28 Oct
2014

Iceland

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

Patent holders in Iceland can obtain a preliminary injunction against the allegedly infringing act from the district magistrate. This action is relatively swift and a ruling can be issued within a few weeks. However, a preliminary injunction must be verified by the court, with an application being filed within one week of the injunction being issued. The rights holder must also lodge security in order to indemnify any financial damage caused by the injunction.

General court proceedings are also available. The court system is made up of two stages: eight district courts and the Supreme Court. All patent cases, including verification cases following injunctions, are dealt with by the Reykjavik District Court.

Under the Collection of Evidence Act (53/2006), under certain circumstances a rights holder can obtain the district magistrate’s help to collect evidence following a court order to that effect. Where the court considers that there is a risk that evidence will be hidden, destroyed or altered, or that a delay to the case may cause harm, it may decide to proceed without notifying the alleged infringer. Again in such cases, the rights holder must lodge security to cover the cost of collecting the evidence and indemnify for any possible financial damage.

Remedies are also available under customs laws. If there is a belief that infringing products are being imported, such products can be held by Customs at the rights holder’s request. In such cases it must submit an indemnity to cover any financial damage caused if it turns out that the seizure was not justified.

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

It is possible to resolve disputes through arbitration in Iceland. However, arbitration is rarely used in IP matters and is not recommended as a realistic alternative, due to the lack of experienced arbitrators in this area.

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

There are no specialist patent courts in Iceland. Cases involving patents are all tried by the Reykjavik District Court.

To date, the number of patent cases tried before the Icelandic courts is very low, although it is increasing. Therefore, judicial expertise is limited. However, the courts can call on experts to assist them where necessary. Such experts need not be lawyers, but are usually professionals in the relevant technical field. Another option is to appoint outside assessors to provide an expert assessment regarding certain questions or uncertainties in the case at hand.

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

In infringement cases, the defendant can counter-summon the plaintiff, claiming invalidity of the patent. In such cases the patent’s validity is dealt with at the same time as the infringement claim.

Who may represent parties engaged in a dispute?

Although parties can represent themselves, this rarely happens – particularly not in complex matters such as those involving patents. In order to represent others in court, one must be an attorney at law specially admitted before the Icelandic courts.

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

Pre-trial discovery does not exist in Iceland.

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

Both parties have the right to question witnesses; the party which called the witness asks questions first and the opposing party then has an opportunity to cross-examine.

All cases before the Icelandic courts go through oral proceedings. The parties present their case and explain the submitted materials. Evidence can include statements from parties before the court, statements of other witnesses, expert assessments and their statements before the court, written materials and other substantive materials.

What use of expert witnesses is permitted?

An expert assessor can answer questions that pertain to, for example, the facts of a given case, but his or her role may not overlap with that of the judge (ie, he or she cannot answer general questions that pertain to the interpretation of the law). The judge then decides the evidential value of the expert assessment. In general, an expert assessment is usually considered strong evidence with regard to the questions that it covers.

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

According to Icelandic law, the scope of the patent is based on its claims, which are construed with reference to the description given in the patent. In general, the courts will apply the doctrine of equivalents to resolve infringement matters. However, limited court precedents mean that no detailed rules are available.

Moreover, as Iceland has been a European Patent Convention (EPC) member state since 2004, it is bound by the Protocol on the Interpretation of Article 65 of the EPC, although the protocol is not directly applicable in Icelandic law. To date, the courts have indicated that they will apply the doctrine of equivalents, but the full extent of how much they will use the protocol and the doctrine of equivalents remains to be seen.

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

Since November 1 2004 Icelandic patent legislation has been fully harmonised with the EPC. The law was also amended to comply with the EU Directive on the Legal Protection of Biotechnology Inventions.

Therefore, there are no provisions to impede the enforcement of European patents. Again, however, there is little case law in the field and it is therefore difficult to predict the possible outcome in such cases.

Regarding computer software-related inventions, to date the Icelandic Patent Office has followed European Patent Office practice. Consequently, one would expect that this would also apply to the courts.

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

In general, the courts look to precedents if the cases in question are similar and there have been no changes in the laws. Supreme Court precedent is of particular importance in this respect.

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?

In general, the Icelandic courts are willing to consider reasoning and precedents issued by courts in the other Nordic countries. This also applies in the field of IP rights. Court decisions from other countries might also be relevant, particularly if they relate to the interpretation of international agreements to which Iceland is a party.

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

Parties to a court proceeding cannot delay a case themselves, even if both parties are in agreement. The judge should deny pointless extensions of terms to ensure that cases are resolved quickly and effectively. This rule prevents parties from delaying a procedure either on their own or in agreement with the other party.

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

Preliminary injunctions are granted by a government authority, the district magistrate. Such actions are relatively swift and a ruling should be issued within a few weeks.

An injunction is possible if the rights holder can prove that:

  • an act is likely to infringe its legitimate rights;
  • the act has already begun or is pending;
  • its rights will be substantially harmed if it is forced to wait for a court resolution; and
  • the general rules on torts will provide insufficient protection.

The district magistrate must also weigh up the interests of the rights holder in having an injunction granted and the interests of the alleged infringer to pursue its actions.

The rights holder must submit a security deposit to indemnify for any financial damage that may result from the injunction. If an injunction is granted, a case must be filed within one week in order to verify it. The alleged infringement will be dealt with in the same case.

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

This is difficult to estimate, as there have been few cases thus far and these were all relatively straightforward. It is likely to cost between €20,000 and €30,000 to take a non-complex patent case through the first-instance court.

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

It takes from six to 12 months to complete a case at first instance – a substantial part of the time can be used to obtain an expert assessment if requested. A request for an expert assessment therefore usually delays a final decision.

There is a special procedure for cases requiring quick resolution. However, this is generally not available in a typical infringement case, unless the matter relates directly to a decision of government authorities.

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

According to the laws on court procedure, a party can make a claim to obtain costs from the losing party. The judge can decide to award costs; in general, if a party loses a case in all major respects, it will bear the costs. The decision regarding the amount of costs to be paid is within the judge’s powers. Usually, the costs awarded by the court will cover only part of the total litigation costs.

What remedies are available to a successful plaintiff?

It is hard to make general assumptions regarding typical remedies, due to the limited number of cases tried before the Icelandic courts. The Patent Act allows for reasonable compensation for exploitation of the patent, as well as damages for possible further injury. For more serious infringement, where intent is proven, punishments may include a fine or even imprisonment for up to three months. Further, the Patent Act allows for measures to prevent further infringements of patent rights, such as by demanding that a certain object be destroyed or altered in order to prevent repeated infringement of the patent in question.

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

Punitive damages are not possible – only damages to cover harm done. It is up to the party claiming damages to prove the harm or costs incurred by the infringement. It is for the court to decide the amount when ordering reasonable compensation for exploitation of the patent, although it will likely consider agreements in general within the field in question, such as licence agreements.

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

Again, it is difficult to generalise, due to the limited number of precedents. However, injunctions are considered to be an important and effective legal remedy for rights holders in Iceland. The limited practice in Iceland has been in line with the view in the other Nordic countries in this regard.

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

An appeal from the district courts to the Supreme Court is possible. The criteria for granting leave to appeal are not strict, but relate mainly to the minimum amount claimed if the claim involves a certain amount of money or the estimation of the overall interests at stake. The minimum amount is around €2,000. An appeal must be lodged within three months of a first-instance decision.

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

The caseload at the the Supreme Court of Iceland may vary from time to time. Currently, it generally takes between nine and 12 months from appeal until a decision is handed down.

Is it possible to take cases beyond the second instance?

There are only two instances for patent cases in Iceland: the Reykjavik City Court (first instance) and the Supreme Court of Iceland (second and final instance).

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

It is difficult to say how pro-patentee the Icelandic courts might be, primarily due to the low number of cases brought before them.

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

Iceland was one of the signatory states to the London Agreement and the agreement took effect in Iceland on May 1 2008. In fact, the Patent Regulation was amended as early as 2001 in line with the London Agreement, so from that time only the translation of claims into Icelandic has been required.

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

No.

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

The general issue of concern in Iceland in relation to IP enforcement, and in particular patent enforcement, is the courts’ lack of experience in dealing with such cases. Therefore, it is difficult to predict a likely outcome.

The rules on proof are not well defined in Icelandic law and practice relating to patent infringement and invalidity. This is mainly due to the lack of court precedent. The basic rule is that the burden of proof regarding infringement lies with the party alleging that infringement has taken place. The judge then decides, in accordance with general rules on proof in Iceland, whether the facts have been proven. However, there are special rules regarding the burden of proof in an infringement case involving process patents. If the alleged infringer makes the same product as the process patent covers, it has the burden of showing that the product is not made with the patented process.

In cases involving patent invalidity, the party alleging invalidity has the burden of proving that to be the case. Here again, it is within the general role of the judge to decide whether the claim has been proven.

In addition, it is important to emphasise that the Icelandic patent laws have been amended to comply with the EPC. It remains to be seen to what extent the Icelandic courts will look to court precedents in relation to the EPC.

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Arnason Faktor

Gudridarstig 2-4

IS-113 Reykjavik

Iceland

Tel +354 5 400 200

Fax +354 5 400 201

Web www.arnasonfaktor.is

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Gunnar Örn Hardarson

Managing director

[email protected]

Gunnar Örn Hardarson is a European patent attorney, and has a BSc in mechanical engineering and an ML degree. After more than 25 years in the IP field, he has extensive industry and private practice experience. His practice focuses on drafting and prosecution in the mechanical field, opinion work, infringements, appeals and litigation support. Mr Hardarson is a member of various international organisations, including the International Federation of Intellectual Property Attorneys, the International Trademark Association (INTA), the Union of European Practitioners in Intellectual Property (UNION), the International Association for the Protection of Intellectual Property (AIPII) and the Institute of Professional Representatives before the European Patent Office (epi).

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Asdis Magnusdottir

Partner

[email protected]

Asdis Magnusdottir is an attorney at law with 15 years’ experience in the IP field, in private practice, at the Icelandic Patent and Trademark Office and as an IP law lecturer at Reykjavik University Law Faculty. She graduated from the Law Faculty of the University of Iceland, where her final thesis was entitled “The legal protection of biotechnology inventions”. She completed an LLM in law, science and technology at Stanford University, California. Ms Magnusdottir holds a part-time teaching position in IP law at Reykjavik University. Her practice focuses on trademarks, licensing and IP consulting, as well as dispute resolution and litigation. She is a member of various international organisations, including INTA, the European Communities Trademark Association, AIPPI, UNION and epi.