An extract from The Intellectual Property Review, 9th Edition

Enforcement of rights

i Possible venues for enforcement

The most frequented venue for IP enforcement remains the ordinary courts deciding in civil matters. There are no administrative routes to be considered in Belgium, except in the case of a threat of importation into the European Union of counterfeit or pirate goods. Many of these goods are entering the European Union through the major harbour of Antwerp (the second sea harbour in Europe by size), and to a lesser extent through Belgian airports, and the Belgian customs authorities have proved very keen to intercept such imports: in 2016, they were responsible for almost one-third of the 63,000 customs interventions that took place in Europe (10 per cent in terms of value of the seized products).

Criminal proceedings are also available, though less common.

ii Requirements for jurisdiction and venue

Belgian courts have jurisdiction in IP infringement cases if either the defendant has its domicile or registered office in Belgium or the harmful event occurs or may occur in Belgium. The latter expression is intended to cover both the place of the occurrence of the harmful event and, if different, that of the resulting harm, so that the defendant may be sued, at the applicant's choice, in the courts of either of those places. In the context of online infringement this allows the right holder to sue before the courts of their domicile, provided the illicit content is available and the right is protected there; however, the jurisdiction of the Belgian court will then be limited to the consequences of the infringement that took place in Belgium.

Belgian courts, like other national courts in Europe, are, however, not competent to decide on the validity of foreign patents, even where issued from one and the same European patent procedures (and thus with identical claims); in this respect, the courts of the state of registration have exclusive jurisdiction (Regulation 1215/2012, Article 22). Moreover, the courts of the Member State of the defendant do not have jurisdiction to decide (on the merits) on the alleged infringement, by companies of the same group, of foreign extensions of the same European patent. This is an obstacle to the enforcement of European patents.

This situation may, however, change if and when the Unified Patent Court (UPC) becomes a reality. Indeed, the UPC would have a broad jurisdiction allowing it to render decisions (including injunctions, awards of damages, declarations of non-infringement and patent revocations) covering the territory of all contracting Member States (possibly, but not necessarily, up to the 28 current members of the EU) for which a given European patent (with or without unitary effect) has effect.

The UPC would have a local division in Belgium.

iii Obtaining relevant evidence of infringement and discovery

Before bringing an action on the merits before court, the owner of IP rights may, on the basis of an ex parte application (i.e., without summons), ask the president of the competent court (for patent owners this will be the enterprise court of Brussels) to order a seizure of counterfeit matter against the alleged counterfeiter. This constitutes an effective measure to gather evidence of a suspected IP infringement. In such proceedings, an expert (e.g., a patent attorney) will be appointed by the judge and will receive the mission of describing any objects, elements, documents or processes that could establish the existence of the infringement as well as its origin, destination and scale. To that end, the expert, accompanied by a bailiff and, as the case may be a locksmith or the police, will be entitled to enter any premises determined by the court, access computer systems, ask questions, take samples, etc.

In principle, two conditions must be cumulatively met; on the one hand there must be a 'seemingly valid' patent and on the other hand, there must be an 'indication' that there is (a threat of) an infringement of this patent.

Regarding the first condition, there have been interesting developments in recent years. Previously, the Court of Cassation had a very broad interpretation of the first condition: it would have deemed a patent 'seemingly valid', and hence allow a seizure in matter of counterfeit, until a final invalidity decision would be rendered regarding such patent. In its 2014 Syral/Roquette decision, the Court, however, ruled that 'all facts and circumstances invoked by the parties and related to the validity of the patent should be taken into account', paving the way for an in concreto assessment of the prima facie validity criterion. Consequently, when validity is seriously debated – for example, because it has been declared invalid in first instance, because it is revoked by the EPO after an opposition procedure or if certain national extensions are declared invalid by the competent national courts – such facts and circumstances cannot be left out of the assessment based merely on the fact that an appeal with suspensive effect has been filed against such decisions.

The second condition for being authorised to seize counterfeit goods (i.e., the existence of indications of infringement) has likewise been interpreted more restrictively in recent years, following the INEOS case. In this respect, it is not sufficient that someone has opposed the patent to demonstrate that this person is using (or will use) the invention and, hence, infringes (or will infringe) upon the patent. Although the purpose of the descriptive measures is to obtain evidence regarding an alleged infringement, concrete indications will already be required to be authorised to collect evidence through a seizure of counterfeit matter. In the event of a process claim patent in particular, this can be rather difficult.

iv Trial decision-maker

The choice of the appropriate court within Belgium to enforce IP rights (or to request a declaratory judgment) was simplified a few years ago: only the Enterprise Courts of Brussels (and, at the appellate level, the Court of Appeal of Brussels) now have jurisdiction regarding patents, as well as EU trademarks and community designs cases. Copyright and Benelux trademarks and designs disputes, like unfair competition cases, may still be litigated before (four) other courts. This centralisation of IP litigation aims to enhance the specialisation of the judges, but this has so far not proven very successful because of the significant judicial backlog in Brussels.

v Structure of the trial

A patent infringement case will often start with a seizure of counterfeit goods as described above, aimed at collecting evidence of the suspected infringement. In addition to such evidentiary measures, the right holder may also request the court, by the same petition – and thus ex parte – to authorise the actual seizure of all goods suspected to be counterfeited or to prohibit the seized party from moving, altering or disposing of such allegedly infringing goods. For such measures to be warranted, a higher threshold must, however, be met; not only must the IP right invoked be apparently valid but the infringement should not be reasonably contested. A balance of interests should, moreover, be made, also taking into account the general interest of the public.

Following reception of the expert report, or as the case may be, right from the start (in absence of a preliminary seizure in matter of counterfeit), a right holder will consider filing an action on the merits against the alleged infringer. That action may be brought either before the ordinary chamber of the Enterprise Court (where two lay judges will assist the professional judge) or before the President of the Court, as summary cease and desist proceedings. This latter option is a particular Belgian speciality since, like some of our praline chocolates, it is the best of two worlds: it is a summary procedure, namely, fast and simple, but it leads to a decision on the merits, namely, a decision endowed with res judicata. This specific avenue may only be used to obtain an injunction (and possibly the publication of the judgment), and is therefore referred to as the cease-and-desist action. If the right holder wishes to obtain damages (or a measure of confiscation or the transfer of the counterfeiter's profits), it has to revert to the ordinary proceedings (which may also be triggered at a second stage, after the cease-and-desist action; the ordinary court is then bound by the decision of the president of the court regarding the existence of the infringement).

A drawback of the cease-and-desist action before the president of the court is the possibility for the defendant to file a counterclaim for revocation or limitation of the patent (be it a Belgian or the local extension of a European patent); that prerogative is not reserved to the full chamber of the Enterprise Court. For this reason, patent owners – unlike copyright and trademark owners – tend to privilege ordinary summary proceedings (where urgency must be established). In such a case, provided urgency is established (e.g., because the allegedly counterfeited drug is about to be put on the market), the president of the court may take a provisional decision on the basis of the appearance of right. This parallel action results in a kind of (factual) bifurcation between the assessment of infringement (in summary proceedings) and that of validity (by the ordinary court or the EPO in opposition proceedings).

Nevertheless, similarly to what has been observed for the seizure in matter of counterfeit, the courts tend to be a little bit more reluctant to grant injunctions when the validity of the patent is uncertain due to decisions taken abroad or by the opposition division of the EPO.

vi Infringement

When it comes to product patents, patent protection prevents third parties (absent consent of the patent holder) from the making, offering, placing on the market or using a product that is the subject matter of the patent, or importing or storing the product for those purposes.

Where the invention is a process, third parties may not (without consent of the patent holder), use a process that is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use in Belgium. Moreover, patent protection over a process that gives rise to a product, patent protection extends to the resulting product.

Belgian patent law further prevents indirect patent infringement. A third party is prohibited from supplying or offering to supply, within the territory of Belgium, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect. This prohibition shall not apply when the means are staple commercial products, except where the third party induces the person supplied to perform any of the acts prohibited by direct infringement.

The limits of patent protection are determined by the claims, which are to be interpreted in light of the description and drawings of the invention. Protection further applies to any equivalent elements to those mentioned in the claims.

The courts generally follow a four-step process to determine whether or not there is patent infringement.

First, the court distinguishes – from the perspective of a person skilled in the art – the essential elements of the claims from the accessory ones. Second, the court compares the claims to the allegedly infringing object. Third, the court determines if all the essential elements can be found in the allegedly infringing object. An essential element is one that contributes to the technical effect. In this respect, infringement does not require an identical reproduction of the invention, it suffices that the essential characteristics of the invention be found in the litigious object. In this regard, any secondary or superficial differences are not of a nature to exclude infringement. These rules also apply to claims that consist of numerical values.

Lastly, as the case may be, the court identifies and assesses the use of any equivalents. An element will be considered an equivalent means to the patent-protected element, if it fulfils the same technical function to achieve the same result in the same manner. The Belgian approach to equivalents is rather large, in that infringement by equivalent means will be found to apply if the technical function of the invention is found in the disputed object and the equivalent means used do not produce any new technical effect.

vii Defences

Typically in patent law, defendants shall dispute the validity of the patent: challenging its novelty, non-obviousness or other characteristic. These defences will not be presented as they are common across all EU Member States. Some particularities of the Belgian context are given below.

viii Abuse of rights

Without getting into the details of the doctrine of the abuse of rights, it is worth noting that it has been successfully applied to patent infringement cases. For example, it was judged that it was abusive for a patent holder to demand the immediate cessation of infringement acts that they knew of for years prior to the action and had in fact tolerated until then.

In another case, the courts found that although in principle infringement was established, the patent holder was abusing of their rights in their claims against the defendant (potential licensee), with whom they had been negotiating an agreement and during that time had in fact incited the defendant to use the invention, by sending them documentation on the commercialisation and implementation of the invention.

ix Defence from patent prosecution

Again similarly to US traditions, the Belgian courts apply a doctrine akin to the prosecution history file estoppel. A patent holder is bound by the interpretation of claims made in the filing process. Often in the filing process, applicants cede much ground (narrow claims) to gain protection. They will not be able to put forward any contrary arguments in the course of infringement litigation as means to justify a particular construction of equivalents.

In a recent decision, the Court of Appeals (upheld by the Court of Cassation) applied this defence and rejected a finding of infringement. In this case, the claims of the invention covered 'covered fibres all having a diameter inferior to 8µm', the litigious object included both fibres of a diameter inferior to 8µm, but also superior to 8µm. The Court of Appeals interpreted the claims (scope of protection of invention) as only covering fibres of a diameter inferior to 8µm, by reasons of the limitation that was specifically made by the claimant or patent owner in the course of prosecution to the above-mentioned numerical value. Had this not been the case, then there would have indeed been infringement.

Another defence can consist in a right of prior use – the situation where the defendant had the information required with respect to the invention before the filing, or priority, date of the patent concerned. In a recent case, though, the Enterprise Court of Ghent dismissed such a defence, not only because the entities that allegedly could rely on the defence were not sufficiently identified but also because, according to the Court, a successful prior use defence requires, in principle, the existence of a prototype at the relevant date.

x Patent exceptions

Articles XI.32-34 of the Code of Economic law, sets out a list of acts not considered to be infringement of patent exclusive rights. This covers, for example:

  1. acts done privately and for non-commercial purposes, which applies to purely domestic acts carried out by an individual. In this vein, it was found that the state use of an invention, although non-commercial, is of a public nature and thus, is not covered by the exception;
  2. medicinal preparations for individuals and activities linked thereto, carried out by a pharmacist on a medical prescription;
  3. various exceptions to cover uses on, by or in vehicles (vessels, aircraft, land vehicles) as they transit through a country where the invention is protected;
  4. acts done for scientific purposes with or on the subject matter of the patented invention;
  5. specific exceptions under the Biotech Directive, including the farmer's privilege; the case law limitation is also important that establishes that the scope of gene patent protection is not absolute and only extends to the material in which the patented product in fact performs its function as a genetic invention; and
  6. Bolar-type exceptions.

Another significant limitation to patent rights stemming from EU law is, of course, exhaustion. The exhaustion of rights (akin to the 'first-sale doctrine' under US law) is a general exception, applicable to all kinds of IP rights in Belgium. Remarkably, exhaustion occurs only when the products in question have been put on the market, by the right holder or with its consent (including by an affiliate or a licensee) in the European Economic Area (neither worldwide, nor national, but regional exhaustion regime). There is extensive case law of the CJEU regarding the conditions under which exhaustion applies, be it for patents (e.g., when drugs are imported from an EU country where no patent is in force or where commercialisation occurred under a compulsory licence), trademark (e.g., when branded drugs are repackaged) or copyright (where the CJEU notably extended the application of the exhaustion doctrine to the resale of software commercialised online under a click-wrap licence model).

xi Time to first-level decision

A seizure of counterfeit goods allows the right holder to obtain first evidence of the infringement (by means of a bailiff report) within two weeks, and a more extensive report within two months. For cease-and-desist proceedings, an injunction will typically be obtained in three to nine months following the service of the writ of summons. As far as preliminary orders are concerned, the duration of the proceedings may even be reduced to (possibly) two months. A fully fledged procedure on the merits will not take much more time, say one year, unless the parties agree to split the legal questions to be decided (jurisdiction, validity, infringement, damages) or an expert report is ordered (hearing of witnesses is exceptional).

xii Remedies

Injunctive relief is the first remedy requested by patent owners, generally, as explained above, in summary proceedings. Damages are available but may only be compensatory in nature; no liquidated damages are available, although a transfer of profits may be ordered, exceptionally, in the case of bad faith infringement. Attorneys' fees have to be borne by the unsuccessful party but, in principle, only up to a limited amount (about €12,000) determined by a Royal Decree (flat-rate scheme). However, in United Video Properties v. Telenet, the CJEU held that Directive 2004/48/EC on the enforcement of intellectual property rights precludes national legislation providing flat rates that, due to the maximum recoverable amounts being too low, do not ensure at the very least, that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party. This paves the way to a greater recovery of lawyers' fees in IP, and in particular patent, cases.

xiii Appellate review

Both judgments and preliminary orders may be appealed (in patent cases, before the Court of Appeals of Brussels). Except for cancellation and revocation decisions, the appeal has, however, no suspensive effect: enforcement is possible pending and despite the appeal, at the risks and perils of the enforcing party.

Against the decisions of the courts of appeal, a recourse is available before the Court of Cassation (judicial review).

xiv Alternatives to litigation

Oppositions against the grant of a European patent or the registration of a trademark are possible, respectively, at the European patent Office, at the Benelux Office for Intellectual property (Benelux trademarks) or at the EUIPO (EU trademarks). Belgian patents are granted without any examination by the Belgian IP Office and no opposition is therefore available (only cancellation, or limitation, by the Enterprise Court of Brussels is possible). Likewise, designs rights are not subject to opposition proceedings.

Arbitration is possible but in practice mainly resorted to in disputes between licensors and licensees, or in other contractual disputes.