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Patents—Austria—Q&A guide
Patents—Austria—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Austria published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Barger Piso & Partner—Peter Israiloff 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? Actions and interim injunctions in civil matters based on the alleged infringement of a patent, supplementary protection certificate (SPC) or utility model may exclusively be brought at the Vienna Commercial Court. Claims may be raised for: • interim and permanent injunctions; • elimination; • accounting; • information regarding the origin and channel of distribution; • monetary compensation or, in the case of wilful infringement, damages or surrender of the profit realised by the infringer; and • publication of the judgment. The jurisdiction in criminal matters belongs to the Vienna Provincial Court for Criminal Matters. Prosecution shall take place only at the request of the injured party. The infringer may be fined up to 360 times the daily rate for calculating fines or, in the case of a professional infringement, face imprisonment of up to two years. As a private participant to the criminal case, the injured person may also claim compensation. The owner or exclusive licensee of a patent, SPC or utility model may apply to the Patent
Patents—France—Q&A guide
Patents—France—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in France published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Aramis Law Firm—Benjamin May; Louis Jestaz; Florent Mattern; Cécile Goy; Barbara Daudet 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? All patent litigation has been centralised within the Third Division of the Paris Judicial Court (Tribunal Judiciaire since 2020), which is devoted exclusively to IP cases and has jurisdiction for both infringement or validity matters. This division is composed of specialist judges in French and European patent law. Cases on the merits are handled by a bench of three judges, while preliminary injunctions and ex parte proceedings are brought before one judge. This division was reorganised in September 2021, and its three sections now have new presiding judges, who all have experience in intellectual property: Nathalie Sabotier, Gilles Buffet and Catherine Ostengo. Approximately one-third of the cases ruled in the first instance are submitted to the Paris Court of Appeal, in which two sections have jurisdiction to review IP judgments. The Court of Appeal rules on both fact and law issues. The legality of the decision of the Court of Appeal can be appealed in cassation
Patents—Portugal—Q&A guide
Patents—Portugal—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Portugal published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: VdA—Sara Nazaré; Beatriz Lima 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? Patent litigation generally takes place before the Intellectual Property Court (the IP Court), which is a specialist state court, with jurisdiction at a national level. The IP Court is competent to handle all actions concerning industrial property in all forms as provided in law, including both patent enforcement and invalidation proceedings. In actions related to pharmaceutical patents and generic medicines, according to Law 62/2011 of 12 December, amended by the Industrial Property Code (Decree-Law 110/2018 of 10 December (IPC)), the patent holder has 30 days upon the publication, by the relevant medicines agency (INFARMED) of a marketing authorisation application for a generic product, to submit the case to voluntary arbitration proceedings, with the agreement of both parties, or to file a legal action before the IP Court. Patent infringement is considered a criminal offence, so criminal proceedings are also available and are conducted before the criminal courts; however, this route is not common. 2. What is the format of a patent infringement trial? Disputes are
Patents—USA—Q&A guide
Patents—USA—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in USA published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Jenner & Block LLP—Louis E Fogel ; Shaun M Van Horn 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? A patent owner can enforce its patent rights against an infringer in any federal district court that has personal jurisdiction over the defendant. A patent owner can also enforce its patent rights in an administrative proceeding before the US International Trade Commission (ITC). An action in the ITC is available only for potentially infringing goods being imported into the US. There are no specialised patent trial courts; however, appeals from both the ITC and federal district courts are heard exclusively by the Court of Appeals for the Federal Circuit. Appeals from the Federal Circuit are heard by the US Supreme Court. 2. What is the format of a patent infringement trial? A patent trial begins with the plaintiff filing a complaint alleging infringement of one or more patents. The defendant (accused infringer) files an answer, alleging non-infringement and asserting various defences. The parties proceed to fact and expert discovery, motion practice, pretrial briefing and trial. If monetary
Patents—Pakistan—Q&A guide
Patents—Pakistan—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Pakistan published as part of the Lexology Getting the Deal Through series by Law Business Research (published: March 2021). Authors: Bharucha & Co—Hameeda Asif; Samina Naz Siddiqui 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? The patent right holder of a product or process patent can enforce his or her right against making, using, offering for sale, selling or importing the product or the product obtained from the patented process, as the case may be, if such act is done without his or her consent. The holder of a patent can bring a suit for infringement before the Intellectual Property Tribunal (IP Tribunal) of the relevant jurisdiction under section 60 of the Patents Ordinance 2000 (the Ordinance), which has exclusive power to entertain and decide such cases pertaining to infringement of intellectual property laws. Subject to the provisions of Intellectual Property Organization Act 2012 (the Act) the IP Tribunal has all the powers vested in a civil court under the Code of Civil Procedure 1908 (Act V of 1908) and in a Court of Session under the Code of Criminal Procedure 1898 (Act of 1898) respectively. In relation to the import or export of infringing
Patents—Turkey—Q&A guide
Patents—Turkey—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Turkey published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Moroğlu Arseven—Gökçe Izgi; Yonca Çelebi 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? Patent rights are enforced through an infringement action against the infringers before the competent court. The rights can be enforced before the specialised IP courts, which handle IP-related lawsuits. IP courts exist only in larger cities (ie, Istanbul, Ankara and Izmir). If there is no IP court in a city, the Third Chamber of the Civil Courts of First Instance (or the First Chamber where fewer than three chambers exist) is entitled to handle IP-related lawsuits. Infringement actions are generally started with a preliminary injunction claim and the discovery and determination of evidence. These tools are set out in the Civil Procedural Law No. 6100 (CPL). To seek a preliminary injunction, the proceedings generally start by using those tools, which are effective during infringement actions, to: • reserve the final result that the plaintiff hopes to achieve; or • collect evidence for complex patent cases. These tools can be used either before or during a trial. Within the scope of an infringement action, rights owners can claim
Getting the Deal Through: Patents 2022
Getting the Deal Through: Patents 2022 Jurisdictions covered The following jurisdictions are covered in this report: Australia; Austria; Brazil; Canada; China; Colombia; Denmark; El Salvador; France; Germany; Greece; Guatemala; Honduras; India; Israel; Italy; Japan; Kazakhstan; Malaysia; Mexico; New Zealand; Norway; Portugal; Singapore; South Africa; South Korea; Switzerland; Taiwan; Turkey; Ukraine; United Kingdom; USA; Uzbekistan; Vietnam Questions The set of questions relating to the topic of Patents and answered by the guide for each jurisdiction covered include: • What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? • What is the format of a patent infringement trial? • What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent? • Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation? • To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements? • Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all the defendants be accused of infringing all the same patents? • To what extent can
Patents—Malaysia—Q&A guide
Patents—Malaysia—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Malaysia published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Wong Jin Nee & Teo—Bong Kwang Teo; Siau Kee Pua 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? Patent rights are only enforceable by the patent owner by way of a civil action. There are presently no administrative proceedings available for the enforcement of patent rights. There is a specialised Intellectual Property High Court in Kuala Lumpur, and most civil actions for patent infringement are filed here. However, there is no legal prohibition for a patent owner to institute a civil action in high courts in other states of Malaysia if the parties reside outside Kuala Lumpur. 2. What is the format of a patent infringement trial? The format of a patent infringement trial is the same as any general civil suit trial. Owing to the nature of patent infringement, where substantial dispute as to facts is inevitable, a civil action is generally brought by way of a writ of summons together with a statement of claim setting out the material facts of the claim and the remedies sought. Malaysia adopts the common law system of
Patents—India—Q&A guide
Patents—India—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in India published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: Anand and Anand—Archana Shanker; Ritika Ahuja 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? Legal proceedings At present, the civil courts have exclusive jurisdiction to entertain and decide issues concerning patent infringement. Under the Patents Act 1970, the courts of first instance for a patent infringement action are the district courts. Where in an infringement action, the defendant opts to challenge the validity of the patent, the Patents Act requires the suit to be transferred to a high court. The high courts of Delhi, Bombay, Calcutta, Madras and Himachal Pradesh exercise original jurisdiction for patent infringement actions subject to the pecuniary jurisdiction prescribed under the respective rules. This implies that an infringement action may be directly brought before these specific high courts, provided the pecuniary limits are satisfied. The Commercial Courts, Commercial Appellate Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendments) Act 2018 came into effect on 3 May 2018. The intent of the Patents Act, known as the Commercial Courts Act 2015, is to establish a specialised court for adjudicating commercial
Patents—Colombia—Q&A guide
Patents—Colombia—Q&A guide This Practice Note contains a jurisdiction-specific Q&A guide to patents in Colombia published as part of the Lexology Getting the Deal Through series by Law Business Research (published: April 2022). Authors: OlarteMoure—Carlos R. Olarte; Alexander Agudelo; Liliana Galindo; Mónica Guevara 1. What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought? A patent holder may pursue civil or criminal actions either to stop or to prevent infringing acts. The Superintendence of Industry and Commerce (SIC) has jurisdiction over infringement cases through an independent judicial division. The SIC is also where the Colombian Patent Office resides. Civil actions may be pursued before the SIC (the preferred choice) or the civil circuit courts present in the larger cities. Criminal actions may be pursued before a specialised unit for intellectual property affairs (according to articles 306 and 307 of the Criminal Code); however, criminal infringement actions are extremely rare. If the infringer is a public servant or a government entity, the patent holder must file a 'direct reparation' lawsuit before the contentious administrative jurisdiction. The SIC has become the principal venue to litigate infringements since it has proven to be very effective and reliable. According to its 2020 Annual Report, complaints filed before the SIC increased by 58 per cent (a total
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