National Belgian patents and European patents in force in Belgium are exclusive intellectual property rights which allow you, the patentee, to forbid others from exploiting your invention in Belgium. Unfortunately, sometimes a competitor does violate your exclusive patent rights which can result in damages (e.g. financial loss). Luckily, under Belgian law there are various legal procedures at your disposal which enable you enforcing your exclusivity in court.
In this article, we will focus on civil proceedings available to owners of a granted patent, being the more common way to enforce a patent right. The less common administrative and criminal proceedings will be dealt with in a subsequent article. Finally, the rights pertaining to a patent applicant to initiate legal procedures and claim “reasonable compensation in the circumstances” will be dealt with in a third article.
1 Getting ready for a civil infringement procedure: the “seizure” (so-called “saisie”)
In order to obtain an infringement conviction in civil infringement proceedings, the infringement must be proven. However, obtaining the required evidence might prove difficult at times, particularly when the infringement relates to a method invention. Fortunately, a special procedure, called the “seizure”, is available to the patent owner in need of obtaining the evidence to support its claim for infringement. This seizure exists in two variants, a descriptive seizure and a conservation seizure.
A. Descriptive Seizure
The purpose of the former is to gather evidence about the existence, origin, destination and extent of the infringement. For this purpose, a judge may, at the unilateral request of the patent owner (meaning the alleged infringer shall not be informed of the court’s decision to allow the seizure), authorize an independent judicial expert to enter the premises of the alleged infringer and to gather evidence regarding the infringement and draw up a report which can be used in court. This expert may – on the basis of the relevant provisions of the Belgian Procedural Code – be authorized to “make copies, make photographs, make audiovisual recordings as well as to have samples handed over” with respect to the allegedly infringing goods and/or the materials and/or machines used in their production, as well as of the documents pertaining thereto.
B. Conservation Seizure
The conservation seizure has – as is stated in the name – a conservatory purpose, namely to ensure that the alleged infringer does not destroy/get rid of, or substantially alter the allegedly infringing goods and the auxiliary materials, machines and documents, or tamper with the evidence in any other way. This variant of the seizure is more disruptive for the alleged infringer than the descriptive seizure, and is thus authorized by the judge only in particular circumstances where not allowing the conservation would create greater damages to the patent holder than when not allowing it.
In order to ensure the proper cooperation of the alleged infringer, the counterfeit measures may be coupled to penalty payments.
2 Civil infringement procedure as a summary procedure
The infringement can be dealt with in a provisional procedure called a summary proceeding. The decision in such summary proceeding is provisional in the sense that it is not binding for the judge in the infringement proceedings on the merits. The purpose of this procedure is to provisionally and rapidly resolve the presumed infringement until there is a ruling on the merits. A case can only be dealt with by means of a summary proceedings if it is so urgent that if no action were taken immediately, the patentee would suffer damages of a certain extent or suffer serious inconvenience.
The judge can impose various types of measures to avert the damages and inconvenience for the patentee, as long as they are provisional. Such measures are discussed under the section ‘infringement procedure on the merits’ below. Given that the judge can only impose provisional measures, he cannot impose measures that cause a definitive and irreparable disadvantage for one of the parties.
3 Civil infringement procedure on the merits
If the summary proceedings for provisional measures does not apply (because there is no urgency), or if it is not desirable, infringement proceedings on the merits may be brought in the form of an ‘injunction as in summary proceedings’ or in the form of a ‘regular infringement procedure’.
A. Injunction as in Summary Proceedings
In the first form, the procedure is ‘as in a summary proceedings’, which means that this procedure will proceed more quickly than the ‘regular infringement procedure’, in particular by setting a shorter summons period, a shorter response time ,and a sooner pleading date. Notwithstanding the procedural similarity with the “summary proceedings”, the court assesses the “injunction as in summary proceedings” on the merits, i.e. not provisionally. The purpose of an the “injunction as in summary proceedings” is to obtain the definitive cessation of the infringement as soon as possible. In order to achieve this objective, the available measures are limited to those measures that prevent infringement. Therefore, damages cannot be requested. On the contrary the “regular infringement procedure” does allow requesting reimbursement for damages, but has the disadvantage compared to the “injunction as in summary proceedings” that it takes more time.
A primary measure that can be requested is the injunction aimed at stopping the infringement. Such an injunction measure includes, for example, a ban on commercialization, a suspension of market authorization proceedings or an injunction to cease advertising. In order to enforce the cessation, these measures are usually linked to penalty payments. Such cessation may also be imposed against intermediaries such as transporters or distributors where those intermediaries provide services that facilitate the patent infringement. Information may also be requested from the alleged infringer, forcing the alleged infringer to provide all information he has on the origin and distribution of the infringing goods. This exposes other possible infringing channels or places where infringing goods are located, and thus further infringement can be nipped in the bud.
B. Regular Infringement Procedure
The injunction discussed above can also be requested in the regular infringement procedure. Such an injunction however only covers the future, since one cannot demand a cessation for the past. In order to sanction and correct the past infringement, further measures are available as set out below.
In general, the patentee whose patent is being infringed is entitled to compensation for any damages he suffers as a result of the infringement. The aim is therefore to match the damages and the compensation so that the patentee is placed in the position in which he would have found himself if the infringement had not occurred. In accordance with established law, such compensation consists of two parts, i.e. the lacking of profits and the losses suffered. The lacking of profits corresponds to the profit margin or license fee that the patentee would have had on the infringing goods that the alleged infringer produced and/or sold. The losses suffered may comprise different elements, such as reputational damage. If the damage cannot be determined in any other way, the judge may reasonably and fairly set the compensation at a fixed amount. The judge may also order that the infringing goods, as well as, in appropriate cases, the materials and machines used primarily in the creation of those goods, and which are still in the possession of the alleged infringer, be handed over to the patentee. The latter request is made ‘by way of damage compensation’ and therefore requires the budgeting of the damages suffered on the one hand and the value of the goods referred to above on the other. In the case of bad faith of the alleged infringer, for example in case the alleged infringer willingly withheld crucial information, the patentee may request that instead of the damages based on his own lacking profits, the profits of the alleged infringer on the infringing goods be handed over. This profit transfer is also made “by way of compensation”.
In order to correct past infringement, the judge may order the infringer, at his expense, to recall, destroy or otherwise remove from the market the infringing goods, as well as, in appropriate cases, of the materials and machines used primarily to manufacture those goods. In doing so, the judge will take into account the proportionality between the seriousness of the infringement and the requested correction, as well as the interests of third parties.
The past infringement can also be corrected by demanding a publication measure. For example, the judge may order the infringer to have the court’s decision posted during a specific period, for example on the infringer’s website, and that the decision be published in newspapers or in any other way, all at the expense of the infringer.
As is clear from the above overview, a patentee has different options to proceed when confronted with an alleged infringer. Our specialized dispute resolution team at GEVERS will gladly assist you and advise you in choosing the right option for you.
Philippe Gratessolle – European and Dutch Patent Attorney