Table of Contents

Getting the Deal Through - Patents 2015

Global Overview
FRAND
Australia
Austria
Canada
China
Colombia
Denmark
Ecuador
France
Germany
Greece
Honduras
India
Indonesia
Italy
Japan
Korea
Macedonia
Malaysia
Mexico
Nigeria
Pakistan
Peru
Philippines
Poland
Russia
Singapore
South Africa
Sweden
Taiwan
Turkey
United Kingdom
United States
Venezuela
Vietnam

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Patents 2015
Contributing editors:
Michael N Zachary, Clifford A Ulrich and John W Bateman
Kenyon & Kenyon LLP

Getting the Deal Through is delighted to publish the twelfth edition of Patents, which is available in
print, as an e-book, via the GTDT iPad app, and online at www.gettingthedealthrough.com.
Getting the Deal Through provides international expert analysis in key areas of law, practice and
regulation for corporate counsel, cross-border legal practitioners, and company directors and
officers.
Throughout this edition, and following the unique Getting the Deal Through format, the same key
questions are answered by leading practitioners in each of the 34 jurisdictions featured. Our coverage
this year includes new chapters on Pakistan and Turkey.
Getting the Deal Through titles are published annually in print. Please ensure you are referring to the
latest edition or to the online version at www.gettingthedealthrough.com.
Every effort has been made to cover all matters of concern to readers. However, specific legal
advice should always be sought from experienced local advisers.
Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume,
who were chosen for their recognised expertise. We would like to thank Frank L Bernstein of Kenyon
& Kenyon LLP for his stewardship of the title over the past year. We would especially like to thank
and acknowledge Michael N Zachary, Clifford A Ulrich and John W Bateman as contributing editors
of this and future editions.

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Global Overview
Michael N Zachary, Clifford A Ulrich and John W Bateman *
Kenyon & Kenyon LLP
During the past year noteworthy patent-related developments occurred in Europe, China and the
United States. Europe progressed towards implementation of the European patent with unitary effect
(unitary patent) and the Unified Patent Court. China established intermediate-level courts in Beijing,
Shanghai and Guangzhou specifically dedicated to IP cases. In the United States, the Supreme Court
issued decisions on patent eligibility and claim definiteness that have already had a significant impact
on patent litigation and on the issuance of software-based and e-commerce patents in the United
States. Also, patent challengers in the United States have made even more extensive use of the postissuance patent review proceedings that were established following passage of comprehensive
amendments to US patent statutes the America Invents Act in 2011. Meanwhile, the debate has
continued in the United States and elsewhere over the merits, demerits and overall impact of patent
assertion entities (PAEs) on patent value, patent strategy and patent enforcement.
The European unitary patent and Unified Patent Court
On 19 February 2013, 25 EU member states signed the Agreement on the Unified Patent Court. Before
the Agreement can become effective, 13 of the 25 member states, including France, Germany and the
United Kingdom, must ratify the Agreement. During 2014, five more countries, including France,
joined Austria in ratifying the Agreement, bringing the total number of ratifying countries to six.
Much of the design of the infrastructure for the handling of unitary patents and the operation of the
Unified Patent Court is in place. The European Commission has stated that during a transition period
of up to 12 years fees for a unitary patent should be approximately 6,500. The removal of translation
requirements after the transition period should reduce the cost to approximately 5,000, according to
the Commission. While the Unified Patent Court is supposed to be self-funding, fees have not yet been
set for institution and prosecution of patent litigation in the Unified Patent Court.
The overall economic market that the unitary patent and Unified Patent Court would cover is
comparable to that of the United States. As a result, a party opting into the system will be able to
cover a very large market for any accused products and methods, making opting-in potentially
attractive. There is a risk and reward relationship, in that putting ones patents in the unitary patent
basket risks one-stop invalidation as well as one-stop enforcement. It remains to be seen whether
PAEs will accept that risk for the convenience of simplifying enforcement activities and for the
potential benefit of enhanced damages recoveries.
The establishment of IP courts in China
In August 2014, China passed a resolution authorising the establishment of intermediate-level, IP-

focused courts in Beijing, Shanghai and Guangzhou province. While the three courts will not hear
cases that are filed in other parts of China, a patent owner can file cases in these courts if either the
defendant resides in or infringing activity occurs within these courts jurisdiction. The courts will
have exclusive, original jurisdiction over patent cases filed within the three regions. In addition, the
IP Court in Beijing will have exclusive jurisdiction over appeals from administrative decisions of the
Chinese Patent Office relating to patents. All three courts were operating as of January 2015, and are
currently accepting cases. Since the new courts are intermediate-level, decisions of the courts are
subject to appeal to higher level courts within those jurisdictions.
It remains to be seen whether the new courts are the final word on the establishment of IP courts in
China, or whether additional developments, such as extension of jurisdiction to all of China, or the
creation of a single high-level court for IP cases, will occur in the future.
Recent decisions of the Supreme Court of the United States
In the United States, some commentators have expressed the view that the US Patent and Trademark
Office (PTO) has at times granted patents with vague claims that cover very basic concepts (rather
than specific new methods of applying such concepts), and that PAEs then acquire these patents and
use them to force companies to pay licensing royalties to avoid the high cost of litigation or the
uncertainty of having their case decided by a lay jury. During 2014, the Supreme Court of the United
States issued two decisions that may make it harder to obtain issuance of and to enforce such patents.
In the first decision, the Supreme Court addressed the provision in the patent statute requiring that
claims be sufficiently clear and precise (ie, not indefinite). Previously, the Federal Circuit court of
appeals had held that claims were invalid for indefiniteness only if they were insolubly ambiguous,
which in practice was a very difficult standard to satisfy. The Supreme Court abrogated that standard,
instead holding that claims are invalid for indefiniteness if they fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.
In the second decision, the Supreme Court addressed the scope of the subject matter that is eligible
for patent protection. Although the scope of patentable subject matter is quite broad, it has long been
the law that abstract ideas are not eligible for patent protection in the United States. The Supreme
Court applied this principle to a patent on a method, implemented through a computer programmed
with software, of mitigating settlement risk using a third party. The Court held that the claimed method
was an abstract idea ineligible for patent protection, and that merely requiring the idea to be
implemented on a generic computer was not enough to make the claim patentable.
Although it is still too early to determine the ultimate effect of these decisions, there has been an
immediate impact. The US PTO has placed under review thousands of pending applications relating
to software-implemented inventions, including many applications that had been allowed but not yet
issued. The US PTO has also been issuing many rejections on the basis of lack of patent eligibility.
The US PTO recently issued Guidelines to implement the new patent eligibility standard. Similarly,
the number of patent litigation cases filed in the United States has dropped compared with earlier
periods. In pending court cases, there has been a noticeable increase in the frequency with which
accused infringers are asserting the defence of invalidity owing to indefiniteness or ineligible subject
matter. Emboldened by the Supreme Courts decisions, lower courts have rendered numerous
decisions invalidating issued patents on these grounds. Finally, though statistical measures are hard to

obtain, anecdotally, the market for patent sale transactions has slowed and prices have fallen.
Increased use of United States Post-Issuance Patent Review proceedings
Parties are filing an increasingly large number of inter partes review and covered business method
(CBM) review requests in the US PTO. Inter partes review is a proceeding conducted before the
Patent Trial and Appeal Board (PTAB), in which anyone who is not the patent owner can challenge
the validity of an issued patent on the basis of prior art patents or printed publications. CBM review
is similar, but can only be used for certain non-technological patents relating to financial products
or services. In addition, petitioners can raise broader grounds for invalidity than in an inter partes
review.
Inter partes review or CBM review is frequently sought by defendants who have been sued for patent
infringement. Inter partes review and CBM review are seen as one of the primary strategies for
defending against PAE suits, or in general, any patent suit. Requests for review are frequently
coupled with requests made to the court to stay the litigation pending the outcome of the PTABs
review. Many courts, though not all, are inclined to grant the stay requests in order to avoid litigation
on a patent that may be invalidated. Inter partes review or CBM review may be significantly less
expensive than full litigation, which is another factor inclining defendants towards the use of review
proceedings.
An accused infringer must file a petition for inter partes review within 12 months of being sued,
while there is no such limit for CBM review requests. If the PTAB decides to grant review (a
decision it makes within six months after a petition is filed), the review must generally be concluded
within 12 months after the decision to review is issued. Because of the relatively quick time frame, an
inter partes or CBM review can often reach a final decision before a court case would be ready for
trial, though this is somewhat dependent on the time to trial for a particular judge or court where a
case is filed.
In addition to the advantages discussed above, there are other advantages, and some disadvantages, to
inter partes or CBM review from the perspective of an accused infringer. Among the advantages is
that in an inter partes review and CBM review, unlike in court, a patent does not enjoy a presumption
of validity, making it easier to demonstrate invalidity. Also, decisions of the PTAB are rendered by
three administrative judges with wide experience with patents and a technical background. The main
disadvantage of inter partes review from the accused infringers perspective is that if the PTAB
upholds the validity of the patent, the petitioner is likely bound by the result in an infringement
proceeding, which is not true of an ex parte re-examination. (For CBM review the scope of the
estoppel is not as great.) Also, inter partes review cannot be used to challenge a patent based upon
other forms of prior art, such as systems or methods that have been on sale or publicly used.
In its fiscal year ended 30 September 2014, the PTAB received approximately 1300 petitions for
inter partes review of issued patents, and a further 177 petitions for CBM review. For fiscal year
2015, the pace of review petitions exceeds that of 2014, and is on course to total about 1,800
petitions for inter partes review for the year (and a further 180 for business method patents). One
reason for the number of petitions, and the year-over-year growth, is the initial experience, and the
continuing expectation, that the PTAB is more likely to be receptive to invalidity arguments than
courts and juries are. Indeed, though different commentators sort the available statistics in different

ways, most would acknowledge that petitioners so far have enjoyed a high rate of success in
invalidating patents or designated patent claims in inter partes and CBM reviews.
More patent legislation pending in the United States
Congress in the United States is continuing to debate additional proposals designed to make it more
difficult and expensive for PAEs (and all other types of patent owners) to enforce patents in the
United States. Among the proposals is one to create a presumption that the loser in a patent case
should pay the other sides attorneys fees, unless the court makes a finding that the case was
substantially justified. Other proposals would limit discovery in a court case until the patent claims
have been construed; encourage suits against customers to be stayed pending the outcome of a suit
against a supplier or manufacturer of an accused product or method; raise the pleading standards in
patent cases; and require transparency in patent ownership. Some speculate that the legislation, which
came close to passage last year, may achieve passage this year.
Other global issues and activities
It is difficult to discern very many common trends in the development of patent jurisprudence in other
countries. Rather, different countries have focused their attention on different aspects of the
substantive or procedural features of their patent systems. The role of court decisions in several
countries seems to have overshadowed any changes to the basic statutory provisions of their patent
laws.
Patentability
There are still significant differences in the types of inventions and the areas of technology that are
subject to patent protection, including inventions involving computer programs, methods of doing
business, and medical diagnostic systems and methods of treatment. In the medical field, there seems
to be a split between countries that have outright prohibitions against patent protection for diagnostic,
therapeutic or surgical methods (such as Argentina and Nigeria) and countries that at least accept the
patentability of methods for gathering data from the human body for diagnostic purposes. A recent
United States Supreme Court decision limited the patentability of such diagnostic methods based on
the principle that naturally existing phenomena may not be patented. Another hotly debated area is
gene sequence patentability, which is patentable in some countries (such as Canada), unpatentable in
others (such as Argentina), and depends on the specific gene sequences for which patent protection is
sought in others (such as the United States, where isolated genomic DNA is not patentable, while
synthetically created complementary DNA is patentable). Despite a cutback in the United States as a
result of a recent Supreme Court decision, in other countries there seems to be generally increasing
acceptability of the patentability of software-implemented inventions unless the invention consists
merely of the performance of mental steps or the performance of an algorithm. On the other hand,

patents claiming business methods seem to be coming under increasing scrutiny not just in the United
States but everywhere. The degree of patent protection available for software, biotechnology and
biological and genetic-related inventions is likely to continue to evolve for several years.
Pharmaceuticals/generic drugs
In a similar vein, social policy and economics seem to be driving countries to limit the available
relief against generic versions of branded drugs. For example, India recognises a public interest in
denying interim injunctions against drug products and in granting compulsory licences to manufacture
a drug not reasonably accessible or affordable. China and Taiwan provide for compulsory licences
for the manufacture and export of certain pharmaceuticals for public health purposes to other
countries that lack adequate local manufacturing facilities. Other countries (including the United
States and EU countries) are increasingly utilising their anti-competition laws to scrutinise pay for
delay settlements of patent disputes between branded pharmaceuticals and their generic equivalents,
where the branded pharma company pays the generic pharma company to keep the generic version off
the market.
Patent procurement
In addition to changes in substantive law, many countries have addressed procedural issues to
streamline the patent procurement process. The EU is working towards creation of a patent with
unitary effect, as discussed above. The African Regional Intellectual Property Organisation is a
regional patent filing system in Africa, allowing patent applications that currently can be extended to
19 countries within Africa. A separate regional filing system within Africa referred to as OAPI
(African Organization for Intellectual Property) can be used for 17 additional countries. Several
countries provide expedited patent examination if there is continuing infringement, the invention
involves green technology, the inventor is exploiting or planning to exploit the invention
commercially, the applicant is a small entity or university, there is some public interest reason to
expedite the examination or the applicant can demonstrate some particular harm from a delay in patent
issuance. In this connection, electronic patent office filings are increasingly becoming the norm.
Further, over two dozen countries have signed on to some form of a Patent Prosecution Highway in
which patent examination is expedited if the same claimed invention has previously been examined
and allowed in another country that has joined the programme. The US PTO launched the Global
Patent Prosecution Highway and IP5 PPH pilot programmes in 2014, with many of the most
significant worldwide patent offices participating, including Japan, China, Korea, the United
Kingdom and Russia.
Importation of infringing products
Most countries have some mechanism for preventing the importation of infringing products. In some

countries, such as EU member states, customs officials can seize allegedly infringing imported
products, but the patent owner must commence an infringement action very promptly thereafter or the
seized products will be released. In other countries, the customs officials themselves make the
infringement determination. Still other countries require a preliminary injunction or other court order
before stopping infringing products at the border. The United States has a separate administrative
tribunal, the International Trade Commission, which determines whether imported products infringe a
complainants patent. If there is infringement and if there is a domestic industry in articles that the
patent protects, the Commission has the power to order customs officials to bar entry of infringing
products into the country.
Patent monetisation
The global business and financial communities readily recognise the inherent independent value of
patents. Particularly in the United States, the focus of a significant percentage of patent disputes has
shifted from excluding competitors from copying a companys patented products to finding ways to
more directly monetise patent rights. With the advent of the Unified Patent Court in Europe and
corresponding European patent with unified effect, there is some expectation that such monetisation
will proliferate in Europe.
This increased emphasis on monetisation of patents represents an important change. Generally, it has
been the perception that a patents primary value lay in the ability to prevent competitors from
copying a patented product. Most patent systems were designed to give the inventor the exclusive
right to practise the patent. However, in recent years, many companies have increasingly focused on
monetising their patents through licensing, irrespective of patent coverage of the companies
businesses. PAEs have acquired patents specifically to generate licensing income. PAEs have no fear
of reprisal from exposure to the prospective licensees patents. Larger companies are viewing their
patent portfolios increasingly as sources of income, in some cases as a way of paying for the cost of
obtaining and maintaining patent rights globally. Some companies have achieved huge licensing
income streams, measured in hundreds of millions of dollars, despite their own potential exposure to
the patent rights of their licensing targets. Some larger companies have spun off portions of their
patent portfolios to entities in which the original owners keep an ownership stake. These patentowning entities have then sought to enforce their newly acquired patent portfolios without significant
concern about becoming licensing targets themselves.
Various countries governments have begun to play a role in patent monetisation, beyond just
encouraging patenting activities, as China has done. Malaysia and Singapore have both launched
state-sponsored financing programmes secured by IP. These programmes depend on IP valuation
models that are being tested through this process.
This monetisation phenomenon has prompted industry, legislatures and courts to consider whether and
how to achieve an appropriate balance between the protection of intellectual property rights on the
one hand and the economic effect such rights may have upon competition and innovation on the other.
Intellectual property rights are supposed to stimulate innovation by, among other ways, ensuring that
invention and research are financially rewarded and by providing an incentive for inventors to
disclose their inventions to the public in exchange for a patents limited monopoly. However, if
patent rights are conferred too liberally or asserted inappropriately, they can lay a minefield for

companies that are developing and marketing new products.

Although particular enforcement and licensing issues differ from country to country, and many
countries have not yet begun to examine the proper balance between patent protection and free
competition, global business and legal communities are focusing on the tension between these
fundamentally contrary policies. The United Kingdom, for example, has been at the forefront of
considering the thorny licensing issues arising from patents covering technical industry standards and
the requirement that the owners of such patents grant licences on fair, reasonable and nondiscriminatory (FRAND) terms. In the United States, courts have begun taking on the complex task of
computing FRAND licence rates.
Enforcement proceedings
National patent enforcement systems around the world differ in many important respects, including:
the degree of specialisation or other expertise of patent courts;
the ability to obtain information from an adversary (discovery);
the cost and time required for patent enforcement;
the availability and efficacy of preliminary and permanent injunctive relief;
the amount of damages and other relief to be awarded;
the scope given to patents; and
the types of inventions that are patentable and therefore the subject of enforceable patents.
Such differences affect where companies spend their often limited funds in obtaining patents and
where to enforce their patents, particularly where infringing activities cross national borders. As an
example, if the Unified Patent Court in Europe were to come into being, it could have a significant
effect on whether patents are obtained or enforced in Europe. The increasing globalisation of
companies and markets may encourage more cross-country uniformity in legislation, and the
differences noted above may gradually diminish over time.
To an increasing extent throughout the world, patent disputes are being heard in specialised courts,
where the judges have extensive experience in patent matters and may even have technical
backgrounds. As discussed above, China has just established IP courts for Beijing, Shanghai and
Guangzhou. As another example, in Switzerland, from 1 January 2012, a new Federal Patent Court
has replaced cantonal courts as the only first instance court to hear patent disputes. In Russia, a Court
for Intellectual Rights has been created to replace a division of the Russian Patent Office for cases
involving patent nullification, appeals from Patent Office refusals, disputes over patent ownership
and appeals from patent decisions of first instance by the Russian civil courts. In the United Kingdom,
the Intellectual Property County Court will have jurisdiction over all intellectual property disputes in
an effort to reduce the cost of litigation and speed the resolution process. In other countries, patent
disputes are determined in the same courts that determine other civil disputes by judges who have no
particular expertise in patent matters. If ratification in the EU occurs, the Unified Patent Court is
expected to afford patent owners recourse to a specialised patent court with specific technical
specialisation with jurisdiction over the 25 EU countries. While there have been recent efforts in the
United States to have judges and jurisdictions that specialise in patent cases, the United States stands
virtually alone in permitting patent lawsuits to be decided by lay juries who not only lack patent
expertise but also often have limited amounts of formal education. The argument for specialised

courts is based on their expertise and on the wisdom gained from a better understanding of the
technical subject matter and of the applicable laws. The argument for non-specialised courts centres
on their ability to decide disputes in the context of the overall national jurisprudence and to apply the
sorts of equitable considerations to the evaluation of evidence and witnesses that they learn from
hearing myriad types of disputes.
A patent litigants ability to obtain evidence from adversaries or third parties also differs widely
among jurisdictions, ranging from countries such as the United States, which provide extensive
discovery from all available sources, to countries in which there is essentially no discovery. The
trend seems to be towards permitting at least some evidentiary discovery, such as in the EU countries
where the recent EU Enforcement Directive permits a plaintiff to request the court to order the
accused infringer to provide information about the origin and distribution of the accused products,
and in Nigeria, where nearly every discovery mechanism is available to litigants. In China, where
patent application, issuance and enforcement are rapidly growing activities, litigants are using
evidence preservation procedures to enable the gathering of evidence and to prevent accused
infringers from destroying evidence. China also has statutorily based evidence collection procedures.
The Chinese peoples courts implement and enforce both evidence preservation and evidence
collection. With technological advances making it ever more difficult to identify potential
infringement, procedures to obtain evidence can be critical. With the increasing number of software
and complex biotechnology inventions, there is an increasing impetus to provide some way to enable
a patent owner to find out how a potentially infringing product or process actually works. In those
countries that provide no such mechanism, it can be very difficult for a plaintiff to obtain the evidence
necessary to prove infringement or damages.
The amount of permitted discovery often translates directly into both the length of time and the cost
required for infringement proceedings to reach a final decision. In some countries, the entire process
can be completed in a matter of months, whereas in others several years are the norm. The mode in
which evidence is submitted also greatly affects the cost of lawsuits. Where evidence is presented
largely through the testimony of live witnesses, trials can last a relatively long time, even weeks (such
as in the United States). In contrast, where evidence is presented entirely through submission of
documentary proofs and affidavits, trials may last less than one day and may consist largely of
attorney arguments about the submitted documentation (such as in the Netherlands). The use of
technical experts also varies widely. In some jurisdictions, only court-appointed technical experts are
permitted, whereas in other jurisdictions the parties can retain their own technical experts to present
evidence and opinions.
Although court procedures for resolving patent disputes differ dramatically, the quantum of proof
necessary to establish infringement does not appear to vary greatly between jurisdictions. In most
instances, the party alleging infringement must establish a balance of probabilities in its favour.
Burdens of proof may vary with respect to certain defences, but the underlying legal tests for
infringement and validity are substantially similar. In some countries, validity is determined in a
separate invalidation or nullity proceeding, but in other countries the two issues are combined in the
same proceeding.
The tests for infringement by equivalents, though articulated differently in different countries, also
appear to be substantially similar. Some countries apply a stricter interpretation to the precise
wording of the patent claims when determining literal infringement, but provide more flexibility in
finding infringement by products and processes that perform substantially the same function in
substantially the same way to achieve substantially the same result. In other countries, this flexibility

is inherent in a more liberal claim interpretation. Liability for contributing to or inducing infringement
by someone else also appears to be fairly universal.
Statutory patent infringement remedies are relatively consistent across jurisdictions and generally
include a final injunction and damages (measured either by the infringers or patent owners profits or
by a reasonable royalty). However, damages awards tend to be much higher in the United States than
almost anywhere else. That may change if a Unified Patent Court covering 25 countries is established
in Europe. Some countries provide no mechanism for compulsory licensing, whereas others (such as
China, Korea and the Andean Community countries) can impose a compulsory licence when the patent
owner is not exploiting the invention itself. Countries also vary in their willingness to award
attorneys fees. In some countries, each party ordinarily bears its own legal costs in the absence of
some type of exceptional circumstance such as wilful infringement or grossly improper conduct. In
other countries, the prevailing litigant is normally reimbursed for its legal fees.
In most countries, an applicant for a patent is not required to disclose known prior art to the patentexamining agency. Other countries technically impose such a requirement, primarily to facilitate a full
understanding of the described invention. Rarely, if ever, is this requirement enforced. In the United
States, however, an applicant has an enforceable duty of complete candour and good faith that can be
satisfied only by supplying the patent office with all material prior art of which the applicant is
aware. Though this requirement may result in more robust examination of patent applications, many
United States patent litigations include disputes regarding non-compliance with the duty of disclosure.
However, recent US court decisions make it more difficult to prevail on inequitable conduct
allegations. These decisions usually require not only proof of intent to deceive the US PTO by
withholding material prior art, but also that the withheld prior art would have prevented issuance of
the patent.
One area in which courts in the United States have recently been very active is the issue of divided
infringement, arising in situations in which different portions of a patented system are owned or
controlled by different entities, or different steps of a patented method are carried out by different
entities. This issue becomes even more complicated when one or more of the contributing entities is
acting outside the borders of the country in which the infringement lawsuit is brought. This issue is
likely to take on increasing importance as the global nature of business relationships increases. Some
countries have no statutory or case law basis to govern such a situation. However, most countries
seem to follow the approach of finding joint infringement when an invention is carried out through
some sort of cooperation, collaboration or concerted action of the accused infringers. In such
situations, liability may be divided according to each accused infringers contribution to the joint
infringement.
In general, at a conceptual level, there are more similarities than differences among jurisdictions as to
the nature and scope of patent rights, patent procurement and patent enforcement. While judicial
procedures in patent litigations vary considerably among these jurisdictions, the basic requirements
for patentable subject matter and patentability and validity are more similar than different, as are the
various tests for patent infringement.
* The contributors would like to thank and acknowledge their partner Frank Bernstein for his
contributions to prior editions of this chapter.

The smartphone wars:The

generation grows up?

new

FRAND

Pat Treacy, Helen Hopson and Elisabetta Rotondo

Bristows
Introduction and background
2015 looks set to continue the high-profile, high-stakes global patent litigation which, along with
intense antitrust scrutiny over the past few years, has again dominated the worldwide headlines.
These smartphone wars involve continued attempts by patent holders to enforce their intellectual
property rights (IPRs) (some of which have been standard essential patents (SEPs)) over unlicensed
users.
Several investigations of alleged antitrust abuses have run in parallel to the flood of patent litigation.
These have involved the US Federal Trade Commission (FTC) and Department of Justice (DoJ), the
EU Commission (the Commission) and antitrust authorities in China and India, to name but a few.
International standard-setting organisations (SSOs), including the European Telecommunications
Standards Institute (ETSI) (which is primarily responsible for mobile telephony standards such as
GSM, 3G and LTE), the International Telecommunication Union (ITU) and the Institute of Electrical
and Electronics Engineers (IEEE) (responsible for standards such as Wi-Fi) have set up committees
to discuss their IPR policies (including the FRAND licensing commitment) and the extent to which
they require amendment or clarification, or both. Discussions within some of these committees
continue. All of this activity may well have a significant impact on patenting and licensing behaviour
for the next generation of mobile telephony standards. To understand the likely impact and why the
smartphone wars have broken out in recent years, it is important to appreciate the background story.
What is the issue?
Technical standards, set and governed by SSOs, ensure interoperability between devices complying
with such standards. Technical standards play a vital role in the mobile telecoms sector where
interoperability between devices and networks is key. If a patent is an SEP, namely, if it is essential
to a particular standard, it is not possible on technical grounds to make or use products that comply
with such a standard without infringing that patent. If a standard-compliant product incorporates SEPs
then, in principle, those who manufacture such products require licences to use the SEPs. If such
licences are withheld, and the patents enforced against infringers, it would undermine the usefulness
of the standard as it would not be accessible to all. To deal with this problem, SSOs have relied on
voluntary licensing commitments from SEP holders to license their SEPs on FRAND or RAND (fair,
reasonable and non-discriminatory) terms.1 SEP holders who participate in SSOs have generally
been willing to give such commitments, although the underlying rationale for doing so may differ.

Some, who plan to manufacture for the larger market, which standardisation may make possible, are
keen to facilitate effective standard-setting and may perceive technical benefits in having their
technology included in the standard. Others, who may seek to recuperate R&D costs through
licensing, may see significant benefits in incorporating their patents as essential in a standard that may
command a large market. Many companies have mixed interests.
The 2000s and the original patent wars
The mid- to late-2000s also saw a number of prolonged and high-profile SEP licensing disputes
(often referred to as the patent wars).2 These cases were also accompanied by a review of the ETSI
IPR Policy (IPR Policy) by ETSI, in part as a result of active intervention by the Commission as well
as regulator investigations of alleged antitrust infringement.3 The two main changes then under
discussion were strengthening ETSIs rules on patent ambush (ie, intentional deceptive conduct in
the context of the standard-setting process, for example, by not disclosing the existence of patents that
the holder later claims are essential to the adopted standard);4 and a proposal known as Minimum
Change Optimum Impact (MCOI). The MCOI proposal (first published in January 2006) identified
what its proponents believed to be the most important IPR issues and proposed minimum changes to
the existing FRAND regime to have the optimum impact on those problems. It was proposed that
FRAND should be clarified by introducing the principles of aggregated reasonable terms
(essentially a cumulative royalty cap) and proportionality (essentially where the level of SEP
royalties for each SEP holder should reflect the number of its declared SEPs as a proportion of the
total value declared for the standard in question). Discussions on the MCOI proposal continued for
most of 2006. Ultimately, largely owing to the divergent nature of ETSI member interests and the fact
that ETSI is primarily a technical body that is not designed to assess commercial issues, the ETSI
group examining MCOI concluded that further elaboration of FRAND and consideration of the risk
of cumulative licensing scenarios is a long-term issue and should be left for discussion.5
The original patent wars eventually subsided. Litigation settled before any national courts were
called upon to get to grips with the thorny issue of defining and assessing FRAND terms and
conditions. By 2009, the Commission closed its investigation into US chipset manufacturer
Qualcomm relating to complaints that Qualcomm had enforced un-FRAND-like licensing terms and
conditions without reaching a decision.6 The patent wars ended with no judicial, competition law
or ETSI guidance as to likely FRAND royalties for SEP licences or how to go about assessing them.7
A decade on and the smartphone wars are back and not abating
The turn of the decade saw the mobile telephony sector evolving, with the rising success of (then)
new market entrants Apple, HTC, Huawei et al following the development of smartphones and tablets
enabled by the immensely successful 3G UMTS standard.8 It became clear that licensing activity had
not kept pace with product development. Unsurprisingly, more litigation ensued, much of which
involved the new entrants who had not been involved in the earlier patent wars and many of whom
did not have strongly developed licensing or SEP positions. Nokia, the leading handset manufacturer
during the patent wars, sued Apple. Apple countersued and shortly after brought non-essential patent

(non-SEP) litigation against HTC, Motorola and Samsung. Samsung, HTC, Huawei and ZTE also
brought proceedings (frequently by way of countersuits or cross-claims). Other major companies,
including Ericsson, Mitsubishi Electric and LG, became involved in an increasingly complex web of
suit and countersuit. Patent suits by non-practising entities or licensing companies, including
InterDigital and Vringo, were also launched the smartphone wars were truly under way.
The smartphone wars have involved disputes about issues including how royalties should be tested to
establish whether an offer is FRAND, whether the owner of a portfolio of SEPs is entitled to license
its portfolio as a package, whether royalties must be based on any particular product (the handset
price, the base band chip or a capped ASP), whether the first offer made by an SEP owner to a
prospective licensee must be FRAND, whether it is for the licensee to make a concrete offer of terms
for a licence, whether those who own SEP portfolios are obliged to have a standard licence
available on a cash basis and how the concept of non-discrimination might work in practice.
SEP injunctions, FRAND and abuse of a dominant position
Such intense activity did not go unnoticed. The SSO and FRAND context (not to mention the highprofile nature of many of the disputes) meant that competition authorities were quickly persuaded that
they had a role to play. As will be explained below, the competition authorities and courts have
largely chosen to focus on two issues: whether and when injunctions should be available against
unlicensed users of SEPs, and what is a reasonable royalty.
Recent activity by US antitrust authorities
In June 2012, following the acquisition of the mobile telecoms SEP portfolio of Motorola Mobility
Holdings, Inc (MMI), the FTC opened an investigation into Google/MMIs use of their SEPs. On 3
January 2013, the FTC issued a Decision and proposed Consent Order9 to remedy allegedly anticompetitive activity resulting from breaches of MMIs commitments to license SEPs on FRAND
terms. The FTC alleged that before its acquisition by Google, MMI had reneged upon FRAND
commitments made to several SSOs by pursuing injunctions for infringement of SEPs against willing
licensees. The FTC held that this violated section 5 of the FTC Act. On 23 July 2013, the FTC
issued a Final Consent Order10 declaring that Google had resolved the FTCs concerns subject to
commitments to license on FRAND terms. Although the order applies only to Google (which bought
MMI) and MMI itself, the FTC remarked that the procedures outlined will provide useful guidance
to market participants, including SSOs, in developing a predictable approach to resolve licensing
disputes involving SEPs.11
The Order (which follows the statement of the FTC in re Robert Bosch GmbH12) prohibits
Google/MMI (a holder of SEPs that had given a FRAND commitment) from seeking injunctions for
infringement of its SEPs except in certain limited circumstances.13 The FTC focused on the
willingness of a prospective licensee to take a licence at a reasonable royalty rate and the FTC
explains that such willingness could be demonstrated by an acceptance by the licensee to have the
matter settled by binding arbitration. It has also, in effect, identified the circumstances in which it
considers a potential licensee unwilling. However, not all was necessarily clear, including whether

the issue of the willingness of the prospective licensee was really the appropriate litmus test and
whether that could reliably be assessed during negotiations. As stated by Commissioner Ohlhausen in
her dissenting statement on the January order:
[b]y articulating only narrow circumstances when the Commission deems a licensee
unwilling [...] and not addressing the ambiguity in the market about what constitutes a
FRAND commitment, the Commission will leave patent owners to guess in most circumstances
whether they can safely seek an injunction on a[n] SEP (emphasis added).14
In July 2012, the FTC made a statement to Congress expressing concern that companies that own
standard-essential patents that are subject to commitments to license on reasonable and nondiscriminatory terms may be able to hold up other firms by obtaining an injunction or exclusion
order blocking those firms products from the US market.15 It reiterated its concern in an amicus
brief filed before the US Court of Appeal of the Federal Circuit District Court in Apple Inc v
Motorola, Inc.16
A joint statement from the DoJ and US Patent and Trade Mark Office (USPTO) swiftly followed on 8
January 2013 addressing whether injunctive relief or any equivalent may properly be issued in
respect of SEPs for which a FRAND commitment has been given.17 The statement is closely aligned
to the FTC Decision. However, it notes the possibility that undue interference in the rights of
patentees may not be desirable. The statements starting point is that the right of a patent holder to
exclude others from practising patented inventions is fundamental to obtaining [public] benefits.18 It
contains multiple references to the importance of promoting and maintaining the incentives of
innovators to participate in SSO activities and ensuring that those that have made FRAND
commitments should receive appropriate compensation, reflecting the value of their technology.
However, the statement also recommends caution in granting injunctions for SEPs subject to a
FRAND commitment. The concern is that a prospective licensee may be forced to enter into a licence
on non-FRAND terms because it finds itself unduly pressurised by the prospect of an injunction or an
exclusion order. It gives examples of situations where an injunction or exclusion order may be
appropriate, and points out that [t]his list is not an exhaustive one.19 The statement of the DoJ and
USPTO of 8 January 2013 expressly called on the US International Trade Commission (ITC) (see
below) to consider whether, when granting exclusion orders, the owner of an SEP has acknowledged
voluntarily through its FRAND commitment that monetary damages, rather than injunctive or
exclusionary relief, is the appropriate remedy for infringement. Lastly, the statement urges the ITC to
consider public interest factors (which take into account the possible impact on competition and
consumers) when considering whether to grant an exclusion order.
Policy battles in the United States?
The ITC is a quasi-judicial federal agency of the United States which determines the impact of
imports on US industries and hears IP infringement actions. The ITC cannot award monetary damages.
Instead, its primary remedy is an exclusion order (close cousin to an injunction), namely, a bar from
importing infringing products into the United States.
The ITC is a popular venue for patentees as it offers a quick route to obtain an exclusion order the
primary remedy sought by many. The prospect of the availability of such an order may be valuable for
many reasons: it may serve the primary purpose of excluding infringing competitive products from the

market; alternatively, if there is a significant chance of an exclusion order being granted it may bring
greater urgency to negotiations for licences and encourage settlement.20
In June 2013, the ITC had to decide how to proceed when it held that one of Samsungs SEPs was
valid and infringed by Apple. It did so in the light of extensive lobbying and briefing. It issued a
limited exclusion order and a cease and desist order to refrain from certain acts including the sale of
infringing products in the United States.21 Less than two months later President Obama vetoed the
ITCs determination and required that all future ITC determinations should involve a consideration of
the public interest issues (which include competitive conditions in the US economy on the one hand
and US consumers on the other) arising in relation to a particular remedy and that the ITC should
make explicit findings on these in its decisions.22 This marked the first time since 1987 that a
president had vetoed an import ban ordered by the ITC. On 7 February 2014, the DoJ closed its
investigation into Samsungs alleged use of its SEPs to exclude certain Apple products from the US
market. The DoJ determined that as a result of the veto of the ITCs determination there was no
further cause for action.23 It remains to be seen how the ITC will proceed in future cases in which it
upholds an SEP and, indeed, whether the US government would again overrule an exclusion order.
Recent US judicial activity
Injunctions
Following on from this episode and in accordance with previous 2012 judgments (namely Re Robert
Bosch24, Apple v Motorola25 and Microsoft v Motorola,26 all of which had held that there was
only limited availability of injunctions in FRAND cases), the groundswell against allowing
injunctions for the enforcement of SEPs by patent holders who had given FRAND commitments
seemed to be gaining force, when in March 2014 a US federal judge in Realtek Semiconductor Corp
v LSI Corp27 prevented LSI (the SEP holder) from benefitting from an exclusion order that had been
granted by the ITC against Realtek. The Court held that any exclusion order was inconsistent with
LSIs FRAND obligations because, among other factors, Realtek was a willing licensee and there
was public interest in preventing a licensor from using an injunction against a willing licensee of
SEPs where the licensor has given a FRAND commitment.
However, in April 2014, in Apple Inc v Motorola Inc,28 the Federal Circuit Court of Appeal held
that there was no per se rule that holders of SEPs who had given a FRAND commitment were not
able to obtain injunctions and the question of whether an injunction was an appropriate remedy for a
dispute relating to a SEP should be assessed in accordance with the normal US rules pertaining to the
availability of injunctive relief.29 The court acknowledged that an injunction may be justified where
an infringer unilaterally refuses to pay a FRAND royalty or unreasonably delays negotiations to the
same effect.30 In the instant case, an injunction was not allowed because, among other things, Apple
was considered to be a willing licensee.
FRAND royalty rates

The US courts have been willing to grasp the nettle of identifying FRAND royalties over the past few
years. The following cases are of particular note:
On 25 April 2013, the court in Microsoft Corp v Motorola Inc 31 identified a modified set of 15
Georgia-Pacific32 factors to consider when dealing with RAND royalty determinations.
On 3 October 2013, in re Innovatio IP Ventures ,33 the court largely followed the factors set out in
Microsoft Corp v Motorola Inc, but introduced factors that should be taken into consideration when
setting the royalty rate including patent hold-up, royalty stacking and incentivising investors to
participate in standard-setting.
On 16 June 2014, the court in Realtek Semiconductor Corp v LSI Corp instructed the jury that, in
determining an award for damages, it should not consider the advantage LSI obtained from the
adoption of the standard, but could consider the advantage resulting from the technologys
superiority.34
However, in a move away from pinpointing an exact method for FRAND royalty calculations, on 4
December 2014, the US Court of Appeal for the Federal Circuit in Ericsson v D-Link35 made clear
its view that there is no magic formula for calculating FRAND royalties. In summary, the Court held
that calculation should be based on the facts of the case. The jury should be instructed first to look at
the actual FRAND commitment given by the SEP holder, while the Georgia-Pacific-like list of
factors (identified in Microsoft v Motorola) should be applied only where relevant to the facts of the
case. The Court did note, however, that any royalty award must be based on the incremental value of
the invention, not the value of the standard as a whole or any increased value the patented feature
gains from inclusion in the technology. Lastly, the Court held that if an accused infringer wants the
jury to assess the impact of the royalty rate on issues such as patent hold-up or royalty stacking, it
needs to provide evidence of such behaviour in relation to both the FRAND commitment and the
technology that it relates to.
The European Commission follows suit
Injunctions have been the main area of focus in Europe. A common theme developing in the EU in
relation to whether injunctive relief should be available for a SEP holder who has given a FRAND
commitment against a potential infringer is the willingness of the licensee to take a licence on
FRAND terms, which can consist, for example, of a willingness to be bound by a court or
arbitrators.36
On 29 April 2014, the Commission accepted commitments from Samsung, thereby terminating a twoyear investigation into whether, by seeking injunctions when enforcing SEPs, Samsung had breached
its FRAND commitments and article 102 of the Treaty on the Functioning of the European Union.37
Samsung addressed the Commissions concerns by agreeing for the next five years not to seek
injunctions against licensees in Europe on the basis of its smartphone and tablet SEPs. This
commitment was only in relation to licensees who negotiate fees with Samsung for up to a period of
12 months and accept to be bound by a determination of a court or an arbitrator as to what a
reasonable royalty rate would be.
The Commission also terminated an investigation against MMI, this time with an infringement
decision.38 The Commission decided that it was anti-competitive for MMI to seek to enforce an
injunction in Germany against Apples flagship product on the basis of standard essential patents that

MMI had agreed to license on FRAND terms and in relation to which Apple had willingly agreed to
be bound by a determination by a court as to the FRAND royalty rate.39 This decision effectively
created a safe harbour from injunctions for potential licensees of MMIs SEP who are willing to be
bound by a third-party determination of FRAND terms.
The Commission decisions have been welcomed by some but are also subject to significant criticism
by exponents of the opinion that it should not be an abuse of dominance to seek injunctive relief. It has
been argued that such a restriction on the fundamental right to access the courts should be restricted
only in wholly exceptional circumstances following ITT Promedia and Protg International.40
Some have also questioned how it can be abusive to enforce a remedy that has been granted by a
national court upon its consideration of all the facts. It has been observed that the Commissions
intervention appears to be based on a view that in some instances national judges cannot (or do not)
consider whether injunctive relief is truly appropriate in a particular case.41
European Court of Justice activity
The Court of Justice of the European Union (CJEU) has recently had an opportunity to consider these
arguments, which were pleaded in Huawei v ZTE.42 This was a reference for a preliminary ruling,
from the German LG Dusseldorf court on 21 March 2013, which sought to establish whether it was an
abuse of dominance for a holder of a SEP who had given a FRAND commitment to seek an injunction
against an unlicensed infringer. In particular, the German court considered that the Commissions
statements in relation to the Samsung case (above) made clear that it was approaching the availability
of injunctions differently from the German courts, which followed the Orange-Book-Standard
case.43 In his Opinion, Advocate General Wathelet proposed a middle way between the approach
taken by the Orange-Book-Standard case and that espoused in the Microsoft v Motorola case.44 He
determined that, given the importance of the right of access to the court, it should only be an abuse of
dominance to bring an injunction in exceptional circumstances. These are where the SEP holder has
not honoured its FRAND commitment despite the fact that the infringer has shown itself to be
objectively ready, willing and able to conclude such a licence. This means that a SEP holder must
present an offer of a licence in writing to the licensee who can counter-offer in writing. If the terms
are not acceptable, however, both the licensee and the licensor must be prepared to have the royalty
rate determined by a court or tribunal. The CJEUs ruling, which is anticipated in 2015, is eagerly
awaited both inside and outside Germany.
Standard-setting organisations (SSOs) a key role to play in developing FRAND policy
In 2012 the DoJ called on SSOs to help end unnecessary lawsuits. In its paper Six Small Proposals
for SSOs before lunch45 the DoJ commended SSOs such as the IEEE46 for promoting ex ante
licensing disclosures the DoJ approved of the IEEEs policy that permits patent holders to disclose
their most restrictive licensing terms and the relative costs of competing technologies in IEEE
working groups prior to the creation of a standard. Among its six small proposals were the
following:
the establishment of procedures to identify in advance patents that will not be licensed on FRAND

terms in order to determine whether they should be included in the standard;

a clarification by SSOs that licensing commitments made to standard-setting bodies are intended to
bind current patent holders and subsequent purchasers of the patents extending to all implementers of
the standard, whether or not they are a member of a standard-setting body;
a limitation of the right of a patent holder who has made a F/RAND licensing commitment from
seeking an injunction against a willing and able licensee;
the implementation of improvements to lower the transactions cost of determining F/RAND
licensing terms. Standards bodies might want to explore setting guidelines for what constitutes a
F/RAND rate or devising arbitration requirements to reduce the cost of lack of clarity in F/RAND
commitments. VITAs patent policy, for example, creates an arbitration procedure to resolve disputes
over members compliance with the patent policy.
ETSI and the IEEE, which play an important part in the smartphone wars, set up special
committees47 to review, among other things, three main topics that were identified in the DoJs
paper:
the transfer of a patent subject to a FRAND licensing commitment;
what FRAND licensing terms are; and
when it is appropriate to issue injunctions.
On 20 March 2013 ETSIs IPR Policy was amended to make clear that FRAND commitments transfer
with SEPs when transferred to new owners. Suggestions relating to the meaning of FRAND and ways
to limit the possibility of seeking injunctive relief have proved more contentious for ETSI and
discussions relating to both remain in progress. This is unsurprising given its importance as a
strategic issue, which has meant that along with the competition authorities recent focus, the
Commission (both DG Competition and other interested DGs) has been heavily involved in
discussions of the circumstances in which a SEP holder should be able to seek and enforce an
injunction. To date, despite lengthy discussions spanning 10 IPR SC meetings over a two-year
period,48 consensus has not been reached within ETSI on whether, and if so how, the IPR Policy
should be amended. Those that are principally implementers (such as Apple and Microsoft) and those
that have been long-term participants in ETSI and are large SEP holders (such as Ericsson and
Nokia) are yet to find a mutually acceptable position. The IPR SC was reported to have come closer
to agreeing a common proposal in December 2013 when certain network operators, which are largely
regarded as neutral, tabled a safe harbour proposal. This suggested amending the IPR Policy to
provide that SEP owners may seek and enforce injunctions only if the potential licensee refuses to
agree to participate in and be bound by an adjudication process before a third party (court or
arbitration). The proposal is silent on how the adjudication should be conducted; this is to be left to
the court or the arbitrator. The network operators safe harbour proposal reflected aspects of the
Google/MMI FTC consent order and is similar to the licensing framework in the Samsung
commitments. It is, therefore, likely to satisfy the Commission. In parallel, WIPO (after consultation
with ETSI) has released tailored model arbitration and mediation agreements for FRAND disputes.49
However, many doubt that the IPR SC will reach consensus. Discussions during 2014 did not result in
a resolution.
On 8 February 2015, the IEEE board of directors passed a resolution approving a new patent policy
in which a patent holder will, when accepting a FRAND commitment, agree not to seek an injunction
based on an SEP except in accordance with IEEE policy and not unless the infringer fails to
participate in and comply with arbitration or some similar appellate determination of a reasonable
royalty (and other provisions). In relation to determining FRAND, the recent IEEE policy states,

among other things, that a determination of a reasonable royalty shall include, but not be limited to, a
consideration of the value that the functionality of the invention contributes to the smallest saleable
component, sub-assembly or end product that conforms to the IEEE standard in light of the total value
of all essential patents.50 On 2 February 2015, the DoJ endorsed the IEEE policy. It is expected that
the IEEE board of directors will vote on the proposed updates to the IEEE-SA patent policy at its 89
February 2015 meeting.
FRAND what has changed and how will future licences reflect this?
The compatibility of seeking and enforcing injunctive relief for SEPs with the competition rules was
not such a focus in the original patent wars (although it was raised, usually as a species of estoppel,
in the pleadings of some cases that ultimately settled). The present focus on this issue, after countless
SEP actions in which injunctive relief was sought and many years after the ETSI (and other) IPR
policies were adapted without specifically assessing the issue, is curious and begs the question what
has changed; why is this conduct suddenly of such fundamental interest? One possible answer could
be significant changes in the sectors competitive and IPR landscapes, which have seen a number of
new entrants not previously heavily involved in supplying mobile devices or in mobile telephony
standardisation. It is clear that the FRAND landscape has evolved. This is likely to have a
significant impact on the way in which SEPs are licensed and how licence negotiations are
conducted.
More FRAND determinations?
The last few years have seen a willingness on the part of the courts to grapple with assessing FRAND
terms. Thus far, FRAND determinations have been concentrated in the United States. 51 However,
the Chinese courts have also ruled on FRAND royalties (Huawei v IDC).52 Indeed, the Chinese
Telecoms regulator, the MIIT, recently issued proposals identifying a specific definition of a FRAND
royalty.53 Koreas FTC has amended its IPR guidelines sanctioning injunctions to a willing licensee
provided both parties agree to defer to a court or arbitration if they cannot reach agreement.54 The
English High Court has indicated its willingness in theory to identify a FRAND rate as long as the
parties agree to a determination.55
Companies now have some judicial guidance from around the world (not always consistent) on the
questions what is a likely FRAND rate? and how do we apply for it? SEP licensors are unlikely
to be happy with the fairly low royalty rates coming out of the US and Chinese courts in decisions to
date.56 However, in the United States at least, owing to the nature of the US district court system, a
settled approach to the calculation of FRAND royalties (not to mention multiple other FRANDrelated questions) is unlikely for some time.
In contrast, but in line with the earlier patent wars, FRAND-relevant cases before the EU authorities
appear likely to be closed without specific guidance on assessing FRAND terms.57 The
Commissions approach as identified in the FAQs memo accompanying the Commissions
announcement of its Samsung investigation is that the Commission will not take a position on what is
a reasonable royalty and that national courts or arbitrators are generally well equipped to do this.58

This reflects the position that it took following its investigation into Qualcomm in the earlier patent
wars.59 Detailed guidance on the assessment of FRAND royalties from the Commission therefore
appears unlikely, although some proposals can be found in the standardisation section of the
Horizontal Guidelines.60 This position is supported by the Opinion of Advocate General Wathelet in
Huawei v ZTE,61 which avoided any statement identifying what a FRAND rate would be, and instead
focused on the factors that were required for a dominant SEP holder who had given a FRAND
commitment to seek an injunction without infringing competition law. It remains to be seen whether
the CJEU will take the same approach.
SEPs v non-SEPs: the balance?
The smartphone wars have seen an increasing focus on non-SEP litigation in the mobile telephony
sphere. Once the wireless technology that relies on standardisation has been embedded in the product,
giving it its fundamental functionality, companies have continued to develop features to help
distinguish their products from those of their competitors. Companies such as Apple, who may not
have a long history of involvement in the standard-setting process, have more non-SEPs or feature
patents than SEPs. Others, such as Nokia, have participated for many years in the standard-setting
process, but increasingly assert non-SEPs in litigation.
Arguing that SEPs are a special species of patents that should be treated differently from non-SEPs
(most notably by restricting the ability of SEP holders to seek and enforce injunctive relief) is a
logical commercial strategy for those who have significant non-SEP portfolios. It makes it more
difficult for SEP owners to assert their patents effectively in litigation (owing to the likelihood of
significant delay while various FRAND-related issues are resolved) and may ultimately require
special ways of negotiating and concluding SEP licences. As explained above, such arguments have
gained some traction with regulators who have noted the potential for SEPs to be misused to hold
up new entrants. Whether, in practice, a brightline distinction between the two classes of patents is
possible remains to be seen. Some of the competition law objections raised in respect of SEPs might
equally apply to commercially essential patents. Some argue that systematic intervention in respect
of SEPs, while ignoring commercially essential patents, would risk creating an inequality of arms and
disrupting incentives and licensing conditions. Others suggest that workarounds should be possible,
or features could be removed, avoiding the non-SEPs in future models. Large SEP holders with an
active out-licensing programme (such as Qualcomm and Ericsson) who have also been active in
standardisation have protested against many recent developments, warning that they risk devaluing
SEPs. Some have said that they have already decided not to contribute some technology to standards
because of the risk that they will not get any return.62
FRAND licensing per patent v portfolio?
SEP holders argue that they should be entitled to seek an injunction against a prospective licensee that
is not willing to take a licence on FRAND terms, and that the key issue, whether a licence is
available on FRAND terms, is one that courts can assess. It is argued that if SEP enforcement
requires many additional steps before an injunction may be available, then the prospective licensee

has no incentive to take a licence to a portfolio of SEPs as would previously have been negotiated in
practice. If there is no realistic threat of injunction following a finding of infringement but only of an
award of damages for the particular patent at issue, it is in the prospective licensees interests to
litigate on a patent-by-patent basis and to agree only to pay royalties as assessed by the court for
each patent as it is, in turn, upheld as valid and infringed. This is referred to as hold-out rather than
hold-up. It is argued that the licensee has nothing to lose from this strategy, aside from the costs of
litigation, which are said not to be significant enough in the context of the potential licensing fees at
stake to have any real influence on the decision whether or not to litigate. A SEP holder will argue
that damages and a forward-looking royalty for SEPs in a portfolio should reflect the FRAND value
of a portfolio licence given the nature of normal licensing in the industry. The prospective licensee
will argue that it should only be obliged to pay royalties for SEPs that have been adjudicated to be
valid and infringed. This may be an attractive argument, but the practical implications in an industry
where many thousands of patents have been declared essential are daunting. This issue is one of the
most important developments in the present round of litigation, which, until clarified, will continue to
be a major sticking point between licensors and licensees. Licensees argue that they do not want to be
bound to pay royalties for potentially invalid or not infringed patents, whereas licensors argue that the
adjudication process should reflect the representative patent or proud list approach to FRAND
licensing that has resulted in a vibrant industry. It is argued that previous negotiations were carried
out through a review of representative patents, often resulting in freedom to operate arrangements
through cross-licensing with balancing royalty payments or lump sums. Given the proliferation of
patents in mobile services and the technical complexity of many, not to mention the enormous volume
of prior art, it is argued that, in practice, a portfolio approach is the only way in which FRAND
disputes can be resolved.
A clearer future for FRAND?
So where does all this leave FRAND licensing for the future? The way in which companies approach
negotiations, and their IP strategies, depends on their understanding of the evolving environment and
on their particular commercial circumstances. However, it is possible that the recent intense debate
about SEPs, their worth and their enforceability, combined with an evolving view of how FRAND
affects not only the patentees right to refuse to license (or to do so on unreasonable terms) but also
the conduct of negotiations, will have a real impact on those decisions. In 2014, DG Enterprise
published a research paper on standardisation and intellectual property rights.63 The study goes
beyond research that has to date mainly focused on the telecoms industry and includes consumer
electronics, automotive and smart grids, all of whom rely on standards, and are viewed by the authors
as complementary to the telecoms industry. The paper examines 15 options for the improvement of
patent-based standardisation systems. These include, among others, measures to improve
transparency at the patent declaration stage, the promotion of patent pools as a one-stop shop for
licensing a group of SEPs and the possible inclusion of dispute-resolution mechanisms into the
standardisation process. In addition, the research paper discusses greater clarification of the notion of
FRAND in SSOs IPR policies such that the royalty rate might be defined by relation to its economic
value, its ex ante value prior to inclusion in the standard or its incremental value over competing
technologies. The royalty base could refer to the final product or the component implementing the

patent and the place in the value chain where licensing occurs. The paper suggests SSOs rules could
be tightened to ensure that a FRAND commitment is passed onto subsequent owners on transfer of the
patent. Lastly, the report suggests providing increased guidance to SSOs on including patents in a
standard in an attempt first to reduce the number of SEPs included and second to reduce the costs of
over-inclusion in the standard. It also identifies potential solutions emanating from non-standard
dependent industries.64 DG Enterprise is also conducting an unrelated consultation65 on what the
future landscape of standardisation and patents should look like for it to keep up to speed with
economic and technical developments. It will be interesting to see what policies arise out of the
report and the consultation.66 What is clear is that the overall landscape is rapidly changing as
standard-setting becomes an increasingly important issue for many industries forcing companies,
courts and government authorities to adapt their strategies to the rapidly evolving technological
terrain.
What can be learnt from the smartphone wars?
What emerges from the great debate is that there appear to be only limited circumstances (as yet not
clearly identified) when a SEP holder who has made a FRAND commitment can obtain an injunction
against a potential infringer of its SEPs. In the United States, courts are more willing to bite the bullet
and identify what a FRAND rate really is. In Europe dispute-resolution mechanisms such as
arbitration are likely to have an increasing role to play, particularly for SEP holders, given the
regulators implicit approval of such methods and the difficulties of dealing with a plethora of
FRAND-related arguments in patent litigation. Given the nature of arbitration, it may be harder for
prospective licensees to utilise procedural and litigation strategies to delay proceedings to the same
extent. However, arbitration is not a magic bullet. A party cannot be forced to arbitrate (in the
absence of a contractual obligation). Arbitrators cannot invalidate patents, so separate court
proceedings would need to be brought to deal with formal revocation. Finally, arbitrations are
usually confidential unlike litigation. Industry desires more clarity concerning the meaning of FRAND
terms, which arbitrations are unlikely to deliver.
As for licence negotiations themselves, an increasing range of FRAND arguments developed in
litigation may be raised more frequently. Prospective licensees may start to challenge the
compatibility of portfolio licensing with FRAND and some may only seek licences on a patent-bypatent basis where a particular patent has been upheld as valid and infringed. Non-SEPs may also
have a larger role to play.
Industry experts expect that by 2018 there will be over 10 billion mobile-connected devices
worldwide, exceeding the worlds population (7.6 billion).67 The market opportunities that may
arise from this growth suggest that the real risks of companies reducing their investments in
standardisation as a result of FRAND controversies may be lower than suggested by some. However,
the smartphone wars have left their mark and it is apparent that there is still some way to go in
resolving all FRAND issues. As ETSI presciently observed almost a decade ago further elaboration
of FRAND [...] is a long term issue and should be left for discussion. FRAND may be under
discussion for some time to come.

Notes

1 FRAND and RAND are often used interchangeably. This article adopts the European FRAND
terminology (as opposed to RAND, which is more commonly used in the United States).
2 For example, Qualcomm v Nokia/Nokia v Qualcomm; Ericsson v Samsung/Samsung v Ericsson;
InterDigital v Nokia/Nokia v InterDigital (revocation), InterDigital v Samsung (arbitration),
Qualcomm v Broadcom.
3 Commission investigation of Qualcomm (COMP/39247 Texas Instruments/Qualcomm) and
Commission & FTC investigations of Rambus (FTC matter 110017; Commission case COMP/38636
Rambus). Press release IP/05/1565 announced the closure of the Commissions investigation into
ETSI.
4 The Commission commenced an investigation against ETSI in the light of concerns that the rules did
not sufficiently protect against the risk of patent ambush. The Commission closed its investigation
upon ETSI agreeing to change its IPR Policy (see IP/05/1565).
5 ETSI/GA48(06)05.
6 The cited reason for closing the investigation was that all complainants had withdrawn or indicated
their intention to withdraw their complaints so the Commission no longer considered it appropriate to
invest further resources in the case. However, it is generally accepted that the real reason for the
Commission dropping its case was that it was simply too complex and difficult for the Commission to
take on the role of a price regulator and, indeed, the Commission alluded to these difficulties in its
press release: [t]he Qualcomm case has raised important issues about the pricing of technology after
its adoption as part of an industry standard. In practice, such assessments may be very complex, and
any antitrust enforcer has to be careful about overturning commercial agreements (MEMO/09/516).
7 The only transparency concerning FRAND royalties sought originated from companies with
aggressive out-licensing policies whose headline rates became industry knowledge (eg, Qualcomm
and InterDigital were generally thought to ask for 5 per cent and 1 to 3 per cent for their respective
patent portfolios).
8 The ITU estimates that in 2013 the number of mobile cellular subscriptions reached 6.8 billion,
corresponding to a global penetration of 96 per cent (128 per cent in developed countries and 89 per
cent in developing countries).
9 www.ftc.gov/sites/default/files/documents/cases/2013/07/130724googlemotorolado.pdf.
10 www.ftc.gov/sites/default/files/documents/cases/2013/07/130724googlemotorolaletter.pdf.
11
FTC:
Google
Press
Conference,
3
January
2013,
www.ftc.gov/sites/default/files/documents/videos/google-press-conference/130103google-pc.pdf,
p.5.
12 Statement of the Commission in re Robert Bosch GmbH FTC File No. 121-0081, Statement of the
Commission,
at
2
&
n.7
(26
Nov
2012)
available
at
www
ftc.gov/os/caselist/1210081/121126boschcommissionstatement.pdf in which the FTC declared that in
appropriate circumstances it would sue SEP holders who seek injunctions of willing licensees.
13 The Order is complex and a detailed discussion of it is outside the scope of this article. In short it
permits the seeking of injunctions where the potential licensee: (i) is outside the United States; (ii)
has stated in writing or sworn testimony that it will not license the SEP on any terms; (iii) refuses to
enter into a licence on terms that have been determined in the final ruling of a Court or through
binding arbitration; (iv) fails to agree to a cross-licence of SEPs on (undetermined) FRAND terms;
(v) refuses a binding licence offer or binding offer to arbitrate from the SEP holder; (vi) has
requested a FRAND determination, and refuses to provide irrevocable commitments to abide by it; or

(vii) seeks injunctive relief against Google/MMI (unless it has made a binding licence offer or
binding offer to arbitrate that is refused by Google/MMI; or obtains a final court ruling setting
FRAND licence terms).
14 www.ftc.gov/sites/default/files/documents/public_statements/statement-commissioner-maureenohlhausen/130103googlemotorolaohlhausenstmt.pdf. Commissioner Ohlhausen is not alone in her
view. The Rt Hon Professor Sir Robin Jacob states in Competition Authorities Support
Grasshoppers: Competition Law as a Threat to Innovation, Competition Policy International,
volume 9, No. 2, autumn 2013, page 24, when discussing the EU Commissions parallel enforcement
activities in Europe: [t]he Commissions focus on a willing licensee is entirely misplaced.
Defendants will always say they are willing to negotiate that really means stringing things out for as
long as possible and paying as little as possible in the end, a sensible commercial tactic if you can get
away with it. There may, of course, be negotiations, but all that matters legally is whether the patentee
has made a FRAND offer. The focus should be on that, not what the defendant says is FRAND or
whether he says he is willing to negotiate. The concept of a willing licensee is amorphous and
impossible to pin down.
15 www.ftc.gov/sites/default/files/documents/public_statements/prepared-statement-federal-tradecommission-concerning-oversight-impact-competition-exclusion-orders/120711standardpatents.pdf.
16 Apple Inc v Motorola, Inc Nos. 2012-1548, 2012-1549 (Fed. Circ. 5 Dec 2012)
www.ftc.gov/sites/default/files/documents/amicus_briefs/apple-inc.and-next-softwareinc.v.motorola-inc.and-motorola-mobility-inc./121205apple-motor olaamicusbrief.pdf.
17 Policy statement on remedies for standards-essential patents subject to voluntary F/RAND
commitments,
8
January
2013,
www.uspto.gov/about/offices/ogc/Final_DOJPTO_Policy_Statement_on_FRAND_SEPs_1-8-13.pdf.
18 Ibid page 2.
19 Ibid page 7.
20 For example, the settlement between Nokia and HTC (February 2014) came just days before the
ITC was scheduled to rule on Nokias first two ITC complaints against HTC.
21 ITC Notice of final determination finding a violation of section 337; issuance of a limited
exclusion order and a cease and desist order; and termination of the investigation 4 June 2013,
www.usitc.gov/secretary/fed_reg_notices/337/337-794_notice06042013sgl.pdf.
22 Under section 337 of the Tariff Act 1930, the President is required to engage in a policy
evaluation of the Commissions determinations to issue exclusion and cease and desist orders. The
President may disapprove an order on policy grounds, approve an order or take no action and allow
the order to come into force upon the expiration of the 60-day review period.
23 Statement of the Department of Justice Antitrust Division on its Decision to close its Investigation
of
Samsungs
Use
of
its
Standards-Essential
Patents.
www.justice.gov/atr/public/press_releases/2014/303547.htm.
24 In re Robert Bosch GmbH FTC File No. 121-0081, Statement of the Commission, at 2 & N0. 7
(26 Nov 2012).
25 Apple Inc v Motorola, Inc, 869F Supp 2d 901 (ND Ill 2012).
26 Microsoft Corp v Motorola, Inc, 696 F.3d 872 (9th Cir. 2012).
27 Realtek Semiconductor Corp v LSI Corp, District Court for the Northern District of California
No. 13-16070 (9th Circuit 2014).
28 Apple Inc v Motorola Inc, 757 F.3d 1286 (Fed. Cir. 2014).
29 eBay Inc v MercExchange, LLC 547 US 388 (15 May 2006). The principles are as follows: a

claimant must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available
at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering
the balance of hardships between the claimant and defendant, a remedy in equity is warranted; and (4)
that the public interest would not be disserved by a permanent injunction.
30 Apple Inc v Motorola Inc, 757 F.3d 1256 (Fed. Cir. 2014).
31 Microsoft Corp v Motorola Inc, No. C10-1823 JLR, 2013 WL 2111217 (WD Wash. 25 Apr
2013).
32 Taken from case Georgia-Pacific Corp v United States Plywood Corp, 318 F. Supp. 1116
(SDNY 1970).
33 Re Innovatio IP Ventures , LLC Patent Litig., No. 11 C 9308, 2013 WL 5593609 (ND Ill. 3 Oct
2013).
34 Realtek Semiconductor, Corp v LSI Corp, No. 12-C 3451, 2014 WL 2738216, para 21 (ND Cal.
16 June 2014).
35 Ericsson v D-Link, No. 2013-1625, -1631, -1632, -1633 (Fed. Cir. 2014).
www.cafc.uscourts.gov/images/stories/opinions-orders/13-1625.Opinion.12-2-2014.1.PDF.
36 Press release of the European Commission. Memo, Brussels, 29 April 2014
http://europa.eu/rapid/press-release_MEMO-14-322_en.htm.
37 IP/12/89.
38 Case AT.39939 Samsung Enforcement Of UMTS Standard Essential Patents
http://ec.europa.eu/competition/antitrust/cases/dec_docs/39939/39939_1501 _5.pdf.
39 Case AT.39985 Motorola Enforcement Of GPRS Standard Essential Patents
http://ec.europa.eu/competition/antitrust/cases/dec_docs/39985/39985_928_16.pdf.
40 See, for example, Competition Authorities Support Grasshoppers: Competition Law as a Threat
to Innovation by the Rt Hon Professor Sir Robin Jacob, Competition Policy International, volume
9, No. 2, autumn 2013 and IP Rights and Competition Law Enforcement Questions by Bo
Vesterdorf, Journal of European Competition Law & Practice 2013.
41 Injunctions and Standard Essential Patents (SEPs): The Problems of Arguing from the Particular
to the General, Robert ODonoghue, Competition Policy International, May 2013, page 4.
42 Opinion of Advocat General Wathelet Case C- 170/13 Huawei Technologies Co Ltd v ZTE Corp,
ZTE Technologies Deutschland GmbH, 20 November 2014.
43 German Federal Court of Justice, 6 May 2009, KZR 39/06, Orange-Book-Standard. The end of
the Golden Orange-Book-Standard by Axel Verhauwen, Journal of Intellectual Property Law &
Practice, 2013, volume 8, No. 11 gives an excellent overview of and commentary on German case
law and recent events including the recent CJEU reference.
44 Microsoft Corp v Motorola Inc, 696 F.3d 872 (9th Cir. 2012).
45 www.justice.gov/atr/public/speeches/287855.pdf.
46 Institute of Electrical and Electronics Engineers Inc.
47 The IPR Special Committee (IPR SC) for ETSI and the IEEE Standards Association (IEEE SA)
for the IEEE.
48 As at 12 March 2014.
49 www.wipo.int/amc/en/center/specific-sectors/ict/frand/.
50
http://grouper.ieee.org/groups/ppdialog/drafts_comments/SBBylaws_100614_redline_current.pdf. The MIIT.
51 For example, Microsoft v Motorola, Case No. C10-1823 JLR 2013 WL 2111217 (WD Wash. 25
Apr 2013); Ericsson v D-Link Systems and others, Case No. 10-CV-473 2013-1625, -1631, -1632, -

1633 - LED (4 Dec 2014); Re Innovatio IP Ventures , Case No. 11 C 9308 LLC Patent Litig, MDL
2303, 2013 US Dist. LEXIS 144061 (ND Ill. 26 July 2013).
52 Huawei v InterDigital, Guangdong High Court, 28 October 2013 (see InterDigital 2014 quarterly
report page 13 at http://ir.interdigital.com/secfiling.cfm?filingID=1405495-14-17); on 14 April 2014,
IDC appealed to the Chinese Supreme Peoples Court (SPC).
53 Which suggests a similar method for calculating the royalty base as proposed by the IEEE.
54 The Korean FTCs amended IPR Guidelines state that it may be an infringement of Koreas Fair
Trading Act for a SEP holder to seek injunctive relief against a willing licensee unless the SEP
holder has already sought to negotiate in good faith by proposing a negotiation to the potential
licensee on reasonable and non-discriminatory licence terms and if it was agreed that in the event of a
dispute, the matter would be referred to a court or arbitration.
55 ZTE v Vringo [2013] EWHC 1591 (Pat).
56 For example, Judge Robart held in his Microsoft v Motorola FRAND determination decision
(footnote 29) that the upper bound of a RAND royalty for Motorolas H.264 SEP portfolio is 16.389
cents per unit and the lower bound 0.555 cents per unit. He held that the upper bound of a RAND
royalty for Motorolas 802.11 SEP portfolio is 19.5 cents per unit and the lower bound 0.8 cents per
unit. The Shenzhen Intermediate Peoples Court (later upheld on appeal by the Guangdong High
Peoples Court) ruled that the royalties to be paid by Huawei Technologies Co Ltd for InterDigital
Incs 2G, 3G, and 4G standard-essential patents (SEPs) should not exceed 0.019 per cent of the actual
sales price of each Huawei product.
57 The only possible exception to this is the Commissions merger decision in Case No.
COMP/M.6381 Google/Motorola Mobility, which sets out some general high-level principles
relevant to assessing FRAND in licensing disputes. As this is a merger decision, it is not binding and
so can only be interpreted as having persuasive value.
58 MEMO/12/1021.
59 See footnote 6.
60 Communication from the Commission, Guidelines on the applicability of article 101 of the Treaty
on the Functioning of the European Union to horizontal co-operation agreements (2001/C 11/01)
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:C:2011:011:0001:0072:EN:PDF, section
7.
61 Ibid page 3.
62 These comments were made at the GCR Live IP & Antitrust Conference in Brussels on 14 June
2013.
63 Study on the Interplay between Standards and Intellectual Property Rights (IPRs), Tender No.
ENTR/09/015 (OJEU S136 of 18/07/2009). See http://ec.europa.eu/enterprise/policies/europeanstandards/files/standards_policy/ipr-workshop/ipr_study_final_report_en.pdf.
64 Patents and Standards, a Modern Framework for IPR-based standardisation (Ref: 2014 (917720)
25
March
2014
http://ec.europa.eu/DocsRoom/documents/4843/attachments/1/translations/en/renditions/pdf).
65 As at 2 February 2015.
66 DG Enterprise: Public Consultation on Patents and Standards: A modern framework for
standardisation
involving
intellectual
property
rights.
http://ec.europa.eu/enterprise/policies/industrial-competitiveness/industrial-policy/intellectualproperty-rights/patents-standards/public-consultation/index_en.htm].
67
The
Mobile
Economy
2013,
AT
Kearney.
See

www.atkearney.de/documents/856314/1214748/BIP_The_Mobile_Economy_2013.pdf/1d78cea99e18-40ec-98d5-783dfbd86620 (p. 20) and Cisco Visual Networking Index: Global Mobile Data
Traffic
Forecast
Update,
20132018.
See
www.cisco.com/en/US/solutions/collateral/ns341/ns525/ns537/ns705/ns827/white_paper_c11520862.html.

Pat Treacy

pat.treacy@bristows.com

Helen Hopson

helen.hopson@bristows.com

Elisabetta Rotondo

elisabetta.rotondo@bristows.com

100 Victoria Embankment

London
EC4Y 0DH
United Kingdom

Tel: +44 20 7400 8000

Fax: +44 20 7400 8050
www.bristows.com

Australia
Jack Redfern, Chris Bevitt, Mark Vincent and Matthew Ward
Shelston IP
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent infringement proceedings are almost exclusively brought in the Australian Federal Court. The
Federal Court has a significant number of experienced patent judges although they do not deal
exclusively with patent matters. In general, a judge with experience in patent matters will be
allocated to a case on filing and will manage that case through to hearing.
2 Trial format and timing

What is the format of a patent infringement trial?

A patent infringement trial takes place before a single judge of the Australian Federal Court. Most
commonly the respondent will counter-claim for invalidity of the patent and the invalidity claim will
be heard together with the infringement claim. All evidence-in-chief is provided in affidavit form.
Witnesses can be and usually are cross examined on their affidavits. Experts are used to prove
infringement where necessary. Experts are also used in the invalidity case to establish the common
general knowledge and to assist with views about terms of art and other matters necessary for
arguments about construction of a patent. A typical patent case lasts approximately 10 hearing days.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The standard of proof in any civil case before the Federal Court is that the party making the claim
must prove it on the balance of probabilities. It should be noted that in pre-grant patent oppositions in
the Patents Office, it is generally accepted that there is a higher burden of proof on an opponent to
show that a patent would be invalid if granted (however, this changed from March 2013, when the
standard of proof in patent oppositions became the balance of probabilities as a result of The
Intellectual Property Laws Amendment (Raising the Bar) Act 2012).

4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Patent infringement proceedings may be brought by a patentee or an exclusive licensee. If an

exclusive licensee commences infringement proceedings the patentee must be joined in the
proceedings, either as a plaintiff or defendant.
Any person who wishes to exploit an invention may apply to the court for a declaration of noninfringement of a particular patent, whether or not any accusation of infringement has been made.
Before bringing such an application, the applicant must seek a written admission of non-infringement,
and the patentee must have refused or failed to make such admission.
Other options available to a party accused of patent infringement are to bring an unjustified threats
action seeking damages caused by such threat (eg, where threats are also made to customers) or to
challenge the validity of the patent.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

There is a considerable amount of case law (and uncertainty) as to the circumstances in which
contributory patent infringement will arise, which is beyond the scope of this answer. However, in
general terms there appear to be three circumstances in which liability may arise:
supply of a product where use of the product would infringe a patent, that being the only reasonable
use of the product, or a use to which the supplier had reason to believe that a product, which is not a
staple commercial product, would be put, or use in accordance with any instructions or inducement
given by the supplier;
authorisation of infringement, in the sense of sanctioning, approving or countenancing
infringement; and
according to the principles of joint tortfeasance (engaging in a common design to infringe, or
procuring, inducing or inciting infringement).
Multiple parties may be potentially jointly liable for infringement even if each practises only some of
the steps of a patent claim should their activities fall within the principles as summarised above.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple defendants can be joined in proceedings for infringement of the same patent. The Australian
Federal Court Rules allow two or more persons to be joined as defendants where the same question
of law or fact might arise for decision and the relief claimed arises out of the same transaction or

event. Separate proceedings may also be consolidated where they involve some common question of
law or fact, or are the subject of claims arising out of the same transaction. If these requirements are
met, defendants accused of infringing different patents could be joined in the same proceedings.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Importation of a product produced overseas by way of a process that is patented in Australia, will
infringe the Australian patent, as this will be considered an exploitation of the invention.
In addition, activities outside the jurisdiction may amount to infringement of an Australian patent on
the basis of contributory infringement described in question 5, provided that the act of primary
infringement takes place in Australia. This might, for example, apply to the manufacturer of a product
produced overseas by way of a process that is patented in Australia and where the product is
imported to Australia, if the manufacturer met the additional requirements for contributory
infringement (and was subject to the jurisdiction of the Australian court).
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Australia has no doctrine of mechanical equivalents. In order to constitute an infringement, an

infringing activity must fall within the language of the claims. There is a limited doctrine of
purposive construction where a court may give effect to what the reader skilled in the art would
understand a term in a claim to mean. However, this is a matter of claim construction, not of claim
broadening. That is, for a so-called equivalent to amount to an infringement of a claim, the language
of that claim has to be construed, according to the usual rules of construction, to encompass that
equivalent.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Discovery of relevant documents by the parties is limited to categories of documents where they are
seen as necessary by the court.
Subpoenas can be issued to third parties to give evidence and to produce documents and these can be
served out of the jurisdiction.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A patent infringement proceeding is typically resolved before the Federal Court in 18 months. An
appeal to the full court is typically resolved in six to nine months.
The typical steps in a patent infringement proceeding timetable will be initially the provision of a
statement of claim, the provision of a defence, any cross claim for revocation and particulars of
invalidity, and then a defence to the cross claim and any reply. Any application for security for costs
would follow after the exchange of pleadings. Thereafter the exchange of lay and expert evidence
would take place, followed by discovery of documents if ordered by the court. The court will usually
encourage alternative dispute resolution or mediation before setting a date for hearing.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Patent infringement trials often deal with the issue of liability only, with any damages claim to be
resolved separately. For a typical matter excluding questions of damages, costs before trial are
typically in the vicinity of A$600,000 depending on the complexity of the matter. A hearing of
approximately two weeks would cost approximately A$250,000 plus approximately A$50,000 for
further written submissions, which often follow a trial.
An appeal could typically cost in the region of A$250,000.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

An appeal from a decision of the Australian Federal Court is available to the Full Court of the
Australian Federal Court. A further appeal may be made to the High Court, although only with special
leave of that court. This special leave is not frequently granted in patent cases.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Restrictions on anti-competitive conduct are contained in the Australian Competition and Consumer
Act 2010, including a misuse of market power. Enforcement of a patent per se is not considered anticompetitive, however, it is unclear under what circumstances a patent enforcement action could give
rise to a claim of misuse of market power. Apple Inc had raised anti-competition allegations against
Samsung Electronics Co Limited in the litigation between these two parties in Australia, but that
litigation has now been settled without the Court issuing a decision on this aspect of the law.

14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Court-sponsored mediation is available to litigants before the Federal Court. It is not a mandatory
part of the court process. Parties are also able to arrange their own mediation outside of the court
process with a number of highly skilled mediators being available in the jurisdiction.
Parties to civil litigation in Australia are obliged to file a genuine steps statement to identify the
steps that have been taken to resolve the dispute before initiating proceedings. A court may have
regard to the genuine steps statement in exercising its powers, including its discretion to award legal
costs.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patent protection is available for a wide range of technologies. There are no specific prohibitions
relating to software, business methods, medical procures, or methods of treatment.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Inventions made during ordinary course of employment are deemed to belong to the employer.
However, independent contractors retain their invention rights in the absence of explicit contract
terms.
Where multiple inventors lead to co-ownership of a patent, each owner has an equal and undivided
share, and all licensing and assignment requires consent from all co-owners. In the case of a joint
venture, the ownership position depends on whether the joint venture is unincorporated (purely
contractual) or incorporated (joint venture company). For an unincorporated joint venture, the
ownership position is the same as for multiple inventors, assuming all joint venture parties have
contributed intellectually to the creation of the invention (not just through funding). For an
incorporated joint venture, the joint venture company will generally own any inventions and
associated patents. It is common for the joint-venture agreement to address intellectual property
issues and it may specify a different ownership arrangement or structure than that set out above.
Patent ownership is determined as a matter of law. Assignment should be in writing and signed by
both the assignors and assignees. Typically this occurs by way of a deed executed by both parties.
The Australian Patent Office will record ownership upon presentation of satisfactory evidence.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Validity of granted patents can be challenged via a revocation action before the Federal Court, as
unique proceedings, or as a cross-claim in infringement proceedings. Available grounds include:
novelty;
inventive step;
utility;
secret use;
entitlement;
fraud, misrepresentation or false suggestion;
sufficiency; and
fair basis.
It is also possible to request the Patent Office to re-examine a patent. This re-examination is
conducted on an ex parte basis.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Absolute novelty applies, in respect of both document publications and public acts.
However, there also exists a 12-month grace period in respect of disclosures by the patent applicant.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The test is whether the invention would have been obvious to a person skilled in the relevant art in
the light of the common general knowledge as it existed in Australia before the priority date of the
relevant claim, combined with prior art information.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent may be revoked if obtained by fraud, false suggestion or misrepresentation, or if an

amendment was made by fraud or false suggestion. Accordingly, it is important to be frank and honest

throughout the prosecution of a patent application and to avoid threatening or commencing an

infringement action in respect of claims that are known to be invalid, as the latter can impact on the
ability to obtain amendments at a later stage.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

There is a prior use exception to patent infringement. To be eligible for this exception, a party must
have been exploiting the patented technology in Australia before the priority date of the relevant
patent, or otherwise had taken definite steps (contractually or otherwise) to exploit the technology
before that date.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The primary monetary remedies are damages for the loss suffered by the owner or an account of
profits. With an award of an account of profits the infringer is ordered to hand over the profit they
have made from the infringement. Account of profits is preferable where it will be difficult for the
plaintiff to quantify (or prove) its damage but is obviously only appropriate where the infringer has
made profits.
Damages accrue from the date of publication of the patent application upon which the granted patent
Is based (that is, not from the time of the grant or the filing date) or from the date the infringing acts
began, if after publication. While punitive damages are available in an appropriate case, the primary
function of damages in the Australian legal system is compensatory and therefore damages provide
fair compensation, assuming the damage can be proved.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A final injunction restraining future infringement is one of the remedies typically granted if patent
infringement is established. A temporary injunction (known in Australia as an interim injunction) may
also be available at an early stage to restrain alleged infringement, pending the final outcome of the
proceedings. An application for a temporary injunction must generally be made very quickly after the

patent owner becomes aware of the apparent infringement and, as well as establishing a likelihood of
continuing infringement, the patentee must show an arguable case of infringement, that damages will
not be an adequate remedy and that the balance of convenience favours the granting of the interim
injunction. An undertaking must be given by the patentee to pay any damages awarded by the court,
should it later be established that the interim injunction should not have been granted.
Any injunction granted will be effective against whichever parties the court order is made. Usually,
the injunction covers only the infringer.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

There is no specific tribunal or proceeding available to block importation of patent infringing

products. The relevant federal government body, the Australian Customs and Border Protection
Service, has no power to seize such goods unless they also infringe trade mark or copyright law.
An application may be made to the Federal Court on an urgent basis for a temporary injunction
restraining the Australian Customs and Border Protection Service from releasing goods, however,
there may be practical and timing difficulties, particularly where the identity of the importer or details
of the relevant shipment, or both, cannot be determined.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

It is usual for the successful litigant to recover costs and attorneys fees, although the award is at the
courts discretion. Where the successful litigant does not succeed on all points, or has engaged in
conduct that the court considers unsatisfactory, it is possible that the other party may receive an order
for costs for the issues on which it was successful or in respect of the unsatisfactory conduct, or costs
may be left to lie where they fall. It should be noted that the award of attorneys fees is based on a
court scale of fees, which is significantly lower than the fees actually charged by attorneys.
Accordingly, even if a costs order is made, the successful party will usually recover only between 50
and 60 per cent of its actual attorneys fees owing to the low court scale.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

A court may award additional damages for infringement of a patent if it considers that it is
appropriate to do so, having regard to matters including the flagrancy of the infringement, the need to
deter similar infringements, the conduct of the infringer after infringement and any benefit the infringer
has accrued.

Note also that a court may refuse to award damages, or to make an order for an account of profits, in
respect of an infringement of a patent if the infringer satisfies the court that, at the date of the
infringement, the defendant was not aware, and had no reason to believe, that a patent for the
invention existed.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Proceedings for patent infringement must be commenced within six years of the date of the infringing
conduct or within three years of the grant of the patent, whichever period ends later. Extensions of
time are possible with the leave of the court but are rarely granted.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no requirement for patented products to be marked. However, it is good practice to mark
patented products to give other parties notice of the patent rights.
In particular, where products are marked and sold or used in Australia to a substantial extent before
infringement, the infringer is understood to have been aware of the existence of the patent and cannot
rely on the innocent infringement defence. Those defences, where established, protect an infringer
against an award of damages or an account of profits. The onus rests upon the infringer to establish
the defence.
It is an offence under the Patents Act 1990 (Cth) to falsely represent that a person is a patentee, or that
an article sold by the person is the subject of a patent or patent application, which includes false
patent marking. Such offence is punishable by a fine of A$6,000. Such conduct would also breach the
provisions of the Australian Competition and Consumer Act 2010 (Cth) prohibiting misleading
conduct, which could result in a damages claim.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

In general terms, there are no restrictions on contractual terms for a licence although certain
competition and consumer laws are potentially relevant. For example, Australian competition and
consumer law prohibits a supplier from specifying a minimum price at which products may be sold
on (called resale price maintenance). The Australian Competition and Consumer Act 2010 (Cth)
exempts provisions in licence and assignments of patents from its anti-competitive provisions (other

than those relating to abuse of market power and resale price maintenance), and so in other respects
patent licences are unlikely to breach anti-competition restrictions.
Some defence, security and controlled substances products may be subject to specific restrictions in
terms of use, distribution or export.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The compulsory licensing provisions in sections 133 to 140 of the Patents Act 1990 (Cth) are rarely
used. They allow a person to apply to the Federal Court for an order requiring the patent owner to
grant the applicant a non-exclusive licence. The applicant must satisfy a public interest or competition
test (that is, the patent owner is engaging in anti-competitive conduct in breach of Australian
competition and consumer law). The licence compensation is either negotiated between the owner
and the applicant or the court determines what is just and reasonable having regard to the value of the
licence and the desirability of discouraging the anti-competitive behaviour.
A public inquiry into the compulsory licensing provisions is currently underway. Patents concerning
gene technologies are a particular focus of the review.
The Patents Act 1990 (Cth) (sections 163 to 170) gives the Crown (Commonwealth, state or a person
authorised by them) the right to use a patent with protection from infringement. Compensation is
payable to the patent owner either by negotiation or by application to the Federal Court for a
determination. Again, the provisions are rarely invoked.
Somewhat related to compulsory licensing, section 119 of the Patents Act 1990 (Cth) lists a number
of exemptions from patent infringement, including some relatively new exemptions. There is a
regulatory use exemption relating to activities undertaken to obtain information needed for regulatory
approval to market or manufacture a patent technology. There is also a research exemption for
experimental activities whose predominant purpose is to gain new knowledge or similar.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The typical time frame is two to three years, although this can be shortened by requesting examination
voluntarily (before a deadline is set by the Patent Office). The cost, excluding excess claim fees, and
assuming relatively uncomplicated prosecution, is typically A$6,000 to A$10,000.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

A Patent Prosecution Highway (PPH) programme enables accelerated examination where a

corresponding application is allowed before any one of the patent offices that is a party to the GPPH
programme, or for PCT applications with any of those patent offices as the ISA and IPEA where at
least one claim is identified as novel, inventive and industrially applicable.
A broader expedited examination programme is available where justifications (for example
likelihood of infringement or commercial imperatives) can be established. This does not require fees,
but participation is subject to the discretion of the Patent Office and typically relies upon the
submission of supporting evidence.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

A specification must describe the invention fully, including the best method known to the applicant of
performing the invention. The claims must be clear and succinct and fairly based on the matter
described in the specification. Strict literal support for claim language is not required although, in
practice, it is preferred particularly for more recently filed patent applications that are subject to The
Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no duty of disclosure. However, applicants and patentees are encouraged to voluntarily
amend claims (either pending or granted) to avoid novelty-destroying prior art of which they are or
have become aware.
See question 20.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Additional claims may be pursued via divisional applications. Provided a divisional application is
filed within three months of a date on which the parent application is published for formal acceptance
(which is effectively equivalent to the US usage of allowance), the claims may be directed to any
subject matter supported by the specification accompanying the parent application. There are no
limits as to the number of parallel or serial divisional applications that may be pursued.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An appeal to the Federal Court is available for all Patent Office decisions. Adverse decisions on
matters of procedure are also able to be made to the Administrative Appeals Tribunal.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Third party oppositions are available and are heard by delegates of the Patent Office. Such
oppositions to standard patent applications may be commenced during a three-month opposition
period commencing from the date on which an application is published for formal acceptance
(allowance). Innovation patents may be opposed at any time following certification.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Australia operates a first-to-file system. There are mechanisms to dispute entitlement to an

invention, however these are limited to circumstances where an invention was taken from an inventor
without authorisation, and do not apply in cases of independent conception.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Voluntary amendments may be made at any stage during the life of a patent, provided those
amendments are supported by the specification and do not result in a broadening of claim scope.
Additionally, the Patent Office may, of its own volition or upon request, re-examine a granted patent.
The courts have power to make orders to direct amendments, including amendments to the
specification, claims, and bibliographic details (for example applicants and inventors) of both a
patent and application.
40 Patent duration

How is the duration of patent protection determined?

The patent term for a standard patent is 20 years from the Australian complete application filing date
(being the international filing date for PCT applications). A patent term extension may be obtained in
certain instances where protection is sought for pharmaceutical products.

The patent term for an innovation patent is eight years from the Australian complete application filing
date.

Update and trends

Over the past year the major developments in patent law have centred on subject matter requirements,
with two significant cases being handed down by the Full Court of the Federal Court of Australia.
One of these cases was for genetic material and the other for computer-implemented inventions. In
both cases the Court arrived at a generally favourable conclusion, as a whole, for users of the
Australian patent system.
The case concerning computer-implemented inventions was Research Affiliates LLC v
Commissioner of Patents [2014] FCAFC 150. As in other jurisdictions, in Australia these types of
inventions have been in a state of flux, in particular whether or not they amount to protectable subject
matter. The Full Court of the Federal Court of Australia arrived at a position that computerimplemented inventions are protectable by way of patents if the computer is integral to the invention,
in that it contributes to the invention per se. While absolute clarity has not been provided about the
boundary between allowable and non-allowable subject matter, at a high level it is possible to
conclude that Australian patent law is more accommodative of computer-implemented inventions
than, for example, the European Patent Convention. In broad terms the protectability of this type of
invention in Australian is now largely equivalent to the present state of US subject matter
requirements (although for different reasons).
The other case included the enlarged bench of the Full Federal Court of Australia unanimously
confirming that isolated genetic or biological material does represent patentable subject matter in
Australia (DArcy v Myriad Genetics Inc [2014] FCAFC 115). This decision was in stark contrast to
the conclusion reached by the US courts earlier in the year.

Jack Redfern

jackredfern@shelstonip.com

Chris Bevitt

chrisbevitt@shelstonip.com

Mark Vincent

markvincent@shelstonip.com

Matthew Ward

matthewward@shelstonip.com

Level 21

60 Margaret Street
Tel: +61 2 9777 1111
Sydney
Fax: +61 2 9241 4666
New South Wales 2000 www.shelstonip.com
Australia

Austria
Peter Israiloff
Barger, Piso & Partner
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Actions and interim injunctions in civil matters based on the alleged infringement of a patent,
supplemental protection certificate (SPC) or utility model may exclusively be brought at the Vienna
Commercial Court. Claims may be raised for:
interim and permanent injunction;
elimination;
accounting;
information regarding origin and channel of distribution;
monetary compensation or, in the case of a wilful infringement, damages or surrender of the profit
realised by the infringer; and
publication of the judgment.
The jurisdiction in criminal matters belongs to the Vienna Provincial Court for Criminal Matters.
Prosecution shall take place only at the request of the injured party. The infringer may be fined up to
360 times the daily rate for calculating fines or, in the case of a professional infringement, face
imprisonment of up to two years. As a private participant to the criminal case, the injured person may
also claim compensation.
The owner or exclusive licensee of a patent, SPC or utility model may apply to the Patent Office for a
declaratory decision against any person who produces industrially, puts on the market, offers for sale
or uses an object, applies a process on an industrial scale or intends to take such steps. The
declaratory decision shall state that the object or the process is covered either completely or partly
by the patent, SPC or utility model. However, such a petition shall be rejected if the party opposing
the petition proves that an infringement action concerning the same object or process, filed prior to
the filing of the petition for declaratory decision, is pending before the court between the same
parties.
The owner of a patent, SPC or utility model may apply to the customs authority for seizure of
infringing goods when they are imported into the EC for the first time. After such a seizure, court
action may be started.
2 Trial format and timing

What is the format of a patent infringement trial?

The injured person may file the statement of complaint together with any evidence deemed
appropriate (documents, private expert opinions, proof from witnesses, etc). The opposing party then
may file a statement of defence. Both parties may file several preparatory writs before a first court
hearing will take place in which, usually, a court expert is appointed. As soon as the opinion of this
expert is presented, another hearing is scheduled in which the proceedings are continued.
The matter in question is thereby discussed and looked at from all viewpoints, including (what might
be deemed as) cross-examination. If the opposing party objects to the validity of the patent, SPC or
utility model, the proceedings will be interrupted and that party has to file a nullification claim with
the Patent Office. In cases where the infringement action is based on a European patent validated in
Austria and in force no longer than nine months, instead of such a nullification claim an opposition
has to be filed with the European Patent Office. There the procedure shall be handled quickly. Upon a
final decision on the validity of the protection right, the court action shall be continued.
The court proceedings are oral and direct and are open to the public. The court has to decide based
on the free evaluation of evidence.
The jury consists of three judges, two of whom are professional judges and one of whom is an expert,
usually a patent attorney. One of the professional judges is the chairperson. It is mandatory that the
parties are represented by an attorney-at-law who may, as is usual, be accompanied by a patent
attorney.
Together with the filing of the statement of complaint in the main proceedings a claim for a
preliminary injunction may be raised. In that case, provisional proceedings will be processed on an
accelerated basis in which evidence is, more or less, restricted to documents.
Obtaining a judgment in first-instance main proceedings will take several years. In the case of
appeals to the second or third instance (Vienna Upper Provincial Court or Supreme Court of Austria),
the time frame will be up to five years or more.
Provisional proceedings will usually lead to a decision in the first instance after a few months. A
final decision after appeals might be expected in one to two years.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The plaintiff has, first of all, to prove that he or she is entitled to sue (namely, that he or she is the
rightholder, exclusive licensee or someone otherwise assigned), has to show that the protection right
is valid and has to bring forward whatever evidence he or she has in hand to prove the infringement
or that an infringement might take place.
The defendant has to prove any objections raised by him or her and prove that the plaintiff is not
entitled, that there is no infringement or that the right in question is not enforceable (for example,
because of expiry, exhaustion, prior use or bad faith of the plaintiff). In the case of an objection
against the validity of the right in question, the court shall suspend the proceedings unless nullity must
obviously be denied. The defendant must then file a nullification action with the Patent Office within
one month.
A reversal of the burden of proof applies in the case of a patent for a process for the manufacture of a

new substance, because any substance with the same characteristics shall, pending proof to the
contrary, be regarded as having been manufactured according to the patented process.
Pursuant to the IP enforcement directive of the EC, the defendant is bound to assist in providing
evidence whenever the plaintiff has difficulties in proving the facts.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Any person who has suffered an infringement of one of the rights belonging to him or her under a
patent, SPC or utility model or who worries that such an infringement might take place has standing to
sue: this includes the owner of the right, an exclusive licensee or someone otherwise assigned.
As long as an infringement action is not pending before the court, an accused infringer may apply to
the Patent Office for a declaration against the owner or the exclusive licensee of a patent, SPC or
utility model stating that the object or the process is not covered either completely or partly by the
protection right.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

An inducer, contributor or accessory is liable for patent infringement in the same manner as the direct
infringer and therefore may be sued in addition to him or her. However, a person is only regarded as
an inducer, contributor or accessory in the event that he or she has knowingly supported the direct
infringer (namely, that it was his or her intention to do so).
Several physical or juristical persons (for example, infringer, inducer, contributor, accessory) may be
sued together as a joinder of parties provided that they constitute a legal community with respect to
the matter in dispute, and that the respective court is competent for each of the defendants. It depends
on the specific case whether or not they are individually or jointly liable for the infringement or part
of it. A joinder of parties may also be created by a decision of the court if it is likely to result in an
acceleration, a simplification or a cost reduction.
A contributor or accessory may also be someone who provides means (devices, materials, etc) by
which an essential element of the invention can be realised (indirect patent infringer). Such a
provider may also be sued for indirect patent infringement in cases where he or she had delivered the
means to someone who uses the invention for private purposes only (namely, who is not regarded as a
patent infringer per se).
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the

defendants be accused of infringing all of the same patents?

Multiple parties may be sued together for patent infringement as a joinder of parties. The
prerequisites are the same as mentioned under question 5. It depends on the type of patent
infringement, or contribution to the patent infringement, by each of the parties, whether a separate
judgment for each of the parties or one and the same judgment for all of the parties may be achieved.
The plaintiffs claims against each of the parties have to refer to the same patents, irrespective of the
type of infringement, namely, industrially producing the subject of the invention, putting it on the
market, offering it for sale or using it, or importing or possessing it for the purposes mentioned.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Since an Austrian protection right is only valid in the territory of Austria, activities outside the
country cannot constitute an infringement and therefore cannot support a charge of it.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Statutory law states that the scope of protection of a patent is defined by the patent claims, which are
to be interpreted in the light of the description and, if applicable, of the drawings of the patent print.
Moreover, it is stated that the scope of protection should, on the one hand, not be narrowed by a strict
interpretation of the chosen words of the patent claims and, on the other hand, should not be expanded
by regarding the patent claims just as a guideline; the interpretation should rather lie between these
two extrema.
Infringement by an equivalent is given, according to established legal practice, if, at the date of
priority and in view of the patent claims, a person skilled in the art would regard the chosen solution
as having an equal effect as well as being equally good and obvious. An equivalent solution is given
if one and the same object of an invention is achieved by means (features) that are not identical to
those specifically listed in the patent claims but are, as would be obvious to a person skilled in the
art, equal in their function.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Any person who has suffered an infringement of one of the rights belonging to him or her may request
information about the origin and the distribution channels of the infringing goods and services,
provided that the burden of information is not in disproportion to the seriousness of the infringement
and will not violate statutory obligations to secrecy.

The claim to give information may be directed to the infringer and to any person having dealt directly
or indirectly with the infringing goods or services.
In the course of a request for a provisional injunction the plaintiff may also raise a claim for securing
evidence against the infringer.
When initiating criminal proceedings against an infringer, his or her premises might be searched for
any evidence to be seized.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The complaint of the plaintiff is served by the court to the defendant, who may submit a statement of
defence.
Several preparatory writs may be exchanged before a first hearing is held in which the proceedings
are structured and, in most cases, a court expert (normally a patent attorney) is appointed.
If the defendant objects to the validity of the protection right the proceedings are suspended, unless
the nullity must obviously be denied. After a final decision on the validity of the right by the Patent
Office or the Vienna Upper Provincial Court, the proceedings are continued.
Several hearings may take place in which witnesses may be heard and the case shall be discussed
thoroughly. A first-instance judgment is then released, which can be appealed by either party. The
second instance (Vienna Upper Provincial Court) and the third instance (Supreme Court of Austria),
if a further appeal for revision is admissible and accepted, do not take evidence and decide either in
public or in camera.
Provisional proceedings for a preliminary injunction run more or less the same way, but in an
accelerated manner. The defendant has no right to be heard at the first instance, although he or she
usually has the opportunity to present exonerating evidence. In addition, an objection by the defendant
to the validity of the protection right is not accepted. A decision of the first instance may be appealed
at the second and third instance. The total time from filing the infringement complaint until a final
judgment or decision may last several years and cannot be predicted.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs depend on the value of the litigation. Costs before trial, namely for the evaluation and
assessment of the infringement by a patent attorney and for the preparation of the writ by an attorneyat-law, might range from 4,000 to 12,000.
During trial in the main proceedings before the first instance, costs for a patent attorney and an
attorney-at-law may vary from 5,000 to 30,000; in provisional proceedings, only up to 10,000.
Each appeal proceeding may cost between 6,000 and 12,000.
In the event of success, part of the costs is refunded by the loser. In the event of losing the lawsuit, the
loser has to refund the statutory costs of the procedure and representation of its adversary.

12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Decisions and judgments of the Vienna Commercial Court (first instance) may be recoursed or
appealed at the Vienna Upper Provincial Court (second instance). If admitted, another revision or
revision-recourse to the Supreme Court of Austria (third instance) may be launched. If not admitted,
an extraordinary action to the Supreme Court may be filed.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In the case of an unjust enforcement of a protection right the accused infringer may sue the alleged
rightholder on the ground of unfair practice for refraining from such act and liability for damages.
Unjust allegations to a third party impairing its business reputation, etc, may also be opposed by the
injured person.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

ADR techniques are commonly used, and an attempt is often made to settle the pending dispute by
negotiation. Sometimes mediation is accepted by the parties or they agree to contact a local or
international arbitration board. However, none of these measures excludes eventually going to court.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patents shall be granted for inventions in all fields of technology that are new; that, having regard to
the state of the art, are not obvious to a person skilled in the art; and that are susceptible to industrial
application. Inventions may even be patented that have a relation to a biological material. The
following are not regarded as inventions:
discoveries, scientific theories, mathematical methods;
the human body in the various stages of its formation and development;
the mere discovery of one part of the human body, including a sequence or partial sequence of a
gene;

 aesthetic creations;
schemes, rules and methods for performing mental acts, for playing games or for doing business and
programs for computers; and
presentations of information.
Patents shall not be granted in respect of:
inventions whose publication or exploitation would be contrary to public policy or morality (for
example, methods for cloning human beings or for modifying the genetic identity of the gene line of
human beings);
methods for treatment of humans or animals by surgery or therapy and diagnostic methods; and
plant varieties or animal races.
In addition to that, utility models may be also granted to the logic of computer programs (but not to the
programs per se).
Patents may, however, be granted for products, such as substances and compositions, to be used in the
treatment, therapy and diagnosis of humans and animals as long as this use is novel. Known
substances and compositions are also protectable in combination with a first, second or multiple
medical indication as long as that combination does not belong to the state of the art.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The inventor or his or her successor in title shall have a right to the grant of a patent. Until the
contrary is proved the first applicant shall be regarded as the inventor.
Employees shall also be entitled to the grant of a patent (utility model) for inventions they have made
during their employment relationship, unless otherwise provided by contract.
An employee shall be entitled to special and fair remuneration in any case where his or her invention
becomes the property of his or her employer or subject to the employers right to use.
In the case of an invention made by an independent contractor, the right to the grant of a patent
depends on the respective contract.
A patent (utility model) applied for by a joint venture or by several persons (inventors) as
participants in the same invention shall be granted without any determination of each partys share.
The legal relationship of the co-patentees shall be governed by civil law.
In any case, the inventors shall be entitled to be named as the inventors. The right may not be
transferred or inherited. Renunciation of the right shall have no legal effect.
The right arising from a patent (utility model) application and the granted right is recorded at the
Patent Office. It shall be inheritable and not pass to the state. Both rights may be transferred to others,
either wholly or in shares, by a legal act, by a court order or by a transfer pro mortis causa. All rights
relating to a patent (utility model) shall be acquired by entry in the Patent (Utility Model) Register
and shall be binding on third parties. A request for such entry shall be accompanied by the original or
a duly certified copy of the document on which the entry is to be based. A document other than a
public document shall bear the duly certified signature of the person alienating his or her right.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Proceedings for a declaration of nullity of a patent (utility model) shall be instituted on request at the
Patent Office and shall be handled by its Nullity Department. The final decision of the Nullity
Department may be appealed at the Vienna Upper Provincial Court.
A patent (utility model) shall be declared null and void fully or only in part if:
the subject of the patent (utility model) was not patentable (for example, not new or inventive or
industrially applicable);
the patent (utility model) does not disclose the invention in a manner sufficiently clear and complete
for it to be carried out by a person skilled in the art; or
a deposited micro-organism has not been permanently accessible, unless the patentee proves that he
or she has deposited the micro-organism again.
In infringement proceedings (see questions 1 and 2) the respective court also has to judge, as a
preliminary question, on the effectiveness of a patent (scope of protection, prior use by the defendant,
etc).
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

An invention shall be considered to be novel if it does not form part of the state of the art. The state of
the art shall be held to comprise everything made available to the public by means of a written or oral
description, by use or in any other way, before the priority date of the application.
The state of the art shall also be held to comprise the contents of Austrian patent and utility model
applications, European patent applications and international patent applications covering Austria, all
of which having an earlier priority date and whose contents were not officially published before the
priority date of the later application or thereafter.
Excepted from the novelty requirements is a disclosure of the invention that had occurred no earlier
than six months prior to filing of the application and if it was directly or indirectly due to:
an evident abuse to the prejudice of the applicant or his or her legal predecessor; or
the fact that the applicant or his or her legal predecessor has displayed the invention at official or
officially recognised exhibitions proven by a certificate.
For utility model applications, even a disclosure by the later applicant having occurred within six
months prior to application is not detrimental to novelty.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

In considering the inventiveness, everything made available to the public prior to the application date
is taken into account from the point of view of an ordinary person skilled in the respective art.
However, applications of earlier priority date but with a later publication date are not taken into
consideration.
A solution is regarded as obvious when a person skilled in the art would have found it starting from
the same problem and aiming at the same result without any evaluations in hindsight. If the subject of
an application is a selection from a known range of features or a combination of known features, it is
regarded as non-obvious if it results in a surprising, unexpected effect. Mere technical equivalents
solving the same problem within the same result are regarded as obvious.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent (utility model) shall not be effective against a person who, at the time of filing, had already
begun, in good faith, to use the invention in Austria or had made the necessary arrangements for doing
so (prior user).
If, in connection with a European patent application, a translation of the claims into German was filed
with the Austrian Patent Office in order to gain preliminary protection, and provided that this
translation covered at first a narrower scope of protection than in the original language (namely,
English or French) and therefore was afterwards corrected on request to cover a broader scope, a
physical or juristic person who has already begun, in good faith, to use the invention in Austria (or
had made the necessary arrangements for doing so) outside the narrower but within the broader scope
of protection before the correction came into force (intermediate user) shall not be affected by the
Austrian part of the European patent.
A patent (utility model) has no effect against a private user (when it is not used industrially) and shall
not be effective against studies and experiments necessary for admission of pharmaceuticals to the
market (Bolar provision).
The protection of a patent for a biological material does not extend to material obtained by generative
or vegetative multiplication of the protected biological material when the derived material was put on
the market outside Austria but within the European Economic Area.
A patent for a biological material cannot be enforced against a person who obtained such a material
accidentally or if the material is technically unavoidable in the agricultural sector.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

A prior user is someone who has, in good faith, used any type of invention on an industrial or

commercial scale prior to the application date of the respective patent. Mere private use is not
covered by patent protection; that is, it is free. Therefore, a real private user cannot be sentenced for
patent infringement.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Monetary remedies are available:

in the case of unauthorised use of a patent (utility model), an appropriate monetary compensation
may be demanded, or double that monetary compensation, if the infringement was based on gross
negligence or intent;
in the case of wilful patent infringement, the infringed party may demand instead of appropriate
monetary compensation the damages, including the profits of which the injured party has been
deprived, or surrender of the profits realised by the infringer through the patent infringement; and
for disadvantages not consisting of any monetary loss suffered as a result of the wilful patent
infringement.
The appropriate monetary compensation is usually calculated based on equivalent licence fees
(licence analogy).
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Any person who has suffered an infringement of one of the rights belonging to him or her under a
patent, SPC or utility model or who worries that such an infringement might take place may sue for a
permanent injunction and claim for a preliminary injunction. In the latter case, he or she does not need
to prove that the claim is at risk or necessary for the prevention of irreparable harm. Preliminary
injunctions may also be released for securing evidence.
Injunctions have a binding effect only between the parties (the plaintiff and the defendant). Therefore,
suppliers or customers of the infringer are not bound by them. However, as injunctions may not only
be directed against direct infringers but also against indirect infringers, these persons may also be
sued.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Based on the regulation of the European Parliament and Council (EU No. 608/2013) concerning
customs enforcement of intellectual property rights in combination with Austrian Product Piracy Act
(PPG 2004), the following measures may be taken.
The rightholder of an Austrian patent SPC or utility model as well as of the Austrian part of a
European patent may apply in writing to the competent Austrian customs department for action by the
customs authorities if goods are found that are suspected of infringing such right when they enter into
free circulation, export or re-export.
After the application for seizure has been granted for a specific period (not exceeding one year but
extendable) the respective customs office shall suspend release of the goods and immediately inform
the competent customs department, which shall inform the rightholder and the declarant or holder of
the goods.
The rightholder or its representative may inspect the suspended goods and initiate, within a given
period (usually 10 days, which may be prolonged), infringement proceedings with the Vienna
Commercial Court. In this case, the declarant (owner, importer, holder or consignee) of the goods
may obtain the release of the goods on provision of security.
If the declarant has not specifically opposed the suspension, and provided that the rightholder has
agreed to the destruction of the goods, the customs authorities shall have such goods destroyed under
customs control.
If the goods suspected of infringing certain IP rights enter Austria in small consignments (ie, a post or
courier consignment with a maximum of three units or less than two kilograms) the customs authority
may act on its own, provided that the IP rightholder has claimed for such a procedure. In this case
only the declarant is informed about the suspension and if he or she does not oppose it the goods are
destroyed.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In the judgment, the successful party is granted reimbursement of costs for the proceedings and
representation by the losing party according to the Court Fees Act and Attorneys Tariff Act. This
reimbursement, however, usually does not cover all the expenses. In the case of a partial success each
party may bear its own costs.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Any person who infringes a patent wilfully shall be fined up to 360 times the daily rate for calculating
fines. A professional infringement shall be sentenced with imprisonment of up to two years.
Prosecution shall take place only at the request of the injured party.
An infringement is regarded as deliberate in the case of the infringer having used the patented
invention in knowledge of and with the intent to interfere with the patent right.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

All monetary claims, the claim for drawing up of accounts and the claim for information on origin and
distribution channels shall be prescriptive after three years from knowledge of the infringement and
the infringer. However, the running of the prescription period shall be interrupted by an action for
drawing up of accounts or a petition for declaratory decisions.
The claim for injunction has no statutory time limit, but the court usually regards three years as
adequate.
The prescription for criminal prosecution is one year from the infringement.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Marking of patented products is not compulsory. However, any person who designates products in a
manner likely to give the impression that they enjoy patent (utility model) protection shall on request
provide information regarding the patent (utility model) on which such designation is based.
False patent (utility model) marking is regarded as a misleading commercial practice. The offender
may be sued for discontinuance, elimination and, if appropriate, monetary compensation by anyone
interested in the observance of fair commercial practices (for example, consumers, competitors, the
Federal Chamber of Commerce, etc) on the basis of the Austrian Law Against Unfair Competition.
The competence of first instance lies at the respective provincial civil court. Marking a product with
pat.pend. (patent pending) is, in any case (nominally, even if the assertion is correct), regarded as
misleading commercial practice, because the trade involved generally cannot distinguish between a
patent application and a granted patent and the respective scope of protection.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

As far as Austria is concerned the owner of a patent, SPC or utility model may permit third parties to
exploit the invention in all the territory or a part thereof on an exclusive or non-exclusive basis
restricted or not restricted to any types of uses. Restrictions on the contractual terms of a licence are
only determined by public policy.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The patentee of an invention of considerable commercial or industrial significance that cannot be

exploited without use of an invention patented earlier (earlier patent) shall have a claim to a nonexclusive licence to exploit the earlier patent. Where such licence is granted, the earlier patentee
shall also have a claim to a non-exclusive licence to work the later patent. This principle is also
extended to plant breeders that cannot acquire or exploit a plant variety without infringing an earlier
patent.
Further, if the owner of a biotechnological invention has been granted a non-exclusive licence to an
earlier plant variety right, then the owner of that right shall have a claim to a non-exclusive licence to
the later patent.
Where a patented invention is not exploited to a reasonable extent in Austria, including importation,
and where the patentee has not taken all steps required for such exploitation, any person may apply
for a non-exclusive licence to exploit the patent for the purposes of his or her business.
If a licence for a patented invention is required in the public interest, any person shall have a claim to
a non-exclusive licence for the purposes of his or her business.
If the patentee refuses to grant a licence on reasonable terms, the Patent Office (Nullity Department)
shall, at the request of the applicant for the licence, decide the matter and, if a licence is granted, shall
fix the royalty and so on.
If the grant of compulsory licences has not sufficed to secure the exploitation of the invention in
Austria to an appropriate extent within two years, the patent may be revoked by the Patent Office in
whole or in part.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

After filing a patent application the Patent Office usually releases a first office action within six to
eight months, citing publications relating to the subject of the invention and, if need be, raising any
formal and statutory requirements for the patentability. In one or several responses to further office
actions, the applicant then may change or restrict his or her claims. Where the Patent Office
(Technical Department) considers that the application is in the proper form, which may take between
one and several years, it shall decide on the granting of a patent. This is published in the Official
Patent Gazette and recorded in the Patent Register. At the same time, the patent is published.
After 18 months from the application or priority date the application is published, if possible together
with a search report, otherwise the search report shall be published later. After the publication of the
application anyone can raise substantiated objections against the patentability. However, this third
party has no standing in the proceedings before the Patent Office.
Costs for the application procedure (including official and attorneys fees) may range from 2,500 to
5,000. Total costs for gaining a registered patent may range from 4,500 to 10,000. The annual fees
(without attorneys fees) range from 100 to 1,700.

When applying for a utility model the Patent Office releases after a few months a search report
together with, if necessary, formal objections and sets a term within which the claims may be
changed. Following this, the utility model is granted, published and registered. Costs for a utility
model application (including official and attorneys fees) may range from 2,000 to 4,000. Total
costs (in the case of formal objections, amendment of claims, etc) may range up to 8,000. Annual
fees (without attorneys fees) range from 50 to 450.
During the application proceedings a patent or a utility model application may be converted once,
upon request, into the other type of application.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In the course of the examination procedure for a patent application, a statutory accelerated
prosecution does not exist. If it has not been settled, dealt with or answered within about six months
one might, however, file a petition to the president of the patent office whereupon a time frame for the
outstanding official response is usually given.
The registration and publication of a utility model may, however, be accelerated by filing a
respective request and paying a surcharge fee. Provided that all formal requirements are fulfilled, the
publication and registration will then be effected immediately, namely, irrespective of and
independent from the finalising of the obligatory search report, which, in this case, will be issued
separately.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The application of a patent (utility model) shall disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person skilled in the art. If it concerns biological material,
this material has to be deposited with a depository institution as defined by the Budapest Treaty.
The description of the invention has to be in detail only so far that a person skilled in the art may
carry it out. Generic terms are allowed. Artificial words or abbreviations without explanations are
regarded as insufficient disclosure. Features that cannot be gathered plainly would also lead to
insufficient disclosure. The disclosure has to be insofar complete so that a person skilled in the art
can carry out the invention without unreasonable efforts.
The application shall relate to one invention only or to a group of inventions so linked as to form a
single general inventive concept. If there is no compulsory connection between several individual
inventive parts of an application divisional applications may be filed voluntarily or in response to a
demand of the Patent Office.
The patent claims shall, in a clear and distinguishing manner, define the matter for which protection is
sought. They shall be supported by the specification. Generally, all known and essential features
should be summarised in an introductory part of the main claim (the classifying clause), whereas all

new and inventive features are to be concentrated in a second part (the characterising clause). The
two clauses should be separated by the phrase characterised in that. Additional, but not compulsory,
inventive features may be claimed In sub-claims. In the case of an invention consisting of the
combination of known features the division into two parts may, however, be neglected. Alternatively,
the language A characterised by B or B characterised by A may be chosen. The teaching of a
patent claim is regarded as clear and complete as long as a person skilled in the art may carry it out
without an inventive effort. Only positive features should be mentioned (eg, without is
inadmissible). Mere descriptions of effects are not admitted. In method claims device features should,
if possible, be avoided.
The abstract shall contain a short summary of the disclosure contained in the application. A structure
like the main claim is advisable (namely, state of the art (classifying clause), aim of the invention,
inventive features (characterising clause)).
The description of the invention may be supported by drawings. In the claims reference numerals of
features should be indicated in brackets.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no obligation to disclose prior art, although it may be cited from the beginning in the
application. However, on the front page of a granted patent, only publications that were cited by the
Patent Office are listed.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Within 12 months of the original filing of a patent or utility model application, another application
concerning the same invention may be filed claiming original priority. In this application additional
matter and claims may be presented, claiming, if necessary, different priorities for different parts.
Where an improvement or other further modification of an invention that is already protected by a
patent or for which a patent has been applied for and is eventually granted is the subject of an
application by the patentee of the parent patent or by its successor in title, the patentee or its
successor in title may apply either for an independent patent for such improvement or other further
modification or for a patent of addition dependent on the parent patent. Additions to patents shall
expire together with the parent patent but may be held independent and declared independent if the
parent patent expires before the final term.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The resolutions of the Technical Department or the legal department of the Patent Office may be
recoursed at the Vienna Upper Provincial Court. Against decisions of that court revision recourses
may be raised at the Supreme Court of Austria, provided that the legal requirements are fulfilled.
The final decisions of the Nullity Department of the Patent Office may be appealed to the Vienna
Upper Provincial Court whose judgments may be taken under revision, if admissible, at the Supreme
Court of Austria.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Within four months of the grant of the patent an opposition may be lodged on the grounds of lack of
patentability, insufficient disclosure, disclosure surmounting the originally filed version and microorganisms not being available at the depositing institution.
The Technical Department of the Patent Office has to decide upon the opposition on basis of the writs
presented with or without an oral hearing. Each party has to bear its own costs. The decision is
published. In the case of a revocation, the application or patent shall be considered as not having
been operative from the beginning. An opposition procedure may last one to several years and may
cost between 7,000 and 14,000.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The applicant shall have the priority right to his or her invention from the date on which his or her
application for a patent or utility model was duly filed. From such date he or she shall have priority
over every similar invention filed later. The right of priority derived from an earlier application must
be expressly claimed.
If the grant or maintenance of the protected right depends on the validity of the claim to priority, the
right of priority must be proved. The departments in charge of the Patent Office are responsible for
the respective decisions.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

A patent may be revoked in whole or in part if the grant of compulsory licences has not sufficed after
two years to secure the exploitation of the invention in Austria to an appropriate extent.
A patentee shall be declared to lack title if it is proved that he or she was not entitled to the grant of
the patent (for example, was not the inventor) or that the essence of the application was usurped from
a third person.

Where the claim of the applicant (namely, the real originator) is allowed, he or she may request
assignment of the patent to him or herself, otherwise the patent protection shall end upon the
respective decision of the Patent Office.
Within six months from the grant of a patent, if it was not opposed, or within two months after a final
decision on an opposition, the patentee may file a separate application (partial application) claiming
the original priority.
The claims may be amended by the owner of the protection right at any time as long as the amendment
concerns a clear restriction of the scope of protection and is accepted by the respective department of
the Patent Office. In nullity proceedings the Nullity Department may amend the claims in its decision.
40 Patent duration

How is the duration of patent protection determined?

The maximum term of a patent shall be 20 years from the date of application. For utility models the
maximum term is 10 years.
The term of an SPC starts with the expiry of the respective patent for a duration that is equivalent to
the time period between the filing date of the patent and the first admittance of the product to the
market in the EU minus a period of five years. However, the duration of an SPC is at most five years
from the date it was granted. An SPC concerning pharmaceuticals for children may be, upon request,
prolonged for six months.

Update and trends

By regulation of the president of the Austrian Patent Office, published in the official Austrian Patent
Gazette No. 4/2014 on 15 April 2014, all fixed fees listed in the Patent Office Fees Act, Federal
Gazette I No. 149/2004, as amended, were increased by about 4 per cent with effect from 1 July
12014.
Austria has still not signed the London Agreement, which, in the course of validation, omits
translations of European patents into the respective language of a country. At present, it seems that the
ratification has been put on hold for the next couple of years.
On 1 January 2014 a new regulation concerning customs enforcement of IP rights (EU No. 608/2013)
came into force (replacing regulation EC No. 1383/2003), the main aspects of which are:
it now encompasses all kinds of IP rights, as well as patent rights, icluding utility models and
semiconductor topographies (which were hitherto not covered);
the Customs Authority may, among other measures, decide to suspend an application for customs
actions if the IP right holder has not, without valid reason, initiated proceedings to determine whether
an IP right has been infringed (ie, filed a civil or criminal action against the holder of the goods, for
example, importer of the counterfeits). The member states may also decide on the penalties for not
complying with obligations set out in the new regulation. These measures would have to be regulated
in a new Austrian Anti-Piracy Act because the current one of 2004 (slightly amended in 2007) just
refers to EC-Regulation 1383/2003, which expired at the end of 2013. A new act has, however, not
been released so far.

Austria has signed as first country the Agreement on a Unified Patent Court released by the Council of
the European Union. At present discussions are ongoing as to whether Austria should get a local
chamber so that Austrian patent infringement cases could be launched in an Austrian court
(supposedly at the Vienna Commercial Court) rather than going to the central chamber in Paris, with
branches in London and Munich. For the time being, however, on the one hand further ratifications are
awaited so that the Agreement can come into force and, on the other hand, the whole concept depends
on the outcome of Spains suit against this agreement launched at the Court of Justice of the European
Union.
Recent landmark decisions
Equivalency
An equivalent to an invention protected by a patent requires three prerequisites:
the modified embodiment has to solve the problem of the invention with modified means having,
however, objectively equal effect (equal effect);
a person skilled in the art can realise that the modified means used in the embodiment for solving the
problem underlying the invention have the same effect (obviousness); and
the considerations of a person skilled in the art are orientated to the meaning of the technical
doctrine protected by the patent claims in that he or she considers the modified embodiment with its
modified means as a solution equivalent to the patented embodiment (equivalency).
(Nullity Department, 7 June 2013, N8/2012 Austrian Patent Gazette 2014, 4)
Technicity
The Austrian Utility Model Act allows protection for program logic on which computer programs are
based (computer programs as such are not regarded as inventions). Since this Act came into force in
1994 several logics, irrespective of their purpose, were granted protection. The Supreme Patent and
Trademark Board ruled (just before it ceased to exist at the end of 2013), however, that a utility
model for program logic may only be granted if the computer program does not lack technicity; that is,
protection of an invention, either by a patent or by a utility model, always has technicity as a
prerequisite (Resolution OBGM 1/13, December 11, 2013 Austrian Patent Gazette 2014, 43).
Problem invention
Patents may (also) be granted for inventions that (just) lie in finding the technical problem to be
solved. The peculiarity of such a problem invention lies exclusively in the fact that the solution is,
in hindsight, trivial and as such would not be patentable. The problem itself was, however, new and
not obvious in the light of the state of art. In this case the mental work performed in finding the
problem may justify the granting of a patent for the solution (Supreme Patent and Trademark Board,

Op 3/13, 27 November 2013 Austrian Patent Gazette 2014, 58).

Taking of evidence
The procedure of taking evidence before the Nullity Department of the Patent Office is based on the
principle of free evaluation of evidence (ie, without any bindings to statutory rules of evidence).
The regular degree of evidence is, according to civil law, high probability; probability in all is not
required. High probability may also result from circumstantial evidence that is directed, by proof of
specific subsidiary facts, to convey to the court full conviction of the existence of the main facts that
cannot or can barely be proved.
(Supreme Patent and Trademark Board, Op 2/13, 13 November 2013 Austrian Patent Gazette
2014, 80)

Barger, Piso & Partner

Peter Israiloff

Mahlerstrasse 9
1010 Vienna
Austria

Tel: +43 1 512 3399

Fax: +43 1 513 3706
office@bapipat.at
www.bapipat.at

Canada
David Reive
Miller Thomson LLP
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent rights can be enforced through court proceedings only, commenced either in the Federal Court
of Canada or in the provincial superior courts. Most patent infringement actions are commenced in the
Federal Court, as that court has jurisdiction throughout Canada. Also, as the Federal Court has the
exclusive jurisdiction to invalidate a patent, the Federal Court has developed considerably more
expertise in patent proceedings than any of the provincial superior courts.
There are no administrative tribunals in Canada that have jurisdiction to decide patent infringement
issues.
2 Trial format and timing

What is the format of a patent infringement trial?

In the Federal Court, trial is before a single judge alone, as there are no juries. Patent infringement
actions commenced in provincial superior courts will typically be heard by a judge alone, as in most
provincial superior courts, juries are not available where a party seeks equitable relief, such as an
injunction to prevent further infringement.
Trials in patent infringement or invalidity actions involve witnesses testifying before the judge.
Expert witnesses are required to deliver, in advance of the trial, a report or affidavit setting out the
entirety of the intended expert testimony. While there is no requirement in the rules to deliver witness
statements from fact witnesses, the court often orders that the parties provide at least a summary of the
intended testimony from fact witnesses.
Witnesses are examined in chief by the counsel for the party calling that witness and then any adverse
party may cross-examine that witness, followed by re-examination to clarify any answers provided on
cross-examination. Judges can, and often do, ask questions of witnesses, particularly expert
witnesses, usually for clarification of points of testimony.
A patent infringement or validity trial generally lasts at least about two weeks, with trials for
complicated subject matter, involving numerous experts, sometimes lasting a month or more.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In Canada, the burden of proof on all issues in a patent infringement or invalidity action is a balance
of probabilities. Accordingly, the patentee must prove, on a balance of probabilities, that the accused
product or process does infringe the patent and a person alleging invalidity must prove its case on a
balance of probabilities.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Pursuant to section 55(1) of the Patent Act, a patent infringement action may be commenced by the
patentee or any person claiming under the patentee, although the patentee must be a party to any
lawsuit, either as a plaintiff or a defendant. The Federal Court of Appeal has interpreted the phrase
claiming under the patentee to be of a broad scope, including not only licensees (both exclusive and
non-exclusive), but also anyone who has some right, including by way of sale or lease of the patented
product, which may be traced back to the patentee (Signalisation de Montral Inc v Services de
Bton Universels Lte [1993] 1 FC 341).
Section 60(2) of the Patent Act allows for a person to bring an action in the Federal Court for a
declaration of non-infringement. In order to bring such an action, the person must have reasonable
cause to believe that any process used or proposed to be used or any article made, used or sold or
proposed to be made, used or sold by that person might be alleged to be an infringement. The burden
to establish this reasonable cause is low; institution of proceedings or even a demand letter in another
country would typically be sufficient.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

A person who induces or procures another to infringe a patent is guilty of infringement of the patent.
A determination of inducement can only be made if the plaintiff shows that:
an act of infringement has been completed by the direct infringer;
the completion of the acts of infringement was influenced by the acts of the alleged inducer to the
point that, without the influence, direct infringement would not have taken place; and
the influence must have been knowingly exercised by the inducer; that is, the inducer knew that the
influence would result in the completion of the act of infringement (see Corlac Inc v Weatherford
Canada Ltd 2011, FCA 228 at paragraph 162). The court had stated that the test for inducement is a
difficult one to meet.
There is no cause of action for contributory infringement of a patent in Canada (Apotex Inc v

Nycomed Canada Inc 2011 FC 1441 at paragraph 28).

It seems possible to claim that multiple parties, each carrying out part of the infringement, are part of
a common design to infringe, although there are no reported trial decisions on this point.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The joinder of parties to an action is a matter for the procedural rules of the court in which the action
is brought. In the Federal Court, the rules allow a plaintiff significant latitude in determining the
parties to the lawsuit and, in general, a plaintiffs choice of defendants will not be set aside unless
some significant prejudice results.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The Canadian courts have adopted the Saccharin doctrine, as stated in the English case of Saccharin
Corporation Ltd v Anglo-Continental Chemical Works [1901] 1 Ch 414. Under that doctrine, a
process patent can be infringed by the importation and use or sale in Canada of a product
manufactured abroad by another person using the patented process. The Federal Court has stated that
the Saccharin doctrine is not limited to process claims and that the use of a patented product abroad
as an intermediate in the production of a product imported in to Canada may be infringement (Pfizer
Canada Inc v Canada (Health), 2007 FC 898). The court stated, however, that there must be a strong
link established between the use of the patented process or product abroad and the product sold into
Canada.
A foreign party may be liable for inducing infringement of a Canadian patent if at least part of the
inducement occurs in Canada.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

There is no doctrine of equivalents or similar doctrine in Canada. Under Canadian law, the claims of
the patent are to be given a purposive (not literal) construction and once the claims are so construed,
there will be infringement if the accused device includes all essential elements of the claim. As a
practical matter, doctrine of equivalents type reasoning takes place in determining the proper scope of
the claims. Once a claim is construed, the infringement analysis then involves determining whether the
accused device or process includes all essential elements of that claim.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

There is both documentary discovery and oral examination for discovery in the Canadian courts.
Documents
Under the rules of the Federal Court and of most provincial superior courts, each party to an action
has a positive obligation to list, in an affidavit of documents, all documents that are relevant to any
matter in issue in the action that are or were in the partys possession, power or control or that the
party knows are in the possession, power or control of a non-party to the action. The test for
relevance varies according to the court. Importantly, the Federal Court, in which most patent actions
are commenced, has a more restricted definition of relevance than most provincial superior courts
and some courts in other countries. In the Federal Court, a document of a party is relevant if the party
intends to rely on it or if the document tends to adversely affect the partys case or to support another
partys case (Rule 222(2) of the Federal Courts Rules). An opposite party is entitled to obtain copies
of all non-privileged documents listed in any other partys affidavit of documents.
Examinations for discovery
In the Federal Court, each party is entitled to conduct an oral examination for discovery of any
adverse party. Where the party is a corporation, partnership or association, it, not the opposite party,
is entitled to select a representative to be examined on its behalf (Rule 237(1)). A person who is to
be examined for discovery is required, before the examination, to become informed about the material
facts in the action by making inquiries of any present or former officer, servant, agent or employee of
the party, including any who are outside Canada, who might be expected to have knowledge relating
to any matter in question in the action (Rule 241).
As there is only one representative for discovery of each party, and that representative is to provide
answers with respect to all issues in the litigation, typically there are questions that the representative
cannot answer at the oral examination for discovery. Answers to these questions are usually provided
in writing after the examination for discovery, with a follow-up examination that is limited to
questioning on those answers and any documents that have been produced since the original
examination. In most cases, there is some dispute between the parties as to the proper scope of
relevance and the propriety of questions asked on the oral examination for discovery. These disputes
are typically resolved through a motion to the court.
Inventors of a patent who have assigned their rights to a party may also be examined for discovery.
However, that discovery is more limited in scope and use than the discovery of the representative of
a party. In particular, the discovery of a non-party inventor cannot be used against the assignee of the
patent rights as evidence at a trial without leave of the court.
The Federal Courts Rules also provide for the examination of non-parties to the action who may have
information on an issue in the action. Leave of the court is required to conduct a non-party discovery
and the party seeking such non-party discovery needs to satisfy a multi-part test, including

demonstrating that the party has been unable to obtain the information informally from the non-party or
from another source by any other reasonable means.
The rules of the provincial superior courts differ from those of the Federal Court with respect to the
permitted scope of oral examinations for discovery. Some provinces allow for the examination of
multiple persons, both employees of an adverse party and non-parties.
With respect to obtaining evidence from sources outside Canada, Canada is a party to a number of
bilateral or multi-jursidictional treaties that would allow for the enforcement in a foreign jurisdiction
of letters of request (letters rogatory) issued by a Canadian court.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The majority of patent infringement actions are heard between about three to four years after
commencement of the action. However, if a trial date is requested early in the litigation, this time may
be reduced to about two years.
An appeal from a trial decision is usually heard within about a year from commencement of the
appeal.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of patent litigation in Canada typically fall within the following ranges:
Stage

Cost

Pleadings and discovery

C$200,000 C$300,000

Preparation for trial, including preparing expert reports

C$300,000 C$500,000

Trial (two weeks)

C$150,000 C$250,000

Appeal

C$100,000 C$150,000

12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

For a case commenced in the Federal Court, an appeal to the Federal Court of Appeal from a

decision at first instance is available as of right. An appeal from the Federal Court of Appeal to the
Supreme Court of Canada requires leave of the Supreme Court. In recent years, the Supreme Court
has been more ready to grant leave in patent and other intellectual property cases.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The enforcement of a patent, in and of itself, does not expose the patentee to liability for any
competition violation. However, if the patentee asserts infringement without a reasonable basis to do
so and lessens competition as a result, there may be liability.
Liability may exist if the patentee uses the patent as a tool to require the purchase of non-patented
goods or services.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The Federal Courts Rules mandate that the parties discuss the possibility of settling any or all of the
issues in the action and of bringing a motion to refer any unsettled issue to a dispute resolution
conference within 60 days after the close of pleadings (Rule 257). In practice, these discussions are
often perfunctory.
The parties to an action must be prepared to address the possibility of settlement or a dispute
resolution conference at the pretrial conference. While the rules provide that the court may order that
a proceeding or any issue in a proceeding be referred to a dispute resolution conference (Rule 386),
typically, the court will not do so early in a proceeding over the objections of one party. Typically,
the Federal Court does require that the parties attend a dispute resolution conference prior to the trial
of an action. The dispute resolution conferences conducted by a judge or prothonotary (a position
similar to a magistrate or master) of the court. Unless the parties consent, a judge who conducts a
dispute resolution conference shall not preside at the hearing of the proceeding.
The parties to an action are also permitted to agree on a private mediator or arbitrator of their
dispute, although this is far less common in intellectual property matters than in other types of
commercial litigation.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The Patent Act defines invention to mean any new and useful art, process, machine, manufacture or

composition of matter, or any new and useful improvement in any art, process, machine, manufacture
or composition of matter (section 2). Accordingly, to be patentable, an invention must fall within one
of these categories. Section 27(8) of the Patent Act specifies that no patent shall be granted for any
mere scientific principle or abstract herein.
While software per se is not patentable in Canada, computer implemented inventions are generally
patentable. For these inventions, the computer must be an essential element of the claim; that is, a
claimed method, for example, cannot be capable of being carried out without the use of a computer.
Business methods generally are computer-implemented inventions and thus must meet the requirement
that a computer is an essential element of the claims of the patent. Further, to be patentable, a method
must not involve the application of skill or judgment of the user.
Methods of medical treatment are not patentable in Canada. However, claims to the use of a
compound in the treatment of a specific condition or disease are permitted as are Swiss style
claims. In general, the distinction between an unpatentable method of medical treatment and a
patentable invention depend on whether, at its essence, the claim under consideration seeks to
somehow expropriate or interfere with the professional judgment and skill of a physician.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

In Canada, ownership of inventions and any patents on any inventions is a matter of provincial law, in
accordance with the Constitution Act. In general terms, an invention made by a corporate employee
whose function is to invent is owned by the employer. In determining whether an invention belongs to
an employee or the employer, the courts in Canada have typically looked at factors such as whether
the invention relates to the employers business in some manner and whether the invention was made
using the materials of and on the time of the employer.
Where an invention is made in accordance with a contractual arrangement (other than a contract of
employment), the express or implied terms of the contract will govern which party owns inventions
arising from the contractual relationship.
Where there are multiple owners of a patent, each owner may use the invention for his or her own
benefit or may assign or grant an exclusive licence to that owners interest. However, one owner of a
patent may not grant multiple non-exclusive licences, as doing so would derogate from the right of the
other owners.
The ownership of patents is recorded with the Canadian Patent Office by filing an assignment. The
Patent Act specifies that in order to be registered, an assignment must be accompanied by the affidavit
of a subscribing witness or established by other proof to the satisfaction of the Commissioner of
Patents that the assignment has been signed and executed by the assignor.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent can be challenged on a number of grounds, the most common of which are:
anticipation;
obviousness;
insufficiency;
lack of utility or lack of sound prediction of utility;
unpatentable subject matter; and
ambiguity.
Depending on the grounds of invalidity alleged, a person challenging a patent can do so either in the
Patent Office or in the Federal Court. Pursuant to section 48.1 of the Patent Act, any person may
request a re-examination of a patent. As this request can be based only on published prior art, such as
patents or printed publications, the request will typically only deal with anticipation or obviousness.
Re-examination is a little used procedure; over the past several years, there have been only about five
re-examination requests filed with the Canadian Patent Office per year.
The vast majority of validity challenges are raised in court proceedings, either as a defence to an
infringement action or as a separate action for impeachment of the patent.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Canada has an absolute novelty requirement for patentability, with a one-year grace period for
applicant-derived disclosures. It is important to note that the one-year grace period for applicantderived disclosures is based on the Canadian filing date, not any priority date. Accordingly, should
the invention have been disclosed prior to the priority date, and the Canadian application is not filed
within one year of the disclosure, that disclosure will be a novelty bar in Canada.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The subject matter defined by a claim in an application for a patent must not have been obvious on the
claim date (generally the priority date) to a person skilled in the art or science to which it pertains.
As for novelty, there is a grace period for applicant-derived disclosures; if such a disclosure is
within one year of the Canadian filing date, it cannot be used as prior art for obviousness.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A Canadian patent is void if any material allegation in the petition of the applicant in respect of the
patent is untrue, or if the specification of the patent contains more or less than is necessary for
obtaining the end for which they purport to be made, and the omission or addition is wilfully made for
the purpose of misleading (section 53). In practice, the courts have limited the scope of this section
and patents are rarely, if ever, held invalid pursuant to this provision.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

The Canadian Patent Act does provide a prior user defence, which allows any person who, before the
claim date (generally the priority date), has purchased, constructed or acquired the subject matter
defined by a claim, the right to use and sell to others the specific article, machine, manufacture or
composition of matter patented and so purchased, constructed or acquired without being liable to the
patentee. The limitation of this section to the specific article, machine, manufacture or composition
or matter prevents the prior user from, for example, purchasing or making additional equipment to
carry out the patented process.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

A person infringing a patent is liable to the patentee and to all persons claiming under the patentee
for:
reasonable compensation for any act carried out after publication of the patent and before grant that
would have constituted an infringement of the patent if it had been granted on the publication date.
This reasonable compensation will be typically a reasonable royalty; and
damages for any act occurring after grant of the patent. Typically, damages are calculated on the
basis of the patentees lost profits on sales that it would have made plus a reasonable royalty on the
infringers sales that the patentee would not have made.
The Patent Act also provides that the court may make an order for and respecting an account, which
has been held to provide the court the ability to award the equitable remedy of an accounting of the
defendants profits. However, as an equitable remedy, the plaintiff must show equitable reasons for
the award of an accounting of the defendants profits.
Exemplary and punitive damages may be available to a successful patentee if there has been some
misconduct warranting such an award by the infringer.

23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A successful patentee is normally awarded a permanent injunction after trial to prevent future
infringement as a matter of course.
A pretrial injunction in a patent infringement action is difficult to obtain in Canada, as the patentee
must demonstrate that it will suffer irreparable harm (harm not compensable by an award of damages)
should the pretrial injunction not be granted. As a result of this requirement, pretrial injunctions have
tended to be granted only where there is a substantial doubt as to the defendants ability to pay the
likely award of damages after trial (assuming that there is liability).
An injunction, generally, is only effective against named defendants. However, injunctions may be
effective against any privies of the named defendants, depending on the nature of the relationship and
the extent to which the non-party was involved or had knowledge of the proceeding. An injunction is
not as a matter of law effective against suppliers to or customers of the infringer, although, as a
practical matter, it often is.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

There are no specialised procedures to prevent the importation of infringing products into Canada. A
patentee must commence an infringement action in the normal manner.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

A successful litigant is normally entitled to recover its costs of the litigation. These costs include both
attorneys fees and any permissible disbursements, including any taxes on fees or disbursements. In
the Federal Court, in which the vast majority of patent proceedings are commenced, attorneys fees
usually are set in accordance with a tariff published by the court. As a practical matter, the successful
party usually recovers only between about one-quarter and one-third of its actual litigation costs.
The court has discretion to award costs on a basis other than the court tariff.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There is no specific doctrine of wilful infringement in Canada. However, where the court determines

that there has been a flagrant and knowing violation of the patent rights, the court is more likely to
permit the patentee to choose between its damages or an accounting of the defendants profits and to
award aggregated or punitive damages.
While there is no specific test either in the Patent Act or in the jurisprudence to be met in order for an
award of aggregated or punitive damages, the court will look at the totality of the defendants
activities, including any statements made by the infringer to the public regarding the development of
its infringing device.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

In accordance with section 55.01 of the Patent Act, no remedy may be awarded for any act of
infringement for an act of infringement committed more than six years before the commencement of the
action for infringement.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There are no provisions in the Canadian Patent Act that relate to marking of patented products.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Other than the situation where there are multiple owners of a patent (as detailed in question 16), there
are no specific patent-related restrictions on the terms by which a patent owner may license a patent.
As a contract, a patent licence and the terms thereof are determined and judged in accordance with the
general law of contracts.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Compulsory licences to a patent are obtainable, after three years from the date of grant of the patent,
where there has been abuse of the exclusive rights of the patent. The party seeking a compulsory
licence must prove, for example, that the demand for the patented article in Canada is not being met to

an adequate extent and on reasonable terms or that the patentee, either by refusing to license or
placing onerous conditions on licences, is causing prejudice.
The terms of a compulsory licence are determined by the Commissioner of Patents, who must
endeavour to secure the widest possible use of the invention in Canada consistent with the patentee
deriving a reasonable advantage from the patent rights and to secure to the patentee the maximum
advantage consistent with the invention being worked by the licensee at a reasonable profit in
Canada.
The Canadian Patent Act also contains provisions for the use of patents for international humanitarian
purposes to address public health problems. Under these complex provisions, a compulsory licence
to certain pharmaceutical products may be granted for manufacture of those products in Canada for
sale of the product in specific countries, most of which are in Africa. These provisions have been
widely criticised as overly complicated and cumbersome and there has been only one grant of such a
compulsory licence.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The time to obtain a patent in Canada is typically between about two and four years from the date
when a request for examination of the application is filed. The cost of preparing and prosecuting until
grant of a patent application for a mechanical invention of average complexity is usually within the
range of about C$10,000 to C$15,000.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Prosecution of a Canadian patent application can be expedited by requesting advanced examination,

which is commonly called a special order. Such a request can be made by paying a fee (at present
C$500) and submitting some reason why failure to advance the application is likely to prejudice the
applicants right. The standard for showing this prejudice is quite low.
Canada is also part of the Global Patent Prosecution Highway system, in which there are some 16
participating patent offices, and has agreements on expedited prosecution with a several patent
offices, including the European Patent Office as of 2015.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The Canadian Patent Act requires that the specification of an invention must correctly and fully
describe the invention and its operation or use as contemplated by the inventor and set out the
invention in such full, clear, concise and exact terms as to enable a person skilled in the art to make
that invention.
In Canada, the utility of an invention must have been established by or be soundly predictable by the
Canadian filing date. As such, evidence of utility established after the Canadian filing date are
generally not admissible. Accordingly, care must be paid to insuring that an application filed in
Canada has sufficient information to establish utility.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The Canadian Patent Office commonly issues a Rule 29 request, which requires the applicant to
identify any prior art that has been cited during the prosecution of any identified corresponding
applications. The Canadian Patent Office usually limits this request to prior art cited by the United
States Patent and Trademark Office or by the European Patent Office.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

A patent applicant is able to file divisional applications where the original application has described
more than one invention. A divisional application must be filed before the issue of a patent on the
original application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

A final decision refusing the grant of a patent may be appealed to the Federal Court, at any time
within six months after notice of the decision refusing the patent. Such an appeal is by way of an
application and evidence is presented in a written format.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no opposition procedure in Canada. However, the Patent Act provides that any person may
file with the patent office prior art consisting of patents and printed publications and explain the
pertinency of the prior art to the claims of the application. However, after this initial filing, there is

no right of the person doing so to make further submissions (except by filing a further protest).
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

As Canada is a first-to-file country, priority to inventions is judged solely on the basis of which
applicant has the earliest effective date (either Canadian filing date or priority date).
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

There are three separate mechanisms by which a patent can be amended after grant: reissue,
disclaimer and re-examination. A patent can be reissued within four years of the original grant where
the patentee shows that it claimed more or less than it had a right to claim it as new and that this error
arose from inadvertence, accident or mistake. A reissue can be used to broaden the claims of a patent.
A patentee may, at any time, disclaim all or part of a claim in a patent where the claim is broader than
the patentee had a right to claim as new or inventive.
Any person (patentee or a challenger to the patent) may request a re-examination of any claim in a
patent by filing prior art, consisting of printed publications including patent applications, and
explaining the pertinency of the prior art. The majority of re-examination requests are filed by the
patentee.
There is no mechanism by which a court can amend the claims of a patent during litigation.
40 Patent duration

How is the duration of patent protection determined?

The term of a patent in Canada is 20 years from the filing date.

Update and trends

2014 saw the introduction and passage of legislation in Canada that will amend the Patent Act to
make it consistent with the international Patent Law Treaty. The changes to the Canadian Patent Act
relate to a number of procedural issues, such as time limits or payment of fees and transfers of patents
or applications, as well as substantive issues, such as the content of patent applications. These
changes are not yet in force, as the patent regulations also need to be amended in order to implement
the new provisions. Currently, it is expected that the changes will not come into force until late 2015
at the earliest.

David Reive

dreive@millerthomson.com

40 King Street West, Suite 5800

Toronto
Ontario M5H 3S1
Canada

Tel: +1 416 595 8655

Fax: +1 416 595 8695
www.millerthomson.com

China
Jianyang (Eugene) Yu
Liu, Shen & Associates
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

A patent owner has two alternative remedies against patent infringement: either to request an
administrative authority for patent affairs (AAPA) to handle a patent infringement dispute, or to bring
a civil lawsuit against patent infringement directly with a court.
AAPAs have been established at provincial level and in a number of cities. The judiciary system in
China consists of courts at four levels: the Supreme Court, the high courts at provincial level, the
intermediate courts at city level and the local courts at county level. A Supreme Court circular grants
designated intermediate courts or intellectual property courts jurisdiction over patent infringement
cases as the courts of first instance. These designated courts are those located in the capital of a
province or autonomous region, a municipality directly under the central government or those
specifically designated. The court decision can be appealed to a high court, the decision of which is
final.
In 2014, China set up three intellectual property courts in Beijing, Shanghai and Guangzhou
respectively which have jurisdiction over intellectual property cases including patent cases, where
the Guangzhou Intellectual Property Court has jurisdiction over the whole Guangdong Province. A
number of courts have also set up intellectual property divisions to adjudicate, among others, patent
infringement cases. Where there is no IP division, the economic division of a court will hear patent
infringement cases.
2 Trial format and timing

What is the format of a patent infringement trial?

A court may order multiple court hearings, though generally there is only one. A fact-finding hearing
may precede a court hearing if the court decides it needs to examine and cross-examine evidence and
sort out the main disputes over facts. A court hearing in a patent infringement case typically takes half
a day or one day and the judges take control of the proceedings.
Documents, affidavits and live testimony can be submitted as evidence. It appears, however, that
courts tend to rely more on documentary and physical evidence than other kinds.

Cross-examination of witnesses is permitted. A technical appraiser may be appointed by a court to

give opinions on technical issues, and the technical appraisers report is examined by all the parties
before it is admitted as evidence.
A court tribunal usually consists of three judges, but may consist of two judges and one specifically
invited temporary judge with related technical background knowledge. There is no jury trial.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The plaintiff in a patent infringement lawsuit bears the burden of proof as to its patent right, patent
infringement and the amount of damages claimed. In patent infringement litigation concerning a
process patent for manufacturing a new product, however, the burden of proof is shifted to the
accused infringer to prove that it has used a different process to manufacture the product.
The burden of proof is with the party who files the request for invalidating a patent with the Patent
Re-examination Board of the Chinese Intellectual Property Office (SIPO).
A patent is presumed to be valid and enforceable, and there are no concepts and legal provisions
concerning unenforceability of a patent.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

A patent owner, a sole licensee, an exclusive licensee where the patent owner does not file a lawsuit
or a non-exclusive licensee authorised by the patent owner to file a lawsuit has the right to file a
patent infringement lawsuit against an accused infringer with a competent court.
When receiving a warning for infringing a patent, an accused infringer may send the patent owner a
written notice requesting it to bring a lawsuit on this ground. Where the patent owner does not
withdraw the warning, or bring a lawsuit, within one month after receiving the written notice or two
months after the written notice was sent, the accused infringer may bring a declaratory judgment
action to obtain judicial ruling on the accusation.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

There is no statutory provision on indirect infringement. However, courts in practice have applied the
doctrine of contributory infringement in determining patent infringement. Under the doctrine of
contributory infringement, anyone who has knowingly induced others to commit direct infringement of
a patent by supplying a component or material of the patented product or apparatus for use in the

patented process that is especially adapted for use in the infringement of such a patent without any
other usage is liable as a contributory infringer.
There has been no such multiple party infringement case filed with a court, as far as we are aware.
Therefore, this is not a settled area and perhaps would depend on the specific circumstances of each
such case.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple defendants can be joined as co-defendants in the same lawsuit, provided that the defendants
are making, using, offering to sell, selling or importing the same patented products or methods at
issue, jointly or separately. Thus, for instance, a lawsuit can be filed against both the manufacturer
and the seller of an accused infringing product and can also be filed against the accused direct
infringer and contributory infringer jointly.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

No activities taking place outside China support a charge of patent infringement. However,
importation of a product manufactured outside China that would infringe a patent if manufactured in
China constitutes infringement of the patent.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Courts have applied the doctrine of equivalents to determine patent infringement when there is no
finding of literal infringement. The Supreme Court provides that if an accused product or process
performs substantially the same function in substantially the same way to achieve substantially the
same result as that of a patent that does not require creative labour by a person skilled in the art, it
infringes the patent.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

There is no pretrial discovery in China. Most importantly, Chinese laws do not grant the parties and
their lawyers much power to investigate and obtain evidence. Consequently, obtaining infringement

evidence is usually difficult, particularly with respect to the defendants records to serve as the basis
for calculating damages. If there is a likelihood that evidence may be destroyed or lost, or be difficult
to obtain later, a party to a lawsuit may apply to the court for preservation of evidence. A court may
also on its own initiative take measures to preserve such evidence.
Also, under the same circumstances, a patent owner may, before filing a lawsuit, request for
preservation of evidence with a court.
Obtaining evidence from a non-cooperative third party is difficult, too. The party may request the
court to obtain such evidence from the third party, and it is up to the court to decide whether or not to
grant the request.
Any evidence originating from overseas must be notarised and legalised in order to be admissible in
court proceedings in China.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A civil lawsuit between domestic parties should generally be concluded within six months in the
court of first instance, but there is no timetable for a court to decide a case involving a foreign party.
Experience shows that it usually takes about one year for a court of first instance to decide a case
involving a foreign party in a patent infringement lawsuit. In appeal, a domestic lawsuit is generally
required to be concluded within three months. Again, there is no timetable for a case involving a
foreign party, but it generally is concluded in around six months.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

It is difficult to estimate a cost in a litigation, as it depends on a number of factors. Also, costs in

cases vary significantly, and there is no average cost available in each situation.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

After the intermediate court or the intellectual property court renders its decision, any party to the
lawsuit has the right to appeal the court decision to the high court in the region, within 15 days after
service of the intermediate court decision on a Chinese party or within 30 days after service of the
court decision on a foreign party.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

A potential exposure to a patent owner is the Anti-monopoly Law, effective from 1 August 2008, but
we are still waiting for court decisions to see how a court would apply the general provisions under
the new law against the patent owner. There are no specific provisions under Chinese law against the
patent owner on the grounds of unfair competition or business-related tort.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

ADR is available if agreed by the parties concerned in patent disputes, but appears to be rarely used.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

There are limits on what a patent can be obtained for. For instance, software per se is not patentable;
nor are business methods and medical procedures.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Under the Chinese Patent Law, an invention made by a person in execution of the tasks of an entity or
a joint venture to which he or she belongs, or made by him or her mainly using the material and
technical means of the entity, is a service invention. For a service invention, the right to apply for a
patent belongs to the entity. After the application is approved, the entity shall be the patentee. For a
non-service invention-creation, the right to apply for a patent belongs to the inventor. After the
application is approved, the inventor shall be the patent owner.
For an invention made by a person using the material and technical means of the entity, and where the
entity and the inventor have entered into an agreement under which there is provision on who has the
right to apply for a patent and to whom the patent right belongs, the provisions of the agreement shall
prevail.
For an invention jointly made by two or more entities or individuals, or made by an entity or
individual in the execution of a commission for another entity or individual, the right to apply for a
patent belongs, unless otherwise agreed upon, to the entity or individual that made the invention, or to
the entities or individuals that jointly made the invention. After the application is approved, the entity

or individual that applied for it shall be the patent owner.

Patent ownership is officially recorded in the SIPO, and can be assigned to another party and
recorded in the SIPO as such.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

After a patent is granted, any party may file a request for invalidation of the patent with the Patent Reexamination Board of the SIPO. The Boards decision can be appealed to the Beijing Intellectual
Property Court, the decision of which can be further appealed to the Beijing High Court. The Beijing
High Court decision is final. Therefore, patent invalidity is not a defence, nor a counterclaim in patent
infringement litigation. The court does not have initial jurisdiction over patent validity and a
defendant has to file a patent invalidation request with the Patent Re-examination Board.
Grounds for invalidity primarily include lack of patentability, failure to satisfy the enabling
requirements, claims not supported by specification or new matters included in amendment.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

The novelty requirement under the Chinese patent law is an absolute novelty requirement for
patentability. Exceptions apply if a patent application is filed within six months after one of the
following events:
where it was first exhibited at an international exhibition sponsored or recognised by the Chinese
government;
where it was first made public at a prescribed academic or technological meeting; or
where it was disclosed by any person without the consent of the applicant.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Under the Chinese patent law, inventiveness means that, as compared with prior art technology, the
invention has prominent substantive features and represents notable progress, whereas the utility
model has substantive features and represents progress. A design patent must not be identical to or
similar to any design that has been publicly disclosed anywhere in the world or has been publicly
used in China; must not be in conflict with any prior right of any other person; and must be
distinguishable from a prior design or combination of features of prior designs.

20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

There is no such legal concept or provision under Chinese law, and it is still unclear how the new
Anti-monopoly Law may apply in this area.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

There is a prior use defence where anyone who has made the identical product or used the identical
process or has made necessary preparations for making such a product or using such a process prior
to the date of filing of a patent, is not considered as infringing the patent. The defence covers all types
of inventions, and does not make a distinction between private use or commercial use. However, to
avoid infringement liability, the user shall continue making such a product or using such a process
only within the original scope.
There is another defence available the prior art defence. Where an accused patent infringer proves
with evidence in a patent infringement dispute that the technology or design it uses belongs to prior art
or prior design, it does not constitute patent infringement.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Under Chinese law, damages can only provide compensation to the patent owner for damage incurred
as a result of the infringement, as there are no punitive damages in patent infringement proceedings.
According to the Supreme Court, compensation for damage is calculated on one of the following
bases, which it is up to the plaintiff to choose:
the patent owners actual economic losses caused by the infringement;
the infringers total profits derived from the infringement;
one to three times the patent licence royalty; or
statutory damages between 10,000 renminbi and 1 million renminbi.
Damages start to accrue when the infringement of patent takes place. However, if the patent owner
brings a legal action against the accused infringer after the statute of limitation has expired, which is

two years from the time the patent owner knew or should have known about the infringing act,
whereas the infringing act continues, the patent owner may claim damages for the previous two years
prior to the filing of the legal action.
Because of the difficulties in obtaining evidence to support damage claims, damage awards vary
considerably and usually are not large.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Where a patent owner has evidence to prove that another party is infringing or it is imminent that
another party is to infringe its patent, and that if such infringing act is not stopped immediately it is
likely to cause irreparable damage to the patent owner, the patent owner may file a request for a
preliminary injunction against the accused infringer before filing a lawsuit under the Chinese patent
law. The Supreme Court has set up four tests for granting a preliminary injunction:
likelihood of success for the patent owner to prevail in patent infringement litigation;
irreparable damage that the patent owner would suffer without the preliminary injunction;
security provided by the patent owner; and
public interest considerations in granting the preliminary injunction.
If the court rules to grant the request for a preliminary injunction, the requested party may ask the
court to reconsider its ruling within 10 days after receiving the ruling. Where the court grants the
request for a preliminary injunction, the patent owner is required to file a formal lawsuit with the
court within 15 days, or the preliminary injunction would be revoked.
If infringement is found by the court, the patent owner is entitled to a final injunction against future
infringement. Generally, an injunction is effective against the infringer only.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

There are two possible ways to block the importation of infringing products into the country. One is
to file a lawsuit with a court or file a request with the AAPA requesting an injunction to block the
importation.
The other way is to block the importation through the customs offices. Generally, a patent owner may
register its patent with the General Administration of Chinese Customs. If a local customs office finds
suspected infringing products, it will detain the goods and inform the patent owner, who can choose
to request protection. Customs would then conduct an investigation of the suspected infringing
products and make a decision on whether the goods are infringing within 30 days. If a positive
decision is made, the products are confiscated by customs. Alternatively, based on its own evidence
and information, the patent owner may request a local customs office to take action against suspected
infringing products.

25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The Chinese patent law provides that reasonable expenses that a patent holder has incurred for the
purpose of enforcing its patent against infringement shall be included as part of the amount of
damages. Thus, a patent owner may request disbursement for costs incurred in preparing for and
conducting the infringement proceedings, such as investigators fees and costs for purchasing
infringing samples. A court will usually examine the necessity of the expenses and the proportion of
the patent owners claims upheld by the court, and make a decision on the cost. The patent owner may
also request the award of attorneys fees, but no significant amount of attorneys fees, which usually
are in the range of 10,000 renminbi to 30,000 renminbi, have been awarded by the courts so far.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Under Chinese patent law, there is no such concept as wilful infringement.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The statute of limitation is two years from the time when the patent owner knew or should have
known of the infringing act.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Patent marking is not required by Chinese patent law, and therefore failure to do so brings no negative
consequences as far as enforcement of the patent is concerned.
There are generally two types of false patent marking as provided under Chinese law. Counterfeiting
anothers patent and falsely marking a non-patented product or process as a patented one.
Counterfeiting the patent of another person is subject to civil liability, administrative penalty and
possibly criminal sanction of up to three years in prison. Falsely marking a non-patented product or
process as a patented one is subject to administrative penalty.

Licensing

29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are restrictions on patent licensing agreements under Chinese law with respect to terms that
may, for instance, illegally monopolise technology, impair technological advancement or infringe on
the technology of a third party.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The SIPO may, upon the request of a party who is capable of exploiting an invention or utility model,
grant a compulsory licence to the party under the Chinese patent law in the following two
circumstances for the purposes of exploiting a patent for invention or a patent for utility model:
where a patent owner fails, within three years from the date of a patent being granted and four years
from the date of a patent being filed, to exploit or sufficiently exploit the patent without any justified
reasons, the SIPO may grant a compulsory licence to exploit the patent upon request by an entity or
individual who cannot obtain a licence with reasonable terms within a reasonable period; or
where exploiting a patent by the patent owner is legally determined to be a monopoly act, the SIPO
may grant a compulsory licence to exploit the patent upon request by an entity or individual who is
capable of exploiting the patent so as to eliminate or mitigate the adverse effect on competition.
In addition, where an invention or utility model for which a patent has been granted involves an
important technical advance of considerable economic significance in relation to another invention or
utility model for which a patent has been granted earlier and the exploitation of the later invention or
utility model depends on the exploitation of the earlier invention or utility model, and where the later
patent owner has not been able to obtain a licence agreement on reasonable terms from the earlier
patent owner, the SIPO may, upon request, grant to the later patent owner a non-exclusive compulsory
licence with no right to sublicense. The SIPO may then, also upon request, grant a compulsory licence
to the earlier patent owner to exploit the latter invention or utility model.
If a national emergency or any extraordinary state of affairs occurs, or if the public interest so
requires, the SIPO may grant a compulsory licence on its own initiative under the Chinese patent law.
Also, for the purpose of public health, the SIPO may grant a compulsory licence to manufacture
patented pharmaceuticals and export them to eligible countries or regions in accordance with related
international treaties to which China is a member.
There are also restrictions on compulsory licences: where a compulsory licence is granted relating to
semiconductor technology, the exploitation of the patent shall be limited to when it is in the public
interest or when there is a legally determined monopoly; and if a compulsory licence is granted, the
exploitation of the patent shall be predominantly for the supply of the domestic market, except where
it is for public health purposes or where there is a legally determined monopoly.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A patent for an invention is granted approximately two-and-a-half to three years from the date of
filing a patent application, while patents for utility models or designs are granted approximately one
year from the date of filing a patent application.
It is difficult to provide an estimation of the cost since it varies significantly in each case. The costs
may depend on factors such as the complexity of the case and the actions of the Patent Office.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There is an expedited patent prosecution procedure. Path Prosecution Highway (PPH) is now
available to foreign applicants, depending on the treaty between the foreign country and China. The
substantive examination can be conducted on the basis of claims as allowed or granted in the foreign
country, or the prospect claims as indicated in the international phase of the PCT application. A first
office action can be received within a few months from the date the application for PPH is approved.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The application for a patent for an invention or a patent for a utility model is required to state the title
of the invention or utility model, and to disclose the following:
it must specify the technical field to which the technical solution for which protection is sought
pertains;
it must indicate the background art that can be regarded as useful for the understanding, searching
and examination of the invention or utility model and, when possible, cite the documents reflecting
such art;
it must disclose the technical problem the invention or utility model aims to settle and the technical
solution adopted to resolve the problem, and state, with reference to the prior art, the advantageous
effects of the invention or utility model;
it must briefly describe each figure in the drawings, if any; and
it must describe in detail the optimally selected mode contemplated by the applicant for carrying out
the invention or utility model; where appropriate, this shall be done in terms of examples, and with
reference to the drawings, if any.
The Patent Examination Guidelines 2010, issued by the SIPO, are to be followed in deciding what to
include in the application.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

Although patent applicants are required under Chinese patent law to submit pre-filing date reference
materials when they request substantive examination on the applications, in practice the applicants
are required to do so only when the SIPO requests it.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

One or more divisional applications may be filed to pursue additional claims to an invention
disclosed in its earlier filed application at the time when the parent case is pending or within two
months from the receipt of the notice of allowance issued on the parent case.
A further divisional application may be derived from a pending divisional application only when the
parent application is pending, or the unity issue is raised during the prosecution of the pending
divisional application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The SIPO decision on a patent application can be appealed to the Patent Re-Examination Board under
SIPO, whose decision can be further appealed to the Beijing No. 1 Intermediate Court. The court
decision can be appealed to the Beijing High Court, whose decision is final.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Once a patent is granted by the SIPO, any party may file a request for invalidation of the patent before
the Patent Re-Examination Board. The Boards decision can be appealed to the Beijing Intellectual
Property Court. The court decision can be further appealed to the Beijing High Court, whose decision
is final.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The first-to-file system is adopted under Chinese patent law.

39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The SIPO does not provide procedures for modifying or re-examining a patent, but provides
procedures for invalidating a patent. In patent invalidation procedures before the Patent Reexamination Board of the SIPO, patent claims may be amended by combining claims, deleting claims
or deleting technical solutions. However, if the Board decision is appealed to the court, patent claims
may not be amended in administrative litigation.
40 Patent duration

How is the duration of patent protection determined?

The duration of a patent for invention is 20 years. The duration of a patent for a utility model and a
patent right for designs is 10 years, counted from the date of filing.

Update and trends

The most significant recent development was the establishment of intellectual property courts in
Beijing, Shanghai and Guangzhou in late 2014, where all the local IP divisions of intermediate courts
were merged into the IP court, which has exclusive jurisdiction over IP cases, including patent cases,
in the region. The Guangzhou IP Court has jurisdiction over IP cases in the whole of Guangdong
Province. Consolidating all the IP cases in different intermediate courts into a single IP court makes it
easy for litigants and makes litigation management procedures easier. Hopefully, the IP courts will
also bring about significant and substantive improvements in the enforcement of IP laws in practice.

Jianyang (Eugene) Yu

eugeneyu@liu-shen.com

Hanhai Plaza, 10th Floor

10 Caihefang Road
Haidian District
Beijing 100080
China

Tel: +86 10 6268 1616

Fax: +86 10 6268 1818
www.liu-shen.com

Colombia
Carlos R Olarte, Andrs Rincn and Catalina Jimnez
OlarteMoure
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

A patent holder may pursue civil or criminal actions either to stop or to prevent infringing acts.
Before the Civil Procedure Law was reformed in 2012, there were no specialised courts. However,
this amendment granted the Colombian Patent Office (CPO) with jurisdiction over infringement cases
through an independent Judicial Division. Accordingly, civil actions may now be pursued before
civil circuit judges or before the CPO; while criminal actions may be pursued before a specialised
unit for intellectual property affairs (criminal infringement actions are rare). If the infringer is a
public servant or a government entity the patent holder must file a lawsuit before the contentious
administrative jurisdiction. Please note that the CPO has become the principal venue to litigate
infringements as a civil matter since it has proven to be a very effective and reliable way to enforce a
patent infringement.
2 Trial format and timing

What is the format of a patent infringement trial?

Civil patent infringement trials start with the filing of a complaint, normally seeking preliminary
injunctive relief. If injunctive relief is requested, the complaint is not notified to the defendant until
the decision to grant the injunctive relief is taken ex parte. The defendant may eventually file a
reconsideration action against the grant for injunctive relief, and can suspend the effects of the
injunction while the appeal is pending by posting a counterbond. Considering that invalidity cannot be
contested during the infringement process, cases are typically settled once a preliminary injunction
issues. The trial procedure has the following stages in the following order:
lawsuit;
preliminary injunctions;
service;
reply to the lawsuit by the defendant;
conciliation hearing;
evidence gathering period;

 closing arguments;
mandatory prejudicial interpretation of applicable Andean law before the Andean Court of Justice
(ACJ); and
final ruling.
At present, Colombia is experiencing a transition from a written procedure to an expedited oral
procedure. Therefore, if the court has the resources to implement the oral procedure (which is
happening gradually but very slowly in civil circuit courts but is already implemented in the CPO
Judicial Division) the procedure might be shortened and has the following stages:
preliminary injunction request;
preparation and filling of the complaint;
admission and service of process on the defendant (alleged infringer);
reply to the lawsuit by the defendant;
conciliation hearing, the evidence gathering process and oral closing arguments;
mandatory prejudicial interpretation of applicable Andean law before the ACJ; and
final ruling.
A standard infringement case under the oral procedure may take anywhere from one to three years to
reach a final ruling. This estimate has had reduced since the Colombian Patent Office is conducting
trials over infringement cases.
The following types of evidence are admissible:
witness testimony;
expert opinions provided by party;
expert opinions ordered by the judge and presented from an assistant of the Justice Department;
site inspections; and
requests for production of documents.
Affidavits are admissible, but the witness will most probably be ordered to provide oral testimony in
order to provide the defendant with the opportunity to cross-examine the witness and controvert its
conclusions. Criminal trials are restricted to natural persons, are essentially accusatory and almost
completely oral in nature.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof to demonstrate civil infringement for product patents lies on the plaintiff and the
standard is clear and convincing. This burden is reversed for procedural patents, and where,
assuming a lowered evidentiary threshold is met by the plaintiff (essentially that a substantial
probability that the allegedly infringing process is in fact infringing), the defendant must demonstrate
that its accused process is different from the patented one (article 240 of Andean Decision 486). The
burden of proof to demonstrate criminal infringement for any patent is beyond a reasonable doubt.
Any grounds for patent unenforceability must be proven by the defendant, based on a clear and
convincing standard. The burden of proof to demonstrate invalidity is carried by the plaintiff (the
party seeking to invalidate the patent), who must show the patent office erred when granting the
patent, based on a clear and convincing standard.

4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Legal standing to sue for patent infringement cases is limited to the titleholder or any of the co-owners
of the patent (individually and severally) unless otherwise agreed. Although extremely rare and not
specifically contemplated under Colombian local practice, whenever a patent infringement action has
not yet been filed by the patent holder, a potential infringer may request a civil judge to declare that
its conduct does not infringe a particular patent. Beyond a general perceived threat, there is no
specific conduct that must be alleged or shown in order to have standing for such declaratory action.
5 Inducement, and contributory and multiple-party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Colombian IP law (Andean Decision 486) does not specifically contemplate the figure of inducement
or contributory infringement. There is likewise no case law on this point. However, article 238 of
Andean Decision 486 provides that a patent holder may seek protection against acts that present the
imminence of infringement. Under a broad interpretation of imminence, a patent holder could argue
that acts of inducement present a high risk of infringement and hence could be stopped. Multiple-party
infringement of a single claim is not specifically contemplated, nor is there case law on point.
However, as noted in the prior paragraph, it is possible that a broad interpretation of article 238 may
allow the patent holder to pursue different actors that may be contributing in a concerted fashion to
materialise the infringement.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The plaintiff may join various infringers in a single complaint, insofar as they share same corporate
or commercial relationship in the infringing conduct and the conduct is related to the violation of the
same patent or patents (in view of article 52 of Decision 486). In a recent case a patent holder filed a
patent infringement lawsuit against various companies comprising a joint venture that collectively
used a patent-protected invention. The lawsuit named all the companies as defendants.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

By means of Territoriality Rule, the scope of patent protection is limited to the territory of the state
where the right is granted. Regardless of this principle, a Colombian court may prevent the
importation of infringing products, even if they were manufactured outside of Colombia. Similarly, a
Colombian court may prevent the importation of a product directly resulting from a patented process
in Colombia, even where such a process occurred outside of Colombia. In both cases, if there is
evidence of infringing activity outside of Colombia it is useful to obtain a preliminary injunction in
Colombia and prevent importation.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Andean Decision 486 does not specifically contemplate the doctrine of equivalents. There is,
likewise, no case law on the point. At best, a plaintiff may seek a broad interpretation of the terms in
the claim. The patent specification, drawings and examples may be used to interpret the scope of the
claim as granted.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Colombian procedural law provides pre-litigation evidence preservation mechanisms such as

preliminary injunctions seeking to preserve a given document or the lien of a given product or goods
that may serve as further evidence of any sort of conduct or fact. It is also possible to request prelitigation discovery motions for site inspections, document production or depositions, witness
testimonies or expert opinions. There are also broader evidence gathering requests that can be made
once a complaint is filed. Both pre-litigation and post-complaint evidence gathering may be requested
outside Colombia. Failure to comply in certain cases will allow the court to draw adverse inferences.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

According to official statistics published by Chief of the Jurisdictional Department at the CPO in
2014, a standard patent infringement case litigated before the CPO may take from five months to one
year to reach a first-instance decision. A second-instance decision may take approximately two more
years. Preliminary injunctions are available and may be obtained anytime between six to 15 days if it
is requested before the CPO. This shows a considerable decrease in the time spent over an
infringement process compared with the timing for the same action some years ago.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of prosecuting an infringement lawsuit vary depending on the complexity of the case and are
normally invoiced on an hourly basis. Excluding the invalidity portion, it is reasonable to budget for
an average case anywhere between US$150,000 and US$400,000 over a four-year period. If the case
is settled after a preliminary injunction, the amount would be reduced to approximately US$75,000
spread out over a year. The cost of an invalidity suit will vary greatly depending on the amount of
evidence that requires processing and also on the complexity of the case. A prudent budget would
range between US$200,000 and US$500,000 over a six-year period.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The parties may appeal an adverse infringement decision issued by a trial court before a superior
court. Infringement cases, by petition of a party, may eventually be selected to be heard by the
Supreme Court. Invalidity suits are single-instance procedures and no appeals are available.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

IP rights are a legitimate exception to free-market rights. Patent rights, however, are not absolute
rights and are limited to the scope of the claims as granted. In that sense, for example, making an
unduly broad interpretation of the granted claims could be interpreted by the defendant as an abuse of
IP rights, providing an alleged infringer with legal standing to seek relief relying on unfair
competition arguments. From an antitrust perspective, if the patent holder has a dominant position in a
relevant market, an abusive exercise of its patent rights could be taken as an abuse of dominant
position. To the best of our knowledge, neither the courts nor the antitrust authorities have issued a
decision on this issue.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Disputes regarding patent infringement or patent unenforceability may be resolved by conciliation,

mediation or arbitration. However, invalidity issues are, for the time being, not considered the
subject of local ADR mechanisms because they are considered exclusive subject matter for the
Council of State.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

As a general rule and pursuant to the TRIPS Agreement, Colombian authorities have to provide patent
protection for inventions in all fields of technology (article 14 of Decision 486). However, there are
certain limited exceptions to that rule either in the form of subject matter that is not considered an
invention (article 15 of Decision 486) or that is excluded from patentability (article 20 of Decision
486). Business methods are not considered inventions and medical procedures are expressly
excluded from patentability. Software as such is not considered an invention. However, computer
implemented inventions are patentable insofar as they provide a technical contribution. According to
the position of the ACJ and article 21 of Decision 486, use and second-use claims are not patentable
subject matter, not even if drafted in Swiss-type style.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The right to a patent belongs to the inventor (individual) and may be transferred to third parties by
written assignment or succession in title (to an individual or a corporation). There is a presumption of
assignment for inventions developed within the framework of an employment relationship or
performed by an independent contractor. However, the inventor must still assign the invention to the
employer or contractor. Regarding multiple inventors, they shall share the right to patent the invention
in the same proportion unless otherwise agreed. This is also the case for patent ownership for joint
ventures. The patent is granted jointly to each company constituting the joint venture in the proportion
previously agreed on. As a joint venture is not considered a legal person, it may not be holder of a
patent right (article 22 of Decision 486). Any of the companies in a joint venture may initiate a patent
infringement lawsuit against third parties, regardless of the percentage of the patent held (article 238
of Decision 486). Patent ownership is officially recorded and transferred when the assignment
document from the inventor to the applicant is filed with the patent application.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Invalidity does not provide grounds for a defence within an infringement case. Instead, the defendant
in an infringement action must bring a separate lawsuit (annulment action) against the CPO before the
Council of State seeking to invalidate the patent and requesting the joinder of the patent holder as an

interested third party. The Council of State is the highest court charged with reviewing the legality of
administrative acts. A decision in an annulment action is taken in a single instance procedure with no
appeal available. The purpose of the invalidity complaint is to demonstrate that the Resolution that
granted the patent was issued in violation of the Colombian Constitution, Decision 486 or any
procedural or substantive Colombian Law.
According to the new Colombian Administrative Procedural Code (Law 1,437 of 2011, in force from
2 July 2012), a typical annulment action for a patent case involves:
filing of the complaint;
admission and service on the defendant (CPO) and the interested third (the patent holder);
formal reply by the CPO and the patent holder;
preliminary hearing, comprising agreement on the facts to be litigated and the opening of the
evidence gathering stage;
evidence gathering process;
evidence hearing (up to 15 consecutive days);
closing arguments hearing;
mandatory prejudicial interpretation of applicable Andean law before the ACJ; and
final ruling.
With the exception of the complaint and reply, the foregoing procedure is almost completely oral in
nature and intended to last less than one year (as opposed to the present five to eight years). Given
that the procedure has just been implemented, there is no experience to confirm if the one-year time
period is realistic. However, conventional wisdom suggests this time frame is entirely unreasonable
and we believe that the overall procedure will actually last anywhere between two and four years
depending on the complexity of the case, the amount of evidence that has to be gathered and, of
course, the usual court backlog.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement. An invention is novel when it is not included in the prior
art. The prior art includes any public worldwide disclosure, including any written or oral
description, use, offer for sale or sale before the claimed priority date. Solely for the purpose of
determining novelty, the content of an earlier patent application pending before the CPO shall also be
considered part of the prior art, provided that the said content is included in the earlier application
when published or after 18 months from filing or priority date have passed. The applicant is provided
with a 12-month grace period counted from the priority date for any disclosure of the contents of the
patent, providing that the disclosure was attributable to:
the inventor or the inventors assignee;
a competent national office that publishes the contents of a patent application filed by the inventor or
the inventors assignee in contravention of the applicable law; or
a third party who obtained the information directly or indirectly from the inventor or the inventors
assignee.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

A patentable invention must involve an inventive step, that is, it cannot be deemed obvious or
evidently derived from the prior art by a person ordinarily skilled in the art. Inventive step in
Colombia is usually assessed by means of a problem-solution approach. Additionally, evidence of
unexpected or surprising results, as well as secondary indicia of non-obviousness (such as the
solution of an unresolved need in the art, the existence of contrary teachings in the art, etc), may be
persuasive to rebut a prima facie case of obviousness.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent can be deemed unenforceable regarding acts carried out privately and for non-commercial
purposes, for experimentation, for the purposes of teaching, for scientific or academic research or
when the patent protects biological material (article 53 of Decision 486). Further, a patent can be
deemed unenforceable in cases of international exhaustion of rights (article 54 of Decision 486).
Finally, Colombia recently implemented a regulatory submission exception throughout (Decree 729 of
2012) allowing third parties to use the subject matter of a subsisting patent to generate the information
necessary to support an application for the marketing approval of a pharmaceutical product under the
condition of it not being made, used, sold, offered for sale or imported into the territory, other than for
the purposes of meeting marketing approval requirements.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

The rights conferred by a patent may not be asserted against a third party that, in good faith and before
the priority date or the filing date of the application on which the patent was granted, was already
using or exploiting the invention, or had already made effective and serious preparation for such use
or exploitation. This defence covers all types of inventions and the said third party has the right to
start or continue using or exploiting the invention, but that right may only be assigned or transferred
together with the business or company in which that use or exploitation is taking place (article 55 of
Decision 486).

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Article 243 of Decision 486 provides the plaintiff with a variety of alternatives to calculate the
compensation to be paid for damages, including:
lost profits and actual damages;
unjust enrichment; or
reasonable royalty.
Very few cases get to the damages stage (a preliminary injunction is often enough). Punitive damages
are not available. Attorneys fees as set by the national bar are available for the winning parties.
Obviously, a patent holder may recover damages for acts of infringement occurring after the date of
grant. The patent holder also may, additionally and once the patent is granted, recover damages for
pre-issuance acts of infringement occurring after the date of publication (article 239 of Decision
486). Effective since mid-2012, the new General Procedure Code determined a provision whereby a
claimant seeking to be granted monetary remedies must include a reasonable estimate of the amount of
the damages with the complaint.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

The patent holder may request a court to grant injunctive relief to stop or prevent an infringement from
occurring. This relief may consist of, among others, the following:
an order to seize infringing activities;
the seizure of all infringing products;
the suspension of the importation or exportation of the infringing products;
the establishment of a bond; and
the temporary closure of the business belonging to the defendant, if necessary to avoid the
continuation or repetition of the alleged infringement (article 246 of Decision 486).
The injunction may be requested and granted ex parte and requires the plaintiff to show title to the
patent, the existence of the patent and summary evidence of the infringement (normally an expert
attesting to the fact the allegedly infringing product or process reads on the claims). A bond must be
offered and posted to cover potential damages caused by the injunction should the plaintiff eventually
lose the case on the merits.
The defendant may eventually file a reconsideration action against the grant for injunctive relief, and
can suspend the effects of the injunction while the appeal is pending by posting a counter-bond. The
defendant may request the pierce of the injunction by evidencing that it results unnecessary.
Depending on the necessity, reasonableness and proportionality of the injunction, the judge may
decide to suspend it at any time. In most cases, a preliminary injunction will become final should the
plaintiff win on the merits. Injunctive relief, if properly requested, may extend to the infringers
suppliers and customers.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Importation is an act of infringement. Accordingly, it is possible to block the importation of infringing

products by requesting injunctive relief before a civil court (see questions 8 and 23).
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The successful litigant may recover attorneys fees by simply requesting the judge to order the losing
party to pay. However, in practice, the amount recognised by the judge does not correspond to the
true invoiced fees, but rather predetermined fees set by the national bar.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

No, there are no additional remedies available.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The time limit for seeking a remedy for patent infringement is two years counted from the date the
patent holder had knowledge of the infringement or, in any case, five years counted from the date the
last act of infringement occurred.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Neither Andean Decision 486 nor local regulation provides any regulation in relation to patent
marking.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Technology transfer agreements involving voluntary patent licences must not include provisions
limiting the right of experimentation, research and development of the licensee. These types of
restriction fall within the unenforceable clause types contemplated in the Common Regime for the
Treatment of Foreign Capital. Attempting to enforce such a clause could also run afoul of local
antitrust legislation (Decree 2,153 of 1992), forbidding, in general, any sort of illegal restriction of
access to a given market.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The CPO may declare compulsory licences (CLs) for the following reasons (article 61 et seq of
Decision 486):
lack of working: patent owners are obligated to exploit the patent either directly or through
authorised third parties. The standard for granting a CL under these grounds is unjustified lack of
working after three years following grant, or when exploitation is suspended for more than one year.
Potential licensees must first contact the patent owner and attempt to obtain a voluntary licence;
public interest, emergency and national security reasons: whenever public interest, emergency or
national security reasons are declared by the Colombian government, the CPO may open a CL public
bid over those patents subject to the prior declaration. Interested third parties meeting the terms of
reference established by the CPO may subsequently tender offers to obtain CLs. On 13 November
2008, the Colombian Ministry of Trade issued Decree No. 4,302 (later modified by Decree
4,966/2009) establishing a procedure for the declaration of public interest, providing each ministry of
the government with the authority to declare, after an investigation, the existence of a public interest
related to the subject matter under its jurisdiction. The declaration of a public interest might also take
place upon the request of interested parties;
abuse of dominant position: the Colombian antitrust authority, either ex officio or at the request of a
party, may grant CLs to correct practices previously declared as contrary to the exercise of free
competition, especially where they constitute an abuse by the patent owner of a dominant position in
the market; and
patent dependence (compulsory cross-licensing): the CPO shall grant a CL, upon request by the
owner of a patent whose exploitation necessarily requires the use of another patent, and where the
rightholder has been unable to secure a contractual licence to the other patent on reasonable
commercial terms. The dependent patent must claim an invention that constitutes an important
technical advance and of considerable economic importance over the senior patent.
Please note that, in addition to the reason listed above, article 68 of Decision 486 provides certain
relevant conditions which must be followed by the CPO at the time of declaring compulsory licences.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The patent prosecution usually takes, depending on the art section, approximately in between one to
three years. Colombia shall make its best efforts to process patent application expeditiously with a
view to avoiding unreasonable delays (article 16.9.6(b) of USColombia Free Trade Agreement).
The costs of filing, prosecuting and obtaining a patent will range, depending on the complexity of the
case and the amount of office actions, between US$2,500 to US$8,000 over the course of the
prosecution, including official and professional fees.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Neither Decision 486 nor local regulations provide accelerated procedure options. However, a
diligent prosecution practice may reduce the timeline of the application significantly, for example, by
requesting examination shortly after publication takes place, by modifying the application excluding
use claims, method of treatment claims, or any other non-patentable subject matter. It is also
convenient to interview examiners in charge of the case and discuss alternatives in order to expedite
prosecution. Likewise, PPH is considered as a way to speed up the examination process for
corresponding application filed in participating intellectual property offices which have agreed that
when an applicant receives final ruling from a first patent office where at least one claim is allowed,
the applicant may request fast-track examination of such as claim(s) in a corresponding patent
application that is pending in a second patent office. Colombia has agreed PPH with some patent
offices around the world such as USA, Japan and Spain.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Decision 486 requires the specification to include sufficient disclosure of the invention in order to
allow a skilled artisan to reproduce the invention and make clear the inventor was in possession of
the invention at the time the application was filed. Additionally, the description must contain the
preferred embodiment of the invention. There is no specific rule relating to disclosure occurring
during an international exhibition. There are certain examination guidelines that are commonly
applied by the examiners and relied upon by the applicants such as the Andean Patentability
Guideline, the CPO Internal Directive and the CPO Patentability Guideline. Please note that
examination guidelines are not binding.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

Applicants have the obligation to provide prior technology known to the applicant that would help
the invention to be understood and examined and references to previous documents and publications
that discuss the technology involved (article 28(b) of Decision 486). The foregoing has not been
interpreted by the CPO as a specific duty to disclose prior art that may be materially relevant to the
patentability of the invention.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

In general, amendments to the specification or claims are possible at any time during prosecution
before the issuance of a final resolution, as long as the said amendments do not extend the original
scope of the invention and find support on the specification (article 34 of Decision 486). Divisional
applications directed to material split out from the parent application are possible, as long as they are
filed during the pendency of the parent application. Divisional application practice must carefully
carve out claimed subject matter that will remain in other applications (article 36 of Decision 486).
Post-grant amendments to the specification are not possible; however, the applicant may limit the
claims.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Before seeking judicial review, the applicant may file a reconsideration action or a revocation action
in both cases pursuing to revoke, clear or modify the rejection of one or more claims. These actions
must be filed before the CPO against the adverse decision within five days following its notification.
If the CPO confirms its decision, the applicant may seek judicial review by filing an annulment action
against the Council of State within four months following the notification of the final resolution from
the CPO.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The Andean Community provides a pre-grant opposition system. Interested third parties may file an
opposition within 60 days following the publication of the application, which can be extended for an
additional 60-day term upon request. The CPO will consider the relevance of the opposition in the
framework of the examination and will take a final decision at the time of granting (that is, there is no
separate opposition procedure to delay the prosecution of the application). In addition, third parties
may also file observations providing arguments and evidence to the Patent Office at any time (for
example, even after the time to file an opposition has expired). However, unlike an opposition, the

Patent Office is not compelled to take this information into consideration.

38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Article 9 of Decision 486 establishes the right of priority in filing for a patent or registration on the
same subject matter. In case of priority disputes, the affected party may seek the transfer of the
pending application or the patent before the CPO, providing evidence of the prior right of the patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Post-grant limitation to the claims may be made before the CPO (article 70 of Decision 486). There is
no re-examination procedure available. A patent granted can only be revoked via an Annulment
Action before the Council of State. It is not possible for a court to amend the patent claims during an
infringement lawsuit.
40 Patent duration

How is the duration of patent protection determined?

Patents are granted for a 20-year period from the date on which the application was filed (for
conventional applications: article 50 of Decision 486) or from the international filing date (for PCT
National Phase applications: article 11.3 PCT). In this respect, please note that Colombian legislation
provides types of compensation to a patent holder for unreasonable delays (not including patented
pharmaceutical products), understood as more than five years from the filing date in the territory of
the party or three years counted from the date a request for examination of the application was made,
according to the established compensation standards listed via Decree 1,873 of 2014 which came
into force on 29 September 2014.

Update and trends

The CPO has adopted restrictive policies regarding extensive claim-drafting throughout patent
application practice (related to any patent product, including pharmaceutical patents). Limitations to
requested subject matter disclosed in patent applications are also very commonly applied by
examiners.
In January 2014, based on some specific recommendations made by the General Secretariat Office of
the Andean Community through a ruling opinion, the CPO published the New Guideline for

Examination currently applied by examiners and passed on to applicants. This Guideline brought in
two relevant amendments:
Kits are allowable if they correspond to a combination of known elements, which when combined
provide an unexpected solution to a technical problem (ie, synergy), which should be properly
supported. Additionally, claims reciting kits must have the following structure:
a pharmaceutical preparation or drug A in a defined quantity or ratio; and
a pharmaceutical preparation or drug B in a defined amount or proportion.
As for inventive step examination, the New Guideline provides an explicit recommendation for
examiners to apply the problem-solution approach in order to determine whether the inventive steps
requirement is fulfilled or not.
Since the CPO has reduced the number of substantive examinations (from three or even two to just
one per application) that form the basis on which the rejecting or granting decision is issued, the
revocation action has become a mandatory second instance to request re-examination, usually
reviewed by a different examiner, and a second opportunity to modify the claim set.
The CPO is currently establishing a Patent Prosecution Highway (PPH) policy. Under the PPH,
participating patent offices agree that when an applicant receives a final ruling from a first patent
office where at least one claim is allowed, the applicant may request fast-track examination of
corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
The CPO is pursuing fast-track examination procedures already in place among participating patent
offices (United States, Spain and Japan) to allow applicants to reach final disposition of a patent
application more quickly and efficiently than standard examination processing.

Carlos R Olarte

carlos.olarte@olartemoure.com

Andrs Rincn

andres.rincon@olartemoure.com

Catalina Jimnez

catalina.jimenez@olartemoure.com

Carrera 5, No. 34-03

Bogot 110311
Colombia

Tel: +57 1 601 7700

Fax: +57 1 601 7799

Carrera 43A, No. 1 Sur-31

Medelln 050021

Tel: +57 4 266 0392

Colombia

Fax: +57 4 266 0392

Cra 5 No. 80-58

Office 1103
Barranquilla 080020
Colombia

Tel: +57 5 3855099

www.olartemoure.com

Denmark
Claus Elmeros and Jens Viktor Nrgaard
Hiberg A/S
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

In Denmark, a patentee can enforce patent rights against a potential infringer by legal proceedings
either by filing for a preliminary injunction or by initiating a lawsuit at a competent court. Competent
courts are the Eastern or Western High Courts and the Maritime and Commercial Court. If any of the
parties requests the case to be heard by the Maritime and Commercial Court, the case will be heard in
this court.
A preliminary injunction is a fast and effective way of stopping infringing acts. Proceedings to obtain
a preliminary injunction can be initiated in the Bailiffs Court. A preliminary injunction will be
issued if the patentee can prove that the requested injunction relates to acts covered by its patent and
it is probable that infringement is taking place. If a preliminary injunction is issued, the Bailiffs
Court can assist the patentee to enforce the injunction by, for example, seizing goods suspected of
being used for infringing acts. However, once a preliminary injunction has been obtained, it must be
followed up by the main proceedings, usually before the Maritime and Commercial Court. The
Maritime and Commercial Court may order a permanent injunction, as well as payment of damages.
2 Trial format and timing

What is the format of a patent infringement trial?

Documents as well as affidavits and witness testimonies may be relied upon in a patent infringement
trial.
During both preliminary injunction and main proceedings, witnesses primarily give testimony in oral
form at an oral hearing. At the hearing, witnesses may be cross-examined by both parties. It is usually
also possible for parties to submit statements by witnesses during the written proceedings. However,
during written proceedings the other party is not generally allowed to examine the witnesses.
Witnesses are frequently called to substantiate the existence and extent of infringement.
Experts can be relied upon in preliminary injunction proceedings. In addition to this, court appointed
technical and patent experts may be used during the main proceedings.
In the Bailiffs Court one legal judge hears and decides the case. In the Maritime and Commercial

Court, typically, one legal judge and two technical judges, such as patent experts, hear and decide a
patent case.
Preliminary injunction trials in relation to patent infringement and other intellectual property rights
have, since July 2013, been heard by the Maritime and Commercial Court, which will have the
additional use of technical judges in preliminary injunction proceedings. However, the implementing
rules of this recent change are not yet finalised.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The patentee bears the burden of proof regarding the infringement. If the validity is challenged by the
defendant, the defendant bears the burden of proof regarding the invalidity claim.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

If he or she has permission, the patentee or a licensee may start an action before the court.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The Danish Patent Act specifies that no one except the patent proprietor may, without the consent of
the patent, exploit the invention by making, offering for sale or using a product or a method, subject to
the patent or a product being obtained by a method of the patent. A person who performs an act of
inducement or a contributory act for exploiting the invention in Denmark is, therefore, also liable for
patent infringement. This may also be the case for multiple parties if their practise together constitutes
an infringement as they may be held liable for patent infringement.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties may be joined as defendants in the same lawsuit. Parties whose joint activities
infringe the same patent can be suited in the same law suit, such as one defendant performing a
method and another defendant selling a product of the patent.

7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Principally, only activities performed in Denmark are subject to patent infringement in Denmark.
Nevertheless foreign activities having an effect in Denmark may be subject to a patent infringement in
Denmark.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The scope of the patent is defined by the claims. However, a product or a method that does not
literally include all of the features of the claimed invention of the patent may nevertheless still be
found to infringe the patent if the solution is found to be equivalent and the infringing product or
process serves the same purpose in substantially the same manner. To determine whether or not there
is an infringement of an equivalent product, the equivalence is assessed for the individual features to
determine if each of the features of a patent claim is infringed either literally or by a substantially
equivalent feature. Recent court decisions from both the Supreme Court and the Maritime and
Commercial Court have confirmed that a patent can indeed be infringed if equivalent features are
present and if the equivalent features solve the same problem and do not belong to prior art.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

If a party fails to produce evidence requested by the court, this failure to produce may be interpreted
in favour of the other party. But there is no requirement to produce evidence and show evidence to the
court.
At the request of the patentee, the Bailiffs Court may undertake an investigation in order to secure
evidence of infringement and the extent of infringement. This can be done only if it is probable that
infringement has taken place or will take place, and if there is reason to believe that evidence
regarding the infringement can be found in the location to be investigated. The investigation may
include all material presumed to be of relevance. If evidence of infringement is found, this may be
seized. A request for investigation will be declined if it is presumed that the damage or
inconvenience that would be inflicted is disproportionate to the patentees interest in the
investigation. In practice, the investigation is carried out by the bailiff, usually accompanied by one
or more impartial experts, and may be undertaken without prior notice. The patentee may also be
present at the investigation.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The average time for a patent infringement law suit in the Maritime and Commercial Court is about 21
months. If the decision of the court is then appealed to the Supreme Court, it may take another two to
three years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of patent litigation are case dependent. The costs for preparation of the case depend on the
complexity of the case and the difficulties in meeting the burden of proof of an infringement and on the
extent of potential invalidity arguments. The costs for taking a case through to a first instance decision
may be from 50,000 for a simple case to 450,000 or more for a complex pharmaceutical case. In
main proceedings the costs for a court-appointed technical expert opinion will be at least 10,000,
depending on the complexity of the case.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

A decision taken by the Maritime and Commercial Court is appealable to the Supreme Court. If the
decision also involves a counter suit concerning the validity of the patent, an appeal trial will involve
both the questions of infringement and validity.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In practice, it is very unlikely that a patent proprietor will be held liable for unfair competition. It is
possible that a patent proprietor could be charged for abuse of a dominant position. The Danish
Patent Act, however, does involve the possibility of issuing a compulsory licence.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Parties involved in a patent infringement dispute can settle the case by arbitration or mediation. The
Maritime and Commercial Court offers mediation but there is no specialised arbitration system for
patent conflicts in Denmark.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The types of protectable inventions in Denmark are the same as the inventions allowable under the
European Patent Convention. An invention in any field of technology is patentable if the invention
involves a technical feature. Whether or not this feature is new and inventive is another matter. This
means that software-implemented inventions are protectable, but methods of doing business are not.
Methods for treatment of the human or animal body by surgery, therapy or diagnostic methods are
excluded from patentability. This does not, however, prevent the protection of products for use in
relation to performing such methods.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

A company employee is obliged by law to assign his or her rights to an invention to his or her
employer for a reasonable remuneration.
If an independent contractor is to assign his or her right to an invention made under work for an
assignor, this should be regulated in the contract between the parties.
Inventions made by multiple inventors will be jointly owned by the inventors. Under Danish Law
there is no provision for regulating the co-ownership of the joint patent rights. This also applies to a
joint venture.
The ownership of a patent or patent application can be transferred by an assignment or an agreement
documenting the transfer. The transfer of ownership will be recorded in the Danish patent register by
the Danish Patent and Trademark Office (Danish PTO).

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

A granted Danish patent can be challenged in three different ways:

an opposition can be filed by a third party with the Danish PTO within nine months of the grant;
a request for re-examination can be filed with the Danish PTO by anybody, including the patent
proprietor, during the term of the patent; and
a nullification action can be filed before the Maritime and Commercial Court.

In all three cases, grounds for invalidity include patentability, novelty, inventive step, sufficiency,
added subject-matter and extension of protection after grant.
An opposition can only be filed in respect of a national Danish patent.
A request for re-examination and nullification actions can be filed in respect of the Danish part of a
granted European patent and in respect of Danish national patents.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Yes, Denmark follows the European Patent Offices (EPO) absolute novelty requirement. The only
exceptions are evident abuse that has occurred within six months before filing of the Danish patent
application and display of the invention at an official or officially recognised international exhibition
falling within the terms of the Convention of International Exhibitions. In respect of novelty and
exceptions,
Danish patent law is completely harmonised with the European Patent Convention.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Denmark follows EPOs standard for inventive step enshrined in the Problem-Solution approach.
This approach has been endorsed by the courts all the way to the Supreme Court and is generally
followed by the Danish PTO.
It is also possible to file an application for a utility model. A utility model must also be novel and
involve an inventive step. The Supreme Court has recently confirmed that the inventive step
requirement for utility models is lower than for patents, because the notional person of skill in the art
for utility models possesses less knowledge from neighbouring fields than the person of skill in the art
for patents.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

No, there are no inequitable conduct provisions in the patent law.

21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Yes, there is a prior use defence. The prior use defence applies to a party that uses or has made
significant preparations for using the invention prior to the filing date. The prior use defence covers
all types of inventions and is limited to commercial uses. The prior user right can only be transferred
to another legal entity by transfer of the whole legal entity.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The patent proprietor is entitled to reasonable compensation for having used a patented invention, as
well as compensation for additional damages. The patentee may also request the confiscation or
destruction of infringing products or machines or production equipment, or the surrender of the
infringing products. Penalties for wilful infringement in the form of fines or even imprisonment are
foreseen under Danish law, but rarely implemented.
Reasonable compensation for having used a patented invention, as well as reasonable damages and
reimbursement of any losses that the patentee has suffered because of the infringing act, must be
rewarded irrespective of whether the infringing act took place in good or bad faith. To determine the
amount of damages, issues such as lost revenue and the profits of the infringer are taken into account,
as well as market disturbance, including estimated future loss of sales and loss of goodwill. The
damages may also be cumulative, taking more issues into account. Compensation for having used the
patented invention may be based on the licence fee that the patentee could reasonably have charged on
the market. Punitive damages are not available in Denmark.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Both preliminary injunctions and permanent injunctions may be obtained. A preliminary injunction is
obtainable in the Maritime and Commercial Court acting as the Bailiffs Court. It must be followed by
a confirmatory action in the Maritime and Commercial Court where the injunction can be made final.
By a permanent injunction, it is possible to have products withdrawn from the market, such as
retailers, but not from consumers.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Importation of infringing products is specifically mentioned in the Danish Patent Act as an act of
infringement of a patent. Hence, importation can be banned by the court. Under EC regulations the
custom authorities can also be asked to seize imported products if there is a strong suspicion of a
patent infringement.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The decision of the court will include a decision on the costs and the principle is that the successful
party may obtain its costs from the losing party. The courts are generally conservative when awarding
costs and the costs awarded are typically less than the actual costs of the successful party. Court fees
can be fully refunded. Other justifiable costs may also be fully refunded, such as costs for courtappointed experts, expert reports and witness compensation. Patent attorney costs are normally not
refunded.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are provisions for fining and even imprisonment for a deliberate patent infringement, but these
provisions have not been used in patent cases.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

If a patent proprietor does not act within a reasonable time after an alleged infringement is detected
he or she may lose the possibility of obtaining a preliminary injunction.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

It is not a requirement to mark patented products in Denmark. However, it may be advisable to do so,
since this may inform a potential infringer of the patent protection.
If a patent proprietor marks his or her products or marketing materials, the Danish Patent Act requires
the applicant or proprietor to provide information on the status of the patent protection, if asked.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The Patent Act provides that a licensee cannot sub-license a patent without the consent of the patent
proprietor. A licensing agreement can provide the licensee a general right to sub-license.
Other than that, the Patent Act does not impose any restrictions on the terms of licence agreements.
However, EU legislation in European Commission Regulation (EC), No. 772/2004 of 27 April 2004
on the application of article 81(3) of the Treaty to categories of technology transfer agreements makes
certain restrictions that must be taken into account.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

If an invention has not been commercially used within three years of the grant and four years of the
filing, or if there is a general public need for practising the invention, any party can apply for a
compulsory licence. The terms are determined by the Maritime and Commercial Court. The Patent
Act also has provisions for granting a compulsory licence to a holder of a Plant Breeders Right if the
Plant Breeders Right requires a licence to a patent.
A compulsory licence can only be granted if the requester has attempted and failed to obtain a
voluntary licence.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The vast majority of patents granted with effect for Denmark are European patents. Following grant of
a European patent, the patent must be validated in Denmark within three months of the European grant
in order to take effect.
Denmark has acceded to the London Agreement concerning translation of European patents.
Validation is performed by filing a Danish translation of the claims and a translation of the
description into English or Danish. As most European patents are granted with an English text, only
the claims need to be translated.
The territorial effect of Danish national patents and the Danish part of a European patent differ.
A Danish national patent extends to the territories of Denmark, Greenland and the Faroe Islands. A
Patent Cooperation Treaty-based national Danish patent extends to the territories of Denmark and

Greenland. The legal situation with respect to the Faroe Islands is uncertain as the Faroese parliament
has not approved patent legislation for decades.
A Danish part of a European patent extends to Denmark.
For technologies relating to mining and fishing, applicants are often advised to file a Danish patent
application or enter the Danish national stage following a Patent Cooperation Treaty (PCT)
application.
The pendency times for a Danish application filed at the Danish PTO varies according to the
technical field as do the costs associated with prosecution. The filing fees at the Danish PTO are very
low, only approximately US$550, which includes filing, search and examination of up to 10 claims.
For additional claims, the fee is US$55 per claim. A first office action is usually issued within six to
eight months of a first filing.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

A pending European patent application can have effect for Denmark. An applicant can file a request
for entry into the programme for accelerated prosecution of European patent applications at any stage.
No fee and no reasons need to be given.
The Danish PTO also accepts reasoned requests for acceleration of examination. Reasons can include
infringement and licensing negotiations.
In proceedings before the Danish PTO, examination can be accelerated under the Patent Prosecution
Highway (PPH). The Danish PTO has signed PPH agreements with Canada and Korea (only national
patents) and China, Israel, Japan, Russia and the United States (both national and as PCT authorities).
Based on a granted patent in any of these countries or based on a positive evaluation of any of the
PCT authorities the prosecution of an equivalent Danish patent application can be accelerated. No fee
must be paid.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The requirements for the contents of a patent application are the same as for a European patent
application. Consequently, a patent application must contain claims, a description and an abstract.
Drawings can be used if required.
As a consequence of Denmarks accession to the London Agreement, a national Danish patent
application can be filed and examined in Danish and English. Upon grant of an English language
patent, the claims must be translated into Danish.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

No.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

An applicant is entitled to file a divisional application based on a pending Danish patent application.
The divisional application must concern an invention that was disclosed in the parent application as
filed.
A divisional application can be filed as long as the parent application is pending. A parent
application is regarded as pending if it has been refused or is deemed withdrawn, as long as the
timeline for appeal or further processing has not expired, whether an appeal or request for further
processing is filed or not.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Adverse decisions by the Danish PTO can be appealed to the Board of Appeal for Patents and
Trademarks. An adverse decision by the Board of Appeal for Patents and Trademarks can be
appealed to the Maritime and Commercial Court and from there to the Supreme Court.
In proceedings before the Danish PTO and the Board of Appeal for Patents and Trademarks the
parties can be represented by a Danish patent attorney. In proceedings before the courts the parties
must be represented by an attorney at law.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

In addition to the possibilities mentioned under question 17 (post grant proceedings), it is possible to
file a third party observation by bringing certain materials to the attention of the examiner. Third party
observations can concern all aspects of patentability.
Observations can be filed in respect of patent applications and Supplementary Protection Certificates.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The right of priority belongs to the first applicant (first to file). The contents of the priority document
can be cited against a later application for purposes of novelty. In the unlikely event that two
applications for the same invention are filed on the same date, both will proceed to grant as if the
other did not exist. There are no legal provisions for resolving a case like this by the courts.
If an application has been filed by an applicant who is not entitled to the application, a third party can
file evidence of this to the Danish PTO. The third party can request transfer of the application, in
which case the application cannot be refused, granted, abandoned or withdrawn until the ownership
has been settled. Any ownership resolution will have to be decided by the Maritime and Commercial
Court.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

See question 17.

The courts can uphold patents in an amended form in the same way as the opposition divisions of the
EPO. This practice has recently been confirmed by the Maritime and Commercial Court. The patent
proprietor can file one or more auxiliary requests and argue these before the court. In the end, the
court will decide which, if any, auxiliary request to uphold.
40 Patent duration

How is the duration of patent protection determined?

The patent term is 20 years from filing. If priority is claimed, the patent term can be up to 21 years
from the priority date. Maintenance of the patent is subject to payment of annuity fees.
In addition, a Supplementary Protection Certificate can be granted in respect of approved drugs and
plant protection products (herbicides, insecticides and fungicides) subject to regulatory approval. An
SPC can extend the protection on the approved product by up to five years.

Claus Elmeros

cel@hoiberg.com

Jens Viktor Nrgaard

jvn@hoiberg.com

Store Kongensgade 59A

Tel: +45 33 32 03 37

1264 Copenhagen K
Denmark

Fax: +45 33 32 03 84
www.hoiberg.com

Ecuador
Mara Rosa Fabara Vera
Fabara & Compaa Abogados
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Industrial property in Ecuador, including patents, is mainly governed by the Andean Community
Commissions Decision No. 486 (Decision 486) and the Ecuadorean Intellectual Property Law. In
accordance with the Andean Community Court of Justice Foundational Treaty, the former prevails
over the latter. Moreover, this court has interpreted that Andean Community legislation even prevails
over international treaties that its member countries have signed.
Under Ecuadorean legislation, a patentee is entitled to file administrative, civil and criminal actions
in the case of an infringement of its rights (Intellectual Property Act, article 288). There are no
specialised courts in Ecuador for patent matters.
A patentee can bring a civil lawsuit in cases of actual or imminent infringement (Decision 486, article
238). Until the new judicial system created in 2009 is implemented, civil proceedings are held before
a contentious administrative court. The venue is determined based on the defendants domicile. At the
patentees discretion and prior to or at the time of filing the complaint, preliminary injunctive
measures can be requested and ordered by a civil judge. Such measures can also be requested and
ordered during litigation (Decision 486, article 245).
Administrative proceedings take place before the National Bureau of Industrial Property (DNPI) of
the Ecuadorean Institute of Intellectual Property (IEPI). These proceedings are limited to the grant of
preliminary injunctive measures and the imposition of a penalty (Intellectual Property Act, article 332
et seq). No damages are available under these proceedings.
Criminal proceedings commence with an investigation stage held at the General Prosecution Office of
Ecuador. A criminal judge is in charge of the accusation stage and a criminal court of the sentencing
stage.
2 Trial format and timing

What is the format of a patent infringement trial?

There are no jury trials in Ecuador. Patent infringement lawsuits are afforded an expedited (summary)
procedure, where the response to the complaint is made orally during a conciliation hearing the court

schedules after the complaint has been served, and where the terms are shorter than those applicable
to ordinary proceedings (Intellectual Property Act, article 297).
Confessions, public and private documents, witness testimonies, judicial inspections and expert
opinions are among the admissible evidence. Cross-examination of witnesses is allowed (Intellectual
Property Act, article 299). Expert opinions are particularly relevant for determining the scope of
protection and whether the allegedly infringing product falls within such scope. Experts who issued
their opinions can be requested to provide further information during a hearing the court shall
schedule at a partys request (Intellectual Property Act, article 300). Importantly, at a partys request
the court is mandated to ask the IEPI to appoint an expert (Intellectual Property Act, article 317). In
addition, the court is allowed to order an exhibition of the evidence under the control or in the
possession of any party to the case. If the party fails to exhibit the evidence, the court may decide
based on the information provided by the other party (Intellectual Property Act, article 302).
Patent infringement lawsuits typically last between two and five years.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof for establishing infringement rests, in principle, upon the plaintiff (Civil
Procedure Code, article 113). The burden shifts to the defendant in the case of a patent covering a
process for obtaining a product, where the defendant bears the burden of proving that the process
used for obtaining the product is different from the patent-protected process. For this purpose, any
identical product produced without the patentees consent is presumed, unless there is contrary
evidence, to have been obtained through the patented process, if one of the following conditions is
met:
the product obtained by means of the patented process is a new product; or
there is a substantial likelihood that the identical product was manufactured through the patented
process and the patentee is unable, despite reasonable efforts, to determine the process effectively
used (Decision 486, article 240).
The burden of proof for establishing invalidity is borne by the defendant (Civil Procedure Code,
article 114).
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Only patentees, namely, owners of granted patents, and their successors in title are entitled to bring a
lawsuit for patent infringement. Any assignment of rights in a patent must be made in writing and
recorded with the IEPI to be effective against third parties (Decision 486, article 56; Intellectual
Property Act, articles 280 and 281). Importantly, in cases of co-ownership, any co-owner can file for
infringement without the other co-owners consent, unless otherwise agreed upon (Decision 486,
article 238).

There are no special proceedings for an accused infringer to obtain a ruling or declaration (namely,
non-infringement) on the accusation.
Such a ruling or declaration might be made by a civil judge under ordinary proceedings (Civil
Procedure Code, article 59).
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Even if the applicable statutes are silent on the issues of inducement and contributory infringement,
the Andean Community Court of Justice (see case Nos. 27-IP-2010 and 115-IP-2010) has
distinguished between direct, indirect and contributory infringement. Quoting a leading treatise, the
court explained that direct infringement occurs when a person uses or sells the patented invention
without the patentees consent. Indirect infringement occurs when a person induces another to
illegally use or sell the patented invention. Contributory infringement occurs when a person sells or
provides elements to the direct infringer in situations where the sole or main possible use of such
elements is in the context of the patented invention.
In this regard, it is important to note that Ecuadorean internal legislation provides that delivering or
offering media for putting into practice the patented invention, or any other act aimed at making the
whole patented invention or a part thereof available to the public, constitutes infringement
(Intellectual Property Act, article 149).
In respect of multiple party infringements, there are neither specific provisions nor case law on the
issue.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit. This is possible when the
accusation involves the same act, contract or obligation, or that it has the same origin. Two or more
persons cannot be sued when their rights or actions are different or have different origins (Code of
Civil Procedure, article 72).
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities outside the territory of Ecuador escape from the jurisdiction of its judges and authorities.
Therefore, they do not support a charge of patent infringement.
Infringement requires manufacturing, offering for sale, selling or using a patented invention in

Ecuador, importing a patented invention into Ecuador or carrying out a patented process in Ecuador
without the patentees consent. The unauthorised offer for sale, sale, use or import of a product
directly obtained by a patented process is an act of infringement, even if the process is carried out
abroad (Decision 486, article 52).
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The doctrine of equivalents to protect the patent owner against infractions that are not identical to
patent claims is not applied in Ecuador. Decision 486 in its article 51 establishes that the scope of
protection granted by the patent will be established by the tenor (text) of the claims. According to the
dictionary of the Royal Academy of the Spanish Language, tenor means the literal meaning of a
communication or sentence. Thus, the patent only protects the owner against products or procedures
that literally reproduce or develop the claims. However, there is no standard or jurisprudence that
expressly regulates the theory of equivalences in Ecuadorean law.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

In cases of infringement or possible infringement, a patentee is entitled to initiate administrative

proceedings by applying for the adoption of an inspection or a request of information, or both
(Intellectual Property Act, article 334). A request of information is aimed at gathering any information
from a potential infringer or any third party to determine whether infringement has occurred
(Intellectual Property Act, article 337). Failure to provide the requested information on the part of the
alleged infringer is considered as circumstantial evidence against him or her (Rules, article 91).
During civil litigation, the plaintiff is entitled to request the court to carry out a judicial inspection, an
exhibition of evidence, to summon third parties to give testimony and to order an expert opinion.
Importantly, the court is allowed to order an exhibition of the evidence under the control or in the
possession of any party to the case. If the party fails to exhibit the evidence, the court may decide
based on the information provided by the other party (Intellectual Property Act, article 302).
Finally, with regard to evidence from outside the country, it is important to note that Ecuador is a
signatory to the Inter-American Convention on the Taking of Evidence Abroad. By means of this
Convention, a party to a case may request the court to issue a letter rogatory to the appropriate
authority in another member country for the taking of specified evidence. The receiving authority will
apply its own laws and procedural rules in complying with the request.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The duration of a patent infringement lawsuit at the trial court level depends on many factors, the main
one being the parties diligence, particularly the plaintiffs. Entry of judgment usually takes place
from two to five years after the complaint was filed. Any party to the lawsuit can file a cassation
appeal on the judgment of the trial court before the National Court of Justice, where proceedings can
last up to two years. Finally, a party whose constitutional rights have been infringed is entitled to file
an extraordinary protection action to the Constitutional Court.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent infringement lawsuit are determinated by each specific case and depend on the
complexity of the same.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The contentious administrative courts, under the present regime, are courts of first and only instance.
Their judgments can be challenged on cassation appeal to the National Court of Justice.
A party aggrieved by the violation of its constitutional rights is entitled to file an extraordinary
protection action before the Constitutional Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Reckless or baseless lawsuits, or abusive precautionary injunctive measures, may expose a patentee
to liability for an antitrust violation. In such a case, compulsory licences may be granted as an
antitrust remedy (Decision 486, article 66).
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Patent disputes, and all other intellectual property disputes, may be settled by mediation or arbitration
(Intellectual Property Act, article 374). There are many private arbitration centres, such as the
arbitration and mediation centres of the American Ecuadorean Chamber of Commerce and of the
Chamber of Commerce of Quito.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Decision 486 of the Andean Community, the legislation that governs the Republic of Ecuador, only
covers, for inventions susceptible to patent protection, products and processes in all fields of
technology, provided they are new, have an inventive step and are subject to industrial application.
Software and business methods, among other categories, are not considered inventions. However,
even if software is not patentable as such, its technical application could be for some specific cases.
Software as such may be protected through copyright if it is treated as a literary work and protected
as such. Such protection is granted irrespective of whether it has been incorporated into a computer
and in whatever form it is expressed, whether in human-readable form (source code) or machinereadable form (object code), whether it is an operational or application program, including flow
charts, drawings, user manuals and, in general, those elements that form the structure, sequence and
organisation of the program.
Medical procedures for their part are not considered patentable. These fall within the category of
therapeutic or surgical methods for human and animal treatment, as well as diagnosis methods applied
to human beings or animals that are not patentable. Other categories that are not regarded as
inventions are: discoveries, scientific theories and mathematical methods; all or part of living beings
as found in nature, natural biological processes, biological material existing in nature or that can be
isolated, including the genome or germplasm of any living thing, literary and artistic works or other
protected by copyright and the plans, rules and methods for performing intellectual activity and games
and ways of presenting information. Additionally, uses and second uses are not considered
patentable.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Patent holders may be natural or legal persons. The right to the patent belongs to the inventor. In the
case of inventions that came about under an employment relationship, namely, by an employing
company, the patent holder would be the employing company.
In Ecuador, the joint venture contract does not generate, nor does it constitute, a company, as is the
case under other legal systems. Thus, the joint venture is not a subject of rights, and, consequently, it
cannot be a patent owner. In this case, the ownership would be shared between the persons or
companies who have participated jointly in the invention.
Patent rights are transferred from the inventors to the applicant through an assignment document. For
applications via the Patent Cooperation Treaty it is not necessary to submit the assignment; however,
for applications submitted in the conventional manner, an assignment document must be filed within a
period of two months from the date of notification (renewable only once for the same period). In the

case of foreign applications, the document must be duly legalised by the Consulate of Ecuador in the
country of origin or apostilled if the country is a member of the Hague Convention.
The employer, whatever its form and nature, may transfer part of the economic benefits of the
inventions for the profit of the employee inventors in order to stimulate research activity.
Entities that receive state funding for their research shall reinvest part of the royalties received from
the marketing of such inventions in order to generate continued research funding and encourage
researchers, giving them a share of the proceeds from innovations, in accordance with the law.
Independent contractors may submit their inventions as natural persons; or otherwise the owners of
the patent shall be as set in the contract between the parties.
If multiple inventors make an invention jointly, the right to the patent belongs in common to them all.
That is, in this case there would be a co-ownership of the patent and, unless otherwise agreed, each
of the inventors would have equal rights in the protected invention.
This patent right may be transferred inter vivos or by succession. The transfer of a granted patent
shall be recorded in writing before the national competent office, in this case, before the IEPI. The
absence of this record will mean that the transfer is not effective against third parties.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The competent national authority shall decree, ex officio or upon request by anyone and at any time,
the absolute invalidity of a patent if:
the object of the patent is not an invention in accordance with Ecuadorean law;
the invention fails to comply with patentability requirements;
the patent was granted for an invention that falls within objects that are not patentable;
the patent does not disclose the invention in accordance with the stipulated methodology;
the claims in the patent are not fully supported by the description;
the patent granted has a broader disclosure than in the initial application and that implies having an
extension of the protection;
if pertinent, a copy of the access agreement has not been provided, where the products or
procedures for which a patent is sought have been obtained or developed from genetic resources or
its derived products originated in any of the member countries; or
if pertinent, a copy has not been provided of the document that certifies the licence or authorisation
of use of traditional knowledge of indigenous, Afro-American or local communities of the member
countries where the products or processes whose protection is sought have been obtained or
developed from such knowledge originated in any of the member countries.
If the grounds specified above only affect some of the claims or parts of a claim, invalidity shall be
declared only in respect of those claims or those parts of the claim, as appropriate.
The competent national authority may also invalidate a patent where it has been granted to a person
not entitled to obtain it. In this case, the action for annulment may be initiated only by the person who

has a right to obtain the patent. This action shall last for five years from the date when the patent was
granted or two years from the date when the person to whom that right belongs became aware of the
exploitation of the invention in the country, whichever period expires first.
There is no special court or administrative tribunal for these cases. The process is carried out before
the DNPI of the IEPI.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

An invention is considered new whether or not it is disclosed in the state of the art. State of the art
will concern everything that has been published worldwide. For the purposes of determining
patentability, any disclosure that occurred within the year preceding the date of filing or during the
year preceding the date of priority will not be taken into account, if invoked, provided that such
disclosure comes from:
the inventor or his or her successor;
a competent national office that, in contravention of the rule governing the matter, posts the contents
of the patent application filed by the inventor or his or her successor; or
a third party who obtained the information directly or indirectly from the inventor or his or her
successor.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

A patent application has an inventive step in respect of prior art according to Ecuadorean practice if,
for a normally skilled person in the relevant art, that invention would not have been obvious or would
not have derived in an evident manner from the state of the art.
To determine if the object of the claim is obvious, the problem-solution method is used if possible,
for which the following stages must be met:
identification of the closest prior art;
identification of the technical features of the invention that are different in respect of the prior art;
and
definition of the technical problem to be solved on the basis of the closest prior art.
The basic question is: what problem is solved by the technical differences between the invention and
the closest state of the art?
The presence or absence of any technical advantage is not an absolute criterion for recognising or not
recognising an inventive step. The judgment also cannot rely on personal assessments; objections
regarding the lack of inventiveness must be proven from prior art.
The inventive step is expressly analysed for each of the specific areas of technology.
For the field of chemistry, which is the most controversial in terms of analysis of this requirement,
parameters such as whether or not the compound has an unexpected structure or if it has an
unexpected effect, are examined. An inventive step should be recognised for combinations showing a

synergistic effect and for selective inventions.

20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

There are no grounds (inequitable conduct, for instance) upon which a valid patent might be deemed
unenforceable.
However, a patentee cannot exercise its rights in the following cases:
acts carried out in a private environment and for non-commercial purposes;
acts carried out exclusively to experiment with the subject matter of the patented invention;
acts carried out exclusively for the purposes of teaching or scientific or academic research;
the acts referred to in article 5-ter of the Paris Convention for the Protection of Industrial Property,
namely in cases of patented devices forming part of vessels, aircraft or land vehicles; and
where the patent protects biological material that is capable of being reproduced, except for plants,
using that material as a basis for obtaining a viable new material, except where the patented material
must be used repeatedly (Decision 486, article 53).
Patent rights are also unenforceable against a third party that, in good faith and before the priority or
filing date of the application on which the patent was granted, was already using or exploiting the
invention, or had already made effective and serious preparations for such use or exploitation
(Decision 486, article 55).
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Patent rights are unenforceable against a third party who, in good faith and before the priority or filing
date of the application on which the patent was granted, was already using or exploiting the invention,
or had already made effective and serious preparations for such use or exploitation (Decision 486,
article 55). Therefore, it is a defence if an accused infringer has been privately using the accused
method or device prior to the filing date of the patent. There are no exceptions to which this
disposition can be applied regarding the field of the invention, so the defence covers all types of
inventions. In this regard, the defence involves the use and exploitation of the invention.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards

tend to be nominal, provide fair compensation or be punitive in nature?

Damage awards tend to provide a fair compensation for losses incurred as a result of infringement. In
this regard, the following criteria, inter alia, shall be taken into account for the purposes of
calculating damages:
direct damages and lost profits suffered by the patentee as a result of the infringement;
the amount of profit obtained by the infringer as a result of the acts of infringement; or
the price the infringer would have paid for a contractual licence, based on the commercial value of
the infringed right and such contractual licences as may have already been granted (Decision 486,
article 243).
Damages start to accrue from the time the infringement begins. A patentee is entitled to damages for
infringement prior to issuance of the patent, namely for the period comprised between the date the
application was public and available for consultation and the date the patent was granted.
Compensation shall be allowed only in respect of the subject matter covered by the granted patent,
and shall be calculated in accordance with the patents effective exploitation by the defendant over
said period (Decision 486, article 239).
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Preliminary injunctive measures are available for the purposes of preventing an infringement from
occurring, avoiding its consequences, obtaining or preserving evidence, or ensuring the effectiveness
of the action or compensation for damages. Such measures can be requested before the trial, at the
time of filing the complaint or during litigation (Decision 486, article 245). They can be granted
either under civil or administrative proceedings (even ex officio in the latter). Preliminary injunctive
measures may be granted ex parte, namely without notification to the alleged infringer (Decision 486,
article 248).
Among the requirements for requesting injunctive measures, evidence allowing for a reasonable
presumption of infringement or that infringement is imminent must be provided. A bond or other
sufficient surety may be requested prior to granting the measures (Decision 486, article 247).
Final injunction is available for the patentee in the event of prevailing in the lawsuit. For this
purpose, among other measures, the court can order the destruction of the infringing products and
materials or implements, the predominant use of which has been the commission of the infringement,
or the temporary or definitive closure of the infringers business (Decision 486, article 241).
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Blocking the importation of infringing products is available either as a preliminary injunction or as a

final injunction. Further, the Ecuadorean Customs Authority and all officials having control over the

entry and exit of products into and from Ecuador are mandated to prevent the import and export of
products infringing intellectual property rights, including patents. The patentee is also entitled to
request the director of the DNPI to order the suspension of the import or export of infringing products
(Intellectual Property Act, articles 342 and 343).
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The prevailing party is awarded costs and attorneys fees in the event that the losing party engaged in
bad faith or reckless litigation (Civil Procedure Code, articles 283 and 284). Costs and attorneys
fees to be recovered are determined by the court. This determination, however, does not usually
correspond to the real costs and attorneys fees the plaintiff has incurred.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no additional remedies available against a deliberate or wilful infringer.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The time limit is two years from the date the patentee had knowledge of the infringement or, in any
case, five years from the last occurrence of infringement (Decision 486, article 244).
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no mandatory marking requirement under Ecuadorean legislation, and therefore there are no
consequences for false patent marking. However, it is advisable to mark patented articles to put
potential infringers on notice of the patentees rights.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The holder of a patent granted or pending may license one or more parties to use the respective
invention. Any interested person may apply for registration of a licence.
Any licence to use a granted patent shall be registered before the competent national office. Failure to
register shall render the licence invalid in respect of third parties. For the purposes of registration,
the licence shall be in writing.
If there is any change in the name or address of the holder of the patent during the term of the licence
agreement, the holder of the registration shall inform the competent national office. Otherwise, any
notification made according to the information contained in the registry shall be considered valid.
The competent national authority shall not register licence contracts for the exploitation of patents that
do not comply with the provisions of the Common Regime for the Treatment of Foreign Capital and
on Trademarks, Patents, Licences and Royalties, or that do not comply with Community or national
provisions on business practices that restrict free competition.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

After three years from the granting of the patent or four years from its application (whichever is
later), at the request of any interested party, the competent national office will grant a compulsory
licence (mainly for the industrial production of the patented product or the integrated use of the
patented procedure) only if at the time of the request the patent has not been exploited or if the
exploitation of the invention has been suspended for over a year.
The compulsory licence shall not be granted if the patent holder justifies his or her inaction with
legitimate reasons, including reasons of force majeure or fortuitous event.
A compulsory licence will be granted only if the applicant has tried to obtain a contractual licence
from the patent holder under reasonable commercial terms and conditions and such efforts were not
successful within a reasonable time.
Compulsory licensing of a patent in the event of the existence of public interest, emergency or
national security reasons will exist only as long as those considerations remain in effect.
At the request of a party, the competent national office, upon qualification of the national authority on
free competition, will grant compulsory licences in the event of practices affecting free competition,
especially when these constitute an abuse of dominant position in the market by the patentee.
The national office will grant a licence at any time if it is requested by a patentee whose operation
requires the use of another licence, provided that said patentee has failed to obtain a contractual
licence under reasonable commercial terms.
The competent national office shall specify the scope or extent of the compulsory licence and the
period for which it is granted, the subject of the licence and the amount and conditions of economic
compensation.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Nowadays, obtaining a patent takes a minimum of seven years for all technical fields. The additional
time basically depends on the examination process according to the examiners reasons for objecting
to the patentability of the invention, as well as the time taken by the examiner to issue the patentability
reports.
The cost of a patent basically depends on the number of claims contained in the application, as well
as the response to patentability reports, which involves any modification to claims. Accordingly, to
obtain a patent could involve a cost of approximately US$25,000 (including the first to the eighth
annuity) followed by the remaining maintenance fee payments to maintain the patent in force.
The professional fees for each of the actions taken during and after the processing of a patent depend
on each individual case.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In Ecuador, there is no procedure to expedite patent prosecution. There is no form or regulation that
allows acceleration of the patent register process through a specific programme or payment of extra
fees. All patent applications should follow the same path and the time involved in the prosecution is
subject to the filing date and technical field of the invention.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The patent application shall disclose the invention in a manner sufficiently clear and complete so a
person skilled in the technical field concerned can carry it out. The application should contain the
following aspects about the invention:
the technological sector to which it refers and to which the invention is applied;
the prior art known to the applicant that would help in the understanding and examination of the
invention, and references to documents and publications relating to such technology;
a description of the invention in terms that allow the understanding of the technical problem and the
solution provided by the invention, exposing the differences and possible advantages over previous
technology;
a review of the drawings, if any;
a description of the best mode to execute or carry out the invention, using examples and references
to the drawings, if pertinent;
an indication of how the invention meets the condition of industrial application if it is not clear from
the description or nature of the invention; and

 when the invention refers to biological material, the description should be complemented by the
deposit of such material according to the Budapest Treaty.
Recently, the IEPIs web page has published non-official guidelines with basic requirements for the
filing of the new patent application in Ecuador, as well as the particulars that should be included in
the application. However, the contents of a patent application are clearly and officially detailed in
Decision 486, articles 2631.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

In Ecuador, it is a requirement that the description contain prior art known by the applicant that would
help in understanding and reviewing the invention, as well as references to earlier documents and
publications relating to such technology. As such, displaying a disclosure of prior art in the
description is a requirement. However, additional information should not be required by the examiner
unless he or she considers that the information provided in the description is not sufficient.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Ecuadorean law does not contemplate the possibility of filing later applications in order to present
additional claims. Any subsequent application that may be filed would be objected on grounds of lack
of novelty and inventive step in light of what was presented in the earlier application or patent.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

If an adverse resolution is issued by the Patent Office the applicant may request a review of the
application by the Directorate of the National Office. If, in this new review, the Directorate reiterates
the examiners decision, it is possible to appeal in first instance before the committee on intellectual,
industrial property and plant varieties of the IEPI. If the decision of the committee is in favour of the
denial resolution issued, an appeal may be filed before the Contentious Administrative Tribunal in an
action that would initiate legal proceedings in which the IEPI would be sued for the decision
implemented.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Within 60 days from the date of publication of the patent application in Ecuador, anyone who has a
legitimate interest may submit (once) a grounded objection that could undermine the patentability of
the invention.
Upon request of a party, the competent national office shall grant one additional period of 60 days to
support the opposition.
Reckless objections may be punishable if so stipulated under domestic legislation.
After the filing of the opposition, the competent national office shall notify the applicant so that within
the following 60 days he or she validates his or her arguments, submits documents or rewrites the
claims or the description of the invention, if deemed appropriate. This term may be extended for an
additional 60 days.
Then, the patent examiner will determine if the opposition filed is accepted or not, in the examination
process.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

In Ecuador, a mechanism is not specifically provided for resolving disputes between various
applicants on the priority of the same invention. In this case it follows the prior tempore, prior iure
principle.
If several people or institutions make the same invention independently of each other, the patent will
be granted to the person (or their successors) who files the pertinent application first or claims the
earliest priority date.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The patent applicant may request to amend the application at any time during the process. The
amendment may not involve an extension of protection that would correspond to the disclosure
contained in the original application.
Similarly, it is possible to request correction of any material error.
The patent holder may renounce one or more claims of the patent, or the patent in its entirety, through
a statement addressed to the competent national office. Renunciation shall take effect from the date of
receipt of the respective statement.
During legal proceedings, practice has demonstrated that the patent may not be modified. Once the
examiner issues a resolution rejecting the patent, no modifications will be allowed.
The re-examination of a patent is basically not covered under Ecuadorean law. However, to respond
to a request for nullity on the basis of the arguments given in question 17, the patent must be reexamined in order to decide on the invalidity of such patent.

40 Patent duration

How is the duration of patent protection determined?

The term of the patent is 20 years from the date of filing the application in Ecuador. In the case of
applications under the Patent Cooperation Treaty, these 20 years will be counted from the
international filing date.

Update and trends

The government is working on new legislation for patents, nevertheless there is no official news
regarding this matter.
The most significant development in patent matters in our country is that online patent filing has been
applied since 2 May 2014. Since then, all patent applications have been filed online and subsequent
formalities relating to these applications are also filed online. For applications filed before 2 May
2014 subsequent actions generated after the filing, such as annuity payments, requests for examination
and so on, continue to be made by physical means.
In addition, a trend to grant compulsory licences continues because of public health issues in general.

Mara Rosa Fabara Vera

mrfabara@fabara.ec

Av Diego de Almagro N30 118

Quito
Ecuador

Tel: +593 2 222 0550

Fax: +593 2 256 8366
www.fabara.ec

France
Benjamin May and Marie Liens
Aramis
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Since 2009, all patent litigation has been centralised within the Third Division of the First Instance
Court of Paris, which is devoted exclusively to intellectual property (IP) cases and has jurisdiction
for both infringement or validity matters.
This division is composed of 12 judges specialised in French and European patent law. Cases on the
merits are handled by a bench of three judges, while preliminary injunctions and ex parte proceedings
are brought before one judge.
Approximately one-third of the cases ruled in first instance are submitted to the Paris Court of
Appeal, in which two sections have jurisdiction to review IP judgments. The Court of Appeal rules
on both fact and law issues.
Finally, the commercial division of the Court of Cassation, the French Supreme Court, is in charge of
the harmonisation of the law by the lower courts, which means that it rules only on law and not on
facts.
The first instance decision in patent cases is all the more crucial since the confirmation rate before
the Court of Appeal exceeds 80 per cent of the cases and is quite similar before the Supreme Court.
2 Trial format and timing

What is the format of a patent infringement trial?

A patent infringement trial on the merits is divided into three parts:

A pre-trial phase: a single judge defines the schedule within which each party shall deliver its own
written submissions and supporting documents. The parties rarely exchange fewer than two sets of
submissions replying to each other.
A short final oral hearing: it may take one hour to half a day, depending on how technical the case
is. This hearing is used to make the judges understand the key technical elements of the patent and
gauge the legal reasoning of the parties in view of the supporting exhibits.
The deliberations: the decision is rendered between one and three months later, depending on the
complexity of the case and the workload of the court.

By virtue of the adversarial principle, the hearings are solely based on the written reasoning
presented in the briefs. Likewise, all pieces of evidence must have been brought to discussion before
the final hearing.
There is no concept of cross-examination, all evidence being almost exclusively written.
Patent cases are exclusively decided by judges. No jury is involved.
In rare cases, the judges may decide to appoint and interview a legal expert to enlighten them on
technical issues or on the assessment of damages. The expert delivers a written report that is
challenged by the parties. The judges are usually guided by the opinions expressed by the expert, but
they are not bound by them.
In high-profile or technical cases, it is also common practice for the parties to support their opinions
with the report of their own privately appointed expert.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof lies with the claimant for establishing the infringement of its rights. The claimant
may request an authorisation to conduct a counterfeit seizure (saisie contrefaon see question 9)
aiming to find more evidence on the infringement and the quantum of the damages.
The claimant shall also demonstrate its standing to sue and justify that the patent is still in force with
proof of payment of the last annual fee.
The burden of proof for invalidity or unenforceability of the patent lies with the defendant.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The right to bring an action for patent infringement belongs to the patent owner.
Such right may be also be granted to the exclusive licensee subject to the following requirements:
the licensee agreement does not stipulate otherwise;
the licence agreement is in writing and registered in the patent registry; and
the patent holder does not initiate the proceedings despite the licensees official letter inviting him
or her to do so.
Any licensee (either exclusive or non-exclusive) can join the proceedings in order to obtain
compensation for its own damages.
In all but a few cases, the accused infringer replies to the claimant by bringing a counterclaim for
patent invalidity. Sometimes the defendant replies by claiming ownership of the patent, for instance in
cases where claimant and defendant were former partners.
The accused infringer may also add to his or her defence a counterclaim for frivolous proceedings,
which is successful in about 10 per cent of cases.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Contributory infringement of patents is prohibited under French Law. Unless agreed by the patent
owner, it is prohibited to supply or offer to supply, on French territory, the means of implementing an
essential part of the invention to any person other than a person entitled to work the patented
invention.
Such prohibition applies where the third party knows, or where it is obvious from the circumstances,
that such means are suitable and intended for putting the invention into effect.
The prohibition does not apply where the means of implementation are staple commercial items,
except where the patent owner is able to demonstrate that the third party induced the person to whom
it supplies to commit infringing actions.
French law does not provide for joint liability in the case where each party only practises some of the
elements of the invention. Multiple parties can be held jointly liable for patent infringement only if
they practise all the elements together.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

In the case where multiple parties are involved in the same patent infringement, they can be joined as
defendants in the same lawsuit. For instance, multiple parties involved in the various steps that lead
to the same offer or putting on the market of infringing goods, such as the manufacturer, the
wholesaler, the seller, etc.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

French courts have jurisdiction over any of the following activities, as long as they are performed in
France:
manufacturing, offering, putting on the market, using, importing or possessing for the aforesaid
purposes the good covered by the patent;
using a process covered by the patent (provided the third party knows that such use is prohibited
without the consent of the patent holder); or
offering, putting on the market, using, importing or possessing the aforesaid purposes the goods
directly obtained through the process covered by the patent.
As to online sales, French courts declare themselves competent where the litigious website is aimed
at French consumers and has a business impact on French territory, making use of a bundle of
indicators such as the language and currency used, the international activity of the merchant, etc.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The French Intellectual Property Code does not provide for any rule governing infringement by
equivalents.
The theory of equivalents is governed by case law, which requires that the structure of the product,
although different, shall fulfil the same function, in order to achieve the same result or a similar one.
However, the function of the means expressed in the claim must not be previously known over prior
art (for in such case the patent can only protect the means in its form, but not in its function).
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

No discovery procedure exists in France; the parties are free to disclose evidence they choose,
provided it is not privileged.
The counterfeit seizure process is one of the most common probative tools used by French
practitioners. As a consequence, many cases may either succeed or fail depending on whether the
seizure was well or badly performed.
Such measure is obtained through an ex parte procedure by anyone who has the quality to bring an
infringement action, leading to a detailed authorisation granted by a single judge. The purpose is to
create surprise and avoid dissimulation of proof by the alleged infringer. Only a bailiff can perform
the seizure, generally accompanied by an expert or patent attorney designated by the patentee, and by
police officers if need be.
As its goal is to provide evidence for the infringement and the quantum of the prejudice, the bailiff
may seize samples of infringing goods and any technical information or any financial, accounting or
commercial documents needed for the assessment of the prejudice suffered by the patentee.
The claimant shall bring proceedings leading to a decision on the merits within 20 working days or
30 calendar days, failing which the search and seizure shall be held invalid.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

From the delivery of the writ of summons to the decision, the proceedings last on average 18 to 24
months in the first instance and about the same at appeal.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs for patent litigation vary hugely depending on the technical complexity of the case. To
obtain a first decision, the range varies between 30,000 and 150,000.

Very complicated and technical cases, such as pharmaceutical litigation, may exceed 250,000.
Such range does not include the costs generated by a search and seizure measure, the seeking of a
preliminary injunction, the appointment of a legal or private expert, etc.
Appeal costs may be slightly lower.
Over the past few years, the compensation for legal costs awarded to the winning party has tended to
increase.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

A recourse lodged before the Paris Court of Appeal is the only avenue of appeal available against a
decision in relation to patent infringement.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

French case law offers examples where the publication of warning letters against the alleged infringer
before obtaining a final decision, or the mere disclosure of a pending suit to the public, were
qualified as unfair competition.
Enforcing a patent may also be a means of distortion of competition in the relevant market according
to antitrust laws.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Various forms of alternative dispute resolution (ADR) are available under French law. Arbitration,
mediation and conciliation are available even though they are seldom used.
However, it is prohibited under French law to submit to arbitration matters that are governed by
public order.
Therefore, as concerns patent litigation, contractual disputes (mainly about assignments, licences and
manufacturing agreements) and issues related to ownership of a patent are within the scope of
arbitration, whereas criminal liability for infringement and invalidity proceedings can never be
resolved by ADR.
The arbitrability of civil liability for infringement has never been admitted by French judges so far,
but legal doctrine tends to agree with it.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Innovations are patentable provided they satisfy the usual legal requirements (novelty, inventive step,
industrial character and sufficiency of description) and they are not specifically excluded by the
French Intellectual Property Code.
Accordingly, the following innovations shall not be considered as inventions and are therefore
excluded from the scope of patent protection:
discoveries, scientific theories and mathematical methods;
aesthetic creations;
schemes, rules and methods for performing mental acts and playing games;
business methods; and
software per se (French case law admits the patentability of software where its implementation
produces a technical effect going beyond the simple effect resulting from the physical interactions
between hardware and software).
The following inventions are not patentable:
therapeutic or surgical treatment methods for the human or animal body;
diagnostic methods applied to the human or animal body;
inventions whose commercial use would be contrary to public order, human dignity or morality;
the human body, the discovery of the total or partial sequence of a gene, cloning of human,
modification of the genetic identity of humans, use of human embryos for industrial or commercial use
and total or partial sequences of genes; and
plant or animal varieties.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Under French law, the first applicant for a patent is the holder of exclusive rights over such patent.
Therefore, the patentee and the creator of the invention may not necesssarily be the same person.
Specific rules govern inventions made by an employee:
Inventions made in the execution of duties or following the instructions given by the employer
automatically belong to the employer (inventions de mission), which triggers the right for the
employee to get additional pay.
Inventions made outside the employees duties, but during the execution of his or her functions, or in
the field of the employers activity by using technical means and knowledge provided for the
company, should belong to the employee. However, the employer may ask to be granted the property
or licensed rights in return for a fair price.
Inventions made by an employee outside the scope of his or her functions and which do not relate to
the field of the employers activity belong to the employee.
As regards inventions created by independent contractors, the agreement usually provides for an
assignment of the invention and patent rights to the client. In the absence of such provisions, the

ownership belongs to the first applicant of the patent and the true inventor shall bring a judicial action
in order to claim ownership of the patent if need be.
For inventions created within a joint venture, the patent will be owned as follows:
where the inventor is an employee of the joint venture, the above-mentioned rules on employees
invention apply and the invention may belong to the joint venture;
where the inventor is one of the members of the joint venture or one of its employees, the ownership
will usually depend on the contractual provisions governing such case; and
if the invention was created by multiple inventors, the rights on the patent may be jointly owned.
In any case, any patent assignment shall be evidenced in writing in order to be valid, and duly
registered in the relevant patent registry in order to be enforceable towards third parties.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Patents are declared invalid mainly on the following grounds:

the invention does not comply with the legal requirements of novelty or inventive step;
the description does not disclose the invention in a manner sufficiently clear and complete for it to
be carried out by a person skilled in the art; or
the subject matter of the invention is not patentable.
The validity of a patent may only be challenged before the Paris First Instance Court, either within a
cancellation action brought regardless of any infringement in order to clean the market, or as a
counterclaim within an infringement action. The latter case is the most common.
In a few recent rulings related to generic cases, the Paris Court criticised the behaviour of generic
manufacturers, blaming them for not having initiated a suit for invalidity within the time limits
enabling them to obtain a judgment on the merits, before proceeding with the marketing of the
disputed drug.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement for patentability. However, disclosure of an invention is not
taken into consideration in the assessment of such novelty if it is the result of an obvious abuse against
the inventor or an exhibition as defined by the international Convention of Paris dated 22 November
1928.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

French law refers to the current state of the art, meaning all inventions already made available to the
public before the date of the patent application.
In order to decide whether or not the invention is obvious, the French Patent Office and judges refer
to the concept of person skilled in the art, who can be defined as a practitioner with basic
knowledge and average ability concerning a given area on a given date.
The inventive step is usually established when the solution brought by the invention:
provides for an unexpected result, solves a technical issue that was never encountered in the past or
overcomes a prejudice or meets an existing need; or
is not the result of simple and intuitive operations carried on by the person skilled in the art, which
would not require excessive effort.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A valid patent cannot be deemed unenforceable because of misconduct by the inventors or the patent
owner.
However, rights on a patent can be withdrawn owing to failure to pay annual fees, or lack of
ownership of the patent holder. As the patent holder is compelled to work the patent, failure to do so
may entail the granting of compulsory licences to third parties.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

The French Intellectual Property Code provides for an exception to the patentees exclusive rights in
the case of prior personal possession of an invention by a third party.
Third parties who were, in good faith, in possession of an invention before the filing or priority date
of the patent, have the right to commercially use this invention despite the patent.
This exception covers all types of inventions. It can be used in defence by the accused infringer.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The French system follows the civil law principle called status quo ante, meaning that compensation
is supposed to be limited to the prejudice actually suffered and justified. As a consequence, there are
no punitive damages in France.
The claimant has an alternative between:
the actual assessment of the prejudice (lost profits, infringers unfair profits, moral prejudice, etc);
and
a lump sum corresponding to an increased royalty rate in order to take into account the constrained
nature of the licence with the infringer (plus moral prejudice).
In rare cases, the court may also order the publication of an extract of the ruling in newspapers or on
the infringers website.
The court may designate an expert for the assessment of the amount of damages to be granted, but in
most cases their amount is based on the assessments made by the parties on the basis of detailed
accounting and commercial documentation.
French judges granted an average amount of damages of 50,000 over the past 10 years in patent
litigation. The highest amount ever awarded was 10 million in 2007.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Any person entitled to initiate an infringement action may try to obtain preliminary injunction against
the alleged infringer, its intermediaries or suppliers, to prevent an imminent infringement or to make it
cease.
Two types of summary proceedings are available depending on the emergency of the case:
The rfr summons lead to a decision within three to six months.
The rfr dheure (expedited summary proceedings) require prior court authorisation to summon the
defendant in an emergency, and may lead to a decision within a few days or weeks.
Preliminary injunctions are granted subject to reasonably available proof of infringement or imminent
infringement. Although patents are deemed to be valid prima facie, judges may agree to take into
account the fact that a patent can be seriously disputed by the alleged infringer.
Any preliminary injunction is ordered at the patent holders own risk, who will have to compensate
the damage suffered by the defendant should the patent ultimately be held to be invalid or not
infringed.
Patent holders may obtain:
suspension orders or continuation of the alleged infringement subject to an adequate financial
guarantee of the defendant;
seizure of the entire stock;
provisional allowance of damages (which is rare); or even
an injunction to disclose information in relation to the infringement, from the manufacturing to the
distribution network.
On rare occasions, the above measures can also be granted within ex parte injunctions, subject to the
demonstration that any delay would cause irreparable harm and of why the alleged infringer should
not be heard prior to the injunction.

In any case, injunctions must be followed by proceedings on the merits. Failure to initiate such
proceedings within 20 working days or 30 calendar days of the injunction entails its cancellation.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

As a precautionary measure, customs authorities may block the importation of the allegedly infringing
goods upon a patentees intervention request. These customs seizures are under the control of the
Council Regulation of the European Union.
The patent owner has 10 days from the suspension to sue the alleged infringer before civil or criminal
courts. Failure to do so entails the withdrawal of the measure.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The losing party is usually ordered by the court to pay certain costs of the proceedings, as well as an
amount supposed to cover a fair share of the lawyer fees paid by the winning party.
On average, such costs may amount to between 10,000 and 50,000 and even 100,000 to 300,000
in the most complicated cases.
The total amount granted rarely covers all the costs, but in the past few years the courts have tended
to increase such award, especially if the attorneys and lawyers bills are provided in order to support
the compensation request.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Wilful infringement is required for the infringement action to be successful in criminal proceedings,
which may entail up to three years imprisonment and a 300,000 fine. Criminal proceedings are
seldom used in patent litigation.
In civil proceedings, the patent infringer will be held liable regardless of any wilful intent. However,
the behaviour of the infringer may be taken into account in the assessment of damages, especially if it
caused additional prejudice to the patent holder.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Pursuant to a recent law dated 11 March 2014, the time limit for seeking a remedy for patent
infringement has increased from three to five years as from the alleged infringing facts.
Therefore, the patent owner can sue the infringer for acts committed up to five years ago. Such time
limit also applies to the compensation of the prejudice, which cannot exceed five years.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Under French law, a patent holder is not required to mark its patented products. Therefore, there are
no consequences regarding failure to mark.
However, false patent marking may be considered as trademark infringement or unfair competition, or
as a deceptive or misleading term, which are prohibited under civil and consumer laws.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The French Intellectual Property Code only requires the licence agreement to be in writing.
French and European antitrust authorities are particularly vigilant with respect to patent licences or
technology transfer agreements, especially within the pharmaceutical sector.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The patent owner is under the obligation to use or market the invention. Failure to comply with this
obligation entails that any third party may obtain a compulsory licence on the patent as of three years
from the granting of the patent, or four years from the filing of the application.
Compulsory licences are limited to the cases where:
the patentee has never begun to work the invention;
the patentee has not marketed the invention in sufficient quantities to meet the market needs; or
the patentee has begun to work the invention, but nothing has been done for the past three years.
The terms of the compulsory licence are defined by the court and based on the usual terms and
financial conditions practised in the relevant market.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The cost to obtain a patent must include the costs related to the drafting and the examination process
handled by a patent attorney, the official taxes and the annual fees.
The official taxes to be paid to the French patent office are quite low: 36 for the filing of the
application, 500 for the delivery of the search report and 86 for the granting of the patent.
The annual fees progressively increase over the years, from 36 in the second year, reaching 900 in
the twentieth year.
Patent attorneys fees are usually in the range of 3,000 to 5,000 depending on the complexity of the
invention and its technical field.
The French Patent Office delivers a patent in two-and-a-half to four years following the filing date.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are no procedures to expedite patent prosecution.

33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

French law gives general principles governing the content of a patent. Accordingly, the patent
application shall contain:
the technical field of the invention;
the prior art, as known by the applicant, which may be useful to establish the search report;
claims of the invention in order to understand the technical problem and its solution;
a short description of the drawings; and
at least means of carrying out the invention.
In any case, the description must disclose the invention in a manner sufficiently clear and complete
for it to be easily carried out by a person skilled in the art.
The French patent office does not provide for official guidelines regarding the drafting of the
application.
In practice, the subtleties of the drafting of a patent application are related to the nature of the
invention (product, processes, etc) or the limits to the patentability of the invention (software,
therapeutic methods, gene sequences, etc).
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The applicant is under no obligation to disclose all prior art to the patent office examiner. However,
during the course of the examination, the examiner may request the applicant to disclose prior art
mentioned in foreign correspondence proceedings.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

The applicant may divide the earlier filed application by filing divisional applications, under the sole
requirement that it does not extend beyond the scope of the patent.
Protection of the divisional applications will be granted from the date of the earlier filed application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The Paris Court of Appeal has exclusive jurisdiction concerning adverse decisions of the patent
office.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The French patent office does not provide for any mechanism for opposing the grant of a patent.
However, during the examination process, third parties may file observations before the patent office
challenging the patentability of the invention. Such observations may influence the examiner and
eventually lead to a modification or rejection of the patent claims.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

There is no mechanism for resolving priority disputes between different applicants for the same
invention. The only criterion used to define who has priority is the date when the first application was
filed.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

There is no procedure for re-examining or revoking a patent.

However, the patent owner may choose to abandon some claims, or limit the scope of the claims of
his or her patent under the condition that this limitation does not extend the protection beyond the
scope of the application.
40 Patent duration

How is the duration of patent protection determined?

The French Intellectual Property Code provides for a 20-year period of legal protection for a patent
as from its filing date.
Protection of pharmaceutical inventions may be extended by filing a supplementary protection
certificate (SPC), the duration of which cannot exceed five years from the expiry of the initial patent
and 15 years from the issuance of the first marketing authorisation.
The duration of SPCs may finally be extended by six months with the filing of a paediatric extension
certificate.
A shorter title, called a utility certificate, is also provided by the French Intellectual Property
Office: it lasts six years from its filing and is delivered without examination of a search report.

Update and trends

As the result of the implementation in 2007 of Directive 2004/48 on the enforcement of IP rights,
French judges have recently tended to increase the damages awarded to compensate patent
infringement and legal costs.This trend is also reinforced by the efforts made by patent owners to
justify every type of prejudice suffered.
Owing to the expiry of numerous pharmaceutical patents and their related extensions, French case law
is also expanding on the construction of the conditions for obtaining SPCs.

Benjamin May

may@aramis-law.com

Marie Liens

liens@aramis-law.com

9 rue Scribe

Tel: +33 1 53 30 77 00

75009 Paris
France

Fax: +33 1 53 30 77 01
www.aramis-law.com

Germany
Oliver Schulz, Sandra Pohlman and Rainer Friedrich
df-mp
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

A lawsuit against a patent infringer may be brought before any of the 12 specialised district courts
that have panels comprising judges experienced in patent matters. The most frequently chosen courts
are those in Dsseldorf, Munich, Hamburg and Mannheim. There is no counterclaim for invalidity of
the patent in suit in these proceedings. Patent validity is tried either in opposition proceedings or,
after expiry of the opposition period, in invalidity proceedings before the German Federal Patent
Court (FPC) in Munich. Validity issues are considered by the court hearing the infringement case only
insofar as the defendant asks for a stay of the proceedings owing to an alleged lack of validity of the
patent in suit (in practice, infringement proceedings are very rarely stayed). The views of the court in
the infringement case regarding validity are not binding on the FPC. Likewise, any claim construction
presented by the FPC is not legally binding on an infringement court.
Preliminary injunction proceedings are available for patent infringement matters. One requirement for
granting a preliminary injunction is that the plaintiff acted swiftly (typically not more than one month)
after gaining knowledge of the infringing acts.
Criminal charges against a patent infringer are available, but are rarely relied upon in practice.
2 Trial format and timing

What is the format of a patent infringement trial?

In Germany, a trial with examination and cross-examination of fact and expert witnesses does not
really exist. Also, patent cases are not decided by a jury. In the first instance district court, an
infringement case is heard by a panel of three judges, whereas a panel of five judges (three of whom
have a technical background) hears an invalidity case at the FPC. The actual trial phase of the
infringement case, which often includes extensive written submissions, typically consists of one or
more informal oral hearings in which the court plays an active role. The main hearing typically lasts
about one to two hours and almost never longer than one day.
The most relevant types of evidence are documentary, witness and expert evidence. Documentary
evidence is the most important and preferred type because the judges rely heavily on the parties

written submissions when making their decision.

The parties may also offer witnesses for proving certain facts relied upon in their written
submissions. The court has discretion as to whether the witness should be heard (unnecessary if the
facts to be proven are not disputed by the other party). The submission of declarations such as
affidavits is, generally, not an aspect of offering evidence in German patent infringement proceedings.
The parties may offer expert evidence to prove certain facts or assertions; this type of evidence is
given by an independent expert appointed by the court. Typically, the expert is expected to provide
the court with the necessary technical background and with information regarding the skilled persons
knowledge, in order to allow the court to interpret the claims and to determine the scope of
protection. Although there is no cross-examination, the parties (and the court) may ask the courtappointed expert questions in a hearing scheduled after the expert has rendered his or her opinion.
The parties may also submit the opinions of experts instructed by the parties. Such party expert
opinions usually carry less weight than the opinion of the court-appointed expert. If the latter is
inconclusive, the court may occasionally follow the views of the party expert, since it is ultimately
the court that has to evaluate any type of evidence.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In German invalidity proceedings, it is the plaintiff who carries the burden of proof of establishing, to
the courts satisfaction, that the invention is not patentable.
Similarly, in infringement proceedings, it is the plaintiff who carries the burden of proof to establish
that the accused embodiment fulfils the features of the claims of the patent in suit.
There are scenarios, however, in which the burden of proof may shift to the defendant. For example,
if in the case of a patent relating to a process for the preparation of a novel product, the defendant
manufactures the same product, it will be assumed that this product is produced by the protected
process (section 139(3) of the German Patent Act (GPA)). Thus, in this scenario the burden is on the
defendant to demonstrate that a different process was used.
There is no ground for finding a patent unenforceable in Europe; specifically, the defence of
unenforceability due to inequitable conduct during prosecution is not available in Germany.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Any person or company recorded in the patent register as the patentee or applicant or the exclusive
licensee is formally entitled to file an infringement suit. A patentee may assign its claims arising from
the patent to a non-exclusive licensee or to any other third party.
A possible defendant in an infringement situation may bring a declaratory judgment action for noninfringement if he or she can show a legal interest in such an action, for example, if he or she received
a warning letter from the patentee. Generally, the declaratory judgment action is dismissed once the

patentee initiates the corresponding infringement case. Therefore, a declaratory judgment action is not
usually a useful defence.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Liability for direct infringement may arise not only if someone actually performs infringing acts, but
also if someone participates in infringing acts as a joint offender or inducer. In addition, a person may
be liable for indirect infringement when supplying means relating to an essential element of the
invention. According to section 10 of the GPA, a person offering or supplying such means to a third
party not entitled under the patent commits contributory infringement if the supplier knows, or if it is
obvious in the circumstances, that these means are suitable and determined for use of the invention.
Offering or supplying staple commercial products does not constitute contributory patent infringement
unless the supplier induces the third party to use the invention without having been authorised to do so
by the patentee (section 10(2) of the GPA).
It is not a prerequisite for establishing a case of contributory patent infringement to establish that acts
of direct patent infringement have also been committed by the same or a third party.
Multiple parties may be jointly liable according to sections 830 and 840 of the German Civil Code
(Funkuhr, 26 February 2002).
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be jointly sued if they are liable for the same, similar or substantially similar
factual and legal reason (sections 59, 60 code of civil procedure). All parties causally contributing to
a patent infringement are jointly liable for the infringement and can therefore be joined as defendants
in the same lawsuit.
While it is theoretically possible to join several independent infringers as defendants (eg, two parties
each producing an infringing embodiment), this is very uncommon in practice.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

In principle, patent infringement is confined to acts performed within the territory of Germany.
Infringing acts in respect of a protected product are manufacturing, offering, putting on the market or
using, or importing or owning for these purposes. Infringing acts in respect of a protected method are
using or offering for use on German territory if the offering party knows, or if it is obvious in the

circumstances, that the use of the method without the consent of the patentee is prohibited.
If, however, the direct product of a process protected by a German patent (or the German part of a
European patent) is produced outside Germany and subsequently imported into Germany, the
importation and putting on the market in Germany may be prohibited by virtue of that patent (section
9(3) of the GPA).
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The evaluation of the extent of protection provided by a German patent is governed by section 14 of
the GPA, which is identical in its wording to article 69(1) of the European Patent Convention (EPC)
owing to a harmonisation of the GPA with EU patent law (article 69(1) of the EPC applies to the
German part of European patents).
According to these provisions, the extent of protection is to be determined by the terms of the claims,
while the description and drawings of the patent shall be used to interpret the claims. In addition,
section 14 of the GPA and article 69 of the EPC are to be interpreted in the light of the protocol on
the interpretation of article 69 of the EPC, which emphasises the need for an appropriate compromise
between the strict literal meaning of the terms of the claims and considerations that take the claim
wording as a mere guideline to provide a fair amount of protection for the patentee and reasonable
legal certainty for third parties. According to paragraph 2 of the protocol, 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.
According to the Federal Supreme Court (FSC), the application of the doctrine of equivalence is
readily compatible with the above legal provisions. According to the Courts case law (see, eg,
Schneidmesser I, 12 March 2002), the following three-stage test was established as a guideline for
determining whether, if literal infringement is not present, an infringement under the doctrine of
equivalence may still be found:
the accused embodiment solves the problem underlying the invention with modified means with
objectively the same effect;
the skilled person, based on his or her knowledge and skills, is in a position to identify the modified
means as having the same effect; and
the considerations required by the skilled person in this regard are tied in with the meaning of the
terms of the claim in such a manner that the skilled person considers the accused embodiment as an
equivalent solution.
There seems to be agreement in the literature and among practitioners in Germany that equivalence is
to be evaluated at the priority or filing date of the patent in suit, whichever applies, and not at the date
of infringement (Etikettiergert, Befestigungsvorrichtung II).
A speciality of German infringement proceedings (which originates from the German bifurcation
approach on infringement and validity) is the Formstein defence, which may be raised by the
defendant in cases of alleged equivalent (not literal) infringement. The defendant may argue that the
accused embodiment is not novel or is obvious over the prior art relevant for the patent in suit, or
both, and thus outside its scope of protection. The Formstein argument may be viewed as a possible
limit on the potential scope of an asserted equivalence. Its practical significance is, however, rather

limited.
Equivalent infringement finds another limit if the patent specification teaches multiple ways to
achieve a technical effect, but only one of them is included in the claims. In this case, using the other
alternatives is not usually considered to be an equivalent infringement (Okklusionsvorrichtung, 10
May 2011; see also Diglycidverbindung, 13 September 2011).
Another special case under German infringement practice is based upon the principle of loyalty and
good faith (Weichvorrichtung II, 5 June 1997): if a patent is defended during opposition or nullity
proceedings by arguing that a specific embodiment is not encompassed by the claims, the patent
owner cannot argue the same embodiment to represent an infringement in (independent) infringement
proceedings. However, the defence as outlined above is only applicable in relation to the opponent or
plaintiff of the corresponding opposition or nullity proceedings (ie, it is not available to the public).
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Since the implementation of the EU Directive on the enforcement of Intellectual Property Rights
(2004/48/EC) there has been explicit regulation to provide for means of discovery. Before the EU
Directive, to prove infringement the patentee had to rely on publicly available information, such as
pamphlets or exhibits.
Problems sometimes arose where an accused embodiment or information thereon was not publicly
available. The EU Directive recognises the right of the patentee to inspect an accused embodiment.
Nevertheless, this right has to be distinguished in its scope from, for example, the French practice of
the infringement seizure or the discovery process as practised in the United States or the United
Kingdom.
The patentee now has the right to inspect an accused embodiment, and recent changes in the law have
also made it easier for a plaintiff to secure evidence that is in the adverse partys possession. The
right to discovery is designed to allow the proprietor to substantiate a case of patent infringement, for
example, by forcing the defendant to disclose specific information regarding the accused product. To
secure the assumed infringers interests, such disclosure will generally be made to an independent
court-appointed expert and may be subject to a secrecy order if confidential information is involved.
The FSC has held that a defendant may be obliged to provide information and documents needed to
prove the plaintiffs case if this information is not available (or available only with tremendous
difficulties) to the plaintiff and if disclosing the information is readily possible for the defendant and
not associated with any undue hardship (Blasenfreie Gummibahn II, 30 September 2003 and
Restschadstoffentfernung, 1 August 2006).
German courts are quite amenable to accepting the introduction of information obtained in discovery
proceedings in other countries if such information is relevant to the case. Also, it is possible to
exclude the public from gaining access to these materials should they be subject to a protective order
by a foreign court.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Patent infringement proceedings will usually take about eight to 12 months in the first instance before
the district court, about 15 to 18 months in the second instance court before the higher district court
and about 15 to 24 months in the third instance court before the FSC, depending on the complexity of
the case. If expert evidence is accepted by the court, the time frame may exceed the above estimates
by as much as one to two years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

In German patent infringement proceedings, the losing party bears the court fees and, to a certain
extent, the costs of the winning party. The costs to be reimbursed by the losing party are calculated
based on a statutory fee schedule in conjunction with the litigation value (which is based on the
plaintiffs economic interest in the claims pursued in the action). The parties may make proposals
regarding the litigation value. Determining the litigation value is, however, ultimately for the court.
Costs regarding warning letters and the like that were incurred before bringing an action may be
recovered in part by the winning party.
A precise estimate of the overall financial risk of a patent infringement suit is very difficult. As a rule
of thumb, one may assume that the cost risk per instance for the losing party is between 5 and 10 per
cent of the litigation value. Litigation values in patent matters are typically between about 500,000
and 10 million, although in certain high-profile cases in the pharmaceutical, biotechnology or IT
areas they may well exceed these values. The litigation value cannot exceed 30 million.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

If there is an adverse decision by a district court, an appeal may be filed with the corresponding
higher district courts, which, similarly to the competent district courts, have specialised panels for
patent matters. The higher district court, however, is bound to the findings of fact of the first instance
court unless there is a clear basis for doubt in respect of the correctness or completeness of the
relevant fact findings. In the third instance, which is a legal review, the Tenth Civil Senate of the FSC
has jurisdiction. The legal review before the FSC requires approval by the court of the second
instance, which is given when the matter is of general relevance or when it is suitable to develop the
law or to further its consistency. If the approval is not granted by the court of the second instance, an
appeal against that decision may be filed with the FSC.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

A possible defence against a request for injunctive relief is the argument that the patentee is abusing a
market-dominating position by refusing to enter a licensing contract with the defendant on nondiscriminatory and non-obstructive conditions. However, in order for the patentee to act in an abusive
way, the defendant must have made an unconditional offer for such a contract to which he or she
remains bound and that the patentee cannot refuse without acting against the prohibition of
discrimination and obstruction. Additionally, the defendant must keep his or her obligations according
to the licensing contract as long as he or she uses the patented subject matter (FSC, Orange-BookStandard, 6 May 2009).
The patentee cannot, however, be forced by virtue of antitrust law to grant third parties rights under
the patent. This is only possible by virtue of regulations provided for in the GPA, namely, by the grant
of a compulsory licence under section 24 of the GPA (see below).
Settlement contracts between the patent owner and the accused infringer must comply with the
relevant antitrust laws (see questions 29 and 30).
A case of unfair competition can arise if the patent owner tries to enforce his or her patent with a
warning letter not to his or her competitor, but to the competitors customers. If the warning letter is
unjustified (eg, if the alleged infringement does not take place), it might be seen as unfair competition,
since customers often are not interested in a legal dispute and, therefore, might consider changing
their supplier.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

An alternative dispute resolution system is not specifically provided for by German patent law.
According to section 278 of the Code of Civil Procedure, any German civil court must offer the
parties the chance of dispute resolution before an oral hearing is started. The parties may refuse the
courts offer without further consequence, so the amendment does not seem to be of major relevance
in practice.
In addition, according to section 278a of the Code of Civil Procedure, the court can encourage the
parties to resolve their dispute using mediation or other dispute resolution techniques. If the parties
agree to such proceedings, the pending lawsuit is stayed. Parties interested in such alternative
approaches may agree in their contractual agreements to make use, for example, of the arbitration and
mediation services of the World Intellectual Property Organization or the International Chamber of
Commerce in Paris in the event of disputes. Mediation services are also offered by the courts, where
a judge acts as the mediator.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The GPA explicitly excludes discoveries; scientific theories and mathematical methods; aesthetic
creations; schemes, rules and methods for performing mental acts, playing games, or doing business
and programs for computers; and presentations of information from patentable subject matter (section
1(3) of the GPA) as long as patent protection is sought for the above-mentioned subject matter or
activities as such (section 1(4) of the GPA).
In practice, business method applications will be treated like software applications and will only be
considered to be patentable if they solve a concrete technical problem with technical means (eg,
Webseitenanzeige, 24 February 2011).
Also excluded from patentability is the human body in its different phases of creation and
development, including human germ cells, and the mere discovery of one of its constituents, including
the sequence or partial sequence of a gene (section 1a(1) of the GPA). An isolated part of the human
body, including the sequence or partial sequence of a gene, may be patented even if its structure is
identical to that of a naturally occurring part (section 1a(2) of the GPA).
The GPA further excludes from patentability inventions, the commercial exploitation of which would
be contrary to public order or morality (section 2(1) of the GPA). Examples of excluded subject
matter are methods for the cloning of human beings or for modifying the genetic identity of the
germline of a human being, the use of human embryos for industrial or commercial purposes or
methods for modifying the genetic identity of animals that could cause them suffering without
providing any substantial medical benefit for humans or animals, and also animals generated by virtue
of such methods (section 2(2) of the GPA).
Also, plant or animal varieties or essentially biological processes for the production of plants or
animals are excluded from patentability (section 2a(1) of the GPA). Patents may, however, be
granted for inventions, the subject matter of which is a plant or an animal if practising the invention is
technically not restricted to a particular plant or animal variety. Patents are also granted for
inventions relating to a microbiological or other technical process and products obtained by such
processes unless the product is a plant or animal variety (section 2a(2) of the GPA).
Finally, methods for the treatment of the human or animal body by surgery or therapy and diagnostic
methods practised on the human or animal body are excluded from patentability (section 2(2) of the
GPA). Claims may, however, be directed towards compounds for use in such methods (section 2(2),
second sentence of the GPA).
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

According to section 5 of the German Employee Inventions Act (GEIA), an employee has the duty to
report any service invention to his or her employer. The employer then decides whether he or she
wants to claim the invention. Upon claiming the service invention (which occurs automatically unless
the employer explicitly releases the invention), the right to the invention automatically transfers to the
employer (section 7 of the GEIA).
According to section 6 of the GPA, the right to the patent belongs to the inventor. An individual is
considered to be an inventor if he or she makes a substantive intellectual contribution to the invention
that goes beyond the common general knowledge of a skilled person. Hence, if an independent

contractor is an inventor, then the invention belongs to the independent contractor, unless other
contractual obligations exist.
Section 6 of the GPA states that if two or more persons have jointly made an invention, the right to a
patent shall belong to them jointly. Thus, in the absence of any contractual agreements regarding
ownership of a patent, multiple inventors (or their legal successors, eg, different employers in a joint
venture) form a joint ownership, but each of them may, in certain circumstances, separately dispose of
his or her part of this right.
The ownership of a patent is officially registered in the German Patent and Trademark Office (GPTO)
patent register (section 30 of the GPA). The register entry is of a declaratory nature only. In the case
of a discrepancy between the register and the factual legal situation, only the legal ownership is
decisive, not the register entry. If patent ownership is transferred to a third party by contract (section
15 of the GPA), this transfer should be reported to the GPTO.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Opposition to the grant of a patent can be filed with the GPTO within nine months of the date of the
mention of grant of the patent (section 59 of the GPA). Along with the notice of opposition, a written
substantiation of the grounds for opposition must be filed. An opposition may only be based on one or
more of the following grounds:
lack of patentability, namely, lack of novelty or inventive step or other non-compliance with
sections 1 to 5 of the GPA (section 21(1) of the GPA);
lack of sufficient disclosure (section 21(1)2 of the GPA);
unlawful usurpation of the invention (section 21(1)3 of the GPA); and
inadmissible added matter (section 21(1)4 of the GPA).
A nullity action against the registered owner of a German patent may be brought at any time after the
nine-month opposition period (if no opposition is filed) or after the termination of opposition
proceedings (section 81(2) of the GPA). The grounds for nullity include the grounds for opposition as
listed above, with an additional ground for nullity due to inadmissible broadening of the patent scope
(section 22(1)2 of the GPA).
Generally, any person or legal entity except for the patent proprietor may act as an opponent or nullity
plaintiff. In cases where an opposition or nullity action is based on the ground of unlawful usurpation,
only the person who believes that he or she is lawfully entitled to the patent can act as opponent or
plaintiff (section 59(1) of the GPA, section 81(3) of the GPA).
A nullity action must be brought before the FPC in Munich. The decision of the FPC may be appealed
to the FSC as the second and final instance. The FSC, in this exceptional situation, acts as a second
factual instance court and the parties may to a quite limited extent submit new facts and evidence that
have not yet been considered by the FPC.
Non-German residents must be represented in the above proceedings by a German patent attorney or

an attorney-at-law, or both.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Absolute novelty is required. The claimed invention must be novel in respect of everything made
available to the public by written, oral or any other disclosure prior to the date relevant for the
priority of the application, without limits as to territory (section 3(1) of the GPA).
Additionally, the content of earlier German, European or international patent applications (provided
that Germany is designated) filed before, but published on or after the effective filing date of a patent
(application), is comprised within the state of the art for the question of novelty (section 3(2) of the
GPA).
As an exception to the absolute novelty requirement, disclosure of the invention shall not be taken into
consideration if it occurred within a period of six months preceding the filing of the application and if
it was due to an evident abuse in relation to the applicant or the fact that the applicant displayed the
invention at an official or officially recognised international exhibition (section 3(5) of the GPA).
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Section 4 of the GPA states that an invention shall be considered to involve an inventive step if,
having regard to the state of the art, it is not obvious to a person skilled in the art. Thus, it is
determined whether a person skilled in the relevant art faced with the technical problem underlying
the claimed invention would have arrived at this invention by combining the teaching of the prior art
available and his or her own general knowledge in the relevant technical area. German courts have
certain reservations to apply the formal problem-solution approach adopted by the European Patent
Office, in particular to the selection of one specific reference as the closest prior art
(Fischbissanzeiger, 18 June 2009).
For assessing inventive step, the FSC often uses the following questions:
What steps did a skilled person have to carry out in order to arrive at the solution of the invention?
Would the skilled person have been motivated to make considerations in this direction?
What are, in detail, the arguments for and against the skilled person coming to the solution of the
invention based on such considerations?
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

There is no legal basis in the GPA regarding unenforceability of a patent owing to misconduct by the

inventors or the patent owner. Any person appearing before the GPA or a German court is obliged to
tell the truth and to provide complete information as required.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

A patent shall have no effect against a person who, at the relevant filing date of the application, had
already begun to use the invention in Germany, or had made the necessary arrangements for doing so.
Such a person shall be entitled to use the invention for the needs of his or her own business in his or
her own, or others, manufacturing sites (section 12 GPA).
For the prior use defence to be applicable, the user must candidly have gained knowledge of the
invention and must perform actions that show his or her intent to use the invention soon. According to
the prevailing opinion, the prior use must have been commercial (FSC Chloramphenicol, Taxilan). It
is not sufficient to produce a prototype that still has to be tested (DC Dsseldorf Tandempumpe).
The prior use defence does not apply if the invention has been used on behalf of a third party.
The prior use is limited to the actions performed before the relevant filing date and to actions that
allow the prior use to be continued (eg, if infringing embodiments have been produced but not sold
before the relevant filing date, they may be sold afterwards). Further developing the prior use
embodiment is not allowable if this would interfere with the subject matter of the protected invention.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Damages accrue only in cases where the infringing acts are performed intentionally or negligently
(section 139(2) of the GPA). Intention or at least negligence is assumed prima facie, since people
being in business in a relevant technical area have to inform themselves of the rights of others, for
example, by noting published patents, etc. As to damages, the infringer is liable for all infringing acts,
regardless of whether they were performed before or after the patentee gained knowledge. Earnings
of the infringer are to be paid to the patentee and potential losses may also be calculated and
considered if requested. The following three methods are available for calculating damages:
The method most frequently applied in Germany is licence analogy, wherein the terms and conditions
of a hypothetical licence contract are taken by the court as a basis for calculating a reasonable royalty
on the infringers sales.
As to the infringers profit, this is a particularly interesting option in cases where the patentee could
not have made the profit him or herself (eg, because it is a very small company and the infringer is a
large company with a high profit from the infringing product). Upon calculating the infringers profit,

the infringers general costs may only be deducted from his or her profit if these costs amounted
solely in respect of the production of the infringing goods. According to FSC case law
(Gemeinkostenanteil, 11 November 2000), fixed costs of the infringer (such as employees wages or
the rent of the infringers premises) are not to be deducted from the infringers profit, thereby
increasing the damages awarded to the patent owner. Therefore, this option of calculating damages
has become increasingly popular.
Lost profit, the third option, is difficult to obtain, as the patentee has to prove a close relationship
between the infringing acts and his or her loss of profit.
As a general principle in German law, damages are only compensatory and not punitive. There is no
additional punishment for wilful infringement (see question 26).
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

In the case of a decision issued in favour of the patent proprietor (namely, the plaintiff) that has
become legally binding, a final injunction is available for future acts of infringement performed by the
sued (and confirmed) infringer (section 704 of the Code of Civil Procedure). Third parties, such as
the infringers suppliers or customers, can be made accountable in an infringement case. They may be
obligated to provide extensive evidence and to permit the inspection of suspected premises if this is
required to strengthen the plaintiffs case. Whenever a decision in favour of the plaintiff is not yet
legally binding (eg, if the decision is under appeal), a temporary injunction is available by placing a
security bond (section 709 of the Code of Civil Procedure).
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

For import or export actions from or into the territory of the European Union from or to non-member
states, the action may be blocked in accordance with the requirements of EU Regulation No.
1383/2003. For import or export actions that are not covered by EU Regulation No. 1383/2003 (eg,
import or export actions from or into Germany into or from other EU member states), the products
may be sequestered in accordance with section 142a of the GPA. Both kinds of actions require that
the products in question obviously represent an infringement of a German patent or a European patent
that is nationalised in Germany. Blocking and sequestering, respectively, are handled by the German
custom authorities. To start a blocking or sequestration action, the proprietor of the infringed patent
must file a corresponding request with the Nuremberg Principal Revenue Office.
For proceedings according to section 142a of the GPA, the owner of the sequestered products may
file a contradiction against the sequestration with the custom authorities within a period of two
weeks. In that case, the patent proprietor has the duty to provide the custom authorities with a court
decision (eg, a preliminary injunction) that confirms the sequestration, also within two weeks,
otherwise the request for sequestration must be withdrawn.

For proceedings according to EU Regulation No. 1383/2003, the patent proprietor has to prove to the
custom authorities that a proceeding according to article 10 of the above EU regulation has been
initiated. The owner of the products must not file a separate contradiction against the blocking action.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In German court proceedings (namely, infringement and nullity proceedings), the losing party usually
has to bear the entire costs of the proceeding (expenses such as attorneys fees of both parties up to
fees calculated based on a statutory fee schedule, as well as court fees), including costs that became
due during the pre-trial stage (warning letters, etc) (section 91 of the Code of Civil Procedure).
In opposition proceedings before the GPTO and the FPC, usually each party has to bear its own costs,
unless the GPTO or the FPC decides that the costs shall be borne by one of the parties to the extent
that this is equitable (section 62 and section 80 of the GPA).
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

As mentioned in question 22, there is no provision in German law for punitive damages. A criminal
action can, however, be brought against an infringer (section 142 of the GPA). Further, a claim for
destruction of the infringing goods is available if the balance of interests between the infringer and the
successful plaintiff allows for it (section 140a of the GPA).
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The statute of limitations for patent infringement matters is laid down in sections 141 of the GPA, and
sections 194ff and 852 of the German Civil Code.
The regular statutory bar for bringing an infringement action is three years from the end of the year in
which the infringing act was first committed and the patentee gained knowledge of it. Regardless of
the patentee gaining knowledge of the infringing act, the statutory bar is 10 years after the date when
damage to the patentee first occurred and 30 years after the first infringing act was committed.
The patentees claims against an infringer may be forfeited if the patentee had knowledge about the
infringing activities for a considerable time without initiating any proceedings against the infringer,
such that the infringer after such time had reason to trust that the patentee would not initiate any
proceedings.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

The patent holder does not have to mark patented products. Should the patentee choose to do so,
section 146 of the GPA provides that third parties have a right to information regarding the
corresponding patent (application) number. Any false or incomplete information may constitute a
damage claim against the patent holder according to section 280(1) of the German Civil Code.
False patent marking (eg, marking a product as patented, although the application is still pending) may
constitute a case of unfair competition.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

In principle, the terms and conditions of licensing contracts are the responsibility of the contracting
parties only and can be chosen by them. The terms of the contract have to comply with the German
antitrust regulations (sections 1 to 3 of the German law on antitrust regulation). Field-of-use
restrictions, restrictions regarding the amount of production and sale, temporal or regional
restrictions are allowed. If there are any doubts as to the permissibility of certain terms within a
contract, an inquiry may be filed with the Antitrust Division, which decides on the admissibility of
these terms within three months of the inquiry.
If the effects of a licensing contract extend to other (namely, non-German) territories of the European
Union, and additionally affect a remarkable share of the relevant EU market, the provisions of the
Treaty on the Functioning of the European Union (TFEU) as well as Council Regulation No.
772/2004, specifying how article 101 of the TFEU should be applied, must be obeyed.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

According to section 24(1) of the GPA, a non-exclusive compulsory licence will be granted by the
FPC upon the request of a party that for a reasonable time had unsuccessfully negotiated with the
patent proprietor regarding a voluntary licence under reasonable terms, provided that the public
interest requires the grant of such a compulsory licence.
Section 24(2) of the GPA provides a specific regulation for dependent inventions: a non-exclusive
compulsory licence shall be granted by the FPC upon the request of a party that for a reasonable time
had unsuccessfully negotiated with the patent proprietor regarding a voluntary licence under
reasonable terms, provided that the dependent invention in view of the old invention represents an
important technical progress of high economic relevance. Public interest is no longer required in that
specific case. The proprietor of the older patent may request a corresponding counter-licence from
the proprietor of the younger patent.

Section 13 of the GPA provides that a patent shall have no effect where the federal government
orders that the invention shall be exploited in the interest of public welfare, nor shall the effect of a
patent extend to any exploitation of the invention that is ordered in the interests of the security of the
Federal Republic.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

According to the GPTO, it usually takes from two to two and a half years to obtain a patent provided
that the applicant requests (substantial) examination (section 44(1) of the GPA) of the application
within the first four months after filing. On the other hand, it is possible to delay the request for
examination for a maximum of seven years after the filing date of a patent application (section 44(2)
of the GPA).
The official fees for obtaining a patent amount to at least 390 (application fee for up to 10 claims
and examination fee) and the annuities range from 70 for the third year to 1,940 for the 20th year. If
the applicant is represented by a qualified patent attorney, additional attorneys fees of between
5,000 and 8,000 should typically be expected to be incurred. The costs could be significantly
higher in appeal or opposition proceedings.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The German Patent and Trademark Office (GPTO) has pilot PPH programmes with the patent offices
of Austria, Canada, China, Finland, Japan, Korea, the United Kingdom and the United States.
Upon a reasonable request, prosecution and opposition proceedings can be expedited if the normal
time frame would significantly harm the requester.
If the application is a first application and the applicant has requested examination early, the GPTO
will always try to issue the first office action four months before expiry of the priority year.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The formal requirements regarding the content of a patent application are set forth in section 34(3) of
the GPA; thus, the application must contain the name of the applicant, a request for the grant of patent
containing a brief and exact identification of the invention, one or more claims, a description of the
invention and (optionally) drawings of the invention.

According to section 34(4) of the GPA, the description must disclose the invention in a clear and
complete manner enabling a person skilled in the art to perform the invention. While this requirement
is not read in the manner that providing any exemplification of the invention is a legal requirement, it
is established practice that experimental examples are the most convenient way to disclose the
invention.
There is no best mode requirement in Germany. However, care should be taken regarding the
description of the preferred embodiments of the invention (and the corresponding examples), since
subject matter that is not disclosed to represent an optional embodiment may not be used as a fallback
position during examination and potential opposition or nullity proceedings (Heizer, 14 May 2009).
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

When drafting a patent application, the applicant may summarise prior art in the description to define
the technical background and the problem underlying the claimed invention. There is no duty to
disclose all potentially relevant prior art references of which the applicant is aware. In particular,
contrary to US practice, an information-disclosure statement is not required.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Theoretically, a new application with additional claims may be filed at a later date, but usually the
prior application creates novelty or inventive step problems for the claims of the later application. If
the second application is filed within one year of the first application, it may still be possible to
validly claim priority of the first application. There is no application available in Germany that is
comparable to the continuation-in-part application in the United States. Any new claims added to a
pending application must be supported by the original disclosure. Otherwise, the new claims are
impermissible added matter (section 21(1)4 of the GPA).
An invention disclosed but not claimed in an application may also be made the subject matter of the
claims of a divisional application. A divisional application may be filed as long as the parent
application is pending. The claims of a divisional application must be supported by the original
disclosure of the parent application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

If an applicant or, in opposition proceedings, the patent proprietor or the opponent are adversely
affected by the GPTOs decision, an appeal can be filed within one month after service of the written

decision (section 73 of the GPA). The appeal will be handled by the FPC. The FPCs decision may
be appealed on a point of law before the FSC (section 100 of the GPA).
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Within nine months of the publication of the mention of the grant of a patent, a notice of opposition
can be filed and must be accompanied by a statement setting out the facts and evidence on which the
opposition is based. Further, after the nine-month opposition term (if no opposition is filed) or after
the termination of opposition proceedings, a nullity action can be brought before the FPC. For details
regarding opposition and nullity procedures, see question 17.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The GPA does not provide for interference proceedings in the case of disputes regarding priority and
thus the right to invention. As a result of the first-to-file principle (section 6 of the GPA), the person
who first filed a patent application regarding a specific invention has the right to this invention, unless
this person is not entitled to the invention (usurpation). In such a case, the rightful owner of the patent
may initiate legal proceedings against the applicant to surrender the right to the grant of a patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Patent claims may be restricted upon the request of the proprietor during opposition or nullity
proceedings in reaction to challenges to the patent based on the grounds of opposition or nullity as
outlined in question 17. To the extent that the competent authority (the GPTO or the FPC) decides that
the arguments of the opponent or the nullity plaintiff are well founded, the patent will be revoked.
As long as an application is pending, a divisional application may be filed in respect thereof (section
39 of the GPA). The divisional application may not extend beyond the original disclosure in the
parent application.
Finally, section 64 of the GPA provides for a procedure before the GPTO regarding voluntary
amendments restricting the scope of the patent claims upon the request of the patentee. Such a request
can also be made in the absence of any pending opposition or nullity proceedings. However, those
proceedings do not include any substantial re-examination of the patentability requirements.
40 Patent duration

How is the duration of patent protection determined?

The duration of the patent is 20 years from the filing date of the patent application (section 16 of the
GPA).

Update and trends

I n Proteintrennung, the FSC had to decide about the novelty of a claim in view of a prior art
document that disclosed all but one feature: the final method step the obtained factor VIII solution is
freeze-dried was not literally disclosed. The prior art mentioned problems associated with the
administration of medicaments prepared according to the claimed method. The FSC concluded that
the medicament should therefore (at least also) be useful for therapeutic purposes. Freeze-drying was,
however, the commonly used method for securing long-term pharmaceutical applicability at the
priority date. Therefore, this step was considered a necessary measure that was immediately apparent
to the skilled person upon reading the prior art document. It was irrelevant that short-term
pharmaceutical application was possible without freeze-drying at the priority date. The claimed
subject matter was thus not novel.
This case seems to contribute to the harmonisation of the case law of the FSC and the European Patent
Office regarding the inclusion of implicitly disclosed features into the novelty assessment.

Oliver Schulz

oliver.schulz@df-mp.com

Sandra Pohlman

sandra.pohlman@df-mp.com

Rainer Friedrich

rainer.friedrich@df-mp.com

Fnf Hfe
Theatinerstrasse 16
80333 Munich
Germany

Tel: +49 89 210 296 0

Fax: +49 89 210 296 33
info@df-mp.com
www.df-mp.com

Greece
Alkisti-Irene Malamis
Malamis & Associates
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patents are enforced in civil courts, with the introduction of a patent infringement lawsuit or
injunction action. Patent infringement lawsuits are exclusively judged by two courts only: a special
chamber of the commercial law sections of the Athens (competent for southern Greece and the
islands) and Thessaloniki (competent for central and northern Greece) First Instance and Appeals
Courts (for the whole country, depending on the seat of the defendant). These sections are also
exclusively competent for community trademark, design and copyrights disputes as well. However,
injunctions are not heard by specialised judges, but by judges that hear all types of disputes.
2 Trial format and timing

What is the format of a patent infringement trial?

A lawsuit must be filed at the competent multi-membered district court with a written document
introducing the infringement claim, containing clearly and precisely all the particular facts and
elements that constitute the infringement and also describing the violated patent right. Upon the filing
of the lawsuit, a hearing date will be set. Under current practice, a hearing date is set in
approximately four to nine months after the filing date. The parties have the possibility to proceed and
settle the infringement claim out of court at any time until the issuance of the decision and such a
settlement may be certified by the court. Both the court decision and the certified settlement agreement
are enforceable. When the lawsuit is being heard, a file with full legal arguments, evidence and up to
two affidavits for each party must be filed by both the plaintiff and the defendant 20 full days before
the date of the hearing. Counterclaims and responses to the other partys arguments and evidence may
be filed at the latest on the sixteenth day before the hearing. The hearing takes place with the oral
examination of one witness for either party. Cross-examination of the witnesses is allowed.
Following this, a transcript of the taped witnesses examination is available and within eight working
days of the hearing, the parties may file comments and evaluate the arguments raised by the witnesses
during the oral hearing. As evidence, one may submit any kind of relevant documents, such as test
results or expert opinions. Private experts may be freely used by the parties and are advisable in

cases of complex chemical or biochemical patent infringement. If the court considers it necessary, an
interim decision shall be issued requesting a court-appointed expert to give an opinion on specific
issues within a specified deadline. The disputed issues are decided by three judges, one of which is
the rapporteur. A patent trial at first instance may typically last one and a half to three years, while it
will take longer if a postponement is granted, which would delay the procedure by another 10 to 15
months. At second instance, a patent trial may last 12 to 16 months. Here again, if a postponement is
granted, the procedure would be delayed for a further six to nine months. In a final appeal to the
Supreme Court (only on issues of law) the same time frame as for a second instance appeal is
applicable.
Where a court expert is appointed, it is expected that the procedure will be further delayed for one
more year. As a general rule, at second instance, no witnesses are heard and the court of appeal
judges the case based on the facts already presented at first instance. However, the court of appeal
may issue an interim decision requesting the presence of the parties and witnesses for examination.
Also, when the defendant has not been represented at first instance, the appeal hearing becomes a full
hearing and witnesses for the defendant may be heard as if it were at first instance.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Full proof of the circumstances and facts that substantiate the claim is necessary. For establishing
infringement, the plaintiff must prove that there is a valid patent and the manner in which the
defendant is copying the object of the patent. For invalidity lawsuits, the plaintiff must prove the
grounds of invalidity of the patent in question. For unenforceability of a patent, the party claiming
such must prove any of the following:
the deadline for bringing the infringement lawsuit or compensation lawsuit for patent infringement
has lapsed;
the plaintiff has led the defendant to believe through acquiescence that a lawsuit would not be
brought and the introduction of the lawsuit at this stage would pose an extreme burden to the
defendant due to economic expences he may have incured;
use by the defendant was made for non-professional or research purposes; or
the patent was null.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The owner of the patent and any other patent right holder has the right to sue for patent infringement.
The owner of a patent application may also sue, but the court will stay the proceedings until the patent
is granted. The exclusive licensee may also sue, provided, however, that the patent licence is
recorded at the Patent Office. A distributor of the patented goods is not entitled to sue because he or
she has no legal rights on the patent. However, the distributor whose business is being harmed from

the infringement may intervene in favour of the plaintiff (patent rights holder) in a lawsuit that has
already been started, and may thus become part of the proceedings.
An accused infringer has the possibility to introduce a lawsuit for the recognition that he or she is not
infringing (declaratory judgment) in any case when an accusation of infringement has been made or
even before such an accusation. The decision of such a lawsuit would be enforceable only between
the parties to it and would constitute a precedent only between the parties and their successors in
title.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

A person can be liable for inducing or contributing to patent infringement to the extent that his or her
actions are substantially important to the occurrence of the infringement. If one performs only some of
the elements or steps of a patent claim, but all together multiple parties practise all the elements, each
individual may be liable for its contribution to the infringement, provided that the particular step
performed is an essential step.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties may be joined as defendants in the same lawsuit. For this, each defendant should
have to contribute to the infringement of the same patent in any way, regardless of if they are related
or not. As such, they may be a producer and a seller of the same infringing items, producers of
different parts of the same infringing product or method or different, unrelated infringers of an
infringed patent. The defendants need not necessarily be accused of infringing the same patent, but a
reasonable link needs to exist so as to give the court grounds for allowing multiple defendants, based
on the particular facts.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place abroad are not relevant to infringement in Greece. However, in this way a
pattern of actions of the infringer can be determined which will be of use for the plaintiff.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

There are no statutory provisions governing the scope of equivalents of a patent claim. To decide a
patent infringement case, according to legal theory judges may use two approaches: either the judge
tries to ascertain the object and the general principle of the invention and establish its field and the
limits of protection of the patent, and then tries to establish if the technical rule followed by the
infringer falls within the limits of the invention, or the judge ascertains the object of the invention and
then tries to ascertain if the infringer uses similar means to those of the infringer (in this case, the
judge does not try to establish the general principle of the invention).
The courts have taken differing positions on this issue and are rather strict in applying the doctrine of
equivalents in infringement actions. However, if a party to a dispute presents a well-based claim of
equivalent effect, especially when the patent specification and claims also provide a basis for
protection for equivalent means and materials, the courts may well accept such claim.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Pre-trial discovery is not permitted by Greek law. An equivalent would be the possibility for the
court to order that either of the parties provide certain documents or disclose certain information to
the other party. Following the special request of one party (filed in either the injunction or the normal
procedure) the court may order that one party provide certain documents or discloses certain
information to the other party. This request should include the reasons of the request and a description
of the specific documents requested, as precisely as possible. However, this procedure is strict in its
prerequisites and also does not give the requesting party the possibility to inspect premises.
After the implementation of the EU Enforcement Directive, in the pre-trial phase and before the
injunction action hearing or before the court hearing in the main proceedings (a normal procedure
lawsuit), the plaintiff has the right to request from the court the order to provide information on the
origin and distribution networks of the goods or services that infringe his or her patent right. This
order can be addressed to the infringer or any other person who:
was found in possession of the infringing goods on a commercial scale;
was found to be using the infringing services on a commercial scale;
was found to be providing on a commercial scale services used in infringing activities; or
was indicated by the person referred to in the previous three points as being involved in the
production, manufacture or distribution of the goods or the provision of the services.
If a court order of that type is violated by the party, then it is obliged to pay a pecuniary penalty up to
100,000.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

When a lawsuit is filed, a hearing is set in approximately four to nine months and depending on the

court, according to current backlogs. After the hearing a decision is expected within four to 12
months, according to current practice. An interim decision that appoints a court expert is expected
within four to six months. After the court expert has expressed an opinion, a new hearing will be set
for final deliberation.
In the appellate courts a hearing is set six to 10 months from filing and a decision is issued within
four to seven months from the actual hearing date, according to current practice.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent infringement lawsuit before and during the trial or the costs for an appeal would
depend on the complexity of the case and on the nature of the infringed patent rights, the extent and
time needed for elaboration, possible multiple hearings, etc.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

There are two possible grounds for appeal: that the law was violated or that the evidence was not
fully and justly appreciated. Either or both of these grounds will suffice.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

If the specific facts in a particular case may form the basis for a competition violation, unfair
competition or a business-related tort, then it is possible that the patent holder is exposed to liability
for such a violation, irrespective of the validity of the patent.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration is recognised by law as a means to resolve disputes between private individuals or

entities. Therefore, only as far as the patent infringement dispute is a dispute between individuals, it
is possible to use arbitration, namely on the issue of infringement and compensation. Regarding
invalidity, jurisprudence has considered that this is a matter of public interest, thus, invalidity should
always be decided by a court of law and any private settlement or arbitration in this respect is not
considered valid as such.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent can be obtained for inventions other than those that are unpatentable by law. Software
inventions are explicitly not patentable by law although the existence of a technical effect may assist
in patenting those aspects of a software-related invention that have a technical effect. It is somewhat
difficult to have business methods recognised as patentable unless a technical effect can be
demonstrated. Surgery and therapeutic methods of the human or animal body, as well as diagnostic
methods applied to the human or animal body, are also explicitly not patentable by law.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

If, according to the employment contract, a company employee has as the object of his or her labour
the performing of inventive activity, the invention belongs to the employer.
If the employee has no contract on inventive activity but only used the employers resources to
perform the invention, the employee must first communicate to the employer the intention to file a
patent application. The employer may then choose to be co-owner of the invention by 40 per cent
(which percentage is set by law), the other 60 per cent belonging to the employee. If the employer
does not respond within four months, the invention shall belong entirely to the employee.
The ownership of a patent for an invention made by an independent contractor depends on the terms
of the employment contract.
When there are multiple inventors or patent owners, the patent rights are divided equally between all
inventors, unless there is a written agreement between the inventors deciding different percentages.
In the case of a joint venture, it is advisable that there is a written agreement between the parties
deciding on the rights to the inventions that will be produced. In the absence of such a contract, the
patent rights are divided equally between the parties that provided the particular invention.
Patent ownership is officially recorded at the Greek Patent Office. Transfers are recorded at the
Patent Office and are valid towards third parties from recordal. Documents pertaining to the
recognition of inventors (when the patent owner and inventor differ) and also patent ownership
transfer documents are requested by the Patent Office to be legalised (apostilled).

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent can be challenged if:

the patent owner is not one of the following: inventor, assignee, beneficiary;
the invention is not patentable (if it is lacking any of the following: novelty, an inventive step or
industrial applicability, or if its subject matter cannot be patented by law);
the description of the patent is insufficient, so that the invention cannot be carried out by a person
skilled in the relevant art; or
the subject matter of the patent goes beyond the content of the protection as claimed in the
application.
The civil courts that are competent for patent infringement issues are also competent for challenging
the validity of a patent. The validity of a patent may be challenged with an individual lawsuit, or with
an objection raised as defence in an infringement lawsuit.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement for patentability. The exceptions are if disclosure of the
invention took place within six months before filing the patent application either:
by an unlawful act at the expense of the applicant (breach of confidentiality agreement); or
by presentation of the invention in a recognised exhibition (in which case such presentation must be
stated when filing the patent application).
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

If a person skilled in the art could, without much effort, come to the same solution for the same
problem based on the existing prior knowledge, then the patent shall not be inventive and shall be
considered to be obvious.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent infringement lawsuit may be denied if the patent right is exercised in bad faith or against
common practices, or is against the social and economic purpose of a right. This is also called an
abuse of right (article 281 of the Civil Code). According to jurisprudence, this may be the case where
a long time has elapsed while the patent owner was aware of the infringement and did not react. The
time needed here is less than the time for the prescription of the right, but there should be additional

circumstances, such as when the infringer is made to believe that the patent owner will not assert its
rights and for this reason has entered into investments and related expences.
There are specific deadlines to file an infringement lawsuit, namely five years from knowledge of the
infringement, or of the damage incurred and of the identity of the party responsible for the
infringement.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

An accused infringer can use as a defence the claim that he or she was already exploiting or had
prepared to exploit the invention as a product of his or her intellect at the time of filing of the asserted
patent (or its priority date) and should thus be allowed to continue to use the object of his or her
intellect. However, such use may only be for the needs of his or her enterprise and thus this right to
continue to use the invention may be transferred only together with the business of the prior user
(article 10(3) of Law 1733/1987).

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Under the provision that patent infringement is intentional, the plaintiff may choose among the
following monetary remedies provided by law:
compensation of damages (including actual losses and lost profits and moral damages, if possible to
substantiate);
account of profits made by the infringing exploitation of the patent; or
the payment of an amount equal to lost royalties; this amount needs to be substantiated and proved
by the plaintiff.
Punitive damages are not granted by law, unless they are contractually agreed between plaintiff and
defendant in the form of a penal clause in a contract. The amount of damages claimed must be fully
and clearly substantiated by the plaintiff and shall be the damages actually suffered by the plaintiff, or
profits actually won by the defendant.
Damages may be sought for the last five years before serving the lawsuit. The accrual of interest
starts from the time of serving the lawsuit that includes the compensation claim.
Following the implementation of the EU Enforcement Directive, compensation options and factors to
be taken into account by the judge have been specified: the patent owner must prove that there is
intention or severe negligence by the infringer in order to request compensation. In the calculation of
the damages to be awarded, the court may either:

 take into account all appropriate aspects, such as the negative economic consequences, including
lost profits that the injured party has suffered, any unfair profits made by the infringer and, in
appropriate cases, elements other than economic factors, such as the moral prejudice or damage
caused to the rightholder by the infringement; or
it may, in appropriate cases, set the damages as a lump sum, based on elements such as the amount
of royalties or fees that would have been due if the infringer had requested authorisation to use the
intellectual property right in question.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A temporary injunction may be obtained against future infringement as long as imminent danger of the
infringement is demonstrated. The court deciding on an invention decides on probability. A final
injunction may be obtained only against present infringement and full evidence of the claim must be
submitted.
A decision is effective against third parties other than the infringer (namely its suppliers or
customers) only when it is issued following a lawsuit directed against them, too. The decisions
effects are intra partes.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The importation of infringing goods may be blocked by use of customs intervention. A request for
such customs intervention may be filed at the Greek customs authority or a single request may be filed
for the whole EU at any EU countrys competent authority and may also cover Greece, based on the
EU Customs Regulation (Council Regulation (EC) No. 608/2013 concerning customs actions against
goods suspected of infringing certain intellectual property rights and the measures to be taken against
goods found to have infringed such rights). It is important to note that in the case of an EU-wide
request, certain formalities are adviseable to be performed for the customs intervention decision to
be in force in Greece:
a contact person with proxy must be appointed for Greece; and
the documents of the request with supporting annexes must be translated into Greek.
In practice, customs authorities may proceed to block suspected infringing goods either on their own
initiative or following a specific request by the patent owner. Then, the patent owners representative
is invited by customs to obtain a sample of the blocked goods and must present a written report
stating whether the blocked goods are counterfeit and the reasons for that. The reasons named may be
both technical and commercial. Then the importer and the intended recipient of the goods are invited
to state whether they agree to the destruction of the goods. If this approval is expressed, or if the
recipient or importer does not object in writing within the prescribed deadlines, or if the address and
contact details of the recipeint or importer are false, the infringing goods proceed to destruction. If an

objection is expressed, the patent owner must proceed to the courts competent for patent disputes and
an injunction action must be issued to confirm the temporary blocking of the goods. A decision
accepting a normal procedure civil lawsuit must be issued in order for the destruction of the goods to
be ordered.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The court usually adjudicates a nominal amount as court expenses, in the range of 500 to 3,000.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

The basis for asking for compensation for a patent infringement is that the infringement is intentional.
Depending on the circumstances, one could ask for higher damages (namely also moral damages).
Wilful infringement exists if the infringer was aware of the effect that the infringing act would have as
result the infringement of patent rights of the rights holder and intended to commit the infringement.
The existence of gross negligence by the infringer leads to the same effect too.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The time limit is five years from knowledge of the infringement by the rights owner, or from the
damage and identification of the party that is responsible for the infringement. On the other hand, an
invalidity lawsuit may be brought at any time during the lifetime of a patent.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

It is not compulsory to mark patented products. However, when patent marking is done, this should
not be a false declaration regarding the existence of a patent (or patent application). Any false
declaration is a criminal offence (fraud) and is punished as such by personal detention and a fine.
False patent marking may also be considered as an act of unfair competition towards competitors and
may be prosecuted as such, namely, competitors may seek cease and desist of the false patent marking
and compensation for any damages therefrom, plus they may complain and seek criminal prosecution
for this.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are no specific restrictions on the contractual terms for patent licences, other than the general
provisions of contractual law and competition law.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The following prerequisites must all apply for a compulsory licence to be issued with a court
decision, following a relevant request to the competent court:
three years from the patent grant or four years from the patent application have lapsed;
the invention has not been exploited in Greece, or if it has been, the production of goods does not
meet local demand; and
the third party has notified the patent holder, one month before filing the relevant request at the
court, of its intention to ask for a compulsory licence.
The patent owner has certain defences, such as arguing that there were reasons for the nonexploitation.
Regarding the terms of the compulsory licence, such as the amount and terms of payment of royalties
and the exclusivity or not of the licence, the law says that an opinion may be sought from the Patent
Office, which is not binding for the court. On this issue, because the reasons for deciding on the
licence terms would very much depend on the market situation in the specific sector, it seems more
appropriate to present a documented case study instead.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A Greek patent application is issued usually 18 to 24 months after its application. The official fees to
be paid for filing a patent application of 10 claims is 350 with an additional 30 per additional
claim starting from the 11th claim onwards. Annuity fees are paid from the third year onwards until
the 20th year and the early amount for annuities payment increases with the number of years of
protection.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In a Greek national patent application, one may give up the right to have a deadline of four months for
completing irregularities in ones application file, thus speeding acceptance of the patent application.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The invention for which a patent is sought must have been disclosed in a specification, in a manner
enabling a specialist in the art to perform the invention. In the description, the closest prior art must
be identified, and its shortfalls should be described with the underlying problem. The invention
should then be described as the way of solving the problem. At least one example should be included
in the specification. Due care must be taken so as to disclose enough of the invention but not too much
so that the specification is not limiting on the scope of the invention. The specification must be
followed by at least one claim, which gives the scope of the patented invention and of the patent
rights.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no obligation on the inventor to disclose prior art to the patent examiner.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

One or more later patent applications (called amended patents) may be issued only when the object of
the new patent is connected to at least one claim of the earlier (main) patent. Such an amended
application follows the fate of the earlier (main) patent and its protection ends with the end of
protection of the original patent.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An adverse decision of the Patent Office, which is considered an administrative act, may be appealed
at the Supreme Administrative Court (Council of State). However, because the Greek Patent Office
does not perform substantial examinations but only formal examinations, any rejections would be for

formal reasons.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The Greek Patent Office conducts only an examination of the formalities on patentability, and the
search report is provided for information purposes only and does not lead to the rejection of patents.
By law, invalidity of a patent may only be decided by the civil courts. Invalidity may be sought with a
separate lawsuit, the acceptance of which has the result that the patent is invalidated with effect
against all (intra omnes). Invalidation may also be sought by means of an objection by the defendant
in infringement proceedings, in which case the acceptance of such a claim will lead to the rejection of
the infringement lawsuit or injunction request only and not to the invalidation of the patent (intra
partes effect).
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The first to invent has priority. If more than one persons make the same invention independently,
priority belongs to the first to file for the invention or the first that has international priority according
to the Paris Convention. It is presumed that the applicant of a patent application is also the inventor.
Disputes between applicants for the same invention are resolved in the civil courts.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Once a patent is issued, it may be modified only with issuance of a court decision. A court may
amend the patent claims, in that it may restrict their scope. There is no provision for the reexamination of granted patents.
40 Patent duration

How is the duration of patent protection determined?

A patent is protected in Greece for 20 years, starting from the patent filing day.

Alkisti-Irene Malamis

malamis@malamis.gr

8 Palea Tatoiou Street

Kifissia
145 64 Athens
Greece

Tel: +30 210 362 9855

Fax: +30 210 364 7994
www.malamis.gr

Honduras
Ricardo Anibal Mejia
Bufete Meja & Asociados
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

The holder of a patent registration is entitled to file an infringement action before the competent court
against any party who infringes its rights. It may also act against a party who is carrying out acts that
may give grounds to presume an imminent infraction. In cases of co-ownership of a right, any of the
co-owners may file an infringement action without seeking the consent of the other owners. A duly
recorded licensee may also file suit for these reasons. For measures that can be requested in the event
of infraction of the rights protected by the Honduran Industrial Property Law (see question 21).
There are no specialised courts where a patent infringement suit can be brought. These cases are filed
before the civil courts.
The above should be differentiated from a nullity action, which may be filed by anyone that considers
itself the rightful owner of a patent and files suit against a third party who was able to secure a patent
for the same object of protection. This action will expire after five years starting from the date of
grant of patent, or two years starting from the date in which the invention had begun to be worked in
the country, applying the term that expires later.
2 Trial format and timing

What is the format of a patent infringement trial?

A patent infringement action has three main litigation stages: first, once a suit has been brought, it is
served on the alleged infringer, who then has six working days to respond and bring a counterclaim;
then the response is served on the plaintiff for allegations, and all evidence is analysed; and finally a
decision is issued. This decision, issued by a first instance court, can be appealed before a court of
appeals and then before the Honduran Supreme Court.
Under the general principles of Honduran law, it is the plaintiff who must prove all allegations and
claims. Thus, a plaintiff in a patent litigation is required by law to prove the existence of the
infringement. In this respect, the Honduran Industrial Property Law does not regulate the manner in
which an infringement is to be proven. The Honduran Code of Civil Procedure is applied as a
supplement to the Honduran Patent Law regulations, and under such Code the following proofs are

allowed: documentary evidence; expert witnesses; judicial audit or inspections; and presumptions.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The Honduran Industrial Property Law grants patentees and their duly registered licensees the rights
to the exclusive exploitation of the patented invention. Therefore, a patent gives the right to exclude
others from making, using, offering for sale or importing the covered invention. In a patent
infringement action, the plaintiff must prove the following:
ownership or recorded licence over a granted, valid and fully in-force patent generally, a certified
copy of the file wrapper of the patent prosecution is enough to prove these requirements. The
validity of the patent may be challenged by the defendant;
that someone is using, making, offering to sell or importing the patented invention when a plaintiff
claims infringement of a patented process, the defendant has the burden of proving the use of a
different process other than the patented process; and
use of the patented invention only literal infringement is recognised. No doctrine of equivalence
applies. The plaintiff must prove that the wording of the patents claim or claims covers the alleged
infringing product or process. First, the plaintiff must define the scope of the approved claims. The
Honduran Industrial Property Law and the courts have established that the span of the claims is
determined by the wording of the claims, aided by the description and drawings.
Infringement actions usually require expert witness declarations and official attestations and opinions
from the Honduran Patent Office.
Non-infringement
The basis of this defence is that the proper interpretation of the patent claim does not catch the alleged
infringing product or process.
Challenging the validity of patents
Under the Honduran Patent Law, granted patents (for products or procedures) are valid until the
contrary is proven in a court of law or in an administrative procedure for the nullity of the patent as
previously indicated.
One of the most common defences in patent litigation in Honduras, both at a court or administrative
level, is to attack the validity of the allegedly infringed patent. As the patent exists, an administrative
or judicial resolution is required to declare its annulment.
This defence must be brought up when answering the plaintiffs claim, but by means of a
counterclaim. The court or Patent Office will give notification of the counterclaim to the party who
filed the original complaint. Both the infringement claim and the counterclaim should be resolved
simultaneously to preclude the possibility of contradictory outcomes. The grounds for invalidating a

patent are as follows:

the patent was granted in contravention of the provisions regarding the requirements and conditions
for the grant of patents or registration of utility models and industrial designs (namely, the patent was
granted to an invention that, according to the law, was non-patentable on absolute or relative grounds;
the patent was granted in contravention of the law in effect at the time the patent or registration was
granted;
the patent application was abandoned during its prosecution; or
the grant of patent was defective because of errors or serious oversight, or it was granted to a
person not entitled to it.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Any patentee or duly registered licensee (unless expressly forbidden from doing so) has the right to
prosecute a suit against a third party infringing his or her rights. A distributor may not bring a suit for
infringement. An accused infringer may counterclaim patent invalidity under formal or technical
considerations upon receiving the infringement suit.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

All parties involved in an infringement, either by manufacturing, providing means to commit the
infringement or perpetuating acts that may be considered as facilitating patent infringement, may be
liable in a patent infringement suit.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit. The requirements are that the
defendants are making, using or selling substantially similar methods or products and that they have
the same corporate or commercial relationship to the accuseds methods or products. All of the
defendants must be accused of infringing the same patent in these cases.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place abroad cannot support a patent infringement action in Honduras per se,
unless there is a resulting effect in Honduras such as the importation of infringing goods.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Pursuant to the Honduran Industrial Property Law, only literal infringement is recognised. No
infringement under the doctrine of equivalence is expressly provided for. The plaintiff should prove
that the wording of the patent claim covers the alleged infringing product or process.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Honduran law does not contemplate the possibility of discovery as such. Accordingly, a plaintiff must
provide the court or Patent Office with all available evidence to prove infringement, damages or
invalidity. There is, however, a possibility of acquiring documentation during an inspection visit of
the judge or administrative officer. During process patent suits, the defendant has to provide evidence
that the process used is different from the one covered by the patent claims.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Actions before the Patent Office, Higher and Highest Administrative Office (Superintendency of
Intellectual Property) may last from 15 to 24 months. An initial resolution from the Patent Office can
be expected within 12 months. A decision from the Higher Administrative Office may take around
four months, and a decision from the Highest Administrative Office take an additional two to six
months.
A court action, either before the civil courts or the Contentious Administrative Court (challenging
decisions issued by the Highest Administrative Office) may last from two to three years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Fees for the preparation and filing of a patent infringement lawsuit before the Patent Office or courts
are around US$6,000. Additional fees and expenses (depending on the nature of the evidence

submitted, translation costs when needed, expert witness charges) are highly variable. Attorneys fees
for prosecuting the matter alone may cost another US$7,000 to US$10,000.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Appeals to decisions rendered by the Patent Office go to the Higher Administrative Office and then to
the Highest Administrative Office (Superintendency of Intellectual Property). The decision rendered
by this Office puts an end to administrative procedures. The affected party may file suit before the
Contentious Administrative Court against the decision rendered by this office and request reversal of
the decision and damages.
Appeals to decisions rendered by the civil courts go to the circuit court of appeals and then to the
Honduran Supreme Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The Honduran Administrative Offices and courts generally consider that the use of a state-given right
cannot constitute a violation of rights.
Nevertheless, an action could theoretically be brought for activities falling outside the scope of a
patent, such as non-competition agreements for products that are not covered by the claims, producttying within that scope or unfair competition activities such as advertising that a product is better than
an alternative for the sole reason of it having a patent.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution methods are available in Honduras but they are not commonly used.
There are no provisions requiring the mandatory use of an alternative dispute resolution method
before bringing a patent infringement action.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The following will not be considered an invention, and by virtue of this will be excluded from patent
protection:
computing programs per se; and
methods of surgical and therapeutic treatment or diagnostic methods applicable to the human body
and those related to animals.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The right to the patent will belong to the inventor without prejudice to what it is established in
articles 12 and 13 of the Honduran Industrial Property Law. When several people produce an
invention jointly, the right to the patent will belong to them in common. The right to a patent can be
transferred by acts between living persons or through hereditary succession. If several people
independently effect the same invention from one another, the patent will be granted to the person (or
his or her beneficiary) who files the patent application first or who claims the earliest priority date
according to article 141 in the Honduran Industrial Property Law.
According to article 12, when an invention had been produced in fulfilment or compliance with a
work or service contract or employment contract, the right to the patent for that invention will belong
to the person who contracted the work or service, or to the employer, as it shall correspond, except
for a contractual provision otherwise. When the invention should have an economic value much
higher than the one the parties could have reasonably foreseen at the time of concluding the contract,
the inventor will have the right to special compensation, the amount of which will be set by the
competent court in the absence of agreement between the parties. Any contractual provision less
favourable to the inventor than the ones provided in this article will be null.
According to article 13, if an employee who was not under the obligation in his or her employment
contract to perform an inventive activity should fulfil an invention in the area of activities of the
employer, or through the use of data or means to which he or she would have access because of his or
her employment, he or she will immediately communicate this fact to his or her employer in writing.
If, within a term of two months starting from the date on which the employer would have received
such communication, or should have knowledge of the invention by any other means, applying the
earliest date, the employer notifies in writing the employee his or her interest in the invention, the
employee will have a right to the co-ownership of the patent, having an equitable right to the profits
that the use of the invention should occasion. If the employer does not carry out the notification within
the established term, the right to the patent will belong to the employee. Any contractual provision
less favourable to the inventor employee than the ones provided in this article will be null ipso jure.
Besides joint ownership, as stated above, which originates from the parties joint contribution to the
creation of the intellectual property as joint inventors, Honduran Law also recognises co-ownership
of patents by virtue of joint venture agreements.

Defences

17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent may be challenged through a nullity action before the Honduran Patent Office.
A patent can be established as invalid by proving that:
the patent covers subject matter that cannot be regarded as an invention (namely, theoretical or
scientific principles, discoveries, schemes, plans, rules, games, business methods in the abstract
and mathematical methods, computer programs, forms of presenting information, artistic and literary
productions, methods of surgical or therapeutic treatment and juxtaposition of inventions that are
known), is not a product (machine, device or composition of matter) or is not a process;
the patent does not meet one or more of the patentability standards or conditions, namely novelty,
inventive activity or step and industrial application, if the subject matter ab initio qualifies as an
invention; or
the patent was granted in contravention of the law. A patent can be annulled if it does not comply
with formal or technical legal provisions.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Absolute novelty is a requirement for patentability in Honduras.

There are some exceptions to the absolute novelty bar: disclosure of the invention by the inventor or
assignee within a 12-month period prior to the filing of the Honduran application, or the recognised
priority, does not constitute a novelty bar, provided that a statement regarding the date, place and
means of disclosure is filed together with the Honduran application. Means of disclosure include a
trade show, a published article, sales of the product and so on.
Publication of a patent application or issuance of a patent by a foreign patent office are the only
means of disclosure excluded from the foregoing.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The standard for determining whether a patent is inventive in view of the prior art is defined in
articles 4, 6 and 12 (and others) of the Honduran Industrial Property Law. These articles establish
that an inventive activity is a creative process the results of which are not apparent from the state of
the art to a person with technical knowledge in that field.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

The Honduran Industrial Property Law contemplates some scenarios in which a valid patent is
deemed unenforceable. A patent cannot be enforced against a third party that:
in the private academic field performs, for non-commercial purposes, purely experimental,
scientific or technological research, testing or teaching activities, and for this purpose produces or
uses a product or process equal to the patented one; and
for reasons of public interest, and particularly in cases of emergency or for national security
reasons, nutrition or public health, the state department of the Ministry of Industry and Commerce, on
request of any natural or juristic person, state entity or official, will be able to order the following at
any time:
that an invention, object of a patent or patent pending application be used by a state entity or one or
more people of public or private right, designated for the purpose; and
that an invention for which a patent has been granted or has a patent pending application shall
remain open to the grant of licences of public interest. In this case, the Industrial Property Registry
Office will grant a licence of use to any person that shall request it and shall have the capacity of
accomplishing such use in the country.
Any licence of public interest will generate the corresponding payment in favour of the holder of the
patent granted by the Patent Office or, if there is the lack of an agreement, the payment due will be
fixed by the state department of the Ministry of Industry and Commerce before the General
Directorate of Intellectual Property. The decision of the Ministry in terms of the payment to the holder
of the patent shall be the object of remedy of appeal through executive action, and once this is
exhausted, the legal process will remain unobstructed.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Private use of the method can be used as a defence by the accused infringer and it covers all types of
invention.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Several administrative sanctions can be imposed on a person found to have infringed a patent. These
range from a fine to penal sanctions in the event of recidivism. The affected party may also bring an

additional claim for damages and lost profit in a civil law action.
Damages and lost profit start accruing from the date on which the existence of an infringement can be
proven. Honduran law tends to provide fair compensation to the affected party.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

In the event of infraction of the rights protected by the Honduran Industrial Property Law, one or more
of the following measures can be requested:
(i) the cessation of the acts that infringe the rights;
(ii) indemnification from the damages suffered;
(iii) the seizure of the objects resulting from the infraction, and of the means that had predominantly
served to commit the infraction;
(iv) the prohibition of the import or export of the products, materials or means referred to in (iii);
(v) the withdrawal of the objects or means referred to in (iii) from the commercial circuits, or their
destruction, when appropriate;
(vi) the attribution in property of the objects or means referred to in (iii). In this case, the value of the
assets will be imputed to the amount of the damages; and
(vii) the necessary measures to avoid the continuation or repetition of the infraction, including the
destruction of the seized objects referred to in (iii).
A bond will be required from the plaintiff prior to issuing the provisional injunctions needed to carry
out any of the measures listed above. This bond has the goal to warrant damages to the defendant.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

As part of the DR-CAFTA agreements, the Honduran Customs Office may block the importation of
infringing products into the country. However, in practice, the IP special unit of the Honduran
Customs Office will ask the Patent Office to notify the attorneys of the registered owners of a
possible infringement; they will then have up to 48 hours to initiate an action before the IP unit of the
Attorney Generals Office to work with the Customs Office and achieve the seizure of the goods
before they are released in the Honduran market.
The Customs Office also allows for some firms that handle a large number of cases to provide them
with lists of relevant patents and products in order to receive forewarning when an importation
petition is filed or when the merchandise arrives at the port of entry.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Although contemplated both in administrative and court actions, costs and attorneys fees are not
usually awarded except in those cases where the lack of the right to litigate of one of the involved
parties is extremely obvious.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Yes, whether or not an infringement was wilful is taken into consideration both in administrative and
judicial instances for determining fines, penalties and damages.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The present criterion is that the time limit for seeking a remedy is during the life term of the patent.
Once the patent has expired, an action may not be brought for actions that took place before the end of
the life term.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There are no marking requirements under Honduran law. In cases of false patent marking, unfair
competition actions could, theoretically, be filed.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are no restrictions on the contractual terms by which a patent owner is permitted to license a
patent. According to the Honduran Industrial Property Law, a licence agreement must be recorded
with the Patent Office in order for the same to be enforceable against third parties. A duly registered
licensee will be entitled to exercise legal action to protect the patent rights as if he or she were the
holder, unless otherwise agreed. The working of a patent by a duly registered licensee will be
deemed to be worked by its holder.

Thus, even though it is not mandatory to register a licence agreement, it is advisable to do so so that
the licensee can exercise his or her legal rights, particularly against third parties.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

At the request of any person who proves his or her capacity to use the patented invention, presented
four years starting from the date of the filing of the application of the patent, or three years starting
from the date of grant of the patent, whichever expires later, the Patent Office shall grant a
compulsory licence for the use of a patent if it is not in use in the country and following an audience
with the patent holder.
A compulsory licence will not be granted when it is demonstrated that lack of use is due to a
fortuitous case or force majeure, or to circumstances that are out of the will or control of the holder of
the patent and that justify the lack or insufficiency of industrial use of the patented invention. Lack of
financial resources or lack of financial viability of the use will not be considered as sufficient
circumstances for non-working.
Before granting a compulsory licence, the Registration Office will give the holder of the patent the
opportunity to proceed to its use within a term of two years starting from the notification made to him
or her.
Whoever requests a compulsory licence according to the Honduran Industrial Property Law must
prove that he or she has previously asked the holder of the patent for a contractual licence, and that he
or she has not been able to obtain it within reasonable conditions and terms. The application for the
compulsory licence will indicate the conditions under which the licence is claimed to be obtained.
The resolution of grant of a compulsory licence will establish:
the scope or extension of the licence, specifying in particular the term and acts, which will mainly
be to supply the home market of the country;
the quantity and way of payment the licensee shall fulfil, such payment to be determined based on
the amplitude of the use of the invention object of the licence and the economic value of the licence;
and
other conditions that the Industrial Property Registry Office would estimate necessary or convenient
for the best use of the patent.
A compulsory licence granted according to the precepts of the Honduran Industrial Property Law
shall be revoked by the Industrial Property Registry Office, at request of the interested person, if the
beneficiary of the licence should not accomplish the obligations that are his or her duty, or if the
circumstances that originated the licence disappear and it would not be probable for them to occur
again. The obligatory licence shall be modified by the Registration Office, at the request of any of the
parties, when new facts or circumstances justify it, particularly when the holder of the patent had
granted contractual licences in more favourable conditions than the ones agreed to the beneficiary of
the compulsory licence.
Compulsory licences cannot be exclusive, cannot be assigned or sub-licensed and can only be
transferred with the business or with the portion of the business in which the invention is worked.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The average time for obtaining a Honduran patent varies depending on the field of technology.
Generally, it takes from two to three years to obtain a patent.
The cost of obtaining and maintaining a patent in Honduras, from filing to expiry date (20 years in all
cases), will be around US$4,000 to US$5,000.
Additionally, the cost of Spanish translations of the specification and the cost of any other documents
filed in a foreign language during the prosecution of the application need to be taken into account.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are no expediting procedures for patent prosecution in Honduras.

33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Both national patent applications and Patent Cooperation Treaty (PCT) national phase applications
must include the following:
the name and address of the applicant;
the place of incorporation (if a juridical person);
the title of the invention or the utility model;
the name and address of the inventor if he or she is not the applicant. If the inventor did not file the
PCT base application, but rather the company entering the national phase in Honduras, then no
assignment is needed;
the petition designating Honduras as a national phase country;
payment of the first annuities since the basic PCT application was filed until the date on which the
national phase application is filed before the Honduran Patent Office;
the date and serial number of the basic PCT application;
two copies of the description, claims, drawings (if applicable) and summary in Spanish (the
Spanish translation has to be filed at the time of filing the application); and
power of attorney (legalised by the apostille or a Honduran consulate).
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

No, unless requested to do so as part of the examination process of the patent application.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Yes, divisional applications are allowed in particular cases.

36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The decisions rendered by the Highest Administrative Office (Superintendency of Intellectual

Property) put an end to administrative procedures. The affected party may file suit before the
Honduran Contentious Administrative Court requesting the said court to revoke the decision and also
reclaim monetary compensation for damages in particular cases.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

After the publication of the application in the Official Gazette, which is ordered after substantial and
formal examination by the examiners of the Honduran Patent Office, any interested person will be
able to present an opposition before the Patent Office making observations and presenting information
or documents related to the patentability of the invention object of the application.
The Honduran Patent Office is in charge of knowing and resolving the oppositions filed that will be
substantiated under the ordinary declarative procedures established by the Code of Administrative
Procedures and the Honduran Industrial Property Law regulations.
The opposition should be presented within the term established by the Honduran Industrial Property
Law, which is during the term of the publication or up to 30 working days counted from the last
publication date.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Honduras follows the first-to-file system. Consequently, there are no mechanisms for resolving
disputes between different applicants for the same invention.

39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Amendments, additional claims or modification of claims, description or drawings are allowed

during the prosecution of a patent application. After allowance, amendments are only permitted for
correcting obvious errors in the letters patent or limiting the scope of the claims in the letters patent.
The patent shall be revoked by the Honduran Patent Office, upon the request of any interested person
or competent authority, in cases of abuse of the rights conferred by the patent with the purpose of
controlling, restricting or suppressing the industrial or commercial activities in such a way that it
unlawfully affects the national economy, and as long as the grant of a compulsory licence had not been
enough to end the situation created by this abuse.
The following situations, among others, will be considered abuses of the patent:
the unlawful blocking or affecting of the establishment or development of new enterprises or
industrial or commercial activities in the country due to the unjustified or abusive conditions imposed
by the grant of a licence;
the products protected by the patent are offered in the country at an unjustifiably high price as a
consequence of an abuse of the rights conferred by the patent; and
the patent is used to unjustifiably impede, restrict or control any industrial or commercial activity
related to products or procedures that are not covered by the patent.
40 Patent duration

How is the duration of patent protection determined?

Honduran patents (in all fields) are granted for 20 years counted from the effective filing date of the
patent application. For Convention and non-Convention applications, the effective filing date is the
filing date in Honduras. For PCT applications, the effective filing date is the date of filing of the
international patent application. A 30-month term is used for entering national phase applications.
Patents or registrations expire and the rights they protect normally fall into the public domain in the
following cases:
at the end of the 20-year term; and
for failure to pay patent annuities (a total of 20 annuities).
Expiration owing to the expiration of the patent duration term will not require an administrative
resolution.
Utility models have a term of 15 years from the effective filing date. Design registrations have a term
of five years (renewable for two additional periods of five years) from the effective filing date.

Ricardo Anibal Mejia

rmejia@bufetemejia.com

20 Avenida A 1 y 2 Calle SO
Barrio Ro Piedras
San Pedro Sula
Honduras

Tel: +504 2550 2624/7744/ +1 718 247 4471

Fax: +504 2550 0795/ +1 718 732 2118
www.bufetemejia.com

India
Archana Shanker and Gitika Suri
Anand and Anand
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Legal proceedings
At present, the civil courts have exclusive jurisdiction to entertain and decide issues concerning
patent infringement. Under the Patents Act, 1970, the court of first instance for a patent infringement
action is the district court. Where in an infringement action, the defendant opts to challenge the
validity of the suit patent, the Act requires the suit to be transferred to a high court. Further, the high
courts of Delhi, Bombay, Calcutta and Madras exercise original jurisdiction for patent infringement
actions subject to the pecuniary jurisdiction as prescribed under the respective Rules. This implies
that an infringement action may be directly brought before these specific high courts provided the
pecuniary limits are satisfied. At present, India does not have specialised courts to hear and decide
patent infringement action even though the requirement of the same has been recognised in the recent
draft national IPR policy. A majority of patent infringement actions have been instituted before the
high court of Delhi in the recent past and, as a result, the court has seen a marked transition in judges
becoming more conversant and gaining expertise in the realm of patent law. On a general note, patent
enforcement actions come within the scope of regular litigation before civil courts.
Administrative proceedings
The Patent Office and the Intellectual Property Appellate Board (IPAB), a specialised statutory body
established to deal with intellectual property issues, have jurisdiction to decide on issues of patent
invalidity, in addition to a high court.
2 Trial format and timing

What is the format of a patent infringement trial?

Proceedings against infringement of a patent are initiated by filing a civil suit either in the district
court, or in some jurisdictions, directly before the high court.
Once such a suit is listed before court, summons will be issued to the defendant. If the defendant fails
to appear despite having been served through various means, he or she will be proceeded ex parte.
Interim stage
In every suit, the plaintiff can file a petition seeking interim relief. The court may grant an interim
injunction against the defendant, if the plaintiff satisfies the following criteria: it is a prima facie case;
there has been irreparable harm; the patent is valid and infringed; and the balance of convenience is
in favour of injunction.
Ex parte injunctions (where no notice is served on the defendants) will be granted where it appears
that the object of granting the injunction would be defeated by the delay of giving notice to the
defendants. However, in patent infringement cases, ex parte injunctions are usually declined as the
complex issues involved in these cases often require a consideration of the defence raised by the
defendant.
The High Court of Delhi has granted ex parte and interim injunctions in cases where the defendants
product was yet to be launched in the market (quia timet actions). For instance, such ex parte orders
have been passed in Bristol Myers Squibb and Anr v JD Joshi and Anr, Bristol Myers Squibb and
Anr v Dr BPS Reddy, Ors Yuhan Corporation v Ajanta Pharma Ltd, Vifor (International) Ltd v
Symed Laboratories Pvt Ltd, Novartis v Ranbaxy a n d Dong-A Pharmtech Ltd v Emcure
Pharmaceuticals Ltd.
Trial in patent infringement suits
If the defendant wishes to contest the suit, it will be obliged to file a written statement to the plaint
within 30 days of being served, or seek an extension of time up to an additional period of 60 days.
The defendant may also file a counterclaim seeking revocation of the patent at any stage, either with
the written statement or later. Where the suit is instituted before the district court and a counterclaim
of revocation is filed, the suit and the counterclaim will be transferred for adjudication to the High
Court under section 104 of the Patents Act, 1970.
The plaintiff may then seek leave to file a replication to the written statement. The plaintiff is entitled
to file a written statement where a counterclaim for revocation of the patent sought to be enforced has
been filed by the defendant.
In a patent infringement case, it is open to the parties to file affidavits of technical experts to
substantiate their case, at any stage up to the stage of trial.
When the pleadings are complete, the parties will be required to admit or deny each others
documents filed in the proceedings. Ordinarily, all documents sought to be relied upon by the parties
must be filed prior to admission and denial of documents. Documents admitted by a party may be read
as part of the evidence led by the opposite party.
After admission and denial, issues are framed in the suit by the court. Issues are framed to list the
matters of controversy between the parties. The evidence led by the parties will have to cover and be

confined to the issues that are framed. Under section 115 of the Act, in any suit for infringement or any
proceeding before a court, scientific advisers may be appointed by the court to advise in its inquiry or
report upon any question of fact.
The suit then proceeds to the stage of trial. The parties will file a list of witnesses.
The parties were, in the past, required to examine their own witnesses before an officer of the court.
However, this process of examination-in-chief has been substituted by filing an affidavit of
examination-in-chief, by amendments to the Code of Civil Procedure, 1908.
Upon filing the affidavit of examination-in-chief, witnesses will be cross-examined by counsel for the
opposite party.
The trial process outlined above can take place before the court that is hearing the suit, or in the
presence of the joint registrar of the court, or before a court-appointed local commissioner.
After examination and cross-examination, final arguments in the suit take place before court, after
which the judgment will be delivered.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Burden of proof (infringement)

The burden of proof of establishing infringement rests on the plaintiff. However, where the subject
matter of infringement is a process patent relating to a new product and there is a substantial
likelihood that an identical product has been made by the same process by the defendant and the
plaintiff has been unable to discover, the burden of proving that the process by which the defendant
prepared the substance rests on the defendant (section 104A of the Act).
The standard of proof in a patent infringement action as well in an invalidity action is based on a
balance of probabilities. This means that the plaintiff must present evidence that shows that
infringement is more probable than not. It is pertinent to note that Indian patent law does not recognise
the concept of presumption of validity of a granted patent as has been held by the Supreme Court in
Bishwanath Prasad v Hindustan Metal Industries (1979 2 SCC 511). In the case of invalidity, the
standard of proof required might be higher.
Also, in F-Hoffmann La Roche v Cipla the single judge of the Delhi High Court held that the onus of
proof in the revocation proceedings is akin to the principle of onus of proof involved in the civil
cases, which is on the balance of probabilities.
Burden of proof (invalidity and unenforceability)
A patent may be invalidated on any of the grounds mentioned in sections 25(2) or 64 of the Act.
Under section 25(2), a notice for post-grant opposition can be filed before the controller within one
year from the date of publication of the grant of patent. A petition for revocation under section 64 may
be filed with the appellate board or on a counterclaim in a patent infringement suit with the high court

by any interested person or the central government. In an invalidity action, the burden of proof to
establish invalidity lies with the petitioner.
An interested person is one who has a direct, present and tangible commercial interest that is injured
or affected by the continuance of the patent on the register (see section 2(1)(t) of the Act and Ajay
Industrial Corporation v Shiro Kanao of Ibaraki City, AIR 1983 Del 496).
In Sankalp Rehabilitation Trust v F-Hoffmann La Roche, which was an appeal against the post-grant
opposition order for the medication Pegasys, filed by Sankalp, a non-governmental organisation, the
IPAB held that a wider interpretation should be given to the words person interested in view of
public interest. The IPAB further held that as the Indian Patent Act includes a person doing research
in the definition of person interested, an interest that is an academic one and not necessarily
commercial, and when the Act only uses the word includes, which is a word that is not restrictive,
the Ajay Industrial case and the Thailand Court case may be applied. The IPAB further held that
public interest is a persistent presence in intellectual property law and will not melt into thin air, nor
dissolve.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

An action for infringement of a patent may be instituted by the patentee him or herself. If the patent is
licensed exclusively, the rights of the exclusive licensee to sue for infringement are equivalent to that
of the patentee. The exclusive licensee must make the patentee a party to the proceedings either as a
plaintiff or defendant.
The Patents Act 1970 further provides scope to a licensee who has been granted a compulsory
licence to put the patentee on notice of the infringement and call upon him or her to take proceedings
to prevent infringement. If the patentee neglects to do so within two months of being called upon to do
so, such a licensee may institute proceedings as though he or she were the patent holder, making the
patent holder a defendant in the proceeding.
Any person, not being the patentee or exclusive licensee, may institute an action for declaration of
non-infringement upon satisfying both of the following conditions: that such a person has written to
the patentee or exclusive licensee for a written acknowledgment of the declaration sought, along with
all particulars of such communication; and that the patentee or exclusive licensee has refused or
neglected to give such an acknowledgment.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The concept of contributory infringement has not been incorporated within the statute and, hence, each
person or entity taking part in the act of infringement shall be individually liable. However, the
concepts of vicarious liability, abetment and contributory infringement are common law principles,

which a court, if it deems fit, may import into patent infringement disputes for imputing liability on
such indirect infringers.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

All such persons or entities who are considered necessary and proper parties in order for the proper
and final adjudication of the suit may be added as parties thereto.
Addition and deletion of parties during the course of litigation is permitted under Indian law.
However, such addition and deletion can only be made after obtaining permission from the court.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Being a territorial right, a patent is infringed only if the rights of the patentee, as defined in section 48
of the Act, are infringed. Section 49 of the Act clarifies that the use of a patented invention in foreign
aircraft or vessels or land vehicles registered in a foreign country, which temporarily or accidentally
happen to be within India or its territorial waters, is not deemed to be an infringement.
This exemption does not extend to vessels, aircraft or land vehicles of persons ordinarily resident in
a foreign country, the laws of which do not confer corresponding rights with respect to the use of
inventions in vessels, aircraft or land vehicles owned by persons ordinarily resident in India while in
the ports or territorial waters of that foreign country.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Indian courts have tacitly recognised the doctrine of equivalents. In Raj Prakash v Mangat Ram
Chowdhury [1978] AIR Delhi 1, the Delhi High Court held that the pith and marrow of the invention
claimed has to be looked into and courts were not to be weighed down in the detailed specifications
and claims made by parties. The court also held that the title of the specifications of an invention does
not control the actual claim. Under Indian law, one cannot avoid infringement by substituting an
obvious equivalent for an inessential integer, or by some trifling or inessential variation or addition,
while, on the other hand, one cannot be held to have taken the substance of a patented invention if one
omits or substitutes something else for an essential integer.
Further, in Ravi Kamal Bali v Kala Tech and Ors (38) PTC 435 (Bombay), the doctrine of
equivalents was discussed to settle a dispute relating to the infringement of a patent relating to
tamper-proof locks or seals.

9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Discovery is permitted after the institution of the suit and may be conducted by the plaintiff or the
defendant in a suit. For this purpose, the party seeking discovery may file an application requesting
the court to direct the other party to provide the requisite information or materials to the applicant. In
addition, a party can also seek inspection and discovery of any document relied upon by the opposite
side by sending a notice under the Civil Procedure Code, 1908.
Further, a party may also make an application to court seeking leave to deliver interrogatories in
writing to the opposite party. These interrogatories are answered by the opposite party, by an
affidavit within 10 days or within such time that the court may allow.
Anton Piller orders
The Anton Piller process in India has been fine-tuned over the years and, on account of the judicial
enthusiasm to protect intellectual property, now includes additional safeguards like lock-breaking
powers and the freedom to have police assistance if violence is anticipated. Anton Piller orders may
also include Norwich Pharmacal-type provisions where the court directs not only the defendant, but
also third parties such as customs and excise departments, to disclose relevant details (for example,
details of sources or customers) to the court-appointed commissioner.
Recently, the Delhi High Court has even granted John Doe orders that allow court-appointed
commissioners to enter the premises of any suspected party who may not even be named in the suit
and collect evidence of infringement. Although previous practice was to specify a defendant and
location to a particular local commissioner, courts have recently made provision in Anton Piller
orders for roving commissioners, permitting the court commissioner to visit any location where the
commission of infringing acts is suspected. This ensures optimisation of the ex parte injunction.
The John Doe process has been supplemented by orders granting additional powers to court
commissioners. These range from the power to witness a trap purchase, as in IBM v Kamal Dev, to
lock-breaking powers in several cases involving clothing manufacturer Levi Strauss. Additionally,
courts have also issued directions to local police to assist in the enforcement of a civil court order.
When it was suspected that a counterfeiter was monitoring the high court for a possible lawsuit, in
one instance the applications for injunction and the grant of Anton Piller orders were heard in camera
by the Delhi High Court.
Discovery from the defendants or inspection of records or the defendants machinery (Graf + Cie AG
v Perfect Equipment Pvt Ltd & Anor, a Delhi High Court decision (unreported)) is also available.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A patent infringement suit typically lasts two to three years. The courts in India, especially the high

court of Delhi, have warmed to the idea of fast track litigation in intellectual property matters. This
trend of fast-track litigation is becoming increasingly common in patent litigation in view of the
relatively lower chances of obtaining an interim injunction as well as the limited term of exclusivity
available under the patent regime. It is expected that the time for a full trial of an infringement suit can
be easily concluded within one-and-a-half to three years from institution.
In fact, there have been several cases, such as the following, in which direct IP cases were disposed
of within a few months:
Bajaj Auto Limited v TVS Motor Company Limited (2009) where the Supreme Court directed the
lower court to dispose of the suit within two and a half months from the date of the order;
F Hoffmann-La Roche Ltd & Anr v Cipla Limited (2009) where the direction was to conclude the
trial as expeditiously as possible;
B Braun v Rishi Baid (2010) where the direction was to dispose of the suit within four months and
a schedule was laid down; and
Bristol Myers Squibb v Ramesh Adige (2011) where parties were directed to complete recording
of evidence within a maximum period of four months from the first date fixed before the Local
Commissioner.
It is possible to agree on a timeline for deciding a lawsuit through a court regulated process. In patent
matters, courts have often laid down a time-bound schedule within which the different stages of the
lawsuit have to be completed.
Appeal proceedings generally last between six months and two years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The typical range of costs in a suit for patent infringement would be:
for the filing of a suit, approximately US$50,000 to US$60,000 not including stamp duty and court
fees, which will be based on the amount of damages sought by the plaintiff;
during the trial, the fee may range between US$150,000 and US$300,000 depending on the
complexity of the case and the fee of the senior advocate engaged; and
for an appeal to the Supreme Court, the fee may range between US$350,000 and US$650,000.
The fees mentioned above may vary depending on the complexity of the case and the number of court
appearances.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

An appeal may be referred to a single judge of the High Court from an order of the district court. An
appeal against an order of the single judge of the High Court may be referred to a larger bench of the
High Court. An appeal may be referred on the following illustrative grounds: incorrect appreciation
of fact or law; or violation of principles of natural justice.
Further, an appeal from the division bench (consisting of two judges) of the High Court lies with the

Supreme Court.
The aggrieved party can refer the first appeal to final adjudication in a suit as a matter of right. The
second appeal from a decision is admissible at the discretion of the court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The Competition Act 2002, which governs antitrust law in India, specifically excludes enforcement of
intellectual property rights from the definition of anti-competitive activities. Therefore, enforcement
of a patent does not usually expose a patent holder to liability for an antitrust violation.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternate dispute resolution mechanisms have become an integral part of resolving disputes. The
Delhi High Court, in particular, has an effective mediation and conciliation centre through which
mediation mechanisms are explored. The court quite frequently refers matters for resolution through
mediation, even though very few patent matters have been so referred. Courts also take into
consideration arbitration agreements.
However, arbitration is not available to assess invalidity, as the Patent Office does not recognise
arbitral awards in this respect.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Although section 2(1)(j) of the Act states that any new product or process involving an inventive step
and capable of industrial application is patentable, sections 3 and 4 (under chapter 2) of the Act
define inventions that are not patentable. Section 3 includes:
an invention that is frivolous or that is contrary to well-established laws;
an invention of which the primary or intended use or commercial exploitation would be contrary to
public policy or morality or that would cause serious prejudice to human, animal or plant life or
health, or to the environment;
the mere discovery of a scientific principle or the formulation of an abstract theory or the discovery
of any living or non-living substance occurring in nature;
the mere discovery of a new form of a known substance that does not result in the enhancement of
the known efficacy of that substance or the mere discovery of any new property or new use for a

known substance or of the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant (according to the explanation to
this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures
of isomers, complexes, combinations and other derivatives of known substances shall be considered
to be the same substance, unless they differ significantly in properties with regard to efficacy);
a substance obtained by a mere admixture resulting only in the aggregation of the properties of the
components thereof or a process for producing such substance;
the mere arrangement or rearrangement or duplication of known devices, each functioning
independently of one another in a known way;
a method of agriculture or horticulture;
any process for medical, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment
of human beings or any process for a similar treatment of animals to keep them free of disease or to
increase their economic value or that of their product;
plants and animals in whole or any part thereof other than micro-organisms but including seeds,
varieties and species and essentially biological processes for the production or propagation of plants
and animals;
a mathematical or business method or a computer program per se or algorithms;
a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions;
a mere scheme or rule or method of performing mental acts or method of playing games;
a presentation of information;
topography of integrated circuits; and
an invention that, in effect, is traditional knowledge or that is an aggregation or duplication of
known properties of a traditionally known component or components.
Section 4 includes inventions relating to atomic energy.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

A company employee or an independent contractors right to apply for and own a patent is governed
by the terms of the agreement between employee and employer or contractor and contracting party.
A patent may be owned by an individual, a group of individuals or a legal entity (eg, a company). A
firm may also apply for a patent as an assignee (Shinning Industries v Shri Krishna Industries, AIR
1975 ALL 231).
A patent may be jointly filed and owned by two or more parties. An application may be filed by the
inventor or assignee, or a legal representative of deceased persons who were entitled to make such an
application, immediately before their death. A patent applicant may be a legal entity and need not
necessarily be a natural person.
In the case of jointly owned rights in a patent, unless there is an agreement to the contrary, each of the
co-owners shall exercise his or her rights to his or her own benefit without accounting to the other
owners. A licence under the patent shall not be granted and a share in the patent shall not be assigned
by a co-owner without the consent of the other co-owners (section 50 of the Act).

The rights in the invention can be assigned to any person or legal entity either during the pendency of
the application or after the patent is granted. Section 68 of the Act states that assignment, mortgage,
licence or a creation of any other interest in the patent shall not be valid unless it is in writing,
outlining the terms and conditions governing the rights and obligations of each party.
Where persons become entitled by assignment, transmission or operation of law to a patent or to a
share in a patent, they have to apply to the controller for the registration of their title in the register of
patents (section 69 of the Act).
The Patent Office maintains a register wherein all information pertaining to a patent, including names
and addresses of the grantees, their assignees, notifications of such assignments and of transmissions
of patents, licences under patents and amendments, extension and revocation of patents, is recorded
(section 67 of the Act).
In the recent Order No. 252 of 2013 in NTT DoCoMo Inc v Controller of Patents, the IPAB clearly
held that the applicant for a patent has to substantiate or establish the proof of right to make an
application irrespective of the nature of the application, namely, convention, non-convention, national
phase or a divisional application.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The following defences are available to an alleged infringer:

challenges to the title of the plaintiff defendants may argue that the plaintiff is not entitled to sue,
due to reasons such as defective title;
grounds for revocation all the grounds available to challenge the suit patents validity are
available as grounds for defending an infringement action;
Gillette defence the defendant may prove that the act complained of was merely what was
disclosed in a publication that could be relied on against the validity of the patent, without any
substantial or patentable variation having been made. (See Hindusthan Lever Ltd v Godrej Soaps Ltd
[1996] AIR Cal 367 and Raviraj Gupta v Acme Glass Mosaic Industries (1994) 56 DLT 673);
Bolar provision under Indian law, the act of making, constructing, using, selling or importing a
patented invention solely for uses related to the development and submission of information required
under any law in force in India will not amount to infringement;
parallel import the import of patented products, by any person from a person who is duly
authorised under the law to produce and sell or distribute the product, is not considered to be an
infringement;
innocent infringement though the fact that the defendant was an innocent infringer would not be a
factor in determining liability, it would play a role in determining whether an account of profits and
damages should be granted in favour of the plaintiff: the Act expressly states that damages or accounts
of profits will not be granted against a defendant who proves that he or she was not aware and did not
have reasonable grounds to believe that the patent existed, on the date of infringement; and

 experimental use any use of the patented invention merely for the purposes of experimentation or
for carrying on research, including imparting education, is not considered an act of infringement.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

New invention or novelty has now been defined in the Patent (Amendment) Act 2005 and has been
restricted in scope from relative to absolute novelty. Thus, for any invention to be considered novel,
it should not have been anticipated by publication in any document used in the country or elsewhere in
the world before the date of filing of the patent application.
The absolute novelty test has been defined by section 2(1)(l) of the amended Act. For the grant of a
patent, the relative novelty test is applied for determining anticipation under section 13.
The courts will therefore need to harmonise these provisions of the Act.
Exceptions to anticipation have been provided by sections 29 to 33 of the Act.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Under section 2(1)(j), inventive step is now defined by the amended Act to mean a feature of an
invention that involves a technical advancement as compared to the existing knowledge or that has
economic significance, or both, and the invention must not be obvious to a person skilled in the art.
Such a definition is more or less well accepted internationally and in all probability the term
economic significance might be interpreted as being synonymous with industrial application.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A valid patent must be worked in the country. There are no provisions in the Act for post-grant
opposition or revocation of a patent due to misconduct by the patent owner, but certainly a patent can
be revoked on the ground of misrepresentation and fraud. The main mechanism for invalidating a
valid patent is by revocation as laid out in sections 25(2) and 64 to 66 of the Act.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Enterprises that have made significant investments and were producing and marketing the concerned
product covered by a patent application under the old Act (before 1 January 2005) will continue to
manufacture the product even after the grant of a patent and no infringement proceeding will be
instituted against such enterprises. A patent holder shall only be entitled to receive a reasonable
royalty from the enterprises. This provision is applicable until the patent applications that were made
prior to 1 January 2005 are disposed of by the Patent Office. There is, however, no prior user
defence available.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

A patentee may claim damages as well as litigation costs from the patent infringer. Though there is no
precedent for ascertaining the basis likely to be used for determining liability, it is likely that they
will be calculated by considering the reasonable royalty, lost profits and the account of profits.
Damages, both punitive and exemplary, have been granted by courts in India in cases of infringement
of intellectual property rights. The basic method followed to calculate damages takes into account:
the time period of business of the defendant;
sales made during the said period by the defendant;
the percentage of royalty in the concerned industry;
the profit earned by the defendant on the aforesaid sale at the said royalty;
the actual or prospective loss caused to the plaintiff; and
factors to enhance the aforesaid damages, namely, punitive and exemplary damages and loss of
reputation.
In the case of patent infringement actions, the matters are still at the stage of trial or final arguments.
Therefore, there is no precedent in these cases. However, it is most likely that this trend will also be
followed in actions for patent infringement.
Though contested patent infringement cases have not yet been finally decided by Indian courts,
punitive damages have been granted in intellectual property cases. Accordingly, it is likely that the
trend will also be followed in patent litigation.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

The following reliefs are available under the Act against a patent infringer:
permanent injunction;
damages or an account of profits;
seizure, forfeiture or destruction of infringing goods, or materials and tools predominantly used to

create the infringing goods; and

litigation costs.
Although there is no judicial precedent in this regard, theoretically, the grant of a permanent
injunction does not necessarily follow a finding of patent infringement and a court does have judicial
discretion to deny the grant of a permanent injunction notwithstanding a finding of patent infringement.
However, there are no specific rules for a particular subject matter in this regard.
The grant of a permanent injunction may be broader and the order granting injunction need not
necessarily be limited in scope to particular items alleged to be infringing the patent. The effect of the
injunction is limited to the patent infringer and will be effective against third parties only if it is made
party to the action.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Effective border enforcement mechanisms are available in India. The government of India formulated
the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 under the Indian Customs
Act 1962. These rules were formulated with a view to strengthening the statutory and executive
guidelines thereby aiding patent holders to enforce their rights at the borders of the Indian territory.
India has a unique system wherein the border measures have also been extended to the domain of
patent law.
When the Intellectual Property (Imported Goods) Rules 2007 were initially implemented, the customs
authorities were quite active in detaining goods on the basis of registered patent rights. However, one
of the cases of detention resulted in prolonged litigation in numerous forums where the detention was
challenged and, ultimately, the goods were released. Subsequent to this experience, customs have
been circumspect in detaining goods on the basis of registered patent rights and tend to examine and
scrutinise the validity of the patent and the rightholders case on infringement in detail before
detaining the goods. However, in appropriate cases, it is possible to convince customs to detain
goods by satisfying them on a prima facie case on validity and infringement.
In February 2011 the government of India issued Circular No. 10/2011 relating to implementation of
the above mentioned rules. Through this Circular, an on-line, system driven, centralised bond
management module has been created as part of the existing automated recordation and targeting
system (ARTS). Through this system a rightholder is allowed to furnish a one-time bond along with
security at the time of registration and all the ports have access to this centralised account. In the case
of interdiction of allegedly infringing goods, if the amount of centralised bond and the security are not
sufficient to cover the value of the goods interdicted, then within three days of interdiction, the
rightholders would be required to execute a supplementary bond and furnish security for the
corresponding amount.
A leading patent case is the Dual SIM Card case, wherein the patent holder, RamKumar, filed an
infringement action against Micromax and Spice and also made representation to the chief
commissioner of customs, Chennai, and the chairperson of the Central Board of Excise and Customs
to seize dual SIM phones that infringed his patent under the Intellectual Property Rights (Imported
Goods) Enforcement Rules, 2007. The proceedings against multiple defendants have still not

concluded and are pending before the Madras High Court.

25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

It is possible to recover costs from the losing party. In Austin Nichols and Co and Seagram India Pvt
Ltd v Arvind Behl CS (OS) No. 177/ 2005, decided on 29 November 2005, the Delhi High Court
awarded costs of 1,885,000 rupees in favour of the plaintiff.
Further, in the matter of F Hoffmann-La Roche Ltd & Another v Cipla Ltd, the Delhi High Court,
while dismissing the plaintiffs appeal against an order refusing the grant of interim injunction,
imposed costs of 500,000 rupees on the plaintiff.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Punitive damages would be an additional remedy available against a wilful infringer.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Section 40 of the Limitation Act 1963 provides that the limitation period for intellectual property
matters is for compensation for infringing copyright or any exclusive privilege: three years from the
date of the infringement.
In the case of M/s Bengal Waterproof v M/s Bombay Waterproof Manufacturing Co & Another,
AIR 1997 SC 1398, the Supreme Court of India stated that a fresh cause of action would accrue with
every subsequent act of infringement. It was a case of passing off as well as infringement of a
registered trademark. The court also cited section 22 of the Limitation Act as an indicator of its
thought process. The section states in the case of a continuing breach of contract or in the case of a
continuing tort, a fresh period of limitation begins to run at every moment of the time during which the
breach, or the tort as the case may be, continues.
Clearly, since every instance of infringement would give rise to a fresh cause of action, the limitation
clock would not start if the infringement was continuing.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

It is not mandatory to mark the patented invention with the patent number. In view of section 111(1) of
the Act, which states that a person shall not be deemed to have been given notice that a patent exists
merely by the presence of the words patented or patent granted on the patented products, it is
desirable to also mention the patent number.
This would prevent cases of innocent infringement where, if the defendant proves that at the date of
infringement he or she was not aware and had no reasonable grounds for believing that the patent
existed, the court will not grant damages or accounts of profits for infringement.
Patent marking for patented articles in India may be done by indicating the term patent or patented
or patent applied for or patent pending. When applied, these terms are deemed to refer to a patent
in force in India or to a pending application for a patent in India, as the case may be, unless there is a
clear indication that the patent has been obtained or applied for in any country outside India. Marking
of a patented article with respect to the patent is not compulsory to take an action in the event of
infringement. In order to obtain damages or an account of profit for infringement, the infringer is
supposed to be aware of the existence of the patent. It is to be noted that marking of the patented
article, unless accompanied by the patent number, does not make the infringer deemed to be aware of
the existence of the patent.
In cases of unauthorised claim of patent rights, namely, false representation, the penalty for such false
marking can extend up to 100,000 rupees. In cases where the marking is made along with the patent
number, and the patent is expired, abandoned or revoked, it is advisable that the said marking is
removed. However, if such marking is not removed, unintentionally or by mistake, it is likely that the
penal provision would not apply. For unmarked patented articles, the awareness of the existence of
the patent may be provided to a third party by way of advertisement, publication, websites and even
notices. Wilful infringement does increase the chances of higher damages being awarded. However,
as mentioned earlier, patent marking itself, unless accompanied by the patent number, is not
considered to bring awareness of the patent to the infringer.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

A voluntary licence is a contract between two or more parties and, therefore, respects the principles
of privity of contract. The licence granted may be sole, exclusive or non-exclusive.
Section 140(1) of the Act makes it unlawful to insert certain restrictive covenants in any contract
relating to a patented article or process. Such covenants will be void.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Chapter XVI of the Patents Act 1970 governs the procedure for the grant of compulsory licences for

patents in India; section 84 of the Patents Act broadly deals with the conditions under which a
compulsory licence may be granted. Under this section, any time after the expiry of three years from
the date of grant of a patent, any person interested may make an application for the grant of a
compulsory licence on any one of the following grounds:
that the reasonable requirements of the public with respect to the patented invention have not been
satisfied;
that the patented invention is not available to the public at a reasonably affordable price; or
that the patented invention is not worked in the territory of India.
Further, under section 92 of the Act, the government may, by notification in the Official Gazette,
declare that compulsory licences should be granted in respect of any patent in circumstances of
national emergency; extreme urgency; or public non-commercial use.
A revision has been effected to section 90 by the amended Act. While settling the terms and
conditions under which a licence is to be granted, the controller, among other things, permits a
licence to be granted with the predominant purpose of supply of the product to the Indian market and
also the export of the patented product.
Also, under section 90(1)(viii) of the amended Act, if a licence is granted to remedy an anticompetitive practice, as determined by judicial or administrative process, the licensee is permitted to
export the patented product.
A compulsory licence may also be obtained for the manufacture and export of patented
pharmaceutical products to any country that have insufficient or no manufacturing capacity in the
pharmaceutical sector, for the concerned product to address public health problems in such a country,
provided that a compulsory licence has, for such country, by notification or otherwise, permitted the
import of the patented pharmaceutical product from India under section 92A. In 2008, two
compulsory licence applications made under section 92A by NATCO on patents of Roche and Pfizer
relating to Tarceva and Sutent were disposed of. The Patent Office in these two compulsory licence
applications for the first time applied the principles of constitutional law and provided the patentee a
right to be heard even though the Patents Act was silent on this aspect. Section 90 of the Patents Act
provides indicators for settling the terms and conditions for the grant of a licence under section 84.
Filing of patent applications in India

For e-filing

For Physical filing

For
natural
persons

For person other than

For natural
natural persons either alone persons with
or jointly with natural
10% additional
persons
fee

For person other than natural

persons either alone or jointly with
natural persons with 10% additional
fee

--

For others
For small
except small
entity
entity

For small
entity

__

For others except

small entity

Filing application with provisional/complete

specification (with one priority date)
National phase/Convention/Ordinary
application

29

73

145

32

80

60

73

145

32

80

160

For each sheet of specification in excess of

3
30

15

16

For each claim in excess of 10

15

29

16

32

Under section 11(B) and rule 24(1)

73

182

364

80

200

400

Third year to sixth year

15

36

73

16

40

80

Seventh year to 10th year

44

109

218

48

120

240

Eleventh year to 15th year

87

218

436

96

240

480

Sixteenth year to 20th year

145

364

727

160

400

800

For every additional priority date

RENEWALS OF PATENT: (per year)

32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The Indian Patent Office is in the process of modernising and expanding and has recruited a large
number of examiners. This is expected to reduce the period for the grant of a patent from about five to
seven years to an average of two to five years.
The application is published after the expiry of 18 months from the date of filing or priority date,
whichever is earlier. The publication of the application can be accelerated by filing a request to the
controller with the requisite fee.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Under section 10 of the Indian Patents Act, every complete specification should fully and particularly
describe the invention and its operation or use and the method by which it is to be performed. It
should also disclose the best method of performing the invention that is known to the applicant and for
which he or she is entitled to claim protection.
Finally, the specification should end with a claim or claims defining the scope of the invention for
which protection is claimed and be accompanied with an abstract to provide technical information on
the invention.
With regard to the disclosure of prior art under section 10(4) of the Indian Patents Act in the patent
specification, the IPAB in the Novartis case did recognise that under the law (section 10(4))
disclosure of prior art is not mandatory, but held that, despite there not being any specific provision
under Indian law, the relevant prior art including the closest one ought to be disclosed in the patent
specification, and the applicant cannot be considered to have discharged his or her duty or obligation
unless the prior art is disclosed so that the invention can be sufficiently distinguished over the prior
art.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The Act contains no provision that makes it mandatory for an inventor to disclose prior art, although
to meet the requirement of sufficiency of description, it is important to distinguish the invention over
prior art as was also held by the IPAB in Novartis v Ranbaxy and others. It is, however, mandatory
to provide information of the corresponding applications filed in other countries under section 8 of
the Act within six months of their filing; and to provide search and examination reports in the
corresponding application to the Patent Office examiner. Failure to do so is a ground for pre-grant
opposition, post-grant opposition and revocation of the patent. Patents recently have been revoked by
the IPAB on grounds of non-compliance with obligations under section 8 ( Uniroyal v VRC limited,
Hindustan Unilever v Tata Chemicals, etc).
A recent order by the division bench of the Delhi High Court has helped elucidate the legislative
intent behind the notoriously famous section 8 of the Indian Patents Act. The Division Bench held that:
The power to revoke a patent under section 64(1) is discretionary and not automatic.
The Court is to first examine whether omission to furnish information is deliberate or intentional or
accidental, clerical or on account of bona fide error.
The court will have to examine the evidence for wilful suppression of information and cannot
revoke a patent immediately on the grounds of non-compliance of section 8.
It will also have to be determined if the omission of the information or part of the information was
material to the grant of the patent, which can be answered only at the conclusion of the trial.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

A patent applicant can file either a divisional application under section 16 of the Patents Act or a
patent of addition under section 54 to pursue additional claims. There is no limitation on the number
of claims. However, as mentioned in question 31, the fee for each claim in excess of 10 is US$20 or
US$5 per claim.
The divisional application has to be filed any time prior to the grant of a patent on the ground of unity
of invention, and a patent of addition can be filed any time during the life of the main patent.
The Intellectual Property Appellant Board has recently, in its judgment in LG Electronics Inc v
Controller of Patents, adjudicated on the maintainability of divisional application under section 16
of the Indian Patent Act. In the order, the IPAB held the following with respect to voluntary filing of
divisional applications:
the applicant can file one or more divisional applications if the invention disclosed in the parent
application does not relate to a single invention or to a group of inventions forming a single inventive
concept; and
the divisional application should not include any claim already claimed in the parent application (to
avoid double patenting).
Further, in a recent decision dated 17 July 2013, in the matter of Indian Patent Application No.
3273/KOLNP/2008 of Genentech Inc, the Controller held that a divisional application of a divisional
would be considered as a divisional of the original parent application provided the same is filed
during the pendency of the original application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to appeal an adverse decision by the Patent Office. Under the Act, an appeal against an
order or directions of the controller lies before the Intellectual Property Appellate Board. The board,
under section 116 of the Act, was constituted on 2 April 2007. Thus, at this time, all such appeals lie
to the high court, as was the case before the Patents Act 1970 was amended by the 2002 amendment.
In a recent decision of the Intellectual Property Appellant Board, the board held that the decision of
the controller in a review petition is not appealable and that the appeal is restricted to certain
provisions and not available against an order in a review petition passed under section 77(1)(f).
However, although the Indian Patents Act does not provide for an appeal against the order of the
controller in a pre-grant opposition proceeding, a recent decision of the Delhi High Court held that an
applicant is entitled to file an appeal against the order of a controller in a pre-grant opposition
proceeding, as an order under section 25(1) it is to be treated as being an order under section 15 of
the Indian Patents Act, which order is appealable.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The Act provides for pre-grant opposition and post-grant opposition.

After the patent application has been published in the official journal, and at any time before the grant

of a patent, any person may submit a written opposition to the controller on the grounds listed in
section 25(1) of the Act.
Also, post-grant opposition can be filed by any interested person before the expiry of one year from
the date of publication of grant of the patent.
The grounds of pre-grant opposition, post-grant opposition and that of revocation are quite similar.
A significant statistic relating to pre-grant opposition is that, since 1 January 2005, approximately
250 pre-grant and 100 post-grant oppositions have been filed at the Indian Patent Office. The
oppositions have been predominantly in the field of pharmaceuticals.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Section 11 of the Act contains the rules for fixing the priority dates. Different priority dates may be
allotted to separate claims to settle the disputes between different applicants for the same invention.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

A patent application may be amended by filing an application for amendment to the controller, before
or after the grant of the application, insofar as the amendment is within the scope of the disclosure by
way of disclaimer, explanation or correction. An amendment may also be effected for change of
name, address, nationality or address for service (section 58 of the Act, subject to section 59).
The high court, in any proceedings before it for revocation of a patent, allows patentees to amend
their complete specification, subject to the terms as to costs and so on. Also, instead of revoking a
patent, the high court can allow the specification to be amended.
The nature of amendments that are permissible to the complete specification:
are those by way of disclaimer, correction or explanation;
must be for the purpose of correcting an obvious mistake;
should not claim or describe matter not disclosed in substance in the specification before
amendments; and
should fall wholly within the scope of the specification before the amendment.
There is no provision under the Indian Patents Act for re-examining a patent once granted, except that
any person interested may approach the Patent Office in a post-grant opposition or the IPAB in a
revocation petition to invalidate the patent.
40 Patent duration

How is the duration of patent protection determined?

The duration of patent protection is 20 years and it is determined from the date of filing the
application. If a provisional application has been filed followed by a complete specification, the term
of the patent is counted from the date of filing the provisional application.
In the case of national phase applications under the Patent Cooperation Treaty, the term is calculated
from the international filing date. On being granted a patent, the patentee shall have privileges and
rights from the date of publication of the application except in the case of postal applications, where
the rights and privileges will accrue from the date of grant of a patent.
To date, very few compulsory licences have been granted. In 2012, the controller general of patents
granted a compulsory licence to NATCO Pharma to manufacture sorafenib tosylate (patented by
Bayer). On observing that reasonable requirements of the public were not satisfied (the drug was
accessible only to a little above 2 per cent of eligible patients), the drug was not reasonably
affordable to the public (priced at 2.8 lakh for a months treatment) and non-working of the patent
(working of patent was construed as local working, namely, manufactured to a reasonable extent
within the territory of India), a compulsory licence was issued under section 84 of the Indian Patent
Act. The case was appealed at the IPAB, which broadly confirmed the impugned order. However, the
IPAB increased the royalty rate by 1 per cent, making the royalty 7 per cent in comparison with the
royalty fixed by the Controller at 6 per cent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?
A basic overview of the timeline of the patenting process in India is as follows:

Filing
i
18 months (early publication
possible)
Publication
i

48 months from priority

date

Request for substantive examination

i

Issuance of first examination report by the Patent

6 to 12 months
Office i

Pre-grant opposition after publication of

grant

Response submitted
ii
12 months
Further examination report i

i
Hearing
ii

Refused i

Appeal
i

Granted |

Post-grant opposition within one year of

notification

Grant notified

The period for the grant of a patent in India is about five to seven years.
A revised fee structure has been provided for filing of patent application as well as other proceedings
before the Patent Office by the recently amended Patent Rules. A third category of applicant for patent
has been introduced in the form of small entity and the fees charged to them has been fixed in
between the fees for a natural person and for all persons other than natural persons (except a small
entity). The amended rules also provide for 10 per cent additional fee when the applications for
patent and other documents are filed through the physical mode, ie, in hard copy format as opposed to
the online mode. The basic fee for filing an application and maintaining a patent is as below:

Update and trends

Dynamic utility for patents
The Indian Patent Office has launched a dynamic utility website for increased transparency at the
Indian Patent Office www.ipindia.nic.in/dynamic_Utility_Index.htm showing information relating
to:
expired patents;
disposal of patent applications;
request for examination status;
dynamic FER view;
dynamic status of patent application (as per various fields of invention);
information on Working of Patents (U/s 146); and
electronic mail intimation of the issued patent examination reports on a real-time basis.
Biotechnology and pharmaceutical examination guidelines
The Indian Patent Office has come up with Guidelines for Examination of Patent Applications in the

Field of Pharmaceuticals and Biotechnology. The guidelines are prepared with the objective of
helping the examiners and the controllers of the Patent Office in achieving consistently uniform
standards of patent examination and granting.
National IPR policy
The IP think-tank, which is a six-member group headed by Justice Prabha Sridevan, has come up with
a first draft of Indias IPR policy. The policy intends to reinforce the strengths of Indias substantive
laws with equally strong administrative, procedural and judicial infrastructure. The policy identifies
IP awareness and promotion, developing a strong legal and legislative framework, etc, among others,
as its main objective. The policy also identifies certain ways to achieve the defined objectives.
Patent Rules amended
The Patent Rules have been amended. A revised fee structure has been provided for the filing of
patent application as well as other proceedings before the Patent Office. Also, a third category of
applicant for patents has been introduced in the form of small entity and the fees charged to them has
been fixed between the fees for a natural person and for all persons other than natural persons (except
a small entity). The amended rules also provide for a 10 per cent additional fee when the applications
for patent and other documents are filed through the physical mode (ie, in hard-copy format as
opposed to the online mode).
Applicant not liable for agents or attorneys mistake
There were two applications filed by NTTDocomo at the Chennai patent office. During the course of
correspondence with the patent office, the application numbers of the two patent applications were
interchanged and, thereby, the incorrect application was withdrawn from the Indian Patent Office. The
error was quickly brought to light; the Patent Office, however, refused to restore the application and
deemed it withdrawn. During proceedings at the Madras High Court by way of a writ petition, the
court agreed with the petitioner and held that a patent applicant cannot be held liable and cannot be
subjected to injustice or irreparable hardship since the petitioner was unaware of the attorneys
mistake.
Registration of licence or assignment deed under section 69 mandatory (especially for
enforcement)
The Delhi High Court discussed the importance of registering licence or assignment agreements at the
Indian Patent Office and the consequences of not doing so in the case of Sergi Transformer Explosion
Prevention Technologies Pvt Ltd v Kumar Pratap Anil & Ors . Sergi Transformer had filed the

licence agreement before the Indian Patent Office for registration however; no order had been issued
in this regard. The Delhi High Court held that until the agreement is registered or an order is passed,
the licence agreement cannot be considered as evidence by the court and, hence, the infringement suit
cannot proceed ahead with the exclusive licensee filing the suit.
Sitagliptin litigation
After the initial refusal of injunction against Glenmark, there were 10 cases wherein injunctions were
granted in favour of MSD and in five of these cases (the ones filed against M/s Shilpex Pharmysis,
NMC BioPharm Pvt Ltd, WinBioz Remedies, JohnLee Pharmaceuticals Pvt Ltd and Oscar Remedies
Pvt Ltd), decrees for permanent injunction have been passed.
Novartis litigation
Novartis has obtained ad interim injunctions or status quo orders against seven generic companies.
The most interesting is the Novartis v Ranbaxy order by J GP Mittal. Although the judges findings
were only preliminary and tentative, in the absence of a written statement or counter claim, he
rejected the defendants argument that there is a credible challenge to the plaintiffs patent. He noted
that the patent is old and has been on the register for 16 years. The fact that the defendant has filed a
revocation petition against the patent shows that they have an intention to launch the product. An ad
interim injunction was granted.
Interpretation of section 107(a) of the Indian Patents Act relating to the Bolar exemption in
Bayer v Union of India
Bayer Corporation approached the Delhi High Court in a writ petition in relation to Sorafenat
(SORAFENIB API), which was being manufactured by Natco Pharmaceuticals Ltd (hereinafter
referred to as NPL) and was being exported outside India in violation of the terms of the
compulsory licence.
In the writ petition, the court dealt with the following issues:
whether the export of API by NPL would fall within the defence of infringement under section 107A
of the Indian Patents Act; and
whether the provision of section 107A would cover the export of a patented product for use by an
overseas importer to conduct studies and generate data for seeking regulatory approvals in that
country.
The court held that:
Section 107A does not confine the availability of the exception to a specified time period.
The safe harbour provision in India has been widened to include constructing or selling a patented
product.
The exemption under section 107A covers any sale of a patented invention that is required for the
development and submission of information under any law in a country other than India that regulates
the manufacture or sale of any product.
The use of the expression reasonably relating would plainly mean a reasonable nexus for claiming
the exemption under section 107A. Therefore, the sale outside India would fall within the scope of

section 107A provided it is reasonably related to the development and submission of information as
required under the law in force in India or outside India.
The court also held that the legislative intent that the exemption under section 107(A) is available
only to the manufacturer who uses the patented products for obtaining regulatory approvals for itself
is an incorrect interpretation. The expression selling is wide enough to include cross-border sales
(ie, exports) despite the fact that the expression export is not mentioned in section 107(A).
Herceptin litigation
Trastuzumab is behind a suit related to biosimilars at the Delhi High Court. Roche sued Biocon and
its partner Mylan on the following issues:
that Biocon and Mylan had not satisfied the requirements for a biosimilar drug in accordance with
the drug regulatory guidelines; and
that Biocon and Mylan were seeking to pass off their products as being equivalent in quality and
class to Herceptin by referring to their products as biosimilar versions of Trastuzumab/Herceptin.
The Delhi High Court granted injunction on the second issue whereby the court held that Roche would
suffer prejudice and irreparable injury. The judge restrained Biocon and Mylan from relying on any
data related to Roches Herceptin and claiming any similarity to Herceptin.
Multifarious proceedings and the principle of res judicata
The Supreme Court of India has issued a landmark judgment in Dr Aloys Wobben and another v
Yogesh Mehra and others.
This is an extraordinary judgment as it affects all infringement actions, related counterclaims or
revocation petitions and post-grant oppositions wherein it harmonises post-grant oppositions,
revocation before the IPAB and infringement actions and counterclaims.
The apex court held:
that the use of the word or in section 64 implies that either a revocation before the IPAB or a
counterclaim before the high court will lie but certainly not both;
that if both proceedings are instituted the proceeding that was instituted first shall continue;
the only exception to this shall be if the parties by consent make their choice of one of the
proceedings (according to the principle of res judicata);
once there is a post-grant opposition, no revocation before the IPAB or a counterclaim in an
infringement court can be entertained;
if revocation is filed before the IPAB, no counterclaim lies in the infringement suit. The reverse also
holds true; and
if a response to an infringement suit has been filed by way of a counterclaim, the defendant cannot
file a revocation petition u/s 64(1).

Pravin Anand

pravin@anandandanand.com

Archana Shanker

archana@anandandanand.com

First Channel Building

Tel: +91 120 405 9300
Plot No. 17A, Sector 16 A
Fax: +91 120 424 3056
Film City, Noida 201301
www.anandandanand.com
India

Indonesia
Nadia Am Badar
Am Badar & Partners
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent Law No. 14 of 2001 provides that an Indonesian patent holder may file both a criminal lawsuit
as well as civil lawsuit against an infringement.
Criminal lawsuit
Pursuant to article 133 of Patent Law No. 14 of 2001, patent infringement is considered as a warrant
complaint. Hence, any patent infringement claim must be filed in written submission (containing the
preliminary evidence) with the state police or the Investigation Bureau of the Intellectual Property
Office (PPNS).
The case will be processed as soon as the claimant completes the required administration documents
(eg, identity, copy of the patent certificate, any related evidence, etc), by conducting seizures at the
suspected places and summoning the suspected party for a hearing.
Soon after the hearing proceeding is finished, the state police or PPNS will report the Minute of
Examination (BAP) to the public prosecutor to be brought to the trial before the judges of the first
instance court.
Civil lawsuit
Besides filing the infringement report by criminal lawsuit, the Patent Law allows permission for the
patent holder to file a civil lawsuit against the infringer, as provided by article 118, paragraph (1) of
the Patent Law: a patent holder or a licensee shall be entitled to bring a lawsuit for damages through
the Commercial Court against any person who deliberately and without rights performs any acts
referred to in article 16.
However, it should be noted that pursuant to article 118, paragraph (2) of the Patent Law, the lawsuit
for damages filed against any acts referred to in paragraph (1) may only be accepted if the product or
process is proven to have been made by using the Patented Invention.

Therefore, the said civil lawsuit should be filed after the criminal lawsuit is decided.
The procedures regarding a patent civil lawsuit in order to request the damage are regulated by
articles 120, 121 and 123 of the Patent Law.
The civil lawsuit must be filed with the Commercial Court in the region where the defendant is
domiciled.
2 Trial format and timing

What is the format of a patent infringement trial?

Criminal lawsuit
All district courts are competent to decide on patent infringement criminal cases.
Further, article 84, paragraph (1) and (2) of Criminal Procedure Law No. 8 of 1981, regulates the
venue for such cases as follows:
(1) A district court shall be competent to adjudicate all cases regarding offences committed
within its jurisdiction.
(2) A district court in the jurisdiction where an accused resides, most recently stayed, was
discovered or detained, shall only be competent to adjudicate the case of the said accused if
the residences of most of the witnesses to be summoned are closer to that district court than
to the district court in the area of which the offence was committed.
Civil lawsuit
Following the Patent Law, a civil lawsuit should be settled through litigation in one of the
commercial courts, spread throughout Indonesia, depending on the domicile of the defendant.
There are five commercial courts in Indonesia, namely Jakarta, Makassar, Medan, Semarang and
Surabaya.
In Indonesia, three judges conduct a court, based on article 11, paragraph (1) of Law No. 48 of 2009
concerning the judiciary that states the courts examine, prosecute and decide the case with the
composition of at least three judges, unless otherwise provided.
Further, there is no jury in the Indonesian trial process.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Both parties bear the burden to proof the infringement. The plaintiff has to prove that the defendant
truly infringed his or her patent. Meanwhile, the defendant has to prove that he or she is not infringing
any registered patent.

4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Only an Indonesian patent holder has the right to file the infringement claim or the damages accusation
with the authorised institution. The Patent Law actually regulates that an exclusive licensee has the
same standing with the patent holder to sue for any infringement. The regulation regarding the licence
is regulated by a government regulation. Nevertheless, up to the present time, there has been no
government regulation issued to cover this situation. Therefore, the standing of an exclusive licensee
to file a lawsuit against infringement is still debatable.
Meanwhile, the adverse party who feels aggrieved with the lawsuit filed by the patent holder may file
an accusation on the basis of the Indonesian Civil Code.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The following acts shall be deemed to constitute patent infringement based on article 16 of the Patent
Law:
in the case of a product: the making, using, selling, importing, renting out, delivering, or making
available for sale or rental or delivery of the patented product; and
in the case of a process: the using of the patented production process to make products and
committing other activities referred to in the above point.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as infringers or defendants in the same lawsuit.

7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that occurred outside of Indonesia cannot be deemed as infringements owing to the
territorial principles. However, there is an exception in respect of the method of producing products.
Based on article 19 of the Patent Law, the importation or distribution of products produced using the
patented method outside Indonesia will constitute patent infringement.

8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

There are no statutory provisions or judicial decisions governing the scope of equivalents of a patent
claim.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

With respect to a criminal lawsuit against infringement, the patent holder shall provide sufficient
preliminary evidence before filing the claim with an authorised institution. Later, using this
preliminary evidence, the state police or the Investigation Bureau of the Indonesian IP Office will
conduct an examination to collect further evidence.
If the case is sufficient and finally examined by the court, the infringement suspect can file evidence to
prove that he or she is not guilty.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

In a criminal lawsuit, the trial will be held within one year (or more) until it is decided by the judges.
If there is any objection from either the public prosecutor or the suspect after the issuance of the said
decision, it is possible for the said party to file an appeal with the High Court and, later, file a
cassation with the Indonesia Supreme Court. At a later stage, the concerned party may file the judicial
review if there is any objection to the cassation decision. It should be noted that an appeal, a
cassation and a judicial review may take one to two years each to be decided.
Meanwhile, the civil lawsuit is decided by the Commercial Court, at the latest, 180 days after the
filing date of the lawsuit. A cassation with the Indonesia Supreme Court may only be filed after the
decision of the Commercial Court. The judges of the Indonesia Supreme Court must decide the case
180 days after the filing date of the cassation. It is also possible for any party to file a judicial
review.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Expenses are usually within the range from US$10,000 to US$30,000 for conducting a criminal
lawsuit against infringers. The fee may vary depend on the location of the crime, the number of
infringers and other aspects.

Meanwhile, for civil lawsuit, it usually costs between US$5,000 and US$15,000 (or more) from the
filing of the accusation to obtaining a final and binding decision.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

There will be a cassation, which can be filed against an adverse decision in a patent infringement
lawsuit as regulated by article 122 of Patent Law No. 14 of 2001: [an] appeal upon the decision of
the Commercial Court referred to in article 121, paragraph (3) may only be filed as cassation.
The concerned party also may file a judicial review if there is any objection to the cassation decision.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In Indonesia, a patent is excluded from a competition violation, unfair competition or a businessrelated tort.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

It is possible for both parties to settle the case using alternative dispute resolution. Mediation
proceedings would be effective as long as both parties agree. It is also possible to conduct the
arbitration, using the assistance of the Indonesian Arbitration Institution or any other arbitration court.
Nevertheless, an arbitration would be effective only in a civil lawsuit in connection with a contract
where both parties have agreed to settle the dispute in such an institution.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

In Indonesia, a patent is not granted to an invention regarding:

any process or product of which the announcement and use or implementation contravenes the
prevailing rules and regulations, religious morals, public order or ethics;
any method of examination, treatment, medication or surgery applied to humans or animals;
any theory and method in the field of science and mathematics; or

 all living creatures, except micro-organisms, and any biological process that is essential in
producing plants or animals, except non-biological or microbiological processes.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Such patent ownership is provided by article 12 of Patent Law No. 14 of 2001. Unless agreed
otherwise in an employment contract, the party entitled to obtain a patent on an invention shall be the
one who has commissioned the work. An employer must provide compensation to the inventor by
considering the economic benefit that can be obtained from the said invention.
An Indonesian patent ownership can be transferred in whole or in part by inheritance, donation,
testament, written agreement or other reasons recognised by the law. The transfer of ownership of a
registered patent becomes effective when such a transfer is recorded in the Indonesian Patent Office.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

A lawsuit for revocation of a patent may be filed against a patent registration where:
the relevant patent should not have been granted due to the invention not being new, does not have
any inventive steps or is not applicable in industry (it is possible to file invalidity if the said patent is
actually unpatentable as referred in question 15); and
the relevant patent is the same as another patent that has been granted to another person based on the
law.
The grant of a compulsory licence cannot stop the implementation of the relevant patent in the form
and manner that contravenes the public interest within a period of two years, commencing from the
date of granting the relevant compulsory licence or from the date of granting the first compulsory
licence in cases where some compulsory licences have been granted.
A lawsuit for revocation on the grounds referred to in the first point may be filed by a third party
against the patent holder in the Commercial Court.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

An invention shall be considered novel, if at the date of filing of the application, the said invention is
not the same as any previous technological disclosure. Moreover, an invention shall be considered

novel if the invention is, on the filing date, different from the technology already revealed before.
The term technology already revealed before may be interpreted as state of the art or prior art,
which includes patent literature as well as non-patent literature. Different means not only literally,
but it should also be distinguishable by the features of the invention against the features of the
previous invention.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The legal standard to determine whether a patent is obvious or inventive is regulated by article 2,
paragraph (2) of the Patent Law No. 14 of 2001, which states; An invention shall be considered to
involve an inventive step if the said invention does not constitute something that is obvious to a
person skilled in the art.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent can be deemed null and void if the patent holder does not fulfil his or her obligation to pay
the annual fees within the period stipulated by the law.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Pursuant to article 15 of the Patent Law No. 14 of 2001:

(1) the party who exploits an invention shall only be recognised as a prior user, if, after a
patent has been granted for the same invention, he or she submits a request to such a purpose
at the Directorate General;
(2) a request for recognition as a prior user shall be furnished with evidence that the
exploitation of the invention was not performed by using a description, drawing, a sample of,
or other information about the invention for which a patent has been requested;
(3) the recognition as the prior user shall be issued by the Directorate General in the form of
a Prior User Certificate upon payment of the prescribed fee;
(4) a Prior User Certificate expires at the same time as the expiry of the patent for the same
invention; and
(5) the procedure for obtaining recognition as a prior user is regulated by government
regulation.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

It is possible for the patent holder to request the remedies from the infringer. The damages are usually
calculated from the real financial loss caused by the infringement added to the cost of legal action.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

It is possible for the concerned party to request an injunction to halt the sales or production of a
product, under article 125 of Patent Law No. 14 of 2001. Even though the article regarding injunction
is already stipulated in this law, such action was not available due to the lack of procedural
regulation until at least 2012, before the Indonesian Supreme Court issued Regulation No. 5/2012
regarding the injunction itself. Therefore, at present, it is not possible to determine whether the
injunction proceeding is effective or not.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

At present, Indonesian customs proceedings are not able to prevent importation into the country.
There is currently no regulation that enables the Indonesian Customs Authority to proceed with such
legal action. As long as the importer can provide the required documents (excluding IP ownership
documents), products will be allowed to enter Indonesia.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Attorneys fees are included in the legal remedies, however, there is no explicit law that regulates the
attorneys fees.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no additional remedies against a deliberate or wilful infringer.

27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The time limit for seeking a remedy for patent infringement (or to file the infringement claim) is based
on the Penal Code. The standing to file a criminal lawsuit expires within six months after the claimant
witnessed the usage of the counterfeited products if he or she is domiciled in Indonesia. Further, if the
claimant lives overseas, the time limit to file a claim would be nine months after he or she witnessed
the infringement.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no regulation regarding patent marking in Indonesia.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Any licensing agreement in Indonesia must not contain any provisions that may directly or indirectly
damage the Indonesian economy, or contain restrictions that obstruct the ability of the Indonesian
people to master and develop technology in general and in connection with the patented invention in
particular.
Moreover, any licensing agreement has to be in accordance with the four Principles of Agreement as
stipulated in the Indonesian Civil Code, namely, consensualism, freedom of contract, good faith and
pacta sunt servanda.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Articles 74, 75 and 76 of Patent Law No.14 of 2001 concerning the compulsory licence state as

follows:
Article 74
A compulsory licence shall mean a licence to implement a patent that is granted based on the
decision of the Directorate General based on an application.
Article 75
(1) Any party, after the expiration of a period of 36 months commencing from the date of
grant of a patent, may file a request for a compulsory licence at the Directorate General,
with the payment of a fee;
(2) a request for a compulsory licence referred to in paragraph (1) shall only be made on the
grounds that the relevant patent has not been implemented or only partially implemented by
the patent holder; and
(3) a request for a compulsory licence may also be filed at any time after the grant of patent
on the grounds that the relevant patent has been implemented by the patent holder or the
licensee in a form and manner that contravenes the public interest.
Article 76
(1) In addition to the truth of grounds referred to in article 75, paragraph (2), a compulsory
licence may only be granted if:
a. the person filing the request can provide convincing evidence that he:
1. has the ability to personally and fully implement the relevant patent;
2. has his own facilities to readily implement the relevant patent; and
3. has made efforts in a sufficient period of time to acquire a licence from the patent holder
on the basis of normal terms and conditions but did not succeed; and
b. the Directorate General is of the opinion that the relevant patent can be implemented in
Indonesia on a feasible economic scale and can be of benefit to the majority of the society.
(2) the examination of a request for a compulsory licence shall be carried out by the
Directorate General by hearing the opinion of other related government agencies and
parties, as well as the relevant patent holder; and
(3) a compulsory licence shall be granted for a period no longer than the period of patent
protection.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The cost estimated for filing the national phase of a PCT application and simple patent application
from filing up to the grant would be US$150 (including official and agency fees).
Meanwhile, the average period between filing and the actual grant for National Phase Application is
about four to six years. The average period between filing and actual grant for a simple patent
application is about three years.
This period may be shorter if the corresponding patent application has been granted in another
country. The corresponding patent can be used by the examiner as a reference in granting the

application.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

It is possible to expedite the patent prosecution. In order to accelerate the examination of an

application, the applicant could provide the Patent Office with the following documents:
correspondence between the examiner and the applicant in respect of the examination of the initial
application or the other corresponding applications filed in another country (article 28 of Patent Law
No. 14 of 2001), as well as patent documents, if the initial application or the other corresponding
application filed in another country has been granted, with the exception of a granted patent from
South Africa and Southeast Asian countries. This amendment will accelerate the examination of the
application.
Further, a request for substantive examination can be filed within the period of the publication of
application. In practice, it can be filed before the publication date, but the examination shall be
conducted after the end of the six-month period of publication. The Patent Office will not issue any
notification regarding the early examination.
The PPH Pilot Programme is a framework in which an application determined to be patentable by the
Japanese Patent Office (JPO) is eligible to have the examination accelerated in the Indonesian Patent
Office with a simple procedure upon an applicants request.
The Indonesian patent applications that may be filed with a PPH Pilot Programme are as follows:
patent applications derived from PCT international applications, which claim priority right;
patent applications derived from PCT international applications which do not claim priority right
(with the condition of having the International Search Report in Japan); and
patent applications that claim Paris Convention priority right.
The required documents for filing a PPH Programme are as follows:
a copy of all claims and its translation;
a copy of the JPO office actions or notice of allowance and their translations;
copies of all cited documents; and
a claims correspondence table.
For further information and other requirements of PPH Pilot Programme, one may contact the
Japanese Patent Office directly since the PPH Pilot Programme is a joint programme between the
Indonesian Patent Office and the Japanese Patent Office, which has a joint statement of intent
undersigned by both parties and began on 1 June 2013.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The invention in a patent application must include:

the date, month and year of the application;

 the clear and full address of the applicant;

the full name and nationality of the inventor;
where the application is filed by a proxy, the full name and address of the proxy concerned;
a special power of attorney, where the application is filed by a proxy;
a request that a patent be granted;
the title of invention; and
the claim implied in the invention (the claim is the part of the application describing the core of the
invention being applied for legal protection, which must be clearly described and must be supported
by:
a written description of the invention, which must contain complete information on the ways of
implementing the invention;
drawings mentioned in the description and required for clarification; and
an abstract regarding the invention.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

Patent applicants are required to disclose any prior art references known to the applicants before the
priority date.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

An application may be amended by revising the description or the claims, provided that such
amendments do not expand the scope of invention applied for in the original application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

If the Patent Appeal Commission refuses an appeal petition, the applicant or his or her proxy may
bring legal action against the decision to the Commercial Court within a period of three months from
the date of receipt of the refusal Further, upon the decision of the court, the applicant may only file a
cassation.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

During the announcement period, any concerned party may file in writing his or her comment or
objection, or both, on an application by stating the reasons.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The Indonesian patent system adopts the first-to-file system. If there are more than one application for
a similar invention filed by different applicants, the application that shall be accepted is the one that
was first filed.
If both applications are filed on the same date, the Directorate General shall notify the applicants in
writing to negotiate a decision as to which application is to be filed and they will be asked to deliver
the decision to the Directorate General no later than six months from the date of the notification.
If the applicants cannot reach an agreement or cannot produce a decision or it is impossible for them
to negotiate, or the results of the negotiation are not delivered to the Directorate General within the
period of six months, the applications shall be rejected and the Directorate General shall give notice
thereof to the applicants in writing.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The Patent Office only provides procedures for modifying and revoking a patent. Such a modification
can only be initiated before the final step of examination. Re-examining is not available in Indonesia.
Revocation can be filed by the patent holder and the third party. If the revocation is filed by the patent
holder, he or she must file a written request to the Directorate General. Meanwhile, if the revocation
is filed by a third party, see question 17 regarding the patent invalidity.
40 Patent duration

How is the duration of patent protection determined?

A patent shall be granted for a period of 20 years, which cannot be extended, commencing from the
filing date. Further, a simple patent (utility model) shall be granted for a period of 10 years, which
cannot be extended, commencing from the filing date.

Nadia Am Badar

nadia@ambadar.co.id

Jalan Wahid Hasyim No. 14

3rd 4th floors
Jakarta 10340
Indonesia

Tel: +62 21 3983 / 7314 / 3983 / 7315

Fax: +62 21 3983 / 7300 / 3983 / 7319
www.ambadar.co.id

Italy
Fabrizio de Benedetti
Societ Italiana Brevetti (SIB)
Francesco Rossi
Studio Legale SIB
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

From 2003 to 2012, patent infringement and nullity issues fell within the competence of the
specialised industrial and intellectual property chambers, that had been established within 12 Italian
courts and courts of appeal, namely in Bari, Bologna, Catania, Florence, Genoa, Milan, Naples,
Palermo, Rome, Trieste, Turin and Venice. Despite the formal qualification as specialised, the
degree of experience in patent issues varied considerably from one chamber to another. A certain
degree of experience had been built up in Milan, Rome, Turin and Venice, whereas experience was
lower or nil in other chambers.
At the end of 2012, the court system was partly restructured and some further matters of commercial
interest were added to the jurisdiction of the said chambers, whose name was accordingly changed
into specialised business chambers. Eight additional chambers were established within the courts and
courts of appeal in Ancona, Brescia, Cagliari, Campobasso, Catanzaro, LAquila, Perugia and
Trento. Whether this restructuring will improve the efficiency of court proceedings is doubtful, all the
more so that the experience of said courts in patent matters is minimal or non-existent.
According to a recent law, competence is restricted to only some of the courts mentioned above,
whenever one of the parties is a foreign company. This law also established a new specialised
business chamber in Bolzano.
It must further be remembered that Italy is a signatory of the Agreement on a Unified Patent Court, that
was signed by several European countries on 19 February 2013. This agreement, which is still
awaiting ratification, will concentrate before the unified court all disputes relating to infringement
and nullity of European patents (article 1). During a transitional period of seven years there will be a
concurrent competence, so that it will be possible to opt for a national court instead of the unified
court (article 83). The unified court will probably have one or two local divisions in Italy, although
this is still under discussion.
Criminal proceedings are also possible, but they are not frequent in patent matters.

2 Trial format and timing

What is the format of a patent infringement trial?

Court proceedings in patent issues are quite different from what is understood as a trial in common
law countries. Submissions are mainly made in writing and oral discussions are normally limited.
Infringement and validity issues can be handled within the same court proceeding. When the plaintiff
is the patentee, the defendant normally counters that there is no infringement and that the patent is
invalid. In other cases, it is the alleged infringer who proceeds as a plaintiff, and requests a finding
both of non-infringement and of patent nullity; in such a case, the defendant is the patentee who
counterclaims for infringement.
An ordinary court proceeding is started by a summons that must contain a thorough statement of the
case and be accompanied by supporting documents. The defendant must make an appearance by the
date of the first hearing at the latest (see question 10 and, simultaneously, submit a thorough written
reply, which must also be accompanied by supporting documents.
During the subsequent months it is possible to submit additional documents and requests for the taking
of evidence, such as, for example, witness examination (see question 3).
The judge then decides whether any evidence is to be taken. In nearly all patent cases the judge
appoints a technical expert to give an opinion, both on patent validity and infringement. In most cases
the court-appointed expert is a European patent attorney who discusses the matter with the parties
patent attorneys (normally through exchanges of briefs), and eventually submits a report with his or
her opinion.
Once the experts report is available, the judge decides whether the case can proceed towards
judgment or if any further taking of evidence is necessary. In the former case the parties can exchange
final briefs and replies, and then the case is referred to the court panel for decision.
There is no oral discussion, unless one party expressly requests it.
The court is not bound by the experts opinion. Nevertheless, it normally rules in accordance
therewith. In the case of disagreement, the court judgment has to provide a more thorough explanation.
Normally, appeal proceedings are simpler because no taking of evidence is necessary.
With respect to the duration of the proceedings, see question 10.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Basically, each party has the burden of proving its own allegations, although the other party, under
certain conditions, can be requested to provide certain documents and information in its possession
(see question 9).
In principle, infringement can be proved by any means, but a major role is played by documents, such
as, for example, brochures, photographs and correspondence. An important means of proof is also an
inspection at the factory or premises of the alleged infringer, which can be ordered by the judge if he
or she is satisfied that there is a serious ground to suspect infringement.
When a patented process results in a new product, any identical product is supposed to have been
made by the protected process, unless otherwise proved (Industrial Property Code (IPC), article

67.1.a).
With respect to patent invalidity and unenforceability, prior art documents are the typical means of
proof.
Witness deposition is also possible with respect to any type of issue. However, it is normally
regarded as a means for supplementing documentary evidence, rather than independent decisive
evidence. For example, if prior disclosure is likely from a certain brochure but not fully evidenced
thereby, witness deposition can help to remove uncertainty. On the other hand, no court can be
expected to regard a patent as invalid if prior disclosure has been simply stated by a witness without
any supporting document being available.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Apart from the patentee, according to prevailing opinion, an exclusive licensee may also sue for
patent infringement, whereas a non-exclusive licensee is not entitled thereto.
An accused infringer may sue both for declaration of non-infringement and for patent nullity. He or
she simply has to prove that he or she has been threatened on the basis of the patent at issue, for
example, by means of a warning letter.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Although there is no express provision, contributory infringement is substantially undisputed, at least

when a party manufactures or sells something that:
is essential to the manufacture of a patented product or to work a patented process; and
either does not have any other function, or is supplied for the specific purpose of infringing a patent
(which can be understood, for example, from the instructions for use).
All parties involved in contributory infringement can be jointly liable.
An express provision, which substantially confirms the principles outlined above, is going to be
introduced by the Agreement on a Unified Patent Court, referred to in question 1. According to this
Agreement, which is still awaiting ratification, the patentees exclusivity includes:
the right to prevent any third party [] from supplying or offering to supply, within the
territory of the Contracting Member State in which that patent has effect, any person other
than the 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 (art. 26.1).
This, however, does not apply to staple commercial products, unless the third party induces the
person supplied to perform any act of direct infringement (article 26.2).

6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit if there is some connection between
their respective conducts (Civil Procedure Code (CPC), article 33). This means that joinder of
multiple defendants is possible, for example, when:
defendants have taken part in the infringement of the same patent, as is typically the case of a
manufacturer and his or her distributor;
defendants are involved in contributory infringement (see question 5); and
defendants have infringed different patents, which, however, are connected with each other (for
example ,different components of the same apparatus).
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

According to IPC, article 66.1, a patent confers the exclusive right to work the invention and to
benefit therefrom within the Italian territory. This means that an activity performed abroad does not,
in principle, constitute any infringement of an Italian patent. Nevertheless, contributory infringement
can be imagined under some circumstances, for example, if an essential component of a patented
product is made abroad and then supplied to an Italian manufacturer (see question 5).
When a process is protected by an Italian patent but it is carried out abroad, importing the product
obtained by the process into Italy constitutes infringement (IPC, article 66.2.b).
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

According to IPC, article 52.3-bis, for the purpose of determining the extent of protection conferred
by a patent, due account shall be taken of any element that is equivalent to an element specified in the
claims. This provision was introduced in 2010, in line with the latest version of the protocol on the
interpretation of article 69 of the European Patent Convention (EPC).
Courts, however, were taking equivalents into account well before then. Although well established
rules did not exist, equivalence had been recognised when:
the triple identity test was satisfied (ie, identity of the technical problem, identity of the result and
substantial identity of the means); or
the difference from the patent claim could be regarded as an obvious modification or such a
difference was regarded as being of a minor nature.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

When one of the litigants needs some documents or information that are in the possession of the other
litigant, he or she can invoke IPC, article 121.2, which stipulates as follows:
Once a party has provided serious signs of the soundness of its submissions, and has
identified documents, elements or other information held by the other party and confirming
such signs, it can obtain from the judge an order to produce them or an acquisition of the
information through deposition of the other party. It can further obtain from the judge an
order to identify the parties involved in the manufacture and distribution of the products or
services constituting infringement.
More comprehensive disclosure, inclusive of bank documents, can be ordered in the case of piracy
(IPC, article 121.2 bis).
These provisions, which substantially correspond to article 43 of the Trips Agreement, do not
provide for broad-scope discoveries like those existing in various common law countries. Indeed,
they have the more limited purpose to relieve a rights owner from an unreasonably heavy burden of
proof. Their rationale is not to remove such a burden, but simply to help a party who has fulfilled it as
far as possible.
How these provisions are to be applied practically, is basically at the discretion of the judge. In
particular, it is up to the judge to evaluate, in view of the specific circumstances, whether a rights
owner has fulfilled its burden to provide serious signs of the soundness of its submissions, and
accordingly whether there is a basis to order the other party to disclose some of the documents or
information in its possession.
Possible non-compliance with the judges order is subject to IPC, article 121.4, according to which
the judge can derive elements of proof from the answers given by the parties and from their
unjustified refusal to comply with the judges orders. This means, for example, that infringement can
be assumed if the available evidence shows as such and the alleged infringer refuses to provide a
document that should clarify a decisive detail. Likewise, prior disclosure can be assumed if the
patentee refuses to provide a clarifying document, when the available evidence makes prior
disclosure very likely.
IPC, article 121 does not differentiate between litigants located in Italy or in other countries. In other
words, if a foreign litigant is addressed an order under IPC, article 121.2, he or she is bound by it
exactly like an Italian litigant. If he or she fails to comply with the order, IPC, article 121.4 applies to
him or her also.
Information about the origin and distribution networks of infringing goods or services can be
requested by the judge from suppliers, distributors and manufacturers, even if they are not parties to
the court proceedings (IPC, article 121-bis).
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

According to the CPC, the time limit for the defendant to appear must be at least 90 days if the
summons has been served in Italy, and at least 150 days if the summons has been served abroad
(summons for patent nullity are to be served upon the Italian attorney of record, so that the time limit

is 90 days even if the patentee is a foreign company). Shorter time limits are exceptionally possible.
At the first hearing the judge has to set the following time limits upon request:
30 days for possible changes to the parties submissions;
30 further days for possible evidence requests and submission of additional documents; and
20 further days for possible counter evidence.
At the subsequent hearing, the judge decides about the parties requests for evidence and normally
appoints a technical expert (see question 2). The time needed by the expert to study the matter, to
review the briefs of the parties patent attorneys and to prepare his or her report can vary
considerably, and ranges from approximately six to 12 months in most cases.
Once the expert has submitted his or her report, a further hearing is held before the judge, who has to
assess whether any further taking of evidence is necessary or if the matter can be referred to the court
panel for judgment.
If the judge decides to take further evidence (eg, to hear witnesses), one or more further hearings are
scheduled for this purpose. Otherwise, there is only one final hearing where the parties have to finally
state their submissions. Within the subsequent 60 days, the parties have to exchange their final briefs,
which are normally the most important papers because the whole matter must be thoroughly discussed
therein. Final replies can be exchanged within the subsequent 20 days. The court then has to render its
judgment. If one of the parties has requested oral discussion (see question 2), a hearing is held before
then.
Although some time limits are relatively short as indicated above, the duration of a court proceeding
can vary greatly from one case to another. On the one hand, the expertise may take more or less time,
on the other hand the necessary hearings may be more or less numerous. Moreover, some judges
schedule their hearings at intervals of two or three months, whereas intervals may be six or eight
months or more with other judges. Also, the time needed for a judgment to be issued and become
available, once the parties have exchanged their replies, may range from a few weeks to several
months. Further delays may be caused by replacement of the judge or by other circumstances.
All in all, it is very rare to have a first-instance judgment in less than a couple of years, whereas three
or four years are quite usual, and longer durations are possible according to circumstances.
Normally, appeal proceedings are shorter because no taking of evidence is necessary. Their duration,
however, also depends very much upon circumstances.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs may be very different from case to case depending on the complexity of a matter, on the time
needed and regarding the appointed attorneys-at-law and patent attorneys, whose fees can be freely
agreed.
In most cases, the order of magnitude is in the tens of thousands of euros in each instance.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Appeal on factual or legal grounds is always possible before the competent court of appeal (see
question 1).
Further appeal on legal grounds is possible before the Supreme Court.
Both types of appeal are subject to a preliminary examination, which results in immediate rejection
when an appeal is found to be inadmissible or evidently groundless (CPC, articles 348-bis, 375 and
380-bis).
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Starting a court proceeding for infringement, or threatening a competitor therewith, may constitute
unfair competition if the patentee either is aware of the groundlessness of his or her threats, or ought
to be aware of it. This may apply, for example, when the patentee knows, or could have easily
realised, that his or her patent is invalid or when infringement evidently does not exist.
In such cases the court, in addition to costs, can award to the defendant a damage compensation,
which can be set on a equitable basis if necessary (CPC, article 96).
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration is possible under various rules, including the arbitration rules of the World Intellectual
Property Organization. Arbitration, however, is not at all usual in patent disputes.
The same applies to mediation.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

In line with the EPC, any type of invention is patentable apart from some medical procedures and a
few other exceptions. Software and business methods are not regarded as inventions.
The relevant provision is article 45 IPC, whose paragraphs 1 to 5 correspond to articles 52 and 53
EPC, which reads as follows:
1. Inventions in all fields of technology can be the subjects of patents, provided that they are
new, involve an inventive step and are susceptible of industrial application.
2. The following in particular shall not be regarded as inventions within the meaning of
paragraph 1:
(a) discoveries, scientific theories and mathematical methods;

(b) schemes, rules and methods for performing mental acts, playing games or doing business,
and programs for computers;
(c) presentations of information.
3. Paragraph 2 shall exclude the patentability of the subject matter referred to therein only to
the extent to which a patent application or patent relates to discoveries, theories, schemes,
rules, methods, programs and presentations of information as such.
4. Patents shall not be granted in respect of:
(a) methods for treatment of the human or animal body by surgery or therapy and diagnostic
methods practised on the human or animal body;
b) plant or animal varieties and essentially biological processes for the production of plants
or animals, including new plant varieties with respect to which the invention only consists of
the genetic modification of another plant variety, even if such modification is the result of a
process of genetic engineering.
5. The provision of paragraph 4 does not apply to microbiological processes nor to products
obtained thereby, nor to products, particularly substances or compositions, for the use of one
of said methods.
5-bis Biotechnological inventions referred to in article 81-quinquies cannot be the subject of
any patent.
IPC, article 81-quinquies, referred to in 5-bis, relates to some inventions regarded as contrary to
human dignity or public order, such as methods of human cloning and use of human embryo stem cells.
In what cases subject matter constitutes a computer program or a business method as such, or rather
includes some technical contents that may justify a patent, is a matter of interpretation. The case law
of the European Patent Office (EPO) can be referred to in this respect.
Computer programs as such are protected under the Copyright Law (article 1.2, articles 64-bis, 64-ter
and 64-quater).
Plant varieties are subject to a special type of protection in accordance with the UPOV Convention
(IPC, articles 100 to 116).
Semiconductor topographies are also subject to a special type of protection, in accordance with
European Directive 54/1987 (IPC, articles 87 to 97).
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

If there is a relationship between the invention and the employees tasks, as is normally the case, the
invention and the patent relating thereto belong to the company. If research and development belong to
the employees contractual tasks, he or she is not entitled to any specific compensation. Otherwise he
or she is entitled to an equitable award, provided that the employee obtains a patent upon the
invention or makes use of it under secrecy (IPC, article 64, paragraphs 1 and 2).
The entity of the said equitable award depends upon the importance of the invention, upon the
employees tasks and salary and upon the contribution the employers organisation has given to the
invention (article 64.2).
If the invention has nothing to do with the employees tasks (for example, a mechanical device

invented by an accountant), but it falls within the companys field of activity, the invention belongs to
the employee but the company has an option to purchase it (article 64, paragraph 3).
There is no provision for inventions made by independent contractors. If an invention is the result of a
research or project contract, the common opinion is that the rights to it belong to the company.
As far as joint ventures are concerned, there is also no specific provision. With respect to inventors,
an employee who has made an invention has, therefore, the same rights mentioned above. This applies
both in the case that the joint venture is a new company established for the specific purpose of
conducting research and development and in the case that the joint venture is merely an agreement
between two parties without the establishment of a common company, With respect to the jointventure partners, it is normally the joint-venture agreement that rules how the rights upon a common
invention are to be shared between them.
Special provisions apply when the inventor is a researcher employed at a university or research
institute. The general rule is that the patent belongs to the inventor, whereas possible royalties are to
be shared between the inventor and his or her employer. The inventor is entitled to at least 50 per
cent of such royalties anyway (article 65).
If an invention is made by multiple inventors, in the absence of any employment or contractual
relationship, all of them are jointly entitled to the patent because patent rights belong to the inventors
and to their successors in title (article 63.2).
A transfer of ownership is recorded by filing a petition accompanied by a supporting document
(articles 138, 195 and 196).

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The grounds on which the validity of a patent can be challenged are the same ones provided by the
EPC, specifically:
the subject matter is not a patentable invention (IPC, article 76.1.a) (what constitutes a patentable
invention is indicated in article 45 IPC, referred to in question 15);
the subject matter lacks either novelty or inventiveness or industrial application, or it is contrary to
public order or morality (article 76.1.a);
the subject matter extends beyond the content of the application as filed, or the protection conferred
by the patent has been extended (article 76.1.c); and
the patent owner was not entitled to obtain it, and the entitled party has not claimed its transfer
(article 76.1.d).
If a nullity ground affects a patent only to a limited extent, a court can declare partial invalidity and
leave the patent in force for the unaffected part (article 76.2). Also, a court may convert a patent into
a utility model and vice versa, if this is regarded as the proper title of protection (article 76.3).
The competent courts are those where specialised business chambers exist (see question 1).

18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Yes, absolute novelty is a requirement in accordance with the EPC.

The relevant provision is article 46 IPC, which corresponds to article 54 EPC and whose initial
paragraphs read as follows:
1. An invention shall be considered to be new if it does not form part of the state of the art.
2. The state of the art comprises everything made available to the public by means of a
written or oral description, by use or in any other way, in the Italian territory or abroad,
before the date of filing of the patent application.
The following exceptions are provided by article 47 IPC, which corresponds to article 55 EPC and
whose first paragraphs read as follows:
1. For the application of article 46, a disclosure of the invention shall not be taken into
consideration if it occurred within the six months preceding the filing of the patent
application and it results directly or indirectly from an evident abuse to the detriment of the
applicant or his legal predecessor.
2. Disclosure in an official or officially recognised exhibition, recognised pursuant to the
convention on international exhibitions, signed in Paris on 22 November 1928 and
subsequently revised, is also not taken into account.
When priority is claimed, the state of the art must be referred to the priority date (article 47.3).
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The technical experts who are normally appointed in patent disputes are usually Italian and European
patent attorneys. As such, they tend to follow the problem-and-solution approach developed by the
European Patent Office (EPO), as the courts do, who normally base their judgments on their experts
opinions, although such opinions do not have any binding effect (see question 2).
As a result, the problem-and-solution approach constitutes the basis for most court decisions relating
to inventiveness, although express reference thereto is rather infrequent in judgments.
In short, the problem-and-solution approach involves the following stages:
(i) determining the closest prior art;
(ii) establishing the objective technical problem to be solved; and
(iii) considering whether or not the claimed invention, starting from the closest prior art and the
objective technical problem, would have been obvious to the skilled person (EPO Guidelines, G,
VII-5).
With specific reference to stage (iii), the various indicators of non-obviousness referred to by the
EPO are normally also taken into account by Italian courts. This applies, for example, to surprising
results, unexpected technical effects, long-felt need and commercial success (EPO Guidelines, G,
VII-10).

20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

According to article 68 IPC, the exclusive rights conferred by a patent do not extend to:
activities performed in the private sphere and for non-commercial purposes, and activities having
an experimental purpose;
studies and experiments for the purpose of obtaining a marketing authorisation for a medicament in
Italy or abroad, including the preparation and the use of the raw materials strictly necessary for this
purpose; and
extemporaneous preparation of medicaments upon medical prescription in a pharmacy, provided
there is no use of industrially manufactured active principles.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Article 68.3 IPC reads as follows:

Anyone who has made use of the invention within his business firm, during the twelve months
preceding the filing or priority date of the patent application, may continue to use it within
the limits of his prior use. Said right can only be transferred together with the business firm
where the invention is used. The burden to prove prior use and its extension belongs to the
prior user.
This provision only refers to prior activities that had been in no way performed in public, and
accordingly cannot affect the validity of the patent. This can apply, for example, to the use of a certain
machine or process within a factory. Had there been any public use, for example, a sale on the market
making the patented product available to the public, the patent would be invalid due to lack of novelty
(see question 18).
This applies to all types of inventions because article 68.3 does not make any distinction.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

According to article 125 IPC, which is in line with European Directive 2004/48, a patentee can base
his or her claims to compensation essentially on one of the following criteria:
(i) profits lost as a consequence of the infringement (article 125.1);

(ii) profits achieved by the infringer (article 125.3); or

(iii) royalties that the infringer should have paid had he or she obtained a licence from the patentee
(article 125.2).
How the profits under (i) and (ii) are to be calculated is not fully clear from court decisions. In
particular, there has been some discussion as to whether or not certain general costs should be
deducted from sales revenues.
As to the royalties under (iii), it has sometimes been decided that their amounts should be higher than
market value, as a compensation for the fact that there has been a sort of extorted licence. However,
there is no general agreement on this subject.
Since precise calculations are normally impossible, usually any of the criteria mentioned above
ultimately amounts to a lump sum that is regarded as equitable by the court (article 125.2).
Damages start to accrue from the moment they are caused, which in most cases means when the
infringing products begin to be offered or sold. The patent must not necessarily have already been
granted: a pending application can also be a basis for damage claims, provided it has already become
open to the public, which normally happens 18 months after the filing or priority date.
Punitive damages do not exist in Italian law. Nevertheless, damage compensation can be very
substantial if courts believe that this is justified by circumstances.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

At the end of an ordinary proceeding, if the court finds there is an infringement, it will issue a final
injunction prohibiting its continuation.
Since ordinary proceedings are normally lengthy (see question 10) it is possible to request temporary
injunctions by way of precautionary proceedings. Since this can have heavy consequences upon a
defendant, courts are normally cautious and grant a temporary injunction only if they feel sure that the
patent is valid and that infringement has really occurred. A technical expert can be appointed to
review both patent validity and infringement. In such a case, a decision about a request for temporary
injunction may take some months, despite the intrinsically urgent nature of a precautionary
proceeding.
In cases of both final and temporary injunctions, the court normally sets a penalty for possible
violations.
An injunction can be accompanied by an order to withdraw the infringing products from the market,
which can mean that the infringer has to buy back the products from his or her customers or
distributors. Such an order can be expressly extended to third parties being in possession of the said
products (articles 124.1 and 131.1) with the exception of final consumers using the products in their
private spheres (see question 20).
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or

proceeding available to accomplish this?

Upon request, the customs authorities can suspend the release of goods suspected of infringement,
pursuant to European Regulation 608/2013. Seizure and destruction are also possible by proceedings
that depend on the circumstances.
Request for customs action must be addressed to the management of the Italian customs, specifically
the Ufficio Antifrode Centrale. The authority to order seizure and destruction depends on
circumstances. In the case of piracy, destruction is possible upon authorisation by the president of the
specialised business chamber of the competent court (IPC, article 146 (see question 1)).
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In principle, a winning party is always entitled to recovery of costs and attorney fees, unless he or she
has been successful only in part or if the dispute is partly due to his or her responsibility. In such
cases the court can discretionally diminish the award of costs and fees or refuse it altogether.
At any rate, the awards granted by the courts are based on criteria that have little to do with the costs
actually incurred, so that only a part of the costs can really be recovered, even in the case of a full
victory (50 to 60 per cent in fortunate cases).
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

The IPC refers to deliberate infringement in the case of piracy, which is defined as evident
infringement [] being performed deliberately and in a systematic way (article 144). Particularly
stringent measures are provided in such cases, including seizure of the infringers properties, such as
real estate and bank accounts (article 144-bis), and destruction of the infringing goods by simplified
proceedings (article 146).
Apart from piracy cases, for the purposes of a request for injunction there is no difference between
deliberate or unintentional infringement. In other words, if objectively there is infringement, this must
be prohibited anyway, regardless of whether its nature is deliberate or unintentional.
On the other hand, if the court believes that infringement has been entirely unintentional, it may set
damages at a lower level based on equitable considerations (see question 22).
The deliberate nature of infringement can play a role in criminal proceedings, which, however, are
not frequent in patent matters (see question 1).
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

As long as a patent is in force and infringement is continuing, there is no time limit for starting an
ordinary proceeding against an infringement.
However, if a patentee seeks a temporary injunction but fails to proceed promptly, the court may find
that the case is not an urgent one and accordingly reject the request. How long a patentee may wait
and still claim urgency is evaluated at the courts discretion. Most courts are not very stringent in this
respect, and some months are normally tolerated.
With respect to damage compensation, the alleged infringer may invoke the statute of limitations for
sales or other activities occurred five or more years before the beginning of the court proceedings
(Civil Code, article 2497).
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Marking is not compulsory and there is no consequence of failure to mark.

On the other hand, falsely suggesting that a product is protected by a patent is subject to a fine up to
516.46 (IPC, article 127.2). Moreover, such a false suggestion may be regarded as an act of unfair
competition.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The only restrictions are those dictated by antitrust principles. At a national level, such principles are
based on European provisions, including Regulation 316/2014 about certain categories of technology
transfers. Typically, forbidden contractual terms are, for example, the restriction of a partys ability
to determine its prices (article 4.1.a), the limitation of output (article 4.1.b) and the allocation of
markets or customers (article 4.1.c).
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence can be granted in the following cases (with some details omitted):
if the patentee has not worked the patented invention in Italy for three or more years after grant, or
has worked it to an insufficient extent in comparison to the countrys needs, importation from a
country of the European Union or of the World Trade Organization is regarded as valid in Italy (IPC,
article 70.1, 70.2);
if an earlier patent debars the working of a later patent, provided that the later patent constitutes an

important technical progress of considerable economic significance, there may be compulsory crosslicences (IPC, article 71); and
if a patented biotechnological invention is needed for the exploitation of a plant variety, or
conversely if it is desired to use a patented biotechnological invention upon a protected plant variety,
this is also subject to the condition that either the biotechnological invention or the plant variety
constitutes an important technical progress of considerable economic significance and crosslicences may be granted in this case also (article 81-octies).
A party seeking a compulsory licence must prove that it has unsuccessfully asked the patentee for a
voluntary licence under equitable conditions (IPC, article 72.1). A compulsory licence cannot be
granted to an infringer, unless he or she can evidence he or she has acted in good faith (IPC, article
72.3).
A request for a compulsory licence must be filed with the IPTO and include the amount of the offered
royalties (IPC, article 199.1). Such a request is notified to the patentee, who has the right to oppose
(IPC article 199.2). In the case of opposition, the IPTO summons the parties to a meeting in an attempt
to reach agreement (IPC, article 199.4). In the absence of an agreement the IPTO then makes a
decision, which may be either a rejection of the request or the grant of the licence (IPC, article
199.6).
The compulsory licence may be revoked if the licensee fails to pay the due royalties or fails to fulfil
other licence requirements (IPC, article 73.1). Revocation is also possible if the conditions that had
brought about the grant of the licence have ceased to exist (IPC, article 73.2).
IPTO decisions about compulsory licences may be appealed before the administrative court for the
Lazio region.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The procedure before the IPTO takes about two years, running from the filing date of the application.
Official fees for filing are set at about 90 but an additional fee of 45 is payable for each claim after
the 10th claim. The claims should be provided in both Italian and English. If the English translation of
the claims is missing, an additional fee of 200 is applicable since the Italian administration must
provide the said translation to the EPO. In fact, the IPTO and the EPO have entered into an agreement
according to which each Italian application (excepted those claiming the priority of a prior
application) undergoes a prior art search performed by the EPO on behalf of the IPTO. However, the
official search made by the EPO on request by the IPTO is not charged to the applicant.
No official fee for the grant is payable. Maintenance fees are required for each year subsequent to the
fourth year from the filing date. Such annual fees range from 60 (fifth year) to 650 (from the 15th
year onwards).
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are no specific procedures to expedite patent prosecution. However, since in Italy infringement
court proceedings can be started on the basis of a pending patent application, the proof that a
litigation is in place is a ground for requesting the IPTO to proceed with an accelerated examination
and grant of the patent.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

There are no specific guidelines in connection with the documentation to be included in a patent
application. The requested documents are indicated in the law and in the rules, which provide that the
application must include the description, the claims and the drawings when necessary.
Since Italian Patent Law is harmonised with the European Patent Convention, it includes the same
provisions about patentability (see above) and similar requirements for obtaining a date of filing.
Specific provisions concern the patentability of biotech inventions (IPC, articles 81-bis to 81septies). Some requirements of Italian law that are not provided for in the EPC include the necessity
of a declaration of the origin of the biological material and of a declaration of consent by the person
from whom this material has been taken in the case that the biological material is of human origin.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There are no law provisions about an obligation to disclose prior art to the IPTO. There is merely a
general requirement provided for by the ministerial decree, which, in 2008, introduced a prior art
search in the grant procedure of the Italian patent applications. According to the said requirement, the
applicant should indicate in the description of the invention the state of the art as far as known to the
applicant at the time the patent application is filed.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

While European and Italian patent laws do not encompass the possibility of filing an application
equivalent to the United States continuation, divisional applications, either voluntarily filed or filed
in reply to an invitation from the IPTO, are allowed under the IPC and can be filed during pendency
of the parent application. In principle, additional claims can be pursued in a divisional application,
apart, of course, from a general prohibition of double-patenting. The claims of the divisional
application must have a clear basis in the parent application. Although the addition of subject matter

in a (divisional) application is prohibited, Italian Patent Law and the associated case law and
doctrine have not, so far, expressed a clear position about how strictly this prohibition must be
interpreted.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

A rejection of an application can be appealed before a special board (the Appeals Commission),
within 60 days from receipt of the relevant communication (IPC, article 135). Further appeal, with
respect to matters of law, is possible before the Supreme Court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Patent oppositions are not possible. Informal objections can be filed with the IPTO, however, the
IPTO is not bound to take them into account.
Formal objections are only possible by proceedings in court. What is typically requested from the
court is a finding that the subject matter of the application is not patentable, and that the possibly
resulting patent is invalid.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

No, disputes between different applicants can only be decided by a court.

If the two applicants have developed the invention and applied for it independently from each other,
the one who has filed first or has the earlier priority date prevails (priority can be claimed either
from a foreign or from an Italian application).
If any misappropriation is suspected, this must of course scrutinised by the court, bearing in mind that
patent rights belong to the true inventor or to his or her successor in title (IPC, article 63.2).
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Re-examination or revocation by the IPTO is not possible. On the other hand, the IPTO can limit a
patent upon request by the patentee (IPC, article 79.1, 79.2).
During a nullity proceeding the patentee can submit a new set of limited claims to the court (IPC,

article 79.3).
40 Patent duration

How is the duration of patent protection determined?

A patent is granted for the maximum term of 20 years running from the filing date of the application. A
supplementary patent protection certificate, in certain conditions, can be obtained for patents relating
to a medicinal or plant product for a period that cannot exceed five years. In connection with a
medicinal product involving specific data for paediatric use, an additional period of up to six months
can be added to the supplementary patent protection. No other types of patent term adjustments are
provided.

Fabrizio de Benedetti

debenedetti@sib.it

Piazza di Pietra 39
00186 Rome
Italy

Tel: +39 06 695441

Fax: +39 06 69544810
www.sib.com

Francesco Rossi

francesco.rossi@siblegal.com

Corso dei Tintori 25

50122 Florence
Italy

Tel: +39 055 263381

Fax: +39 055 2633800
www.siblegal.com

Japan
Yasufumi Shiroyama and Makoto Ono
Anderson Mri & Tomotsune
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

There are two types of civil proceedings: the main lawsuit, by which a patentee may seek both a
permanent injunction order and compensation for damages; and a proceeding for preliminary
injunction, by which a patent owner may seek a preliminary injunction order. Which court has
jurisdiction depends on the defendants domicile or place of manufacturing or sale. The Tokyo
District Court has jurisdiction over the eastern part of Japan, and the Osaka District Court has
jurisdiction over the western part of Japan. Both courts have specialised divisions dealing with cases
relating to intellectual property. In addition to civil liability, the Patent Act has provisions on
criminal sanctions for patent infringement, however these provisions are rarely enforced. Moreover,
a patentee can seek an injunction at a customs office against the importation of patent infringing
products.
2 Trial format and timing

What is the format of a patent infringement trial?

The infringement proceeding begins with the filing of a complaint for a main lawsuit or petition for a
preliminary injunction. Live testimonies can be used under the Civil Procedure Code, however,
judges usually prefer to dispense with live testimonies and rely on documents for patent infringement
cases. As for experts, affidavits of experts may be submitted to prove important technical facts.
Further, for the purpose of establishing the amount of damages, a court may appoint a chartered public
accountant as an expert upon the request of a patentee. The proceedings for a preliminary injunction
typically takes several months, and the proceedings for a main lawsuit typically takes one to one-anda-half years at the district court level and another year at the high court level.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

A patentee has the burden of proof to establish by preponderance of evidence that the accused
products fall within the scope of the patents claims. Regarding the invalidity defence, the alleged
infringer has the burden to prove by preponderance of evidence that there is a reason for the
invalidity of the patent in order to make the patent unenforceable.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

In law, only registered owners and registered exclusive licensees of patents have the standing to file
patent infringement suits in court. Exclusive licensees who are not registered with the Japan patent
office (JPO) as Senyo-Jisshiken-sha in accordance with the Patent Act do not have standing,
however, several lower court cases have admitted the standing of unregistered exclusive licensees
with respect only to their claims to seek damages. Further, an accused infringer has standing to file
lawsuits to seek declaratory judgment in certain situations, for example, where it has received a cease
and desist letter from a patentee.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The following acts shall be deemed to constitute patent infringement:

the manufacturing and sale, etc, of articles to be used exclusively for manufacturing of the patented
product or use of the patented process; and
the manufacturing and sale, etc, of articles to be used for manufacturing of the patented product or
use of the patented process (excluding those that are generally distributed in Japan) and indispensable
for solving the problems through the invention concerned, knowing that the invention is patented and
that the articles are to be used for the exploitation of the invention.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit provided that they are making, using
or selling substantially similar methods or products and are accused of infringing the same patents.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities taking place outside of Japan cannot support a legal charge. However, regarding patents
over a method of producing products, the importation or distribution of products produced using the
patented method outside Japan will constitute patent infringement.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

There is no statutory provision, but a decision of the Supreme Court of Japan (24 February 1998)
stipulated that patent infringement can be found under the doctrine of equivalents. Even if an accused
product or process does not have all elements of a claim, patent infringement may still be found as
equivalents under the following conditions:
the element is not essential to the invention;
equal function and effect can be gained even if the element is replaced with the corresponding part
of the accused product or process;
the idea of replacement is obvious for those skilled in the art at the time of manufacturing of the
accused product or use of the accused process;
the accused product or process was not anticipated or obvious in light of prior art at the time of
filling the patent; and
the accused product or process was not intentionally excluded from the scope of the claim during
prosecution.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Unlike the United States, there is no so-called discovery in Japan and each party has to collect its
own evidence. However, article 104-2 of the Patent Act stipulates that an alleged infringer must
disclose relevant information of the accused product or process when the alleged infringer denies the
patentees allegation. Further, under the Civil Procedure Code and the Patent Act, each party may file
a court petition for an order of document production against an adverse party or a third party as long
as:
the requesting party can, to certain extent, identify the document to be produced;
there is a necessity to obtain an order for document production; and
the adverse party or the third party has no statutory grounds of immunity from or justifiable reason to
refuse production.
In order to obtain evidence from third parties outside the country, a party should request a foreign
court through a Japanese court to provide judicial assistance and obtain evidence in accordance with
the Convention Relating To Civil Procedure or bilateral international agreements.

10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The proceedings for a preliminary injunction typically take several months, and the proceedings for a
main lawsuit typically take one to one-and-a-half years at the district court level and another year at
the high court level.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The fee to be paid to a court upon filing depends on the economical scale of the case. For example, if
a patentee seeks 100 million as damages, it has to pay approximately 400,000 to the district court
and, if it appeals, 600,000 to the high court. To determine the fees to be paid to the court in a claim
for permanent injunction, the claim must have a certain economic value when calculated in
accordance with rules of a court. As for attorney fees, there is no legally binding standard in Japan.
Usually, attorneys representing foreign clients charge on an hourly basis and their rates vary from
25,000 to 70,000 per hour, although some attorneys charge certain amounts as initial and contingent
fees.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Judgments of the Tokyo District Court or the Osaka District Court can be appealed to the Intellectual
Property High Court (IP High Court). Errors in a factual finding or in the application of law by the
first judge are grounds for appeal to the IP High Court. The Supreme Court will hear appeals from the
IP High Court only in cases involving an error in the interpretation and other violations of the
constitution. In addition, violations of civil procedure rules such as an error in jurisdiction, lack of
reasoning, etc, will also give rise to a right of appeal to the Supreme Court. Further, a system of
petitions to the Supreme Court has been introduced that gives the Supreme Court discretion to accept
cases if the judgment being appealed is contrary to precedent or contains significant matters
concerning the interpretation of laws and ordinances.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In practice, the risk is not substantial at the moment, although this may change in the future.

14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration is available in Japan so long as both parties agree to arbitrate disputes in writing. The
Japan Commercial Arbitration Association (www.jcaa.or.jp) and Japan Intellectual Property
Arbitration Center (www.ip-adr.gr.jp) are active institutions that administrate arbitration proceedings
regarding disputes related to intellectual property. However, the number of arbitration cases relating
to intellectual property is small (except for domain name disputes) and is far smaller than the number
of litigated cases. The benefits of arbitration are that the parties may agree to use the English
language, confidentiality can be preserved, and the decision is easier to enforce in foreign countries,
etc. The risks of arbitration are that no appeal is available, etc. Further, mediation is also available
so long as both parties agree. The benefit of mediation is that the proceedings are not necessarily
adversarial, but the risks are that it is very difficult to locate good and experienced mediators and the
proceedings may become redundant as the mediation is not binding.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent may be granted for computer software as either an invention of a product or an invention of a
process, providing that it involves hardware control or process-using hardware. The mathematical
algorithm itself is not patentable. Business methods themselves are not patentable, however, a patent
may be granted for business methods that are combined with computer systems or other devices.
Methods of medical treatment and methods of diagnosis for humans are not patentable, although
Swiss-style claims are allowable. With respect to biotechnology, the mere discovery of microorganisms that occur naturally or their components, such as a DNA sequence or protein, is not an
invention that is industrially applicable, but if it is artificially isolated from its natural source or has
mutated, and, further, if its utility is found and disclosed, it will be recognised as a patentable
invention. Thus, genetically altered cells, plants and animals, and methods of producing them can be
patented.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Only a natural person can be the inventor originally entitled to file a patent for his or her invention.
For an invention created by an employee, the right to obtain a patent may be assigned to an employer
in accordance with rules established by the employer, and the said employer may file the patent

application as the applicant, provided, however, that the employer reasonably compensates its
employee with an amount to be determined in light of the profits arising from the exclusive right to the
invention and the employers own contribution to the invention (article 35 of the Patent Act). The
right to file a patent application on an invention made by an independent contractor is held by the
contractor, but is automatically transferred to other companies if the contractors employment
agreement provides for such a transfer. In the case of multiple inventors, the right to file a patent
application is jointly held by all of them. The transfer of ownership of a registered patent becomes
effective when such a transfer is recorded in the JPO.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Patent invalidity based on a lack of novelty, inventive step or utility, as well as an inadequacy in the
description requirements, such as a lack of clarity, enablement or support requirements, constitutes a
defence for an alleged infringer. If the judges dealing with infringement litigation find that the patent
should be invalidated in a trial for invalidation before the JPO, such judges will not allow the
enforcement of the patent and dismiss the patentees claims even before a final and binding decision
of the JPO is handed down. Thus, an alleged infringer often not only files a petition for a trial for
invalidation with the JPO, but also raises patent invalidity as a defence to infringement litigation in
court. In response to the raising of the defence of patent invalidity by the alleged infringer, the
patentee may argue that the patent will be held valid, for example, due to a correction of claims
requested by the patentee and with the JPO. It is possible that the conclusion of the district court in
respect to patent invalidity will be inconsistent with a decision of the JPO. However, appeals of both
decisions will be heard and judged by the same panel of judges of the IP High Court as long as both
cases are pending simultaneously, and thus it is to be expected that there will not be any
inconsistencies in decisions at an appellate court level.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There is a novelty requirement that the invention is not identical to another invention that was publicly
known, publicly worked or described in a publication in Japan or in a foreign country prior to the
filing or relevant priory date of the patent application. A six-month grace period is available after an
inventor or its assignee first discloses an invention by publication and, in the case of a patent
application filed after 1 April 2012, public use, including sales of patented products, provided,
however, that the intention to claim such a grace period is declared at the time of filing a patent
application and that evidence that supports eligibility for the grace period is filed within 30 days of

filing the patent application. Further, there is another requirement that the invention is not identical to
an invention that was invented by different inventor(s) and described in either the claims, or
specifications and drawings of a patent application that was filed earlier by another person in Japan
and subsequently laid open, and, also, not identical to an invention that was described in the claims of
an issued patent that was filed earlier by the same applicant in Japan.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

There is a requirement of inventive step, that the invention could not have been made easily based on
other inventions that were publicly known, publicly worked or described in a publication in Japan or
in a foreign country prior to the filing of the patent application by a person ordinarily skilled in the art
of the invention. Normally, the issue here is whether or not the invention can be easily developed
based on the combination of two (or more) publications or the combination of a publication and
common technical knowledge. Recently the IP High Court and the JPO have tended to use a test
similar to the teaching, suggestion or motivation test for examining an inventive step.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Japan does not have a concept of inequitable conduct as in the US. However, a defence based on
prosecution history estoppel is available. Further, once a patentee or its licensee has sold a patented
product in Japan, then the use and resale of such products does not constitute patent infringement
under the theory of patent exhaustion. As for repaired or recycled patented products, such as refilled
ink cartridges, the patent is enforceable if such products are found to be a new product produced by
the repairing or recycling activity in light of the nature of the products, content of the patented
invention, aspects of processing and replaced parts, etc. Although the importation and distribution of
products sold by a patentee or its licensee outside Japan does not generally constitute patent
infringement, they do constitute patent infringement if importation into Japan was prohibited as a
condition of the first sale taking place outside Japan and such a prohibition was expressly described
for such products. Experimental use of a patented invention is immune from liability for patent
infringement. The use of a patented invention for the purpose of clinical trials necessary for obtaining
approval for generic drugs is found to fall within the scope of experimental use.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

If an alleged infringer used the patented invention in its business or completed the preparation for
such a business prior to the relevant priority date of the application for the patent, then the alleged
infringer is vested with a statutory licence for the patent and is not held liable for patent infringement.
This defence covers all types of inventions.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Under the Patent Act, three types of damage calculation are available:
the patentees lost profits;
the profits of the accused infringer; and
reasonable royalties.
The damages calculated based on the patentees lost profits and the profit of the accused infringer are
available when the patentee has been competing with the accused infringer in the relevant business.
Damages start to accrue upon the issuance of the patent and the start of the infringing activities. Each
of the three calculation methods is intended to provide fair compensation for infringing activities. The
Japanese legislature and courts have denied the grant of punitive damages. In addition, if an applicant
sent a warning letter enclosing the Official Gazettes listing of the application, he or she can claim
compensation in the amount of a reasonable royalty for the activities exploiting the invention prior to
the issuance of the patent.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A preliminary injunction is available, if the court finds a prima facie case of infringement, and also
that the patentee would be likely to incur irreparable harm without the issuing of the order. Moreover,
the court typically requires that a petitioner post a bond in order to compensate for damages that may
be incurred by an accused infringer in the event the order turns out to be erroneous. The preliminary
injunction order typically directs the infringing products to be kept by a judicial execution officer
until the final injunction is rendered. A final (permanent) injunction is available, if the court finds
infringement and if the defendant commits or is likely to commit infringing activities. A claim to
destroy infringing products can be made together with a claim of injunction. Both a preliminary
injunction and a final (permanent) injunction are effective against the named defendant or respondent
only. Therefore, a plaintiff or petitioner must sue suppliers or customers if he or she wishes to obtain
an injunction against each of them.

24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The importation of infringing products may be subject to a preliminary or permanent injunction, or

both, by the courts, as well as to the manufacture and distribution of such products. In addition, border
enforcement of a patent can be requested by a patentee by filing a complaint with a customs office.
The customs office usually appoints three experts, consisting of practitioners and academic scholars,
and relies on their opinions as to whether a patent is infringed.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The courts can order costs to be paid by one party to the other (typically, from a losing party to a
winning party) but that does not cover attorney fees. The judge assesses the costs after either party
makes a petition to fix the amount of costs. The costs will cover the official filing fee paid to the
court, and other costs, such as those for the translation of documentary evidence written in foreign
languages and for court-appointed experts, allowed under the rules of the court, but it will not cover
the actual costs borne by the parties. In patent infringement cases and other tort cases, the plaintiff can
add a certain portion of attorney fees as part of the damage that it has suffered. In practice, the court
may allow around 10 per cent of actual damages to cover attorney fees.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

No additional remedies are available against a deliberate or wilful infringer. There has been
legislative discussion about the introduction of punitive damages for deliberate or wilful patent
infringement, but no agreement has been reached yet.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Injunctive relief is available from the issuance of a patent to its expiration. On the other hand, a
patentee can claim for monetary relief, that is, damages and unjust enrichment, even after the
expiration of the patent. Patent damages, as one type of tort, are subject to a 20-year statute of
limitation from the occurrence of the event giving rise to the claim and to a three-year statute of
limitation, for which the clock starts at the time of knowledge of the damage and of the identity of the

responsible party. The shorter of these limits applies for tort claims. An unjust enrichment claim is
subject to a 10-year statute of limitation.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Although a patent holder should make an effort in marking its patented products, there is no civil or
criminal sanction for failing to mark patented products. However, false or confusing marking is
prohibited and subject to criminal penalties under the Patent Act, and, further, may constitute an unfair
competitive act under the Unfair Competition Prevention Act.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Under the Patent Act and the Civil Code, there is no restriction on the contractual terms by which a
patent owner licenses a patent. The Antimonopoly Act, however, renders some contractual terms
illegal. For example, a grant-back or assign-back of an exclusive licence clause, are considered
likely to violate Antimonopoly Act. In this regard, parties to the licence agreement regarding
Japanese patents are recommended to refer to the Guidelines for the Use of Intellectual Property
under the Antimonopoly Act issued by the Japan Federal Trade Commission. English texts can be
downloaded at: www.jftc.go.jp.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

When one desires to use a certain patented invention, and the invention has not been made available
by the patentee, it is worth considering a request to the patentee or the registered exclusive licensee to
hold consultations for the grant of a non-exclusive licence thereon. If an agreement is not reached, the
person seeking a licence may request the director-general of the JPO for an arbitration decision.
However, this procedure has rarely been used and there have not been any arbitration decisions.
Indeed, there have only been a few requests for an arbitration decision. In addition, the Patent Act
provides for a non-exclusive licence in connection with dependent inventions and a non-exclusive
licence based upon public interests, however, no arbitration decision has been rendered under these
provisions.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

To initiate the substantive examination, a request for examination must be filed with the JPO within
three years from the filing date, including the international filing date, of the application. In 2013, a
first office action (OA) was, on average, issued within 15 months of a request for examination. A
response to the OA has to be filed within three months of the mailing date of the OA (for foreign
applicants, this is extendable up to six months by filing a petition prior to the initial due date). The
subsequent OA (non-final rejection, final rejection, or notice of allowance) is usually issued within
six to 12 months of the response. The final rejection may be appealed to the board of patent appeals
(BPA) at the JPO, which usually takes around two years before reaching conclusion.
From January 2013, the official filing fee is 15,000, a fee for request for examination is 118,000
plus 4,000 multiplied by the actual number of claims and the issue fee (including first to third
annuities) is 2,300 plus 200 for each actual claim.
On top of the above fees paid to the government, a patent applicant must pay fees to attorneys, if he or
she hires them. It typically costs some thousands of US dollars per application, which varies greatly
depending on the contents of applications and the attorneys. There is no standard for attorney fees for
patent prosecution.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Accelerated examination
A patent applicant may request an accelerated examination under certain circumstances, such as if an
applicant has filed a corresponding application with a foreign patent office, is undertaking marketing
in Japan or is a university or small entity. In each of these cases, the fact must be established in
writing. No official fee is required. The applicant may be asked to submit materials to help the
examination, for example, cited references in a corresponding foreign application and brief comments
thereon.
Patent prosecution highway
The PPH programme is available for a Japanese patent application of which the first application was
filed in Austria, Canada, China, Denmark, EPO, Finland, Germany, Hungary, Iceland, Israel, Korea,
Mexico, the Nordic Patent Institute, Norway, Philippine, Portugal, Poland, Russia, Singapore, Spain,

Sweden, Taiwan, the UK and the US. No official fee is required.

Patent prosecution highway-mottainai
The enhanced PPH programme (PPH-M) is available for a patent application of which the first
application was filed in Canada, EPO, Finland, Germany, Portugal, Russia, the UK and the US.
Prosecution history of an application filed with any of these patent offices may serve as the basis for
PPH regardless of first filed or not. No official fee is required.
In all the cases above, a first OA would be expected to be issued within three to five months of such a
request.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

A patent specification must sufficiently describe how to make and how to use the claimed
invention in such a manner that those skilled in the relevant art can easily carry it out. Also, the
specification must describe the claimed invention in such a way as to reasonably convey to one
skilled in the relevant art that the inventors, at the time of the application was filed, had possession of
the claimed invention.
Regarding the inventions of which the effects are not predictable from their structures, for example,
chemical compounds, working examples showing the effect of the invention must be disclosed in the
specification as filed. Working examples should be commensurate with the scope of the claims.
Especially, with respect to patent applications directed to therapeutic uses (ie, pharmaceutical
composition claims or Swiss-style claims), the JPO strictly requires that the specification as filed
discloses the results of the relevant in vitro or in vivo tests that demonstrate feasibility in the
treatment. In this regard, the JPO will not accept any late submission after the filing of the application
if the specification as filed does not disclose any test results and only describes prophetic examples.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

Patent applicants are required to disclose any prior art references known to the applicants before the
priority date. This requirement will be met if the applicant lists the prior art references in the
specification. In the case of insufficient disclosure, however, the examiner may issue an OA and ask
the applicant to submit additional prior art references. Failing to respond to the OA may result in a
final rejection. However, once a patent is issued, the violation cannot be a ground for invalidity.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

It is possible to file later applications before the earlier filed application is laid open to the public,
namely, the issuance of patent application publication, which is usually 18 months after the priority
date, provided that the applicant or the inventor has not disclosed the invention elsewhere.
That is, even though the Patent Act has a similar provision to EPC article 54 (3), the Japanese
provision will not apply to the later applications filed by the same applicant or in the name of the
same inventors as the earlier filed application. However, the applicant (or all the applicants in the
case of joint applicants) of the later applications must be exactly the same entity as those of the
earlier filed application at the time of filing the later applications, or the inventor (or all the inventors
in the case of joint inventors) must be exactly the same as those of the earlier filed application.
Additionally, within one year from the filing date of the earlier application, domestic priority in later
applications can be claimed. One or more divisional applications can be filed within certain periods,
namely, before the issuance of a first OA, the due period for responding to OA, within 30 days from
receiving notice of allowance from the examination division or the due period for filing notice of
appeal from final rejection by examination division.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Final rejection by the examination division may be appealed before the BPA at the JPO. Where the
BPA renders a decision to reject an application, the applicant can appeal the decision to the IP High
Court, which is the relevant court of law. Regarding the JPOs decision for an invalidity action or
correction of claims as detailed below, which are made after the issuance of the patent, the party who
received an adverse decision from the JPO can appeal to the IP High Court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Any party may file an opposition within six months after issuance of an official gazette for the patent.
The grounds for opposition include:
lack of novelty or inventive step;
interference with another patent application having earlier priority date;
violation of claim clarity, enablement or written description requirements; and
violation of conditions for an amendment made during prosecution, etc.
The grounds for opposition are the same as the grounds for invalidation trial, with the exception that
false inventorship is not a ground for opposition. The proceedings for multiple oppositions to the
same patent are usually consolidated. There are no oral hearings in opposition proceedings, and all
arguments and evidence need to be filed in writing.
A third party, who has interest in validity of the patent, may file a nullity action (trial for invalidation)
at any time. Usually, a single oral hearing will be held. The patentee may have a chance to amend the

claims during the trial procedure.

38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Japan adopts the first-to-file system. A patent application with an earlier filing date defeats a later
application concerning the same invention. The priority among applications with the same filing date
is decided by an agreement among the applicants through mutual consultation. If no agreement is
reached, none of the applicants will obtain a patent for the invention.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

After issuance of a patent, the patentee can amend the claims by filing a trial for correction before the
BPA at the JPO. The trial for correction can be filed at any time unless a trial for invalidation is
pending before the BPA at the JPO or an appeal therefrom is pending before the IP High Court. While
a trial for invalidation is pending, however, the patentee can make a request for correction within a
very limited period during the procedure of trial for invalidation as above.
40 Patent duration

How is the duration of patent protection determined?

A patent expires 20 years after the filing date of the patent application. For pharmaceutical and
agrochemical patents, a patent term extension is available for up to five years upon request by the
patentee if the patentee or a licensee thereof receives marketing approval for the patented drug or
pesticide from the Japanese authority.

Update and trends

An inventor, as a natural person, is given a right to file a patent for an invention by the Patent Act
regardless of whether said inventor is an employee of a corporation or not. If the inventor is an
employee of the corporation and the invention is made during the inventors work for the corporation,
the corporation (employer) is able to force the inventor (employee) to assign the right to file a patent
for the invention to the corporation (employer) pursuant to the relevant internal rules of the
corporation. In consideration of such an assignment, the corporation needs to pay a certain amount of
money calculated in accordance with the internal rules, and if the court finds such internal rules
unreasonable, the corporation needs to pay reasonable compensation in an amount to be decided by

the court.
A revision to the above-mentioned scheme under the Patent Act is being discussed within the
government. It is likely that the revision to the Patent Act will be made so that the corporation may
originally be given the right to file a patent for an invention made by its employee. In other words,
under the revised scheme, the corporation will not be required to pay compensation for assignment of
a right to file a patent to its employee. However, as labour unions and some practitioners are strongly
opposing such a revision, it is also likely that an inventor (employee) will be given a certain statutory
right to seek monetary incentive for making inventions, even though it will be characterised as
different from the compensation for the assignment.

Yasufumi Shiroyama

yasufumi.shiroyama@amt-law.com

Makoto Ono

makoto.ono@amt-law.com

Akasaka K-Tower
2-7 Motoakasaka 1-chome
Minato-ku
Tokyo 107-0051
Japan

Tel: +81 3 6888 1060

Fax: +81 3 6888 3060
www.amt-law.com

Korea
Seong-Ki Kim, Yoon Suk Shin, Eun-Young Park and Gon-Uk Huh
Lee International IP & Law Group
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

A patent infringement suit for damages or injunction may be filed in a district court that has personal
jurisdiction over the defendant. There are no specialised patent trial courts. In general, an
infringement suit may be brought in any forum against the defendant: in a district court where the
defendant resides or where the allegedly infringing activity took place. An alleged infringer who sells
the accused products nationwide can be sued anywhere the patentee chooses. In addition to the
above-mentioned district courts, district courts in five large cities where one of the five high courts is
located have jurisdiction in parallel with the district court in its circuit.
When potentially infringing goods are being imported into Korea, a patentee may alternatively, or in
addition, request that the Korea Trade Commission (KTC) institute an investigation of the potential
infringement. The KTC proceedings differ from district court proceedings primarily as to the
remedies that are available in the event that infringement is proven. A prevailing patentee in a court
proceeding may be entitled to both monetary damages and an injunction against future infringement,
whereas in an KTC proceeding the primary remedy is an order excluding future importation of the
infringing goods into Korea and monetary damages are not available.
As a third option, a declaratory judgment of infringement is available at the Intellectual Property
Tribunal (IPT). The IPT is an independent administrative agency under the umbrella of the Korean
Intellectual Property Office (KIPO). A declaratory judgment suit may be initiated with or without a
co-pending infringement action before a district court for damages or injunction.
The Patent Court has been established since 1998 and hears all appeals from the IPT decisions,
including the declaratory judgment of infringement, patent invalidity and the patent examiners final
decision to reject patent applications.
Since patent infringement is also a criminal offence, criminal as well as civil proceedings are
available, though criminal offences are prosecuted by the Public Prosecutors Office and are not
common. In this chapter, our discussions are limited to civil actions.
2 Trial format and timing

What is the format of a patent infringement trial?

No jury trial is available in Korea for civil cases. Civil patent infringement cases are tried before a
panel of three judges. The most senior judge of the panel presides at the trial and is most influential
on the outcome of the trial.
The primary vehicle for introducing evidence in an infringement trial is a motion for introducing
evidence. Though documentary evidence is important and believed to be reliable, live testimony of
witnesses is not unusual. The presiding judge usually leads the examining of the witness. Counsel for
the party offering the witness is routinely allowed to question the witness to elicit direct testimony,
after which counsel for the opposing party has the opportunity to cross-examine the witness on
matters within the scope of the direct testimony. Typically, the offering party is thereafter permitted to
re-conduct direct examination. The judge may additionally ask questions to clarify particular points of
interest. Documents and other physical items, such as a sample of an allegedly infringing device, may
also be received into evidence by a motion of a counsel.
Each party in a patent infringement case will usually present expert witnesses on technical matters.
Experts are permitted to testify as to their opinions on matters within their recognised area of
expertise.
A significant element in Korean patent trial practice is a declaratory judgment of patent infringement
(or non-infringement) litigated before the IPT. Though the jurisdiction of the IPT on declaring patent
infringement is not an exclusive one, IPT proceedings are frequently invoked especially when an
action in a district court is not yet initiated.
Trials in Korea are typically held with three- or four-week intervals if not decided after a one-day
trial. The number of patent infringement trials varies, depending on the nature of the issues to be
decided, from one trial to several trials. Since discovery process is not available under the Korean
legal process for getting evidence, motion practice is widely used to get evidence that is not under the
control of the plaintiff. Thus, the first or the second hearing date is used for raising motions to get
evidence, as well as fixing the issues to be decided.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

A patentee bears the burden of proving the validity of the patent, whereas a party challenging a patent
bears the burden of proving invalidity or unenforceability. Although the Korean Patent Act does not
specifically provide a presumption of validity, a patent claim granted after substantive examination
by the examiner is presumed to be valid. As the district court has no power to declare patent
invalidity, it may simply refuse to enforce the patent when a serious doubt has been raised as to a
patents validity. A declaration of patent invalidity shall be litigated before the IPT, not a district
court.
In limited circumstances, a patentee can be relieved of the burden of establishing infringement and a
burden of establishing non-infringement is placed on the alleged infringer. This occurs in cases
involving a patented process for making a product that has not been known to the public on the filing
date of the subject patent application. This provision reflects implementation of both sub-paragraphs
(a) of WTO/TRIPS article 34.1.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

An exclusive licensee, who is not necessarily a co-plaintiff with the patentee, as well as a patentee or
any successors to title in the patent may sue for patent infringement.
An action for declaratory judgment of infringement may be brought before the IPT by a patentee or an
exclusive licensee. On the other hand, an accused infringer can bring an action before the IPT for
declaratory judgment of non-infringement without having to wait for the patentee to bring an
infringement action. The requirement for a declaratory judgment action for non-infringement is
lenient. The complainant for non-infringement could simply show the complaining party is in the same
business area as the patent claim defines and has a plan to make, use or sell a related product. That
party does not need to have engaged in activity that could constitute infringement or have made
meaningful preparations to engage in such activity. An actual controversy between the parties at the
time the action is initiated is not required. The requirement for a declaratory judgment for
infringement is not as liberal as in the case of a non-infringement declaration. The plaintiff must
specify the alleged infringing product or process to an extent that can be compared to the claims of the
subject patent and show the defendant has a plan to exploit it. Assuming the conditions for bringing an
action are met, the plaintiff may seek a declaratory judgment of non-infringement, invalidity or
unenforceability or a combination of the above. A patentee facing a declaratory judgment claim will
typically argue for infringement. Conversely, a party sued for infringement will typically initiate a
declaratory judgment of non-infringement or invalidity.
The Green List
As an implementation of the KoreaUS Free Trade Agreement, which became effective on 15 March
2012, a list of patents (the Green List) covering approved drug products is available. Since 15 March
2012, applications by the patentees and examination and approval thereon have been made before the
Korean Food and Drug Administration. Enforcement of the provision allowing the owner of a listed
patent to sue someone who applies for regulatory approval of the equivalent generic drug even before
the generic drug has been marketed will become effective from 15 March 2015.
The Korean Patent Act also provides an exemption from infringement claims for the use of a patented
invention solely for experimental use including applying for an Abbreviated New Drug Application
for a generic drug.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

A patent can be infringed not only when a person performs activities satisfying all the elements
required as defined in a patent claim (the all elements rule), but also when a person performs

activities satisfying some elements defined in a patent claim and the remaining elements of the patent
claim are performed by another, and as a result the patented invention is performed by two (or more)
persons. In this case, the two performers may be liable as a joint tortfeasor. The Civil Code provides
the specific example of inducement as a form of joint liability.
The Korean Patent Act prescribes that one is liable for contributory infringement when making,
offering for sale, selling or importing a product that may be used solely for manufacturing a patented
device. When a patent claim defines a process or method, the same rule applies to a product that may
be used solely for exploiting the patented process or method.
The above provisions of the Korean Patent Act are understood to exclude supplying staple products
from contributory infringement by limiting the product as being used solely for manufacturing the
patented device. It is not explicitly prescribed whether a direct infringement is a prerequisite to
establishing a contributory infringement. This issue matters since the liability of patent infringement
requires exploitation of a patent to be commercial activity. When the patented product is employed
for personal use, rather than for a commercial use, supplying the patented device is not liable as
patent infringement.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Requirements for joinder of multiple defendants are quite generous under the Code of Civil
Procedure: the defendants are liable based on the same legal reason of right or obligation or on the
common factual bases. The result of a multiple defendants lawsuit need not be the same for all parties
and may vary from one party to another.
To avoid any possible risk of putting all eggs in one basket, in Korean practice, plaintiffs prefer filing
separate lawsuits at first and later incorporate the lawsuits into one lawsuit, if allowable.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Infringement of a Korean patent generally requires making, using, offering to sell or selling a patented
invention in Korea or importing a patented invention into Korea. In the case of a method patent,
however, the patent laws can extend their reach to extraterritorial activity. Under the Korean Patent
Act, a patented claim defining a method of making a product is deemed to extend to a product made
by the patented process.
Thus, it is an act of infringement to import into Korea or sell or use within Korea a product made by
the process patented in Korea even though the process might have been performed outside Korea.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Korean counts recognise a rule that a product or process that does not literally include exactly the
same elements as defined in a patented invention may still be found to infringe if the difference
between the elements of the patented invention and the accused product or process is not substantial
under the Doctrine of Equivalents (DOE). Infringement under the doctrine of equivalents requires that
each element of a claimed invention be found in the accused product or process, either literally or by
a substantial equivalent.
The traditional approach adopted in Korea to understand and evaluate a patented invention is based
on three aspects: structure, function and effect of the claimed invention.
Since the doctrine of equivalents is invoked when the two elements, one as defined in the patented
claim and the other as found in the accused product or process, are not identical (in structure), the
comparison of the two elements tends to focus on the function and effect aspects, rather than structure
aspect.
Finding infringement by equivalents is limited by a number of rules. First, DOE is not applicable to a
product that was known in the prior art or that is easily conceivable thereof by a person skilled in the
art. Second, DOE is not allowed to reintroduce a device that has been intentionally excluded from the
scope of patent claims during the patent prosecution process.
There are no statutory provisions governing the scope of equivalents of a patent claim. However, the
Korean Supreme Court has held that a substituted element showing neither a different nor remarkable
effect is considered within the scope of equivalents. A compound having additional substituents,
which do not participate in a reaction, is within the scope of equivalents of the claimed compound.
For example, N-ethoxycarbonyl piperazine is determined as an equivalent of piperazine when only
piperazine participates in the reaction with the starting material.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Under the Korean Code of Civil Procedure, pretrial discovery is not available. To prove patent
infringement, the patentee usually relies on publicly available evidence at the time of filing
complaints, since evidence controlled by the opponent is difficult to obtain before a lawsuit. Once a
party shows a reasonable ground for the court to believe the opponent or a third party controls
relevant information, the court may issue, upon the party or ex officio, an order to the person who
controls the evidence to submit it.
The Code of Civil Procedure provides a variety of mechanisms for obtaining evidence from adverse
parties in a lawsuit. Mechanisms to collect evidence, via filing a motion to the court during a lawsuit,
includes live examination of witnesses, requests for production of documents and requests for
inspections of premises. To facilitate the partys investigation with the opponents written evidence, a
party may file a motion asking the opponent to submit a list of related documents under his or her
control or that are planned to be introduced as evidence by the opponent.
The most common mechanism for obtaining third-party discovery is document requests ordered by a
court upon the motion of a party. But the motion must specify the document to be produced and the
person or entity from whom such a discovery is sought.

10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The average duration of a patent infringement suit from filing of a complaint to entry of judgment
varies, depending upon the complexity of the case and the court at which the case is filed. The Seoul
Central District Court has heard the largest number of patent cases and has developed institutional
expertise in patent cases, and an infringement suit before that court can be resolved within two years.
There are courts, however, where durations of two or more years should be expected.
Appeals against judgments in patent cases are heard before one of the five regional high courts.
Typically, it will take a high court one or two years to decide on a patent appeal case.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs associated with patent infringement litigation vary widely depending upon many different
factors, including the complexity of the technology, the parties, litigation strategy and the court to
which the case is brought. For an infringement case of normal complexity, the estimated cost before
trial ranges from US$10,000 to US$100,000, and the total estimated cost inclusive of trial is between
US$50,000 and US$1 million. These amounts are only a rough estimation and many of the lawsuits
naturally involve greater cost. This is especially true for cases involving multiple patents or cases
involving very complex technology.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Appeals of final judgments in patent infringement suits are heard by one of the five regional high
courts in Korea. For patent invalidity decisions as well as declaratory judgments made by the IPT, all
appeals are heard before the Patent Court. All final decisions rendered by the Korea International
Trade Commission are subject to appeal at the Seoul Administration Law Court.
Appeals from decisions of a high court or the Patent Court may be heard by the Supreme Court. The
Supreme Court may decide to refuse to deliberate within four months from the date of lodging a notice
of appeal to the Supreme Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The Monopoly Regulation and Fair Trade Act provides a general exemption of patent enforcement

from competition law. A patent gives its owner the right to exclude others from exploiting the
patented invention without authorisation. However, in certain cases actions taken pursuant to
enforcement of a patent can expose the patentee to competition law-based claims.
A patentee may face antitrust liability if an infringement suit is objectively baseless, such as where
the patentee knows the asserted patent is invalid or unenforceable and is motivated to impose anticompetitive injury on the defendant. In relation to competition considerations of patent enforcement,
the Fair Trade Commission has promulgated the Guidelines for Intellectual Property Enforcement and
Competition Law.
Claims of unfair competition may be raised where a patentee sends a cease-and-desist letter or any
other threatening notice of patent rights to customers of competitor. Facts tending to support the bad
faith include threatening infringement suits without any intention of filing a suit, sending
indiscriminate infringement notices to all members of a trade and publishing a patent without a goodfaith belief in its validity or enforceability.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The common forms of alternative dispute resolution for resolving patent disputes in Korea are
mediation and arbitration. The KIPO has established and operates the Industrial Property Dispute
Mediation Committee for patent, trademark and design rights. For arbitration, the Korean Commercial
Arbitration Board has been established for various commercial disputes for internal and international
trade disputes including patent infringement disputes. This institution is not specialised for patent
disputes, but has been established for a long time.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A method for the medical operation, treatment or diagnosis of diseases in human beings, namely, a
method relating to medical procedures, is deemed to lack industrial applicability and, therefore, is
not eligible for patent protection. However, a medical instrument or medicine for use in the medical
operation or diagnosis of diseases in human beings is deemed to be industrially applicable and
patentable.
The Korean Patent Act does not explicitly prescribe whether a business method or software is
patentable. Thus, a business method or software is patentable, as long as the statutory requirements
for patentability (the nominal definition of what constitutes an invention, industrial applicability,
novelty, inventive step, etc) are met. A business method or software is deemed to comply with the
nominal definition of what constitutes an invention, that is, a highly advanced creation of a technical
idea using the laws of nature, if information processing by software is implemented by hardware

resources. Such implementation of information processing should be stated in the claim in order to be
patent-eligible.
In patent applications filed before 1 July 2014, software inventions can be protected by method,
apparatus or recording medium claims. However, in patent applications filed on or after 1 July 2014,
software inventions can also be protected by claims for a computer program (or an application)
stored in a medium.
Further, claims directed to a program signal, a data signal or a computer program list and claims that
involve human acts, economic rules, artificial decisions, mathematical algorithms or human mental
processes are not allowable for patent protection.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

According to the Korean Invention Promotion Act, an employee who has made an invention as an
employee has a right to obtain a patent for the invention. When the employee acquires a patent right,
the employer who hires the employee will be entitled to a non-exclusive licence for the patent right
because of his or her contribution to the completion of the employee invention. The employer may
require the employee to transfer the right to obtain a patent, the patent right, etc, in advance or to grant
an exclusive licence for the patent right where there is a contractual agreement or employment
regulations. Further, the employee will have a right to receive fair compensation, if he or she has
agreed to transfer the rights of the employee invention to the employer or to grant an exclusive licence
to the employer according to a contractual agreement or the employment regulations.
Where two or more persons jointly make an invention, they are entitled to jointly own the right to
obtain a patent.
If an independent contractor is an inventor, the right to the patent belongs to the independent
contractor, unless there are any other contractual obligations.
In the case of a joint venture, if there is an agreement regarding patent ownership between the joint
venture and the companies who established the joint venture, the ownership of the patent right will be
determined according to the agreement.
Transfer of patent ownership through inheritance or other general succession will automatically take
effect if the requirements prescribed under the law are met (no separate steps to record the transfer
are required). However, a transfer of a patent ownership through an assignment will only be effective
upon recordal of such a transfer with the KIPO.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

To challenge the validity of a patent, an invalidation trial can be filed with the IPT of the KIPO. Any
person can request an invalidation trial from the registration date of the patent right until three months
after the publication date of the patent right registration. After the three-month period, only an
interested party or an examiner can request an invalidation trial. An invalidation trial can be
requested for each patent claim.
A patent claim can be invalidated on any of the following grounds:
where the claimed invention does not comply with the nominal definition of what constitutes an
invention, or lacks industrial applicability, novelty or inventive step, or is not patentable under the
first-to-file rule;
where the claimed invention is liable to contravene public order or morality or to injure public
health;
where the specification does not describe the invention in a manner sufficiently clear and complete
to enable a skilled person to readily carry it out;
where the claim is not supported by the specification;
where the claim does not clearly and concisely define the invention;
where the patent application was filed by a person who is not the inventor or his or her successor;
where the patent application was not jointly filed by co-owners, in the case that the patent is jointly
owned;
where the patent was acquired by an employee of the KIPO or the IPT during employment at the
office or tribunal, other than in cases of inheritance or bequest;
where the patent was granted in violation of the rules of the Treaty;
where amendments were made to the specification or drawings beyond the scope disclosed in the
originally filed specification and drawings; or
where a divisional application or a converted application was filed beyond the scope disclosed in
the originally filed specification and drawings.
A decision by the IPT can be appealed to the Patent Court, and a decision by the Patent Court can be
appealed to the Supreme Court.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

In Korea, there is no absolute novelty requirement for patentability.

Inventions publicly known or worked in or outside Korea, disclosed in a publication distributed in or
outside Korea, or made available to the public through telecommunication lines as prescribed by
Presidential Decree will be deemed to have novelty if a patent application for the invention is filed
within 12 months from such disclosure of the invention, claiming the benefit of the novelty grace
period. The 12-month grace period is also applicable where the invention is disclosed against the
intention of a person with the right to obtain a patent.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Where an invention could have been easily conceived by a person having ordinary skill in the art to
which the invention pertains based on the prior art publicly known or worked in or outside Korea,
disclosed in a publication distributed in or outside Korea, or made available to the public through
telecommunication lines as prescribed by Presidential Decree prior to the filing of a patent
application for the invention, such an invention is deemed to be obvious in view of the prior art.
Obviousness is determined in consideration of whether the prior art teaches or suggests the invention
claimed in a patent application, whether the prior art and the claimed invention are identical in terms
of their objectives or functions or effects and whether the prior art and the claimed invention are
identical or similar in terms of their technical fields.
Where the claimed invention produces a remarkably superior effect in comparison to the prior art,
such an effect is positively considered in determining the inventive step of the invention.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

In Korea, a valid patent will be unenforceable under the good faith principle of the Civil Act if the
enforcement of the patent is deemed as an abuse of the patent right. However, such unenforceable
cases are rare. According to court decisions in Korea, when a patent is apparently deemed to lack
novelty or to be the product of an inventive step, a patentees claim for damages can be dismissed
even before the invalidation of the patent is concluded.
If an act of working a patent falls under any of unfair trade practices prescribed in the Fair Trade Act,
the patent enforcement will be restricted so as not to violate the Fair Trade Act, and the patentee will
be liable to pay a fine levied by the Fair Trade Commission.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

An act of privately using an accused method or device is not a commercial use that may constitute a
patent infringement. If an accused infringer has been commercially using the accused method or
device prior to the filing of the patent, the accused infringer may assert the prior user rights defence to
patent infringement.
Under the Korean Patent Act, a person, who, without knowledge of the content of an invention
claimed in a patent application, made an invention identical to the said invention or learned the
invention from a person who made an invention identical to the said invention and has been working
the invention or making preparations to work the invention in Korea at the time of the filing of the
patent application, is entitled to have a non-exclusive licence (prior user right) on the patent right for
which the patent application was filed within the scope of the objective of the invention or the
business related to the invention that the person is working or making preparations to work.
Preparations to work the invention mean substantial preparations to conduct business based on the

invention, including purchase of a plant site or business facilities.

The prior user rights defence covers all types of inventions.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Monetary damages can be awarded to a patentee (or exclusive licensee) when its patent is found to be
valid and infringed and the patentee loses its profits as a result of the infringement. The damages are
intended to fairly compensate the patentee for losses suffered as a result of the infringement. A
patentee is entitled to its lost profits on all lost sales resulting from the infringement if the patentee
can show that, but for the infringement, the patentee would have made the sales that the infringer
made. Accordingly, the patentee must show demand for the product in the market and sufficient
capacity to make non-infringing products.
When there are losses caused by the infringers sale of infringing products, but the actual lost profits
are not easily proven, the amount of losses may be calculated by multiplying the number of sold
products by the profit per unit of the product that the patentee might have sold but for the infringement.
In such cases, the damages may not exceed an amount calculated by multiplying the estimated profit
per unit by the amount obtained from subtracting the number of products actually sold from the number
of products that the patentee could have produced. However, if the patentee was unable to sell his or
her product for reasons other than by infringement, a sum calculated according to the number of
products subject to the said circumstances shall be deducted.
The profits gained by the infringer as a result of the infringement shall be presumed to be the amount
of damages suffered by the patentee.
The pecuniary amount of reasonable royalty to which the patentee would normally be entitled may be
claimed as the amount of lost profits of the patentee. Notwithstanding, if the amount of losses exceeds
the amount of the reasonable royalty, the amount in excess may also be claimed as damages. In such
cases, the court may take into consideration whether or not there has been wilfulness or gross
negligence on the infringer when awarding damages.
Nevertheless, if the nature of the facts of the case makes it difficult to provide evidence proving the
amount of losses, the court may determine a reasonable amount on the basis of an examination of the
whole circumstances.
Damages start to accrue from the time the infringement begins. When the alleged infringer knows or is
notified of the published application prior to the issuance of a patent, a reasonable royalty may start
accruing from the time of knowledge or notification of a patent application publication. The
reasonable royalty can be claimed only after the issuance of the patent.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A patentee (or exclusive licensee) can request a preliminary or permanent injunction against a person
who infringes or is likely to infringe on his or her own patent right. A patentee can demand the
measures necessary to prevent the infringement.
To obtain a preliminary injunction, the patentee must show a likelihood of success on the merits for
the validity of the patent and infringement. In deciding whether to grant a preliminary injunction, the
court must also take into consideration the balance of hardships between the parties, the prospects of
irreparable harm to either party, and the public interest.
Both preliminary and permanent injunction apply only to the defendant. Thus, an injunction is not
effective against the infringers suppliers or customers.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The KTC is a government agency that investigates unfair acts of importation, sale, exportation and
manufacture for export of a product infringing on intellectual property rights and has the authority to
issue temporary relief or corrective measures including a penalty. Patentees can file a complaint with
the KTC claiming a patent infringement. The KTC will then undertake an investigation, which is
generally completed within six months. In principle, the investigation is a documentary-based
proceeding between the two parties, namely, complainant or patentee and respondent or accused
infringer, and a hearing for the investigation can be requested. Ex officio investigation is also
possible.
A patentee who is injured or threatened with irreparable injury due to unfair international trade
practices that are under investigation is allowed to apply for a provisional suspension of the unfair
practices in question, or other measures to prevent the injuries.
At the conclusion of the investigation proceedings, the director general of the Office of Investigation
issues an initial determination on whether there has been a violation of an intellectual property right
and a recommended determination on what the remedy, if any, should be. These determinations are
forwarded to the KTC commission, which issues a final decision as to whether there is a violation
and imposes a remedy, if required. If a violation is found, the KTC can issue a temporary relief or
corrective measure to interdict shipments of infringing products at ports of entry into Korea or destroy
the infringing products or impose a penalty, or both.
An order for a corrective measure or penalty can be appealed to a Seoul administrative court, and is
effective against third parties importing the same product as the infringing product, through a
confirmation procedure.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Although the prevailing party in patent infringement litigation can ordinarily recover costs for the
proceeding including court fees and attorneys fees from the losing party, the recoverable attorneys
fees are limited to the amount calculated based on a statutory fee schedule, which is nominal.
Litigation cost is determined in a separate proceeding.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

An additional civil remedy is not available against a deliberate or wilful infringer. However, a
criminal remedy is available against a deliberate infringer.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Damages in a patent infringement case cannot be claimed if they are not exercised by the patentee or
other relevant right holders within three years from the time when they first knew of the damages and
the identity of the infringer. After the extinctive prescription of three years has passed, unjust
enrichment can be claimed against the patent infringement. The 10 years of extinctive prescription for
a claim of unjust enrichment will have elapsed from the time of the infringing act.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no obligation to mark patented products in Korea. However, if someone falsely marks a
product as patented; assigns, leases or displays a falsely marked product; or indicates a product as
patented on advertisements, signboards or tags when the product is not covered by the patent claims
or the listed patent has expired, that person can be subject to a fine of no more than 20 million Korean
won or imprisonment of no more than three years.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

In principle, the terms and conditions of licensing contracts are the responsibility of the contracting

parties only and can be chosen by them. However, the terms of the contract have to comply with the
Korean antitrust regulations. There are some restrictions on voluntary licences for patents. For
example, the term of a patent licence cannot extend beyond the expiry dates of the licensed patents.
Also, restrictions on price, restrictions on transaction of competing products and tying of nonpatented products are impermissible. A patentee is generally not allowed to prevent a licensee from
contesting the validity of one or more licensed patents. Further, the Korea Fair Trade Commission has
added examples of patent misuse, for example, avoiding disclosure of related patent applications or
issued patents in order to increase the likelihood of selection of a patent as a technology standard or
avoiding pre-negotiation on the licensing terms and conditions of a patented invention, rejecting
permission to license a patented invention widely used as a technology standard, filing a patent
infringement action in order to harm another partys competitiveness, knowing that the patent is
invalid or agreeing to keep an invalid patent in force to delay a competitors entry into the market.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory non-exclusive licence can be granted by the KIPO in the following circumstances:
when the patented invention has not been worked for more than three consecutive years in Korea,
except for reasons of natural disasters, unavoidable circumstances or other justifiable reasons and a
negotiation with the patent proprietor regarding a voluntary licence under reasonable terms has been
unsuccessful;
when the patented invention has not continuously been worked commercially or industrially in
Korea on a substantial scale during a period of three years or more without justification, or the
domestic demand for the patented invention has not been satisfied to an appropriate extent and under
reasonable conditions and a negotiation with the patent proprietor regarding a voluntary licence under
reasonable terms has been unsuccessful;
when the patented invention is necessarily practised for the interests of the public;
when the patented invention is necessarily practised to remedy a practice determined to be unfair
after the judicial or administrative process; or
when the patented invention is necessarily practised for exporting medicines to countries intending
to import the medicines to cure diseases that threaten the health of the majority of its citizens.
Aside from compulsory licences, the Korean Patent Act provides a prior use right and an intervening
right in certain circumstances. A person who has made an invention without prior knowledge of a
patent application (or who has learned about the invention from such a person) and has been
practising the invention commercially or industrially in Korea in good faith or has been making
preparations to practise the invention, is entitled to a non-exclusive licence on the patent right for the
invention under the patent application. The non-exclusive licence must be limited to the invention
being worked, or for which preparations for working have been made and to the purpose of such
working or preparations. When a patent that was concluded to be invalid has been restored by a
retrial and a person has, in good faith, commercially or industrially practised the invention in Korea,
or has been making preparations to practise the invention, after a trial ruling becomes final but before
a request for a retrial, he or she is entitled to have a non-exclusive licence on the patent right. The
scope of the non-exclusive licence is limited to the purpose of the business and the scope of the

invention being practised or for which preparations for practising are being made.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

In view of the current pace of examination at the KIPO, it takes approximately 10 to 11 months to
receive the examination results after a request for examination is filed. Accordingly, assuming that an
office action, such as a preliminary rejection, is issued, it takes approximately 20 months to obtain a
patent in Korea.
Legal fees for preparing and filing a patent application generally range from US$2,500 to US$7,000
in inbound cases depending on the amount of text to be translated, and from US$2,000 to US$3,500 in
domestic cases, depending on the complexity of an invention. When filing a patent application with
the KIPO, official fees, which include a basic fee of US$38 and additional fees of US$20 for each
priority, must be paid. In addition, when filing a request for examination, official fees, including a
basic fee of US$130 and additional fees of US$40 for each claim, must be paid.
After a Notice of Allowance is issued, in order to register a patent, the applicant must pay the first
three years annuities in a lump sum, which includes a basic fee of US$45 and additional fees of
US$39 for each claim.
If any official notification is issued by the KIPO, legal fees for responding thereto will be
additionally incurred.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In Korea, a request for expedited examination may be filed concurrently with or after filing a request
for examination of a patent application for the following patent applications:
applications for an invention that has been commercially worked by a third party after the
publication of the application;
applications that require expedited prosecution as specified in the statute for which a party who
would like to request expedited examination submitted a prior art search report to the KIPO;
applications that are eligible for requesting expedited examination under the Patent Prosecution
Highway (PPH) Programme between the KIPO and a corresponding foreign patent office; and
applications for which a prior art search has been conducted by one of the institutes authorised by
the KIPO and it is requested to submit the prior art search report to the KIPO.
In particular, the PPH programme enables patent applicants to request fast-track examination for
applications for which Korean examiners can utilise the work product from foreign patent offices.
From 6 January 2014, the examination results from 19 foreign patent offices (Australia, Canada,
China, Denmark, EPO, Finland, Hungary, Iceland, Israel, Japan, Mexico, Norway, the Nordic Patent

Institute, Portugal, Russia, Spain, Sweden, the United Kingdom and the United States) with which the
KIPO has established the global and IP5 PPH programmes can be used as the basis for a PPH request
irrespective of where an application was first filed. In addition, the examination results from five
foreign patent offices (Austria, Germany, Hungary, Mexico and Singapore) with which the KIPO has
established the bilateral PPH programme can be used as the basis for a PPH request.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application must accompany the specification, claims, drawings and abstract.
In the specification, a claimed invention should be clearly and sufficiently described to the extent that
the invention could be easily practised by anyone with ordinary skill in the art.
The background art of the invention must be described in the specification. Non-compliance with such
a requirement may serve as a basis for rejection, but not for invalidation.
The applicant may defer filing claims until 14 months from the earliest priority date or, if no priority
is claimed, from the effective filing date of the patent application.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

As mentioned under question 33, for patent applications filed on or after 1 July 2011, the background
art of the invention must be described in the specification. Background art of the invention refers to
conventional art that may be helpful in understanding a claimed invention and useful in conducting a
prior art search or examination. Unlike the IDS system in the United States, such a requirement does
not impose a duty on the applicant to disclose all the information known to individuals associated
with the filing and prosecution of the patent application.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

In Korea, it is possible to pursue additional claims for an invention that is disclosed in a parent
application in a divisional application, which would be deemed to have the same effective filing date
as the parent application. Divisional applications may be filed within the scope of the original
specification, claims and drawings of the parent application prior to the issuance of a notice of
allowance for the parent application. However, once a preliminary rejection or a final rejection is
issued for the parent application, divisional applications may be filed within the deadline for
responding to the preliminary rejection or final rejection.
The patent term of a divisional application is 20 years from the effective filing date of its parent

application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

In Korea, the Patent Court has exclusive jurisdiction over all appeals of the decisions of the IPT of
the KIPO.
If an appellant or appellee loses the appeal at the Patent Court, a final appeal at the Supreme Court
may be requested.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Anyone may file an invalidation action within three months from the date a patent is issued. However,
after the expiration of three months from the issuance date, only an interested party or an examiner
may file an invalidation action. Any reasons that may serve as a basis for rejection during the
examination before the KIPO, other than several defective description issues, may also serve as a
basis for invalidation.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The Korean patent system is based on the first-to-file rule. In cases where two or more patent
applications have been filed with respect to the same invention, only an application having the
earliest priority date or effective filing date is eligible to obtain a patent for the invention. The firstto-file rule is applicable regardless of whether the two or more applications are filed by the same
applicant or not. If two or more applications having the same priority date or effective filing date
relate to the same invention, only one application that has been selected upon mutual agreement by the
applicants, or that has been selected by the applicant, is eligible to obtain a patent for the invention. If
the applicant fails to select one application, none of the applications will be granted a patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The patentee may request a trial to correct the specification, claims and drawings at any time after the
issuance of a patent. A trial for correction of a patent may also be requested while a lawsuit

involving the patent is pending. In such a case, the lawsuit may be suspended at the discretion of the
court until the trial for correction is completed. A trial for correction of a patent may not be
separately requested if an invalidation action is in process before the IPT. However, a request for
correction of the specification, claims or drawings may be filed within the prescribed deadline during
the invalidation proceedings.
The scope of corrections that are allowable in a trial for correction or a request for correction is
restricted to narrowing the scope of the claims, correcting clerical errors and clarifying unclear
descriptions. Further, a correction to substantially expand or modify the scope of the claims is not
permitted. The subject matter sought to be protected in the claims after correction should be deemed
to have been patentable at the time the application was filed.
40 Patent duration

How is the duration of patent protection determined?

The patent term is 20 years from the effective filing date of a patent application. However, the patent
term may be extended to compensate for a period during which a patented invention could not have
been worked due to a regulatory approval or registration, or a period during which the examination of
a patent application filed on or after 15 March 2012 is delayed by the KIPO.

Update and trends

Korean patent applications with idea disclosure or English specification for obtaining the filing
date
As of January 2015, an applicant can submit the specification, claims and drawings in English when
filing a Korean patent application in order to secure an effective filing date of the Korean patent
application. A Korean translation of the specification, claims and drawings must be submitted within
14 months after the earliest priority date.
According to the revised Patent Act, patent applications may be filed simply with idea description
data, consisting of theses published in Korean or foreign journals or research notes, without complex
restrictions as to the filing format. The specification can be drafted in English, which allows English
theses to be filed directly, thereby making it possible to obtain an earlier filing date. A specification
in the prescribed format in the Korean language must also be filed within 14 months from the earliest
priority date.
Amendment to specification and correction of mistranslations within the scope of specification
in a foreign language (an original-oriented approach)
Under the revised Patent Act, amendments to the specification of a Korean national phase application

or a Korean patent application filed in English can be made within the scope of a Patent Cooperation
Treaty (PCT) application or original application in English.
An applicant will be allowed to correct translation errors found in the Korean translation of a PCT
application entering into the national phase or the Korean translation of a Korean patent application
filed in English within the scope of the English specification during the prosecution.
Extension of time for filing a Korean translation of a PCT patent application
In cases where the applicants decision to enter the national phase is delayed, issues have often arisen
with the quality of translations due to having insufficient time to prepare a Korean translation (which
had to be filed when entering an international patent application into the national phase).
According to the revised Patent Act, a one-month extension of time to file the Korean translation can
be obtained upon request. Such extension must be requested during the one-month period prior to 31
months from the earliest priority date. If an extension is requested, a Korean translation of the
specification, claims and drawings of the PCT application must be filed within 32 months from the
earliest priority date. This revision is applicable to PCT applications filed on or after 1 January
2015.
Relaxed requirements to claim benefit of 12-month novelty grace period
In Korea, if a patent application for an invention is filed within 12 months from the date on which the
invention was disclosed by the inventor or his or her successor in title, the application is deemed not
to have been publicly known and, thus, not to lack novelty.
In order to take advantage of the 12-month novelty grace period, according to the pre-revised Patent
Act, an applicant must indicate his or her intention to do so in writing at the time of filing the
application and submit supporting documents within 30 days of the filing date.
According to the revised Patent Act, from 29 July 2015, even if the applicant has not claimed the
benefit of the 12-month novelty grace period at the time of filing the application, the applicant still
may claim benefit of the grace period in writing or submit supporting documents within the time frame
for filing an amendment, or three months from the date of receipt of a notice of allowance or the
registration of a patent, whichever comes first.
Divisional application can be filed after notice of allowance
Under the pre-revised Patent Act, a divisional application cannot be filed after a notice of allowance
is issued and can only be filed within the following time frames:
at any time prior to the issuance of a first office action;
during the time period for responding to an office action, if any; and
within 30 days from the date a final rejection is issued.
According to the revised Patent Act, from 29 July 2015, a divisional application can be filed after the

issuance of a notice of allowance. In such case, the divisional application must be filed within three
months from the date of receipt of the notice of allowance or the registration of a patent, whichever
comes first.

Seong-Ki Kim

seongkik@leeinternational.com

Yoon Suk Shin

yshin@leeinternational.com

Eun-Young Park

eypark@leeinternational.com

Gon-Uk Huh

hmichael@leeinternational.com

14F Poongsan building

Tel: +82 2 2279 3631
23 Chungjeong-ro Seodaemun-gu
Fax: +82 2 2273 4605
Seoul 120-013
www.leeinternational.com
Korea

Macedonia
Valentin Pepeljugoski
Pepeljugoski Law Office
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

In Macedonia, administrative, criminal and civil proceedings are available against an infringer.
Proceedings in the form of civil lawsuits take place in court as ordinary proceedings or preliminary
injunctions. Proceedings take the form of criminal lawsuits in cases of malice and if the action is
qualified as a criminal act.
According to the Macedonian Law on Courts, civil infringement actions are decided by the competent
basic courts of enlarged competence (civil and trade division); criminal infringement actions are
decided by the competent basic courts.
General civil procedure rules are provided by the Macedonian Law on Civil Procedure; general
criminal procedure rules are provided by the Macedonian Law on Criminal Procedure.
2 Trial format and timing

What is the format of a patent infringement trial?

Patent infringement cases are held before the basic courts in Macedonia. Documents are commonly
produced and relied upon in patent cases. Live testimony is available, and the cross-examination of
witnesses is permitted. Experts are used, but only for calculating the damage and for stating the
similarity or identity of the invention or patent. Disputed issues are decided by a panel of three
judges.
A lawsuit can last from 12 to 30 months.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The complainant bears the burden of proving any infringement by the defendant.
On the other hand, anyone alleging that a patent is null and void has to prove the allegation.
Cases of invalidation are heard before the Macedonian Industrial Property Protection Office (IPPO)

with the opportunity to initiate an administrative dispute before the administrative court.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

According to the Macedonian Law on Industrial Property, the applicant and the holder of the patent
are entitled to sue for a patent infringement, as are subsequent transferees and exclusive licensees.
The inventor is not entitled to sue for patent infringement if he or she has transferred the economic
rights. However, the inventor has the right to initiate criminal procedures against the infringer for
infringement of his or her moral rights.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

According to Macedonian civil law, inducement can be taken into consideration only in the event of a
criminal lawsuit.
The principle of contributory infringement is not regulated in Macedonian civil law.
Although all parties who produce some elements from patented product are liable and can be sued,
there must be a person who assembles the parts manufactured by others in order to form a final
product that is the subject of anothers patent.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The joinder of multiple defendants is regulated by the Law on Industrial Property as lex specialis, as
well as in general by the Law on Civil Procedure. According to the Law on Industrial Property, the
action for establishing violation of the right, termination of the violation and prohibition for further
same or similar violations, can be filed against the persons who undertook some action by which a
violation of the right prescribed by this law is performed. The action can be filed against the persons
who provide services used by the subjects violating the rights, respectively if there is a serious threat
for violation of the rights. Taking into consideration the above mentioned, the Law on Industrial
Property allows the joinder of multiple defendants in the same lawsuit. However, the detailed
conditions for allowance and the status of the multiple defendants are prescribed in the Law on Civil
Procedure. Contrary to the joinder of multiple defendants, the joinder of multiple plaintiffs is
explicitly allowed by the Law on Industrial Property, prescribing their status as unique multiple
plaintiffs.

7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

According to the Macedonian International Private Law, preparatory activities that are considered to
be illegal or infringing activities that take place outside Macedonia are not illicit and cannot be
repressed in Macedonia.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Equivalents of the claimed subject matter of the patent are liable for infringement. There is no
statutory or judicial decision governing the scope of equivalents of patent claim.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

According to the Law on Industrial Property, the complainant has to provide serious evidence to the
judge in order for his or her claims to be treated as well founded. In such cases, the complainant is
entitled to ask the judge to order the discovery of documents or to get information about them by
means of examination.
The judge can also order the discovery of any information useful for identifying all the subjects and
persons involved in the production, distribution and selling of infringing goods or services.
In the context of proceedings concerning infringement, the judge may order that information on the
whole chain (namely, production distribution selling) of the infringing goods or services be
provided by the infringer or any other person. The information could include the name and address of
the producers, manufacturers, distributors, suppliers, other previous holders of the infringing products
or services, as well as the name and address of the wholesalers and retailers. The information could
also concern the price of the infringing products or services as well as the production, manufacture,
delivery, receipt and commission of relevant quantities. If the aforementioned is not possible, or the
defendant does not allow or give such information, the judge may take this fact into consideration and
is then free to decide according to his or her opinion.
According to the Law on Industrial Property and the Law of Securing of Claims, the judge obtains
information by means of an examination.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

According to the Law on Industrial Property, such cases are urgent. Preliminary injunctions last from
a month when granted ex parte (this occurs very rarely) to about three to six months when an appeal is
included. First instance trials last from one to two years.
The Law on Civil Procedure provides that the court technical expert has to send to the parties, within
the terms set by the judge, his or her expert report. The parties, within a term set by the judge, have to
file a brief containing their comments regarding the expert report. Finally, the court technical expert
has to file the expert report, the parties briefs and a short comment on the parties briefs within a
term set by the judge. If one of the parties lodges a claim, the technical expert will be cross-examined
by the parties on the hearings.
Second instance (appeal) trials last around one year. According to the Law on Civil Procedure, the
court has the opportunity to order public hearings and to order another technical experts opinion.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Litigation costs are variable depending on the value of the dispute. Maximum court fees are 3,200. If
an expert opinion is necessary, the costs for this are 250 and higher.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

According to the Macedonian Law on Civil Procedure, the ordinary appeal procedure is available.
The Law on Courts provides that there are four appellate courts: Bitola, Gostivar, Shtip and Skopje.
It is possible to lodge an extraordinary remedy through a request for revision of a judgment before the
Supreme Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

According to the Law for Protection of Competition, the abuse of patent rights is forbidden. In
addition, the Law against Unfair Competition regulates acts of unfair competition, including misuse of
patent.
Although such provisions exist, in practice they have not been used in any cases to date.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

According to the Law on Arbitration, there is the possibility for patent infringement cases to be
settled before the Permanent Court of Arbitration, which operates within the Macedonia Chamber of
Commerce. To date, no case has been settled before such arbitrage.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to article 25 of the Law on Industrial Property, inventions that fulfil the conditions of
novelty, inventive step and industrial applicability are patentable. If the aforementioned conditions
are fulfilled the following inventions can be patentable:
a biological material that is isolated from its natural environment or produced by means of a
technical process, even if it previously occurred in nature;
a technical process by means of which biological material (even if it previously occurred in nature)
is produced, processed or used;
any new application of a material or of a technical process already patented;
an invention regarding an element isolated from the human body or otherwise produced by means of
a technical process, even if the structure of that element is identical to that of a natural element (the
function and the industrial application of the invention must be described and claimed); and
an invention regarding plants or animals as well as a plant grouping, characterised by the expression
of a specific gene and not by its whole genome, if their application is not limited, from a technical
point of view, to obtain a specific plant variety or animal species and if not only essentially
biological processes are used.
According to articles 25 and 26 of said Law, the following cannot constitute patentable inventions
(inter alia):
methods of surgical or therapeutic treatments of the human or animal body and diagnostic methods
applied to the human and animal body;
inventions where their commercial exploitation would be contrary to human dignity, public security
or morality, safeguard of health, environment, life of the persons and animals as well as to the
preservation of plants and biodiversity;
plant and animal varieties as well as essentially biological processes for the production of plants or
animals;
new plant varieties where the invention consists exclusively in the genetic modification of another
plant variety even if such modification is a result of a genetic engineering procedure; and
technical procedures using human stem cells.
Software and business methods are not patentable, per se.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a

joint venture? How is patent ownership officially recorded and transferred?

There are no special provisions in the Macedonian Law on Industrial Property or the Macedonian
Labour Law concerning this issue. When the invention is made by a company employee and, in this
aim, he or she is paid, the employer is the rights owner, but the employee is entitled to be declared as
inventor. The same applies for a joint venture.
Independent contractors are the owners of their inventions and multiple inventors are co-owners and
the patent is filed in their joint names. The IPPO grants the patent to the applicant and the said person
is the owner (the law uses the term holder) of the patent. The transfer of the ownership has to be
recorded to have effect against third parties.
In accordance with article 1 of the Amendment of the Law on Industrial Property, an invention created
in a university or by a scientific organisation as a result of innovation or development activity
financing with funds from the budget of the Republic of Macedonia in accordance with the Law on
Innovation Activities belongs to the university, or, respectively, the scientific organisation where the
invention is created, except when it is agreed otherwise. If the invention is commercially used, then
the inventor has a right of remuneration of at least 25 per cent from the total revenue from the
organisation that has exploited its commercial use.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

According to the Law on Industrial Property, patents can be invalidated on grounds of lack of novelty,
inventive step, industrial application and legality. Interested parties have the possibility of filing a
request for invalidation of the specified patent (whole or in part), before the IPPO and through
initiation of an administrative dispute before the administrative court.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Macedonia has ratified the European Patent Convention (EPC), thus, absolute novelty is ruled
according to the standards set out by the EPC. These standards are incorporated into the provisions of
the Law on Industrial Property. According to the provisions, the invention must not form part of the
state of the art at the date of filing or at the earliest priority date if so claimed, whichever is the
earlier.
The state of the art includes whatever has been made available to the public in Macedonia or
elsewhere in the world before the filing of the patent, in writing or orally, through use or by any other
means.
According to Macedonian law, there are two exceptions to the novelty requirements:

 an evident abuse in relation to the applicant or any proprietor of the invention, provided it has
occurred no earlier than six months before the filing date; and
when the invention has been displayed at an official or officially recognised exhibition according to
the Paris Convention.
According to the Law on Industrial Property and the concluded agreement with the European Patent
Organisation, the European Patent Office (EPO) is the competent authority to carry out preliminary
research on novelty concerning patent applications.
If a patent claim is not possible due to the lack of some patent requirements, the EPO does not need to
carry out these reports (article 4).
The requesting party, after receipt of the research report, may send some modifications of the patent
claim and arguments relating to the research report together with a request for one or more divisional
claims.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Pursuant to the Law on Industrial Property, a patent entails an inventive step if it does not appear
obvious from the state of the art for an average expert in the relative field.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent becomes ineffective if the relevant annual renewal fees are not paid within nine months from
the point when they become due or if the holder has died or is liquidated (terminated).
In these cases, the patent is unenforceable.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

The usage of the patent is to be considered as a prior user defence only towards the person who
privately and consciously used it in the Republic of Macedonia prior to the filing date of the patent.
Further, this person is allowed, without any required approval from the patent holder, to continue
using the invention.

Remedies

22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

According to the Macedonian Law on Obligations and the Law on Industrial Property, the damage
from infringement is the actual damage and the loss of profit. The loss of profit can be determined by
different criteria. These criteria consider the loss of profit of the patent owner caused by the
infringement and the account of profits of the infringer. The damage can also be calculated as the right
price of consent (reasonable or average royalty in the same or a similar patent, if any).
Also, the legal costs, promotional costs to neutralise the negative effects of infringement and costs
(above all marketing and promotional) for entrance in the market have to be calculated into the total
damage amount.
The judge shall consider all economic effects of the infringement including the lost profit and the
profits gained in violation of the right. The judge shall also consider moral damages (loss of
reputation, loss of clients, etc) if the patent holders claims are proved.
The compensation shall not be lower than the remuneration the infringer should have paid if a licence
had been granted, increased by 200 per cent (punitive damages: article 303 of the Law on Industrial
Property).
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

The requirements for obtaining a preliminary injunction are the validity of patent and of infringement,
and the irreparable harm caused by the infringement, the consequences of which are neither
determinable nor refundable. The Law on Industrial Property provides a preliminary injunction, and
such injunction is always granted by the basic court with enlargement competence.
Article 313 of the Law on Industrial Property provides that the decision ascertaining the infringement
of an industrial property right (namely, a patent right) may dispose a preliminary injunction
preventing the production, commercialisation and use of what constitutes infringement of the right.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

According to the Macedonian Law on Customs Measures for Protection of Intellectual Property, the
holder of the right or owner of the exclusive rights has to file an application for action with the
national central customs authorities. Subsequently, all local customs authorities block the goods
suspected of infringing the applicants exclusive rights and request the owner to confirm the
infringement.
Within 10 working days from receipt of the notice of suspension of release, or detention, of the

suspected infringing goods, the customs authority must be notified that legal proceedings have been
initiated to determine whether an intellectual property right has been infringed. On the justified
request of the right holder, said term could be extended for another period of 10 days. After this term,
if the importer or transporter do not allow the goods to be destroyed, either a civil proceeding on the
merits or a preliminary injunction proceeding are appropriate.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The Macedonian Bar Association has official tariffs, but attorneys costs are normally higher than
these official ones. According to the Macedonian Law on Civil Procedure, the judge condemns the
losing party to pay legal fees (court fees and lawyers fees) to the winner.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

According to article 303 of the Law on Industrial Property, there are increased damages of 200 per
cent if an infringement is wilful (see question 22).
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

According to article 295 of the Law on Industrial Property, an action can be filed within a term of
three years from the day the patent owner became aware of the infringement and the infringer, but not
later than five years from the day the infringement occurred.
As long as an infringement is carried out, the patent owner can file an action for injunction against the
infringer.
According to the Macedonian Law on Obligations, a five-year period is also prescribed for
compensation of damage arising from the infringement of a patent.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no such marking obligation under the Law on Industrial Property.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

According to the Law on Industrial Property, a patent can be licensed, in whole or in part, on a
voluntary basis. Patents may be licensed on either an exclusive or non-exclusive basis.
The licence agreement has to be registered in the registry book of patents in order to become effective
against third parties.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Articles 97115 of the Law on Industrial Property provide for a special regulation for compulsory
licences and compulsory licences in favour of public health. If the patent holder does not use the
invention protected by a patent or uses it in a scope that is insufficient to the needs of the national
market, and refuses to enter into a licence agreement or sets unmarketable conditions for entering into
that contract, the right to use the invention, by a compulsory licence, may be assigned to another
person with an obligation to pay a fee to the patent holder.
A compulsory licence may also be issued if the utilisation of the invention protected by a patent:
is necessary due to an emergency situation in the country;
is necessary for the protection of public interest in the area of health, food and the protection and
promotion of the environment;
is of particular interest to a certain industrial field; or
is necessary for implementing the judicial and administrative procedures related to protection of
competition.
A request for a compulsory licence may not be submitted prior to the expiry of a period of four years
from the date of filing the patent application or prior to the expiry of a period of three years from the
date of the patent being granted, in the event that this period expires later; however, in some cases
(referred to in article 97, paragraph 2 of the aforementioned Law), a compulsory licence may be
issued prior to the aforementioned time periods.
A compulsory licence shall not be issued if the patent holder proves that there are legal constraints
that justify the fact that an invention protected by a patent has not been used or has been insufficiently
used.
A compulsory licence may not be exclusive.
The compulsory licence shall be valid as long as the reasons for which it has been issued still exist.
On the elaborated request of the interested person, the compulsory licence shall be cancelled if the
reasons for which the licence has been issued no longer exist, and there is no possibility that those
reasons will occur again, provided that the legitimate rights of the assignee of the compulsory licence
are protected.
The compulsory licence may not be transferred unless the transfer is carried out together with the

production capacity (namely, with the part of it that uses the invention for which the licence has been
issued). The compulsory licence shall be issued for the needs of the national market unless it is
proved in legal proceedings that this is contrary to the protection of competition on the market.
The court that is competent for settling disputes concerning industrial property rights in legal
proceedings shall decide on the issuing of the compulsory licence.
The procedure to issue a compulsory licence shall be initiated with a lawsuit against the patent holder
or a supplementary protection certificate, which contains a request for issuing the compulsory
licence. In the procedure for issuing the compulsory licence, the patent holder registered in the patent
register shall be considered as a patent holder.
Any person who has filed an application in compliance with the provisions of this Law may be
issued, by the court, a compulsory patent licence (namely, a supplementary protection certificate for
the needs of production and sale of pharmaceutical products) where such a product is intended to be
exported into importing countries with public health problems. When deciding upon issuing a
compulsory licence, the court shall take into consideration the World Trade Organization General
Council Decision of 30 August 2003 on the implementation of paragraph 6 of the Doha Declaration
on the TRIPS Agreement and public health of 14 November 2001.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The procedure for granting patent takes around three years from the filing date. Filing fees range from
approximately 350 to 700.
Maintenance fees increase progressively from the fourth year (approximately 20) to the 20th year
(165).
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The Law on Industrial Property prescribes the possibility for the applicant to request the State Office
of Industrial Property to take the application into consideration immediately in the case of a dispute
for the right arising out of the patent application. This request cannot be filed before the 12-month
period from the filing date of the application expires.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The content of the patent application is prescribed by article 43 of the Law on Industrial Property.
According to its provisions, the patent application must contain:
a request for a patent grant;
the description of the invention;
one or more patent claims;
brief content of the essence of the invention (abstract);
the drawing(s) (if necessary) referred to in the description and the patent claim;
evidence that the application fee has been paid; and
a translation into Macedonian if the application was filed in foreign language.
The description of the invention must disclose the invention in a manner sufficiently clear and precise
for it to be carried out by a person skilled in the art in that field.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

According to the Law on Industrial Property, there is no obligation that the inventor must indicate to
the examiner, as far as he or she knows, any prior art that may be useful to the comprehension of the
invention and to the fulfilment of the research, and any possible references to specific documents.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

According to the Law on Industrial Property, the applicant cannot introduce substantial amendments
to the claims before the invention is patented. The applicant may only supplement (namely, introduce
new examples) or limit the description, the claims and the drawings.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The decision of the IPPO is final. It is only possible to initiate an administrative dispute against an
adverse decision of the IPPO before the administrative court and then before the Supreme Court on
matters of law.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no impediment to granting a patent before the IPPO.

38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The IPPO does not provide any mechanism for resolving priority disputes between different
applicants for the same invention.
Priority is determined by the date of filing of the application.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Even after it has been granted, the holder has the possibility of modifying the patent claims, but only if
such change consists of a limitation.
No administrative procedure aimed at re-examining the patent exists. However, according to articles
275-278 of the Law on Industrial Property, there is a possibility that total or partial nullity of the
patent can be declared by a decision of the IPPO. This can be done upon the request of an interested
person and ex officio by the IPPO.
There is the possibility of initiating an administrative dispute before the administrative court by a
party that is dissatisfied by the decision of the IPPO.
40 Patent duration

How is the duration of patent protection determined?

Patents are valid for 20 years from the filing date.

The duration of pharmaceutical and plant protection can be extended up to five years if a
supplementary patent certificate is granted.

Update and trends

The newest development in the field of patent law in Macedonia is the law that was passed with the
ultimate goal of stimulating invention.

Valentin Pepeljugoski

vpepeljugoski@unet.com.mk

Veljko Vlahovik Street No. 4/1-1

1000 Skopje
Macedonia

Tel: +389 2 3211 005

Fax: +389 2 3211 004
www.pepeljugoski.com.mk

Malaysia
Benjamin J Thompson, Haneeta Kaur Gill and Hannah Ariffin
Thompson Associates
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Only legal proceedings are available to enforce patent rights against an infringer. Section 59 of the
Patents Act 1983 (PA 1983) provides for the right of the owner of the patent to institute legal
proceedings against any person who has infringed or is infringing a patent.
Since 2007, Malaysia has established intellectual property courts that will also determine issues of
patent infringement.
Patent infringement proceedings are instituted at the Civil High Court (Intellectual Property). The
civil suit takes the format of a writ action. A writ of summons is filed with a summary of the claim
and, usually simultaneously, a statement of claim is filed, although one has 14 days from the date the
writ is filed to file a statement of claim. The defendant would then enter appearance to the suit and
file a statement of defence containing the points of defence that it would be relying on at the trial. The
plaintiff has a right to file a reply to the defendants defence and any subsequent pleading can only be
filed with leave of court. Parties are bound by these pleadings during the course of the trial.
2 Trial format and timing

What is the format of a patent infringement trial?

The trial of an action begun by writ is undertaken by way of oral testimony. Witnesses are sworn
under oath on the stand and questions are posed and answered by the witness. The plaintiff begins the
case, and at the end of the plaintiffs case the defendant will begin its case. During these proceedings
experts may be called by both sides. Each sides expert witness would be called during the course of
their case, so the plaintiffs expert would be called during the plaintiffs case and the defendants
expert would be called during the defences case. In some cases, examination of the principal
witnesses is done by way of witness statements (a statement in writing under oath), and the crossexamination and re-examination of the witness is done orally in court.
There are no jury trials in Malaysia for civil proceedings. The sole arbiter of fact and law is the
single judge sitting in the High Court. At the end of the hearing, the defendants counsel will begin
submissions, which are then followed by the plaintiffs counsels submission. The defendants

counsel will have a right of reply, after which the judge may deliver judgment immediately or at an
adjourned date.
The implementation of the electronic court system commenced in 2011 in several states in Malaysia,
including its capital Kuala Lumpur, has also greatly improved the efficiency of the judiciary.
Previously, a trial without any interlocutory applications preceding it could take up to two or three
years to conclude. In the event of interlocutory applications, each application could take up to six
months to conclude. Trials will not commence until the disposal of the interlocutory applications.
This time frame excluded any time taken in proceedings to appeal to the judge (in chambers) against
the registrars decision.
However, since the establishment of the intellectual property courts and the implementation of the
electronic court system, the timelines have been substantially shortened.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

As patent infringement and related actions are civil actions, the general burden of proof is on the
party alleging. The applicable standard of proof is on a balance of probabilities.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Remedies can be sought by right by the owner of a patent. However, a beneficiary under the PA 1983
(which means a licensee or compulsory licensee) is not entitled by right to seek any remedies for
patent infringement.
Under section 61 of the PA 1983 a beneficiary is required to request the patent owner to institute
court proceedings for any infringement indicated by the beneficiary, as well as specify the relief
desired. However, if the owner fails to take any steps within three months of having been notified, the
beneficiary, having proved that the owner had received the request and failed to act on the same, may
institute the proceedings in its own name after notifying the patent owner, who shall have the right to
join the proceedings. Notwithstanding the three-month period not being satisfied, the beneficiary is
entitled to seek interim injunctive relief to prevent infringement provided it can satisfy the court that
immediate action is necessary to avoid substantial damage.
An infringer against whom proceedings have already been instituted for patent infringement may not
apply for and obtain a declaration of non-infringement of the act complained of in the infringement
proceedings. However, where infringement proceedings have not yet commenced, any interested
person may apply for such a declaration.
An infringer may, however, apply for invalidation of the patent as part of its defence or counter-claim
in infringement proceedings.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Owners of the patent have the same rights against any person who has performed acts that make it
likely that an infringement will occur (referred to as imminent infringement) as they have against any
person who has infringed or is infringing their exclusive rights. If the infringing acts are collectively
carried out by more than one party, and the case is specifically pleaded in that way, it will be
possible for all of them to be jointly liable for infringement.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The general rule is that multiple parties may be joined as defendants in the same lawsuit where:
if separate actions were brought against each of them, some common question of law or fact would
arise in all the actions; and
all rights to relief claimed in the action (whether they are joint, several or alternative) are in respect
of or arise out of the same transaction or series of transactions.
Depending on the factual matrix in each case, parties may argue for consolidation of several separate
actions or for separate trials.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The protection afforded by the PA 1983 in Malaysia is territorial in nature. Therefore, acts of
infringement outside the jurisdiction of Malaysia are not protected under the PA 1983 unless the
infringing articles or actions reach within the territory. It should be noted however, that the rights
under a patent do not extend to the use of the patented invention on any foreign vessel, aircraft,
spacecraft or land vehicle temporarily in Malaysia.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

It has been decided by the highest court (the Federal Court) that if a statute is clear and unambiguous,
a literal interpretation should be made of the words. If there is any ambiguity, a purposive approach
should be taken.
In the Court of Appeal decision in Cadware Sdn Bhd v Ronic Corporation [2013] 5 AMR 13 ruled
that patent infringement should be established based on the doctrine of purposive construction as
discussed in the cases of Catnic Components Ltd & Anor v Hill & Smith Ltd [1982] RPC 183 and

Improver v Remington [1990] FSR 181. The court followed the Improver questions as follows:
The proper approach to the interpretation of patents registered under the Patents Act 1949
was explained by Lord Diplock in Catnic Components Ltd & Anor v Hill & Smith Ltd. The
language should be given a purposive and not necessarily a literal construction. If the issue
was whether a feature embodied in an alleged infringement that fell outside the primary,
literal or contextual meaning of a descriptive word or phrase in the claim (a variant) was,
nevertheless, within its language as properly interpreted, the court should ask itself the
following three questions:
does the variant have a material effect on the way the invention works? If it does, there is
no infringement;
if the variant does not have a material effect on the way the invention works would the
immaterial variant have been obvious at the date of publication of the patent to a reader
skilled in the art? If it would not, there is no infringement;
if the immaterial variant would have been obvious at the date of publication of the patent to
a reader skilled in the art, would the reader skilled in the art, nevertheless, have understood
from the language of the claim that the patentee intended that strict compliance with the
primary meaning was an essential requirement of the invention? If it would, there is no
infringement. If it would not, infringement will be established.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

An application for discovery of documents is permissible under the Rules of Court 2012. There is
also the mechanism of obtaining an Anton Piller order (a form of injunction), which would be
obtained ex parte and executed at the defendants premises or identified premises, where the court
permits the seizure of documents and evidence at the named site. This method cannot be used as a
fishing exercise, as clear parameters are set and only documents that are identified in the Anton Piller
order are permitted to be seized.
One could also apply for interrogatories under the Rules of Court 2012, where questions are posed on
the pleadings filed and statements under oath are given in reply. Also available is the mechanism of
pretrial discovery under the Norwich Pharmacal Co and Others v Customs and Excise
Commissioners principles. Although the discovery process is generally against the parties to the
litigation, the Norwich Pharmacal-type discovery is available against third parties. Discovery orders
against parties relating to documents that do not lie in the territory may be obtained. Enforcement of
the same outside of the jurisdiction, however, may be a problem, depending on the jurisdiction
concerned. If the party bound by such an order fails to provide the documents sought, then in the event
of a foreign document, it would appear that the only avenue available to the party seeking the
discovery would be to proceed to cite the other party for contempt of court. Failure to provide this
document under an order of court would also attract adverse inference during the course of the trial.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The time frame for a typical action up to trial stage used to be anywhere between three to four years.
However, with the establishment of the intellectual property courts and the implementation of the
electronic court system, this has been shortened to between 12 to 24 months.
Appeals, once lodged, can take between two to three years to be heard. However, those timelines are
steadily decreasing due to recent reorganisation of the courts administration systems.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of litigation vary with the duration of the trial, the complexity of the issues involved,
seniority of counsel and the volume of documents necessary to the case. It also depends on whether
expert witnesses will be called and whether orders need to be enforced or executed abroad. The
number of interlocutory applications and the nature of those applications also affect the cost of
litigation.
As an indication, for a trial for patent infringement at the High Court (for example a mechanical
invention) the costs would be between 30,000 ringgit and 90,000 ringgit, depending on the number of
issues and the seniority of counsel.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Decisions of the High Court can be taken on appeal to the Court of Appeal, and thereafter with leave
to the Federal Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The Competition Act 2010 does not expressly exclude enforcement of patents from the ambit of the
Act, and it remains to be seen how the regulations or guidelines will address any uncertainty. To date,
the Malaysian Competition Commission has yet to issue a guideline to address issues regarding
intellectual property rights and franchise agreements.
However, section 84 of the PA 1983 provides that where a judicial or relevant authority has
determined that the manner of exploitation by the owner of the patent or its licensee is anticompetitive, the minister in charge may decide (even without the agreement of the owner of the
patent) that a government agency or a third person designated by the minister may exploit the patented
invention predominantly for the supply of the market in Malaysia. Such exploitation is, however,
subject to payment to the owner of the patent of an adequate remuneration for such exploitation, taking

into account the economic value of the ministers authorisation (as determined in the decision) and the
need to correct anti-competitive practices. The owner of the patent can still continue to exercise its
rights even during the tenure of the authorisation, and may also apply to the minister to vary or
terminate the authorisation if the circumstances change. Decisions of the minister under this section
are subject to appeal to the court.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The Chief Justice issued a Practice Direction on Mediation, which came into effect on 16 August
2010. Intellectual property disputes are among the cases expressly recognised in the Direction as
being suitable for resolution by mediation. According to the Practice Direction, all judges and deputy
registrars of the High Court, and all judges of the Sessions Court and magistrates and their respective
registrars, are authorised to suggest mediation at the pretrial case management stage, or at any other
stage of the proceedings, even appeal.
The Practice Direction offers the following modes of referrals to mediation, whereby parties are
given the option to select either:
judge-led mediation this option allows for a process whereby, if agreed by the parties, the judge
hearing the case will refer it to another judge. This is to facilitate without prejudice disclosure by the
parties during the mediation. In the event the mediation fails, the matter will then be referred to the
original judge to hear and complete the case. However, if the mediation is successful, the judge
mediating shall record a consent judgment on the terms as agreed to by the parties; or
mediation by a mediator agreeable to both parties this option allows parties to appoint a trained
mediator of their preference (mutually agreed upon) to mediate the matter. At the present moment,
there is a total of 285 mediators empanelled on the Bar Council Malaysian Mediation Centre. Under
this option parties may, if they so desire, appoint more than one mediator to resolve their dispute.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

For an invention to be patentable it must be new, involve an inventive step and be industrially
applicable.
However, the following categories of inventions are expressly not patentable:
discoveries, scientific theories and mathematical methods;
plant or animal varieties or essentially biological processes for the production of plants or animals,
other than man-made living micro-organisms, microbiological processes and the products of such
micro-organism processes;
schemes, rules or methods for doing business, performing purely mental acts or playing games; and

 methods for the treatment of the human or animal body by surgery or therapy, and diagnostic
methods practised on the human or animal body (but products used in such methods are patentable).
From the above, it can be seen that business methods and medical procedures are expressed as being
non-patentable. For software, however, there is no such explicit exclusion.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The rights to a patent to an invention in the case of a company employee belong to the employer, in the
absence of any provisions to the contrary in the contract of employment.
In the case of an independent contractor, the rights belong to the person who commissioned the work,
in the absence of any provisions to the contrary in the contract for the execution of the work.
However, where the invention acquires an economic value much greater than the parties could
reasonably have foreseen at the time of concluding the contract, the inventor will be entitled to
equitable remuneration, which may be fixed by the court in the absence of agreement between the
parties. This right of the inventor cannot be restricted by contract.
Where there are multiple inventors or it is a joint venture, the rights to a patent belong to the owners
jointly, and the patent may only be applied for jointly by all the joint owners. Patent ownership can be
transferred by voluntary assignment, judicial assignment and transmission. It is officially recorded by
filing an application with the registrar to record the change in ownership, and by providing the
registrar with a copy of the instrument.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Invalidation of a patent has to be made through court proceedings and may be initiated by any
aggrieved person.
A patent may be invalidated on the following grounds:
that what is claimed as an invention in the patent is not an invention within the meaning of invention
(as defined under section 12 of the PA 1983) or is a non-patentable invention (as provided for under
section 13 of the PA 1983), or that the grant of the patent is contrary to public order or morality (as
provided under section 31(1) the PA 1983) or is not patentable because it is not novel, does not
comprise an inventive step or is not industrially applicable (in compliance with sections 11, 14, 15
and 16 of the PA 1983);
that the description or the claim does not comply with any regulations made by the minister under
the PA 1983;
that any drawings that are necessary for the understanding of the claimed invention have not been

furnished;
that the right to the patent does not belong to the person to whom the patent was granted; or
that incomplete or incorrect information has been deliberately provided or caused to be provided to
the registrar during the substantive examination or modified substantive examination stage of the
patent application by the person to whom the patent was granted or by his or her agent.
Actions for invalidation are heard at the High Court (Intellectual Property).
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Novelty in Malaysia would be extinguished if the invention is anticipated by prior art, which would
consist of everything disclosed to the public, anywhere in the world, by written publication, by oral
disclosure, by use or in any other way.
Exceptions to this would include where the disclosure occurred within one year preceding the date of
the patent application and if:
such disclosure was by reason or in consequence of acts committed by the applicant or his or her
predecessor in title; or
such disclosure was by reason or in consequence of any abuse of the rights of the applicant or his or
her predecessor in title.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The legal standard that would be applicable in determining whether a patent is obvious or inventive
in view of the prior art is whether the inventive step would have been obvious to a person having
ordinary skill in the art.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

The PA 1983 provides that a patent shall not be invalidated on the ground that the performance of any
act in respect of the claimed invention is prohibited by any law or regulation, except where the
performance of that act would be contrary to public order or morality.
There is also a time bar: infringement proceedings may not be instituted more than five years from the
act of infringement.
Further, the rights under the patent can only extend to acts done for industrial or commercial purposes.
It cannot extend to acts done only for scientific research.
It also cannot extend to acts done to make, use, and offer to sell or sell the patented invention solely

for uses reasonably related to the development and submission of information to the relevant authority
that regulates the manufacture, use or sale of drugs.
The rights under a patent do not extend to the use of the patented invention on any foreign vessel,
aircraft, spacecraft or land vehicle temporarily in Malaysia.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

The PA 1983 provides for a prior manufacture or prior use defence under the following
circumstances:
prior use must have been before or at the priority date of the patent application;
prior use must have been in good faith; and
use of the product or process in question has been in Malaysia and by the person claiming the
defence.
The defence can also be relied on if the person, as at the priority date, has been making serious
preparations in good faith towards the making of the product or the process.
The PA 1983 does not limit the application of this defence to specific types of inventions.
A patent holders rights under the patent only extend to acts carried out for industrial or commercial
purposes, and not to acts carried out only for scientific research. As such, this defence would only
arise in the event of a claim for infringement due to industrial or commercial use.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The PA 1983 provides for damages to be awarded by right to a patent owner who is able to
successfully prove that its patent has been infringed. This is in addition to any injunction or other
legal remedy ordered by the court. The basis for awarding damages is tortious as patent infringement
is considered to be a tortious act. The underlying principle therefore is to compensate the plaintiff to
the position that it would have held but for the wrongful acts of the defendant, provided that the loss is
the natural and direct consequence of the defendants act.
The order obtained would direct either that an inquiry be carried out before the court registrar (akin
to a deputy judge) on the damages suffered or that the defendant account for profits made as a result of
dealing with the infringing patent. The successful litigant would have to opt for either one.
An inquiry into damages is usually conducted by way of affidavit evidence with an opportunity to
cross-examine the deponents.
The court would usually order the defendant to pay a reasonable royalty in respect of each infringing

patent. In addition, the court may also order the defendant to pay the plaintiff for loss of profits or
goodwill provided the plaintiff can prove that the loss is due directly to the defendants acts. The
court also has discretion to award interest on damages.
If the plaintiff elects to get the defendant to account for its profits, the defendant would have to
transfer to the plaintiff the profits improperly made by the defendant and to prevent unjust enrichment
of the defendant. Before choosing, the plaintiff is entitled to full discovery of the extent of the
defendants sales.
Damages may not only be recovered in respect of acts committed after the grant of the patent. In
certain circumstances, the patent owner also has the right to claim as compensation an amount
equivalent to what he or she would have normally received for the working of the invention for acts
done between the time the patent application was made available for public inspection (usually 18
months from the priority date or filing date) and the time of the grant of the patent.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

An application for an interim injunction is allowed under the Rules of Court 2012. The Malaysian
courts have adopted the governing principles in the well-known case of American Cynamid Co v
Ethicon Ltd. In summary, the courts will adopt the following guidelines when deciding whether to
grant the interlocutory injunction:
whether the totality of the facts discloses bona fide serious issues to be tried;
where the justice of the case lies (the balance of convenience); and
whether the remedy sought for by the party is intended to produce a just result.
An applicant for an interlocutory injunction has to also ensure that the application satisfies the
following requirements:
that full and frank disclosure has been made before the court of all material facts affecting the
application;
that the application is made at the earliest possible opportunity without delay; and
an undertaking as to damages has been provided. Generally, an applicant for interlocutory injunction
is required to provide an undertaking that it will pay the damages of the other party that it may sustain
as a result of the interlocutory injunction.
The Rules of Court 2012 provide that ex parte applications are only valid for a period of 21 days
from the date of grant unless sooner revoked or set aside. In practice, the court will usually set a
return date for the inter partes hearing to be fixed within 14 days from the date of grant of the ex parte
order. Ex parte interlocutory applications must be supported by an affidavit containing, among others,
the following:
the facts giving rise to the claim against the defendant in the proceedings;
the facts giving rise to the claim for interlocutory relief;
the facts relied on as justifying application ex parte, including details of any notice given to the
defendant or, if none has been given, the reason for not giving such notice;
any answer asserted by the defendant or likely to be asserted by the defendant either to the claim or
to the application for interlocutory relief;

 any facts known to the applicant that might lead the court not to grant relief ex parte;
whether any previous similar ex parte application has been made to any other judge, and if so the
order made in that previous proceedings; and
the precise relief sought.
The typical types of interim relief that may be obtained include:
a Norwich Pharmacal order to discover the identity of the infringers from an innocent third party;
an Anton Piller order to permit the search and seizure of all infringements and discovery of matters
related to the infringement, including obtaining the names of all parties to whom the infringer supplied
the infringing products; and
a Mareva injunction to freeze the defendants assets to prevent their removal from the jurisdiction
or dissipation.
The PA 1983 provides for a permanent injunction to be granted after a full trial of the matter where a
patent owner has been able to successfully prove that its patent has been or is being infringed. It is
usually worded to ensure that the defendant is prevented from further infringing the patent, whether
directly or indirectly. This would also include its related companies, subsidiaries, employees, agents,
servants and other related parties to the defendant. Additionally, the court may also order for delivery
upon oath of the goods containing the infringing patent to render the injunction more effective.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

There are no specific tribunals or proceedings available to block the importation of products that
infringe a particular patent (note, however, that the Trade Marks Act 1976 does provide for specific
border measures). However, given that the patent owners exclusive rights include the right to import,
such owner may obtain the requisite orders to injunct or seize an imminent shipment if there is
evidence that a third party is infringing or about to infringe his or her rights.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In accordance with the Rules of Court 2012, a successful litigant is not entitled to recover its
attorneys fees by right. The decision to award costs is at the discretion of the court. The general rule
is that the courts may order the losing party to compensate the successful litigant its costs. The amount
of costs to be paid by the losing party is taxed by the court registrar (akin to a deputy judge) on a
party on the basis of the costs that were necessary or proper for the attainment of justice, or for
enforcing or defending the rights of the party whose costs are being taxed. Recently, in a bid to hasten
the process of justice and reduce the administrative burdens on court registrars, trial judges at High
Court level are awarding costs at the end of the trial based either on an amount agreed between the
parties or on the judges assessment of the value. Thus, a successful litigant does not usually recover
the full costs incurred, but what is a reasonable sum in the eyes of the court.

26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no specific provisions in the PA 1983 in respect of wilful or deliberate infringement. In any
event, a patent owner may apply for and obtain an ex parte injunction as discussed above should the
infringer ignore notices to cease and desist or continue to infringe the patent in blatant ignorance of
the patent owners notices.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Section 59 of the PA 1983 provides that proceedings may not be instituted after five years from the
act of infringement.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no obligation for a patent holder to mark its patented products. It is, however, common for
the markings Patent Pending or Patented to be used. The PA 1983 prescribes offences when such
markings are used without authorisation or falsely. Any person is liable on conviction to a fine not
exceeding 15,000 ringgit or to imprisonment for a term not exceeding two years, or to both.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The PA 1983 provides that any clause or condition in a licence contract shall be invalid insofar as it
imposes upon the licensee, in the industrial or commercial field, restrictions not derived from the
rights conferred on the owner of the patent or unnecessary for the safeguarding of such rights.
Restrictions concerning the scope, extent or duration of exploitation, or the geographical area or
quality or quantity of the products for exploitation, are deemed not to constitute such invalid
restrictions. Obligations imposed upon the licensee to abstain from all acts capable of prejudicing the
validity of the patent are also deemed not to constitute such an invalid restriction.

30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The PA 1983 provides for the application of a compulsory licence to be made in the following
circumstances:
at any time after the expiration of three years from the grant of patent or four years from the filing
date of the application (whichever is the later);
where there is no production of the patented product or application of the patented process in
Malaysia without any legitimate reason;
where there is no product produced in Malaysia under the patent for sale in any domestic market, or
there are some but they are sold at unreasonably high prices or do not meet the public demand without
any legitimate reason; or
the person making the application for a compulsory licence has made efforts to obtain authorisation
from the owner of the patent on reasonable commercial terms and conditions but such efforts have not
been successful within a reasonable period of time.
The terms of the compulsory licence will be determined by the Intellectual Property Corporation of
Malaysia (MyIPO). The applicant for the compulsory licence will in his or her application propose
the amount of royalty, the conditions of the exploitation of the patent and the restriction of the rights of
the licensor or licensee. The corporation will provide a copy of the application to the licensor or
licensee, and notify them of the date the application will be considered. In considering the
application, the corporation can require the licensor or licensee to appear before them and to give a
statement or provide documents. The corporation in granting the compulsory licence will fix:
the scope of the licence and the period for which the licence is granted;
the time limit for the applicant to begin working the invention in Malaysia; and
the amount and conditions of the royalty due to the owner of the patent.
A compulsory licence granted by the corporation cannot be assigned otherwise than in connection
with the goodwill or business in which the patented invention is used. It shall also be limited to the
supply of the patented invention predominantly in Malaysia.
The owner of the patent can request the corporation to amend or cancel the decision granting the
compulsory licence if there are new facts or circumstances justifying it.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A typical application used to take between three and five years before a grant of patent was issued by
the registry, mainly due to manpower constraints. However, there have been substantial
improvements in recent years and the processing times are constantly improving. Amendments to the
law since Malaysia acceded to the Patent Cooperation Treaty in 2006 now make it possible for an
applicant of a domestic application to request for an international search to be carried out by one of

the designated international search authorities (ISAs). This would allow an applicant to speed up the
process of examination if necessary by nominating an ISA, such as one with skills in particular
technologies, to undertake the search.
A straightforward application (10 claims or less), up to the stage of issuance of the grant of patent,
would cost between 3,000 ringgit and 5,000 ringgit (inclusive of professional fees and official fees).
Annuities are only payable after the grant and range from (official fees only) 290 ringgit for the
second year after the grant to 2,700 ringgit for the 20th year after the grant.
Generally, no translation costs need to be incurred as the Patent Office accepts specifications in
English.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Yes, there is. Qualified applicants will be able to apply for this procedure to obtain a certificate of
grant within 20 months of the application. The registrar has identified the following conditions as
being acceptable for the approval of an expedited examination procedure in any particular case:
it is in the national or public interest;
there are infringement proceedings taking place;
the applicant has already commercialised or plans to commercialise the invention;
the invention relates to green technologies;
to obtain funds or monetary benefits from the government or recognised institutions; and
any other reasonable grounds.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The requirements of the contents of a patent application in Malaysia are similar to other
Commonwealth systems. The regulations stipulate that the description shall:
specify the technical field to which the invention relates;
indicate the background art that, as far as is known to the applicant, can be regarded as useful for the
understanding, searching and examination of the invention and, wherever possible, cite the documents
reflecting such art;
disclose the invention in such terms that it can be understood in a manner sufficiently clear and
complete for the invention to be evaluated and to be carried out by a person having ordinary skill in
the art, and state any advantageous effects of the invention with reference to the background art;
briefly describe figures in the drawings, if any;
describe the best mode contemplated by the applicant for carrying out the invention, using examples
where appropriate and referring to the drawings, if any; and
indicate explicitly, when it is not obvious from the description or nature of the invention, the way in
which the invention is industrially applicable and the way in which it can be made and used or, if it

can only be used, the way in which it can be used.

34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The PA 1983 stipulates an obligation on the applicant to, upon request, provide prescribed
information concerning the results of any search or examination carried out by an international
searching authority under the Patent Cooperation Treaty or other prescribed industrial property office
relating to the same invention. If the applicant fails to comply within the stipulated time, the
application will be deemed to be withdrawn. If the applicant deliberately provides incomplete or
incorrect information to the registrar, then that would be a ground for invalidation.
In the regulations relating to the format of the specification, an obligation is also imputed on the
applicant to indicate the background art, as far as is known to the applicant, [which] can be regarded
as useful for the understanding, searching and examination of the invention, and wherever possible,
cite the documents reflecting such art. Non-compliance with the regulations is also a ground for
invalidation.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

The PA 1983 does not allow US-type continuation applications. Additional claims relating to the
same invention may be included in the initial patent application by way of an amendment, provided
the amendment does not go beyond the disclosure in the initial application, and the claims are fully
supported by the description. Amendments to the claims may also be possible in the case of granted
patents (see question 39).
In the case of an application with multiplicity of inventions, the applicant may file divisional
applications, without loss of the priority date, to comply with the unity of invention requirement. In all
other cases, each application will have to comply with the novelty requirements as on the date of
filing. So, if a valid claim to priority cannot be made, or a request for prior disclosure to be
disregarded cannot be sustained, the later application will not be able to satisfy the novelty
requirement.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The PA 1983 gives any person who is aggrieved by the decision of the registrar the right to appeal to
the High Court.

37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no formal mechanism at the Patent Office for opposing the grant of a patent (while it is an
application) or protesting its grant. Invalidation of a patent is within the jurisdiction of the High
Court.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The PA 1983 provides that if two or more persons have separately and independently made the same
invention, and each of them has made an application for a patent, the right to a patent for that invention
will belong to the person whose application has the earliest priority date.
If there is a dispute as to the actual ownership of the invention, the person disputing may apply to the
High Court for judicial assignment of the patent application. It is also a specific ground of
invalidation if the right to the patent does not belong to the person to whom the patent was granted.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Once a patent has been granted, the PA 1983 provides that an amendment may only be made to amend
the description, the claims or the drawings of the patent or amend any other document associated with
the patent for the purpose of correcting a clerical error or an obvious mistake or for any other reason
that the registrar finds acceptable. However, the registrar cannot make amendments that would have
the effect of disclosing a matter that extends beyond that disclosed before the amendment, or if the
amendment would have the effect of extending the protection conferred at the time of the grant of the
patent. The registrar cannot make an amendment if there are proceedings pending before any court in
which the validity of the patent may be put at issue.
There are no procedures for re-examination of a patent.
In an action for invalidation, the court may declare as invalid a whole claim or part of it. The PA
1983 provides that the invalidity of part of a claim shall be declared in the form of a corresponding
limitation of the claim in question. The court therefore may amend a patent claim in an invalidation
action.
40 Patent duration

How is the duration of patent protection determined?

The PA 1983 provides a 20-year period for patent protection. This duration of 20 years is calculated
from the filing date of the application. Annuities are payable beginning the second year after grant.

Update and trends

The MyIPO proposed a revision to patent (including utility innovations) fees in December 2014. A
much lower online filing fee is proposed as compared to the manual filing fee in order to incentivise
applicants to utilise the online filing system. Mainly, the revision proposes the following changes:
waiver of certain patents searching fees online; and
increase of certain fees at an average of 5 per cent to 50 per cent.
The proposed period of commencement of the new fees is in the second quarter of 2015. However,
this is subject to the actual date of coming into force of the amendments to be made to the Patents
Regulations.

Benjamin J Thompson

ben@thompson.com.my

Haneeta Kaur Gill

Hannah Ariffin
Suite B-11-06
Plaza Mont Kiara
Mont Kiara
50480 Kuala Lumpur
Malaysia

Tel: +60 3 6203 1318

Fax: +60 3 6203 1317
www.thompson.com.my

Mexico
Eugenio Prez and Jos Luis Ramos-Zurita
Uhthoff, Gmez Vega & Uhthoff, SC
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Under Mexican Law, the legal enforcement of a patent always involves, as a first step, filing for an
administrative infringement claim before the Mexican Institute of Industrial Property (IMPI). Further
appeals to the resolution issued by IMPI can be filed before the Specialised Chamber on Intellectual
Property Matters of the Federal Court of Administrative and Taxing Affairs (SEPI-TFJFA) and, as a
last recourse, federal amparo appeals before federal circuit courts.
As a result of a firm and definitive resolution declaring an infringement, the successful plaintiff can
file an action requesting the recovery of damages and losses, although these claims are regular civil
claims tried before regular civil courts.
Considering this, and although there are no specialised courts concerning patent infringements, these
matters are examined and tried before authorities specialised in IP affairs.
2 Trial format and timing

What is the format of a patent infringement trial?

Although infringement claims are administrative procedures, nevertheless, under Mexican Law they
are carried out much like a typical summary administrative trial, namely, the claim is filed by the
plaintiff, along with the evidence supporting such a claim, and after the defendant is properly notified,
the law grants a period of time to respond to the infringement along with the corresponding evidence.
It is worth pointing out that evidence is documental only, which means there are no crossexaminations or live testimonies and, in the same manner, expert witness opinions are rendered as
documental reports only while the appraisal of such evidence is made by the expert IMPI officer, who
is formally tasked to handle the specific case. When evidence refers to complex technical issues, it is
examined by a panel of technical experts within IMPI that serve as the authorities own expert
witnesses.
Considering the above, a typical infringement case may last between 24 to 48 months, depending on
the complexity and specific circumstances of the case and, of course, the resolution issued by IMPI
can be further challenged via a nullity trial before TFJFA.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The plaintiff is required to completely support the claims made in the infringement brief, which means
producing evidence that demonstrates any conduct claimed against the infringer that, under Mexican
Law, constitutes a patent infringement. Considering this, the plaintiff is obliged to prove every single
aspect of the infringement claim with as much evidence as possible.
The only exception to this rule is established under article 192-bis 1 of the Mexican Industrial
Property Law (MIPL), but this exception only is also subject to the burden of proof considering the
term significant probability foreseen in this article and has to be credited via the evidence
apportioned by the plaintiff.
It is worth mentioning that witness depositions and confessional statements are not allowed according
to the Mexican Industrial Property Law.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Patent holders, authorised licensees and its representatives are entitled to lodge an infringement claim
against an alleged infringer. In this regard, the alleged infringer could argue, as part of the defence
strategy, the lack of sufficient legal standing.
As IMPI is obliged to examine legal standing to admit the infringement claim, the alleged infringer
could file an extraordinary amparo federal appeal before a district court to combat the decision of
IMPI to admit the infringement claim as a result of the recognition of the legal standing of the plaintiff.
It should be mentioned that witness depositions and confessional statements are not allowed
according to the Mexican Industrial Property Law.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Under Mexican Law there are no specific gradations concerning inducement or contributory
infringement as the plaintiff is entitled to credit any and all causes of the claimed infringement
committed by the infringer, which in turn are limited to the conduct described by law only,
specifically article 213 of the MIPL, which does not foresee contributory matters or inducement as
infringing conduct.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Contrary to the practice in the United States and in other jurisdictions, under Mexican Law and
practice, each infringement claim should be directed to only one alleged infringer and as described in
question 5, the conduct foreseen as infringements must be clearly and exclusively established in
article 213 of the MIPL. Where there are several infringers, the patent holder is obliged to file
separate infringement claims against each infringer.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Following the same line of thought, any activities taking place outside Mexican territory should have
a direct impact on any of the conduct foreseen by the Mexican law as an infringement, for example, a
clear example of a cause of patent infringement would be to import a product that is either protected
by a patent or is a result of the use of a procedure that is patented.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Under Mexican law and practice, there are no equivalents when dealing with a patent infringement,
namely, the alleged infringing conduct must conform exactly to the claims contained in the patent title
that is considered as being infringed.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

The MIPL establishes different mechanisms that are similar to what is called discovery in other
countries, as follows:
every person or entity is obliged to provide IMPI with the information and data that the agency
requires in a written and duly notified manner, and failure to comply with this obligation constitutes
an infringement in itself; and
in the course of infringement procedures, IMPI has the legal power to require the counterpart to
provide any evidence that is directly under its control and is related to the case being examined,
under the penalty of being subject to any provisional measures ordered against such a party if it fails
to comply with what it is required to produce or inform.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A typical patent infringement lawsuit could last from 24 to 48 months in the first stage, plus another
24 to 48 months in the following stages (nullity claim appeal and amparo trial), but the time frame
largely depends on the complexity of the matter and the number of parties involved in the process.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Again, it depends on the complexity of the matter, the fees charged by the counsel, the cost involved
in obtaining evidence such as certified copies and translation fees (as all evidence must be submitted
in Spanish), etc. Concerning government fees, those are around US$500, plus other costs such as
certified copies that can vary widely depending on the specific matter.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Any party can opt to file either an administrative reconsideration recourse, which is examined by the
same authority that issued the administrative resolution, or a nullity petition that is tried before the
SEPI-TFJFA. It is worth pointing out that the vast majority (95 per cent) of resolutions to
reconsideration recourses confirm the first resolution issued by IMPI; thus, in most cases it is
preferable to directly file a nullity petition before the TFJFA.
TFJFA resolutions can be challenged via an amparo federal appeal tried before federal circuit courts.
The sentence pertaining to the amparo appeal is final and definitive.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Under Mexican law, the owner of a patent is the rightful owner of a monopoly that is permitted
directly by the Constitution, thus no argument could be successfully produced involving competition
issues. In the same regard, unfair competition is usually construed as the actions performed with the
aim of unlawfully profiting or taking advantage of any right (including a patent), prestige or good
reputation of an actor within the same relevant market, and considering that any legal enforcement
action is an extension of the right holder to actually apply such a right, any action based on such
grounds would not have merits to prosper.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

These are allowed by Mexican law, but are only applicable when conflicting parties have a written
agreement in that sense. In all other cases, both administrative and judicial authorities have the
obligation to resolve the disputes between parties as this is part of the rights granted by the Mexican
Constitution.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Mexican legislation foresees the possibility of protecting any type of invention that is new, the result
of an inventive step and susceptible of industrial application, with some exceptions that cannot be
protected in the country (article 16 of MIPL) and also other matters that are not considered as
inventions in Mexican legislation (article 19 of the MIPL). The list of exceptions and matters not
considered an invention in Mexican legislation are as follows:
exceptions are essentially biological processes for obtaining, reproducing and propagating plants
and animals, biological and genetic material as found in nature, animal breeds, the human body and
the ling matter constituting it and plant varieties; and
not considered as an invention are theoretical or scientific principles, discoveries that consist in
making known or revealing something that already existed in nature even though it was previously
unknown to man, schemes, plans, rules and methods for carrying out mental processes, playing games
or doing business and mathematical methods, computer programs, methods of presenting information,
aesthetic creations and artistic or literary works, methods of surgical, therapeutic or diagnostic
treatment applicable to the human body and to animals and the juxtaposition of known inventions or
mixtures of known products, or alteration of the use, form, dimensions or materials thereof, except
where, in reality, they are so combined or merged that they cannot function separately or where their
characteristic qualities or functions have been so modified as to produce an industrial result or use
not obvious to a person skilled in the art.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Invention made by an employee

If an employee is hired to perform research or work focused on improving proceedings on behalf of
an employer, the property of the inventions created during his or her job pertain to the employer. In

this case inventions have to be created using the employers recourses and during working hours.
If an invention is created by an employee who is not expressly hired to do research and development
for the employer and the invention is created using the employers resources, then the invention will
pertain to the employee, but the employer will have a preferential right to acquire the right to acquire
the property of the invention or the right to use it in the same terms as the employee could offer to a
third party.
Invention made by an independent contractor
The property of the invention will pertain to the inventor, except if, in the agreement entered with the
contractor, there is an express provision to determine that the property of the invention will pertain to
the party that entrusted the invention development.
Multiple inventors
The property of the invention will be split into equal shares among the inventors, except if, through
agreement, they agree to distribute the property among them in a different form.
Joint venture
The parties in the joint venture agreement will have to determine what will happen with the
ownership of patents developed during the term of the business relationship.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Under Mexican law the only cancellation or invalidation grounds other than the ones foreseen in
articles 78 and 79 of MIPL, which are the same as those that deal with the lack of any of the essential
requisites to grant a patent (novelty, inventive step and industrial application). Concerning the
procedural requisites to validly file a cancellation or invalidation action, the applicant must prove
that he or she has a direct and legitimate interest to challenge the validity of the patent. Thus, there is
no provision to file anonymously or without crediting a valid legal interest. In addition to the above,
IMPI can begin an invalidation process ex officio if there are evident and notorious causes that merit
it (a public utility cause, etc), but this is extremely rare and in our experience has not happened within
recent memory.

Similar to other procedures, a typical patent cancellation or invalidation lawsuit could last from 18 to
36 months in the first stage, plus another 24 to 48 months in the following stages (nullity claim appeal
and amparo federal appeal), but the time frame chiefly depends on the complexity of the matter and
the number of parties involved in the process (see question 1). Invalidity claims are tried, just as
infringements, before IMPI. Further appeals to the resolution issued by IMPI can be filed before the
SEPI-TFJFA and, as a last recourse, federal amparo appeals before the federal circuit courts.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

It is a compulsory requirement for obtaining a valid patent in Mexico to comply with absolute novelty
for any kind of invention or design. However, Mexican legislation foresees an exception of novelty
through a prior disclosure of the invention if and when the same is made by the inventor or his or her
successor in title within a term of one year prior to the filing date of the patent application or of the
recognised priority. In order that this novelty exception can be applied in Mexico, it is necessary that,
when filing the patent case, all evidentiary documentation be submitted in the Mexican filing petition
papers.
Additionally, it is important to consider that publications of a pending or granted patent issued by a
foreign patent office cannot be considered as an exception to the novelty requirement and, therefore,
the same will affect or destroy the novelty of an invention.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Mexican legislation considers that the meaning of inventive step is the result of the creative process
that is not obviously deductible from the state of the art by a person skilled in the relevant art. In other
words, the legal standard in Mexico for determining if a patent is protectable in view of any prior art
is novelty, obviousness (result of an inventive activity) and capability of industrial application.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Under Mexican Law there are no unenforceability causes, as the equivalent concepts are what are
called exceptions and defences, which are examined as an integral part of a defence filed against an
infringement claim.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Mexican law provides for prior user defence if an accused infringer has been privately using the
accused method or device prior to the filing date or publication date of the patent. The defence covers
all types of inventions. The defence is limited to uses carried out solely by the prior user and, of
course, it is a matter of proving the fact.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

As previously explained, in order to arrive at a civil claim intended to recover damages and losses,
the patent owner must first file an administrative infringement claim that will produce an infringement
procedure where no damages or losses are examined (in a patent infringement matter the plaintiff is
not able to request damages relief because the law only foresees this procedure as a means to
determine only if there was an infringement or not, leaving damages and losses out of the matter being
tried).
Once the infringement procedure is finished and, ideally, the patent owner has obtained a firm and
definitive resolution of infringement (ie, a resolution obtained after exhausting all of the available
appeals and recourses, including an amparo federal appeal trial), then the patent owner is entitled to
file a completely new and separate procedure before a civil court where only the recovery of
damages and losses is the subject being tried.
This is due to provisions set forth in the last paragraph of article 6-bis of the Commerce Code, which
roughly translated foresees that civil actions that are the provoked by unfair competition acts (patent
infringements are considered unfair competition acts) can only be initiated when there is a firm ruling
in the administrative matter, when this is applicable, this provision having been confirmed and
reinforced by multiple jurisprudences issued by the Mexican Supreme Court and this has resulted in
the particular difficulties of the Mexican legal system.
It is important to point out that statutory damages and loss of profits, would not be less than 40 per
cent of the public selling price of each infringing product from the first date of non-authorised use of
the patent, according to article 221-bis of the Mexican Industrial Property Law.
In a typical patent infringement matter, it may take between seven and 10 years to obtain a definitive
infringement resolution, depending on the complexity of the specific case-matter, and once such a
definitive infringement resolution is issued, the patent owner could have a suitable basis for filing an
action to recover damages and losses. Consequently, not many companies or individuals have the will
or the budget to be involved in such lengthy and costly litigation procedures, which results in being
one of the main reasons causing the absence of cases being tried before higher federal courts
concerning this particular subject.

23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Any patent owner or recorded licensee is legally entitled to file diverse actions in order to stop the
manufacturing, distribution, transportation, importation and sale of an alleged infringing product, by
requesting IMPI to issue a provisional or preliminary administrative order (similar to a preliminary
injunction) intended to immobilise and secure infringing products at the place where such infringing
articles are located (including customs offices in the case of imported items).
Conduct considered as patent infringements are established in article 213 of the MIPL; for instance,
section XII of the said provision establishes that offering for sale or bringing into circulation goods
protected by a patent or by a utility model or industrial design registration, in the knowledge that they
have been manufactured or developed without the consent of the owner of the patent or registration or
without the appropriate licence is an infringement.
Further, provisional measures are set forth in article 199-bis of MIPL, which include the power of
securing (seizing) and immobilising offending products.
In this sense, according to article 199-bis 1 of the MIPL, in order to determine the implementation of
provisional orders, IMPI will require the petitioner to:
demonstrate the corresponding ownership of rights and any of the following conditions:
the existence of a violation of its trademark rights;
that the violation of rights is imminent;
the existence of the possibility of irreparable damage being suffered; and
the existence of a well-founded concern that evidence may be destroyed, concealed, lost or
altered;
post a bond intended to guarantee the possible damages that may be caused by the seizure; and
provide the necessary information for the identification of the infringing goods.
Likewise, the defendant could request the release of the provisional measures by posting a counterbond.
The party requesting the provisional measures is liable for the payment of damages caused to the
person against whom they have been carried out when the final decision declares that there was no
violation nor threat of violation to the complainants rights or when the provisional measures were
requested and the complaint or the trademark infringement action was not filed before the competent
authority or IMPI, regarding the merits of the case, within a period of 20 days counted as from the
execution of the measure, according to article 199-bis 3 of the MIPL.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Part of the provisional measures (similar to the injunctions of other jurisdictions) described above,
include the temporary detention of merchandises that are to be imported at customs offices, and in
order to exert this measures a patent owner must follow the same procedure described above, with

the difference that such measures are to be exerted in a determined customs office.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Administrative procedures are limited to declaring the existence or not of an infringement matter, plus
the imposition of fines as one of the penalties for the infringement, but such procedures do not cover
the possibility of including attorneys fees, as the only way to request the recovery of such fees is to
include them as part of a damages and losses claim.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Mexican law does not make a distinction concerning deliberate or wilful infringers, as the resolution
declaring the infringement only determines if there is an actual infringement. The intent, deliberate or
willing condition of the infringement may only be examined in the arguments produced by the
authority to support any penalty (mainly fines) imposed on the infringer.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

It is important to point out that patent infringements are considered to be ongoing and continued
actions, thus all provisions are drafted in the present time. Considering this, it should be noted that
there is no specific time limit (statute of limitations) concerning the infringement of a patent but there
is a general statute of limitations of two years after the infringement has taken place or the owner was
aware of the infringement, subject to evidence that can support that this general time limit has not
been exceeded.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Marking products is an obligation on the patent holder, which consists in notifying the general public
that the product is under protection of a granted patent, since the articles quoted above establish the
obligation to comply with this requirement in order to enforce preventive measures (such as seizure
of products) and, eventually, be able to start a procedure to claim damages.
On the other hand, in order to provide notice to the public there are two options:

 to mark the product with the patent number or to state there is a pending application related to the
product and providing the application number; and
to inform the public in a recognised newspaper that a product is under protection of a patent or has a
potential right in the case of a pending patent application.
It is important to point out that specific wording is not required to effect proper notice and that it is
only needed to specify that the product is under the protection of a patent and provide the patent
number or mention that the product has a potential right and provide the patent application number.
Finally, it should be noted that false patent marking is an infringement foreseen in article 213 section
II of MIPL.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The only restriction in matters of the patent licence agreement established in the MIPL refers to the
term of the licence. A patent licence cannot be granted by the patent owner for a term longer than the
term of the concerned patents.
Except for the above, the parties can freely agree about all other terms and conditions that will govern
the patent licence and the business relationship between licensor and licensee.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

If, without exiting justified reasons, an invention is not in use in Mexico after three years from the
granting date of the patent protecting the invention or four years from the filing date of the
corresponding patent application, a third party with legitimate interest in exploiting the invention and
having sufficient technical and economical capabilities will have the right to initiate a proceeding
before IMPI for obtaining a compulsory licence to enable it to use the invention in Mexico.
A compulsory licence is not granted automatically by IMPI by just showing the lack of use of the
invention. It is necessary to initiate a formal proceeding before IMPI in which the patent owner will
have the right to defend its interests.
Once IMPI has served copy of the compulsory licence request to the patent owner, it will have the
right to initiate the use of the patent in Mexico during the year from the date of reception of the
request. In the event the use of the patent is not initiated during the mentioned one-year term, IMPI
will summon the concerned parties to a hearing in which it will determine whether the compulsory
licence should be granted and, in such a case, the amount of royalties to be paid to the patent owner
for the use of the invention in Mexico.
If, within a term of two years of the granting of a compulsory licence, IMPI determines that the use of
the invention by the licensee that has obtained the compulsory licence or by the patent owner does not

remedy the lack of use in Mexico, it may declare the cancellation of the patent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Concerning the prosecution process of a patent application in Mexico, the application is divided into
five stages, which are:
the filing of the patent application;
the development of the substantial or formal examination by the patent office (this stage normally
occurs between the three and six months from the Mexican filing date);
the publication of the patent application (the publication of a patent application should occur 18
months from the Mexican filing date or from its recognised priority (in PCT cases the publication
usually occurs once the formal examination has already finished, since the 18 months should be
counted as from the international filing date);
the development of the technical or in-depth examination (this stage normally starts between twoand-a-half to three years from the Mexican filing date); and
the final resolution on the acceptance or refusal on the granting of the patent (this last stage normally
occurs between three and four years).
An estimate of the involved fees from the filing date until the granting of a patent application in
Mexico is about US$6,000, including filing, prosecution and granting of the same, and will depend on
several aspects such as the size of the specification text, number of official actions, etc.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The patent office has a procedure to expedite patent prosecution of pending patent applications and
this is a programme involving other foreign patent offices, known as Patent Prosecution Highway
(PPH). At this time, the Mexican patent office has signed up to PPHs programme with the Chinese
patent office, the Japanese patent office, the Korean patent office, the Spanish patent office and the
United States patent office. These PPH programmes have proved to be a success in pending Mexican
patent applications since the prosecution time has been reduced considerably up to around one month
when a request is made at the Mexican patent office.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The specification text of a patent application that is being filed before the patent office must include a
detailed description of the invention, which must be sufficiently clear and complete to be fully
understood and, where appropriate, to serve as a guide for a person with average skill in the art to
make it. It also must mention the best method known to the applicant for carrying out the invention
when this is not clear from the description thereof. It is also necessary to include, when necessary, a
set of drawings for the better understanding of the description, sequence listings in the case of genetic
material, a copy of the deposit of biological material (microorganisms, cells, fungi, plants, etc), a set
of claims that must be clear and concise and may not exceed the contents of the description and an
abstract of the invention, which shall serve solely for the publication thereof and as an element of
technical information.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

In reference to prior art disclosure obligations, it should be noted that Mexican legislation does not
foresee a duty of the inventor to disclose prior art affecting his or her invention to the patent office as
in other countries, such as the United States.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Mexican legislation does not accept the filing of additional or new matter different from that
originally sought in the specification text of a pending patent application, either by submitting a new
set of claims in the corresponding patent application or by filing a divisional patent application with
a new set of claims. In this respect, it is important to consider that the only amendments that can be
done in a pending Mexican patent application or when filing a divisional case, will refer to a set of
claims that does not include new matter as, otherwise, such matter will be objected by the patent
office.
However, if the set of claims to be submitted in either a pending patent application or when filing a
divisional case only include matter that was originally claimed and described in the specification text
of the former patent application, such a set of claims will be acceptable.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes, it is possible to do so before the SEPI-TFJFA (see questions 1, 2, 12 and 17).

37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Article 52-bis of the MIPL provides a mechanism for third parties submitting information before the
patent office in order to make the examiner aware of relevant prior art or subject matter that may not
be within patentability requirements. The information is solely permitted to be entered into the
examination process and the examiner will have the final decision on the matter.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

There is no provision in Mexican law to resolve such a dispute, as the only procedures available are
post concession, as discussed previously.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

There is no provision in Mexican Patent Law for re-examining or for actually revoking a patent. The
patent office only provides a procedure for conducting a cancellation action against a patent. Such
action must be requested by a third party with legal interest.
A court may not amend the patent claims during a lawsuit; however, partial nullity is contemplated in
Mexican law and, therefore, where partial nullity of a patent is determined, the nullified claims will
be omitted from the patent.
40 Patent duration

How is the duration of patent protection determined?

The validity or patent duration of a patent of invention in Mexico is 20 years counted as from the
Mexican filing date if and when the annuity payment (maintenance fees) are effected in proper time. In
PCT cases, the 20 years will be counted from the PCTs international filing date.

Update and trends

Owing to the ongoing (as of January 2015) negotiations of the Trans-Pacific Partnership (TPP) in
which Mexico has been actively participating, any relevant trends concerning Mexican Patent Law
will surely be affected by the results of such negotiations ,which are expected to contain provisions
concerning patents and other IP rights. Thus we anticipate that the TPP could affect current Mexican
Patent Law in such a manner that domestic IP law would probably have to be amended.

Eugenio Prez

eugenioperez@uhthoff.com.mx

Jos Luis Ramos-Zurita

jlramos@uhthoff.com.mx

Hamburgo 260
Col Jurez
Mexico City 06600
Mexico

Tel: +52 55 5533 5060

Fax: +52 55 5208 8387
mailbox@uhthoff.com.mx
www.uhthoff.com.mx

Nigeria
Aderonke Alex-Adedipe
Strachan Partners
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Enforcement of patent rights against an infringer is achieved by bringing an action for infringement or
nullification of patent at the Federal High Court (the Court), which under section 251(1)(f) of the
1999 Constitution of Nigeria has exclusive and original jurisdiction over patents. There are no
specialised courts for patent infringement actions; the jurisdiction of the Court is original and
exclusive. However, section 26(2) of the Patents & Designs Act 1971 (the Act) and Order 53, Rule
11 of the Federal High Court Rules 2009 (the Rules) state that the Court that is hearing the proceeding
may sit with and be advised by scientific advisers who have expert knowledge of the subject matter
of the proceedings.
2 Trial format and timing

What is the format of a patent infringement trial?

The format of a patent infringement trial is contained in the Rules. Order 53, Rule 10 provides that an
action for patent infringement is commenced by a writ of summons. The Rules further provide, inter
alia, that before a writ is issued, it shall be accompanied by a statement of claim and copies of
documents to be tendered as evidence. The trial proper shall not commence until either of the parties,
within a period of one month from the last pleading, has taken out a summons for directions as to the
following:
services of further pleadings or particulars;
discovery of documents, making of admissions and service of interrogatories and answers thereto;
matters related to taking expert knowledge by affidavit;
service of particulars of experiments proposed and facts to be established thereby;
making of experiments, tests, inspections or results; and
hearing of preliminary questions and issues.
Trial commences with the examination-in-chief of the plaintiffs witness followed by crossexamination of the said witness by the defendant, and then re-examination, if any, by the plaintiff
before he or she closes the case. The defendants case also follows the same pattern. After the

conclusion of both parties cases their final addresses are made, and thereafter judgment delivered.
Section 26(2) of the Act and Order 53, Rule 11 empowers the Court to obtain advice from experts,
while Order 53, Rule 10(3)(e) empowers parties to provide expert evidence by way of affidavit.
In Nigeria, the judge is both a judge of law and of fact, and depending on the court adjudicating upon
a matter, it could be presided over by a single judge or by a panel of judges.
The typical time frame within which a patent infringement trial can be concluded is two to three years
or more.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The rule of evidence applicable is that a person who asserts must prove. Thus the burden is on the
plaintiff to prove an infringement of his or her patent rights. Thereafter the burden shifts to the
defendant to disprove and the standard in a civil matter is proof on the balance of probabilities.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Section 25(2) of the Act provides that a patent infringement is actionable at the suit of the patentee.
Section 32(1) defines a patentee as a person to whom a patent has been granted. Section 25(4) also
empowers a licensee to bring an action where the licensor unreasonably refuses or neglects to
institute proceedings.
An infringer, on the other hand, can bring a lawsuit to obtain a judicial ruling or declaration if the
patent is not a patentable invention by virtue of section 1 of the Act, if the description of the invention
or the claim does not conform with section 3(2) of the Act (ie, the description or claim made upon the
application for patent) or if there has been an earlier grant of a patent for the same invention or an
application benefiting from an earlier foreign priority.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Section 25 of the Act defines infringement as the doing of an act or inducing another to do an act that
is reserved to the patentee. In essence, inducement attracts equal liability with direct infringement.
Multiple parties cannot be jointly liable for infringement if each practises only some of the elements
of a patent claim, unless it can be established that the parties acted in collusion. A party can be liable
only for his or her acts of infringement of the claim.

6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit. Order 9, Rule 5 of the Federal High
Court (Civil Procedure) Rules 2009 provides for such joining on the basis that the plaintiff has a right
to relief against such persons, jointly, severally or alternatively and that judgment may be given
according to their respective liabilities without any amendment (please note that the difference
between the answers to questions 5 and 6 is that the former covers joint liability, while the latter
covers a procedural inquiry). In a strict sense the answer is no, because the causes of action would be
completely separate and independent of one another, but because a party can seek to consolidate
separate suits against separate defendants, it would appear it may be indirectly possible to bring a
lawsuit against multiple defendants for separate acts of infringing separate patents once there is a
connecting factor in law or fact, or causes of action arise from the same transaction.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Nigeria can support a charge of patent infringement once the patent
that is alleged to have been infringed is a registered Nigerian patent.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Section 3(1)(a)(ii) and (iii), respectively, of the Act provide that patent applications shall contain a
description of the relevant invention with any appropriate plans and drawings, as well as a claim or
claims. Section 3(2) of the Act further provides that 3(1)(a)(iii) shall define the protection sought and
shall not go beyond the limits of the description.
Section 6(2) of the Act provides that the scope of protection conferred by a patent shall be
determined by the terms of claims, and the description (and the plans and drawings, if any) included
in the patent shall be used to interpret the claims.
The question of whether equivalents of the claimed subject matter not literally covered by the claims
are liable for infringement would depend on the interpretation the court applies to the abovementioned provisions.
In Nigeria, this issue has been subject of little judicial determination. However, in the English case
Cantic Components v Hill & Smith [1982] RPC 183, which is of persuasive authority, Lord Diplock
held that a purposive rather than literal approach be applied to the interpretation of patent
specifications and claims, and that would mean that in England equivalents could be liable for
infringement where it was intended by the patentee that claims cover such equivalents.

9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

The Rules provide for the various ways of obtaining evidence from an adverse party or third party,
namely Anton Piller orders (basically search and seizure orders), Mareva injunctive orders (ie,
orders to prevent an infringing party from removing the infringing subject matter from the jurisdiction
of the court) and subpoenas to testify or to produce documents. Evidence may be obtained from
witnesses abroad where leave of the court is granted to examine such witnesses from a country with
which Nigeria has entered into a convention that allows reciprocal examination of witnesses.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

At the trial court, the typical time frame for a patent infringement lawsuit is two to three years, while
at the appeal court (depending on whether the appeal is taken to the Supreme Court) it may last from
five to six years or more.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs are relative to professional services employed, taking into account the prominence of the firm
employed and seniority of counsel handling the matter amongst other factors.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The right of appeal is a constitutional right inuring to a party interested in a suit and is made in the
first instance to the Court of Appeal and thereafter to the Supreme Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

At present, Nigeria has no competition laws, and a patentee has the right to enforce a patent, subject
to the statutory rule on compulsory licensing, by preventing its importation, manufacture, stocking for
sale or use and sale or use for a period of 20 years.

14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution techniques are widely used in Nigeria in most commercial disputes.
However, the Arbitration and Conciliation Act (the statute that sets out the law of arbitration in
Nigeria) only makes a mandatory referral to arbitration subject to parties prior agreement and upon
the occurrence of certain procedural incidents. There are also various arbitral bodies that provide
arbitration services to disputing parties like the Lagos State Multi-door Court House and the Lagos
Court of Arbitration.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Section 1(1) of the Act specifies the requirements for patentability, namely, novelty, inventiveness
and applicability to an industrial process. Sections 4 and 5 provide for non-patentable inventions,
namely plant or animal varieties, or biological processes for their manufacture (other than
microbiological processes and products derived therefrom), inventions contrary to public order and
morality (which characterisation does not necessarily flow from the fact that the exploitation of such
invention is prohibited) and principles and discoveries of a scientific nature.
Therefore, in theory, where software, business methods and medical procedures can meet the triple
criteria mentioned above and do not offend prohibited inventions, a patent can be rightly obtained.
This position is further supported by the fact that patent examination is made only as to compliance
with formalities for registration, namely name and address of applicant, payment of registration fees,
list of claims, description with plans and drawings of invention and not as to substance of the
invention, and the grant of a patent in Nigeria is a grant at the risk of the patentee without the
guarantee of its validity. In practice, applications for the above-mentioned inventions are dealt with
by the Registry on a case-by-case basis with no central policy.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Section 2(4) of the Act provides that the right to patent inventions made by an employee or
independent contractor is with the employer or the person who commissioned the work, while in
cases of multiple inventors, section 24(1) of the Act provides, by implication, that ownership is joint.
Patent ownership is officially recorded by registration under the Act and the consequent issue of
document of patent. Transfer is effected by executing an instrument of transfer and registering (this

secures interest against third parties) same under the Act, upon the payment of a fee.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Section 9 of the Act provides that a patent can be invalidated on the grounds that it does not conform
with the criteria of novelty, inventiveness and applicability to an industrial process, if the description
or claim does not disclose the invention in a manner sufficiently clear and complete for a person
skilled in the art to which it relates to work it and if the same invention is already patented in Nigeria,
either by direct application or claim for foreign priority. Any person, including a public officer acting
in the exercise of his or her function, can apply to the court to declare a patent null and void. The
application may be made upon any of the following three grounds:
that the subject of the patent is not patentable (ie, that the invention is not new, does not result from
inventive activity and is not capable of industrial application);
that the description of the invention or claim is not clear or complete for the purpose of reproduction
to a person skilled in the art of the field of knowledge to which the invention relates; and
that a patent has been granted in Nigeria in respect of the same invention.
Under the Act, the Court is vested with jurisdiction to hear and dispose of legal proceedings relating
to patents.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Novelty must be absolute and a sine qua non of patentability. Section 1(1) of the Act defines novelty
as an invention that does not form part of or is outside the prior art, and even when an invention is an
improvement of a previous one it must still satisfy these criteria.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Section 1(2)(b) of the Act states the legal standard for inventiveness to be that the method,
application, combination of methods, the product or industrial result must not follow obviously from
the state of the art.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

The misconduct of an inventor will not render a patent unenforceable, except where the inventor has
not paid the annual renewal fee and the patent lapses.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Conceptually speaking, the fact that the date relates not to the date of the grant of letters of patent but
to the date of filing of the application would not mean that acts covered by patent carried out before
issue of the letters of patent are infringing. The better view is that the right to control and sue upon
acts covered by patent can only arise after the letters of patent have been issued, namely, after the
patent has been registered. It would appear that same defence would be applicable even in cases
where commercial usage has occurred.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The monetary remedies available against a patent infringer are damages and account of profit.
Damages may be general, special, exemplary or punitive, or nominal.
General damages are losses that flow naturally from the defendants conduct and its quantum need not
be pleaded as it is generally presumed by law. However, special damages must be specifically
pleaded. Exemplary or punitive damages are not intended to compensate the plaintiff but to punish the
defendant and to deter him or her from similar behaviour in the future. (Masterpiece Investments &
Another v Worldwide Business Media & Others (1997) Federal High Court Law Reports (FHCLR)
496). Nominal damages are awarded where the plaintiff establishes a violation of his or her rights but
is unable to show that he or she suffered any actual damage as a result of the defendants wrongdoing.
Account of profit, on the other hand, is a remedy by which the defendant accounts for the profits made
as a result of his or her infringement of the plaintiffs patent.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Preliminary injunctions are granted under order 26 of the Federal High Court Rules and in cases
where there is a real urgency. Further, the courts have also held, as in the case of Adenuga v
Odumeru [2002] 1 NWLR, part 749, page 433, that the circumstances must be such that a delay in
restraining the other party may cause irreparable damage to the applicant.
Permanent injunctions, on the other hand, as held in the case of United Bank for Africa Plc v Okeke
(2004) 7 NWLR, part 872, page 393, can only be granted after the action has been concluded and
when the applicant has, among other matters, proved his or her case and judgment has been granted in
his or her favour and there still exists a danger of continuation of the act sought to be restrained.
The injunction is effective against the infringers suppliers and customers when it is sought against the
infringer in a class action when he or she is acting in his or her capacity and on behalf of suppliers
and customers. The case of Pfizer v Polyking Pharmaceuticals [1992] FHCLR 246 was a class
action suit against multiple patent infringers.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

It is possible to block the importation of infringing products into Nigeria. Counterfeit and pirated
goods are included in the list of goods that are absolutely prohibited from being imported into
Nigeria.
In Nigeria, the Nigeria Customs Service operates a destination inspection regime where goods are
inspected at the ports before being allowed to enter the country. The Nigeria Customs Service is
empowered to seize goods that qualify as counterfeit or pirated versions of patented products. In most
cases, cooperation of the proprietary owners is usually required to ensure possibility of detection.
While there is no specific proceeding or tribunal to regulate importation of infringing products, a
complaint lodged with the Nigeria Customs Service and other regulatory agencies like the Standards
Organisation of Nigeria (SON) or the National Agency for Food, Drugs Administration and Control
(NAFDAC), which have representatives at the Nigerian ports dealing with the importation of such
products into the country, will lead to the seizure and destruction of such goods.
There are, however, default mechanisms to combat importation of infringing products and these arise
from procedures established by agencies like SON and NAFDAC. SON has a procedure called
Standards Organisation of Nigeria Compliance Assessment Programme (SONCAP). It is a two-stage
procedure of product and shipment certification that is aimed at ensuring that certain products
imported into Nigeria have passed through government-approved testing and meet certain standards.
This means that certain goods imported into Nigeria have to be certified by SON country offices
outside Nigeria before being cleared by SON for shipment or they will be liable to seizure at the port
of entry.
NAFDAC is responsible for the administration and control of exportation, importation,
advertisement, sale and distribution of all regulated products in Nigeria. Regulated products include
processed food, drugs, cosmetics, medical devices, packaged water, chemicals and detergents.
Agents of foreign manufactures are expected to register with NAFDAC all regulated products
intended for the Nigerian market. An application for the registration of processed food must be made
by the manufacturer. The manufacturer must show evidence that he or she is licensed to manufacture

the products for sale in the country of origin. Such evidence must be supplied by the competent health
authority of the country of manufacture and must be authenticated by the Nigerian embassy in that
country.
It is unlawful to import into Nigeria any regulated product not duly registered by NAFDAC under the
Food, Drugs and Related Products (Registration) Act No. 20 of 1999. In the event of any violation in
this regard, the consignment of the unregistered product would be cleared from the ports to a bonded
warehouse at the expense of the importer. Thereafter the importer is prosecuted and the products
forfeited to the government with any assets or property obtained directly or indirectly from the
commission of the offence.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Order 25, Rule 2 of the Rules provides for the right to costs following the event of success at the trial
of the action, and may rightly include attorneys fees (as the provision gives a right to recover
expenses), if claimed by the successful litigant in the relief sought from the court. The award of costs
is, however, within the discretion of the court.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Infringement of a patent is a strict liability wrongdoing and, therefore, the state of mind of the
infringer is irrelevant to the assumption of liability. In the case of Agbonrofo v Grain Haulage and
Transport [1998] FHCLR 236 at p. 253, the Hon Justice Bello held that:
It is not necessary for infringement that there should have been actual copying of the
patentees device or the patented specification. If the alleged infringement is substantially
what is claimed although arrived at quite independently, there will be infringement. So even
if the defendant herein independently, without the knowledge of the existence of the plaintiffs
invention manufactured a plastic boiler whose boiling mechanism consists of a component
that is perforated on mounted stainless steel and it functions as an out of water in activity
and water-activated boiler as in the Defendants MR HOT POT, it will still be liable to the
plaintiff for infringement of his patent, because these are the key components of his invention
which are covered by his claim [].
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

There is no time limit for seeking patent infringement remedies.

28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There are no statutory requirements in Nigeria for the marking of patented products and the failure to
mark a patent will not affect the rights of the patent holder. The law does not provide any
consequences for false patent marking as there is no requirement for the marking of patented products.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Generally there are no restrictions on the terms of licence, except in certain situations. Section 23(1)
(b) of the Act provides that, subject to parties agreement, the licensee is entitled to the same rights as
the patent holder. Section 23(4)(b)(c) of the Act, however, limits the right of the licensee to further
grant licences.
Section 23(3) of the Act provides that where the terms are terms that impose restrictions, commercial
and industrial, that do not derive from the rights granted by the patent or are unnecessary for
safeguarding those rights, such terms shall be null and void. Licensing agreements in Nigeria are,
however, also subject to the National Office of Technology Acquisition and Promotion Act, which
provides, among other things, that technology to be licensed be commensurate with consideration, that
there is no unnecessary interference by the licensor and that there are no provisions in the licence
agreement prohibiting use of complementary technologies or limitation on research and development
by the licensee.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Mechanisms for creating compulsory licences are statutory. Section 8 of Part I of the first schedule to
the Act provides that the parties agreement determines the terms, but where they fail to agree, the
Court shall determine the terms of the licence.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It generally takes one to two years to obtain a patent in Nigeria. It Is however not uncommon for a
patent application to be granted after a period of two (2) years or more. The official fees charged by
the Nigerian Trademarks, Patents and Designs Registry are as follows:
patent forms are 5,000 naira;
the registration of patent and certificate is 25,000 naira;
the annual renewal of patents is 8,000 naira; and
the penalty for late renewal is 8,000 naira.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are no expedited procedures for patent prosecution.

33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Rule 12 of the Patent Rules made pursuant to the Act provides that the specification shall describe the
relevant invention in a manner sufficiently clear and complete for the invention to be put into effect by
a person skilled in the art or field of knowledge to which the invention relates and that the
specification must include the claim or claims and any appropriate plans and drawings. The claim
must also define the protection sought and must not go beyond the limits of the description. There are
no particular guidelines to follow, and in order to avoid any pitfalls, the correct and full description
of the invention and the operation or use of the invention as contemplated by the inventor must be
disclosed.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no requirement under the Act for an inventor to disclose prior art. This fact is clearly
highlighted by section 4(2)(c), which provides that the grant of a patent must be without examination
of the question whether a prior application or application benefiting from a foreign priority has been
made in Nigeria in respect of that invention and whether a patent has been granted as a result of such
application.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Strictly speaking, the Act does not provide for later applications for additional claims disclosed in
the original application. Rather, it provides for later applications for additional inventions disclosed
in the original application.
Section 3(3) of the Act provides that an application for a patent shall relate to one invention and can
include multiple claims for either products or processes derivable from it.
Section 4(1)(b) of the Act provides that the registrar of patents shall, upon examination of an
application and if the application relates to more than one invention, invite the applicant to restrict his
or her application to one invention and, within three months, file further applications to cover the
other inventions disclosed, which shall later benefit from the date of the original application or date
of foreign priority.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible through section 28(5) of the Act, which provides for a right of appeal against the
decision of the registrar of patents and designs. This right of appeal lies to the Court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no mechanism to oppose the grant of a patent; the Act only envisages post-grant procedures
for nullification of a patent, which can be obtained by a petition brought before the Court on any of the
following grounds:
lack of novelty, inventiveness or inapplicability to an industrial process;
non-conformity of description of invention or claim with description in application; or
the existence of a previous patent for the same invention.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Priority disputes are not resolvable by the patents registry. Priority can only be enforced via
nullification proceedings and upon a determination made by the Court. Patents granted under the Act
are granted without any examination as to the question of whether a prior application or foreign
priority grant has been made with regard to the same patent. Priority is based on the date of
application.

39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The patents registry does not provide procedures for modifying and re-examining a patent.
Examination of applications under the Act entails a uniform process of considering the form of the
application alone and does not delve into the substance of the invention, even though clerical errors in
entries in the patent register can be corrected. Revoking a patent cannot be effected by the patents
registry as a patent can only be revoked (ie, nullified) by an order of the Court. However, where
annual renewal fees for a patent remain unpaid for a period of six months after they are due, section 7
of the Act provides it shall lapse, and such a lapse must be registered and notified.
Under the Act and the Federal High Court Rules, the court can make declarations on a patent claim;
for example, in an action for infringement of a patent, the court can declare that the alleged
infringement is not covered by the claims of the patent. This exercise, however, requires scientific
examination into the substance of the invention, and to this end the court is empowered to, among
other matters, sit with experts and give directions as to the making of tests and experiments in any
particular area of knowledge.
40 Patent duration

How is the duration of patent protection determined?

Patent protection is determined from the date of application, namely, by direct application. In the case
of foreign priority application, duration will be from the date of the foreign application and the term
is for 20 years.

Update and trends

With the recent implementation of the online registration system at the Intellectual Property Registry
in Nigeria, although not without its challenges, procedures for filing patent applications are now
enhanced and promote efficiency as they are less time-consuming and reduce bureaucracy and human
error, which effectively result in delays.

Aderonke Alex-Adedipe

aderonke.alex-adedipe@strachanpartners.com

5th Floor, Akuro House

24 Campbell Street
Lagos Island
Lagos
Nigeria

Tel: +234 1 270 0721 / 270 0722 / 872 0107

Fax: +234 1 263 7277
www.strachanpartners.com

Pakistan
Ali Kabir Shah, Hanya Haroon and Sana Javed
Ali & Associates
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Protection against patent infringement can be implemented by legal actions in the shape of civil,
administration or criminal proceedings.
According to section 60 of Patent Ordinance 2000, a patentee may institute a suit in a district court
with the required jurisdiction, against any person who makes, sells or uses the patented invention
without acquiring the required licence or permission or tries to imitate or counterfeits the patented
invention. At present, there are no specialised courts to deal with patent infringement, however, under
section 16 of the IPO 2012, the federal government via a notification in the Official Gazette
established intellectual property tribunals.
A court has the requisite authority to order provisional measures, inaudita altera parte where
appropriate; this relief is available where delay might cause irreparable harm to the rightful holder,
or where there is demonstrable risk of evidence being destroyed.
Furthermore, there are administrative measures available to give redress to the aggrieved party such
as one provided in the Customs Act 1969 section 15, which mentions that goods involving
infringement within the meaning of Patent Ordinance 2000 shall not be imported into or exported out
of Pakistan, and if there is such an attempt, they shall be seized, confiscated or detained by the
Assistant Collector of Customs. Moreover, another administrative measure available to the parties in
patent infringement suits is arbitration, where in case of differences the parties may seek to resolve
the dispute by arbitration under the Arbitration Act of 1940.
2 Trial format and timing

What is the format of a patent infringement trial?

Patent infringement trials are civil proceedings hence, according to the Civil Procedure Code (CPC),
1908 section 26, the suit shall be instituted by the presentation of a plaint which shall be accepted by
the presiding officer. Thereafter a summons may be issued to the defendant to appear and answer the
claim. The court may make an order as necessary or reasonable for answering or interrogation of the
admission of documents and facts, production and return of documents or any other material as

producible evidence. Moreover, the court may order any fact to be proved by affidavit and award an
interim relief as claimed by the plaintiff. After the case has been heard the court shall pronounce
judgment, and on such judgment decree shall follow. Juries are not a part of the civil suit. A typical
suit may last for six months to five years.
Furthermore, according to section 68 of the Patent Ordinance the court has the power to appoint an
independent scientific adviser to assist the court or to inquire and report upon any question of fact or
opinion, who shall make a conclusive report upon the matter at hand.
Moreover, according to section 104 of the Patent Ordinance 2000, the High Court has the power to
make rules consistent with the ordinance as to the conduct and procedure in respect of all the
proceedings before it.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

According to Qanun-e-Shahadat Order 1984, section 117 the burden of proof with regard to
infringement, invalidity and unenforceability lies with the plaintiff.
According to section 61 (2) (c) of the Patent Ordinance 2000 the court shall have the authority to
require the applicant to provide any reasonably available evidence to satisfy it with a sufficient
degree of certainty that the applicant is the right holder and that the applicants right is being infringed
or that such infringement is imminent, and to order the applicant to provide assurance sufficient to
protect the defendant and to prevent abuse. Moreover, the court may require the applicant to supply
other information necessary for identification of the goods concerned.
Furthermore, if a patent is being infringed it is invalid and therefore unenforceable. The burden of
proof for establishing infringement, invalidity and unenforceability is a civil standard of proof, which
is on balance of probability.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Any natural or judicial person including an association or body of individuals, whether incorporated
or not, can sue for patent infringement provided that person is a valid patent holder. Such a person
shall be referred to as a patentee which term in relation to a patent may include one who has been
entered on the Register as the grantee or proprietor of the patent and it also includes any subsequent
assignee or successor-in-interest or a patent recordal of whose name on the Register is pending with
the controller.
The accused infringer has the legal right and remedy to bring a law suit and obtaining a judicial ruling
in his favour. If a person who is entitled or interested in patent threatens any person for infringing a
patent, a person who is innocent and aggrieved by the said act may bring a proceeding for groundless
threat of infringement according to section 66 of the Patent Ordinance 2000.

5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

A person can be liable for contributory infringement of a patent if he or she offers to sell or import a
component of a patented invention or a combination or a composition of the material which belongs to
a patented process or which constitutes a significant or material part of the patented invention.
Therefore civil liability for contributory infringement exists whereby an injunction or interlocutory
injunction may be directed towards a person contributing to an infringement.
Moreover, it is possible for multiple parties to be liable for infringement of patent if each of them
practise some or single steps or elements of a patented invention, but together they practise all the
elements. Furthermore, parties may also be liable for infringement of patent if they infringe some
steps of the patented invention but not the patent as a whole.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

According to the Code of Civil Procedure, 1908 Order 1 section 3, persons or parties may be joined
as defendants to a single suit if any right to relief or in respect of or acts arising out of the same cause
of action or series of acts or transactions is alleged to exist against someone, whether jointly
severally, or in the alternative, where if separate suits were brought against such person, common
question of law or fact would arise. Moreover, it is essential that all the defendants must be infringers
of the same patent in question for them to be a joint party.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Patents are a territorial right, that is, they are exclusive rights which are only applicable in the country
or the region in which the patent has been filed and granted. Infringement activities that happen
outside the region or jurisdiction cannot be penalised, however the patentee can make an effort to stop
others from making or selling it oversees which can be achieved if the patent coverage is provided in
the foreign country by filing a patent application in each of the countries separately which shall be
subsequently examined and issued. However, if the infringed product enters the territories of the
patented product a valid legal action can be bought against it.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Equivalents in the patent system allow the court to hold a party liable for patent infringement even
though the infringing device or the process does not fall within the literal scope of the patented claim,
but it is equivalent to the claimed invention. There is no statutory provision or a judicial ruling which
governs the scope of infringement by equivalents. However, the courts are welcoming to new
terminologies and doctrines as they come in the Patent Law of Pakistan as it is in the developmental
stages.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

To obtain evidence in a patent infringement suit, once the suit has been filed in the court at the first
hearing the court shall ascertain from each party whether they admit or deny the allegations of the
plaint. The court may with the consent of parties conduct examination of the witnesses and admit
documents. According to CPC 1908, the court may order the production of documents in the parties
possession relating to the matter in the suit henceforth; documentary evidence of every description in
the possession of the parties which they intend to rely on should be provided to the court. Apart from
the documentary evidence, the court may order the parties to the suit to give evidence or produce
documents in their possession. Moreover, the court may at any stage of the suit inspect any property
or thing concerning which any question may arise.
In instances where the party resides outside the country the court may issue a commission or a letter
of request for examination for the party who is unable to attend the court for given reasons. Therefore
the report of the commission and the evidence taken by him or her shall form an integral part of the
evidential record.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

There is no fixed time frame for an infringement or dilution or related actions for cases being dealt
with at the trial court level as much depends on a case-by-case basis. A preliminary injunction takes
approximately two to six months, whereas the finality of the lawsuit is attained within two to three
years. The time frame for an appeal against an order against the preliminary or permanent injunction
is not fixed but may take around the same, two to three-year period.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The typical range of costs of a patent infringement lawsuit before trial, during trial or for an appeal
depends on the nature of the case and may range from US$5,000 to US$25,000 or more. Technically,

a successful plaintiff may be able to recover reasonable costs depending on the courts assessment of
the matter and the losses suffered by the successful plaintiff. However, Pakistani courts are extremely
reticent in granting costs or pecuniary relief in intellectual property (IP) matters; in rare cases where
damages or costs have been granted, they are limited to a small fraction of the cost.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

As per the Patent Ordinance 2000, a suit for infringement of a patent shall be instituted in a district
court exercising original jurisdiction.
Any judgment, decree or order passed by the district court is appealable before the High Court. If the
appeal is filed against an order, the appeal will be heard by a single judge, but if the appeal
challenges the judgment or decree passed by the district it shall be heard by a division bench of the
High Court.
Subject to the provisions of the Constitution of Pakistan, any judgment, decree or order passed by the
High Court can be appealed before the Supreme Court of Pakistan, provided special leave to appeal
is granted by the Supreme Court and any decision on such appeal by the Supreme Court is final.
An important exception to the above is the unique jurisdiction of the High Court of Sindh at Karachi.
Owing to the status of Karachi as the countrys commercial hub, civil suits exceeding the value of
US$150,000, including patent infringement proceedings, can be filed directly before the single judge
of the High Court of Sindh exercising original jurisdiction. Any order, judgment or decree passed by
a single judge shall be appealable before a division bench of the High Court comprising two judges.
Any order or judgment of decree shall be appealable before the Supreme Court of Pakistan in the
same manner as described earlier.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Patent rights are considered valid exclusive rights and the enforcement of these rights and the
subsequent exclusion of all other parties from using a valid invention would not give rise to
competition violation, unless the patent owner has obtained the patent through unlawful means. The
unlawful measures may include the employment of patenting strategies the sole purpose of which is to
unjustly extend the term of a patent or threaten others with litigation. It may be noted that this issue has
thus far not been tackled by the courts or by the Competition Commission of Pakistan, which is the
countrys regulatory body for competition matters.
In addition to the above, there are certain limitations contained within patent law that permit the
federal government to disentitle a patent owner from exercising exclusivity. These include fair use
provisions (use for research, use by government, etc) as well as provisions on compulsory licensing
that compel a patent owner to compulsorily license the patent to third parties.

14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

ADR techniques such as mediation and arbitration are available in Pakistan. Although not commonly
used by parties, in some cases it is cheaper and a relatively quicker way than using court proceedings
and is therefore encouraged. The decisions for settlements are binding upon the parties and cannot be
challenged. However, enforcement of the settlement is, on some occasions, problematic if one of the
parties refuses to accept the decision of the mediator or the arbitrator for settlement. The court would
then have to be approached to enforce the decision of the arbitrator, which can sometimes be a
lengthy process.
There is no compulsion on the parties to enter into mediation. However if a pre-existing agreement
between the parties in a dispute stipulates that the matter is to be referred to arbitration, then the
courts are expected to refer the matter to arbitration rather than allowing civil proceedings to be
entertained in the court.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The Patents Ordinance 2000 marks a very clear distinction between patentable and unpatentable
inventions in Pakistan. The provisions governing patentable inventions under section 7(1) set criteria
for an invention to be evaluated against which require that the invention: be new; involve an inventive
step; is capable of industrial application; and should not be contrary to law or morality.
While section 7(1) provides a fairly broad platform for patentable inventions, section 7(2) draws
clear limitations elucidating the unpatentable inventions and includes the following:
discoveries of laws of nature;
productions;
method of producing sound;
computer programs (software);
perpetual motion machines;
a method of writing music;
a special name for an article;
a trademark;
the discovery of new properties of a known substance;
a system of alphabet;
chemical and pharmaceutical products (till 2004);
a system of shorthand;
literary, dramatic, musical and artistic works;
doctors prescriptions and patent medicines;
a system of indexing;

 mere charts, diagrams, or printed sheets;

a surgical operation;
articles harmful to public heath and their prosperity;
treatment of human beings, animals, flowers and plants; and
purely scientific and mathematical formulae and principles.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Patents form an integral part of a business assets and the ownership of patents is a crucial factor as it
is a product of massive investment. Matters pertaining to the ownership of patents are governed by
sections 11 and 12 of the Patents Ordinance 2000 which states that an application can be filed by any
persons, whether alone or jointly with any other persons, and hence an independent contractor,
multiple inventors and a joint venture arrangement can apply for the ownership of patent alone or
jointly.
As for an invention made by a company employee, section 12 of the Patents Ordinance 2000 states
that the right to the patent for an invention made by an employee during the course of his or her
employment in the absence of contractual obligation to the contrary belongs to the inventor unless the
employer proves that the invention could not have been made without the use of employers facilities,
equipment and the like necessary for the invention. It further goes on to state that an invention of
exceptional economic value shall entitle the inventor to an equitable remuneration taking into account
the nature of his or her duties, his or her salary and the benefits derived by the employer.
Moreover, section 34 of the Patents Ordinance 2000 states that in the event the patent has been
granted to two or more persons each of those persons shall, unless an agreement to the contrary is in
force, be entitled to an equal undivided share in the patent.
With regards to the recordal and transfer of patent ownership, section 55 of the Patents Ordinance
2000 explains that where any person becomes entitled by assignment, transmission or operation of
law to a patent or to a share in a patent he or she shall apply in writing in the prescribed manner to the
Controller for the registration of his or her title or, as the case may be, of notice of his or her interest
in the Register.
In addition to this, an application for the registration of the title of any person becoming entitled by
assignment to a patent or a share in a patent may be made in the prescribed manner by the assignor,
mortgagor, licensor or other party to that instrument, as the case may be.
Where an application is made under the said section for the registration of the title of any person, the
Controller shall, upon proof of title to his satisfaction where that person is entitled to a patent or a
share in a patent, register him or her in the Register as proprietor or co-proprietor of the patent, and
enter in the Register particulars of the instrument or event by which he or she derives title; or where
that person is entitled to any other interest in patent, enter in the Register notice of his interest, with
particulars of the instrument, if any, creating it.
Subject to the provisions of this Ordinance relating to co-ownership of patents and subject also to any
rights vested in any other person of which notice is entered in the Register, the person or persons
registered as grantee or proprietor of a patent shall have power to assign, grant licences under, or

otherwise deal with, the patent and to give effectual receipts for any consideration for any such
assignment, licence or dealing.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent can be challenged by two actions: opposition and revocation. An application
for revocation of a patent can be filed with the High Court under section 46 being the special court or
by the federal government under section 48 as well as with the Controller of Patents under section 47,
which is an administrative tribunal. However, an opposition can only be filed with the Controller.
A patent can be challenged on a number of grounds stipulated under section 23 of the Patents
Ordinance 2000 at any time within four months from the date of advertisement of the acceptance of a
complete specification by giving notice to the Controller of opposition to the grant of the patent. The
grounds consist of the following:
that the applicant for the patent obtained the invention or any part thereof from him or her or from the
person of whom the opponent is the legal representative, assignee, agent or attorney;
that the invention is not a patentable invention within the meaning of this Ordinance;
that the specification does not disclose the invention in a manner clear and complete enough for it to
be carried out by a person skilled in the art;
that the claims are not clear or extend beyond the scope of the disclosures in the complete
specification as originally filed; and
that the complete specification describes or claims an invention other than that which the Patent
Offices Patents Ordinance 2000 described in the provisional specification and that such other
invention either forms the subject of an application made by the opponent for a patent which, if
granted, would bear a date in the interval between the date of the application and the leaving of the
complete specification, or has been made available to the public by publication in any document in
that interval.
Where a notice is given the Controller shall give notice of the opposition to the applicant, and shall,
before deciding the case, give to the applicant and the opponent an opportunity of being heard.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Yes, Pakistan is one of the countries that have an absolute novelty requirement for patentability. It
shall suffice to say that Pakistan stringently adheres to the requirement of absolute novelty and in this
regard if a prior art to what is claimed in a specification is found, then the application is rejected
outright. Further, there are no exceptions that provide leverage from the absolute novelty requirement.

19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The legal standard for determining whether a patent is obvious or inventive in view of the prior
art is to consider whether the invention is such that it is not obvious to a person, prior to the date of
application for a patent, skilled in the art having regard to any matter which forms part of the state of
art.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

It is possible for a valid patent to be regarded as unenforceable if the government decides that the
owner of the patent is acting in contradiction to public interest, in particular of national security,
health or the development of other vital sectors of the national economy.
In recent cases the courts have considered the way in which specifications are drafted and have held
that the specification should be drafted in a manner that sufficiently explains the invention allowing a
person skilled in the art to reproduce the invention, so as to allow transfer of technology upon the
lawful expiry of the patent. In this regard, a patent containing a specification that fails this test may be
considered unenforceable.
In addition, the federal government reserves the right to issue compulsory licences disentitling the
patent owner from exercising exclusivity.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

As such, under Patent Ordinance 2000 prior user is not a defence in an action for infringement. If an
accused infringer establishes that he or she has been using the method or device prior to the filing
date or publication date of the patent then the patent in question is bound not to be an invention as it
would lack the character of novelty, without which patents are not valid in Pakistan.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

A patent infringer is liable to pay damages when the court grants a relief to the patentee in an action
of infringement. The damages may include the infringer having to pay the amount adequate to
compensate for the injury suffered by the patentee because of the infringement, the costs of the lawsuit
and the recovery of profits, damages and pre-established damages. As mentioned previously,
Pakistani courts remain conservative in awarding heavy damages as such damages remain nominal in
nature and in rare cases would they provide fair compensation.
However, damages shall not be awarded against an infringer who proves that at the date of the
infringement he or she was not aware, and had no reasonable ground for knowing, that the patent
existed. Awareness of the patent is not determined only from the application to an article of the word
patent, patented, or any word or words expressing or implying that a patent has been obtained for
the article, unless the number of the patent accompanied the word or words in question.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

The likelihood of obtaining a temporary injunction against future infringement is quite high in Pakistan
provided the patentee has a solid reason to believe that the alleged infringer will infringe his or her
patented product or process.
The injunction is effective against the infringers suppliers without the suppliers having been made a
party to the lawsuit if the order granted by the court is wide enough to cover the infringer, his or her
agents or distributors, or representatives. However, an injunction is not effective against the
customers.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

One of the rights conferred by the grant of a patent as contained in section 30 of the Patents Ordinance
2000 is that the holder of a valid patent, where the patent is of a product, may prevent third parties not
having the owners consent from the acts of making, using, offering for sale, selling, or importing for
these purposes that product. Moreover, where the subject matter of a patent is a process, the holder of
a valid patent may prevent third parties not having the owners consent from the act of using the
process, and from the acts of using, offering for sale, selling, or importing for these purposes at least
the product obtained directly by that process.
In addition to the above, under section 61 of the Patents Ordinance 2000, in a suit for infringement,
the court has the power to order prompt and effective provisional measures to prevent an
infringement, and in particular, to prevent the entry into the channels of commerce of goods, including
imported goods after custom clearance.
Moreover, the provisions of Customs Act 1969 section 15 prohibit the importation or exportation of
goods that infringe patents within the meaning of the Patents Ordinance 2000.
All of these rights can be enforced by the patentee against any third party either by an application to

be filed with the customs authorities or a declaration and specific performance Order by the court.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

A successful patentee can claim the costs to be awarded in its prayer clause of the plaint of a suit for
infringement. It is then at the courts discretion to grant the relief as claimed.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

The Patents Ordinance 2000 does not differentiate between the types of infringers; as such there are
no additional remedies for a deliberate or wilful infringer. On the other hand, the Patents Ordinance
2000, under section 62 states that damages shall not be awarded against an infringer who proves that
at the date of the infringement he or she was not aware, and had no reasonable ground for supposing,
that the patent existed.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Although Patent Ordinance 2000 does not specify the time limit for seeking a remedy for patent
infringement, the Law of Limitation applies. Under the Limitation Act 1908, Part IV, the claim of
compensation for infringing copyright or any other exclusive privilege is limited to a three-year
period from the date of infringement. Therefore any action of patent infringement brought after the
lapse of a three-year period shall be barred under the Law. However, it is an established principle of
law that every new act of infringement causes a new cause of action.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Although markings are not mandatory under the law of Pakistan, their use is beneficial as it reduces
the risk of an infringer claiming innocence in not being aware of the status or existence of proprietary
rights.

Licensing

29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

As such there are no restrictions on the contractual terms by which a patent owner may license a
patent.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The Patents Ordinance 2000 states the mechanism by which a compulsory licence to a patent shall be
obtained. The relevant section is section 59, which states as follows:
59. Powers of Controller in granting compulsory licenses. (1) On request, made in the
prescribed manner to the Controller after the expiration of a period of four years from the
date of filing of the Patent application or three years from the date of the grant of the Patent,
whichever period expires last, the Controller may issue a non-voluntary license to prevent
the abuses which might result from the exercise of the rights conferred by the Patent, for
example, failure to work.
Moreover, part (3) of the said section states further:
(3) The decision issuing the non-voluntary license shall fix- (i) the scope and function of the
license; (ii) the time limit within which the licensee must begin to exploit the Patented
invention; and (iii) the amount of the adequate remuneration to be paid to the owner of the
Patent and the conditions of payment.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

In Pakistan, after the filing of the patent application, the examiner will issue an examination report
(office objections) within one year. The examination process takes about two to three years, but it
depends upon the number of examination reports issued by the Pakistan Patent Office and the client
response in complying with the objections in this regard.
If the examiner is satisfied with the response of the patentee then the application is accepted and
published in the Gazette of Pakistan for inviting opposition (the time period for filing opposition is
four months). After expiration of the opposition period, the patent will be sealed for 20 years.
Two payments must be made to obtain a patent. One is the official fees that are payable to the
Intellectual Property Office of an approximate amount of US$100, which includes the filing of the
application, its examination and the grant of patent. The other payment is payable to the attorney as his
or her professional fees for getting the procedure done, attending hearings and countering oppositions

on the applicant(s) behalf. The professional fees vary in accordance with the complexity of the case.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are no procedures to expedite patent prosecution in Pakistan as there are no specialised
tribunals as yet and therefore applicants have to go through the usual route of litigation.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

In order to file a patent application in Pakistan, various documents are required by the patent office,
which include: complete specification together with claims and abstract in the English language,
drawings if any, an application form that states the name, nationality and address of the applicant(s)
or inventor(s) and a priority application number and certified copy of the priority documents in the
English language (if priority is claimed).
With regard to the disclosures and descriptions, these are to be made in the complete specification.
The specification must include: the title of the invention; an abstract or summary of the invention; and
background of the invention including information of prior arts relevant to this technology. The last
paragraph of the background should contain a comparative analysis of the claimed invention with
prior art and the advantages of the claimed invention over prior arts; a detailed description of the
invention including method of preparation, mechanism and its application and claims related to
salient features of the proposed invention.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

As previously mentioned, it is part of procedure for the applicant or inventor to disclose prior art in
the complete specification, however there is no obligation on part of the applicant or inventor to
disclose prior art. The failure to disclose prior art will lead to the office raising objections that delay
the patent grant and therefore it is encouraged that those prior art be cited beforehand so as to
minimise potential delays.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

An applicant may file one or more applications to pursue additional claims to an invention disclosed
in its earlier filed application. The application that needs to be filed is the divisional application,
however such an application can only be filed before the application has been accepted. Moreover,
the additional claims of each divisional application shall not go beyond the disclosure in the first
application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Appeal can be made to the High Court from any decision, order or direction of the Controller. The
matter of appeal is governed by section 69 (2) of the Patent Ordinance 2000.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

As mentioned previously, the provisions of section 23 of the Patents Ordinance 2000 provide a
mechanism by which the grant of a patent shall be opposed. The mechanism provides various grounds
on which the grant of patent may be opposed. However, any such oppositions shall be made at any
time within four months from the date of advertisement of the acceptance of a complete specification
under this Ordinance, and any person may give notice to the Controller of opposition to the grant of
patent on any of the grounds.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The Patent Ordinance 2000 does not provide any mechanism that specifically deals with disputes
related to priority claimed by different applicants for the same invention other than determining from
the date of application and if any priority has been claimed in the application.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The Patent Ordinance 2000 under the Patents of Addition provides for the modification of patents.
Under section 39 of the said Ordinance, an application shall be made to the Controller in respect of
any improvement or modification of a patent and the Controller may grant the patent for the
improvements or modification as a patent of addition.

Re-examination is a process whereby a patent is re-examined by the Controller to verify that the
subject matter it claims is patentable. Therefore re-examination and revocation of a patent are
interlinked as the re-examination of a patent is the starting step of the revocation proceedings. With
regard to the revocation of a patent under section 47 of the Patents Ordinance 2000 provides for the
mechanism for revocation of patent by the Controller.
As for the amendment of a patent claim by a court during a lawsuit, the Patents Ordinance 2000
further states under section 43 that the High Court may by order allow the patentee to amend his or her
complete specification in such manner, and subject to such terms as to costs, advertisements or
otherwise, as the High Court may think fit, and if in any such proceedings for revocation the High
Court decides that the patent is invalid, the High Court may allow the specification to be amended
under this section instead of revoking the patent.
40 Patent duration

How is the duration of patent protection determined?

The duration of patent protection is determined from the date of filing of the application and in case of
a Convention application the date of such earliest application filed in the Convention country from
which priority has been claimed.

Update and trends

The patent landscape has been dominated by the pharmaceutical, agricultural sciences and biotechnology sectors, with the overwhelming majority of patents being filed in this area. Patent
oppositions and litigation have also been limited to pharmaceutical or bio-tech inventions and we do
not foresee any sizeable changes in the near future owing to the nature of industrial output in the
country. There has been considerable and deeply polarising litigation between multinational
originator pharmaceutical companies and mostly local generic companies.
There are valid serious concerns regarding the effective protection and enforcement of patents in the
country and business organisations have been strongly lobbying to ensure better protection for their IP
assets. A particular concern is the lack of effective enforceability of court orders and considerable
delays in legal proceedings.
A new statute, the IP Act, 2012, was ratified by the Assembly and Senate and has come into force,
which contains provisions regarding establishment of IP tribunals. The implementation of this
provision is still awaited, but if it is effectively implemented it is hoped that it will ensure greater
protection to IP owners.
Another area that requires consideration is the signing of the Patent Cooperation Treaty (PCT), which
has not yet taken place. It is generally understood that Pakistans non-presence in the PCT regime has
resulted in a reduction in the number of patents that are being filed in the country, and that this is only
likely to be reversed once the PCT comes into force. The absence of the PCT has also hindered
international patent filing by Pakistani patent owners. The government is carrying out capacity
building measures such as digitisation of records and it is hoped that it will accede to the PCT regime
in the near future.

Ali Kabir Shah

akshah@aliassociates.com.pk

Hanya Haroon

hanya@aliassociates.org

Sana Javed

sana@aliassociates.org

First Floor, Shaheen Towers

23-A Block-6 P.E.C.H.S
Shahrah-e-Faisal, Karachi
Pakistan

Tel: +92 21 3453 4580 / 82

Fax: +92 21 3454 6152 / 3453 4583
www.aliassociates.com.pk

Peru
Maria del Carmen Arana Courrejolles
Estudio Colmenares & Asociados
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

In Peru, patent rights are protected against an infringer by an infringement action duly filed before the
administrative authority and a criminal action duly filed before the judicial criminal authority.
Administrative actions can be submitted as administrative proceedings before the Commission of
Inventions and New Technologies (CIN) of the National Institute for the Defence of Competition and
Protection of Intellectual Property (Indecopi). With regard to criminal proceedings, criminal actions
can be submitted in specialised courts.
Administrative proceedings
Administrative proceedings of a patent infringement start with an infringement action, which is
submitted before the CIN along with the patent document protecting the plaintiffs rights, and clearly
points out both the alleged infringer and the address of the facilities where such infringement actions
are alleged to have taken place. A verification inspection of these facilities will be carried out. An
administrative proceeding can also be entered against actions that show an imminent infringement.
They can be raised either at the request of a party or ex officio (see article 238 of Decision 486 of the
Andean Community Decision, in force since 2000, and articles 97 and 99 of Legislative Decree No.
1075, in force since 1 February 2009).
Criminal proceedings
A criminal proceeding comprises several stages, namely:
the order to commence investigation proceedings against the defendant due to an alleged crime
against industrial property;
the formalisation stage of the investigation;
the district attorneys charges and evidence;
the arguments; and

 the first criminal instance decision (which can be a judgment of acquittal or a judgment of
conviction) that can be appealed in the superior court, which is the second criminal instance.
Industrial Property crimes are classified in the Peruvian Criminal Code (see article 222, paragraph b
for crimes related to patents and article 224 for preventive seizure, confiscation and destruction in
aggravated cases by the judicial authority).
Civil proceedings
The owner of a patent right that has obtained a favourable resolution in the second administrative
instance in an infringement proceeding can sue the infringer in court by requesting compensation for
damages in a civil trial. This action will be limited to two years after the administrative process is
concluded, as per article 129 of Legislative Decree 1075.
2 Trial format and timing

What is the format of a patent infringement trial?

Administrative proceedings
The administrative proceeding format of a patent infringement is outlined as follows.
A formal complaint for a patent infringement is submitted that fulfils the requirements of article 99 of
Legislative Decree 1075. A temporary injunction can be requested until a resolution is issued. After
the formal complaint is accepted for consideration, the administrative authority orders an inspection
of the facilities wherein the infringement act is alleged to have taken place. Products with protected
patent are also recorded, temporary injunctions are given, the infringer is notified and an official
inspection minutes is taken. The infringer has a five-working day term to reply the infringement
complaint (article 102, Decree 1075). In the following stage, the parties are summoned to attend a
conciliation hearing. If the parties reach an agreement, the proceeding finishes. If an agreement is not
reached, a substantive examination must be carried out, to be paid by the plaintiff (article 109,
Decree 1075). The first instance resolution is issued with or without the reply to the complaint. If the
resolution is unfavourable to any party, that party can lodge an appeal within a five-working day term
as per article 133 of Legislative Decree No. 1075, with the same term offered for the other partys
reply. The second-instance resolution can be impugned before the judiciary.
Documents that should be submitted in infringement proceedings are as follows:
all kinds of briefs, invoices or sale receipts bearing the infringing product for undue use of a patent;
sworn declarations and statements of experts or relevant technical institutions;
photographs;
video and audio tapes; and
other items evidencing a certain fact, activity or result.
Moreover, the parties should offer other probatory means such as inspection and expertness (article
103, Decree 1075).

The cross-examination of witnesses is unusual at an administrative level.

Expert external or internal patent examiners are involved to evaluate the probatory means (physical
samples, photographs and reports from the interested party) by issuing a technical report. They carry
out a technical assessment of the specification and the set of claims in order to limit the scope of the
exclusivity rights of the plaintiff and determine how a certain infringement supposition is shaped.
The issues to be discussed are solved by a professional administrative commission consisting of
three to four members making use of the technical report issued by the patent examiner or expert.
The development of an administrative proceeding for infringement of patent rights until the issuance
of the first instance resolution takes about six months (pursuant to law, it should last 180 days). In the
second instance it would take about one and a half years, since an external expert has to be hired.
Criminal proceedings
The development of a criminal proceeding is described below.
The first step towards formalising the denunciation is a police investigation wherein the parties are
summoned to present their statements. At the conclusion of the investigation, a police affidavit is sent
to the district attorneys office. After investigation and analysis, the office may conclude with the
formalisation of the denunciation before the criminal court.
The criminal court opens the investigation with the offended party assuming the position of the civil
party. The district attorneys opinion is issued, followed by the issuing of the judgment, the reading of
the judgment and the appeal.
The investigations, sworn declarations, statements, documents and witnesses are presented, followed
by the submission of the Indecopi reports.
In both instances trial is by criminal court in the first instance with a judge and in second instance
with a professional body of three judges.
The processes may last between five and six years depending on the procedural activity of the
parties, the experts, the technical reports of the parties and the Indecopi report.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof corresponds to the plaintiff with exception of patents related to a process
wherein the burden of proof is reversed. In such cases, the defendant bears the burden of proving that
the process used for obtaining the product is different from the process protected by the patent.
In Peruvian practice, the probatory difference between an infringement of a patent on a product and an
infringement of a patent on a process, falls in one case on the patent holder who should submit,
together with his or her denouncement, the infringing product and the corresponding purchase invoice
thereof, duly attested by a notary public, in order to prove that the product is being offered for general
sale. In the case of a patent on a process, the owner denouncing the infringement is not required to
demonstrate the infringement since it is assumed that the patented process for obtaining the product
that is being offered for general sale has been used without his or her authorisation, for which reason
the defendant has to demonstrate that the process used is different to the patented process. For

example, the defendant may submit as a proof the master file of the production of the medicament that
is the complete file of the stages of the medicament, and may confidentially detail all of the process
steps of the product that is the subject matter of denouncement to demonstrate that the steps of his or
her process are different than those of the patented process.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Administrative proceedings
Only the owner of a patent in force is entitled to sue for patent infringement (article 238, Decision
486), and if the patent infringement is instituted ex officio then the administrative authority initiates
the proceeding.
In the case of a product patent, the probatory means must be appropriate so that the plaintiff can prove
the infringer has committed the alleged illegal actions. Collecting proofs is the responsibility of the
plaintiff, who affirms the actions that support the infringement (see article 104, Legislative Decree
1075).
In cases where infringement of a patent on a process for obtaining a product is alleged, defendants are
liable for proving that the process they have used to obtain said product is different than the process
protected by the patent whose infringement is claimed. Therefore, in such cases, any identical product
produced without the consent of the patent owner will be presumed, in this respect and unless
otherwise proven, to have been obtained by the patented process, if the product obtained by means of
the patented process is a new product or if there is a strong likelihood that the identical product was
manufactured through the patented process and the patent owner is unable, despite reasonable efforts,
to determine the process effectively used (article 240, Decision 486 and article 104, Legislative
Decree 1075).
Criminal proceedings
Criminal proceedings can be initiated either ex officio by the district attorneys office (in charge of
accusing, investigating and formalising denunciations, charges or reports) or at the request of the
owner of a product or procedure patent.
Any person can be accused of a non-authorised patent use before a judicial criminal court and can
receive an unfavourable verdict if it is evidenced that they store, manufacture or use with commercial
purposes, offer for sale, distribute, sell, import or export products protected by a patent.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The concepts of inducement and contributory infringement are not considered in either our legislation
or case law.
Any person who manufactures, offers for sale, sells, uses or imports the product can be liable for
infringement (article 52 of Decision 486).
When a procedure is claimed in a patent, any person or company can be accused of infringement as
long as said person or company uses such procedure or carries out prior actions with respect to a
product obtained by the protected procedure.
Although we have not found any cases of multiple party infringement, if the fact that each party carries
out the steps or elements of the patent claim to produce the whole patented object is demonstrated,
action would have to be taken against each one of the involved parties.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Present legislation does not prohibit entering denouncements for infringement of rights against several
individuals, however, in accordance with present practice each individual is usually denounced by
separate proceedings.
Two or more individuals can be jointly denounced in a single file. In this case, it will be necessary to
demonstrate that the same product is involved, that the denouncement corresponds to the same
controversial matter and that the same infringing facts are common to the accused individuals, that is,
it is required to evidence that such individuals are linked. If two or more enterprises are denounced it
is a requirement to prove a real entailment between them by documents showing that the same
infringing facts are dealt with and that the denounced facts are common to the said two or more
denounced enterprises.
For example, if two enterprises are denounced and one of them acquires the infringing product from
abroad and the other one sells the product within the domestic market, it will be necessary to prove
that one of them imports the infringing product and the other one distributes the said product and that
the acts of both firms refer to the same infringing fact and to the same imputed product.
The entailment between both enterprises should be proven regarding the same infringement by
documents demonstrating a connection of the infringing facts. Further, payment is demanded for each
denouncement and each inspection at the premises of the denounced enterprises.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

It is possible to take action before the Peruvian Customs in order to prevent the import into Peru of
the infringing products, in accordance with article 52, paragraph a of Decision 486 (Andean

Legislation) that confers the owner of a patent right claiming a product or a process, the right to
prevent third parties not having the owners consent, in addition to make the product or
commercialise it, to import the patented product.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Peruvian law establishes that the scope and protection of a patent can be determined by the content of
the claims (articles 30 and 51 of Decision 486). Formerly, under article 51, paragraph 1, the Peruvian
administrative authority interpreted that the scope of protection was defined by the literal text of the
claims and did not consider patent infringements by equivalents. Therefore, in order to analyse an
alleged infringement action, the Peruvian administrative authority reviewed and was limited to the
literal text of the claims. If the claims were not clear, the Peruvian administrative authority reviewed
the main text of the specifications as such.
The administrative authority expressly recognises the possibility of the equivalents doctrine
application for the analysis of protection extension of the patent in cases of infringement of rights, and
makes an interpretation supported in the specifications, article 51, paragraph II, since it considers the
possibility to interpret the scope of protection beyond the terms used in the literal text of the claims to
be open. The scope of the granted protection is restricted to the text of the claims. However, if the text
is unclear, it can be interpreted in the light of the specification. There are two stages, one is of
assessment by identity, that is the examiner reads literally the claims and if from the reading there is
no infringement, then the examiner will pass to the second stage for interpretation by equivalents.
Regarding the case, Resolution No. 3114-2009/TPI-Indecopi dated 23 October 2009, docket No.
838-2008/OIN, pages 8 to 11 and 18 to 20, the owner of Patent No. 0353, Mr Canepa, denounced as
an infringement the manufacturing of a lock that reproduces the technical characteristics protected by
his patent, against the firm Nor Industrias Elliott SRL. The examiner pointed out that the locks were
not identical and dismissed the literal infringement of the patent and passed to assess the infringement
by equivalents and used the test of triple substantial identity (functionmoderesult).
The first instance declared the infringement well founded and prohibited the use, manufacture, sale
and commercialisation of the infringing products, which were seized as well as the machine with
which they manufactured such products and a fine was imposed on the infringer.
The defendant appealed the decision and by Resolution No. 3114-2009/TPI-Indecopi, the second
instance confirmed the infringement after performing the following analysis.
First, they analysed the text of claim 1 in the light of the specification and then they asserted that the
scope of the patent protection was determined by the text of claim 1. Then claim 1 of the patented
lock was compared with the infringer lock and although in both cases different terms were used for
describing the protector elements, the authority determined that the infringer product included the
protected characteristics of claim 1 since both fulfilled the same function of protecting the drum of the
lock and both protector elements performed it in an equivalent way (by two similar geometrical
figures). The conclusion was that the function and the technical element were the same in both locks.
In this resolution an application of the theory by equivalents was shown and it was appreciated that
despite some of the components of the infringer lock not matching the components of the protected
patent, there is infringement to a patent if the improved effect is produced from the application of the

same technical rule providing the solution to the technical problem.

In the case, Resolution No. 1757-2010/TPI-Indecopi, dated 6 August 2010, docket No. 87-2008/OIN,
pages 4 to 6 and 8 to 11 the first instance resolution was repealed and declared groundless as to the
infringement. It stated that it is not possible to discuss equivalents when the technical effects of the
objected product are clearly different and improved regarding the patented product.
The equivalency theory should be used when dealing with slight variants of the literality of the
patented claim, this is not a substantial change to the inventive rule nor to the improved technical
effect.
In this case there was not the triple identity since the structures and the achieved function and effect
are distinct.
Despite the equivalents theory not being applied in this case, the administrative authority recognises
that, as from 2006, for cases of infringement of patents, the possibility of its application for the
analysis of the extent of protection of a patent beyond the literality of the claims to cover situations
resulting in similarities as to function, mode and result regarding the novel technical characteristics
protected by the patent.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

In administrative proceedings, as a mechanism to obtain evidence, the plaintiff can submit purchase
invoices of infringing products or third partys copies of invoices or testimonies. Other mechanisms
are administrative inspection diligences and examiners reports, and documents can be filed until the
issuance of the first administrative instance resolution. In criminal proceedings, the plaintiff may
submit, among other things, the counterfeited product and the examiners technical report, and may
request court inspections and examiners reports.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The timetable for an infringement proceeding of a patent in an administrative proceeding is six months
from the formal denunciation until the first instance resolution. The appeal to the administrative court
resolution takes between eight months to one year, since hiring an examiner is a requirement.
The timetable for a criminal proceeding of a patent crime before the judiciary (first instance) is
between 18 months and two years, and in the superior appeal courts (second instance) the legal term
is between two and three years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Administrative infringement costs may range from 3,000 nuevo sol to 8,400 nuevo sol in the first
instance; in the event of appeal, the whole administrative proceeding in the second instance may range
from 1,960 nuevo sol to 2,800 nuevo sol.
An infringement that ends in the administrative channel can be revised by the judicial authority in an
administrative contentious lawsuit. The costs of this lawsuit until the issuance of a first instance
judgment are 13,160 nuevo sol and, in the case of an appeal, the costs in the second instance are
11,200 nuevo sol.
The costs of a criminal proceeding depend on whether it is at the request of a party or ex officio. If it
is initiated at the request of a party, costs may range between 5,600 nuevo sol and 14,000 nuevo sol
depending on the operative action. In the second instance (superior court) it may range between 2,800
nuevo sol and 5,600 nuevo sol.
In the event of an ex officio process, the costs for the police and district attorneys investigation may
range from 840 nuevo sol to 1,680 nuevo sol. In a judicial criminal proceeding, total costs may range
from 2,800 nuevo sol to 8,400 nuevo sol after being considered as civil party until the issuance of the
first instance judgment. In an appeal in the second instance (superior court), costs may range from
2,800 nuevo sol to 5,600 nuevo sol.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

In accordance with article 133 of Legislative Decree 1075, in an administrative proceeding there is a
five-working day legal term to appeal and such appeal is resolved by the Intellectual Property
Administrative Court (TPI) of Indecopi.
On the other hand, in accordance with article 7 of Legislative Decree 124, in a criminal proceeding
there is a three-working day legal term to appeal, or an appeal can be submitted during the same act
of the judgment.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In accordance with article 124 of Legislative Decree 1075, a patent owner can be accused of a false
charge or for a lack of reasonable cause for an infringement denunciation and penalised with a
140,000 nuevo sol fine and a possible criminal penalty, and be forced to pay compensation for
damages.
The patent owner can also be accused if he or she carries out dishonest commercial acts contrary to
the business that good faith demands and that affect the competition of the market according to
Legislative Decree 1044 approving the Law on Repression of Unfair Competition (2008).
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Within the administrative proceeding of infringements it is usual that, after the inspection, the
administrative authority summons the parties to a conciliation hearing where, if both parties agree, the
dispute is solved, although the official citations may be done at any time during the proceeding. The
hearing is carried out before the competent authority and before any person appointed by both parties.
If both parties reach an agreement, an official minutes is taken by the competent authority, wherein the
agreement is recorded that will have right of execution according to article 108 of Legislative Decree
1075.
Disputes regarding patents can be solved by arbitration. In Peru, there are private arbitration centres,
such as that of the Chamber of Commerce of Lima and of the Lima Bar Association. In these centres,
any intellectual property dispute can be solved, particularly patents. They have a large list of
specialised arbitrators names. Disputes can also be solved by conciliation or mediation.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Yes, but with some restrictions established by law. Software and business methods are protected as
copyrights. Therefore, they are not considered inventions in accordance with article 15 of Decision
486. Medical procedures (therapeutic and surgical methods for the treatment of humans or animals)
are not considered patentable in accordance with article 20 of Decision 486.
In accordance with article 14 of Decision 486, patents for inventions will be granted for goods or
processes. Further, there are two other types of patents, namely, selection inventions and divisional
applications.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Article 36 of Legislative Decree 1075, has the following rules for the inventions developed in the
course of an employment or service agreement, except where agreed to the contrary:
(a) Inventions made by the employee in the course of a contract or employment or service
agreement, the total or partial purpose of which is to carry out inventive activities shall
belong to the employer. However, the employer should assign to the worker an adequate
compensation if the personal support of the worker to the invention, the economic value
thereof or the importance of said invention exceeds the explicit or implicit objectives of the
agreement or employer or service agreement. The amount of the compensation will be fixed
by judge specialised in civil matters, in accordance with the rules of expedited summary
proceedings, where there is no agreement between the parties.

(b) If the employee makes an invention in relation to his professional activity and by using
means or information provided by the employer, the employer shall have the right to assume
ownership of the invention or to reserve the right of use thereof within a period of 90 days
from the time at which the employer became aware of the existence of the invention. Where
the employer assumes ownership of an invention or reserves the right of use thereof, the
employee shall be entitled to adequate compensation in accordance with the industrial and
economic importance of the invention, due account being taken of the means or information
provided by the firm and the contributions by the employee that enabled him to carry out the
invention. The amount of compensation shall be fixed by a judge specialised in civil matters
in accordance with the rules of expedited summary proceedings, where there is no agreement
between the parties.
(c) Inventions made while an employment agreement is in force or a service contract is being
carried out, the making of which is not covered by the circumstances provided for in
subparagraphs (a) and (b), shall belong exclusively to the inventor thereof.
In the following cases where the patent holder was a juridical entity, the inclusion of inventors was
accepted in the list of the inventors and employees that developed the invention in the owner
enterprise of the invention by a sworn declaration in application of article 36:
Resolution No. 1050-2012/DIN/Indecopi of 21 August 2012 which recorded in the Register the
addition of two inventors to Patent No. 5588 owned by Glaxo Group Limited; and
Resolution No. 1248-2012/DIN/Indecopi of 28 September 2012 which recorded in the Register the
addition of one inventor to Patent No. 5526 owned by Grnenthal GmbH.
With the exception of these cases, the right to the patent exclusively belongs to the inventor when he
or she carries out inventions during his or her employment relationship or under a service contract.
It is possible to point out there are cases where the owner of the invention is a juridical entity and if
the inventors do not have an employment relationship in accordance with Peruvian legislation it is
compulsory to file a copy of the assignment document with legalised signatures.
On the other hand, article 36 is applicable for inventions made in education and research centres such
as universities, institutes and other education and research centres, regarding the inventions made by
the professors or researchers of the contracted institution, except where provisions to the contrary are
contained in the Statute or the Rules of Procedure of the said entities.
There are cases where a Peruvian university is the owner of a patent jointly with the enterprise that
has contracted the research and an investigation institute. In this case there are three owners.
In another scenario, the university and the inventors are joint owners, that is, the owners are both
juridical persons and natural persons.
Article 22 of Decision 486 outlines the following rules with regard to multiple inventors:
the right to a patent belongs to the inventor and may be assigned or transferred by succession;
patent owners may be natural or judicial persons;
if several persons make an invention jointly, they shall share the right to patent it;
if several persons make the same invention, each independently of the others, the patent shall be
granted to the person or assignee with the first filing date or, where priority is claimed, the date of
application;
if several persons make an invention jointly, they will share the right to patent it;
if several persons make the same invention, each independently of the others, the patent will be
granted to the person or assignee with the first filing date or, where priority is claimed, the date of
application; and

 the ownership of a patent is officially recognised and transferred by a written agreement and
recorded in the registry according to article 56 of Decision 486, which is outlined below.
Article 56
A patent grant or a patent application being processed may be assigned or transferred by succession.
Any patent assignment or transfer must be registered with the competent national office. Failure to
register shall render the assignment or transfer invalid with respect to third parties.
Patent assignments or transfers, in order be registered, shall be in writing.
Any interested party may file for registration of a patent assignment or transfer.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

A patent can be invalidated:

if the patent was granted for an invention that falls in the prohibitions stated by law (articles 15, 20,
21 and 75 of Decision 486);
if the patent was granted by not fulfilling some of the requirements stated by law (article 75 of
Decision 486);
if the claims lack sufficiency, clarity and support;
if there are defects in administrative acts (article 76 of Decision 486);
if a patent has been granted to a person who has no right to it (article 77 of Decision 486); or
if there has been fraud, false representation or unfair behaviour (article 8A, Law No. 29316,
published on 14 January 2009, which modifies Legislative Decree 1075).
Failure to pay an annual fee within the legal terms, as stipulated in article 80 of Decision 486, will
result in the legal lapsing of the patent or the patent application.
The invalidation action is first brought at administrative level before the Commission of Inventions
and New Technologies, a first administrative instance body composed of three commissioners and a
president who is the director of the directorate of inventions and new technologies, which is in charge
of patent invalidity. The decision of this commission can be appealed and is remitted to the second
administrative instance, which is a specialised intellectual property tribunal composed of four
members and the president of the tribunal. There is also a deputy president who occasionally replaces
the president.
The action for revindication, that is entered at judicial level, is an action lodged to determine who is
the legitimate owner of a patent. On concluding the process in the court, the judge will order in the
judgment to register the patent in the name of its legitimate owner. Based on this judgment the
administrative authority carries out the assignment of the patent, as stated in article 237 of Decision
486 of the Commission of the Andean Community.

18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

In accordance with the law, novelty is absolute and universal. It must have been neither known nor
accessible before the filing date of the patent application or of the claimed priority. No account will
be taken of any disclosure of the contents of the patent during the year prior to the filing date of the
application in the member country or during the year before the date of priority, if claimed, providing
that the disclosure was attributable to:
the inventor or the inventors assignee;
a competent national office that publishes the contents of a patent application filed by the inventor or
the inventors assignee in contravention of the applicable provision; or
a third party who obtained the information directly or indirectly from the inventor or the inventors
assignee (articles 16 and 17 of Decision 486).
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Article 18 of Decision 486 considers that an invention involves an inventive step if, for any person in
the trade who is conversant with the corresponding technical matter, the invention cannot be
considered obvious, nor could it have been obviously derived from the state of the art.
The Tribunal of Justice of the Andean Community of Nations in Process 43-IP-2014, Pre-Judicial
Interpretation dated 8 June 2014, sets forth that analysis of an invention carried out by the patent
examiner is deemed to have an inventive step if it is beyond the knowledge of a technician with
average skills, since the point is that the obviousness should not exist, and this is only achieved when
beginning from the standard knowledge for a skilled person in the related technical field.
The Tribunal of Justice sets out the role of an average technician in the subject matter, who should
familiarise him or herself in the state of the art existing at the time of applying for the invention patent
or the priority date. He or she should start from basic knowledge as well as from the problem and
identify any technical features of the invention that are different from those of the state of the art. Then
the following questions should be posed, was the technician in a position to: raise this problem, solve
the problem in the way claimed or foresee the result? The tribunal considers that in the case of
affirmative answers for these three questions, there is a lack of inventive step.
This 43-IP-2014 process enables the standard to be seen to determine if a patent has inventive step.
To this end, a skilled person with average knowledge should carry out a comparative examination by
combining documents of the state of the art and, from an overall assessment of the disclosures to
determine whether the invention has been produced or not.
The Tribunal of Justice of the Andean Community of Nations in the Process 73-IP-2014 Pre-Judicial
Interpretation dated 25 August 2014, with regard to the inventive step, concluded that an invention
benefits from an inventive step when, according to an average person skilled in the subject matter,
more than a simple application of the technical knowledge in the subject matter is needed to attain this
invention. That is to say, in accordance with the state of the art the invention is not a clear and direct
consequence of said state of the art, but entails a progress or a qualitative leap in developing the

technical rule.
Through this process it can be seen whether there is any qualitative leap (unexpected effect) in
developing the technical rule, or a simple derivation in an obvious way from the state of the art, and if
it is obvious for a skilled person in the art, the invention would not involve an inventive step.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent can be deemed unenforceable with respect to acts carried out in a private circle and for noncommercial purposes, exclusively to experiment with the subject matter of the patented invention, for
the purpose of teaching or scientific or academic research, among others (see article 53 of Decision
486).
Further, a patent can be deemed unenforceable in cases of international exhaustion of the patent right
(see article 54 of Decision 486).
On the other hand, article 55 sets forth the following:
The rights conferred by a patent may not be asserted against a third party that, in good faith
and before the priority date or the filing date of the application on which the patent was
granted, was already using or exploiting the invention, or had already made effective and
serious preparations for such use or exploitation. In such case, the said third party shall have
the right to start or continue using or exploiting the invention, but that right may only be
assigned or transferred together with the business or company in which that use or
exploitation is taking place.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

In Peruvian national patent law there is an exception to the exclusive right of a patent holder for
parties who have used the invention before the filing or priority date of the patent (prior user rights).
This exception is used as a defence in an infringement action.
In this sense, article 55 of Decision 486, Common Regime on Industrial Property of Andean
Community, sets forth an exception to the exclusive right of a patent holder for third parties that have
used the invention prior to the filing or priority date of the patent (prior user right):
Without prejudice to the provisions stipulated in this decision with respect to patent nullity, the rights
conferred by a patent may not be asserted against a third party that, in good faith and before the
priority date or the filing date of the application on which the patent was granted, was already using
or exploiting the invention, or had already made effective and serious preparations for such use or
exploitation.
In such a case, the said third party will have the right to start or continue using or exploiting the
invention, but that right may only be assigned or transferred together with the business or company in

which that use or exploitation is taking place.

In order to apply this article, two conditions should be met: that the use is made in good faith and that
the date of said use is prior to the priority date or filing date of the application.
There should be a factual situation prior to the filing of the patent application or recognised priority.
The invention should have been developed, that is to say, that effective or serious preparations for
such use or exploitation of said invention had already been made, or the invention had been used or
exploited.
For the purposes of applying article 55, it is necessary that the product under infringement action
(pre-use) displays the same characteristics as those protected by the patented product. It is not
applied assuming that they are different products. The national law does not allow changes regarding
the protected subject matter.
The use should be prior to the prescription of infringement action that, pursuant to article 244 of
Decision 486, prescribes within two years from the date the holder had knowledge of the
infringement or, in any case, five years counted from the date the infringement was last committed.
The prior factual situation of good faith is privileged (exploitation or effective preparations),
providing there is no behaviour deemed an infringement against the patent rights, thus avoiding the
first-to-file system undermining the investments being made.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

According to article 239 of Decision 486, compensation shall be lawful only in respect of the
subject matter covered by the patent grant, and shall be computed in accordance with the patents
effective exploitation by the defendant over the period in question.
Costs for damages must be objectively proven (with documents). For example, in cases of an
emerging damage, that is, the loss of wealth suffered by the patent owner as a result of the
unauthorised exploitation of the patent, the common market value of the patented object must be
considered.
In cases of lucrum cessans, the profits the owner would have obtained by the exploitation of the patent
in the period between the damage effective fact and the monetary payment of the compensation will
constitute damages.
In addition, the amount of real or potential illicit profits obtained by the infringer as a consequence of
their infringement actions and the price they must have paid for the granting of a contractual licence of
exploitation of the patent will be considered, taking into account the commercial value of the
infringed right and the previously granted licences. In some cases, the legal effect of the exploitation
right of the patent and the initial infringement period are also considered. The types of licences
granted are also considered.
In other cases, recidivism of infringing actions and the infringers bad faith are also taken into
consideration to determine the monetary penalty.

In criminal proceedings, monetary compensation is requested along with the penalty, according to
article 92 of the Criminal Code. Pursuant to article 93 of the Criminal Code, it comprises the
following: the restitution of the goods or, if this is not possible, the payment of their value and
compensation for damages and losses.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

It is possible to obtain an injunction if the person who requests it proves his or her right, the existence
of an imminent infringement and proof that allow him or her to suppose the infringement.
According to article 247 of Decision 486:
A provisional measure shall be ordered only where the persons requesting it accredit their
lawful right to act and the existence of the infringed right, and provide evidence allowing for
a reasonable presumption of infringement or that infringement is imminent. The competent
national authority may require persons requesting the measure to post a hand or sufficient
equivalent assurance before ordering such a measure.
The applicant for a provisional measure in respect of particular goods should supply the necessary
information and a sufficiently detailed and precise description so that the allegedly infringing goods
can be identified.
Immediate provisional measures may be requested before or during an infringement in accordance
with article 245 of Decision 486, which states that any party initiating or who shall initiate an action
for infringement may request the competent national authority to order immediate provisional
measures for the purpose of preventing an infringement from occurring, avoiding its consequences,
obtaining or preserving evidence, or ensuring the effectiveness of the action or arranging
compensation for damages.
Provisional measures may be requested before starting the action, alongside it or after it has been
initiated.
It is worth noting that injunctions look for the effectiveness of stopping infringements. Pursuant to
article 246 of Decision 486, several provisional measures may be ordered, among others:
cessation of use or manufacture of the infringing products;
prohibiting the import;
seizure of the infringing products; and
immobilisation of such products.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Yes, it is possible to block the importation of infringing products into the country as there is a
proceeding that may be either at the request of a party or ex officio. The Industrial Property Authority,
which is located at customs and has detected the arrival of alleged infringing material, sends an

official letter to customs and to the owner. The owner of an industrial property right may request an
injunction to order immobilisation at customs. If there is a formal infringement complaint, a
preliminary examination (technical report) is carried out in order to verify whether the products have
the same matter protected by a patent, and then the customs authority is notified. After this, a verifying
inspection is carried out where the products may be immobilised until the issuance of the respective
resolution.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In the administrative proceeding, article 126 of Legislative Decree 1075 states that, at the request of a
party, the administrative authority will order that the defeated party assumes the payment of court
costs and expenses of the procedure. Likewise, in accordance with article 127 of Legislative Decree
1075, the winning party must submit a settlement of costs and fees so that the competent authority can
issue a decision. This resolution, which determines the fees, will have executive force.
In the civil channel, court costs and expenses can also be satisfactorily recovered. Court costs, such
as attorneys fees, have to correspond to the accredited real costs.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Expressly, there are no additional remedies available against a deliberate or wilful infringer.
According to article 121 of Legislative Decree 1075, among the criteria for determining sanctions are
included the repeated commission of an infringing act and bad faith in the commission of the
infringing act, which could be considered involving an unlawful act.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

In accordance with article 129 of Legislative Decree 1075, the time limit for initiating a
compensation action for damages (civil court) is two years from when the administrative procedure is
ended.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There are no provisions for the mandatory marking of patented products under Andean Community
patent law. As such, there are no adverse consequences if the patent is not marked on the product, but
it is considered as good practice since the patent marking informs about the patented product.
False patent marking constitutes a law infringement due to being deceitful or false advertising in
accordance with article 13 of Law 29571, the Code for Protection and Defence of Consumers.
With regard to the consequences of false patent marking, if marking is included without the product
being patented, the patent holder would be subject to legal sanctions due to false declaration or
deceitful advertising, or both.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The unique restrictions are those ones limiting the free market in accordance with article 58 of
Decision 486.
Pursuant to this article:
the competent national authority shall not register any licence agreements for patent
exploitation that do not conform to the provisions of the Common Regime for the Treatment
of Foreign Capital and for Trademarks, Patents, Licences, and Royalties, or that do not
conform to Andean Community or domestic antitrust provisions.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

In the Andean Community, if a patent is not exploited or if its exploitation has been suspended for
more than a year, the Patent Office may grant a compulsory licence. However, article 61 of Decision
486 states the following:
At the expiry of a period of three years following a patent grant or of four years following the
application for a patent, whichever is longer, the competent national office may grant a
compulsory licence mainly for the industrial manufacture of the product covered by the
patent, or for full use of the patented process, at the request of any interested party, but only
if, at the time of the request, the patent had not been exploited in the manner specified in
articles 59 and 60, in the member country in which the licence is sought, or if the exploitation
of the invention had been suspended for more than one year.
Compulsory licences shall not be granted if patent owners are able to give valid reasons for
their failure to act, which may be reasons of force majeure or an act of God, in accordance
with the domestic provisions in effect in each member country.
A compulsory licence shall be granted only if, prior to applying for it, the proposed user has
made efforts to obtain a contractual licence from the patent holder on reasonable commercial

terms and conditions and that such efforts were not successful within a reasonable period of
time.
Article 64 of Decision 486 states that:
the licensee shall exploit the licensed invention within a period of two years following the
date the licence was granted, unless that licensee is able to give valid reasons for inaction
consisting of force majeure or an act of God. Otherwise, at the patent owners request, the
competent national office shall revoke the compulsory licence.
Article 65 of Decision 486 states the following:
Following the declaration by a Member Country of the existence of public interest, an
emergency, or national security considerations, and only for so long as those considerations
exist, the patent may be subject to compulsory licensing at any time. In that case, the
competent national office shall grant the licences that are applied for. The owner of the
patent so licensed shall be notified as soon as is reasonably possible.
The competent national office shall specify the scope or extent of the compulsory licence and,
in particular, the term for which it is granted, the subject matter of the licence, and the
amount of remuneration and the conditions for its payment.
The grant of a compulsory licence for reasons of public interest shall not reduce the right of
the patent owner to continue exploiting it.
When a patent owner does not exploit his or her invention within three years after its grant and there
is an interested party applying for a compulsory licence of the non-used patent and the said owner
does not unjustifiably grant the licence, the interested party may request the compulsory licence to the
competent authority, which will grant the said licence to the said party only if the patent owner did
not justify his or her failure of exploitation.
If the patent owner does not exploit the patent in Peru during a period of more than three years and
there is no third party interested in obtaining a compulsory licence, the Directorate of Inventions and
New Technologies would not act ex officio and will not invalidate the patent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Obtaining a patent typically takes an average of three and a half years and cannot take more than five
years, because after the said period of time, pursuant to the present law (article 32 of Legislative
Decree No.1075), the Directorate of Inventions and New Technologies, solely at the request of the
party, will adjust the patent term.
Adjustment for unreasonable delay
If the competent authority commits an unreasonable delay during the granting procedure of a patent
exceeding more than five years from the application date or three years from the substantive

examination (except for patents claiming a pharmaceutical product) the adjustment provided by law is
applicable, which is a compensation of the legally effective term of the patent. The adjustment is
carried out once: when the competent authority, during the granting process of the patent, has
committed an unreasonable delay for more than five years from the filing date of the patent
application or three years from the substantive examination to the granting date of the patent. If the
delay is incurred by the patent owner, it will not be compensated. The compensation procedure is
regulated in articles 32, 33, 34 and 35 of Legislative Decree 1075.
Costs for obtaining and maintaining a patent, including official fees and attorneys fees, are:
registration of a patent US$2,030;
examiners technical report US$300 to US$530; and
maintenance annuities to keep a patent in force or to maintain pending a patent application, as per
article 80 of Decision 486; domestic provisions annual fees must be paid pursuant to the following
scale:
from the first year of filing up to granting US$161;
from the granting date up to 10 years US$227; and
from the 11th year up to 20 years US$289.
Please note that if these payments are not made within the legal terms, the owner or applicant is
notified with a new grace term (six months) for making the payment with a surcharge.
Contentious actions are not included.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

In Peru there is no special process for expediting the processing of a patent application or paying fees
for obtaining its granting in a shorter time than the usual term. However, by fulfilling the formal
requirements in the shortest possible time, it would allow the shortening of the extension of the legal
terms. For example, if a notification for filing the Power of Attorney or other documents within a twomonth term was received that could be extended for two more months, it would be advisable (see
article 39 of Decision 486) to submit the missing documents within one month so that three months
would be saved.
As to the official publications, present regulations grant a maximum term of 30 days counted as from
the notification of the publishing order (see article 30 of Legislative Decree 1075), so if the
publication is effected on the first day, the time would be shortened to 29 days.
If, in accordance with present provisions, the substantive examination must be requested within a
maximum term of six months counted as from the publication date of the patent application (see article
44 of Decision 486) and said examination is requested the following month, the long term of six
months would be cut to a short term of one month.
If a notification attaching the corresponding technical report was received wherein pursuant to law,
the examiners objections should be overcome within a term of 60 working days that could be
extended for a further term of 30 more days, and the reply is filed within the next 15 days, the 60-day
term would be adequately shortened.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Description or specifications
The description of the invention should be sufficiently clear and complete to be understood and for
the invention to be carried out by a person skilled in the art. The description should contain the name
of the invention and the following information:
the technological sector to which the invention refers or in which it will be applied;
prior technology known to the applicant that would help the invention to be understood and
examined and references to previous documents and publications that discuss the technology
involved;
a description of the invention in such a way that the technical problem and the solution provided by
the invention may be understood, explaining the differences and possible advantages with respect to
previous technology;
a brief description of drawings, if there are any;
a description of the best method known to the applicant for carrying out the invention, with the use
of examples and references to the drawings if they are pertinent; and
a statement as to how the invention meets the condition of being capable of industrial application, if
this is not clear from the description or the nature of the invention itself (article 28 of Decision 486).
Claims
Claims should specify the subject matter for which the patent protection is sought. They must be stated
clearly and concisely and be fully substantiated by the description.
Claims may be independent or dependent. A claim should be independent when it defines the subject
matter in respect of which protection is sought without referring to any previous claim. A dependent
claim, on the other hand, defines the subject matter for which protection is sought by referring to a
prior claim. A claim referring to two or more previous claims is considered a multiple dependent
claim (article 30 of Decision 486).
Abstract
The summary should consist of a synthesis of the technical explanation given in the patent application.
That summary will be used to provide technical information only and will have no effect whatsoever
on the interpretation of the scope of protection conferred by the patent (article 31 of Decision 486).
Moreover, in view of the PCT application, the patent application filed in the original country along
with the technical documents and its translation must be disclosed or described according to article
22 of the PCT in regard to patent matters.

34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There are no legal provisions stating that an inventor must disclose prior art to the Patent Office
examiner.
However, pursuant to article 28 of Decision 486, the specification should contain the prior
technology known to the applicant.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

A patent applicant may not file one or more later applications to pursue additional claims of an
invention disclosed in its earlier filed application whether these additional claims involve an
extension of the initial earlier filed application (ie, the additional claims can be pursued if they are
duly supported in the initial specification of the earlier filed application). Likewise, a later patent
application can be derived from one of the priority documents claimed in the earlier filed application,
as long as it does not include the same matter as originally filed.
Later patent applications can only be submitted while the previous one is still process. In conclusion,
the limitation consists in the fact that the matter of the later patent application can neither reproduce
nor exceed the matter of the earlier filed application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to file an appeal brief before the Patent Office within the 15-working-day term
following the next day of notification of the adverse resolution (first-instance resolution) by filing
new arguments to be settled in the second administrative instance by the Intellectual Property Court
(see article 132 of Legislative Decree 1075).
If the decision is adverse in the second instance, it is possible to initiate a lawsuit on the nullity of the
administrative resolution against the administrative authority that issued the adverse resolution.
The legal term to raise a nullity action before the court is three months after the notification of the
second administrative resolution.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The Patent Office does provide a mechanism for opposing the grant of a patent. According to article

42 of Decision 486, oppositions may be filed by interested parties within the following 60-workingday legal term from its publication in the official gazette El Peruano.
At the request of a party, the competent office will grant an additional unique 60-day term to support
the opposition.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

When a patent has been applied for or obtained by persons with no right to obtain it, or to the
detriment of other parties possessing a right to the patent, the parties affected may claim before the
Patent Office that they have the best right on the patent or the patent application by virtue of the
document wherein the date, number and office where the patent application was filed are recorded.
Alongside the filing date of the patent application, this document must record the payment of
established fees. It is worth noting that the priority statement and the document accrediting the priority
must be filed along with the patent application within the 16-month legal term from the filing date of
the patent application whose priority is invoked (see article 10 of Decision 486).
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The Patent Office does have procedures for modifying a patent in accordance with article 34 of
Decision 486. Usually, as per present practice, claims can be modified until prior to the issue of an
administrative resolution of first instance.
It is also possible to divide the patent application as originally filed into two or more divisional
patents, according to article 36 of Decision 486. This division can be done either ex officio or at the
request of the interested party.
Regarding the re-examination of a patent, there is a reconsideration mechanism available to
applicants for patents who wish to contest a negative verdict. The applicant may submit new
documentary evidence and request that the invention be examined again in the light of the new
submitted documents.
Revoking a patent is possible by an administrative nullity action of the patent in accordance with
articles 75 (absolute nullity) and 76 (relative nullity) of Decision 486 and in nullity cases, when a
patent was granted to a person who had no right to it, in accordance with article 77 of Decision 486.
The nullity of a second Administrative Instance Resolution denying the patent can be requested by an
impugning judicial action of the administrative resolution according to article 5 of the Ordered
Unique Text of the Law, which regulates the contentious administrative process (Law 27584,
Supreme Decree No. 013-2008-JUS).
The judicial authority cannot amend the claims of a patent but can rule the nullity of the second
administrative instance resolution that denied the patent and order that the competent administrative
authority assesses the claims through a new substantive examination and issues a resolution.

The re-examination of patents is carried out in a reconsideration, appeal or in a nullity action because
the administrative authority carries out an examination of the patent again but not of the set of claims,
since this cannot be amended in the reconsideration. The patentability examination is performed on
the new instrumental proof and in the appeal on the arguments.
40 Patent duration

How is the duration of patent protection determined?

The duration of a patent of invention is 20 years as from the filing date for national applications or
from the PCT International application date for national phase applications (see article 50 of
Decision 486). Upon the patent being granted, maintenance fees must be paid regularly each year in
advance.
The due date of each annual payment is the last day of the month on which the application was filed.
There is a grace period of six months from the due date in which to pay the annuities together with the
established overcharge. During the grace period, the patent maintains full enforceability. Lack of
payment of an annuity causes the patent to lapse.
In Peru, there is an adjustment system for an unreasonable delay of more than five years from the
filing date of the application or three years from the substantive examination, regulated in articles 32
to 35 of Legislative Decree 1075, whereby the patent term will be adjusted where an unreasonable
delay has occurred in the granting process, attributable to the competent authority, except where the
patent is for a pharmaceutical product or procedure.

Update and trends

Public policies are currently being developed on the management of knowledge and the role of
intellectual property, in addition to supporting the innovation, investigation and transfer of technology
in order to make information available to the inventor community on inventive activity and
innovation, to publicise the use of the patent system as a way of protecting technological innovation in
Peru. The Directorate of Inventions and New Technologies, through the Sub-Directorate of Support to
Innovation, has two online bulletins. One of them, entitled Electronic Technological Report,
periodically addresses a particular technological topic in the patent field. This bulletin displays
information on various technology or invention issues with patents in the public domain, whether
applied for in Peru or not. For example, there are bulletins connected to the coffee, fishery, wood,
environmental mining, thermal and photovoltaic solar energy, pharmaceutical (motor disability),
biotechnological (vaccines and diagnostic kits), food and construction sectors.
The other bulletin, entitled Inventing, Patenting and Innovation, addresses issues related to patents and
other ways of protecting intellectual property, publishes indicators on the registration of patents by
countries or industrial sectors, includes a section of schedules for patent activities, both local and
international, periodic figures on patent applications, both local and international, opinion columns
focusing on patent system incentives and news on programmes by the Patent Office.
Another development in the patent field is the streamlining of search services, a Thursday programme
consisting of fortnightly free lectures on different aspects of patents and the Annual National

Convention of Patents and Inventions, including three activities: a local competition for inventions
and the exhibition thereof, international congress of patents and inventions, and annual recognition for
the commercialisation of patented inventions.

Maria del Carmen Arana Courrejolles

mcarana@colmenares.com.pe

Bolognesi 125, 9th floor

Miraflores
Lima 18
Peru

Tel: +51 1 446 5793 / 446 6457

Fax: +51 1 445 0347 / 444 4102
www.colmenares.com.pe

Philippines
Mila Federis and Caesar J Poblador
Federis and Associates Law Offices
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent owners have the following choice of remedies:

lodge an administrative complaint for intellectual property rights violation (or IPV complaint) with
the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO); the BLA now has the
same power as regular courts to:
issue injunction after summary hearing; and
award civil damages, such as actual damages for lost profit and reimbursement of attorneys
fees;
lodge a civil complaint with the regular courts (Regional Trial Court), which has jurisdiction to
issue injunction and award damages;
if the infringer repeats the infringing act after the judgment of infringement in the civil case becomes
final, the patent owner can initiate a criminal complaint before regular courts; the following rules
apply:
the patent owner, in coordination with police enforcement authorities, can apply through the
court for a search warrant to search the repeat infringers premises if there is probable cause to
believe that the infringing products are found there;
infringing products seized as a result of the implementation of the search warrant will form the
basis for a criminal investigation before the public prosecutor, who will decide if there is
probable cause to charge the infringer for the crime of patent infringement; and
if the charge is filed in court, the patent owner has the option to include civil claims for
damages; in that situation, the court, in convicting the repeat infringer, will also include an
award of damages to the patent owner;
a patent owner is permitted to reserve his or her right to pursue the civil claims for damages arising
from the infringement; if he or she files the civil claims ahead of the criminal action or during the trial
in the criminal action, the criminal action will be suspended to await the outcome of the civil action
on grounds of prejudicial question; and
if the infringer has secured a patent, the patent owner can file a cancellation action before the BLA.
If the case involves highly technical issues, on the motion of any party, the BLA can constitute a
committee of thee judges, the first judge being the Director of the BLA, and the other two judges being
experts in the field of technology to which the patent being cancelled relates.

As to specialised courts:
the court hearing the civil action will be deemed a specialised court if the patent issue involves
highly technical questions, in which case the patent owner can file a motion for the appointment
of two or more assessors possessed of the necessary scientific and technical knowledge
required by the subject litigation; and
the BLA, in the cancellation action heard by a committee of three, is also a specialised court.
2 Trial format and timing

What is the format of a patent infringement trial?

The format is uniform for administrative, criminal and civil actions, which is presentation of
evidence through trial, complete with direct examination, cross-examination, re-direct and re-crossexaminations.
Testimonial evidence will be in affidavit form to which will be attached the supporting documents.
The affidavit form in the criminal and civil action is in a question-and-answer format, while the
affidavit in administrative actions is in an ordinary narrative format.
The affidavits will contain the direct testimony of the affiant or witness, and upon identification of the
affidavit and the supporting documents by the live witness on the stand, the adverse party conducts
cross-examination. Note, however, the following:
the rules governing administrative action state that it must be a summary proceeding. However,
since patent infringement claims are contentious, parties demand the right to cross-examine witnesses,
hence, the summary proceeding becomes a full-blown trial; and
instead of a witness testifying on the stand, the witness who is not present in the Philippines can be
presented to identify his or her affidavit through deposition upon oral or written interrogatories
before the Philippine Consul in the country where he or she resides. He or she can be cross-examined
also by oral deposition or written interrogatories.
For a cancellation action, cross-examination is not required and the parties argue their cases through
their position papers.
As noted above, experts can be used as witnesses. And the judge can form a committee of three in
which the two other members are experts. Philippines does not follow the jury system.
A typical trial for administrative, criminal and civil action where both sides have at least two
witnesses can last for over one and a half years.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The quantum of evidence is as follows:

administrative action, including cancellation action: substantial evidence;
criminal action: proof of guilt beyond reasonable doubt; and
civil action: preponderance of evidence.

4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The following may sue for patent infringement:

any patentee, or anyone claiming a right, title or interest in and to the patented invention;
any foreign national or juridical entity:
whose country is a member state under conventions with reciprocity clauses; and
a party to which a patent has been granted or assigned by virtue of Philippine law.
A foreign corporation can sue whether or not it is licensed to do business in the Philippines.
There is no proceeding that the infringer can take to obtain declaratory relief from a patent
infringement accusation. Declaratory relief requires that the action be filed before a violation of law
is committed.
However, the infringer who receives a cease and desist letter can pre-empt a patent infringement
action of the patent owner by filing a cancellation action to invalidate the patent.
If the patent infringement case is already filed, the infringer can cite as a defence the invalidity of the
patent, and if it is meritorious, the court can order the IPO to cancel the patent.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Patent infringement can be committed by one or several persons. They commit infringement by the act
of making, using, offering for sale, selling or importing patented products or products obtained
directly or indirectly from a patented process, without the authorisation of the patentee.
For each of these infringing acts, a criminal action for infringement allows for a charge against
several accused, if there is evidence of conspiracy.
Under the Revised Penal Code, a conspiracy is when two or more persons come to an agreement
concerning a felony and decide to commit it. Conspiracy may be inferred from the acts of the accused
before, during or after the commission of the crime which, when taken together, would be enough to
reveal a community of criminal design, as the proof of conspiracy is frequently made by evidence of a
chain of circumstances.
To be a conspirator, one need not participate in every detail of the execution; he or she need not even
take part in every act or need not even know the exact part to be performed by the others in the
execution of the conspiracy. Each conspirator may be assigned separate and different tasks which may
appear unrelated to one another but, in fact, constitute a whole collective effort to achieve their
common criminal objective.
Once conspiracy is shown, the act of one is the act of all the conspirators. Those who participate in a
crime and are liable for it are classified into principals, accomplices, or accessories.
A person is a principal for taking a direct part in the execution of the felony, directly forcing or
inducing others to commit it or cooperating in the commission of the offence by another act without
which it would not have been accomplished.

Accomplices are persons who, while not acting as a principal, cooperate in the execution of the
offence by previous or simultaneous acts.
Accessories are those who, having knowledge of the commission of the crime, and without having
participated therein, either as principals or accomplices, take part subsequent to its commission by:
profiting themselves or assisting the offender to profit by the effects of the crime;
concealing or destroying the body of the crime, or the effects or instruments thereof, in order to
prevent its discovery; or
harbouring, concealing, or assisting in the escape of the principals of the crime.
In the case of the principal by inducement, the Intellectual Property Code further qualifies the
infringing inducement as follows: anyone who actively induces the infringement of a patent or
provides the infringer with a component of a patented product or of a product produced because of a
patented process knowing it to be especially adopted for infringing the patented invention and not
suitable for substantial non-infringing use shall be liable as a contributory infringer and jointly and
severally liable with the infringer.
Principals are punished more severely than accomplices, who are punished more severely than
accessories. However, when there is conspiracy, there will no longer be a distinction as to whether a
person acted as a principal, accomplice or accessory, because when there is conspiracy, the criminal
liability of all will be the same, because the act of one is the act of all.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Those who commit separate acts of unauthorised making, using, offering for sale, selling or importing
patented products may be joined in one complaint if their acts relate to a single transaction and a
common question of law or fact is involved. Joinder is mandatory if without any of them, no final
determination can be had of the infringement action. It has also been ruled that items seized under a
search warrant for the premises of a corporation stand as incriminating evidence to charge the
directors, shareholders and officers of the corporation.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

No criminal action is allowed to be filed in the Philippines for infringement that occurs beyond the
Philippine borders.
In civil cases, if the licensee makes, uses, offers for sale or sells patented products outside of the
Philippines, but his or her licence agreement entered into in the Philippines prohibits him or her from
doing so, then there is breach of contract for which he or she can be sued in the Philippines. If the
contract declares that such acts are also acts of infringement, then the action for breach of contract can
also raise another cause of action involving infringement.

8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Philippine courts apply the doctrine of equivalents strictly. One who claims under this doctrine must
satisfy the function-means-and-result test, that is, the infringing modification must be shown to
perform substantially the same function in substantially the same way to achieve substantially the
same result under the patent claimed to be infringed.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Parties can be served written interrogatories and requests for admissions.

10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Where each party has two witnesses, trial can take as long as one and a half years. More witnesses
mean a longer trial period. On the appeal level, a decision can take as long as one year to be issued.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The typical range of costs of a patent infringement lawsuit before trial is US$4,000 to US$6,000
before trial. The cost for conducting trial is in the range of US$6,000 to US$8,000. The cost for
bringing an appeal in each appeal stage is approximately US$6,000 to US$8,000.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

From an intellectual property violation trial before the BLA, a decision can be appealed to the
Director General of the IPO, whose decision can in turn be appealed to the Court of Appeals on a
question of law or fact, or both. A Court of Appeals decision can be questioned before the Supreme
Court, also on either question of law or fact, or both.
From a civil or criminal court decision, an appeal can be filed before the Court of Appeals, also on a
question of law or fact, or both, and then to the Supreme Court, also on the same question.

13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

The defendant in a patent infringement complaint typically asserts a counterclaim that the action is
baseless and is causing him or her damages. The counterclaim can argue that the plaintiff is unfairly
competing or destroying the defendants business by the filing of the baseless complaint. However, if
the complaint is dismissed because of a non-infringement finding the counterclaim is usually
dismissed also since the exchange of arguments and submission of evidence show that the complaint
is not baseless.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Philippine law mandatorily requires the parties to undergo dispute resolutions before going to trial.
Even if there is no success and trial ensues, the judge continually urges amicable settlement, even
after the case is submitted for decision. In the Court of Appeals, mediation is also required to be
conducted before the appeal is heard.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Any technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable can be a patentable invention. The invention can be a
product, a process or any improvements thereof. Computer software and business methods are not
patentable.
Patent protection does not extend to scientific discoveries, laws of nature, abstract ideas, schedules,
business methods, computer programs, methods for treatment of human and animal body, plant
varieties or animal breeds, aesthetic creations, and anything contrary to public health and welfare
including cloning or use of a human embryo.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The patent belongs to the inventor, his or her heirs, or his or her assigns. When two or more persons

have jointly made an invention, the right to the patent belongs to them jointly. The patent application
may be filed by the actual inventor or in the name of his or her heirs, legal representatives or assigns.
If a person commissions a work, such person owns the patent, unless provided otherwise in a
contract.
For inventions made in the course of employment, the patent shall belong to the employee if the
inventive activity is not part of his or her regular duties, even if the employee uses the time, facilities
and materials of the employer. If the invention is the result of the employees performance of his or
her regularly assigned duties, the patent belongs to the employer unless there is an express or implied
agreement to the contrary.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent can be challenged through a patent cancellation proceeding before the BLA of
the IPO. The grounds for challenging the validity are:
lack of novelty;
lack of industrial applicability;
failure to disclose the invention clearly and completely for it to be carried out by a person skilled in
the art; and
the patent is contrary to public order or morality.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement. The law, however, considers certain disclosures as nonprejudicial when the information was disclosed or published within one year preceding the filing date
or the priority date of the application and the disclosure was made by:
the inventor;
a patent office where the information was contained in another application filed by the inventor and
which should not have been disclosed by the patent office;
a third party in an application filed without the knowledge or consent of the inventor; or
a third party based on information obtained from the inventor.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The legal standard for inventiveness is whether the invention is not obvious to a person skilled in the
art having regard to the prior art. Prior art is defined as everything which has been made available to
the public anywhere in the world, before the filing date or priority date of the application claiming the
invention, except when the disclosure is considered non-prejudicial. Prior art includes the whole
contents of an application for a patent which has been published, filed or is effective in the
Philippines, with a filing or priority date that is earlier than the filing or priority date of the
application claiming the invention.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

The patent owner can no longer enforce a patent if there has been exhaustion of rights, ie, the third
party use occurs after a product has been put in the market in the Philippines by the owner of the
patent or with his or her consent or authorisation.
The patent owner cannot prevent the exploitation of the patent in the following circumstances:
when the use of exploitation is done privately and on a non-commercial scale or for a noncommercial purpose, provided, that such use does not significantly prejudice the economic interests
of the patent owner;
where the act consists of making or using exclusively for the purpose of experiments that relate to
the subject matter of the patented invention;
where the act consists of preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription; and
where the patented invention is used in vehicles in transit in the Philippines, provided that such use
is made exclusively for the needs of the vehicle and not for the manufacturing of anything for purposes
of sale within the Philippines.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Yes, an accused infringer can use as a defence his or her use of the method or device prior to the
filing date or publication date of the patent since that would show that the invention lacks novelty.
This defence covers all types of inventions. Moreover, where the act is done privately and on a noncommercial scale or for a non-commercial purpose, and does not significantly prejudice the
economic interest of the owner of the patent, then the owner of the patent could not prevent the
accused from working on his or her invention.

Remedies

22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Recovery may extend to all damages sustained by the patent owner plus attorneys fees and expenses
of litigation. The court can increase the amount of actual damages proven but it should not exceed
three times the amount of such actual damages.
If damages are inadequate or cannot be readily ascertained with reasonable certainty, the award is
equivalent to a reasonable royalty. However, no damages can be recovered for acts committed more
than four years before the institution of the action.
Also no damages can be recovered if the infringer proves it did not have knowledge of the patent. But
he or she will be presumed to have knowledge if the product or container, or advertising materials
contain the words Philippine Patent with the number of the patent registration.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Injunction, temporary or final, encompasses future infringement. The patent owner must take pains to
craft the request for injunction to include future infringement. Injunction is easily obtainable if the
features of the infringing product can be demonstrated as infringing the technical characteristics
recited in the claims.
As to suppliers, if conspiracy can be shown, or there exists one transaction connecting all the
suppliers to the infringer, then the suppliers can be joined in the complaint and the injunction issued
will be binding on them also.
As against customers, a separate action for infringement can be filed as discussed above, for the
customers infringing use. If the use is in connection with a conspiracy, or there is a single transaction
connecting him or her to the infringer and his or her suppliers, then he or she can be joined in one
action and the injunction issued will be binding on him or her. However, if the customers use is done
privately and on a non-commercial scale or for a non-commercial purpose, there is no infringement.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

It is difficult to block the entry of goods at the border that are the results of patent infringement. Patent
owners will have to monitor the movement from the country exporting to the Philippines, then alert
customs officials through a complaint that the goods entering are infringing, so that customs can
examine the cargo not only for payment of tariff but also for violation of intellectual property rights.

25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

To recover costs and attorneys fees, there must be a stipulation with the client for attorneys fees,
which must be presented as evidence in court. Second, it must be shown that a plaintiff was
compelled to hire the services of the lawyer as a result of the act or omission of the defendant. Third,
the lawyer must justify the amount on the basis of quantum meruit.
Litigation expenses can be shown through itemised expenses with official receipts and other evidence
of payment incurred to fund the litigation.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

The only remedy approximating to an additional penalty to a deliberate or wilful infringer is where
infringement is repeated by the infringer or by anyone in connivance with him or her after finality of
judgment against him or her.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

For administrative and civil actions, they must be instituted within four years upon injury to plaintiff,
which means upon knowledge by the patent owner of the infringing act. And no damages can be
recovered for acts of infringement committed more than four years before the filing of the action. For
criminal action for repeat infringement, the prescribed limit is three years from the date of the
commission of the crime.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

The patent holder should mark its patented product in order to provide notice to potential infringers
that the product is patented. The marking should contain the words Philippine Patent along with the
registration number of the patent.
If a patent holder fails to mark its patented product, damages cannot be recovered against an infringer
if the infringer proves that it did not have knowledge of the patent. On the other hand, the infringer
will be presumed to have knowledge of the patent if the product or container, or advertising materials
are marked with the words Philippine Patent and the registration number of the patent.

False patent marking will not only cause the action to be dismissed, but also the awarding of counterclaims against the plaintiff.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Yes, section 87 of the IP Code provides a list of prohibited clauses for licence agreements, which
includes clauses:
which impose upon the licensee the obligation to acquire from a specific source capital goods,
intermediate products, raw materials, and other technologies, or of permanently employing personnel
indicated by the licensor;
pursuant to which the licensor reserves the right to fix the sale or resale prices of the products
manufactured on the basis of the licence;
that contain restrictions regarding the volume and structure of production;
that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement;
that establish a full or partial purchase option in favour of the licensor;
that obligate the licensee to transfer for free to the licensor the inventions or improvements that may
be obtained through the use of the licensed technology;
that require payment of royalties to the owners of patents for patents which are not used;
that prohibit the licensee to export the licensed product unless justified for the protection of the
legitimate interest of the licensor such as exports to countries where exclusive licences to
manufacture and/or distribute the licensed product(s) have already been granted;
which restrict the use of the technology supplied after the expiration of the technology transfer
arrangement, except in cases of early termination of the technology transfer arrangement due to any
reasons attributable to the licensee;
which require payments for patents and other industrial property rights after their expiration or
termination arrangement;
which require that the technology recipient shall not contest the validity of any of the patents of the
technology supplier;
which restrict the research and development activities of the licensee designed to absorb and adapt
the transferred technology to local conditions or to initiate research and development programs in
connection with new products, processes or equipment;
which prevent the licensee from adapting the imported technology to local conditions, or introducing
innovation to it, as long as it does not impair the quality standards prescribed by the licensor;
which exempt the licensor for liability for non-fulfilment of his or her responsibilities under the
technology transfer arrangement or liability arising from third-party suits brought about by the use of
the licensed product or the licensed technology; and
other clauses with equivalent effects are also included.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Yes, the mechanisms available to obtain a compulsory licence to a patent are provided for under
section 93 of the IP Code, which states that the Director of Legal Affairs may grant a licence to
exploit a patented invention, even without the agreement of the patent owner, in favour of any person
who has shown his or her capability to exploit the invention, under any of the following
circumstances:
national emergency or other circumstances of extreme urgency;
where the public interest, in particular, national security, nutrition, health or the development of
other vital sectors of the national economy as determined by the appropriate agency of the
government, so requires;
where a judicial or administrative body has determined that the manner of exploitation by the owner
of the patent or his or her licensee is anti-competitive; or
in case of public non-commercial use of the patent by the patentee, without satisfactory reason; and
if the patented invention is not being worked in the Philippines on a commercial scale, although
capable of being worked, without satisfactory reason, provided, that the importation of the patented
article shall constitute working or using the patent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It takes approximately three to four years for a patent to issue from the filing date of the application.
When a local firm receives all the parts in a patent application written in English and in a form that is
ready for filing, the costs and fees will be approximately US$750 if the application consists of five
claims only and no more than 30 pages of description of invention. The cost increases if the attorney
has to assist the inventor in writing the different parts of the patent application such as the description
of invention, specification and claim. Additional cost is also incurred in the event of Office Actions
being issued by the examiner.
For an industrial design and utility model application, it takes approximately six to eight months for a
registration to issue from the filing date.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Yes, by submitting a granted corresponding foreign application or filing a request for a Patent
Prosecution Highway.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application shall be in writing. It may be written in Filipino or English, and shall be filed by
post or directly with the Bureau. All applications shall be addressed to the director.
Under section 32 of the Intellectual Property Code, a patent application must contain the following:
a duly accomplished request for the grant of patent;
a description of the invention;
any drawings necessary for the understanding of the invention;
one or more claims; and
an abstract.
The request for the grant of patent shall contain the following information:
petition for the grant of a patent;
the applicants name and address;
the title of the invention;
the inventors name;
if filed with claim for convention priority, it shall contain the file number, country of origin, and the
date of filing in the said country where the application was first filed;
the name and address of the resident agent or representative (if any); and
the signature of the applicant or resident agent or representative.
The guidelines for the description of the invention are as follows:
specify the technical field to which the invention relates;
indicate the background art which, as far as known to the applicant, can be regarded as useful for
understanding the invention, for drawing up the search report and for the examination, and preferably,
cite the documents reflecting such art;
disclose the invention, as claimed, in such terms that the technical problem (even if not expressly
stated as such) and its solution can be understood, and state any advantageous effects of the invention
with reference to the background art;
where appropriate, refer to the different elements involved in the invention by the use of reference
letters or numerals (preferably the latter). Such letters or numerals should be properly depicted in the
drawings. In the case of an improvement, the detailed description shall particularly point out the
improved concept that may be regarded as novel and inventive and must be described in relation to
the technical feature that belongs to the prior art for a clear and complete understanding of the
improvement;
briefly describe the figures in the drawings, if any;
describe in detail at least one way of carrying out the invention claimed using examples where
appropriate and referring to the drawings, if any; and
indicate explicitly, when it is not obvious from the description or nature of the invention, the way in
which the invention is capable of exploitation in the industry.
With regards to the title of the invention, it shall be as short and specific as possible. It shall appear
as a heading on the first page of the description. The title shall be in technical terms particularly
referring to the technical feature or features of the invention. All fancy names are not permissible in
the title.
The abstract of the disclosure shall be written on a separate sheet with the heading, Abstract of the
Disclosure. It shall consist of a concise summary of the disclosure of the invention as contained in
the description, claims, and drawings in preferably not more than 150 words. It must be drafted in a

way that allows the clear understanding of the technical problem, the gist of the solution of that
problem through the invention, and the principal use or uses of the invention. The abstract shall
merely serve for technical information. Preferably, the scope of the invention should be disclosed
such that it can serve as an efficient basis for searches in the particular technical field.
There are also general requisites for drawings such as:
the drawing must be signed by the applicant or his or her name may be on the drawing by his or her
attorney or agent. The drawing must show every feature of the invention covered by the claims. The
drawing may consist of several views showing every feature of the invention to serve as an aid in the
complete understanding of the invention and each figure must be consecutively numbered and briefly
described as to its matter of presentation;
when the invention relates to an improvement of the prior art, the drawing must exhibit, in one or
more views, the novel or inventive improvement in relation with the old structure presented in dotted
lines. Every element of the invention as shown in the drawing shall be designated with legible
reference numeral or letter and, if appropriate, shall be accompanied by a pointing line directed to the
particular element to which it refers. The designated reference numeral or letter for a particular
element shall be in conformity with what has been described or referred to in the detailed
description;
each element of each figure shall be in proper proportion to each of the other elements in the figure
except where the use of a different proportion is indispensable for the clarity of the figure; and
if the same part of the invention appears in more than one view of the drawing, it must always be
represented by the same character and the same character must never be used to designate different
parts.
With respect to claims, the IPO sets the following rules:
the patent application must conclude with a claim, particularly pointing out and distinctly claiming
the part, improvement, or combination which the applicant regards as his or her invention;
the application may contain one or more independent claims in the same category (product, process,
apparatus or use), where it is not appropriate, having regard to the subject matter of the application,
to cover this subject matter by a single claim which shall define the matter for which protection is
sought. Each claim shall be clear, concise and supported by the description.
one or more claims may be presented in dependent form, referring back and further limiting another
claim(s) in the same application. Any dependent claim which refers to more than one other claim (a
multiple dependent claim) shall refer to such other claims in the alternative only. A multiple
dependent claim shall not serve as a basis for any other multiple dependent claim;
the claims must conform to the invention as set forth in the description and the terms and phrases
used in the claims must find clear support or antecedent basis in the said description so that the
meaning of the terms may be ascertainable by reference to the description. Claims shall not, except
where absolutely necessary, rely in respect of the technical features of the invention, on reference to
the description or drawings. In particular, they shall not rely on references such as, as described in
part _______ of the description or as illustrated in figure _______ of the drawings; and
if the invention relates to an improvement, the claim or claims should specifically point out and
distinctly claim the improvement in combination with a preamble statement indicating the prior art
features that are necessary for the definition of the claimed subject matter.
The following are the prohibited matters in a patent application:
a statement or other matter contrary to public order or morality;
a statement disparaging the products or processes of any particular person other than the applicant,

or the merits or validity of application or patents of any such person. Mere comparison with the prior
art shall not be considered disparaging per se; and
any statement or other matter obviously irrelevant or unnecessary under the circumstances.
If an application contains the prohibited matter mentioned above, the Bureau will omit it when
publishing the application indicating the place and number of words or drawing omitted.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no obligation for the applicant to disclose the relevant prior art in the application. However,
should applicant decide to disclose prior art, he or she should differentiate the state of the art from its
present invention.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Yes, a patent applicant may file a voluntary divisional application on a pending application to pursue
additional claims before the parent application is patented or withdrawn provided that the subject
matter shall not extend beyond the content of the parent application. The requirements are as follows:
request form;
certified copy of the parent application;
copy of claims for the divisional application; and
prescribed official fees.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes. The losing party may appeal an adverse decision of the Director General of the IPO to the Court
of Appeals and to the Supreme Court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Previously, there was no mechanism for opposing the grant of an invention patent. In the case of utility
model and industrial design patents, a third party can file written adverse information to oppose the
grant of the patent.
Recently, the IPO also launched the Community Review Process (CRP). Under the CRP mechanism,

the IPO maintains a list of industry associations, government agencies, schools, universities and other
stakeholders. Once an invention patent, utility model or industrial design applicatin is published, the
relevant stakeholders are notified and provided with the bibliographic information of such
application. In the case of utility model or industrial design application, a concerned stakeholder may
file a written adverse information within 30 days from the date of publication. With respect to
invention patent application, a concerned stakeholder has six months from publication or from the
date of request for substantive examination, whichever is later, to file a third-party observation. Upon
filing of an adverse information or third party observation, the Director of the Bureau of Patents can
either refuse registration, require an amendment of the application, or recommend the application for
registration.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The following rules are followed when resolving priority disputes between two claimants to a single
invention:
if two or more persons have made the same invention separately and independently of each other,
the right to the patent belongs to the person who filed an application for such invention;
where two or more applications are filed for the same invention the right belongs to the applicant
who has the earliest filing date or the earliest priority date; and
where two or more applications for the same invention made separately and independently of each
other have the same filing date or priority date, the time of the day the applications were filed will be
considered in deciding who is entitled to the patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

There is no mechanism for post-grant modification or re-examination of a patent.

A patent may be revoked or invalidated when a petition to invalidate a patent is granted after an
adversarial hearing.
A court may not amend the patent claims during a lawsuit.
40 Patent duration

How is the duration of patent protection determined?

The patent term shall be 20 years from the filing date of the application. However, a patent shall
cease to be in force and effect if the prescribed annual fee is not paid within the deadline provided by
the rules or if the patent is cancelled in accordance with the provisions of the IP Code and the IPO

regulations.
A utility model registration shall expire, without any possibility of renewal, at the end of the seventh
year after the date of filing of the application.
The term of industrial design patent registration shall be five years from the filing date of the
application and may be renewed for not more than two consecutive periods of five years each, by
paying the renewal fee.

Update and trends

The IPO has began accepting Asean Patent Examination Cooperation Program (ASPEC) request
forms, after rules implementing the programme have been amended. A participating office may
consider the search and examination documents that it receives under the ASPEC. It is not, however,
obligated to adopt any of the findings and conclusions reached by the other IP office, and shall decide
on its own whether to grant the patent in accordance with its national laws. The objectives of the
ASPEC are to reduce work and achieve a faster turnaround time, and to adopt better search and
examination procedures. All documents submitted through the ASPEC must be in English.
With respect to industrial designs, the IPO is promoting the registration in five days platform to
decrease the turnaround time for the processing of industrial design applications. The IPO also plans
to upgrade the industrial design database, as well as launch a new search tool and an e-filing system
for designs. Moreover, the Philippines has committed to accede to the Hague Agreement by 2015.
Accession would allow international applicants of industrial designs to designate and seek protection
in the Philippines when using the industrial design system operated by WIPO.
In anticipation of the planned ASEAN economic integration in 2015, the ASEAN member states have
been making concerted efforts to improve the regional framework of policies and institutions relating
to intellectual property. In this regard, the IPO is working with other ASEAN member states to launch
the online and paper version of the ASEAN common application form. There are also plans to adopt
and use common ASEAN substantive examination guidelines to review IP applications.

Mila Federis

mfederis@federislaw.com.ph

Caesar J Poblador

cpoblador@federislaw.com.ph

88 Corporate Center
141 Valero St
Salcedo Village

Tel: +63 2 8896197/8

Fax: +63 2 8896132

Makati City, 1227

Philippines

www.federislaw.com.ph

Poland
Dorota Rzewska, Piotr Godlewski and Mirosawa Wayska
JWP Patent & Trademark Attorneys
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Proceedings in patent infringement cases are held before common courts on the basis of the
applicable provisions of the Act of 30 June 2000 on Industrial Property Law (IPL) published in the
Journal of Laws 2013, item 1410, and the provisions of the Code of Civil Procedure that govern the
principles of the course of court proceedings. Although the need to establish a special court
competent to hear cases on intellectual property law (including patent infringement cases) has been
discussed, such a court has not yet been set up in Poland.
2 Trial format and timing

What is the format of a patent infringement trial?

The court competent to hear patent infringement cases is, in the first instance, the Regional Court,
which is composed of one judge and in the second instance, the Court of Appeal, which is composed
of three judges. During the proceedings parties undertake to submit evidence to support their
statements. Polish legal provisions allow evidence from documents, witness testimonies, expert and
research institute opinions and they also permit exhibits (examination).
Court proceedings in the patent infringement case before the court of first instance last, on average,
from one-and-a-half to three-and-a-half years. The case is heard during a trial led by a judge with the
participation of the parties to the dispute as well as their attorneys. Parties may, in the course of the
procedure, lodge a pleading in which they present their positions. The obligatory pleading that the
parties ought to lodge in the course of the dispute, in the case of a claimant, is a claim initiating court
proceedings and in the case of a defendant, a response to the claim in which the defendant presents
his or her position in relation to the charges of the claimant included in the claim. Further pleadings
may be lodged by the parties in the course of the procedure after they have obtained the courts
approval to present them.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In accordance with applicable provisions, it is not permitted to call into question validity of a patent
during court proceedings. Objections within this scope may be raised in the proceedings before the
Polish Patent Office. There is a presumption of validity of the patent until termination of the
proceedings to invalidate a patent.
To prove justifiability of the charge of a patent infringement, it is necessary to demonstrate that the
defendant has taken actions consisting of the use of the patent for financial and professional purposes
without the approval of its owner. These actions include in particular: manufacturing, offering,
placing on the market or importing for such purposes the product that is an invention or using the
method that is an invention and also using, offering, placing on the market or importing for these
purposes, products obtained directly by using such a method.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The owner of the patent is the entity entitled to initiate proceedings and bring an action. In the event of
several entities being the owners of a patent, each of them may initiate proceedings in the patent
infringement case. An exclusive licensee entered into the Patent Register may also initiate court
proceedings.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The IPL does not precisely define the concept of contributory or indirect patent infringement.
However, the latter is generally understood as an act enabling a third party to infringe exclusive
rights, for example, distributing devices for carrying out a protected method. The issue of multiparty
patent infringement is also not particularly defined by the law. Nevertheless, joint infringement is
possible if each party practices only a part of the patent claim.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The provisions provide a possibility for several persons to act as defendants if the subject matters of
the case are:
rights and obligations common for them or based on the same factual basis; or

 claims or obligations of one type based on the identical factual and legal basis, if the same court has
jurisdiction over each claim or obligation separately as well as over all of them collectively.
Each of the co-participants acts in the process on his or her own behalf. In the event of the judgment
applying indivisibly to all co-participants, procedural actions taken by some of the co-participants
(active in the process) are effective in relation to inactive co-participants.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

In view of the territorial nature of the right arising from the patent, only actions taken up in the
territory of Poland, which enter into the scope of the protection resulting from patent claims, may
constitute the infringement of the patent. Provisions of the IPL define the type of actions that may be
qualified as patent infringing. They include manufacturing, using, offering, placing on the market or
importing for such purposes the product that is the subject matter of an invention and using the method
that is the subject matter of an invention and also using, offering, placing on the market and importing
for these purposes products obtained directly using such a method.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The applicable Polish legal provisions do not include the same legal norm as article 69 of the
European Patent Convention (EPC). Thereby, there is no legal provision in the Polish system that
would directly refer to the theory of equivalents. Such a situation is the source of a number of
interpretation issues; on one hand, in some cases heard by courts, the opinion has been presented that
in the IPL the provision defining the scope of protection of patents does not refer to the equivalents,
and on the other hand, in some of the delivered rulings, there has been the opinion that the scope of
protection resulting from the patent ought to be understood in the same manner regardless of the
procedure in which the patent has been granted and if the EPC provisions, which are also applicable
in Poland in addition to the Industrial Property Law Act, refer to the theory of equivalents, then the
same approach ought to be used not only in relation to European patents but also to patents granted
under Polish procedure.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

The basic principle of command applicable in a lawsuit imposes the obligation on the parties to
submit evidence in support of their statements. If the evidence necessary to prove justifiability of the
pursued claims is in possession of the opposing party or third parties, the provisions of the Code of

Civil Procedure include regulations allowing it to be obtained.

Those that should be mentioned are the following:
the possibility of the court to issue a ruling ordering the parties to present documents, subject matter
of examinations, books, plans, etc;
the possibility of the court to issue a ruling ordering each person in whose possession is a document
constituting the evidence of a fact significant for resolving the dispute of presenting the document at a
time and in a location indicated by the court; and
in cases relating to a commercial or industrial company, the court may order account books and
documents of the company to be presented if it considers an extract from these books to be
insufficient.
Irrespective of the aforementioned ways of obtaining evidence available to other persons, the
provisions of the IPL permit the patentee to file a petition to secure evidence and also to file a
petition to secure claims by obliging the person infringing the patent or another person other than the
person infringing the patent, to provide information (which is essential to pursue claims for a patent
infringement) about the origin and distribution networks of products infringing the patent if the patent
infringement is highly plausible. Such information may relate exclusively to names and addresses of
producers, manufacturers, distributors and other previous owners of goods infringing patents or
amounts of produced, manufactured, sold, received or ordered goods infringing patents and to prices
paid for such goods.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Proceedings before the court of the first instance last, on average, from one-and-a-half to three-and-ahalf years.
Proceedings before the Court of Appeal generally involve one hearing, during which the allegations
contained in the appeal are heard. The Court of Appeal conducts evidentiary proceedings only in a
limited scope.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs of proceedings include court fees consisting of administration fees (the entry and court
expenses) and legal representation costs (legal assistance costs). The amount of court fees is
dependent on the number and types of demands included in the suit.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

If, in the opinion of any of the parties to the proceedings, the judgment of the court of first instance has
been delivered with violation of the substantive or procedural provisions, any party may lodge an
appeal within 14 days of receiving the reasoned judgment of the court of first instance. Reasons for
the judgment are presented by the court of the first instance at the request of a party, who, within
seven days of announcing the judgment, has submitted the proper petition in this capacity.
In the appeal, the appellant undertakes to present charges in which it indicates violations of law
committed by the court when hearing the case. The raised objections require substantiation. The
opposing party may respond to the appeal and present its position relating to the objections raised in
the appeal. The appeal is heard by a court composed of three judges with the participation of both
parties.
Proceedings before common courts in Poland are two-instance and, therefore, a judgment of the Court
of Appeal terminates the proceedings in the case, although provisions provide the possibility of
challenging such a judgment with the use of extraordinary means of challenge, which is the cassation
appeal to the Supreme Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

In view of the exclusive nature of the law of the right arising from the patent, the owner of a patent
obtains a certain type of exclusiveness for the use of a solution protected by the patent. In the event of
the patent owner abusing his monopoly the Polish Patent Office, under article 82 of IPL may issue a
compulsory licence to a third party in cases where it is necessary to satisfy the needs of the domestic
market and especially when it is in the public interest or when it is necessary to prevent a threat to
state security.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

In principle, patent infringement cases may be heard by the Arbitration Court. The previous signing by
both parties of an arbitration clause is, however, the necessary condition for the case to be heard by
the Arbitration Court. In practice, an arbitration clause is hardly ever signed. Hence, not many patent
infringement cases are heard under this procedure.
In proceedings before a common court, it is also possible to submit a petition to conduct mediation
between the parties. In the event of this petition being allowed, the case is directed to a mediator who
conducts mediation between the parties. If an agreement is reached, the mediator informs the court
about the amicable settlement of the dispute and the proceedings initiated before the common court
are discontinued. In the event of the settlement not being reached during the mediation proceedings
within the period indicated by the court for conduct of the case, the case is directed by the mediator to
be heard by the common court.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patents are granted for inventions that meet all the patentability criteria provided under the IPL,
namely, novelty, inventive step and industrial applicability, irrespective of the field of technology.
The IPL also stipulates what kind of solutions are not recognised as inventions and what kind of
inventions cannot be granted the right of protection. The first group, solutions that are not inventions,
includes, inter alia, computer programs as well as principles and methods of business activity. The
second group, non-patentable inventions, includes, inter alia, surgical or therapeutic methods of
animal and human treatment.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The right to obtain a patent belongs to the inventor, while in the case of multiple inventors, such a
right belongs to them jointly. When an invention has been made by the inventor in the course of
performing employment duties or in the execution of any other contract, the right to a patent belongs to
the employer or the commissioner, unless otherwise agreed by the parties. However, when the
applicant is not the inventor then it is obligatory to indicate the legal basis of the applicants right to
apply for a patent.
The information on who is a rightholder is kept in the Patent Register maintained by the Polish Patent
Office. The Register is open to public inspection and it is presumed its contents are publicly known.
The agreement for the assignment of a patent or right to obtain a patent must be made in writing on
pain of nullity. The assignment of patent rights is deemed effective for third parties when the
appropriate entry in the Register has been made.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

A patent granted by the Polish Patent Office may be invalidated in whole or in part upon the motion of
any person having a legal interest therein. A patent may be declared invalid only when the statutory
requirements for granting patent protection have not been met, namely, lack of novelty, lack of
inventive step and lack of industrial applicability.

Patent invalidity proceedings are held before the Polish Patent Office. Decisions rendered by the
Polish Patent Office take effect ex tunc, although the patent holder may file an appeal with the District
Administrative Court and, later, a cassation appeal with the Supreme Administrative Court.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

When examining the premise of novelty, the Polish Patent Office follows the principle of absolute
novelty, namely, global novelty. An invention is deemed new only if it is not a part of prior art. Prior
art constitutes of everything that has been made available to the public in a written or oral form, by
use, displaying or disclosure in any other way before the date according to which priority is
determined. Prior art also comprises the content of patent applications or utility models that benefit
from earlier priorities and have not been made available to the public, provided that they are
published according to the manner specified by the IPL.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Pursuant to the provisions of the IPL an invention involves an inventive step if the invention does not
result from prior art in a manner obvious to a person skilled in the art. When assessing the inventive
step, the documents mentioned in question 18 are not taken into consideration, namely, claiming
priority date patent applications and utility models that were not published. The IPL does not
describe the manner of inventive step assessment in detail. Nevertheless, in the case of patent
invalidity proceedings the Polish Patent Office applies the problemsolution approach developed
by the European Patent Office, which consists of five stages. Such an approach is also used by
experts of the Polish Patent Office in assessing the patentability in the patent granting proceedings.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

When an unauthorised person files a patent application or obtains a patent, the entitled person may
request discontinuation of the proceedings, to invalidate the patent, to grant the patent in his or her
favour or to have the granted patent transferred against reimbursement of the incurred costs of
granting the patent. The patent holder may execute his or her rights during the course of filing
proceedings before the Polish Patent Office. However, after the patent has been granted, the patent
holder may request to invalidate the patent in the course of a litigious proceeding before the Polish
Patent Office or he or she may request to transfer the right to a patent in the course of civil
proceedings before the common courts. Moreover, the patent holder may demand from the person

who illegally applied for a patent or obtained a patent to hand over of all profits and redress all
damage based on applicable law.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Any natural or legal person who has been using the invention in good faith in the territory of Poland
on the priority date may continue to use it free of charge in his or her enterprise to the extent he or she
has been using it before. This right also applies to a person who, at the same time, prepared all the
relevant devices necessary to exploit the patent. The above-mentioned rights are recorded in the
Patent Register upon the request of the person concerned and may be transferred to another person
with the same enterprise. The prior users right covers all possible forms of exploiting the invention,
however, such an extension of the scope of use in relation to the original use requires the consent of
the patent holder. The lack of such consent results in patent infringement.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

In the event of a patent infringement, the court may, apart from non-pecuniary claims (noncontravention, announcement, ruling on unlawfully manufactured products, preparations and
materials), take pecuniary claims into consideration.
The patentee may demand from the person infringing the patent to return the unlawfully obtained
profits and, in the case of a culpable infringement, to also redress the damage:
in general terms, namely, those resulting from the applicable provisions of the Code of Civil
Procedure, which among the basic principles of liability for damages for a tort indicate that each
person who by his or her fault has inflicted damage undertakes to redress the damage; or
by the payment of the sum of money in the amount corresponding to the licence payment or other
relevant remuneration, which, at the time of pursuing them, would be due for granting consent by the
authorised party to use the invention.
The court may order a person who has infringed the patent, at his or her request and in the event when
the patent infringement has not been culpable, to pay a sum of money to the authorised party if the
abandonment of infringement would be disproportionately severe for the person infringing the patent
and the payment of the sum of money properly complies with interests of the party entitled to the
patent.

23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

The law provides for two kinds of motions for preliminary injunctions: one consisting of settling the
reciprocal relations between the parties for the duration of the proceedings and the other, allowing
collection of the information necessary to enforce the claims, which, in particular, include
information on the origin and distribution networks of goods or services that infringe a patent, which
may, in particular, refer to the suppliers and other earlier owners of the goods or services that
infringe the patent, the amounts of the manufactured, prepared, sold, received or ordered goods or
services that infringe the patent, as well as the prices paid for those goods and services.
Motions for interim injunctions may be filed along with the suit or before the proceedings are
initiated. If the motion is filed before the suit is brought, the court, when accepting the motion, affixes
a time limit of 14 days within which to bring a suit. Otherwise, the interim injunction granted by the
court expires.
The prerequisite for the grant of an interim injunction is evidencing the probability that the patent has
been infringed, the existence of claims resulting from such infringement, as well as existence of a
legal interest in demanding such an injunction.
The motion for an interim injunction, as a rule, is heard in a closed session. But in the case of an
injunction for collection of evidence concerning the origin and distribution network for the goods or
services that infringe the patent, the decision is issued by the court upon a hearing with participation
of the parties. A motion for the grant of an interim injunction should be issued by the court within
seven days from the date on which the motion is lodged. In practice, this period is extended from two
weeks to two or three months.
A decision on an injunction can be challenged within seven days by lodging a complaint with the
Court of Appeal.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The provisions of Regulation (EU) No. 608/2013 of the European Parliament and of the Council of 12
June 2013 concerning customs enforcement of intellectual property rights and repealing Council
Regulation (EC) No. 1383/2003 constitute one of the sources of obligatory law. Therefore, in order
to obtain patent protection on the border, the patentee or other entitled person, should address the
Director of the Customs Office in Warsaw with an application for patent protection on the border and
submit documents to confirm that they have exclusive rights. Upon issuance of a decision on the grant
of protection, if customs authorities become suspicious that some goods entering Poland infringe a
patent, they can seize the goods and notify the patentee and other entitled person who, within the time
limits defined in Regulation (EU) No. 608/2013, may initiate adequate actions based on the
provisions of civil law and criminal law. If such actions are initiated, the goods are seized until
completion of the patent infringement procedure.

Both the civil and criminal law procedures in cases of this kind are based on the general rules of
criminal or civil law as specified in the Criminal Procedure Code and in the Civil Procedure Code,
respectively.
If no procedure is initiated in order to enforce patent protection, the seized goods are released.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The general principle pursuant to the applicable provisions is the obligation of the party losing the
lawsuit to defray the costs of proceedings. The term costs of proceedings is understood as court
fees (the entry, expert opinion fees, etc) as well as costs of legal representation. The amount of court
fees may be calculated based on the applicable provisions in this sphere, which define the amount of
minimum rates for activities of attorneys in cases in civil procedures. These provisions provide the
possibility of increasing the amount to a maximum of six times in particularly complex and
complicated cases. The attorney may also demand the ruling of reimbursement of the costs of legal
representation based on the agreement under which he or she is bound with the represented party and
in which the amount of the remuneration for conducting the case has been defined. However, it should
be pointed out that the court is not obliged to grant remuneration in the full amount resulting from the
agreement.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

In the event of wilful infringement, the patent holder may claim compensation for damages in
compliance with the general principles of the Civil Code or by payment of a lump sum equivalent to a
licence fee or other remuneration that would have been due to the patent holder at the date of the
demand if the patent holder had allowed the infringer to use the invention.
To establish whether the infringement is wilful, it is necessary to demonstrate that the alleged
infringer knew that his or her activities infringed the patent.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Claims for the patent infringement may be pursued only after the patent has been granted.
In the event that the party infringing the patent has acted in good faith, the claims may be pursued for
the period commencing after the date on which the Patent Office has announced the invention
application and in the event of the entitled party earlier notifying the person violating the law about
the application having been made from the date of this notification. Claims for patent infringement

expire after three years. However, in each event above, the claim expires in five years from the date
of patent infringement. The statute of limitation is suspended for the period between submission of the
invention application to the Patent Office and granting of the patent.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

The provisions do not provide the obligation to place marking on a product to indicate that the
product is protected by patent protection, however, they do contain the norm permitting the patentee to
indicate, in particular with the proper marking on goods, that his or her invention is protected. It
should be pointed out that it is an offence to mark products that are not protected by patent protection,
to place them on the market with inscriptions or images that create a false impression that the items
are protected by patent protection and also to place on the market goods marked in such a manner,
having the awareness of their erroneous marking and preparing, storing, placing in announcements and
notifications information that creates the impression that the items are protected by legal protection.
Such actions carry a fine or a penalty of detention.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The applicable provisions provide the possibility of granting a licence to use an invention protected
by a patent. The licence agreement must be in writing otherwise it is null and void. The parties to the
agreement, in accordance with the principles resulting from the provisions of the agreement, possess
the freedom to form the conditions on which the licence agreement is concluded.
The licence agreement may grant a permit for the licensee to use the invention in a limited scope (the
limited licence) or in the same scope as the licensor (the full licence). Depending on whether the
authorisation to use the licence is granted to only one licensee or to many entities, the exclusive and
the non-exclusive licence agreement may be distinguished.
The applicable provisions also provide the possibility of containing in the licence agreement
authorisation for the licensee to grant a further licence (the sub-licence). At the request of the
interested party, the licence agreement is subject to entry into the Patent Register. The agreement
becomes effective towards third parties at the time of making the entry.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence is a permit to use the patented invention of another person. It is granted by the
Polish Patent Office. Establishing the compulsory licence, the Polish Patent Office defines the scope
and duration of the licence and detailed conditions of its execution as well as the amount of licence
fees and the manner and deadline for their payment.
The compulsory licence may be granted, inter alia, in the following situations:
if it is necessary in order to prevent or remove a threat to national security;
if an abuse of a patent is observed; or
if it is observed that the party entitled to the patent granted with earlier priority, prohibits, by not
giving consent to conclude the licence agreement, satisfying the needs of the domestic market by using
the patented invention, the use of which would enter into the scope of the prior patent.
The compulsory licence is a non-exclusive licence. At the request of the interested party, it is subject
to the entry into the Patent Register.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The filing procedure lasts approximately from four to six years. The Polish Patent Office is working
on a time-saving procedure, reducing this to an absolute minimum. Proceedings before the Polish
Patent Office may be expedited (see question 32).
The official fee for the patent application is 550 zlotys. When specification, claims and drawings
altogether exceed 20 pages then each additional one costs 25 zlotys (since the payment includes the
search price it is not necessary to file a separate application and pay an additional fee). The basic fee
is increased by 50 per cent when the application covers more than two inventions. The sum of all
annuity payments (from the first period of protection (years one to three) to the 20th year of
protection) is 15,000 zlotys.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The Polish Patent Office publishes the patent application immediately after 18 months from its
priority date. Nevertheless, publication may be expedited upon the applicants request. Such a request
costs 60 zlotys and may be filed within 12 months from the filing date. Together with the request for
an early publication, the applicant may also request to speed up the search procedure (such a request
should be duly justified).
Under the Agreement between the Polish Patent Office and the Japanese Patent Office (from 31
January 2013) and the State Intellectual Property Office of China (from 1 July 2013) as well as The
United States Patent and Trademark Office (from 1 November 2014) a Polish applicant may use an
expedited procedure for granting a patent in Japan, China and in the USA, based on the corresponding

Polish patent application. Additionally, from 1 November 2014 a simplified filing procedure, PPH
MOTTAINAI, with the Japanese Patent Office is available for Polish applicants.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application should comprise, at least, a request to grant a patent containing information
identifying the applicant and particulars of the inventors, description of the invention disclosing
subject matter of the application, at least one claim, an abstract and drawings, if necessary.
In the case, when the applicant would like to claim priority from an earlier application, the respective
priority document shall be provided.
The Patent Office assigns a filing date and a number to the application, irrespective of its content. The
filing date is the day the documents were received by the Patent Office and not the day they were sent.
After the filing date the scope of the invention cannot be extended.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

If the applicant is aware of prior art then should indicate at least the bibliographical information of
the publications he or she is familiar with. This is not obligatory, but recommended. A description
may include an illustration of the prior art.
The applicant is not obliged to inform about subsequent documents forming part of the prior art after
the filing date of patent application, however the relevant prior art found during examination may be
added to the patent description. Such an addition of prior art is permitted.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Until a decision to grant a patent is issued, it is possible to file, voluntarily or upon request, one or
more divisional applications bearing the date of the original application. The scope of the divisional
application is limited by the original disclosure of the application and it cannot be extended or
coincide with the scope of the original application.
The applicant may also file a patent of addition for an already granted patent that is still in force. A
patent of addition may comprise an improvement or an addition to the improvement that cannot
function separately but only with the main patent, whose number should be indicated in the claims. It
is also possible to obtain a patent of addition for a patent of addition that is already granted. A patent
of addition may become an independent patent after the main patent terminates due to causes unrelated
to the patent of addition (eg, abandonment of the main patent or failure to make the annuity payment

for the main patent). In other words, a patent of addition exists only with the main patent.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Each decision issued by the Patent Office may be contested by filing a request for re-examination of
the case. Such a request is assigned to an examiner appointed by the Patent Office, provided that it
cannot be the same examiner who issued the contested decision. The request for re-examination must
be filed within two months from the day the decision was served and it is subject to payment.
Within 30 days from the day the final decision was delivered, each party has a right to file a
complaint to the District Administrative Court along with the fee of 1,000 zlotys.
Within 30 days from the day the party was notified of the courts judgment, it has a right to file a
Cassation Appeal with the Supreme Administrative Court. The fee for the appeal is 500 zlotys.
Administrative courts (the District Administrative Court and the Supreme Administrative Court)
exercise control over the legality of the administrative decisions rendered by the Polish Patent Office.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

In accordance with article 246 of the IPL, within six months of the publication in Patent Office
News of the mention on the grant of a patent, any person may give reasoned notice of opposition to a
final decision of the Patent Office on the grant of a patent. The grounds for opposition may be the
same as the grounds for invalidation. The Patent Office informs the patent holder about the opposition
and invites him to file his observations within a fixed time limit.
If the patent holder claims the opposition to be unjustified, the case is submitted for examination in the
course of litigation proceedings. Otherwise, the Patent Office decides on a reversal of the decision on
the grant of a patent and discontinues the proceeding.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The date the application is filed with the Patent Office determines the priority date of the application.
When several applications concerning the same invention are being filed, the patent is granted to the
one with the earliest filing date. However, if such applications are filed independently and on the
same date, then, after separate searches, each of them may be granted a patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Until the final decision is issued, it is possible for the applicant to make additions and corrections to
the application provided they do not go beyond the content of the application as filed. However, any
broadening amendments to the claims are admissible before the publication of the application (before
the 18th month from the filing date). It is not possible to resume the search procedure after the patent
has been granted. The scope of patent claims can be limited as a result of an opposition or patent
invalidation proceedings. The patent holder may surrender the patent. It is not possible to alter the
claims in the judicial proceedings.
40 Patent duration

How is the duration of patent protection determined?

The term of a patent is 20 years from the filing date, provided that the annuity payments are made
regularly.
In particular cases, the right of protection can be extended for medicinal products and plant protection
products by filing the application for the grant of supplementary protection right. Such supplementary
protection rights (SPC) are recorded in the Patent Register, which contains information about the
duration of the SPC.

Dorota Rzewska

dorota.rzazewska@jwp.pl

Piotr Godlewski

piotr.godlewski@jwp.pl

Mirosawa Wayska

miroslawa.wazynska@jwp.pl

Sienna Center
ul elazna 28/30
00-833 Warsaw
Poland

Tel: +48 22 436 0507

Fax: +48 22 436 0502
info@jwp.pl
www.jwp.pl

Russia
Vadim Mikhailyuk and Anna Mikhailyuk
Mikhailyuk, Sorokolat and Partners
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Protection against patent infringement can be implemented by legal actions in the frame of civil,
administrative or criminal proceedings.
According to the Civil Code any interested person may apply to the arbitration (commercial) court for
the protection of its violated patent right.
The administrative or criminal action with the law enforcement agencies may be initiated on the basis
of the Code of Administrative Offences and the Criminal Code.
The Criminal Code provides that violation of patent rights may be considered as a crime. The illegal
usage of the invention, utility model or industrial design, the disclosure of the essence of an invention,
utility model, or industrial design without the consent of its author or applicant and before the official
publication or the illegal acquisition of authorship may be the grounds for the implementation of the
criminal responsibility.
The specialised Court for Intellectual Property Rights was created in February 2013 in the Russian
Federation. It is embedded in the system of commercial (arbitrage) courts and considers the disputes
concerning intellectual property rights regarding:
challenging the regulations of the federal bodies in regard to intellectual property;
termination of the legal protection of intellectual property objects;
challenging of the non-normative legal acts, decisions and actions (omissions) of the Russian Patent
and Trademark Office;
establishment of the patent owner;
invalidation of invention, utility model and industrial design patents issued in violation of right of
authorship; and
intellectual property rights infringement cases (as cassation instance).
Patent invalidation cases are also considered by the Board of Patent Disputes, which is a subdivision
of the Patent and Trademark Office. Its decisions can be appealed to the Court for Intellectual
Property Rights.
The decisions of the specialised Court for Intellectual Property Rights take effect from the date of
their rendering and there is no appeal stage. Nevertheless, parties to the proceedings have the
possibility of challenging decisions by filing cassation claims to the presidium of the said court.
The specialised Court for Intellectual Property Rights also acts as the court of cassation instance for

the decisions adjudicated by the arbitration courts of the regions of the Russian Federation in the first
instance and by the arbitration appeal courts regarding the protection of intellectual property rights.
The Court for Intellectual Property Rights combines the authorities of the courts of the first and
cassation instances to increase the quality level of intellectual property disputes consideration.
2 Trial format and timing

What is the format of a patent infringement trial?

Under the general principles of the legislation of the Russian Federation, the burden of proof lies on
the person bringing an action. Thus a plaintiff in patent litigation is obliged by the law to prove the
existence of the infringement. In this respect, the court does not regulate the manner in which an
infringement is to be proven. Under the legislation of the Russian Federation the following are
accepted as evidence:
depositions;
public documents;
private documents;
expert testimony;
judicial audit or inspection;
witnesses; and
photographs, writs and stenographic notes, and in general all other data resulting from scientific
researches.
The legislation of the Russian Federation permits live testimony of witnesses. Also, an expert
testimony can be filed as documentary evidence or as an on-trial report.
The consideration in the court is conducted by the judge. Jury participation in patent infringement
actions is not stipulated.
The trial in the court of the first instance lasts approximately six to 12 months, but this period may be
extended due to the presence of various factors, such as the period of examination (if any).
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Each person participating in the case must prove the circumstances used as the grounds for claims or
objections. Absence of guilt in an infringement case should be substantiated by the infringer.
Each person participating in the case must provide the evidence used in substantiation of the claims
and objections to other parties participating in the case before the court session or within the term
fixed by the court.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial

ruling or declaration on the accusation?

Any patentee or exclusive licensee has the right to file a suit against a third party infringing his or her
rights. An accused infringer may bring a lawsuit to obtain a judicial ruling or declaration on the
accusation in some cases (eg, against the actions of the patent holder regarding spreading
unsubstantiated information about the infringement), however, the practice of such cases is very
limited.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

According to the Civil Code, the extent of legal protection of the invention or utility model patent is
determined by a set of claims. The patent infringement takes place in the case of the violation of the
entirety of the claims.
Russian legislation does not stipulate special liability for contributory or multiple party infringement.
Still, in the case of multiple party infringement, all the infringers (producers, distributors, etc) may be
sued jointly or individually with individual responsibility implemented for each of the infringers. If
each party only practices the usage of part of the set of claims no patent infringement will be
established. The parties of the multiple infringement will not be jointly or individually liable if their
actions do not cover all the set of claims of the patent.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

A claim may be filed to the commercial court jointly against several defendants (joinder of the
parties).
The joinder of parties is allowed if:
the subject matter of the dispute comprises the common rights and duties of several defendants;
the rights or duties of several defendants have the same ground; and
the subject matter of the dispute comprises homogeneous rights and duties.
In proceedings, each of the defendants acts independently towards the plaintiff. Participants of a
joinder of parties may entrust one or several participants of the joinder to conduct the case.
If there is involvement of another co-defendant in the case the case should be reconsidered.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place abroad cannot support a patent infringement action in the Russian
Federation.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

According to article 1358 of the Civil Code of the Russian Federation, exclusive right to use an
invention, utility model, or industrial design by any means not contrary to the law belongs to the
patent holder.
An invention shall be deemed as being used in a product or a process if the product contains, or the
process involves, each feature of the invention stated in an independent claim contained in the patent
claims of the invention or a feature equivalent thereto that has become known as such in this art prior
to the priority date of the invention. A utility model shall be deemed as being used in a product if the
product contains each feature of the utility model stated in an independent claim contained in the
patent claims of the utility model.
With respect to determination of a scope of rights arising from a patent, equivalence is a recognition
that at least one of the technical means or features used to solve a technical problem can be replaced
by other means or a feature.
Solutions (features) are considered equivalent if they are characterised by the same technical
function, with the same way of achieving the technical effect and if a possibility of a replacement is
known prior to use in the patented object. However, it should be noted that if a feature is not known
as an equivalent before the date of its use in the subject containing the patented invention, the patent
should not be considered used.
In view of this, constancy of the subject matter, achievement of the same technical effect and
anticipation of equivalency of a solution (feature) prior to use thereof in the patented subject are the
criteria that define the extent of equivalents in determining whether the use of such equivalents can be
considered as infringement.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

A plaintiff must provide the court with all available evidence to substantiate his or her demands.
Evidence for a lawsuit should be collected by a claimant on its own. Evidence that cannot be
obtained by the plaintiff may be vindicated by the demands of the court in the frame of the court
proceedings.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically the term for the consideration in the court of the first instance is about six to 12 months
depending on the course of the proceedings. The consideration of the case in the appeal court may
take another three to five months, or even longer.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent litigation infringement lawsuit mainly include court fees, attorneys fees and
experts fees.
Litigation costs may vary depending a number of factors (the essence and the level of complexity of
the case, the position of the parties, etc) and may range from about 8,000 to 15,000 for the trial of
the first instance.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

According to the current procedure parties in the case (including the third parties involved in the
proceeding) have the right to dispute a decision of the court of the first instance that is not entered into
force in the appeal instance. An appeal may be filed within one month from the date of the full text of
the disputed decision being issued. The appeal may not contain new claims that were not considered
in the first instance.
From the results of the consideration the appeal court is entitled to:
leave the decision of the court of the first instance without amendment and the appeal without
satisfaction;
reverse or amend the decision of the court of the first instance fully or in part and to issue a new
judicial action on the case; or
reverse the decision fully or in part and to terminate proceedings in the case, or to leave the
statement of claim without full or part consideration.
Cassation claims on the decisions of the arbitration courts can be filed to the Court for Intellectual
Property Rights within two months from the date of entry of the appealed decision into force.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

As a general rule, the patent owner has the right to use a patent in any legitimate manner, in particular
through permitting or prohibiting the usage to other persons. The enforcement of a state-given right is
presumed as not constituting a violation.
Nevertheless, the patent holder actions concerning unfair commercial competition in using or

enforcement of the patent may be considered as an infringement by the Anti-monopoly Service of the
Russian Federation.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

In spite of the fact that Russian legislation stipulates some alternative dispute resolution techniques,
such as mediation and an arbitration tribunal, they are not popular in patent disputes. At the same
time, there are no provisions requiring the mandatory use of an alternative dispute resolution method
or pretrial actions concerning the patent dispute settlement before bringing a patent infringement
action.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to the Russian Civil Code inventions are considered protectable if they concern technical
solutions in any area related to a product (including a device, substance, micro-organism strain or
cell culture of plants or animals) or method (a process affecting a material object using material
means).
The following shall not be deemed as objects of patent rights:
methods of cloning human beings and clones;
methods of modifying the genetic integrity of human germ cells;
use of human embryos for industrial and commercial purposes; and
other solutions that are contrary to public interest, principles of humanity and morality.
The following shall not be deemed inventions (if the patent application refers to the above subject
matter per se):
discoveries;
scientific theories and mathematical methods;
proposals concerning solely the outward appearance of manufactured articles and intended to satisfy
aesthetic requirements;
rules and methods of games and for intellectual or business activity;
computer programs; and
ideas on presentation of information.
Legal protection as inventions shall not be granted to:
varieties of plants, breeds of animals and biological methods of obtaining such, with the exception
of microbiological methods and products obtained by the use of such methods; and
layout-designs (topographies) of integrated circuits.

16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The exclusive right in an employees work shall belong to the employer unless a labour contract or
other contract between the employer and the author has provided otherwise. An independent
contractor or a joint venture is not an employee, so a right to inventions should be declared in the
contract. If an invention is created in the performance of a contract of work and labour, or a contract
for the performance of scientific or technological research that did not directly envisage such a
creation, the right to obtain a patent and exclusive right for such an invention shall belong to the
contractor (performer) unless the contract provides otherwise. In the case of multiple inventors, all or
any of them may own the patent depending on the agreement between the inventors.
The patents ownership is officially registered at the Russian Patent Office, which grants the
registration of the patent after verifying that all requirements have been met. The rights related to the
patent may be transferred under an assignment of rights agreement, which shall be registered at the
Russian Patent Office, and are not valid until recorded.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

According to the Civil Code of the Russian Federation the validity of a patent may be challenged on
the following grounds:
failure to correspond to the criteria of patentability (novelty, inventive level or industrial
applicability) stipulated by the legislation;
failure to disclose the character of the invention in the initially filed application materials at a level
that would allow any expert in a corresponding field of invention to replicate it;
essential features in the claims of the granted patent were absent in the description or claims of the
application at the filing date;
grant of a patent in the presence of the several applications for an identical invention with the same
date of priority; and
grant of a patent with the wrong declaration of the inventor or patent owner.
Patent invalidation disputes based on the first four grounds mentioned above are considered by the
Board of the Patent Disputes. Decisions of the Board regarding such cases can be appealed to the
Court for Intellectual Property Rights. Patent invalidation disputes related to the wrong declaration of
the inventor or patent owner are considered by the Court for Intellectual Property Rights directly.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

An invention shall be considered to be novel if it does not form part of the state of the art. The state of
the art shall include any information published anywhere in the world and made available to the
public before the priority date of the invention. The exception to absolute novelty requirements is a
disclosure of information relating to an invention by the author of the invention, applicant or other
person having received this information directly or indirectly from them and who made public
information on the fundamentals of the invention within a six-month period before filing the
application to the Russian Patent Office.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

An invention shall involve an inventive step, if having regard to the state of the art, it is not obvious to
a person skilled in the art. According to the Russian administrative regulations, checking the inventive
step may be conducted in the following ways:
determining the closest analogue;
identifying features described in an independent claim of the claimed invention that are different
from the features of the closest analogue (distinguishing features);
identifying solutions from the prior art with features corresponding to the distinctive features of the
claimed invention; and
analysing the prior art in order to confirm known effects of features that coincide with the distinctive
features of the claimed invention leading to the technical result indicated by the applicant.
The invention is recognised as not being obvious to a person skilled in the art if, in the course of the
above-indicated checks, no solutions with features coinciding with the distinctive features of the
claimed invention have been identified or such solutions have been identified, but known effects of
these distinctive features leading to the technical result indicated by the applicant have not been
confirmed.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

According to article 1362 of the Civil Code of the Russian Federation, if a patent holder cannot use
an invention to which he or she has the exclusive right without thereby infringing the rights of a holder
of another patent (the first patent) who has refused to conclude a licence contract on terms
corresponding to common practice, the patent holder shall have the right to initiate court action
against the holder of the patent (the second patent) for the granting of a compulsory simple (nonexclusive) licence of the invention of the holder of the first patent for use within Russian territory.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Any person who was using the patented method or device in good faith within the territory of Russia
before the priority date shall have the right to proceed with the usage on a non-repayable basis
provided that the scope of the usage is not extended. The same applies for the person who started the
necessary preparations for such usage. Such defence covers commercial use of all types of
inventions.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The general rule of Russian civil law is that the damages for infringement tend to provide fair
compensation but do not have a punitive nature.
The rightholder shall have the right for claiming the losses for each case of unlawful use of the patent.
According to article 15 of the Civil Code of the Russian Federation, the losses shall be understood to
mean the expenses, which the person whose right has been violated made or will have to make to
restore the violated right, the loss or the damage done to his or her property (the compensatory
damage) and also the profits, not received, which this person would have derived under the ordinary
conditions of the civil turnover, if his or her right were not violated (the missed profit).
The amount of the losses should be proved and this is accrued from the date on which the
infringement existence is proven.
Alternatively instead of recovering the losses the rightholder may request the collecting of
compensation from the infringer in the amount of:
10,000 to 50 million roubles (the exact amount is determined at the discretion of the court based on
the severity of the infringement); and
twice the amount of the usual cost of the lawful use of the invention.
In this case the rightholder should prove the fact of the infringement and is not obliged to substantiate
the amount of losses inflicted by the infringement.
In the frame of the administrative proceeding, several sanctions of a material character may be
imposed on the infringer (fine, equipment seizure, etc). The patent holder may also bring an additional
claim for losses.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

No special provisions regarding injunctions in IP disputes is stipulated by legislation and the

injunctions (temporary and preliminary) are applied on common grounds. To secure an infringement
claim with regard to material carriers, equipment and materials that are presumed as infringing the
exclusive patent right, the injunction measures set forth by the procedural legislation will be applied,
including seizure of material carriers, equipment and materials. The plaintiff is obliged to prove the
necessity of the injunctions. Counter-injunctions may be applied by the decision of the court.
Also, according to existing court practice, the prohibition of selling the presumptively counterfeit
products may be used as the provisional injunction measure. But its usage is very restricted and the
courts, in general, are hostile to the usage of such a measure.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The legislation of the Russian Federation does not allow for administrative actions to block the
importation of infringing products into the country. In the Russian Federation there is no specific
tribunal or proceeding available for banning importation of infringing products.
Nevertheless, it is should pointed out that according to article 1252 of the Civil Code of the Russian
Federation, the patent rightholder may request a prevention of the actions infringing the right or
creating a threat of its infringement and reimbursement of damages.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In Russian court proceedings a successful litigant recovers court taxes and attorney fees in an amount
that is at the discretion of the court. The recovery of the costs may be conducted in a separate
proceeding.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

According to the general rule the liability for infringement is applied in the case of a guilty activity.
At the same time there are several exceptions from this rule, such as compensation of damages, which
can be applied even if the infringer was not aware he was involved in infringing activities. However,
such damages can later be recovered by way of redress from the original infringer.
In case of repeated or flagrant violation of intellectual property rights the prosecutor can initiate the
liquidation of infringing legal entity or termination of registration of an individual entrepreneur.
The fact of the wilful character of the infringement entails no additional punishment, but it may
influence the amount of the damages and recovery of attorneys fees.

Any materials proving that the infringer has actual knowledge of the existence of the patent and the
patent infringement can be taken into account by the court considering the wilful infringement.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Russian legislation does not provide a special time limit for seeking a remedy for patent infringement.
For this reason the establishment of this time period has common grounds. According to the general
legislative requirements, the term for filing the court claim is three years after the date when the
plaintiff found out or had the possibility of finding out about the infringement of his or her rights by
the defendant.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

According to the patent legislation of the Russian Federation, the special marking of the patented
product is not obligatory. Nevertheless most patented products are marked with information regarding
the number of the patent and information regarding the patent holder.
Responsibility for false patent marking may be imposed on the basis of the general rules, particularly
of the anti-monopoly legislation.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The terms and conditions of a licence contract are under the sole responsibility of the contracting
parties and can be chosen by them. Text in the licence agreement must include the subject matter
(patent), filing date, title, a territory and the term of the licence, a reward and ways of use of the
invention. Licence agreements must be registered with the Russian Patent Office, otherwise, or until
they are registered, the agreement will be considered invalid. If any of the above-mentioned
obligatory points are not included in the agreement, the Russian Patent Office issues an office action
asking for the agreement to be improved. The registration procedure may last about three months.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The compulsory licensing provisions are governed by the Civil Code of the Russian Federation,
article 1362. Compulsory licences may be granted by a court decision. If an invention fails to be used
or is insufficiently used by the patent holder during the period of four years from the issuance of a
patent that leads to an insufficient offer for the respective goods, works or services on the market, any
person willing and ready to use such an invention who has been refused by the patent holder to
conclude with such a person a licence contract on terms corresponding to common practice shall have
the right to initiate a legal action against the patent holder for the granting of a compulsory licence for
use within the territory of the Russian Federation.
If the owner of the patent cannot use the invention without infringing the rights of another patent
owner, he or she shall have the right to demand of the latter that he or she conclude a licence contract.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The invention registration procedure lasts approximately two years, but it may take up to about five
years to obtain an invention patent in Russia in cases where examination is deferred and considering
the time required to file responses to possible office actions.
Official fees in Russia depend on the number of claims in the application and the number of
independent claims. The official filing fee in Russia is fixed for the first 25 claims. The official filing
fee for extra claims starts from the 26th claim and each further claim. The official examination fee
should be paid for each independent claim, with a discount being available for applications that are
national phases of PCT applications, in respect of which the International Search Report was
established. The official grant fee is fixed for any application.
The minimum official fees associated with filing a patent application up to grant in Russia for a
national phase PCT application are only about 100.
Payment of annuities is not stipulated for pending applications; the first annuities for a patent starting
from the third year till the year when the grant decision is issued are paid simultaneously with
payment of the official grant fee. All subsequent annuities are counted starting from the filing date and
are paid before the beginning of the next year. A missed payment is payable within six months after
the due date provided that a 50 per cent fine is paid.
The cost of services of a professional patent attorney and the cost of preparing the Russian translation
of the application required for processing are additionally incurred.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

It is not possible to expedite patent prosecution according to a separate national procedure, however,

it is possible to request the accelerated patent prosecution according to the Patent Prosecution
Highway (PPH) programme. At the present time, Russia has signed mutual PPH agreements with
China, Denmark, Finland, Japan, Korea, Spain, Portugal and the United States. No separate official
fee is stipulated for requesting accelerated patent prosecution according to the PPH programme.
However, it is necessary to provide a number of additional documents.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

An application for the grant of a patent for an invention shall relate to one invention or to a group of
inventions so linked as to form a single inventive concept (requirement of unity of the invention).
An application for an invention shall contain:
a description of the invention, disclosing it in sufficient detail for it to be carried out;
claims stating its essential features and fully supported by a description;
drawings and other materials, if they are necessary for understanding the essence of the invention;
and
an abstract.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The applicant is not obliged to disclose prior art, although it may be cited in the corresponding
description section of the application.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

Additional claims disclosed in an earlier application may be protected by filing divisional

applications. Divisional applications can be filed before registration of a patent on the parent
application or before the possibility of filing an appeal against the refusal to grant a patent on a parent
application is exhausted. The content of the divisional application shall not go beyond the scope of
the parent application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

A decision of refusal to grant a patent for an invention may be opposed by the applicant by submitting
an opposition to the Chamber for Patent Disputes within seven months from the date of forwarding of
the decision or of receipt of copies of materials referred to in the decision refusing the grant of a
patent. The decision of the Chamber of Patent Disputes enters into force from the date of approval
thereof. It may be in turn contested in the Court for Intellectual Property Rights.
The Court for Intellectual Property Rights considers disputes relating to the protection of intellectual
property rights as a court of first instance and cassation. Cases of this category are considered by the
Court regardless of whether the parties are organisations, individual entrepreneurs or citizens.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

A decision to grant a patent for an invention may be opposed by the applicant by submitting an
opposition to the Chamber for Patent Disputes within seven months from the date of forwarding of the
decision. The decision of the Chamber of Patent Disputes enters into force from the date of approval.
It may be contested by judicial procedure.
The grant of a patent for an invention may be also opposed at any time during its validity or after
expiration of the validity term by submission of an opposition to the Chamber for Patent Disputes by
any person who has become aware of the following violations:
failure of the invention to meet the requirements of patentability;
non-compliance of the initially filed application documents with the requirement of disclosure of the
essence of the invention in a scope sufficient for implementation of the invention by a skilled person;
the claims for the invention cited in the decision to grant the patent contain features that were
missing on the filing date of the application, in the description of the invention or in the claims of the
invention; and
grant of a patent in the case of several applications for identical inventions having the same priority
date in breach of the conditions provided by the law.
The grant of a patent for an invention may be opposed by judicial procedure by any person who has
become aware of grant of a patent listing as the author or patent holder of a person who is not the
author or patent holder or without indication as to the author or patent holder.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The first-to-file system is adopted under the Russian patent system. Namely, where an invention has
been made independently by two or more persons at the same time, the right to a patent will belong to
the person who files the first application or who can claim an earlier priority date.
According to the Russian Civil Code, in the event that the examination process reveals that several
applicants have filed applications for identical inventions and that these applications have the same
priority date, a patent for the invention shall be granted only for one of these applications, namely, to

the person determined by agreement among the applicants.

Within 12 months from the date of receipt from the federal executive authority for intellectual
property of the respective notification, the applicants should inform the federal agency of the
agreement reached among them. Upon the grant of the patent on one of the applications, all the authors
indicated in the applications shall be recognised as the co-authors with respect to identical
inventions. If the aforementioned communication or request for extending the established time period
fails to be received from the applicants within the established time period by the federal executive
authority for intellectual property the applications shall be considered as withdrawn.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

According to article 1398 of the Civil Code of the Russian Federation, a patent for invention may be
revoked as a whole or in part at any time during the validity of the patent. For this purpose, an
opposition with the reasons for invalidation of a patent is filed with the Chamber of Patent Disputes.
During an opposition procedure the Chamber of Patent Disputes may suggest modifying a set of
claims of the granted patent. In this case, the final decision of the Chamber of Patent Disputes will be
taken with consideration of an additional informational search. Also, during opposition procedure the
patent owner has a right to file a request for conversion of the patent for an invention into a patent for
a utility model, if the validity term of the patent for an invention has not exceeded the stipulated
validity term for a patent for a utility model.
Meanwhile, it should be noted that patent claims cannot be modified during a lawsuit.
40 Patent duration

How is the duration of patent protection determined?

The maximum duration of a patent is 20 years counting from the filing date. Meanwhile, according to
Russian legislation, the patent with an object relating to medication, a pesticide or an agrochemical,
the use of which requires duly granted permission of the competent authorities, may be extended. The
maximum duration of a supplementary protection certificate is five years. The request for the term
extension should be filed within six months from obtaining the first permission from the relevant
authorities or issuance of the patent, depending on which term comes last.

Update and trends

Law on Amendments to Part IV of the Civil Code of the Russian Federation
The Law on Amendments to Part IV of the Civil Code of the Russian Federation, which came into

force on 1 October 2014 (with part of the provisions coming into force on 1 January 2015), provides
substantial changes to the IP Law of the Russian Federation that concern all IP objects.
Patents
The main changes in the area of copyright concern protectability of inventions. First of all, unlike the
previous wording the Law provides an open list of non-protectable objects. The Law does not,
however, contain any criteria on the basis of which the object by its nature may be regarded as nonprotectable. The same open list of non-protectable objects is applicable in respect of utility models.
This provision of the Law is criticised as it may cause vagueness and uncertainty in interpretation,
although the rationality of the application of such provision will depend mostly on the Patent Office.
Further, the open list of non-protectable objects was set by the Patent Law, which was repealed by
Part IV of the Civil Code.
Some changes also concerned the novelty of inventions. According to the Law, while determining the
novelty the examiner also takes into account the industrial designs and is not limited by inventions and
utility models as was the case previously.
Industrial designs should also be considered in the frame of determining the novelty of the utility
models that will undergo the substantive examination. According to the previous wording of the
Code, utility models only underwent a formal examination.
Dependent invention, utility model or industrial design
The new concept of dependent invention, utility model or industrial design was introduced by the
Law and is defined as invention, utility model or industrial design, which may not be used without
using the prior invention, utility model or industrial design protected by the patent. This is a totally
new concept in Russian legislation.
Liability for infringements
(amendments entered into legal force from 1 January 2015)
Compensation for the infringement of the patent rights in the amount of 10,000 roubles to 5 million
roubles or double the amount of the cost of the right to use the invention, utility model or industrial
design was introduced by the Law. According to the previous wording of the Code, in the case of
patent infringement the rightholder was not entitled to request compensation; only reimbursement of
damages was possible.

Vadim Mikhailyuk

vad@msp.ua

Anna Mikhailyuk

anna@msp.ua

1 Magistralny Tupik, 11
Business Center The Yard, Tel: +7 495 9818245
stroenie 1, off. 7
Fax: +7 495 7816603
Moscow 123290
www.msp.ua
Russia

Singapore
Regina Quek
One Legal LLC
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent infringement proceedings may be brought before the High Court of Singapore and a claim may
be made:
(i) for an injunction restraining the defendant from the act of infringement;
(ii) for an order for him or her to deliver up or destroy any infringing product or any article in which
that product is inextricably comprised or any material and implement mainly used in the creation of
the infringing product;
(iii) for damages in respect of the infringement;
(iv) for an account of the profits derived by the defendant from the infringement; and
(v) for a declaration that the patent is valid and has been infringed by the defendant.
The proprietor of a patent and any other person may also, by agreement with each other, refer to the
Registrar of Patents the question of infringement.
If the matter is brought before the Registrar, then a claim may be made only for remedies (iii) and (v)
above.
A specialist IP court has been established within the High Court with four designated IP judges, each
with substantial expertise and experience in handling IP cases.
IP cases that involve broader commercial disputes may still be heard by other judges.
2 Trial format and timing

What is the format of a patent infringement trial?

Patent infingement proceedings are started by a prospective plaintiff with the filing of a writ of
summons. The endorsed writ will have to be served on the named defendant in accordance with
prescribed rules within its validity period.
The plaintiff will have to file its statement of claim, setting out its claim against the defendant. The
defendant will then have to file its defence, and any counterclaim against the plaintiff.
Thereafter, the process for discovery and exchange of affidavit evidence will follow. When that is
completed, parties and the courts may then set a trial date, where the matter will be substantively

presented by the parties and examined in court.

Disputed issues are decided by a judge and a patent infringement trial typically lasts between 18
months and three years.
Evidence to be adduced in trial
In principle, all evidence (including documentary evidence) has to be adduced by way of affidavit.
Any fact required to be proven at trial by witness evidence must still be proved by the examination of
witnesses in open court, unless the court orders or the parties agree otherwise.
Expert witnesses
It is often the case in patent litigation proceedings that experts are appointed by the court or called by
parties to report on any question of fact or opinion where specialised skill or knowledge is required.
Expert evidence is particularly relevant in assessing issues that must be read through the eyes of a
person skilled in the art, such as disputes over novelty, inventive step and enabling disclosure.
As a general rule, the notional skilled person should be taken to be the workperson or technician who
is aware of everything encompassed in the state of the art and who has the skill to make routine
workshop developments, but not to exercise inventive ingenuity or think laterally. His or her level of
skill will depend on the scope of the subject matter of the patent in question.
This notional person is deemed to possess the common general knowledge of the subject matter in
question.
It is through the eyes of the skilled addressee that the patent will fall to be interpreted. And it is by the
standards of this person that the question of inventive step is to be judged.
The addressee is deemed to be unimaginative and uninventive but is equipped nevertheless with a
reasonable degree of intelligence and with a wish to make the directions in the patent work.
Role of expert witnesses
The function of an expert witness is, inter alia, to explain words or terms of science or art appearing
in the documents that have to be construed by the court, to give expert assistance to the court, for
example, as to the laws of science or the working of a technical process or system, or to inform the
court as to the state of public knowledge with regard to the matters before it. An expert cannot assist
the court in its interpretation of a document, as it is a matter for the court to read the language of the
document, to analyse the facts and apply the law to the facts.
Independence of the expert witnesses
It is desirable that an expert should have no actual or apparent interest in the outcome of the

proceedings. However, it is also recognised that there are fields in which only a limited number of
experts are available and that those who are pre-eminent may have direct work experience in the field
or with competitors who might at first sight be thought to threaten their independence. When these
situations arise, such cases should be dealt with very carefully.
The mere fact that the witnesses are not independent witnesses without an interest in these
proceedings because they may be related in one way or another with the patentee, does not disqualify
them as witnesses.
However, this does mean that their evidence has to be scrutinised with greater care because of the
increased likelihood of bias.
The relevant test for determining whether the evidence of an expert should be discounted is one of
actual partiality rather than apparent partiality.
Cross-examination of witnesses
Cross-examination of all witnesses, including expert witnesses, is permitted in litigation proceedings
in Singapore. The withdrawal of an expert witness from cross-examination results in his or her
evidence bearing no weight at all. Order 38, rule 1(2) of the Rules of Court makes it clear that a
witnesss affidavit will not be received in evidence if he or she is not cross-examined, except with
leave of court.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The standard of proof in civil proceedings is on the balance of probabilities.

Infringement
In infringement proceedings, the initial burden of proof is on the patent owner to prove that his or her
patent has been infringed, to the requisite standard of proof.
However, the burden is reversed if the patent is a process for obtaining a new product. The burden of
proving that a product is not made by the process shall be on the alleged infringer if the product is
new or a substantial likelihood exists that the product is made by the process and that the patent
owner has been unable, through reasonable efforts, to determine the process actually used.
In considering whether a party has discharged the burden imposed upon him or her, the court shall not
require him or her to disclose any manufacturing or commercial secret if it appears to the court that it
would be unreasonable to do so.
Invalidity

In invalidity proceedings, the initial burden is on the party seeking invalidation to prove that the
patent is invalid to the requisite standard of proof.
For example, bare assertions made by an expert witness that the patent in suit is obvious in light of the
prior art are insufficient to discharge the burden of proof to establish the obviousness. The expert
must provide reasons and explanation on why and how the prior art would obviously have led a
skilled person in the art to the patented invention.
For establishing invalidity of a patent on the grounds of insufficiency, the burden of proof is not
discharged if the expert only highlights the ambiguities in the text of the patent specification. The
expert must provide solid evidence to prove that those ambiguities will render the patented invention
unworkable from the point of view of a person skilled in the art.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Civil proceedings may be brought in the court by the proprietor of a patent in respect of any alleged
patent infringement. The holder of an exclusive licence under a patent shall have the same right as the
proprietor of the patent to bring proceedings in respect of any infringement of the patent committed
after the date of the licence.
In a situation where there are two or more joint proprietors of a patent, one of two or more joint
proprietors of a patent may without the concurrence of the others bring proceedings in respect of any
alleged patent infringement.
However, in so doing, the other proprietors must be made parties to the proceedings.
An accused infringer may seek a declaration that an act does not, or a proposed act would not,
constitute an infringement of a patent from the court or the Registrar, notwithstanding that no assertion
to the contrary has been made by the proprietor, if it is shown that:
that person has applied in writing to the proprietor for a written acknowledgment to the effect of the
declaration claimed, and has furnished him or her with full particulars in writing of the act in
question; and
the proprietor has refused or failed to give any such acknowledgment.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The Singapore Patents Act does not contain any specific provision for liability for inducing or
contributing to patent infringement by someone else per se. However, the Act does provide that where
the invention is a patented process, a person may be sued for patent infringement if he or she offers
the process for use in Singapore when he or she knows, or it is obvious to a reasonable person in the
circumstances, that its use without the consent of the patent owner would be an infringement of the
patent.

Indirect or secondary patent infringement is governed by the common law position on joint
tortfeasorship on proof of a common design to procure or to actually participate in acts of
infringement.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties may be joined as defendants in the same lawsuit as joint tortfeasors.
At common law, a person may be a joint tortfeasor with another, or others, in respect of patent
infringement pursuant to a common design, in two possible ways:
by procuring the other to infringe by inducement, incitement or persuasion; or
by actual participation in the infringing act or acts.
The joint tortfeasor must be so involved in the commission of the act of infringement so as to make
him or her liable for infringement.
However, the mere act of selling or supplying an article that the vendor knows will be used for
infringing purposes is not sufficient to constitute infringement as a joint tortfeasor under common law.
The mere fact that two entities are closely related, for example, by shareholding, common
management or otherwise, is not sufficient for a finding that the two entities are liable for
infringement as joint tortfeasors.
Some other evidence of procurement or participation in furthering the common design of infringement
is necessary.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside Singapore may cause a party to be held liable under the limb of
offering to dispose of an infringing product if it is understood that the offer is being made to the
public of Singapore.
Otherwise, infringing activities outside Singapore will not support an allegation of infringement in
Singapore.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The purposive construction approach is adopted by the Singapore courts where a patent should be
construed in order to determine what the person skilled in the art would have understood the patentee
to mean by using the language of the claims.
The doctrine of equivalents is not applicable in Singapore.

9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

The court may, at any time, order any party to a cause or matter to give discovery by making and
serving on any other party a list of the documents that are or have been in his or her possession,
custody or power, unless the court is satisfied that discovery is not necessary, or not necessary at that
stage of the cause or matter.
The documents that a party to a cause or matter may be ordered to discover are:
the documents on which the party relies or will rely; and
the documents that could adversely affect his or her own case, adversely affect the other partys
case or support the other partys case.
Discovery is done by making and serving on any other party a list of the documents that are or have
been in a partys possession, custody or power. The other party will then be allowed to inspect and
make copies of the said documents.
Pre-action discovery is also available but permitted only in very limited circumstances, namely, only
when the potential plaintiff does not have sufficient facts to commence proceedings.
The person applying for discovery will do so by originating summons supported by an affidavit,
which must fulfil certain requirements. The High Court may then make an order on its terms for the
discovery of documents before the commencement of proceedings or by a person who is not a party to
the proceedings. The documents available for discovery are limited to certain criteria.
Other methods of obtaining evidence from an adverse party or from third parties include pre-action
interrogatories.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Patent infringement proceedings typically last between 18 months to three years.

11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent infringement lawsuit are generally significant and will depend on many factors
such as the kinds of parties involved, the complexity and merits of the case, the type of evidence
required, the cost of expert witnesses required and the length of the trial.
A typical range of costs is approximately as follows:
costs up to stage before trial: S$80,000 to S$150,000;
during trial: about S$30,000 to S$40,000 per day of trial; and
appeal to the Court of Appeal: S$40,000 to S$100,000.

12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Type of proceedings

Avenue of appeal

Before the Registrar of Patents, Intellectual Property Office of Singapore (IPOS)

Judge of the High Court

Before a Registrar of the High Court

Judge of the High Court in chambers

Begun in, or appealed, to the High Court

Court of Appeal

An appeal against an order, determination, award or other decision of the Registrar of Patents must be
made by filing an originating summons, which must state the grounds of appeal and what is appealed.
The originating summons must also be served on the Chairman of the IPOS and every party to the
proceedings within 28 days after the date the order, determination, award or other decision appealed
against was issued to the appellant.
An appeal against a judgment, order or decision of the High Court must be made by filing a notice of
appeal in the prescribed form within 14 days after the judgment, order or decision appealed against
was given or made, or for appeals to the Court of Appeal, within one month from the date on which
the order in chambers appealed against was pronounced or the appellant first had notice of it, the
refusal of an application appealed against was made or the judgment or order (not in chambers)
appealed against was pronounced. In certain cases, the notice of appeal must be accompanied with
security for the respondents costs of appeal.
Appeals for some matters may be brought to the Court of Appeal only with leave, while certain
matters are not appealable to the Court of Appeal. Any judgment or order of a district court
exercising civil jurisdiction to which the parties have already consented in writing may not be
appealed against.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

A patent owner may be liable for any anti-competitive behaviour under the Competition Act, which
prohibits:
agreements between undertakings, decisions by associations of undertakings or concerted practices
that have as their object or effect the prevention, restriction or distortion of competition within
Singapore; and
any conduct on the part of one or more undertakings that is an abuse of a dominant position in any
market in Singapore.
The Singapore Patents Act contains certain prohibitions against tie-in and tie-up clauses in

contracts entered into or granted before 1 December 2008 (ie, before the full enactment of the
Competition Act).
Tie-in clauses are used by the patent owners in contracts to unreasonably require a person looking
to work the patented invention or seeking a supply of the patented product, to acquire anything other
than the patented product from him or her. In such contracts or agreements, the patent owner is
extending its monopoly beyond the market of its patent.
Under the Singapore Patents Act, the relevant tie-in clause or clauses would be void and the
existence of a contract made by or with the consent of the patent owner containing such a clause or
clauses would also constitute a defence for any person when sued for infringement by the patent
owner.
Tie-up clauses prohibit the termination of the contract even after the expiration of the patent rights.
In such contracts, the patent owner is extending the monopoly in excess of the term of his or her
patent.
Under the Singapore Patents Act, any contract for the supply of a patented product or licence to work
a patented invention may be terminated, to the extent the contract or licence relates to the product or
invention, at any time by either party giving the other party three months written notice,
notwithstanding that the contract prohibits such a termination. Further, the court may vary the terms
and conditions of the contract if it is satisfied that it would be unjust to require a party to continue to
comply with all the terms and conditions of the contract or licence after the patent ceases to be in
force.
Further, the courts may grant a compulsory licence for a patent on the grounds that the grant of the
licence is necessary to remedy an anti-competitive practice. The courts would grant such a licence if
the market for the patent is not being supplied or is not being supplied on reasonable terms and the
patent holder has no valid reason for failing to supply this market, whether directly or through a
licensee, on reasonable terms.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution (ADR) techniques are generally voluntary or by consent or contract.
They are strongly promoted and encouraged by the government in Singapore. In recent years, ADR
techniques have significantly increased in importance as a means of dispute resolution in a wide
range of disputes.
However, ADR techniques are currenly not commonly used in patent-related matters. One reason may
be that the injunctive reliefs, which are very important in patent-related matters, are more
appropriately ordered by the court instead of being awarded by an arbitrator.
At present, Singapore is building its IP ADR capabilities. In 2011, the IPOS signed a Memorandum
of Understanding with the World Intellectual Property Organization (WIPO), which allows parties to
resolve IP disputes that involve ownership and validity of IP rights registered in Singapore via
mediation at the WIPOs Arbitration and Mediation Centre in Singapore. This mediation centre was
set up in 2010 as the first office outside Geneva.
IPOS is also looking to set up a team of IP expert adjudicators to resolve IP disputes filed with IPOS.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The Singapore Patents Act provides that a patent can only be granted (thus protected in Singapore) if
the invention constitutes a patentable subject matter that is new, involves an inventive step and is
capable of industrial application.
The Singapore Patents Law was amended in 1995 to repeal a list of excluded matters that included a
scheme, rule or method for performing a mental act, playing a game or doing business, or a program
for a computer. With the repeal, such excluded matters (ie, software and business methods) are
impliedly patentable subject matter under Singapore law.
A business method patent has been the subject of litigation in Singapore courts and the question of
whether business methods are considered patentable subject matter was not raised in that case.
Implicitly therefore, it appears that business method patents are patentable in Singapore.
Methods of treatment of the human or animal body by surgery or therapy or of diagnosis practised on
the human or animal body are not permitted in Singapore because they are deemed to lack industrial
applicability.
However, presenting patent claims pertaining to methods of medical treatment as first or second, or
both, medical use claims are permitted under Singapore law.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Employees invention
An invention made by an employee shall be taken to belong to his or her employer if:
the invention was made in the course of the normal or assigned duties of the employee and the
circumstances were such that an invention might reasonably be expected to result from the carrying
out of his or her duties; or
the invention was made in the course of the duties of the employee and, at the time of making the
invention, the employee had a special obligation to further the interests of the employers undertaking.
Any other invention made by an employee shall be taken for those purposes to belong to the
employee.
Others: independent contractor, multiple inventors or joint venture

The patent for an invention is primarily owned by the inventors or joint inventors.
These rights are assignable to other parties. Appropriate provisions ought to be made in the contracts
governing these relationships and transactions.
Assignment or transfer of rights to a patent or patent application may be formally recorded on the
register of patents by the filing of the prescribed forms.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

A patent may be revoked on the following grounds:

the invention is not a patentable invention (ie, it is not novel, not inventive, not industrially
applicable or would encourage offensive, immoral or anti-social behaviour);
the patent was granted to a person not entitled to be granted that patent;
the specification of the patent does not disclose the invention clearly and completely for it to be
performed by a person skilled in the art;
the matter disclosed in the specification extends beyond that disclosed in the application as filed (ie,
it discloses additional matter);
an amendment or correction has been made to the specification of the patent or patent application,
which should not have been allowed;
the patent was obtained fraudulently, on any misrepresentation, or on any non-disclosure or
inaccurate disclosure of any material information concerning corresponding applications; and
the patent is one of two or more patents for the same invention having the same priority date and
filed by the same party or his or her successor in title (ie, there has been double patenting).
The list above is an exhaustive list. The court has constantly rejected attempts to invalidate or revoke
patents on grounds outside the list above, such as a lack of clarity and conciseness in the patent
claims.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Singapore has an absolute novelty requirement for patentability.

The exceptions are:
disclosures made in breach of confidence;
disclosures by the inventor at international exhibitions, (with written evidence in support thereof
duly filed in compliance with prescribed conditions); and
disclosures by or with the consent of the inventor before a learned society (learned society being
defined to include a club or association whose main object is the promotion of any branch of learning

or science).
The above exclusions operate only in the event that the disclosures are made within the preceding 12
months prior to the filing date of the patent application.
There is also a special exception for first medical use of a known substance. The fact that a
substance is known does not destroy the novelty of the use of this substance in a method of medical
treatment if the use of the substance in such a method does not form part of the state of the art.
The exception does not extend to second or subsequent medical use of a known substance.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The four-step test for inventiveness set out in the English Court of Appeal decision of Windsurfing
International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (the Windsurfing test) was
applied in Trek Technology [2005] 3 SLR(R) 389 and may be formulated as follows:
identify the inventive concept embodied in the patent in suit;
the court then assumes the mantle of the normally skilled but unimaginative addressee in the art at
the priority date, imputing to him or her what was, at that date, common general knowledge in the art
in question;
identify what, if any, differences exist between the matter cited as being known or used and the
alleged invention; and
the court then asks itself the question whether, viewed without any knowledge of the alleged
invention, those differences constitute steps that would have been obvious to the skilled man or
woman or whether they require any degree of invention.
The notional skilled person with the common general knowledge of the art is deemed to be
unimaginative and uninventive but is equipped nevertheless with a reasonable degree of intelligence
and with a wish to make the directions in the patent work.
A set of Examination Guidelines for Patent Applications has recently been released by the Intellectual
Property Office of Singapore (IPOS).
These Guidelines also reference the modified Windsurfing test, also known as the Pozzoli approach
and expressly provides that examiners may use the Pozzoli approach when formulating an inventive
step objection, even though this approach has not been formally adopted by the Singapore courts.
The Pozzoli approach is summarised as follows:
identify the notional person skilled in art and identify the relevant common general knowledge of
that person;
identify the inventive concept of the claim in question or if that cannot be readily done, construe it;
identify what, if any, differences exist between the matter cited as forming part of the state of the
art and the inventive concept of the claim or the claim as construed; and
viewed without any knowledge of the alleged invention as claimed, do those differences constitute
steps that would have been obvious to the person skilled in the art or do they require any degree of
invention?
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Singapore does not consider patents unenforceable where there is misconduct by the inventors or the
patent owner. However, when a Singapore patent is found to have been obtained fraudulently, on any
misrepresentation or on any non-disclosure or inaccurate disclosure of any prescribed material
information, the said patent will be revoked.
A patent, however, may be unenforceable under the following conditions, where:
a person enters with the patent owner into a contract that has a tie-in clause (see question 13);
the acts are carried out privately and for non-commercial purposes;
the acts are carried out for experimental purposes;
the acts consists of the extemporaneous preparation of a medicine for an individual in accordance
with a prescription given by a registered medical or dental practitioner or consists of dealing with a
medicine so prepared;
the acts consists of the use of a patented product or process in the body or operation of or the use of
accessories for a relevant aircraft, hovercraft or vehicle that has temporarily or accidentally entered
or is crossing Singapore (including the air space above it and its territorial waters);
the acts consist of the use, exclusively for the needs of a relevant ship, of a patented product or
process in the body of the ship or in its machinery, tackle, apparatus or other accessories, in a case
where the ship has temporarily or accidentally entered the territorial waters of Singapore;
the acts consist of the use of an exempted aircraft that has lawfully entered or is lawfully crossing
Singapore or of the importation into Singapore, or the use or storage, of any part or accessory for that
aircraft;
parallel importation;
the acts are carried out in support of an application for marketing approval for pharmaceutical
products;
prior use before the priority date of the patent;
grant of a compulsory licence by the High Court to remedy an anti-competitive practice; and
use by the Singapore government for public non-commercial purposes, or for, or during, a national
emergency or other circumstances of extreme urgency.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

A person, who in Singapore before the priority date of the invention and in good faith carries out an
act or makes effective and serious preparations to carry out such an act, which would constitute an
infringement of the patent if it were in force, can do or continue to do that act notwithstanding the
grant of the patent.
This defence does not, however, extend to granting a licence to another person to do the act.
This covers all types of inventions and is not limited to commercial uses.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The monetary remedies available against a patent infringer are damages and an account of profits.
However, in respect of the same infringement, only one monetary remedy, meaning either damages or
an account of profits, can be awarded to the patent owner.
Punitive damages are not available in patent infringement disputes.
The quantum of monetary remedies is generally assessed by the court at a separate, later stage after
the completion of the liability assessment.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Usually, the grant of an injunction relates to the item or items alleged to infringe the patent. However,
the courts have the discretion to determine the extent of the relief granted. It may be possible in some
circumstances, where the exclusion of certain items not specifically covered in the injunction
requested by the patent owner would render the injunction ineffective against future infringement by
the infringer of the patent, that the court may grant an injunction that is broader in scope so as to cover
these certain other items.
It will be a contempt of court for any third party (including the infringers suppliers or customers)
who has been notified of an injunction to knowingly aid, abet, assist in or permit a breach of an
injunction order. To act in contempt of court will render the third party liable to a fine or
imprisonment at the discretion of the court).
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

At present, statutory border enforcement measures for IP rights are only provided for in the Copyright
Act and the Trade Marks Act. There are no specific provisions for patents.
However, it is possible to obtain an injunction on the infringing product when it has entered
Singapore.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The award of attorneys fees is at the discretion of the courts. Generally, part of the attorneys fees
may be recovered from the losing party unless there are special circumstances, such as serious
improper conduct on the part of the successful litigant during the course of the litigation.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no additional or specific remedies against a deliberate or wilful infringer in Singapore.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The Limitation Act in Singapore provides that an action in contract or to recover any sum recoverable
by virtue of any written law (ie, in contravention of the Patents Act) must not be brought after the
expiry of six years from the date on which the cause of action accrued.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

It is not compulsory for a patent holder to mark its patented products. However, it is recommended to
do so to inform the general public of the patent so that an infringer cannot rely on a plea of innocent
infringement under the Singapore Patents Act: where the infringer at the date of the infringement, is
not aware and had no reasonable grounds to suppose that the patent existed.
Under the plea of innocent infringement, damages will not be awarded and no order will be made for
an account of profits against an infringer who proves that at the date of the infringement he or she was
not aware and had no reasonable grounds for supposing, that the patent existed.
Accordingly, a product should be marked with the patent number.
It is an offence to falsely mark a product as a patented product and also to mark a product to represent
that a patent has been applied for when no patent application has been made or any such application
has been refused, withdrawn or treated as having been abandoned.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Tie-in in a contract will be void and the existence of a contract made by or with the consent of the
patent owner containing such a clause would also constitute a defence for any person when sued for
infringement by the patent owner.
Tie-up clauses prohibit the termination of the contract even after the expiration of the patent rights.
In such contracts, the patent owner is extending the monopoly in excess of the term of his or her
patent.
Under the Singapore Patents Act, any contract for the supply of a patented product or licence to work
a patented invention may be terminated, to the extent the contract or licence relates to the product or
invention, at any time by either party giving the other party three months written notice,
notwithstanding that the contract prohibits such a termination. Further, the court may vary the terms
and conditions of the contract if it is satisfied that it would be unjust to require a party to continue to
comply with all the terms and conditions of the contract or licence after the patent ceases to be in
force.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Any interested person may apply to the court for the grant of a licence under a patent on the ground
that the grant of the licence is necessary to remedy an anti-competitive practice.
The courts would grant such a licence if the market for the patent is not being supplied or is not being
supplied on reasonable terms and the patent holder has no valid reason for failing to supply this
market, whether directly or through a licensee, on reasonable terms.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It usually takes from two to five years to obtain a Singapore patent.

The typical cost to file and register a patent would be approximately from S$5,000 to S$7,000
(excluding drafting costs).
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The following Patent Prosecution Highway (PPH) programmes are available in Singapore to expedite
patent prosecution:

 Global PPH (a network of 19 participating offices);

PPH (IPOSSIPO) (with the State Intellectual Property Office of the Peoples Republic of China);
PPH (IPOSIMPI) (with the Mexican Institute of Industrial Property of the United Mexican States);
PPH (IPOSDPMA) (with the German Patent and Trade Mark Office); and
PPH (IPOSEPO) (with the European Patent Office).
There are no extra official fees for expediting patent prosecution process under the PPH.
Additionally, the IP offices of nine ASEAN countries including Singapore have established a worksharing programme under the ASEAN Patent Examination Co-operation (ASPEC).
The purpose of this programme is to share search and examination results between the participating
offices to allow applicants in participating countries to obtain corresponding patents faster and more
efficiently.
There are no extra official fees for expediting patent prosecution process under ASPEC.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The specification of an application shall disclose the invention in a manner that is clear and complete
for the invention to be performed by a person skilled in the art.
Rules 19 to 23 of the Singapore Patents Rules provide guidelines as to what the specification for a
patent application should have.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no requirement to disclose prior art to the patent office examiner.

However, the patent specification should indicate the background art as far it is known to the
applicant.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

It is possible to file divisional applications to pursue additional claims to an invention disclosed in

an earlier filed application, subject to the claims not adding any new matter that go beyond the subject
matter of the earlier application as filed.
Divisional applications may be filed before the grant fee is paid or before the application is refused,
withdrawn, treated as or taken to be withdrawn, or treated as abandoned or as having been
abandoned.

36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

A decision of the Registrar made under the Singapore Patents Act or Patent Rules may be referred to
the court, unless it is a decision:
made under section 25(7) of the Patents Act regarding the adequacy of an abstract filed with a patent
application;
made under section 27(3) of the Patents Act to omit any matter from a specification;
to give directions under sections 33(1) and (2) in relation to the restriction or prohibition of the
publication of information prejudicial to the defence of Singapore or to public safety; and
made under the Patent Rules, which makes it excepted from a right of appeal.
However, a decision of the court that was made on appeal from a decision of the Registrar cannot be
referred to a Court of Appeal, except if the decision of the Registrar was made under certain
prescribed sections of the Patents Act or where the ground of appeal is that the decision of the court
is wrong in law and only if leave of appeal is given by the court or the Court of Appeal.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no mechanism for opposing the grant of a patent.

38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The Singapore Patent Office applies the first to file principle and does not provide for any
mechanism to resolve priority disputes between different applicants for the same invention.
Therefore, the party who first filed the application (or who has the earliest convention priority date)
is the party entitled to the patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

It is possible to amend the specification of a patent after it has been granted, subject to the Registrars
approval. However, no post-grant amendment will be allowed if the amendment results in the
specification disclosing any additional matter or extends the protection conferred by the patent.
Procedures for filing an application for a post-grant amendment are set out in Rule 52 of the

Singapore Patents Rules.

Pursuant to the change in the law effective from 14 February 2014, there is no longer any avenue for
post-grant examination of a Singapore patent.
Procedures for revoking a patent are set out in Rule 80 of the Singapore Patents Rules.
During a proceeding, the court or Registrar may direct or allow the proprietor of the patent to amend
the specification. However, such amendments will not be allowed if the amendment results in the
specification disclosing any additional matter or extends the protection conferred by the patent.
40 Patent duration

How is the duration of patent protection determined?

A patent, once granted, will continue in force for a period of 20 years commencing on the date of
filing the patent application.

Update and trends

Amendments to the Patents Act
The following is a list of amendments to the Patents Act that have come into effect from 14 February
2014.
A new positive grant system has replaced the former self-assessment system.
Previously, under the self-assessment system, patents were granted even if the Registrys
examination report revealed that the patentability criteria were not fully satisfied. The rationale
underlying the self-assessment system was to encourage patent registration. The applicant decided
whether to proceed with the grant of patent based on the results of the search and examination reports.
Thus, the onus was on the applicant to ensure that the patentability criteria were satisfied so that the
patent could withstand challenges to its validity.
However, under the positive grant system, only patent applications that fully satisfy the patentability
criteria are eligible for the grant of patent. It is not possible to obtain grant of a patent if there are any
unresolved objections to patentability.
New procedures relating to applications for and grants of patents
In light of the move towards a positive grant system, certain procedures have been modified and
streamlined.
Positive examination report

Under the positive grant system, a positive examination report (ie, the invention fully satisfies the
patentability criteria) issued by the Registry is required. When the positive examination report is
issued, the examiner will also issue a notice of eligibility to proceed to the grant of patent, which is a
prerequisite for the payment of the grant fee.
Supplementary examination report
Previously, no examination was conducted by the Singapore IP Office if the applicant relied on the
search and examination results of corresponding applications accepted under our rules.
Under the amended rules, a supplementary examination report is now required.
Examination review procedure
Where the examination reports contain unresolved objections, the Registrar will issue a notice of
intention to refuse the patent application.
The applicant may request for a review within a period of two months with a view to addressing the
unresolved issues.
The examiner will proceed to review the examination report and amendments (if any) and a final
examination review report will be issued together with either a notice of eligibility or a notice of
refusal.
One timeline
Previously, applicants had a choice of two sets of timelines (ie, a default fast track or the slow-track
timeline) for the search and examination process.
These dual tracks have been removed and the Patent Rules now provide for only one set of timelines
to be applied.
Payment of grant fee
Under the new law, the grant fee can be paid only after receiving a notice of eligibility of grant.

Regina Quek

regina.quek@onelegal.sg

6 Shenton Way
Tel: +65 6720 6788
21-08 Oue Downtown 2
Fax: +65 6720 7998
Singapore 068809
www.onelegal.sg
Singapore

South Africa
Russell Bagnall
Adams & Adams
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent matters are adjudicated in a specialised court: the Court of the Commissioner of Patents. The
Commissioner effectively has the powers of a High Court judge and the specialised court functions in
a very similar way to a division of the South African High Court. The Commissioner has the power to
grant injunctions against infringers as well as to order delivery-up, the payment of damages or the
payment of a reasonable royalty.
2 Trial format and timing

What is the format of a patent infringement trial?

A patent infringement trial is commenced by the issuing of summons accompanied by a statement of

particulars. The defendant may plead to the statement of particulars and counterclaim for revocation
of the patent. Thereafter, the patentee may plead to the counterclaim. Once pleadings have closed,
each party is called upon to discover documents that are relevant to any matters in the action, and
application is made for a trial date. Before the commencement of the trial, a party who wishes to call
an expert witness must notify the other party of its intention to do so and provide a summary of the
experts reasoned opinion. During the trial, oral evidence is heard by the Court of the Commissioner
of Patents and each party has the opportunity to cross-examine the other partys witnesses in
accordance with the usual High Court Rules of Evidence. A trial usually lasts two to four weeks for
complex matters and three to five days for less complex ones. There is no trial by jury.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The standard of proof for establishing infringement and validity of a patent is on a balance of
probabilities. The patentee bears the onus of proving infringement and the defendant bears the onus of
proving invalidity.

4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Proceedings for infringement of a patent may be instituted by the patentee (or joint patentee). In
addition, a licensee under a patent endorsed licence of right may call upon the patentee to institute
an infringement action and if the patentee does not do so the licensee may institute the proceedings.
The plaintiff must also give notice to every registered licensee under the patent and such a licensee
may intervene as a co-plaintiff to recover any damages he or she has suffered as a result of the
infringement.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

The South African Patents Act provides no specific statutory remedy for contributory infringement.
However, it has been recognised, most recently by the Supreme Court of Appeal, that certain acts of
contributory infringement (including aiding and abetting an infringement) are actionable in terms of
South African common law in the Court of the Commissioner of Patents.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The statutorily defined acts of patent infringement in South Africa include making, using, exercising,
disposing or offering to dispose of, or importing the invention. It is allowable (and indeed in many
cases desirable) to join multiple dependants in the same lawsuit if more than one party is carrying out
one or more of these activities in relation to the same cause of action (act of infringement). It is not a
requirement that all of the defendants be accused of infringing the same patents.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Generally speaking, South African courts do not have extra- territorial jurisdiction and, accordingly,
may take no action against infringement outside of its borders. However, section 67 of the South
African Patents Act provides that a claim in respect of a patent for a process or an apparatus for

making any product shall be construed as extending to such product when made by the process or
apparatus. Accordingly, the sale of a product made by an infringing process (in another country)
could amount to an infringement in South Africa.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

There are no statutory provisions in South Africa dealing with the doctrine of equivalents or nonliteral claim construction. However, the Supreme Court of Appeal of South Africa has, on several
occasions, applied the doctrine of purposive construction (see Aktiebolaget Hassle and AstraZeneca
v Triomed (Pty) Ltd 2002 BIP 56 SCA and Vari Deals 101 (Pty) Ltd t/a Vari Deals and Others v
Sunsmart Products (Pty) Ltd 2007 BIP 69 SCA) with reference to development of the principle
through English case law and, most notably, with reference to the well known case of Catnic
Components Ltd and another v Hill and Smith Ltd [1982] RPC 183 (HL].
South African courts have also applied the doctrine of equivalents (Stauffer Chemical Company and
Another v Safsan Marketing and Distribution (Pty) Ltd and Others 1986 BIP 462 (AD).) The
overriding test relates to the essentiality of the claimed feature that is not present in the infringing
product or process. The courts have held that to ascertain what are and are not the essential features
or integers of a claimed invention, the specification must be interpreted purposively or realistically
with the understanding of persons with practical knowledge and experience in the relevant field and
in light of what was generally known by such persons at the date of the patent. In general, if the
feature is, in fact, essential to the working of the claimed invention, then it must be regarded as an
essential feature. On the other hand, the patentee may indicate in the specification either expressly or
by implication that they regard a particular integer as essential and in that event it must be treated as
such even if it may not be essential to the working of the invention. Where, however, a feature is not
essential to the working of the invention and the patentee has not indicated that he or she regards it as
an essential integer then, in general, it may be treated as an inessential. However, the doctrine of
equivalents must be applied by giving effect to the meaning of the claim in the context of the
specification (as construed purposively) and should not be applied in a way that simply broadens the
claim because a feature is generally speaking not considered to be essential to the working of the
invention.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

To obtain evidence, a party seeking discovery may, by written notice, require any other party to make
discovery on oath of all documents and tape recordings relating to any matter in question in such an
action, which are, or have been at any time, in the possession or control of such a party. Parties in
patent infringement matters usually exchange discovery affidavits after the close of pleadings and,
depending on the nature and the extent of discovery of each party, the High Court Rules make

provision for interlocutory applications to compel further and better discovery.

A third partys attendance at trial may be secured by subpoena. The subpoena may require that the
witness bring to court certain specified documents for inspection.
A court may also, on application in any matter where it appears convenient or necessary for the
purposes of justice (eg, in circumstances in which the witness is not able to travel), make an order for
taking the evidence of a witness before or during the trial before a commissioner of the court.
Evidence on commission can be taken within South Africa or beyond its borders.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The procedure for patent infringement actions is as follows:

the action is commenced by the issue of a combined summons (including a statement of particulars);
within 10 court days (which excludes Saturdays, Sundays and public holidays) or 21 days from the
service of the combined summons (depending on the location of the defendant), the defendant must
deliver a notice of intention to defend;
within 20 court days after the delivery of the notice of intention to defend, the defendant must
deliver a plea setting out its defence, for example, non-infringement and invalidity of the patent plus
any counterclaim, such as revocation of the patent;
within 15 days after delivery of the defendants plea or counter claim the plaintiff must deliver a
replication or plea to the counterclaim; and
within 10 days from the delivery of the plaintiffs replication or plea, the defendant must file its
replication in reconvention.
Once pleadings are closed, each party calls on the other to discover documents that are relevant to
any matters in the action, and the possibility exists for the filing of one or more interlocutory
applications relating to further and better discovery or inspection. Further, an application for a trial
date is made, which, depending upon the availability of a court, may be set between 18 and 24 months
from the date of issuance of summons. It is also necessary for the parties before the trial to file a
notice of their intention to lead expert evidence and a summary of the experts reasoned opinion.
Thereafter, the trial is held in which the parties have an opportunity to cross-examine the other partys
witnesses and the Court of the Commissioner of Patents hands down its judgment, usually within one
to three months from the conclusion of the hearing. There is no automatic right of appeal. A party
wishing to appeal a judgment needs to apply to the Court of the Commissioner of Patents for leave to
appeal (within 15 days from the date of judgment).
If the court is satisfied that there is a reasonable prospect that another court may arrive at a different
finding, leave to appeal will be granted. In patent matters, leave to appeal is usually granted directly
to the Supreme Court of Appeal (the highest court in patent matters in South Africa), which comprises
a five-judge bench. No further evidence is led during the appeal procedure. The record of appeal is
filed before the Supreme Court of Appeal and each party is given an opportunity to file heads of
argument setting out the basis for its appeal or opposition thereto. An appeal usually takes 12 to 18
months to conclude.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of patent infringement actions are difficult to quantify since the costs will be affected by
factors such as the volume and technical complexity of the evidence, the number of expert witnesses,
the number of interlocutory applications and, in particular, whether or not both a junior and a senior
barrister are instructed. In a complex matter in which both a junior and senior barrister are appointed,
costs of US$300,000 to US$600,000 could be expected. In less complex matters in which only a
junior counsel is instructed costs of US$100,000 to US$300,000 could be expected. Generally
speaking, 30 to 40 per cent of these costs would be incurred before the trial with the remainder of the
costs being incurred shortly before and during the trial, although this may vary depending on the
length of the trial. The costs of an appeal are substantially less than the costs of a trial and usually are
of the order of US$100,000 to US$300,000.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

There is no automatic right of appeal from the Court of the Commissioner of Patents. A party seeking
leave to appeal needs to apply to the Court of the Commissioner of Patents. Leave to appeal will be
granted if the court is satisfied that there is a reasonable prospect that another court will arrive at a
different finding. Although it is, in principle, possible to obtain leave to appeal to a full bench of the
relevant High Court Division (consisting of three judges) or the Supreme Court of Appeal (the highest
court in patent matters in South Africa consisting of five judges), it is normal practice in patent
matters for leave to appeal to be granted directly to the Supreme Court of Appeal, which is the final
court in patent matters in South Africa.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

South Africa has well developed antitrust laws that are governed by statute: the South African
Competition Act. It is possible for a patent holder to contravene the provisions of this Act by, for
example, abusing a dominant position. In particular, it is prohibited for a dominant firm, inter alia, to
charge an excessive price to the detriment of consumers, to refuse to give a competitor access to an
essential facility when it is economically feasible to do so and to require or induce a supplier or
customer to not deal with a competitor.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

South Africa has alternate dispute resolution techniques available. However, these are rarely, if ever,
made use of in patent matters.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A discovery; a scientific theory; a mathematical method; a literary, dramatic, musical, or artistic work
or any other aesthetic creation; a scheme, rule, or method for performing a mental act, playing a game
or doing business; a program for a computer; or the presentation of information are not patentable in
South Africa.
However, these exclusions apply only to the extent to which a patent or an application for a patent
relates to that thing as such. It is the widely held view that technical aspects relating to computer- and
software-related inventions are patentable (in accordance with principles developed in the UK and
European Patent Office), but this has not been the subject of judicial interpretation in South Africa.
Subject matter that encourages offensive or immoral behaviour, as well as any variety of animal or
plant or any essentially biological process for the production of animals or plants, not being a
microbiological process or the product of such a process, are not patentable.
Section 25(11) excludes from patentability a method of treatment of the human or animal body by
surgery or therapy, or of diagnosis practised on the human or animal body. However, second medical
uses of known substances are patentable by way of a Swiss-type claim.
Further, section 25(9) states that, in relation to an invention consisting of a substance or composition
for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis
practised on the human or animal body, the fact that the substance or composition forms part of the
state of the art immediately before the priority date of the invention shall not prevent a patent being
granted for the invention if the use of the substance or composition in any such method does not form
part of the state of the art at that date. A section 25(9)-type claim is allowable in relation to the first
medical use.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Inventions made by an employee that are made within the course and scope of the employees
employment with a company are automatically owned by the company by operation of the law. The
Patents Act provides that any condition in a contract of employment that requires an employee to
assign to his or her employer an invention made by the employee otherwise than within the course and
scope of employment or restricts the right of an employee in an invention made by him or her more
than one year after the termination of the contract of employment shall be null and void. There is no

provision in the South African Patents Act governing the rights of independent contractors or parties
to a joint venture agreement that would provide the party instructing the independent contractor or
parties to the joint venture with rights in and to the invention, absent any assignment of the invention
or an agreement to assign the invention. In each case the rights to the invention would lie with those
individuals that contributed inventively to the invention, unless by operation of the law such rights
pass to their employee, or by agreement there is a transfer of rights to another party. Patent ownership
takes place by way of written assignment. In order for the assignment to be valid against third parties,
it is necessary that the assignment be recorded in the patent office register on application to the
registrar.
In the absence of an agreement to the contrary, joint applicants for a patent have equal and undivided
shares in the application and none of them may, without the consent of the other joint applicants, deal
in any way with the application except to save the application from becoming abandoned. In the
absence of an agreement to the contrary, joint patentees for a patent have equal and undivided shares
in the patent and none of them may, without the consent of the other joint patentees, make, use or
exercise the patented invention, grant a licence or assign rights in respect thereof and take any steps
or any proceedings relating to the patent except to save the application from lapsing by virtue of nonpayment of renewal fees. A joint patentee may institute infringement proceedings but must give notice
to the co-patentees, who may join the proceedings.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The validity of a patent may be challenged if:

the patentee is not entitled under section 27 to apply for the patent (section 27(1) states that an
application for a patent in respect of an invention may be made by the inventor or by any other person
acquiring from the inventor the right to apply or by both such inventor and such other person);
the grant of the patent is in fraud of the rights of the applicant or of any person under or through
whom he or she claims;
that the invention concerned is not patentable under section 25 (see questions 15, 18 and 19);
the invention as illustrated or exemplified in the complete specification concerned cannot be
performed or does not lead to results and advantages set out in the complete specification;
the complete specification concerned does not sufficiently describe, ascertain and, where necessary,
illustrate or exemplify the invention and the manner in which it is to be performed in order to enable
the invention to be carried out by a person skilled in the art of such invention;
the claims of the complete specification concerned are not clear, or fairly based on the matter
disclosed in the specification;
the prescribed declaration lodged in respect of the application for the patent contains a false
statement or representation that is material and that the patentee knew to be false at the time the
declaration was made;

 the application for the patent should have been refused under the terms of section 36 (ie, if the
application is frivolous on the ground that it claims anything obviously contrary to well established
natural laws, or if the invention will encourage offensive or immoral behaviour); or
the complete specification claims as an invention a microbiological process or a product thereof
and that the provisions of section 32(6) have not been complied with (ie, samples of any microorganism must be made available before acceptance).
Any party may apply for revocation any time after the patent has been granted. The Patents Act
provides a specific procedure for applying for revocation. This procedure involves the filing of a
statement of particulars to which the patentee has an opportunity to respond with a counter statement.
Thereafter, the applicant is required to file its founding evidence in the form of one or more affidavits
and the patentee has an opportunity to file answering evidence. Thereafter, the applicant has an
opportunity to file replying evidence limited to matters strictly in reply. It is possible for the parties
to apply to refer the application to oral evidence in circumstances in which a dispute of fact has
arisen on the papers. As indicated above (see question 2), it is also possible to attack the validity of a
South African patent by way of counterclaim in an infringement action.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

There are absolute novelty requirements in South Africa. Section 25(5) states that an invention shall
be deemed to be new if it does not form part of the state of the art immediately before the priority date
of the invention. Section 25(6) defines the state of the art:
to comprise all matter (whether a product, a process, information about either, or anything
else) which has been made available to the public (whether in South Africa or elsewhere) by
written or oral description, by use or in any other way.
Section 25(7) provides that the state of the art shall also comprise matter contained in an application
open to public inspection for a patent, notwithstanding that the application was lodged at the patent
office and became open to public inspection on or after the priority date of the relevant invention, if
the matter was contained in that application both as lodged and as open to public inspection and the
priority date of that matter is earlier than that of the invention. An invention used secretly and on a
commercial scale within South Africa also forms part of the state of the art for the purposes of
evaluating the novelty of an invention.
The exceptions to the above are found in section 26 of the Act, which states that a patent shall not be
invalid by reason only of the fact that the invention in respect of which the patent was granted, or any
part thereof was disclosed, used or known before the priority date of the invention if:
the patentee or his or her predecessor in title proves that such knowledge was acquired or such
disclosure or use was made without his or her knowledge or consent, and that the knowledge
acquired or the matter disclosed or used was derived or obtained from him or her, and, if he or she
learnt of the disclosure, use or knowledge before the priority date of the invention, that he or she
applied for and obtained protection for his or her invention with all reasonable diligence after
learning of the disclosure, use or knowledge; or
as a result of the invention being worked in South Africa by way of reasonable technical trial or
experiment by the applicant or patentee or the predecessor in title of the applicant or patentee.

19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

An invention shall be deemed to involve an inventive step if it is not obvious to a person skilled in
the art, having regard to any matter that forms, immediately before the priority date of the invention,
part of the state of the art.
In order to consider the question of inventive step a South African court will have regard to the
following four questions:
What is the inventive step said to be involved in the patent in suit?
What was at the priority date the state of the art relevant to that step?
In what respect does the step go beyond or differ from the state of the art?
Having regard to such development or difference, would the taking of the step be obvious to the
skilled person?
South African courts have held that the question to be determined is whether or not what is claimed as
inventive would have been obvious, not whether or not it would have been commercially worthwhile.
The emphasis must lie on the technical features. However, the courts do still have regard to
secondary evidence relating to commercial success. In evaluating the question of inventive step the
courts will invariably require the assistance of expert evidence. The evidence will be that of properly
qualified expert witnesses who will say whether or not in their opinions the relevant step would have
been obvious to a skilled person with regard to the state of the art.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

A patent can be revoked on the basis that a material misrepresentation was made (see question 17). A
patent can also be revoked if the grant of the patent is in fraud of the rights of the applicant or any
person under or through whom he or she claims (see question 17). Inequitable conduct is not per se a
specific ground for revocation of a South African patent.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Prior use has been recognised in terms of South African law as an available defence. It sometimes
manifests itself as the Gillette defence. Our courts have held that raising prior use or the Gillette
defence amounts to nothing more than an attack on the novelty of the claimed invention on the basis
that the invention has been made available to the public before the relevant date on account of its
prior use. Generally speaking, because the invention must have been made available to the public by
such prior use, any use of the invention that is private in nature would not provide a suitable defence.

However, the South African Patents Act provides that an invention used secretly and on a commercial
scale within the Republic of South Africa shall also be deemed to form part of the state of the art for
the purposes of evaluating the novelty of an invention. Thus, it is widely accepted that such secret use
(ie, on a commercial scale within South Africa) could be relied on to raise a prior use defence.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Successful patentees in infringement actions may recover damages from infringers if they can prove,
on the balance of probabilities, that they have suffered as a result of the infringement. Damages in
South Africa are not punitive in nature and are limited to the loss of profits suffered by the patentee.
In order to prove that it has suffered damages it is necessary for the patentee to show, on the balance
of probabilities that were it not for the infringement it would have made the relevant sale or process
(whatever the case may be). Traditionally, proving damages has been difficult in South Africa, since
the standard requires that each loss of sales must be proved as described above. A patentee in an
infringement action is entitled to claim, in lieu of damages, a reasonably assessed royalty that would
have been payable by a hypothetical licensee under the patent. Calculating damages based on an
account of profits of a defendant does not form part of South African law.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

It is possible to apply to the Court of the Commissioner of Patents for a preliminary injunction,
pending the determination of a patent infringement action. Such an application may also, in the
appropriate circumstances, be brought on an urgent basis. In order to succeed with an application for
a temporary injunction it is necessary for the patentee to show that:
the right that is the subject matter of the main action and that it seeks to protect by way of interim
relief is clear or, if not clear, is prima facie established, though open to some doubt;
there is a well-grounded apprehension of irreparable harm if the interim relief is not granted and the
ultimate relief is eventually granted;
the balance of convenience favours the grant of an interim interdict; and
it has no other satisfactory remedy.
It is also possible to obtain a final injunction. This relief is usually sought in a patent infringement
action (ie, a trial), although it is in principle possible to proceed by way of application for a final
injunction. In order to be successful with an application or an action for a final injunction it is
necessary to establish a clear right.
An injunction (final or preliminary) is only effective against the defendant or respondent in the

proceedings. It would in principle be possible to join suppliers and customers as direct or

contributory infringers but, in the event that they are not party to the proceedings, the injunction would
not extend to these parties.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

There is no specific tribunal or proceeding available to prevent importation of infringing products

into South Africa. The special proceedings for this purpose are regulated by the Counterfeit Goods
Act and the provisions thereof do not extend to patent infringement where there are no counterfeiting
issues. A patentee would, however, be entitled to bring proceedings in the Court of the Commissioner
of Patents to prevent importation, which is a specified act of infringement. In many cases, the most
appropriate course of action would be to seek a preliminary injunction against the relevant Customs
authorities on an urgent basis to prevent release of the goods. The usual requirements for a
preliminary injunction discussed above would need to be satisfied.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

A successful party in litigation is entitled to recover from the unsuccessful party its taxed party-andparty costs. Past experience has shown that these costs usually amount to between 30 and 50 per cent
of the total costs incurred. It is usual practice for the successful party, at the conclusion of the
litigation, to draw up a bill of costs. In the event that the parties are unable to reach agreement
concerning the bill of costs, a taxing master at the South African High Court will adjudicate on the
matter.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no additional remedies, including any provision for punitive damages, for wilful or
deliberate infringement. If an infringer flagrantly disregards a court order restraining infringement it is
possible to bring contempt of court proceedings, which may lead to a fine and imprisonment.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

A claim for patent infringement prescribes after three years.

28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

A patentee is under no obligation to mark its product. However, the marking of a product with the
word patent or patented together with the number of the patent may constitute constructive notice
of the existence of the patent for the purposes of determining damages. If the article is marked with the
word patent or patented or any word or words expressing or implying that a patent has been
obtained for the article, stamped, engraved, impressed on or otherwise applied to the article this shall
not be deemed to constitute notice of the existence of the patent unless such word or words are
accompanied by the number of the patent.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Restriction is any condition in a contract relating to the sale of a patented article or to a licence under
a patent of which the effect will be:
to prohibit or restrict the purchaser or licensee from purchasing or using any article or class of
articles, whether patented or not, supplied or owned by any person other than the seller or licensor or
a nominee;
to prohibit or restrict the licensee from using any article or process not protected by the patent;
to require the purchaser or licensee to acquire from the seller, licensor or a nominee any article or
class of articles not protected by the patent;
to require or induce the purchaser to observe a specified minimum resale price in respect of any
article or class of articles protected by the patent; or
to prohibit or restrict the making, using, exercising or disposing of the invention concerned in any
country in which the invention is not patented shall be null and void.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

An interested party who can show that the rights in a patent are being abused may apply to the
commissioner of patents for a compulsory licence under the patent. The rights of a patentee shall be
considered to be abused in circumstances in which:
the patented invention is not being worked in South Africa on a commercial scale or to an adequate

extent after the expiry of a period of four years subsequent to the date of the application for the patent
or three years subsequent to the date on which that patent was sealed, whichever period last expires,
and there is, in the opinion of the commissioner, no satisfactory reason for such non-working;
the demand for the patented article in South Africa is not being met to an adequate extent and on
reasonable terms;
by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the
trade, industry or agriculture of South Africa or the trade of any person or class of persons trading in
South Africa or the establishment of any new trade or industry in South Africa is being prejudiced,
and it is in the public interest that a licence or licences should be granted; or
the demand in South Africa for the patented article is being met by importation and the price charged
by the patentee, his or her licensee or agent for the patented article is excessive in relation to the
price charged in countries where the patented article is manufactured by or under licence from the
patentee or a predecessor or successor in title.
A compulsory licence may also be granted in respect of a dependent patent (ie, where the working of
a patent is dependent upon obtaining a licence under a prior patent). The commissioner will
determine the conditions of such a licence, and include a condition that such a licence shall be used
only for the purpose of permitting the dependent patent to be worked.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A patent application claiming priority from a South African provisional application or a convention
application will typically be granted between nine and 12 months from the time of filing of the
complete specification. Acceptance and publication may be delayed at the request of the patentee. A
national phase patent application based on a PCT application usually takes 12 to 24 months to be
granted.
The cost of filing a complete patent application at the South African Patent Office is typically in the
region of US$1,000 to US$2,000. The costs of renewing a patent for its full life of 20 years are
unlikely to exceed US$3,500.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

It is possible to make application to the registrar of patents to expedite the grant of a South African
patent. Provided the application is in formal order for acceptance, the registrar usually grants such an
application within two to three months from the date of the request.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Every specification shall indicate whether it is a provisional or complete specification and shall
commence with a title sufficiently indicating the subject matter of the relevant invention. A
provisional application shall fairly describe the invention. A complete specification shall sufficiently
describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in
which it is to be performed in order to enable the invention to be performed by a person skilled in the
art of such an invention. The specification must also end with a claim or claims defining the invention
for which protection is claimed. Claims or claims of a complete specification shall relate to a single
invention, shall be clear and shall be fairly based on matter disclosed in the specification. If the
invention relates to a microbiological process or a product thereof, the deposit system in terms of the
Budapest Treaty is recognised in South Africa. Thus, there are no requirements peculiar to South
Africa. A specification that has been prepared to meet international standards of fair basis,
enablement and clarity of claiming will suffice. South Africa also abolished the best mode
requirement.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

An inventor does not have an obligation to disclose prior art to the South African Patent Office.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

It is possible to file one or more divisional applications in South Africa up until the date of
acceptance. It is also possible to obtain protection for any addition to, improvement in or
modifications to an invention by way of a patent of addition. A patent of addition cannot be
invalidated on the ground of lack of inventive step having regard to the main invention. A patent of
addition endures for the remaining life of the main invention and is incapable of assignment
independently of the main invention.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

There is no substantive examination in South Africa. A patent will be granted if all the formal
requirements are met.
Appeals lie from the registrar of patents to the commissioner, but are, in practice, limited to
procedural issues, since the registrar does not make any decisions relating to substantive issues of

patentability.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There are no opposition proceedings in South Africa. However, it is possible to apply for revocation
after grant.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

South Africa adopts a first to file system as opposed to a first to invent. The Patent Office does not
provide any mechanism for resolving priority disputes between different applicants for the same
invention. However, it is possible to apply to the Court of the Commissioner of Patents in disputes
arising between persons as to their rights to obtain a patent.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

As discussed in question 16, a patent can be revoked any time after grant of the patent.
It is possible to amend a South African patent during court proceedings. Such an application to amend
is made directly to the Court of the Commissioner of Patents. An amendment is permissible in terms
of South African law provided that the amendment:
would not introduce new matter or matter not in substance disclosed in the specification before
amendment;
would not include any claim not fairly based on matter disclosed in the specification before
amendment; and
would not include any claim not wholly within the scope of a claim included in the specification
before amendment.
40 Patent duration

How is the duration of patent protection determined?

The duration of a patent shall be 20 years from the date of application.

Update and trends

A new draft IP policy for South Africa was issued for comment in the fourth quarter of 2013. The
draft IP policy received criticism from various quarters and further progress was delayed pending a
regulatory impact assessment and a multi-ministerial review and approval process. Although, the
draft IP policy was framed to address various intellectual property issues and policies, a major focus
of the draft IP policy related to public health issues, access to medicines, the introduction of TRIPS
flexibilities and to prevent weak patents from being granted.
It is expected that a revised IP policy will be submitted to the executive for approval and publication
during the first or second quarter of 2015. It is accepted that substantive examination of South African
patent applications will be proposed in the final IP policy. However, major legislative changes are
not expected to be finalised before 2017/2018, with implementation probably to follow during about
2019/2020.

Russell Bagnall

russell.bagnall@adamsadams.com

Danie Dohmen

danie.dohmen@adamsadams.com

Colin MacKenzie

colin.mackenzie@adamsadams.com

Lynnwood Bridge
4 Daventry Street
Pretoria 0081
South Africa

Tel: +27 12 432 6000

Fax: +27 12 432 6599
www.adamsadams.com

Sweden
Kristian Fredrikson
Delphi
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

The main remedies against an infringer are interlocutory injunctions, injunctions and damages. Such
remedies may be obtained through legal proceedings in a common court. A court decision regarding
an injunction or damages may be enforced by the enforcement authority after a separate request
referring to the court decision.
The Stockholm City Court is the exclusive forum in the first instance for patent infringement
proceedings. Court decisions may be appealed to the Svea Court of Appeal in Stockholm and then to
the Supreme Court. Appeal requires a granted leave to appeal.
2 Trial format and timing

What is the format of a patent infringement trial?

The patent infringement trial commences with the filing of a writ of summons where the infringement
case is outlined and evidence is presented. The writ may also contain a request for an interlocutory
injunction. During the preparatory stage of the trial, which then follows, the interlocutory injunction
request is decided upon and legal arguments, defences and additional evidence are presented and
commented upon. Preparation is mostly done in writing by exchange of briefs, but also orally in at
least one preparatory hearing.
The trial ends with a main hearing where evidence and arguments are presented to a panel of judges,
usually consisting of two legal judges and two technical judges in the first instance and three legal
judges and two technical judges in the appeals court. Documents and live testimony are the main
means of evidence. Affidavits are allowed if a witness cannot reasonably appear or if the counterpart
agrees to allow it, but affidavits are considered an inferior means of evidence as compared with oral
witness statements. Witnesses are regularly cross-examined. Experts on the relevant technology,
appointed by each party, are often used. If so, the party is expected to file a written expert statement
during the preparatory stage of the trial and the expert is cross-examined during the main hearing.
A trial can be expected to take 18 to 24 months in first instance and another 12 to 18 months in the
appeals court. The main hearing is usually scheduled for one, two or three days, but the time required

depends on the size and complexity of the case.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

For establishing infringement, the burden of proof rests with the plaintiff, namely, the patent holder or
licensee, who has to prove (ie, clear and convincing evidence) that there is an enforceable patent
right and an infringement. For establishing invalidity, the burden of proof rests with the challenger as
plaintiff, who has to prove that the patent right is invalid under the patent regulations.
Unenforceability is not recognised under Swedish law.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The patent owner may sue for infringement, as may a licensee, regardless of whether the licence is
exclusive or non-exclusive. If a licensee wants to sue, he or she has to inform the patentee in advance.
An alleged infringer may sue for a declaratory judgment of non-infringement. A claim for a
declaratory judgment may be brought if it is uncertain whether there exists an infringement and this
uncertainty is to the detriment of the alleged infringer.
The Brussels regulation (Council Regulation (EC) No. 44/2001) and the Lugano Convention are
applicable in Sweden to the effect that the plaintiff must be domiciled in Sweden to be allowed to sue
a patent owner domiciled in a regulation or Convention state. According to case law plaintiffs
domicile is not a requirement if the patent owner is domiciled in a non-EC and non-Convention state.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Civil liability for contributory infringement exists in that an injunction or interlocutory injunction may
be directed towards a person contributing to an infringement. A contribution does not have to be
intended as such; liability applies if the action in question has objectively promoted the infringement.
Liability for contributory infringement also exists insofar as liability for patent infringement includes
the offer of means pertaining to something essential in the invention with the knowledge that the means
are suitable for and intended to be used with the invention.
The Patents Act also allows for criminal liability for inducing or contributing to patent infringement.
Such cases are extremely rare.
Multiple parties practising parts of a patent claim and together practising the whole claim are
probably individually liable for infringement or possibly for contributory infringement. There is no

law or case law on this situation in Sweden.

6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Multiple parties can be joined as defendants in the same lawsuit if individual lawsuits against each of
the defendants are based on what are substantially the same grounds. Such grounds are related to the
infringed patent, the infringing actions as such and the damages caused by the infringement. No other
relationship between the defendants is sufficient or necessary, although defendants can normally be
expected to be joined by commercial or corporate relationships as well. From this, it follows that all
defendants must normally be accused of infringing the same patent.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The offer, sale or use of a product that has been produced outside Sweden by a method patented in
Sweden constitutes infringement. Otherwise, activities outside Sweden do not constitute infringement.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Swedish courts recognise the doctrine of equivalents. When establishing infringement, the courts
consider infringement by equivalent means as a secondary alternative to infringement in the literal
wording of the patent claim.
Infringement by equivalent means may be established if
the supposed infringing object solves the same problem or has the same function as the patented
invention;
the difference between the product or process and the invention is simple enough that the
substitution of one with the other is obvious to, and could easily be realised by, the skilled person (so
the difference does not comprise a patentable invention in itself; and
the product or process leads to the same result as the invention.
There cannot be an infringement by equivalent means if the difference between the literal wording of
the patent claim and the supposed infringing object pertains to a central feature of the patented
invention crucial for its patentability or if the equivalence assessment relates to a feature of the patent
claim that has been added during prosecution with the express intent to limit the scope of protection in
order to exclude prior art. In addition, inventions of a simple nature (such as simple mechanical
inventions) do not enjoy protection outside the scope of the literal claim.

9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Under civil procedural law there is a limited duty for a defendant or a third party to disclose under a
court order particular documents or objects that may serve as evidence.
Provisions in the Patents Act allow for an infringement investigation, which is a procedure ordered
by the court upon request of the patent owner or licensee and where the enforcement authority
searches an alleged infringers premises to secure evidence of infringement. The court may also order
an alleged infringer to provide certain information related to the alleged infringement (eg, the names
of suppliers, importers and buyers).
Court orders apply regardless of the addressees nationality. It may, however, prove difficult or
impossible to enforce such orders in certain jurisdictions.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A patent infringement trial generally takes between 18 and 24 months from filing of the writ of
summons to handing down of the judgment in the first instance and another 12 to 18 months in the
appellate court. An interlocutory injunction may take about three months to obtain in the first instance.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs for a patent infringement procedure vary widely, but can normally be expected to amount to
between 50,000 and 200,000 in the first instance, depending on the complexity of the case. Of such
an amount, approximately one-third is pretrial costs. Costs in the appeals court amount to
approximately 60 per cent of the costs in the first instance.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Patent infringement decisions may be appealed to the Svea Court of Appeal, which is the exclusive
appeals forum for patent litigation. Leave to appeal is required in all cases, and is normally granted
for appeal of final decisions and, more rarely, for appeal of temporary injunctions.
The Supreme Court tries cases on appeal from the appeals court. A leave to appeal is required. The
Supreme Court seldom tries patent cases, and there has been just a handful of cases tried during the
past 40 years.

13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Liability for a competition violation after enforcement of a patent has not yet been established in a
case in Sweden, but EU competition case law indicates that it may be possible. Market Court case
law indicates that liability for unfair competition is, in practice, not recognised. Liability for
business-related tort may exist only in connection with criminal liability.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration may be used to resolve patent disputes. To refer a dispute to arbitration, an agreement
between the parties to this effect is required. A decision may be enforced only inter partes, but not
against a third party or an authority. It is presumably very unusual to resolve patent disputes by
arbitration, while contract disputes regarding licensing or transfer of patents are common.
Mediation may be used to resolve disputes and can be used in patent disputes, although it is not
common.
During an infringement process in court, the judge is under a legal obligation to investigate settlement
possibilities and to assist the parties in negotiations if possible.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Certain types of Inventions, including software, business methods and medical procedures as well as
inventions, the use of which would be contrary to public policy or good morals, are not patentable.
For assessment of patentability, Swedish patent law adheres to the provisions of the European Patent
Convention (EPC) and the Swedish Patent Office and Swedish courts adhere to European Patent
Office (EPO) case law.
The EC Directive 1998/44/EC on the legal protection of biotechnological inventions has been
implemented in Sweden.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The basic principle of ownership is that an invention belongs to the inventor. Under statutory and
collective agreement employee ownership provisions, ownership of an invention made by the
employee as part of his or her employment may be transferred to the employer upon the employers
request. Inventions made outside the scope of employment but still in the employers general line of
business may be subject to transfer or licence upon the employers request. Inventions made outside
the employers line of business belong to the employee.
An individual employment agreement may stipulate otherwise from that stated above, as provisions in
individual employment contracts are applicable except when they are superseded by a collective
agreement. Invention provisions are included in some collective agreements, mainly applicable in the
industrial and service sectors. The law applies where no collective or individual agreements have
been made or where they lack relevant provisions.
The main principle of ownership applies to inventions made by independent contractors and patents
thereon, but the parties are free to agree on any allocation of ownership.
Ownership of inventions by multiple inventors and patents thereon is not subject to express regulation
in law. Ownership is considered to belong to the inventors collectively. The implications of this are
widely discussed in doctrine and are considered analogous to implications in connection with
collective ownership in other legal fields. Case law on the subject is scarce.
Ownership is officially recorded in the patent authoritys patent registry. Registration is not
mandatory and has no legal effect on ownership. It does, however, affect the possibility of pledging
the patent. Ownership is transferred under agreement and is not subject to any formal requirements.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

An invalidity action may be brought administratively as an opposition with the patent authority during
a period of nine months after grant of the patent. An invalidity action may also be brought as a legal
action in court during, or after, the patent term. Invalidation grounds include lack of industrial
application, lack of novelty and lack of inventive step, as well as lack of correlation between
application documents and the granted patent and insufficient disclosure of the invention in the patent.
The Stockholm City Court is the exclusive court in the first instance for patent invalidity proceedings.
Court decisions may be appealed to the Svea Court of Appeal in Stockholm and then to the Supreme
Court. Appeal requires a granted leave to appeal.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Absolute novelty is required for patentability except for a six-month grace period applicable if the

invention has been compromised from it being disclosed because of obvious misuse in relation to the
applicant or from the applicant having displayed the invention at an officially recognised international
exhibition as defined in the 1928 Paris Convention on International Exhibitions.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

The legal standard for inventiveness is that the invention differs considerably from prior art. This
means that a skilled person would not consider the invention to be evident or near at hand. In
practice, the EPOs problem and solution method is often used to assess inventive step.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

There are no provisions relating to unenforceability of a patent under Swedish law.

21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Use of an method or device prior to the filing of a patent application for such method or device is a
defence from infringement claims, regardless of the type of invention and regardless of whether the
use is commercial or not. If such use has become known to an unspecified group of people not bound
by particular confidentiality undertakings, it is considered public and thereby novelty-destroying. If it
has not become public, it provides the prior user a right to continue the use of the invention in
essentially the same way as before. Consequently, commercial use may continue but not be increased
or altered. Use, prior to the publication date, may give the right to a compulsory licence if there are
exceptional reasons for it.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The monetary remedies available are fines (applied in combination with injunctions) and damages.
There are two different compensations for damages under the Patents Act. Reasonable compensation
is applicable to all infringements and is calculated to correspond to a reasonable royalty, based on an
existing or fictitious licence market, for the use of the infringed right. Additional compensation for
damage suffered is applicable to negligent or intentional infringement and is calculated to correspond
to the loss suffered by the patent holder or licensee.
Damages are intended to compensate actual loss. Punitive damages are not allowed under Swedish
patent law.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A temporary injunction can be obtained by a court order if there is probable cause to believe that an
infringement has occurred or is occurring and it may reasonably be expected that a continued
infringement deteriorates the value of the patent right. A final injunction against current and future
infringement may be obtained through a court order if such infringement is proved. Under particular
circumstances, a temporary injunction may be granted ex parte. Injunctions are combined with a fine,
the size of which may vary in proportion to the economic value of the infringement for the infringer.
An injunction is not effective against the infringers suppliers or customers unless they too are
defendants in the court procedure.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The importation of infringing goods may be blocked by the customs authority after identification of the
infringing goods. The customs authorities can detain the goods ex officio or, more often, at the request
of a patent proprietor. Such requests may be granted for a year at a time and comprise all intellectual
property rights of the proprietor, including patent rights. Upon detaining the goods, the customs
authorities will alert the patent proprietor, who has to acknowledge the infringement within a few
days. If the patent proprietor and the importer can reach a settlement, the customs authorities will
destroy the imported goods.
Otherwise, the patent proprietor has to take legal action in court to establish infringement and obtain
an injunction and a decision to destroy the goods. The procedure conforms to EU Council Regulation
1383/2003.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

The main principle for recovering litigation costs, including attorneys fees, under procedural law is
that the losing party compensates the winning party in full. Where neither party is fully successful
there can be partial compensation, or each party may stand its own cost. The amount and allocation of
compensation is decided by the court upon the parties requests and after assessing whether the
compensation claimed is reasonable in relation to the time and effort put in by the party and its
attorney. It is not unusual for the courts to reduce the compensation awarded to some extent.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no civil remedies available in addition to what has been mentioned above. Criminal
remedies (fine or imprisonment up to six months combined with damages calculated as indicated in
question 22) are available, on the conditions that the patent owner reports the infringer to the police
and that the public prosecutor decides that it is in the interest of the public to pursue the case. The
latter is very rare. Criminal law standards for determining wilfulness are then applicable.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Apart from the patents expiry date, there is no time limit for seeking and obtaining an injunction
against infringement. As regards temporary injunctions there is no statutory limitation, but courts are
reluctant to grant one if it is apparent that time is not of the essence as the infringement has been
known to the patent owner for some time without the owner taking action. This does not apply to final
injunctions.
For obtaining damages, there is a statutory limitation to the effect that damages cannot be recovered
for an infringement that took place more than five years before a writ of summons was filed with the
court of first instance.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Marking of patented products is not required. False patent marking is not prohibited under patent law,
but can be expected to be so under marketing law. If so, the use of the false marking would be
prohibited by an injunction, by the penalty of a fine and the user being liable for damages.

Licensing

29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

In conjunction with EU competition law, Swedish competition law holds provisions regarding abuse
of a dominant position and distortion of competition. Restrictions applicable to patent licence
agreements are set out in Commission Regulation (EU) 316/2014 and the corresponding Swedish
competition legislation.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence may be obtained by court order. The conditions for such order are that:
the patent owner has failed, without an acceptable reason, to make use of a patented invention to a
reasonable extent in Sweden and more than three years has lapsed from grant and four years from the
application being filed;
the use of an invention depends on a patent and the invention represents important technical progress
of vital economic interest over the patented invention;
the utilisation of a certain plant variety depends on a patent and the plant variety represents
important technical progress of vital economic interest over the patented invention; or
the commercial use of an invention is required due to public interest of exceptional importance.
The terms of a compulsory licence are decided by the court.
A compulsory licence has never been granted under Swedish patent law.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The minimum time to prosecute a patent application with the Swedish Patent Office is about one year,
and the expected time is approximately 18 months. Costs vary widely, but average approximately
9,000 including official fees, which start at about 400. Annual fees start at 20 for the first year and
increase incrementally up to 450 for the 20th and last year, making the total amount for 20 years
4,500.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The Swedish Patent Office has entered into the Global Patent Prosecution Highway pilot as well as a
bilateral pilot Patent Prosecution Highway agreement with the Chinese PTO.
The applicant may request expedited handling of the patent application, which is granted on a caseby-case basis depending on the patent offices workload.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The patent application must include a description with information about how the invention may be
utilised to industrial practice. The description must be sufficiently clear to allow for a person skilled
in the art to practice the invention. The application must also include clear information about what is
claimed as an invention (the claims).
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There is no formal obligation for an applicant to disclose prior art, although he or she is expected to
disclose the closest prior art. Consequently, there is no sanction for non-disclosure.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

If the original (parent) application contains two or more separate inventions, one or more divisional
applications may be filed. Divisional applications enjoy the same filing date as the parent
application.
If an additional invention is added to a pending application, a break-out application may be filed. The
filing date of such a break-out application is the date of the submission to the patent office containing
the additional invention.
Divisional and break-out applications must be identified as such on filing and must also identify the
parent application.
There is no formal prohibition against filing new applications drawn from the same invention as
disclosed in an earlier filed application. However, due to the absolute novelty requirement, pursuit of
additional claims to an earlier disclosed invention would only be possible if the first invention cannot
be considered as novel, thus not affecting the second application. If the first application has already
been published, inventiveness of the second application shall also be assessed in relation to the first
invention (this is not the case before publishing of the first application). Thus, it is usually unlikely
that an applicant would be successful in filing additional claims related to an invention in an earlier
application unless the first application lacks sufficient disclosure of the part of the invention

described in the later application or applications.

36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An adverse decision may be appealed to the Court of Patent Appeals. The Courts decision may be
appealed to the Supreme Administrative Court, subject to leave to appeal.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

A nine-month opposition period commences upon grant of the patent. Opposition is open to everyone
except the patent proprietor, and entails a re-examination of the patent. The patent may be reexamined for novelty, inventive step, sufficiency of disclosure, added subject matter and patentable
subject matter. Both the patent proprietor and the opponent or opponents are parties to the opposition
proceedings. After opposition the patent may be upheld, modified or revoked. The provisions for
opposition are, thus, very similar to the provisions in the EPC.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Priority is determined by the first-to-file system. Documents filed the same day enjoy the same
priority. Consequently there are few, if any, priority disputes. No dispute resolution mechanism is
provided for by the patent office.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The patent office provides for a re-examining procedure (see question 37). The office also provides a
procedure for modification of the patent in order to limit the scope of protection, or revocation on the
patent owners request. A request for modification may not be approved unless the invention after
modification is still clearly described and does not comprise anything in addition to what was filed
with the original application.
As an alternative to declaring a patent invalid in its entirety, a court may amend the patent claims
during invalidity procedures if the patent is found to be only partly invalid. The amended patent must
conform to the requirements that the invention is still clearly described and does not comprise

anything in addition to what was filed with the original application. The amendment must not expand
the scope of protection.
40 Patent duration

How is the duration of patent protection determined?

The duration of patent protection is 20 years from the filing date. Medicinal products and plant
protection products may enjoy an extension of protection of up to five additional years upon the grant
of a supplementary patent certificate. A certificate for a medicinal product may also be extended for
six months on request if a paediatric investigation plan has been approved in line with EC Regulation
1901/2006/EC.

Update and trends

Sweden has signed an agreement with the Baltic states about the forming of a regional division of the
Unified Patent Court. The continued development of procedural and administrative rules, and
thetraining and appointment of judges is followed closely by practitioners.
The Swedish government has also presented a proposal for a major reorganisation of the court system
for intellectual property cases, among them patent cases, unfair competition cases and trade secret
cases. The new court would try both civil and administrative cases related to patents in two
instances. The new organisation would presumably make it easier to allocate technical judges to
patent cases, and the court would apply partly amended procedural rules to be able to decide cases in
a shorter time. This reorganisation has been discussed and awaited by practitioners for several years
and expectations are high.
The number of civil patent cases has suffered a small but significant annual decrease during the past
few years, leaving the courts with fewer cases to try. At the same time the courts appear to arrive at
slightly higher damages than before. This seems not to be owing to a shift in the courts view but may
instead at least in part be explained by parties preparing their cases more carefully in this respect.

Kristian Fredrikson

kristian.fredrikson@delphi.se

Stora Nygatan 64
211 37 Malm
Sweden

Tel: +46 40 660 79 00

Fax: +46 40 660 79 09
www.delphi.se

Taiwan
Yulan Kuo, Hsiao-Ling Fan and Charles Chen
Formosa Transnational, Attorneys at Law
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Taiwan established a specialised court (the IP Court) to adjudicate IP-related cases on 1 July 2008.
The IP Court has jurisdiction over the first and second instances of a civil action, the second instance
of criminal cases and the first instance of administrative litigation cases.
As the Patent Act fully decriminalised all types of patent infringement in 2003, all legal proceedings
in Taiwan for enforcing patents rights against infringers are civil actions, which are generally to be
brought before the IP Court. However, the IP Court has only prioritised rather than exclusive
jurisdiction; that is, in the event that a patent infringement case is brought to a common civil court, the
civil court may decide to move the case to the IP Court. However, if the common civil court still
renders the decision on its own, such decision may not be revoked on the ground of lacking
jurisdiction.
The Patent Act does not provide administrative border control measures for the patentee to apply for
detention of the infringing goods. Nevertheless, the customs officers bear the obligation to deter the
pirated goods indicated in a preliminary or final injunction issued by a court.
2 Trial format and timing

What is the format of a patent infringement trial?

In the past, a patent infringement trial was handled by judges who normally lacked technical
backgrounds. There was no discovery, no jury trial, and no separate hearings (such as Markman
hearings in the US) for claim construction. Different from the previous practice, where the judges in
the common courts often relied heavily on the opinions of outside patent verification institutes to
conclude whether infringement existed in a given case, in most cases the IP Court reviews the
technical issues (namely, validity issues and infringement issues) by itself with the support of
technical examination officers. Documentary evidence, factual witnesses (who may be crossexamined), and experts (who are generally appointed by the courts) are all admissible in the
proceedings.
To respond to criticism that judges do not possess sufficient technical understanding of patent issues,

the new IP Court is staffed by technical examination officers who have expertise in science and
technologies. The technical examination officers not only sort out the controversies of both parties to
clarify the disputes, but also provide reference opinions to the judges on technical issues.
Typically, a patent trial lasts one to two years at the first instance. The IP Adjudication Act
specifically prohibits judges from staying the civil proceedings adjudicating infringement issues and
requires them to make a determination on the defence of invalidity, while judges previously agreed to
stay the civil litigation pending the parties exhaustion of the administrative remedial procedures for
related invalidation actions. The problem of long stays of proceedings has been ameliorated.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof for establishing the existence of infringement, as well as infringers intentional or
negligent act, is borne by the patentee, while the burden to prove invalidity and unenforceability lies
upon the alleged infringer. As commonly applied in any civil case, the party that bears the burden of
proof needs to satisfy the burden by a preponderance of the evidence.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The patentee has standing to sue for patent infringement. The exclusive licensee also has the same
right, unless the licence contract provides otherwise, according to article 96.4 of the Patent Act.
According to current court precedents, a non-exclusive licensee has no standing to sue in a patent
infringement case. A distributor probably does not have standing to sue, either, although there is no
court precedent to give guidance on this issue.
An accused infringer may file a declaratory action under article 247 of the Civil Procedure Law if it
can illustrate the existence of its legal interests to bring such a declaratory action (eg, reasonable
apprehension on being sued for patent infringement) and there is no other civil remedy available.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

There is no concept of contributory infringement or inducement of infringement similar to that

applicable in the US. If the patentee intends to sue multiple infringers, he or she may do so under the
joint tort theory where the aider and abettor are jointly and severally liable for civil liability together
with the primary infringer.
If each party only practises part of the element of a patent claim, there will be no patent infringement.

However, under the joint tort theory, the court has found in one judgment that a party can only be
jointly liable as an aider or abettor if there is a direct tortfeasor. This means that without a party
satisfying all of the elements of a patent claim as the direct tort-feasor, there cannot be an aider or
abettor of such patent infringement. Therefore, it would be very difficult, if not impossible, for
multiple parties to be jointly liable if no partys action actually satisfies all elements of a patent
infringement claim. Although the concept of joint infringement has been discussed in many scholarly
articles and public conferences, it is still an unsolved issue according to current precedents.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Yes, according to the Taiwan Civil Procedure Law, multiple parties can be joined as co-defendants if
the rights or obligations of the claim are common to them; or if the rights or obligations of the claim
arise from the same factual and legal grounds; or if the rights or obligations of the claim are of the
same nature and arise from the same kind of factual and legal grounds; as long as the court has
jurisdiction over all defendants. As a result, all of the defendants do not have to be accused of
infringing the same patents. Nevertheless, it is very rare for a patentee to initiate litigation against
multiple parties who infringe different patents.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

The Patent Act makes the manufacture, sale, offer for sale, use or importation for any of the foregoing
purposes an infringement of a product patent, while the use, sale or importation of a product made
through the direct use of a patented process constitutes infringement of a process patent. Generally,
only behaviour taking place in Taiwan will constitute infringement of a Taiwan patent. However, the
importation of infringing products manufactured outside Taiwan will constitute an infringement.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The Guidelines for Patent Infringement Verification published by Taiwans Intellectual Property
Office (TIPO) stipulate that the doctrine of equivalents shall apply, after verification by literal
infringement fails. Judges have found infringement under the doctrine of equivalents where the
claimed subject matter has the same functions, applies in the same ways and gets the same results as
the literal reading of the claims, then the subject equivalents will be liable for infringement.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Taiwan does not have US-like discovery proceedings. Instead, the Civil Procedure Law allows a
party to apply for an order requesting the other party to submit certain documents or evidence
essential to resolution of the dispute during trial. If the judge so orders and the party ordered to
produce evidence fails to comply without proper justification, the judge may uphold the applicant
partys assertion based upon the evidence. In addition, according to the Intellectual Property Case
Adjudication Act, the IP Court can enforce such an order by force if the opposite party has no grounds
to refuse the submission of the requested evidence.
The other mechanism with direct compulsory effect for evidence collection is the preservation of
evidence proceeding. A party may file an application, before or after a civil litigation is initiated, for
preservation of evidence on the ground that the there is a risk that the relevant evidence might be
concealed or destroyed. This is an ex parte proceeding and respondents will not become aware of the
application until the judge arrives onsite for execution with the ruling to be served.
If the parties feel that it is necessary to collect evidence outside of Taiwan, then they must request the
court to seek assistance from foreign authorities, Taiwans diplomatic agencies or other institutions
or organisations.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically a patent trial lasts one to two years at the first instance, but varies with the complexity of
the subject matter of the case. The appellate courts generally take a year to 18 months to complete
proceedings at each instance.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent litigation infringement lawsuit mainly include:

court fees, which are calculated at approximately 1.1 per cent of the value of the claims at the first
instance and 1.65 per cent of the same at the appellate levels;
bonds required for preliminary injunction, or civil litigation applicable only if the plaintiff has
neither presence nor assets in Taiwan;
verification fees for court-appointed or party-retained institutes; and
attorneys fees.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The decision of the first instance in a patent infringement lawsuit made by one judge at the IP Court
can be appealed to a panel of three judges of the same court, and the appellate decision by this panel
of judges can in turn, be appealed to the Supreme Court, provided that the value of the claim exceeds
NT$1.5 million.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Taiwans Fair Trade Act prohibits enterprises from engaging in unfair competition, such as by
abusing market power or by cooperation among horizontal competitors. Taiwans Fair Trade
Commission has published the Guidelines on the Review of Cases Involving Enterprises Issuing
Warning Letters for Infringement of Copyright, Trademark and Patent Rights, and the Guidelines on
Technology Licensing Arrangement. Patentees will expose themselves to civil liabilities or
administrative sanctions or even criminal penalties if the enforcement of patent rights violates the
Guidelines or the Fair Trade Act.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Arbitration and mediation are both available to resolve patent disputes, but in practice parties rarely
opt for alternative dispute resolution techniques.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Yes, a patent can be obtained to cover software or business methods. However, the following subject
matters are not patentable:
animals, plants, and essentially biological processes for production of animals or plants (except for
the processes for producing micro-organisms);
diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and
any invention that is contrary to public policy, morality or public health.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Unless the contract provides otherwise, a company owns the patent application right and patent right
of its employees inventions on works for hire, while the employee is entitled to ask for appropriate
compensation and his or her name to be indicated as the inventor. The patent application right and
patent right of an employees invention other than that as a work for hire shall be vested in the
employee provided that, if the invention is made through utilisation of the employers resources or
experience, the employer may, after having paid the employee a reasonable remuneration, put the
same invention or utility model or design into practice in the enterprise concerned.
The patent application right and patent right for an invention made by an independent contractor shall
be vested in accordance with the agreement. In the absence of such an agreement, the patent
application right and patent right shall be vested in the independent contractor, provided, however,
that the fund-provider shall be entitled to put such invention into practice.
Multiple inventors jointly own the patent application rights and must file the patent application
jointly.
There is no special rule in the Taiwan Patent Act regarding ownership of a patent on an invention
made by a joint venture. The ownership of patent on such an invention, in general, will be decided
through contract.
The ownership and the transfer of patent rights is published by the Patent Official Gazette and
recorded in TIPOs database. Unless registered with TIPO, any transfer, trust or licensing or pledge
of a patent cannot be asserted against a third party.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

The grounds on which a patent can be invalidated include:

unpatentability;
lack of novelty, inventive steps or utility;
failure of enablement; and
wrongful attribution of inventorship.
A patent can be invalidated (revoked) either by an invalidation action filed by any person to, or ex
officio by, TIPO, the decision of which may be appealed to the Ministry of Economic Affairs
(MOEA), then to a panel of three judges at the IP Court and finally to the Administrative Supreme
Court. While the civil courts handling infringement cases shall review the validity of a defence on
their own, such decisions on validity are binding only between the parties and do not affect TIPOs
decision on the invalidation action. In other words, the procedure of the invalidation is still the
ultimate mechanism to determine the validity of a patent.

18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Yes, there is an absolute novelty requirement for patentability. A prior art can be any information
available to the public anywhere in the world. The Patent Act provides a six-month grace period if
the invention is created as a result of research or experiment, has been exhibited at an exhibition
sponsored or approved by the government or has been disclosed on an occasion not intended by the
patent applicant.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

An invention is obvious or lacks inventive step if it can be easily accomplished by a person having
ordinary knowledge in the relevant technical fields based on prior art before the application for
patent is filed.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Taiwan does not have the concept of inequitable conduct similar to that in the US which renders a
patent unenforceable owing to an omission or wrongdoing by the inventors, particularly during the
prosecution. However, a patentees violation of the Fair Trade Act or relevant guidelines published
by the Fair Trade Commission is a good defence against the enforcement of a valid patent.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Yes, the Patent Act provides that the right of a patent does not extend to the situation where, prior to
filing for patent, the invention has been used in Taiwan, or where all necessary preparations have
been completed for such purpose, except when the knowledge of the manufacturing process was
obtained from the patent applicant within six months prior to applying for patent and the patent
applicant has made a statement concerning the reservation of his or her patent right therein. This
defence covers all types of inventions and is limited to commercial uses. There is also a defence if
the accused infringer put the invention into practice for research, educational or experimental
purposes only, with no profit-seeking acts involved. Besides this, there is another defence if the
accused infringer has put the invention into private practice, with no commercial purposes involved.

The latter two defences can be used whether the activity takes place before or after the application of
the patent.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The Patent Act stipulates three alternative ways to calculate damages resulting from a patent
infringement. The first method calculates the actual damages plus lost benefits of the patentee. In the
absence of proof to show the amount of damages, a patentee may subtract the profit earned through the
practice of the patent after the existence of infringement from the profit normally expected through the
practice of the same patent and take the balance as the amount of the damages. The second method
calculates the profit that the infringer gained from the infringement. The third method calculates the
equivalent amount of royalty that may have been collected from exploiting the invention patent under
licence. Further, in cases where the infringement downgrades the business reputation of the patentee,
the patentee can claim additional damages. Damages start to accrue when the infringement activity
takes place. The damage awards may be increased as punitive damages where the infringement is
found to be wilful (see question 26).
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A patentee may obtain a final injunction, which is a remedy at law, against future infringement if the
judgment finding infringement becomes irrevocably final. Patentees can file a preliminary injunction,
before or after a civil litigation is filed, if they can satisfy the following legal requirements: a
disputed legal relationship determinable by followed-up civil litigation; potential irreparable harm or
urgency unless the preliminary injunction is granted; and a bond sufficient to compensate the
respondent if the claim is later proved to be without merit. The new IP Adjudication Act specifically
requires that the judge take into account the likelihood of success on the merits, including on the
issues of infringement and invalidity, and to consider and balance the applicants irreparable harm or
urgency against the respondents burden or hardship and the public interest. Thus, it has lately become
more difficult to obtain a preliminary injunction.
The injunction is effective only against the respondents of the ruling or execution orders. If the
patentee wants to have the effectiveness apply directly against the infringers suppliers or customers,
it must include them as respondents in the application, or at the very least, as respondents to execution
orders.

24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

New border protection measures were added to the Patent Act and were enacted on 3 January 2014 to
strengthen patent protection. Then the regulations Governing Customs Detaining Goods Suspected of
Patent Infringement were promulgated on 24 March 2014. A mechanism for a request to detain was
introduced and a patentee may request customs to detain imported goods suspected of infringing the
patent right by providing relevant material and depositing a security. However, customs will revoke
the detention if:
the patentee does not initiate infringement litigation within 12 days;
the infringement litigation is finally dismissed;
the request is voluntarily withdrawn; and
the owner of the detained goods provides a counter-security.
Applicants who request the detention must compensate the alleged infringer for any damages caused
by the wrongful detention in the event that non-infringement is ruled in a final judgment by a court.
In addition, in a patent infringement case, where the goods in question are suspended from import or
export by a provisional measure (namely, preliminary injunction) adjudicated by the judicial authority
(namely, the IP court), the customs authority will implement necessary measures after the patent
owner (or exclusive licensee) provides required information to identify the goods, such as the time of
import or export of the goods in question, the location, the name of the carrier for import or export,
and flight number or declaration form number, unless the goods in question have already been
released by the customs authorities.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Attorneys fees are recoverable only when the laws require the parties to be represented by
attorneys-at-law for litigation. The parties are not legally required to be represented by attorneys for
the first and second instances of a civil litigation, thus attorneys fees are not recoverable. Attorneys
fees for an appeal to the Supreme Court are recoverable to the extent permitted under the Civil
Procedure Law because the parties are legally required to be represented by attorneys-at-law at the
Supreme Court.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

On 29 November 2011, the Legislative Yuan amended the Patent Act and abolished the rule of
punitive remedies under the Patent Act. On 31 May 2013, the Legislative Yuan again amended the

Patent Act and adopted the rule of punitive remedies. Now under the new Patent Act, if the
infringement is found to be deliberate or wilful, the court may grant monetary compensation in an
amount higher than the amount of damages estimated but no more than three times the amount of the
actual damages. Any indication that the infringer had actual knowledge of the existence of the patent
can be construed as deliberate or wilful infringement. For example, judges have found wilful
infringement in the following cases where:
the infringer previously had a licence agreement with the patentee but failed to pay the royalty and
this intentionally resulted in termination of the licence, and the infringer filed several actions to TIPO
to invalidate the patent in dispute; or
the infringer previously purchased the patented products frequently from the exclusive licensee.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The right to claim patent infringement is extinguished if not exercised within two years from the time
the patentee is aware of the infringement and the identity of the infringers, or within 10 years from the
time of the occurrence of the infringement.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

The patent certificate number must be indicated on the patented article. If such marking cannot be
fixed on the patented article, the patentee may make such marking on the labels or packaging, or make
such marking in a distinct way sufficient to draw peoples attention. Where no patent marking is
made, evidence shall be produced when claiming damages to prove that the infringer knows or has a
reason to know that said article is protected by a patent.
False patent marking may constitute a violation of the Fair Trade Act and may also lead to criminal
penalties and civil liabilities. The Fair Trade Commission has rendered several judgments relating to
false patent marking and ruled that such act is a violation of the Fair Trade Act, which may result in a
prohibition of the act and an administrative fine. Moreover, under certain circumstances, false patent
marking may also violate the provisions of the Criminal Code and lead to criminal liabilities such as
imprisonment and criminal fines. In such event, as the false patent marking would also constitute a
tort, the injured party might also sue for compensation in a civil proceeding.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There is no specific restriction on the contractual terms of a patent licence. However, it is clearly
defined in the new Patent Act that there are two kinds of licence, exclusive and non-exclusive. An
exclusive licensee shall, within the scope of the licence granted, exclude the patentee and third
parties from exploiting the patented invention. A licence or transfer of a patent will be void if the
agreement will give rise to unfair competition because it prohibits or restricts the assignee from using
any specific article or process not furnished by the assignor or licensor, or requires that the assignee
purchase products or raw materials of the assignor that are not under patent protection. In addition,
the patentee must comply with the Fair Trade Act and relevant guidelines for licensing the patents.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence is available to deal with national emergencies or to make non-profit seeking
use of a patent for enhancement of the public welfare or, in the case of an applicants failure to reach
a licensing agreement with the patentee concerned under reasonable commercial terms and conditions
within a considerable period of time, TIPO may, upon application, grant a right of compulsory
licensing to the applicant to put the patented invention into practice provided that such practising shall
be restricted mainly to the purpose of satisfying the requirements of the domestic market.
However, if the application for compulsory licensing of a patent right covers semiconductor
technology, such an application may be allowed only if the proposed practice is for the purpose of a
non-profit seeking use contemplated to enhance the public welfare. In addition, TIPO may also, upon
application, grant to the applicant a compulsory licence to practise the patented invention in the event
that the patentee has imposed restrictions on competition or has committed unfair competition, as
confirmed by a judgment given by a court or a decision by the Fair Trade Commission. Further, for
purposes of assisting countries with insufficient or no manufacturing capacities in the pharmaceutical
sector to obtain pharmaceutical products needed in treating HIV/AIDS, tuberculosis, malaria and
other epidemics, the TIPO shall, upon request, grant a compulsory licence for the requester to exploit
a patent concerned for the purpose of producing such pharmaceutical products and their export to
eligible importing countries.
The grantee of the compulsory licence shall pay to the patentee appropriate compensation. In the case
of dispute over the amount of such compensation, the amount shall be decided by TIPO.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

An invention patent typically takes approximately two years to be granted if no office action is issued.
Typically, official fees from the filing of an application to the receipt of the patent certificate, where

no additional office actions were encountered, would start at the basic fee of NT$15,000 (including
the filing fee and examination fee), while attorneys fees for processing the prosecution vary.
However, the examination fee was adjusted on 1 January 2010 and applies to patent applications
filed on and after 1 January 2010. The annuity fee has also been adjusted and will apply to all
applications. The new examination fee is calculated based on the number of claims instead of a fixed
flat fee. The basic fee is NT$7,000 (NT$1,000 lower than the previous fee), but TIPO will charge an
additional fee if more than 10 claims are made (NT$800 for each further claim). Further, if the total
number of pages of specifications, claims, and drawings in the application exceeds 50 pages, TIPO
will charge another additional fee (NT$500 for each page in excess of 50 pages). The annual fee to
maintain an invention patent is NT$2,500 for the first three years and this amount gradually increases
over the years.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Yes, there are two procedures to expedite patent prosecution.

The first is the Accelerated Examination Program. Under the following three conditions, the applicant
can apply for such procedure:
the applications foreign counterpart has been granted under substantive examination by a foreign
patent authority;
the EPO, JPO or USPTO has issued an OA during substantive examination but yet to allow
applications foreign counterpart; or
the invention application is essential to commercial exploitation.
If the application in such procedure is processing under the condition identified at the final bullet
point, then a fee of NT$ 4,000 will be charged.
The second is the Patent Prosecution Highway. Currently there three patent authorities cooperating
with TIPO: USPTO, JPO and SPTO. This programme enables an applicant whose claims are
determined to be allowable and patentable in the Office of First Filing (OFF), to have the
corresponding application filed in the Office of Second Filing (OSF) and advanced out of turn for
examination while at the same time allowing the OSF to exploit the search and examination results of
the OFF.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

According to the Patent Act, an applicant shall submit the application form, descriptions, claims,
abstract and drawings to TIPO. According to article 26 of the Patent Act, a description shall disclose
the invention in a manner clear and sufficient for it to be understood and carried out by a person
ordinarily skilled in the art. A claim shall define the claimed invention, and each claim shall be
disclosed in a clear and concise manner and be supported by the description. An abstract shall

clearly contain a summary of the disclosed invention. In addition, the manner of disclosure for
description, claim, abstract, and drawings shall be prescribed in the Enforcement Rules of the Patent
Act. TIPO has also issued the Substantive Examination Guidelines (Guidelines) according to which
the TIPO reviews the applications received and decides whether a patent application should be
granted. The Guidelines set forth were drafted based on the practices of the patent offices of the US,
Japan and Europe so their content is quite similar to the international patent prosecution practice. In
short, the requirements of utility, novelty and inventiveness play important roles when TIPO reviews
the applications. Whats more, according to the Patent Act, the law clearly stipulates that the claims
shall be supported by the specification and drawings. If the claims contain features that are not
disclosed in the specification or drawings, the application will not be allowed.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The Enforcement Rules of the Patent Act require an applicant to disclose prior art known to the
applicant. According to TIPO, however, failure to disclose would not necessarily affect the validity
of the patent as long as it does not cause persons skilled in the art to be unable to understand the
content of and how to practise the invention.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

A patent applicant may supplement or amend the claims of an earlier filed application, provided that
the contents of the supplement or amendment do not exceed the scope of the specification or drawings
disclosed in the original patent application, except for correction of translation errors.
If the supplement or amendment exceeds the scope of the specification or drawings, then the patent
applicant must file a further application based on a prior application filed in Taiwan on which it can
claim priority in respect of the invention described in the specification or drawings submitted along
with its prior patent application, except in the following circumstances:
where a period of 12 months has elapsed from the filing date of the prior patent application;
where a claim for priority right upon a foreign application has been made in respect of the invention
or utility model described in the prior patent application;
where the prior patent application has been divided into divisional applications or has been
converted;
where the examination decision has been made with respect to the prior patent application; or
where the earlier patent application has been withdrawn or dismissed.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An applicant for an invention patent or a design patent may apply for re-examination against the
rejection decision within two months from the date TIPOs decision is served. Unless the application
is rejected on procedural grounds or on the ground of the ineligibility of the applicant, the reexamination proceeding is the prerequisite for the later appeal to MOEA, the panel of three judges of
the IP Court and then the Administrative Supreme Court.
Since 2004, the said re-examination proceeding no longer applies to the case of utility model patents
as a utility model patent now merely requires a formality examination by TIPO rather than the
substantive examination. Thus, an applicant for a utility model patent may directly appeal against the
adverse decision to the MOEA within one month from the date TIPOs decision is served. The
MOEAs decisions may be further appealed to a panel of three judges of the IP Court and finally to
the Administrative Supreme Court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

No, the Patent Act has abolished the opposition procedure that previously allowed third parties to
oppose a grant within three months after the application was published. Now, the only mechanism to
protest a patent is to file an invalidation action after the patent is granted.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Taiwan utilises a first-to-file system, pursuant to the Patent Act. Therefore, when multiple
applications are filed for the same invention, TIPO will only grant a patent to the first to file an
application.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The Patent Act allows patentees to file an application for making amendments to the contents of the
specification and drawings only in respect of the following matters: deleting the claims, narrowing
the scope of the claims, correction of errors or translation errors or explanation of obscure
descriptions. Any amendment to be made cannot exceed the scope of content disclosed in the original
specification or drawings when the patent application was filed, and cannot substantially expand or
alter the scope of the patent claims. Upon approval of the amendments, TIPO will publish the cause of
such amendments in the Patent Official Gazette. The effect of the amendments to the specification or

drawings shall, upon publication, be retroactive to the filing date of the patent application concerned.
A patent can be invalidated (revoked) either by an invalidation action filed by any party to, or ex
officio by, TIPO (see question 17).
There is no re-examination proceeding in the sense that any person at any time may challenge the
patentability of a patent on the basis of prior arts. Rather, the re-examination under the Patent Act is
the prerequisite for an applicant applying for an invention patent or a design patent to go through the
administrative remedial procedure (see question 36).
The court may not by itself amend the patented claims during a lawsuit.
40 Patent duration

How is the duration of patent protection determined?

The term of an invention patent is 20 years from the filing date of the patent application. In the event
of invention patents covering pharmaceuticals, agrichemicals or processes for preparing the same, a
patentee may apply for an extension of the patent term of no longer than five years if, pursuant to other
acts or regulations, prior government approval must be secured to practice such patents, for which
obtained after the publication of the patents. The term of a utility model patent is 10 years from the
filing date, while that of a design patent is 12 years from the filing date.

Update and trends

Guidelines for Patent Infringement Assessment
Under the 2008 Patent Act, there was a significant amendment regarding design patents. Partial
designs, icons, computer graphic user interfaces, or a set of articles are now subject to design patent
protection. Also, the associated design system was abolished, while the derivative design system is
substituted and has an extended scope of protection. Nevertheless, the Guidelines for Patent
Infringement Assessment (Guidelines) published by Taiwans Intellectual Property Office (TIPO) are
still silent on these changes and give no assistance in how to determine an infringement of a design
patent, and this has become a serious problem. As such, TIPO recently began drafting an amendment
to the Guidelines and plans to provide a draft of this amendment for public review in the near future
before announcing this amendment later this year.
New border protection for patents
New border protection measures were added to the Patent Act and were enacted on 3 January 2014 to
strengthen patent protection. Also, the regulations Governing Customs Detaining Goods Suspected of
Patent Infringement were promulgated on 24 March 2014. See question 24 for further details.

New computer software guidelines

The protection of computer software under Taiwans patent legislation has been an ongoing issue for
some time. The Patent Examination Guidelines for software-related inventions were first announced
in October 1998. Then, an amendment was passed in 2008 to deal with the issue of whether computer
software alone was patentable subject matter under the Patent Law; this amendment expanded the
scope of protection to cover computer software-related inventions and further defined the claim
language for means plus function. The most recent amendment to the guidelines was finalised and
took effect on 1 January 2014. This latest amendment achieves the object of further clarifying the
standards and improving consistency and provides further guidance as to the meaning of nontechnical, and will help applicants and examiners to understand and determine whether a patent
application has the requisite technical character in computer software-related inventions. This
amendment also clearly indicates that a computer software solution for the presentation of information
or a business method may be patentable if it has a technical effect. The amendment thus can be
viewed as a good development for software companies working on mobile applications or engaged in
the online games industry. Although the relative explanation is still somewhat abstract, it is expected
that further helpful details and rules will be established by practice in the near future.

Yulan Kuo

yulan.kuo@taiwanlaw.com

13th floor, Lotus Building

136 Jen Ai Road
Section 3
Taipei 106
Taiwan

Tel: +886 2 2755 7366

Fax: +886 2 2708 8435
www.taiwanlaw.com

Turkey
Korcan Dericiolu
Dericiolu & Yaar Law Office
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

It is possible to enforce rights against an infringer through civil proceedings and custom seizures.
Enforcement of rights through criminal proceedings is not possible against an infringement action as
of 1 January 2009 owing to the Constitutional Courts annulment of the relevant provision decision
and the failure to enact a new one.
As to court proceedings, an interlocutory injunction can also be requested in order to stop the
infringement and the seizure of goods. There are specialised courts for IP matters established in
Ankara, Istanbul and Izmir. In other cities, nominated civil courts deal with intellectual property (IP)
cases.
In the event of the importation or exportation of counterfeit goods, the patent rightholder can request a
seizure by the customs authority. Within 10 days of the notification of seizure, an infringement action
has to be instituted or an interlocutory injunction decision has to be sought from the court.
2 Trial format and timing

What is the format of a patent infringement trial?

An infringement action before the court is initiated by filing the writ of claims of the plaintiff with a
petition. After filing the action before the court, the assigned judge of the competent court may seek an
expert examination for clarification of particularly technical matters.
Nevertheless, bearing in mind that judges are suitably equipped to evaluate and release their
decisions on IP matters, it is at the judges sole discretion to choose not to seek an expert examination
for cases that can be adequately concluded using their own knowledge. However, a technical
evaluation is deemed compulsory in most patent cases as the judges do not have any technical
background, so an expert examination is a standard practice in patent cases.
Upon receiving the experts reports, the judges further grant their decisions. Yet, there may be some
cases where the reports of the experts are not considered to be sufficient for rendering the final
decision. In this case, the judge may request that the expert issue supplementary work or request
another expert to issue a report on the subject matter in question. The judge necessarily seeks to

obtain an expert report by which a decision can be built upon and a final decision may be granted.
Decree-Law No. 551 (the Decree-Law) does not cover a specific provision for discovery matters,
therefore the general provisions apply. In accordance with the Turkish Civil Procedure Law, either
upon the request of the parties or ex officio decision of the court, discovery may be decided where
necessary. Live testimony is also possible in infringement actions by virtue of the Turkish Civil
Procedure Law.
The parties who are adversely affected by the decision of the court have the opportunity to file an
appeal before the Supreme Court.
After having filed the appeal against the decision of the court of first instance, the Supreme Court, if
requested, fixes a hearing date where both parties attorneys have the opportunity to clarify the merits
of their appeal. In this respect, the Supreme Court decides upon the appeals approximate time
period, usually between six months and one year. At the end, the Supreme Court may annul or uphold
the court of first instances decision. If the Supreme Court annuls the first instance decision, the court
of first instance should fix a hearing date and decide either to insist on its preceding decision or
comply with the annulment decision. If the court complies with the annulment decision, it shall realise
the requirements specified in the Supreme Courts annulment decision by entering into a new level of
litigation proceeding. If the Supreme Court upholds the decision of the first instance, parties have the
opportunity to further appeal to the Supreme Court for the rectification of its decision. If the Supreme
Court dismisses the said appeal of rectification, the decision of the court of first instance is final and
cannot be appealed against further.
The time frame of a trial proceeding is approximately two to three years including the appeal
proceedings.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

As a general rule, the burden of proof rests with the plaintiff in civil cases.
The plaintiff has to prove all legal facts and arguments to support his or her claims. The defendant
also has to bring evidence in order to prove his or her counter-claims.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

By virtue of the Decree-Law, the patent owner or applicant is entitled to file an infringement action.
Additionally, unless otherwise determined in the licence agreement, the holder of an exclusive
licence may, in the event of infringement of the patent rights, institute in his or her own name all the
legal proceedings made available to the owner of the patent. Holders of non-exclusive licences shall
not enjoy the right to institute legal proceedings. In the case of an infringement, the holder of a nonexclusive licence may give notice, through a notary public, requesting the owner of the patent to
institute such proceedings as required. In the event that the patent owner refuses to initiate or fails to

institute proceedings within three months of the reception of the notice, the non-exclusive licence
holder shall have the right to institute proceedings. In these circumstances, the non-exclusive licensee
who has instituted proceedings shall notify the owner of the patent that the proceedings have been
instituted.
An accused infringer cannot file an action for a declaration of non-infringement after or during an
infringement action that is initiated against him or her.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

According to the Decree-Law article 136, the actions deemed as infringement or participating,
assisting, inducing or facilitating in any way and under any circumstances are considered as
infringement of patent rights, as follows:
imitating by producing in whole or in part of a product, the subject of the invention, without the
consent of the patent holder;
selling, distributing or commercialising products in any way, or importing them for such purposes or
keeping them in ones possession for commercial purposes, or applying such products, manufactured
as a result of an infringement, where the infringer concerned knows or should know that such products
are imitations in whole or in part;
using the patented process or selling, distributing or commercialising or importing it for such
purposes or using by applying the products directly obtained through such patented process, without
the consent of the patent holder; and
enlarging the scope of the rights granted by the patent holder on the basis of a contractual licence or
granted by compulsory licence or transferring such rights to third persons without permission.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

An allegation of infringement against the same patent alone is not sufficient to put multiple infringers
on a single lawsuit.
Multiple infringers can as it is not a legal obligation be brought to the same lawsuit if their
activities arise from the same transaction or if there is any relation between the parties on the act
deemed as infringement.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

By virtue of the principle of territoriality, infringement activities that take place outside Turkey
cannot be sued in Turkey.
However, these activities may be pointed out as supportive claims in order to put forward bad-faith
arguments against the infringers activities in Turkey.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

According to the Decree-Law article 83, where, at the time an alleged infringement is put forward,
the equivalent element performs substantially the same function and performs such function in a
substantially similar manner and gives the same result as the element as expressed in the claims, such
element shall generally be deemed to be equivalent to the element expressed in the claims.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

According to the Decree-Law article 139, on an infringement action, the plaintiff may request from
the infringing party the documents related to the unauthorised use of the patent for evaluation of the
damage suffered resulting from the infringement.
In addition, according to article 150, on an infringement action, the plaintiff may request the court to
determine and secure the facts that are considered as infringing such patent rights.
Apart from those mentioned above, general provisions also apply. In accordance with the Turkish
Civil and Criminal Procedural Law, either upon the request of one of the parties or ex officio
decision of the court, discovery or disclosure may be decided where necessary. A diverse range of
discovery or disclosure devices, such as on-site inspections and police raids, might be used,
depending on the nature of the case.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

It is possible to request a preliminary injunction together with the lawsuit or separately.

The decision of the court regarding the request of preliminary injunction takes an approximate time
period of 15 days to one month depending on the type of the request.
For trial level, it takes between 18 and 24 months to receive the decision of the first-instance court.
As for the notification of the court decision, the parties have the right to appeal against it within 15
days and it takes 12 to 18 months to receive the decision of the Supreme Court. Moreover, it is
possible to ask for the revision of the Supreme Courts decision within 15 days and it takes
approximately six to eight months to receive a result in this matter.

11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Attorneys fees vary depending on the time spent on the case and the complexity of the dispute, as
well as the schedule of charges of the attorney or law firm.
The range of official fees and costs also differs from case to case. Official filing fees are calculated
on a percentage basis if there is any compensation request. It is also at the sole discretion of the judge
to determine the number of experts and the amount to be paid for each. However, the range could be
indicated as follows:
between 100 and 250 at the filing stage (except a compensation excluding translation expenses if
the defendant is a foreigner);
between 750 and 1,500 during the trial; and
between 100 and 250 at appeal stage.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The losing party is entitled to file an appeal before the Supreme Court within 15 days of the
notification of the court decision in a civil action.
The Supreme Court examines the appeal for approximately 12 to 18 months and may annul or uphold
the decision of the court of first instance.
If the Supreme Court annuls the first-instance decision, the court of first instance should fix a hearing
date and decide either to insist on its preceding decision or comply with the annulment decision. If the
court complies with the annulment decision, it shall realise the requirements specified in the Supreme
Courts annulment decision by entering into a new level of litigation proceeding. If the Supreme Court
upholds the decision of the court of first instance, parties have the opportunity to further appeal to the
Supreme Court for the rectification of its decision. If the Supreme Court dismisses the appeal for
rectification, the decision of the court of first instance becomes final.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Unless proven otherwise, enforcement of a patent by its owner is not evaluated as a bad faith action.
Therefore, the enforcement of a patent does not expose the holder to liability for a competition
violation, unfair competition or a business-related tort unless it is proven that the patent holder has
acted in bad faith or against public policy.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The Code on Mediation in Legal Disputes on Certain Aspects of Civil Matters entered into force on 7
June 2012. The Code is also enforceable for IP matters, except criminal issues. According to the
Code, both parties may decide to resolve the dispute before a registered mediator.
In addition, it is also important to stress the other provisions in the Turkish legal system subject to
amicable settlements:
According to the Decree-Law, a person who wishes to apply for a compulsory licence may make a
request to the Turkish Patent Institute (TPI) for mediation in order to obtain a contractual licence for
the same patent.
According to the Attorney Act, attorneys may invite the other party to conciliation before a court
action has been filed or before hearings have commenced for an already filed action, provided that
such conciliation pertains exclusively to matters that the parties may elicit of their own will. If the
other party takes up the invitation and conciliation is reached, the subject of the conciliation, its place
and date, and the actions that each party will carry out are laid out in a memorandum and signed
jointly by the attorneys and the clients.
According to the Civil Procedural Law, the judge is allowed to invite the parties to reach an
amicable settlement if necessary.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to the Decree-Law article 5, inventions that are novel, surpass the state of the art and are
susceptible of industrial application shall be protected by patents.
However, according to article 6:
discoveries, scientific theories, mathematical methods, plans, methods, schemes or rules for
performing mental acts, for conducting business or trading activity, and for playing games, literary
and artistic works, scientific works, creations having an aesthetic characteristic, computer programs,
methods involving no technical aspect, for collecting, arranging, offering or presenting and
transmitting information or data and methods of diagnosis, therapy and surgery applying to a human or
animal body are outside the scope of patent protection; and
plant and animal varieties or species or breeding processes of plant or animal varieties or other
biological species, and inventions whose subject matter is contrary to the public order or to morality
are not patentable .
In accordance with this article, software and business methods are not patentable since they are not
evaluated as inventions. Software is protected as a literary work within the scope of the Copyright
Law. However, computer-implemented inventions can be protected within the scope of the DecreeLaw.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

According to the Decree-Law:

If an invention has been made by multiple inventors, the entitlement shall be vested jointly with
these persons. However, such joint ownership is not a legal requirement and respective parties may
define it differently through executing a contract. Joint ventures are also evaluated within this scope.
If an invention has been made by an independent contractor, generally the owner of the invention is
the contractor. However, such ownership is not a legal requirement and respective parties may define
it differently by executing a contract.
If an invention has been made by a company employee, the ownership differs according to the
classification of employees invention.
If the invention is a service invention which is defined by the Decree-Law as inventions made by
the employee during the term of his employment while performing, as of his obligation, the task he or
she has been assigned to or which are based to a great extent on the experience and work or activity
of the employer the employee has a duty to report the invention to his or her employer without
delay. Within four months of the receipt of the employees report, the employer may claim a right in
part or in whole for a service invention. Failure to notify within four months results in the invention
becoming a free invention.
If the invention is a free invention, which are all inventions made by employees outside the scope of
service inventions, the employee has the duty to report the invention to his or her employer without
delay, but there shall be no obligation to notify the employer of a free invention where the invention is
obviously not capable of being used in the employers field of activity. Where the employer does not
contest, in writing, to the employee that the invention notified to him or her is a free invention within
three months of the notification, he or she may not put forward the claim thereafter in that the
invention is a service invention.
Patent ownership is officially recorded by indicating the owner(s) on the application form at the time
of application. Patent rights may be transferred by a deed of assignment duly signed by both parties
and notarised. However, in order to invoke against third parties in good faith, the assignment has to
be formally recorded in the patent register before the TPI.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

According to the Decree-Law article 129, a patent may be partially or wholly invalidated by a court
action:
if evidence brought that the subject matter of the invention does not meet the patentability criteria;
if evidence is brought that the subject matter of the invention has not been described in a sufficiently
explicit and comprehensive manner;
if evidence is brought that the subject matter of the patent exceeds the scope of the application or is

based on a divisional application filed by an applicant who is not vested with the right to request the
patent exceeds the scope of the same; and
if evidence is brought that the holder of the patent does not have the right to request the mentioned
patent.
The court action for the invalidation may be instituted during the term of protection or within five
years after the termination of the patent right.
Invalidation actions should be instituted in specialised courts for IP matters established in Ankara,
Istanbul and Izmir. In other cities, nominated civil courts are dealing with IP cases as well as patent
invalidation actions.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

According to the Decree-Law, a novelty requirement for patentability is absolute.

However, according to article 8, disclosure of information shall not affect the patentability of an
invention where the information was disclosed, during the 12 months preceding the date of filing or,
where priority is claimed, the date of priority of the application:
by the inventor;
by an office when the information was contained:
in another application filed by the inventor and which application should not have been
disclosed by the office; or
in an application filed without the knowledge or consent of the inventor by a third party which
obtained the information directly or indirectly from the inventor; or
by a third party, which obtained the information directly or indirectly from the inventor.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

An invention shall be deemed to surpass the state of the art (to involve an inventive activity or step)
when it is the result of an activity which is not obviously realisable from the state of the art, by a
person skilled in the technical field concerned.
The state of the art shall be held to comprise information or data pertaining to the subject matter of the
invention, accessible to the public in any part of the world, before the date of filing of the application
for the patent by disclosure whether in writing, or orally, by use or in any other way.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

There is no specific regulation about the unenforceability of a patent right owing to a misconduct of
the inventor or the patent owner. However, the patent owner who is aware of the infringing acts and
remains silent without taking any legal action is considered to be committing an abuse of right when
filing his or her action after a relatively long time according to case law.
In addition, according to article 75 of the Decree-Law, the following acts shall remain outside the
scope of rights conferred by a patent:
acts devoid of any industrial or commercial purpose and limited to private ends or aims;
acts involving, for experimental purposes, the invention which is the subject matter of a patent;
extemporaneous preparations of medicines in pharmacies involving no mass production and carried
out solely in making up a prescription and acts related to the medicines thus prepared;
use of the patented invention in the manufacture or operation of ships, spaceships, airplanes or land
transportation vehicles of countries signatory to the Paris Convention or for satisfying the needs of
these, provided that said vehicles happen to be, temporarily or accidentally, within the boundaries of
the Republic of Turkey; and
acts involving, for experimental purposes, the invention that is the subject matter of authorisation
including authorisation for pharmaceuticals and tests and experiments necessary for this purpose.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

According to the Decree-Law article 77, the rightholder of a patent shall not have the right to prevent
persons in good faith who had used the invention in Turkey or had made serious preparations to use
the said invention, between the date of filing of the application and the date of priority, from
continuing to work the subject matter of the patent or from commencing its working as of the
preparations made to this effect.
However, said persons may continue using the patent or start to make preparations to this effect and
the extent of use is limited only for their reasonable needs.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The plaintiff has the right to request an appropriate compensation from the infringer in consideration
of his or her moral and material damages.
Material damages are taken into account with three different options that may be chosen by the
plaintiff as indicated in the Decree-Law:
potential income of the owner if there was no infringement;

 income of the infringer by the use of the patent; and

licensing fee that has to be paid, if the patent was used lawfully under a licence agreement.
In calculating the non-realised income, the court may also add on a reasonable extra amount when, in
the courts opinion, the patent contributes substantially, from an economical aspect, to the
manufacturing of the product or to the use of the process.
The patent rightholder may also request extra damages where the reputation of the invention that is the
subject matter of the patent is harmed or prejudiced from the manufacturing in a bad or the improper
manner of the patented invention, by the party violating the rights conferred by the patent.
Moral damages are taken into account on a hypothetical basis since it is not possible to prove the
damage nominally. Therefore it is at the sole discretion of the judge to determine the amount based on
the severity and the nature of the infringement activity.
Both moral and material compensation tend to provide fair compensation rather then to be punitive.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

According to the Decree-Law, it is possible for a patent holder to seek preliminary injunctions before
civil courts in order to stop a threat of infringement.
The court decides to take injunction measures if the judge is convinced that there is a high possibility
of such an infringement. However, such injunctions are rarely granted unless clear facts and strong
evidence of infringement are available. If this is the case, the judge may also request a deposit from
the plaintiff as a security.
Precautionary measures should fully secure the effectiveness of the judgment, and particularly
provide for the following measures:
cessation of infringing acts;
an injunction to seize within Turkey including at customs, free ports or free trade areas and to
keep in custody goods produced or imported that infringe rights conferred by the patent or the means
used to implement the patented process; or
the placement of security or a guarantee for damages to be compensated.
Even if the injunction measures are the same, an order of temporary injunction is valid during the
lawsuit and final injunction is permanent. There is no other distinction between temporary and final
injunctions.
According to the Decree-Law, there is a wide range of definitions of infringing parties, from direct
infringers to suppliers, importers, wholesalers and distributors. However, as a general rule, the enduser consumer does not count as an infringer.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

As to the court proceedings, an interlocutory injunction could be requested in order to block the

importation of infringing products because importation is also an act of infringement. There are
specialised courts for IP matters established in Ankara, Istanbul and Izmir. In other cities, nominated
civil courts deal with IP cases.
In the event of the importation of counterfeit products, the patent rightholder can request a seizure by
the customs authority. Within 10 days of the notification of seizure, an infringement action has to be
instituted or an interlocutory injunction decision has to be taken from the court in order to prevent the
release of goods by the customs authority.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

There are two kinds of attorney fees the attorney fee on a contractual basis between attorney and
client and official attorney fees determined by law.
Contractual attorneys fees vary depending on the time spent on the case and the complexity of the
dispute, as well as the schedule of charges of the attorney or law firm.
Official official attorneys fees are determined according to a schedule issued by the Bar Union of
Attorneys, and are usually about 750 (for 2015) if no compensation is claimed by the parties. After
the lawsuit is finalised, the party whom the decision favours is entitled to official attorney fees.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There is no specific provision in the Decree-Law for an additional remedy against a deliberate or
wilful infringer. However, according to the general principles a deliberate or wilful infringement may
increase the amount of compensation determined by the judge.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

According to the jurisprudence of the Supreme Court, as long as the infringement acts continue, the
right to institute a court action against the infringing parties is not prescribed.
However, the patentee who is aware of the infringing acts and remains silent without taking any legal
action is considered to commit an abuse of right when filing his or her action after a relatively long
time according to case law.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Use of a mark or any indication which demonstrates that the patent is pending or registered is not
mandatory since the Decree-Law does not cover any provision regulating such requirement.
However, although the use of a mark is not mandatory, it is advisable to benefit from its deterrent
effect on potential infringers and to ensure public awareness.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

In Turkey, voluntary licensing of patents is based on the principle of freedom of contract. Parties can
freely decide the conditions of a voluntary licensing contract unless it is contrary to public order,
public morality or breaches the fair competition rules.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

A compulsory licence is granted under the following situations or conditions:

failure to put to use or work the patented invention for more than three years as of the date of
publication of the grant decision;
dependency of the subject matter of patents; and
on grounds of public interest.
Before filing a lawsuit for a compulsory licence the requested party may also apply to the TPI for its
mediation to obtain a contractual licence for the patent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

A patent with substantive examination may take from three to five years to be granted. If the
application is for a patent without substantive examination grant procedures last 18 to 36 months. A
utility model is generally granted between 12 and 24 months.
Costs may differ regarding the type of patent, amount and diversification of office actions and choice
of examination authority. Generally official fees of filing, prosecution and grant are as follows:

 for a patent with substantive examination around 1,750 (excluding annuities);

fora patent without substantive examination around 500 (excluding annuities); and
for a utility model around 300 (excluding annuities).
Professional fees vary according to the time spent and the complexity of the invention as well as the
schedule of charges of the IP firm.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There is no specific provision to expedite a patent prosecution in the Decree-Law. However, it is

possible to request an early publication from TPI which may shorten the grant period.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

According to article 42 of the Decree-Law, in order to obtain a patent, it shall be necessary to file an
application form comprising the following:
description written in a sufficiently explicit and comprehensive manner so as to enable a person
skilled in the technical field of the subject matter to implement the invention;
claims defining the elements of the invention for which protection is sought. Each claim shall be
explicit and concise to the point;
drawings referred to in the description, in the claims;
abstract; and
a receipt showing the payment of the application fee.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

According to the implementing regulation of the Decree-Law article 8, an inventor has to disclose
prior art in the description.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

The rightholder of a patent or an application for a patent may apply for an additional patent for
protecting inventions that is linked with the subject matter of the main patent and which improves or

develops the invention that is the subject matter of the main patent.
Additional patent applications may be filed up until the date of the decision to grant the main patent.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

It is possible to oppose an adverse decision of the TPI within 60 days, calculated as of the
notification of the concerned administrative decision. This opposition is evaluated by the ReExamination and Evaluation Board, which is the High Council of the TPI.
Consequently, a court action can be filed against the final decision of the Re-Examination and
Evaluation Board within 60 days calculated from the notification of the decision.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

An opposition mechanism is possible within six months following the publication of said patents
search report as a pre-grant opposition. Third parties may file objections to the grant of a patent by
claiming that the invention does not meet the patentability requirements.
There is no post grant opposition mechanism according to the Decree-Law.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

The TPI does not have any procedures for resolving priority disputes between different applicants for
the same invention. The person who has filed the application earlier or has the earlier priority right
has the prior rights on said invention. However, it is possible to apply to the courts to resolve this
dispute.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

With some restrictions and in certain circumstances, it is possible to request a modification, reexamination and revocation from the TPI until the grant of the patent decision.
After the grant decision, it is also possible to request from the court the cancellation of a patent
partially or wholly. Where the grounds for cancellation are only for part of a patent, a partial
invalidation shall be ruled by cancellation of the said claim fully pertaining to such part. An

individual claim may not be partially invalidated.

40 Patent duration

How is the duration of patent protection determined?

According to the said Decree-Law, the term of:

a patent without substantive examination is seven years from the date of filing the application;
a patent with substantive examination is 20 years from the date of filing the application; and
a utility model is 10 years from the date of filing the application.

Update and trends

The Turkish Patent Institute began to expand its online application system for all patent proceedings
as of 1 January 2015. The list of charges also differs for online and offline proceedings in order to
promote the online system. Furthermore, the Turkish Patent Institute has broadened the diversity of
IPC codes and expanded the percentage of searches and examination reports that it conducts itself by
more than 35 per cent. It should also be stated that the foundation of a Patent Academy in
collaboration with WIPO is on the Turkish Patent Institutes 2015 agenda.

Korcan Dericiolu

korcan.dericioglu@dericiogluyasar.av.tr

Cinnah caddesi 43/10

Cankaya
Ankara
Turkey

Tel: +90 312 442 69 96

Fax: +90 312 442 69 11
www.dericiogluyasar.av.tr

United Kingdom
Tom Scourfield and Nick Beckett
CMS
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Patent rights can be enforced through civil proceedings in the United Kingdom. There are four main
regimes.
England and Wales
In England and Wales, a patent case may be heard by a specialist judge in the Intellectual Property
Enterprise Court (formerly known as the Patents County Court) or the Patents Court. The Intellectual
Property Enterprise Court tends to hear smaller patent cases, with damages and costs recovery
limited to 500,000 and 50,000 respectively. The largest cases tend to be heard in the Patents Court.
Appeals are referred to the Court of Appeal and subsequently to the Supreme Court.
Scotland and Northern Ireland
In Scotland, cases are heard by Scotlands civil court, the Court of Session, in accordance with
section 98 of the Patents Act 1977 (the Act). The Court of Session consists of an outer house and an
inner house. At first instance specialist judges in the outer house consider the case. The inner house
and then the Supreme Court hear appeals. In Northern Ireland, cases are brought before the High
Court of Northern Ireland. Appeals are referred to the Court of Appeal of Northern Ireland and then
to the Supreme Court.
Intellectual Property Office hearings
The UK Intellectual Property Office (formerly the Patent Office) has jurisdiction to hold hearings to
resolve patent disputes and publish decisions of these hearings. The powers of the Intellectual
Property Office are more limited than those of the courts as both parties have to agree to be involved

and the Comptroller does not have the power to grant an injunction. Decisions of the Intellectual
Property Office can be appealed in the Patents Court.
Intellectual Property Office opinion service
Anyone who is involved in a patent dispute can request the Intellectual Property Office to provide a
non-binding opinion. Opinions are made by a senior examiner at the Intellectual Property Office and
address the main disputed issues. This can help businesses or individuals to negotiate a resolution
and avoid costly litigation. The fee is 200 and the process takes no longer than three months. The
opinion service was introduced on 1 October 2005 by the Patents Act 2004, which brought UK
patents legislation in line with the revised European Patent Convention (EPC 2000).
Requests for opinions are published and the public is invited to make observations. Observers can
submit reasons why they think a request should be refused. If someone makes an observation, the
person who filed the request, the patent owner or an exclusive licensee, has two weeks in which to
file observations in reply. Observations and replies are taken into account by the senior examiner
when forming the opinion.
2 Trial format and timing

What is the format of a patent infringement trial?

Patent infringement trials in the Patents Court are usually in front of a single expert judge. In advance
of the trial both parties are generally required to provide the judge with written skeleton arguments
outlining their case, a reading list and a bundle of documents, including statements of case, witness
statements, expert reports, documents referred to in the statements and reports and legal authorities.
The precise format of the trial can vary according to the judges discretion. However, typically it will
start with oral submissions in the form of an opening statement on behalf of the claimant. Depending
on the nature of the case, the judge may then hear oral evidence from witnesses and experts, which is
usually limited to matters contained in the written witness statements and expert reports previously
submitted to the court. Witnesses may be cross-examined. After delivery of evidence the judge will
usually hear closing submissions, firstly on behalf of the claimant and then on behalf of the defendant.
Closing submissions may conclude with a reply made on behalf of the claimant. In long and complex
trials, both parties are required to provide written summaries of their closing submissions.
A trial typically lasts between two days and two to three weeks, depending on the complexity of the
technology in dispute. However, there is a streamlined procedure that, if appropriate, can reduce the
case to one day. The streamlined procedure in general requires all evidence to be presented in
writing and there is no disclosure if such procedure is used.
Cases heard in the Intellectual Property Enterprise Court follow a simpler procedure. Where
possible, cases are to be decided on the basis of written submissions alone and no further evidence or
written argument is allowed without the permission of the judge. Trials should last no longer than one
or two days and cross-examination of witnesses is strictly controlled.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In relation to infringement, invalidity and enforcement, the party that has made the allegation must
prove its claim to the court on the balance of probabilities.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Equitable or legal proprietors of patents may be entitled to sue for patent infringement. Exclusive
licensees may also sue in respect of infringements that are within the scope of their licence, although
the proprietor of the patent must also be joined in as a party. Depending on the terms of the licence,
non-exclusive licensees may also apply to be added to proceedings brought by the proprietor.
A person who is accused of infringement can apply for a declaration of non-infringement for acts
done or proposed to be done. Prior to such an application, the accused infringer must have written to
the proprietor to set out the full particulars of the act in question and to request such a declaration. If
the proprietor has refused or failed to provide a written acknowledgement of non-infringement, the
application can be made. Accused infringers may also bring a claim for the patent to be revoked.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Inducement
A person who is alleged to have induced a patent infringement can be joined into a claim if he or she
is closely involved with the infringement. This can be useful to the claimant as the alleged inducer
will be required to disclose documents, the contents of which might assist the claimant in proving his
or her case.
Contributory infringement
According to section 60(2) of the Act, a person can be liable for infringement of a patent if, without
the consent of the proprietor, he or she supplies or offers to supply a person in the UK, other than a
licensee or other person entitled to work the invention, with any of the means relating to an essential

element of the patented invention, when he or she knows, or it is obvious to a reasonable person, that
those means are both suitable for putting, and are intended to put, the invention into effect in the UK.
In the case of Cranway v Playtech [2009] EWHC 1588 (Pat), which concerned the supply of
software to Tote but not directly to punters, the court considered that Playtech had a defence against
contributory infringement because Playtech was not a supplier to a direct infringer within the meaning
of section 60, but rather a supplier to a secondary infringer.
In Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2009] EWHC 2691 (Pat), a director was
liable because he was directly involved with the infringement. The judges findings in relation to
contributory infringement were upheld in the Court of Appeal ([2010] EWCA Civ 1110), but it
should be noted that the court disagreed with the decision in Cranway, stating that the legislation
cannot have been intended to be drafted such that it does not catch a primary supplier to the ultimate
market even if he or she very well knew that the ultimate users would adapt the means so as to
infringe. This decision of the Court of Appeal was confirmed in the case of KCI Licensing v Smith &
Nephew [2010] EWCA Civ 1260, where the court also held that the relevant intention of the ultimate
users need not be in existence when they first take possession of the means. Such intention may be
formed at a later date, and the supplier must know (or it must be obvious) that some ultimate users
will form that intention.
Multiple parties
Persons can be found to be jointly and severally liable for infringement by virtue of a common design.
This can apply to persons who assist, procure, enable, facilitate, persuade, induce, incite or authorise
others to commit a tortious act. The case of CBS Songs Limited v Amstrad Consumer Electronics plc
[1988] AC 1013 confirms that two or more persons who act in concert with one another pursuant to a
common design in the infringement can be found to be joint infringers. In that particular case no
common design was found.
The case of Boegli-Gravures SA v Darsail-ASP Ltd [2009] EWHC 2690 (Pat) demonstrates that
where a director goes beyond his or her constitutional role in the firm, and personally contributes to
the infringing act, he or she may be personally liable.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Any number of parties can be joined as defendants in the same lawsuit. Generally, the court can order
that a party be added to the proceedings if it is desirable to add the new party in order to resolve the
issues, or if there is an issue involving the new party and the existing party that is connected to the
matters in dispute in the proceedings and it is desirable to add the new party. Such a connection may
include a corporate or commercial relationship to the accused methods or products. It is likely that
the court would consider it desirable to add a defendant who is allegedly infringing the same patent
(multiple infringers, single patent). It is also possible that a court would consider it desirable to join
a defendant who is allegedly infringing a different patent from the original defendant if there is a

connection to the original dispute, for example if the product is the same and if it is desirable to add
the defendant because the evidence, disclosure, etc required in relation to infringement of the different
patent is likely to be similar. This would depend on the circumstances of the case.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Patent infringement actions must usually be brought in the court of the country where the defendant is
domiciled or has a business, or where the infringement takes place. Processes that have been patented
in the UK but take place abroad will also constitute a patent infringement in the UK if a product that is
the direct result of that process is imported or sold in the UK. In other situations the court may take a
pragmatic approach. For example, in the case of Menashe Business Mercantile Ltd & William Hill
Organisation Ltd [2002] EWCA 1702, William Hill argued that its computer system did not infringe
the claimants patent in the UK because the host computer was located overseas, although its software
product was sold in the UK. The court rejected this argument on the grounds that it is the location
where the system is being used that really counts.
In Actavis Group HF v Eli Lilly and Company [2012] EWHC 3316 (Pat), the English court approved
service in England of a claim against the US defendant for a declaration of non-infringement of the
French, German, Italian, Spanish and UK designations of a European patent.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

The case of Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others [2004]
UKHL 46 confirmed that there is no US-style doctrine of equivalents in UK law and clarified that
claims should be construed purposively in accordance with the earlier case of Catnic Components
Limited v Hill & Smith Limited [1982] RPC 183.
The approach in Amgen was subsequently applied by the Court of Appeal in Ancon Ltd v ACS
Stainless Steel Fixings Ltd [2009] EWCA Civ 498, when it was decided that generally elliptical
referred not just to a cone shape but to any rounded but not circular form.
In Amgen, the House of Lords considered that purposive construction is consistent with article 69 of
the European Patent Convention, which states that construction should not be overly literal and should
strike a balance between fair protection for the patent owner and a reasonable amount of legal
certainty for the public.
Before Amgen, the established approach was set out in Improver Corp v Remington Consumer
Products Limited [1989] RPC 69, when the Patents Court considered the question of how to deal
with a variant that was outside of the literal meaning of a claim. The result was a three-step approach
that came to be known as the protocol questions:
Does the variant affect the way the invention works in a material way? If not:
Would the fact that the variation does not affect the way the invention works in a material way have
been obvious to a skilled reader at the date when the patent was published? If yes:

 Would a skilled reader have understood from the language of the claim that the patent holder
intended that strict compliance with the primary meaning was essential for the invention?
In Amgen, Lord Hoffmann, who set these questions in Improver, made it clear that these questions are
only useful guidelines, designed as an aid to the interpretation of claims when the question of whether
or not a variant falls to be considered arises. A variant that is well beyond the language of a claim
(purposively construed) cannot infringe a patent. The Court of Appeal applied this reasoning in
SmithKline Beecham Plc v Apotex Europe Ltd [2004] EWCA Civ 1568.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Disclosure of documents is routine in England and Wales (but not in Scotland, where a request for
specific documents must be made). Recent changes to the rules regarding disclosure have given courts
greater flexibility in the scope of disclosure in a particular case. The court now has a menu of
disclosure orders to choose from, including:
an order dispensing with the need for disclosure;
an order that parties disclose only the documents on which they rely;
an order that disclosure should be given on an issue by issue basis;
an order for each party to disclose documents that, it is reasonable to suppose, may contain
information that will enable that party to advance its own case or damage the case of any other party,
or leads to an inquiry that has either of those consequences;
standard disclosure (see below); or
any other order that the judge sees fit.
Standard disclosure used to be the norm in litigation, and requires the party to identify and list any
relevant documents that:
he or she will rely on;
adversely affect his or her own case;
adversely affect another partys case; or
support another partys case; and
the documents which he is required to disclose by a relevant practice direction.
The introduction of these new rules is designed to enable courts to manage the scale of disclosure and
the associated costs.
In any event, for patent litigation, disclosure in relation to issues of validity is limited to the period of
two years on either side of the earliest priority date. Subject to privilege, disclosure documents must
be copied and offered for inspection to the other parties. Disclosure includes electronic documents
and the scope of the search for these may require agreement or court order. Depositions do not exist
in the United Kingdom.
Alleged infringers are encouraged, in appropriate circumstances, to provide a product and process
description instead of standard disclosure concerning infringement issues. However, material
omissions or inaccuracies in these descriptions can result in the trial being adjourned with inevitable
cost consequences. In Research in Motion v Visto [2008] EWHC 819 (Pat), Research in Motion
failed to produce a satisfactory product and process description with the result that Research in

Motion was ordered to pay Vistos costs on this point.

Disclosure from persons or organisations abroad that are not parties to the claim is also possible but
rare. Pre-action disclosure of documents is also possible in circumstances where the claimant can
show that the documents concerned would have been disclosable under the usual test and where preaction disclosure is desirable to dispose fairly of the anticipated proceedings and where it would
assist in saving costs (or potentially resolving the dispute without proceedings).
In exceptional circumstances, a letter of request may be issued by the High Court to an overseas court
to obtain evidence from a person in the overseas country. The UK is a signatory to the Hague
Convention, and there are mechanisms in EU legislation for obtaining evidence from other EU states.
There is no standard disclosure in actions in the Intellectual Property Enterprise Court, but limited
disclosure may be ordered on specific issues.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The first step in litigation is for the claimant to issue a claim form, either with particulars of claim
attached or to follow. The claim form must be served on the defendant or renewed within four
months, unless the defendant is outside the jurisdiction, when a six-month limitation period applies.
The defendant responds to particulars of claim with a defence and, if appropriate, a counterclaim.
The deadline for serving a defence is 42 days after service of the particulars of claim, provided that
the defendant has filed an acknowledgement of service within 14 days after service of the particulars
of claim. This period is extended to 70 days in the Intellectual Property Enterprise Court where the
claimant has not certified that he or she has complied with the general pre-action protocol. After
service of the defence the claimant has 21 days (28 days in the Intellectual Property Enterprise Court)
in which to reply to the defence or defence and counterclaim. The parties can also request additional
information from each other and agree to extensions of time for each of the steps, although in certain
circumstances the approval of the court is needed.
Following the defence and reply, the parties will be required to attend a case management conference
to set the timetable leading up to trial, including provisions for the disclosure of documents and
exchange of evidence between the parties via witness statements and experts reports. The trial date
will also be fixed.
The overall timetable can vary considerably. Further, the streamlined procedure, which came into
effect in April 2003, can shorten the litigation timetable in some circumstances. This procedure
dispenses with the most time-consuming elements of the system, including oral evidence, disclosure
and experiments, and reduces the trial period to a single day. Similarly, cases heard in the Intellectual
Property Enterprise Court are now subject to new rules. These new rules limit the procedural steps in
an effort to reduce the expense of patent litigation for simple matters and to improve access to the
court for SMEs and individuals. Elements such as expert evidence, standard disclosure and
experiments are therefore often dispensed with (unless it can be demonstrated that by applying a costbenefit test such a stage is necessary, in which case permission may be granted) and there are
limitations on any cross-examination. As a result, trials should last no more than one or two days.
Cases heard in the Patents Court that do not use the streamlined procedure may take 12 to 18 months
to reach trial and last from two to three days to two to three weeks depending on complexity at trial.

In all cases a detailed written judgment is provided. Cases heard in the Intellectual Property
Enterprise Court or cases heard under the streamlined procedure usually take between six to nine
months to reach trial.
A party needs permission to appeal. This permission can either be given by the lower court or by the
appeal court itself. It can take around 14 months on average after the initial decision for the appeal to
be heard.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Costs can vary considerably depending on the complexity of the case. Under the streamlined
procedure, costs have been considerably reduced and might range between 30,000 and 40,000 in a
case that is not highly technical. For an average case, the costs could be in the region of 300,000 to
750,000, with the possibility of costs of well in excess of 1 million in complex cases. In Research
in Motion v Visto [2008] EWHC 819 (Pat), the Patents Court heard that Research In Motion (RIM)
had incurred costs of nearly 6 million, which the court felt was excessive. As such, in subsequent
proceedings between the same parties, both parties were required to provide estimates of costs.
Pursuant to the Jackson reforms, there is an increased focus on limiting and managing the costs of
litigation. The parties to litigation proceedings in the Patents Court are required to produce detailed
cost budgets where the sums in dispute are under 2 million. These budgets are to be provided to the
judge at the case management conference for approval, and revised where necessary. The court will
then manage the case so as to ensure that the case proceeds according to the budget, subject to any
agreed changes. At the end of the case the recoverable costs of the winning party are assessed in
accordance with the approved budget.
Costs recoverable in the Intellectual Property Enterprise Court are limited in two ways. First there is
an overall cap of 50,000 on the maximum amount of costs that the court will award. Secondly, there
are caps for various stages in the proceedings (scale costs). The Intellectual Property Enterprise
Court first applied these cost-capping provisions in the case of Westwood v Knight [2011] EWPCC
11. The judge explained that the correct approach is that the court will make a summary assessment of
the costs incurred at each stage. If costs at a particular stage exceed the cap for that stage, then the
court is likely to award costs at the capped level. The judge will then look at the total figure and, if
this exceeds the overall cap, then the judge is likely to award costs at the maximum recoverable limit
(50,000). The court may also award less than this value (at the discretion of the judge).
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The Patents Court or the Intellectual Property Enterprise Court may grant permission to appeal. There
are two bases for appeal, which are that the decision of the lower court was wrong or that the
decision of the lower court was unjust because of a procedural irregularity. Appeals are not an
opportunity for the case to be reheard and in most circumstances will be limited to a reconsideration

of the trial judges finding. New evidence may not be introduced except in very limited circumstances
and the appeal court only hears oral evidence in exceptional cases.
Appeals from the Court of Appeal are referred to the Supreme Court. Permission is required and is
granted only where there are major issues that need clarification, such as in the Amgen case. In very
exceptional circumstances the Supreme Court may permit a leapfrog appeal, which is an appeal direct
from the High Court.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Under the Competition Act 1998, the Office of Fair Trading and any UK court or tribunal have
jurisdiction to deal with competition issues in the UK as far as is possible in a way that is consistent
with European Union law. This includes decisions on individual cases under articles 101 and 102 of
the Treaty on the Functioning of the European Union (TFEU) (formerly articles 81 and 82 of the EC
Treaty) in relation to restrictive agreements and abuse of dominant position respectively.
In relation to article 102 TFEU, it is possible for enforcement of patent rights to constitute abusive
conduct. In the case of ITT Promedia NV v Commission [1998] ECR II-2937, the court decided that
this would only occur if proceedings brought by a dominant undertaking could not reasonably be
considered to be an attempt to assert the rights of that undertaking and therefore would serve only to
harass the opposing party. This approach was confirmed in the case of SanDisk Corp v Koninklijke
Philips Electronics NV [2007] EWHC 332 (Pat): enforcement of patent rights would be considered
to be harassment where clearly no infringement occurred or the patent was invalid, and, in either
case, the proprietor knew or believed that to be the case.
On 15 June 2005, the European Commission fined AstraZeneca 60 million (reduced because of
certain novel elements of the case), in relation to its alleged misuse of the patent system and
procedures that it had implemented in order to block or delay entry into the market of competitors
who had manufactured generic alternatives to its ulcer drug, Losec. AstraZenecas appeal against the
fine was dismissed by the Court of Justice of the European Union (CJEU) in 2012.
It is possible that the enforcement of a patent that is essential to a technical standard, and where the
patentee has shown willingness to license the patent on fair, reasonable and non-discriminatory terms,
could give rise to competition issues. However, we are not aware of any UK decision on this issue.
Also note that where intellectual property infringement allegations have been made, defences based
on competition law arguments may be available in certain circumstances, for example, where the
intellectual property owner is demonstrating an abuse of a dominant position or where there is an
anti-competitive agreement (the Euro-Defences).
Unjustifiable threats: business-related tort
Section 70 of the Act, as modified by the Patents Act 2004, states that it is against the law to threaten
patent infringement proceedings in certain circumstances. Generally, threats are permitted in respect
of acts of manufacturing or importing. It is not considered a threat in any circumstances to provide

facts about a patent. In addition, as long as the proprietor has made best endeavours to identify a
manufacturer or importer, but has been unsuccessful, he or she may threaten action against a different
party without fear of an unwarranted threats action, provided that party has been notified of those
endeavours at the time.
See also questions 29 and 30 on competition issues arising from IP-based agreements.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The Patents Court and the Intellectual Property Enterprise Court encourage parties to use ADR as a
means of resolving a dispute or specific issues within a dispute at any stage in proceedings. In some
circumstances the courts can also require proceedings be stayed in order for the parties to consider
ADR. The main advantage of ADR is that it can result in significant cost savings for all parties.
Part 1 of the Civil Procedure Rules, known as the overriding objective, says that the court has a duty
to actively manage cases. This includes encouraging the parties to use ADR where appropriate and
facilitating ADR.
The key case on ADR is Halsey v Milton Keynes General NHS Trust [2004] EWCA Civ 576. In this
case, the Court of Appeal concluded that while courts can strongly encourage parties to mediate, they
cannot compel them to do so. However, in this case, it was also decided that courts are entitled to
impose cost consequences on any party that refuses to engage in ADR without justification, even if
that party is successful at trial. This approach was followed in the case of Corby Group Litigation v
Corby DC [2009] EWHC 2109, although in Corby the failure to mediate did not result in cost
consequences because it was decided that Corby District Council had acted reasonably by not
agreeing to mediation. This case confirms that a key factor in the Halsey approach is whether it can
be considered reasonable to pursue ADR in the context of the facts of the dispute and according to the
conduct of all parties. This is consistent with part 44.4 of the Civil Procedure Rules, which states that
when assessing costs, judges must take into account the conduct of the parties, including conduct
before and during the proceedings and the efforts made before and during the proceedings to try to
resolve the dispute.
There are several different types of ADR. The main techniques (apart from obtaining an opinion from
the Intellectual Property Office, as described in question 1) relevant to patent disputes are
negotiation, mediation and arbitration. Arbitration results in a decision that is binding on the parties,
whereas negotiation and mediation are both non-binding. Negotiation takes place between the parties
without the involvement of a third party and mediation consists of discussions between the parties
with the assistance of an independent person. In both cases talks take place on a without prejudice
basis and remain confidential between the parties. Arbitration is usually prescribed in a contract and
an award made as a result of a finding in arbitration can be enforced by the successful party.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Generally speaking, patents, which are granted in respect of new inventions that involve an inventive
step, can be industrially applied and are not specifically excluded from patentability (which is the
case in respect of discoveries, scientific theories, mathematical methods, literary, dramatic or artistic
works or other aesthetic creations, schemes, rules or methods for performing a mental act, methods of
playing games or doing business, programs for computers and presentation of information, as well as
inventions that are contrary to morality or public policy).
While under section 1(2) of the Patent Act 1977 a discovery, scientific theory or mathematical
method and methods for doing business or a program for a computer shall not be patentable, the
provisions of the Act [] prevent anything from being treated as an invention for the purposes of
[the] Act only to the extent that a patent or application for a patent relates to that thing as such.
Thus, patents can be obtained for business methods and software if the applications relating thereto
are carefully drafted, although these patents may in some instances later be unenforceable.
In Merrill Lynch [1989] RPC 561, the Court of Appeal held that business methods may only be
patentable insofar as they make a technical contribution to the known art. This contrasts with the
European Patent Office (EPO) approach, which focuses on a technical feature test in a given
invention. Although the general trend is for harmonisation of the decisions of the UK IPO with the
EPOs approach, the Court of Appeal has consistently applied and confirmed the Merrill Lynch test,
as further developed in Aerotel Limited v Telco Holdings Ltd [2006] EWCA Civ 1371. This issue
was further considered in the case of Symbian v Comptroller [2008] EWHC 518 (Pat), in which the
Aerotel test was applied and it was found that a software method for accessing data in a dynamic link
library was outside the computer program exclusion due to the improved computer performance
(technical contribution) achieved. In AT&T Knowledge Ventures LP v Comptroller General of
Patents [2009] EWHC 343 (Pat), the Aerotel test was applied and the computer software invention
and a mobile telecommunications network messaging service were both devoid of technical
contribution and so were not patentable. More recently, the test was confirmed and applied in the
case of Halliburton Energy Services Incs Patent Applications [2011] EWHC 2508 (Pat). Further,
i n Protecting Kids the World Over Ltd [2011] EWHC 2720 (Pat), the court applied the test and
noted that it was helpful to have regard to the task that the computer program is seeking to perform in
assessing the technical contribution.
Halliburton also provided guidance on the mental act exclusion, in which the court held that the
mental act exclusion should be given a narrow interpretation, such that the exclusion only excludes
acts carried out mentally, and not a wide construction, namely that it is capable of being performed
mentally regardless of whether it is in fact performed mentally. The IPO guidance supporting the wide
interpretation had to be amended as a result.
Medical/biotechnical aspect
Under the Act, while surgical instruments and medical apparatus or devices may be patentable,
methods of treatment involving surgery, therapy and diagnosis (including dosing regimes) are not. In
the field of stem cell research uses of human embryos for industrial or commercial purposes are
excluded from patentability.
The meaning of human embryo was considered in the CJEU in the case of Oliver Brstle v

Greenpeace [2012] 1 CMLR 41 and it held that a patent should not be granted for an invention if its
implementation requires the prior destruction of human embryos or their prior use as base material.
The UK High Court has sought further clarification from the CJEU on the application of this decision,
in particular how it extends to inventions that require the use of immortalised human embryonic stem
cell lines (see the case International Stem Cell Corporation v Comptroller General of Patents
[2013] EWHC 807). The CJEU has ruled that a parthenote, a stem cell type originating from
unfertilised human ova, does not fall within the definition of human embryo for the purpose of the
legislation if it is incapable of developing into a human being, and is therefore not excluded from
patentability per se (see International Stem Cell Corporation v Comptroller General of Patents,
Case C-364/13). The decision in Brstle, to the extent that it equated unfertilised ova (which were
incapable of developing into a human being unless genetically modified) with fertilised ova,
appeared to have been based on incorrect facts provided to the court. The question whether, in any
particular case, a parthenote has the inherent capacity to develop into a human being is for the
national court to decide, taking into account the scientific knowledge current at the time.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Generally speaking, patents belong to the inventors of the underlying invention, or to any party who
owned all of the rights to the invention at the time it was created. Joint owners will generally be
entitled to an equal, undivided share in the patent, and will all be entitled to use the invention.
However, the invention can only be licensed or assigned with the consent of all of the owners thereof.
If, however, an invention is created during the course of an individuals employment and it is
reasonable to expect that it would result from performance by the employee of his or her duties, then
it and any patents subsequently granted in this respect are owned by the inventors employer, insofar
as the invention was made during the course of the employees normal duties or in the course of
duties falling outside his or her normal duties but specifically assigned to the employee. In such
cases, employees may be granted compensation under section 40 of the Act if the patent or underlying
invention is of exceptional benefit to the employer. The case of James Duncan Kelly and Kwok Wai
Chiu v GE Healthcare Limited [2009] EWHC 181 (Pat) was the first compensation award under the
provision. Total sales of the product the claimants had invented had been 1.3 billion: the court
awarded them 1 million and 500,000 respectively in compensation.
The issue of employees rights to patents was considered in the case of LIFFE Administration and
Management v Pavel Pinkava and another [2006] EWHC 595 (Pat) (and this decision was upheld
on appeal [2007 EWCA Civ 217]), which related to a situation where an employee had created an
invention that had a significantly wider application than the particular problem he had been asked to
address during the course of his duties. Nonetheless, because the invention resulted directly from the
extra duties given to him, the employee was required to assign the patent to his employer.
The issue of joint ownership of patents was explored by the House of Lords in the landmark case of
Yeda Research and Development Company Limited (Appellants) v Rhone-Poulenc Rorer
International Holdings Inc and others (Respondents) [2007] UKHL 43, in accordance with which
any individual wishing to be identified as the joint inventor of an invention has to prove that he or she

was involved in the creation of the concept underlying the invention. In addition, anyone wishing to
be substituted for the individual named as the inventor of an invention has to prove that this individual
did not have any input into the inventive concept behind the invention. This approach was applied in
Welland Medical Limited v Hadley [2011] EWHC 1994 (Pat).
Patent ownership is recorded at the UK IPO, and patents may be assigned under a separate contract or
by means of contractual provisions in a broader contract.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Claims for revocation on the grounds of invalidity can be made to the Patents Court, the Intellectual
Property Enterprise Court or the UK IPO and are frequently made in the course of infringement
proceedings as a counterclaim by the alleged infringer. Anyone, whether with an interest under the
patent or not, may make an application for revocation.
The list of grounds for invalidity (and therefore also revocation) is set out in section 72 of the Act,
and includes the following:
lack of novelty;
lack of an inventive step;
incapability of industrial application;
the invention falls under an excluded category (as discussed in question 15);
the invention or patent would be contrary to public policy or morality;
the invention is insufficiently disclosed by the patent; or
the subject matter of the patent goes beyond what was disclosed in the original patent application.
If invalidation is threatened, the patent can be amended to avoid this. However, if this results in the
patent encompassing added matter that was not in the original application, then this also constitutes
a basis for invalidation of the patent.
The comptroller also has limited powers to revoke a patent on his or her own initiative. Further, even
where revocation proceedings before the UK IPO are subsequently withdrawn (for example, in the
event of a settlement), the comptroller still has the power to continue with his or her review of the
patent by refusing to accept the withdrawal. The same does not apply to the UK courts, when the
claimant is allowed to withdraw at any time (with cost consequences).
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Pursuant to the Act, an invention is novel if it does not form part of the state of the art as defined by
sections 2(2) of the Act. The state of the art in the context of an invention is any matter that has at any

time before the priority date of that invention been made available to the public (whether in the UK or
elsewhere) by written or oral description, by use or in any other way.
The effect of section 2(2) is modified in the circumstances set out in sections 2(3) and 2(4). Under
section 2(3) an invention is unpatentable if it was disclosed in a prior application for another patent
that was published on or after the priority date of that invention, (as discussed in detail by the House
of Lords in Synthon BV v SmithKline Beecham Plc [2005] UKHL 59 and the High Court in Ranbaxy
UK Ltd v Warner-Lambert Company [2005] EWHC 2142 (Pat). Section 2(4) discounts disclosures
of the invention arising from an abuse of confidence or disclosure at specified international
exhibitions in the six months immediately preceding the filing date.
The issue of novelty was also considered in Dr Reddys Laboratories v Eli Lilly [2008] EWHC
2345 (Pat) in relation to the question of whether the disclosure of olanzapine as one of the compounds
falling within a Markush formula (namely, a formula that encompasses the formulae for many
compounds without specifically naming or otherwise identifying each one) in the prior art would
mean that the novelty requirement was not fulfilled. Here, the court came to the conclusion that a prior
disclosure does not take away the novelty of a claim to a specific compound unless the compound
was disclosed in a way that allowed specifically for its identification. This decision was upheld in
the Court of Appeal ([2009] EWCA Civ 1362).
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

In order for a patent to be valid, creation of the underlying invention must have involved an inventive
step. The test for assessment of whether this is present was set out in Windsurfing International Inc v
Tabur Marine (Great Britain) Ltd [1985] RPC 59 and then later refined in Pozzoli SpA v BDMO SA
[2007] EWCA Civ 588, and encompasses the following steps:
identify the notional skilled person and his or her common general knowledge;
identify the inventive concept;
identify what differences exist between the prior art and the inventive concept of the claims; and
viewed without any knowledge of the alleged invention, determine whether these differences would
have been obvious to the normally skilled man or whether inventiveness would have been required.
It was stated in Pozzoli that there may be instances in which the inventive concept cannot be
identified, and that in such cases the sensible practice would be to determine the features of the claim
in question so as to identify any differences between it and the state of prior art. This test has been
frequently applied by the courts, for example in the recent cases of Sandvik Intellectual Property AB
v Kennametal UK Ltd [2011] EWHC 3311 (Pat), Eugen Seitz AG v KHS Corpoplast GmbH [2014]
EWHC 14 (Pat) and in H Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Pat) where a
European patent concerning a method of making a compound used in the manufacture of an antidepressant drug, citalopram, was invalid for obviousness as the skilled industrial process chemist
would have arrived at the method without any invention. Also, note that the courts have interpreted
that the notional skilled person can be an individual or a team of individuals depending on the
circumstances of the case.
The concept of obviousness was further explored in Conor Medsystems Inc v (1) Angiotech
Pharmaceuticals, Inc (2) and Others [2008] UKHL 49, in which the court stated that the focus of the

obviousness test did not require any demonstration in the patent that the alleged invention actually
works in the way alleged.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Damages will not be awarded if the defendant was not aware of the patent and had no reason to
suppose that it existed. See also Remedies below. Patents may also be unenforceable if they are
seen to breach any regulations relating to fair or unfair competition, but this is rare.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

An accused infringer has a defence under section 64 of the Act (as amended by the Copyright Designs
and Patents Act 1988) if he or she can demonstrate that before the priority date he or she was carrying
out the allegedly infringing act (or making effective and serious preparations to do so) in good faith. If
he or she can demonstrate this, the prior user may continue to do such acts. This defence is available
for both non-commercial and commercial uses, namely, where the act was done or preparations made
in the course of business, and in relation to the latter, the individual may authorise his or her partners
or may assign that right to any person who acquires the business. A limitation to the right is that the
prior user may not license his or her right to continue to do the act.
Lubrizol Corp v Esso Petroleum [1997] RPC 195 established that as the purpose of section 64 was
to give an individual the right to continue to do what in substance he or she was doing before, it
protects an act that is substantially the same as the prior act. The act need not be exactly the same
because that would make the protection illusory. In order to determine if the acts are substantially
the same, all the circumstances of the case are considered. The court also held in Lubrizol that
preliminary planning did not constitute serious preparations. The approach of the court was
confirmed in the Court of Appeal ([1998] RPC 727) and was recently applied in H Lundbeck A/S v
Norpharma SpA [2011] EWHC 907 (Pat).
The defence is available to cover all types of inventions.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

The principle in assessing damages in patent infringement cases is that damages are intended to be
compensatory rather than punitive in nature (UK patent law does not recognise the concept of punitive
damages for patent infringement). However, interest on all sums payable is recoverable.
Successful claimants may seek damages in the form of lost profits on sales made by the infringing
party, to the extent that they can show that these profits result directly from the infringement, as well
as a royalty on other sales made by the infringing party. Damages can also be pursued, to a certain
extent, in relation to ancillary products. In addition, springboard damages may also be awarded if the
patent infringement caused the infringing party to achieve a better position on the market than it would
have otherwise had, and this better position has led to a loss on the part of the claimant that would
otherwise not have been incurred (Gerber Garment Technology Inc v Lectra Systems Ltd [1995]
RPC 383). The alternative is for the claimant to seek to recover an account of the defendants profit
made as a result of the infringing activity. Such cases rarely arise, as they seldom yield more than a
relatively small sum for the aggrieved party.
Damages begin to accrue from the date of the infringing act (taking into account the six-year limitation
period in this respect).
In infringement cases, in circumstances where a patent is only held to be partially valid, in order for
the claimant to be awarded damages (and costs) the claimant must show that the specification of the
patent was framed in good faith and with reasonable skill and knowledge, under section 63 of the Act.
A further point to note is that there is a cap of 500,000 on the level of damages that can be awarded
in the Intellectual Property Enterprise Court.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

Interim injunctions are now a relatively common occurrence in pharmaceutical patent cases (although
they are quite rare in other sectors) and will be awarded where the balance of convenience approach
favours one party over the other. In the context of cases relating to generic pharmaceutical products,
the financial implications are so extensive that damages alone often prove an insufficient remedy and
interim injunctions are therefore often granted.
Injunctions may be granted in instances where there is an actual or implied threat that an infringing
party will undertake action that will breach a patent holders rights. Generally speaking, the mere fact
that an infringement has taken place is usually taken as sufficient evidence that the infringement will
be continued. However, a threat of infringement will in most cases also be sufficient to prove intent to
infringe. The purpose, therefore, of injunctions is to prevent such further infringement from taking
place. However, in some instances an already-granted final injunction may be stayed pending appeal;
in addition, it is at the courts discretion to refuse to grant a final injunction, even if there is clear
intent on the part of the infringing party to continue the patent infringement in question.
When granting interim injunctions, the test applied by the courts is generally that elaborated in the
case of American Cyanamid Co v Ethicon Limited (No.1) [1975] AC 396. Under these rules, a
number of issues will be considered, namely whether the issue at hand is a serious one, whether
damages are an adequate remedy for the applicant and respondent and which party the balance of
convenience favours. It is worth noting that in any case relating to injunctions, a cross-undertaking

will be made by the applicant to the effect that if it becomes apparent that the injunction should not
have been granted in the first place, it will be liable to pay damages to the other party. In addition, in
cases where damages could easily compensate the loss suffered by the patent holder, injunctions will
generally not be granted.
The American Cyanamid guidelines were applied in the case of Wake Forest v Smith & Nephew
[2009] EWHC 45 (Pat), which related to apparatus facilitating healing of wounds. The main issues
considered in this case were obviousness and validity (infringement); however, an application for
grant of an interim injunction made during the course of the proceedings also proved successful.
A successful claimant can also obtain an order for the destruction or delivery-up of any infringing
goods in the possession of the defendant to ensure that those goods do not remain on the market. This
remedy can be indirectly effective against third parties that are aware of it but continue to assist the
infringer in further infringement.
As regards patents relating to technical standards wherein a patentee gives an undertaking to grant
licences, we are not aware of any case in the UK confirming whether or not an injunction should be
granted against a prospective licensee who refuses to pay the demanded royalties.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Generally speaking, importation of infringing products into the UK will constitute a patent
infringement for which remedies can be sought by means of general anti-infringement litigation (as
discussed above). Mechanisms such as injunctions may be especially relevant in such cases, and are
likely to be granted to prevent infringing parties from introducing their products onto the UK market.
Under the EU doctrine of exhaustion of rights, once a patented article has been put into circulation in
the EU the patent proprietor may not prevent importation of the article into the UK. Thus, a patented
article sold lawfully abroad can be imported into the UK without restraint. Where the article is
imported into the UK after being made available in another member state without the authority of the
patent proprietor, then the proprietor is entitled to assert its patent rights.
Since 1 January 2014, a new regulation concerning customs enforcement of intellectual property
rights (608/2013) (the New Regulation) has been in force in the UK. The New Regulation provides
customs authorities with extended powers to detain counterfeit or pirated goods at EU borders. As
before, infringing goods can be identified and held at UK borders, following which, IP owners can
commence proceedings against the owner of the goods. The New Regulation makes it compulsory for
member states to implement the simplified procedure whereby the Customs Commissioner can treat
as abandoned for destruction, goods suspected of infringing an IP right if the declarant, holder or
owner fails to provide any response when offered the opportunity to agree or object to the
abandonment of the goods. However, the UK implemented the simplified procedure in March 2010 so
this change is not significant. Other changes under the New Regulation are that it introduces a specific
procedure for the destruction of small consignments of goods, being those containing three units or
less or weighing less than two kilograms. Such goods can be destroyed without requiring agreement;
however, the applicant is required to opt in to this procedure when submitting its application.

25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Patent litigation is usually subject to the general principles of litigation in the UK. Thus, a successful
party will generally be awarded approximately 60 per cent to 75 per cent of its reasonable costs
(namely, costs relating to legal fees and other direct costs connected with the litigation). Costs can be
awarded on interim applications, and the court will usually require these to be paid to the winning
party in 14 days.
The issue of costs is governed by the Civil Procedure Rules. However, in practice the courts will
also take into account factors such as whether the parties have attempted to settle the case amicably.
In addition, the Patents Act 2004 obliges courts to also consider the financial standing of the parties
in employee compensation proceedings, patent infringement proceedings, groundless threats
proceedings and in proceedings for a declaration of non-infringement. This obligation is generally not
binding in respect of validity proceedings, unless they are being conducted in the course of
infringement proceedings.
It should also be noted that costs recoverable in the Intellectual Property Enterprise Court are subject
to a cap of 50,000 (see question 11). This cap applies even where there are two successful
defendants who have been separately represented (Liversedge v Owen Mumford Limited & Abbott
Laboratories Limited [2012] EWPCC 40).
Following Lord Justice Jacksons Report on Civil Litigation Costs in January 2010, the government
has now implemented significant reforms to the rules and regulations relating to the cost of litigation.
These reforms came into force in April 2013. The reforms have increased the focus on case
management in order to keep costs down. Key features of the reforms are that success fees under
conditional fee agreements and after-the-event insurance premiums are no longer recoverable from
opposing parties. Contingency fee agreements are permitted and parties to litigation are obliged to
comply with new case management rules. In particular, solicitors must prepare cost budgets that are
exchanged between the parties and amended or approved by the judge at the case management
conference.Changes to the budgets must be agreed as the case progresses and costs awards will be
based on the figures set out in the budgets.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no specific additional remedies against a deliberate or wilful infringer. However, under the
Intellectual Property (Enforcement, etc) Regulations 2006 the court should take into account elements
other than economic factors including any moral prejudice caused to the claimant by the
infringement when making an award.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Remedies for patent infringement can be sought during a period of six years from the date of the
infringing incident or act.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

Patent holders are under no obligation to mark their products with a patent number or pending patent
application number. However, such markings are instrumental in immediately invalidating any claims
of innocent infringement and thus avoiding the necessity of paying damages in infringement cases. To
ensure that the maximum protection is afforded, it is highly advisable that the patent or patent
application number is provided on the patented product in question.
It is a criminal offence to fraudulently mark products with a patent number or pending patent
application number. Under section 110 of the Act, those found guilty of this offence can be liable to a
fine of up to 1,000.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Licensing falls under the restrictions imposed by the EU and UK competition law regulations, in
particular articles 101 and 102 of the TFEU (which relate, respectively, to restrictive agreements
affecting trade between EU member states and abuse of a dominant position), as well as the
corresponding sections of the UK Competition Act.
Under the Technology Transfer Block Exemption Regulation (Community Regulation 316/2014)
(TTBER), exemptions are created for certain IP licensing agreements that would ordinarily breach
article 101 of the TFEU. These exemptions relate inter alia to market share thresholds; namely,
licence agreements concluded between parties having less than a certain share in the market are
exempted from the general restrictions set out in article 101 TFEU. However, the TTBER also
contains certain extremely stringent restrictions that, if applicable, mean that under no circumstances
will a given licence agreement be encompassed by the protection of the block exemption or be
enforceable (this applies to the agreement as a whole). In addition, the TTBER sets out excluded
restrictions that will be unenforceable if considered anti-competitive (although the rest of the
agreement in question will remain in force), for example non-challenge clauses, although these are
permissible to the extent that they provide for termination in the event of a challenge by the licensee.
Similarly, an agreement will not fall within the scope of article 101 if it is of minor importance,
which is determined according to the market share of the parties involved. There are no exemptions to
article 102.

This regime requires the parties to decide for themselves whether the restrictions are acceptable. No
notification to the Commission is required (which could be seen by some as a drawback of this
particular system).
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Pursuant to the Act, compulsory licences can be obtained, but only within a strict framework of
requirements and insofar as they are non-exclusive and non-assignable. In addition, such licences will
be oriented towards ensuring supply to the UK market and will be limited in scope and duration. They
will also foresee adequate remuneration for the proprietor of the patent in question.
Under the aforementioned requirements, applications for compulsory licences can only be made to the
UK IPO after the third anniversary of the patent grant date, and unsuccessful efforts must have been
made over a period of time to conclude a licence on reasonable commercial terms. In addition, the
applicant must prove that the refusal on the part of the other party to conclude a licence is hindering
the practical application of an invention so as to cause demand for this invention to not be met on
reasonable terms within the UK, or is unfairly prejudicing the establishment of successful commercial
activities (in respect of the patent) on the UK market.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Generally speaking, the time period for grant of a patent in the UK is approximately three to four
years. However, this period can be shortened to 12 months or less in certain cases if the accelerated
procedure is initiated upon the request of the applicant.
On average, the patent grant process is usually associated with costs of approximately 3,000,
including patent attorneys fees and the official IPO fees, including search and examination
(230-280). However, attorneys fees may vary in accordance with the complexity of the
application or invention in question. Preparation of the patent specification by a party other than the
inventor or applicant will usually be subject to an additional fee. Thus, the total costs of filing and
obtaining a patent fluctuate on a case-by-case basis but remain in the region of several thousand
pounds.
In addition, renewal fees of 70 to 600 (depending on the year of the patents life) must be paid
annually.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

As briefly mentioned in question 31, there is an accelerated procedure for the grant of patent, such
that the grant can be obtained within 12 months. The IPO offers three types of accelerated procedure:
a combined search and examination;
an accelerated search or examination, or both; and
early publication.
All three may be used in combination. In order to benefit from the second procedure the applicant
must demonstrate the reasons why proceedings must be accelerated or the applicant must demonstrate
that the invention relates to green technology. The types of reasons acceptable to the IPO depend on
the circumstances of the case. The first procedure does not require justification and simply saves time
by requesting the search and examination at the same time (these are usually done sequentially). The
accelerated procedure may be useful in situations where a speedy grant is necessary to secure an
investors involvement or if a third party is doing acts that would be infringing the patent and a
quicker grant would allow a party to take action against that third party. These reasons are usually
accepted by the IPO as justification for the use of the accelerated search and examination procedure.
However, applicants should consider the advantage that a longer time to grant may offer, namely that
it provides the inventor with a longer period in which to plan the commercialisation of the product
and provides time to check that it will be commercially viable, so as to avoid wasting financial
resources.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Applications must be made in the form prescribed by the UK IPO. In accordance with the Act, an
application must contain a specification that discloses the invention in a manner that is clear enough
and complete enough for the invention to be performed by a person skilled in the art. The
specification will usually comprise an abstract, a detailed description (often including drawings) and
a number of claims defining the matter for which the applicant seeks protection.
The claims must also be clear and concise and be supported by the description. In interpreting the
claims in the event of any ambiguity, the court will look to the description and drawings, and
therefore these should be as detailed as possible.
The UK IPO website provides some guidance on what to include in an application.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

While there is no obligation to disclose prior art arising from search or examination procedures in
other jurisdictions, it is common practice for the examiner to request such disclosure.

35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

As a general rule, divisional applications relating to the subject matter of an earlier patent application
can be filed insofar as the material that they relate to was fully and unambiguously disclosed in the
earlier (parent) application. They may contain claims that were previously not raised in respect of
this subject matter, or claims that were raised in the parent application but considered objectionable
as the parent application was deemed to relate to multiple inventions. However, they cannot mimic
the scope of any claims contained in the original application.
Although they will have the same filing date as the parent application, divisional applications are
also subject to additional requirements in respect of the time of their submission. Namely, they must
be filed prior to the date on which the original parent application is resolved (namely, either granted
or refused). In addition, as certain steps may need to be taken following their submission, such
additional applications must be filed a minimum of three months prior to expiry of the final deadline
for the complete application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Appeals can be made without permission to the Patents Court. The Intellectual Property Enterprise
Court does not have jurisdiction to hear appeals.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

There is no mechanism by which third parties can oppose patents at the pre-grant phase. However,
any party can make observations to the UK IPO in respect of the patentability of an invention
underlying a given patent application. It is then up to the examiner to decide whether to make any
formal objections to the patent application on this basis. While the party filing observations is
informed of their receipt, at no point does it become a party to the grant proceedings.
In terms of mechanisms applicable post-grant, one can file an application for revocation of a patent at
the UK IPO or the patents courts. In the case of European patents, applications for invalidation should
be filed with the European Patent Office; however, proceedings relating to such applications are
usually lengthy and it may take several years for them to be resolved.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same

invention? What factors determine who has priority?

The UK patent system operates on a first to file rather than a first to invent basis, as a result of which
the first party to file a patent application will usually be granted the patent. In some instances parties
inventing simultaneously may be able to continue work on the invention in question; however, the
scope of this right is limited.
In instances where the ownership of a given patent is unclear, an application can be made to the UK
IPO in respect of determination of ownership.
The burden of proving an entitlement action is almost always on the non-applicant. The UK IPO can
decline to deal with an entitlement claim if it is deemed to be more suitable to be determined by the
court.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

Modification of a patent is possible, upon submission of an application by the holder thereof. This
application should set out the scope of the requested amendment and explain why amendment is
necessary. If allowed by the UK IPO, the amendment will be advertised and may be opposed by third
parties before being finally accepted.
In practice, applications for amendment can also be submitted during the course of invalidation
proceedings before a court. They should in all instances be made in good time, so as to allow the
opponent and other parties time to consider whether an objection should be lodged. The court will
then usually allow the amendment insofar as the time requirement has been fulfilled and the opponent
has had the opportunity to review the application for amendment.
However, should the court find that the aforementioned requirements are not fulfilled, or deem the
scope of the amendment to exceed the original scope of the patent, then the amendment will usually
not be allowed and in certain cases the patent in question may be revoked. This was demonstrated in
Wobben v Vestas [2007] EWHC 2636 (Pat), in which the court found that an application to introduce
a new set of claims that was submitted after a preliminary judgment was filed too late for the
amendment to be allowed. Similarly, in Nokia GmbH v IPCOM GmbH [2011] EWCA Civ 6, the
Court of Appeal considered whether to allow amendments to a patent after the main trial. The court
held that a party should not be allowed to advance in a second proceeding an issue that it should have
advanced in the first (except for exceptional circumstances) and refused permission to amend.
It is also worth noting that patents may be subject to revocation or invalidation proceedings in the
same manner as the original patent or any other patent, even if amendment thereof has previously been
allowed by the UK IPO or the courts.
The UK IPO has the power to revoke a patent on a number of grounds. The Comptroller also has the
power to revoke a patent on his or her own initiative on the grounds that the invention disclosed in the
patent formed part of the state of the art. In such an event, the proprietor will be given the opportunity
to make observations and to amend the specification.
40 Patent duration

How is the duration of patent protection determined?

Patent protection is generally granted for a universal term of 20 years from the filing date. However,
following EU regulations a five-year supplementary protection certificate can be obtained for
inventions concerning medicinal and plant protection products. The maximum term of patent
protection can, therefore, in certain instances be extended for a period of up to five years from expiry
of the underlying patent.
Notwithstanding the above, granted patents must be renewed annually. Failure to do so can
compromise patent protection of the invention in question.

Tom Scourfield

tom.scourfield@cms-cmck.com

Nick Beckett

nick.beckett@cms-cmck.com

Cannon Place
78 Cannon Street
London EC4N 6HH
United Kingdom

Tel: +44 20 7367 3000

Fax: +44 20 7367 2000
www.cms-cmck.com

United States
Michael N Zachary, Clifford A Ulrich and John W Bateman*
Kenyon & Kenyon LLP
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

A patent owner can enforce patent rights against a potential infringer in a legal or an administrative
proceeding, or both. A legal proceeding begins when a patent owner files a civil complaint for patent
infringement in a federal district court against a potential infringer. An administrative proceeding,
available only when potentially infringing goods are being imported into the United States, begins
when a patent owner requests that the US International Trade Commission (ITC) institute an
investigation of the alleged infringement. The primary difference between the two types of
proceedings concerns the available remedies if infringement is found. In a federal district court, a
prevailing patent owner may be entitled to both monetary damages and an injunction against future
infringement. In an ITC proceeding, monetary damages are not available; the primary remedy is an
order excluding future importation of the infringing goods into the United States. Further discussion of
ITC proceedings can be found in question 24.
A patent owner may file an infringement suit in any federal district court that can properly exercise
personal jurisdiction over the defendant. In general, a district court may exercise personal
jurisdiction if the defendant has a minimum level of contacts such that it could reasonably have
anticipated being sued there. An alleged infringer who sells the accused products nationwide would
likely be subject to personal jurisdiction in any district court in the United States. Provided that
personal jurisdiction over the defendant exists, the patent owner typically will file suit either in its
home district (if the patent owner is based in the United States) or in a district court where the patent
owner perceives there to be a strategic advantage, such as a quick time to trial, judges who are
experienced in patent cases, or juries who look favourably upon patents. If the home district or
another preferred district is not available because of lack of jurisdiction, the patent owner may file
suit in the district where the defendant resides. There are no specialised patent trial courts, although
some district courts participate in a special programme in which patent cases may be directed to
certain judges within those districts.
Appeals from both ITC and federal district court decisions in patent infringement cases are heard
exclusively by the US Court of Appeals for the Federal Circuit (Federal Circuit) in Washington, DC.
Appeals from Federal Circuit decisions may be submitted to the US Supreme Court, but the US
Supreme Court has discretion to decide not to hear an appeal, and it only accepts a few patent cases
every year.

2 Trial format and timing

What is the format of a patent infringement trial?

In district court cases, patent infringement issues may be tried before a judge or a jury. The plaintiff
and the defendant each have a right to demand a jury trial, but only if the case involves a claim for
monetary damages. If neither party demands a jury, or if the case does not involve a claim for
monetary damages, the case will be tried by the judge. In a jury trial, the judge decides all disputed
issues of law. The jury decides all disputed issues of fact and also applies the law as determined by
the judge in order to decide the issues of liability and damages. In a trial before a judge (also called a
bench trial), the judge resolves all disputed issues, both legal and factual.
Typically a patent trial begins with opening statements from counsel for both parties. The opening
statements normally will provide a preview of the evidence from the perspective of each party.
Following opening statements, each party will introduce evidence primarily through live testimony of
witnesses. The plaintiff calls its witnesses first. Each witness is examined by the plaintiffs counsel,
and then cross-examined by the defendants counsel. Later, the defendant may call its witnesses, who
are likewise examined and cross-examined. Finally, the plaintiff can call witnesses to respond to any
witnesses called by the defendant. The judge on occasion may ask questions to clarify particular
points of interest, but this is relatively uncommon (and particularly so in a jury trial). Some judges
permit jurors in a jury trial to submit written questions. Documents and other physical items, such as a
sample of an allegedly infringing device, may also be received into evidence. Typically, such
evidence is introduced by asking a witness to authenticate and comment on the evidence.
Each party in a patent infringement case will usually present one or more expert witnesses to testify
on technical matters relating to infringement and validity or on financial matters relating to damages.
In addition, an expert witness may also provide a technical tutorial to explain the patented
technology. In contrast to fact witnesses, experts are permitted to testify as to their opinions on
matters within their recognised area of expertise, including opinions on the ultimate issues of
infringement, validity and the amount of any damages. A trial judge may appoint an expert or a special
master to advise the court in especially complex cases, particularly in bench trials.
The trial typically ends with closing arguments. Counsel for each party will summarise the evidence
and present argument concerning how the jury (or judge) should interpret the evidence and what
conclusion the jury or judge should reach.
Pursuant to a 1995 US Supreme Court decision in the case of Markman v Westview Instruments , the
interpretation of patent claims is an issue of law for the judge to decide, not the jury. As a result,
courts usually conduct Markman hearings prior to trial, during which the judge receives evidence and
argument on disputed claim interpretation issues. Some judges resolve claim construction issues early
in a case, while others prefer to wait until fact discovery has been completed or even later. Whether
done early or late in a case, following the hearing the judge typically issues an order interpreting the
meaning of claim terms. In a jury trial, the judges interpretations will be provided to the jury along
with an instruction to use these interpretations in resolving issues of infringement and validity.
The length of patent infringement trials in district court can vary depending on, among other things, the
number of patents involved, the number of defendants, the number of accused devices, products or
methods, and the nature of the issues to be tried. Trials commonly last anywhere from a few days to a
few weeks. One to two weeks is a typical time frame.

3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Two different burdens of proof apply in patent infringement litigation, depending upon the issue. A
patent owner must prove infringement by a preponderance of the evidence. An alleged infringer
must prove any asserted defences of invalidity or unenforceability by clear and convincing
evidence. The prior user defence (see question 21) under the America Invents Act (AIA) must also
be proven by clear and convincing evidence.
Proof by a preponderance of the evidence requires a finding that what the party seeks to prove is
more probably true than not. The clear and convincing standard imposes a higher burden, and requires
a finding that it is highly probable that what the party seeks to prove is true. The higher burden for
invalidity reflects the fact that all US patents enjoy a statutory presumption of validity.
In one limited circumstance, a patent owner can be relieved of the burden of establishing
infringement. In cases involving a product alleged to have been made by a process patented in the
United States, the burden of proof shifts to the alleged infringer if a court finds there is a substantial
likelihood that the product was made by a patented process and the patent owner has made a
reasonable effort to determine the process actually used, but has been unable to do so. This provision
reflects the difficulties that a domestic patent owner may face in trying to obtain fact discovery from a
foreign manufacturer.
To prevail on the defence of inequitable conduct, the accused infringer must prove that the applicant
misrepresented or omitted material information with the specific intent to deceive the United States
Patent and Trademark Office (USPTO). Proving that a patentee was negligent, grossly negligent or
should have known is not sufficient to establish specific intent. Unless the patentee has engaged in
affirmative acts of egregious misconduct, a defendant must also prove that but for the alleged
misconduct the USPTO would not have allowed the claim to issue.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

The patent statute provides that a patentee is entitled to bring an action for infringement. The term
patentee is defined to include both the party to whom a patent was issued and any successors to title
in the patent. Where patent rights have been conveyed to another, a court will examine the agreement
to determine whether the conveyance will be deemed an assignment of the patent such that the
assignee is considered a successor to title. Any conveyance of rights in a patent must be in writing to
be effective.
An exclusive licensee may also sometimes have standing to bring an action for infringement. If an
exclusive licensee has received all substantial rights in the asserted patent, it may sue for patent
infringement without the patentee; otherwise, the patent owner is a necessary party to the litigation
and must join the licensee as a plaintiff in the litigation. Someone with a lesser interest in a patent,
such as a non-exclusive licensee or a mere distributor of patented goods, does not have standing to
sue for infringement.

In certain circumstances, an accused infringer can bring an action for declaratory relief without
waiting for the patent owner to bring an infringement action. In order to bring a declaratory judgment
action, the alleged infringer must show: that the patent owner has done something to cause the party
seeking relief reasonably to fear that it will face an infringement suit; and that the alleged infringer
has engaged in activity that could constitute infringement or has made meaningful preparations to
engage in such activity. A US Supreme Court decision also permits a licensee who disputes the
validity of the licensed patent or that its products are covered by the patent to bring such a declaratory
judgment action, even though the licensee is protected by the licence from a charge of infringement.
Assuming the conditions for bringing an action are met, the plaintiff may seek a declaratory judgment
of non-infringement, invalidity or unenforceability or a combination of the above. A patentee facing a
declaratory judgment claim will typically assert a counterclaim for infringement. Conversely, a party
sued for infringement will typically assert a counterclaim for a declaratory judgment of noninfringement or invalidity.
Hatch-Waxman Act
A special statutory provision known as the Hatch-Waxman Act entitles the owner of a patent covering
an approved drug product to sue someone who applies for regulatory approval of a generic version of
that drug product even before the generic drug has been marketed. A party seeking to obtain approval
from the federal Food and Drug Administration (FDA) to market a new drug must file a New Drug
Application (NDA), including a full report of the investigations of the drugs safety and effectiveness.
The NDA applicant must provide notice of any of its patents covering the drug or the method of using
the drug, through an FDA publication entitled Approved Drug Products With Therapeutic
Equivalence Evaluations (commonly called the Orange Book).
A party who wishes to obtain approval from the FDA to market a generic drug, which is a
bioequivalent to an FDA-approved new drug, may file an Abbreviated New Drug Application
(ANDA) including test data sufficient to establish bio equivalence to the FDA-approved new drug.
As part of an ANDA filing, the applicant must certify that either (i) no patent information has been
filed by the NDA holder, or (ii) the listed patents have expired, or (iii) the generic drug will not be
marketed until after the listed patents expire, or (iv) the listed patents are invalid, unenforceable or
will not be infringed by use or sale of the proposed generic drug. If a certification of invalidity,
unenforceability or non-infringement is made (commonly referred to as a Paragraph IV certification),
the ANDA applicant is required to provide the patent owner and NDA holder with notice of the
ANDA filing and the certification, and provide a detailed statement of the reasons for the
certification. The filing of an ANDA and associated certification seeking approval to market the
generic drug prior to the expiry of any of the patents listed in the Orange Book for the approved drug
product entitles the NDA holder to bring an infringement suit against the ANDA filer. If the NDA
holder files suit within 45 days of receiving notice of the Paragraph IV certification, approval of the
ANDA is automatically stayed for the shorter of 30 months from receipt of the notice from the ANDA
filer or until the suit is resolved in favour of the ANDA filer.
The Hatch-Waxman Act also creates a limited exemption from infringement claims for the use of a
patented invention solely for purposes reasonably related to, for example, obtaining approval from
the FDA for a generic drug. The US Supreme Court has held that the exemption extends to the use of

patented compounds in pre-clinical studies, provided there is a reasonable belief that the experiments
would provide information relevant for submission to the FDA. The Federal Circuit, however, has
held that the limited exemption does not apply to a patented device that is not subject to approval
under the Food Drug and Cosmetics Act. The exemption applies to activities occurring after FDA
marketing approval is obtained when such activities are required by FDA to maintain approval, but
does not apply to post-approval activities that are routinely reported to FDA but are not necessary to
maintain approval.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

A person who actively induces someone else to infringe a patent can be liable as an infringer. The US
Supreme Court has held that the inducer must have known that the acts constitute patent infringement
or must have been wilfully blind to that fact. Deliberate indifference to a known risk is not sufficient.
A wilfully blind defendant is one who takes deliberate actions to avoid confirming a high probability
of wrongdoing and who can almost be said to have actually known the critical facts. In a case
currently pending in the US Supreme Court, the court is being asked to decide whether an accused
infringers belief in the invalidity of the patent is a defence to the knowledge of infringement prong
of induced infringement.
A person can be liable for contributory infringement as a result of offering to sell or selling in the
United States, or importing into the United States, a component of a patented device, article of
manufacture, combination or composition, or a material or apparatus for use in practising a patented
process, where the item at issue constitutes a material part of the patented invention. To be a
contributory infringer, the person must have known that the item was especially made or especially
adapted for use in an infringing manner. Moreover, the item must not be a staple article of commerce
suitable for substantial non-infringing use.
In the case of both induced infringement and contributory infringement, which together are sometimes
called indirect infringement, there must be at least one third party that directly infringes the patent.
The Federal Circuit has held that, in certain circumstances, a party can be liable for direct
infringement even if that party practises only some of the elements or steps of a patent claim, while
another party or parties practise the rest of the elements or steps. With respect to a method claim,
infringement can be found where one party exercises control or direction over the entire process such
that every step is attributable to the controlling party; however, the relationship between the parties
performing the steps must be such that acts of one may be attributed to the other, either because of an
agency relationship or a contractual obligation. In such a situation, the controlling and the controlled
parties are both liable as joint infringers. With respect to a system claim, a party can be found to
infringe based on the use of a system if the party puts the system as a whole into service, namely,
controls the system and obtains the benefit of it, even though a portion of the system was designed by,
is operated by and belongs to someone else.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

The AIA governs the joinder of accused infringers in all district court infringement cases instituted on
or after 16 September 2011. The AIA provides that, except for ANDA actions (see discussion of the
Hatch-Waxman Act in question 4), accused infringers may be joined in one action as defendants only
if: the claim against the parties arises out of the same transaction, occurrence or series of transactions
or occurrences relating to the making, using, importing into the United States, offering for sale, or
selling of the same accused product or process; and questions of fact common to all defendants or
counterclaim defendants will arise in the action. A defendant may, however, waive these restrictions
on joinder. The AIA specifically provides that parties may not be joined based solely on allegations
that they each have infringed the same patent or patents-in-suit. This AIA provision has resulted in
defendants being sued separately on the same patent, where previously they were sued together. The
trials of those defendants will be conducted separately. However, as a practical matter, most courts
will either formally or informally consolidate separate cases on the same patent for pretrial phases of
the cases, such as for discovery and claim construction (Markman), in order to reduce duplication of
effort (eg, multiple claim construction hearings).
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Infringement generally requires making, using, offering to sell or selling a patented invention in the
United States, or importing a patented invention into the United States, without authority. In several
circumstances, however, the US patent laws can cover extraterritorial activity.
For example, if a party outside the United States induces a party inside the United States to infringe a
US patent, the party outside the US may be liable for induced infringement.
Further, the Federal Circuit has held that a system, apparatus or similar claim can be infringed if
control of a system is exercised and beneficial use of the system is obtained in the United States, even
though components (for example, a server) of the claimed system exist outside of the United States.
However, this decision also held that a method or process claim could only be infringed if every step
of the method or process is carried out in the United States.
It is also an act of infringement to import into the United States or offer to sell or use within the
United States a product made by a process patented in the United States even though the patented
process was practised outside the country. Nevertheless, a product will not be deemed to have been
made by the patented process if it is materially changed by subsequent processes, or if it becomes a
trivial, non-essential component of another product.
Likewise, it is an act of infringement to supply from the United States all or a substantial portion of
the components of a patented invention even though the components are combined to make the
patented invention only outside the United States. This type of infringement is sometimes referred to
as export infringement. The US Supreme Court has held that supplying software, not just hardware,
components from the United States can satisfy the requirements for export infringement. The Federal
Circuit has held, however, that export infringement does not apply to method claims of a patent, only
to system, apparatus or similar claims.
Under export infringement, liability requires either: that the components be supplied in such a way as

to induce their combination outside the United States in a manner that would infringe the patent if the
combination occurred within the United States; or that the components be supplied knowing that they
are especially made or adapted for use in the patented invention, and intending that the components
will be combined outside the United States in a manner that would infringe the patent if the
combination occurred within the United States, unless the components are a staple article of
commerce suitable for substantial non-infringing use.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

A product or process that does not literally include all of the elements of a patented invention may
still be found to infringe under the doctrine of equivalents. This is an equitable doctrine developed by
the courts in an effort to avoid the inherent unfairness of someone obtaining the benefit of a patented
invention but avoiding infringement liability owing to unimportant and insubstantial substitutions for
one or more claim elements. Infringement under the doctrine of equivalents requires that each element
of a claimed invention be found in the accused product or process, either literally or by a substantial
equivalent. Thus, the doctrine of equivalents is applied separately to each individual claim element,
not to the invention as a whole. Each claim element or its substantial equivalent must be found. The
doctrine cannot be used to negate a claim element entirely.
The classic test for determining infringement by equivalents looks to whether the asserted equivalent
performs substantially the same function in substantially the same way to achieve the same result as
the corresponding claim element. In recent years, a more straightforward test has been developed that
looks to whether a person of ordinary skill in the art would view the differences between the element
of the invention as claimed and the corresponding element of the accused product or process as
insubstantial, in which case the accused product or process is deemed equivalent.
There is an inherent tension between use of the doctrine of equivalents to broaden patent protection
beyond the literal scope of the claims and the basic function of patent claims, which is to provide
notice to competitors of what is and is not covered by a patent. Accordingly, the courts have
developed a number of limitations on application of the doctrine of equivalents. For instance, the
doctrine of prosecution history estoppel bars a patentee from using the doctrine of equivalents to
recapture subject matter that was surrendered in order to secure the grant of a patent. Where a claim
element was added or narrowed during prosecution for a reason substantially related to patentability,
it is presumed that the doctrine of equivalents is not available for that claim element. The presumption
can only be overcome by showing that, at the time of the amendment, a person of ordinary skill in the
art could not reasonably be expected to have drafted a claim that would have literally encompassed
the alleged equivalent. In addition, the doctrine of equivalents cannot be used to expand the claims to
encompass what was already in the public domain (the prior art).
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

Under the Federal Rules of Civil Procedure, the scope of permissible pre-trial discovery is extremely
broad, with a primary goal being the elimination of trial by surprise. In general, a party is entitled to
discover any non-privileged information that is relevant to any claim or defence of any party in a suit.
The information sought need not be admissible at trial, so long as the discovery appears to be
reasonably calculated to lead to the discovery of admissible evidence. However, the Federal Rules
impose limitations on the number and timing of the various forms of discovery that are available.
An important limitation on the broad scope of discovery is the attorneyclient privilege. The
privilege allows a client not to disclose confidential communications between an attorney and the
client. Various exceptions to the privilege exist. Similarly, an attorneys work product, such as the
attorneys thoughts and mental impressions, is generally immune from discovery. Again, there are
various exceptions to the general rule which are not discussed here. An attorney must assert and
cannot waive the attorney-client privilege, except upon authorisation from the client.
The Federal Rules and the local rules of federal district courts provide a variety of mechanisms for
obtaining evidence from adverse parties in a lawsuit. For example, the Federal Rules require a party
to identify each individual likely to have discoverable information that the disclosing party may use to
support its claims or defences without waiting for the opposing party to ask for that information.
Moreover, in many federal district courts, the party asserting infringement is required to identify each
infringed claim, and state, on an element-by-element basis, why that claim is infringed, before the
accused infringer has to ask for that information. If the accused infringer raises a defence of invalidity
or unenforceability, the accused infringer has to disclose the prior art and other arguments relied on,
and provide the bases for invalidity of each claim, again on an element-by-element basis. The
accused infringer also has to disclose documentation relating to the operation, structure or practice of
the accused system or method. Other discovery mechanisms include written interrogatories, requests
for production of documents, depositions by oral testimony, requests for admissions and requests for
inspections of premises. Special rules govern expert discovery, including a requirement that, well in
advance of trial, each testifying expert serve a report containing a complete statement of all opinions
to be expressed at trial and the bases for those opinions. A party is permitted to depose the
opponents testifying expert.
The Federal Rules permit certain discovery from entities who are not parties to the litigation (third
parties). Such discovery is more limited than discovery of parties. The most common form of thirdparty discovery is to serve a subpoena on the third party for documents and depositions. Typically,
but not always, the range of documents that a third party must produce is more limited than those a
party would have to produce.
Parties may also take discovery from people or entities outside the United States pursuant to the
Convention on the Taking of Evidence Abroad in Civil or Commercial Matters (the Hague
Convention), an international treaty to which the United States is a signatory. Taking discovery under
the Hague Convention is cumbersome and time-consuming compared to the liberal discovery
approach embodied in the Federal Rules of Civil Procedure. In general, where a party seeks
discovery from a resident of another signatory country, the party must ask the court in which the case
is pending to issue a letter of request (also called a letter rogatory) to the appropriate authority in the
other country setting forth the discovery sought. In complying with a letter of request, the receiving
authority will apply its own laws with respect to the discovery methods and procedures to be
followed. Not all signatories to the Hague Convention permit discovery to be taken in their countries.
Therefore, it is necessary to review in each case the rules applicable to the particular country.

10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The average duration of a patent infringement suit from filing of a complaint to entry of judgment
varies widely depending upon the district in which the case is filed. Some federal district courts, such
as the Eastern District of Virginia and the Western District of Wisconsin, have well-earned
reputations as rocket dockets for the speed with which they dispose of patent cases. In those courts,
an infringement suit can sometimes be resolved within a year after filing of the initial complaint.
However, in some districts, it is not uncommon for a patent case to take two or three years to proceed
to trial. In yet other districts, the normal time to trial may be about 18 to 24 months.
Appeals from judgments in patent cases are heard exclusively by the Federal Circuit. The typical
pendency of an appeal is often less than one year from docketing to decision, though in some cases it
is longer.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs associated with patent infringement litigation vary widely depending upon many different
factors, including the complexity of the technology, the amount of damages at stake, and the part of the
country in which the case is brought. According to the Report of the Economic Survey 2013 published
by the American Intellectual Property Law Association, for an infringement case where less than
US$1 million is at stake, the median (not the average) estimated cost through to the end of discovery
is US$350,000 and the total median estimated cost through trial and appeal is US$700,000. For cases
where between US$1 million and US$25 million is at stake, the median estimated cost through to the
end of discovery is US$1.4 million and the total median estimated cost through trial and appeal is
US$2.6 million. Finally, where more than US$25 million is at stake, the median estimated cost
through the end of discovery is US$3 million and the total median estimated cost through trial and
appeal is US$5.5 million. Since these amounts are medians (midpoints), half of the cases will be
more expensive. In particular, cases involving multiple patents, cases brought in certain geographic
locations, or cases involving very complex technology will tend to be more expensive, sometimes
considerably more expensive. Parties discovery tactics, trial strategies (including, for example, the
number of expert witnesses presented) and the judges requirements can also have a considerable
effect on the total cost.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

As noted in question 1, the Federal Circuit in Washington, DC hears all appeals of final judgments in
patent cases. This is true whether the appeal is from a US federal district court or from the ITC.
The aggrieved party may appeal to the Federal Circuit from an adverse judgment. To be appropriate

for appeal, a judgment must be final in the lower trial court, at least as to liability issues.
Interlocutory appeals are permitted as of right before final judgment when a preliminary injunction
has been granted or denied. On rare occasions, the lower court may certify a controlling issue of law
for interlocutory appeal where an appellate ruling would materially advance the litigation if ruled on
prior to final judgment, but in that case the Federal Circuit has discretion to decline to hear the
appeal. The US Supreme Court hears appeals from decisions of the Federal Circuit on a permissive
basis, and only occasionally accepts patent cases for review.
The Federal Circuit applies different standards of review for lower court decisions, depending on the
issue. In general, the Federal Circuit will only reverse a lower court judges finding on a question of
fact if the finding was clearly erroneous. A reversal of a jurys verdict will occur only if the Federal
Circuit finds that there was insufficient evidence for any reasonable jury to have reached the verdict.
The Federal Circuit will reverse a lower court regarding remedies imposed during fact discovery or
at the end of the trial only if the lower court is found to have abused its discretion. For questions of
law, such as for most issues relating to claim interpretation, the Federal Circuit reviews those issues
de novo. If the Federal Circuit reverses all or part of the lower courts judgment, the case is often
remanded to the lower court either for a new trial or for a new ruling commensurate with the Federal
Circuits decision.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

An issued US patent gives its owner the right to exclude others from exploiting the patented invention
without authorisation and to seek damages for patent infringement. However, depending on facts and
circumstances, an accused infringer sued for infringement might be able to pursue counterclaims
ranging from tortious interference with business relations to antitrust violation.
There are two different theories under which the filing of a patent infringement suit can support an
antitrust counterclaim. First, a patentee may have brought an infringement suit knowing that the
asserted patent was obtained through material fraud on the USPTO. Second, a patentee may have
brought an infringement suit that is objectively baseless, either because the patentee knows the
asserted patent is invalid or unenforceable or the patentee has no real infringement case against the
defendant. In either case, the counterclaimant still must establish the other requirements for antitrust
liability, such as market power and intent to monopolise. Patent-related antitrust liability can also
arise as a result of attempts to improperly extend the scope of the patent grant through licensing, such
as where a patent licence requires the licensee to purchase unpatented goods. Such licensing issues
are discussed further in question 29.
A patentees patent enforcement efforts may also lead to counter-claims for any of a variety of state
and federal business-related causes of action, such as unfair competition or tortious interference with
business relations. Claims of this type might arise when a patentee sends a cease-and-desist letter or
other notice of patent rights to customers of a manufacturer of allegedly infringing goods. However,
since the federal patent laws bar imposition of liability for publicising a patent in the marketplace in
good faith, in order to prove liability, the plaintiff must show that any communication of patent rights
was done in bad faith. Facts tending to support the requisite showing of bad faith include threatening

infringement suits without any intention of ever filing a suit, sending indiscriminate infringement
notices to all members of a trade and publicising a patent without a good-faith belief in its validity or
enforceability.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Because of the high costs and substantial delays inherent in federal district court patent litigation, and
because the courts themselves seek to clear their dockets of cases that can be settled, parties typically
are required to, or may independently agree to, participate in alternative dispute resolution (ADR)
techniques to resolve patent disputes. Where the parties have previously entered into an agreement
concerning a patent, such as a license agreement, it is common for the agreement to provide for
mediation or arbitration of the dispute. A court will typically enforce such an agreement.
Additionally, in many districts, either the local rules or the assigned judge may require the parties to
engage in some form of ADR prior to trial. Mediation is the most common ADR technique that courts
require, unless there is an agreement requiring arbitration.
In arbitration a neutral arbitrator or panel of arbitrators will render a decision concerning the dispute,
most often in lieu of proceeding through trial in federal district court. The parties usually agree to
share the cost of the arbitrators. Arbitration can be either binding (ie, the parties agree to abide by the
results of the arbitration) or non-binding (leaving the parties free to go to court). Because of its
finality, binding arbitration is typically more formal than non-binding arbitration, often involving a
structured presentation of each partys case by counsel through live witnesses, depositions, affidavits
and documentary evidence, though the rules of evidence may be relaxed in some cases. A variant of
non-binding arbitration is the mini-trial, in which the case is presented not only to a neutral, but also
to the chief executive officers or other top management representatives of the respective parties, who,
thereafter, attempt to negotiate a settlement with the neutral facilitator serving as a mediator. Several
organisations in the United States provide mediators and arbitrators for patent disputes.
Mediation is less formal than arbitration and involves a neutral mediator whose job is to guide the
parties to settlement. Typically, the parties submit written summaries of the dispute to the mediator in
advance of the mediation session. At the mediation, the mediator may or may not ask both parties to
make a short presentation through counsel. The mediator often will then engage in a sort of shuttle
diplomacy, alternately meeting with each party in an effort to bring them together in a negotiated
settlement. In contrast to arbitration, the mediator does not render a decision. The mediators goal is
simply to help the parties settle their dispute.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

The US patent laws establish the categories of subject matter eligible for patent protection. A utility
patent may protect any new and useful process, machine, manufacture or composition of matter, and
any new and useful improvement thereon. Design patents may protect new, original and ornamental
designs for articles of manufacture. Plant patents may protect asexually reproduced, distinct and new
varieties of plant, including cultivated sproutings, mutants, hybrids and newly found seedlings, other
than a tuber-propagated plant or a plant found in an uncultivated state.
Software, business methods and medical procedures are all eligible for patent protection, providing
they meet the other requirements of the patent laws (eg, utility, novelty and non-obviousness). There
are certain limitations as regards enforcement of patents related to medical procedures and business
methods. For example, remedies against patent infringement do not apply to medical practitioners and
related health entities for performance of a medical activity. Additionally, certain defendants can
raise the defence of prior commercial use as discussed further in question 21.
In recent years, the US Supreme Court has revisited the issue of patent eligibility for business
methods and computer-implemented inventions. In decisions rendered in 2010 and 2014, the court
held that patent claims directed to a business method for hedging transactions and to a computerimplemented method for settlement of financial transactions were abstract ideas, and not patenteligible. The presence or use of a generic computer to carry out such ideas was insufficient to
qualify the claims for eligibility.
In a 2012 decision in the biotechnology area, the US Supreme Court held that a method involving
determining the amount of drug present in a subjects blood and recalibrating the drug dosage based
on that observation was not eligible for patent protection because it was essentially just a law of
nature combined with well-known routine steps. The US Supreme Court also recently held that
isolated genomic DNA, which is DNA taken from a part of the entirety of an organisms hereditary
information or chromosomes, is an unpatentable product of nature, while complementary DNA, which
is DNA that is synthetically created from messenger RNA (or mRNA), is patentable subject matter.
Laws of nature, printed matter, abstract mathematical algorithms and mental processes are not
eligible for patent protection. Products of nature, human organisms and natural phenomena are also
not eligible for patent protection.
The USPTO and the courts are currently in the process of addressing and implementing the US
Supreme Courts recent decisions. The USPTO has placed under review thousands of pending
applications relating to software-implemented inventions, including many applications that had been
allowed but not yet issued. The USPTO also has been issuing many rejections on the basis of lack of
patent eligibility. The USPTO recently issued Guidelines to implement the new patent eligibility
standards. In the courts, accused infringers are now commonly raising the defence of patentineligibility, and have met with some success. However, there are also some recent decisions that
have upheld patents challenged on eligibility grounds. The actions of the USPTO and of the courts
over the next several years may help to define with more clarity the bounds of what will be
considered patent-eligible or ineligible.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

The presumptive owner of an invention is either the sole inventor or a group of joint inventors. When
patent rights arise out of an employment relationship, the general rule is that the sole or joint inventors
rather than the employer own the patent rights, unless there are express contractual arrangements to
the contrary. However, an employer may own the patent rights if the employees were hired to invent.
Most large companies require their employees to sign an explicit agreement transferring patent
ownership to the company.
Even if the employer does not own the patent rights, the employer may still have a non-exclusive and
non-transferable royalty-free licence (shop right) to use the invention if the employee has used the
time or facilities of his or her employer to conceive an invention or to reduce it to practise.
A patent owner may assign or convey his or her patent rights; such an assignment must be in writing.
The assignment should be recorded in the USPTO. An assignment is void against any subsequent
purchaser or mortgagee for a valuable consideration who does not know of the prior transfer, unless
the assignment is recorded within three months from its date or prior to the date of such subsequent
purchase or mortgage.
When there are multiple patent owners, in the absence of any agreement to the contrary, each of the
joint owners may make, use, offer to sell or sell the patented invention within the United States,
import the patented invention into the United States, or transfer his or her rights in or to the patent,
without the consent of, and without accounting to, the other owners.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

An accused infringer may raise invalidity as a defence in an infringement case in district court or the
ITC. The accused infringer may also ask the court in an infringement case to rule that asserted patent
claims are invalid. Even if the patent owner has not filed an infringement case, in certain
circumstances, a party concerned about potential infringement may initiate a declaratory judgment
action asking a court to rule that patent claims are invalid. There must first be both (1) an explicit
threat or other action by the patentee that creates a reasonable apprehension of an infringement suit;
and (2) present activity (by the party seeking the declaration) that could constitute infringement, or
concrete steps (by the party) taken with the intent to conduct such activity. A US Supreme Court
decision also permits a licensee who disputes the validity of the licensed patent or that its products
are covered by the patent to bring such a declaratory judgment action, even though the licensee is
protected by the licence from a charge of infringement. In such a case, the court will look to all
circumstances to determine whether an actual or imminent injury is being caused by the patentee that
can be redressed by the court and that it is of sufficient immediacy and reality to warrant the issuance
of a declaratory judgment.
A patent claim can be invalidated by a court on almost any ground that would have barred issuance of
the claim in the first instance. A patent is presumed valid and invalidity must be proved by clear and
convincing evidence. Because the AIA alters or removes bases for invalidity, it is appropriate to

consider both defences for pre-AIA patents and defences for AIA patents. Pre-AIA, the grounds for
invalidity included:
lack of utility (for a claim in a utility patent);
subject matter not eligible for patent protection, such as laws of nature, physical phenomena and
abstract ideas;
the claimed invention was known or used by others in the United States before the invention thereof
by the patent applicant;
the claimed invention was patented or described in a printed publication in the United States or a
foreign country, before the invention thereof by the patent applicant;
the claimed invention was patented or described in a printed publication in the United States or a
foreign country more than one year prior to the date of the application for a patent in the United States;
the claimed invention was in public use or on sale in the United States more than one year prior to
the date of the application for the patent in the United States;
the inventor abandoned the claimed invention;
the claimed invention was first patented or was the subject of an inventors certificate by the
inventor (or the inventors legal representative or assigns) in a foreign country prior to the date of the
application for patent in the United States on an application or inventors certificate filed more than
12 months before the filing of the patent application in the United States;
the claimed invention was described in a US patent granted on an application filed by another
before the invention thereof by the applicant for patent, or in a US published patent application filed
by another before the invention thereof by the applicant for patent, or in a PCT application filed in the
United States by another before the invention thereof by the applicant for patent where the PCT
application designated the United States and was published in the English language;
the inventor did not him or herself invent the subject matter of the claim (someone else was the true
inventor);
prior to the inventors date of invention, the invention was made in the United States by someone
else who had not abandoned, suppressed or concealed it;
obviousness in view of the prior art;
the patent specification does not adequately describe the invention so as to convey that, at the time
the patent application was filed, the inventor had intellectual possession of the claimed invention;
the patent specification does not adequately describe the claimed invention so as to enable a person
of ordinary skill in the art to make and use the claimed invention; and
the patent specification does not set forth the best mode contemplated by the inventor of carrying out
the claimed invention.
With the AIA, the first inventor to file provisions that took effect on 16 March 2013 change a
number of these defences. Notably, for applications filed after that date, unless the application claims
priority to an application filed prior to that date, the date for determining prior art is the effective
filing date of the application (the earliest date to which the claims are entitled to priority, including
foreign priority). Under the new provisions, a patent claim can still be invalidated by a court on any
ground that would have barred issuance of the claim in the first instance, but from 16 March 2013
those grounds will be as follows for applications filed after that date, unless the application claims
priority to an application filed prior to that date:
lack of utility (for a claim in a utility patent);
subject matter not eligible for patent protection, such as laws of nature, physical phenomena and
abstract ideas;

 the claimed invention was patented or described in a printed publication before the effective filing
date of the claimed invention;
the claimed invention was in public use, on sale, or otherwise available to the public anywhere in
the world before the effective filing date of the claimed invention;
the claimed invention was described in a United States patent or published as a United States patent
application that names another inventor and was effectively filed before the effective filing date of the
claimed invention;
the claimed invention was obvious before the effective filing date of the claimed invention in view
of the prior art;
the patent specification does not adequately describe the invention so as to convey that, at the time
the patent application was filed, the inventor had intellectual possession of the claimed invention; and
the patent specification does not adequately describe the claimed invention so as to enable a person
of ordinary skill in the art to make and use the claimed invention.
In the past, third parties were able to also challenge the validity of a patent by instituting either ex
parte or inter partes re-examination proceedings in the USPTO. Ex parte re-examination continues to
be a method for challenging patent validity under the AIA. However, the AIA has replaced inter
partes re-examination with inter partes review. The AIA also has added post grant review before the
USPTO as an additional method for challenging patent validity, effective from 16 September 2012 for
applications with effective filing dates on or after 16 March 2013. These proceedings are discussed
further in question 39.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

In the United States, there is no absolute novelty requirement for patentability. Although the United
States moved closer to this type of system under the AIA, the AIA still provides that certain
disclosures do not constitute prior art. Specifically, a disclosure made one year or less before the
effective filing date of the claimed invention is not prior art if:
the disclosure was made by the inventor or by another who obtained the information directly or
indirectly from the inventor; or
the subject matter disclosed was previously publicly disclosed by the inventor or another who
obtained the information directly or indirectly from the inventor.
Additionally, disclosures in patents and patent applications filed any time before the effective filing
date of the claimed invention do not constitute prior art if:
the information was obtained directly or indirectly from the inventor;
prior to the effective filing date the information had been publicly disclosed by the inventor or
another who obtained the information directly or indirectly from the inventor; or
not later than the effective filing date of the claimed invention, the disclosed subject matter and
claimed invention were owned by the same person or subject to an obligation of assignment to the
same person.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

For patent claims governed by the pre-AIA version of the patent statute, a patent claim is obvious,
and thus invalid, if the claimed subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which the subject matter pertains.
For patent claims having an effective filing date on or after 16 March 2013, the temporal focus for
obviousness under the AIA has changed from the time the invention was made to before the
effective filing date of the claimed invention.
In evaluating the question of obviousness, the scope and content of the prior art, differences between
the prior art and the claim at issue and the level of ordinary skill in the pertinent art should be
considered. Secondary considerations such as commercial success, long-felt but unsolved needs and
failure of others may be considered indicia of non-obviousness. The obviousness question is not
addressed in a narrow, rigid matter. The analysis need not seek out precise teachings, suggestions or
motivations in the prior art that are directed to the specific subject matter of a challenged patent
claim. Rather, a court can take into account inferences and creative steps that a person of ordinary
skill in the art would employ, such as when there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions that a person of ordinary
skill has a good reason to pursue.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

In certain circumstances, an otherwise valid patent can be deemed unenforceable or its enforcement
against particular defendants can be wholly or partially barred. These circumstances include fraud in
the procurement of the patent (inequitable conduct), patent misuse, and unreasonable or inexcusable
delay in the filing of a lawsuit against the infringer (laches and equitable estoppel). In such cases, the
patent is not declared invalid but the patent owner is precluded from any or certain remedies against
the alleged infringer.
The US patent laws impose a duty of candour and good faith on all persons involved in the
prosecution of a patent application, including applicants and their attorneys and assigns. A breach of
this duty, for example, by misrepresentation or omission of material information to the USPTO,
coupled with an intent to deceive, could result in a finding of inequitable conduct. Particular areas of
concern include misnaming of inventors, withholding information regarding prior art and submission
of false or misleading affidavits. Under the law, such acts generally only result in a finding of
unenforceability if the claims at issue would not have issued but for the alleged misconduct.
However, acts of affirmative egregious misconduct, such as the filing of an unmistakably false
affidavit, may result in a finding of unenforceability even without a showing of but for causation. A
finding of inequitable conduct will render the patent unenforceable against anyone.
Defendants ability to pursue the inequitable conduct defence is further limited under the AIA. Now,
patent owners can request supplemental examination so that the USPTO can consider information that
raises a substantial new question of patentability (see question 39). A defendant will generally not
be able to raise the defence of inequitable conduct with regard to information that was considered,
reconsidered or corrected during a supplemental examination of the patent unless the defence is pled

with particularity in a court action or ANDA notice prior to the patent owners request for a
supplemental examination.
A court may also withhold any remedy for infringement if a patent owner attempts to exploit a patent
in an improper manner by, for example, violating the antitrust laws or expanding the patent beyond its
legal physical or temporal scope. Typical examples involve requirements for the purchase of
unpatented goods for use with a patented apparatus or process where the patentee has market power,
covenants not to deal in products that compete, coercive package licensing of patents, or failure to
disclose the patent to a standard setting organisation when there was an obligation to do so. However,
such a misuse can be purged if the patentee removes the offensive restrictions, after which the patents
can again be enforced. Failing to offer a license to a standard- essential patent on fair, reasonable and
non-discriminatory (FRAND) terms may also constitute patent misuse, but the law is still developing
in this area.
A court may also withhold remedies for infringement under the doctrines of laches and equitable
estoppel. Under current law, laches may bar liability for damages resulting from pre-suit infringing
activities where the patent owner unreasonably and inexcusably delayed bringing suit and the accused
infringer suffers material prejudice (either financial or evidentiary prejudice) attributable to the
delay. The Federal Circuit recently agreed to hear a case en banc that may affect whether the laches
defence, where successful, will continue to bar liability for pre-suit damages. Equitable estoppel will
bar the entire lawsuit where the patent owner, through misleading conduct (statements, action,
inaction or silence where there was an obligation to speak), leads the accused infringer reasonably to
infer that the patent owner does not intend to enforce its patent against the accused infringer, the
accused infringer relies on that conduct and, owing to its reliance, will be materially prejudiced if the
patent owner is allowed to proceed with its claim.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Prior to the AIA, the commercial use defence had been limited to business method patents. Under the
AIA, for all patents issued after 16 September 2011, an accused infringer may assert the defence of
prior commercial use with respect to subject matter consisting of a process, machine, manufacture, or
composition of matter used in manufacturing or other commercial process. The AIA further provides
that the following activities are also commercial uses:
subject matter for which commercial marketing or use is subject to a premarketing regulatory
review period during which the safety or efficacy of the subject matter is established; and
use by a non-profit entity, such as a university or hospital, for which the public is the intended
beneficiary.
The accused infringer must have commercially used the claimed subject matter in the United States at
least one year before the effective filing date of the claimed invention or disclosure to the public, or
whichever was earlier, without abandoning that use. The defence is a personal defence that cannot be
conveyed to others, unless it is acquired through a bona fide transfer of the entire enterprise or line of
business to which the defence relates. Still further, the defence, if transferred, will only apply to those

sites where the commercial use was in use before the effective filing date of the claimed invention or
the date of the assignment or transfer of such enterprise or line of business, or whichever was later.
The commercial use defence may not be asserted if, at the time the invention was made, it was owned
or subject to assignment to an institution of higher education or a technology transfer organisation
whose primary purpose is to facilitate the commercialisation of technologies developed by an
institution of higher education. The defence must be established by clear and convincing evidence.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Damages awards, intended to fairly compensate a patentee for losses incurred as a result of
infringement, may take the form of either lost profits, or a reasonable royalty, or a combination of
both. In no event may damages be less than a reasonable royalty. A damages award may be increased
if the infringement is found to be wilful (see question 26).
A patentee will be awarded its lost profits on all lost sales resulting from the infringement if the
patentee can show that, but for the infringement, the patentee would have made the sales of the
infringer. To obtain an award of lost profits, the patentee must show marketplace demand for the
product, a lack of non-infringing substitutes, and sufficient capacity to make these sales. In the
absence of such a showing, a patentee is entitled to no less than a reasonable royalty. Such a royalty
is usually reflected as a percentage of revenue for the infringing sales. Testimony of financial experts,
such as economists or accountants, factors heavily in the determination of the royalty amount at trial.
The determination takes into account factors set forth in the Georgia-Pacific case, the most significant
being what a reasonable licensor and a reasonable licensee would have agreed upon in a hypothetical
negotiation taking place at the time the infringing activity began. Under recent court decisions, when
the patent covers a component of some larger product, the royalty base (the sales volume to which the
reasonable royalty rate is applied) is determined by starting with the sales volume of the smallest
patent-practising saleable unit, and then subtracting out the value of the unpatented elements. The
royalty rate is then applied to this royalty base. The royalty rate may not be applied to the sales
volume of a product larger than the smallest patent-practising saleable unit unless the patented
component is the basis for the customer demand for the larger product.
Damages start to accrue from the time the infringement begins but can only be recovered for the six
years preceding the filing of the lawsuit, and for the period following the filing. Damages for the
period prior to suit can only be obtained where the patentee has marked the patented product with the
patent number; the patentee has provided actual notice of infringement to the infringer prior to suit; or
the marking statute is not applicable, for example, where only a method claim is involved, or where
the owner has not produced or licensed a product covered by the patent. Where a patent owner relies
on actual notice as the basis for recovering pre-suit damages, such damages can be recovered only for
acts of infringement occurring after the notice.
Until relatively recently, a patentee could not obtain damages for infringement for the period prior to

patent issuance. Following the introduction of patent application publication in the United States,
reasonable royalty patent damages now may start accruing when the alleged infringer has actual
notice of the published application. In such a case, the invention as claimed in the published patent
application must be substantially identical to the invention claimed in the issued patent. A claim for
damages based on a published application may not be asserted unless and until the application issues
as a patent.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

After an infringement case is filed, it is possible to obtain a preliminary injunction against future
infringement pending final judgment. Courts do not often grant such preliminary injunctions, but they
are available if a patentee can show a likelihood of prevailing on patent validity and infringement and
that it will suffer irreparable harm if an injunction is not granted. In deciding whether to grant a
preliminary injunction, the court must also take into consideration the balance of hardships between
the parties and the effect on the public interest. As noted in question 12, the grant or denial of a
preliminary injunction is immediately appealable to the Federal Circuit. In extraordinary
circumstances, which will occur only very rarely, a patentee may obtain a short, temporary
restraining order in an ex parte proceeding (namely, without the alleged infringers participation in
court).
At the close of trial, and assuming that the patent is found to be valid, infringed and enforceable, the
court has the discretion to grant a permanent injunction against the infringer. In exercising this
discretion, the US Supreme Court has held that the court must take into account the following four
factors:
whether the patentee has suffered an irreparable injury;
whether other remedies (such as damages) are adequate to compensate for the injury;
the balance of hardship between the patentee and the infringer; and
the effect (if any) of a permanent injunction on the public interest.
If an injunction is granted, it will be effective against suppliers and customers if the products supplied
or purchased have been determined to infringe the patent. In such a case, and after appropriate notice
of the courts injunction, the supplier or customer could be in contempt of the court order and subject
to sanctions by the court if it violates the injunction. In some circumstances, a district court or the
Federal Circuit may delay (stay) implementation of a preliminary or a permanent injunction pending
appeal. In deciding whether to stay an injunction, a court generally will consider the same kinds of
factors that weigh in the granting of injunctive relief:
the likelihood of success on the merits of the appeal;
the irreparable harm the requesting party will suffer absent a stay;
the harm to other parties interested in the proceeding; and
whether a stay serves the public interest.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

The ITC is a quasi-judicial government agency that investigates unfair acts of importation and has the
authority to issue exclusion orders completely barring products from importation into the United
States. Patent holders can file complaints charging infringement of a valid patent with the ITC, which
will generally then undertake an investigation.
An ITC investigation is an active litigation-like proceeding before an administrative law judge (ALJ).
The ALJ is responsible for making determinations of both fact and law. In addition to the patentholder or complainant and the accused infringers or respondents, the US Office of Unfair Import
Investigations usually also acts as a party to the proceeding. The respondents can assert the same
defences to patent infringement claims as in district court litigation.
An ITC patent investigation requires the complainant to show both that the patent is infringed and that
a domestic industry relating to the patent exists or is being established in the United States.
At the conclusion of the proceedings, the ALJ issues an initial determination on whether there has
been a violation and a recommended determination on what the remedy, if any, should be. These
determinations are forwarded to the ITC commissioners, who issue a final determination on whether
there is a violation and impose a remedy, if required. The ITCs decision on remedy is subject to
modification or disapproval by the President of the United States, who must decide whether to disturb
the ITCs determination within 60 days. Disapproval or modification by the President is rare.
Although an exclusion order was disapproved by the President in 2013, the most recent Presidential
modification or disapproval before that was in 1986.
If a violation is found, the ITC can issue exclusion orders that instruct US Customs and Border
Protection officers to interdict shipments of infringing merchandise at ports of entry into the United
States. The ITC cannot award damages for infringement.
Federal district courts (which are the courts that hear most patent infringement cases in the United
States) also have the authority to ban importation into the United States of products covered by a US
patent or products made outside the United States by a process covered by a US patent. However,
unlike the ITC, such courts cannot instruct US Customs and Border Protection to interdict shipments
of infringing merchandise at ports of entry, but are instead limited to ordering the accused infringers
before the Court to not import infringing products.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

In the United States, the prevailing party in patent infringement litigation can ordinarily recover
certain limited costs (deposition transcript fees, filing fees, photocopies, etc) from the losing party.
However, in the ordinary case, each party is responsible for its own attorneys fees. In exceptional
cases, the prevailing party may be able to recover attorneys fees from the losing party. An
exceptional case is one that stands out from the others with respect to the substantive strength of a
partys litigating position (considering both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated. Even if a case is determined to be exceptional,
the awarding of attorneys fees is left to the discretion of the district court. Entitlement to attorneys
fees must be proven by a preponderance of the evidence. An award or the refusal to award attorneys

fees or costs will be reversed only if, on appeal, the Federal Circuit determines that the trial court
abused its discretion.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

If an accused infringer has notice of the patent and acts unreasonably after being given such notice,
then a court may determine that the accused infringer has acted wilfully. In such a case, the court has
the discretion to award up to triple the amount of monetary damages, as well as the patentees
attorneys fees. It is generally accepted that an infringers reasonable reliance on a competent opinion
of counsel that the patent is either invalid or not infringed is a sufficient defence to an accusation of
wilful infringement. If the accused infringer seeks to rely on such an opinion, then all facts
surrounding the opinion would be subject to discovery during the litigation and no longer protected by
the otherwise applicable attorneyclient privilege. Such a waiver does not extend to the accused
infringers trial counsel. Also, an accused infringers failure to rely on such an opinion does not give
rise to an inference that no opinion was obtained or that any opinion was unfavourable to the
defendant.
In a 2007 decision, the Federal Circuit created an objective recklessness standard to determine
whether infringement is wilful. To establish wilful infringement, the patentee must prove by clear and
convincing evidence that the accused infringer acted in view of a high likelihood that its actions
constituted infringement of a valid patent and also that it knew or should have known of the risk.
Although an opinion of counsel would likely negate a finding of wilfulness, such an opinion is not
mandatory.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

In general, a patent may be enforced at any time during its life. In addition, after a patent has expired,
the patent owner may still seek damages for infringing activities that occurred prior to expiration, but
that did not occur earlier than six years prior to the filing of the suit.
Unreasonable and inexcusable delay in filing a patent infringement suit may limit the period for which
damages may be recovered, and in some cases may bar a remedy entirely (either damages or an
equitable remedy). (See also question 20). Under current law, a delay of six years from the time that
the patentee knew or should have known of the infringement creates a presumption that the equitable
defence of laches should be applied. All relevant factors, such as the length of the delay, the
prejudice or harm (either monetary or evidentiary) to the accused infringer arising from that delay,
and whether an accused infringer engaged in deliberate copying, are considered in determining
whether laches is present. Laches has on rare occasions been found in situations where the delay is
less than six years, even though there is no presumption of laches in that case.
Under current law, the effect of laches is to bar recovery of damages arising from conduct occurring

prior to filing the suit. The Federal Circuit recently agreed to hear a case en banc that may affect the
availability of the laches defence, including in particular whether the doctrine can be used to bar presuit damages.
On rare occasions, unreasonable delay in filing a patent infringement suit, where coupled with
affirmative actions by the patentee that cause the defendant to rely to its prejudice on a belief that it
will not be sued, may result in a court determination of equitable estoppel. In such a case, the patentee
would be estopped from obtaining any relief at all against the alleged infringer.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

A patent owner is not required by statute to mark its patented products with the US patent number.
However, there are benefits to doing so. In some cases, marking is a prerequisite to obtaining
damages for infringement occurring before suit is filed. (See question 22.) Proper patent marking
effectively puts all potential infringers on notice of the patentees rights for purposes of obtaining
damages for pre-suit infringing activities. To satisfy the marking provisions, the patent owner must
mark its products (or their packaging, if the products cannot be marked) where the patent is covered
by apparatus, system or similar claims of the patent. The patent owner also must have its licensees
mark their products. If a substantial number of covered products sold either by the patent owner or a
licensee are not marked, then the marking provisions are considered not to be satisfied. If neither the
patent owner nor its licensee sells any products covered by the patent, or if the patent includes only
method or process claims, the marking provisions are not applicable.
Under the AIA, patent owners now have the option to mark their products by fixing thereon the word
patent or the abbreviation pat. and a web address. The web address must be accessible to the
public without charge and the relevant website page located at or through the web address must
identify the patented article and the associated, relevant patent number(s). The AIA also creates a
civil cause of action for persons that have suffered a competitive injury as a result of false marking.
The AIA further provides that only the United States government may sue for statutory penalties for
false marking, thereby eliminating the ability of others to bring such actions.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Tying arrangements are licences that tie the licensing of a patent to the purchase of an unpatented item
or component. Tying arrangements may constitute patent misuse in certain circumstances. Patent
misuse can be used as a defence against a charge of infringement and render the patent unenforceable,
so that the trial court may deny relief unless and until the misuse ceases. Tying arrangements do not

constitute patent misuse in the absence of a showing of market power in the relevant market in view
of the circumstances.
The authorised sale of a device that substantially embodies a patent exhausts the patent owners right
to use that patent to control the purchasers use of the device thereafter. The exhaustion doctrine will
apply not only to patent claims that are infringed by the purchased device itself but also to claims (eg,
method and system claims) of the same patent and related patents if the purchased device substantially
embodies those claims and has no other reasonable use.
There are other restrictions on voluntary licences for patents. For example, the term of a patent
licence cannot extend beyond the expiry dates of the licensed patents (although the US Supreme Court
has recently agreed to re-examine this restriction). Also, for public policy reasons, it is
impermissible for a patentee to prevent a licensee from contesting the validity of one or more
licensed patents, except as part of an agreement settling litigation.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

Under present US law, there are no mechanisms for obtaining a compulsory licence to a patent.
However, by virtue of involvement in an industry standard-setting organisation, a patent owner can be
obliged to grant a licence to all interested parties on fair, reasonable and non-discriminatory terms
when the patent covers an established industry technology standard. Also, if a patent owner prevails
in an infringement suit but the court does not issue an injunction against the infringer, the infringer
effectively has obtained a compulsory licence to the infringed patent or patents. In that case, the court
will determine the royalty or other compensation to be paid by the infringer to the patent owner for
the post-judgment infringement.
Aside from compulsory licences, US law does provide for intervening rights in certain
circumstances. When a patent is subjected to reissue or re-examination proceedings (see question
39), the resulting claims may be of a different scope from those in the original patent. If, at the time
the original patent issued, an accused infringer had a product that did not infringe, but did infringe a
broadened reissue patent claim, for example, then the accused infringer would obtain intervening
rights, eliminating liability for such products for the period prior to the issuance of the re-examined or
reissued patent. In such cases, a court may also allow an accused infringer to continue to sell existing
inventory and may even allow the accused infringer to continue to produce exactly the same product
during the term of the reissue patent.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Legal fees for preparing and filing a utility patent application typically depend on the subject matter

sought to be patented. The typical cost for preparation and filing of an application can range from
approximately US$7,500 to US$10,000 for a relatively simple invention, to US$12,000 to US$17,000
for more complex inventions and to US$25,000 or more for very involved biotechnology or software
inventions (excluding filing fees).
Most patent applications require drawings to illustrate the invention. Since the drawings must
conform to specific requirements, these drawings often are prepared by a professional draftsperson.
Typical drawing preparation fees are in the range of US$75 to US$120 per drawing sheet, though
drawings involving standard shapes could be prepared by office staff using commonly available
software.
The fee that the USPTO charges varies with the number of claims and the type of application that is
filed. Filing, search and examination fees for a non-provisional application begin at US$1,600 for
applications with up to a total 20 claims and up to three independent claims. Patent applicants that are
small entities (namely, having fewer than 500 employees) and that have not licensed the invention to a
large entity receive a 50 percent discount on most fees. A 75 per cent discount on some fees also is
available for microentities (individual inventors with limited pending applications and earning less
than a threshold income).
Additional legal fees are typically incurred during prosecution of the application for attending to such
tasks as responding to actions by the USPTO.
After an application is approved for issuance, an issue fee of US$960 is due.
The USPTO charges periodic maintenance fees after a patent issues. The fees are US$1,600 at threeand-a-half years, US$3,600 at seven and a half years, and US$7,400 at 11-and-a-half years after
issuance.
US patent applications, on average, take about three years to issue. However, the actual pendency
time is highly dependent on the subject matter of the application. For example, patent applications that
relate to business methods typically take significantly longer than three years to issue because of the
USPTOs backlog of applications in this area. The pendency time is also highly dependent on the
extent to which the patent examiner finds reasons to reject the claims of the application. As noted in
question 40, the term of a patent will be extended if the issuance of the patent is delayed due to the
USPTOs failure to act promptly, or because other ancillary proceedings (eg, an appeal to the Patent
Trial and Appeal Board (PTAB) formerly named the Board of Patent Appeals and Interferences)
delays its issuance.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

There are a number of official procedures that can be used to expedite patent prosecution. The
simplest of these is a Petition to Make Special, in which an inventor aged 65 or older or in poor
health can receive accelerated examination at no additional cost. Others include situations where the
invention will materially:
enhance the quality of the environment;
contribute to the development of conservation of energy resources; or
contribute to countering terrorism.
For design patent applications, the USPTO offers expedited examination. In order to qualify for

expedited examination of a design patent application, the applicant must, for example, conduct a preexamination search, submit the results of the pre-examination search to the USPTO, and pay a fee of
US$900 to the USPTO.
Under the Prioritized Examination Program (also referred to as Track One), if a patent application
contains no more than four independent claims and 30 total claims, and the applicant pays a US$4,000
petition fee (reduced by one-half for a small entity (see question 31)) and a US$140 processing fee,
the USPTO will expedite prosecution so that a final disposition (allowance or final rejection) is, on
average, received in 12 months. A 12-month disposition can also be obtained via a different
Accelerated Examination Program, which has a lower petition fee, but has extraordinarily
burdensome filing requirements, including the submission of an Examination Support Document. For
most patent applicants, the Prioritized Examination Program (if available, as there are only 10,000
slots per year) is preferable to the Accelerated Examination Program.
The USPTO also conducts various pilot programmes to expedite prosecution. One of the commonly
used programmes is the Patent Prosecution Highway (PPH), in which the USPTO (with petition,
which does not require a fee) will expedite examination of patent applications, which only contain
patent claims that correspond to or are narrower than claims that have been allowed in one of the
other participating IP offices. Under the Global PPH and IP5 PPH programmes, which were
announced in January 2014, a single form may be used to streamline cooperation with the European
Patent Office, the Nordic Patent Institute, as well as IP offices in Australia, Austria, Canada, China,
Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, Portugal, Russia, Singapore,
Spain, Sweden and the UK. The USPTO also has separate forms for participation in the PPH
programme with IP offices in Columbia, the Czech Republic, Germany, Mexico, Nicaragua, the
Philippines, Poland and Taiwan.
Other pilot programmes include the First Action Interview Program, in which the applicant, upon
request, can interview the USPTO examiner early in prosecution, before the examiner has done a full
initial examination of the application. Such an interview can help the examiners understanding of the
invention, focus any searching that needs to be done and aid the patent applicant in understanding the
examiners position sooner rather than later. The USPTO has extended the First Action Interview on a
number of occasions. Yet another such programme is the After Final Pilot Program, which is intended
to expedite prosecution by affording a patent applicant an opportunity to amend patent application
claims more substantially than usually permitted after a final rejection, thus potentially shortening the
length of time that the application is pending.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

An application must contain a written description of the invention that allows persons of ordinary
skill in the art to recognise that the inventor had possession of the claimed subject matter at the filing
date of the application. The level of detail required to satisfy this written description requirement
varies depending on the nature and scope of the claims and on the complexity and predictability of the
relevant technology. The written description requirement does not require a specific number of
examples or an actual reduction to practise. However, for claims drawn to a broad, general inventive

concept (namely, genus claims), a sufficient written description requires the disclosure of either a
representative number of species falling within the scope of the genus or structural features common
to members of the genus so that one of skill in the art can visualise or recognise the members of the
genus and distinguish the genus from other materials.
An application must also contain sufficient information regarding the subject matter of the claims to
enable one skilled in the pertinent art to make and use the claimed invention without undue
experimentation. Enablement is determined from the filing date of the patent. Patent owners cannot
use post-application experiments to establish enablement.
The application must also disclose the best mode known to the inventor of making or practising the
invention. In order to comply with the best mode requirement, the application must disclose the
specific instrumentalities and techniques that were developed by the inventor and known to him or her
at the time of filing as the best way of carrying out the invention. The requirement does not permit
inventors to disclose only what they know to be their second-best embodiment, while retaining the
best for themselves. The application need only describe what the inventor knew at the time the
application was filed, and does not need to be amended to include subsequent discoveries. Though
examiners may reject a claim of an application for failure to disclose the best mode, the AIA removes
best mode as a basis for holding any patent claim invalid or otherwise unenforceable in a court
action.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

In the United States, a duty of candour and good faith is imposed on all those involved in the
prosecution of a patent application, including applicants and their attorneys and assigns. The duty
requires each individual involved in the prosecution of an application to disclose to the patent
examiner all information known to him or her to be material to patentability of any pending claim,
such as prior art affecting novelty or obviousness, or information refuting or inconsistent with
positions taken by the applicant on patentability during prosecution. This duty continues throughout
the entire pendency of the patent application, right up until the patent issues. The applicant need not
search for prior art before filing a patent application. However, the applicant must disclose any
known material prior art to the USPTO. Once the patent issues, the obligation to submit prior art ends.
Failure to meet the duty of candour and good faith, if accompanied by an intent to deceive the USPTO,
may lead to unenforceability of any patent issuing from the patent application (and any patent whose
priority is based on that application) and could result in an award of attorneys fees against the patent
owner who brings an infringement lawsuit (see questions 20 and 25). The Federal Circuits
Therasense decision has made it more difficult to have a patent declared unenforceable, because the
party asserting unenforceability must prove by clear and convincing evidence that the patent applicant
made a misrepresentation or omission during prosecution with specific intent to deceive the USPTO,
and that the patent would not have issued but for the misrepresentation or omission, absent
egregious misconduct.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

US patent laws allow the filing of a continuation application that claims the same priority date
(effective filing date) as the parent application, provided that the continuation application is filed
before the parent application issues. Except for extenuating circumstances, the patent term for both
applications would extend 20 years from the same, earliest priority date (see question 40). At
present, there is no limit to the number of continuation applications that can be filed so long as each
new application is co-pending with its parent application.
An examiner may reject one or more claims of an application based on a judicially created doctrine
called non-statutory obviousness type double patenting. Under this doctrine, any patent granted on
an application whose claims are obvious in view of the claims of an issued patent or other pending
application would be invalid. However, the patent applicant may overcome such a rejection by
submitting a terminal disclaimer to the USPTO before the patent is issued. In the terminal disclaimer,
the applicant agrees that the term of the issued patent will not extend beyond the term of the patent
over which it is obvious (namely, disclaims any extra patent term), and also agrees that the patent
will only be enforceable if and during the period in which the two patents are commonly owned. For
a continuation application whose claims are rejected over those of a parent application, as a practical
matter, filing a terminal disclaimer will not shorten the patent term, because the term will be 20 years
from the same, earliest effective filing date in both cases. However, the common ownership
requirement is still important.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

An applicant who has received a second or final rejection may appeal the rejection to the PTAB.
After filing a notice of appeal, the applicant (now appellant) and the examiner prepare briefs on the
disputed issues. A panel of three administrative patent judges from the PTAB will then review the
briefs and hear oral argument if the appellant requests it. The PTAB may reverse the examiners
rejection in whole or in part, affirm the rejection in whole or in part, and/or enter new grounds of
rejection. If the PTAB enters new grounds of rejection, the appellant may request rehearing. After
PTAB proceedings are completed, the application returns to the examiner for further prosecution.
If the PTAB affirms the examiner or enters new grounds of rejection, the appellant may appeal to the
US Court of Appeals for the Federal Circuit. Alternatively, the appellant may file a de novo civil
lawsuit against the USPTO commissioner in the federal court for the Eastern District of Virginia,
requesting that the court order the USPTO to grant the patent. In such a lawsuit, the applicant may rely
on new evidence that was not submitted to the USPTO or considered by the PTAB in order to try to
prove patentability. If the applicant loses the district court lawsuit, the applicant can appeal that
decision to the Federal Circuit. On the other hand, if the applicant appeals the adverse PTAB
decision directly to the Federal Circuit, the Federal Circuit will have to base its decision on the same
evidence that the USPTO and the PTAB considered. The applicant may not rely on any new evidence.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

A protest may be filed by any member of the public against a pending patent application. However, a
protest will be considered only if, among other things, the protest is submitted prior to the date the
application was published or the mailing of a notice of allowance in connection with the application,
whichever occurs first. Active participation by the protester, however, ends with the filing of the
protest. It is up to the patent examiner whether, and how, to act on the protest.
A member of the public may also file a petition for the institution of a public use proceeding. A
public use proceeding may be instituted when the petition, supported by affidavits or declarations,
makes a prima facie showing that the invention claimed in an application had been in public use or on
sale in the United States more than one year before the filing of the application. If an invention was in
public use or on sale in the United States more than one year before the filing of the application,
patent protection for that invention is barred.
Like a protest, a petition for institution of public use proceedings must be submitted prior to the date
the application was published or the mailing of a notice of allowance in connection with the
application (whichever occurs first).
The AIA has instituted a new opposition procedure, called a post-grant review (see question 39).
Post-grant review is available only for patents issuing from applications filed on or after 16 March
2013, and must be requested within nine months of patent issuance.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Under the AIA the United States will continue to have a first to invent patent system for applications
filed before 16 March 2013, rather than a first-to-file system as in most other countries. Thus, an
applicant who is second-to-file an application before that date can establish priority by showing an
earlier date of invention.
Priority of invention is generally awarded to the party who can show an earlier reduction to practice
of the invention (the filing of a patent application is considered to be a constructive reduction to
practice). However, the second party to reduce the invention to practice will prevail if that party can
show a conception date earlier than the conception date of the other party and reasonable diligence in
reducing the invention to practice, from a time prior to conception by the other party.
The USPTO has jurisdiction to conduct interference proceedings to determine priority of invention
between a pending application and one or more pending applications or issued patents. Such a
proceeding is conducted before the PTAB. As time goes on, and parties file more and more patent
applications under the first-to-file rules, there will be progressively fewer interference proceedings.
For disputes involving priority between issued patents, the federal courts have jurisdiction, not the
USPTO.
Under the AIA, for applications filed on or after 16 March 2013, the United States will follow a firstto-file patent system. Between competing applications under the new system, the patent will be
awarded to the first applicant to file a patent application at the USPTO. Unlike in other countries,
there are exceptions to this rule. The most important exception is that if the second-to-file applicant
has published an enabling disclosure of the invention prior to the first-to-file applicant and has filed

his or her application within one year of that disclosure, the USPTO will award the patent to the
second-to-file applicant.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

After a patent has been granted, a patentee may file an application to reissue a patent to correct an
error that was made without any deceptive intent where, as a result of the error, the patent is deemed
wholly or partly inoperative or invalid. A common basis for filing a reissue application is that the
issued claims are too narrow or too broad. A patentee seeking to broaden the scope of the claims of
the original patent must apply for reissue within two years from the grant of the original patent.
However, a reissue will not be granted to recapture subject matter that was surrendered to obtain the
original patent.
The patent owner, or any member of the public, may, at any time, also file a request for reexamination of a patent. Prior art considered during re-examination is limited to prior art patents and
printed publications. Prior to the AIA, re-examination proceedings could be ex parte, in which a
third-party re-examination requester would have no involvement in the proceedings once reexamination begins, or inter partes (but only for patents issued on original applications filed after 29
November 1999), in which the requester would participate in the entire proceeding (including, for
example, providing comments in response to office actions, and even appeal). However, the
participating requester could be bound by the result in any later court proceeding.
Under the AIA, ex parte re-examination proceedings still exist, and still have a requirement of a
finding of a substantial new question of patentability in order for the USPTO to institute the reexamination. However, the AIA has replaced inter partes re-examinations with an inter partes review
procedure before the PTAB. There is a higher standard for inter partes review: there must be a
reasonable likelihood of the petitioner prevailing on at least one claim. In practice, inter partes
review is frequently sought by those who have been accused in a suit of infringing a patent. The
accused infringer must file the petition for review within 12 months of being sued. If the PTAB
decides to grant review, a decision it will generally make within six months after a petition is filed,
the review must generally be concluded within 12 months after the decision to review is issued.
In its fiscal year ended 30 September 2014, the PTAB received approximately 1,300 petitions for
inter partes review of issued patents, and a further 177 petitions for a similar review procedure
relating to covered business method patents. For fiscal year 2015, the pace of review petitions
exceeds that of 2014, and is on a pace to total about 1,800 petitions for inter partes review for the
year (and a further 180 for business method patents). One reason for the number of the petitions, and
the year-over-year growth, is the initial experience, and the continuing expectation, that the PTAB is
more likely to be receptive to invalidity arguments than courts and juries are. There are various
advantages and disadvantages of inter partes review from the perspective of an accused infringer.
Among the advantages is that in an inter partes review, unlike in court, a patent does not enjoy a
presumption of validity. Also, decisions of the PTAB are rendered by three administrative judges
having wide experience with patents and also having a technical background. Further, when the
PTAB grants a petition for review, a court handling a parallel infringement case often will stay the

case pending a decision by the PTAB on the validity or invalidity of the patent. Inter partes review is
generally considerably less expensive than litigation. The main disadvantage of inter partes review
from the accused infringers perspective is that if the PTAB upholds the validity of the patent, the
petitioner is likely bound by the result in an infringement proceeding, unlike for an ex parte reexamination.
Under the AIA, a patent owner may be eligible to file for supplemental examination of a patent,
regardless of the patents issue date. Patent owners may use this procedure primarily to submit to the
USPTO information relating to patentability (primarily prior art) that the patent owner could have
submitted during the original prosecution, but did not. By submitting the prior art as part of
supplemental examination, the patent owner can immunise the patent from inequitable conduct
allegations that relate to the submitted information.
The AIA also provides two new inter partes proceedings. Patents covered under the new first-to-file
laws under the AIA could be subject to derivation proceedings, in which a petitioner can contend that
a prior published claim was derived from the inventor or inventors named in petitioners patent
application, and as such was not invented by the inventor or inventors named in the publication
including the prior published claim. Such proceedings will need to be instituted within 12 months of
the publication of the claim or claims at issue. Also, the AIA provides a new opposition procedure,
called post-grant review. Post-grant review is available only for patents issuing from applications
filed on or after 16 March 2013, and must be requested within nine months of the issuance of the
patent. Any reason related to patentability may form a basis for post-grant review, unlike ex parte reexamination and inter partes review, which must rely only on patents and printed publications. In
fiscal 2014, the USPTO received only a handful of derivation and post-grant review petitions, a trend
that is expected to continue at least until more patents issue from applications filed on or after 16
March 2013.
40 Patent duration

How is the duration of patent protection determined?

In the case of patents (except design patents) based on applications filed on or after 8 June 1995, the
patent term is 20 years measured from the date the application for the patent was filed. If the patent
claims the benefit of the filing date of an earlier filed US (non-provisional) application or
applications, the term is 20 years from the earliest filing date of such an application or applications,
which are the basis for the priority claim. The earliest such date is called the earliest effective filing
date.
In the case of patents (except design patents) based on applications filed before 8 June 1995, the
patent term is the greater of 17 years from patent issuance or 20 years from the earliest effective filing
date. In the case of design patents, for applications filed before 18 December 2013, the patent term is
14 years measured from patent issuance; for applications filed on or after 18 December 2013, the
patent term is 15 years measured from patent issuance. In certain circumstances, the patent term may
be extended. The circumstances in which the term may be extended generally relate to the USPTOs
failure to act promptly, proceedings that delay patent issuance (eg, an interference, a secrecy order
and appellate review) and patents that involve products or methods that have been subject to
regulatory delays (such as delays in approving drugs by the FDA).

* The editors would like to acknowledge and thank their partner Frank Bernstein for his
contributions to prior editions of this chapter.

Update and trends

The most significant trends are the expanding use of inter partes review to challenge issued patents,
and a significant increase in the use of the defences of patent ineligibility and indefiniteness in
response to recent US Supreme Court decisions. These concepts are discussed in more detail above.

Michael N Zachary

mzachary@kenyon.com

Clifford A Ulrich

culrich@kenyon.com

John W Bateman

jbateman@kenyon.com

1801 Page Mill Road

Palo Alto
California 94304
United States

Tel: +1 650 384 4700

Fax: +1 650 384 4701
www.kenyon.com

Venezuela
Mara Milagros Nebreda and Carlos Pacheco
Hoet Pelez Castillo & Duque
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

In Venezuela, the enforcement of a patent right will generally be sought before a trial court that may
issue, within the procedure, a wide range of injunctions to safeguard a legal right, provided that
irreparable harm can be demonstrated.
To be able to file a suit, a patent must have been duly granted by the Venezuelan Patent Office (PTO).
Thus suits are filed before trial courts that have jurisdiction in cases dealing with civil, commercial,
traffic, trade and transit matters.
In Venezuela (unlike in Mexico and Peru, for example) the PTO cannot render decisions on
infringement cases but only in matters dealing with the grant, denial or nullity of a patent right.
2 Trial format and timing

What is the format of a patent infringement trial?

Briefly, a suit before a trial court in Venezuela, for which rules are established in the Venezuelan
Civil Procedure Code, will start with the filing of the complaint. Once served, the defendant will
have a fixed legal term to file a reply. If the defendant cannot be served and does not appear in court,
the court will proceed to appoint an attorney on its behalf.
When filing a suit, the plaintiff will be required to submit along with the complaint the basic
documents supporting the claim (namely, the patent title) but will not be required to submit all the
evidence that it has related to the case, which will generally be filed at a later stage of the procedure.
The second stage, which has no time limit, begins with the submission of evidence that may include
documents, experts and witnesses. Once all the evidence is listed by the parties, there is a fixed
period to question witnesses and experts, who may be cross-examined by the other party. All
questions and answers remain on file in writing, since the judge must analyse all the evidence that has
been produced when making a decision.
Once the term for submitting evidence has elapsed, the parties will have a chance to file on a fixed
date a summary report of the whole procedure and then the court will issue a decision. There are
several preliminary decisions a judge can issue during the course of the trial that the parties can

appeal, thus, a trial procedure in a first instance court may last between one and six years.
The decision is rendered by the judge and there are no juries.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Generally, the plaintiff must support an allegation of any wrongdoing by a defendant and; therefore,
must submit, along with the suit, those documents supporting its claim (namely, non-authorised
exploitation of a patent).
Despite the above, where infringement of a patent covering a process for manufacture is claimed, the
burden of proof shifts and the defendant must show that it used a different process to obtain the same
product. If the product is the same, there is a presumption that an infringement has taken place. The
standard of proof required is beyond a reasonable doubt in all cases of patent infringement.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

Owners of patents may bring an action against any person infringing their right and also against any
person performing acts that are extremely likely to result in the infringement of that right.
In addition, the owner of a patent may also empower a third party (namely, a local licensee or
distributor) to file suit on the basis of its rights via a written contract that must be produced when
filing a suit to show that the party filing has the capacity to do so, since it is not being filed by the
owner of the patent.
In order to be successful, the party intending to file a patent infringement suit should:
ensure that the patent right has been granted;
ensure that all dues and annuities have been paid to maintain the validity of the patent right;
ensure that there is a non-authorised exploitation of the patent by a third party not related to the
owner of the patent as, if there is a relationship between the parties, some issues of exhaustion of
rights may come into play;
ensure that the location of the non-authorised exploitation is clearly demonstrable in order to have a
more effective result if injunctions are granted; and
determine, for purposes of being able to calculate damages, the exact date when the non-authorised
exploitation began.
Torpedo cases are not common in our jurisdiction as the validity of a patent right is presumed until
and unless a decision reversing its grant is rendered. It has been common to seek the invalidity of a
patent right before the PTO; thus, if claimed as a defence during a litigation proceeding, the court
should not take it into consideration but rather advise the petitioner that its claim should be filed
before the PTO and not the court.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Although there is no relevant case law, the owners of a patent may bring an action with the competent
national authority against any persons infringing their right and also against any persons performing
acts that are very likely to result in the infringement of that right. Multiple parties can be jointly liable
for infringement.
This means that there is basis for claiming a party is infringing a patent despite the fact that it is not
the one conducting the exploitation directly but is rather providing the means (namely, materials,
equipment) to make such exploitation feasible.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Yes, it is possible for several defendants to coexist in a lawsuit. In legal terms this is called passive
litis consortium or, in other terms, passive joint litigation.
In order for any process to take place, two parties should be involved: the plaintiff and the defendant;
the one that is claiming an action in connection with a particular case, and the other who is actually
subject to this specific action. In this regard, it is possible that several involved parties are
encountered within the same process, which in legal terms is called plurality of parties. This last
process leads to the inclusion of co-litigants, where different individuals meet to pursue a common
relationship or several inter-related relationships. In any particular process they participate jointly,
either as plaintiffs or defendants, in a voluntary or compulsory manner.
Moreover, there are different types of co-litigants: active, passive, mixed, coercive or compulsory
and voluntary or facultative.
Active co-litigants are the ones referred to the plurality of parties included in the group of plaintiffs.
On the other hand, passive co-litigants embrace the group of defendants. They will be categorised as
mixed if there is a plurality of parties on both sides.
Co-litigants are considered compulsory or necessary in the event of a unique legal relationship for
different subjects, and; therefore, the modifications made to this relationship should operate towards
all the subjects. So, when a particular dispute arises, the claim asserted should affect all the parties
included in the consortium. On the contrary, in the case of the voluntary or facultative co-litigants, the
plurality of parties pertains to the plurality of relations that exist among them (interposed by each one
of the subjects), whereas the accumulation of claims of action will be the outcome of the will of
interested parties as well as the connection of relationship between the different relations and the
convenience of avoiding conflicting statements due to the presence of trials initiated separately.
Finally, in a passive consortium due to a lawsuit that involves patent infringement, it is possible for
defendants to be accused of infringing the same patent.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

As in most jurisdictions, patent rights are territorial; however, activities that have taken place outside
Venezuela might indeed affect an infringement claim based on the theory of exhaustion of rights.
A patent shall not confer on its owner the right to proceed against a third party making commercial
use of a product protected by a patent once that product has been introduced into the commerce of any
country by the owner, or by another person authorised by the rightholder or with economic ties to that
patent owner.
The theory is that the right of the patent owner is exhausted once the legitimate product has been
placed in the market and may not be extended thereafter in further sales, imports or exports of the
product, at least from a patent infringement standpoint.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

Venezuelas courts have not developed sufficient case law to enable a clear response on this
important issue; there are no statutory provisions.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

A party to a procedure may request the other party to produce a document related to the litigation. To
do so, the petitioner must submit a copy of the requested document or, if a copy is not available,
provide information on the document as well as some type of evidence showing that the other party
has the document (article 436 of the Venezuelan Code of Civil Procedure).
The court can then demand the document to be submitted.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

As previously stated, a lawsuit before a trial court (first instance) will last no less than one year and
up to six years as a result of the substantial workload of the trial courts. If, as it is often the case,
appeals are filed during the course of the procedure, the procedure will be further delayed as certain
appeals may be referred to the Supreme Court.
A procedure before a superior court (second instance) will last at least eight months, and a procedure
before the Supreme Tribunal (last and third instance) will last between one and two years.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The following courts may hear a case during a civil patent litigation case.
Trial court
Generally, expenses at this level are higher as the entire case and its facts must be submitted,
including a period for evidence to be submitted and for witnesses and experts (if available) to be
examined by both parties. In addition, the trial court may issue injunctions.
Approximate fees are US$25,000 for an injunction and US$75,000 for a trial procedure.
Second instance (superior court) and Supreme Court
These courts cannot deal with the facts of a case but can reverse a case on the basis that the law was
not adequately applied.
Approximate fees for each of these instances are US$60,000 for the superior court and US$75,000 for
the Supreme Court.
Please note that these fees are estimates and may vary for each case as they are calculated on a time
basis.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

Decisions issued by a trial court (court of first instance) may be appealed before a superior court
(court of second instance), and the decisions of this superior court may in turn be appealed before the
Supreme Tribunal. Decisions regarding the validity of the patent are issued before the PTO
(administrative agency), whose decisions, via administrative appeals, are taken to the Ministry of
Commerce and the Supreme Tribunal.
13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Although there is a law dealing with competition considerations (Law for Promoting and Protecting
Free Competition), which aims to promote free enterprise and to avoid agreements that may restrict
access to certain markets, a patent owner trying to defend only the validity of its rights shall not be
deemed as committing antitrust violations unless it uses the patent to create other restrictions in the
market; namely, tying other services or products that are not covered within the subject matter of the
patent.

The above-mentioned Law has created the Superintendency for the Promotion and Protection of Free
Competition (Procompetencia), a technical administrative agency that is empowered to ensure that the
Laws aims and objectives are enforced.
The concept of tort has developed as Venezuela has a civil law system where wrongdoings are
established in acts and not developed via case law.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Regarding prosecution and registration issues that are handled by the PTO, no agreements between
parties will be accepted because intellectual property laws are deemed to be of public interest and
cannot be agreed upon by the parties. This is because the general public must be protected and cannot
be misled as to the origin and source of goods.
Issues dealing with infringements may be settled between the parties via alternative dispute resolution
to avoid a court of law, either with mediation or arbitration.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

No, there are still several prohibitions on patent subject matter applying to:
beverages or food, whether for humans or for animals, medicines of all kinds, medicinal or
pharmaceutical preparations and chemical preparations, reactions and combinations;
financial, speculative, commercial or advertising systems, combinations or plans, or those of simple
control or inspection;
the simple use or advantage of natural substances or forces, even though they are of recent
discovery;
the new use of goods, objects, substances or elements already known or applied to definite purposes
and the mere variations of shape, dimensions or material of which they are made;
working patterns or secrets of manufacture;
purely theoretical or speculative inventions whose industrial feasibility or well-defined application
could not be possibly indicated or demonstrated;
inventions contrary to national laws, public health or public order, to morality or good customs or to
the security of the state;
the juxtaposition of already patented elements or of elements that are of public domain, unless they
are put together in such a way that they cannot work independently, losing their characteristic action;
and
inventions made known in the country for having been published, divulged in printed papers or in
any other form, and those being in the public domain by reason of their execution, sale or advertising

within or outside the country, before the patent application.

16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

A patent must always name an individual person as the inventor, as only individuals and not
companies are capable of producing an invention. However, patents can be, and generally are,
transferred to a company, which is done with a declaration of inventorship with assignment executed
by the inventor in favour of the company.
Patents developed within a labour relationship are under the ownership of the employer. If the
inventor is an independent contractor, he or she is the owner of the invention, unless the subject
matter is related to the activities of the company if so, the company has a right of priority on the
invention (Venezuelan Labour Law).
There can be several inventors, joint ventures and owners of a patent.
Patents, applications or registrations may be assigned, and such deeds should be recorded before the
PTO in order to have validity against third parties; if not filed, such assignment will only be valid
between the parties.

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Patents lose their effect:

when cancelled by judgment of a competent court, on the grounds of being issued with detriment to
the better rights of third parties;
when cancelled in conformity with articles 12 and 21 of the Venezuelan Patent Law;
when the owner of the patent has allowed a period of two years from the date of grant without
working the corresponding invention in Venezuela, or when said working is interrupted for an equal
period, unless due to acts of God or force majeure duly proved before the Industrial Property
Registry Office;
through lack of payment of any of the annuities;
through expiration of the term; and
through express abandonment of the invention.
There is no special court or administrative tribunal to do this.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Yes. In order to be patentable, the subject matter must be novel; however, there are some exceptions
to this requirement such as invention, improvement or industrial model or design that, being patented
abroad, has not been divulged, patented or put into execution in Venezuela, which means it is not in
the public domain.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

An invention shall be regarded as having an inventive step if it is not obvious to a person in the trade
with average skill. In addition, the invention shall be deemed as being industrially applicable when
its subject matter can be produced or used in a certain type of industry.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

The following are, inter alia, grounds under which a patent may be deemed unenforceable:
acts carried out within a private circle and for non-commercial purposes;
acts carried out exclusively to experiment with the subject matter of the patented invention;
acts carried out exclusively for the purposes of teaching or scientific or academic research;
those acts referred to in article 5-bis of the Paris Convention for the Protection of Industrial
Property; and
where the patent protects biological material that is capable of being reproduced, except for plants,
using that material as a basis for obtaining a viable new material, except where the patented material
must be used repeatedly to obtain the new material.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

If an accused infringer has been privately using the accused method or device before the filing date or
publication date of the patent, the infringer cannot use that circumstance as a defence.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Among other matters, the following elements are considered when calculating damages:
the consequential damage and lost profits suffered by the rightholder as a result of the infringement;
the amount of profit obtained by the infringer as a result of the acts of infringement; or
based on the commercial value of the infringed right and such contractual licences as may already
have been granted, the price the infringer would have paid for a contractual licence.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A wide array of injunctions is available for a patent owner to guarantee its rights during the course of
a judicial proceeding. The judge, at his or her own discretion, and provided that the plaintiff can
support its right and show irreparable harm, can order injunctions ranging from seizure of goods to
the prohibition of the sale of goods.
In some cases, the plaintiff will be required to post a bond to guarantee possible damages that may
arise from the injunctions being sought.
Other measures (injunctions) that may be ordered include the following:
immediate cease of all acts constituting the alleged infringement;
withdrawal from commercial channels of all products resulting from the alleged infringement,
including packaging, wrappings, labels, printed material or advertising or other materials, together
with materials and implements of which the predominant use has been the commission of the
infringement;
suspension of the importation or exportation of the goods, materials or implements referred to under
the previous point;
establishment by the alleged infringer of an adequate guarantee; and
temporary closure of the business belonging to the defendant or accused, if necessary, to avoid
continuation or repetition of the alleged infringement.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Civil procedures can be filed before trial courts, which have jurisdiction in cases concerning civil,
commercial, traffic, trade and transit matters. Such courts can order the seizure of infringing goods.
On the other hand, for criminal procedures, there is a specialised district attorney for intellectual
property matters who will handle such cases.
At the border, infringing goods can be seized by customs.
25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

Unless provided for in a settlement, it is quite difficult to recover costs and attorneys fees as, for
such purposes, the following must happen:
the trial court handling the infringement suit must provide for the recovery of costs and attorneys
fees when deciding the case; and
if fees and costs are not paid, a second procedure must be initiated to demand that the defendant
complies with the decision.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

There are no additional remedies besides recovering costs, attorneys fees and damages with the
difficulties involved (see question 25). There are also penalties established in the Criminal Code.
The standard test is evidence beyond a reasonable doubt.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The time limit for seeking a remedy for patent infringement can be any time during the patents
duration.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

The Venezuelan Industrial Property Law of 1955 makes provision for this, but failure to mark will
only result in a nominal fine (less than US$1), so the use of a patent mark is essentially a choice for
the patentee.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

When an invention or discovery interests the government and is reasonably considered to be of public

interest, the government can, by reason of public or social interest, decree the expropriation of the
right of the inventor or discoverer, subject to the requisites established for expropriations in the
corresponding law. In the publications to be made in this connection, the subject matter of the
invention or discovery will be omitted and it will solely be stated that it is covered by the terms of
this provision.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

See question 29.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

Generally, grant of a patent may take from four to five years.

The filing, prosecution and grant of a patent will generally cost around US$2,000 in fees and
US$1,500 in expenses. Once granted, a yearly fee of US$135 must be paid in order to maintain the
validity of the patent.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

Under Venezuelan Industrial Property Law, there are not any procedures to expedite patent
prosecution.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

The description of an invention must disclose the invention sufficiently clearly and completely to be
understood and so as to enable a person skilled in the technical field concerned to execute the
invention on that basis.
The description must state the title of the invention, and should contain:
an indication of the technological field to which the invention relates or where it is to be applied;
an indication of the prior technology known to the applicant that may be useful for understanding and

examining the invention, with references to earlier documents and publications relating to that
technology;
a description of the invention in such a manner as to allow the understanding of the technical
problem concerned and the solution thereof by the invention, with an explanation of the differences
with and possible advantages compared to previous technology;
a brief description of the drawings, if the application contains drawings;
a description of the best method known to the applicant for carrying out the invention or putting the
invention into practice, with the use of examples and references to the drawings if relevant; and
a statement of the manner in which the invention meets the requirement of applicability in industry, if
this is not already clear from the description or from the nature of the invention.
In the case of an invention relating to a product or process involving biological material, where the
invention cannot be sufficiently described in such a way as to be understood and carried out by a
person skilled in the art of the relevant technical field, the description must be complemented by the
deposit of that material made before or on the filing or priority date with a recognised depositary
institution. Deposits are made with an international depositary authority under the Budapest Treaty on
the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure
of 1977. The name and address of the depositary institution, the date of the deposit and the number
assigned by the institution to the deposit must be mentioned in the description. A certificate of the
deposit must be furnished. The deposit of biological material is valid for the purposes of granting a
patent only if it is made in such a way that any interested party may obtain samples of the deposited
material at the latest from the date when the application becomes open to public inspection.
The description of an invention must be filed in Spanish in two hard copies and one in CD format.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The Venezuelan Industrial Property Law only requires the applicant to disclose relevant prior art
disclosed in Venezuela.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

It is not possible to file one or more later applications to pursue additional claims to an invention
disclosed in an earlier filed application.
36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

As the PTO is an administrative body, all appeals against its decisions are filed within the
administrative jurisdiction, the Supreme Tribunal being the final body that may hear an appeal related
to such matters.
Regular trial courts cannot hear appeals against decisions rendered by the PTO.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Yes, prior to the grant, an application is published in the Patent Gazette and any third party may file
an opposition within a fixed term of 15 days counted from the date of such publication.
Once a patent has been granted, a nullity may be filed against it at any time if, inter alia:
the subject matter of the patent is not an invention;
the invention fails to comply with the requirements for patentability;
the patent fails to disclose the invention; or
the claims included in the patent are not fully substantiated by the description provided.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

Yes, an invalidation proceeding may be filed before the PTO when the patent has been granted to a
person or company that has no right to it.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

The PTO will hear cases dealing with the annulment of patent procedures, which can be initiated ex
officio or by an interested third party. Courts will not amend claims during a trial procedure as the
patent shall be deemed valid unless otherwise decided by the PTO.
A patentee may also file modifications to a patent that has been already granted or published as long
as such changes do not broaden or widen the subject matter initially claimed therein.
40 Patent duration

How is the duration of patent protection determined?

For patents of inventions, industrial models or designs, the term is 10 years from the date of grant.

Mara Milagros Nebreda

mnebreda@hpcd.com

Carlos Pacheco

cpacheco@hpcd.com

Torre IASA, 3rd floor

Av Eugenio Mendoza
Plaza La Castellana
Caracas 1060
Venezuela

Tel: +58 212 201 8611

Fax: +58 212 263 7744
www.hpcd.com

Vietnam
Pham Vu Khanh Toan
Pham & Associates
Patent enforcement proceedings
1 Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there
specialised courts in which a patent infringement lawsuit can or must be brought?

Under the Law on Intellectual Property of Vietnam (the IP Law 2005, amended in 2009), a patentee is
entitled to request the competent authorities to enforce its patent rights against an infringement in
accordance with provisions of the IP Law and other relevant laws and regulations by means of
administrative and civil actions (articles 198 and 199).
Administrative action is the best option for a patentee to stop an existing patent infringement quickly
at a low cost. The action can be conducted against infringements that cause loss and damage to the
author, rightholder, consumers or society (article 211). During administrative actions, competent
authorities can search and seize infringing goods without notice to the infringer and if an infringement
is found, the authorities may issue a decision on administrative sanctions, which may include a
monetary fine up to 500 million dong depending on the value of the infringing goods and the infringing
act, removal of the infringing element and destruction or confiscation of infringing goods.
Civil action is the main instrument for IP rightholders to defend their rights against infringements. By
taking a civil action, a patentee can request provisional measures (injunctions) and claim for
remedies available under the IP Law, which may include:
ceasing the infringing act;
public rectification and apology;
performance of civil obligations;
compensation of damages; and
destruction or disposal of infringing goods for non-commercial purposes.
There are no courts or judges specialising in the IP field in Vietnam. IP cases are normally settled by
the Economic courts.
2 Trial format and timing

What is the format of a patent infringement trial?

To institute a lawsuit, a plaintiff has to submit a petition to the competent court.

The Code on Civil Proceedings of Vietnam does not provide for the particular extent of necessary

documents and evidence to support a lawsuit. However, the Code provides specific types and
sources of evidence acceptable to courts, namely:
readable, audible and visual documents;
material evidence;
testimony from witnesses;
examination conclusions;
records of examination results from on-the-spot inspections;
recognised local customs; and
results of asset evaluations from recognised authorities or experts on prices.
Hearsay or the characteristics or habits of the defendant are not accepted as evidence; however, such
information or materials can be used as references for the court in settling the case.
Cross-examination of witnesses is not practised in Vietnam; however, each party has an equal
opportunity to cross-examine evidence presented by the other.
According to the IP Law, the court and both the parties have the right to invite experts, and written
opinions of private experts appointed by the parties can be used as evidentiary documents. The court
can also consult with the National Office of Intellectual Property (NOIP) or any expert organisations
on questions regarding IP-related disputes.
Vietnam does not have a jury system. At the first instance the panel consists of one judge and two
appointed judges (persons appointed by the Peoples Committee to perform the function of judges at
the first instance court) and at the appeal instance the panel consists of three judges. Normally a trial
lasts one year for each instance.
3 Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof of infringement initially lies on plaintiff. However, in the case of infringement of
a patented process, the burden of proof may switch to the defendant if the product made by the
patented process is new or not new but the patent owner believes that the defendants product is made
by the patented process and is unable to identify the process used by the defendant despite reasonable
measures taken (article 203).
The burden of proof for invalidation and unenforceability lies on the person who made the claim.
Claims for invalidation or unenforceability by a defendant are initially filed with the competent state
management authority (namely, the NOIP), and in such case the hearing of the case shall be suspended
until the NOIP issues its decision.
4 Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial
ruling or declaration on the accusation?

A patentee, registered licensee, organisations and individuals suffering from any act of infringement
shall have the right to institute a lawsuit against infringers.

An accused infringer may accuse the patentee of interference with duty and bring a civil action for
damages caused by the plaintiffs actions.
The counterclaim of the defendant against the plaintiff shall be accepted for settlement by the court in
the same case if the counter-claim for the obligation is to offset against the claim of the plaintiff; the
acceptance of the counterclaim will result in the exclusion of all or part of the claim of the plaintiff;
or there is a connection between the counterclaim and the claim of the plaintiff and, if they are
resolved in the same case, the resolution of the case will be quicker and more accurate.
5 Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly
liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the
elements?

Inducement, contributory infringement and multiple-party infringement are not provided for in the IP
Law.
6 Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the
defendants be accused of infringing all of the same patents?

Yes, multiple parties can be joined as defendants in the same lawsuit. As provided in Art. 163.1 of
the Code on Civil Proceedings, the plaintiff is entitled to initiate a legal proceeding against one or
several defendants in relation to one or several legal matters, which are related to each other, for
settlement in the same case. Several legal matters that are related to each other as interpreted in
Resolution No. 02/2006/ND-HDTP (section I.3) can fall into the two following categories:
resolution of one legal relation that requires a simultaneous resolution of the other legal relations;
and
resolution of several legal relations of the same type of dispute that involve the same parties.
Considering the foregoing, it is not necessary for all of the defendants to be accused of infringing the
same patents.
Besides, the court may consolidate two or more cases that have been accepted separately by the court
to form one case for resolution if the consolidation and resolution in that one case is in compliance
with law (article 38.1 of the Code on Civil Proceedings). In this case, multiple parties can also be
joined as defendants in the same lawsuit.
7 Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

A patent registered in Vietnam is effective only within the territory according to the territorial
principle. Therefore, no charge of patent infringement is applicable to activities that take place

outside Vietnam, except in the case of importing products manufactured in foreign countries for use in
Vietnam.
8 Infringement by equivalents

To what extent can equivalents of the claimed subject matter be shown to infringe?

According to the IP Law, equivalents of the claimed subject liable for infringement cover both
product and process. In particular, as defined in article 8 of Decree No. 105/2006/ND-CP (guiding
the implementation of some provisions of the IP Law), an infringing element of an invention may take
any of the following forms:
a product or part (component) of a product is identical or equivalent to a product or part
(component) of a product within the scope of protection as an invention;
the process is identical or equivalent to a process that is protected as an invention; or
the product or part (component) of the product is manufactured via a process that is identical to or
equivalent to a process presently protected as an invention.
Article 8.4.a(ii) of circular 37/2011/TT-BKHCN dated 27 December 2011 clarifies the criteria to
assess the equivalence of two technical features, namely:
they are of the same nature or substitutable for each other;
they share the same purpose of use; and
the method to achieve the purpose of use is substantially the same.
9 Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for
proving infringement, damages or invalidity?

For collecting evidence for proving infringement, damage or invalidity that is under the control of the
other party, either the plaintiff or defendant has the right to request the court to compel the party to
produce such evidence. In particular, article 203 provides that if a party to a proceeding against an
infringement of intellectual property rights has specified that evidence relevant to substantiation of his
or her claims is in the control of the other party and is therefore inaccessible, the former shall have
the right to request the court to compel the latter to produce such evidence. There is no mechanism for
collecting evidence from third parties or from outside the country available under Vietnamese law.
10 Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

A proceeding begins with the filing of the plaintiffs complaint with a competent court within two
years from the date on which the plaintiff is aware of the infringement of its legitimate rights. If the
case involves foreign elements, the petition should be filed with the peoples court at provincial

level.
A request for applying provisional measures may be submitted at the time of filing the petition or
during the settlement of the case. Within three working days from the date of receiving a request for
applying provisional measures, the court has to decide to accept or reject the request and notify the
same to the requester.
Within five working days from the date of receipt of the petition the court has to decide to carry out
the procedures for acceptance and notify the applicant to proceed with payment of a court fee and
officially accept the case when the applicant submits a receipt for the payment of the fee. After that,
parties concerned have a right and obligation to lodge requested opinions and evidence with the court
within 15 days from the date of receipt of the courts notification. An extension is possible but may
not exceed 15 days, as provided by law. The court may collect or request relevant authorities to
collect concerned evidence upon a request of either the plaintiff or defendant.
The time limit for preparation for the trial of IP-related cases ranges from two to four months. The
court may decide to extend the time limit for preparation for trial, but it shall not exceed six months in
any case.
During the period of preparation for trial at first instance, the court shall carry out conciliation to
enable the parties to reach an agreement on the settlement of the case. If negotiation between the
parties fails, the court shall issue a decision to bring the case to a hearing.
A first instance trial must be conducted within one month from issuing the decision to hear the case. A
first instance panel consists of one judge and two peoples assessors. After conducting the
interrogation and debate, the members of the panel shall discuss and make their judgment with
specific remedies by way of majority voting.
A courts judgment can be appealed to the Supreme Peoples Court within 15 days from its issuance.
A similar timetable is applicable for appeal proceedings.
A courts judgment that has come into force can be challenged by the chief justice of the Supreme
Peoples Court or the chief procurator of the Supreme Peoples Procuracy under the supervisory and
review procedures if there is a mistake or violation of law found in the judgment or new important
facts about the case that the litigants were unable to know are discovered.
11 Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

Attorneys fees can be up to US$10,000 and are charged according to the work undertaken.
12 Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

A courts judgment that has come into force can be challenged by the chief justice of the Supreme
Peoples Court or the chief procurator of the Supreme Peoples Procuracy under the supervisory and
review procedures if there is a mistake or violation of law found in the judgment or new important
facts about the case that the litigants were unable to know are discovered.

13 Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair
competition, or a business-related tort?

Provisions of the Trade Law are not applied to justifiable actions of the intellectual property
rightholder.
14 Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

As an alternative dispute resolution method, meetings with infringers aimed at reconciliation or

mediation are used in Vietnam for settlement of IP disputes. Pre-hearing compromise, where the
parties reach an agreement on the matters that must be resolved in the civil case, is also used.
Arbitration can also be chosen as an alternative dispute resolution if the same is agreed by the
concerned parties.

Scope and ownership of patents

15 Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Under article 4.12 an invention is defined as a technical solution, in form of a product or a process,
to resolve a specific problem by utilising laws of nature. In accordance with article 59:
The following subject matter shall not be protected as inventions:
discoveries, scientific theories; mathematical methods;
schemes, plans, rules or methods for performing mental acts, training domestic animals, playing
games, doing business; computer programs;
presentations of information;
solutions of aesthetic characteristics only;
plant varieties, animal varieties;
processes of an essentially biological nature for the production of plants and animals other than
microbiological processes; and
disease prevention, diagnostic and treatment methods for human or animals.
It is clear that the IP Law explicitly excludes, inter alia, software, business methods and medical
methods from protection. However, as recently provided in the new Examination Guidelines for
Inventions, a computer program may be considered as a patent-eligible invention if the program is of
a technical character and is truly a technical solution to resolve a technical problem by technical
means.
The program should have potential to bring about a further technical effect that goes beyond the

normal physical interactions between the program and the computer. In particular, a computer
program claim is acceptable if it is drafted in the form of a computer-readable medium having a
computer program embodied therein.
In respect of method-of-treatment claims, under the old patent law, in certain cases, such claims may
survive if converted into the Swiss-type format. However, recently the NOIP has raised objections to
use-type claims on the grounds that they relate neither to a process nor a product, and therefore
cannot be regarded as a statutory subject matter. This viewpoint has caused a fierce debate among
Vietnamese intellectual property professionals, which has not yet come to an end.
16 Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a
joint venture? How is patent ownership officially recorded and transferred?

Article 86 provides that:

1. The following organisations and individuals shall have the right to registration of an invention,
industrial design and layout design:
a) the authors who have created the invention, industrial design or layout design by his or
her own efforts and expenses; or
b) the organisations or individuals who have invested funds and material facilities to the
authors in the form of a job assignment or job hiring unless otherwise agreed by the parties
and such agreements are not contrary to paragraph 2 of this article.
2. The Government shall provide for the right to the registration of inventions, industrial designs
and layout designs created using funds and material and technical facilities from the state budget.
3. In case more than one organisation or individual have jointly created or invested in the
creation of an invention, industrial design or layout design, those organisations or individuals
shall have the right to registration and such right shall only be exercised with their consensus.
4. A person who has the right to registration as provided in this article may assign that right to
other organisations or individuals in the form of a written contract, passing by inheritance In
accordance with the law, even when a registration application has been filed.
In line with the above provisions, the ownership of an invention made by a company employee or an
independent contractor shall belong to the employer or the person who has invested funds and
material facilities in creation of the invention. If an invention has jointly been created by co-inventors
or a joint venture, the ownership of the invention shall belong to the co-inventors or the individuals or
companies choose to enter the joint venture and such right shall only be exercised with their
consensus.
Patent ownership is recorded by the state by grant of patent. The ownership of a granted patent can be
transferred by an assignment agreement in written form (article 138).

Defences
17 Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in
which to do this?

Article 96 provides that during the term of validity of a patent, a third party may take an invalidation
action against the patent if:
any of the requirements for patentability were not fulfilled at the time the patent was granted; or
the person to whom the patent was granted was not entitled to apply for and be granted the patent.
There is no special court or administrative tribunal for patent matters. Any third party may file a
request for invalidation of a granted patent with the NOIP. If is not satisfied with the decision of the
NOIP, the requester may appeal such a decision with the Minister of Ministry of Science and
Tecnhology (MoST) or bring the case to the administrative court.
18 Absolute novelty requirement

Is there an absolute novelty requirement for patentability, and if so, are there any exceptions?

Under article 60, the disclosure in any form, including by use, anywhere in the world shall destroy the
novelty of the invention seeking protection. In other words, the novelty requirement for patentability
is worldwide and absolute. There is, however, a grace period of six months provided for an
invention that was:
disclosed by others without the authorisation of the persons having the right to file the patent
application;
published in the form of a scientific presentation by the persons having the right to file the patent
application; or
exhibited at a national exhibition of Vietnam or at an official or officially recognised international
exhibition by the persons having the right to file the patent application.
19 Obviousness or inventiveness test

What is the legal standard for determining whether a patent is obvious or inventive in view of the prior art?

Under article 61:

An invention shall be considered to involve an inventive step if, based on all technical
solutions already disclosed by use or means of a written or oral description or any other form
inside or outside the country, prior to the filing date or the priority date, as applicable, of the
invention registration application, it constitutes an inventive progress and cannot be easily
created by a person with ordinary skill in the art.
Circular 01/2007/TT-BKHCN, providing detailed guidelines for the implementation of the IP Law,
provides in section 25, item 6, that the prior art relevant for the purposes of considering an inventive
step shall include all the publications or uses that are publicly available anywhere in the world prior
to the filing or the priority date of the patent application under examination. In assessment of an
inventive step, the examiner will define whether the essential technical features defining the invention
in question have been disclosed in the prior art and whether the combination of the essential technical
features of the invention would have been obvious to a person with ordinary skill in the art. An

invention shall be regarded as involving an inventive step if it is a result of an inventive activity and
is not common general knowledge in the relevant art. In everyday practice, the NOIP applies the
problem and solution approach to assess inventiveness.
20 Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the
inventors or the patent owner, or for some other reason?

Under article 7(2), the exercise of intellectual property rights shall not infringe upon interests of the
state, the public or legitimate rights and interests of other organisations, individuals and shall not
violate other applicable provisions of relevant law. Thus, an otherwise valid patent shall be deemed
unenforceable if the exercise of the patent right would have infringed the rights and interests of the
state or any third party, or violated the laws.
21 Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or
publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial
uses?

Yes, a party can have recourse to prior use defence when accused of infringement on the condition
that:
prior to the filing date or the priority date of the patent application, the concerned party was using or
had made substantial preparation toward the using of an invention or industrial design independently
created but identical with the invention or industrial design in the patent application; and
the concerned party (the prior user) does not enlarge the extent and volume of use unless it is so
permitted by the owner of the patented invention or industrial design.
As explained above, the prior use defence covers all types of invention and modes of uses.

Remedies
22 Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards
tend to be nominal, provide fair compensation or be punitive in nature?

Article 204 provides the rules of determination of damages, which consists of material damages and
emotional damages caused by the infringement of intellectual property rights.
The burden of proving and calculating material damages lies with the plaintiff. The amount of
material damages should be actual losses suffered by the intellectual property rightholders. If it is
unable to establish the rate of compensation, the court shall fix the rate of compensation. Such fixed

rate cannot exceed 500 million dong.

Compensation for emotional damages is available where the plaintiff succeeds in proving that the act
of infringement of intellectual property rights has caused emotional damage to him or her. The amount
of emotional damages subject to recovery ranges from 5 to 50 million dong.
The damages start to accrue from the infringing date and they are intended to provide fair
compensation.
23 Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an
injunction effective against the infringers suppliers or customers?

A temporary injunction (in the form of provisional measures) can be granted by a competent court,
which may include seizure, enumeration, sealing, prevention of the transfer or disposal of infringing
goods or facilities for producing infringing goods if the patentee or registered licensee can prove that,
in the absence of corresponding measures, there appears a likelihood of irreparable damages being
sustained by rightholders due to the infringement or there is a risk that infringing goods or other
material evidence pertaining to such alleged infringement will be destroyed or be untraceable (article
206).
A final injunction (in the form of a court judgment) may include removal of the facilities used for the
act of infringement, revocation of business licences or other measures necessary to prevent
infringement in the future.
The injunctions can be effective against the infringers suppliers or customers if the facilities are
supplied or used exclusively for producing invented products or processes.
24 Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or
proceeding available to accomplish this?

Border controls are deemed to be prompt and intermediate measures that IP rightholders can use to
bar alleged infringing imports or exports and locate and gather evidence of infringement of their IP
rights. Conversely, rightholders may be faced with the risk that their allegation is found groundless
and, consequently, they may be attacked by counterclaims. According to article 216, IP rightholders
have the right to request customs offices to suspend customs clearance of goods, whether imported or
exported, across Vietnams borders.
After a request for border control has been filed by an IP rightholder, the customs offices will be
obliged to control the flow of import or export of the concerned goods. If infringing goods are found,
the customs offices shall notify of the same to the IP rights owner, who has three days to submit a
request for suspending clearance of the goods and 10 days, with a possible extension for a further 10
days, to initiate administrative, civil actions, or both, to deal with the goods. There are no specific
tribunal or proceedings available to fulfil the border measures.

25 Attorneys fees

Under what conditions can a successful litigant recover costs and attorneys fees?

A patentee who gains a final court judgment in its favour may demand litigation costs, including
reasonable attorneys fees, from the adverse party.
26 Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine
whether the infringement is deliberate?

Additional remedies are not available in the case of deliberate or wilful infringement.
27 Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

The statute of limitation for initiating a lawsuit against infringement is two years from the date on
which the plaintiff is aware of the infringement of their legitimate rights.
28 Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of
failure to mark? What are the consequences of false patent marking?

There is no marking requirement.

As provided in article 6 of Governmental Decree No. 97/2010/ND-CP on sanctions for
administrative violation in the field of industrial property, violating the regulations on indications
about protection of industrial property rights, including patents, shall result in a monetary fine up to 5
million dong and compulsory removal of the false indications.
According to article 6:
1. A warning shall be imposed on, or a fine of between three million dong and five million
dong shall be applied to, the organisations and individuals undertaking one of the following
acts:
providing false indications about the subject matter or the element entitled to the protection
of industrial property rights, the industrial property right holders, authors of inventions,
industrial designs and layout designs;
providing false indications about the legal status and scope of protection of industrial
property rights; or
providing false indications or failure to provide indications about the goods produced under
a contract for using industrial property subject matter (licensing indications).

2. Remedial measures:
compelling elimination of the infringing element in the goods or business means applicable
to the acts stipulated in clause 1 of this article;
compelling public correction with regard to the acts stipulated in clauses 1(a) and 1(b) of
this article; and
compelling revisions or supplements to the indications with regard to the acts stipulated in
clause 1(c) of this article.

Licensing
29 Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

Article 144 provides that a licence contract shall not include provisions unreasonably restricting the
rights of the licensee; in particular, provisions may not take away from the rights of the licensor,
including:
prohibiting the licensee from improving the industrial property object, except trademarks;
compelling the licensee to grant a free licence or to assign to the licensor the right to industrial
property registration or an industrial property right in respect of such improvements;
directly or indirectly restricting the licensee from exporting goods produced or services supplied
under the industrial property object licence contract to the territories where the licensor neither holds
the respective industrial property right nor has the exclusive right to import such goods;
compelling the licensee to buy all or a certain proportion of materials, components or equipment
from the licensor or the persons designated by the licensor without aiming at ensuring the quality of
goods produced or services supplied by the licensee; and
prohibiting the licensee from complaining about the validity of the industrial property right or the
right to license of the licensor.
30 Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

According to article 145 compulsory licences or non-voluntary licences can be granted for use in the
public interest or in the case of non-exploitation or insufficient exploitation of a patent, or based upon
the interdependence of patents or if a patent is being used contrary to fair business practice.
On a request of any person or organisation, the MoST or other relevant ministries may grant a nonvoluntary licence if the exploitation of the patented invention is considered necessary to meet the
demand of national defence, national security, disease prevention and treatment, nutrition for people
or other urgent social needs.
The MoST or other ministries, as per a request of any person or organisation, may grant a nonvoluntary licence if:

 the patented invention or utility solution has not been exploited or is insufficiently exploited in the
country;
the requesting person can prove his or her ability to exploit the patented invention or utility solution
in the country; and
the owner of the patent has received a demand from the requesting person to obtain a contractual
licence, but the requesting person has been unable to obtain such a licence on reasonable terms and
within a reasonable time without receiving justified grounds from the owner of the patent.
The MoST, upon the request of the owner of a later patent (or its registered licensee or the
beneficiary of a non-voluntary licence), may grant a non-voluntary licence if:
the invention or utility solution claimed in the patent cannot be exploited in the country without
infringing a prior patent; and
the owner of the earlier patent has received a demand from the requesting person to obtain a
contractual licence, but the requesting person has been unable to obtain such a licence on reasonable
terms and within a reasonable time without receiving justified grounds from the owner of the earlier
patent.
Any person or organisation can seek a decision on a grant of a non-voluntary licence of a patented
invention if the owner of this invention with a monopoly has undertaken anti-competitive conduct.
The IP Law does not provide a specific term for such licences, leaving it at the MoSTs discretion.

Patent office proceedings

31 Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

It normally takes three years, from the date of filing or entering into national phase, to obtain a patent.
The waiting period may be shortened significantly if the applicant provides the NOIP with
information concerning the corresponding patent applications in other countries. On the other hand,
the procedure of examination on the merits will be prolonged if the invention concerned belongs to
the pharmaceutical or bio-tech field and there has been no examination conducted in the US, Japan,
European countries, etc, to which the Vietnamese examiners may refer. It typically costs about
US$2,500 to obtain a patent granted to a patent application, filed through Convention or PCT routes,
with 30 pages of specification and two independent claims.
32 Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

The applicants of a patent application may file a request for accelerated examination, subject to
payment of extra fees. However, due to a backlog at the NOIP, such a request is rarely accepted.
Although Vietnam does not participate in any Patent Prosecution Highway programme, the submission
of corresponding patents granted by USPTO, JPO or EPO will greatly expedite the examination

process.
33 Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that
should be followed or pitfalls to avoid in deciding what to include in the application?

Article 102 requests that the description of a patent application sufficiently and clearly disclose the
nature of the invention to the extent that such invention may be carried out by a person having ordinary
knowledge in the art and clarify the novelty, inventive step and susceptibility of industrial
application of the invention. In accordance with the IP Law, the scope of protection of invention
shall be defined by the claims, in the form of a combination of those technical features necessary and
sufficient to identify the scope of the rights to that invention, and must be in line with the specification
of the invention and drawings. The claims must be fully supported by the description. The description
typically contains the following subsections:
title of the invention;
technical field of the invention;
background of the invention;
summary of the invention;
brief description of the drawings (if any);
detailed description of the invention;
examples (if necessary); and
effect of the invention.
In cases where the invention concerns biological material that is not available to the public, and that
cannot be described in the application, the name of the depository institution and the accession
number of the deposit should be provided.
34 Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The IP Law encourages inventors to disclose prior art to the patent office but does not include any
sanctions against inventors who deliberately hide the prior art known to them.
35 Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier
filed application? If so, what are the applicable requirements or limitations?

A patent applicant may file one or more divisional patent applications to pursue additional claims to
an invention disclosed in its previously filed application, provided that such additional claims are
fully supported by the description as originally filed. Divisional patent applications may be filed at
any time during the processing of the parent patent application.

36 Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Under law, if dissatisfied with an adverse decision from the NOIP, an applicant or any third party
may file a petition to appeal such decision with the Minister of the MoST or file an appeal before the
competent administrative court.
37 Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Article 112 provides that, from the publication date of a patent application until before the date of it
being granted, any third party may request the rejection of a patent application by submitting
arguments and relevant documents and information in respect of the patent application.
38 Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same
invention? What factors determine who has priority?

In accordance with the IP Law, the priority right is to be determined on the basis of the first to file
principle. In fact, under article 90, where two or more patent applications have been filed by several
independent applicants for the same invention, a patent may only be granted to the patent application
with the earliest filing date or priority date, where applicable. If more than one patent application has
been filed by different applicants for the same invention and with the same priority conditions,
namely with the same priority date, the NOIP shall invite all the applicants to jointly file a single
patent application as co-applicants. If the applicants cannot reach such an agreement, all the patent
applications will be rejected.
39 Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent
claims during a lawsuit?

During the term of validity of a patent, the patent owner may file a request for modifying the patent by
cancellation of one or more claims in the patent. Any third party may file a request for invalidation of
a patent if the patent has been granted on an unlawful basis. The patent may be terminated if the owner
no longer exists, fails to pay the maintenance fee or surrenders his or her patent. During a lawsuit, a
court may hold a claim valid or invalid but may not amend the claims in a challenged patent. In
accordance with article 117(4) of the IP Law and section 16 of Circular 01/2007/TT-BKHCN, reexamination may be requested only for pending patent applications. In particular, a patent application

will be re-examined when a third party or the applicant opposes the NOIPs notice of intention to
grant or notice of intention to refuse to grant a patent, respectively.
40 Patent duration

How is the duration of patent protection determined?

The term of validity for a patent for invention is 20 years, while such term for a patent for a utility
solution is 10 years, counted from the filing date.

Update and trends

As the Vietnam IP Law was revised and amended in 2009 to bring it in line with the IP law of
developed countries and to meet the World Trade Organizations obligations to which Vietnam is a
party, we think it will remain unchanged at least for the next three years.

Pham Vu Khanh Toan

8 Tran Hung Dao St

Hanoi
Vietnam

Tel: +84 4 38 244 852

Fax: +84 4 38 244 853
hanoi@pham.com.vn
www.pham.com.vn