What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?
China Ropes & Gray LLP
If a patent is infringed, the patent owner or any interested party can:
- apply for pre-trial relief in the form of applications for preservation of evidence and property or a preliminary injunction (which requires a bond to be posted);
- initiate legal proceedings in a people’s court, seeking an injunction and damages; and
- initiate administrative proceedings with a local IP office, which can grant an injunction and issue fines, but cannot award damages or preliminary injunctions.
Czech Republic Bird & Bird
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.
Greece Dr Helen Papaconstantinou John Filias & Associates
As there are serious delays in main patent proceedings, it is of the utmost importance to initiate preliminary proceedings. Two preliminary proceedings are available:
- temporary restraining orders; and
The quickest defence against infringement is to file for a temporary restraining order. For the court to grant a restraining order, the petitioner must prove the existence of a prima facie serious infringement and that the matter is of exceptional urgency. The request must be filed concurrently with a petition for injunction. If a temporary restraining order is granted, it remains effective until the injunction hearing takes place. For an injunction to be granted, the element of urgency must be evident. Within this framework, patent owners can request cessation of the infringement and removal of the allegedly infringing products from the market. Patent owners also have a right to information and are entitled to certain measures to preserve evidence.
Next, patent owners can initiate an action on the merits, which becomes statute barred either:
- five years after the date on which the patent owner became aware of the infringement or damage and the name of the infringer; or
- 20 years after the date on which the infringement was committed.
Patent owners can request compensation and moral damages. Owners may also claim payment of the profits derived from infringement or payment of an amount equivalent to the value of a licence for exploitation of the invention by the infringer. The court may also order the destruction of infringing products.
It is paramount that patent owners adopt preventative strategies, including efficient monitoring systems. One of the most effective preventative strategies is to establish a customs watch system by filing a general request with the Central Customs Directorate. Customs will notify the patent owner or its representatives when suspected infringing goods are intercepted. The patent owner must initiate court proceedings within 10 days of notification. This term can be extended by another 10 days. If an agreement is reached between the patent owner and the holder or owner of the infringing goods, Customs can order the immediate destruction of the counterfeit goods via a simplified procedure, without the need for court proceedings. In such cases, if the owner of the goods does not expressly oppose the destruction within 10 days, its agreement is presumed.
Italy Studio Legale Jacobacci & Associati
Patent owners can enforce their patents in both civil and criminal courts; if necessary, both actions can be accompanied by administrative measures (eg, customs surveillance and detention of infringing products). Enforcement in civil courts is far more common, since it enables patentees to recover damages and is not limited to those cases in which the infringer acted wilfully. In cases that can also be prosecuted before the criminal courts (eg, when a former licensee continues to practise the patent after expiration of the licence, thus creating an arguable case that the infringement is wilful), enforcement through the public prosecutor can be effective.
Japan SUGIMURA International Patent & Trademark Attorneys
Patent owners should consider all available enforcement options, including:
- border enforcement;
- arbitration; and
- criminal proceedings (although these are rare).
The best enforcement strategy for a patent owner to pursue will depend on the facts of the case and the patent owner’s business objectives.
Romania Nestor Nestor Diculescu Kingston Petersen
If a dispute between a patent owner and an alleged infringer cannot be settled amicably, the patent owner must turn to the courts. The patent owner may file a preliminary injunction request followed by an infringement action.
Russia Gorodissky & Partners
Although there are several possible remedies against patent infringement (eg, administrative, civil and criminal proceedings), civil proceedings are the most effective way for patent owners to enforce their rights.
Civil proceedings begin with a claim, which the patent owner files with the court. IP disputes fall under the jurisdiction of both the common and commercial courts. Under both jurisdictions, it is possible to request a preliminary injunction.
Before filing suit, rights holders should take the following steps:
- collect and secure evidence;
- prepare the suit and claims;
- send copies of the suit to the defendants; and
- pay the state fee.
In IP infringement proceedings, evidence should include documents which can help to establish the link between the defendant and infringing product and evidence of the claimant’s exclusive rights. Evidence can be collected by the rights holder alone or together with an investigator or the notary public. All official foreign documents must be properly executed (ie, notarised and legalised with an apostille, if applicable) to be admissible. Original documents must be provided where possible.
Under the Civil Code, rights holders have three years to protect their rights by filing suit against an infringer. The same term applies to patent infringement cases. This means that a rights holder must file suit within three years of the date on which it learns, or should have learned, of the infringement.
The law provides an option for patent owners to claim monetary compensation instead of damages in the following amounts:
- Rb10,000 to Rb5 million, to be determined by the court based on the nature of the infringement; or
- double the value of the right to use the corresponding patent based on the price that is usually charged for the lawful use thereof.
In practice (particularly in unusual cases), patent owners usually send a cease and desist letter to the infringer before litigation, as it is both a cost-effective and time-efficient means of stopping the infringement.
Saudi Arabia Rouse Legal
Enforcement proceedings can be initiated only after a patent has been granted. Courts may stay infringement proceedings pending the outcome of revocation proceedings brought as a defence.
The Patent Committee has statutory jurisdiction to hear revocation disputes.
Turkey NSN Law Office
Patent owners have several options to enforce their rights, including:
- sending a cease and desist letter;
- filing a civil action before the courts;
- requesting a Patent Institute demand through an ex parte application or in a main action; and
- having goods seized at the border by Customs.
The most common and effective strategy is to file a patent infringement suit or, where patent rights are infringed by another patent with later priority, to file a suit for revocation of the infringing patent. To prevent the import of infringing products into Ukraine, a patent owner may apply for border measures. However, if Custom’s clearance of the alleged infringing products is suspended, patent owners must file suits before the court. As a rule, border measures are effective when the specific infringing products are identified in advance.
United Arab Emirates Rouse Legal
Enforcement proceedings can be initiated only after a patent has been granted. Courts may stay infringement proceedings, pending the outcome of revocation proceedings brought as a defence.
United Arab Emirates > GCC Rouse Legal
Enforcement proceedings can be initiated only after a patent is granted. The courts of the member state where the alleged infringement occurred have jurisdiction to examine disputes in relation to infringements of a Gulf Cooperation Council (GCC) patent. The Patent Committee in Saudi Arabia has statutory jurisdiction to hear revocation disputes with regard to GCC patents. National courts may stay infringement proceedings pending the outcome of revocation proceedings brought as a defence.
United Kingdom Powell Gilbert LLP
The Patents Court or the IP Enterprise Court hears claims for patent infringement. The IP Enterprise Court provides a streamlined and more cost-effective forum to hear lower-value and less complex IP claims than the Patents Court.