Patent Litigation 2024 Comparisons

Czech law allows for the protection of various forms of intellectual property (IP) through a number of means, all of which are based on written legislation, ie, statute. Case law cannot create new ways of protecting inventions, but it helps to shape and define the statutory provisions.

National Patents

For true inventions, formal protection through a patent is available. Patents can be obtained through a number of routes.

A national patent lasting up to 20 years can be obtained from the Industrial Property Office (IPO) following a full examination of patentability of the applied-for invention. National patent applications can be extended to result in patents through the Patent Cooperation Treaty (PCT) – more than 150 countries are members. Equally, the PCT procedure based on a foreign application can result in the grant of a Czech national patent.

European Patents

European patents can be obtained from the European Patent Office (EPO), provided that they designate the Czech Republic and are validated after grant. European patents can be based on national applications or result from the PCT international procedure. Their effect is identical to that of national patents. Unitary patents are not effective in the Czech Republic, as the Agreement on a Unified Patent Court has not been ratified.

SPC (Supplementary Protection Certificate)

In certain fields of technology (human or veterinary medicaments and chemical plant protection products) supplementary protection certificates may be obtained from the IPO. These extend the term of protection of a patent by up to five years.

Utility Models

Utility model protection is available for technical innovation that may not have the innovative level of patents, where the benefit of full term of protection of a patent is not needed and/or where rapid formal protection without examination is desirable. Their term of protection is ten years, but a utility model grants in roughly six months. Utility models cannot protect methods/processes or uses.

Trade Secrets

Trade secrets protection can be relied on to protect technology and general know-how if these can be kept secret. Any information or fact which has commercial value, is identifiable and is being kept secret can be protected from being disclosed or acquired without the owner’s permission.

Unfair Competition

The prohibition of unfair competition, ie, conduct in commerce which is capable of harming competitors and at odds with good morals of competition, protects technical innovations even where they are not otherwise protectable through one of the formal routes, such as patents or utility models and may even extend their duration to a certain degree. It particularly protects against “slavish imitation” of existing products. Slavish imitation is a type of wrongful act. It is based on the idea that one person should not copy another person’s unique product. Case law plays an important role in unfair competition law, as the written law grants the court a lot of discretion when allowing it to interpret what amounts to a conflict with good morals of competition.

Some IP rights require that the technical innovation is registered prior to it being granted protection by the law. Trade secrets and unfair competition do not require any formal steps to be undertaken.

National Patents

National patents result from the filing of a national patent application with the Industrial Property Office, or the PCT international procedure based on a foreign application proceeding to the national phase in the Czech Republic. The first to file an application can obtain a patent, although if it is proven in court that the applicant had no right to file for the protection of the invention, the patent application or granted patent can be assigned to the rightful inventor or its legal successor. The patent application has to be published no later than 18 months from the date of priority. The IPO subjects the application to a preliminary examination to prevent publication of clearly unsuitable applications. The patent applicant must request full examination of the patent within a certain deadline. Should the IPO then find that the application fulfils all statutory requirements, in particular that the invention is new and inventive over the prior state of the technology, that it is clear and industrially applicable, it will grant the patent. The patent is enforceable upon publication of its grant in the official journal.

European Patents

European patents can be obtained through the filing of a European Patent application with the IPO or EPO, or the PCT international procedure based on a foreign application proceeding to the national phase before the EPO. The key steps of the procedure are the same as described above for national patents, but different timelines apply. A granted European Patent designating the Czech Republic is effective upon publication in the EPO journal. However, if it is not validated within six months, through the filing of a translation and payment of appropriate fees with the IPO, it is deemed to have never been effective in the Czech Republic. Unitary patents are not effective in the Czech Republic.

SPC

Supplementary protection certificates must be applied for with the IPO within six months of the grant of the patent or the registration/marketing authorisation of the product. The IPO then examines whether a certificate can be granted, and if all conditions are satisfied it issues the certificate. The SPC becomes effective once the patent expires.

Utility Models

Utility models are granted by the IPO following an examination of formalities of the application. Substantive examination of novelty and innovative level are not carried out. The IPO aims to grant utility models within three to six months; however, where difficulties occur this can take longer. Utility model applications are not published and the utility model is enforceable upon the publication of its grant in the journal.

Trade Secrets

Trade secrets and know-how are protected without any need or in fact possibility for formal registration. The courts will examine whether something is a trade secret once the owner seeks to enforce it. Trade secret protection applies to identifiable information or facts which have commercial value and are being kept secret.

Unfair Competition

Unfair competition conduct is again declared to be such by the courts when the person claiming to be entitled to protection from it files the claim in court. No prior formal registration is necessary or possible. Unfair competition is defined as “conduct in commerce which is capable of harming customers or competitors and is at odds with good morals of competition”. Unfair competition conduct is prohibited by law.

The length of the registration/grant procedure varies between rights. Trade secret and unfair competition protection applies automatically.

National Patents

The national patent registration procedure before the IPO usually lasts one to five years. However, if the application is complex or if the applicant so requests, it can take significantly longer. There is no requirement for the patent applicant to be represented, although this is very strongly advised. The official fees for the full procedure usually range between EUR500 and EUR1,000. The costs of representation (from preparation of patent application, up to grant) usually costs significantly more, with EUR5,000 to EUR10,000 being a realistic expectation. In very simple cases EUR1,000 to EUR5,000 can be expected.

European Patents

European patent applications usually proceed to grant within three to five years, but in complex matters this can be much longer. The applicant does not have to be represented, unless it is not from one of the states where the European patent can have effect. In that case they must appoint an official representative who is on the official list or is a legal representative under the national laws of a member state. The official fees are circa EUR6,600. The costs of representation usually fall between EUR5,000 and EUR15,000.

SPC

Supplementary protection certificate proceedings usually last one to two years. The official fees are circa EUR200. The cost of representation is usually between EUR1,000 and EUR3,000.

Utility Models

Utility model applications usually result in grant within three to six months. Problematic applications may take longer. The official fees are circa EUR100. The cost of legal representation varies; however, EUR1,000 to EUR5,000 can be expected.

The duration of each type of right varies. In some cases, it is strictly defined by statute. In the case of trade secrets and unfair competition the duration is potentially unlimited; however, the judges in each case decide whether protection still applies or whether it ever came into existence.

Patents

Patents have a maximum term of protection of 20 years from the date of the filing of the patent application. This applies for both national patents and European patents. Maintenance fees have to be paid every year to keep a granted patent valid. SPCs can extend the term of protection for up to five more years in relation to a particular product, not the whole scope of the patent.

SPC

Supplementary Protection Certificates have a maximum term of protection of five years from the date of expiry of the patent on which they are based. An additional “paediatric extension” of six months may also become available. Calculation of an SPC’s actual duration is determined by the method described in 1.6 Further Protection After Lapse of the Maximum Term. SPC protection only relates to a particular product and not the whole patent.

Utility Models

Utility models have a maximum term of protection of ten years from the date of application, or if branched off from a patent application, ten years from the patent’s application date. Utility models initially provide four years of protection, and can be extended on application twice, each time by three years. The extensions are subject to an official fee.

Trade Secrets

Trade secret protection has no maximum term of protection and can potentially last indefinitely. While the information remains secret and useful, it may not be used without the owner’s permission.

Unfair Competition

Protection from unfair competition also has no maximum term of protection. However, protection should not significantly outlast the term of protection of a patent or utility model; ie, at some point even slavish imitation may become permissible. The courts in each case decide whether protection still exists or whether it existed at all.

Each right has a specific set of rights that it creates for the owner and a set of obligations that the owner must abide by to maintain it.

Obligations

To maintain a national or European Patent or an SPC, an annual maintenance fee must be paid. If this is not paid, the right shall lapse. Grace periods for late payments apply.

A utility model’s term extensions have to be applied for within the last year of the utility model’s current duration.

In the case of trade secrets, the owner has to take reasonable steps to keep the secret protected from discovery or disclosure.

The person seeking protection from unfair competition should not themselves be acting in unfair competition.

Rights

A valid right generally enables the owner to exclude others from using the protected technical solution, meaning that no person may manufacture, use, offer, introduce onto the market, or store, import or otherwise deal with a product which falls within the scope of protection of the right, if the patent owner did not grant permission for such conduct. The use and offering of protected methods is similarly restricted.

A patent, SPC or utility model is enforceable if it is formally placed on the relevant register, which is maintained by the IPO. No further requirements apply. The register is accessible to all for free.

If infringement of the rights occurs, the right holder, or a registered licensee, can enforce the right in court. In such a case, an injunction can be ordered against the infringing conduct, prohibiting it. In addition, the withdrawal of the product from the market and destruction of goods can be ordered by the court. Similarly, the offering and use of infringing methods can be prohibited.

Restoration of the status quo, or otherwise remedying the situation caused by infringement of rights can be ordered. This applies to trade secrets and unfair competition generally. Infringement of patents, SPCs or utility models automatically amounts to unfair competition conduct, so they also benefit.

Customs may be relied on to physically seize goods infringing patents, SPCs or utility models. The right holder can also demand access to information about the scale of infringement of its patents, SPCs or utility models and if it is not provided voluntarily a court can order its disclosure.

Damages

Damages are available for infringement of rights. Damages amount to compensation of actual damage as well as lost profit. In addition, a surrender of unjustified enrichment by the infringer can be demanded. Reasonable compensation for immaterial harm, ie, non-economic harm, can be obtained as well. Such monetary compensation has to be proved exactly. However, in the case of breach of a patent, SPC or a utility model the compensation can be sought in the form of a lump sum amounting to at least double a fictitious licence that would have authorised the infringement.

Publication of an apology at the infringer’s expense can be obtained. Publication of the judgment can be authorised by the court.

Additional protection extending past the maximum term of protection of a patent is provided by the SPC. The additional protection applies to a certain product and not to the whole scope of the patent.

SPCs have a maximum term of protection of five years from the date of expiry of the patent on which they are based. Their actual duration is determined based on when a patent application was filed and when the product was approved for marketing. If the product’s marketing approval or registration took place later than five years from the date of patent application, then for every day over those five years, one day of protection is provided under the certificate – up to the maximum of five years. Under the “paediatric extension” an additional six months of protection can be obtained in the case of pharmaceuticals, where the product is tested for safety and efficacy in the paediatric population.

Unfair competition can slightly extend the protection of patents, and utility models in particular in relation to slavish imitation. The court will in each case separately determine whether, given the totality of the circumstances, a technical solution should still be protected from the particular conduct or not.

Anyone can submit observations on the patentability of a patent, before it is granted. Such a person does not have full rights in the patent application proceedings. The IPO or EPO will generally ask the patent applicant to respond and take all such information into account when deciding whether to grant a patent.

Theoretically the same applies to SPCs, although it rarely happens in practice.

Since utility model applications are not published, it is not possible for third parties to interfere in their grant.

If a national patent or a utility model application is not granted, the applicant can appeal the first instance decision of the IPO to the President of the IPO. The appeal has to be filed within one month and usually lasts one to two years.

The decision of the President of the IPO can then be subjected to judicial review proceedings before the administrative courts. This is, in principle, a full review process, where issues of law and fact can be raised. The first instance decision of the administrative division of the City Court in Prague can be appealed through a “cassation complaint” to the Supreme Administrative Court. The first instance proceedings take three to five years and the appeal one to three years.

Theoretically, a constitutional complaint can be lodged with the Constitutional Court if a breach of fundamental rights occurs.

In SPC matters, a preliminary question may be referred by the courts to the Court of Justice of the European Union (CJEU). The IPO cannot make a CJEU referral.

At the EPO, a refusal to grant a patent can be challenged through an appeal to the Boards of Appeal, and potentially to the Enlarged Board of Appeal.

To maintain patents and SPCs and to extend the duration of utility models, fees have to be paid. Failure to pay a patent or SPC annual maintenance fee on time – ie, within the last year of current protection – results in the right lapsing. A six-month grace period for payment of the maintenance fee applies; however, the fee is doubled. The patent becomes ineffective against any third party that begins to take steps to use the patented technology while the maintenance fee remains unpaid.

Failure to request an extension of a utility model results in the utility model expiring. A party that missed a deadline can apply to have it reinstated, if it does so within two months of finding out, and no more than one year has passed since the deadline. An application has to be lodged and accompanied by the fee payment and the IPO has to issue a decision reinstating the time limit and thus the right. An appeal to the President of the IPO and judicial review, as described in 1.8 Remedies Against Refusal to Grant an Intellectual Property Right, are available. Again, third parties may continue to carry on with conduct which was begun before the reinstatement took place – because the patent, SPC or utility model is not effective against them.

Once a patent, SPC or utility model is granted and published, the owner cannot amend the right other than through an application for its revocation. In such application, the owner has to argue why the patent should not have been granted as it was – ie, in effect it has to argue that the right is partially invalid due to a lack of novelty, inventive step or added matter. As a result, this is rarely done. Partial surrenders of patents are not possible.

In the case of European patents, the owner is entitled to submit a correction of the validation translation at any time, subject to payment of the appropriate fees.

In case of infringement of a right, there are a number of means of resolving the dispute open to the owner of the right.

Negotiation

The right holder can seek to negotiate with the infringing party before taking formal steps or at any time while these are pending or even after they conclude. A negotiated settlement agreement provides the parties with relative certainty about their future relations. The negotiated settlement can go beyond that which the court can order, and can thus provide a complex business solution to the dispute. Negotiation is often begun with a warning letter.

Mediation

Mediation is available to resolve an infringement dispute as well. Czech Republic has a system of registered mediators, who are specially trained. A mediator aims to bring the parties to settle the matter amicably. Mediators aim to outline their legal and practical view of the aspects of the dispute and the relative positions of the parties, so as to encourage them to settle. Mediation can be undertaken at any time: before, during and possibly even after litigation concludes. A mediator’s finding is not binding.

A court can advise parties to attend mediation before litigation proceedings proceed. While not very common in industrial property disputes, it does sometimes occur.

Arbitration

Parties may agree to have the dispute decided by an arbitrator or a panel of arbitrators of their choosing. The arbitrator’s award is final, binding and enforceable. However, in certain cases it can be overturned by the courts.

Litigation

The right holder can apply to the courts to seek protection from infringement – enforce their right to a patent, SPC, utility model, trade secret or the right to be free from unfair competition. The courts can order preliminary/interim injunctions before full proceedings are even begun.

Customs

The right holder can apply to customs for a market watch, under which customs aim to seize products suspected of infringing the patent, SPC or utility model. An external market watch aims to target products not on the EU market (imports) and the internal market watch can target products already on the market. Targeted inspections of premises are available. A customs seizure either results in voluntary destruction of the seized product or litigation aimed to determine whether the product infringes – if it does, it is destroyed.

A third party that is convinced that it is not infringing a right can either maintain that the right is not valid in law or that its conduct does not amount to infringement of the valid right.

A national patent, SPC and utility model can be challenged at the IPO by any person through an invalidity action. A legal interest does not have to be shown unless the right has already expired.

A European patent can be challenged at the EPO through an opposition filed within nine months of the publication of grant of the patent by any person without the need to show a legal interest. After that date an assumed infringer – ie, a person being sued by the patent owner – can challenge the patent if opposition proceedings are pending. Once the opposition window closes and if no opposition is pending, the European patent can be challenged before the IPO through an invalidity action, as if it were a national patent.

A compulsory licence can be obtained from the IPO in relation to a patent where the patented invention is not being used at all or insufficiently, and at least four years have passed from the patent application date or three years from the grant date. Compulsory licences are extremely rare. They are only effective once granted and shown on the register of patents.

If the product or process does not technically correspond to that which is the subject of the patent, SPC or utility model an action for determination of non-infringement can be filed with the IPO. The applicant must have a legal interest in the determination, which is present if it genuinely intends to use or market the product or process. The IPO then decides whether the product or process, as it is described by the applicant, falls within the scope of protection of the patent, SPC or utility model.

While the law in principle allows for declaratory judgments on invalidity or non-infringement, these are only permissible where there is an urgent legal need for them. The courts have so far always ruled that there is no urgent legal need in determining whether a patent, SPC or utility model is infringed or valid. This is because the alleged infringer can fully defend itself in the infringement proceedings once they are brought by the right holder.

The City Court in Prague has sole jurisdiction in industrial property matters at first instance. The High Court in Prague hears appeals. One of the nine Regional Courts has jurisdiction over trade secrets and unfair competition litigation. The High Court in Prague and the High Court in Olomouc hear appeals. The Supreme Court hears admissible extraordinary appeals.

In matters where the final decisions of the IPO or customs are being challenged through judicial review, the City Court in Prague’s administrative branch has jurisdiction. The appeal in the form of a cassation complaint is decided by the Supreme Administrative Court.

The Constitutional Court hears constitutional complaints of the parties, or referrals by any of the courts.

A preliminary question may be referred to the CJEU on issues of EU law, by any of the courts.

The Unitary Patent Court system does not operate in the Czech Republic.

Several permanent arbitration courts or venues operate in the Czech Republic. The best known of these is the “Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic”, which has several IP specialised arbitrators on its list.

If the patent, SPC or utility model is shown as valid on the official register maintained by the IPO, it can be enforced without any further prerequisites by the owner.

A licensee must have its licence registered with the IPO to be able to enforce it against infringers.

No prerequisites apply to enforcement of trade secrets or unfair competition.

Where the plaintiff wishes to claim costs of litigation, it must send a Section 142a of the Code of Civil Procedure (Občanský soudní řád (OSŘ)) pre-litigation letter to the other side at least seven days before lodging the papers with the court. Failure to send has no effect on the claim itself, only on the right to costs, and even so the courts in IP matters often order costs where no letter was sent, if the defendant actively defends the case.

There is no general requirement for the parties in intellectual property disputes or litigation to be represented. Attorneys-at-law and patent attorneys can represent clients before the courts and administrative bodies. Representation by attorneys-at-law is required before the Supreme Court, Supreme Administrative Court and the Constitutional Court.

Interim (preliminary) injunctions (PIs) are available before and during proceedings.

To succeed with a PI request the PI applicant has to prove that:

• it has a valid right;
• this right is likely infringed by the defendant’s conduct;
• the preliminary order sought is necessary given the general circumstances of the case; and
• the benefit of the PI order to the applicant is not exceeded by the detriment caused to the defendant.

Validity of the right, or rather the lack thereof, cannot be a reason for the court refusing a preliminary injunction.

By law no hearing can be held and the court must decide immediately and not later than within seven days. The City Court in Prague often decides within one to two days. The defendant is not informed of the PI application, or a decision rejecting/refusing the PI application. In practice, almost all cases are decided on an ex parte basis as a result.

The PI applicant has strict and unlimited liability for damage caused by the PI, if the PI fails otherwise than through the applicant’s success in the action on merits. The effect of EU law, the CJEU decision in Bayer C-688/17, which appears to prohibit this form of liability, is so far unclear.

A bond of circa EUR2,000 has to be paid into court when filing the application. This can be increased by the court.

Defending against a PI application is notoriously difficult, given that the defendant is not informed of the PI application being filed, and the court decides within days in ex parte proceedings. In addition, no new evidence can be presented on appeal. An application to revoke a PI then does not assist the defendant, as the defendant has to prove that the PI should never have been ordered, which requires the court to examine evidence in full; ie, at a hearing in the action on merits. An ordered PI is thus difficult to remove for years and defending against it through the limited means before it is ordered is the only option.

One means of defence is aiming to submit a defensive brief with the court in the hope that the court will look at it when deciding on the PI application. Defensive briefs are not anticipated by the law, but they are not prohibited by the law either. They are increasingly being used. Their effect appears to be minimal, however, as the courts have no system of searching for them. The existence of a single court of jurisdiction for patent, SPC and utility model matters assists, as only one defensive brief needs to be sent out. In an ideal scenario, the court would search its database when it obtains a PI and study the defensive brief and attached evidence before deciding, or at least make the brief part of the court file, so that the defendant can rely on it on appeal. More often than not, the briefs simply never play any role and remain on the court’s files indefinitely.

Another alternative is to call the court daily and aim to submit a written defence once the PI application is filed in the PI application proceedings directly. This should ensure that arguments and evidence can be relied on by the first instance court and on appeal. With daily monitoring the PI application may be decided once the defence reaches the court, as the City Court often rules within one to two days.

The right holder can obtain a permanent injunction if the infringing conduct is taking place or is threatened when the court issues the first instance decision. For the action on merit, it is not relevant when the infringement began. A PI cannot be ordered if it is not urgently needed: ie, if the right-holder suffers infringement for too long, a PI will no longer be available. If the conduct ceased as a result of a PI, the conduct is treated as continuing.

In the case of damages and other monetary claims a three-year subjective limitation period applies. The moment when the owner found out who caused the damage/harm and the level thereof is decisive for the subjective period. The objective limitation period is ten years from the day of the damage or harm occurring.

The right to non-monetary remedies such as the right to an apology is not limited in terms of time.

The right holder can generally request that the court seizes or otherwise acquires evidence which may not be available later, or only with great difficulty. This can be done even before action on merit proceedings begin.

It is possible to request preliminary seizure of a sample of an allegedly infringing product and related documents before proceedings begin, or after they have begun. The proceedings are the same as in interim injunction proceedings (see 2.7 Interim Injunctions).

Third parties must generally disclose any evidence they have available in court, if the court so requests, unless they would themselves admit infringement. The defendant can refuse to testify. The defendant has to produce evidence clearly identified by the court in an order.

Information about scope of infringement can be sought from the defendant; however, not in a preliminary manner – ie, only once infringement is ruled upon will the court order the defendant to disclose such information.

The infringement proceedings are generally front-loaded in that all arguments should be contained in the initial pleadings and all evidence attached or identified. However, for tactical or practical reasons it is also possible to state the absolute bare minimum in the initial claim, and supplement arguments and evidence and make evidence requests later, as it is possible to do so until the end of the first oral hearing and with the court’s permission even later. IP proceedings do not differ from other litigation.

Representative or collective actions are not available in industrial property disputes.

Even if a lawsuit is clearly unfounded, there is no sanction under Czech law for bringing it, other than the obligation to pay the defendant’s costs. Certain conduct could amount to unfair competition, such as dragging customers into the IP dispute with another supplier by accusing the competitor of infringing rights.

The owner of the right can enforce it in its own right.

A licensee can enforce the right once it is registered in the patent, SPC, or utility model register. It has to be either expressly authorised to enforce under the licence, or inform the owner of its intent to enforce, and if the owner does not bring proceedings itself within 30 days of such notification, the licensee can enforce.

The right holder can seek protection from both direct and indirect infringement of a patent.

Direct infringement of a patent is:

• the manufacture, use, offering, introduction of a patent-protected product onto the market, or its storage, import or other dealing with it for such purposes;
• the use of a patented method/process or offering it; and
• dealing with a product made through a patented process.

There is a presumption of infringement of a process if the defendant’s product is identical to that made by the patented method, where it is likely that the patented process was used and the owner could not access evidence about the process.

Indirect infringement is such conduct where the defendant does not practise the invention, but supplies a key element of the invention to another or offers to do so, where the defendant knows the element can be used for the patented method and the key element is not readily available on the market for a legitimate use. The supplier of the key element cannot benefit from the exemptions to patent law in particular under the non-commercial use, experimental use exemption.

The same applies to SPCs, although minor differences exist.

In the case of utility models no one may in commercial activity use, manufacture or introduce into circulation a protected product.

Other conduct, such as that aimed at assisting infringement (sometimes called secondary patent infringement), can be caught under the prohibition of unfair competition as it is not moral to assist others in infringing patents, SPCs or utility models.

In the case of process or method patents the process or method must be practised within the territory of the Czech Republic. However, since the offering of a process is infringing conduct in its own right, in such a case it is not relevant where in the world the process is carried out if the offer is made in the jurisdiction. The injunction would then only be directed to offering, and not the practising of the protected process.

The scope of protection of patents, SPCs and utility models is determined by first looking to their claims, which are interpreted literally. In this process the description and drawings are relied on as well. It is examined whether all the technical features of the claim as they would be identified by the person skilled in the art are present in the product or process under examination. If all technical features are present the product or process falls within the scope of the claim. If a technical feature of the claim is missing in the product or process under examination, it must be determined whether the missing feature is in fact essential to the invention or whether it is not in fact present as a permissible technical equivalent.

The right holder has to prove that the feature, despite being in the claim, is in fact not essential. The patent grant procedure may have resulted in superfluous technical features, which are in fact not necessary to exercise the invention, and which should be disregarded.

The right holder has to prove that an equivalent feature is present in the product or process, and that even with the substitution the patented invention is still realised. There is still very limited case law on the issue of equivalents.

There is no rule stating that prosecution history cannot be taken into account.

The courts carry out the analysis themselves. However, as all judges are legally trained only, they extensively rely on experts, especially those listed in the field of “Patents and Inventions/Industrial Property”, to interpret claims.

Anyone with a legal interest can apply to the IPO for a determination of non-infringement, where the IPO determines whether the product or process described in the application (ie, a product as such cannot be presented for examination) falls within the scope of protection of a patent, SPC or utility model.

An expert admitted with a Regional Court/Ministry of Justice in the field of “Patents and Inventions/Industrial Property” can be approached to prepare an expert report on whether a product falls within the scope of protection of a patent, SPC or utility model.

The defendant can raise a number of defences to infringement.

First, it can claim that it is a prior user of the right. In such a case the right is not effective against it. The exact scope of such right remains unexplored; eg, it is unclear whether use must be continual, whether improvements extinguish the right and how it can be assigned, if at all.

Second, patent rights could have been exhausted, as once the right holder places the product onto the market in the EU or EEA, the patent can no longer be enforced in relation to that product. This permits free movement of goods within the EU and EEA.

A compulsory licence can allow an infringer to use the right, but only after such compulsory licence is granted by the IPO.

There is still no local case law on reasonable and non-discriminatory (FRAND) agreements in standard essential patents, and whether injunctions are unavailable if the right holder does not engage in genuine negotiations. Given that existing EU case law has not created hard rules, it is difficult to know whether a right holder will be unable to seek an injunction in such cases, if it does not engage in genuine negotiations.

The judges are all legally trained and as a result the courts rely on experts to resolve technical issues. The parties can present expert reports, and these have the same weight as those presented by experts appointed by the courts, if they are prepared in accordance with the conditions of Section 127a of the OSŘ.

The courts maintain a list of appointed experts, and one of the fields of expertise is “Patents and Inventions/Industrial Property”. Such experts are often retired officers of the IPO or patent attorneys. They are often called on and permitted by the courts to interpret patent or utility model claims; ie, to determine whether a certain product or process falls within the scope of protection of the patent, SPC or utility model.

There is no distinct procedure for interpreting patent claims; the court carries out patent interpretation itself when weighing the case as a whole, with the parties presenting the competing positions. The courts often rely on the experts described to interpret the claims for them through an expert report. The expert should also be heard and cross-examined in court.

There is no system for the court to seek third-party opinions. However, an affected third party can seek to intervene in court proceedings. Such intervening party has near full rights in the proceedings; ie, it joins the side of the dispute on the success of which it has a legal interest and it presents its own argument and evidence, and can even appeal. However, it cannot act adversely to the party on whose side it joined, and it cannot settle, withdraw or amend the main claim.

A registered right can be revoked on application to the IPO. Any person can seek to revoke a registered right. Revocation proceedings can be begun even after a right has expired; however, in that case the applicant has to show a valid legal interest in doing so.

The courts cannot revoke a patent. However, they can decide that it is invalid and refuse to grant it protection.

Patent revocation can be based on the argument that:

• the conditions for patentability were never present (lack of novelty or inventiveness over the prior art, lack of industrial applicability, or the subject matter is not patentable for lack of technical nature or excluded from patentability – eg, surgical or medical treatment);
• the invention is not described so fully or clearly to enable the person skilled in the art to practise it;
• the patent contains added matter over the scope of the application; and
• the patent owner is not the inventor or its legal successor.

Utility models can be revoked for similar reasons; however, the novelty and innovative level are less strict than in the case of patents.

SPCs can be revoked for reasons specified in the respective EU regulations. Generally, this is because the protected product to which the SPC applies was in fact not properly supported/anticipated by the basic patent, the product was already protected through a certificate, or some other error occurred in the granting process.

The right can be revoked only partially, where the reasons for revocation apply only to its part.

This does not apply to SPCs, which can only be revoked as a whole or not at all.

To avoid full revocation of a right the owner can almost at any time make auxiliary requests, that amend the original wording of the right. This does not apply to SPCs.

In the case of patents, technical features can be taken from the description.

In the case of utility models, case law suggests that claim amendment can be carried out only through the incorporation of dependent claims into the main claim, and no rewording or taking of features from the description is permitted.

Infringement is ruled on by the courts. The courts can address the issue of whether a patent is valid, but this is extremely rare. In such a case, the court will refuse to provide protection to the patent or its invalid part; it cannot order its removal from the patents register.

To fully revoke a patent and have it removed from the register an application must be filed with the IPO.

The court can wait for the IPO decision on validity, but not in all circumstances and never in preliminary injunction proceedings. The court can also decide to resolve the validity issue itself.

The court must wait for an IPO decision in utility model matters before ruling in favour of the right holder, or itself decide that the utility model is valid, because there was no substantive examination at the IPO before its grant. This is not so in the case of preliminary injunctions, where validity is presumed.

The validity proceedings and infringement proceedings progress at their own pace – the system is bifurcated. If a final infringement decision is made in favour of the right holder and the patent is later revoked, the infringement proceedings can be reopened.

Ordinary rules of procedure apply to industrial property and unfair competition litigation.

In cases involving trade secrets or unfair competition, the regional court in whose jurisdiction the defendant is registered has jurisdiction.

Cases involving patents, SPCs and utility models are heard by a specialised senate/panel of three judges at the City Court in Prague (one of the regional courts), which is the only court of jurisdiction.

First instance proceedings take one to three years to reach judgment, depending on complexity. The first hearing takes place six to 12 months after a claim is filed. Usually two, but sometimes three, hearings are necessary. Each lasts a maximum of one day, though usually only a few hours. There is no upper limit on the number of oral hearings.

The first hearing is often organisational and generally results in the court admitting most of the evidence presented in the matter so far and deciding to appoint an expert. At the second hearing the expert/s is/are heard, and the court decides or adjourns to fully consider the expert’s evidence, or to have it reviewed by a further expert.

All witnesses and experts can be cross-examined: although formally it is the court that asks the questions, in practice this is often dispensed with and parties address their questions to the witness or expert directly.

The judgment can either address infringement and damages, or the court can issue an interim judgment on infringement and reserve its judgment on damages until after the appeal on infringement is heard. Damages claims are not common; most cases proceed as pure infringement cases seeking an injunction. Damages are then claimed at a later date through separate proceedings – limitation periods must be kept in mind.

Industrial property cases are decided by panels of three judges at the City Court in Prague or the High Court in Prague who specialise in industrial property. All judges are legally trained and have no formal technical education.

The parties cannot influence where and who hears their case.

The court has to encourage parties to settle. The court does so before beginning proceedings and throughout the proceedings. The court can advise parties to attend mediation. However, the defendant cannot force a case to be settled as it is the plaintiff who is ultimately in charge of the litigation.

If invalidity/revocation proceedings are pending before the IPO or opposition proceedings before the EPO, the infringement court can decide to stay and await the decision. It should only do so where it is advantageous to do so given the circumstances; ie, it should not do so when the other decision is far away.

Otherwise, the infringement courts cannot delay; in particular, no anti-injunction proceedings are available, and foreign decisions or proceedings play no tangible role.

The right holder can demand that:

• the infringing conduct stops, eg, the product is not made, offered, used, disposed of, stored, imported or otherwise dealt with;
• the infringing state of affairs is remedied, eg, the product is withdrawn from the market, and is destroyed, or an apology is made at the expense of the defendant;
• the damage caused is compensated (including lost profit);
• the unjustified enrichment of the infringer is surrendered;
• reasonable compensation for immaterial harm is paid;
• a court judgment is published at the expense of the defendant;
• information about the infringement is provided by the defendant; and
• it receives costs, ie, actual reasonable expenses incurred in the proceedings and legal expenses at statutory levels (see 6.2 Rights of Prevailing Defendants).

The court does not have to order the destruction of goods. The court decides on the wording and scope of publication of an apology, based on what it thinks is appropriate.

The successful defendant can seek costs, which include actual, reasonably incurred expenses (primarily the court fee, cost of acquisition of evidence, notary public fees, and translation and expert cost) and cost of legal representation. Legal representation costs are recoverable at statutory levels, which means that in cases where no damages are sought the recovery is circa EUR1,000 per instance per defendant.

If a party has partial success it can usually only recover costs in part.

The remedies for the various industrial property rights are in practice the same. However, only in the case of patents, SPCs and utility models can the plaintiff demand that the monetary compensation for damage, unjustified enrichment and reasonable compensation for immaterial (non-economic) harm is paid in the form of a lump sum equal to at least twice the licence fee that would have authorised the infringement. This is not available in unfair competition cases, where the pecuniary compensation must be precisely calculated and proven.

The first instance judgment is not effective or enforceable if it is appealed. All orders are thus ineffective until the appeal court decides. This does not apply to the preliminary injunction orders which continue. A fresh interim injunction could also be sought to provide protection pending the appeal.

Appeals in industrial property matters proceed under ordinary rules of procedure. In the case of patent, SPC and utility model appeals, the City Court in Prague and the High Court in Prague have exclusive jurisdiction and sit in three-member panels/senates. All judges are legally trained and specialise in intellectual property.

The appeal proceedings allow for a review of both fact and law. However, new evidence cannot be presented as a general rule, unless it can be shown that one of the exceptions applies, such as the evidence did not exist at the time of first instance judgment, or to undermine the credibility of evidence relied on in the judgment, or to prove errors of procedure.

No costs have to be incurred before a lawsuit is initiated.

Preparing a warning letter generally costs between circa EUR500 and EUR1,500 depending on case complexity.

The formal pre-litigation letter that is required for the plaintiff to be able to claim costs can cost circa EUR200 to EUR1,500. Where a warning letter was sent first, the costs are very low.

For the defendant, preparing a protective brief can cost between EUR3,000 and EUR7,000, depending on case complexity. Daily monitoring of court can cost circa EUR2,000 per month.

The court fee, where no financial claims are made, is circa EUR100 per order sought. For PI applications, the court fee is circa EUR50.

Where damages are sought, the court fee is 5% of the sum sought where the sum is between circa EUR1,000 and circa EUR1.5 million. Above that sum, the fee is circa EUR80,000 plus 1% of the sum sought which is above the EUR1.5 million value (if the sum sought exceeds EUR10 million, the 1% fee increase no longer applies).

Each party bears its own costs of sustaining the proceedings; ie, costs of legal counsel, acquisition of evidence, notary public fees, translation fees and expert fees.

The plaintiff has to pay the court fees and the PI bond. The defendant pays the court fee only if counterclaiming.

The court pays the costs of steps it undertakes including the acquisition of evidence; eg, commissioning of expert reports and translations. The court can demand an advance payment from the party which proposed that the evidence is acquired.

The losing party is ordered to compensate the successful parties, and the state’s/court’s costs as described in 6.2 Rights of Prevailing Defendants. In the case of only partial success in the matter, costs are awarded in part.

Alternative dispute resolution is not common in intellectual property disputes. Negotiation, mediation and arbitration are available if the parties agree. The benefit of alternative dispute resolution is that it can be much quicker than litigation.

Industrial property rights placed on a register must be assigned in writing and the assignment recorded with the IPO.

The assignment must be in writing and an application must be lodged with the IPO for its registration, which usually takes a few weeks to a few months. This does not apply to trade secrets or unfair competition.

A licence to registered industrial property does not have to be in writing.

A licence to a registered right is only effective against third parties once it is registered by the IPO. In that case it must be in writing. A licence is effective between the parties even if unregistered and not in writing.

An exclusive licence must be in writing.

A licence must specify:

• the scope of the licence;
• the duration;
• the territory to which it applies; and
• what financial compensation is due to the licensor, or expressly state that the licence is granted gratuitously.

An exclusive licence must be in writing.