Patent Litigation 2021 Comparisons

Last Updated February 15, 2021

Law and Practice

Authors



Advokatfirman Vinge KB is unique in the Swedish market in providing a genuine full-service IP offering within three key areas: contentious, non-contentious and prosecution (patent prosecution in collaboration with patent agency firms). Patent litigation is one of the key practice areas and involves disputes within the telecoms, pharmaceutical, med-tech, chemical and mechanical areas. Vinge’s IP team consists of approximately 25 lawyers based in Stockholm, Gothenburg and Malmö, and is engaged in infringement and invalidity disputes, often with an international character. Vinge is involved in large pan-European litigations where the members of the team work closely with internationally eminent patent law experts. The team is also experienced in disputes relating to patent title, compensation to inventors and disputes arising from patent-related commercial contracts (arbitration and litigation). The firm's full-service concept often results in the IP team working closely with the Vinge's experts in EU and competition law, dispute resolution and life sciences.

In Sweden, inventions are protected through the possibility of applying for a patent that gives the patentee an exclusive right to exploit the invention (a so-called negative right). 

Information concerning an invention that has not yet been patented, or which for some reason cannot enjoy patent protection, or is not appropriate for patent protection, can enjoy protection as a trade secret. In order to be protected as a trade secret, the information concerning the invention must fulfil certain criteria, including being kept secret and being deemed as important to the company’s business such that it would be detrimental to the company if the information were disclosed. 

Protection for inventions and trade secrets is primarily governed by statute, although the details of protection conferred have been developed through case law.

Patents

The exclusive right for an invention arises through a patent being granted and thereby registered. A patent application can be made:

  • nationally;
  • throughout Europe, pursuant to the European Patent Convention (EPC); or
  • internationally, pursuant to the Patent Co-operation Treaty (PCT).

For the two latter options, the application is made to the European Patent Office (EPO) or the World Intellectual Property Organization (WIPO) and, following an initial examination, the applicant may choose to designate Sweden as one protected country. The application is then transferred to the national regulatory authority for the necessary steps to move the application forward. The application authority in Sweden is the Swedish Patent and Registration Office (PRO), for both national and foreign applications. Irrespective of the form in which the application is made, a granted patent results in a national Swedish patent registration.

Swedish patent grant procedure

The national application procedure includes a formal and a technical examination; the same also applies to EPC applications, where the application is processed by the EPO.

The initial, formal examination is based upon whether the application is complete and whether the application fee has been paid. Any deficiencies in these respects must be rectified before the technical examination of the invention can be commenced. The subsequent technical examination is based upon whether the invention is patentable – ie, whether it is novel, may be subject to industrial application and involves an inventive step. Inventions whose commercial exploitation would violate public order or morality, such as inventions relating to the cloning of human beings, are not patentable.

The person responsible for the subsequent technical examination must be a qualified patent engineer who possesses knowledge of the area in question for the relevant invention. This part of the examination leads either to a technical order or to a final order. In a technical order, the applicant is given the opportunity to address any impediments towards the grant of the patent that the examiner has identified. If the PRO considers that a patent can be granted, a final order is issued whereby the applicant is given the opportunity to perform minor adjustments and review the application documents. After the applicant has paid a basic fee for publication, the PRO publishes its decision and the patent is thereby deemed to be granted.

A final decision concerning the rejection of the application is taken by the technical administrator in consultation with a separate and experienced patent expert. A decision to reject an application can be appealed to the Patent and Market Court.

Certain information in an application becomes public as a result of the filing of the application (eg, the applicant’s name). Other information becomes public within a period of 18 months from the date of filing or the priority date or, alternatively, in connection with the grant of the patent if this occurs earlier and the applicant has not requested that the PRO postpones the grant. If the application is rejected, withdrawn or discontinued prior to the expiry of the 18-month period, it is not published. Accordingly, the applicant can withdraw the application during the prosecution phase if they believe that the patent will not be granted and wish to keep the invention secret.

Trade Secrets

Information regarding an invention can also be protected as a trade secret. There is no registration procedure regarding trade secrets; instead, protection is acquired automatically, provided that certain criteria are fulfilled (see 1.1 Types of Intellectual Property Rights).

If an application meets the formal requirements, then the PRO will issue a technical, or final, notice within approximately seven months. The time limits for a final decision vary, depending on whether or not there is an obstacle to granting the patent. The final decision is generally rendered within two years from the filing date.

There is no requirement according to Swedish law concerning representation (authorised or other) for a patent applicant. However, statistics show that applications by professional patent attorneys are granted to a much higher extent.

The average application costs to grant a national patent are relatively low. The general application fee is SEK3,000 and the publication fee is SEK2,500. Additional fees may apply – eg, if the sought patent has more than ten patent claims. The average costs in addition to the formal fees amount to approximately SEK40,000.

A patent remains in force for a maximum term of 20 years from the application date. However, medicinal and plant protection products can be granted an extended term of protection for a maximum of five years. Also, medical products authorised for the treatment of children may be granted an additional protection term of six months (5.5 years in total).

If an invention is protected as a trade secret, it will remain protected for as long as it fulfils the requirements for being a trade secret.

Patents

The exclusive right of a patent is set forth in statutory law and allows the holder, inter alia, to stop others from using the protected invention commercially. This includes the right to take legal action against infringements. The patentee may obtain an injunction, under penalty of a fine, against the infringer or anybody who participates in the infringement. In order to stop an ongoing infringement, it is also possible to apply for an interim injunction. A patentee can also apply for other measures, such as an order to provide information regarding the origin and distribution network of the infringing goods. The patentee is entitled to reasonable compensation for infringed use and damages caused by the infringement. The different options made available to the patentee in the Swedish Patents Act are based mainly on EU Directive 2004/48 on the enforcement of intellectual property rights (IPRED).

The scope of the exclusive right conferred by patent protection also includes the right to assign, license or pledge the patent.

There is no obligation to make use of the invention, although a court may, under certain circumstances, grant a compulsory licence to a third party if it is not used.

A patentee is obliged to pay annual fees in order to maintain the patent. The annual fee increases each year the patent is maintained, and ranges between SEK1,400 and SEK8,400. This obligation also applies during the application procedure.

Trade Secrets

Trade secret protection arises automatically (see 1.1 Types of Intellectual Property Rights). Therefore, the owner of a trade secret is not obliged to pay any fees. Protection conferred by a trade secret includes protection against different kinds of misappropriation – eg, when secret information is obtained, exploited or disclosed without permission. Misappropriation of a trade secret may result in an injunction and entitle the holder of the trade secret to damages.

A patent can be maintained for a maximum term of 20 years from the application date. However, medicinal and plant protection products can be granted a Supplementary Protection Certificate (SPC) in accordance with EC Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products (“SPC Regulation”). According to the SPC Regulation, the term of protection is extended to a maximum of an additional five years; the term of such additional protection is calculated by the time lost between the filing date and the date of first marketing authorisation in the European Economic Area, minus five years. Medical products authorised for the treatment of children may be granted an additional protection term of six months (5.5 years in total).

The purpose of the SPC is to compensate the patentee for the time during which a product cannot be commercialised because it requires marketing authorisation – ie, before any kind of commercialisation can be initiated. The application has to be filed within six months from the first marketing authorisation. The patentee has to pay an application fee as well as annual fees, and a decision to grant an SPC can be challenged by third parties. A decision to deny an application for an SPC can be appealed to the Patent and Market Court.

Opposition Procedures

Third-party observations can be filed during the application procedure. An observation may refer to any aspect that affects the decision on whether a patent should be granted. The person who files an observation is not a party to the proceedings in a formal sense. However, the third party shall receive a notice if the patent application is granted.

A third party may also file a written opposition within nine months of a patent being granted. The opposition procedure includes an exchange of submissions between the patentee and the opponent, after which the PRO decides whether to revoke the patent, maintain it with an amended wording, or reject the opposition. The patent shall be revoked if:

  • it was granted despite a lack of being capable of industrial application, or it not being novel over the prior art, or it not meeting the requirement of inventive step;
  • it includes something that was not evident from the application when it was filed; or
  • it pertains to an invention that is not described with sufficient clarity to enable a person skilled in the art to carry it out with the guidance of the description.

The patent shall be maintained with an amended wording if the patentee modifies it during the opposition procedure in order to overcome the obstacles in question. The final decision in an opposition procedure may be appealed by the patentee or the objecting party to the Patent and Market Court within two months of the date of the decision.

Entitlement Claims

A third party may also file a claim for transfer of ownership based on the party’s title to an invention pending patent registration (a “better right” or “entitlement” claim). At the request of the claimant, the PRO may transfer the patent application or register the claimant as the inventor. The claimant may also be registered as a co-applicant or co-inventor. If it cannot be determined who has the better right to the invention, the PRO can order the claimant to initiate court proceedings. The PRO will disregard the claim unless the claimant initiates court proceedings within a certain time. A decision to reject a request for transfer may be appealed by the claimant.

An applicant who is not granted a patent may appeal the decision of the PRO. Likewise, final decisions in opposition proceedings may be appealed by the losing party. An appeal has to be made within two months of the date of the PRO’s decision. The appeal is to be lodged with the PRO, which may reconsider its decision unless there is a party opposing it. If the PRO stands by its decision, or if there is an opposing party, the appeal is submitted to the Patent and Market Court.       

Failure to pay the annual fees of a patent application will lead to a dismissal of the application. This situation is unusual, since payment for the first three years is due in the third year. Where a patent has been granted, failure to pay the fees will lead to the annulment of the patent. A delay in payment can be remedied if an additional fee of 20% of the due amount is paid within six months. In exceptional cases, where a patentee has suffered a loss of rights due to failure of payment despite having observed all due care required, the patentee can complete payment within two months after annulment of the patent and file for a declaration that such payment has been made in due time.

Once a patent has been granted there are two possible ways for a patentee to amend its granted patent.

Patentee-Proposed Amendments

The patentee may file a request to the PRO consisting of proposed amendments to one or several of the granted patent claims and, where necessary, also containing amendments to the description. The proposed amendments must limit the scope of the patent compared to the granted rights. Furthermore, the description needs to be sufficiently clear in order to enable a person skilled in the art to utilise the invention. In addition, the amendments may not cover subject matter which did not appear in the application as filed (ie, added matter).

The PRO may not, without the consent of any applicable rights-holders, grant a request to amend an already granted patent if the patent is subject to seizure, charged with a lien, claimed through attachment or part of a pending dispute concerning the transfer of the patent. Furthermore, if the patent is subject to opposition proceedings before the EPO or part of an invalidity action, at the time the request for amending the patent is made, that request shall be denied.

Amendments during Revocation Proceedings

A patentee may also file one or several claims (auxiliary requests) to the court during the course of a revocation action in order to amend the patent claims. Such auxiliary requests also need to comply with the above-mentioned requirements for the procedure before the PRO. In addition, the court needs to assess whether the amended patent claims in the auxiliary requests contain the definitive information concerning what is sought to be protected by the patent. The court will, if the patent as granted is found to be invalid, assess whether such auxiliary requests presented by the patent holder mean that the patent, in its amended wording, should be deemed valid (in light of the grounds for revocation claimed by the plaintiff). Furthermore, if a patent holder seeks to amend its patent during ongoing revocation proceedings, such proposed amendments must fall within the scope of the revocation action requested by the plaintiff.

A patent holder has several options as to how to handle an infringement against its patent. A patentee (or licensee) is entitled to apply for an injunction against imminent or ongoing infringements. An injunction can be obtained against the infringer, or against anybody who participates in the infringement, and the infringer can be subject to a fine. When it is considered urgent to stop an ongoing infringement, the patentee may request the court to issue an interim injunction.

Patent infringement can also be prosecuted as a criminal offence. However, in order for a prosecutor to initiate a criminal action, there must be a public interest in doing so. Even though patent infringement can be prosecuted as a criminal offence, this is something which rarely happens. It may further be noted that the provision in the Swedish Patents Act governing the possibility of pursuing patent infringements as a criminal offence was amended on 1 September 2020. The amendments entail increased penalties for the most serious infringements of patent rights, where intentional serious patent infringements can lead to imprisonment for up to six years, and that there is no longer a requirement for the patent holder to report the offence to the prosecutor in order for the prosecutor to be able to initiate a criminal action.

Another alternative that can be considered is a separate action using customs control. Swedish Customs can be contacted in order to seize suspected infringing goods.

Remedies

There are several remedies for third parties who wish to challenge the exclusive right of a patent. Third parties can:

  • file a third-party observation during the application procedure with the PRO;
  • file a request for the transfer of ownership based on title to the invention during the application procedure with the PRO;
  • file an opposition with the PRO within a certain time from the patent being granted; or
  • initiate court proceedings with an action for better right/entitlement to the invention, a revocation action, a declaratory action for non-infringement or an action for a compulsory licence.

Procedure

To initiate court actions, certain formal rules apply.

Only a person claiming entitlement to a patent can initiate an action for a transfer of ownership. Such an action can be brought within one year from the date on which the party claiming to have a better right learned of the grant of the patent. If the patentee was acting in good faith regarding their right to the invention when the patent was granted, or when it was assigned to them, an action must be brought within three years from the date on which the patent was granted.

A third party may bring a revocation action if a patent is deemed to be detrimental to them. It is common for an alleged infringer to file a revocation action as part of the defence against the alleged infringement.

A declaratory action for non-infringement requires the claimant to have a specific interest in a clarification of whether there has been an infringement. This may be the case, for example, if someone deems that they are prevented from using a method or product in their business because it is uncertain whether the exclusive right of the patent protects that method or product.

Any third party who may be presumed to have the ability to exploit the invention in an acceptable manner may be granted a compulsory licence. The applicant must demonstrate that they have unsuccessfully attempted to obtain a licence on reasonable terms from the patent owner. Furthermore, a patentee may obtain a compulsory licence to use an invention protected by another patent, where the use of the aforementioned patent is dependent on a patent owned by another party. In this case, the applicant must demonstrate that their invention constitutes significant technical progress of considerable economic interest in relation to the other invention. It is very rare for an application for a compulsory licence to be granted by Swedish courts.

In addition, anyone who was commercially exploiting an invention at the time a patent application covering the invention was filed may continue to use the invention notwithstanding the patent. However, such prior-use right requires that the exploitation did not entail clear abuse in relation to the applicant for the patent or any predecessor in title.

The Patent and Market Court has exclusive jurisdiction in matters concerning Swedish patents, or the Swedish part of a European patent. It is a special court hosted within the Stockholm District Court. It is also designated as the Nordic-Baltic division of the proposed Unified Patent Court.

Appeals are made to the Patent and Market Court of Appeal within the Svea Court of Appeal in Stockholm. A leave to appeal is required in order for the court to try a case.

Judgments and decisions from the Patent and Market Court of Appeal are, as a rule, not appealable. However, the court may allow an appeal to the Supreme Court if a case involves an important issue of legal principle. However, such an appeal is still subject to a leave to appeal from the Supreme Court.

There are no specialised bodies or organisations for the resolution of disputes related to patents or trade secrets.

There are no statutory prerequisites to filing a lawsuit. However, the ethical rules of the Swedish Bar Association require its members (advokater) to give an opponent reasonable time to consider a claim before taking legal action. Furthermore, a party who initiates an unnecessary action is liable to pay the counterparty’s litigation costs, even if they win the case. Cease-and-desist letters are thus used in almost all cases, unless there are particular (urgent) reasons not to do so – eg, when a claimant considers an interim injunction action.

Anyone who wants to initiate court proceedings in relation to the validity of a patent must notify the PRO and inform everyone who has a licence, according to the PRO’s register, or a pledge for the patent.

The parties in patent proceedings do not need to be represented by a lawyer. In theory, anyone may be appointed and act as a party’s representative, or a party may simply choose to represent themselves. However, due to the technical and complex nature of patent litigation, a legal counsel is almost always chosen to act as the party’s representative.

A patentee or a licensee may request an interim injunction. A request for an interim injunction is usually made in connection with a summons application that includes a request for a final injunction. Interim injunctions are frequently requested in patent cases.

An interim injunction may be granted if the following conditions are fulfilled.

  • The applicant must show probable cause for an infringement of the patent (or imminent infringement).
  • There must be reasons to believe that, by continuing to infringe or to contribute to the infringement, the defendant diminishes the value of the exclusive right in the patent.
  • The measure must not entail inconvenience or injury to the defendant that is disproportionate to the reasons in favour of an interim injunction.
  • The applicant must provide sufficient security for any loss which the defendant might incur as a result of the injunction.

Where the claimant does not have the ability to lodge the security, the court may discharge them from the obligation. The security is normally a bank guarantee that may be used by the defendant.

The purpose of an interim injunction is to preserve the value of an exclusive right until the case has been conclusively adjudicated or the court has reverted the interim injunction decision (eg, following the inclusion of new evidence). The court will issue an interim decision, having assessed whether the interim injunction is proportional and weighing the applicant's interest against the potential loss to the defendant. If the defendant has filed a counterclaim for revocation, the court will also take into consideration whether it is likely that the patent will be invalidated. Interim injunctions are normally decided following written correspondence between the parties without any oral hearing. It is very unusual to make use of the possibility of holding an interim oral hearing.

There is no clear case law regarding how the assessment of a grant of an interim injunction is affected by the fact that the claimant has remained passive in relation to the defendant’s alleged wrongdoing. However, an interim injunction action must be brought reasonably promptly after the claimant has been made aware of the defendant’s actions.

An injunction may be issued without notifying the defendant before the decision is rendered if a delay would entail a risk of loss (an ex parte decision). Swedish courts are, in general, reluctant to issue injunctions before the defendant has been given an opportunity to respond. It would require extraordinary circumstances in patent cases.

How long it takes before a preliminary injunction may be granted varies, depending on the complexity of the case. In normal cases, one can expect to have a decision within three to six months.

There are no particular protective measures, such as protective briefs, for a potential opponent. However, in order to challenge a claimant’s request for an interim injunction, the defendant may, apart from arguing non-infringement, argue that the security provided by the claimant contains deficiencies or ambiguities (eg, regarding the amount or the wording of a bank guarantee or the authority on which it is based).

A potential opponent may file a declaratory action for non-infringement, or commence invalidity proceedings.       

The Swedish Patents Act contains several special limitation provisions.

The right to damages in infringement proceedings is limited to damages incurred during the five years preceding the date on which an action is brought.

An action regarding damages pertaining to the application period up until the grant of a patent must be brought no later than one year after the expiry of term for opposition or, where an opposition has been brought, no later than one year after a ruling by the patent authority that the patent shall be maintained.

An invalidity action that is based on the fact that a patent has been granted to someone who is not entitled to the patent must be brought within one year from the date on which the party claiming to have such entitlement learned of the grant of the patent. If the patentee was acting in good faith regarding their right to the invention when the patent was granted, or when it was assigned to them, an action must be brought within three years after the patent was granted.

The same limitation provision applies to an action for transfer of ownership based on entitlement to an invention. It may be noted that the one-year period applies regardless of whether or not the patentee was acting in bad faith.

There are several mechanisms by which a party can obtain information from an opposing party or a third party.

As a general option, a court may, upon request from any party, issue an order for the production of written documents according to general provisions in the Code of Judicial Procedure (1942:740). Anybody holding a written document that can be assumed to be of importance as evidence in a court case is obliged to produce it. Certain types of documents/information are privileged (eg, correspondence between an attorney and their client, or between relatives). An order for production of written documents can refer to documents in the other party’s possession, or in a third party’s possession.

Orders for the Production of Information

A patentee or licensee can also obtain an order for the production of information regarding the origin and distribution network of infringing goods or services. The court may order an infringer or certain third parties involved in an infringement to provide such information under penalty of a fine. Information on the origin and distribution network typically relate to:

  • the names and addresses of producers, manufacturers, distributors, etc, who have disposed of the goods or provided the services;
  • the names and addresses of designated wholesalers and retailers; and
  • information on quantities produced, manufactured, delivered, etc, as well as pricing information.

An order for the production of information may be issued under the condition that the applicant shows probable cause for patent infringement, and that the requested information can be deemed to facilitate the investigation of infringement. It may only be issued if the reasons for the measure outweigh the inconvenience or injury it entails for the person subject to the order or any other opposing interest.

Infringement Investigations

Furthermore, a patentee or licensee may obtain an order for an infringement investigation. Where it can reasonably be assumed that someone has committed, or contributed to, an infringement of a patent, the court may order an investigation in order to search for objects or documents that can be assumed to be of importance for the inquiry into the infringement. Such an order may also be issued in relation to attempted infringements and preparations for infringements. The applicant must provide sufficient security for any damage that may be caused to the subject of the investigation.

A request for an infringement investigation can be made during infringement proceedings or prior to the initiation of such proceedings. Since the purpose is to preserve evidence, the applicant must initiate main proceedings within one month from the finalising of the investigation if a request is made separately.

General Pleading Standards

The initial pleading standard is determined by the general provisions in the Code of Judicial Procedure (1942:740). The summons application must include:

  • detailed contact information for the claimant and defendant;
  • a precise request for relief;
  • a detailed description of the circumstances relied upon; and
  • an interim statement of evidence, including the evidentiary theme for each piece of evidence.

Patent Litigation Pleading Standards

In a general sense, the procedural rules are the same as in other civil law matters. However, substantive patent law contains a number of specific provisions regarding, for example, the time limits for bringing an action for compensation.

In practice, the summons application in main proceedings is quite extensive, due to the subject matter. The application should include an adequate description of the patent in suit, as well as an infringement analysis or analysis regarding invalidity. The summons application shall include a preliminary schedule of evidence. However, it is possible to elaborate an argument and invoke new or different evidence during the entire preparatory stage. The technical and legal aspects are therefore often elaborated in subsequent pleadings.

The preparatory stage of the proceedings includes an exchange of several submissions between the parties and at least one case management hearing. As a starting point, the parties are free to file submissions until the main hearing, unless the court decides to close the preparatory stage some time before the main hearing. Patent cases are normally closed approximately one month before the main hearing. During the preparatory stage, it is also possible to invoke new evidence. However, negligence on one party’s side (ie, submitting new arguments and evidence late in the proceedings) may be reflected in their liability to pay the opposing party’s legal costs.       

The Swedish legal system does not permit representative or collective actions in patent cases.

The patentee is restricted from asserting their right against others in breach of Swedish competition law (eg, anti-competitive agreements and abuse of dominant position). Anti-competitive agreements are invalid and cannot be enforced.

The patentee or a licensee (exclusive or non-exclusive) may bring an infringement action.

It is not possible for third parties such as distributors or sales agencies to initiate an action for infringement.

Both legal entities and/or their representing individuals can be sued for patent infringement.

Direct Infringement

Statutory law provides that any of the following actions constitutes direct infringement.

  • Manufacturing, offering, placing on the market or using a product protected by the patent, or importing or possessing such a product for any of these purposes.
  • Using a process that is protected by the patent or knowing – or where it is clear from the circumstances – that the process cannot be used without the consent of the holder of the patent, and offering the process for use in Sweden.
  • Offering, placing on the market, or using a product prepared by a process protected by the patent, or importing or possessing the product for any of these purposes.

Indirect Infringement

Indirect infringement, on the other hand, requires an act that contributes to a direct infringement. Indirect infringement occurs if:

  • a third party, without the consent of the patentee, exploits the invention by offering or supplying a means to a person who is not entitled to exploit the invention to use it in Sweden;
  • the means relate to an essential element of the invention; and
  • the party offering or supplying the means knows, or it is obvious from the circumstances, that those means are suited and intended for use in conjunction with use of the invention.

A patentee is entitled to the same remedies in both cases: to request an injunction or a declaratory judgment against the infringer and to seek compensation for damages.

Direct infringement in a process patent may be established either by the infringer using the infringing process in Sweden or by the infringer offering the process for use in Sweden. The latter is dependent on the fact that the infringer knows – or that it is, in the light of the circumstances in the individual case, clear – that the process may not be used in Sweden without the consent of the patent holder.

Direct infringement in a process patent can also be established in cases where an allegedly infringing process is practised outside of Sweden, but where the product of that process is placed on the market, used, imported or possessed in Sweden. There may also be infringement if the process is offered in Sweden regardless of whether the product of the process will be used in Sweden or elsewhere. This is referred to as the indirect product protection (indirekt produktskydd). In order for a product to infringe a process patent, the alleged infringing process needs to contribute to the essential elements of the product manufactured by that process and such elements must not be altered through additional manufacturing steps.

The main rule as regards patent infringement is that the burden of proof lies with the patent holder, who must show infringement. However, it should be noted that a patent holder of a process patent may be granted a lower burden of proof when claiming that an alleged infringer uses an infringing process. According to recent case law, in certain cases concerning process patents the burden of proof of infringement may shift to the alleged infringer if the patent holder shows that it is probable that the alleged infringer uses a process which infringes the process patent. In such case the alleged infringer needs to show that it is probable that the process used does not infringe the process patent in order to avoid being deemed to infringe the patent at hand.

The scope of patent protection is determined by the patent claims. When construing the patent claims, the description may serve as a guide.

Further principles of how to assess the scope of protection have been elaborated in case law. In general, Swedish courts follow the principles of Article 69 of the EPC and the Protocol on the Interpretation of Article 69, the latter of which adds that claims shall be neither interpreted literally nor treated as mere guidelines for the scope of protection. Equivalents are thus deemed to be protected under Swedish law provided that certain criteria – which have been developed in case law – are fulfilled.

According to newly established case law, the following criteria are decisive in the assessment of equivalents.

  • The inventive idea must have been utilised completely.
  • The subject matter of infringement must achieve the same technical result as the invention pursuant to the patent, despite differences in relation to the patent claims.
  • The differences may be deemed to be obvious (närliggande) to the skilled person.
  • The solution leads to a result that is equal to the result obtained by the patent-protected solution.

If these criteria are fulfilled, there may be factors in the specific case that still exclude an application of the doctrine of equivalents. For example, inventions of a simple nature do not generally enjoy protection outside the scope of the literal claim. Furthermore, it will be difficult to apply the doctrine of equivalents if the difference between the literal wording of the patent claim and the supposed infringing object relates to a central feature of the patented invention crucial for its patentability, or if the equivalent feature has been subject to amendments during the prosecution. However, it can be noted that, according to a case decided by the Patent and Market Court, amendments made by the applicant during the prosecution in relation to aspects not related to prior art (ie, to overcome issues of novelty or inventive step) do not constitute a bar against applying the doctrine of equivalents.

An alleged infringer will try to exclude infringement of the patent enforced by stating that the act does not fall within the patent’s scope of protection. However, there are other defences that are commonly used depending on the specific situation. The defendant may:

  • argue prior-use rights – the term “prior use” generally refers to a situation where the alleged infringer has been using the invention before the priority date;
  • apply for a compulsory licence – eg, where the invention has not been exercised for a long period of time;
  • argue exhaustion of rights (ie, that the resale of goods has been placed on the market in the EEA by or with the consent of the patentee); or
  • argue that the alleged infringing acts have been conducted for non-commercial purposes or for experimental purposes, or that the Bolar exemption applies, according to which a patentee cannot prevent other third parties from performing studies, trials, tests, investigations and other practical measures that are necessary in order to obtain a market authorisation for a human or veterinary medicinal product.

Experts appointed by parties have an important role in Swedish patent proceedings. They are frequently consulted and relied upon in order to provide the court with information concerning one or several technical issues. The court can also appoint an expert, although this right is rarely exercised.

The expert must provide a written expert opinion during the preparatory stages of the proceedings. The questions are decided by the party who invokes the expert. However, it should be noted that the expert is also examined at the main hearing, and that the opposing party has a right to cross-examine the expert. It is common for the expert to be asked to give a supplementary opinion if the opposing party invokes another expert opinion.

A competent and trustworthy expert can have great impact on a case and, therefore, party-appointed experts are very important in Swedish patent proceedings. However, it should also be noted that, if an expert is not well prepared for their examination and/or cross-examination, their testimony can be detrimental to the outcome.

There is no separate procedure for construing the terms of the patent’s claims. The patent claims are inevitably construed in the infringement or invalidity proceedings.

Pre-grant Opposition

Before the relevant authority grants a patent application, third parties have two possible options to oppose the registration of the patent. First, a third party may object to the granting of the patent. An objection to the granting of the patent does not, at this stage, result in the third party becoming a party in the matter. The decision regarding whether the patent application should be granted still rests with the administrator in charge. Secondly, a third party is able to claim entitlement to an invention. However, a claim for a transfer of ownership to an invention entails the burden of proof of such title lying with the third party making the claim.

Post-grant Opposition and Subsequent Revocation Action

When a patent application is granted, third parties have the right to file a written opposition regarding the granting of the patent, within nine months. Such an opposition must include the grounds on which the third party bases the opposition, and it is tried by the PRO. An opposition by a third party may result in:

  • the PRO revoking the granted patent;
  • the PRO rejecting the opposition; or
  • the PRO maintaining the patent with an amended wording.

The decision taken by the PRO regarding an opposition filed by a third party may be appealed to the Patent and Market Court within two months from the decision.

Furthermore, there are no standing to sue requirements according to Swedish law in terms of initiating an opposition against a granted patent within nine months from the date a patent application has been granted.

A revocation action may also be initiated in court proceedings, either as an independent action or as a counteraction in an ongoing infringement action.

According to Swedish law, there are several grounds that may result in the revocation/cancellation of the patent granted: lack of novelty, lack of inventive step, insufficient disclosure, added subject matter and a third party having a better right to the invention.

As a main rule under Swedish law, it is only required that a granted patent is detrimental to a party in order for such party to have a standing to sue for revocation of the granted patent. In certain cases, where it is necessitated by the public interest, a public authority designated by the Swedish government may also be granted a standing to sue. However, a revocation action brought on the grounds that a patent has been granted to a party other than the party who is entitled to the patent may only be brought by the party who claims to be entitled to the patent.

A patentee is able to request a patent limitation (eg, in order to limit the scope of the claims in a patent). This course of action may be taken to avoid revocation/cancellation proceedings. The PRO reviews a patent limitation request and, if it is rejected, the decision to reject may be appealed to the Patent and Market Court.

In court proceedings, the claimant may contend that only certain claims in a disputed patent should be declared invalid, and thus, if such a claim is successful, the result will be a partial revocation/cancellation of the registered patent. Note that amendments of patent claims are peremptory and the court always assess whether the amendments fulfil the necessary requirements, regardless of whether the parties are in agreement regarding the amendments.

In court proceedings regarding the invalidity of a patent, the patentee may propose that the patent claims in question shall be amended in order to maintain a limited scope of protection for the invention and prevent the allegedly invalid patent from being revoked or cancelled. The court then reviews whether the amended patent claims meet the requirements for patentability, and that the amendment de facto entails a limitation of the scope of the patent protection.

The Patent and Market Court has exclusive jurisdiction in cases regarding patent infringement and patent revocation/cancellation. Since the two separate cases are brought before the same court, the rule is that they are joined and heard together if it is beneficial for the conduct of the proceedings.

There are some special procedural provisions in the Patents Act (eg, regarding the competent court) and the Patent and Market Courts Act (eg, regarding the panel of judges and restrictions on the possibility of appeal). However, the procedure in patent proceedings is very similar to other civil court proceedings. Most procedural provisions are found in general provisions in either the Code of Judicial Procedure or the Court Matters Act.

It should be noted that written statements of facts are often used in patent proceedings. This possibility is available in other complex litigation, but is probably used most in patent litigation.

In Sweden, the Patent and Market Court and the Patent and Market Court of Appeal are specialised IP and competition courts, so the appointed judges are specialised in intellectual property law, competition law and marketing law.

The composition of the court depends on the specific decision in question and in which instance the proceedings are pending. As a rule, both legal judges and technical judges determine decisions on the merits of a case. For example, the court of first instance has two legal judges and two technical judges when a case is determined after a main hearing. In some cases, the court (ie, the legal judge/judges) can decide whether the case requires a technical judge.

The parties may not affect the court’s decision on whether a legal or technical judge should determine the case. However, the parties are informed about the choice of technical judge/judges, and can then make an objection that there is an apparent conflict of interest (the same applies to legal judges).

There are no formal mechanisms for settling a case. The parties may settle a case either without third-party involvement or with assistance from the court (through non-mandatory settlement conferences or court mediation). The case can be settled until the day of the judgment. It may be noted that the court is obliged to investigate the possibility of a settlement during the preparatory stage of the proceedings.

If the parties reach a settlement, they may choose either to have the settlement confirmed in a judgment by the court or, should they prefer to keep it confidential, to withdraw the case jointly.

The court decides whether a case should be stayed pending the resolution of other proceedings. Parallel proceedings do not influence the current proceedings as a starting point. However, if it is clear that the validity of a patent will be determined in the near future, the court will likely stay ongoing infringement proceedings.

Injunctions

There are several remedies available for a patentee pertaining to infringement proceedings regarding the patentee’s patent. A patentee can file a request at the court for an injunction subject to a default fine, pursuant to the terms of which the alleged infringer is enjoined from continuing its allegedly infringing conduct. Such an injunction is available both as a permanent injunction and as an interim injunction, which is in force until the case has been conclusively adjudicated or another decision has been taken. For an interim injunction to be granted, the patentee must show that there is probable cause for infringement. It must also be reasonably assumed that the continuation of the infringing act diminishes the value of the exclusive right in the patent. It should also be noted that the issue of an injunction is not something the parties can agree on. Accordingly, the court not only decides whether the injunction should be granted but is also free to rephrase the injunction claimed.

Damages

As regards damages due to a patent infringement, there is a difference regarding whether or not the infringement has been made with intent or negligence. If an infringer has not acted with intent or negligence, damages are limited to compensation for the use of the invention subject to the patent, to the extent the court finds this reasonable. If an infringer has acted with intent or negligence, the patentee also has the right to additional compensation for the loss resulting from the infringement. When determining the amount of additional compensation, the court will consider in particular:

  • lost profits;
  • profits realised by the party committing the infringement;
  • damage to the reputation of the invention;
  • non-pecuniary loss; and
  • the patentee’s interest in preventing infringement from taking place.

Punitive damages are not available under Swedish law.

Other Remedies

The patentee may also request an alleged infringer to provide, under penalty of a fine, information regarding the origin and distribution network for the goods and services to which the infringement pertains and/or an infringement investigation (see 2.10 Mechanisms to Obtain Evidence and Information for Patent Disputes).

The court may also, at the request of the patentee, order that goods that infringe an exclusive right to a patent must be withdrawn from the market, destroyed, modified, etc, and that an infringer bear the costs pertaining to the patentee’s publication and spreading of information regarding the judgment on patent infringement. However, it is up to the patentee to convince the appropriate media outlet to publish said information.

The court has no discretion regarding the choice of remedies stated above. However, some of the remedies require the court to decide what is reasonable. If full evidence of the damages cannot be produced, or only with difficulty, or if the evidence can be assumed to entail costs or disadvantages that are not proportionate to the size of the damage and the claim for damages concerns a smaller amount, the court may estimate the damages to a reasonable amount.

Generally, the prevailing party has the right to be reimbursed by the losing party for reasonable litigation costs and lawyers’ fees. However, this may vary, depending on whether the prevailing party has succeeded with all claims tried by the court – eg, in some cases, where the prevailing party has lost minor claims in the proceeding but won the case overall, the right to be reimbursed may be limited to some extent.

The types of remedies for technical intellectual property rights do not differ from one another.

If a case of patent infringement has been decided, in the first instance, in favour of the patentee, and the patentee has requested that the court grants an injunction, it will be granted. The court may make minor amendments to the scope of the injunction, as it finds appropriate in the circumstances. Where the defendant appeals the judgment of the first instance court, in most cases effects pertaining to such a granted injunction will be suspended until the case is conclusively adjudicated.

If the patentee has requested an interim injunction, which has been granted by the first instance court, it is possible for the defendant to appeal the granted interim injunction, and the Patent and Market Court of Appeal will issue a decision regarding the granting of the interim injunction based on the merits of the case in the appealed judgment. In addition, the Patent and Market Court of Appeal may immediately decide that the first instance court’s decision on the interim injunction may not be enforced until further notice.

The appellate procedure is, in principle, the same as in proceedings not related to intellectual property rights. However, the Patents Act and the Patent and Market Courts Act include special provisions regarding the appellate procedure in patent proceedings (see 2.3 Courts with Jurisdiction for Patent Litigation).

An appeal implies a full review of the facts of the case. The parties can exchange submissions and, thereafter, an oral hearing takes place. Oral evidence invoked in the first-instance proceedings is, however, normally video-recorded, and the Patent and Market Court of Appeal will review the recordings instead of having the witnesses testify again. The appellant can limit the scope of review to certain questions. Note also that new facts or evidence are not allowed in the appeal proceedings, except under certain circumstances.

The costs arising before a lawsuit are typically related to:

  • warning letters;
  • the gathering of evidence;
  • research on technical and legal questions;
  • drafting the summons application;
  • arranging a bank guarantee when necessary; and
  • efforts to settle the dispute.

Depending on the type of case and the value of the claim, the court fee for commencing proceedings is fixed at either SEK900 or SEK2,800. Additional fees of SEK600, SEK2,350 or SEK2,500 are charged for some cases that are transferred from other authorities (eg, the Patent and Registration Office).

The losing party is required to reimburse the prevailing party for their litigation costs. This applies to lawyers’ fees, court fees, costs for evidence, etc, but only to the extent to which the litigation costs are deemed reasonable by the court. The litigation costs can also be divided between the parties if both have prevailed in different matters. However, exemptions apply if a party has acted negligently or initiated an unnecessary trial.

Alternative dispute resolution is not normal practice when settling a patent case. However, licensing agreements and other contractual issues related to patents are often submitted to arbitration. Patent infringement disputes are sometimes submitted to arbitration, but the possibility of obtaining an interim injunction subject to a default fine at the Patent and Market Court is probably the reason why this option is used more often. It is not possible to submit an invalidity action with an in rem effect in an arbitration procedure, as the invalidity of a patent in rem can only be determined by the court. However, there is a possibility to submit an inter partes invalidity action in an arbitration procedure. There is also a possibility to use mediation, although this is rare.

There are no formal requirements or restrictions for assigning a Swedish patent or patent application. However, it should be noted that, regarding European patent applications, assignments must be in writing and require the signature of both parties.

There is no formal procedure for assigning a patent right. The patentee or assignee may request that the assignment is registered in the patent register administrated by the PRO. This procedure requires, inter alia, a written and signed request from the patentee or the assignee. In general, proof of the assignment is not required for the registration.

There are no formal requirements or restrictions to licensing a patent right. The patentee is free to license their right by way of an agreement. However, where the patentee has granted a licence, the licensee may assign their right to others only if an agreement has been made to that effect.

There is no formal procedure for licensing a patent right, and it is rare for patent licences to be registered in the patent register. However, there is still a possibility for the patentee or licensee to request that the licence is registered in the patent register administrated by the PRO. This procedure requires, inter alia, a written and signed request.

Advokatfirman Vinge KB

Smålandsgatan 20
Box 1703
111 87 Stockholm
Sweden

+46 10 614 30 00

+46 10 614 31 90

contact@vinge.se www.vinge.se
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Law and Practice in Sweden

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Advokatfirman Vinge KB is unique in the Swedish market in providing a genuine full-service IP offering within three key areas: contentious, non-contentious and prosecution (patent prosecution in collaboration with patent agency firms). Patent litigation is one of the key practice areas and involves disputes within the telecoms, pharmaceutical, med-tech, chemical and mechanical areas. Vinge’s IP team consists of approximately 25 lawyers based in Stockholm, Gothenburg and Malmö, and is engaged in infringement and invalidity disputes, often with an international character. Vinge is involved in large pan-European litigations where the members of the team work closely with internationally eminent patent law experts. The team is also experienced in disputes relating to patent title, compensation to inventors and disputes arising from patent-related commercial contracts (arbitration and litigation). The firm's full-service concept often results in the IP team working closely with the Vinge's experts in EU and competition law, dispute resolution and life sciences.