Last Updated March 08, 2019

Law and Practice

Contributed By Linklaters

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Linklaters

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Authors



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

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