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Legal basis

Patent infringement is assessed in accordance with the provisions of national law. In Belgium, the legal basis for infringement proceedings is the Patents Law of 28 March 1984 (published in the Moniteur Belge of 9 March 1985).

Discovery proceedure is described in Articles 1481 et seq. of the Judicial Code.

Definitions

Article 52 (1) of the Belgian law lays down that "any violation of the proprietary rights referred to in Article 27 shall constitute an infringement, and the perpetrator shall be liable. Good faith shall be no defence to an allegation of infringement".

Article 27 provides a limitative list of acts of infringement. They may be summarised as follows:

• the manufacture, offering for sale, marketing, use, importing or holding by the infringer of the product which is the subject of the patent;
• the use of a patented process and its offering for use on Belgian territory;
• offering or supplying means relating to an essential element of the patented invention.

All the acts listed above constitute infringements and may be penalised if they are performed without the consent of the patentee.

With regard to the holding of "pharmaceutical products", the question has arisen of whether the holder who intends to arrange for the registration of the said allegedly infringing pharmaceutical product in Belgium may be regarded as an infringer although the product has not been marketed yet.

Legal literature replies in the affirmative, since the commercial objective is implied. This is because registration is the prior and mandatory phase before the introduction of medicinal products onto the market and so constitutes an initial act with a view to their marketing (Novelles, v2 of infringement, No 116).

Proof of infringement

1. Burden of proof

In patent matters, the burden of proof rests with the proprietor of the patent that is considered to be infringed. This is the application of the common law, each of the parties being required to prove the facts it alleges (Article 870 of the Judicial Code).

In this respect, the proprietor of the patent may, as in any other case, establish infringement by any legal means (document, testimony, confession, oath).

2. Discovery proceedure

Article 1481 of the Judicial Code lays down that the proprietors of a patent and their assigns may, having applied for and obtained authorisation from a Court, arrange for one or more experts to be appointed by the judge to describe the apparatus, artefacts and any articles and processes alleged to be produced by way of infringement, together with plans, documents, calculations or writings such as to establish the alleged infringement, and tools which have been directly used for the manufacture complained of.

The primary purpose of such a proceedure, then, is to allow a prior record to be made of the alleged acts of infringement by way of a description which is imposed upon the alleged infringer unexpectedly.

3. Jurisdiction

An application for discovery proceedure may be made to the Court of Seizures (judge of the District Court) of the place in which the allegedly infringing articles are located.

The patent, and any supporting evidence (for example the patented products, an expert report, etc.) shall be produced together with the application to be made (Art. 1482 of the Judicial Code).

The Belgian Supreme Court has recently extended the jurisdiction of the Court of Seizures. It is now admitted that an discovery proceedure may be obtained in Belgium based upon foreign patents (Court Decision of September 3, 1999: Sanac / Variantsystemet) and this even if the invention is not protected in Belgium. In the above case, a Danish company, owner of German, French and British patents but not of a Belgian patent has obtained an discovery proceedure against two companies domiciled in Belgium in order to collect evidences of the infringement made in other European countries where said Danish company had a patent.

4. proceedure

1) The possible security requirement

The Court may oblige the applicant to post a security, in a sum to be determined by the Court (Art. 1483 of the Judicial Code).

In this respect, the Court of Seizures has broad discretionary powers. The amount of this security will vary, depending on the circumstances of the case.

The Court will take account of the standing of the parties, the importance of the case, the value of the invention, the risks of abuse of process (when the validity of the patent cited in support of the application is dubious) and the extent of the ordered measures (presence of the applicant, whose unstated aim may be to obtain access to his competitor's trade secrets). Some forum shopping (whenever possible) would be appropriate, since the rules vary between the Courts.

2) Service of the order

The order for discovery proceedure shall be served before the operations begin (Art. 1481 (3) of the Judicial Code).

The order must be served upon the subject of the seizure, in other words upon the holder of the alleged articles. The Court of Cassation has laid down that failure to serve the order upon the alleged infringer does not violate the rights of the defence. This is because the description is a preparatory proceedure for obtaining evidence and the seizure is a precautionary measure.

Absence of service thus does not render the seizure null and void, in so far as Art. 860 of the Judicial Code lays down that no legal proceeding may be declared null and void unless formally stated to be so by the Law. In the present case, however, Art. 1481 of the Judicial Code does not require the order to be served on pain of nullity.

The defensive rights of the alleged infringer are safeguarded by Art. 12 of the Law, which requires the patentee to proceed within a given period (Cassation, 29 November 1963, Ingénieur Conseil 1968, page 36).

Following service of the order made by the Court of Seizures, the alleged infringer has the right to oppose that order with a view to having it modified or even entirely set aside (Arts 1025 and 1033 of the Judicial Code).

This remedy is not suspensive, however, and the expert will act upon his instructions as he sees fit, until such time as the District Court may vary those instructions.

3) Seizure operation

Art. 1484 of the Judicial Code provides that the parties (patent proprietor, licensee, etc.) may be present or represented (patent attorneys, counsel, etc.) at the description if they are specifically so authorised by the Court of Seizures.

Art. 1485 further provides that if the doors of the establishment or premises in which the seizure is to be carried out are closed or if there is a refusal to open them, the Bailiff may have them opened after intervention by the Superintendent of Police or, where appropriate, the Justice of the Peace or Burgomaster, as laid down in Art. 1504 of the Judicial Code.

In cases of alleged infringement of chemical or pharmaceutical products, it is accepted that the expert may be authorised to take samples in order to lodge them with the Registry or arrange for them to be analysed at a laboratory.

He may also make notes of any accounts capable of establishing the scale of the infringement.

He will endeavour to obtain a description of all the books relating to the market sale of the products (contracts with suppliers, list of distributors, price lists, profit margins, etc.).

The sworn report (Art. 1486 of the Judicial Code) is lodged with the Registry, and copies thereof are immediately sent by the experts, by registered letter, to the seizing party, the subject of the seizure and the holder of the described articles (Art. 1487 of the Judicial Code).

4) Seizure of the alleged articles

The Court of Seizures may order the holder of the alleged articles not to use of them, allow a custodian to be appointed, place the objects under seal, and, if the circumstances are such as to give rise to income, authorise the precautionary seizure of the monies (Art. 1481 (2) of the Judicial Code).

For information, and pursuant to the common law, the Presiding Judge of the District Court in Belgium makes a provisional ruling in cases which he recognises as urgent, whatever the subject-matter.

Urgency exists, in particular, when the fear of relatively serious damage, or even grave disadvantage, makes an immediate decision desirable (Cassation, 21 May 1987, Pas. I, 1987, page 1160).

The jurisdiction of a Judge in Chambers has already been accepted in matters concerned with trade marks and models, in the event of violation of an apparently obvious right which is liable to give rise to irreparable damage (Summary jurisdiction, Charleroi, 1976, J.T. 1978, page 666).

On the principle of identity of grounds, this jurisdiction may be recognised in the patent field (Summary jurisdiction (commercial), Brussels, 1975, Ing. Cons. 1973).

5) Proceedings on the merits

Within one month from the date on which the report is issued, the description must be followed by a summons on the merits to appear before the District Court within whose jurisdiction the description took place (Art. 1488 of the Judicial Code).

Failing this, the order made automatically expires and the applicant may no longer make use of its content or make it public. In other words, failure to issue a summons on the merits within the prescribed period results in the automatic nullity of the descriptive report which could be used in support of a subsequent infringement action or for any other purpose.

6) Proceedings in chambers

Once summonses on the merits have been served, there is nothing to prevent an application being made to the Presiding Judges of the District Courts in question with a view to obtaining an order for the creation of a bank guarantee to cover the damage resulting from the continuation of the alleged acts of infringement during the proceedings. An analysis of the defendant's trade records at the time of the discovery proceedure will, in this context, make it possible to determine the sum of the guarantee required.

The infringement proceedings as such

1. Jurisdiction

The District Court has jurisdiction to hear applications relating to patents, whatever the claimed sum (Art. 73 (1)).

Territorially, jurisdiction will lie with the judge of the place in which the Court of Appeal within whose jurisdiction the infringement took place has its seat (Art. 1488 of the Judicial Code).

2. Standing to sue for infringement

Standing to sue lies with the proprietor of the patent (Art. 52 (2)). If the patent belongs to several joint proprietors, the consent of all of them will be needed in order to bring infringement proceedings. In the absence of such a consent, the authorisation of the District Court must be requested (Art. 43 (2)).

Unless otherwise provided in the licensing agreement, the holder of an exclusive licence may bring the action for infringement if, following the formal warning, the proprietor or beneficiary of the patent fails to bring such proceedings.

3. When may the proceedings be brought?

Infringement proceedings may be brought only from the date on which the patent is made available to the public, and solely in respect of acts of infringement committed subsequently to that date (Art. 52 (3)).

Action for infringement is barred after 5 years with effect from the date on which the infringement was committed.

It should be recalled that, if the infringement was preceded by a seizure, the proceedings on the merits must mandatorily be brought within the month following the sending by registered post of a copy of the expert's report.

4. Who can be prosecuted?

Infringement being a technical offence, each of the perpetrators or co-perpetrators of the acts of which Art. 27 of the Law gives a limitative list may be prosecuted.

5. Penalties for infringement

The Law lists the various penalties which the District Court may, and in some cases must, impose upon the infringer at the request of the injured party (Art. 52).

1) Cessation of the infringement

The primary purpose of the infringement action is, of course, to enable the patentee to obtain an order prohibiting any repetition of the acts complained of.

2) The fine

The Law lays down that the District Court may impose a fine at the same time as ordering the cessation of the infringement. The fine is a pecuniary penalty, irrespective of the real and proven damage, designed to cause the infringer to desist from the acts complained of by the threat of having to pay compensation, which is liable to increase substantially if the commission of the acts is extended or repeated (Art. 52).

3) Confiscation

Confiscation of the articles manufactured by way of infringement of the patent, and of the instruments and tools intended for their manufacture, may be ordered if it can be demonstrated that the infringer acted in bad faith. This occurs when the infringer has acted knowingly, manufacturing the articles in secret and exporting his unlawful production, or if, after orders have been made against him, he has renewed the infringement, camouflaging it with an alleged partial novelty.

4) Publication

The District Court may authorise publication of the judgement. This publication may take various forms: the conventional form of advertisements placed in newspapers, the display of posters, and the rarer but sometimes more appropriate form of sending circulars to customers.

5) Damages and interest

The Law lays down that the District Court may, on application by the injured party, order the defendant to pay to the plaintiff compensation for the damage caused by the infringement.

This provision, contained in Art. 52 (4) of the Law, is in reality a mere appreciation of Art. 1382 of the Civil Code (action for civil liability).

The criteria that allow the damage suffered by the patentee to be assessed are the following rules:

• loss of earnings as such, in other words the profit that the patentee could have obtained from the unlawful exploitation by the infringer of the patentee's exclusive right,
• the nuisance caused by the infringer in the exploitation of the patent, and
• the costs incurred by the patentee in order to uncover and contest the infringement.

In addition to these 3 criteria, which more specifically represent the substantive damage, consideration may be given to moral damage resulting from the discredit inflicted on the patent by its infringement. General advice

Action for infringement is a harsh remedy, since it may result in the removal of a competitor from circulation. It is necessary to take maximum precautions, and in particular to ensure that the file submitted to the court in support of an application for discovery proceedure require_onces as many documents as possible to show that the application is well founded.

Among the probative documents, there is no virtue in including copies of proceedures that may have been brought in other countries or copies of any reports drawn up by foreign experts.

Demonstrating an objective fear that infringement is taking place is the best safeguard against any subsequent action for damages and interest for abuse of due process.