Patent Litigation 2019 Comparisons

Last Updated June 20, 2019

Contributed By Linklaters

Law and Practice

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Linklaters is a leading international law firm, and has advised on significant deals in over 100 countries. In addition to serving clients from its 30 offices and via its alliance with Allens and Webber Wentzel, Linklaters’ lawyers have expertise in key jurisdictions across emerging Europe, the Middle East, Asia and Africa. In Belgium, Linklaters is recognised as a market-leading law firm, with a presence in the Belgian market dating from 1969 and with offices in both Brussels and Antwerp. Its wide offering of specialised practices, ranging from corporate and banking to IP/TMT and tax, means that the firm provides market-leading advice across the full spectrum of legal specialities.

In Belgium, the inventor (or any other physical or legal person to whom patent rights have been transferred) may obtain a patent for an invention consisting of a product or process that is new, inventive and industrially applicable, provided that such protection is not excluded by law (as further set out below).

Article XI.4 of the Code of Economic Law (CEL) contains certain limitations on the inventions that are eligible for patent protection, particularly excluding the following from patent protection:

  • discoveries;
  • scientific theories;
  • mathematical methods;
  • aesthetic designs;
  • systems, rules and methods for the performance of intellectual activities, for games or for business management;
  • computer programs (while certain computer-implemented inventions that have a further technical effect may be eligible for patent protection according to prevailing EPO case law); and
  • the presentation of information.

Article XI.5 CEL excludes animal breeds, plant varieties and biological methods for the creation of plants or animals from patent protection (without prejudice to the possibility of obtaining a patent for an invention relating to animals or plants if this invention is not limited to a specific breed or variety, or an invention relating to a microbiological or other technical process or product resulting from such process). Pursuant to the same article, certain inventions whose exploitation would go against public order or morality are also not eligible for patent protection (eg, human cloning). In addition, the human body and the discovery of a part of the body (including a sequence of a gene) are not eligible for patent protection, except parts of the body that have been isolated or otherwise obtained through a technical process (including a sequence of a gene). Finally, processes of surgical or medical treatment of human or animal bodies and diagnosis on said bodies are not eligible for patent protection either (except for products used in those processes).

Depending on the preferred territorial scope of protection, it may be appropriate to file a Belgian patent application, a European patent application or an international (PCT) application. In the latter two cases, the applicant will benefit from a (partially) streamlined application procedure in order to obtain a bundle of national patent rights in the relevant participating countries selected by the applicant (covering Belgium if designated). The EU intends to create a unitary patent with effect in up to 26 EU Member States (which may still change in the future). At the time of this report, Belgium has already made significant progress in implementing the unitary patent and harmonising the rules regarding the scope of patent rights, and exceptions and limitations to such patent rights. Most of these rules will come into force once the Agreement on a Unified Patent Court enters into force vis-à-vis Belgium.

Alternatively, a company can also opt to keep inventions secret in case the relevant product or process is not easily capable of being reverse-engineered. The disadvantage of this is that such trade secrets are not protected by a separate intellectual property right. If the invention is acquired legitimately, used by a third party or disclosed to such third party without compromising any contractual or other rights, the trade secret can be freely used, since there is no exclusive proprietary right prohibiting the same. It is therefore necessary to protect the inventions or other confidential information by putting appropriate confidentiality safeguards in place (limited disclosure, confidentiality agreements, operational and technical security measures, etc).

At the level of the European Union, Directive 2016/943 protects trade secrets, in the sense of information that is secret, that has commercial value because it is secret and that has been subject to reasonable steps to keep it secret against its unlawful acquisition, use and disclosure. At the time of this report, the Act of 30 July 2018 modified several provisions of Belgian law in order to implement this Directive. Even though trade secrets cannot be considered to be a new intellectual property right, the legislator aligned various procedural measures and remedies with existing intellectual property legislation.

The grant procedure varies depending on the type of patent applied for (ie, Belgian, European or international (PCT)).

A Belgian patent application can be filed at the Belgian Office for Intellectual Property (OPRI) in Dutch, French or German, in accordance with the applicable legislation on the use of languages in administrative affairs. The filing date (or, if a right of priority has been claimed, priority date) of the patent application will determine the relevant prior art, since Belgium has a first-to-file system. The European Patent Office (EPO) will perform a novelty search and issue a written search report and opinion with respect to the fulfilment of the patentability requirements (essentially, inventive step and novelty), the outcome of which shall have no binding effect on OPRI's decision to grant the patent. This allows the applicant to withdraw the patent application if the invention is not eligible for patent protection, or modify it (with the proviso that the scope of the patent application can never be extended) or, alternatively, comment on why it does not agree with the opinion.

The grant of a Belgian patent is based on the verification of formal requirements only, and all substantive warranties are therefore excluded. The validity of a Belgian patent is eventually assessed, in case court proceedings are launched. A patent application will normally be published 18 months after the filing or priority date, unless the applicant requested prior publication or withdrew its application.

A European patent entails a common application process resulting in a bundle of national patent rights in one or more member countries of the European Patent Convention (EPC). The application can be filed at the EPO or at a national patent office, if allowed by applicable national law. A translation in an official language of the EPO (English, German or French) will need to be provided within two months of filing the application. The EPO will first examine whether all relevant formalities are met, and will then perform a novelty search and draw up a search report. It will also issue a non-binding written opinion on the invention’s patentability, allowing the applicant to amend or withdraw the application.

The patent application will be published 18 months after the filing or priority date, unless the applicant requested prior publication. The EPO will thereafter submit the patent application to substantive examination to determine whether the invention is eligible for patent protection and meets the requirements of the EPC. Depending on the outcome of such examination, the EPO decides whether or not to grant the patent. Finally, the European patent will need to be validated in the designated countries. The European patent in which Belgium has been designated grants the holder the same rights as it would enjoy under a Belgian patent as from the date of publication of the mention of the grant in the European Patent Bulletin or the decision to maintain the patent in an amended or limited form.

The international (PCT) patent application is rather similar to the European patent, but encompasses only a procedural integration of the application process in (at the time of this report) 152 contracting states without any substantive harmonisation. The PCT application results in a bundle of national patent rights, which are each governed by applicable national legislation. The application may be filed at a national or regional patent office, or at World Intellectual Property Organization (WIPO). The receiving office first verifies whether the PCT formality requirements have been fulfilled. If so, the International Searching Authority (ISA) will draw up an international search report with respect to the relevant prior art and issue a non-binding written opinion on the invention’s patentability, allowing the applicant to amend or withdraw the application.

The patent application will be published as soon as possible once 18 months have passed since the filing or priority date. The applicant may request a supplementary international search to be executed if it believes certain prior art documents have not yet been identified. The applicant may also request an international preliminary examination (ie, an additional non-binding opinion reviewing whether an invention meets the patentability requirements). The national phase will usually start 30 months after the filing or priority date, unless an earlier entry into the national phase has been requested, during which there will be an assessment as to whether a national (or regional) patent may be granted in all designated countries (or regions), individually from each other.

The grant procedure for a Belgian patent lasts approximately 18-20 months. The applicant can file a Belgian patent application and is not obliged to appoint a qualified patent attorney for the filing thereof, unless the applicant does not have its residence or place of business in an EU Member State. At the time of writing, OPRI office fees for the filing a Belgian patent application are EUR350-400 (made up of a filing fee of EUR50, a search report fee of EUR300 and a possible fee for invoking priority of EUR50). Maintenance fees are due as of the beginning of the third year after the patent application date and increase over the duration of the patent, starting from EUR40 and going up to EUR600. The above-mentioned fees do not include any representation or translation costs.

The grant procedure for a European patent typically takes between three and five years. The applicant can file a European patent application and is not obliged to appoint a qualified patent attorney for the filing thereof, unless the applicant does not have its residence or place of business in an EPC contracting state. At the time of writing, the office fees relating to the filing of a European patent application amount, on average, to EUR5,710 for a paper filing or EUR5,620 for an online filing if the patent application is pursued until it matures into registration (a filing fee of EUR120 if online and EUR210 if on paper, a search fee of EUR1,300, a designation fee of EUR585, a claims fee if more than 15 claims are filed, an examination fee of EUR1,635, a grant fee of EUR925, etc). Renewal fees for a European patent application are payable to the EPO as from the third year after the date of filing the application and each subsequent year until the grant of the European patent, and increase every year (from EUR470-1,575). In some designated countries, fees may also be charged for the validation of a patent. Maintenance fees will be payable in the designated contracting states once the patent has been granted (the amounts of which vary per country). The above-mentioned fees do not include any representation costs. The unitary patent, if introduced, is expected to result in a significant decrease in costs.

As discussed in 1.2 Grant Procedure, the international phase of a PCT patent application usually lasts for approximately 30 months. Since the national phase of a PCT patent application involves the verification of national (or regional) requirements, the time required for the grant of the patent varies across the relevant patent offices (reference is made to what is set out above in relation to the time required for the grant of a Belgian or European patent). Representation by a qualified patent attorney is again not required for the filing of a PCT application, although it is highly recommended. At the time of this report, an international filing fee of CHF1,330 is due, with a search fee determined by the chosen ISA (which may range from CHF134 to CHF2,046) and a small transmittal fee, as well as a fee per sheet over 30, the amounts of which depend on the referring patent office. It should be noted that the (filing and other) fees due to the national (and regional) patent offices during the national phase represent – in most cases – the greater part of the office fees in relation to a PCT application. Fee reductions are available in the case of e-filing and for certain categories of applicants (during both the international and the national phase). Maintenance fees will be due in each designated country (or region). The above-mentioned fees do not include any representation or translation costs.

The maximum term of patent protection in Belgium is 20 years from the application date, which can, in some cases, be extended by a supplementary protection certificate (SPC) (as set out in 1.6 Further Protection After Lapse of Maximum Term). 

In the past, Belgium also offered the possibility to obtain a patent with a limited term of protection of six years without a novelty search, but the possibility to file such a (small) patent application was abolished in January 2009.

The term of patent protection may terminate earlier than the maximum term if there is a lapse due to non-payment of (maintenance) fees or an annulment, revocation or withdrawal of the patent.

See 6.1 Remedies for the Patentee regarding the various remedies that a patent holder may invoke in the framework of the enforcement of its patent rights.

A patent entitles its holder to prohibit third parties from making use of an invention without the holder's prior consent. See 2.1 Actions Available Against Infringement for the various acts of direct and indirect infringement that a patent holder may prohibit and 6.1 Remedies for the Patentee for the various remedies against infringement (injunctive relief and damages). The patent-holder may only exercise its patent rights within their respective limitations, as further described in 2.2 Third-party Remedies to Remove Effects of Intellectual Property Right.

The patent-holder may also assign (sell) or license (grant a right of use to) its patent rights, as further described in 10 Assignment and Licensing.

The patent-holder has certain obligations, namely the payment of the respective office fees and the sufficient provisioning of the Belgian market with the patented products or processes (at the risk of being forced, in exceptional circumstances, to accept a compulsory licence).

It is possible to extend the term of a Belgian or European patent for medical and plant protection products through an SPC, if a marketing authorisation has been granted under certain conditions described below. This has been introduced to (at least partially) remedy the loss of effective protection during the time needed to obtain market authorisation for such products.

The SPC legislative framework is harmonised at the EU level. An SPC is a national title granted by the local IP office of the EU Member State that granted the basic patent as well as a market authorisation. The requirements for granting an SPC are as follows: at the date of application of an SPC, the product must be covered by a basic patent, a valid market authorisation (ie, the first authorisation to put the product on the market as a medicinal or plant protection product) must have been granted, and it must be the first time that the product is subject to an SPC.

An SPC has a term of protection starting at the date of expiry of the patent and equal to the time that elapsed between the filing of the basic patent application and the date of the first market authorisation (ie, according to currently prevailing Court of Justice of the European Union (CJEU) case law, the date that the decision has been communicated to the applicant) reduced by five years and with a maximum of five years. In certain cases, another six-month extension is available for medicinal products for paediatric use.

There is no possibility of submitting third-party observations during the grant procedure for a Belgian patent, but a third party may file revocation/cancellation proceedings against the Belgian patent in court (see 4.1 Reasons and Remedies for Revocation/Cancellation).

Following the publication of a European patent application, any person may submit third-party observations free of charge to the EPO in English, French or German, setting out the grounds on which it believes that the invention is or is not eligible for patent protection (while not becoming a party to the proceedings, as opposed to opposition proceedings). 

A person other than the applicant or holder may also file a written notice of opposition with the EPO against a European patent (application) up to nine months after the publication of its grant in the European Patent Bulletin, based on a number of opposition grounds (ie, the invention not being eligible for patent protection, the European patent not disclosing the invention in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art, or the subject matter of the European patent extending beyond the content of the application as filed). In such a case, an opposition fee of EUR785 (at the date of this report) would be due.

Following the publication of a PCT patent application and prior to the expiration of 28 months from the priority date (provided that the application is not (considered) withdrawn), a third party may submit observations to WIPO, free of charge, explicitly referring to prior art which he or she believes to be relevant for the assessment of inventive step or novelty (including at least one citation of any relevant prior art documents). The applicant will be notified of the comments and may comment thereon until the expiration of 30 months from the priority date. Third-party observations may be taken into account for the international search report and international preliminary examination, if they have been received in due time (to review them for the drawing up of said reports) and provided that they contain a copy of or an easily retrievable reference to relevant prior art. The observations will also be transmitted to the designated patent offices upon entry into the national phase, but those offices are not obliged to take the observations into account.

OPRI may only refuse to grant a Belgian patent if certain formal requirements are not fulfilled, in which case the applicant can – in some cases – re-establish his or her rights or regularise the procedural defect(s). As set out above, the grant of a Belgian patent does not depend on the outcome of any substantive patentability searches (see also 1.2 Grant Procedure). Therefore, only revocation/cancellation proceedings and the patent owner’s defence strategy in that respect have any practical relevance for a Belgian patent.

An applicant whose European patent application has been refused may file an appeal against that refusal decision at the Board of Appeal (BoA) of the EPO within two months of the notification of the refusal decision, which shall have suspensive effect. A fee for appeal of EUR1,880 (at the date of this report) will be due. A statement of grounds should be filed within four months of the notification of the decision. If the examining division that refused the European patent application considers the appeal to be admissible and well founded, it should rectify its decision within three months of receiving the statement of grounds.

If the examining division does not rectify its refusal decision and the BoA finds the appeal to be admissible and well-founded, it may decide either to reverse the refusal decision itself or to send the case back to the Examining Division for further prosecution (which shall be bound by the decision of the BoA). Any party adversely affected by the decision of the BoA may file a decision for review of said decision with the Enlarged Board of Appeal for fundamental procedural defects or, if a criminal act may have had an impact on the decision, within two months of the notification of the decision of the BoA (or the date on which said criminal act has been established and no later than five years from the notification of the BoA decision), which shall not have a suspensive effect. A fee for review of EUR2,910 (at the date of this report) should be paid. If the petition is found to be admissible and well founded, the initial decision of the BoA shall be set aside, and proceedings before the BoA shall be reopened.

A PCT applicant may file a request for review with a designated patent office in respect of certain decisions made during the international phase (ie, in the case of refusal to accord an international filing date due to defects in the application; if the application is considered to be withdrawn due to defects in the application or non-payment of the office fees; and if the application is considered to be withdrawn due to lack of receipt of the record copy within the prescribed time limit). Decisions are subject to review by each designated patent office specified by the applicant, which will essentially need to verify whether there was an error or omission in the international phase. The applicant should file the request for review at WIPO and separately with each of the specified designated offices within two months from the notification date of the respective decision (any required office fees should be paid and translations submitted within the same period of time). The designated office(s) will then decide whether the decision made during the international phase was justified, maintaining the effect of the PCT application as a national application if it concludes that an error or omission has occurred. A designated office may decide to pursue the national application even if there were no error or omission (eg, if it grants the applicant's request to excuse a delay to meet a time limit).

Failure to pay the maintenance fees of a Belgian patent by the due date (ie, the last day of the same month as the anniversary of the filing date) can be remedied by paying the outstanding maintenance fees (amounts set out in 1.3 Timeline for Grant Procedure) and a surcharge (EUR85 until the tenth year after the application date of the patent and EUR230 from the eleventh year) within a grace period of six months from the due date (Article XI.48, §1 CEL). If the maintenance fees and surcharge are not paid during the grace period, the patent will automatically lapse as of the date on which the unpaid maintenance fees became due (Article XI.48, §2 CEL).

See 2.3 Courts with Jurisdiction for an overview of the competent courts in Belgium and some basic procedural aspects, and 2.5 Prerequisites to Filing a Lawsuit.

Under general civil law rules, a patent-owner may rely on a variety of actions to enforce its rights, including a procedure on the merits (either regular proceedings on the merits or a so-called fast-track procedure that is conducted 'as in summary proceedings', nevertheless still triggering a decision on the merits) and summary proceedings (triggering a preliminary injunction only, from Article 584 of the Judicial Code). Separate from or prior to launching these inter partes proceedings, the patent-owner may also decide to initiate ex parte or unilateral proceedings to obtain a preliminary injunction (Article 584, 4th para of the Judicial Code), or so-called descriptive seizure proceedings (Article 1369 bis/1 and following of the Judicial Code). See also 2.7 Interim Injunctions, below.

Under certain conditions, a patentee may also invoke either criminal law (ie, if an infringement is committed with malicious or fraudulent intent), essentially bringing the matter to the attention of the public prosecutor’s office or the investigating magistrate, or Regulation (EU) 608/2013 of 12 June 2013 concerning customs enforcement of intellectual property rights (establishing specific procedures relating to the interception and the destruction of counterfeit goods entering the EU).

The basic underlying right to enforce a patent can be found in Article XI.29 of the CEL, which states that infringement proceedings may be brought by the patent-holder against a third party if the latter commits any of the following acts of (direct) infringement on the Belgian territory without the consent of the patent-holder:

  • the manufacturing, offering, bringing to market or use of a product that is the subject-matter of a patent, or the importation or storage of a product for such purposes;
  • the application of a patented process or the offering of a patented process for application on the Belgian territory; or
  • the offering, bringing to market or use of a product directly obtained from a patented process, or the importation or storage of a product for such purposes.

Patent infringement proceedings can also be launched in relation to alleged 'indirect' infringement acts (ie, acts that contribute to direct patent-infringement by a third party), provided that certain conditions are met (as set out in Article XI.29 §2 of the CEL).

See 2.3 Courts with Jurisdiction for an overview of the competent courts in Belgium and some basic procedural aspects, as well as 4 Revocation/Cancellation.

A defendant in infringement proceedings will generally want to challenge the validity of the patent or argue that it is not infringing the patent right(s) invoked. The latter can be done by asserting that there is no reproduction of the essential features of the invention (as included in the claims, supported by the description and the drawings, if any) or that the challenged acts cannot otherwise be qualified as infringing under Article XI.29 of the CEL (see 2.1 Actions Available Against Infringement).

As none of the patent-owner’s rights are absolute, a (possible) defendant may also rely on any of the limitations to the patentee’s rights as set out in Article XI.34 and following of the CEL. This includes the inability of the patent-holder to enforce its rights against a party that has applied the patented invention within the confines of what is referred to as 'private and non-commercial use'. Belgian law also includes a research or so-called Bolar exemption, allowing third parties to perform certain acts on or with the subject matter of a patented invention for purely scientific purposes. The CEL also refers to specific acts that can no longer be prohibited because of the patent rights of the patentee having been exhausted (following its authorising a patented product to be put on the market in a specific jurisdiction). Finally, a defendant may also be in a position to rely on the 'prior personal use or possession' exception if applicable to the Belgian territory (Article XI.36 of the CEL).

In general, the aforementioned defence strategies are open to a defendant in response to a plaintiff enforcing its rights, or upon such defendant proactively applying to (the president of) the court for a declaration that any given act does not constitute infringement. 

As in any other civil procedures, either party initiating litigation before a court of law will need to establish that it has proper standing to be able to do so (Article 17 of the Judicial Code). 

Article XI.337 of the CEL provides for the exclusive jurisdiction of the Enterprise Court of Brussels (even in cases where the parties are not business people) to adjudicate matters relating to patent rights and SPCs, in first instance.

This exclusive jurisdiction is subject only to arbitration tribunals, which are still allowed to rule on disputes relating to the ownership of a patent right, the validity or infringement of a patent, or in relation to the determination of specific licensing awards with respect to said patents (other than compulsory licences). 

The Brussels Court of Appeal enjoys exclusive jurisdiction at the appeals level. In specific circumstances, an extraordinary appeals procedure may be lodged before the Court of Cassation (see 7.1 Special Provisions for Intellectual Property Proceedings).

A court’s bench ruling in first or second instance consists of either one or three judges. Judges sitting in on IP matters in Belgium are legally trained but tend to have no specific scientific or technical background, so frequently engage independent experts to perform fact-finding investigations or give technical opinions.

The exclusive jurisdiction set out above is without prejudice to the future competence of the Unified Patent Court when installed and operating, pursuant to the Agreement on a Unified Patent Court.

As Belgium is one of the parties that has adhered to the Agreement on a Unified Patent Court, there have been calls to set up a local division in the Brussels Enterprise Court, which would also be able to handle cases in several languages. At the time of this report, the creation of such a local division had not yet been confirmed.

As set out above, IP matters in Belgium are conducted before specialised courts (see 2.3 Courts with Jurisdiction).

Alternative dispute resolution (ADR), including mediation and arbitration, can be used for the resolution of patent disputes, but in practice this only rarely happens (see 9 Alternative Dispute Resolution).

There are a few institutions (other than specialised courts) with certain expertise in the field of resolving patent disputes, eg CEPANI (ie, the Belgian institution for arbitration and mediation), WIPO Arbitration and Mediation Center and International Chamber of Commerce.

In general, the Judicial Code governs the conduct of civil litigation before the Belgian courts. As a rule, a claim is filed with the court by way of serving a writ of summons on the defendant by a bailiff on behalf of the plaintiff. Alternatively, in such instances as allowed by law, a petition can be filed or a voluntary appearance of the parties can be organised.

When a writ of summons is served in Belgium, the normal period of notice to appear in court is eight days. This means that the period of time between the day on which the writ of summons is served and the so-called introductory hearing at which the defendant must enter a formal appearance may not be shorter than eight days (save for summary proceedings, in which case it is two calendar days). If the writ is filed outside Belgium, the default eight-day period is extended by 15 days if it is served in France, Luxembourg, The Netherlands, Germany or the UK; by 30 days if it is served in other European countries; and by 80 days if it is served in another part of the world. 

In cases of urgency, the plaintiff may file a request with the president of the court to have this legal period of notice reduced. In all instances, compliance with the legal period of notice is prescribed under penalty of nullity.

Any writ of summons (or petition) must include details of the plaintiff(s) and the defendant(s), the statement of facts and the legal basis of the claim.

The above is applicable to both infringement claims and proceedings relating to the validity of a patent. A defendant may also introduce his or her own request for relief by filing a counterclaim (typically challenging the validity of the patent and denying infringement). If the parties have initiated separate but related proceedings, the court may decide to join them if they are sufficiently related and if dealing with them separately could lead to irreconcilable decisions.

In general, there is no obligation for a plaintiff to send a cease-and-desist letter to the alleged infringer before launching legal action. In certain circumstances, issuing a similar warning letter would rather defeat the purpose of the application or the urgency of the application. If a party makes an unjustified threat of patent infringement, however, this may potentially trigger the liability of the patent owner under general tort law principles (Article 1382 of the Civil Code).

Belgian law does not generally prohibit parties from defending themselves, but only lawyers (attorneys at law) may appear before the Belgian courts in first and second instance (Article 440 of the Judicial Code), and only a selection of qualified lawyers may represent clients before the Court of Cassation in civil matters (ie, file a petition or pleadings in reply). 

In contentious patent matters, lawyers usually act in close collaboration with specialised patent attorneys who have particular expertise in the technical or scientific nature of the matter.

A plaintiff has a number of options to obtain an interim injunction (preliminary or interlocutory relief), either through proceedings that qualify as ex parte (ie, descriptive seizure or summary proceedings) or inter partes. The most frequently applied for ex parte proceedings are set out below.

In order to request a descriptive seizure merely to obtain evidence of an alleged infringement (ie, a “light” descriptive seizure), a plaintiff needs to demonstrate to the president of the court the prima facie validity of the underlying patent right, and that there are prima facie indications of infringement or imminent infringement of said patent right (Article 1369 bis/1 §3 of the Judicial Code).

There has been much debate recently as to the construction of both prima facie conditions under Belgian law. Following recent case law by the Court of Justice of the European Union, as well as the Belgian Court of Cassation, it is now largely accepted that (the Belgian equivalent of) a European patent should be considered prima facie valid upon it being granted, notwithstanding opposition or invalidity proceedings pending (ie, even if invalidity was already upheld at first instance in a local court or before the opposition division of the European Patent Office). If there is an appeal pending, it is held that the court ruling on a request for descriptive seizure will first have to make an assessment as to the likely chances of the patent-owner prevailing in such an appeal (considering, among other matters, the level at which the patent is challenged, the instance of the court at which the validity is being challenged, the scope of protection of the patent, the content of the file submitted before the court, the legal approach taken locally and abroad, and any other factual and procedural issues raised between the parties).

If the applicant would also like to secure the attachment of any alleged infringing products (ie, apply for a 'full' descriptive seizure), on top of any purely descriptive measures, the conditions are even more stringent. The applicant would need to show:

  • the prima facie validity of the underlying patent right;
  • that there are no prima facie grounds to dispute infringement; and
  • that there is a reasonable justification for any of the measures requested, in view of the legitimate interests of all parties involved (Article 1369 bis/1 §5 of the Judicial Code). 

The court may order the applicant to provide a guarantee, at any time, in order to compensate the defendant for any possible damages in case proceedings on the merits eventually result in a finding of non-infringement. Proceedings on the merits become time-barred if the applicant does not in time (generally within a period of 20 working days or 31 calendar days following the filing of the expert report confirming the findings of the descriptive seizure) initiate such proceedings on the merits. 

A plaintiff may also initiate ex parte proceedings under Article 584, paragraph 4 of the Judicial Code, in which case it needs to show urgency, and any of the measures applied for need to satisfy the 'absolute necessity' test. A court may award interlocutory relief if it considers that launching inter partes proceedings would defeat the purpose of any of the measures requested. In this type of proceedings, a plaintiff may essentially request the appointment of an expert, the ordering of such measures necessary to safeguard any of the parties’ interests, and that one or more witnesses are heard.

If a defendant believes that he or she may be confronted with a descriptive seizure or similar measures as set out above, he or she may file a protective letter with the President of the Brussels Enterprise Court, explaining why he or she believes that granting any such measures would be ill-founded, or at least requesting to be heard prior to the president deciding on a possible request for any such measures. 

Even though the practice is not specifically provided for under Belgian judicial law, the Brussels Enterprise Court appears to accept the filing of similar protective letters on behalf of potential defendants, and holds a basic register for future reference. It is best practice to have the (sealed) explanatory note accompanied by a separate letter addressed to the president of the court, informing the latter that the note should not be opened unless a request for descriptive seizure is filed.

If a defendant is confronted with a descriptive seizure award, third-party opposition proceedings may be launched in order to challenge the legal conditions of such a seizure being met. Such proceedings need to be filed within one month of the descriptive seizure award being served upon the defendant. At the same time, the defendant may request the plaintiff to provide a guarantee (if this has not already been required by the court issuing the award) or to limit the scope of the award in general or the fact-finding mission of the expert in particular.

At any time during proceedings, either party may also invoke Article 19 of the Judicial Code to request the president of the court to order a preliminary measure (to the extent not prejudicial to the merits of the case) or to review any claims filed and handle any interim disputes between the parties.

Article XI.61 of the CEL provides that patent rights can no longer be enforced, so that any related claim becomes time-barred after the expiry of a period of five years from the date on which the infringement has occurred.

The fundamental principle with regard to the onus of proof is that each party has the onus of proof of the facts it alleges, although the court has certain powers to order the production of particular pieces of evidence.

First, the court may order a litigating party to produce the elements of evidence that it possesses (Article 871 of the Judicial Code). It may specifically order a party – or even a third party – to produce a document that contains the proof of a relevant fact if there are serious, precise and concurring presumptions that the party concerned is in possession of this document. In certain matters, the court may request the public prosecutor’s office to gather evidence on any points of fact it indicates.

Except for the basic principles set out above, there is therefore no discovery under Belgian procedural law. The evidence produced before the court is, in most cases, the documentary evidence that is communicated between the parties during the instruction of the case. Documents cannot be subpoenaed at will or on the request of other parties, except within certain strict limits. 

As discussed in 2.7 Interim Injunctions, above, a plaintiff may lodge a petition for descriptive seizure with the president of the Brussels Enterprise Court. In that case, the plaintiff may request a court-appointed expert to search the premises of the defendant and copy any documents (or, in the case of a “full” descriptive seizure, even proceed together with a bailiff with the attachment of any allegedly infringing products), to the extent the expert considers this to be relevant in order to corroborate its findings.

See 2.5 Prerequisites to Filing a Lawsuit for more details regarding the initiation of a procedure in Belgium.

The Judicial Code generally allows an original claim to be extended or modified by contradictory pleadings (although this is not normally admissible in default proceedings, nor by way of oral statement at a hearing). The right to extend or modify the original claim includes the right to change the legal ground of the action.

Belgium introduced the possibility of launching class actions or group actions through the adoption of the Act on Claims for Collective Redress of 28 March 2014. This Act is rather limited in scope and does not provide for a general class action open to every single market-player and individual, as is the case in other legal systems, including the USA. Considering its current scope, it is less likely to be relied upon in connection with intellectual property-related claims.

First, only consumer rights are protected (ie, rights of natural persons who are acting for purposes unrelated to any trading activities, business, craft or profession), although access to collective actions has been extended to small and medium-sized enterprises since 1 June 2018. Second, a class action can only be initiated against undertakings, and not against other consumers or public authorities. Third, a claim for collective redress will only be admissible if the damage suffered by the consumers or the small and medium-sized enterprises (SMEs) was the result of a breach by the undertaking of either its contractual obligations or the provisions of one of the national or European laws and regulations that are exhaustively listed in the Act. This list includes laws and regulations on the protection of competition, market practices and consumer protection, price evolution, payment and credit services, intellectual property, liability for defective products, data protection, electronic communications, the sale of financial products, pharmaceuticals regulation, etc. All other claims by consumers against undertakings fall outside the scope of application of the Act (including claims based on extra-contractual grounds for breach of a general duty of care or of any other legal provisions that do not appear in the aforementioned list).

See 4 Revocation/Cancellation, below on the possible means of defence against an infringement claim.

In addition, subject to specific conditions applying, a defendant may be able to rely on particular laws and regulations relating to local unfair market-practices legislation (including those included in Book VI of the CEL), competition legislation (including abuse of dominant position), abuse of rights (including tort law) or certain fundamental freedoms (including freedom of trade and freedom of movement of goods or services).

An action for infringement should be launched against the person or entity that committed any of the acts of direct or indirect infringement described in 2.1 Actions Available Against Infringement, above. In some cases, a third-party intermediary whose services have been used to infringe patent rights, the possessor or user of the infringing products on a commercial scale or the supplier on a commercial scale of the services used to commit patent infringement may also be summoned to appear in court.

It follows from Article XI.60, §2 of the CEL that both the owner and the usufructuary of a patent may separately launch an infringement claim in court. Also, the holder of a compulsory licence and (if not contractually excluded) the exclusive licensee has the required standing to take court action against an infringer if the owner or usufructuary fails to take court action after having been notified by the licensee of the infringement. A non-exclusive licensee may only intervene in proceedings launched by the patent-owner or usufructuary to obtain compensation for damages incurred by it, and does not have a self-standing right to launch court proceedings against an infringer.

See 2.1 Actions Available Against Infringement for the concepts of direct and indirect infringement, and 6.1 Remedies for the Patentee for available remedies.

In Belgium, an action for infringement of a patent may equally be launched against a person committing direct or indirect infringement (see Article XI.60, §1 of the CEL). Indirect infringement is considered to be an autonomous infringement ground and is not dependent on the finding of a direct infringement.

The scope of protection of a patent is essentially determined by its claims and supported by the description and the drawings, if any. The principle of strict (narrow) construction applies, since patent rights are an exception to the freedom of trade. There is, however, one exception to this principle of strict construction: the equivalence doctrine, according to which the scope of protection of the patent claims should also cover any technical equivalents that are apparent for a person skilled in the art.

See 2.2 Third-party Remedies to Remove Effects of Intellectual Property Right for the various defences that an (alleged) infringer may invoke. 

The main defences available are related to invoking the invalidity of the patent and claiming non-infringement. The alleged infringer may also invoke expiry of the patent, lack of entitlement to the relevant patent rights, the various exceptions discussed at 2.2 Third-party Remedies (private and non-commercial use, Bolar, exhaustion, prior personal use or possession), statute of limitations or abuse of rights. Alternatively, the alleged infringer may also invoke the so-called 'Gillette' defence (which may be of particular use in cease-and-desist proceedings), whereby the alleged infringer asserts that he or she merely applied the prior art existing at the application or priority date of the invoked patent, implying that the invention covered by the patent is not new or inventive (without, however, invoking the patent’s invalidity) or that the alleged act of infringement falls outside the scope of the patent.

See 5.2 Decision Makers, with respect to the involvement of experts in court proceedings.

Experts may be entrusted with a fact-finding mission or requested to draw up a technical report. An expert may be appointed by the court (at the request of one of the parties or in some cases of its own motion), or (one of) the parties may request the (private) assistance of an expert at their own initiative.

There is no separate procedure for the construction of the claims of a Belgian patent. Discussions with respect to the construction of a patent usually arise in the framework of infringement and validity proceedings. Alternatively, parties may appoint a third-party decider to resolve any interpretation issues between them. In any case, such decision(s) only have an effect inter partes and do not bind any future courts, other instances or any third parties.

Article XI.57 §1 of the CEL provides the following legal grounds upon which a court may revoke or cancel a granted patent:

  • if the (subject matter of the) patent does not meet the essential criteria for patentability (ie, cumulatively requiring novelty, inventive step and capability of industrial application, as per Articles XI.3, XI.6, XI.7 and XI.8 of the CEL) or is not eligible for patent protection (eg, if the claimed invention can be considered contrary to public policy or morality, as set out in Articles XI.4 and XI.5 of the CEL);
  • if the patent does not allow the underlying invention to be disclosed in a sufficiently clear and complete way for it to be properly applied by a person skilled in the art;
  • if the subject matter of the patent is not covered by the content of the application as filed (or by the content of the original application as filed, in case of divisional patent application(s)); or
  • if the patent-owner was not entitled to the patent (if the owner is not the inventor, or is not entitled to the invention through law or contract), as per Article XI.9 of the CEL.

A patent can be revoked or cancelled in whole or in part, as per Article XI.57 §2 of the CEL, which states that: “Should the grounds for revocation only partially affect the patent, the patent will be modified by a corresponding amendment of the claims, and if necessary, the description and the drawings, and revoked in part. The amendment will need to be recorded at the registry.”

The CEL also provides that the patent cannot be amended by means of a revocation or cancellation if such would result in the subject matter of the patent reaching beyond the content of the patent application as filed (Article XI.57 §3, first part of the CEL). Finally, the patent cannot be amended by means of a revocation or cancellation if doing so would extend the coverage of protection compared to the latest enforceable version of the patent (Article XI.57 §3, second part of the CEL).

See 4.2 Partial Revocation/Cancellation.

As per Article XI.56 of the CEL, a patentee can personally withdraw the patent (in whole or in part) at any time (ie, during proceedings and following a claim for (partial) revocation or cancellation).

See 2 Initiating a Lawsuit, above on the rules governing court litigation in Belgium and the initiation of a procedure. 

Issues of infringement and validity are almost always litigated in the same proceedings (ie, there is no system of bifurcation in Belgium). If both types of proceedings would nevertheless have been filed separately, they are likely to be joined in order to avoid decisions that would be irreconcilable.

As noted in 2 Initiating a Lawsuit, above, the Judicial Code governs the conduct of civil litigation in Belgium. Specific procedural provisions are set out in the Judicial Code or the CEL for particular types of proceedings (including the IP-specific descriptive seizure proceedings).

Jury trial is not available for intellectual property-related matters in Belgium.

The judges presiding over IP matters hold a law degree but are normally not scientifically trained. As patent-related court matters have been dealt with by a particular court in Brussels for a few years, the relevant seat has become much more specialised (both in first instance and at appeals level), allowing it to adjudicate in more technical and complex matters.

Should specific issues come up that require particular scientific, technical or financial expertise, a judicial expert may be appointed (the parties may have some say in this appointment, but the expert is ultimately designated by and only accountable to the court), so that the court can be advised on particular non-legal aspects of a certain matter. Although this is not normally the case, the court may also want to inquire into the views of a particular expert (or witnesses or experts offering views on behalf of any of the parties) during the oral presentation of the case.

Belgium does not have any mandatory or formal mechanisms to settle a court case, outside of the parties being able to trigger a final decision by the court. This is left entirely to the parties, who may want to enter into a settlement and release arrangement at any time (subject only to that agreement not violating public order).

As mentioned in 4.4 Revocation/Cancellation and Infringement, Belgium does not apply the bifurcation principle.

Because of the EPC system, to which Belgium is a party, it is nevertheless inherent that parallel proceedings can exist (infringement and revocation or cancellation), whether in a different jurisdiction or at the level of the EPO (opposition division or board of appeal). While only national courts may rule on infringement issues, (in)validity issues may be raised before several instances (either courts, arbitration panels or opposition divisions and boards of appeal).

Although Belgium used to be a popular forum to trigger so-called torpedo actions, the possible impact of such proceedings has decreased significantly. Article 31(2) of the Regulation (EU) No 1215/2012 of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Brussels I Recast Regulation) provides that: “Where a court of a Member State on which an agreement as referred to in Article 25 confers exclusive jurisdiction is seized, any court of another Member State shall stay the proceedings until such time as the court seized on the basis of the agreement declares that it has no jurisdiction under the agreement.” Any court that has been appointed as a result of an exclusive jurisdiction clause may continue to handle the case without waiting for the court first seized to stay the initial proceedings. 

See 2.1 Actions Available Against Infringement, above for the various procedures that may be launched in an alleged infringement of patent rights.

The person entitled to launch court action (see 3.1 Necessary Parties to an Action for Infringement) disposes of several remedies in the case of patent infringement. He or she may claim injunctive relief in order to ensure that the infringer ceases and desists from (further) engaging in infringing activities (often combined with a claim to impose a penalty payment in case of non-compliance with the injunction), and may also claim damages (except in cease-and-desist proceedings) and reimbursement of lawyers’ and court fees (see 8.3 Responsibility for Paying Costs of Litigation).

The court may also order certain additional or ancillary remedies, namely recall, removal or destruction of the infringing products, obligation to disclose the origin and distribution channels of the products, publication of the decision (or a summary thereof) and release of the products or descriptive seizure in the case of infringement on a commercial scale.

In cases of bad faith, the court may order the handover of profits derived from the infringing activities. It may also order the forfeiture of the products that have been manufactured in violation of the patent rights and of the tools that have been used for manufacturing the same. In criminal cases only, the court may also fully or partially close an establishment or issue a prohibition to exercise certain commercial activities.

Once infringement or bad faith have respectively been established, the court has little or no discretionary margin to order the claimed remedies (eg, injunctive relief), but may assess the efficacy and proportionality of the claimed remedies, particularly with respect to certain ancillary remedies (eg, publication measures).

See 8.3 Responsibility for Paying Costs of Litigation, on the reimbursement of attorney and court fees.

Apart from the reimbursement of attorney and court fees, in some cases the prevailing defendant may also claim compensation for reckless and vexatious proceedings (based on Article 1382 of the Civil Code).

All available remedies have been described in 6.1 Remedies for the Patentee.

Following a recent change to the Judicial Code, decisions at first instance are generally enforceable notwithstanding appeal. Lodging an appeal will no longer automatically stay the enforcement of the appealed decision. The patent-holder may therefore be allowed to (continue to) enforce the injunction obtained at first instance pending an appeal, but may in some cases be required to provide a guarantee in order to compensate for damages that the alleged infringer would incur if the patent were to be declared invalid in appeal proceedings.

Provided the amounts at stake exceed the (low) limits set by the Judicial Code, appellate remedies allow parties to the proceedings (and in some cases even third parties) to submit to a court a case on which a judgment has already been given. 

An appeal is generally available in relation to any kind of decision (either interlocutory or final). The Judicial Code distinguishes between two main categories of appellate procedures, namely ordinary and extraordinary appellate proceedings.

Ordinary appellate proceedings comprise appeal and opposition (ie, an appeal against a default judgment). As a rule, ordinary appellate remedies are available to the parties in all cases without prior leave by a court. As explained above, decisions at first instance are now generally enforceable notwithstanding appeal. Lodging an appeal will therefore no longer automatically stay enforcement of the appealed decision.

Extraordinary appellate procedures comprise the petition for cassation, third-party opposition, request for withdrawal of decision, and an action for damages against judges. The petition for cassation (lodged before the Belgian Court of Cassation) is not a second appeal, but an appellate procedure that aims to review only the legality and the formal regularity of the judgment under appeal. Extraordinary appellate procedures are generally only permitted under specific conditions provided for by law. Initiation of those proceedings does not stay enforcement, except where otherwise provided by law. 

Ordinary appellate procedures are generally de novo, which means that the court before which such procedures are brought has the power to review the case fully in fact and in law. The appellate court is not bound by the facts established in the first instance judgment that is under review, and may indeed also require additional evidence. The parties are also allowed to raise new arguments. They may even extend the original claim or modify the legal basis of the claim (also, a counterclaim may be filed for the first time at the appellate level), provided that it is based on facts that are recited in the original writ of summons.

Costs arising before filing a lawsuit are mainly related to the involvement of lawyers, patent attorneys and experts, who will need to gather all relevant information, assess the merits of a case and engage in relevant pre-litigation actions (eg, sending notice letters or filing protective briefs).

Court fees are fixed in Belgium and the amounts vary depending on the competent court and the stage of the proceedings (first instance or appeal) at stake.

Articles 851 and 852 of the Judicial Code provide that a foreign applicant or intervening party is obliged, in case the defendant is Belgian and claims this before any other exception, to provide a guarantee to compensate all costs and damages that the foreign applicant or intervening party may be ordered to pay in the framework of civil court proceedings. Exceptions to this rule apply if dispensation has been granted in a treaty or in other specific circumstances (eg, proof that the foreign applicant or intervening party has immovable or other seizable properties in Belgium).

For any cases with an introductory hearing as of 1 February 2019, the fixed registry fee is no longer due upfront when the case is entered on the docket, but becomes due and payable by the losing party once a final decision has been issued (or shared among the parties in case both parties prevail on a different point at issue as per the court’s decision) or by the claimant if the case has been removed from the docket.

Costs and fees arising in the course of the proceedings are generally collected while the proceedings are pending. The party claiming certain investigation measures may be ordered to (partially or fully) advance any costs or fees that may be due or form a reserve in that respect, eg, in case of the appointment of an expert or the hearing of a witness, and the other party may in some cases be ordered to contribute to that.

Belgian legislation provides that a party losing a court procedure needs to pay its own expenses and attorneys’ fees, and is required to pay the court fees, expenses and a lump sum compensation for the attorneys’ fees incurred by the prevailing party (Article 1017 and following of the Judicial Code).

If the value of the claim can be determined, that lump sum compensation for lawyers’ fees increases depending on the value of the claim (from a basic amount of EUR180 for claims below EUR250 and up to EUR18,000 for claims above EUR1,000,000.01). If the value of the claim cannot be determined, a fixed lump sum compensation of EUR1,440 will be awarded. 

In both cases, the court may decrease or increase the lump sum compensation without exceeding certain minimum and maximum amounts, depending on the financial strength of the losing party (only to lower the amount), the complexity of the case, the contractually determined amounts for compensation of the losing party or the clearly unreasonable nature of the case (eg, using the amounts set out before: the basic amount of EUR180 may be lowered to EUR90 and raised to EUR360, the basic amount of EUR18,000 may be lowered to EUR1,200 and raised to EUR36,000, and the basic amount of EUR1,440 may be lowered to EUR90 and raised to EUR12,000).

In the United Video Properties/Telenet case, the CJEU held that the thresholds determined in the Belgian legislation should at least allow the prevailing party to recover from the unsuccessful party an appropriate and significant part of the reasonable costs incurred. This follows from Article 14 of Directive (EC) 2004/48 of 29 April 2004 on the enforcement of intellectual property rights (IPRED), which states that reasonable and proportionate legal costs and other expenses of the prevailing party should be borne by the unsuccessful party. Based on Article 14 of the IPRED, the CJEU also held that the reimbursement of expert costs that are closely and directly linked to a court procedure seeking to uphold an intellectual property right should not be provided for only in the case of a wrongdoing by the unsuccessful party (as was previously the case according to the case law of the Belgian Court of Cassation).

Notwithstanding the above judgment of the CJEU, the referring court (ie, the Antwerp Court of Appeal) decided in this particular matter that it could not set aside Belgian legislation on compensation for lawyers’ fees (ie, fixed lump sum compensation) and omitted to answer the question of whether the prevailing party was able to recover from the unsuccessful party an appropriate and significant part of the reasonable lawyers’ fees incurred. The Court of Appeal did, however, order full reimbursement of expert costs in line with the CJEU judgment that no wrongdoing of the unsuccessful party was required in this respect.

Due to the fact that IP matters in Belgium are conducted before specialised courts (see 2.3 Courts with Jurisdiction), there seems to be less of a need to look into ADR, including mediation and arbitration. Arbitration may still be relied upon if a certain matter requires expertise in a specific field of law, science or technique, or if confidentiality is of particular importance to the parties involved.

The Judicial Code offers parties the possibility to enter into an arbitration agreement, either before or after the dispute has arisen. Arbitration agreements must be made in writing. In general, the only recourse against an arbitral award with the courts is an action for annulment, which must be brought before the court of first instance. 

The assignment of a Belgian patent or patent application should take place in writing, on penalty of being null and void. In order to invoke the assignment vis-à-vis third parties, such assignment should be recorded in the patent registry of OPRI, and supporting evidence should be filed (full agreement or short-form confirmatory agreement).

The assignment of European patent applications can be recorded with the EPO, provided that the relevant party files a written request together with supporting evidence (full agreement or short-form confirmatory agreement), and that an administrative fee of EUR 100 per patent application is paid.

See 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights, with respect to assignment requirements.

The grant of a licence to use (fully or partially) a Belgian patent or patent application should take place in writing, on penalty of being null and void. Such a licence may relate to Belgium as a whole or only part of it, and can be exclusive or non-exclusive. To invoke the licence vis-à-vis third parties, the licence should be recorded in the patent registry of OPRI, and supporting evidence should be filed (full agreement or short-form confirmatory agreement).

The licence over a European patent application can be recorded centrally with the EPO up until the day before the publication of the grant in the European Patent Bulletin, provided that a written request is filed together with supporting evidence (full agreement or short-form confirmatory agreement), and that an administrative fee of EUR100 per European patent application is paid. After publication of the grant of the European patent, recordal of the licence is only possible with each of the relevant national offices designated in that patent.

See 10.3 Requirements for Restrictions to License an Intellectual Property Right, with respect to licensing requirements.

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Linklaters is a leading international law firm, and has advised on significant deals in over 100 countries. In addition to serving clients from its 30 offices and via its alliance with Allens and Webber Wentzel, Linklaters’ lawyers have expertise in key jurisdictions across emerging Europe, the Middle East, Asia and Africa. In Belgium, Linklaters is recognised as a market-leading law firm, with a presence in the Belgian market dating from 1969 and with offices in both Brussels and Antwerp. Its wide offering of specialised practices, ranging from corporate and banking to IP/TMT and tax, means that the firm provides market-leading advice across the full spectrum of legal specialities.

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