28 Oct
2014

Denmark

What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

A preliminary injunction is a fast and effective way of stopping infringement. A preliminary injunction will be issued if the patentee can prove that it relates to acts covered by its patent and infringement is probable. The Bailiff’s Court can help the patentee to enforce the preliminary injunction by, for example, seizing goods suspected of being used for infringement. The preliminary injunction must be followed up by main proceedings, usually before the Maritime and Commercial Court, which may order a permanent injunction as well as payment of damages.

Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?

No.

Are there specialist patent or IP courts in your jurisdiction? If not, what levelof expertise can litigants expect from the courts?

Proceedings relating to patent validity and infringement are usually heard by the Maritime and Commercial Court, which has significant experience of patent cases. Main proceedings are usually heard by one legally qualified judge, assisted by two technically qualified judges. The technically qualified judges all have solid experience in the field from either private practice or industry. Cases regarding preliminary injunctions are heard either by the city court or by the Maritime and Commercial Court. In general, cases regarding preliminary injunctions are heard by one legally qualified judge; however, it is possible to request that technical judges attend as well. Maritime and Commercial Court decisions may be appealed to the Supreme Court, which comprises only legally qualified judges with no special patent expertise.

Are validity and infringement dealt with together or does your country have a bifurcated system?

The Maritime and Commercial Court deals with both validity and infringement, usually in the same proceeding. Any party may request that a patent be re-examined at the Danish Patent and Trademark Office (DKPTO), unless a court case involving the patent is pending. However, provided that the request is made before a court case is instigated, validity may be examined by the DKPTO or the European Patent Office (EPO), while infringement is determined by the Maritime and Commercial Court. The court will generally stay the proceedings until the DKPTO has issued a final decision on validity. Validity decisions may be appealed to the courts.

Who may represent parties engaged in a dispute?

Only attorneys at law can represent clients in court. However, in practice, they often work closely with the appointed patent attorney.

To what extent is pre-trial discovery permitted in cases?

At the patentee’s request, the Bailiff’s Court may undertake an investigation to ensure that evidence of infringement is available. This can be done only if it is probable that infringement has taken or will take place and that evidence can be found in the location to be investigated. A request for investigation will be declined if it is presumed that the resulting damage or inconvenience would be disproportionate to the patentee’s interest. In practice, investigations are carried out by the bailiff, usually accompanied by one or more impartial experts, and may be undertaken without prior notice. The patentee may also attend.

Is cross-examination of witnesses allowed during proceedings? If so, what form does this take?

During main proceedings, witnesses primarily give testimony at an oral hearing, where they may be cross-examined by both parties. It is usually also possible for parties to submit witness statements during the written proceedings, although it is unusual for witnesses to be cross-examined here. Witnesses are frequently called to substantiate the existence and extent of infringement.

What use of expert witnesses is permitted?

During Maritime and Commercial Court proceedings, the court may appoint an impartial expert at the request of at least one party. The expert will prepare a written report answering questions set by the parties, which must be concrete, clear, neutral and relevant, and approved by the court. Questions relating directly to validity or infringement cannot be posed. The expert may also be called to the oral hearing to answer further questions. While parties may suggest a particular expert, ultimately the expert is appointed by the court. In general, it is not possible for parties to present one-sided technical expert statements. In contrast, during preliminary injunction proceedings, it is not only possible but common to present one-sided technical expert statements and parties also often call their own technical experts during oral hearings.

Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?

Danish courts apply the doctrine of equivalents. They start the analysis by identifying the core of the patent – according to case law, this comprises the characteristics of the invention which the patent claims identify as significant. Products or methods containing this core may be considered infringing if they fall within the literal scope of the patent claims, unless one or more parts have been exchanged for technical equivalents obvious to the skilled person. Claim features limited due to prior art during examination proceedings may be interpreted narrowly.

Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods and software?

Few cases in these areas have been decided by the Danish courts. However, Denmark is a party to the European Patent Convention and thus subject to the exceptions to patentability outlined therein (eg, plant and animal varieties, essentially biological processes, uses of human embryos and computer programs). In general, the Danish courts tend to follow the case law developed by the EPO Boards of Appeal.

To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

A Danish court decision is legally binding only for that particular case. However, earlier decisions may set a precedent and represent an important source of law. There is no clear principle regarding the extent to which a previous decision sets precedent; however, in general, Supreme Court decisions are considered to be of greater importance than other court rulings.

To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Few patent cases are heard in Denmark and many of these are settled before the proceedings conclude. Accordingly, available case law is limited. However, the Danish courts are willing to consider the reasoning of courts in other jurisdictions with a similar patent law and tradition (eg, other Scandinavian countries) – although they are not bound by foreign decisions. In matters regarding validity, the courts will also consider case law from the EPO boards of appeal.

What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

In recent years it has become more difficult to delay court proceedings. Patent disputes are generally heard by the Maritime and Commercial Court and all time limits are fixed by the parties and the court early on, including a timeframe for written preparation of the case and a date for the oral hearing. Once these have expired, the court may refuse to accept new evidence, allegations or claims in the absence of special reasons, which might include the following:

  • The evidence, allegations or claims could not reasonably have been presented earlier;
  • The other party may still be able to ensure its interests sufficiently; or
  • A disproportionate loss for the party may arise if the evidence, allegations or claims are not heard.

Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

Preliminary injunctions have been available since 2013 and are issued by either the city court or the Maritime and Commercial Court. A preliminary injunction will be granted if it can be shown that:

  • it is probable that the acts in question infringe the patentee’s rights;
  • it is likely that the acts will be performed; and
  • the aim (ie, prevention of infringement) would be forfeited by waiting for a normal court case. This requirement is always considered to be fulfilled in patent cases.

While a patent’s validity may be examined by the court, if invalidity is asserted based on facts which have already been examined in relation to the patent, there is a strong presumption of validity. Even if no infringement has taken place, a preliminary injunction can still be obtained if it is likely to occur.

How much should a litigant budget for in order to take a case through to a decision at first instance?

The costs of preparing the case depend on the difficulties in meeting the burden of proof of infringement and the extent of potential invalidity arguments. At first instance, they can range from €40,000 for a simple case to €450,000 for a complex pharmaceutical case. In main proceedings the cost of a court-appointed technical expert opinion will be at least €10,000, depending on the case’s complexity.

How long should parties expect to wait for a decision to be handed down at first instance?

The 2006 reform of the Danish court system aimed to streamline patent cases and accelerate processes – courts now aim to conclude patent cases within one year. The average pendency of patent cases at the Maritime and Commercial Court in 2011 was 21 months. Proceedings may be stayed awaiting a decision of the DKPTO on a re-examination or the EPO on an opposition.

To what extent are the winning party’s costs recoverable from the losing party?

The successful party may obtain its costs from the losing party. The courts are generally conservative when awarding costs, which are typically less than the actual costs of the successful party. Court fees can be fully refunded, whereas costs for legal assistance from an attorney at law are refunded based on standard rates. Other justifiable costs (eg, court-appointed experts, expert reports and witness compensation) may also be fully refunded. Patent attorney costs are normally not refunded.

What remedies are available to a successful plaintiff?

Several remedies for patent infringement are available. An infringer must generally pay reasonable compensation for having used the patented invention, as well as compensation for additional damages. Both preliminary injunctions and permanent injunctions may be granted. The patentee may also request confiscation or destruction of infringing products or machines or production equipment, or surrender of infringing products. Penalties for purposeful infringement in the form of fines or even imprisonment are available, but rarely implemented.

How are damages awards calculated? Is it possible to obtain punitive damages?

Reasonable compensation for having used a patented invention, as well as reasonable damages and reimbursement of any losses that the patentee has suffered because of the infringement, must be awarded irrespective of good or bad faith. To determine the amount of damages, issues such as lost revenue and the profits of the infringer are taken into account, as well as market disturbance, including estimated future sales losses and loss of goodwill. Damages may also be cumulative. Compensation for having used the patented invention may be based on the licence fee that the patentee could reasonably have charged on the market. Punitive damages are not available.

Under what circumstances might a court grant a permanent injunction? How often does this happen?

Successful parties commonly obtain a permanent injunction. If a preliminary injunction has been granted, this can be made permanent by a decision in the main proceedings before the Maritime and Commercial Court. A permanent injunction can also be obtained directly after the main proceedings. If an injunction is granted, the bailiff should prevent the prohibited act, possibly with the help of the police.

Does the losing party at first instance have an automatic right to appeal? If not, under what circumstances might leave to appeal be granted?

Any first-instance decision is subject to appeal. Decisions of the Maritime and Commercial Court are appealed directly to the Supreme Court, which is obliged to hear the appeal. Decisions of the city court are appealed to the high court.

How long does it typically take for the appellate decision to be handed down?

Appeal proceedings usually take one to two years, although this can be much longer.

Is it possible to take cases beyond the second instance?

In general, it is not possible to take cases beyond the second instance. Decisions of the Maritime and Commercial Court are appealed directly to the Supreme Court, which is the highest court in Denmark. In rare cases, city court decisions can be taken beyond the second instance if they involve questions of principle.

To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Denmark has no split jurisdiction, so infringement and validity may be prosecuted in the same proceedings, which tends to reduce the likelihood of favouritism towards any party. However, in preliminary injunction proceedings, an issued patent is assumed to be valid unless new evidence to the contrary is presented.

Is your jurisdiction a signatory to the London Agreement on Translations?

Yes. To validate a European patent in Denmark, the claims must be translated into Danish, while the description may be filed in English or Danish. However, a full translation into Danish may be required in patent infringement proceedings if either the defendant or the court requests it.

Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

Yes. At a referendum held in May 2014, a significant majority voted in favour of the court, following which the agreement was ratified in June 2014.

Are there any other issues relating to the enforcement system in your country that you would like to raise?

In Denmark, unlike in other European countries, both third parties and patentees can request re-examination of a patent at any time. This is a useful tool for testing the validity of a Danish patent or the Danish part of a European patent.

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Høiberg A/S

European Patent and Trademark Attorneys

St Kongensgade 59 A

1264 Copenhagen K

Denmark

Tel +45 3332 0337

Fax +45 3332 0384

Web www.hoiberg.com

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Louise Aagaard

Partner

[email protected]

Louise Aagaard is a partner at Høiberg A/S, a member of Høiberg’s board of directors and a qualified European patent attorney. She has a background as a biochemist and graduated with an Msc in biochemistry from the University of Copenhagen and a PhD in genetics from the University of Vienna. Since 2001 Ms Aagaard has advised on patent-related issues, particularly in the area of life sciences, including biotech, pharmaceuticals, the food industry and green-tech. She qualified as a European patent attorney in 2004. In addition, she lectures on IP rights courses and patent conferences, and is chairman of EPCtutors, an organisation which organises the CEIPI basic course in Copenhagen.

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Claus Elmeros

Partner

[email protected]

Claus Elmeros is a partner and European patent attorney at Høiberg A/S, where he heads the Aarhus office and chairs the board of directors. After graduating in mechanical engineering from Aalborg University, in 1990 Mr Elmeros worked as a patent examiner at the European Patent Office (EPO). Since 1995 he has advised clients on almost all aspects of intellectual property, from drafting patent applications, freedom-to-operate opinions, patent infringement assessments and validity assessments to opposition and appeal proceedings before the EPO, as well as litigation support in Denmark and other countries. He is a member of the standing panel of technical judges at the Maritime and Commercial Court and regularly acts as the court-appointed technical expert in patent disputes.