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CHAMBERSGlobal Practice Guides

Patent Litigation

2017

DenmarkContributed by Accura Advokatpartnerselskab

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LAW & PRACTICE: p.3Contributed by Accura Advokatpartnerselskab


Law & Practice DeNMarK Contributed by Accura Advokatpartnerselskab Authors: Jeppe Brinck-Jensen, Anders Poulsen

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Law & PracticeContributed by Accura Advokatpartnerselskab

cONteNtS1. Types of Intellectual Property Rights & Granting

Procedure p.41.1 Types of Intellectual Property Rights p.41.2 Grant Procedure p.41.3 Timeline for Grant Procedure p.41.4 Term of Each Intellectual Property Right p.51.5 Rights and Obligations of Owner of Intellectual

Property Right p.51.6 Further Protection After Lapse of Maximum Term p.51.7 Third-Party Rights to Participate in Grant

Proceedings p.51.8 Remedies Against Refusal to Grant Intellectual

Property Right p.51.9 Consequences of Failure to Pay Annual Fees p.5

2. Initiating a Lawsuit p.52.1 Actions Available Against Infringement p.52.2 Third-Party Remedies to Remove Effect of

Intellectual Property Right p.52.3 Courts with Jurisdiction p.62.4 Prerequisites to Filing a Lawsuit p.62.5 Legal Representation p.62.6 Interim Injunctions p.62.7 Protection for Potential Opponents p.62.8 Special Limitation Provisions p.62.9 Mechanisms to Obtain Evidence and Information p.72.10 Initial Pleading Standards p.72.11 Representative or Collective Action p.72.12 Restrictions on Assertion of Intellectual

Property Right p.7

3. Infringement p.73.1 Necessary Parties to an Action for Infringement p.73.2 Direct and Indirect Infringement p.73.3 Scope of Protection for an Intellectual

Property Right p.83.4 Defences Against Infringement p.83.5 Role of Experts p.83.6 Procedure for Construing the Terms of the

Patent’s Claims p.8

4. Revocation/Cancellation p.84.1 Reasons and Remedies for Revocation/

Cancellation p.84.2 Partial Revocation/Cancellation p.84.3 Amendments in Revocation/Cancellation

Proceedings p.94.4 Revocation/Cancellation and Infringement p.9

5. Trial & Settlement p.95.1 Special Procedural Provisions for Intellectual

Property Rights p.95.2 Decision Makers p.95.3 Settling the Case p.95.4 Other Court Proceedings p.9

6. Remedies p.106.1 Remedies for the Patentee p.106.2 Rights of Prevailing Defendants p.106.3 Types of Remedy p.106.4 Injunctions Pending Appeal p.10

7. Appeal p.107.1 Special Provisions for Intellectual Property

Proceedings p.107.2 Type of Review p.10

8. Costs p.108.1 Costs Before Filing a Lawsuit p.108.2 Responsibility for Paying Costs of Litigation p.10

9. Alternative Dispute Resolution p.109.1 Type of Actions for Intellectual Property p.10

10. Assignment & Licensing p.1110.1 Requirements or Restrictions for Assignment

of Intellectual Property Rights p.1110.2 Procedure for Assigning an Intellectual

Property Right p.1110.3 Requirements for Restrictions to License an

Intellectual Property Right p.1110.4 Procedure for Licensing an Intellectual

Property Right p.11

DeNMarK Law & PracticeContributed by Accura Advokatpartnerselskab Authors: Jeppe Brinck-Jensen, Anders Poulsen

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accura advokatpartnerselskab IP team is located in Co-penhagen. The team consists of two partners and five other qualified lawyers. The team provides clients with advice within all areas of IP and the life science sectors. The team primarily assists with litigation and IP contract negotia-

tions. Accura provide legal services to clients from various industries, but the major clients are primarily pharmaceu-tical companies, as well manufacturers of dietary supple-ments and foods to biotech and vaccine companies.

authorsJeppe Brinck-Jensen heads Accura’s IP and life science team. He primarily offers advice within the health care and high -tech industries and is an experienced litigator within these sectors. He is a member of the Danish Association for the

Protection of Intellectual Property (FIR) and the European Patent Lawyers Association (EPLAW). He has authored and co-authored a number of books and articles relating to patent litigation.

anders Poulsen primarily advises pharmaceutical clients with the enforce-ment of patent rights. Further, Anders Poulsen assists clients with the drafting and negotiation of various licence agree-ments, distribution agreements and R&D

agreements. He is a member of the Danish Association for the Protection of Intellectual Property (FIR).

1. types of intellectual Property rights & Granting Procedure

1.1 types of intellectual Property rightsThe Danish legal system is a civil law system based on statu-tory law. Inventions are primarily protected through patents and utility models.

Know-how is protected by the Danish Marketing Practices Act. Supplementary intellectual property (IP) rights such as copyrights, design rights and marketing rights are also available.

1.2 Grant ProcedureNational patent and utility model protection can be obtained by submitting an application to the Danish Patent Office. To obtain a patent or utility model registration for an invention, the invention must be new, differ “materially” (or “clearly” for utility models) from prior art and be industrially appli-cable.

The Danish Patent Office performs an examination of the patent application. For utility models, an examination of the above requirements is only conducted upon request from the applicant. After receiving the first evaluation, the pat-ent or utility model applicant can choose to proceed with international registrations, either through an international application (PCT), a European application (EP) or filing in another country with priority from the Danish application. Unitary patents will also be available going forward.

Generally, the grant of a utility model is easier, faster and cheaper than a patent.

1.3 timeline for Grant ProcedureThe initial examination of the patent application is typi-cally concluded by the Danish Patent Office within six to ten months. If the invention is found patentable, a patent is likely to be obtained within three years from the filing date.

If the patent application has already been examined by an-other patent office involved in the Global Patent Prosecu-tion Highway, the applicant may request a faster granting procedure from the Danish Patent Office.

It is normally recommended that the drafting of the patent application is conducted by a patent agent, as the patent de-scription, the specific wording of the patent claims and the mentioning of prior art is essential to the scope and validity of the patent. Furthermore, the examination of the applica-tion might result in remarks from the Danish Patent Office which require a change of wording. However, this is not a formal requirement, and the patent application can be sub-mitted by any individual or company.

The official application fee for filing with the Danish Patent Office is DKK3,000. If more than ten patent claims are listed, an additional fee of DKK300 is charged for each additional claim. The fee is not refundable if the application is with-drawn or does not result in a granted patent. Costs of local patent agents vary and depend highly on the type of inven-tion, the complexity of the patent and the remarks received from the Danish Patent Office.

A utility model application will typically be registered within two to three months. If the utility model application is exam-ined for novelty and inventive step, the applicant will receive


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the first evaluation within three to four months from the date of request. The basic fee for a utility model application is DKK2,000.

1.4 term of each intellectual Property rightPatents are in force for up to 20 years from the date of filing the application. Utility models are in force for up to ten years from the date of filing the application.

1.5 rights and Obligations of Owner of intellectual Property rightThe owner of a patent or utility model registration must pay annual renewal fees throughout the term of protection. The renewal fees for patent registrations are DKK500 for each of the first three years and gradually increase in each subse-quent year to DKK5,100 for the 20th year. The renewal fees for utility models are DKK2,000 for the first period (from the 4th to the 6th year) and DKK3,000 for the second period (from the 7th to the 10th year).

As the registration of the patent or utility model provides the holder with an exclusive right to whatever is covered by the claims, the holder of a patent or utility model may enforce his or her rights against any infringing action from third parties. This includes civil proceedings as well as preliminary injunction proceedings. The holder may also claim damages for any loss suffered as a result of the infringing use. The holder is also free to license his or her rights to third parties.

1.6 Further Protection after Lapse of Maximum termThe holder of a patent for a pharmaceutical product or plant protection agent may apply for a supplementary protection certificate (SPC). The SPC comes into effect after the corre-sponding general patent expires and thus extends the term of protection. The term of the SPC corresponds to the time passed from the application date until date of the first mar-keting authorisation in the European Economic Area minus five years. However, the maximum term of the SPC is five years and the total combined duration of market exclusivity of the general patent and SPC will normally not exceed 15 years.

The SPC holder may enjoy a further six months paediatric extension of SPCs for pharmaceuticals subject to certain in-vestigation plan requirements. The relevant legislation for obtaining SPCs is the SPC Regulation (EC) No. 469/2009.

1.7 Third-Party rights to Participate in Grant ProceedingsThird parties have the right to file third party observations during grant proceedings. This is typically done by submit-ting material of relevance for the validity assessment of the patent. Third party observations may be filed in respect of

patent applications, utility models and SPCs. The observa-tions may concern all aspects of registrability.

1.8 remedies against refusal to Grant intellectual Property rightA refusal to grant a patent or utility model by the Danish Patent Office may be appealed to the Board of Appeal for Patents and Trade marks. A decision from this board may be brought before the Maritime and Commercial High Court.

1.9 consequences of Failure to Pay annual FeesAnnual fees are due throughout the lifetime of the patent. Payments are made for the upcoming year and due at the end of the month in which the patent was filed in the previous year. For utility models, renewal fees must be paid on three occasions throughout the ten-year term. The Danish Patent Office operates with a six-month grace period in which late payments of fees for both utility models and patents may still be made (along with an additional 20% of the fee).

Failure to pay the annual fees to the Danish Patent Office within the grace period will result in the patent or utility model lapsing and the holder losing his or her right. If the non-payment is due to excusable circumstances, the patent may be restored pending a restoration fee within two months from the lapse of the patent.

2. initiating a Lawsuit2.1 actions available against infringementIn Denmark, a right holder can enforce patent rights against a potential or actual infringer through legal proceedings by either filing for a preliminary injunction or by initiating civil proceedings on the merits.

The right holder may also apply for a search and seizure order in order to secure the preservation of evidence of the infringement and its extent.

2.2 Third-Party remedies to remove effect of intellectual Property rightAny person may initiate revocation proceedings before the courts. There is no time limit for such a request.

A request for revocation proceedings from any other person than the patent holder can only be made on one of the fol-lowing grounds:

•the subject matter does not fulfil the criteria for registra-tion;

•the invention is not sufficiently disclosed to allow a person skilled in the art to carry it out;

•the content of the patent/utility model extends beyond the content of the application as filed; and/or

• the scope of protection has been expanded after grant.


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If an invention has not been commercially used within three years from grant (or four years from filing), or if there is a general public need for practising the invention, any party may apply for a compulsory licence. The court will then decide whether to grant a licence or not. Compulsory licences may also be granted on considerations of, for exam-ple, dependent patents or plant variety rights. However, such grounds are very rarely used in practice.

Further to the above, third parties may initiate an opposition or re-examination request before the Danish Patent Office. The relevant requirements for such actions are described in 4 revocation/cancellation.

2.3 courts with JurisdictionMost IP matters are heard by the Maritime and Commer-cial High Court in Copenhagen in the first instance as the specialised IP court. The decision of the Maritime and Com-mercial High Court may generally be appealed to the Court of Appeal, which decision may only be appealed to the Su-preme Court upon prior approval from the Danish Board of Grant to Appeal. Under certain circumstances, the decision from the Maritime and Commercial High Court can be ap-pealed directly to the Supreme Court.

2.4 Prerequisites to Filing a LawsuitUnder Danish law, there are no prerequisites to filing a law-suit. Any party may initiate legal proceedings without send-ing previous warning letters, although it is typically recom-mended that the right holder makes the other party aware of its rights and the alleged infringement prior to taking any legal steps.

However, if there is a risk that the alleged infringer will destroy or remove evidence, a warning letter is not recom-mended. Instead, the right holder should submit a request for a search and seizure order.

If the matter is deemed suitable, the relevant court will rec-ommend that the parties try to resolve the matter through court mediation. It is only a suggestion and both parties are free to reject mediation without any legal consequences.

2.5 Legal representationAny legally competent party is free to represent themselves before the Danish courts, including the specialised IP court – the Maritime and Commercial High Court. Companies are free to be represented by one of their permanent employees. If the party chooses to be represented by another person who is not permanently employed by the party (or for private par-ties, directly related to such) such person must be a lawyer with the right to appear before the relevant court.

In administrative matters before the Danish Patent Office or the Danish Board of Appeal, the parties are free to represent themselves or to be represented by any third party.

2.6 interim injunctionsThe owner of an IP right may request a preliminary injunc-tion in order to effectively stop the infringing use of the reg-istered right.

Before granting an interim injunction, the right holder must prove on a balance of probabilities that: (i) the acts against which the injunction is granted will infringe the right hold-er’s right; (ii) the alleged infringer is likely to perform such acts; and (iii) the purpose of proceedings will be lost if the right holder is to seek relief only by way of proceedings be-fore the ordinary courts.

Right holders are not required to prove their case, but only to show to the court that the above conditions are likely to be fulfilled.

The injunction must be followed up by main proceedings on the merits – also before the Maritime and Commercial Court. The main proceedings decide whether the injunction shall be permanent as well as the size of any damages.

2.7 Protection for Potential OpponentsIf the potential opponent in an IP matter is aware of the al-leged infringement prior to the filing of a lawsuit, it may be recommended that a patent/utility model invalidity action is filed in order to clear the way and raise further doubt as to the validity of the relevant IP right.

Protective letters are dismissed by the Danish courts and returned to the sender. Requests for ex parte preliminary injunctions have not previously been granted in Danish pat-ent cases, but they are possible in principle.

As the grant of a preliminary injunction typically requires right holders to place security for the damages and incon-venience the order may inflict on the defendant, they may argue for a very large security bond.

Preliminary injunctions are generally not stayed pending the outcome of the invalidity action or a case on the merits.

2.8 Special Limitation ProvisionsNo special limitation provisions apply to IP matters in Den-mark. All types of evidence may be submitted and relied upon, including various documents, affidavits and declara-tions as well as witness testimonies during the oral hearing. All witnesses may be cross-examined by both parties.


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2.9 Mechanisms to Obtain evidence and informationAccording to Danish law, the right holder can apply for a search and seizure order to secure the preservation of evi-dence of the infringement and its extent. This will be allowed by the court if the right holder is able to show that it is likely that the alleged infringer has infringed or will infringe the registered right and that there is reason to believe that evi-dence of the infringement and its extent may be obtained from the premises where the search is to be carried out.

This search may relate to any material being relevant to the assessment of whether and to what extent an infringement is taking place or has taken place. The search must be followed by ordinary infringement proceedings.

In addition to this, the court may request a party to produce specific evidence. There is no requirement to do so. However, failure to produce such evidence may be interpreted in fa-vour of the other party.

2.10 initial Pleading StandardsAny writ or request for a preliminary injunction must state (i) the parties to the dispute; (ii) the court where the pleading is filed; (iii) the claimant’s claims; (iv) a statement of claim; and (v) the arguments and evidence on which the claimant will rely. There are no specific requirements for lawsuits in IP proceedings.

After the defendant has submitted his or her defence, a pre-liminary hearing will be held by phone in which the pre-trial proceedings will be scheduled (including deadlines for any additional pleadings). The parties may produce additional facts, arguments and evidence until close of pre-trial pro-ceedings (a date fixed by the court or four weeks before the oral hearing).

2.11 representative or collective actionCollective actions are permitted under Danish law, includ-ing in IP cases, either as a collective pleading by multiple plaintiffs, proceedings against multiple defendants, or where additional parties are added during the proceedings as join-ders.

Collective actions are only permitted if the relevant court is competent to handle all claims, which will often be the case in IP matters against Danish defendants where the Maritime and Commercial High Court is the specialised IP court.

If one of the multiple defendants is from another EU coun-try, or if any party for any other reason objects to the collec-tive action, it is a further requirement that the court finds the claims to be closely connected and suitable to be dealt with simultaneously. This is a very strict requirement. However, if

the claims all originate from the same course of affairs, they are found to be sufficiently connected.

Further, if any of the parties has agreed on a different venue and jurisdiction, collective actions in another jurisdiction are not permitted.

For collective actions involving multiple plaintiffs, the court must deem such collective proceedings as the better solu-tion. This requirement is not clear, but most likely means that the court must find that individual proceedings for each plaintiff could not be initiated without incurring sufficient additional costs for the parties involved. Multiple plaintiffs must select a group representative.

2.12 restrictions on assertion of intellectual Property rightThere is no Danish case law in which anti-competition rules have restricted the owner of an IP right from asserting his or her rights against infringing use. However, in some cases competition rules may restrict the terms of licences granted in respect of an IP right, such as compulsory licences or ex-clusive, mutual licences between competitors which entail limitations on both parties’ sales. In addition, if a right hold-er dominates the market, the right holder may not abuse this position to exploit his or her rights to gain unfair advantages.

3. infringement3.1 Necessary Parties to an action for infringementAn infringement action typically only involves the right holder and the alleged infringer. However, any licensees of the IP right – exclusive as well as non-exclusive – are en-titled to file an action for infringement, unless this access is restricted in the licence agreement. Unlike the licensee, a mere distributor (even if sole) cannot file an action for infringement of IP rights for the goods covered by the dis-tribution rights.

Actions can only be filed if the defendant has committed ac-tions which are alleged to infringe or if it can be proved that the defendant is about to commit such actions. Apart from direct infringement of the right, this includes inducement or contributory acts for exploiting the invention.

3.2 Direct and indirect infringementSection 3(2) of the Danish Patents Act contains a separate clause on indirect patent infringement. According to this, a party may be liable as a secondary infringer if such party supplies or offers to supply any person not entitled to prac-tise the invention in question with such means for exploiting the invention in Denmark, provided that the party offering or supplying the means knows – or if it is evident from the circumstances – that the means are suitable and intended for exploiting the invention in question. However, if the means


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provided are a generally available commercial product, a party offering or supplying the means will only be liable if that party attempts to induce the receiver to commit an act of infringement.

There is no difference between the remedies available in case of direct infringement of a patent and in case of indirect infringement of a patent. Thus, a contributory infringement can be met with a preliminary injunction as well as an in-junction through normal civil proceedings.

3.3 Scope of Protection for an intellectual Property rightThe scope of protection is determined by the claims in the registered patent or utility model. For the interpretation of the claims, the description may serve as a guideline.

In recent case law from the Supreme Court, the principle of non-literal equivalents has been confirmed, as the court stated that the scope of the patent must allow for technically similar – equivalent – elements to what is described in the patent claims. The deciding factor of the principle of non-lit-eral equivalents seems to be whether the central or essential part of the invention can be found in the alleged infringing act or product, and whether any deviations only occur in less essential parts and are obvious to a person skilled in the art.

Accordingly, depending on the circumstances, the scope may reach beyond the wording of the claims in order to pro-vide a fair protection of the invention without compromising third parties’ interest in legal certainty.

3.4 Defences against infringementThe basic arguments from the defendant typically concern the invalidity of the claimed right and the non-infringing character of the act in question.

The invalidity argument is normally based on lack of novelty or inventive step in sufficiency or added subject matter.

The non-infringement argument is normally based on ei-ther: the limited scope of the patent; exhaustion of rights to the disputed goods (eg because they have been placed on the market by the patentee or with consent from the patentee); non-exploitation, as the act is of a private, non-commercial nature or for research purposes; or a prior use defence which applies to a party that uses or has made significant prepara-tions for using the invention prior to the filing date.

Compulsory licences are not used as defence arguments. However, under Danish law it is possible to obtain a compul-sory licence to a patent going forward if the invention cov-ered by the patent has not been commercially used within three years from registration, or if there is a general public need for utilising the invention, and if any attempt to obtain

a voluntary licence has failed, see above. The terms of the compulsory licence are to be decided by the court.

3.5 role of expertsIn preliminary injunction proceedings each party will typi-cally substantiate their arguments by submitting written dec-larations from experts. The declarations may be prepared before, but also after the request for a preliminary injunction has been submitted.

The expert witnesses will normally also provide an oral state-ment in court. As patent matters often depend on technical issues, the use of expert statements and testimonies is seen as very important for the outcome of the case. Expert witnesses must be available for cross-examination at trial. In practice it is often seen that the experts function almost as advocates for the parties.

In cases on the merit, the parties are often not allowed to submit their own expert statements (exceptions do apply). In such cases, the court will normally appoint impartial experts to assist the court as expert witnesses. Such court-appoint-ed experts will be asked written questions by both parties and will reply in writing prior to the oral proceedings. The court-appointed experts are normally subject to oral cross-examination.

3.6 Procedure for construing the terms of the Patent’s claimsThe construction of claims is not subject to a separate pro-cedure. The courts are free to uphold patents in amended form, similar to the patent authorities.

4. revocation/cancellation4.1 reasons and remedies for revocation/cancellationAny person may oppose the grant of a Danish/European patent within nine months of the publication date with the Danish Patent Office. After nine months from publication, any person has the opportunity to request an administrative re-examination of the granted patent with the Danish Patent Office subject to an administrative fee of DKK7,000. The re-examination system is a faster and cheaper alternative to the court system.

During the lifetime of the patent, any person can also file a revocation action against the patent before the Maritime and Commercial High Court based on lack of patentability.

4.2 Partial revocation/cancellationPartial revocation/cancellation of a patent or utility model is possible. If a patent contains several claims, and the invalid-ity only affects some of these, the court and/or Danish Patent


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Office may choose to uphold the patent/utility model only for a number of patent claims.

4.3 amendments in revocation/cancellation ProceedingsThe patentee may request a limitation of the patent by the Danish Patent Office. However, such limitation cannot be approved if revocation proceedings for the patent as such are pending – either before the Danish Patent Office (through opposition proceedings) or before the Danish courts.

The patent claims may be amended upon request from ei-ther the patentee or the opposing party. However, the scope of protection may not be extended as a consequence of the amendments. In practice, the amendments consist of dele-tion of claims or parts thereof as well as a combination of existing claims. Parts of the patent description may not be added to the claims.

During re-examination proceedings, the amended patent claims as drafted by the Danish Patent Office will be present-ed to the patentee. If the amendments cannot be accepted by the patentee, the patent will be declared invalid.

4.4 revocation/cancellation and infringementRevocation and infringement cases can be heard together. At the Danish courts, revocation of the patent is a typical counterclaim against infringement claims, but separate ac-tions are also possible.

5. trial & Settlement5.1 Special Procedural Provisions for intellectual Property rightsThere are certain procedural provisions which apply specifi-cally for IP proceedings.

In IP cases, search and seizure orders are possible. The spe-cific rules are described below.

There are also special provisions regarding the duty of dis-closure. The court may – if requested to by the right holder – order the other party or any third party to disclose relevant information on the alleged infringing product or infringing act. Such information typically includes names and address-es of manufacturers, distributors, suppliers, wholesalers and retailers. Relevant information may also include the quanti-ties of products manufactured and sold as well as revenue in this regard.

The court may draw adverse interference from any reluc-tance by the party to disclose the relevant information, but the party cannot be forced to disclose information.

5.2 Decision MakersThe Maritime and Commercial High Court is a specialised IP court, and most IP cases are heard by one to three ex-perienced legal IP judges and two to four technical judges (often experienced patent agents, engineers or people from the trade).

The technical judges are appointed by the court and may only be opposed by the parties if deemed disqualified for the case due to a conflict of interest.

Trial by jury is not possible in IP cases.

5.3 Settling the caseThe parties may at any time during the proceedings initiate settlement negotiations, either through direct negotiations outside the court or, if accepted by the court, through a me-diator appointed by the court. The mediator is either a judge or an attorney-at-law.

The proceedings are usually stayed during such settlement negotiations, and any relevant deadline will be postponed. If the negotiations are unsuccessful, the case will be resumed.

There are no mandatory settlement negotiations.

5.4 Other court ProceedingsThe court may decide to stay a revocation action pending the outcome of parallel opposition proceedings before the Danish Patent Office or European Patent Office, or any par-allel proceedings concerning the same right before any other court.

An infringement case on the merits may also be stayed upon a validity attack in another forum but this is probably less likely than a stay granted based on parallel invalidity pro-ceedings.

When deciding whether to follow this principle or to omit staying a revocation action or infringement case, the Dan-ish courts will normally consider (i) whether the parallel proceedings are found reasonably justified; (ii) whether the prospect of receiving a decision on the parallel administra-tive proceedings within reasonable time; and (iii) whether material litigation costs would be saved by both parties.

An administrative re-examination by the Danish Patent Of-fice must be stayed pending the outcome of parallel opposi-tion proceedings or court proceedings regarding revocation of the same patent/utility model. However, this rule does not apply if the request for re-examination is submitted by the patent holder, as such requests are typically expedited rather quickly.


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6. remedies

6.1 remedies for the PatenteeThere are several ways in which to remedy an IP infringe-ment. The most relevant is typically injunctive relief through preliminary injunction proceedings.

On top of a permanent injunction, the right holder will typically claim damages. Such damages usually consist of a reasonable compensation for the use of the invention (cal-culated as an imaginary licence fee) as well as damages for any additional harm caused by the infringing actions such as loss of income and market disturbance. The patentee cannot claim enhanced damages for wilful infringement.

In addition to damages, the right holder may also claim that the infringing products are withdrawn from the market, al-tered or destroyed, and – depending on the facts – that any machine or tool used to manufacture the infringing prod-ucts is also destroyed. Further, the court may decide that the conclusions of the judgment are published on the infringer’s website or in distributed advertising material.

If successful in the claim for infringement, the right holder will also be awarded legal costs. However, this amount is estimated by the court and will typically not cover the actual legal costs, but tends to be a proportion of the value of the case (around 5%).

6.2 rights of Prevailing DefendantsA prevailing defendant will be entitled to reimbursement of costs in accordance with the principles described in 8.2 responsibility for Paying costs of Litigation.

Furthermore, if an injunction was initially granted and lifted later on, the prevailing defendant will be entitled to compen-sation for any loss suffered as a consequence of the wrongful injunction.

6.3 types of remedyThe remedies for infringement of patents and utility models are the same.

6.4 injunctions Pending appealIf a preliminary injunction is granted, an appeal will not have suspensive effect. If the preliminary injunction is not appealed, a case on the merits must be filed within two weeks from the expiry of the deadline for appeal.

For ordinary infringement cases, a timely appeal (filed within four weeks from the judgment) will typically have suspensive effect. However, if the alleged infringing action is deemed particularly harmful to the right holder, the court may decide not to stay any injunction subject to the posting of a security bond by the IP owner.

7. appeal

7.1 Special Provisions for intellectual Property ProceedingsAny decision from the Maritime and Commercial High Court may be appealed within four weeks.

Administrative decisions of the Danish Patent Office may be appealed to the Board of Appeal for Patents and Trademarks no later than two months after the parties were notified of the decision.

7.2 type of reviewAppeal of a Danish judgment or administrative decision re-garding a patent or utility model implies a full review of the case. Accordingly, each party will present all relevant argu-ments before the higher instance.

8. costs8.1 costs Before Filing a LawsuitBefore initiating infringement proceedings regarding a pat-ent or utility model, the right holder will typically incur legal costs for the drafting of a warning letter and a writ of sum-mons, or alternatively for carrying out a search and seizure order.

Costs are also likely to be incurred for obtaining written declarations and opinions from technical experts and pat-ent agents.

8.2 responsibility for Paying costs of LitigationThe plaintiff must pay the initial court fees. The losing party will typically be ordered to reimburse the winning party in full for any costs related to court fees, fees paid to experts ap-pointed by the court and costs relating to witnesses. Further, the court will award the winning party legal costs. However, this amount is estimated by the court without regard to the actual costs held. Typically, the courts will award around 5% of the case value in legal costs.

9. alternative Dispute resolution9.1 type of actions for intellectual PropertyThe parties involved in an IP dispute are free to settle the case by either arbitration or mediation. Arbitration is mostly used in matters where trade secrets of considerable value will otherwise be disclosed.

Alternative dispute resolution is not a common way of set-tling Danish patent and utility model disputes.


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10. assignment & Licensing

10.1 requirements or restrictions for assignment of intellectual Property rightsThere are no formal requirements to assign a Danish patent or utility model. The agreement may be explicit or implicit, and it may be written or oral, although the latter is not seen in practice. Approval from the authorities is not required. Further, it is not necessary to register the assignment. How-ever, it is highly advisable to do so by submitting a standard transfer document signed by both parties to the Danish Pat-ent Office.

10.2 Procedure for assigning an intellectual Property rightThere are no mandatory procedures which have to be fol-lowed in order to assign Danish patents and utility models.

10.3 requirements for restrictions to License an intellectual Property rightThere are no formal requirements to license a Danish patent or utility model. The agreement may be explicit or implicit, and it may be written or oral. Approval from the authorities is not required. It is not necessary to register the licence with the authorities. However, it is advisable to do so.

10.4 Procedure for Licensing an intellectual Property rightThere are no mandatory procedures which have to be fol-lowed in order to license Danish patents and utility models. accura advokatpartnerselskab

Jeppe Brinck-Jensen (Partner)Anders Poulsen (Attorney-at-Law)Tuborg Boulevard 1 Hellerup Copenhagen Denmark 2900

Tel: +45 3945 2800Fax: +45 3945 2801Email: [email protected]: www.accura.dk/

Documents

Patent Litigation - Accura · DeNMarK Law & Practice Contributed by Accura Advokatpartnerselskab Authors: Jeppe Brinck-Jensen, Anders Poulsen 4 accura advokatpartnerselskab IP team