Q: What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

A patent holder seeking to enforce its rights in Belgium can initiate proceedings on the merits, injunction proceedings, summary proceedings or descriptive seizure (saisie-contrefaçon) proceedings.

In proceedings on the merits, on establishing patent infringement the patent holder will obtain injunctive relief, damages and other remedies.

Injunction proceedings are substantive proceedings that are handled like summary proceedings. The patent holder can obtain only the cessation of infringement, and cannot apply for damages. The alleged infringer can file a counterclaim for nullification, which may delay the proceedings.

Summary proceedings may be initiated in order to obtain preliminary injunctions in urgent cases.

Descriptive seizure proceedings allow the patent holder to obtain all relevant evidence relating to the alleged infringement.

Finally, as patent infringement is a criminal offence under Belgian law, an infringed patent holder may file a criminal complaint.

Q: Are parties obliged to undertake mediation/arbitration before bringing a case before the courts? Is this a realistic alternative to litigation?

There is no obligation to undertake arbitration or mediation before bringing a case before the courts, although arbitration is explicitly mentioned in the Code of Economic Law as an acceptable alternative to litigation. Arbitration is seldom used in patent infringement cases, as it requires the consent of both parties.

Q: Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

Belgium has separate specialised IP courts. However, as Belgian judges typically have little – if any – technical background or expertise, they tend to appoint experts for technical or scientific assistance. As of January 1 2015 only the Brussels Commercial Court is competent to hear new patent-related cases. This centralisation will promote the court’s competence in IP matters.

Q: Are validity and infringement dealt with together, or does your country have a bifurcated system?

The Brussels Commercial Court is competent to rule on both patent infringement and validity. In practice, both issues are often dealt with simultaneously, as the alleged infringing party typically files a counterclaim for nullification of the patent. Similarly, where the alleged infringer initiates nullity or non-infringement proceedings, the patent holder will typically file a counterclaim for patent infringement.

Q: Who may represent parties engaged in a dispute?

Only attorneys at law registered with one of the Belgian bars may officially represent parties in court. Patent attorneys may not represent parties in court as such, but typically assist the parties’ counsel and the judges.

Q: To what extent is pre-trial discovery permitted?

There is no pre-trial discovery in Belgium. However, the descriptive seizure procedure can be regarded as a type of discovery measure. This is an ex parte procedure primarily aimed at gathering and preserving evidence of patent infringement at the alleged infringer’s premises in support of subsequent (or ongoing) proceedings on the merits. The procedure is carried out by an expert and without prior notice and may be supported by effective seizure measures (including preliminary seizures).

Two conditions must be fulfilled to obtain an order for a descriptive seizure:

  • the patent must be prima facie valid; and
  • plausible indications of present or future patent infringement must exist.

Effective seizure measures may be carried out if the infringement cannot be reasonably disputed and the balance of interests favours it. In addition, the court may decide to hear the alleged infringer before granting effective seizure measures.

Under certain circumstances, the court can order a party to submit a specific document that is relevant to the case and is presumed or ought to be in that party’s possession.

Q: Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

No formal cross-examination of witnesses by the parties takes place during Belgian court proceedings. Witnesses may be questioned by the judge conducting the examination. However, examination of witnesses rarely occurs in patent cases.

Q: What use of expert witnesses is permitted?

As patent cases are typically based on written evidence, technical reports by patent attorneys or other experts can be submitted as evidence. In addition, the court may appoint an independent judicial expert to assist the judge in technical issues. Experts are often allowed to comment orally during the proceedings, under the supervision of counsel.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does this take?

Under Belgian and European patent law, the scope of a patent extends to elements that are equivalent to the features recited in the claims. The Belgian courts generally apply the ‘function-way-result’ test: an element of the infringing product is considered to be equivalent to the element recited in the claim if it performs substantially the same function in substantially the same way and leads to substantially the same result.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

Generally speaking, there are no issues with enforcing patents that are particular to specific fields. In technologically difficult and complex cases, the court will generally appoint a judicial expert. However, the exceptions to patentability and the non-patentable subject matter provided in Belgian and European patent law should be taken into account.

The Code of Economic Law provides a broad research exemption, under which acts performed on or with the patented subject matter for scientific purposes are not considered infringing acts. In addition, the Medicines Act provides a broad ‘Bolar’-type exception, in that conducting the studies, tests and trials necessary for the preparation of a generic human medicine and all the practical requirements thereto are not considered infringement.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Belgian judges are exclusively bound by the statutory provisions of the law. Hence, the court is not bound by decisions of other courts in similar cases. However, relevant decisions of the Supreme Court are usually followed by the lower courts.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions?

When presented with the decisions of foreign courts, Belgian courts usually take their reasoning and decisions into account. However, this does not necessarily result in similar decisions. For instance, a nullity declaration in other jurisdictions may not be taken into account by the Belgian judge for the assessment of the prima facie validity of a European patent in summary proceedings.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

A defendant may request the court to appoint an expert on technical issues. A defendant may also invoke the nullity of the plaintiff’s patent, either via a counterclaim within the infringement proceedings or by initiating separate nullity proceedings. In case of a European patent, the defendant may file an opposition before the European Patent Office. However, whether the court proceedings will be stayed in view of the opposition proceedings is at the judge’s discretion, and it is possible for both proceedings to continue in parallel.

The Judicial Code already includes provisions to counter delaying tactics. In urgent matters, delaying tactics may be countered by initiating summary proceedings to obtain a preliminary injunction.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

In patent litigation, summary proceedings are often initiated by the patent holder in order to halt or prevent an alleged infringement, subject to the following circumstances:

  • Summary proceedings are available only in urgent matters. In patent cases, actual or threatened patent infringement is usually considered sufficient to demonstrate urgency.
  • Prima facie patent validity must be established. Further, the patent holder must provide serious and sufficient indications of prima facie imminent patent infringement.
  • The court must have considered the various interests at stake (ie, those of both parties and the general interests). Balancing the various interests usually turns in favour of the patentee.
  • In cases of absolute necessity, summary proceedings may be held ex parte when immediate injunctions are essential to halt or prevent the infringement.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

Although the court costs for initiating a case are limited, the costs of obtaining a first-instance decision are difficult to estimate, as they are largely case dependent and can be influenced by multiple factors, including the complexity of the case or the involvement of a patent attorney. A realistic estimate for the cost of litigation on the merits at first instance is between €60,000 and €250,000. For more complex cases, higher amounts should be budgeted.

Q: How long should parties expect to wait for a decision to be handed down at first instance?

The timing of a court case depends on a number of factors, and the appointment of an expert may further prolong the proceedings. An infringement trial on the merits may take between one and three years at first instance. In injunction proceedings, as in summary proceedings, a decision ordering cessation of the infringement may be obtained within six to 12 months.

Q: To what extent are the winning party’s costs recoverable from the losing party?

A distinction should be made between legal costs (eg, court registration fees) and the costs relating to legal and technical assistance (eg, lawyers’ fees). Generally speaking, the unsuccessful party bears all legal costs. Lawyers’ fees can be recovered from the losing party as a fixed amount, depending on the value of the case. This amount is usually insufficient to cover all expenses made by the successful party. It is unclear to what extent this cost-recovery scheme is compatible with EU legislation, and the issue is pending before the European Court of Justice (C-57/15).

Q: What remedies are available to a successful plaintiff?

The Code of Economic Law provides for several remedies, including injunctions against the infringer and intermediaries and the payment of damages, which are usually granted by the court. Other measures include the recall and destruction of the infringing products, publication of the judgment and the provision of information relating to the infringement. In case of bad faith on the part of the infringer, the court may grant an account of profits and/or forfeiture of the infringing goods.

Q: How are damages awards calculated? Is it possible to obtain punitive damages?

The basic principle is that the patent holder must be compensated for all actual damages caused by the patent infringement. Punitive damages are not allowed. The damages calculation takes into account both lost profits (direct damages) and actual losses (indirect damages). Lost profits generally correspond to the profit margin or licence fee which the plaintiff would have received had the infringement not occurred, based on the quantity of the goods produced or sold by the infringer. The actual losses may include loss of reputation or exclusivity. The duration and importance of the infringement is usually taken into account when determining damages. When compensation cannot be determined on the basis of objective criteria, the court may grant damages as a lump sum.

Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?

A permanent injunction can be ordered only in substantive proceedings. If patent infringement is established, the Code of Economic Law provides that the judge must order all infringers to cease the infringement.

Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

Almost all first-instance judgments of both substantive and summary proceedings may be appealed. Permission is not required, but the appeal must be submitted within 30 days of notification of the first-instance decision (extended for foreign parties). Appeal proceedings are generally a re-hearing of both the factual and legal issues of the case.

Q: How long does it typically take for the appellate decision to be handed down?

Appeals relating to proceedings on the merits will generally be concluded in two to three years. Appeals relating to summary proceedings will generally be concluded in six to 12 months.

Q: Is it possible to take cases beyond the second instance?

Second-instance decisions can be appealed before the Supreme Court. However, the Supreme Court will only examine the appealed decision on formal grounds and will not examine the merits of the case.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Although the Belgian courts are theoretically impartial, in practice they are rather pro-patentee. This can be illustrated by the courts’ practice of assuming the prima facie validity of a patent in summary or descriptive seizure proceedings despite serious disputes regarding its validity (eg, opposition proceedings or nullity proceedings). Provided that no final decision invalidates the patent, provisional measures can be issued for such contested patents. However, recent decisions of the Supreme Court have criticised this overly formalistic approach, indicating that in future a reasoned assessment of the disputed patent’s validity may have to be made in these circumstances.

Q: Is your jurisdiction a signatory to the London Agreement on Translations?

Belgium has not acceded to the London Agreement on Translations. European patents published in English require a translation to Dutch, French or German. For European patents published in German or French, no further translation or other formal requirements are necessary for validation.

Q: Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

Belgium ratified the Agreement on the Unified Patent Court on June 6 2014. Further, a local division of the Unified Patent Court will be set up in Brussels, with Dutch, French, German and English as the accepted languages of proceedings.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

Similar to the common German practice of Schutzschrift, a potential defendant in ex parte proceedings may submit a protective letter to the court. Although Belgian law does not provide for this practice, a potential defendant may submit arguments on non-infringement or patent invalidity in otherwise unilateral proceedings. However, the courts are under no obligation to open, read or take into account any of the contents of such letter if the patent holder initiates ex parte proceedings.

Ann De Clercq, Hans Goesaert, Koen Vanhalst

This article first appeared in IAM. For further information please visit www.iam-media.com.