1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
National sources
In Belgium, substantive patent law is governed by the Belgian Patent Act of 28 March 1984 on Patents for Inventions (‘Belgian Patent Act’).1 The Belgian Patent Act entered into force on 1 January 1987, replacing the previous Patent Act of 1854. The Belgian Patent Act immediately became applicable to all patents and patent applications filed since its entry into force, whereas the old Patent Act of 1854 remains applicable to the patent applications filed before 1 January 1987.2 However, issues relating to acts of infringement that took place after 1 January 1987 are to be judged in accordance with the provisions of the Belgian Patent Act.
European Community sources
As a Member State to the European Union, Belgian patent law has to take into account the following Community instruments as interpreted, as the case may be, by the Community courts, ie:
Customs’ intervention. On the international level, Belgium is a party to the major agreements relating to intellectual property in general and to patents in particular, such as:
Worldwide agreements
European-wide agreements
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
Belgium is a unitary state with regard to the relationship between international and internal law. This was firstly established by the Supreme Court in its judgment of 27 May 1971. Moreover, Art 34 of the Belgian Constitution provides that ‘the exercising of certain powers can be attributed by a treaty or by a law to international organisations’. From both the jurisprudence of the Supreme Court and Art 34 of the Constitution, it follows that international and EC law (primary and secondary legislation) take precedence over Belgian law.
The constitutional court, however, has not refrained from judging whether a statute, by which the treaty is implemented in the Belgian legal order, as well as the treaty itself, is in compliance with the Constitution. Hence, the constitutional court in fact granted primacy to the Constitution over the international treaty, in spite of Art 34 of the Constitution and in spite of the approach taken by both the Supreme Court and the Council of State (ie the highest court in administrative cases). However, such approach was excluded by the Act of 9 March 2003 with respect to the ‘constituting treaties of the EC’ and the European Convention on Human Rights. Moreover, when it comes to examining whether the remaining treaties are in compliance with the Constitution, the constitutional court is reluctant to judge that a treaty is unconstitutional, given the international implications (including international responsibility) to which such unconstitutionality could give rise.
2.1 In which courts are patents enforced? Are they specialised patent courts? If not, what level of expertise can a patent holder expect from the courts?
In first instance, five civil courts have exclusive jurisdiction in patent matters: these are the courts of first instance located in the cities where the five Belgian courts of Appeal are seated.3
Although the aim of the Belgian legislator was to create specialised courts for patent matters, it appears that, generally speaking, the judges have little expertise in such matters; they do not have any specific technical background (see below question 6.3).
At appellate level, the situation is similar although patent cases tend to be attributed to one chamber in particular.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
Belgian courts are not bound by foreign judgments, but are, generally speaking, not reluctant to take them into consideration. Given the fact that there exist differences (on a few issues even substantial ones) between the respective national patent legislations (especially with regard to the scope of patent claims and issues of infringement), the courts make their ‘own’ decision and set out in detail the reasons on the basis of which this decision is reached.
However, this does not prevent the Belgian courts from consulting foreign decisions, especially with respect to technical issues or legal issues that have been harmonised (eg with respect to the validity of the respective national parts of European patents), provided that such are carried out with a sufficient level of care.
Earlier Belgian court decisions are solely binding inter partes,4 but are often relied on by legal practitioners to support their arguments and by the courts to assess the scope and interpretation of legal provisions.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Belgian Intellectual Property Office)?
Infringement and validity can be heard separately but are usually dealt with together. In practice, a nullity claim will often be raised by the defendant (alleged infringer) as a defence to an infringement claim. Even when claims on both infringement and validity are filed separately, a court can still decide to join them if it considers that they are related and that dealing with them separately might lead to irreconcilable decisions.
Belgian law does not provide for an administrative invalidity procedure before the Belgian Intellectual Property Office (Office de la Propriété Intellectuelle/Dienst Intellectuele Eigendom). Invalidity claims, whether filed directly as a main claim or as a counterclaim in the course of infringement proceedings, may only be brought before one of the five courts of first instance referred to above (see question 2.1).
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Parties have the right to defend themselves in court under Belgian law. However, this is highly uncommon, especially in patent litigation. Only lawyers can represent parties in court.
As indicated above, the Belgian Intellectual Property Office does not deal with invalidity actions but only with prosecution and relating formal issues. Both patent agents and lawyers can represent parties before this agency but in practice parties most often call upon the services of a patent agent.
2.5 What is the language of the proceedings? Is there a choice of language?
The language of the proceedings is either French or Dutch. The location of the competent court and/or the defendant’s domicile or registered office determine the language of the proceedings.
Proceedings are always conducted in Dutch before courts in the Dutch linguistic region (the courts of Antwerp and Ghent) and always in French before the courts in the French linguistic region (the courts of Mons and Liège).
The language of proceedings brought before the Brussels courts can be French or Dutch, at the plaintiff’s choice. However, if the defendant has its registered office or domicile in the Dutch or French linguistic region, the language of the proceedings shall necessarily be Dutch or French respectively.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
Belgian courts have rendered a number of cross-border or extraterritorial injunctions in interim proceedings.5 Interim injunctions were granted against foreign companies and covered foreign states.
To our knowledge no extraterritorial injunction has ever been granted by Belgian courts in proceedings on the merits.
In the aftermath of the ECJ GAT/Luk (ECJ, C–4/03, Gesellschaft für Antriebstechnik mbH & Co/Lamellen und Kupplungsbau Beteiligungs KG, 13 July 2006) and Primus/Roche decisions (ECJ, C–539/03, Frederick/Roche Nederland BV Primus and Milton Goldenberg, 13 July 2006) it is likely that this distinction continues to apply.
On the one hand, interim injunctions with cross-border effects remain an effective and available remedy for patent holders when the validity of the patent is challenged elsewhere. Article 2 (if the alleged infringer is domiciled in the forum) or possibly Art 31 Brussels I Regulation (if the alleged infringer is domiciled in another EU Member State) may be invoked by Belgian courts to take international jurisdiction in such cases.
On the other hand, Belgian courts are bound by the ECJ judgments in the GAT/Luk and Primus/Roche cases in cases on the merits. Accordingly, an indefinite cross-border injunction will be possible in cases where the defendant is domiciled in Belgium and the validity of the patent at stake is not contested. However, if an extraterritorial infringement claim is filed before the Belgian courts and the validity of the foreign patents is contested, the question remains whether a Belgian court must decline jurisdiction on the foreign parts of the infringement action.
Article 25 of the Brussels I Regulation (Art 19 in the Brussels and Lugano Conventions) states:
‘Where a court of a Member State is seised of a claim which is principally concerned
with a matter over which the courts of another Member State have exclusive
jurisdiction by virtue of Article 22, it shall declare of its own motion that it has no
jurisdiction.’
It is doubtful whether a patent infringement dispute where invalidity is raised by the defendant is ‘principally concerned’ with validity. The ECJ did not answer this question in the GAT/Luk case, but it only states: ‘… The article does not provide further clarity … It does not confer jurisdiction but merely requires the court seised to examine whether it has jurisdiction and in certain cases to declare of its own motion that it has none.’
It is hence unclear whether a Belgian court must declare of its own motion that it has no jurisdiction if the patent validity is challenged abroad.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
It is evident that the blocking effect of a ‘torpedo’ action abroad presupposes that such an action has cross-border effects. Pursuant to the ECJ GAT/Luk and Primus/Roche decisions, it is expected that actions with cross-border effects shall become rather exceptional. The risk of pre-emptive litigation and parallel actions in patent enforcement cases should hence decrease.
Should such torpedo actions (covering Belgium) be filed, it follows from the ECJ Gasser judgment6 that other courts bound by Art 27 Brussels I Regulation should stay the proceedings and decline jurisdiction once the international jurisdiction of the first court seised is established. There is to our knowledge no Belgian case law on the relevance of Art 27 Brussels I Regulation to parallel patent enforcement cases.
Proceedings on the merits and interim proceedings do not have the same course of action. The rule on lis pendens is therefore not applicable when interim proceedings are filed in Belgium once proceedings on the merits (either on patent validity or infringement) are already pending abroad.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
General principle
As a general rule, patent infringement is assessed by comparing the essential features of a process or product with those of the patented invention, regardless of the (minor) differences between them.
The doctrine of equivalents
Belgium does not have a body of case law on equivalents. Although the principle is generally accepted and applied under Belgian law, the doctrine of equivalents is not structured by applying a uniform test (such as the ‘function-way-result’ test). Notwithstanding the fact that in isolated cases, elements referring to the ‘function-way-result’ test can be found, judges have no consistent approach in that respect. Therefore, the Belgian threshold for upholding a claim of infringement by equivalents mirrors what is often used a first step in foreign test processes without going beyond that.
Prior to examining infringement, a Belgian judge will identify the essential features of the invention and determine the scope of protection in line with Art 69 EPC (terms of the claims, if necessary interpreted in the light of the description and drawings).
An infringement ‘by equivalents’ shall be found whenever the essential features of a patent are used, irrespective of any possible incidental differences introduced by the infringer. In other words, there is an infringement when the technical function(s) is (are) reproduced, even if there are differences in the means used without any technical effect.
Although again no formal rule exists, courts tend to take the general common knowledge of the man skilled in the art into account in assessing equivalents and to assess equivalents at the time of infringement rather than at the time of the patent application. Although a balance between both interests is sought, the interest of the patent holder to benefit from a fair scope of protection seems slightly to outweigh the interest of third parties to benefit from legal certainty in that respect.
The most common defence used by an alleged infringer is to question the validity of the plaintiff’s patent (for the detail of the various invalidity grounds, see question 3.4 below). As indicated above, it is worth stressing that the defendant does not need to file a separate action but can seek a declaration of nullity from the court by way of a counterclaim.
The alleged infringer can also argue that there is no infringement, either because he does not reproduce the essential features of the invention, or because his acts cannot be qualified as infringing acts under Art 27 of the Belgian Patent Act.
A useful defence can also be found in one of the exceptions set out in Art 28 of the Belgian Patent Act: most importantly, when the disputed acts are ‘carried out privately and for noncommercial purposes’ (Art 28 s 1, a), or ‘committed on and/or with the subject matter of the patented invention for scientific purposes’ (Art 28 s 1, b), which extends not only to experiments on the subject matter of the invention itself, such as assessment of the latter’s utility or workability, but also to acts involving a use of the patented invention as a tool to develop new inventions7).
Finally, the alleged infringer can claim that he enjoys a prior personal use of the invention within the meaning of Art 30 s 1:
‘A person who, in good faith, before the date of filing of the patent application or before the priority date of the patent, used the invention which is the subject matter of the patent on the Belgian territory or who had possession thereof, has the personal right to commercialise the invention, notwithstanding the patent.’
The term ‘use’ implies that the party raising the exception exploits the invention. According to the teaching of the Supreme Court,8 the alleged infringer can invoke ‘possession’ if he can demonstrate that, prior to the patent application, he had a complete and practical knowledge of the invention such that he was capable of applying it at the time the patent was filed, and that this use was legitimate and in good faith. In other words, the prior use exception does not necessarily require that the party raising the exception actually commercialised, or prepared the commercialisation of, the subject matter of the invention. It suffices that he had a knowledge of the invention which enabled him immediately to apply the said invention. In addition to the requirements of good faith and priority (the party raising the exception must be able to demonstrate prior use before the date of the patent application), it is important to stress that the prior use must have taken place in Belgium. Besides, the prior use must be proprietary to the party raising the exception and can only be transferred together with the ‘business’ (onderneming/entreprise) to which the right is attached.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
The Belgian competition laws in this respect are in line with the European rules, except that an infringement of the Belgian rules does not require an effect on trade between EU Member States.9
Merely holding a patent or simply exercising the rights conferred by a patent does not infringe competition law. However, the exercise of such rights may under certain circumstances be illegal.
Where undertakings refuse to grant a licence on the basis of a cartel (a ‘licensing boycott’), this will infringe the cartel prohibition of Art 2 of the Competition Act (or Art 3 of the new Competition Act, which becomes law on 1 October 2006). The same is true of a cartel which fixes royalties and other licensing terms.
A unilateral refusal to grant a licence to a patent may constitute an illegal abuse of a dominant position contrary to Art 3 of the Competition Act (Art 4 of the new Competition Act). However, this will only be the case where (1) the refusing undertaking is dominant and (2) the refusal is abusive.
Merely holding a patent does make the holder dominant. A patent holder will only be dominant where there are insufficient competing products/technologies and insufficient potential market entrants, with the result that the patent holder can to a significant extent act without regard to customers and competitors.
When exactly a refusal constitutes an abuse is still hotly debated. The question is currently pending before the European Court of First Instance in Microsoft. On the basis of the case law to date, a refusal to grant a licence to an IP right will be an abuse where that refusal (1) prevents the emergence of a new product for which there is a potential consumer demand, (2) is not objectively justified and (3) is such as to exclude any competition on a secondary market.10 One of the questions in Microsoft is whether these three conditions are necessary, or merely sufficient (implying that other circumstances may render a refusal to licence abusive).
Misleading representations to patent authorities may also constitute abuse of a dominant position. In 2005 the European Commission fined AstraZeneca for making misleading statements to patent authorities with a view to obtaining a supplementary protection certificates (SPCs), even though the statutory requirements for the grant of an SPC were not satisfied. The AstraZeneca decision is still under appeal.
Article 49 of the Belgian Patent Act contains an exhaustive list of the grounds for invalidity:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
A court may invalidate a patent as a whole or only in part. Article 49 s 2 Belgian Patent Act provides the following:
‘If the grounds for revocation only affect the patent in part, revocation shall be pronounced in the form of a corresponding limitation of the patent. The limitation may be effected in the form of an amendment to the claims, the description or the drawings.’
If and when a Belgian court (partially) invalidates a patent, it must provide the Belgian Intellectual Property Office with a copy of the judgment within one month. Final judgments are recorded in the appropriate registers by the Belgian Intellectual Property Office (Art 7, s 2 of the Act of 8 July 1977).
As there are no utility models under Belgian law, transformation of a patent into a utility model is not an option.
Under Art 24 of the Belgian Patent Act, a patent holder can (in whole or in part) abandon his patent before the Belgian Intellectual Property Office. According to a number of patent law specialists, a broad interpretation of the above article allows a patent holder to modify the patent claims by combining different features of a number of claims or by adding additional elements in a claim which are part of the initial patent application.11
According to others, a patent holder would not have the right to modify claims before the Belgian Intellectual Property Office but only before the national courts in the framework of nullity proceedings. To be valid, in any event, amended claims must: (1) be based on the claims and description of the original patent application; (2) fulfil the conditions for patentability (novelty and inventive step).
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
Patent infringement cases are subject to a statute of limitations of five years. In other words, patent rights can no longer be enforced after the expiry of a period of five years from the date on which the infringement is perpetrated12 (Art 54 Belgian Patent Act). The statutory limitation is interrupted further to a summons, a claim for penalties or a seizure (Art 2244 of the Belgian Civil Code).
Of course, a patent holder can also be precluded from enforcing its rights in cases of exhaustion within the European Economic Area. If a product has been put on the market by the patent holder or with his consent somewhere within the European Economic Area where no patent protection is available, the patent holder will no longer be able to object to free circulation of the product.
Apart from the above, Belgian law does not provide any other grounds on the basis of which a valid patent could not be enforced. There is no theory of laches or estoppel under Belgian law and ‘abuse of rights’ is a concept which can only be relied upon in exceptional circumstances. There can only be an abuse when the exercise of the right obviously goes beyond the boundaries of what can be expected from a normally prudent and reasonable party. Given that the exercise of patent rights is limited by law, it is arguable that one would actually have to establish that the patent holder has transgressed its rights or acted without rights in order to rely successfully on an argument of abuse of rights.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
In the current state of the law, a patent holder cannot bring combined patent infringement actions and unfair competition actions before the Belgian courts.
A patent holder may not bring proceedings claiming both patent infringement and unfair competition for the same set of facts. He must bring two separate actions since there the president of the commercial court has exclusive jurisdiction for unfair competition matters.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
Under Arts 43 and 52 of the Belgian Patent Act, the following persons are entitled to initiate infringement proceedings:
In addition, the law provides that any licensee is free to intervene in infringement proceedings initiated by the patent holder or his usufructuary in order to seek compensation for the damage that he personally suffered.
Article 45, s 5 of the Belgian Patent Act provides that a licence is opposable to third parties when registered. The purpose of this article is undoubtedly to ensure that third parties can, upon consultation of the Patent Register, become aware of whether one or more licences have been granted on a patent. In other words, what matters is the awareness, or rather the possibility of becoming aware, of a licence agreement. Therefore, it is recommended that a licensee be registered to sue, since a defendant might require that the licensee’s claim be dismissed on the basis that the licence is not opposable since unregistered.
4.2 Under what conditions, if any, can an alleged infringer bring a lawsuit to obtain a declaratory judgment on non-infringement?
Article 18 of the Belgian Judicial Code allows a party to seek a declaratory judgment of non-infringement. The ‘alleged infringer-plaintiff’ must establish that its rights are seriously being threatened and that the declaratory judgment, if granted, would actually lift the threat on his rights.
The mere fear of a patent infringement claim may not always be sufficient to obtain a declaration of non infringement. However, warning letters, infringement proceedings started abroad, etc can be sufficient to consider that there are good grounds for a claim of non infringement. Another option is to request the patent holder to confirm that he will not sue; in case of refusal, the requirements set forth in Art 18 of the Belgian Judicial Code will be deemed met.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
In accordance with Art 27 of the Belgian Patent Act (the ‘Belgian Patent Act’), patent infringement proceedings can be brought against parties who commit one of the following acts on Belgian territory, without the consent of the patent holder:
The question of directors’ liability is governed by general corporate law, pursuant to which company directors may be held personally liable for faults committed in the exercise of their functions if attributable to an act of negligence or a fault. Therefore, in such cases either the company or a third party could in theory file an action against (a) director(s).
A party can be brought into ongoing proceedings if there is a sufficiently close link between the pending action and the action launched against this party.
A party can also be subtracted from a trial, provided that if it has already filed written submissions it has given its formal consent.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
In the array of civil proceedings a series of options is available for a patent holder seeking to enforce its rights in Belgium:
The patent holder can also send a cease and desist letter to an alleged infringer, but it is not a prerequisite for the initiation of proceedings. Often no warning letter is sent, such as in cases where the patent holder wishes to preserve the surprise effect of descriptive seizure proceedings.
5.2 Are criminal proceedings available? If so, what are the sanctions?
Patent infringement is not a criminal offence under current Belgian law. Accordingly, there are no criminal proceedings available. However a draft bill on the repression of infringement and piracy of intellectual property rights, which contains certain provisions for the enforcement of Regulation 03/1383/EC of 22 July 2003, has recently been prepared and is currently being debated in Parliament. This draft bill provides for criminal proceedings and criminal sanctions (imprisonment and/or fines) in the event of patent infringement. This draft bill is likely to be amended in the course of the legislative process.
Regulation 03/1383/EC of 22 July 2003 provides for Customs’ intervention in, inter alia, patent infringement cases.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Alternative dispute resolution methods are available under Belgian law. Arbitration is covered by the Belgian Judicial Code (Art 1676 and following) and widely accepted. Arbitrators will take a binding decision on the conflict between the parties.
Within the framework set by the Belgian Judicial Code, the parties can set the terms and conditions of the arbitration. The Belgian Patent Act does not only provide for the possibility to file nullity actions before the Belgian courts but also before arbitrators (Article 51, s 1, Belgian Patent Act). Both nullity decisions rendered by arbitrators or by the court are recorded in the patent register and apply erga omnes.
A recent Act of 21 February 2005 governs mediation. If the parties come to an agreement during mediation proceedings, the court can endorse the terms of their agreement. Should the outcome of mediation contain a commitment by the patent holder to abandon the patent or some claims of it, this decision can either be endorsed by a court or executed directly by the Belgian Intellectual Property Office. Should the parties decide to amend any claims, this decision can equally be endorsed by the court pending nullity proceedings or, with the reservation made under question 3.6 above, before the Belgian Intellectual Property Office.
Inter partes proceedings are initiated by the service of a summons on the defendant. The summons should contain a brief statement of the claim(s). Additional claims can be brought in at a later stage provided they are based on facts disclosed in the initial summons.
The case is introduced at a preliminary hearing (a ‘hearing for directions’). Nothing particular happens at this hearing and the case is generally adjourned sine die in order to allow the parties to develop their arguments, both technical and legal, in written submissions.
The defendant must file its written submissions first. In proceedings on the merits, this should be done in theory within one month from receipt of the plaintiff’s file (containing all evidence substantiating the claim). The plaintiff will then have the same period of time in which to reply. Several sets of written submissions can be filed and the defendant usually has the last word (and hence the right to file the last written submissions). Courts often require that the last written submissions filed on behalf of each party are in the format of a recapitulative written submission.
There is no penalty if a written submission is not filed within the time-limits stipulated above. However, when a timetable has been set by the court or agreed to between the parties, failure to meet the stipulated deadlines may result in loss of the right to reply to the other party’s arguments.
The defendant can file a counterclaim in its written submissions but this need not be done with the first set of written submissions and can be inserted at a later date as long as the hearing is still under way.
Once the arguments have been exchanged in writing, the parties have the opportunity to defend their case orally. In Belgium, hearings are generally short, and the parties must concentrate on the essence of their claim or defence. The trial procedure in Belgium is inquisitorial. A court cannot, however, issue a judgment on points of law or fact which have not been raised by one of the parties.
In Belgium there are no jury trials in civil proceedings. Patent infringement cases are decided by either one or three judges.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Parties in patent infringement cases usually submit technical documents, affidavits, witness statements and private expert reports. Witness hearings are highly uncommon in patent litigation.
Courts do often appoint neutral experts to advise on certain validity or infringement issues from a technical point of view. This is due to the fact that courts hearing patent disputes in Belgium are not specialised.
Experts are also appointed for the assessment of damages.
The reports of court-appointed experts are not binding but are generally considered determinant by the court.
Cross-examination of witnesses or party experts is not possible under Belgian law.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
There is no pre-trial discovery procedure in Belgium.
However, both parties are legally obliged to contribute to the establishment of the truth.
If one party has serious grounds to believe that the other is not disclosing relevant evidence, it can petition the court to order that party to release the information, subject to a civil penalty.
Indeed, in accordance with Art 877 of the Belgian Judicial Code, if there are ‘substantial, definite and corroborated’ presumptions that a party or a third party is in possession of a document establishing a material fact, the court can, by means of an interlocutory decisions (Art 19 of the Belgian Judicial Code), order the production of this document (or a certified copy thereof). However, it is not compelled to do so and can find that the document is not useful to the case at hand.
The conditions for seeking the production of documents under Art 877 of the Belgian Judicial Code are assessed strictly. This article can under no circumstances be used as an excuse to go on a fishing expedition.
Furthermore, Belgian law provides for a specific procedure (saisie-contrefaçon), aimed at gathering evidence of a suspected infringement (see below question 8.3).
6.5 What level of proof is required for establishing infringement or invalidity?
Infringement, as well as validity, can be proven by any means. There is no particular level of proof required. The plaintiff does not need any actual proof to file an action (the presence or absence thereof is irrelevant in the assessment of the admissibility of the claim), but will obviously have to substantiate his claim in the course of the proceedings. Besides, as regards infringement, the likelihood of an imminent infringement suffices to file an action.
In accordance with the general rule in Belgian procedural law, the burden of proof lies with the party who initiated the action (viz the party who asserts its patent in an infringement action, or the party invoking the nullity in a nullity action). It is another principle of procedural law, however, that both parties must cooperate in the establishment of the truth. If one party believes that the other is withholding relevant evidence in its possession, it can ask the court to enjoin the defaulting party to communicate the information in question under the provision of civil penalties (see question 6.4 above).
Article 52 s 1, 1° of the Belgian Patent Act contains an exception to the general rule regarding the burden of proof set out above, and provides as follows:
‘When the subject matter of a patent is a process enabling a new product to be obtained, any identical product manufactured by a person other than the owner of the patent shall be considered to have been obtained by that process unless proved otherwise. When examining proof to the contrary, account shall be taken of the legitimate interest of the defendant in protecting his manufacturing or business secrets.’
In other words, in case of an alleged infringement of a patented process, the burden of proof is reversed: if the defendant produced an object identical to the novel object obtained through the patented process, said object will be presumed to have been produced through a process identical to the patented process. The defendant will therefore have to demonstrate that he produced the litigious object by means of a non-infringing process.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
The period between the date of service of the writ of summons and the date of the oral hearing is usually between approximately 12 and 18 months. However, the complexity of the case (and the corollary necessity to seek expert opinions) and the number of cases pending before the court are factors which can make the duration of the proceedings slightly longer.
The parties can always agree on a fixed timetable for the exchange of their written submissions. Alternatively, if a party is unreasonably slow in filing submissions, the other party may petition the court to set a specific timetable. When a timetable has either been set by the court or agreed between parties, failure by one party to meet the deadlines may result in its losing the right to reply to the other party’s arguments.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
The defendant may try to slow down the proceedings by delaying the filing of its written submissions. However, the plaintiff can counter that by petitioning the court to set a specific timetable for the exchange of written submissions. When a timetable has been set by the court, the stipulated deadlines must be complied with as failing to do so may result in loss of the right to reply to the other party’s arguments (see question 6.6 above).
A request for a stay of the proceedings pending opposition proceedings before the EPO is often successfully raised by defendants. The plaintiff can in such case try to obtain interlocutory measures. If a request for stay is feared, it is preferable to anticipate and petition interlocutory measures first, eg by means of a descriptive seizure.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing products, publication of the decision, recall-order, monetary damages, etc)?
If the litigious product or process is found to be infringing, the court can grant various remedies to the patent holder. These remedies are listed in Arts 52 s 4 and 53 of the Belgian Patent Act:
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
It is possible to obtain a final injunction against future infringement under the condition that the interest to bring an action is not merely hypothetical but based on actual facts. In that respect, it is sufficient that the patent holder’s interests are severely threatened for an action to be brought, even if no actual infringement has been committed.
Any decision will only be effective inter partes. However, some particular aspects of the decision may have a bearing on third parties, eg a recall will affect the infringers’ suppliers or customers.
Under Belgian law, it is possible in specific circumstances to force customers and suppliers to intervene in the proceedings as well as to ask the court to declare that a court decision be declared enforceable vis-à-vis a third party.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits or some other basis)? Are punitive damages available? If so, under what conditions?
Damages are perceived as a true compensation for the damage incurred. In other words, there is no concept of punitive damages under Belgian law.
There is a five year statutory limitation with respect to damages, which is suspended with the initiation of proceedings.
The assessment of the damages is entirely left to the courts’ discretion. The courts however often appoint an expert (usually an auditor) to assess the damages.
Damages for patent infringement in Belgium are calculated on the basis of two different points: lost profit (ie profit that the patent holder could have made by selling its products had the infringement not occurred or royalties for the infringing acts) and the loss sustained (eg damage to the patent holder’s monopoly position or reputation and costs incurred to put a halt to the infringement).
In case of bad faith infringement, the court can order confiscation of the infringing products and instruments as well as any means specifically intended for their manufacture and/or, where appropriate, award an amount equal to the price of the infringing products already sold, ie the turnover resulting from the infringement. Given the high burden of proof in this respect, Belgian courts seldom reach the conclusion that bad faith is established, but there is case law.14
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Inter partes preliminary injunction proceedings can be launched before the President of the competent court of first instance with a view to obtaining urgent, provisional measures, such as a preliminary injunction enjoining the defendant from importing, exporting, stocking or commercialising allegedly infringing goods while awaiting a decision on the merits, usually under a civil penalty. No other measures, such as damages, can be requested in the scope of preliminary injunction proceedings. Damages can merely be requested in the scope of the infringement proceedings on the merits.
The pronounced measures are provisional. In principle, his decision must merely organise the parties’ situation awaiting the decision on the merits. The judge hearing the merits is not bound by the decision in preliminary injunction proceedings.
Preliminary injunction proceedings are initiated by means of a writ of summons served upon the defendant.
In order to be granted an injunction, the plaintiff must demonstrate that:
The court usually also takes into account whether the measures sought could be obtained within a similar timeframe in proceedings on the merits. If that is the case, the request for preliminary relief is likely to be discussed.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Under Belgian procedural law, a patent holder seeking ex parte relief has two different options:
This procedure, known as the ‘descriptive seizure’ (saisie-description/beslag inzake namaak) is very widely used and quite successful in patent matters. It is a very efficient tool for gathering evidence of a suspected infringement. For more detail on this procedure, see question 8.3 below.
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
The descriptive seizure procedure is provided for in Arts 1481–1488 of the Belgian Judicial Code: on the basis of an ex parte application, ie without first informing the allegedly infringing party, a patent holder may petition the seizure judge of the competent court of first instance to:
• appoint an expert to describe (1) the allegedly infringing goods and methods as well as
(2) any instruments pertaining directly to the infringement and all plans, documents, calculations, writings, etc which can serve to demonstrate (a) the existence and (b) the origin and scope of the suspected infringement (descriptive measures, aimed at gathering evidence of the suspected infringement);
• order that seals be affixed on the allegedly infringing goods and prevent the allegedly infringing party from disposing of the allegedly infringing products – most often under the provision of civil penalties (seizure measures, aimed at preventing an aggravation of the prejudice suffered by the patent holder awaiting a decision on the merits).
The description is the main objective of this procedure, as it allows the petitioner to gather evidence of the suspected infringement. In order to be granted such measures, the patent holder must only demonstrate that he has prima facie valid patent rights and that the adverse party is prima facie guilty of infringement of said rights (it obviously cannot be required that the patent holder demonstrates the existence of the infringement, as it would make the whole procedure pointless). If both conditions are met, the seizure judge will have to grant the measures. It is important to stress that the scope of such measures is limited to the description of the objects and elements which can serve to determine the existence and scope of the infringement. The expert can by no means give an opinion on the question of infringement: that question is left to the judge in the subsequent trial on the merits.
If the patent holder is in addition seeking seizure measures, he must also demonstrate that these are reasonably justified in the light of the balance of interests between the parties (ie the respective advantage for the patent holder and disadvantage for the adverse party, or for the public in general, such as considerations of public health). This condition is more restrictive than the two conditions set out above for the grant of purely descriptive measures – which explains why, whereas descriptive measures are rarely denied, seizure measures are more difficult to obtain. The reason for this is the exorbitant nature of such remedy.
The advantage of the descriptive seizure procedure lies in its swiftness and effectiveness, as the adverse party is not informed of the requested measures. Besides, the judicial expert can have access to the alleged infringer’s accounts to the extent he deems necessary for fulfilling his mission (viz for assessing the existence, scope and origin of the suspected infringement).
The judge may order the petitioner to consign a bond, in which case the descriptive seizure order is not granted until proof is submitted that this financial condition has been fulfilled. This bond is intended to indemnify the opposing party in the event that he is eventually found not guilty of infringement in the trial on the merits.
After the expert has filed his report on the descriptive seizure, the petitioner must file an action on the merits within one month. Failure for him to do so results in the descriptive seizure order ceasing to have effect and the petitioner can no longer use the expert report or make it public.
When he is served a descriptive seizure order (by the operating bailiff on the same day as the enforcement of the measures granted), the alleged infringer can file a ‘third-party opposition’ (tierce opposition/derdenverzet) within one month. He can seek either the amendment or the withdrawal of the order. The procedure then becomes inter partes and the parties exchange their arguments by means of written submissions within an accelerated time schedule, in accordance with the format of preliminary injunction proceedings (see question 8.5 below). It is important to stress that the descriptive seizure order is enforceable notwithstanding a possible third-party opposition.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The (partial) invalidity of a patent may be raised as a defence in preliminary injunction proceedings. However, as courts only examine the plaintiff’s rights on a prima facie basis, the likelihood of success of such a defence is slim.
Belgian courts tend to consider that European patents, which are subject to an extensive patentability examination by the specialists of the EPO before they are granted, constitute prima facie valid rights.
An invalidity defence raised with respect to a national Belgian patent is more likely to succeed as national Belgian patents are granted without prior examination of the patentability criteria.
The format of inter partes preliminary injunction proceedings is very similar to the format of inter partes proceedings on the merits (see question 6.1). However, the number of written submissions per party will often be limited and the timetable for the exchange of written submissions shorter. It is common practice to fix such a timetable at the preliminary hearing.
The format of ex parte preliminary injunction proceedings is different. An ex parte petition and the exhibits relied upon are filed with the competent court. In most instances the court renders a decision on the basis of the petition and exhibits without hearing the petitioner. An order rendered on an ex parte basis can be opposed within one month after service thereof. The format of the ‘opposition’ proceedings is identical to the inter partes preliminary injunction proceedings format.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
In preliminary injunction proceedings, although to a lesser extent than in regular proceedings, the parties also submit documents, affidavits, witness statements and private expert reports.
It is however very unlikely that Belgian courts would appoint experts in such proceedings.
This is linked to the fact that preliminary injunction proceedings are assessed on a prima facie basis and are conducted more swiftly than regular proceedings.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
Infringement may be proven by any means.
The assessment of the validity as well as the infringement is on a prima facie basis.
Furthermore, the plaintiff must demonstrate that the balance of interests between the parties is in favour of the granting of an injunction (see question 8.1 above).
In preliminary injunction proceedings the case is usually heard within two to six months. Much depends on the complexity of the matter, the strength of the defence, the parties’ initiative in commencing and pursuing the proceedings (diligence de la partie), and their cooperation in preparing the case.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Article 50 s 6 of TRIPs provides that a preliminary injunction should be followed up by initiating main proceedings within a reasonable period of time as failure to do so would result in the loss of injunctions effect. It is accordingly advisable to initiate proceedings on the merits simultaneously or shortly after the initiation of preliminary injunction proceedings.
9.1. What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
In a trial on the merits as well as in preliminary injunction proceedings, any party can appeal the decision within one month of the service of the decision in question. This deadline is extended when the party who is served the petition for appeal is domiciled abroad.
The filing of an appeal usually stays the enforcement of the decision in first instance, unless the latter provides otherwise (in preliminary injunction proceedings, however, decisions are, as a rule, enforceable notwithstanding the appeal).
When seized with an appeal, the court of Appeal hears the entirety of the matter, ie factual elements as well as points of law, but only to the extent that they have been appealed by the parties. The party who is served a petition for appeal can file an incidental appeal by way of written submissions with respect to the elements not appealed by the petitioner.
9.2 How long do appeal proceedings typically last?
Appeal proceedings typically last from 18 months to two years.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
The costs involved in descriptive proceedings (including third-party opposition but not appeal) may be estimated between €30,000 and €50,000. Of course, this estimate is liable to vary depending on the defence of the third-party opposition or lack thereof.
The costs of patent infringement proceedings on the merits, at first instance, are in general between €80,000 and €150,000 or more, depending on the complexity of the case. In preliminary injunction proceedings, the costs typically vary between €60,000 and €100,000.
Moreover, if the court appoints an expert, additional costs will be incurred.
Costs are roughly similar at the appellate level.
10.2 Are costs recoverable from the losing party?
Under Belgian law, the parties traditionally bear their own attorneys’ fees.
However, the Supreme Court recently held that in certain specific circumstances, the losing party could be ordered to pay the other party’s attorneys’ fees and legal expenses.
Unfortunately, there has been no further clarification of this issue, and the matter is currently under investigation at the legislative level.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
There are no significant developing and emerging trends in Belgian patent law.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
Belgium has not yet implemented Directive 04/48/EC of 29 April 2004 which aims to harmonise the means of enforcement of intellectual property rights.
However, a first draft bill transposing the Enforcement Directive has been prepared by the Ministry for Economic Affairs and is currently being debated in the lower house of Parliament. Belgian intellectual property law is already to a large extent in line with the Directive’s requirements and in certain fields provides even greater protection for intellectual property rights. Most of the mechanisms set forth in the Directive (saisie-description, specific interim relief) already exist under current Belgian law. However, the bill contains certain provisions that go beyond the Directive’s requirements.
As mentioned above, a draft bill on the repression of infringement and piracy of intellectual property rights, containing certain provisions for the enforcement of Regulation 03/1383/EC, has recently been prepared and is currently debated in the Parliament. It provides for Custom’s intervention in patent infringement cases and establishes criminal sanctions for patent infringement.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Textbooks
M Buydens Droit des brevets d’invention et protection du savoir-faire (Bruxelles, Larcier, 1999) 421 B Van Reepinghen et M De Brabanter Les brevets d’invention (Bruxelles, Larcier, 1987) 423 Cl Delcorde La protection des inventions (Gand, Story-Scientia, 1985) 211 A Braun ‘Actions en cas de contrefaçon’ in Problemen van octrooirecht (1994) 525
Periodicals
Intellectuele Rechten/Droits Intellectuels (Kluwer) (three monthly) Revue de Droit Intellectuel/Ingénieur Conseil (Bruylant) (bimonthly)
Websites
http://mineco.fgov.be/homepull_nl.htm: website of the Belgian Intellectual Property Office www.chaire-arcelor.be/?rb=home: website of the Catholic University of Louvain about patents www.law.kuleuven.ac.be/cir/: website of the Centre for Intellectual Property Rights (CIR) established by the law faculties of the Catholic University of Leuven and the Catholic University of Brussels www.belgielex.be/: Belgian official site giving access to legislation and case law of the Belgian supreme court and a selection of lower courts
FOOTNOTES
1 Published in the Official Journal on 9 March 1985, and since then amended on numerous occasions, inter alia to bring it in line with European regulations and international treaties or conventions (such as the Act of 28 January 1997, published in the Official Journal on 4 April 1997, bringing Belgian patent law into conformity with Arts 27(2), 31 and 3 of the TRIPs Agreement, and the Act of 10 September 1996, published in the Official Journal of 10 July 1997, approving the Act of Revision of Art 63 of the European Patent Convention). Its most recent amendment occurred by Act of 28 April 2005, published in the Official Journal on 13 May 2005, implementing Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions. The Belgian Patent Act is complemented by several Royal Decrees in execution of certain of its provisions, as well as by some Acts related to issues of national security and supplementary protection certificates for medicinal products. 2 Article 77(1) Belgian Patent Act. Given that the last patents applied for under the old Patent Act will expire on 31 December 2006 (with possibly some supplementary protection for medicinal products certificates extending to 31 December 2011), the old Patent Act is only seldom relevant anymore. 3 Liège, Mons, Brussels, Antwerp and Ghent (Art 73 Belgian Patent Act).4 This is a consequence of Art 6 of the Belgian Judicial Code under which the courts are not allowed to render a judgment having a general scope and applicable as a rule. According to the Belgian supreme court (cour de cassation), this entails that judges referring to earlier decisions must set out their reasons for endorsing such (see ia Cass, 13 February 1984, Arr Cass, 1983-1984, 716; Pas, 1984, I; JTT, 1985, 422; Cass, 27 January 1992, RW, 1991-92, 1265; Cass, 12 April 1995, Arr Cass, 1995, 387; RW, 1995-96, 566). 5 Brussels court of first instance in preliminary injunction proceedings, 14 September 2001, Colgate/Unilever, IRDI 2002, 239; Brussels court of first instance in preliminary injunction proceedings, 25 March 2005, Altana Pharma AG/Eurofarma Laboratories LTDA, Intas Pharmaceuticals LTD, Korea United Pharm Inc, general docket number 04/1901/C) 6 ECJ, C-116/02, Gasser GmbH/MISAT Srl, 9 December 2003. 7 (Epilady case) Antwerp, 25 June 1990, Ing Cons, 1991, nrs 7-8, p 249. 8 This provision was modified when the EU Biotech Directive (98/44/EC) was implemented into Belgian law by the Act of 28 April 2005, which amended the Belgian Patent Act and came into force on 23 May 2005. By broadening the scope of the experimental use exception, however, the Act exceeds the requirements contained in the Directive, as the latter does not contain any particular provision on this issue. 9 Supreme Court,14 November 1980, Pas 1981, I, 322. 10 See Act of 5 August 1991 on the Protection of Economic Competition, coordinated on 1 July 1999. On 1 October 2006 a new Competition Act will become law. For the present purposes, the new Act does not change the substantive rules. 11 ECJ 29 April 2004, IMS, C-418/01; see also ECJ 6 April 1995, Magill, C-241/91 and C-242/91. 12 Belgian group of the ANBPPI, April 2006, report Q189. 48 European Lawyer Reference Series13 According to the preparatory works of the Belgian Patent Act, the limitation term is separately applicable to each infringing act. European Lawyer Reference Series 4914 In an important decision on the ‘Senseo coffee machine and pads’, the Antwerp court granted measures on the basis of indirect infringement: Antwerp, 8 November 2005, Ing-Cons 2005, afl 5, 502, commented by DE GRYSE, E; Juristenkrant 2005 (commented by LAMON, H), afl 119, 7.
