International Patent Litigation in Slovenia

According to the Industrial Property Act (“ZIL-1”), the following entities are entitled to sue for patent infringement:

• the patent holder;
• the licensee (to the extent that the rights of the holder are transferred and consent is given by the holder of the right);
• the exclusive licensee (if the holder of the right fails to initiate infringement proceedings within a reasonable period after notification);
• professional associations established for protection of industrial property rights (to the extend the rights are transferred by law or transaction to such organization).

In certain cases provided by the law, it is possible to join more than one party as a defendant.

This is possible, among others, in case of i) legal communities with respect to the subject-matter, ii) rights or obligations being based on the same factual and legal basis, iii) defendants being joint and several obligors, iv) claims or obligations at issue being of the same kind, being based on substantially the same factual and legal basis, and the same court having jurisdiction over each claim and each defendant.

Third parties (that are not claimants or defendants) can join the proceeding as side intervenors in case they have legitimate interest that one of the parties succeeds in the proceeding. Each party can also call a third person to join the proceeding as a side intervenor which is usually done via court. If the called third party refuses to enter, it can no longer argue that a party failed to exercise due care when litigating which resulted in an unfavourable outcome.

With certain exceptions, side intervenors have similar rights in the proceeding as the parties.

Patent infringement claims are not subject to any specific time limits so the general rules of the civil law should be applied. The general statute of limitation is 5 years, however, there are many exceptions from the rule.

There is no such requirement in the law.

District court in Ljubljana has exclusive jurisdiction over the patent litigation proceedings. Infringement and validity disputes are decided in the same type of proceedings.

Yes. The Patent Mediation and Arbitration Centre of UPC is also located in Ljubljana, Slovenia.

An action for declaration of non-infringement can be brought in front of Slovenian courts. However, the applicant must establish a legitimate interest for such action (i.e. that the court decision will affect its rights or interests).

According to the case law of the Supreme Court, a legitimate interest exists when the legal position of the claimant is uncertain, and a declaratory judgment would resolve such uncertainty. The uncertainty, and thus the threat to the claimant's legal position, must be the result of the defendant's conduct and must be concrete, not merely hypothetical.  It is not sufficient, therefore, that the uncertainty arises from the complexity and ambiguity of the situation as such. The conduct of the defendants must show that they are seeking to enforce their rights to an extent different from that to which the claimant believes they are entitled.

Timescale for each proceeding depends on many factors, including the scope of facts and evidence introduced to the court, how litigious the parties are, how occupied a particular judge is, etc. Usually, it takes up to 2 years for a claim to reach a first hearing.

The first instance judgement is usually reached within 3 years and the second instance judgement in an additional year. However, such estimates can vary greatly depending on the course of proceeding.

No, the judges do not have technical expertise. In case such expertise is needed, a court expert is usually appointed.

In case of a lawsuit for a declaration of invalidity of a European patent against which an opposition has been filed with the EPO, the court stays the proceedings pending the final decision of the EPO.

The nullification action can be filed independently from the patent infringement action. However, the claimant must claim and prove that it has legitimate interest to pose such action. In relation to the legitimate interest please see our response to question 8 above.

Compulsory license is explicitly regulated by ZIL-1. It can be granted by the court in case of public interest, or in case of abuse of the right to a patent by the patent holder. Compulsory license is granted only after unsuccessful attempt to conclude a license agreement.

FRAND license is not regulated under Slovenian law. Such license can be granted if the conditions for the compulsory license are met. If not, it has to be assessed if FRAND licence can be claimed on the basis on an agreement (i.e. agreement between the patent holder and the standard setting organisation) or on the basis of the competition rules.

There is no local case law available in relation to the FRAND defence. Therefore, it is unclear how the courts would treat such defence.

Based on the ECJ judgement C-170/13, the patent holder can sue for a FRAND patent infringement if, essentially, i) it priorly warned the alleged infringer of its intention to bring the action and offered conclusion of a FRAND license agreement and ii) the alleged infringer did not duly respond. Based on that, it can be claimed that in case those conditions are not met, the infringement action cannot be successful. This could represent a valid defence for rejection of the claim, however, due to absence of case law, it is difficult to predict whether Slovenian courts would side with such argumentation.

Expert witnesses can be appointed in a patent infringement case if certain technical questions are of relevance. In bigger disputes, it is a common practice that each party engages its expert to prepare an opinion which is presented to the court. Then the court appoints its own independent expert which presents its view on the matter. The opinions presented by the parties have the procedural nature of parties’ statements while the opinion of a court-appointed expert represents evidence and can serve as the basis for the judgement. The court-appointed expert considers opinions of the experts chosen by the parties and objectively evaluates them for the court.

If a party lacks certain documentation to back up its arguments, it can petition the court to order the opposing party to reveal such documentation. If the order is not respected, the court may conclude that the content of the documents is such as asserted by the requesting party. When deciding on disclosure, the court should observe the principle of proportionality in relation to disclosure of business secrets and assure that the court proceeding is not abused with the sole purpose to obtain confidential information from the competitor.

Upon a party's reasonable request, the court can also order to certain entities to provide information on the origin and distribution flows of the goods or services that infringe a patent right.

If a party establishes that i) it holds the relevant patent rights, ii) the patent rights were violated or an actual risk exists that they will be violated, iii) a risk exists that the documentation serving as evidence will be destroyed or will not be available later, iv) the intellectual property office has already issued the declaratory decision in the patent registration proceeding and v) the request is made within 3 months after the party found out about the potential violation, the court may order that the documents are made available for review even before any court proceeding for violation of patent rights is initiated. 

After the first instance proceeding is finished, an appeal can be filed against the judgement in front of the higher courts. In certain limited cases, extraordinary legal remedies in front of the Supreme Court are also available.

Apart from that, legal protection can be sought in front of the Constitutional court (in case of violations of the Constitution) and in front of the European Court of Human Rights (in case of violations of the European Convention of Human Rights).

In general, appeal can be brought due to i) fundamental infringement of the procedural law, ii) an erroneous or incomplete finding of fact, iii) an error in the application of the substantive law.

The appeal is usually resolved within a year.

Yes, filing of an appeal against the judgement usually suspends the decision.

Please note that costs of first instance proceeding can vary significantly depending on the course of proceeding (e.g. scope of arguments and evidence, appointment of court experts, complexity of legal and factual background, number of submissions and hearings, etc.). In a typical first instance patent litigation proceeding, the overall costs are between EUR 100.000 and EUR 150.000 (including representation costs, costs of experts, translations, court fees, etc.).

Costs of appeal proceedings also depend on the complexity of the proceeding. For a typical appeal proceeding the costs vary between EUR 20,000 and EUR 30,000.

In case a party succeeds in the proceeding, some costs are recoverable from the opposing party. The amount of recoverable costs depends mainly on the value of dispute and is calculated for each procedural action. For an individual procedural action, the recoverable costs are currently capped at EUR 5,400.

Subject to certain requirements, disputes can be alternatively settled in arbitration or in mediation.

Mediation is a commonly used method of resolving disputes before the court proceeding and during the court proceeding. It can be either court-sponsored or independent from the court.

Arbitration, on the other hand, is not very common in Slovenia. It can be initiated only if there is an arbitration clause in the agreement or if an arbitration agreement is reached after the parties are already in dispute. Due to lack of awareness of the benefits of arbitration on the local market, the vast majority of disputes is still settled in court.

Yes, after the first submissions, the court proposes mediation proceeding to the parties. If the parties consent to mediation, the court proceeding is stopped until the mediation proceeding is concluded.

In case of patent infringement, a court proceeding can be initiated by the entitled parties. In the infringement action, the party can request the court to i) prohibit violations and future violations; ii) recall the infringing items from the economic flows, taking into account the interests of bona fide third parties; iii) remedy the situation created by the infringement; iv) irrevocably remove the infringing objects from economic flows; v) destroy the infringing objects; vi) destroy the means of the infringement which are wholly or mainly intended or used for the infringement and are in the possession of the infringer; vii) surrender to the claimant the infringing objects in return for payment of the costs of production; viii) publish the judgment.

The injunctions in case of patent infringements are not issued automatically. They must be requested by the party.

Damages are calculated either pursuant to the general rules of civil law or as an agreed upon or a customary royalty.

The court determines the amount of damages based on parties’ statements and evidence. There is no separate proceeding for calculation of damages.

If infringement is deliberate, the infringer can also be liable for the criminal offence of unauthorised use of a foreign invention or topography.

Yes, the court can order (upon the request of the claimant) to recall infringing products. Such claim is subject to the general rules on the statute of limitations.

Yes, it is possible to obtain a preliminary injunction under Slovenian law. For the motion to be granted, the applicant must establish i) holding of a registered patent; and ii) that rights of the applicant have been infringed or an actual danger of infringement exists; and one of the following: a) a danger exists that the enforcement of claims will be made impossible or difficult, or b) the adoption of a provisional measure is necessary to avoid damages difficult to repair; or c) the provisional measure does not have more detrimental consequences for the alleged infringer than would have the non-adoption of such measure for the holder of the right.

Please note that the court grants preliminary injunction if all the relevant facts are established as probable (i.e. more likely to exist than not).

Yes. In such case, the applicant must additionally establish that any delay with the issuance of preliminary injunction would cause to the patent holder damages that would be difficult to compensate.

Application for preliminary injunction can be filed i) before the main court proceeding is initiated, ii) during the main court proceeding or ii) after the main court proceeding is finished and before enforcement is possible. In case the application is filed before the main court proceeding is initiated, the court sets a deadline for initiation of the main court proceeding.

In case of patent infringement, the law specifically prescribes that the application for preliminary injunction must be filed within 3 months after the patent holder was acquainted with the alleged violation.

The statute provides that the preliminary injunction proceedings are urgent. To our experience, the court usually issues a decision in a couple of weeks.

When a preliminary injunction is issued, objection can be filed against the decision. Once the court rules upon such objection, appeal is possible against the decision. Generally, neither objection nor appeal suspend the decision.

Yes, if the court orders such security to be provided. Provision of security can be proposed either by the claimant (in such case the burden of proof is reduced) or by the defendant (if it is anticipated that the defendant will suffer damages due to injunction). Please note that to our experience, it is not very common that the court would order security to be provided.

Additionally, please note that in case preliminary injunction is not justified (e.g. due to the claimant losing the case), the claimant s liable for damages caused by the preliminary injunction.

After the injunction is issued, objection can be filed which allows re-assessment of the injunction without time pressure. Once the objection is ruled upon, appeal can be filed against the decision. Other than that, no further proceedings are prescribed.

There are no specific limitations in this relation. It must be established that Slovenian courts have jurisdictions pursuant to the rules of the private international law and that the issued injunction can be enforced in the relevant jurisdiction. Injunctions are also available before Slovenian courts under national law if the courts of another EU member state have jurisdiction as to the substance of the matter.

Anti-Suit-Injunctions are not available in the Slovenian legal order.