defeated, he or she will issue a registration decision. It takes an average of five months from filing an application to a registration decision, if the JPO finds no reason to reject the application. A trademark right is established upon registration of such right with payment of the registration fee. The trademark registration will then be published in the Trademark Gazette. The term of protection lasts for 10 years from the date of registration. The trademark right may be renewed every 10 years by filing a request for renewal within six months prior to the expiration date.

Opposition
Anyone may file an opposition to registration within two months of the trademark being published in the Trademark Gazette. Once an opposition is filed with the JPO, the panel of trial examiners will consider whether it has merit.The grounds for opposition are similar to those for rejection (ie, lack of distinctiveness and unregistrability). However, an opposition may also be filed if the trademark application conflicts with a prior application.If the JPO intends to accept the opposition and revoke the registration, it must provide notice of the reasons for this and give the rights holder an opportunity to contest such notice.If the rights holder succeeds in its arguments against opposition, the trademark registration will be maintained; otherwise, it will be revoked. The opponent may take no action against a decision to maintain the registration. Thus, in order to contest a registration once maintained, the opponent must demand an invalidation trial.In case of a decision to revoke registration, the rights holder may appeal to the IP High Court. If it does not appeal, the decision becomes final and conclusive.

Removal from register
Aside from successful opposition, a registered trademark may be removed from the Trademark Register for the reasons outlined below.

Cancellation/surrender: A rights holder may voluntarily cancel its trademark right. The cancellation may apply to all or only some of the designated goods or services.

Invalidation: An interested party may request a trial to invalidate a trademark registration on the basis of similar grounds to those available in an opposition to trademark registration; additionally, invalidation may be sought based on facts that occurred after registration.An invalidation trial may be commenced even after a registered trademark right has expired or has been relinquished. However, an invalidation trial based on grounds such as lack of distinctiveness or individual interest prohibitions may not be brought more than five years after the date of registration.Once a decision to invalidate a registration has become final, in principle, the trademark right is retroactively deemed never to have existed.

Revocation: Anyone may request a trial to revoke a registered trademark based on the following grounds:
• Non-use – if a registered trademark has not been used in Japan by a rights holder or its licensee for at least three consecutive years.
• Improper use – if a rights holder or its licensee uses a registered trademark in an improper manner.
• Similar trademarks owned by different persons – if similar registered trademarks come to belong to different persons as a result of the transfer of a registered trademark right, and one person uses such mark with the intention of committing an act of unfair competition and in a manner that may cause confusion with the other’s goods or services.
Where a trademark owner’s rights are registered in a country that either is a signatory to the Paris Convention or the Trademark Law Treaty, or is a member of the TRIPs Agreement, the rights holder may seek revocation of a Japanese trademark registration if its agent or representative files the trademark application without the owner’s authorisation within five years of such unauthorised registration.

Searches
The JPO provides a public database called the Japan Platform for Patent Information, in which trademarks can be searched in a variety of ways.

Enforcement

Trademark Law
The unauthorised use of a mark that is identical or similar to a registered trademark in relation to identical or similar goods or services constitutes infringement. The Trademark Law provides that certain preparatory activities shall be deemed to constitute infringement. These include:
• the possession of the designated goods, or goods similar to the designated goods or services, affixed with the registered trademark or a trademark similar thereto on the goods or their packaging for the purpose of assignment, delivery or export; and
• the manufacture, assignment, delivery or import of products to be used exclusively for the manufacturing of products indicating the registered trademark or a trademark similar thereto.
Where infringement occurs, the owner of the registered trademark (or its registered exclusive licensee) may enforce its rights by filing a trademark infringement suit in district court. Alternative dispute resolution before certain private entities, such as the Japan Intellectual Property Arbitration Centre, may also be considered. Remedies for trademark infringement available under the Trademark Law are outlined below.

Civil remedies: The plaintiff may seek an injunction against an infringing party (or a party that is highly likely to infringe) which acts with or without negligence or wilfulness. Together with an injunction, the plaintiff may seek an order for destruction of the infringing goods and removal of the facilities used to commit the infringement, as well as other measures necessary to prevent the infringement. The plaintiff may also seek a preliminary injunction. To obtain this, the plaintiff must show irreparable harm due to the infringement; courts sometimes require that a bond be posted. In the case of negligent or intentional infringement, compensatory damages are also available. Under the Trademark Law, an infringer’s negligence is presumed. To ease the burden of assessing damages, the Trademark Law provides the following optional measures for calculating damages:
• the owner’s expected profit per item multiplied by the number of infringing items sold, to the extent of the owner’s production or sale capability;
• the actual profit made by the infringer; or
• an amount equivalent to the deserved royalties.
Where the rights holder proves the amount using one of these measures, this will be presumed to be the damages incurred. However, the rights holder may seek actual damages exceeding this by proving the amount of such damages. A plaintiff may additionally claim other damages, such as consequential damages (eg, intangible damage to brand reputation) and attorneys’ fees, although the courts tend to affirm claims for attorneys’ fees only to a limited extent. There are no punitive damages under the applicable Japanese laws. The rights holder may seek an order for rehabilitation of brand reputation, including corrective advertising.
Criminal penalties: Intentional trademark infringements are subject to criminal penalties of up to 10 years’ imprisonment and/or a fine of ¥10 million in certain cases.

Unfair Competition Prevention Law
Civil remedies: The owner of either a registered or unregistered trademark whose business has suffered (or is likely to suffer) damage from unfair competition may file suit in a district court seeking an injunction against an infringing party (or a party that is highly likely to infringe), regardless of whether that party is acting negligently or wilfully. The plaintiff may also seek an order for the destruction of the infringing goods and removal of the facilities used to commit the infringement, as well as other measures necessary to prevent the infringement. In case of negligent or intentional infringement, the rights holder may claim compensatory damages. As with the Trademark Law, the Unfair Competition Prevention Law also provides optional measures for calculating the rights holder’s damages. However, unlike under the Trademark Law, negligence is not presumed.

Pursuant to the Civil Code, the plaintiff may also seek:
• restitution for unjust enrichment for infringement, with or without negligence or wilfulness; and
• an order for rehabilitation of brand reputation, including corrective advertising in the case of negligent or intentional infringement.
Criminal penalties: The misappropriation of a well-known mark with the intent to commit an act of unfair competition is punishable by imprisonment and/or a fine.

Appeals
A party which is not satisfied with the district court’s decision may appeal to the competent appellate court, whose decision may subsequently be appealed to the Supreme Court on limited grounds.

Ownership changes and rights transfers
Assignment
A rights holder or applicant may assign its rights relating to the trademark or trademark application.
Assignment of status as applicant: The assignor or assignee must file a notice of change of ownership with the JPO. The assignment will take effect once such notice is filed.
Assignment of registered trademark: An application to register the transfer of a trademark right must be filed either by both the assignor and the assignee, or by the assignee alone if it has obtained such consent from the assignor.The change in ownership will take effect once it is entered in the Trademark Register.

General succession
If an applied-for or registered trademark transfers by merger, inheritance or other general succession, this will have immediate effect. However, the successor must notify the JPO by filing a notice of change of ownership of the application (before registration) or an application to register the transfer of the trademark right (after registration).

Licensing
Exclusive licences (senyo shiyoken) must be registered to be effective. While registration is not compulsory for non-exclusive or exclusive licences other than senyo shiyoken, registration will allow the licensee to maintain its rights to the trademark in the event of any third party’s subsequent acquisition and/or exclusive licence for such trademark right.

Related rights
Where a trademark – especially a 3D trademark – is a new technological invention or device, it may also be protected as a patent under the Patent Law or as a utility model under the Utility Model Law. If the trademark is a new, functional and ornamentally featured design, it may also be protected as a design under the Design Law. However, these rights are protected only if they are registered with the JPO. Where the trademark is an original and creative expression as a result of intellectual or cultural activities, it will also be protected under the Copyright Law, without any registration. The Corporation Law prohibits the bad-faith use of a trade name or company name that causes confusion with a different company’s name.

Online issues
The Trademark Law provides that the ‘use’ of marks includes use on the Internet in the following manner:
• providing trademarked goods or services via the Internet (eg, online distribution of trademarked products);
• providing services through a website displaying a trademark (eg, mobile banking services displaying trademarks on the monitor or screen); and
• providing information consisting of advertisements, price lists or other business documents relating to trademarked goods or services on or through the Internet.
Protection under the Unfair Competition Prevention Law extends to an act of unfair competition on the Internet. With respect to cybersquatting, the Unfair Competition Prevention Law protects owners of registered and unregistered marks by providing that no one may obtain, keep or use in bad faith a domain name that is identical or similar to a trademark owned by a third party.

Germany Trademark Law

By Erik Schäfer and Ulrike Alice Ulrich
Germany Trademark Legal Framework

National law
The following are enforceable in Germany: German trademarks, Community trademarks (CTMs), German trademarks based on international registrations, names and non-registered trade designations. German trademarks are governed by the Trademark Act, which implements the EU Trademark Directive (89/104/EEC) and the Regulation on Trademark-Related Administrative Proceedings. CTMs are governed by the EU Community Trademark Regulation (207/2009) and the Community Trademark Implementing Regulation (2868/95). International registrations that extend to Germany are governed by the Madrid Protocol and the Trademark Act. Names and non-registered commercial designations are governed by the Civil Code and the Trademark Act.

International treaties
Germany has also acceded to several multilateral and bilateral international treaties, such as the Paris Convention for the Protection of Industrial Property, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Agreement on Trade-Related Aspects of Intellectual Property Rights (see www.wipo.int/wipolex/en/ and www.dpma.de/english/index.html).

Unregistered trademarks
Commercial designations are protected against newer identical or confusingly similar trade designations once they are first used in Germany, but details of this protection can be complex (eg, the protection may be locally restricted and there may be coexistence in the case of natural persons with the same name). Unregistered trademarks and other commercial designations (eg, business symbols) are protected against newer identical or confusingly similar trademarks and commercial designations only from the date on which they acquire a sufficient degree of public recognition in the specific German market. The required minimum threshold is determined on a case-by-case basis. If the sign is distinctive, a degree of recognition from between 20% and 25% of relevant consumers is sufficient to pass the threshold test. However, if the sign is descriptive or not distinctive for other reasons, it must also have acquired distinctiveness through use in Germany. Accordingly, the threshold for this is set at 50%. Unregistered trademarks used only outside Germany to the required substantial degree may be afforded protection in accordance with Article 6bis of the Paris Convention only if the mark is well known. This will usually require between 60% and 70% recognition. These requirements must be proved by opinion polls conducted in accordance with requirements established by precedent.

Registered trademarks
Any natural or legal person may apply for and own a trademark. While representation is not necessary before the German Patent and Trademark Office (DPMA) or the Federal Patent Court – which has jurisdiction over certain trademark matters (although not infringement cases) – applicants or owners with no domicile, seat or commercial establishment in Germany must appoint a German representative. German attorneys at law and German patent attorneys must be duly empowered, although no power of attorney need be submitted to the DPMA or the Patent Court. Other representatives must submit a power of attorney in writing (either in German, or the original with a German translation). No notarisation is required. However, foreign applicants and owners may need to comply with their local formal requirements. Registration may be applied for a mark that consists of any sign capable of being represented graphically – particularly words, numbers, graphical devices and three-dimensional shapes. Other signs are capable of registration to the extent that they can be graphically represented (eg, colour (combinations), sound sequences and scents). The graphically represented sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings in a legal manner. Signs are not eligible for registration if they:
• are devoid of any distinctive character;
• are descriptive;
• are used by competitors to describe their goods and services;
• consist exclusively of the shape which results from the nature of the goods as such, are necessary to obtain a technical result or give substantial value to the goods;
• are contrary to public policy or accepted principles of morality;
• could potentially deceive the public – for example, in regard to the nature, quality or geographical origin of the goods or services;
• consist of legally protected signs and have not been authorised by the competent authorities; or
• have been applied for in bad faith.
However, the grounds mentioned under the first to third points above may be overcome by acquiring around 50% distinctiveness.

Procedures
The DPMA will examine the trademark application with regard to formalities (eg, correct classification of goods and/or services and full payment of the application fees) and absolute grounds for refusal. Any deficiency will be raised by the DPMA in an official action granting the applicant at least one month in which to reply. These periods are extendable on request. This decision may in turn be appealed within one month of notification, by either an administrative appeal to the DPMA or a direct full appeal to the Patent Court, depending on the status of the person at the DPMA who first issued the decision. A decision of a DPMA appeal division may be appealed to the Patent Court. Decisions of the court may, on rare occasions, be appealed to the Federal Court. Publication and registration of a trademark occur when the DPMA has issued the allowance (without any official action, this is likely to be completed between three and six months from the application, although can vary greatly). The trademark has effect with regard to third parties from the date on which it is recorded in the Trademark Register, which is also the date from which the five-year grace period is calculated within which the trademark must be put to genuine use, unless an opposition is filed. In the case of an opposition, the start date is deferred to the date on which a final decision is reached on the opposition. An opposition may be filed three months after a trademark registration is published, provided that the corresponding fees are also paid. The rights on which the opposition is based and its scope must be clearly indicated.

A separate opposition must be filed for each right on the basis of which the newer mark is opposed. Generally, opposition proceedings are documentary proceedings with no oral hearing. A typical case will involve one or two rounds of short submissions. Currently it can take at least a year for the first decision in opposition proceedings before the DPMA. An opposition may be based on older German trademarks and CTMs, international trademarks in force in Germany and trade designations which are protected in Germany. It is also possible to base an opposition on older trademark applications. An admissible opposition that is based on older rights will succeed if the newer mark or the goods and services claimed in its specification are identical or (confusingly) similar to the older right on which the opposition is based. This includes a danger of association with the older mark. Basically, the scope of protection afforded to older well-known, famous or notorious trademarks will be broader. If the mark must be used, the owner of the opposed newer mark may contest genuine use. In such a case the opponent must establish genuine use during the preceding five-year period to the satisfaction of the DPMA in written proceedings. An important difference in comparison with CTM opposition proceedings is that the relevant usage period rolls forward (ie, genuine use must have taken place when the newer mark was applied for and continue until the date on which the final decision is made), unless non-use is exceptionally excused.

An opposition can also be based on the grounds that the opposed trademark was registered in the name of an agent or other representative of the (normally foreign) trademark owner. If and to the extent that an opposition succeeds, the opposed trademark will be expunged from the register once the ruling is final and binding. Any owner may relinquish its trademark completely or with regard to certain goods and/or services by filing a corresponding written request with the DPMA at any time.A trademark that is not put to genuine use within five years of the date of registration or, as the case may be, the final decision in opposition proceedings is deemed invalid. However, as long as maintenance fees are paid, the mark will continue to exist on the public records, because no declaration or evidence of use is required. If a trademark must be genuinely used, any third party may file a request for revocation at any time. If the owner does not object to this within two months, the mark will be revoked. In case of an opposition, the third party is informed and may then file a revocation action based on non-use with the exclusively competent German regional court. If the owner has commenced genuine use before the revocation request is filed, the trademark will not be revoked even if it had not been used for more than five years. However, use that commences less than three months before the cancellation request after the owner became aware of its potential filing will not be considered. Any party may file a request for revocation, and the trademark may be cancelled, if:
• the trademark has become the common name in the trade for the goods or services in respect of which it is registered as a consequence of acts or the inactivity of the owner; or
• use made of the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Further, any party may file a request for revocation if the owner is not fulfilling its legal requirements. The trademark may also be revoked and cancelled due to the existence of absolute grounds for refusal if the obstacle to protection still exists at the time that the decision on the application for cancellation is made and cancellation is requested within 10 years of the registration date. In respect of an enumerated number of grounds, a trademark may be cancelled ex officio if the procedure is commenced during the first two years after the registration date and the registration manifestly contravenes a finite number of provisions. These grounds may apply only to some of the goods and services for which the trademark is registered, in which case the cancellation will concern only that part of the trademark.

As an alternative to opposition proceedings, the owner of older rights may file at any time a request for cancellation based on an older trademark or trade designation in force in Germany. However, even if the other requirements are met, the registration may not be cancelled if the owner of the older mark has knowingly tolerated the use of the newer mark for the goods or services in respect of which it is registered for a period of five consecutive years – unless the newer mark was obtained in bad faith or the owner of the older right previously consented to registration and use. Further, cancellation is not possible if the older mark could have been cancelled on the date of publication of registration of the younger trademark. Cancellation requests based on original or subsequent absolute grounds for refusal, lack of standing to own a trademark and lack of genuine use may be filed with the DPMA. An action for cancellation for revocation or because of the existence of earlier rights (only by the owner of such rights) may also be commenced before the competent higher regional court. The trademark may be renewed 10 years after the application filing for some or all of the goods and services for which it is registered by payment of the applicable maintenance fee. All renewals and deletions will be recorded in the register, which may be accessed online at www.register.dpma.de.

Enforcement
Civil infringement proceedings may be based on a conflict with older rights. Typically, infringement claims will first be asserted against the infringer by sending a warning letter that requests it to cease and desist with a contractual penalty clause. Unless the infringer gives such an undertaking, the action requesting an order to cease and desist will remain admissible. The rights holder may seek an interlocutory injunction from the competent regional higher court (the competence of specific chambers is concentrated on the state level in a few courts in each state) if the matter is urgent. The petitioner must request injunctive relief soon after learning about the infringement (this period is not legally defined, although it is generally agreed to be within four weeks). Unless the infringer acknowledges the court order as final and binding, the petitioner will have to institute normal infringement proceedings. The following remedies are available in civil infringement proceedings:
• claims to cease and desist, which do not depend on the infringement being culpable;
• claims for actual damages (which may be demonstrated via three alternative methods: licence analogy; actual damages suffered by the rights holder; and profits made by the infringer which are attributable to the infringement, or unjust enrichment;
• claims for destruction and recall, or permanent removal from sale, unless this would be disproportionate;
• claims for information concerning the origin and sales channels of unlawfully marked goods or services (in special cases, these claims may also exist against certain third parties);
• claims that the infringer submit or allow access to banking, financial or commercial documents where these are required for the assertion of the compensation claim, unless this would be disproportionate. The court has the power to guarantee confidentiality protection;
• information claims, which under certain circumstances may be granted through an ex parte interlocutory injunction; and
• claims for the publication of the final judgment.
Reasonable attorneys’ fees and court fees are awarded, depending on the extent to which a party prevails. Wilful trademark infringement is a criminal act and may be punished. The local public prosecutor’s office is empowered by the Federal Act of Criminal Procedure to commence proceedings on its own initiative or upon receiving a complaint. The possibility of the rights holder influencing the investigation, including the speed at which it is conducted, are limited. The seizure and eventual destruction of imported counterfeit goods in Germany is possible under German and EU regulations, in regard to which detailed information is available from the German Customs Office at www.zoll.de/english_version/d0_protection_property/a0_trademark/index.html.

Ownership changes and rights transfers
A change of ownership with regard to a German trademark takes place outside the register through the operation of law (eg, legal succession) or on the basis of an agreement (eg, assignment). While it is not mandatory to record such a change in the register, this is highly recommended in order to ensure that rights can be enforced without delay. The validity and the form of such a change of ownership depend on the applicable law. With regard to a registered trademark as such, there are no formal requirements. A German representative who is a German attorney at law or patent attorney may request the recordal of a change of ownership in the register without submitting a copy or original of the underlying legal instrument. In all other cases documentary proof must be submitted. Trademark licences are also granted outside of the register. A licensee may itself start infringement proceedings only with the consent of the licensor/owner of the licensed right. There is no statutory requirement to register a licence. Commercial designations and names are regarded as being inextricably associated with the relevant business operation or company (eg, goodwill) and may not be transferred without the business operation as such or licensed to another company. The related legal issues are complex.

Related rights
A trademark that is an individual and sufficiently original creative work may also be protected by copyright. This not only applies to device marks, but on rare occasions may also include slogans that meet a high standard of originality. Further, there may be a nexus between trademark infringement and the German Unfair Trade Practices Act. This legal area is mapped out by many precedents and is highly complex. Enforcement resembles trademark infringement matters to a certain extent, but claims differ substantially.

Online issues
The top-level country-code ‘.de’ is governed by DENIC eG. A dispute concerning a ‘.de’ domain name may be registered with DENIC in order to prevent its transfer. Disputes must be resolved amicably or, if this is not possible, in court. A substantial body of trademark case law applies to cyberspace, just as it does to the offline world. For example, a domain name that is similar or identical to a registered trademark also requires use for identical or similar goods or services in order for a trademark-based claim to succeed. Cases of famous marks or bad-faith domain name registration may be different. Bearing this in mind, precedents have established that metatags can be infringing. AdWord usage, on the other hand, will not normally constitute infringement unless the displayed advertisement contains something that is infringing.

China Trademark Law

By Johnson Jiang Li and Justin Tao Jiang
China Trademark Legal Framework

China’s legislation governing the registration and protection of trademarks comprises:
• the Trademark Law and its Implementing Regulations;
• the Rules for Trademark Review and Adjudication;
• the Provision for the Establishment and Protection of Well-known Trademarks; and
• other related provisions promulgated by the State Administration for Industry and Commerce under which the Trademark Office and the Trademark Review and Adjudication Board (TRAB) are established.

China is a signatory to all major international treaties regarding registration and protection of trademarks, including:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement concerning the International Registration of Marks;
• the Madrid Protocol; and
• the Nice Agreement.

Unregistered marks

Right to use unregistered marks
The holder of an unregistered mark has the right to use a trademark, no matter whether it is registered. However, if a mark is to be used on tobacco products, it must be registered.Use of an unregistered mark in an extensive manner can give a descriptive mark acquired distinctiveness and thus make it eligible for registration.

Right against registration
Well-known unregistered marks and other prior used unregistered marks can serve as grounds to challenge the registration of a later filed trademark. The Trademark Law provides that an unregistered right, including unregistered trademarks, can be the basis of an opposition/invalidation to a trademark application/registration if:
• the trademark infringes upon the prior unregistered right;
• the trademark has already been used by another party and enjoys a certain reputation;
• the trademark was filed by the mark owner’s agent or representative without authorisation; or
• the trademark is identical or similar to an unregistered mark previously used by another party on identical or similar goods, and the trademark owner knew of the existence of the unregistered mark through a contractual, business or other relationship.

Right against use
As a general rule in China marks should be registered in order to prevent them from being used by other parties. Unregistered marks receive only limited protection unless they are well known. The owner of an unregistered but well-known mark can prevent others from registering or using a mark on goods or services that are identical or similar to those bearing the well-known mark if the mark at issue is a reproduction, imitation or translation of the well-known mark and likely to cause confusion. ‘Well-known trademarks’ are trademarks that are well known to the relevant public. The determination and protection of well-known marks depend on numerous variables. When determining whether a mark is well known, the following factors could be considered:
• extent of the relevant public’s awareness of the trademark;
• duration of use;
• duration, extent and geographical scope of any publicising work for the trademark;
• protection records of the trademark as a well-known trademark; and
• other factors concerning the mark’s popularity.

Registered marks

Qualified applicants
Any natural person, legal entity or other organisation can file and own a mark in the course of its production or business operations.

Documents required for trademark application
For non-Chinese applicants, a power of attorney signed by its authorised representative to appoint a Chinese trademark agent and the applicant’s certificate of good standing (or passport) are required for trademark applications. Usually, photocopies of these documents without notarisation and legalisation are sufficient for filing trademark applications in China.

Trademark elements
Any mark consisting of words, devices, letters, numbers, three-dimensional marks, combined colours and sounds or a combination of these factors, which can distinguish the goods of a natural person, legal entity or other organisation from those of others, can qualify as a trademark.

Prohibited marks
The following signs shall not be used as a trademark:
• those identical or similar to the name, flag, emblem, song or medals of China or its army, and those identical to the name or the symbol of the central government as well as the place or symbolic building thereof;
• those identical or similar to the state name, national flag or emblem, or military flag of any foreign country, except with the approval of the government concerned;
• those identical or similar to the name, flag or emblem of any international organisation, except with the approval of the international organisation concerned or where the mark is unlikely to mislead the public;
• those identical or similar to the official sign or inspection mark indicating control and guarantee, except where official authorisation has been granted;
• those identical or similar to the symbols or names of the Red Cross or the Red Crescent;
• those that discriminate against people of any nationality;
• those that are deceptive and which are likely to mislead the public to misidentify the quality or other characteristics or place of origin of the goods; and
• those having an adverse social impact.
Geographical names for administrative divisions at or above county level and foreign geographical names that are well known to the public shall not be used as trademarks, unless that have other meanings or serve as a component of a collective mark or certification mark.

Distinctiveness
None of the following marks qualify for trademark registration:
• marks made up solely of the generic names, designs or models of the goods on which they are used;
• marks which refer only to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which they are used; and
• marks lacking any distinctive features.
However, any such marks can be registered if it can be shown that they have acquired distinctive features as a result of use and thus become distinguishable.Device marks that are in a shape that originates from the nature of the goods, or is necessary to achieve a technical effect or to enable the goods to keep substantive value, are not registrable as three-dimensional trademarks.

Procedures

Examination procedures
The timeframe for the Trademark Office to examine a trademark application is nine months from the receipt date of the application. After the trademark is filed, the Trademark Office will first examine its formality. If the office considers that the formal requirements have been met, but that amendments are necessary, it will ask the applicant to amend the application within 30 days of receipt of the notification of amendment. After the amendment is accepted by the Trademark Office, it will issue an official filing receipt to the applicant. The Trademark Office will then proceed with the substantive examination of the trademark application. If the trademark is found to lack distinctiveness, be prohibited or be identical or similar to a third party’s prior trademark application or registration for the same or similar goods, the office shall refuse the application and will not publish the mark in question.

Opposition
Applications that have passed examination will be published in the Trademark Gazette for three months for opposition. A prior rights holder or an interested party that deems that the published trademark violates its prior rights, or any person who deems that the published mark is prohibited or lacks distinctiveness may raise an opposition before the Trademark Office within three months of the publication date. After an opposition is filed, the Trademark Office shall make a decision on the opposition within 12 months of the expiration date of the publication period, although an extension of six months is available. If the opposed party is dissatisfied with the Trademark Office’s decision, it may file an application for review with the TRAB. If the opponent is dissatisfied with the Trademark Office’s decision, it may not file an application for review, but can file an invalidation request after the trademark is registered.

Registration
A mark will become registered if there is no opposition filed against its registration or it is found that the opposition filed is not justifiable.

Removal from register
Non-use cancellation: If a registered mark is not used in China for three consecutive years without justification, it becomes susceptible to a non-use cancellation action. Upon receipt of such an application, the Trademark Office will notify the mark owner to submit, within two months, either:
• evidence of use of the mark in the three years prior to the date of the application for cancellation; or
• justified reasons for its failure to use the mark.
If the registrant fails to submit sufficient evidence or acceptable reasons, the Trademark Office will cancel the registration. ‘Use’ of a mark refers to affixing trademarks to commodities, commodity packages or containers, commercial documents, advertisements, exhibitions and other commercial activities to distinguish the origin of the commodities by the trademark owner or authorised licensees.

Cancellation of generic marks
Distinctiveness is essential for registration. A mark is considered to lack distinctiveness if it becomes the generic name or figuration of the goods for which the mark is to be registered. If a registered trademark has become the generic name of the goods, any party may file a cancellation application against it with the Trademark Office. Consequently, rights holders should ensure that they use the mark in a proper way to prevent it from becoming generic.

Invalidation
The Trademark Office shall declare a registered trademark invalid if it finds that it is a prohibited mark or lacks distinctiveness, or if the registration was acquired by fraud or other unfair means. Any other party may request the TRAB to invalidate such a registered trademark. If a registered trademark violates the prior rights of another party, the prior rights holder may, within five years of the registration date of the said trademark, apply to the TRAB to invalidate it.

Renewal
After registration, a trademark should be renewed every 10 years. If the registrant fails to proceed with the renewal procedure upon expiry of the grace period, the trademark shall be cancelled.

Enforcement

Enforcement channels
Infringement of a registered trademark is subject to administrative action, customs measures and civil litigation, which are the three main channels for enforcing trademark rights in China. In serious cases, trademark infringements may be subject to criminal penalties and the persons directly responsible may be prosecuted for criminal liabilities and be subject to imprisonment. An unregistered well-known trademark is also protectable by administrative action and civil litigation. However, much more evidence must be produced to prove the mark’s reputation than for a regular registered trademark.

Enforcement authorities
Local Administrations of Industry and Commerce (AICs) are the government authorities in charge of administrative actions and may carry out on-site investigations, take raid actions, seize infringing products and impose fines on infringers within their jurisdictions. Local customs offices can take customs actions ex officio or based on a request to prevent infringing products’ entry into or exit out of China. The Chinese court system comprises courts at four levels: the Supreme Court on the top, higher courts in each province and municipality, intermediate courts at city level and district courts at district or county level, as well as IP courts established in Beijing, Shanghai and Guangzhou in late 2014. Many intermediate courts and a few district courts have established IP tribunals. Accordingly, a trademark infringement case initiated by a trademark owner should be brought before an IP court or IP tribunal of the court that has proper jurisdiction.

Merits of different channels
Generally speaking, AIC actions and customs measures are less costly and faster. Many administrative actions before AICs can be completed in three months from the filing of a complaint to the issuance of a written decision. On the other hand, AICs and customs offices do not have the authorisation to award damages. In civil litigation, trademark owners can claim damages and have more control over the proceeding. For example, the trademark owner can request a preliminary injunction, evidence preservation and property preservation and settle the case if needed. Chinese civil litigation is a two-instance system: most cases at first instance can be completed within one year, while cases at second instance take a few months.

Damages
As in many other civil law countries, damages in China are used to provide compensation for losses suffered by the trademark registrant; therefore, the amount of damage shall be equal to the losses of the mark owner, which includes reasonable expenses incurred in stopping the infringement. In practice, the amount of damages is calculated using:
• the actual losses suffered by the trademark registrant;
• the profits of the infringer; or
• a multiple of the trademark royalties.
If it is difficult to establish the amount of damages based on the above methods, the court may award, at its discretion, statutory damages of up to Rmb3 million depending on the circumstances. For bad-faith infringement, compensation may be between one and three times the damages determined in the aforesaid manners.

Non-infringement defence and exemption
If a registered trademark mainly describes or directly indicates the features of the goods for which it is used, the trademark owner has no right to prohibit others from using it fairly. If, prior to the application date of the registered trademark, another person has been using an identical or similar trademark on the same or similar goods and has acquired a certain influence, the trademark owner has no right to prohibit this person from continuing to use the mark in the same manner. If the trademark owner fails to provide either evidence of actual use in the last three years or evidence that others have suffered loss in a litigation case, the defendant may be exempt from paying damages. If a seller of infringing goods can prove that the goods were obtained legitimately in good faith and discloses the source, it can be exempt from paying damages.

Interim injunctions
When a trademark registrant has evidence to prove that another party is infringing its registered mark or that such infringement is imminent, and that if such infringement is not stopped in time it is likely to cause irreparable harm to the registrant, the registrant may, prior to instituting legal proceedings, apply to the court for interim measures, including a preliminary injunction and property preservation measures. In addition, if evidence of infringement could be lost or would be difficult to obtain at a later time, the registrant or an interested party may, prior to instituting legal proceedings, apply to the court for an order to preserve evidence. After receiving an application for such interim measures, the court is required to issue a ruling within 48 hours.

Ownership changes and rights transfers

Assignment of marks
To record assignment of marks, the assignor and the assignee should jointly file an application for assignment with the Trademark Office. Both the assignor and the assignee are required to sign a power of attorney respectively and submit their valid certificates of good standing for the purposes of recordation of assignment. If the assignor has valid registrations or applications for the same or a similar mark in respect of the same or similar goods, all such registrations or applications should be assigned to the same assignee.

Recordation of licenses
Under the Trademark Law, when a trademark registrant licenses another party to use its registered mark, in addition to jointly executing an application form for recordation of licence, the licensor and the licensee must also issue a power of attorney respectively and provide their respective certificate of good standing. A trademark licence can only be used against a third party of good faith if it is officially recorded.

Related rights
There are many areas of overlap between trademark rights and other rights, such as prior copyrights and trade name rights. In particular, prior rights can serve as prior basis to lodge oppositions if the opponent has no prior trademark rights in China.For instance, a logo can be protected under both the trademark law as a trademark and the copyright law as an artistic work. In one case, an applicant that owned a prior trademark registration over a logo with respect to goods in Class 07 became aware of an offending trademark application filed by a third party for the same logo but designating goods in Class 25. The applicant finally prevailed in an opposition against this offending application on the grounds that it infringed upon its prior copyright over the logo.

Online issues
In China, many online infringements rely on traditional rights established offline. Therefore, although domain names are registered on a first come, first served basis, prior registered or used marks and company names still form an important basis for most actions against cybersquatting.The China Internet Network Information Centre has implemented a domain name dispute policy, which allows an interested party to apply for arbitration with the China International Economic and Trade Arbitration Commission in Beijing or at the Hong Kong International Arbitration Centre. Compared with litigation before a court, domain name arbitration is fast and economical. However, an application for arbitration in respect of a disputed domain name must be filed within two years of the initial registration of the disputed domain name. To recover an infringing domain name, the applicant must prove that a prior right to a domain name meets the following essential criteria:
• The disputed domain name is identical or confusingly similar to its brand name or mark;
• The disputed domain name holder has no right or legitimate interest in the domain name; and
• The disputed domain name was registered in bad faith.

UK Trademark Law

By David Parrish and Ashley Roughton

UK Trademark Law

UK trademark law differs in several important respects from the law in other EU member states, despite the implementation by the UK Trademarks Act 1994 (as amended) of the EU Trademarks Directive (89/104/EEC) (now codified in Directive 2008/95/EC) to approximate the laws of EU member states. These differences include:
• provisions relating to unjustified threats of trademark infringement proceedings;
• the statutory protection given to a licensee which has recorded its licence;
• the Civil Procedure Rules, which affect how cases must be run both before and after proceedings are issued;
• the operation of the Company Names Tribunal in relation to opportunistic company name registrations;
• the operation of the Intellectual Property Enterprise Court (IPEC), which involves caps on the costs which the court may award to a successful party;
• the dispute resolution service which applies to ‘.uk’ domain names; and
• the law of passing off to protect unregistered rights.

Unregistered rights
There is no law of unfair competition or unregistered trademarks per se in the United Kingdom. However, unregistered marks are protected indirectly by the common law tort of passing off, which is aimed at preventing misrepresentations by one trader which lead to deception and damage the goodwill of another. A successful claimant in a passing-off action will need to prove the classical trinity of goodwill, misrepresentation and damage:
• Goodwill – the claimant must establish goodwill or a reputation attaching to a manner of trading (usually a distinguishable badge, brand or mark). The existence of goodwill will be decided on a case-by-case basis and depends entirely on the facts. The mark need not be well known; passing off can provide protection to a small business with a small customer base. There is no minimum period of time for which the mark must have been used. However, it will be easier to prove goodwill if the claimant has been using the mark for a substantial number of years.
• Misrepresentation – the claimant must show that the defendant made a false representation which has led or is likely to lead the public to believe that the goods or services offered by the defendant are those of the claimant, or that there is some other form of connection with the claimant. It is not necessary to prove that the misrepresentation was made fraudulently.
• Damage – the most common form of damage is direct loss of sales, but a claimant can rely on other forms of damage. For example, even if the parties are not in competition, the claimant may still suffer damage through association with the defendant where the defendant’s business is not of a reputable type. Loss of licensing opportunities or licensing income may also be a relevant head of damage where the claimant already operates a licensing programme.
Passing off is an entirely independent cause of action, but is often run in parallel with a registered trademark infringement claim where the facts permit. Establishing passing off is generally relatively expensive because of the evidential burden, but in some circumstances a claim in passing off will be the better (and perhaps only) cause of action available to the claimant.

Registered rights
Anyone can apply for a UK trademark registration. There is no need for a power of attorney or other such formalities. However, an applicant must provide an address for service in the United Kingdom, another state of the European Economic Area or the Channel Islands.The act follows the wording of the Trademarks Directive. Therefore, any sign which is capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of others can be registered as a UK trademark. This includes signs which consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Section 3 of the act lists the absolute grounds for refusal of registration, as follows:
• The sign cannot be represented graphically or is not capable of distinguishing the goods or services of one undertaking from those of another;
• The trademark is devoid of any distinctive character;
• The trademark consists exclusively of signs or indications which are descriptive;
• The trademark is generic (ie, consists exclusively of signs or indications which have become customary in the trade);
• The sign consists exclusively of: the shape which results from the nature of the goods themselves; a functional shape; or a shape which gives substantial value to the goods (ie, eye appeal);
• The trademark is contrary to public policy or morality, or is deceptive; or
• The application was made in bad faith.
Section 4 of the act prohibits registration of a trademark which consists of or contains “specially protected emblems”, such as:
• the royal arms, flags or a representation of any member of the royal family (unless consent has been given by or on behalf of the queen or the relevant member of the royal family);
• the national flag of the United Kingdom or its constituent countries, if use of the trademark would be misleading or grossly offensive; and
• Olympic symbols (unless the application is made by a person with the relevant authority).

Procedures
Examination: Examination of the application involves the UK Intellectual Property Office (UKIPO) considering whether the application can be rejected on any of the grounds listed above, with the exception of bad faith. The UKIPO will not refuse an application on relative grounds (ie, because of the existence of an earlier conflicting mark). These can be raised only in opposition proceedings. However, the UKIPO will still search for potentially conflicting earlier marks. It will let the applicant know the results of the search, and the applicant must then decide whether to proceed with the application. If the applicant does proceed, the UKIPO will notify the owners of any earlier UK national marks or international registrations designating the United Kingdom identified in the search about the new application when it is published. It will not notify the owners of earlier Community trademarks.
Opposition: An opposition can be filed on the basis of absolute or relative grounds. An opponent must oppose an application within two months of the date on which the application for registration was officially published. A one-month extension will automatically be granted if the opponent files a notice of threatened opposition before the expiry of this two-month period. The notice of threatened opposition is a simple form which is submitted via the UKIPO website. Earlier trademarks: The owner of an earlier trademark, the opponent, can rely on the following grounds in an opposition:
• The respective marks and the respective goods/services are identical;
• The respective marks are identical or similar and the respective goods or services are identical or similar, with a resulting likelihood of public confusion;
• The respective marks are identical or similar and the earlier mark has a reputation, meaning that the use of the later mark without due cause would: take unfair advantage of the distinctive character or repute of the earlier mark (free riding); be detrimental to the repute of the earlier trademark (tarnishment); or be detrimental to the distinctive character of the earlier mark (dilution or blurring).
The notion of an earlier trademark encompasses:
• UK national registrations;
• Community trademarks;
• international registrations designating the United Kingdom or the European Union;
• an application for any of the above; and
• trademarks entitled to protection in the United Kingdom under the Paris Convention or the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Earlier rights: A third party may also found an opposition:
• where use in the United Kingdom of the mark applied for is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade; or
• by virtue of earlier rights other than an earlier trademark, in particular by virtue of the law of copyright, design rights or registered designs.

Registration
If the application is unopposed, the mark usually achieves registration within about four months. The mark will also proceed to registration if an opposition is unsuccessful in relation to some or all of the goods or services. Typically, opposition proceedings are concluded in 12 to 18 months. Opposition proceedings are decided by a UKIPO hearing officer. The hearing officer will make a decision either solely on the basis of the written materials submitted by the parties during the proceedings or after a hearing. The parties can elect whether to have a hearing, although in complicated matters the UKIPO will usually indicate that it thinks there should be a hearing. Scale costs are usually awarded to the successful party in an opposition. UK law provides a unique statutory defence for holders of UK trademark rights: Section 11(1) of the Trademarks Act provides that a UK registered trademark is not infringed by the use of another UK registered trademark in relation to the goods and services for which the latter is registered. A claimant faced with such circumstances will therefore need to seek invalidation of the defendant’s registration in any proceedings. This does not apply to a claim based on a Community trademark; nor is ownership of a Community trademark a defence to a claim based on a UK registration.

Renewal
Once registered, a mark is registered for 10 years and is (upon payment of a fee) renewable for successive 10-year periods.

Removal from the register
Invalidity: A declaration of invalidity has the effect that the registration is deemed never to have been in force in respect of all or some of the goods or services that it covers. A registration may be found invalid on the basis of the absolute or relative grounds listed above.
Revocation: An order for revocation has effect from the date on which the application for revocation was made. A mark may be revoked on the grounds that it has not been put to genuine use for an uninterrupted period of five years and there are no proper reasons for non-use, or on the basis that the mark has become generic or deceptive.
Surrender: A rights holder can surrender its registration in respect of some or all of the goods or services that it covers. The surrender takes effect from the date of publication in the Trademarks Journal.

Enforcement

Civil enforcement
Pre-action steps: The United Kingdom has highly developed court systems and parties are expected to make reasonable efforts to settle a dispute outside litigation. A party that acts unreasonably may be penalised by way of a costs order when the case reaches trial. In most cases, a trademark owner will thus first send a cease and desist letter to an infringer. This is with a view to obtaining suitable undertakings from the infringer.
Unjustified threats: The United Kingdom’s special law on unjustified threats is a trap for the unwary, although the government has stated that it is going to change the law of threats to provide more protection to lawyers and attorneys acting on behalf of clients and to ensure that merely asking questions or stating the existence of rights does not constitute a threat. It should always be a consideration and may influence tactics in any given matter. The provisions are specific to the United Kingdom and are not derived from the Trademarks Directive. Essentially, as the law stands at the time of writing, the recipient of a threatening letter may bring proceedings for unjustified threats against the sender and may seek the following from the court:
• a declaration that the threats are unjustifiable;
• an injunction to prevent further threats; and
• damages in respect of loss suffered as a result of the threats.
The unjustified threats provisions were designed to dissuade trademark owners from making such threats to secondary infringers (eg, retailers), but their drafting means that a demand letter sent to the source of infringing goods may constitute unjustified threats to that source.
Proceedings: If necessary, civil proceedings can be commenced in the High Court (which includes as a separate court the IPEC) or a designated county court. If successful, the rights holder may obtain an order for:
• a permanent injunction;
• delivery up or destruction of infringing goods;
• disclosure of supplier/customer information;
• product recall;
• payment of an account of profits or damages; and
• payment of legal costs.
Judges deciding trademark cases are typically IP specialists. The IPEC is designed to handle shorter, less complex and lower-value actions. This is with a view to the IPEC providing cheaper and speedier procedures so that small and medium-sized enterprises are not deterred from protecting their rights by the cost of litigation. Longer, more complex and more valuable actions should still be conducted in mainstream High Court proceedings.
Interim injunction: An interim injunction is a discretionary remedy. To obtain one, the applicant must show that it would suffer irreparable harm if an injunction were not granted until the end of a full trial. In particularly urgent matters or if the trademark owner is concerned that the infringer may dispose of the infringing goods, it may be necessary to make the application without notice to the infringer and without first sending a cease and desist letter. For reasons of both substance and presentation, a rights holder must act quickly to obtain an interim injunction.

Criminal prosecution
Section 92 of the act makes certain types of unauthorised trademark use a criminal offence. The unauthorised use offences in Section 92 – such as applying a mark to goods without the consent of the trademark owner or dealing in or keeping goods bearing a mark which has been applied without consent – are aimed at counterfeiting. However, they are worded broadly and routine ‘civil’ infringements have sometimes been prosecuted as criminal acts. A person charged with an offence under the Trademarks Act has a defence if he or she can show that he or she believed, on reasonable grounds, that the use of the mark in the manner in which it was used was not an infringement of the registered trademark. If convicted or pleading guilty, an offender may be sentenced to up to 10 years’ imprisonment and face a substantial fine as well as enquiries into the proceeds of the criminal acts. Any person may bring a prosecution under Section 92, so a trademark owner could bring a private prosecution, although subject to the state’s right to intervene and take over such cases if it wishes to do so. In practice, private prosecutions are more likely to be brought for infringement of copyright under equivalent provisions in the Copyright, Designs and Patents Act 1988.

Company Names Tribunal
The Company Names Tribunal is designed to provide a remedy for a complainant that objects to the registration of a company name on the basis that it was registered with the intention of extracting money from the complainant or to prevent it from registering a name in which it has goodwill. Examples of company names which have been changed by the tribunal as a result of successful complaints include Coke Cola Limited, Adidos Limited and Nokia Limited. The tribunal provides a cost-effective remedy in such circumstances and has proven popular with rights holders.

Ownership changes and rights transfers

Formalities
A UK registered trademark must be assigned or licensed in writing. Only the assignor or licensor must sign the agreement for it to be effective, but it is recommended that both parties sign with a view to avoiding disputes about the terms. The assignment or licence should be recorded as soon as possible at the UKIPO. The relevant application form must be signed by both parties, unless a copy of the relevant agreement is provided with that form. If the assignment or licence is not recorded, it is ineffective against a person acquiring a conflicting interest in or under the trademark in ignorance of the assignment or licence.

Licensing-specific issues
Failure to record a licence means that the licensee cannot benefit from the provisions of the act which enable licensees, in the case of infringements and where certain conditions are satisfied, to bring proceedings in its own name. It is possible to confer particularly strong statutory enforcement rights on exclusive licensees if the agreement is appropriately worded. The use of a registered trademark by a licensee, with the consent of the owner of that trademark, counts as use by the owner for the purposes of defending a non-use attack on the registration. There is no statutory requirement for a trademark licence to impose quality standards on the licensee. However, it remains UK practice to do so; UK trademark owners that issue bare licences run significant risks.

Related rights
As mentioned above, related rights such as copyright, design rights and registered designs can be relied on by a third party to oppose a trademark application. This is because, for example, graphic elements of a trademark may be protected by copyright as an artistic work and two-dimensional graphics may be protected by Community designs.

Online issues
Nominet is the ‘.uk’ domain name registry and operates the Dispute Resolution Service (DRS), under which a trademark owner (whether registered or unregistered) can file a complaint against an abusive registration.The Nominet DRS Policy is similar to the Uniform Domain Name Dispute Resolution Policy. However, there are important differences. For example, a defended complaint filed under the Nominet DRS Policy will enter a mediation stage, during which a Nominet mediator will contact both parties and attempt to mediate a resolution. The complainant in these circumstances must pay a fee for a decision by a Nominet expert only if the mediation is unsuccessful.

U.S. Trademark Law

2017.03.20
U.S. Trademark Law

In the United States, trademarks are governed by federal and state law. The Lanham Act is a federal statute that governs the registration and enforcement of trademarks used in either interstate commerce or foreign commerce that has a substantial effect on US commerce. Each of the 50 states has statutes providing for registration and protection of trademarks used in that state. Both federal and state law protect unregistered or ‘common law’ marks. Federal and state trademark laws coexist in the United States. Courts generally interpret state trademark laws in a manner consistent with federal law.
The United States is a signatory to several international treaties relating to trademarks, including:
• the Paris Convention;
• the North American Free Trade Agreement;
• the General Agreement on Tariffs and Trade;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Madrid Protocol; and
• the Singapore Treaty on the Law of Trademarks.

Unregistered marks
In the United States, trademark rights are acquired through use, not registration. The first party to use an inherently distinctive mark in commerce acquires rights to the mark for the associated goods and services in the geographic market in which the mark was first used or has acquired recognition. There are two exceptions. The first party to file a federal intent-to-use application that later results in a registration obtains priority dating back to the date of filing. Thus, the applicant can obtain priority over someone who first used the mark after the filing date of the intent-to-use application. For marks that are not inherently distinctive, the first to acquire secondary meaning in the mark (rather than the first to use the mark) acquires priority.

Use required to acquire rights
To acquire rights in a mark, the applicant must make good-faith use of the mark in the ordinary course of trade (ie, not as a result of trade made merely to reserve a right in a mark). There is no bright-line rule for determining the use necessary to acquire trademark rights. The rule is flexible, in order to account for differences in the kinds of transaction made across different industries and for different types of goods and services. Use sufficient to support a claim of rights can also be established through prior use as a trade name or other use analogous to trademark use.

Registered marks
Trademarks used in either interstate commerce or foreign commerce that affects US commerce are eligible for federal and state registration. Marks used within a state only may be registered only in that state.

Types of federal registration
Two types of federal trademark registration exist. The Principal Register is for marks that are inherently distinctive or have acquired distinctiveness. The Supplemental Register is for marks that are not inherently distinctive (ie, descriptive marks), but that are capable of acquiring distinctiveness and that otherwise meet the requirements for registration.

Benefits of federal registration
Registration of a mark on the Principal Register:
• satisfies the burden of proof that the registrant owns the mark, that the mark is valid and that the registrant owns the exclusive right to use the registered mark in commerce for the goods or services specified in the registration;
• serves as constructive notice of the registrant’s ownership and use of the mark;
• achieves incontestable status after five years;
• eliminates certain defences to claims of infringement and dilution;
• can be relied on to prevent the import of infringing goods;
• enables the registrant to file suit for infringement of the mark in federal court;
• may be cited against applications for registration of confusingly similar marks; and
• entitles the registrant to use the ‘®’ designation.
Registration on the Supplemental Register:
• enables the registrant to file suit for infringement of the mark in federal court;
• may be cited against applications for registration of confusingly similar marks; and
• entitles the registrant to use the ‘®’ designation.

Applicants for federal trademark registration
To apply for a trademark registration, the applicant must be the owner of the mark – that is, the party which applies the mark to goods or services that it offers or intends to offer, either directly or through a licensee. Applicants may be natural persons, entities, nations, states or other governmental bodies.

Power of attorney
Power of attorney is not needed to file a trademark application unless the applicant or registrant is already represented by a qualified practitioner and a new qualified practitioner wishes to act with respect to the application or registration. In that case, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (such as a corporate officer).

Protectable and unprotectable marks
A trademark can be anything capable of distinguishing the source of goods and services from those of others, including words, symbols, slogans, three-dimensional (3D) shapes, colours, sounds and trade dress. Marks must be inherently distinctive (eg, fanciful, arbitrary or suggestive terms) or have acquired secondary meaning (eg, descriptive terms that have acquired a special significance such that consumers associate the term with a single source). The following cannot be federally registered:
• immoral or scandalous matter;
• deceptive matter;
• matter that may disparage, falsely suggest a connection or bring into contempt or disrepute;
• any flag, coat of arms or other insignia of the United States, any state or municipality or foreign nation;
• matter protected by statute or convention (eg, the Red Cross or Olympics);
• the name, portrait or signature of a particular living individual or deceased US president, without consent;
• generic, merely descriptive or deceptively misdescriptive terms;
• geographically descriptive or misdescriptive terms; and
• names that are primarily merely surnames.

Procedures

Federal registration
Once an application is filed with the US Patent and Trademark Office (USPTO), the application will be assigned to an examining attorney for review, usually within three to five months of filing. The examining attorney will determine whether the application complies with the formal requirements for applications, such as identifying:
• the mark;
• the correct class(es) and the goods and services; and
• the filing basis (eg, use of the mark in commerce, intent to use the mark in commerce or a foreign application or registration).
The examining attorney will also examine the application for substantive deficiencies, including whether the mark is distinctive and whether it conflicts with any prior federal application or registration. If the examining attorney identifies any basis for refusing registration, he or she will issue one or more office actions identifying the basis for refusal. The applicant has six months from the date of each office action to amend the application or resolve the issues. The six-month deadline cannot be extended, but the applicant may file a petition to revive an application unintentionally abandoned within two months of the notice of abandonment. If the examining attorney does not identify any basis for refusing registration or determines that the applicant has overcome any deficiencies, he or she will approve the mark for publication. If the examining attorney determines that the applicant has not overcome the deficiencies, he or she will issue a final refusal. The applicant has six months from the date of final refusal to appeal to the USPTO Trademark Trial and Appeal Board (TTAB). The applicant may also file a request for reconsideration with the examining attorney, but this does not affect the term for appeal. Accordingly, any request for reconsideration should be filed with the appeal.

Opposition
Any party which believes that it would be injured by federal registration of a mark may oppose the application within 30 days of publication of the mark. The opposing party may seek an initial 30-day extension, which will be granted for any reason, or a 90-day extension, which will be granted for good cause. An opposing party which obtains an initial 30-day extension may seek an additional 60-day extension on a showing of good cause. An opposing party which obtains a total extension of 90 days may seek an additional 60-day extension on consent of the applicant or a showing of extraordinary circumstances. The extensions cannot exceed a total of 180 days from publication. The opposition is commenced by filing a notice of opposition. Among other things, oppositions can be based on:
• prior conflicting trademark rights;
• descriptiveness;
• lack of distinctiveness;
• deceptive matter; and
• dilution.
The sole issue decided by the TTAB is whether the mark that was applied for will be registered. The TTAB cannot grant an injunction prohibiting the applicant from using the mark or award damages or attorneys’ fees. An opposition proceeding is similar to civil litigation in the United States in that the parties are entitled to broad discovery of any information or documents relevant or reasonably calculated to lead to the discovery of admissible evidence. Unlike in civil litigation, after discovery, the TTAB does not conduct a live trial. Rather, the ‘trial’ is conducted on paper and may be followed by a hearing. An opposition proceeding can last several years. However, using accelerated case resolution (which prohibits extensions of deadlines), the opposition proceeding takes just 16 to 18 months. The losing party may seek reconsideration, appeal the decision to the US Court of Appeals for the Federal Circuit or seek review of the TTAB decision de novo by a federal district court.

Registration
After publication, an unopposed application for a mark that is based on use in commerce, a foreign registration or an extension of protection of an international registration to the United States will be granted registration by the USPTO. The time from filing to registration is approximately four to six months if no office actions are issued. For unopposed applications based on the applicant’s intent to use the mark in commerce, the USPTO will issue a notice of allowance approximately two months following publication of the application. The applicant has six months from the date of the notice of allowance either to:
• submit a statement of use and specimen showing the mark in use in commerce; or
• request a six-month extension to file a statement of use.
A total of five extension requests may be filed. If the applicant does not file a statement of use or extension request within six months of the notice of allowance, the application will be abandoned.

Maintenance of registrations
To maintain the registration, the registrant must file documents attesting to the use of the mark in commerce – or establishing excusable non-use – between the fifth and sixth anniversary of registration. The registrant may also file a declaration of incontestability. Registration must be renewed every 10 years. Failure to file maintenance documents will result in cancellation and/or expiration of the registration. There is a six-month grace period after the deadlines, contingent on payment of an additional fee.

Cancellation of registrations
The USPTO will automatically cancel registrations when maintenance documents have not been timely filed. Moreover, any party which believes that it will be damaged by an existing registration may seek its cancellation. The cancellation proceeding is initiated by filing a petition to cancel. A cancellation proceeding filed within five years of registration of the mark may be based on any grounds that would have prevented initial registration. A cancellation proceeding filed after the fifth anniversary of registration is limited to certain grounds, such as claims of abandonment or fraud or claims that the mark has become generic.

Searches
The USPTO database can be searched online at no cost. The USPTO does not conduct searches on behalf of applicants before filing. The USPTO database includes live and dead federal trademark applications and registrations. It does not include state trademark registrations or common law uses. However, commercial providers provide more comprehensive searches.

Enforcement
Trademark enforcement in the United States can be expensive and time consuming. As a result, trademark owners often enforce their trademark rights through informal means, such as cease-and-desist letters and negotiation of a settlement. If a trademark owner cannot successfully enforce its rights through informal means, the primary method for enforcement is through a civil action.

Civil action
A trademark owner can bring a civil action to enforce trademark rights in federal or state court. If the trademark owner files in state court, the case may be removed by the defendant to federal court under certain circumstances. The trademark owner can proceed with the action only in courts that can exercise personal jurisdiction over the defendant and where venue is proper.

Causes of action and defences
The most common causes of action in trademark cases in federal court are:
• trademark infringement – based on use of a mark in commerce that is likely to cause confusion with respect to a federally registered mark;
• unfair competition – based on use of a mark that is likely to cause confusion with respect to a registered or unregistered mark;
• trademark dilution – based on use of a mark that is likely to dilute the distinctiveness of a famous mark by blurring or tarnishment;
• trademark counterfeiting – based on use of a mark that is essentially the same as a federally registered mark on goods covered by the registration; and
• cybersquatting – based on registration, use or trafficking in the domain name containing the trademark of another with the bad-faith intent to profit therefrom.

Affirmative defences include fair use, laches, estoppel and acquiescence

Injunctive relief
The court may grant injunctions based on principles of equity, preventing violation of a mark. The court may also order seizure of counterfeit goods. In addition, the court has authority over the defendant’s trademark registration, including the power to order cancellation.

Monetary remedies
The court may award damages for trademark infringement subject to principles of equity. The prevailing rights holder is not automatically entitled to recovery of damages, but is generally entitled to recover damages that it actually suffered from the infringement. The court may increase the award up to three times the actual damages. The rights holder may also be able to obtain an award of the defendant’s profits if the infringement was wilful. The court may increase or decrease an award of profits if it finds the award inadequate or excessive. In cases involving wilful infringement using a counterfeit mark, unless the court finds extenuating circumstances it must enter judgment for the greater of three times such profits or damages. Alternatively, the court may award statutory damages of up to $2 million for trademark counterfeiting. Punitive damages are not available under federal trademark law. The court may award reasonable attorneys’ fees to the prevailing party in exceptional cases. In all cases, the prevailing party may recover costs, but costs are limited.

Ownership changes and rights transfers
Trademarks may be assigned, licensed or pledged as security. For an assignment of a trademark to be valid, the trademark must be conveyed along with the goodwill it symbolises. The assignment of a mark that is the subject of federal registration or application must be in writing. The assignment of a federally registered or applied-for mark should be recorded in the USPTO within three months of the date of the assignment. Otherwise, it is void against a subsequent purchaser giving value who has no notice of the prior assignment. Trademarks may be licensed on an exclusive or a non-exclusive basis, but the licensor must exercise quality control over the licensee’s use of the trademark. Licensing without quality control results in a naked licence, which can lead to the loss of trademark rights. Merely including a quality control provision in a written licence agreement is insufficient. The licensor must make a good-faith effort to exercise quality control over the licensee. The licensee’s use of a licensed mark inures to the benefit of the licensor. A trademark may be pledged as security for a loan or other indebtedness. To perfect a security interest in a federally registered trademark, the security interest must be recorded at the USPTO. Different rules apply for perfecting a state trademark registration or common law mark.

Related rights
In certain circumstances, overlapping rights may simultaneously protect a particular trademark. For example, state law rights of publicity protect the exclusive right to use a person’s name, voice, signature, likeness and persona for commercial purposes. In any application to register a mark that appears to refer to an individual’s name, the USPTO requires both a statement as to whether the mark refers to a living individual and proof of the consent of that individual, if he or she would be associated with the mark by the public. A trademark may also qualify for copyright protection under the Copyright Act if it demonstrates sufficient original and copyrightable expression. The advantage of copyright protection is that liability is premised upon the copying; likelihood of confusion need not be proved. Because copyright protection does not extend to titles and short phrases, word marks typically will not qualify for copyright protection. However, logos, 3D marks, sound marks and audiovisual marks could potentially qualify. The unauthorised use or infringement of another’s trademark may also violate and give rise to liability under state unfair trade practices laws. These laws, and the manner in which they are enforced, vary from state to state. In some states, a private right of action is recognised. In others, the law can be enforced only by the state’s attorney general.

Online issues
The general laws prohibiting trademark infringement, unfair competition and dilution apply to the Internet. Whether use of another’s mark online (eg, in sponsored advertisements) constitutes trademark infringement depends on whether the use creates a likelihood of confusion. Federal law prohibits cybersquatting, which is defined as the registration, use or trafficking of domain names containing the trademark of another with the bad-faith intent to profit therefrom.

European trademark package

January 8, 2016: by Trevor Little

The European trademark package: what’s changing; when and how to prepare

Last month we reported that the European Parliament had approved the European trademark reform package. The subsequent publication of Regulation (EU) No 2015/2424 of the European Parliament and the Council amending the Community trademark regulation in the Official Journal of the European Union means that the amending regulation will enter into force on March 23 2016 (although some of the provisions will require secondary legislation and will take effect from 21 months after the publication date of the regulation – September 23 2017). The new Directive (2015/2436) will enter into force 20 days after its publication in the Official Journal (on January 15), but Member States have three years to then transpose them into their national law (seven years as regards to the provision of an administrative procedure for the cancellation of national marks). Issue 60 of World Trademark Review will present full analysis of the changes and outline how counsel should be preparing. In the meantime, here is a round-up of some of the notable upcoming changes.

A new name for OHIM
On March 23 the Office for Harmonization in the Internal Market (OHIM) will change its name to the European Union Intellectual Property Office (EUIPO), while the Community trademark (CTM) will be called the European Union trademark (EUTM). The rebrand will keep the office’s Alicante employees busy (particularly those in charge of the stationary!), but is also something for trademark practitioners to note – and, crucially, to ensure that colleagues are aware of. Trademark solicitation campaigns have long plagued practitioners and there is every likelihood of a spike in activity as scammers seek to capitalise on any confusion caused by the changeover. Invoices need to be carefully checked and, if you have briefed the accounts department to treat invoices bearing generic office names like ‘The European Union Intellectual Property Office’ with scepticism, it is time to tell them that future invoices bearing that name should not be automatically discarded.

Fees are changing – mostly for the better
The current regime allows for CTM protection in three classes for a €900 (electronic application) or €1,050 (paper application) fee. That is set to change with the introduction ‘one-fee-per-class’ approach. From March 23, the fee for registration is one class will be €850, with a second class costing an additional €50. Extending coverage to a third class (and for each subsequent class) will cost an additional €150. Therefore, applicants will pay a lower fee if they only apply for one class, the same fee if they apply for two, and a higher fee if they apply for three or more. Meanwhile, renewal fees are reduced in all instances and set at the same level as application fees. Therefore, instead of paying €1,350 to renew a mark in 3 classes, the cost will be €1,050.
Overall, then, the changes are mostly budget-savers. However, for those considering the timing of their applications, Verena von Bomhard, partner at Bomhard IP, argues that “the fee benefits or downsides of the new law are so minor that we do not consider them to justify any acceleration or deferral of applications”. However, her advice for those eyeing renewals is slightly different. Under the new law, renewals must be requested by the date of expiry and not the end of the month during which expiry occurs. However, it is unclear what cut-off date will be applied for this (and the new fees regime). von Bomhard notes that OHIM is considering charging the existing renewal fees for all marks for which the six-month period for requesting the renewal started before the entry into force of the new law. This would mean that all Community/European Union trademarks with renewal dates up to August 2016 would fall under the old regime. Until the position is clarified, she recommends that mark owners “defer renewals of CTMs expiring between March 1 and August 30 2016 to a later time, when it is clear which regime applies”.

What you see is what you get
A key area of harmonisation relates to goods and services and adapting the classification system to comply with the IP TRANSLATOR case and the Nice system. The amending regulation codifies the existing practice for trademarks filed after the judgment in ‘IP Translator’ (and extends this practice to trademarks filed before the judgment, giving their owners a transitory six-month period to adjust the specification of their marks to their original intention when they filed them). It explains: “The use of general terms should be interpreted as only including all goods and services clearly covered by the literal meaning of the term. Proprietors of EU trademarks, which because of the previous practice of the Office are registered in respect of the entire heading of a class of the Nice Classification, should be given the possibility to adapt their lists of goods and services in order to ensure that the content of the register meets the requisite standard of clarity and precision in accordance with the case-law of the Court of Justice of the European Union.”
The onus is on the applicant/mark owner to identify “with sufficient clarity and precision” the goods and services for which the protection of the trademark is sought. To this end, von Bomhard recommends that counsel undertake a portfolio review “to assess whether any specifications should be amended before the new law enters into force, or during the six-month period thereafter – allowing sufficient time for any action to be taken before March 23. This is not overly time consuming and should be done as soon as possible”. For those fearing an avalanche of resulting paperwork, she reassures: “We have seen that in most industries, for a number of reasons, there is much less need for the amendment of CTM specifications than might be expected, and such amendments have a much lesser practical impact than is sometimes believed”.

Opposing views
Turning to oppositions and cancellations, one change worth noting is that the opposition period against international registrations designating the EU (which currently commences six months after publication) will change to one month after the date of publication. The opposition period itself stays at three months. With respect to counterclaims before EU trademark courts, the courts will not proceed with their examination until either the interested party or the court has informed the office of the date on which the counterclaim was filed.

An absolute (and relative) position
A number of changes are also being made with respect to absolute grounds of refusal. Amongst these, the possibility for users to add disclaimers in trademark applications in order to overcome future absolute grounds objections is eliminated and functional signs (such as colours or sounds) will now be subject to the same prohibitions applied to shape marks. The amending regulation also codifies the current practice in regards to invalidity proceedings based on absolute grounds, limiting its examination to the arguments and the grounds provided by the parties. Turning to relative grounds, there is the introduction of a separate specific ground of opposition and cancellation on the basis of both Protected Designations of Origin and Protected Geographical Indications.

The goods in transit compromise
The treatment of goods in transit was a hotly debated topic during formation of the legislation. The final result? That EU trademark owners will be able to prevent the entry of infringing goods and their placement in all customs situations (“including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission”), even if the goods are not intended to be placed in the European Union market. The caveat? That this entitlement lapses when, in subsequent proceedings, the declarant or the holder of the goods is able to prove that the EUTM holder is not entitled to prohibit the placing of the goods on the market in the country of final destination. Reflecting on this, Bird & Bird’s Patricia Collis and Mark Holah suggest that “all trademark owners having problems with counterfeits outside the EU should consider obtaining EUTM registrations and EU customs registrations, even if they have no counterfeit problems (or even, arguably, no business) in the EU”.

Welcome to the party
At present, legal practitioners qualified in one of the member states of the European Union are permitted to act as professional representatives before OHIM. However, the new legislation extends this right to those qualified in one of the member states of the European Economic Area (EEA) – namely those from Iceland, Liechtenstein and Norway. For counsel in these countries, the countdown starts now.

Mark the date: September 23 2017
A number of changes will come into force 21 months after publication of the amending regulation (ie September 23 2017). While not as pressing in terms of preparations, these are worth noting now. One is the elimination of the graphical representation requirement in applications. Instead, signs will be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. This change should provide a useful boost for those seeking to register non-traditional trademarks. September 2017 will also see the introduction of European Union (EU) certification marks, which allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements. The registration cost for an EU certification mark will be the same as for an EU collective mark.
That this is one of the longer blogs we have written shows just how much there is to consider. OHIM confirms that all the office’s online tools and services will be fully updated to reflect the changes in the fee structure. An updated version of the Guidelines for Examination will also enter into force, which will reflect the changes introduced by its amendments in the Office’s trademark examination practice.

Brexit vote creates uncertainty

June 24, 2016
By: Trevor Little

“Don’t panic”: call for calm as Brexit vote creates uncertainty over future scope of trademark protection

The UK electorate has voted to leave the European Union, meaning that after months of campaigning and speculation, trademark professionals now face the very real prospect of a changed IP landscape. The exit won’t become a reality until 2018 at the earliest, meaning that European Union trademarks and registered Community designs currently remain valid in the UK. However, in the interim there is a lot to be negotiated, with the UK’s Institute of Trademark Attorneys (ITMA) urging rights holders “not to panic”.

In the end, the vote was largely as opinion polls predicted – 51.9% (17,410,742 individuals) voted to leave the European Union, versus 48.1% (16,141,241) in the ‘remain’ camp. In the immediate aftermath, David Cameron has resigned as the country’s Prime Minister, with a successor expected to be in place by October. His resignation has a direct impact on the timeframe for exit negotiations, with Cameron signalling that his successor will lead the process. Therefore, Article 50 of the Lisbon Treaty may not be invoked until October, kicking off the estimated two year exit negotiations.

On World Trademark Review we have previously reported in some detail on the trademark implications of a vote to leave the EU – both on the blog and in the magazine. As it stands, uncertainty is the norm. Briefly, in current terms, a UK exit would mean that the protection offered by EU trademark and Community registered designs would no longer extend to the UK – requiring those without a UK registration and wishing to continue their coverage in the UK to seek a national registration. An exit would also mean that UK-based practitioners would no longer be able to represent clients before the EU Intellectual Property Office, while UK courts would no longer be able to hear trademark infringement disputes based on EU trademarks. The legal environment could also become more complicated, with UK and EU trademark and design law potentially diverging.

One possible positive for UK law firm practitioners with respect to the representation of clients before EUIPO would stem from the UK doing a deal to remain in the European Economic Area (EEA). Under the recently-enacted European trademark reforms, the right to act as professional representatives before the office was extended to those qualified in one of the member states of the EEA. However, it is by no means certain that the UK would do such a deal in the current political climate.

The reality is that IP arrangements will be the subject of negotiations in the run up to the divorce and there could be agreements that lessen the blow. For instance, Georgie Collins, partner at Irwin Mitchell, suggests, that transitional provisions could be agreed that enable existing registrations to remain effective under ‘grandfather rights’. ITMA has pledged to work with key stakeholders to ensure “the best possible outcomes for owners of intellectual property rights and practitioners in the UK”.

While ITMA has counselled against panic, the mood of trademark professionals on social media is not positive, with uncertainty and concern clearly evident. That won’t change in the immediate term. A number of industry professionals have issued statements reacting to the vote and the possible impact on trademark owners. A selection are reproduced below:

Kate O’Rourke, president of ITMA: We would encourage trademark and registered design owners not to panic – European Union Trademarks and Registered Community Designs remain valid in the UK and there is no immediate loss of IP protection. There is likely to be no change for at least two years giving intellectual property rights owners plenty of time to plan. ITMA will be working hard with key stakeholders including the UK’s Intellectual Property Office and Minister for Intellectual Property to influence the negotiations and ensure the best possible outcomes for owners of intellectual property rights and practitioners in the UK. ITMA will advocate for the transition of all EU-based trademark and design rights to UK-based protection to be simple and cost effective. We will also be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office. At this time we recommend that all trademark or design rights owners seek advice from their registered trademark attorney to ensure they are fully prepared and can put in place plans to confirm the continuance of their IP protection.

Tom Scourfield, UK head of IP at CMS: IP rights are often considered on a national basis but are really an international currency, the value of that currency was diminished today. Brexit undermines the status of the UK in the international IP community. Some form of transitional period will be required for EU Trademarks, which will ultimately cease to be applicable in the UK. All businesses intending to trade here will need to look to national trademark registrations.

Georgie Collins, partner at Irwin Mitchell: A UK exit from the EU will have a significant effect on EU Trademarks. New EU trademarks would not cover the UK, so separate applications would have to be filed in the UK. There is also the question of the scope of existing EU trademark registrations and existing EU design right registrations and whether these will remain valid in the UK. We would expect that during the withdrawal negotiations, transitional provisions will be agreed and implemented for existing registrations, such that they remain effective under ‘grandfather rights’ or transfer into national rights based on prior rights. [However] Rights owners will be subject to additional costs of transferring rights and maintaining separate registrations going forward. UK trade mark attorneys and lawyers will [also] not be able to act as representatives before the EUIPO which is likely to result in increased fees.

Arty Rajendra, partner at Rouse Legal: Many companies will own EU Trademarks which cover all 28 states of the EU. This trademark will no longer be valid in the UK. This may pave the way for trademark owners needing two registrations: a new national mark for the UK which can be dated back to the original EU trademark filing, and their current EU trademark for the remaining member states. This would mean continued trademark protection coverage and, importantly, it would not extinguish a right previously held in the UK. Whatever happens, it will involve cost and management time of businesses to ensure they have the right protection covering the newly fragmented jurisdictions. Owners of Community Registered Designs, which currently cover all 28 states of the EU, will find their rights will no longer be valid in the UK, meaning that CRD owners would probably need to convert this right into a UK registration and maintain the CRD in the rest of the EU as well. From an IP enforcement perspective, a vote to leave should mean that parallel imports are a thing of the past so no cheaper branded goods from Eastern Europe can come into the UK. There is also a risk that less cooperation between border force authorities in EU member states could lead to a rise in counterfeiting in the UK.

Sally Shorthose, partner at Bird and Bird: Brexit is not going to be a simple divorce. Now any UK legislation, which has hitherto been dependent on EU legislation, will have to be unpicked. Beyond this, the key development in the IP field is the likely exclusion of the UK from pan-European rights systems… It is likely that Community rights, such as registered and unregistered Community designs and EU trademarks (previously Community trademarks), will now no longer have effect in the UK. Ultimately the scope of any rights applied for from now on will not include the UK, and there will be questions about what will happen to the ‘UK portion’ of such rights obtained before Brexit. If the right in question was automatically reduced in geographical scope, its value will diminish, especially given the economic significance of the UK, which could result in the right-holder losing out commercially. Any organisations which rely on Community rights will now need swiftly to respond to changes in this area.