22 Oct
2020

Sweden

Ström & Gulliksson AB

Q: How can patent owners best enforce their rights in your jurisdiction?

In Sweden, a patent right is best enforced by initiating court proceedings at the Patent and Market Court on the alleged infringement. The Patent and Market Court was established in 2016.

Q: Are mediation and arbitration realistic alternatives to litigation?

Arbitration is available only if there is an agreement between all parties specifying an arbitration clause. Only disputes concerning matters in which the parties may reach a settlement are arbitrable, which means that while patent infringement may be subject to arbitration, patent validity is non-arbitrable.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

The Patent and Market Court, as well as the Patent and Market Court of Appeal, is composed of both legally trained judges and technical experts competent in patent law.

Q: What level of expertise can litigants expect from courts?

The level of expertise of the Swedish courts is very high. As the Patent and Market Court is a specialised court, the judgments are well reasoned and based on an understanding of the technical and legal issues.

Q: Are validity and infringement dealt with together in proceedings?

Typically, yes. Even though issues of validity and infringement are litigated as two individual court proceedings, the court will normally join the cases. The main hearings of the two cases will then be held back-to-back, one directly after the other.

Q: Who may represent parties engaged in a dispute?

Subject to certain general requirements regarding legal capacity and domicile, anyone can represent a party in a Swedish court case. There are no formal requirements in terms of qualification. However, given the complexity of a typical patent case, a party will normally be represented by a team of lawyers and patent attorneys.

Q: To what extent is forum selection possible in your jurisdiction?

In Sweden, all patent cases are tried by the Patent and Market Court. The court is hosted by the Stockholm District Court. Appeals are tried by the Patent and Market Court of Appeal, hosted by Svea Court of Appeal. This means that there is no room for forum selection in patent matters. The advantage of having these specialised patent courts is that they are composed of both legally trained judges and technical experts skilled in patent law. As such, the parties can generally expect a well-reasoned judgment that addresses both the technical and the legal issues.

Q: To what extent is pre-trial discovery permitted?

There are two instruments available for a patent rights holder in Sweden to obtain information about a suspected infringement prior to trial. The first is the infringement investigation, which can be requested by an owner or licensee if it can be reasonably assumed that an infringement is committed or being attempted. Supported by a court order for an infringement investigation, the Swedish Enforcement Agency can search specific offices, factories or other premises of the alleged infringer to identify and preserve specified evidence of the infringement. As an alternative, the owner or licensee can apply for a court order for disclosure of information, provided that probable cause is shown. A broader range of parties than just the accused infringer can be ordered to disclose information. A court order for disclosure of information can be used to retrieve information about producers, distributors, suppliers and wholesalers, as well as sales prices and quantities of products or services involved in the infringement.

Q: To what extent is evidence written and oral at proceedings?

Written and oral evidence have the same weight. Written evidence is obviously more extensive, but oral evidence takes more time during the main hearing than written evidence. Written evidence is considered to have been reviewed automatically, but legal counsel often refers to central aspects of written evidence. Oral evidence gains more attention during the main hearing and oral examination of an expert is more important than a written expert report.

Q: What role, if any, can expert witnesses play?

Expert witnesses may, in line with above, carry an important role in proceedings. In fact, witnesses are one of the most important evidentiary means and Swedish courts are inclined to ascribe high evidentiary value to their testimonies. An expert witness may be appointed either by the court or by one of the parties. The principle difference between a ‘witness of fact’ and an ‘expert witness’ is that prior to the main hearing, an expert witness will produce a written expert opinion regarding the matters of which testimony are given (ie, the expertise of the witness). When the expert witness is appointed, essentially the same rules apply as for a witness of fact. Swedish procedural law does not allow a witness to attend the hearing prior to giving testimony, which means that in general experts are not allowed to be heard at a witness conference. However, if the parties are in agreement with respect to how the experts will be heard, this is usually accepted by the court. According to the Code of Judicial Procedure, a party to the proceedings cannot act as a witness. Instead, a party may testify under truth affirmation. Expert evidence is particularly important in Swedish proceedings to establish common general knowledge and how to interpret various prior arts and disclosures.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

From a Swedish standpoint, equivalence interpretation has been considered allowed by the courts to a limited extent in accordance with the protocol to Article 69 of the European Patent Convention (EPC). The assessment of the scope of protection conferred by a patent involves the two principal steps of:

  • an interpretation of the features of the patent claims; and
  • an assessment of whether and, if so, how far the protection could extend beyond what follows from the technical meaning of the features – first, in light of the description read by the person skilled in the art on the priority date and, second, if such a skilled person would find it obvious that the features included known equivalents (without rendering the invention obvious).

Case law has traditionally used a negative method to conclude where the doctrine of equivalents cannot be applied. Court practice has identified seven factors, the presence of which excludes the applicability of the doctrine of equivalents. However, recently the courts have begun to apply a positive test for where it should be applied. Despite this possible recent change in practice, the courts continue to emphasise that the abovementioned factors, which exclude the applicability of the doctrine of equivalents, remain relevant. This change of stance by the courts must to some extent be interpreted as a more permissive approach towards the use of the doctrine of equivalents.

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

Swedish patent law is intended to be harmonised with EPO practice, so all granted European patents should be enforceable in Sweden. In the case of software-related inventions, the Swedish courts have followed the EPO standards of patentability. This means that claims directed to a computer program product are enforceable. However, it also means that the validity of business method patents may be difficult to defend after the EPO developed its practice of non-technical hindsight.

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

The courts are not obliged to consider previous cases that have covered issues similar to those pertaining to a dispute. The legal system of Sweden is sometimes included among civil law systems, but as a separate branch, and sometimes counted as separate from the civil law tradition. Case law plays a more important role in Sweden than in some of the continental civil law systems. Courts in Sweden are not formally bound by previous decisions, but in practice the courts normally follow the decisions of a higher court. The highest court – the Supreme Court – has the right to set precedent which is, in practice, binding on all future application of the law.

Q: 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 Swedish proceedings, it is common for parties to refer to decisions or opinions of foreign courts relating to foreign counterparts in infringement or invalidity lawsuits. The Swedish courts are not bound by such decisions or opinions. However, if there is a well-reasoned foreign decision based on facts that are comparable to those of the Swedish case, it can be assumed that this will have some influence. It is difficult to say whether decisions from any particular jurisdiction are regarded as more persuasive than others. Swedish courts frequently refer to EPO Board of Appeal decisions and the EPO Guidelines for Examination, based on the argument that Swedish patent law is intended to be harmonised with the EPC.

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

A party seeking to delay court proceedings may reply late, repeatedly ask for time extensions, and continually add new arguments, facts and evidence. While such behaviour could slow down the process, it may in some proceedings prove to be a risky tactic. For reasons of procedural efficiency, the court may order that no new matter from an obstructing party will be considered. On the other hand, the risk of facing such an order is relatively low in practice. If a defendant seeks to delay a case they can do so relatively simply. Delaying may sometimes result in lost credibility. If the obstructing party is deemed to have been negligent, this might be reflected in the litigation costs. The plaintiff can counter this by requesting the court speed up the procedure. However, no formal measure to request accelerated proceedings is available.

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

A patentee or a licensee may request a preliminary injunction. Preliminary injunctions are frequently requested in patent cases. It is very uncommon for Swedish courts to grant ex parte preliminary injunctions. Case law has established that ex parte injunctions can be granted only if a short delay would cause the plaintiff irreparable harm. The provisions on preliminary injunctions have been interpreted as requiring the court to apply a rule of proportionality.

A preliminary injunction may be granted if the following conditions are fulfilled:

  • the plaintiff shows probable cause for an infringement of the patent;
  • there must be reasons to believe that, by continuing the infringing act, the defendant diminishes the value of the exclusive right in the patent;
  • the measure must not entail inconvenience or injury to the defendant that is disproportionate to the reasons in favour of preliminary injunction; and
  • the plaintiff must provide sufficient security for any loss the defendant might incur as a result of the injunction – the security is normally a bank guarantee that may be used by the defendant.

The court will issue an interim decision, having assessed whether the preliminary injunction is proportional and weighing the plaintiff’s interest against the potential loss to the defendant. If the defendant has filed a revocation counterclaim, the court will consider whether it is likely that the patent will be revoked. (However, there is a strong presumption that granted patents are valid.) Preliminary injunctions are normally decided following written correspondence between the parties without oral hearing.

There is no clear case law regarding how the assessment of a grant of a preliminary injunction is affected by a passive plaintiff in relation to the defendant’s alleged wrongdoing. However, a preliminary injunction action must in general be brought reasonably promptly after the plaintiff has been made aware of the defendant’s actions.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

First-instance proceedings are typically completed within two years, but they may be somewhat longer in complex lawsuits (eg, within pharma). The Patent and Market Court has, since its establishment, expressly striven to adjudicate cases faster.

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

The litigation costs vary a lot depending on the complexity of the case and the need for appointment and hearing of technical experts and witness. In pharma litigation, invalidity cases are typically more expensive than corresponding infringement cases. In general, the cost to take a case through to a decision at first instance will range between €100,000 and €600,000.

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

The winning party’s costs are, in principle, fully recoverable from the losing party, if deemed justified by the court.

Q: What remedies are available to a successful plaintiff?

Typical remedies are damages and injunctions associated with a penalty in the form of a fine. Damages are calculated as a reasonable royalty. Damages may be awarded to compensate for further loss. Infringing articles must be withdrawn from the market and the court may order their destruction. In addition, the winning party may request that the losing party pay for publication of the judgment.

Q: How are damages awards calculated?

Damages for patent infringement are calculated as a reasonable royalty and compensation for further loss. The patent owner is entitled to a reasonable royalty in case of infringement without showing that it suffered any loss. A reasonable royalty should reflect what a licence agreement would have resulted in. Losses suffered (eg, decreased sales and lost orders, among other things) should also be compensated. Damages are also affected by the harm done to the reputation of the invention, non-economic loss and interest in infringement prevention.

Q: Under what circumstances will courts grant permanent injunctions?

A permanent injunction is awarded by the court to a successful patent owner or licensee. Permanent injunctions are normally issued under penalty of a fine. The court sets the amount of the fine at a level ensuring that the injunction is followed.

Q: Does the losing party at first instance have an automatic right of appeal?

The losing party in first instance must seek leave to appeal. In order to obtain leave to appeal:

  • there must be a reason to doubt the accuracy of the first-instance decision;
  • it must not be possible to assess the accuracy of the first-instance decision without leave to appeal; or
  • the case must have a precedential value.

The chances of obtaining leave to appeal are high.

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

The decision on leave to appeal can take a few months. The duration of the appeal proceedings depends on the complexity of the case, but is usually between one and two years.

Q: Is it possible to take cases beyond the second instance?

Patent cases can be appealed to the Supreme Court, but the chances of being granted leave to appeal are low.

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

The Swedish patent courts have a reputation for being fair.

Q: Are there other fora outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

An alternative that can be considered is a separate action using customs control. Swedish Customs can be contacted to seize suspected infringing goods.

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

Patent infringement can be prosecuted as a criminal offence. However, in order for a prosecutor to initiate a criminal offence action, special reasons must exist from the standpoint of public interest. Even though patent infringement can be prosecuted as a criminal offence, this is something that rarely happens. One reason for this is because infringements are generally not reported by the patentees. Another reason is the lack of public interest in individual patent cases.

Ström & Gulliksson AB

Carlsgatan 3

211 20 Malmö

Sweden

Tel +46 40 757 45

Fax +46 40 23 78 97

Web http://www.sg.se/en

Rikard Roos

Managing Partner

[email protected]

Rikard Roos is the managing partner at Ström & Gulliksson. He is an authorised European and Swedish patent attorney. Mr Roos is heavily involved in litigation before the Swedish courts, as a representative as well as technical support in pharma, chemistry and physics matters. In addition to litigation, he works with opinion work, strategic IP counselling and patent prosecution before examining, opposition and appeal divisions.

Björn Andersson

Partner

[email protected]

Björn Andersson is a partner at Ström & Gulliksson. He is also a member of the board of directors. Qualifying as a European patent attorney in 1998 and holding a Swedish authorisation as well, Mr Andersson has been frequently involved in patent litigation throughout his career. He specialises in electronics, mechanics, software and telecoms, and has developed a particular focus on the judicial and commercial aspects of patent litigation. In addition to patent litigation, Mr Andersson is experienced in patent prosecution (including oppositions and appeals), he provides opinions and gives strategic advice.