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Applying for a patent

What are the criteria for patentability in your jurisdiction?

As in many other European countries, there are four criteria for patentability in the Czech Republic:

  • novelty;
  • inventive step;
  • industrial applicability; and
  • patent-eligible subject matter.

As far as novelty is concerned, inventions must be new on a worldwide basis (they cannot form part of the state of the art before the priority date of the application). The requirement of inventive step is met when the invention is not obvious to a person skilled in the art. The requirement of industrial applicability is satisfied if the invention can be made or otherwise used in industry, agriculture or other economic areas. Czech patent law also states that the following cannot be considered inventions:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • plans, rules and methods for performing mental activities, playing games or doing business;
  • computer programs; and
  • provision of information. 

What are the limits on patentability?

The general limits on patentability are threefold. Under Czech law, the following cannot be patented:

  • surgical or therapeutic treatment and diagnostic methods in relation to both humans and animals;
  • inventions whose use is contrary to public order or morality; and
  • plant or animal varieties or essentially biological processes for the production of plants or animals.

In addition, further exclusions concerning biotech patents exist. In particular, the human body at the various stages of its formation and development – including gene sequences – cannot be patented, unless an element is isolated from the human body or otherwise produced by means of a technical process (even if the structure of the element is identical to a natural element). In addition, the following processes are all considered contrary to public order or good morals and thus are not patentable:

  • the cloning of humans and modification of the germ line or genetic identity of humans;
  • the use of human embryos for industrial or commercial purposes; and
  • certain processes for modifying the genetic identity of animals. 

To what extent can inventions covering software be patented?

Computer programs cannot be patented as such. However, similar to European Patent Office practice, the IP Office grants patents on so-called ‘software-implemented solutions’. Essentially, this means that software can be considered a patentable invention if it causes a technical effect that goes beyond mere physical interaction between the software and hardware. The fundamental requirement is that the invention has a technical character, which is analysed based on the entire description of the invention and not just the formulation of the patent claims. 

To what extent can inventions covering business methods be patented?

In general, business methods cannot be patented because, according to the law, they are not considered inventions. However, where an invention has a technical character, it may be patentable even if it includes a business method. No guiding case law on the patentability of business methods exists, but the IP Office will likely follow European Patent Office case law in this regard. 

To what extent can inventions relating to stem cells be patented?

The Czech Republic implemented the EU Biotech Directive (98/44/EC) by adopting Act 206/2007 Coll.; as a result, Czech law is harmonised with EU law. No case law or other official guidance concerning the patentability of stem cells exists. Nevertheless, Czech authorities will likely follow European Court of Justice case law (in particular, Cases C-34/10, Brüstleand C-364/13, International Stem Cell Corporation) and European Patent Office case law. 

Are there restrictions on any other kinds of invention?

Apart from those described above, no specific restrictions on other kinds of invention exist.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

Czech law does recognise a grace period, although it is not generally considered practical. The grace period lasts for six months and applies in situations where an invention was disclosed before filing of the patent application and where the disclosure directly or indirectly followed:

  • evident abuse relating to the applicant or its legal predecessor; or
  • an exhibition of the invention at an exhibition officially recognised under the Paris Convention Relating to International Exhibitions, dated November 22 1928.

The latter must be supported by proof that the invention was exhibited pursuant to an international treaty within four months of filing of the patent application.

What types of patent opposition procedure are available in your jurisdiction?

No formal pre or post-grant patent opposition procedures exist. However, when a patent application is published, anyone can submit observations concerning the patentability of the invention. The IP Office must consider these claims when performing its substantive examination of the application. Nevertheless, an individual that submits an observation does not become party to the registration proceedings. In addition, the IP Office has exclusive competence to decide on the validity of a patent in revocation proceedings, which can be initiated ex officio or by third-party action. Revocation actions may be brought against a patent even after it has expired, provided that the individual bringing the action can prove legal interest.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Revocation through the IP Office is the only available action to challenge a patent. Czech courts have no competence to declare a patent invalid – they decide only on other related issues, such as infringement and ownership issues.

How can patent office decisions be appealed in your jurisdiction?

IP Office decisions can be appealed to the IP Office president. The appeal must be filed within one month of delivery of the decision and has a suspensory effect. The president’s decisions are generally final, but can be reviewed by the courts – in particular, by the Prague Municipal Court at first instance and the Brno Supreme Administrative Court on appeal.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

It usually takes three years to obtain a Czech patent, although some patents are granted much faster (in 2013, over 10% of granted patents were granted within one year of submitting the application). The costs largely depend on the complexity and length of the application, as well as the quality of the patent attorney. Minimum costs are around €400, although realistic costs are in the region of €1,000 to €2,000.

Enforcement through the courts

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The most effective way to enforce a patent is to initiate court proceedings. In combination with a successful request for preliminary injunction, infringement actions can be a powerful enforcement tool. In addition to court action, patent owners can initiate declaratory actions at the IP Office, seeking a declaration that an item falls within the scope of a particular patent. These declarations are not binding on the court deciding the infringement case, but can nevertheless be highly persuasive. Theoretically, it is also possible to use Customs or the police, which have competencies in the enforcement of IP rights. However, while Customs and the police are generally strong and efficient when it comes to anti-counterfeiting matters (in particular, trademark and design infringements), in practice, they are reluctant to enforce patents, as these are seen as too complex.

What scope is there for forum selection?

No scope for forum selection exists in the Czech Republic. The IP Office exclusively handles patent revocation cases, whereas the courts exclusively handle patent infringement cases. Since 2008 the Prague Municipal Court has handled all court cases involving industrial property rights, including patents.

Judges are automatically assigned by an electronic system. However, patent-related cases are typically assigned to one of approximately five presiding judges, all of whom have a certain level of specialisation in IP rights.

What are the stages in the litigation process leading up to a full trial?

After a petition has been submitted to the court, the court checks that the formal requirements have been met, including payment of a court fee. The court then forwards the petition to the defendant to provide a written response. The defendant typically has 30 days to respond, but this deadline can easily be extended. Typically, the plaintiff will be asked to reply to the defendant's statement. In turn, the defendant can submit a second statement in response to the plaintiff's reply.

The court will then either call a preparatory hearing or begin the first formal hearing. During the hearing, the parties summarise their positions and the court reviews documentary evidence and interviews witnesses. In technical matters, the courts commonly request an expert opinion; in such cases the hearing is adjourned until an expert can be found. It is also common for witnesses not to be heard at the first hearing, but rather in subsequent hearings.

The court determines hearing dates, depending on its availability. After all evidence has been examined, the parties are invited to make final statements and the court issues a judgment. First-instance decisions can be appealed within 15 days of delivery of the judgment.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Defendants may delay proceedings in a variety of ways. Usually, delays occur when defendants delay in submitting documents or request deadline extensions. They may also cause delays by submitting complex evidence or expert opinions. Defendants may also send last-minute apologies stating that they cannot attend a hearing (eg, due to health reasons), which can easily delay the proceedings by a few months.

In patent infringement cases where the defendant files a revocation action with the IP Office, defendants often ask the court to stay the infringement proceedings until validity has been determined. Although case law states that the courts are not obliged to wait for a validity decision, and while judges publicly declare that they will not wait, in practice there are usually delays where a revocation action is pending.

Plaintiffs have few options to tackle these practices. Usually, a plaintiff’s only option is to submit requests to the court to challenge the defendant’s activity – for example, that:

  • the hearing should begin without the defendant;
  • the court should not stay proceedings where the defendant so requests; or
  • the court should deal with the matter with urgency where the delay is caused by the court itself.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Czech courts do not deal with patent validity – this falls within the scope of the IP Office. It is possible to file a revocation action with the IP Office in anticipation of a potential infringement suit (or after it has been initiated), but the court has no obligation to consider the revocation action or stay the proceedings. If a court rules that infringement has occurred and the patent is later revoked by the IP Office, this is seen as grounds to reopen the infringement proceedings.

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

The Prague Municipal Court has had jurisdiction over all patent infringement cases since 2008. Over the last six years, judges have thus developed a certain level of expertise in IP matters. That said, the majority of litigated cases are trademark or design related. As far as patents are concerned, the courts have not yet established particular expertise and, given the non-technical background of many judges, they tend to rely heavily on court-appointed experts when deciding patent cases.

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

Cases are decided by a three-judge panel.

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

Jury trials do not exist in the Czech Republic.

What role can and do expert witnesses play in proceedings?

Experts are used in the vast majority of patent cases. Each party typically produces its own expert report, after which the judges – who have no technical background themselves – appoint a neutral technical expert to provide an opinion. Written expert reports are sometimes sufficient, but experts can also be questioned in person.

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

The doctrine of equivalents has traditionally been applied in Czech patent law. According to the IP Office’s official guidelines, an element is usually considered equivalent if it is clear to a person skilled in the art that a substantially identical result is achieved by use as would otherwise be achieved by an element in the compared solution. IP Office case law goes further to say that the doctrine of equivalents can be applied where the relevant element of a patent claim is:

  • not the only element that makes the combination of elements of the patent claim different from the state of the art; and
  • a substantial element of the claim.

If the compared element fulfils the same function as the element of the patent claim (taking into account similar results), and if the substitution is obvious to the person skilled in the art (ie, the compared element is known at the date of publication of the patent), then the two elements can be considered equivalent.

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

It is possible to obtain preliminary injunctions either before the main action begins or in the course of the proceedings. The court may issue a preliminary injunction if it is necessary temporarily to regulate the relations of parties or if enforcement of a decision is at risk. However, preliminary injunctions should not replace or anticipate the results of the main action and should not create an irreparable situation. Although this is not an explicit statutory requirement, the courts also consider the urgency of the matter and the likely harm caused to the parties.

The court must issue its decision within seven days of receiving an application for preliminary injunction. Preliminary injunctions are considered ex parte proceedings – defendants have little chance to defend against a preliminary injunction, other than by appeal, which has no suspensory effect. When filing an application for a preliminary injunction, plaintiffs must pay a deposit of Kr50,000 to cover potential damages caused by the preliminary injunction to the defendant. The courts may increase this deposit amount. Preliminary injunctions are automatically enforceable once served on the defendant.

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

A bifurcated system exists in the Czech Republic. Infringement is dealt with by the courts, whereas validity is considered exclusively by the IP Office. One does not affect the other, although the courts tend to delay infringement proceedings until the IP Office has rendered a revocation decision.

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

This is highly unlikely. There may be an element of persuasive power, but the IP Office and the courts have always declared that they are not bound by decisions from other jurisdictions and decide based purely on the laws applicable in the Czech Republic (which nevertheless include EU law and European Court of Justice jurisprudence).

Damages and remedies
Can the successful party obtain costs from the losing party?

In theory, the losing party should reimburse the costs of the winning party. This is true with respect to the recovery of court fees and some other official expenses, including the cost of evidence (eg, payment of a deposit to cover the costs of the court-appointed expert or the cost of a notarial record) or travel expenses. However, it is not usually possible to achieve a full (or sometimes even meaningful) reimbursement of legal costs. Czech courts award legal costs in line with a government decree based on the value/nature of the claim and the number of steps taken in the proceedings (eg, writing petitions, attending hearings and meeting with clients for longer than two hours). Where only a cease and desist obligation is sought from the court and where the proceedings involve only the minimum necessary steps, the reimbursement of legal costs can be as low as approximately Kr17,000.

What are the typical remedies granted to a successful plaintiff?

Typical remedies include cease and desist orders against the defendant (often by removal of the infringing goods from the market or destruction) and payment of damages, unjust enrichment or other compensation. Additional remedies include publication of the judgment and information about the origin and distribution channels of the infringing products.

How are damages awards calculated? Are punitive damages available?

Damages awards are calculated based on the actual amount of damages (which the plaintiff must prove) or based on a licence analogy (ie, the amount that the rights holder would have obtained if the right had been licenced). The default amount is at least double the usual licence fee. In the event that the defendant did not know and could not have known that its activity was infringing the rights of the plaintiff (ie, unintentional infringement), the lump sum will be at least the same amount as the licence fee.

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

Czech courts can impose various obligations on defendants to stop or prevent infringement. Rather than a permanent injunction, this involves the application of negatory and restitution claims, which are part of the set of available remedies, together with satisfaction, compensation and information claims. 

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

First-instance decisions are typically issued within one to two years, although patent cases can sometimes take longer due to expert appointments and judges’ unwillingness to consider technically complicated matters. No formal procedure to expedite the proceedings exists.

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

This depends on, among other things:

  • the complexity of the matter;
  • the area of industry;
  • the quality of representation;
  • the cost of evidence; and
  • whether documents must be translated into two languages (typically English and Czech).

In general, costs range from €5,000 to €50,000.

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

First-instance decisions can be appealed within 15 days of delivery of the written decision. The Civil Procedure Code lists decisions that cannot be appealed (mostly procedural decisions). Further, it is not possible to appeal only the reasoning of the decision or negligible monetary claims (ie, below Kr10,000). The Civil Procedure Code explicitly lists the grounds for appeal. Typically, appeals are filed on the ground that the first-instance court:

  • erred in its legal analysis of the matter;
  • failed to consider all proposed evidence; or
  • failed to identify the correct status of facts.

Appeals are typically decided in one to two years. 

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

A patent owner may choose to initiate a declaratory action at the IP Office, which can lead to a declaration that a particular product falls within the scope of its patent. However, this declaration cannot be enforced against the infringing party and therefore merely supports other actions. Subject to the consent of the parties, arbitration or mediation remains an option, but is uncommon in practice. In administrative proceedings, patents can be enforced by Customs, but the patent owner has far less power to influence the proceedings – not to mention the fact that Customs focuses on clear anti-counterfeiting matters and is extremely hesitant to take on any patent-related cases.