All questions

Procedure in patent enforcement and invalidity actions

In the Netherlands, patents can be enforced through the regular system of civil proceedings. The EU Enforcement Directive (No. 2004/48) has been implemented in the Dutch Code for Civil Procedure (DCCP), which includes such measures as ex parte injunctions, seizure of evidence and full cost orders for losing parties.

Typically, the Dutch enforcement of a patent starts with a letter to the alleged infringer, stating the details of the infringement, the patent that is invoked and the steps that the infringer is requested to take. If no settlement is reached, the patentee will typically start preliminary injunction proceedings or proceedings on the merits.

The majority of all Dutch patent cases are brought before the District Court in The Hague because this court has exclusive jurisdiction to hear all patent infringement and invalidity cases. However, some patent disputes start with pretrial measures, such as a seizure that does not fall within the exclusive jurisdiction of the court of The Hague, but in practice, other courts will request assistance of The Hague judges to render a decision in these cases.

i Requirements for jurisdiction and venue

If the defendant has its place of business in the Netherlands, or if the actual patent infringement takes place on Dutch territory, Dutch courts can assume international jurisdiction to take cognisance of disputes. Once international jurisdiction has been established, to the extent necessary, the jurisdiction of the relevant district court is determined in much the same way. The court of the district in which the defendant has its office, or in which the infringement actually takes place, will have local jurisdiction. These rules allow the possibility of multiple district courts having jurisdiction within the Netherlands. However, as already mentioned above, relating to patent infringement and the validity of patents, exclusive jurisdiction lies with the district court in The Hague.

ii Obtaining relevant evidence of infringement and discovery

Dutch procedural law does not provide for a general concept of discovery or disclosure of documents. In principle, the parties are free to collect the evidence that they require in the proceedings and the Dutch courts are free to weigh that evidence as they deem appropriate.

The implementation of the Enforcement Directive has led to the implementation of certain possibilities to seize and safeguard information into the DCCP. These rules allow the patentee to request the district court in preliminary relief proceedings to grant permission to seize evidence that is in the possession or under the control of the infringer. The preliminary relief judge will assess these requests for permission, mostly on an ex parte basis. The requests must explain and elaborate why a legitimate fear of infringement exists. After permission for a seizure has been granted, the patentee may direct a bailiff to inspect the premises of the infringer. Accordingly, the bailiff will do so with the help of the necessary experts, such as IT specialists or technical experts. Any information collected by the bailiff will not, however, be handed over to the patentee directly. The information will initially be held by a custodian who has been appointed for this purpose when the leave for seizure was granted. The patentee will then have to institute separate proceedings on an inter partes basis, requesting the court for disclosure of the relevant documents that were seized. The patentee will not be able to access the seized documents until the court grants the request for this disclosure.

iii Trial decision-maker

The District Court employs specialised judges to adjudicate patent cases, all of whom are seasoned experts. Some of the specialised patent judges on this court's payroll can boast technical acumen as well. Proceedings on the merits are typically heard by a three-judge division. Preliminary relief proceedings, in which patentees have an urgent interest in relief, are adjudicated by a single judge, who is referred to as the preliminary relief judge.

Although the procedural rules that apply in the Netherlands allow courts to appoint independent experts who specialise in a particular technical field or to request the parties to produce additional evidence to support the facts they are relying on, parties rarely ask for such an appointment. Instead, in patent cases, the parties to the proceedings are usually assisted by technical experts of their own choosing, who will file written expert statements on behalf of the party that engaged them. These experts often show up at the hearing as well.

The examination and cross-examination of party witnesses, be they experts or not, has no place in the proceedings, as litigation advances primarily through the exchange of written briefs (see Section III.iv).

iv Structure of the trial

Dutch proceedings on the merits are conducted mainly by the exchange of written briefs in which the parties set out their arguments and defences. This exchange is often followed by a court hearing during which the parties will have the opportunity to present further arguments. Proceedings are initiated with a writ of summons, in which the claimant describes the patent that it invokes, the infringement against which the action is brought, and the relief that is requested. In setting out the particulars of the case, the claimant has to be as complete as possible. Also, the claimant is required to substantiate its claims in the writ of summons with evidence. Writs of summons in patent cases typically provide a technical background to the technical field at the heart of the dispute.

Being served a writ of summons, the defendant will be given the opportunity to file a statement of defence. This statement of defence enables the defendant to raise defences and file exhibits that support its position. With the statement of defence, the defendant can furthermore avail itself of the opportunity to bring a counterclaim against the claimant. It can do so, for example, to claim the invalidity of the patent in question. The course of events to follow hinges on the proceedings themselves. The court will either schedule a hearing after the statement of defence, and after the claimant has had the opportunity to respond to the counterclaim, or it will allow the parties to continue the exchange of written arguments, after which a court hearing usually follows.

During the hearing, the parties will be able to argue their case before the court. Court sessions in patent cases generally last around four or five hours. The court may take longer to hear the parties if the complexity of the patent matter at hand merits it. For reasons of judicial efficiency, however, Dutch courts do not allow full elaboration on every single part of the arguments exchanged between the parties, thereby preventing needless repetition of what has already been argued in the written statements.

Patent cases in which the validity of a patent is challenged offer the patentee the opportunity to file auxiliary requests. Pursuant to such requests, the court may decide to uphold the patent in its present form or in amended form.

In the Netherlands, evidence in proceedings is usually presented by the production of documents. Similarly, witness testimony is usually produced by filing written statements. District courts have to schedule separate sessions if they want to hear witnesses. While this is certainly an option, it rarely happens in patent cases.

v Infringement

In their adjudication of patent cases, the Dutch courts will interpret the claims in conformity with Article 69 of the EPC and the protocol belonging thereto. Dutch case law provides a number of criteria applicable to that Article (see Section III). Besides literal infringement, the Dutch courts can also establish infringement by equivalence.

In consonance with Supreme Court case law, the patentee's actions during the patent's prosecution can be a relevant factor in the assessment of the scope of patent protection.

vi Time to first-level decision

In general patent cases, proceedings on the merits usually take around 12–16 months from the moment that the writ initiating the proceedings is filed until the court renders a decision in the first instance. The District Court of The Hague has established an accelerated regime for patent cases, which is known as the 'VRO-regime'. This regime can be used for (non)-infringement claims and revocation actions. On the basis of this regime, the dates on which the substantive documents must be filed and on which the hearing will take place are set out in a fixed schedule before the proceedings are set to commence. Because the parties are bound to this schedule, a first instance decision can typically be handed down within 12 months from the date on which the writ of summons is filed. Decisions in preliminary relief proceedings can be rendered within a few weeks, and even sooner in cases of extreme urgency.

In cases involving a manifest infringement, causing irreparable harm to the rights holder, the Dutch system also allows for an ex parte injunction. Injunctions such as these can be issued without hearing the defendant, and can be obtained in days.

vii Protective letters

In the Netherlands, it is not common practice to protect against ex parte preliminary relief by filing protective letters. The only court that facilitates the filing of protective letters is the court of The Hague. Although this court is the exclusive court for patent infringement and invalidity cases, seizure requests do not fall within this exclusive jurisdiction of this court and are, therefore, filed with other district courts that do not hold a register for such letters. If such a court involves a judge from The Hague court – which is allowed, but certainly not mandatory under Dutch procedural law – this judge will most probably check The Hague register of protective letters.

A protective letter does not protect against an ex parte request per se, but the judge will weigh these counter arguments in his or her decision-making process. The preliminary relief judge could also decide to hear the alleged infringing party before he or she decides upon the request, but only after he or she gave the opportunity to the patentee to withdraw the request. It is also possible that the judge will only grant the ex parte preliminary relief under certain additional conditions to safeguard the interests of the alleged infringer; for instance, by obliging the patentee to file a bond, a deposit or some sort of other monetary guarantee.

viii Liability for enforcing a patent

Under Dutch law, it is, in principle, possible to exercise patent rights against alleged infringers, even when these infringement claims are later dismissed by a court. A patentee cannot be found liable in such cases. The only exception is when the patentee should have reasonably known at the time he or she enforced the patent against alleged infringers, often by way of a warning letter or summons, that the patent was invalid or not infringed. For instance, if he or she already knew of certain prior art that would invalidate his or her patent, enforcing the patent anyway would be regarded as an unlawful act against the alleged infringer.

Enforcing an injunction or other relief granted by the court against an infringer can also amount to liability of the patentee if a (higher) court later (in appeal) lifts the injunction or the relief and rules in favour of the alleged infringer.

Sending warning letters to, inter alia, customers or trading partners of an alleged infringer is often considered as an unlawful act against the alleged infringer, albeit based on general tort law, unfair competition or misleading advertising, if the infringement claims are later dismissed in court. In those cases, the court often orders a patentee to cease and desist from making the unfounded allegations and send a rectification letter to all parties that have received the warning letter.

ix Costs

In the majority of patent cases, the court fees in the Netherlands are very low compared to other countries, and are therefore not a cost factor to take into account before initiating a patent case in the Netherlands. The only significant costs are those of the lawyers, supporting patent attorney, experts and translations. The fees of the lawyers will be the highest cost factor to consider. Although it highly depends on, inter alia, the complexity of the case and the technology involved and the amount of patents invoked, the lawyers' fees involved with patent cases will generally be €75,000 to €250,000. The costs of a patent attorney offering trial support is often a smaller percentage of the lawyer's fees – often around 20 to 25 per cent.

As of 1 September 2020, the cost regime in patent cases will no longer account for a full compensation of all costs involved (such as lawyer's fees, patent attorney's fees, expert costs, translation costs, etc). Instead, indicative fees will apply for each type of proceedings and depending on the complexity of the matter at hand. For preliminary relief proceedings, the indicative fees vary from €10,000 to €120,000. The indicative fees for proceedings on the merits in first instance vary from €30,000 to €250,000. This means that the losing party is in principle ordered to pay such indicated costs of the prevailing party. If the costs for which compensation has been requested are not reasonable and fair in light of the complexity of the case, it is possible to raise a substantiated objection against these costs. However, in many patent cases parties used to reach a cost agreement before the oral hearing, which the court accordingly executed in its final judgment. I expect this will still be possible, unless the cost agreement would (substantially) exceed the indicative fees.