International Patent Litigation in Netherlands

The proprietor of a patent (the patentee) may bring infringement proceedings on their own behalf, as well as on behalf of their licensees and persons holding a preferential creditor right by a deed of pledge.

Licensees and pledgees can also bring infringement proceedings on their own behalf, either as co-claimants in the procedure initiated by the patentee, or independently if the patentee has granted them such a right to enforce the patent. This right does not need to be publicly registered.

Yes. Any number of parties may be joined to proceedings as a defendant either at the outset or as the litigation progresses. A third party may join in or intervene in proceedings of their own accord if they can establish a sufficient interest in doing so.

Yes, if the supplier or other third party is connected to the dispute between the existing parties, the new party may be joined to proceedings as a defendant either at the outset or as the litigation progresses. Examples include intervention, joinder and indemnification proceedings.

Intervention is the procedure in which a third party joins as an independent party to a dispute that is already pending between other parties. When a third party wishes to join one of the other parties in the proceedings, this is called joinder. Article 217 Code of Civil Procedure imposes the requirement that the party concerned must have a sufficient interest in the proceedings.

An indemnification proceeding is a special proceeding that runs parallel to a main proceeding. The procedure involves a defendant’s ability to involve a third party in  a lawsuit that is already pending (article 210 Code of Civil Procedure). This is called “suing for indemnity.”  The purpose is to recover damages directly from the indemnified third party in the event of a conviction.

There are no specific time limits for seeking a remedy for patent infringement in proceedings on the merits, or for preliminary injunction proceedings. As far as preliminary injunction proceedings are concerned, the Dutch Supreme Court has held that any new infringement may call for new urgency. The fact that a patentee – being aware of an infringement - has not taken action for a certain period of time, could lead the courts to deny a request for a preliminary injunction for lack of urgency.

There is no such requirement. In some cases, patent proprietors who may allege their patents are infringed opt to initiate multiple proceedings invoking different patents.

The District Court (Civil Chamber) and the Court of Appeal (Civil Chamber) in The Hague are designated as the Court of First Instance and the Court of Second Instance, respectively, with sole jurisdiction for both infringement and invalidity proceedings. Patent cases are decided by one or three specialised judges. Infringement and validity are dealt with by the same court, either in the same proceedings (when invalidity is raised as a defence), in separate but simultaneous proceedings (an invalidity action by way of a counterclaim), or in separate nullity proceedings.

Yes, the Netherlands takes part in the UPC. The Netherlands ratified the Unified Patent Court Agreement on 14 September 2016. A local division will be hosted in The Hague.

A party may seek a declaration of non-infringement of a patent from the court. Although the courts do not allow declaratory judgments in preliminary injunction proceedings, a provisional declaratory judgment of non-infringement would be possible – indirectly – by requesting a preliminary injunction preventing the patentee from sending warning letters to alleged infringers.

Normal patent proceedings on the merits may take between nine to 12 months from the serving of the writ to the oral hearing, where both parties will plead their case. However, in normal proceedings on the merits the court will usually - instead of, or prior to oral hearings - fix a date for a personal appearance of the parties to give information or to try to reach a settlement. Such informal hearings take place after the filing of the Statement of Defence by the defendant and are usually scheduled to take place within five to eight months of the date of serving the writ.

Accelerated patent proceedings before the District Court in The Hague generally reach a first instance substantive trial on the merits of the action within six to eight months of serving the writ of summons.

Urgent cases can be brought to trial at short notice, i.e. within a matter of weeks and in very urgent cases, e.g. in case of an imminent infringement at a trade fair, sometimes within a couple of days or hours, through preliminary injunction proceedings which can be initiated before the District Court of The Hague.

The accelerated proceedings are currently the most favoured patent proceedings in the Netherlands. In such accelerated proceedings on the merits, the court will render a first instance decision within eight to 12 months. In regular proceedings on the merits it will take the court 14 to 20 months to render a decision in first instance.

However, since the workload of the District Court (and the Court of Appeal) in The Hague has increased substantially in recent years, we have noticed that a first instance decision in accelerated proceedings may sometimes  be rendered somewhat later than the usual eight to  12 months.

The judges of the specialised patent chambers of the District Court and the Court of Appeal in The Hague have both a scientific and legal background. Certain (former) members of the Dutch Patent Office may also serve as temporary members of the patent chamber of the courts.

Where it appears to the court that a decision on an infringement may be affected by an opposition pending before the EPO, the court may stay the infringement proceedings. In preliminary injunction proceedings, the court will assess whether there is a serious, non-negligible chance that the opposition will succeed and, if so, may deny the injunction.

Yes, a party may file an action for nullification of a patent without being sued for patent infringement. However, this is only possible in proceedings on the merits and in the accelerated proceedings. Seeking nullification of a patent in preliminary relief proceedings is not possible.

FRAND license

In the Netherlands, the relevance of FRAND licences are mainly limited to FRAND defences, meaning that the alleged infringer invokes this as a defence against an injunction sought by the SEP holder and that the SEP holder is obliged to allow the use of its patent under FRAND conditions. Although it is not common for implementers in the Netherlands to sue the patent proprietor for a FRAND license, this may legally not be excluded.

Recently, the Turkish and German Vestel entities started proceedings on the merits against Access Advance and their individual pool members (Philips, GE Video Compression and IP Bridge). The District Court of The Hague assumed cross-border jurisdiction in its recent interlocutory judgment. As the case is pending, the judgment on the merits of the case must be awaited.

Compulsory license

Article 57 (2) of the Dutch Patent Act provides that a license can be claimed before the court if after three years from the date of the patent, neither the proprietor of the patent nor another person, in good faith, sufficiently produces or applies the patented product or the patented method respectively, unless they have a valid reason.

Furthermore, a license can be sought when for the application of a later patented invention, the application of the existing patent is necessary. However, based on the TRIPS-convention strict requirements must be met. Therefore, a compulsory license can only be claimed if the invention leading to the subsequent patent embodies significant technical progress of considerable economic significance.

A party may invoke the FRAND defence in patent infringement proceedings. The Dutch courts apply the procedure described by the European Court of Justice in Huawei / ZTE.

A successful FRAND defence would result in the denial of the injunction claim of the patent proprietor. However, post Huawei / ZTE there have been no cases in which an implementer has successfully invoked a FRAND defence, so this remains to be seen.

The parties may appoint their own experts who may appear before the court as witnesses or file written statements. Evidence may be brought in any form and is not subject to specific requirements.

Dutch courts may, at their own discretion or at the request of one of the parties, appoint an independent expert to give an opinion on technical matters. The expert will file a report in court and the parties may file submissions in response to it. The court can also summon expert witnesses to court to question them in person. However, as the (special chambers of the) District Court and Court of Appeal in The Hague Court consist of specialist judges with a technical education and legal background, it is rare for the court to appoint independent experts.

Under Dutch law there is no requirement to disclose documents. As a result, the concept of obtaining documents from the opposing party is not very common in the Netherlands. At an early phase, a party may ask a court to order “provisional measures” to preserve relevant evidence regarding the alleged infringement, subject to the protection of confidential information. Such measures may be obtained ex parte by an application to the court. A party may (pursuant to such provisional measures) petition the court to obtain from the other party, or third parties, specific documents that are relevant to the dispute and that relate to a legal relationship to which the interested party is a party. The court determines the extent of this disclosure and any measures related to confidentiality of the disclosed information.

Pre-trial discovery is not permitted. Seizure of evidence is only allowed for the purpose of preserving relevant evidence regarding the alleged infringement and not for examining such materials.

The dispute may be reviewed by the Court of Appeal in The Hague, without the need for leave or permission to be granted. Once the appeal proceedings have been concluded, the parties may appeal to the Supreme Court.

The dispute may be reviewed in full by the Court of Appeal in The Hague. The Supreme Court may only rule on issues of law, not facts, or it may review a ruling of the Court of Appeal that lacks sufficient reasoning.

First Appeal

In preliminary injunction proceedings, an appeal has to be filed within four weeks of the first instance judgment. Proceedings take about 12 to 20 months (there is a small chance that the Court will allow a special summary appeal taking about eight to 12 months).

In proceedings on the merits, an appeal has to be filed within three months of the first instance judgment. Proceedings take about 14 to 28 months.

Due to an increase in workload for the courts in the Hague, the above periods may be longer.

Second Appeal

An appeal before the Supreme Court usually lasts about two years (but can take longer).

In principle, the first instance decision is suspended while an appeal is pending. However, it is common for a court to declare a judgement to be provisionally enforceable at the request of one of the parties, in which case the first instance decision is not suspended when appealed.

However, should a first instance decision be enforced and subsequently be overturned in appeal the party who enforced the first instance decision will likely be liable for damages incurred by the other party.

The successful party can recover its reasonable and proportionate legal costs (including legal fees and fees of certain experts) and other expenses incurred, but a detailed specification of costs must be provided to the court in good time.

However, since 1 September 2020, indicative fees for patent cases exist for the Hague District Court and the Hague Court of Appeals, introduced by the judiciary. Four categories of patent disputes are distinguished: from simple to very complex, with corresponding maximum litigation costs.

The maximum litigation costs eligible for reimbursement for preliminary injunction proceedings:

• simple cases: ten thousand euros (10,000 EUR);
• regular cases: forty thousand euros (40,000 EUR);
• complex cases: eighty thousand euros (80,000 EUR);
• very complex cases: one hundred and twenty thousand euros (120,000 EUR).

The maximum litigation costs for (accelerated) proceedings on the merits:

• simple cases: thirty thousand euros (30,000 EUR);
• regular cases: seventy five thousand euros (75,000 EUR);
• complex cases: one hundred and fifty thousand euros (150,000 EUR);
• very complex cases: two hundred and fifty thousand euros (250,000 EUR).

These amounts are maximum litigation costs that the prevailing party may be reimbursed. However, in individual cases the court may decide to depart from these amounts, for instance when it finds that the maximum amount in a particular case is too low and does not meet the criteria of reasonable and proportionate.

The successful party can recover reasonable and proportionate legal costs (including legal fees and fees of certain experts) and other expenses incurred, but a detailed specification of costs must be provided to the court in good time.

However, since 1 September 2020, indicative fees for patent cases also exist for the Hague Court of Appeal. The maximum litigation costs in appeal proceedings are equal to the maximum costs of the maximum litigation costs for (accelerated) proceedings on the merits, as described above.

Indicative fees also exist for proceedings before the Supreme Court. The maximum litigation costs are:

•  simple cases:

1. Claimant: fifteen thousand euros (15,000 EUR); 
2. Defendant: ten thousand euros (10,000 EUR);

• normal cases:

1. Claimant: fifty thousand euros (50,000 EUR); 
2. Defendant: forty thousand euros (40,000 EUR);

• complex cases:

1. Claimant: one hundred thousand euros
   (100,000 EUR);
2. Defendant: eighty thousand euros (80,000 EUR);

• very complex cases:

1. Claimant: one hundred and eighty thousand
   euros (180,000 EUR);
2. Defendant: one hundred and fifty thousand
   euros (150,000 EUR);

The costs for a prejudicial question to the Supreme Court are established at a maximum of twenty five thousand euros (25,000 EUR).

Yes, litigation costs are recoverable. The successful party can recover reasonable and proportionate legal costs (including legal fees and fees of certain experts) and other expenses incurred, but a detailed specification of costs must be provided to the court in good time. The litigation costs are limited to the maximum costs as described above.

The main forms of alternative dispute resolution are mediation, negotiation and arbitration. The parties are free to agree on alternative dispute resolution methods. Parties will usually use arbitration if required by contract. The courts have a policy of promoting mediation. In normal proceedings on the merits the court may give an interim order to the parties to appear in court to investigate the possibility of negotiating a settlement.

The court does not require the parties to negotiate a settlement, but at the beginning of proceedings, usually during the informal court hearings set after the filing of the Statement of Defence by the defendant, the court may advise the parties to try and settle the case or start a mediation process.

A patentee has a wide range of remedies available to it, including:

• an order to cease and desist;
• surrender / destruction of infringing goods;
• surrender of profits;
• publication of the decision;
• a recall order;
• damages;
• an order to provide information concerning suppliers and / or customers; and
• (full) reimbursement of legal costs.

Damages are only available if the infringer knew or could reasonably have been expected to know that it was infringing the patent.

The patentee may claim damages equal to the reasonable royalties the patentee would have earned had the infringer been granted a licence for its infringing action, lost profits or the profits made by the infringer as a result of the infringing actions. However, punitive damages  are not available under Dutch law. The patentee cannot claim for both compensation through damages and the surrender of profits - he must choose between the two remedies.

In determining the reasonable royalty mentioned above, various factors should be considered depending on the circumstances of the case. In most cases the royalty rates used are those that the patentee usually charges for such matters or those that are widely used in the respective sector. The court may set the damages as a lump sum.

The infringer may have to provide certain financial data on infringements, such as how many products have been sold and the price and profit margins applicable. Further, the Court may appoint upon the request of one of the parties or at its own discretion an independent expert, e.g. a registered auditor, to give an expert opinion on the amount of damages resulting from the infringement.

If the infringement was committed deliberately, the court will be more likely to award higher damages to the patentee, e.g. surrender of profits made by the infringer with the infringement in addition to other kinds of damages. This is because the Court will be more inclined to establish a causal connection between the damages claimed and the deliberately committed infringements. That said, under Dutch law it is not possible to claim punitive damages. Further, in very special circumstances, if the defendant has acted deliberately, a patentee could claim an advance sum for damages in preliminary injunction proceedings.

Yes, the court can order a party to recall infringing products. There is not a strict limitation in time, but the court must consider the proportionality between the severeness of the infringement, the measures claimed and the interests of third parties.

A preliminary injunction may be obtained in separate preliminary injunction proceedings or in proceedings on the merits, as a separate request, for the duration of the proceedings on the merits. However, some restrictions apply. Preliminary relief is meant to provide only a temporary solution. For instance: no actual damages can be sought (although parties can be ordered to provide security) and no counterclaim aimed at invalidating the patent in suit is permitted as preliminary relief.

A preliminary injunction may be obtained if there is an (imminent) infringement of a patent.

Yes, in urgent cases, the courts may issue an ex parte injunction against an alleged infringer to prevent any imminent infringement or to prevent the continuation of an infringement. An application for an ex parte injunction may be made if the requesting party has presented reasonable evidence to support the claim that its patent has been infringed or is about to be infringed and has established the required urgency.

If necessary, an injunction can be obtained in a matter of days or even hours.

An appeal is possible. Lodging an appeal has a suspensive effect on a judgment. However, if a judgment is declared provisionally enforceable by the court, which the court often does if so requested, the injunction will not be suspended. In that case, should the injunction be reversed in the appeal proceedings, the losing party will be liable for the damages resulting from enforcement of the injunction.

In many cases, court orders carry penalty sums for noncompliance. Such sums accrue to the successful party and are often an effective incentive for compliance. In case of (civil) seizures, the attaching party may be required to provide security.

A final injunction can only be obtained in accelerated proceedings or in regular proceedings on the merits.

In accordance with case law of the Dutch Supreme Court, the (lower) courts in the Netherlands have considered themselves competent to decide on cross-border injunctions where the patent infringement occurs in countries other than the Netherlands. As a result, a quite liberal practice of granting cross-border or extraterritorial injunctions was developed. However, since a recent decision of the European Court of Justice, the scope for a cross-border injunction has been limited to those situations where the defendant is based in the Netherlands and the validity of the patent is not in dispute. The District Court in The Hague still deems itself competent to decide on cross-border claims in preliminary injunction proceedings.

Where a defendant is a non-EU resident, a cross-border injunction (not affecting an EU member State) may be an available relief.

In general, “torpedo” actions do not block access to the Dutch courts and do not prevent the courts from allowing cross-border injunctions requested in preliminary injunction proceedings or provisionally in proceedings on the merits. The Dutch courts will however consider what effect this may have on the outcome of the proceedings on the merits. The courts will consider carefully if “torpedo” actions, e.g. coming from Italy or Belgium, are likely to force the court to declare itself not competent in proceedings on the merits, taking into account the possibility that the alleged infringer is misusing the “torpedo” to prevent the patentee from enforcing its patent efficiently in The Netherlands.

Anti-suit injunctions are not common at all in the Netherlands. In 2004 the District court of the Hague granted Medinol an anti-suit injunction against Cordis in preliminary relief proceedings.

Recently, Ericsson tried to obtain an anti anti-suit injunction against Apple in preliminary relief proceedings.However, Ericsson’s claims were rejected due to a lack of urgent interest as Ericsson failed to show it was plausible that there was a real threat that Apple would initiate a preventive ASI against Ericsson. This was the case even given the unwillingness of Apple to undertake that it would not file for an ASI against Ericsson in the future.

Somewhat similar to an ASI is the injunction that may be obtained against a patent proprietor based on the argument that its patent is invalid. Such injunction could normally be obtained against the patent proprietor until a judge in proceedings on the merits has decided on the validity of the patent.