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At trial

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

Experience levels vary widely throughout member states and even among the individual courts in a single member state. The largest member states have specialised patent courts with highly experienced judges.

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

The structure of the court will vary from one member state to another, as this is not a matter of harmonised law across the European Union. However, jury trials are not generally available in Europe for patent litigation.  

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 experts, their role in the proceedings and the weight given to their evidence varies widely across the European Union as this is a procedural matter for the courts of the country concerned and has not been harmonised. Many jurisdictions permit the parties to employ their own expert witnesses, and courts may also have the power to appoint independent witnesses to assist the court, particularly for complex technical or financial issues.

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

The extent of protection of a patent in Europe is dictated by Article 69 of the European Patent Convention (EPC), combined with the Protocol thereto. According to these provisions, account should be taken of equivalents when interpreting the claim scope.

Under Article 69: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

The Protocol to Article 69 (since its revision in December 2007) states:

(1) Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

(2) For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Nevertheless, while there has been a degree of statutory harmonisation under these provisions since 2007, the courts in individual countries have tended to develop their own jurisprudence as to how equivalents are to be interpreted and the weight accorded to them.

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

Preliminary injunctions are not governed by any harmonised EU laws or by the EPC. It is a matter of national law for each member state to determine whether preliminary injunctions are available and under what circumstances. Nevertheless, the majority of member states, including the major patent litigation jurisdictions, provide for some form of preliminary injunction. 

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

There are two primary models for handling infringement and validity in the European Union. In some countries (eg, the United Kingdom), issues of infringement and of validity are considered together in a single trial. The validity issues are commonly raised as a counterclaim or as part of the infringement defence. The alternative to this is known as the bifurcated model, which is used in countries such as Germany. With bifurcation, the actions for infringement and validity are heard separately in different trial actions. Under the future unitary patent system, courts will be able to choose between hearing both issues as part of a single trial and bifurcating the issues of infringement and validity.

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

Yes. Although not binding and despite many instances of diverging decisions on similar issues among member states’ courts, it is common for courts to be informed of decisions in parallel proceedings in other member states. The weight given to such decisions, and those of the European Patent Office Boards of Appeal, varies among member states. European patent judges meet regularly to discuss common approaches and the causes of divergence. In general, the attitude of most courts is that harmonised decisions in parallel proceedings are desirable, although never at the expense of making a ruling that the judge believes to be wrong. 

Damages and remedies

Can the successful party obtain costs from the losing party?

This is purely a matter of national law and is not harmonised at EU level.

What are the typical remedies granted to a successful plaintiff?

While this varies from country to country, most member states will offer:

  • some form of permanent injunction following a finding of infringement;
  • monetary compensation (eg, recovery of damages or the infringer’s profits); and
  • delivery up or destruction of the infringing products. 

How are damages awards calculated? Are punitive damages available?

The calculation of damages is unharmonised and varies widely among the 28 member states.

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

While this is not a matter of harmonised law, the granting of a permanent injunction is available as a matter of course in most member states following a finding of infringement.

Timescale and costs

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

The timescale for obtaining decisions varies widely among the 28 member states, as do the options for expediting trial. These variations make the choice of forum a matter of high importance when deciding on a European litigation strategy.

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

The costs of litigation vary widely among the 28 member states.

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