Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.  

Enforcement through the courts

At trial

What level of expertise can a patent owner expect from the courts?

The technical and IP expertise of the Luxembourgish courts is virtually non-existent, largely due to the following factors:

  • the diminutive size of the country;
  • the mainly services-based nature of the national economy;
  • the assignation of infringement proceedings to the jurisdiction of the local high court, which has a generalist remit, and the lack of specialist IP or technical courts; and
  • the fact that (to our best knowledge) a patent infringement action has never been fully litigated to a decision in Luxembourg.

However, Luxembourgish courts can be expected to draw heavily on French and German decisions (due to geographical and legal proximity), as well as the jurisprudence of the European Patent Office – thus lending a degree of predictability to how legal tests and questions are likely to be interpreted by local judges.

Moreover, the domicile of the forthcoming Unified Patent Court of Appeal in Luxembourg is expected to positively influence legal practice in this area over the short to medium term.

Are cases decided by one judge, a panel of judges or a jury?

Infringement and revocation cases at first instance before the local high court are heard and decided by a panel of three judges.

Appeals of first-instance decisions before the Court of Appeal are heard and decided by a panel of three judges.

Higher appeals on points of law before the Supreme Court are heard by a panel of five judges.

No juries are involved in civil cases (eg, those relating to patent enforcement or revocation).

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Not applicable.

What role can and do expert witnesses play in proceedings?

The use of expert witnesses by the court is governed by Articles 461 to 480 of the New Civil Procedure Code.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The fact that a patent infringement action has never been fully litigated to a decision in Luxembourg renders this question difficult to answer with any degree of certainty.

Luxembourgish courts can be expected to draw heavily on French and German decisions (due to geographical and legal proximity), as well as the jurisprudence of the European Patent Office – thus lending at least some predictability to how a doctrine of equivalents may be considered by local judges.

According to current German patent practice, in two recent decisions (Pemetrexed (GRUR 2016, 921) and V-förmige Führungsanordnung (GRUR 2016, 1254)) the German Federal Court of Justice affirmed its established case law under which embodiments that are disclosed in the patent, but not claimed, are excluded from the scope of protection under the doctrine of equivalents; the court also clarified the cases in which such a selection decision can be assumed to restrict the scope of protection under the doctrine of equivalents.

According to current French patent practice, a patent is deemed to have been infringed where a different means is used to perform the same function in order to reach an identical or similar result. That function is defined as the first technical effect produced by the execution of the claimed means, whereas the result is constituted by the practical advantages achieved by the invention. French jurisprudence has consistently stated that, when the function of a particular claimed means was not known in the prior art and an alleged infringing means of a different form performs the same function, there is infringement by equivalence. Conversely, there is no infringement by equivalence if the function of the claimed means is not new, in which case the scope of protection should be limited to the claimed means.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Yes, interim remedies – inclusive of goods seizures and interim injunctions – are available under Article 79 of the Law of 20 July 1992.

The basic measures to take prior to full trial are:

  • to have one or more sworn court-appointed experts examine the (alleged) infringing products and means used to enable the infringement (Paragraph (1)); and
  • to have the infringing goods seized at the time (Paragraph (2)).

Both measures are available on a simple request to the president of the relevant local high court. Such requests are appealable by the alleged infringer and provisions to indemnify the alleged infringer may be ordered where interim measures fail to be vindicated by a finding of infringement (as per Article 79(4) of the Law of 20 July 1992).

How are issues around infringement and validity treated in your jurisdiction?

Jointly – a defendant’s countersuit for revocation of the patent relied on in the infringement claim is heard and decided by the court together with the claimant’s claim (Article 24 of the New Civil Procedure Code).

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The fact that a patent infringement action has never been fully litigated to a decision in Luxembourg, and Luxembourg’s long-time membership of the European Patent Convention, strongly suggest that Luxembourg courts would indeed consider decisions of the French, German and Belgian courts, as well as the jurisprudence of the European Patent Office Boards of Appeal.

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, per Articles 213, 238 and 240 of the New Civil Procedure Code. However, costs may not necessarily be awarded at indemnity level.

What are the typical remedies granted to a successful plaintiff?

Typical remedies include:

  • a final injunction and damages, per Article 80(4) of the Law of 20 July 1992;
  • a recurrent fine and publication of the judgment, per Article 80(5) of the Law of 20 July 1992; and
  • seizure of the infringing goods and any means specially adapted to work the invention, per Article 81 of the Law of 20 July 1992.

How are damages awards calculated? Are punitive damages available?

Damages are calculated on a compensatory basis (Article 80(4)(a) of the Law of 20 July 1992), to restore the patentee to the commercial situation that it would have been in had the infringement not occurred.

There are no punitive damages (in the sense of those made available in the United States).

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

The fact that a patent infringement action has never been fully litigated to a decision in Luxembourg renders the question difficult to answer with any degree of usefulness.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The fact that a patent infringement action has never been fully litigated to a decision in Luxembourg renders the question difficult to answer with any degree of usefulness.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The fact that a patent infringement action has never been fully litigated to a decision in Luxembourg renders the question difficult to answer with any degree of usefulness.