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Print version7a. Belgian case law
a. Language use in patent matters - Filing a translation according to art. 65 of the european patent convention (EPC)
1. Is German considered a national language in Belgium ?
Since the ruling of the Court of Arbitration n° 59/94 dated July 14th, 1994, there is no further doubt because said Court specified that " on the legal level, German should be considered from now at the same level as the other two national languages, ". During a short transitional period, this principle was applied to Belgian patents but not to European patents (i.e. that it was possible to file a Belgian patent in German, but that in the case of a European patent granted in German, the filing of a French or Dutch translation was required for the patent to be considered valid in Belgium.). It is not the case anymore and since August 30th, 1996, translations are not required anymore for European patents granted in German.
The Court of Arbitration confirmed this in its ruling 69/2000 dated June 14th, 2000.
2. About the lawfulness (validity) of the obligation to file a translation of the granted European patent, when it is not drafted in a national language of the State ?
Practical case:
the holder of a granted European patent fails to file a translation of said patent in the national language of the State within the 3-month delay (= delay adopted by all EPC member States requiring the filing of a translation), starting from the date of the decision to grant.
Ruling of the Court of Arbitration n°69/2000 dated June 14th, 2000 (above-mentioned):
The facts:
The American company CENTOCOR Inc. had a patent EP 0 185 444 granted in English on December 22nd, 1993, but only filed a French translation at the Belgian Patent Office (OPRI) on September 14th, 1994, i.e. long after the 3-month delay which expired on March 22nd, 1994. Consequently, the OPRI notified them that " no choice was left but to state the patent as being void in Belgium ". CENTOCOR then brings an action for annulment of the decision taken by the OPRI before the State Council, which declares the case beyond their jurisdiction (see. infra II.). CENTOCOR submits to the District Court of Brussels the denial to grant a " restitutio in integrum " following the late filing of the translation of a European patent. The Court asks the interlocutory question to the Court of Arbitration whether it was against the principle of equality and proportionality that there is no solution when the translation is filed after the 3-month delay, when solutions are provided for other cases of exceeding the delay in the EPC (Art. 121 & 122) and in the Belgian law (e.g. when an annuity is not duly paid).
Answer of the Court of Arbitration:
- The fact that solutions are provided in the EPC but not in the Belgian law is no valid argument, because the interest of the State to be part of an international convention, negotiated with other States could justify differences of proceedings between said convention and the Belgian law.
- The fact that solutions are also provided in the Belgian law was equally judged to be non-decisive. The Court decided that those differences could be explained by the nature of the acts to be taken. With regard to the filing of a translation, the information of third parties is at stake, and thus the legal security, which justifies the lack of regularisation means past the delay. With regard to the annuities, the rights of third parties are not as obviously damaged.
- Conclusion: The fact that no possible extension of time is provided is not against the principle of equality and proportionality, all the more so since only European patents granted in English require the filing of a translation in Belgium (see supra).
The Belgian case law recently had to reach a decision regarding the material and territorial jurisdiction of the Belgian courts.
1. Material jurisdiction:
According to Article 73§1 of the 1984 Belgian law:
" The District Courts receive the applications related to patents, whatever the amount of the application. Any application concerning a patent infringement and related unfair competition is exclusively taken before the District Court ".
The problem is as follows: which court has jurisdiction when one wishes to bring an action for annulment of a decision taken by the OPRI (as in this case, the denial to take into consideration the translation of a European patent filed too late)?
In this case, it would be logical that the State Council, i.e. the administrative court of law, has jurisdiction, all the more so since Article 73 seems to be directed at civil proceedings (infringement, ) and not at the decisions taken by the OPRI, which is an administrative organ. Surprisingly enough however, the State Council declined jurisdiction in 2 rulings (n°57.772 dated January 23rd, 1996 and n°74.368 dated June 18th, 1998) and decided to send the Applicant back to a civil court.
2. Territorial jurisdiction - international jurisdiction:
a. Important legal texts:
-
The Brussels Convention (BC) dated September 27th, 1968 (signed between the member States of the EU), in which the following Articles are to be remembered:
- General principle:
Article 2: " Subject to the provisions of this Convention, persons domiciled in a Contracting State, whatever their nationality, be sued in the courts of that State "
- Particular case:
Article 4: " If the defendant is not domiciled in a Contracting State, the jurisdiction of the Courts of each Contracting State shall, subject to the provisions of Article 16, be determined by the law of that State "
- Exception:
Article 16: " Shall have exclusive jurisdiction, regardless of domicile:
in in proceedings concerned with the registration or validity of patents, trademarks, designs, or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place "
- General exception:
Article 24: " Application may be made to the courts of a contracting State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Convention, the courts of another Contracting State have jurisdiction as to the content of the matter ". - The Belgian judicial code:
- Art. 635,5:
" The non-nationals can be summonsed before the courts of the Kingdom, either by a national or by a non-national, in the following cases:
5° concerning ... all other provisional or protective measures. "
- Art. 1481 to 1488 --> on infringement seizure
b. Case Law:
- The infringement seizure is indeed a protective measure in the sense of Article 24 BC;
- As soon as the real link with the Belgian territory has been proved, an infringement seizure can be asked for in Belgium in order to obtain proofs of the infringement in Belgium, but also and above all abroad, even if there is no Belgian patent.
- With regard to the other countries than Belgium, the application has no real link with Belgium (contrary to the infringement seizure proceedure, where the objects and/or documents are located in Belgium, as was the case in the Sanac case) and that proceedings must be submitted in each country ;
- Moreover, Medtronic requires a global measure for all countries and failed to subsidiarily request the application for Belgium only.
SKB vs Chiron (District Court of Brussels - February 06th, 1997): SUMMARY PROCEEDINGS
SKB manufactures a vaccine against hepatitis B. Chiron is the holder of several European patents (which for that matter are opposed by SKB), the implementation of which allows its licensees to manufacture a similar vaccine.
Several proceedings are pending between the parties: in Belgium, proceeding regarding the content by SKB for the annulment of the patents and the non-seizure of the litigious products; an infringement seizure proceeding by Chiron and its continuation regarding the content following the expert's report; in the Netherlands, a proceeding by Chiron to prevent the infringement by SKB. All these proceedings are pending.
In the present proceeding, SKB and all its European subsidiary companies require on the one hand that the judge defers the effects of Chiron's European patents for all the designated States until the judgement on the content is pronounced, and on the other hand that the judge in charge of the summary proceedings subsidiarily allows SKB and its subsidiary companies to carry on with the manufacturing and the marketing of the vaccine in all states designated by the patents of Chiron --> SKB actually asks for a declaration of non-infringement.
The jurisdiction of the Belgian court is questioned as well as the legal text applicable. The Court decides on the applicability of the Article 24 BC in the matter and specifies that, if they were to have jurisdiction, the measures asked for by SKB should be deemed provisional and protective measures in the sense of Art. 24 BC. The European Court of Justice (ECJ) gave the following definition which must be taken into account: " the measures which, , are intended to maintain a situation of facts or right in order to preserve the rights the acknowledgement of which has moreover been asked to the judge examining the content of the case".
SKB first asks for the suspension of the effects of the patent, which is not a provisional measure because it does not aim to maintain a situation of fact --> SKB is non-suited for that point.
SKB then asks to be allowed to carry on with the manufacturing and the marketing of the vaccine. This demand is a provisional measure because it aims to maintain a situation of fact, in this case the present situation with SKB and its subsidiary companies producing and marketing the vaccine involved since 1986. Thus, the judge decides that he has jurisdiction to allow SKB to carry on with the marketing everywhere where there is a patent (not only in Belgium). In the present case however, the judge decided that the arguments of SKB (the emergency, given the proceeding in the Netherlands, the need to supply the market with this type of vaccine) to face the need were not enough to allow him to carry on with the marketing and refused to prove SKB right.
SKB vs Connaught (District Court of Brussels - June 27th, 1997): SUMMARY PROCEEDINGS
This case is very similar to the previous one, SKB asks the Court to be allowed to carry on in Belgium and abroad with the manufacturing and the marketing of a vaccine on which Connaught has been granted an European patent and for which several proceedings were introduced in Belgium. In this ruling, the judge does only rule on his jurisdiction, which he deemed well-founded to take that kind of measures.
In these 2 cases, the Belgian judge considers that he has jurisdiction to allow (or not) the continuation of the manufacturing and the marketing of litigious products by an alleged infringer, not only in Belgium but also in other countries where the EP patent is valid.
Sanac vs Variantsystemen (Court of Cassation - September 3rd, 1999):
The Danish company VARIANTSYSTEMEN is the holder of patents in Germany, France and the United Kingdom. Based on Article 1481 of the judicial code, they ask the Belgian judge to prescribe an infringement seizure against 2 companies domiciled in Belgium in order to prove the infringement in Belgium and the Netherlands but above all in the countries where they own a patent. The Belgian companies (among which SANAC) are opposed to such a measure, on the one hand because the Belgian judge cannot be informed of breaches on foreign patents and on the other hand because VARIANTSYSTEMEN is not the holder of a Belgian patent. The first judges consider they had jurisdiction to prescribe such measures (there had already been decisions in that sense, notably a ruling by the Court of Appeal of Gent dated November 17th, 1995). SANAC lodged an appeal against those judgements, and the Court of Cassation will then have the last say on that case.
The Court of Cassation proved the judges examining the content to be right and invoked the Article 24 BC, which allows the Belgian judge to prescribe protective measures in order to obtain proofs of infringement in Belgium but also abroad on the one hand, and on the other hand, the protection of foreign patents. Indeed, Article 1481 of the judicial code does not specify that the patent on which the infringement seizure is based must be a Belgian patent. Besides, if patents are only valid on the territory of the State which have granted them, the protective measures more especially aimed at the protection of the proof-making by the patent holder are not subjected to the same restrictions. Moreover, according to Article 24 BC, the provisional and protective measures provided by the law of a Contracting State can be asked for to the judiciary authorities of said State, even if the judge of another State has jurisdiction for the content (as in this case, for example, the Belgian judge has no jurisdiction to judge on the annulment of the patent). However, the Court of Cassation adds a restriction: the judge only has jurisdiction when there is a real link (request of the ECJ since the VAN UDDEN ruling dated November 17th, 1998) between the object of the measures to be taken and the territorial jurisdiction of the distrainee judge. In this case, the link exists because the objects to be seized are located in Belgium.
From this ruling, it should be kept in mind that:
In this case, 2 Belgian companies are opposing. RESILUX is the holder of a European patent designating Belgium. RESILUX had had an infringement seizure to prove the infringement by SCHMALBACH not only in Belgium, but also in the other countries where the patent is protected. RESILUX thus requires the suspension of the marketing by the alleged infringer not only in Belgium, but also abroad, which SCHMALBACH refutes. The judge proves RESILUX to be right and orders SCHMALBACH to stop the marketing in all States, not only in Belgium, for fear of damages. The judge can indeed take protective measures with extraterritorial effects.
Based on those 4 case laws, it could have been expected that many international litigations would be brought before the Belgian courts, because the Belgian judges not only allowed extraterritorial measures to obtain proofs (see SANAC, ) but also deem to have declared they had jurisdiction for applications of a negative declaration of infringement (see SKB, ...).
HOWEVER, the recent case law has backed up a bit.
Röhm Enzyme vs DSM (District Court of Brussels - May 12th, 2000): CONTENT PROCEEDINGS
Röhm had asked for the annulment of the EP patent (valid in several countries, among which Belgium) owned by DSM, they ask the Court to be allowed, as well as all the other applicants (who are their subsidiaries in the other countries where the patent of DSM is valid), to carry on with the manufacturing and the marketing of the litigious products not only in Belgium but also in the other countries until the judgement of the annulment trial. Obviously, Röhm started this proceeding in Belgium because of the preceding rulings (whereas in the Netherlands, for example, the judges were much more restrictive to declare that they have jurisdiction). However, the Belgian judge in this case declared he had absolutely no jurisdiction and qualified the use of the " Belgian torpedo " (the forum shopping) as misuse of rights in international patent cases. Moreover, Röhm is even sentenced to pay damages to DSM.
Roche vs The Wellcome Foundation (District Court of Brussels - June 08th, 2000): CONTENT ACTION
This proceeding is very similar to the previous one, Roche asks for annulment of the patent of The Wellcome Foundation on the one hand and on the other hand asks to be allowed to carry on with the manufacturing and the marketing of the litigious products, not only in Belgium, but also in the other countries.
The Belgian Court declared they had jurisdiction with regard to what is exclusively related to the Belgian territory, i.e. to judge the annulment of the patent on Belgian territory according to Art. 49 of the Belgian patent law. However, they declare that they have no jurisdiction to take extraterritorial measures and condemn the " forum shopping " as well, specifying that a Belgian company should only be involved with the case when there is a material interest to do so in the proceedings (in this case, Roche had only assigned the Belgian subsidiary companies of The Wellcome Foundation to be able to act in Belgium).
Medtronic Belgium vs Therex LTD Partnership (District Court of Brussels - June 23rd, 2000): SUMMARY PROCEEDING
Therex is the holder a European patent and believes that Medtronic is infringing it. Besides, Therex has obtained the condemnation of Medtronic in Germany on that matter.
Therex fears that Medtronic will bring an action before the courts in the Netherlands (obviously more favourable to patent holders than to the alleged infringer, all the more so since, in the present case, Medtronic is manufacturing in the Netherlands and not in Belgium) in order to prove the infringement by an extraterritorial measure, and refers to the Belgian courts so that they recognise the non-infringement of Medtronic (and thus, allow Medtronic to carry on with the manufacturing and the marketing) in Belgium as well as in the other countries where the European patent is valid, except for Germany because the case has already been judged there. The Belgian judge declares that Article 24 is applicable but points out that:
Epic Medical Equipment Services vs Nellcor Puritan Bennett (District Court of Brussels - September 22nd, 2000): SUMMARY PROCEEDINGS
Nellcor is the holder of European patents which the Epic company is alleged to infringe. Nellcor gave all European distributors of Epic notice to stop the manufacturing and the marketing of the litigious product.
Epic asks the Belgian courts to acknowledge the non-infringement by Epic and thus to allow them to carry on with the marketing in Belgium as well as in the other countries where the Nellcor patent is valid.
Here again, the judge deems that Article 24 is applicable but refers to the same arguments as in the previous ruling for nonsuiting Epic.
In those 2 rulings, the judge adds an important precision: the link with the Belgian territory which is the basis of the jurisdiction of the Belgian judge relates to the object of the sought measure and not to the existing litigation between the parties. The object of the provisional measure itself must have a real link with the Belgian territory for the Belgian authorities to have jurisdiction according to Article 24 BC. Therefore, the Court of Cassation declared the Belgian judge to have jurisdiction in the Sanac case, inasmuch as the object of the measure has a real link with the Belgian territory (the documents to be " seized " are located in Belgium). On the other hand, in these 2 cases, the object of the sought measure is not located in Belgium but in each country in which an authorisation of marketing has been asked for. To ask for marketing in the Netherlands has no link with Belgium, even if one of the parties is Belgian. There must be as many proceedings as countries.
In its ruling dated September 22nd, the Court calls for a decision regarding this matter from the Court of Cassation in order to fix the case law.
c. Conclusion:
If the Belgian Courts have first seemed to admit applications of extraterritorial non-infringement declaration, they now seem to have changed their minds. The recent rulings of the Court of Brussels will certainly be appealed, and these proceedings will perhaps allow the Court of Cassation to take a decision regarding this matter; these decisions nevertheless refrain the " Belgian torpedo ", i.e. the application of proceedings of extraterritorial "non-infringement" declaration in order to ruin or block eventual infringement proceedings in other States contracting to the BC.
On the other hand, the possibility to have an infringement seizure in Belgium based on a foreign patent is admitted (even if there is no corresponding Belgian patent) in order to prove the infringement in Belgium, but above all in the other countries where the patent is valid.
C. Other recent Belgian case law
Labour Court of Mons - February 27th, 1997:
Confirms that the employer is the holder of the inventions made within the work contract.
S.P.R.L. CONSULT vs S.A. VERRAX GALAND-LAMY (District Court of Brussels - October 17th, 1997):
In this case, there has been a patent assignment (belatedly notified to the OPRI) and the alleged infringer, who was perfectly aware of the assignment, argues however that it is not opposable because the OPRI has not recorded the assignment at the time of the infringement. The Court replies that the recordal mechanism of the OPRI is supposed to protect the third parties of good faith. When the third parties are of bad faith, they cannot wrongly evoke the notification failure, all the more if they are alleged infringers.
INPHARZAM vs EUROGENERICS (Appeal Court of Brussels - December 18th, 1998):
INPHARZAM is the holder of the " lysomucyl " patent and believes EUROGENERICS is infringing it. INPHARZAM thus requests an infringement seizure, with severe complementary measures for EUROGENERICS, such as actual seizure of the recordal file (for the obtention of the market authorisation) and of the product supply, and the interdiction for EUROGENERICS to market the product and to part with the supply for fear of penalties.
EUROGENERICS rises up against those measures.
The Court first reminds the great principles at the basis of the infringement seizure, i.e. it cannot be subordinate to the preliminary recordal of the infringement, because it is intended to collect the proofs of said infringement. The judge only needs to notice that there is indeed a patent and clues of breaches of right. Moreover, the complementary measures (actual seizure, etc.) are only intended to preserve the right and must be reasonable.
In this case however, the Court ruled that all complementary measures were justified, as long as the duration of the actual seizure was limited to the duration of the proceedings related to the content.