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 regulatory framework for patent litigation in Sweden is the Patent Act and the general Swedish Code on Judicial Procedure. Other relevant sources of law include the Employee’s Inventions Act and the Act on Swedish courts’ competence in certain cases in the field of patent law. The Patent Act is to a large extent the result of Nordic co-operation and incorporates relevant EC directives. Sweden is a member of the Paris Union and has ratified and implemented a number of international agreements and conventions such as Patent Cooperation Treaty, the European Patent Convention (‘EPC’), the TRIPS agreement, the Strasbourg Agreement, the Budapest Treaty, the Strasbourg Convention and the Convention Establishing the World Intellectual Property Organisation. For relevance of court decisions see question 1.2 below.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
The statutes constitute the primary source of law but, as in many other countries, preparatory works (which in Sweden are often quite extensive) are given considerable weight in the interpretation of the statutes. The case law from the Supreme Court and the Supreme Administrative Court form precedents but the courts may also seek guidance from reports made by various governmental committees, court decisions from district and appellate courts as well as legal doctrine.
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?
Matters in relation to the prosecution of patent applications are tried in the administrative court system (ultimately the Supreme Administrative Court) while issued patents are enforced in civil courts. The Stockholm District Court is the exclusive venue for patent litigation including actions on infringement as well as invalidity of patents. However, ordinary forum rules are applicable for cases regarding disputes arising out of licensing agreements and rights arising from prior use. The Svea Court of Appeal in Stockholm is the exclusive court of appeal for patent litigation and invalidity cases. Judgments from the Court of Appeal can be appealed to the Supreme Court but since the main function of the Supreme Court is to hear only cases of material legal value, the proceedings are subject to leave to appeal which is granted after application and due consideration by, as a main rule, one of the Supreme Court judges.
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?
From a formal point of view, Swedish courts are neither bound by decisions in similar cases by foreign courts nor by similar decisions by national courts which are not precedents. However, in practice, previous case law will often serve as a guide for the court in similar matters. By the harmonisation with the EPC it is further anticipated that case law is developed congruently in the contracting countries. There is thus not much room for diverging national development of patent law. Since most patents with effect in Sweden are EPC patents, case law from the European Patent Office is regarded as important by the Swedish courts in their application of the law. Case law from other EPC countries is also accorded some consideration by Swedish courts. Given the fact that patent case law from the Supreme Court and the Supreme Administrative Court is scarce, decisions from the Administrative Patent Court of Appeals and the Svea Court of Appeal have a law-developing function.
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 Patent Office)?
It is possible for the defendant to file a counterclaim regarding invalidity of the patent during infringement proceedings. If the outcome of the invalidity litigation is of direct relevance for the outcome of the infringement process, it is possible for the court to either join the cases or stay the infringement proceedings to await the outcome of the invalidity proceedings.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
There are no formal requirements (training, authorisation or otherwise) to be fulfilled for a person to represent a party to litigation in a Swedish court. However, a court can dismiss a specific counsel if he/she proves to be insufficiently skilled to handle the case. Usually a party in court is represented by an attorney at law or, for prosecuting patent applications, a patent agent.
2.5 What is the language of the proceedings? Is there a choice of language?
Proceedings are held in the Swedish language. If a party or a witness does not speak Swedish an interpreter is engaged.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
All inventions patented in Sweden (both national patents and European patents designating Sweden) fall under Swedish jurisdiction in accordance with Swedish rules. As a general rule, Swedish authorities do not enforce foreign judgments unless specifically provided for under Swedish legislation. Jurisdiction may also be claimed under the Brussels Convention or the Lugano Convention which both apply in Sweden. Sweden is for example required to recognise and grant enforcement of injunctive relief by a foreign court which had jurisdiction under the Brussels or Lugano Conventions.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
The Brussels and Lugano Conventions’ rules regarding litis pendens apply in Sweden.
However, Swedish courts have found that the rules regarding litis pendens have no effect regarding interim measures. Thus, the blocking effects of torpedo actions abroad are limited in Sweden.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
The protection afforded the patentee includes the right to exclude others from using the patented invention in certain specified ways, inter alia to make, offer for sale, put on the market or use a product which is the subject matter of a patent, or import or hold such product for such purposes. The scope of protection of a patent is determined by the patent claims. In interpreting the patent claims consideration must be given to the description of the invention. Although it is difficult to distil a clearly defined set of rules for the interpretation of the patent claims, as in many other countries, the doctrine of equivalents is recognised in Sweden. (Briefly stated the doctrine provides that if an alleged infringer uses the central elements of an invention, but substitutes any of the other elements needed to practice the invention, such substitution does not relieve him from infringement.)
The defences most commonly argued against patent infringement are contesting the infringement and claiming invalidity. See also questions 3.4 and 3.5 below for more information on invalidity.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
The holding of a patent or the market position that such holding confers cannot per se be successfully contested on the basis of abuse of dominant position. That said however, the use of patents in a certain manner by dominant companies may naturally entail abuse of dominant position in accordance with Swedish law or applicable EC legislation. Refusal to license patent rights may for example in some cases lead to such a result.
An invalidity claim is essentially to be made by the alleged infringer in a separate counterclaim, but such counterclaim may often be dealt with by the court in the same proceeding as the infringement matter.
A patent may be invalidated under certain specified conditions, ie if:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
It is possible for a court to declare a patent only partially invalid. A court may also, at least to a limited extent, rephrase the patent claims. It is, however, not possible for a court to transform a Swedish patent to a utility model
Patent claims may not be extended after registration. There is, however, room for the patentee to limit the scope of the patent during a law suit regarding invalidity.
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)?
The exclusive rights conferred to a patentee have certain limitations. For example, it does not include use of the invention which is not commercial or use for experiments which relate to the invention itself. Furthermore, anyone who, at the time when the application for a patent was filed, was using the invention commercially in Sweden (in light of the novelty requirement for patenting, such use may not have been ‘open’ or substantial) may, notwithstanding the patent, continue such use while retaining its general character, provided the use did not constitute evident abuse in relation to the applicant. It may also be noted that compulsory licences may be granted under certain conditions, ie:
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 law suits claiming both patent infringement and unfair competition for the same set of facts; however, these claims are tried in different courts. The venue for patent infringement is Stockholm District Court, whereas a law suit regarding unfair competition is tried in the Market Court. Therefore, it is not possible to cumulate the claims into one trial.
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?
Both patentees and licensees (exclusive as well as non-exclusive) are entitled to initiate litigation regarding patent infringements. A licensee’s right does not have to be registered in order to sue. Any natural person can be a party to a legal proceeding before Swedish courts. Under-aged persons must be represented by their guardians. Any legal person who can acquire rights and assume obligations can be party to legal proceedings.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
Declaratory actions can be brought by a patentee or licensee to determine whether he/she enjoys protection against another party on the basis of the patent, if there is uncertainty in this respect and this is prejudicial to him/her. A party who carries on or intends to carry on an activity may also bring a declaratory action against the patentee in order to determine whether a particular patent constitutes an obstacle to the said activity. In order to bring such action it is required that a concrete legal relationship exists (as opposed to a theoretical legal issue). There must be uncertainty regarding the matter and this must lead to the detriment of the party initiating the litigation.
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?
While directors of the board may not be held responsible for the company’s liabilities they may be sued for patent infringement based on their own personal involvement and actions (in their capacity as natural persons rather than on behalf of the company). Anyone inducing a patent infringement could be prosecuted in a criminal proceeding provided that the plaintiff has reported the crime for prosecution and the public prosecutor finds that such action is warranted from a public point of view. If the patentee (or licensee) has suffered damage and the prosecutor is informed of such damage, a claim for damages can be raised within the scope of the criminal proceedings. If, however, the size of the damages is in dispute, the court normally separates these claims from the criminal proceedings and it is up to the injured party to pursue the case against the infringer under the rules for civil cases. It should however be noted that such criminal proceedings are very rare in practice. A party inducing or contributing to patent infringement by someone else may not be sued in a civil case in order to obtain an injunction and/or damages.
Anyone who is not a party to pending proceedings who states that the matter at issue bears on his legal right or obligation and who shows probable cause for his statement may appear as an intervener in the litigation on either side.
Moreover cases instituted at the same time by a plaintiff against the same defendant shall be joined in one proceeding if they are based essentially on the same ground. Claims between the same or different parties may also be joined in one proceeding in other situations if joinder will aid the inquiry. Subtraction of a party ie withdrawal of action is only permissible until the defendant has defended the lawsuit if the defendant requests judgment.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
A patentee seeking to enforce his or her rights can file a complaint regarding infringement or initiate criminal proceedings due to infringement. Intentional or grossly negligent infringement is punishable by fines or imprisonment of up to two years. The public prosecutor will prosecute only if the patentee reports the infringement. However, there must be special reasons for prosecution and such special reasons are rarely at hand; thus the prosecutor usually does not take action and, in such cases, the patentee has the right to proceed with a private prosecution.
See question 5.1 above.
As for border measures, the Swedish Customs Authority may intervene and seize goods that are believed to be infringing, either due to a patentee’s notification or ex officio. An application for seizure is made to the Swedish Customs Authority. The application must contain contact details of the applicant, the intellectual property right the applicant claims is infringed, information facilitating the identification of original goods as well as certificates proving that the applicant is the right holder of the intellectual property right. The applicant must further sign a commitment to indemnify the importer, if the seized goods are not infringing the applicant’s intellectual property rights. The rights holder may further file an international application that includes all custom authorities in the European Union.
The Swedish application is processed by the trade department of the Swedish Customs Authority and a decision is rendered in 30 days. There is an opportunity to apply for a simplified proceeding for goods destruction if the parties reach a settlement agreement. If the parties do not reach settlement the applicant must bring an action for the infringement.
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?
Arbitration clauses can and are often used in agreements regarding, inter alia, transfer and licensing of patent rights; but other than that arbitration is not used as a means to resolve intellectual property disputes. Further, the Patent and Registration Office would not recognise and execute an arbitral award declaring a patent invalid.
An alternative dispute resolution method often used is the possibility of settlement during trial. The court is required to investigate the possibility of settlement during the preparation of the case. However, the extent to which the court induces the parties to settle varies in practice, depending on the judge handling the specific case. Subject to the approval of the parties, there is further a possibility for the court to appoint a mediator. This possibility is, however, not used particularly often.
As mentioned above, patent infringement proceedings are subject to the general Swedish Code on Judicial Procedure supplemented by certain specific rules in the Patent Act. Litigation is initiated by an application for a summons submitted by the plaintiff to the Stockholm District Court. After a summons has been issued and the defendant has submitted a written statement of defence, a further exchange of writs by the parties is usually carried out and often a preliminary hearing takes place before the main hearing. The main hearing includes an oral presentation. Following the plaintiff’s presentation of its claim, the defendant is given the opportunity to state to what extent the claims are contested or admitted. Subsequent to the parties’ presentation, the parties specify the grounds for their positions and the factual circumstances and evidence is presented. After taking up oral evidence, the parties deliver their closing arguments. The judgment is generally given by the court within two weeks of the main hearing, but in complex cases, or if the workload of the court justifies it, judgment may be postponed.
In patent cases, the court is to be made up of at least four members (of which two must be professional legally-trained judges and two must be technical experts) and at the most six members (of which three must be judges and three must be technical experts).
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
Any kind of supporting documentation can be invoked as evidence. Often, the parties also arrange for expert witnesses to be heard. Since technical experts form part of the court, the necessity for especially appointed technical experts is however reduced. Cross-examination is allowed both of witnesses and of individuals connected to the parties where such persons have been called to testify.
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?
As regards pre-trial discovery, the court may, at the plaintiff’s request, decide that an infringement investigation be carried out on the alleged infringer’s premises to seek relevant evidence and secure such evidence if it could reasonably be assumed that an infringement has been made (and provided that the reasons for such action outweigh the inconvenience that the alleged infringing party is caused by the action). Furthermore, the plaintiff must provide surety (typically in the form of a bank guarantee) for the damage that the alleged infringing party may be caused due to such infringement investigation. In urgent cases, infringement investigation can be granted without hearing the defendant.
6.5 What level of proof is required for establishing infringement or invalidity?
To prove infringement the plaintiff must show that it is more probable than not that infringement has occurred. The same level of proof is required for establishing invalidity. For the establishment of patent infringement, see section 3 above.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Taking a case from initial writ to trial in the court of first instance, the district court normally takes between one and three years. No specific ‘fast-lane proceeding’ is offered and thus it is, in practice, up to the parties to expedite the process by acting efficiently.
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 a defendant?
In accordance with the Swedish Code on Judicial Procedure, a party that tries to delay the proceedings may be directed by the court finally to determine its action or defence and to state the evidence that he invokes if it is required. A party may be given a limited time by the court after which the party may not allege any new circumstance or any new evidence unless he reasonably proves that he has had a valid excuse for failure previously to submit the circumstance or evidence. Proceedings may only be stayed if it is of extraordinary importance for the adjudication of the case that an issue sub judice in another court proceeding (in court or otherwise) be determined first or another impediment to a trial of considerable duration is encountered.
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 available to a patentee in case of patent infringement:
patentee. There is no statutory right to claim the decision to be published.
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 consumers?
An injunction can only be obtained for any infringements that are ongoing at the time of filing the action, hence not for any possible future infringements. However, this will be changed after the implementation of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. After the implementation it will be possible to obtain an injunction also for infringements that are about to be committed. Further, an injunction is only valid against the infringing party, ie the defendant in the case. Depending on who the defendant is in the case (ie the seller of the infringing products, the supplier or the manufacturer) they will be bound by the decision.
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?
A patentee is compensated for damages in connection with an infringement if the infringer has acted intentionally or negligently. The basic rule is that the rights holder receives full compensation for his loss. In principle, damages comprise compensation for loss of sales, market damage (loss of goodwill/the commercial value of the original product is tarnished due to the fact that copies of less quality have been put on the market), internal loss (costs incurred for establishing that an infringement has taken place). According to general rules of evidence, the rights holder must prove the scope of the damage incurred. Considering the difficulty in assessing the damage, courts often need to estimate the damage to a reasonable amount. Compensation for damages in connection with an infringement may under certain circumstances be awarded even if the infringement is committed without negligence or intent. The patentee shall hereby be paid a reasonable remuneration. Such reasonable remuneration is typically based on what constitutes a reasonable licence fee.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary injunctions are available under certain circumstances. A preliminary injunction is usually based on a claim for a final injunction, expressed in the writ of summons. The plaintiff may choose to move for a preliminary injunction at any stage of the proceedings. It may further be possible to file for a preliminary injunction without having to file a final injunction according to general rules in the Code of Judicial Procedure. However, in such event main proceedings must be brought within a month of the date of the decision of the preliminary injunction.
The following criteria must be fulfilled for a preliminary injunction to be issued:
The court will also weigh the parties’ interests against each other, ie the damage caused to the plaintiff by the infringement is estimated against the damage that the defendant will suffer if the preliminary injunction is granted and subsequently reversed.
8.2 Is ex parte relief available, where the defendant is given no notice at all? If so, under what conditions?
Preliminary injunctions can be issued ex parte (without hearing the defendant) where there is an imminent risk that the patentee will suffer damages unless the defendant is stopped. As a main rule, the plaintiff is obliged to put up sufficient security for any damages incurred by the defendant, but this requirement can be waived if the plaintiff lacks the necessary financial resources.
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?
In order to establish proof of infringement, the court may, on the request of the patentee (or licensee), issue an infringement investigation order. As a main rule, the defendant should be allowed to comment on the request, but if there is a risk that the defendant would use such knowledge to withhold evidence, a decision could be issued ex parte.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
It is possible for the defendant to put the validity of a patent in issue in preliminary injunction proceedings. However, according to case law, for taking the defendant’s counterclaim under consideration in the preliminary injunction proceedings, the court requires that counter suit has been brought and that the patent holder has been able to defend the counter suit.
As a main rule, the preliminary injunction proceedings are only written. However, if requested by either of the parties, it is within the powers of the court to hold an oral hearing to provide for the hearing of witnesses.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
Any kind of evidence is admissible. The parties may bring forward affidavits and documentary evidence. The parties are also entitled to call expert witnesses.
8.7 What level of proof is required to establish infringement or invalidity in preliminary injunction proceedings?
As mentioned above, in question 8.1, a plaintiff only needs to establish an arguable case of patent infringement. This is less than a balance of probabilities. For a defendant to show invalidity as a ground for denying the grant of an interim injunction it has to establish a strong case of invalidity. See question 8.4 above regarding the possibility of putting the validity of a patent in issue in preliminary injunction proceedings.
Depending on the circumstances in the specific case, a decision on a preliminary injunction claim is normally issued by the court within one to three months.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
The preliminary injunction is granted for the time until the case is finally settled or other decision is taken. Hence it is necessary to start main proceedings to confirm the preliminary injunction.
9.1 What avenues of appeal are available for a defeated party to main proceedings or preliminary injunction proceedings?
Both judgments and decisions taken during the course of patent proceedings may, as any other civil case judgment, be appealed to the Court of Appeal within three weeks of the date of the judgment. The Court of Appeal consists of at least five members (of which three are professional legally-trained judges and two are technical experts), unless the case in the district court was adjudicated by three professional judges in which case there must be at least four professional judges in the Court of Appeal (and at least two technical experts). The hearing on appeal is made on the basis of either transcripts of the oral evidence presented in the lower court or re-examination of witnesses and/or experts.
9.2 How long do appeal proceedings typically last?
Taking the proceedings through the Court of Appeal will in many cases take approximately as long as in the court of first instance. Further appeal is available to the Supreme Court if leave to appeal is granted. Such permit is granted only if the Supreme Court finds the case of importance for the guidance of the application of law or that the result in the Court of Appeal is obviously due to gross oversight or to gross mistake.
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?
A small administrative fee is payable to the court upon the filing of the writ of summons. This is the only fee charged by the court, regardless of whether the case is taken to the Court of Appeal or whether interim injunctions or other decisions are made. The cost for each party (including costs for legal representation), up to and including trial in the court of first instance, could be approximated at somewhere between SEK 150,000 and SEK 500,000. As a general rule, the costs at the Court of Appeal and the Supreme Court are usually slightly lower.
10.2 Are costs recoverable from the losing party?
As a main rule the losing party shall (with the exception only for cases in which the value at stake is less than approximately €2,000) reimburse the opposing party for litigation costs. The court is however free to award costs in other proportions, for example if the winning party is found to have initiated the action without justifiable cause or if the winning party has otherwise caused unnecessary costs in the proceedings.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
As stated above, Swedish patent legislation and case law is harmonised with and similar to EC patent law and case law. Consequently there is not much room for individual national legal development.
It has recently been noted among scholars that case law might be going in the direction away from the doctrine of equivalents and instead towards a traditional juridical interpretation of patent claims. It has been stated that it is becoming more difficult to claim infringement successfully outside the scope of the technical meaning of the patent claims. Also, it is argued that infringement requires similarity between the critical characteristics of the patent claim and the critical characteristics of the alleged infringing subject matter. Furthermore, the practice of courts taking into consideration (in assessing infringement claims) the contents of all the documents in the patent file at the Patent and Registration Office has been questioned.
11.2 To the extent it relates to patent enforcement, outline any major patent legislation in the pipeline.
Worth mentioning is that Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, which was to be implemented in the member states by 29 April 2006, has not yet been implemented in Sweden. Implementation is expected by the end of this year. It may, however, be noted that Swedish law to a considerable extent already is in compliance with the minimum requirements of the directive.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
For general comments on the Patent Act: Jacobsson, Tersmeden & Törnroth
Patentlagstiftningen-en kommentar For general information on patent law: Koktvedgaard & Levin Lärobok i immaterialrätt For information on preliminary proceedings in intellectual property litigation: Bengtsson & Lyxell Åtgärder vid immaterialrättsintrång
