International Patent Litigation in Czech Republic

Patent owners, licensees and professional associations entitled to represent patent owners are entitled to file a lawsuit for patent infringement in the Czech Republic.

A licensee requires the consent of a patent owner to file a lawsuit, however, if the patent owner does not initiate proceedings itself within a month from receiving notification from the licensee on the (threatening) infringement, their consent is not required

Yes. A claimant determines the defendants and there can be more than one liable person.

We note that the court may decide to separate the claims against each defendant into separate proceedings (e.g., where the claimant has different bases for its claims against each defendant).

The claimant may also request that a new party be added as an additional defendant during the proceedings. The court has discretion whether to accept this request.

Yes. Third parties who have an interest in the outcome of the proceedings may enter the proceedings as indirect participant. Third parties can enter either at their own request or at the request of one of the parties submitted through the court. The court has discretion whether to accept this request.

Yes. A claimant must bring a claim for patent infringement within three years from the moment it becomes aware of the patent infringement and no later than 10 years after the infringement occurred, or no later than 15 years after the infringement occurred if the infringement was intentional.

No. It is within the discretion of the claimant to specify the scope of the infringement.

Under Czech law, infringement and invalidity proceedings must be distinguished. While infringement proceedings are tried before the civil courts, invalidity proceedings are dealt with in administrative proceedings before the Industrial Property Office (IPO) and may be subsequently subject to revision before administrative courts.

Claims for patent infringement must be brought before the Municipal Court in Prague (civil law matters). The IP senate of the Municipal Court in Prague handles all the patent infringement cases as the court of first instance.

Motions for patent invalidity must be brought before the IPO. If a party disagrees with the IPO’s decision, it can submit an appeal against the decision which is decided by the Head of the IPO. A party may further challenge the decision of the Head of the IPO by a lawsuit brought before the Municipal Court in Prague (administrative law matters). In some cases, a party may submit a cassation complaint against the decision of the Municipal Court in Prague to the Supreme Administrative Court of the Czech Republic. In the rest of the section covering the Czech Republic, we focus on the civil law matters only

No.

Yes. A party who has a legal interest in the determination of non-infringement may either file a lawsuit with the Municipal Court in Prague or file a motion before the IPO.

The lawsuit before the Municipal Court in Prague may be filed if there is an urgent legal interest in determining the non-infringement. This must be proved by the claimant.

The motion before the IPO may be filed if a person has legal interest in determining whether an object described in the motion falls within the scope of protection of a patent.

In IP infringement matters, it usually takes between nine to 12 months for the first hearing to be convened.

The length of trials for patent cases varies on a case-bycase basis and depends upon the complexity of the claim, the actions of the parties, and the judge’s workload. It usually takes 18 to 24 months from filing the action until a first instance decision is rendered.

No. The judges are often criticised for a lack of technical expertise.

The court is not obliged to stay the proceedings; however, it has the discretion to stay the proceedings if there is another proceeding where a question which might affect the proceedings before the court is being considered. In our experience, the court usually stays the proceedings.

Yes. The motion for nullification is filed before the IPO in administrative proceedings which is not connected nor dependent on judicial proceedings.

No, in relation to FRAND licenses.

Yes, in relation to compulsory licenses. For more details, kindly look at our CMS Expert Guide to compulsory licensing, available here: Compulsory licensing law and regulation in Czech Republic | CMS

No. FRAND licenses are not regulated under Czech law.

Yes. The Municipal Court in Prague has the option of appointing an expert to examine the technical aspects of the matter. The court may either ask an expert to present their opinion at an oral hearing or provide an opinion in writing. Where the expert has given an opinion in writing, the expert may also be required to attend an oral hearing.

Generally, it is the court that appoints an expert, but parties are also allowed to submit an expert’s opinion. An expert’s opinion submitted to the court by one of the parties must contain a clause stating that the expert fully understands the consequences of delivery of an untrue expert’s opinion. If all the formal requirements are met, an expert’s opinion submitted by either party is considered as relevant as the one obtained by the court itself.

No. Czech law does not recognise the disclosure / discovery process in the sense used in common law jurisdictions.

In general, each of the parties decides which documents and information will be disclosed to the court. If the judge is of the opinion that certain necessary information and / or documents are missing, it will invite the respective party to provide such information and / or documents and informs it of the risks of not providing such information and / or documents.

In addition to the above, the judge can also order a document holder to submit or obtain the relevant document for the proceedings. A failure to disclose  such a document may lead to pecuniary fines.

Preliminary discovery is not available since Czech law does not recognise the disclosure / discovery process in the sense used in common law jurisdictions.

Preliminary seizure of evidence / documents is available. The claimant must evidence the infringement of its patent before such preliminary seizure is allowed. In addition, the court may request the claimant to provide security up  to a maximum amount of one hundred thousand koruna (CZK 100,000) (approximately four thousand euros (4,000 EUR)) that is payable within eight days from the date of delivery of the request.

In patent infringement proceedings, a party to the proceedings may submit an appeal against the decision of the Municipal Court in Prague. The High Court in Prague is competent to hear appeal proceedings. In some cases, a party may make a further appeal against the decision of the High Court in Prague to the Supreme Court of the Czech Republic.

An appeal against decisions of the Municipal Court in Prague may be brought if:

• there were procedural irregularities;
• the court failed to acknowledge certain claims or evidence;
• there was a procedural mistake that may have caused an erroneous decision;
• the court did not sufficiently establish the factual aspects of the case by failing to exercise the evidence that could support the factual aspects;
• the court made incorrect factual findings;
• there is new evidence that has not been presented to the court yet which impacts the factual findings; — the decision is based on an error of law.

Appeal to the Supreme Court of the Czech Republic may be brought only if the decision of the High Court in Prague is based on an error of law.

The length of appeal proceedings in patent cases varies on a case-by-case basis and depends upon the complexity of the claim, the actions of the parties, and the judge’s workload. It usually takes 12 to 18 months until the decision is rendered.

The length of the proceedings before the Supreme Court of the Czech Republic also varies on a case-by-case basis. It usually takes 10 to 20 months until the decision is rendered.

Yes. The first instance decision is not legally binding until the appeal is decided.

The costs of patent litigation vary on a case-by-case basis and very much depend on the complexity and facts of the particular case. Minimum legal costs of patent litigation proceedings in the first instance can range between five thousand euros (5,000 EUR) and ten thousand euros  (10,000 EUR) in simple cases but can be significantly higher in complex and more demanding cases.

The costs of patent litigation vary on a case-by-case basis and very much depend on the complexity and facts of the particular case. Minimum legal costs of patent litigation proceedings in the second instance can range between four thousand euros (4,000 EUR) and eight thousand euros (8,000 EUR) in simple cases but can be significantly higher in complex and more demanding cases.

Yes. The general principle is that the party who wins shall be reimbursed for its costs. The compensation of the winner’s costs is limited by the Regulation of Lawyers’ Fees. To a certain extent, the compensation also depends on the discretion of the court.

Instead of judicial proceedings, the parties to a dispute can decide to choose to settle their dispute in arbitration or mediation proceedings.

In our experience, neither of the ADR proceedings are commonly used in patent infringement matters, unless the infringement occurred in the course of a commercial relationship between the patent holder and the infringer.

In relation to mediation proceedings, we note that last year, IP Mediation Centre was established in the Czech Republic with the cooperation and support of the IPO, with the aim of providing the possibility of ADR for IP matters by mediators qualified in such matters.

The court encourages parties to settle throughout the whole proceedings. However, the court may only order the parties to attend a first meeting with a mediator. The first meeting with a mediator is not a mediation proceeding, and its aim is to inform the parties of the possibility of mediation. If the parties do not agree on moving into mediation proceedings, the proceedings before the court continues. If a party fails to attend the first meeting with the mediator, the court may decide it will not have the court proceedings’ cost reimbursed.

The patent owner (or another authorised person) may request the following remedies:

• right to information on the origin and distribution network of infringing goods or services;
• cease and desist the infringement;
• remedy the infringement, including:
• removal of the infringing goods from the market;
• destruction of the infringing goods; or
• removal from the market or destruction of the materials and tools used or intended for the infringement;
  - compensation of damages;
  - payment of unjust enrichment;
  - satisfaction of immaterial harm, including:
•  apology; and
• monetary satisfaction; or
  - right to publish judicial decision at the costs
  of the infringer.

Czech law does not provide for automatic injunctions.

Damages consist of real loss and lost profit to the claimant. Czech courts interpret real loss narrowly (i.e., property the claimant was deprived of due to the infringement).

Lost profit is the income the claimant could have reasonably expected to receive if the patent infringement had not occurred. If the claimant wishes to assert compensation of real damage, the amount of damages is usually calculated by an expert opinion. Such an option is, however, not commonly used.

The claimant may request payment of damages as a lump sum in the amount of at least double the usual license fee that would be required for the use of the infringed patent at the time of the infringement.

Czech courts do not order an enquiry into damages.  The claimant bears the burden of proof.

No. On the contrary, Czech law provides certain concessions in cases when the infringer did not know and could have not known about the infringement.

Yes, the court can order the infringing party to recall the infringing products from the market. There is no limitation in time, however, such an order is limited by the duration of the protection of the infringed patent.

Yes, it is possible to obtain a preliminary injunction. The court may order the preliminary injunction if:

• it is necessary to provisionally regulate the arrangements of the parties; or
• there is a risk that the enforcement of the judgment will be jeopardised.

A preliminary injunction can be ordered only upon substantiated request in which the claimant evidences that the conditions for ordering the preliminary injunction are met and after payment of security and court fee.

Yes. Preliminary injunctions are decided without hearing the other party.

The court must decide on a request to order a preliminary injunction without undue delay; but in any event, no later than seven days from delivery of the request.

Yes, a party to the dispute may appeal against a decision to order a preliminary injunction. If the preliminary injunction is ordered, the appeal against the decision does not suspend the effect of the preliminary injunction. The only grounds for appealing the decision by which the court ordered the preliminary injunction is that the conditions for ordering the preliminary injunction were not met.

The defendant can also submit a motion to cancel the preliminary injunction if the conditions for ordering the preliminary injunction have changed and it is no longer necessary.

Yes. The claimant is obliged to pay security in the amount of fifty thousand koruna (CZK 50,000) (approximately two thousand euros (2,000 EUR)). However, the court may decide that the amount of security shall be higher.

If the court orders a preliminary injunction before the proceedings on the merits is initiated, it also invites the claimant to submit the lawsuit on the merits within a given period which is usually 30 days. If the claimant fails to file the lawsuit within the time limit, the preliminary injunction ceases.

Cross-border preliminary injunctions are generally available. In the European Union, the cross-border preliminary injunctions are available in accordance with Brussels I bis Regulation. The claimant can enforce the preliminary injunction ordered by a Czech court in another European Union Member State, or a preliminary injunction ordered by a court of another European Union Member State can be enforced in the Czech Republic. In relation to states that are not members of the European Union, the possibility of using cross-border injunctions must be assessed based on the applicable international agreement or rules of private international law.

No. ASI is not regulated under Czech law.