2008 11 28 Munich Patent Seminar


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2008 11 28 Munich Patent Seminar

  1. 1. Patent infringement disputes in The Netherlands Wouter Pors Bird & Bird The Hague
  2. 2. 2 Why The Netherlands? Relatively small market, but… Trade hub, a port of entry to Europe Harbour: Rotterdam Airport: Amsterdam Schiphol Many European holding companies No bias against foreign plaintiffs English and German spoken Reliable proceedings
  3. 3. 3 Dutch legal system Civil law country 3 instances District Court: first instance Court of Appeal: full review Supreme Court: review on points of law and clearly erroneous Patent litigation: exclusively in The Hague Specialized judges in each instance 50 – 60 judgments per year in first instance Evidence can be submitted in English and German Experts can speak English or German at oral hearing
  4. 4. 4 The District Court: an open mind Judges in the IP chamber are interested in technology Not an ivory tower: it is understood that patents are business and are used as such Judges are keen to develop the law But at the same time want to keep in touch with developments abroad Close contact with especially English and German judges Interested in learning about foreign case law Willingness to refer questions to ECJ, even in first instance
  5. 5. 5 Procedure in first instance Full proceedings on the merits: 2 - 2,5 years Accelerated patent proceedings 16 – 24 months 1 round of written submissions Oral hearing, 3 – 5 hours No cross-examinations Preliminary injunction proceedings (kort geding) Urgency assumed in case of ongoing infringements 6 – 8 weeks Writ of summons + oral hearing Ex parte injunction 1 – 2 days
  6. 6. 6 Ex parte injunctions Injunctions on infringement Requirement: Urgency Assumed in cases of irreparable harm Substantiate right and infringement! Alleged infringer is not notified Review in ordinary preliminary injunction proceedings (kort geding) Follow-up in full proceedings within 6 months Liability for damages if overturned
  7. 7. 7 Ex parte injunctions: procedure Varies per District Court District Court The Hague Request is filed Judge discusses request with applicant by phone Judge suggests changes New request is filed and granted (or not) Assumption: new request partly reflects the view of the Court If judge intends to deny, request is normally withdrawn Order contains term for service on infringer Order is published on www.boek9.nl after expiry of term Order contains date for review hearing in kort geding
  8. 8. 8 Ex parte injunctions: urgency Special urgency required for ex parte decision Infringement after writ of notification is intentional, so urgency assumed (Meijn v. Tieleman) Loss of exclusivity causes price depreciation, which is irreparable (Meijn v. Tieleman) Seriousness of infringement (many cases) Review in preliminary injunction proceedings Normal urgency required to maintain injunction, as alleged infringer can now plead his case (Tieleman v. Meijn) No counterclaim needed on review
  9. 9. 9 Evidential seizures Raid on alleged infringer Evidential seizure Detailed descriptions Samples Object Infringing goods Materials and implements used in production Documentation (hard copy & computer files): copies are made Purpose: safeguarding evidence Also for foreign litigation (DC Arnhem 1-6-2007, Synthon v. Astellas): for German infringement proceedings
  10. 10. 10 Evidential seizures: who can do it? Bailiff executes the seizure and is responsible Plaintiff and its representatives not allowed to be present DC The Hague 2-4-2008, Westhoff v. Grünewald DC The Hague 22-4-2008, John Deere v. VR-Products DC Arnhem 1-6-2007, Synthon v. Astellas: outside counsel hired to represent plaintiff’s interest and thus identified with plaintiff Independent patent attorney, not representing plaintiff Other people involved by the bailiff IT experts for searching the network and computers Other experts Court may appoint a sequestrator To keep seized materials until disclosure order
  11. 11. 11 Evidential seizures: experts Appointment of experts: varies per court Amsterdam: law does not provide for appointment of experts (DC 9-5-2007, Applera v. Stratagene) Arnhem: court appoints expert (DC 8-5-2007, Applera v. Stratagene) The Hague: order determines which experts the bailiff may involve (DC 11-03-2008, MFB Diffusion v. Asiangear and DC 2- 4-2008, Westhoff v. Grünewald) If not appointed by the court, experts may have liability DC Arnhem 1-6-2007, Synthon v. Astellas: issue of unlawfully achieved evidence to be determined in main proceedings Is this covered by professional indemnity insurance? Will the expert require indemnification?
  12. 12. 12 Evidential seizure: access to results? DC Arnhem: no immediate access, only after court order in inter partes proceedings 1-6-2007, Synthon v. Astellas Initial view The Hague: Seizure implies access to documents that can contribute to establishing infringement No access to other documents, such as on amount of sales Primarily responsibility of plaintiff’s outside counsel 18-6-2007, instruction in Applera v. Stratagene New views The Hague: No access, 2-4-2008, Westhoff v. Grünewald and 22-4-2008, John Deere v. VR-Products And now: as a rule no access, access requires a decision on a claim ex 843a (15-5-2008, Tieleman v. Meijn) Utrecht: expert report describing the evidence Amount of infringing products and profits made
  13. 13. 13 Limitations on access Balance against protection of confidential information This does not usually preclude a seizure, as the result is usually not accessible automatically It may limit access to certain documents Purpose of seizure is not to discover the “pipeline” Order for disclosure may include redaction of documents Protective orders are available Court documents are confidential anyway Hearing may be partly behind closed doors Judgment only published in redacted version Mere threat of infringement does not warrant access! DC The Hague 25-7-2007, Teva v. Abbott
  14. 14. 14 What about checks and balances? Ex parte injunctions were copied from Germany Germany has developed a system of protective letters If you suspect a right owner may file ex parte, you may submit your views in court beforehand This is deemed necessary to maintain the balance of due process The Directive should not only provide for a high, but also for an equivalent and homogeneous level of protection (recital 10) Not only instruments should be proliferated, but also the accompanying checks and balances
  15. 15. 15 Protective letters in the Netherlands Available in the District Court The Hague Both for ex parte injunctions and evidential seizures Submitted via a special e-mail address To be renewed every 2 months May result in handling request inter partes or just taking the alleged infringer’s arguments into account Other courts vary: some do, some do not District Courts have so far been unable to reach agreement Repair legislation might be necessary