Keeping up with Belgian patent litigation: Year case law review 2021

The winds of a busy Belgian court
term blows through the IPKat's
wild ancestor's mane
(c) Christopher Stothers
'Tis the season for a look at the cases that were in 2021 from around Europe
and what they mean for the IP litigation themes in those jurisdictions now that the dust has settled in 2022.  First up is the IPKat's Belgian friends in the form of Philippe Campolini, Gwennaëlle Kusters, Louis Bidaine and Vince Van der Wangen from Belgian firm, Stibbe.  

Over to our Belgian Katfriends:

" While 2022 is in full swing with high levels of business in the Belgian courts, 2021 was a quieter year for patent litigators in Belgium.  The volume of decisions was slightly lower than 2020, especially in pharma and biotech, but still with some interesting decisions to report. The decisions we (arbitrarily!) selected address issues such as SPC protection for combination products, double patenting, prosecution history estoppel and the influence of declarations made by the patentee in parallel proceedings, the possibility for national courts to request technical opinions from the EPO under Art. 25 EPC, and the disappearance of the cautio iudicatum solvi that was sometimes required from foreign plaintiffs launching (patent) proceedings in Belgium.

SPC’s for combination products: still more questions than answers

President of the Dutch-speaking Enterprise Court of Brussels, 25 February 2021, MERCK SHARP & DOHME CORP. v. MYLAN BV and SANDOZ BV

One of the first patent cases decided in 2021 was an SPC case between MSD and Apotex, where the Brussels Enterprise Court had to decide whether an SPC could be granted for the combination of ezetimibe and simvastatin, even if a previous SPC had already been granted for ezetimibe alone based on the same patent. At the centre of the submissions was the question as to whether the concept of “core inventive advance” is relevant in the assessment of the requirements of Article 3(a) and 3(c) of Regulation No 469/2009. As already commented in our previous case law review (here), the Court eventually circumvented this question, considering that in any event the combination of ezetimibe and simvastatin satisfied the requirement of “core inventive advance”.

As reported here, this case has been litigated in several other countries with varying outcomes, and the Irish Supreme Court has recently referred new questions to the CJEU on the interpretation of Articles 3(a) and 3(c) in the context of combination products (case C-149/22). This referral adds to the referral made a few months earlier by the Finnish Market Court on the interpretation of Article 3(c) and its interplay with Article 3(a) (case C-119/22). It now remains to be seen whether the CJEU will be able, finally, to provide clarity on the conditions under which SPC’s can be granted for combination products.

A new prohibition on double patenting?

Dutch-speaking Enterprise Court of Brussels, 28 September 2021, GRAF SYNERGY SRL and VIVA MACHINES BV v. CALVET NV, HEMMAR PVC NV and URBAN GMBH & CO MASCHINENBAU KG

Another unmissable decision for this annual case law review is the judgment rendered by the Dutch-speaking Enterprise Court of Brussels on double patenting. This decision was rendered in a case primarily opposing Graf Synergy, an Italian manufacturer of welding machines for PVC windows, to the Belgian distributor (Calvet) and user (Hemmar PVC) of an allegedly infringing welding machine manufactured by Graf Synergy’s German competitor Urban Gmbh & Co Maschinenbau KG.

Graf Synergy’s infringement claim was based on a European patent relating to a “device for welding profiled elements in plastic material, in particular PVC” (EP 3 156 214). EP’214 was issued based on a divisional patent application. The main application had already led to another European patent (EP 2 822 751), which, however, had initially not been invoked by Graf Synergy. The defendants raised an invalidity counterclaim against EP’214 based on alleged added matter, lack of novelty and lack of inventive step.

While these national proceedings were pending, the opposition division of the EPO revoked EP’214 based on Urban’s added matter argument. In substance, the EPO found that the fact that EP’214 does not claim the feature of a “containing presser” constitutes inadmissible added matter as this technical feature was an essential feature of the invention disclosed in the application as filed.

This argument was also raised by the defendants before the Brussels Enterprise Court, which decided to follow the reasoning of the EPO and declared EP’214 as granted invalid for the same reason. What makes this decision interesting is that, due to this added matter issue, Graf Synergy had introduced an auxiliary request aiming at having the patent maintained in an amended form in which the missing “containing presser” had been restored. The defendants opposed this request, arguing that it would result in a patent with the same scope of protection as EP’751, and that this would be contrary to an alleged general prohibition on double patenting.

The Court analysed this defence and noted that neither the EPC nor Belgian law provide for a general prohibition on double patenting. Admittedly, Belgian law provides that a Belgian patent ceases to have effect once a European patent covering the same invention has been granted to the same inventor, but this provision does not govern the relationship between two European patents. Despite this, the Court found that according to the guidelines of the EPO (see here), it is a principle of procedural law generally recognised in the EPC contracting states that two patents cannot be granted to the same applicant for the same subject-matter. Also referring to the decision of the Enlarged Board of Appeal of the EPO of 22 June 2021 in G4/19, the Court considered that the lack of a prohibition on double patenting under Belgian law was to be considered as a legal loophole and that it was the Court’s task to fix this loophole by interpreting the law in conformity with said principle. It therefore rejected the auxiliary request as inadmissible, thereby de facto applying the Enlarged Board of Appeal’s decision beyond the particular context of a grant procedure. An appeal was lodged against this decision and it remains to be seen whether the Brussels Court of Appeal will agree that a general prohibition on double patenting can be inferred from the EPO’s guidelines or case law.

Everything you say can and will be used against you – prosecution history estoppel in Belgium

Dutch-speaking Enterprise Court of Brussels, 27 September 2021, WILLEMEN CONSTRUCT NV v. VANDENBEMPT PATENT BV

While this third decision does not explicitly address the issue of double patenting, it also concerns a situation where related inventions were protected by different patents, this time a European and a Belgian national patent.

On 30 March 2012, Vandenbempt filed a Belgian patent application relating to a “building block, as well as an insert piece to be applied in such a building block”. A PCT patent application was later filed based on this Belgian patent application. According to the search report issued by the EPO in the Belgian grant procedure, the invention as claimed was not patentable due to a lack of novelty. Notwithstanding this negative report, the Belgian patent proceeded to grant on 7 January 2014.

Because of the objections raised by the EPO during the grant procedure of the Belgian patent, the PCT application was filed with amended claims. However, the international search report confirmed the lack of novelty of the invention, even in that amended form. The PCT application then entered the European phase and the EPO maintained that the invention was lacking novelty, despite further amendments. Eventually, Vandenbempt modified its claims four times before the patent finally proceeded to grant on 14 November 2018.

Willemen had in the meantime entered into a license agreement under Vandenbempt’s Belgian patent. After it became clear to Willemen that the invention as claimed in the Belgian patent did not work as expected, it filed an invalidity claim with the Brussels Enterprise Court, arguing that the grant procedure of the European patent clearly showed that the Belgian patent was invalid.

The Court followed that argument. The fact that Vandenbempt had substantially amended its European patent application in order to overcome the EPO’s objections was considered by the Court as a crucial and relevant fact for deciding on the validity of the Belgian patent. The Court referred to the fact that Belgian case law generally accepts the “prosecution history estoppel” doctrine, under which extrinsic elements, such as the prosecution file of a patent or statements made by the patentee in other (parallel) proceedings, can be taken into account for assessing the validity and/or infringement of a patent. The Court also restated the principle that when making its decision, a judge can consider extra-judicial admissions, namely unilateral confirmations by a party that a fact invoked against it is correct. Based on these principles, the Court ruled that by voluntarily and unconditionally waiving the claims of its patent application as initially filed, Vandenbempt had admitted that these claims were not patentable.

The Court therefore declared the Belgian patent invalid on that basis, without even making a technical analysis of the case. This once again shows the importance the “prosecution history estoppel” doctrine in Belgium, including in cases where the prosecution history is not the one of the patent at stake but that of a related patent.

Art. 25 EPC – the best kept secret of the European Patent Convention?

President of the Dutch-speaking Enterprise Court of Brussels, 21 September 2021, RENSON SUNPROTECTION SCREENS NV v. WINSOL INTERNATIONAL NV and HELIOS TRADING NV

Another interesting decision was rendered in a case Renson Sunprotection Screens versus Winsol International and Helios Trading. Renson claimed that Winsol was infringing its European patents EP 2 333 194 and EP 2 851 483 by producing and marketing a certain type of terrace roof (or pergola). Both patents had been filed on the same date and claimed the same priority date based on two earlier Belgian patent applications.

As a reaction to an invalidity counterclaim filed by Winsol and based on prior art documents that had not been examined by the EPO, Renson amended both EP’194 and EP’483 and requested the Court to declare that EP’194 and EP’483 are valid in such amended form. Winsol, however, maintained its invalidity counterclaim. One of the prior art documents it invoked had been published between the priority date and the filing date of EP’194 and EP’483, but Winsol argued that EP’194 and EP’483 as amended could not validly claim the priority date of the earlier Belgian patent applications anymore.

According to the Court, Renson's request to confirm the validity of the patents as amended would have amounted to a re-examination of the validity requirements of Article 52 EPC. The Court acknowledged that this assessment should in principle be conducted by the judge who is confronted with the dispute, taking into account all the necessary materials and evidence. However, the Court also noted that the technical evidence filed by the parties, including expert reports, was limited to the patents as granted, not to the patent as amended.

As a result, the Court decided to obtain the missing evidence from the EPO and request a technical opinion based on Art. 25 EPC. This provision allows a national judge to request the EPO to give a technical opinion concerning a European patent, which is the subject of a national infringement or revocation action. It is, to our knowledge, the first time Art. 25 EPC has been used by a Belgian judge. At a broader European level, it seems that such requests have already been addressed to the EPO in the past, but they seem very rare. This however does not necessarily mean that this mechanism is useless. The commented decision suggests that Art. 25 EPC can under certain circumstances reveal itself as a useful tool for national judges.

The cautio iudicatum solvi is no more (for the moment)

Dutch-speaking Enterprise Court of Brussels, 17 May 2021, PTC v. MALMAR

Court of Appeal of Brussels, 28 June 2021, TWO-WAY MEDIA LTD v. PROXIMUS NV and PROXIMUS GROUP SERVICES NV

Litigation can be very costly. For this reason, Art. 851 of the Belgian Procedural Code provides that, upon request of a Belgian defendant and except when prohibited by an international convention (such as the Convention of 25 October 1980 on international access to justice; see here), all non-Belgian plaintiffs starting legal proceedings in Belgium must provide a guarantee covering all the costs and damages that might be awarded to the Belgian defendant as a result of the proceedings. Although the practical significance of that provision in Belgian (patent) litigation was limited, the exception was sometimes successfully raised by Belgian defendants, obliging foreign applicants to constitute sometimes substantial securities if they wanted to have their case proceed.

A dissatisfied applicant decided to challenge this exception before the Belgian Constitutional Court in 2018, alleging that it was contrary to the principles of equality and non-discrimination guaranteed by the Belgian Constitution. The applicant won the case and the Constitutional Court declared Art. 851 unconstitutional since “the criterion of nationality, on which the difference in treatment established by the provision at issue is based, is (…) irrelevant in the light of the objective pursued by the legislator, namely to guarantee the defendant the payment of the legal costs and damages that the plaintiff could be ordered to pay. (…) Indeed, it is not the nationality of the plaintiff, but the fact that he resides abroad and has no property in Belgium that can be used as security, which may make the defendant fear that it will be impossible in practice to recover the costs made.”

To avoid legal difficulties with respect to ongoing proceedings, the Court held that it was appropriate to maintain the effects of Art. 851 until the entry into force of a new bill, which would put an end to the discrimination, and at the latest until 31 August 2019. Several draft bills were tabled in the Belgian Parliament, but none of them have ever been adopted. This brought several defendants in patent infringement cases to raise the exception again, despite of the Constitutional Court’s decision. Two decisions, the first one from the Dutch-speaking Enterprise Court of Brussels (17 May 2021) and the second one from the Brussels Court of appeal (28 June 2021), however confirmed the (provisional) death of the cautio iudicatum solvi. These decisions also confirmed that it is now up to the Belgian legislator to resurrect this exception in an amended (i.e. non-discriminatory) form if this is its will, but in the meantime, the exception cannot be raised anymore."

Keeping up with Belgian patent litigation: Year case law review 2021  Keeping up with Belgian patent litigation: Year case law review 2021 Reviewed by Annsley Merelle Ward on Friday, September 23, 2022 Rating: 5

1 comment:

  1. On Article 25 EPC: it is a good secret for excellent reasons! What is at stake? Whether EP’194 and EP’483 as amended could validly claim the priority date of the earlier Belgian patent applications. "According to the Court, Renson's request to confirm the validity of the patents as amended would have amounted to a re-examination of the validity requirements of Article 52 EPC." Now, what says Article 25 EPC?
    Article 25 Technical opinion
    At the request of the competent national court hearing an infringement or revocation action, the European Patent Office shall be obliged, on payment of an appropriate fee, to give a technical opinion concerning the European patent which is the subject of the action. The Examining Division shall be responsible for issuing such opinions.
    Two reasons: (i) it can only be a TECHNICAL opinion, and neither the validity of a priority nor examination of the validity requirements of Article 52 EPC is a technical question, and (ii) the EPC entrust this to an Examining Division, i.e. the first instance (this was a political decision at the time).


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