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)
The main source of substantive law relating to patents and patent litigation is the Danish Consolidated Patent Act No 1136 of 16 November 2004, as amended. The current Act was adopted in 1967 based on a thorough review initiated in cooperation with Finland, Norway, and Sweden. The Act incorporates both the Paris Convention (1883) and the WIPO Convention (1967). Since 1967 the Act has been amended a number of times, in particular to fulfil Denmark’s obligation under international agreements such as the Patent Cooperation Treaty (1970), the European Patent Convention (1973), the Community Patent Convention (1975) as amended by the Agreement relating to Community Patents (1989) (the latter has not entered into force), the Budapest Treaty (1977), the TRIPS Agreement (1995), the Patent Law Treaty (2003) and the London Protocol (2003).
A number of executive orders issued under the Patent Act should be taken into consideration when dealing with patent issues. The most important orders are: Order on Patents and Supplementary Protection Certificates (6/2003); Order on Patents on Pharmaceuticals (450/1983, as amended); and Order on Patent on Inventions relating to Foodstuffs (511/1988, as amended).
The Danish Consolidated Administration of Justice Act No 910 of 27 September 2005, as amended, regulates proceedings before the Danish courts.
A fairly limited number of Danish court decisions exist relating to patent disputes. Please note that in matters relating to eg patentability, decisions from the Danish Patent and Trademark Office (including the Board of Appeal for Patents and Trademarks) and the European Patent Office are also relevant.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
Danish citizens cannot directly claim rights from international treaties, but must rely on the Danish Patent Act and request the courts to interpret the act in accordance with Denmark’s international obligations.
Acts take priority over executive orders. Court decisions and administrative decisions primarily serve as guidance in the interpretation of acts and executive orders.
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
The Danish courts are organised in a three tier system:
Proceedings for preliminary injunction are conducted before the city courts, bailiff’s division (the ‘Bailiff’s Court’), as the court of first instance with the possibility of appeal to the High Court. With a few exceptions, all other patent proceedings are decided by the High Courts as the court of first instance with the possibility of appeal to the Supreme Court. Thus, patents are enforced in the ordinary courts of law by judges with legal training. No specialised patent courts exist and a patent holder should not expect any particular expertise on patent law or technology. However, it should be mentioned that in the High Court for the Eastern District patent proceedings are usually decided by the same division of the court to ensure and maintain a specialist knowledge of patent law and related issues.
On 2 June 2006 the Danish Parliament adopted a bill for a reform of the Danish court system which will enter into force on 1 January 2007. According to the bill all actions must be brought before the city court as the court of first instance with the possibility of appeal to the High Court. Only actions involving matters of principle may be referred to the High Court as the court of first instance. However, actions concerning a number of intellectual property rights, including patent proceedings, must in future be decided by the Maritime and Commercial Court of Copenhagen as the court of first instance with the possibility of appeal to the Supreme Court. Currently, the Maritime and Commercial Court of Copenhagen mainly hears cases in which specialist knowledge of commercial matters is deemed important.
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?
In principle, the courts are not bound by earlier Danish court decisions. However, in practice, earlier court decisions are perceived as an important source of law in the interpretation of the Patent Act. This applies in particular to Supreme Court decisions. In patent proceedings the courts regularly consider decisions from foreign courts concerning provisions or principles which are based on international law, especially if national case law does not offer sufficient guidance.
2.3 Do the courts deal with infringement and validity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
The Danish courts are competent to deal with infringement and validity simultaneously. Actions for revocation on grounds of invalidity may be brought before the courts (the High Courts) and/or before the Patent and Trademark Office as opposition or administrative reexamination proceedings. To avoid procedural difficulties and unfortunate clashes between decisions made by the judicial and administrative authorities, the court or the Patent and Trademark Office may decide to suspend a case which includes an invalidity issue until the other authority has made a final decision in the matter. This applies in particular if the action was brought before the Patent and Trademark Office prior to the initiation of the court proceedings. On a few occasions, the Danish courts have also postponed proceedings pending an opposition decision from the European Patent Office.
The validity of a patent may also be disputed during preliminary injunction proceedings: cf question 8.4.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
In court, parties will usually be assisted by lawyers (‘advokater’). Representation through a lawyer is, however, not mandatory in civil proceedings as parties may act through, for example, an employee such as in-house counsel. The courts may, however, order a party to appoint a lawyer, for example when the matter is complex.
There are no requirements concerning representation before the patent authorities, ie the Patent and Trademark Office and the Board of Appeal for Patents and Trademarks.
2.5 What is the language of the proceedings? Is there a choice of language?
In court, the language of the proceedings is Danish and there is no choice of language. This implies that documents and witness statements in a foreign language must be translated into Danish unless the parties and the court agree otherwise. However, parties from the Nordic countries (Finland, Iceland, Norway, and Sweden) are entitled to submit documents and testimony in their native language.
Danish courts are gradually becoming more and more willing to consider evidence in English or German. This applies in particular to the Maritime and Commercial Court of Copenhagen and the Supreme Court and to some judges in the High Courts. However, it is unlikely that translation can be avoided in patent proceedings.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
As a main rule the Danish courts are only competent to grant an injunction against an act or omission in Denmark. The possibility of granting extra-territorial injunctions, ie injunctions relating to actions or omissions abroad, will depend on the subject matter of the dispute and/or the legal basis for the claim.
In any case, the Danish courts cannot grant an injunction which is contrary to the rules on exclusive jurisdiction of the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial matters of 1968 (the ‘Brussels Convention’) as implemented into Danish law through Act No 325 of 4 June 1986, as amended. The Brussels Convention provides that in proceedings concerning the validity of entries in public registers, the courts of the state in which the register is kept have exclusive jurisdiction, and in proceedings concerned with the registration or validity of patents, the courts of the state in which the deposit or registration has been applied for have exclusive jurisdiction (see Art 16(3–4)). Further, it should be noted that in any event the courts of the state in which the injunction is to be enforced would have exclusive jurisdiction as to the enforcement of the decision, (see Art 16(5) of the Brussels Convention).
Having said that, leading commentators argue that the Danish courts should not be excluded from granting extra-territorial injunctions and similar interim measures with respect to other EU Member States. It is, however, a condition that the plaintiff can establish a specific, actual interest in an extra-territorial injunction. No published court decisions have directly dealt with the issue and with respect to injunctions in patent disputes it may be expected that extra-territorial effect would at least require that the court has dealt with the governing law of the relevant jurisdiction requested to be covered by the injunction.
It should be mentioned that due to reservations made by Denmark concerning the harmonisation of legal and internal affairs in the EU, the Brussels Convention remains in force between Denmark and the other Member States and is thus not (yet) replaced by Regulation 44/2001 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
Under Danish law Danish courts must decline jurisdiction when the same action between the same parties is already pending before the courts of another state provided that judgments made by the courts of that state are generally recognised and enforceable in Denmark (‘international litis pendens’).
This means that if a patent infringer were to initiate an action for declaration of non-infringement of a patent with a court of another EU Member State, the Danish courts must stay the proceedings until the court first seized had decided whether it has jurisdiction and, if so, the Danish court must decline jurisdiction in accordance with Art 21 of the Brussels Convention. However, pursuant to Art 24 of the Brussels Convention, an application for provisional measures, eg a preliminary injunction, may be made to a court of a Member State even where the courts of another Member State have jurisdiction as to the substance of the matter. In a recent judgment from the European Court of Justice (the ‘ECJ’) concerning Art 24 the court held that the Brussels Convention precludes courts in any Member State granting injunctions prohibiting a party from commencing or continuing legal proceedings before a court of another state, even where that party is acting in bad faith with a view to frustrating the existing proceedings (see C–159/02, Gregory Paul Turner). We are not aware of any Danish case law on the applicability of Art 24 in cross-border patent infringement disputes. However, it may be expected that the Danish courts will be in line with the case law of the ECJ.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
Section 39 of the Patent Act provides that the scope of protection is assessed based on the patent claims interpreted in the light of the patent description. Generally, Danish courts seek to ensure that patent infringement is assessed in accordance with Art 69 of the European Patent Convention and the Protocol on the interpretation of Art 69 so that a reasonable balance between fair protection of the patent holder and a reasonable degree of certainty for third parties is found.
The Danish courts have not referred explicitly to the doctrine of equivalence in any decision relating to patent infringements, but the principles behind the doctrine are relevant in an infringement action. For example, direct equivalents will usually be found to fall within the scope of the patent claims.
An alleged infringer may claim that infringement has not taken and is not taking place.
Further, the alleged infringer may claim that the patent is invalid, eg due to lack of novelty, lack of inventive step or insufficient disclosure or because the patent has been extended beyond the original application.
The alleged infringer may also argue that the infringing acts have been conducted for noncommercial purposes or for experimental purposes. The experimental use exemption of the Patent Act includes a so-called Bolar exemption, ie a provision which makes it permissible to conduct certain acts for the purpose of obtaining marketing approval of a generic medicinal product.
Furthermore, an alleged infringer may claim as a defence that the rights claimed have been exhausted under the doctrine of exhaustion.
The Patent Act also includes a prior use exemption allowing a prior user of a patented invention to continue such use, provided that the invention was exploited commercially in Denmark at the time when the patent application was filed or all appropriate steps have been taken to initiate such exploitation.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
No Danish case law or decisions from the Danish competition authorities exist regarding patent misuse. In principle, however, enforcement of a patent may in certain circumstances constitute an antitrust violation, for example if a dominant undertaking seeks to enforce patent rights against competitors knowing that an infringement has in fact not taken place.
The Danish competition authorities seek to ensure that their practice is consistent with the practice of the European Commission and the ECJ. In this connection, the Danish authorities will be guided by the outcome of the case between the Commission and AstraZeneca which is currently pending before the Court of First Instance.
Invalidation can take place due to lack of patentability (including, for example, lack of novelty, lack of inventive step or lack of industrial applicability), due to insufficient disclosure or because the patent has been extended beyond the original application.
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
In an invalidation case, the courts are entitled to re-examine the patent granted by the Patent and Trademark Office in full. If the court finds that only some aspects of the patent should be invalidated, the court may rule that the patent is invalidated in part.
No recent Danish case law in which a patent is found partially invalid exists. It is thus not clear whether the court is to rewrite the patent claims or other parts of the patent or whether the wording of the amended patent is to be agreed upon by the parties, for example based on input from the Patent and Trademark Office.
No rules or case law exist as to whether the court can transform the patent to a utility model, but it is doubtful whether this may take place. In any case, as most of the invalidity grounds applicable to patents are equally applicable to utility models, transformation of a patent would merely be a useful remedy in situations such as when the threshold for an invention has not been met while the lower threshold for a utility model has been met.
The patent holder may at any time apply to the Patent and Trademark Office for amendment of the patent, and the Office will in most cases accept such an application if the amended patent is considered valid. However, it is not possible to amend the patent claims during a law suit through an application to the court, and in practice it is likely that the Patent and Trademark Office will refuse to amend the claims while a law suit is pending.
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)?
Danish law does not contain any provisions which directly relate to fraud or similar misconduct committed against the Patent and Trademark Office in connection with a patent application. However, depending on the circumstances, such misconduct may provide a basis for an invalidity suit and/or opposition or administrative re-examination proceedings, eg if the applicant intentionally has kept prior art from the Patent and Trademark Office. In rare cases, criminal liability might also be imposed.
A Danish patent expires 20 years from the date of the application. However, certain patents relating to pharmaceutical products or pesticides may be extended by way of a supplementary protection certificate.
It is a condition for maintaining a patent (and a patent application) that an annual fee is paid to the Patent and Trademark Office.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
A patent holder can bring a law suit claiming both patent infringement and unfair competition for the same set of facts. However, it is important to note the difference in the object protected under the two Acts. The Patent Act protects the invention as expressed by the patent whereas the Danish Consolidated Marketing Practices Act No 699 of 17 July 2000, as amended, protects a given market position obtained by an individual or a company as well as the appearance of a product.
A claim regarding unfair competition may be relevant as an alternative or supplementary claim to patent infringement, if for example the alleged infringer has been using confidential information obtained during his employment with the patent holder or through a contractual relationship with the patent holder or if the appearance of the products in question is identical or very similar, and the appearance is not compelled by the technical purpose of the product.
It should be noted that the usual venue for law suits alleging patent infringement is the High Courts whereas the venue for law suits concerning the Marketing Practices Act is the Maritime and Commercial Court of Copenhagen. The venue is determined by the most significant of the allegations in the case.
4.1 Who can sue for patent infringement (patent holder, executive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
Generally, under Danish law the patent holder and any party with an explicit or implicit licence to the patent can sue for patent infringement. Whether or not a licensee is entitled to sue depends essentially on the terms of the licence. If a licensee sues for patent infringement, notice must be given to the patent holder, provided that the address of the patent holder is recorded in the patent registry. There is no requirement that the licensee be registered.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
Generally, a declaratory judgment can be obtained if a concrete actual legal dispute exists between the parties. For example, if a patent holder asserts that an alleged infringer is infringing his patent and the alleged infringer believes that the performed acts do not infringe the patent, the alleged infringer is entitled to bring a claim for a declaratory judgment on non-infringement.
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?
Any person or legal entity performing an infringing act can be sued for patent infringement. Legal entities will only be liable if the infringing acts have been committed by persons related to the firm, such as the management or the employees, in connection with their work for the legal entity.
It is possible, in principle, to initiate proceedings against company directors personally, but this is not a customary approach and company directors will only be personally liable for acts performed by the company in exceptional circumstances.
Any person or legal entity who delivers or offers means to exploit the invention to anyone not entitled to use the invention, will be infringing the patent rights, provided that such means relate to a material element of the invention and if the person knows or it is obvious that such means are suitable or directed at exploiting the patent. In addition to such independent infringement of the patent rights, the general Danish rules regarding liability for contributory behaviour apply. Consequently, the provisions regarding patent infringement most likely include any person who has taken part in the infringement by way of inducement, advice or action.
It is possible for each of the parties to add additional third parties during the litigation, provided that:
The plaintiff is entitled at any time to withdraw in whole or in part the claims made against one or more defendants and thereby also subtract such parties from the litigation.
It is mandatory to include the patent holder in invalidity proceedings as an invalidity claim must be made towards the patent holder. This rule does not, however, apply to preliminary injunction proceedings.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
Generally, a patent holder has two options when seeking to enforce his patent rights in Denmark. The patent holder can file an application for preliminary injunction and/or initiate patent infringement proceedings. The patent holder will also be entitled to initiate a procedure for securing evidence. Such a procedure is often initiated simultaneously with an application for preliminary injunction: see question 8.3.
Criminal proceedings are available towards an infringer of patent rights if the infringement was committed intentionally. The penalty is a fine. However, if an infringement has been committed with an intention of significant economic gain, the penalty is up to one year’s imprisonment. In practice, criminal proceedings are only initiated in exceptional cases.
Border measures are available for a patent holder who suspects that infringing products are being imported, exported or re-exported to or from Denmark. Such measures are regulated by EU Regulation No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.
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?
According to the Danish Arbitration Act No 553 of 24 June 2005 parties are entitled to agree to resolve their disputes by arbitration provided that the conflict relates to a matter for which the parties are free to agree on a certain solution (dispositive matters). However, only the Danish Patent and Trademark Office and the courts are competent to invalidate a patent and the Patent and Trademark Office will not recognise and execute an arbitral award declaring a patent invalid.
Arbitration awards will only affect the parties having consented to the arbitration, and in patent disputes arbitration will therefore be most relevant in eg licence agreement disputes or similar contractual disputes. There are no specific statutory provisions on mediation agreements or similar ADRs. It is generally agreed that parties can validly agree to submit disputes to mediation or other ADR. There is presently no specific Danish forum for ADR in intellectual property matters, and mediators are not trained to be specialised in any particular area of law. Certain Danish lawyers trained as mediators may, however, also be on the list of WIPO’s panel of mediators and/or have knowledge of the area.
Patent infringement proceedings before the High Court are commenced by the plaintiff’s submission of a writ (‘stœvning’) to the court. The receipt thereof by the court constitutes the initiation of the proceedings. The court fixes a date for the defendant’s first response, the statement of defence (‘svarskrift’). In the statement of defence the defendant must within the given deadline submit the defendant’s claim, eg rejection or dismissal, including any counterclaims and the legal grounds, eg allegations, and the facts supporting such claims and allegations. The parties will normally be allowed to exchange additional pleadings, eg reply and rejoinder. When the preparatory phase is concluded the court will fix a date for the oral hearing. The fixing of the oral hearing results in a limited effect of foreclosure in so far as a party can no longer submit new claims or allegations without the opponent party’s and the court’s consent. Judgments are normally pronounced within three months of the date of the oral hearing.
There are no juries in civil matters in the Danish court system nor in criminal cases if the charge is a private matter. Patent disputes are thus decided by judges. Currently in the city courts only one judge presides; however, the pending reform suggests that it should be possible to request three judges in matters of general interest. The High Court’s chambers are composed of three judges. Cases before the Maritime and Commercial Court of Copenhagen are heard by three or five judges, one of whom is a permanent judge with a degree in law. The remaining judges do not have a law degree but are persons with a commercial or technical background who are appointed based on recommendations from a number of business sectors and organisations. The permanent judge in charge of the matter will elect the remaining judges based on the needs in each matter. In the Supreme Court between five and seven judges will participate depending on the issues and substance of the matter.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
It is common practice to hear witnesses during the proceedings. Both parties are allowed to (cross-)examine witnesses. With certain exceptions everyone has a duty of giving evidence in court and if necessary the court has authority to force a witness to testify. Witness testimony is given under the penalty of law.
Court-appointed experts are frequently appointed in patent disputes. The court has exclusive competence to decide whether an expert should be appointed and, if so, the identity of the expert. The court will, however, very rarely appoint an expert without a request from at least one of the parties. In practice, a party requesting an expert opinion will submit a request to the court along with a draft questionnaire to the expert. Pleadings are exchanged on the issue, and the court will finally decide what questions to submit to the expert. Where the parties agree to specific questions, the court will very rarely refuse submitting the questions and the court will only very rarely perform its own drafting of questions but may rephrase questions suggested by one party where there is disagreement. Expert opinions may also be requested in preliminary injunction proceedings.
Unless otherwise agreed between the parties, expert testimony other than opinions from the court-appointed expert witness is usually not allowed by the courts. Further, unilaterally appointed experts are usually prohibited and reports from such experts are usually not admissible. These principles do not, however, apply to preliminary injunction proceedings.
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?
Pre-trial discovery in the Anglo-Saxon format does not exist under Danish law. It is, however, possible for a party to request the opposing party or a third party to produce particular documents and under certain conditions the court may order the opposing party or a third party to produce the documents in question. With regard to a request for disclosure by a third party the requesting party’s interest in disclosure must be balanced against the third party’s and the opposing party’s interest in non-disclosure. A request for disclosure must be specified and concern documents relevant to the dispute. Thus, it is not possible to use a request for disclosure as a ‘fishing expedition’. The court cannot force a party to disclose documents or other evidence, but the court may interpret a refusal to disclose against the non-complying party. In relation to disclosure orders against third parties, the court may in rare cases also impose a daily fine to be paid each day for a fixed period of up to six months.
With effect from 15 April 2006 the rules on production of documents in the Administration of Justice Act were amended with respect to infringement matters concerning intellectual property rights. Under the amended rules, the courts may require an infringer or a third party to disclose information relating to the origin of the infringing goods, channels of distribution, additional participants in the infringing acts as well as information relating to prices and quantities. Any self-incriminating information is, however, exempted from the disclosure obligation.
A disclosure obligation may only be placed on a person conducting infringing acts or providing services for such acts for a commercial purpose. Typically an internet provider will be deemed as providing services to infringing acts committed through the internet, such as file sharing. A disclosure obligation may not be placed on a consumer.
A refusal to disclose may be punished. The penalties include fines, daily fines, and detention of a party or a third party for up to six months.
6.5 What level of proof is required for establishing infringement or invalidity?
The starting point in Danish law for assessment of evidence is that the judge is free to consider the evidence on its merits. Generally, there are no formal rules on the level of proof required and the judge is free to decide what emphasis he will place on the evidence produced by the parties.
In patent proceedings the burden of proof lies with the party who claims that the patent has been infringed or that the patent is invalid. To obtain a judgment in his favour that party must establish by means of conclusive evidence that the patent has in fact been infringed or that the patent should in fact be invalidated. A mere probability or presumption of infringement or invalidation is not sufficient to meet the burden of proof.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Patent infringement proceedings are usually quite lengthy, not least if an opinion from a court-appointed expert witness is needed. A delay of the proceedings of 12–18 months to obtain an opinion from a court-appointed expert witness is not unusual. This period may be extended where there are disputes about the appointment of the expert or the questions to be submitted and for any supplementary questions.
Danish courts are generally required to expedite matters, but it is not unusual for patent infringement or invalidity proceedings starting in the High Court to last between two and four years in the first instance. Apart from this general obligation, there are no specific means available for expedition of the process.
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 proceedings may upon request be postponed or stayed when the court considers it necessary for specific reasons. In practice, it is often possible for a defendant to slow down the proceedings, for example through requests for additional evidence, clarification of the plaintiff’s allegations etc. However, where a party has made several requests for suspension of the proceedings without giving fair reasons for this, the courts will normally be reluctant to accept further delay, in particular if the opposing party objects to the request.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
The following remedies are usually available against a patent infringer: preliminary injunction, final injunction, recall-order, destruction of the infringing goods and any equipment which primarily has been used to manufacture the infringing goods, delivery to the patent holder of the infringing goods, amendment of the product, publication of the decision and monetary remedies such as damages and other compensation. In order to take advantage of any of these remedies, the patent holder must specify the appropriate remedies in the patent holder’s claims.
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?
A final injunction may be obtained against acts which have actually been performed as well as against acts which are or have been imminent. Danish court decisions follows the res judicata doctrine, and decisions can thus only be enforceable against the parties to the proceedings.
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?
Monetary remedies are available to the patent holder, provided that the infringer has infringed the patent rights intentionally or negligently. In that event, the patent holder is entitled to reasonable compensation for use of the patent, typically based on a royalty payment, and damages for any loss exceeding such payment. The Patent Act was amended in 2005 to implement EU Directive 2004/48 on the enforcement of intellectual property rights. Consequently, damages now take into consideration the patent holder’s lost profits and the infringer’s unjustified profits. In addition, compensation can be awarded to the patent holder for any non-economic damage, such as harm to the patent holder’s reputation, if the infringing products have been of a particularly poor quality.
Punitive damages are not available under Danish law.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Under Danish law, it is possible for a patent holder to obtain preliminary relief such as arrest or injunction. The rules on preliminary relief are contained in the Administration of Justice Act.
In practice, patent proceedings usually commence with an application for a preliminary injunction. The requirement for a preliminary injunction is that conclusive or at least presumptive evidence in respect of the alleged infringement must be produced, ie the patent holder must produce plausible evidence that the patent has been infringed. Where the plaintiff cannot submit conclusive evidence of the infringement, the court will normally require a security, such as a bank guarantee, as a condition for issuing the preliminary injunction. The amounts of security requested in patent proceedings are often considerable, ie several million DKK.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Under Danish law it is normally not possible to obtain interim relief ex parte. The application for interim relief, eg a preliminary injunction, must be served on the opposing party. However, if proper service has taken place, preliminary injunctions may be granted by default.
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-contrefacon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
It is possible to secure evidence through an application for securing of evidence with assistance from the Bailiff’s Courts according to the rules in the Danish Administration of Justice Act, chapter 57a, which are based on the TRIPS Agreement, Art 50.
Securing of evidence is made via a search of the defendant’s premises. The search may comprise all material relevant in order to establish proof of infringement and the extent hereof (eg bookkeeping material, marketing material, IT systems, machines and other equipment). A search may also be made at private premises. The search may be done with or without prior notification of the defendant. The material which is seized is kept in storage by the Bailiff’s Court. As a rule, the applicant is entitled to receive copies of the material.
In order to initiate a search, the patent holder is, inter alia, required to produce presumptive evidence of the infringement, ie there must be plausible evidence that the patent has been infringed. It is common practice to initiate the securing of evidence simultaneously with an application for a preliminary injunction.
The defendant does not have a duty to provide information, eg on his password to the computer, the location of a storage room etc, to the Bailiff’s Court during the search. The defendant is thus entitled to remain silent pursuant to the right against self-incrimination (see eg Art 6 of the European Convention on Human Rights).
As a rule the Bailiff’s Court will require the patent holder to provide security such as a bank guarantee as a condition for the search. Further, within four weeks of the conclusion of the search the patent holder must initiate an action at the city court to confirm that the search was justified.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The defendant may dispute the validity of a patent during preliminary injunction proceedings. In practice, this approach is very common as part of the defence strategy, and the Bailiff’s Court will normally not issue a preliminary injunction if the Bailiff’s Court believes that the patent may be invalidated by the higher courts or the administrative authorities. However, as a rule, Bailiff’s Courts are very reluctant to declare in the course of preliminary injunction proceedings that a patent may be invalidated and that a preliminary injunction should therefore not be granted.
Preliminary injunction proceedings are decided by the Bailiff’s Court with the possibility of appeal to the High Court. The proceedings are usually commenced by the plaintiff’s submission of an application for preliminary injunction. The defendant is usually allowed to respond to the application in writing and further pleadings may also be exchanged before the oral hearing takes place.
The Bailiff’s Court is presided over by a judge, typically a deputy judge without any particular expertise on patent law or technology. As a main rule a request for a preliminary injunction must be filed with the Bailiff’s Court at the defendant’s venue (place of residence/registered office). The Bailiff’s Court issues its decision following an oral hearing.
The ordinary rules on civil procedure apply to the proceedings though with a few exceptions. For example, the rule on foreclosure which applies in civil procedure, ie that the parties are not entitled to submit new claims, allegations etc as of the conclusion of the preparation of the case, does not apply to the same extent and the parties are often allowed to amend their claim and allegations and submit new evidence immediately prior to or even during the hearing.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
Preliminary injunction proceedings in patent cases often involve almost the same amount of evidence as in ordinary civil proceedings and is therefore quite similar to the requirements in the ordinary patent proceedings starting in the High Court. However, expert opinions from court-appointed experts are rarely obtained during preliminary injunctions proceedings. Instead, the parties usually produce one or more statement(s) from private experts on the technical issues in dispute.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The claim for injunction requires presumptive evidence of the infringement of the plaintiff’s rights. A preliminary injunction does not require the same level of proof as applies in ordinary civil procedure, ie conclusive evidence.
The level of proof required for a defendant to avoid a preliminary injunction on the grounds that the patent may be invalidated should be considered as very high.
Preliminary injunction proceedings in patent disputes are sometimes quite lengthy as the proceedings often involve almost the same amount of evidence as ordinary civil proceedings preparation. The oral hearing is also similar to a hearing during ordinary first instance proceedings.
The timeframe involved varies a great deal from one court to the other; some Bailiff’s Courts will usually process matters quicker than other courts. The Bailiff’s Courts are required to ensure that the matter be proceeded with as rapidly as possible, but a period of three to nine months from the filing of the application with the Bailiff’s Court to the oral hearing before the court is not unusual in patent disputes.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
If a preliminary injunction is granted, the plaintiff has a duty to have the injunction confirmed through an ordinary court case before the High Court, a so-called confirmatory action (‘justifikationssag’). This action must be initiated within 14 days of the date of the injunction. If this requirement is not observed, the injunction is cancelled and considered null and void with resulting damages to be claimed by the infringer.
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
Patent proceedings decided by the High Court as the court of first instance may be appealed by both parties to the Supreme Court. The time limit for appeal is eight weeks from the pronouncement of the judgment. Since judgments may normally be enforced upon the expiry of 14 days from pronouncement of the judgment, appeals are often filed before the expiry of this shorter time limit. The appeal makes it possible to undertake a completely new review of the case at the appeals stage. However, claims and allegations which were not submitted to the first instance court will – if objected to – only be considered with the permission of the appeals court.
Decisions by the Bailiff’s Court in preliminary injunction proceedings may be appealed by the plaintiff or the defendant separately to the High Court regardless of any pending confirmatory action. The time limit for appeal is four weeks.
9.2 How long do appeal proceedings typically last?
The duration of appeal proceedings generally do not differ from first instance proceedings as the appeal proceedings may include a full review of the case. However, where the parties have no new claims, allegations or evidence, the preparatory phase can be completed fairly quickly and the date of the oral hearing be fixed. The duration depends on the substance of the case but will usually vary between six and eighteen months. To this should be added the time for the High court to render its decision. This varies very much depending on the amount of actual workload, but a period of up to three months is not uncommon. The Supreme Court usually renders its decision one week from the oral hearing.
Appeals against preliminary injunctions are usually dealt with in writing and no oral hearing takes place, unless specifically requested and only where the court deems it necessary.
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?
Initiation of ordinary court proceedings requires the payment of a court fee consisting of a base fee of DKK 500, and an additional fee in disputes with financial values exceeding DKK 50,000 (DKK 250 + 2.4% of such value exceeding DKK 50,000, however with a maximum of DKK 150,000). The fees are increased by 50% in appeal matters. The fees are payable in two equal instalments, the first upon initiation of the proceeding and the second upon the fixing of the date for the oral hearing. However, initiation of preliminary injunction proceedings only requires payment of a court fee of DKK 300.
It is difficult to give a fair estimate of the lawyers’ fees involved in patent proceedings as it depends on the particular circumstances of the case. Generally, lawyers’ fees depend on individual agreement between the client and its lawyer. However, lawyers fees are limited by the requirements in s 126 of the Administration of Justice Act providing that lawyers may not charge an amount exceeding a reasonable amount. In Denmark, lawyers’ fees are usually calculated on the basis of the individual lawyer’s hourly rate.
10.2 Are costs recoverable from the losing party?
The Administration of Justice Act provides that the winning party’s costs and expenses should usually be reimbursed by the losing party. Costs are dealt with by the court in the final decision. According to the current provisions in the Act, which came into force on 1 July 2005, costs for lawyers’ fees are awarded with an appropriate amount whereas other costs, ie in particular costs for experts, translations and similar expenses, are covered in full.
Costs related to lawyers’ fees are usually not recovered in full as the courts’ decisions on such costs are based on tariffs which do not always reflect the actual costs incurred by the parties. The High Courts have with effect from 1 July 2005 issued new guidelines setting out the base tariffs. The courts may deviate from these tariffs in special circumstances.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
The main trends in Danish patent law relate to the general discussions regarding Denmark’s position in a globalised world. The Danish Government has established a committee (‘Globaliseringsrådet’) mandated, among other things, to explore the possibilities of exploiting patent rights to a greater extent than at present. The Committee was established last year (2005).
In addition, Denmark is participating in the international efforts to harmonise the patent area. In particular, Denmark is working for the improvement of the rules of procedure regarding the issuance of patents in order to secure that the same high threshold of patentability applies in all countries.
Furthermore, in the matter relating to the future structure of the patent authorities in Europe, Denmark is working for a decentralised system, where the national patent offices assist in the process of granting supranational patents.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
There is no major patent legislation in the pipeline with regard to patent enforcement.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Only very few works in English on Danish patent law and similar issues are available. However, an overview may be found in Thomas Riis Intellectual Property Law – Denmark (DJØF Publishing and Kluwer, 2000).
Useful websites with at least some information in English:
The Danish Patent and Trademark Office: www.dkpto.dk
The Danish courts: www.domstol.dk
The Danish government’s law database: www.retsinfo.dk
The Danish Parliament: www.folketinget.dk
