I FORMS OF INTELLECTUAL PROPERTY PROTECTION
As a Member State of the European Union, Belgium has transposed into its national2 legal order the many EU directives adopted in view of harmonising intellectual property law to an ever-increasing extent. The rules on patents, plant variety right, copyright3 and neighbouring rights (performers, broadcasters, film and phonogram producers), database right and topographies of semi-conductor products, now enshrined in Book XI of the Belgian Code of Economic Law (CEL), implement these directives but still diverge from the law of other EU countries on many aspects as EU harmonisation remains incomplete to date.
As far as trademarks and designs are concerned, the law of Belgium has been unified with that of the neighbouring countries of the Benelux Union (i.e., the Netherlands and Luxembourg) and the main governing text is, hence, the Benelux Convention on Intellectual Property (Trademarks and Designs) of 25 February 2005. Under this unified system, a trademark, or design, may only be registered, assigned, cancelled or forfeited for the three countries together (Benelux trademark; Benelux design). An alternative, though, is to apply for the registration of an EU trademark, or Community design, on the basis of respectively Regulation 2017/10014 or Regulation 6/2002,5 that have direct effect in all EU Member States: this allows the applicant to obtain a single IP right with uniform effect throughout the vast territory of the European Union (27 countries since Brexit). The same possibility – in terms of the scope of protection – does not yet exist for patents, although change appears to be on the horizon with the Unitary Patent Convention, as explained below. Be that as it may, the European Patent Convention provides for an intermediate solution through single application and examination procedure for the granting of a bundle of national patents.
Finally, Belgium is a signatory to several significant international treaties and conventions that have influenced the national law and are sometimes directly applicable.6 Depending on where protection is sought, and for which type of IP rights, either Belgian, Benelux, European (whether EU or EPO)7 or international tracks (PCT, Madrid or The Hague) are available for the registration of IP rights.
ii RECENT DEVELOPMENTS
Among the most significant developments in Belgian (and European) IP law in recent years, one should mention in particular:
- the enhanced centralisation of IP-related cases before the courts in Brussels;
- the adoption of coherent legislation, harmonised at EU level, regarding the protection of know-how and trade secrets;
- the recast of EU trademark law (the 'trademark package' consisting of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark and Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks, followed by secondary legislation adopted in 2017);8
- the extension of the jurisdictional powers of the Benelux Office (before which cancellation actions can now be brought) and Benelux Court of Justice (now competent, instead of the national courts of appeal, to review decisions of the Benelux Office regarding absolute grounds for refusal, oppositions and cancellations);
- numerous rulings of the Court of Justice of the European Union (CJEU), for example those:
- the evolution in Belgian case law regarding the conditions to obtain either a preliminary injunction or a 'seizure in matter of counterfeit' (type of discovery procedure, on the basis of a court authorisation obtained ex parte).
III OBTAINING PROTECTION
The Belgian Office of Intellectual Property issues patents without any prior substantive assessment of patentability conditions; it only controls whether the formal requirements are met and the applicable fees paid. Thus, all patent applications are granted in a somewhat automatic procedure12 and Belgian patents are issued in a fairly short period of time (20 months), though they are not a guarantee of quality.
That being said, the protection of inventions on the territory of Belgium is most often obtained through the European (EPO) track. The European Patent Convention13 (which is an ad-hoc international treaty and not an instrument of EU law) makes it possible to obtain patent protection in up to 40 European countries through a single application and (partly) centralised prosecution procedure. Once granted by the EPO, the European patent (EP) is merely 'validated' in each, or some, of these countries (including Belgium) following the payment of a fee and, as the case may be, a provision for the translation of the EP.14 The European route is therefore longer but the resulting patent is stronger once granted.
The EPC and Belgian patent law, based on the same sources (in the first place the Strasbourg Convention of 1963), are very similar in terms of patent eligibility and patentability requirements. To be patentable, inventions must meet the traditional triad of patentability: novelty, non-obviousness and industrial applicability.15 First and foremost, however, comes the question of patent eligibility (whether or not the subject matter does constitute an invention). In the Belgian preparatory materials to the Belgian Patent Act of 28 March 1984 (now codified in Book XI CEL) an invention is considered as an intellectual creation of a technical nature.16 This aligns with the EPO Board's approach to patentability and the requirement of 'technical character', supposedly inherent in any invention.17
Belgian law and the EPC exclude the following subject matter per se, from patent eligibility:
- discoveries, scientific theories and mathematical methods;
- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and
- presentations of information.
The exclusion of computer programs (as such) from patent eligibility,18 which stems from the dichotomy between an invention on the one hand and an 'idea' or 'concept' on the other, has not stopped the EPO Boards from developing the 'further technical effect' doctrine, whereby computer programs that engender 'further' technical effect beyond the 'normal' physical interactions between the program (software) and the computer (hardware) on which it runs are considered patentable. This implies looking at the concrete effects and functions of the computer program, beyond the mere execution of the algorithm or interaction of the code. The software should bring about some sort of useful effect that can be applied outside the program. For example, a computer program that would control an industrial process and could affect the efficiency or security of the process could be seen as having further technical effect.19
The second distinction that has raised controversy in patent eligibility is linked to the difference between a discovery and an invention. This pertains particularly to the question of the patent eligibility of DNA sequences and other living materials. Directive 98/44 EC on Biotechnological Inventions (the Biotech Directive), which was transposed into Belgian law, settles the question: biological material that is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature. On the other hand, plant and animal varieties, as well as essentially biological processes for the production of plants or animals, shall not be patentable.20 But inventions that concern plants or animals are patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety. Similarly, while it is prohibited to patent the human body, at the various stages of its formation and development, including the sequence or partial sequence of a gene, 'an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, even if the structure of that element is identical to that of a natural element'; the industrial application of such (partial) sequence must then be disclosed in the patent application.21
Another restriction on the patentability of living material stems from the basic principle that inventions the commercial exploitation of which would be contrary to public policy or morality are not patentable.22 Applying this principle in the field of biotechnology, the Biotech Directive and Belgian law state that the following shall be considered unpatentable:
- processes for cloning human beings;
- processes for modifying the germ-line genetic identity of human beings;
- uses of human embryos for industrial or commercial purposes; and
- processes for modifying the genetic identity of animals that are likely to cause them suffering without any substantial medical benefit to humans or animal, and also animals resulting from such processes.
Finally, methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are not patentable;23 this exclusion, however, does not apply to products, in particular substances or compositions, for use in any of these methods.
IV ENFORCEMENT OF RIGHTS
i Possible venues for enforcement
The most frequented venue for IP enforcement remains the ordinary courts deciding in civil matters. There are no administrative routes to be considered in Belgium, except in the case of a threat of importation into the European Union of counterfeit or pirate goods. Many of these goods are entering the European Union through the major harbour of Antwerp (the second sea harbour in Europe by size), and to a lesser extent through Belgian airports, and the Belgian customs authorities have proved very keen to intercept such imports: in 2016, they were responsible for almost one-third of the 63,000 customs interventions that took place in Europe (10 per cent in terms of value of the seized products).
Criminal proceedings are also available, though less common.
ii Requirements for jurisdiction and venue
Belgian courts have jurisdiction in IP infringement cases if either the defendant has its domicile or registered office in Belgium24 or the harmful event occurs or may occur in Belgium.25 The latter expression is intended to cover both the place of the occurrence of the harmful event and, if different, that of the resulting harm, so that the defendant may be sued, at the applicant's choice, in the courts of either of those places. In the context of online infringement this allows the right holder to sue before the courts of their domicile, provided the illicit content is available and the right is protected there; however, the jurisdiction of the Belgian court will then be limited to the consequences of the infringement that took place in Belgium.26
Belgian courts, like other national courts in Europe, are, however, not competent to decide on the validity of foreign patents, even where issued from one and the same European patent procedures (and thus with identical claims);27 in this respect, the courts of the state of registration have exclusive jurisdiction (Regulation 1215/2012, Article 22).28 Moreover, the courts of the Member State of the defendant do not have jurisdiction to decide (on the merits) on the alleged infringement, by companies of the same group, of foreign extensions of the same European patent.29 This is an obstacle to the enforcement of European patents.
This situation may, however, change if and when the Unified Patent Court (UPC) becomes a reality.30 Indeed, the UPC would have a broad jurisdiction allowing it to render decisions (including injunctions, awards of damages, declarations of non-infringement and patent revocations) covering the territory of all contracting Member States (possibly, but not necessarily, up to the 28 current members of the EU) for which a given European patent (with or without unitary effect) has effect.31
The UPC would have a local division in Belgium.
iii Obtaining relevant evidence of infringement and discovery
Before bringing an action on the merits before court, the owner of IP rights may, on the basis of an ex parte application (i.e., without summons),32 ask the president of the competent court (for patent owners this will be the enterprise court of Brussels)33 to order a seizure of counterfeit matter against the alleged counterfeiter.34 This constitutes an effective measure to gather evidence of a suspected IP infringement. In such proceedings, an expert (e.g., a patent attorney) will be appointed by the judge and will receive the mission of describing any objects, elements, documents or processes that could establish the existence of the infringement as well as its origin, destination and scale. To that end, the expert, accompanied by a bailiff and, as the case may be a locksmith or the police, will be entitled to enter any premises determined by the court, access computer systems, ask questions, take samples, etc.
In principle, two conditions must be cumulatively met; on the one hand there must be a 'seemingly valid' patent and on the other hand, there must be an 'indication' that there is (a threat of) an infringement of this patent.
Regarding the first condition, there have been interesting developments in recent years. Previously, the Court of Cassation had a very broad interpretation of the first condition: it would have deemed a patent 'seemingly valid', and hence allow a seizure in matter of counterfeit, until a final invalidity decision35 would be rendered regarding such patent. In its 2014 Syral/Roquette decision, the Court, however, ruled that 'all facts and circumstances invoked by the parties and related to the validity of the patent should be taken into account', paving the way for an in concreto assessment of the prima facie validity criterion. Consequently, when validity is seriously debated – for example, because it has been declared invalid in first instance, because it is revoked by the EPO after an opposition procedure or if certain national extensions are declared invalid by the competent national courts – such facts and circumstances cannot be left out of the assessment based merely on the fact that an appeal with suspensive effect has been filed against such decisions.36
The second condition for being authorised to seize counterfeit goods (i.e., the existence of indications of infringement) has likewise been interpreted more restrictively in recent years, following the INEOS case.37 In this respect, it is not sufficient that someone has opposed the patent to demonstrate that this person is using (or will use) the invention and, hence, infringes (or will infringe) upon the patent. Although the purpose of the descriptive measures is to obtain evidence regarding an alleged infringement, concrete indications will already be required to be authorised to collect evidence through a seizure of counterfeit matter. In the event of a process claim patent in particular, this can be rather difficult.
iv Trial decision-maker
The choice of the appropriate court within Belgium to enforce IP rights (or to request a declaratory judgment) was simplified a few years ago: only the Enterprise Courts of Brussels (and, at the appellate level, the Court of Appeal of Brussels) now have jurisdiction regarding patents, as well as EU trademarks and community designs cases. Copyright and Benelux trademarks and designs disputes, like unfair competition cases, may still be litigated before (four) other courts. This centralisation of IP litigation aims to enhance the specialisation of the judges, but this has so far not proven very successful because of the significant judicial backlog in Brussels.
v Structure of the trial
A patent infringement case will often start with a seizure of counterfeit goods as described above, aimed at collecting evidence of the suspected infringement. In addition to such evidentiary measures, the right holder may also request the court, by the same petition – and thus ex parte – to authorise the actual seizure of all goods suspected to be counterfeited or to prohibit the seized party from moving, altering or disposing of such allegedly infringing goods. For such measures to be warranted, a higher threshold must, however, be met; not only must the IP right invoked be apparently valid but the infringement should not be reasonably contested. A balance of interests should, moreover, be made, also taking into account the general interest of the public.
Following reception of the expert report, or as the case may be, right from the start (in absence of a preliminary seizure in matter of counterfeit), a right holder will consider filing an action on the merits against the alleged infringer. That action may be brought either before the ordinary chamber of the Enterprise Court (where two lay judges will assist the professional judge) or before the President of the Court, as summary cease and desist proceedings. This latter option is a particular Belgian speciality since, like some of our praline chocolates, it is the best of two worlds: it is a summary procedure, namely, fast and simple, but it leads to a decision on the merits, namely, a decision endowed with res judicata. This specific avenue may only be used to obtain an injunction (and possibly the publication of the judgment), and is therefore referred to as the cease-and-desist action. If the right holder wishes to obtain damages (or a measure of confiscation or the transfer of the counterfeiter's profits), it has to revert to the ordinary proceedings (which may also be triggered at a second stage, after the cease-and-desist action; the ordinary court is then bound by the decision of the president of the court regarding the existence of the infringement).
A drawback of the cease-and-desist action before the president of the court is the possibility for the defendant to file a counterclaim for revocation or limitation of the patent (be it a Belgian or the local extension of a European patent); that prerogative is not reserved to the full chamber of the Enterprise Court. For this reason, patent owners – unlike copyright and trademark owners – tend to privilege ordinary summary proceedings (where urgency must be established). In such a case, provided urgency is established (e.g., because the allegedly counterfeited drug is about to be put on the market),38 the president of the court may take a provisional decision on the basis of the appearance of right. This parallel action results in a kind of (factual) bifurcation between the assessment of infringement (in summary proceedings) and that of validity (by the ordinary court or the EPO in opposition proceedings).
Nevertheless, similarly to what has been observed for the seizure in matter of counterfeit, the courts tend to be a little bit more reluctant to grant injunctions when the validity of the patent is uncertain due to decisions taken abroad or by the opposition division of the EPO.
When it comes to product patents, patent protection prevents third parties (absent consent of the patent holder) from the making, offering, placing on the market or using a product that is the subject matter of the patent, or importing or storing the product for those purposes.39
Where the invention is a process, third parties may not (without consent of the patent holder), use a process that is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use in Belgium.40 Moreover, patent protection over a process that gives rise to a product, patent protection extends to the resulting product.41
Belgian patent law further prevents indirect patent infringement. A third party is prohibited from supplying or offering to supply, within the territory of Belgium, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.42 This prohibition shall not apply when the means are staple commercial products, except where the third party induces the person supplied to perform any of the acts prohibited by direct infringement.43
The limits of patent protection are determined by the claims, which are to be interpreted in light of the description and drawings of the invention.44 Protection further applies to any equivalent elements to those mentioned in the claims.45
The courts generally follow a four-step process to determine whether or not there is patent infringement.
First, the court distinguishes – from the perspective of a person skilled in the art – the essential elements of the claims from the accessory ones. Second, the court compares the claims to the allegedly infringing object. Third, the court determines if all the essential elements can be found in the allegedly infringing object. An essential element is one that contributes to the technical effect.46 In this respect, infringement does not require an identical reproduction of the invention, it suffices that the essential characteristics of the invention be found in the litigious object.47 In this regard, any secondary or superficial differences are not of a nature to exclude infringement. These rules also apply to claims that consist of numerical values.48
Lastly, as the case may be, the court identifies and assesses the use of any equivalents.49 An element will be considered an equivalent means to the patent-protected element, if it fulfils the same technical function to achieve the same result in the same manner.50 The Belgian approach to equivalents is rather large, in that infringement by equivalent means will be found to apply if the technical function of the invention is found in the disputed object and the equivalent means used do not produce any new technical effect.51
Typically in patent law, defendants shall dispute the validity of the patent: challenging its novelty, non-obviousness or other characteristic. These defences will not be presented as they are common across all EU Member States. Some particularities of the Belgian context are given below.
viii Abuse of rights
Without getting into the details of the doctrine of the abuse of rights, it is worth noting that it has been successfully applied to patent infringement cases.52 For example, it was judged that it was abusive for a patent holder to demand the immediate cessation of infringement acts that they knew of for years prior to the action and had in fact tolerated until then.53
In another case, the courts found that although in principle infringement was established, the patent holder was abusing of their rights in their claims against the defendant (potential licensee), with whom they had been negotiating an agreement and during that time had in fact incited the defendant to use the invention, by sending them documentation on the commercialisation and implementation of the invention.54
ix Defence from patent prosecution
Again similarly to US traditions, the Belgian courts apply a doctrine akin to the prosecution history file estoppel. A patent holder is bound by the interpretation of claims made in the filing process. Often in the filing process, applicants cede much ground (narrow claims) to gain protection. They will not be able to put forward any contrary arguments in the course of infringement litigation as means to justify a particular construction of equivalents.55
In a recent decision, the Court of Appeals (upheld by the Court of Cassation) applied this defence and rejected a finding of infringement. In this case, the claims of the invention covered 'covered fibres all having a diameter inferior to 8µm', the litigious object included both fibres of a diameter inferior to 8µm, but also superior to 8µm. The Court of Appeals interpreted the claims (scope of protection of invention) as only covering fibres of a diameter inferior to 8µm, by reasons of the limitation that was specifically made by the claimant or patent owner in the course of prosecution to the above-mentioned numerical value. Had this not been the case, then there would have indeed been infringement.56
Another defence can consist in a right of prior use – the situation where the defendant had the information required with respect to the invention before the filing, or priority, date of the patent concerned. In a recent case, though, the Enterprise Court of Ghent dismissed such a defence, not only because the entities that allegedly could rely on the defence were not sufficiently identified but also because, according to the Court, a successful prior use defence requires, in principle, the existence of a prototype at the relevant date.57
x Patent exceptions
Articles XI.32-34 of the Code of Economic law, sets out a list of acts not considered to be infringement of patent exclusive rights. This covers, for example:
- acts done privately and for non-commercial purposes, which applies to purely domestic acts carried out by an individual. In this vein, it was found that the state use of an invention, although non-commercial, is of a public nature and thus, is not covered by the exception;58
- medicinal preparations for individuals and activities linked thereto, carried out by a pharmacist on a medical prescription;
- various exceptions to cover uses on, by or in vehicles (vessels, aircraft, land vehicles) as they transit through a country where the invention is protected;59
- acts done for scientific purposes with or on the subject matter of the patented invention;60
- specific exceptions under the Biotech Directive, including the farmer's privilege; the case law limitation is also important that establishes that the scope of gene patent protection is not absolute and only extends to the material in which the patented product in fact performs its function as a genetic invention;61 and
- Bolar-type exceptions.62
Another significant limitation to patent rights stemming from EU law is, of course, exhaustion. The exhaustion of rights (akin to the 'first-sale doctrine' under US law) is a general exception, applicable to all kinds of IP rights in Belgium. Remarkably, exhaustion occurs only when the products in question have been put on the market, by the right holder or with its consent (including by an affiliate or a licensee) in the European Economic Area (neither worldwide, nor national, but regional exhaustion regime). There is extensive case law of the CJEU regarding the conditions under which exhaustion applies, be it for patents (e.g., when drugs are imported from an EU country where no patent is in force or where commercialisation occurred under a compulsory licence), trademark (e.g., when branded drugs are repackaged) or copyright (where the CJEU notably extended the application of the exhaustion doctrine to the resale of software commercialised online under a click-wrap licence model).63
xi Time to first-level decision
A seizure of counterfeit goods allows the right holder to obtain first evidence of the infringement (by means of a bailiff report) within two weeks, and a more extensive report within two months. For cease-and-desist proceedings, an injunction will typically be obtained in three to nine months following the service of the writ of summons. As far as preliminary orders are concerned, the duration of the proceedings may even be reduced to (possibly) two months. A fully fledged procedure on the merits will not take much more time, say one year, unless the parties agree to split the legal questions to be decided (jurisdiction, validity, infringement, damages) or an expert report is ordered (hearing of witnesses is exceptional).
Injunctive relief is the first remedy requested by patent owners, generally, as explained above, in summary proceedings. Damages are available but may only be compensatory in nature; no liquidated damages are available, although a transfer of profits may be ordered, exceptionally, in the case of bad faith infringement. Attorneys' fees have to be borne by the unsuccessful party but, in principle, only up to a limited amount (about €12,000) determined by a Royal Decree (flat-rate scheme). However, in United Video Properties v. Telenet, the CJEU held that Directive 2004/48/EC on the enforcement of intellectual property rights precludes national legislation providing flat rates that, due to the maximum recoverable amounts being too low, do not ensure at the very least, that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party.64 This paves the way to a greater recovery of lawyers' fees in IP, and in particular patent, cases.
xiii Appellate review
Both judgments and preliminary orders may be appealed (in patent cases, before the Court of Appeals of Brussels). Except for cancellation and revocation decisions, the appeal has, however, no suspensive effect: enforcement is possible pending and despite the appeal, at the risks and perils of the enforcing party.
Against the decisions of the courts of appeal, a recourse is available before the Court of Cassation (judicial review).
xiv Alternatives to litigation
Oppositions against the grant of a European patent or the registration of a trademark are possible, respectively, at the European patent Office, at the Benelux Office for Intellectual property (Benelux trademarks) or at the EUIPO (EU trademarks). Belgian patents are granted without any examination by the Belgian IP Office and no opposition is therefore available (only cancellation, or limitation, by the Enterprise Court of Brussels is possible). Likewise, designs rights are not subject to opposition proceedings.
Arbitration is possible but in practice mainly resorted to in disputes between licensors and licensees, or in other contractual disputes.
V TRENDS AND OUTLOOK
The main major development expected in the future is the entry into force of the UPC Agreement and of Regulation 1257/2012, making it possible to give unitary effect to a European patent (see Section IV.ii). Unitary effect means that such patents would not have to be validated and translated in all individual countries designated in the European patent: one single valid right, with the payment of one fee, would operate for all the EU Member States participating in the system (currently 25 countries).
1 Bernard Vanbrabant is of counsel at Liedekerke Wolters Waelbroeck Kirkpatrick. The author wishes to thank Erika Ellyne, Dorien Taeymans and Sarah van den Brande, colleagues at Liedekerke, for their help in the preparation of this contribution.
2 Where the subject matter is entirely covered by Benelux law, the transposition occurred in the Benelux Convention (see below).
3 Under Belgian law (Book XI, title 5 CEL), and in conformity with Article 5(2) of the Bern Convention, no formalities are required to enjoy protection of author's rights. The author of literary or artistic works enjoys immediate protection as of the creation of the work, on the condition that the work is original, up to 70 post mortem. The protection consists of property and moral rights.
4 Regulation (EU) 2017/1001 of the European Parliament and the Council of 14 June 2017 on the European Union trademark. Regulation (EU) 2017/1001 confers exclusive rights in all current and future EU Member States. An EU (or Benelux) trademark can consist of signs, words, designs, letters, numerals, colours, shape or packaging of goods, or sounds that are able to distinguish the origin of goods or services and that determine the subject matter of the protection in a clear and precise way. Even though the European track provides for a single request and procedure, due to the principle of uniqueness, a registration can be blocked by a single problem in one of the EU Member States. The registration is to be filed with the European Union Intellectual Property Office (EUIPO) and may be refused based on absolute grounds of refusal, for example, in case the sign is too descriptive, or on relative grounds, upon valid opposition by third parties.
5 Regulation (EC) 6/2002 of 12 December 2001 on Community designs.
6 To name but a few, Belgium is a party to the Paris Convention for the Protection of Industrial Property (Stockholm Act 1967), the Bern Convention for the Protection of Literary and Artistic Works (Paris Act 1971), the Agreement on Trade-related aspects of Intellectual Property Rights (TRIPS), the Patent Cooperation Treaty, the Madrid Agreement, and Protocol, concerning the international registration of marks, the Hague Agreement concerning the international registration of industrial designs, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.
7 European Patent Office: see Section III.
8 We refer in this respect to The Trademarks Law Review.
9 United Video Properties Inc. v. Telenet, CJEU, 28 July 2016, Case No. C-57/15.
10 Generics (UK) v. Competition and Markets Authority, CJEU, 30 January 2020, Case No. C-307/18.
11 Nederlands Uitgeververbond and Groep Algemene Uitgevers v. Tom Kabinet Internet, CJEU, 19 December 2019, Case No. C-263/18.
12 That being said, an anteriority search is conducted, and an opinion on patentability is provided, by the European Patent Office (EPO) acting on behalf of the Belgian Office. This report and opinion are communicated to applicants, who can than assess and determine for themselves, whether they would like to request issuance of the patent, possibly after narrowing their claims. It is also important to keep in mind that the report and opinion are publicly available to third parties.
13 The European Patent Convention of 5 October 1973 as revised on 29 November 2000 (EPC).
14 In Belgium, translation is required only for those EP's issued in English, because French and German, the other working languages of the EPO, are official languages of Belgium. Since a judgment of the Belgian Constitutional Court of 16 January 2014 (No. 3/2014, Biopheresis v. Belgian State), the three-month deadline for providing such translation is not sanctioned anymore by the automatic and definitive forfeiture of protection in Belgium.
15 Article XI.3 CEL (Code of Economic Law).
16 Preparatory materials of the Belgian Patent Act of 28 March 1984, Doc. Parl., Senate, session 1983–1984, No. 545/2, p. 4.
17 Ellyne, 'Patent Eligibility – the Sick man of Patent Law', in Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance, ed. Dana Beldiman, Edward Elgar, 2013, pp. 139–163 (Elgar Intellectual Property and Global Development series). For an application in recent Belgian case law, see Pres. Comm. Antwerp, 15 October 2013, ICIP 2013, p. 751.
18 Article XI.4 CEL.
19 EPO Guidelines of Examination, Patentability Part G, chapter II, 3.6, https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_6.htm.
20 This exclusion, however, does not apply to microbiological processes or the products thereof.
21 See Article XI.5 CEL transposing Article 5 of the Biotech Directive.
22 Article 53 EPC; Article XI.5 CEL. It is clarified, however, that such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation (in some or all of the contracting states).
23 Article 53(c) EPC; Article XI.5, §7, CEL.
24 As far as EU trademarks and Community designs are concerned, the domicile or the establishment in Belgium of the claimant may also secure jurisdiction of Belgian courts (in Brussels) if the defendant is based outside the EU (e.g., a US company).
25 When the defendant has its domicile or registered offices in the EU, this alternative forum is based on Article 7(2) of Regulation (EU) No. 1215/2012 of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters; when the defendant is based outside the EU, the same result is reached through Article 86 of the Belgian Code on International private law.
26 Hi Hotel HCF Sarl v. Uwe Spering, CJEU, 3 April 2014, Case No. C-387/12 (copyright); Peter Pinckney v. KDG Mediatech, CJEU, 3 October 2013, Case No. C-170/12 (copyright); Wintersteiger v. Products 4U Sondermaschinenbau, CJEU, 19 April 2012, Case No. C-523/10 (trademarks); Pez Hejduk v. EnergieAgentur, CJEU, 22 January 2015, Case No. C-441/13 (copyright, online infringement). For a general comment in the field of copyright, see Vanbrabant and Wautelet, 'Territorialité et droit international privé', in 20 ans de nouveau droit d'auteur, Anthemis, 2015, pp. 327–381.
27 GAT v. LuK, CJEU, 13 July 2006, Case No. C-4/03 (rule applies also when invalidity is requested by way of counterclaim).
28 Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
29 Roche Nederland v. Primus, CJEU, 13 July 2006, Case No. C-539/03.
30 The text of the UPC Agreement is available at https://www.unified-patent-court.org/sites/default/files/upc-agreement.pdf. At the time of writing, ratification by Germany has not yet taken place, which is a condition precedent for the entry into force of the UPC. Moreover, although the UK has ratified the UPC, the perspective of Brexit has created even more uncertainties regarding the outcome of the project.
32 Only a third-party opposition is available to the latter, after the order being served on him and the seizure having taken place. During the seizure in matter of counterfeit, the expert must take adequate measures to protect the legitimate interests of the visited party and, in particular, to prevent the undue divulgation of confidential information.
33 Article XI.337 CEL.
34 This procedure is described in Articles 1369 bis/1 – 1369 bis/10 Belgian Judicial Code.
35 In Eurogenerics v. Lundbeck (Court of Cassation, 24 June 2013, Case No. C12.0450.F/1, Eurogenerics v. H Lundbeck A/S & Lundbeck), for example, it concerned the prima facie validity of a supplementary protection certificate that was declared invalid by a national judge. As an appeal against this decision was launched and such appeal had suspensive effect, the Court of Cassation agreed with the court of appeal that deemed the certificate to be seemingly valid.
36 A recent example of the application of this in concreto analysis is the decision of the Presiding judge of the Comm. Court of Brussels in the Sandoz v. AstraZeneca case: Presiding judge of the Comm. Court of Brussels, 11 March 2016, ICIP 2016, pp. 389 et. seq.
37 Court of Cassation, 26 November 2009, Case No. C.08.0206.N, Ineos Manufacturing Belgium et crts., Ineos Services Belgium v. Chevron Phillips Chemical Company LP (CP CHEM).
38 Unlike in other jurisdictions, the President of the Enterprise Court in summary proceedings will not make the grant of an injunction dependent upon the demonstration, by the patent owner, that damages obtained in proceedings on the merits would not constitute a satisfactory remedy.
39 Article XI.29 CEL and Article 25 UPC Agreement (the latter not yet in force).
40 The Belgian Constitutional Court has recently held that this (double) territoriality requirement does violate neither the principle of equality before the law (product v. process inventions patentees) nor the protection due to the fundamental right of property: see Const. Court, 28 September 2017, Case No. 105/2017.
41 Article XI.29 CEL and Article 25 UPC.
42 A decade ago, the Court of Appeal of Antwerp made a rather extensive application of this provision by applying it to the commercialisation by coffee manufacturers of coffee pads intended for use in the (at the time patented) Senseo machine: judgment of 8 November 2005 (comp., in the Netherlands, Hofs'-Gravenhage, 6 June 2002, IER 2003, 55 and Hoge Raad (Supreme Court), 31 October 2003, BIE 2004, 47).
43 Article XI.29 CEL and Article 26 UPC.
44 Article XI.28 CEL and Article 69 and Protocol of the EPC.
45 Article XI.28 CEL.
46 Court of Appeal of Brussels (8th ch.) 28 April 2009, ICIP 2010, p. 545.
47 Court of Appeal of Brussels, 28 April 200, cited above; Comm. Court Antwerp, 3 April 2009, Case No. A/08/01025.
48 Court of Cassation (1st ch.), 12 March 2015, Case No. C.14.0098.F, Saint-Gobain Isover G+H (Grünzweig + Hartmann), Saint-Gobain Construction Products Nederland v. Knauf Insulation, p. 11.
49 Court of Cassation, 12 March 2015, cited above.
50 Presiding judge of the Comm. Court of Liège, 28 June 2012, ICIP 2012, p. 97.
51 Court of Cassation (1st ch.), 12 March 2015, Case No. C.14.0098.F, Saint-Gobain Isover G+H (Grünzweig + Hartmann), Saint-Gobain Construction Products Nederland v. Knauf Insulation, pp. 11–12; Remiche and Cassiers, op. cit., pp. 420–422.
52 Cf. A Léonard, 'L'abus de droit comme mécanisme correctif des pratiques excessives en droit des brevets', IRDI 2019, pp. 86–98.
53 Court of Appeal of Brussels, 8 April 2004, JLMB 2004, p. 881.
54 Court of Appeal of Mons (1st ch.), 2 December 2013, ICIP 2014, p. 417.
55 Remiche and Cassiers, Droit des brevets d'invention et du savoir-faire: Créer, protéger et partager les inventions au XXIe siècle, 2011 (Larcier), pp. 420–422.
56 Court of Cassation, 12 March 2015 (cited above), p. 22.
57 Enterp. Court of Ghent, 3 October 2019, Case No. A/14/03028 (unpublished).
58 Court of Appeal of Ghent, 14 February 2005, IRDI 2005, p. 296.
59 For exact scope, see Article 27 UPC.
60 When transposing the Biotechnology directive, the Belgian legislator adopted a particularly broad formulation to this exception (Doc. Parl., Ch., sess. ord. 2004- 2005, Doc. 51, No. 1348/006, p. 12; Doc. Parl., Ch., sess. ord. 2004–2005, Doc. 51, No. 1348/006, pp. 59–60). It applies to all 'scientific purposes', rather than solely experimental purposes. And moreover, unlike most European Member States, where this exception has been limited to experimentations carried out on the subject matter of the invention, the Belgian exception does cover such cases where the invention is used as a tool for experimentations uses of the invention. Thus, as a consequence toolbox patents (where the invention is a used as a tool for scientific research) are ineffective in Belgium.
61 Monsanto Technology LLC v. Cefetra BV, Cefetra Feed Service BV, Cefetra Futures BV and Alfred C Toepfer International GmbH, CJEU, 6 July 2010, Case No. C-428/08.
62 The Bolar exception stemming from the EU Directive on Medicinal products for human use 2001/83 CE is reflected in Article 6 bis §10, of the Law of 1964 on Medicines. It provides that studies, test and trials carried out in order to obtain marketing authorisation will not be considered a violation of patent and complementary certificate protection. Such an exception allows for generic drug companies to carry out tests in view of obtaining marketing authorisation prior to the expiration of patent (or complementary certificate) protection, so that the generic drug would be ready for market once protection had effectively expired. For more comments, see Campolini and Vernimme, 'Exceptions Bolar et de recherche scientifique: Interpretation de mise en oeuvre en droit Belge', IRDI 2015, pp. 5–10; for an application cf. Civ. Court of Brussels, 8 April 2008, IRDI 2009, p. 31.
63 UsedSoft GmbH v. Oracle International Corp, CJEU, 3 July 2012, Case No. C-128/11.
64 United Video Properties Inc., CJEU, 28 July 2016, Case No. C-57/15.