The cessation judge can declare a patent null and void!

Since 1 November 2007 there are two possible types of proceedings in Belgium in order to obtain the definitive cessation of a patent infringement: besides the common proceedings on the merits, which can be preceded by a claim in summary proceedings in order to obtain a provisional cessation of the infringement, one can also start specific cessation proceedings before the president of the commercial court pursuant to article 3 of the Act of 6 April 2010 regarding the regulation of certain proceedings in the framework of the Act of 6 April 2010 regarding market practices and consumer protection (hereafter “the Act”) (former article 96 of the Act on consumer practices of 14 July 1991).

Such cessation proceedings are “as summary proceedings”, the advantage of allowing a decision on the merits to be obtained quickly, without having to prove the “urgent character” of the claim. In cessation proceedings, however, you cannot obtain damages or any other measure related therewith. Therefore, one still needs to start common proceedings on the merits.

The cessation judge’s competence to rule on the validity of an intellectual property right or to order the deletion of a possible registration used to be disputed, even if such right was invoked within the framework of cessation proceedings, and this because of the fact that the competence of the cessation judge was defined in a limitative way.

The new article 3 paragraph 4 of the Act (former article 96 par. 4 Act on consumer practices) ends this discussion. Pursuant to this article 96 paragraph 4 the cessation judge is also competent to investigate the validity of a patent and, if necessary, to declare it null and void. He can do so when the existence of that patent is invoked as support of or as defence against a cessation claim pursuant to article 3 par. 4 of the Act but only if this would be necessary in order to pass a judgment on these cessation proceedings.

In the event the cessation judge can rule on the cessation proceedings without it being necessary to investigate the validity of the invoked patent, the cessation judge will not be competent to declare the patent null and void, even if such claim would be formulated as a counterclaim. The nullification on a principal claim, for example within the framework of a declaratory claim of non-infringement, can thus in no case be pronounced within the framework of a claim based on article 3 par. 4 of the Act.

As a matter of fact, the cessation judge can avoid passing a judgment on “tricky” issues regarding the validity or the scope of protection of a patent when the defendant of a patent infringement invokes the so-called Gillette-defence (named after the case in which such argumentation has been set out). Such a defence implies that the alleged patent infringer raises the fact that it only applies the state of the art (or a non-inventive aspect thereof) as a result of which there can be no patent infringement. Either there is no patent infringement, because the state of the art cannot be patented, or – in case the patentee keeps maintaining a patent infringement – its patent is null and void because it contains in such a case the state of the art. When faced with such a Gillette-defence, the cessation judge cannot pass a judgment on the validity or the scope of protection of the patent when he can dismiss the claim of patent infringement on the basis of the state of the art.

As a patentee, one should consider carefully the proceedings to start against a patent infringement.

In the best case scenario, which is when you are relatively sure that your patent is valid and that there is a patent infringement, because you already have a foreign judgment thereon for example, and you think that you can quickly prove the patent infringement, you can opt for cessation proceedings in order to obtain quickly the cessation of a patent infringement or for common proceedings on the merits in case you would also want to obtain damages (the common proceedings on the merits can be proceeded with a possible claim in summary proceedings in order to more quickly obtain a provisional cessation of the infringement). In all other cases however, you always have to take into account – when choosing the type of proceedings – the possibility for the cessation judge to declare your patent null and void, like the judge on the merits.