Trying to uphold a weak patent in litigation in The Netherlands
Introduction
In case a patent holder maintains a Dutch Patent knowing that there is pertinent (‘XXX’) prior art cited in a search report of an examiner of the European Patent Office (‘Europees Octrooibureau’) in Rijswijk
Even if the District Court The Hague decides in favour of the patent holder the other party can still have the patent nullified by the Appeal Court The Hague (‘Gerechtshof ‘s-Gravenhage’).
Legal Costs and other expenses
The client has to bear costs of his patent attorney for preparing the request for a nullity advice and the pleading during the hearing before the Dutch Patent Office. These costs are considered process costs under article 1019h Rv (Dutch Law – ‘Wetboek van Burgerlijke Rechtsvordering’). Article 1019h Rv is the Dutch version of Art. 14 of the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (ref.: Official Journal of the European Union L 157 of 30 April 2004). Art. 14 reads: ‘Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this’. However under Article 1019h Rv payment by the unsuccesful party of the legal costs and other expenses incurred by the successful party must have explicitly been claimed by the latter party.
Warning
I think it is important to warn clients, whether or not they are plaintiff or defendant, for possible high process costs they may have to pay when loosing the case. This is in particular relevant in case of a weak patent, which the Dutch Patent Office may however consider valid because it is in their opnion not hit by the nullity grounds. One refers to a weak patent in case there is a serious chance, not to be disregarded or real chance that in a procedure before the District Court The Hague (‘bodemprocedure’) it will be concluded that the patent is null. The opinion of the patent attorney is in my view of crucial importance and can be diametrically opposite the ruling of the Dutch Patent Ofiice. This is because patent litigation almost always revolves around technical features. The Dutch patent attorney with both an academic training in science and/or technology and a rather comprehensive - also academic - training in Dutch Civil Law and IP law is better equipped to challenge the rulings of the Dutch Patent Office than Attorneys at Law with no such academic training in science and/or technology.
I think it is important to warn clients, whether or not they are plaintiff or defendant, for possible high process costs they may have to pay when loosing the case. This is in particular relevant in case of a weak patent, which the Dutch Patent Office may however consider valid because it is in their opnion not hit by the nullity grounds. One refers to a weak patent in case there is a serious chance, not to be disregarded or real chance that in a procedure before the District Court The Hague (‘bodemprocedure’) it will be concluded that the patent is null. The opinion of the patent attorney is in my view of crucial importance and can be diametrically opposite the ruling of the Dutch Patent Ofiice. This is because patent litigation almost always revolves around technical features. The Dutch patent attorney with both an academic training in science and/or technology and a rather comprehensive - also academic - training in Dutch Civil Law and IP law is better equipped to challenge the rulings of the Dutch Patent Office than Attorneys at Law with no such academic training in science and/or technology.
Alternative IP Dispute Resolution Approach
In my practice I try to convince clients that an early settlement in many cases may lead to a better and less costly result. Clearly formulated and worked out patent arguments and the threat of legal proceedings (nullity proceedings, infringement proceedings) will bring parties earlier round the negotiation table than vaguely worded invitations. But in case parties at the end of the day are not prepared to settle, than there will be no attorney at law or patent attorney who will further pursue the possiblities of a settlement. After all it is the client who is in the driving seat and will have to make the decision to proceed with litigation or seek a settlement.
In my practice I try to convince clients that an early settlement in many cases may lead to a better and less costly result. Clearly formulated and worked out patent arguments and the threat of legal proceedings (nullity proceedings, infringement proceedings) will bring parties earlier round the negotiation table than vaguely worded invitations. But in case parties at the end of the day are not prepared to settle, than there will be no attorney at law or patent attorney who will further pursue the possiblities of a settlement. After all it is the client who is in the driving seat and will have to make the decision to proceed with litigation or seek a settlement.
Conclusion
It is, as described above, not unlikely, that the Dutch Patent Office (Octrooicentrum Nederland) rules that nullity grounds lodged against a Dutch patent are not applicable, but that the patent is nullified in nullity proceedings by the District Court The Hague (Rechtbank ‘s-Gravenhage – bodemprocedure) or in second instance by the Appeal Court The Hague (Gerechtshof ‘s-Gravenhage - hoger beroep). According to that scenario the patent holder faces, after a number of years of litigation, a total sum of process costs, he has to bear, which may be many hundred thousand euros even for a relatively simple case.
An example: ref.: http://jowiipsaltipdisressaving.blogspot.nl/
An example: ref.: http://jowiipsaltipdisressaving.blogspot.nl/
Jowi Burger
The Hague, 12 July 2012
(c) 2012 Jowi IPS Intellectual Property Services