Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
Declarations of patent infringement are usually made where patent infringement is found.
Non-infringement declarations (NID) are also available and protect against liability for damages or an account of profits even where the NID is later revoked.
There is no precedent in Australia for an ‘Arrow declaration’, however the Federal Court has a general power to grant declarations and so there may be scope to argue for this type of relief in Australia.
Both a patentee and an alleged infringer may bring declaratory petitions before the APO (Sec 163 PA). These proceedings are 'abstract', meaning that they are limited to the question of whether an article or method infringes the patent. Validity is not examined.
As mentioned under Question 6., the APO in determining the scope of protection will take Patent Office files into account, which is contrary to the determination of the scope of protection in infringement proceedings.
Austrian declaratory proceedings at the APO cannot be considered ‘Arrow’ declarations, because they do not block infringement proceedings.
A declaratory petition will be dismissed if infringement proceedings between the same litigants are already pending at the time of the filling of the declaratory action. Contrary, if infringement proceedings are started after declaratory proceedings, the declaratory proceedings may be continued in parallel. The declaratory decision can only have a binding effect on the infringement proceedings if it is issued before the first instance decision in the infringement proceedings, which is rare, since the APO is usually slower than infringement courts.
If the decision of the infringement proceedings conflicts with a later declaratory decision, the parties cannot file a motion for a new trial before the infringement court. Therefore, the practical importance of declaratory petitions before the Patent Office is limited.
In addition, parties may also file a declaratory action with the Commercial Court Vienna instead of the Patent Office. However, the interaction between these two types of declaratory actions is not clarified by case law.
The filing of a declaration of non-infringement lawsuit is possible. The plaintiff needs to show evidence of the likelihood that the patent is going to be used against its activities if they want to get a preliminary injunction.
A person who has reasonable cause to believe that a process used or proposed to be used, or any article made, used, sold or proposed to be made, used or sold by him may be alleged to constitute patent infringement can commence proceedings in the Federal Court against the patentee for a declaration of non-infringement (Patent Act, s 60(2)). A declaration of non-infringement can also be sought by way of counterclaim in a patent infringement proceeding.
As discussed above, expungement proceedings can also be brought in the Federal Court, in which the party bringing the proceedings would typically seek a declaration of invalidity.
An interested party may initiate a lawsuit to request the court to declare it does not infringe the rights conferred by the patent, only if the following conditions are satisfied: first, the right holder issued a warning of infringement to the party; second, the warned party or its interested party filed a written reminder (pre-procedure); third, the right holder did not withdraw the warning within a reasonable period of time, and did not file a lawsuit.
Declaratory relief is theoretically possible, in practice the courts have refused to issue non-infringement or invalidity (type) declaratory judgments. One of the requirements for a declaratory judgment is that there is an urgent need for the judgment. The courts have been refusing to find the urgent need to be present.
It is possible to apply to the IPO for a declaration of (non) infringement, or rather for the IPO to decide whether a described product falls within the scope of protection of a patent or not.
Any person, who proves an industrial exploitation on the territory of a Member State of the European Union, or real and effective preparations to that effect, may invite the patentee to take position on the enforceability of his/her patent against such exploitation.
If within three months, the patentee has not taken position or has indicated that he considers that the envisaged exploitation falls within the scope of the patent, a declaration of non-infringement (DNI) can be filed before the Paris District Court.
Declaratory relief is of no importance in patent matters in Germany. Theoretically, there is the possibility to initiate declaratory non-infringement proceedings. However, this is only possible after an allegation of infringement (usually in a warning letter) has been raised by the patentee. Moreover, when – even subsequently – an infringement action is filed by patentee, the declaratory action for non-infringement is (or, if already filed, becomes) inadmissible.
Parties having legitimate interest may seek a declaratory action of non-infringement. A petitioner for such an action must show that it is necessary for use as defence against the patent owner or his licensee.
As per Section 105 of the Patents Act, 1970 any person may institute a suit asking for a declaration that the use by him of any process, or the making, use, or sale of any article by him does not or would not constitute an infringement of a claim of a patent against the patentee or any one deriving title from the patentee.
However, before proceeding with such an action, the said person claiming such a relief must show that he has in writing sought for written acknowledgement from the patentee or his exclusive licensee to the effect of such a declaration so claimed and has also furnished him full particulars of the process or article in question, and; the patentee or his exclusive licensee has refused or neglected to give such an acknowledgement.
Any person may apply to the Court for a declaration that he has not acted in a manner which infringes a patent, provided that he has first written to the proprietor (or licensee) requesting written acknowledgment that he is not infringing and has been refused such acknowledgment.
Similarly, any person may apply to the Court for a declaration that he is entitled, by operation of law or otherwise, to any Irish patent or patent application. The Court may also make declarations in respect of groundless threats,
Declaratory relief is sought by way of plenary proceedings which would involve the steps outlined at question no. 2 above
Under the Patents Act, it is possible to seek a declaratory judgment that intended exploitation of a certain product or process is not infringing. Such declaratory judgment will only be entered by the court if the applicant provided to the patentee the complete details of the product or process in question and the patentee declined to confirm, within a reasonable time frame, that the intended exploitation of the said product or process is not infringing. Moreover, in these proceedings, the applicant seeking a declaratory judgment of non-infringement may not challenge patent validity.
The threshold for the filing of declaratory proceedings is lower i.e. more generous than other jurisdictions. Declaratory relief is subject to the general requirement of an interest in bringing legal proceedings, which claimants can satisfy by making a reasonable case that there is a possibility that they might be facing infringement proceedings. Unlike other jurisdictions, declaratory relief does not require that the patentee has actually threatened infringement proceedings.
As noted above, declaratory proceedings are available in the form of both ordinary and preliminary proceedings. Preliminary declaratory relief is subject to the additional requirement of urgency.
In preliminary declaratory proceedings, urgency is normally substantiated by referring to market reasons calling for a quick assessment of non-infringement, such as the need for the alleged infringer to protect the upcoming market launch of its product/services from patent infringement initiatives. The urgency required to obtain preliminary declaratory relief would generally not exist in situations where the alleged infringer has already launched its product on the market.
It is possible to file a lawsuit for declaration of, for example, the non-existence of a right to claim for damages or a right to seek an injunction based on infringement, or to file a lawsuit for declaration of the existence of a right of prior-use. Standing to sue is required in order for the above lawsuits to be found legitimate, and there needs to be an actual situation where, with regard to a specific allegedly infringing product, the plaintiff (serving as the alleged infringer) and the defendant involve the risk of a conflict about infringement upon specific patent rights.
For example, standing to sue is not permitted for a lawsuit for a declaration concerning a patent application which has not been granted a patent or for a lawsuit aiming only for a declaration of patent invalidity.
Declaratory relief is available under the Norwegian Civil Procedural Act. Both declarations of infringement and non-infringement are available provided that the plaintiff can substantiate that he/she has an actual and real need to obtain such a declaration. That will e.g. be the case if the Party that is initiating an action for a declaratory relief has been accused of patent infringement or if someone has informed the Patentee that an activity that the Patentee considers to constitute an infringement will be initiated.
A declaratory relief can be obtained on the basis of a general principle of the procedural law, namely upon the request of the plaintiff who proves having a legitimate interest in obtaining a declaration of non-infringement.
Proving the legitimate interest usually requires producing evidence which otherwise would not easily be available to the opponent, which – in the absence of mechanisms which would adequately guarantee the protection of the confidential information disclosed in the course of patent litigation – does not make Poland an attractive forum for declaratory actions.
While non-infringement declarations are procedurally possible, these are extremely scarce.
The Russian patent law does not provide any ground to seek declaratory relief in the court as a protective measure. Meanwhile there is no procedural law prohibition for filing of such a suit. So some cases have been filed, seeking confirmation from the court on non-infringement of certain patent, as a measure to protect legitimate economic interests. Current case law on declaratory relief in Russia is negative, and the courts reject suits filed, stating that no right has been infringed yet, and thus there is no subject for the suit.
A patentee may rely on section 67(1)(e) of the PA to seek a declaration that the patent in suit is valid and has been infringed by the defendant.
Conversely, a defendant or any person may rely on section 78(1) of the PA to seek a declaration that an act or proposed act would not constitute an infringement of a patent if the following conditions are met:
(a) The proprietor of the patent has not made any assertion to the contrary;
(b) The person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration claimed and has furnished him with full written particulars of the relevant act; and
(c) The proprietor of the patent has refused or failed to give any such acknowledgment.
There are two types of proceedings for obtaining a declaratory relief: one before the courts and the other before the IPTAB.
Before the IPTAB, a patentee or alleged infringer may file a petition to seek a declaratory decision of infringement or non-infringement (i.e., scope confirmation trial). In this proceeding, literal infringement as well as infringement under the doctrine of equivalents is reviewed. However, a decision in the scope confirmation trial does not bind the court in an infringement action, and the court will make a decision based on the facts and evidence submitted by the parties in the specific infringement action.
A patentee or alleged infringer may also bring a lawsuit to the same effect before the courts, rather than the IPTAB. Although this is legally possible, however, there have not been many cases, because issues reviewed in this type of lawsuit are not very different from those reviewed in a patent infringement action, and there is no substantial benefit in seeking this type of lawsuit.
It is possible to obtain a declaratory judgement of infringement or non-infringement in respect of a certain patent in relation to a specific product or service.
A plaintiff may also seek a declaration of liability for past patent infringement against an infringer (i.e. also including the aspect of financial liability).
‘Arrow’ declarations are not available in Sweden.
Swiss law allows for declaratory actions. An alleged infringer can bring an action for a negative declaratory judgment that a specific act does not, or that a proposed act would not, constitute an infringement of a given patent, provided that he has a legitimate interest in obtaining such judgment. In general, a declaratory action requires that the legal situation is uncertain, that the claimant cannot be expected to accept this uncertainty any longer, and that the uncertainty can be resolved by the declaratory remedy. Declaratory actions are only available as a subsidiary means if no other relief (e.g., an injunction) can be sought.
In a situation where a party denies the patent infringement allegation made by a patentee, said party is allowed to seek declaratory relief from the IP Court, to declare that the party does not infringe the patent asserted by the patentee. In a proceeding like this, the moving party shall not only establish non-infringement, but also persuade the IP Court to find a compelling interest that the moving party does need a court ruling to confirm its non-infringement.
Declaration of infringement or validity is not available in Thailand.
Under Section 61(e) Patents Act, a patentee may bring civil proceedings in respect of an act alleged to infringe the patent and in those proceedings make a claim for a declaration that the patent is valid and has been infringed.
Under Section 70C(1) Patents Act, proceedings in respect of an actionable threat may be brought against the person who made the threat for a declaration that the threat is unjustified.
Under Section 71 Patents Act, a person can apply to the court or the Comptroller for a declaration that an act does not, or a proposed act would not, constitute an infringement of a patent (“DNI”) in proceedings between the person doing or proposing to do the act and the patentee, subject to certain requirements.
A further form of declaratory relief that may be sought is an Arrow declaration, which is in effect a declaration that a party has a “Gillette” defence as at a particular date. This then prevents a patentee from enforcing later patents against the subject of the declaration. By way of explanation, a Gillette defence (deriving from the speech by Lord Moulton in Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465) arises where a defendant contends that a process, product or use was not novel or was obvious at a particular date (usually the relevant filing or priority date), and cannot accordingly fall within the scope of a valid claim of a later patent. For example, a party may apply for an Arrow declaration, if it seeks to launch a product and obtain commercial certainty before launch that the product (or a relevant process or use within the product) will not infringe a valid patent, because any patent later asserted against would accordingly be invalid for a lack of novelty or inventive step.
The UK court’s jurisdiction to grant an Arrow declaration was confirmed by the Court of Appeal in Fujifilm Kyowa Kirin Biologics Co., Ltd. v AbbVie Biotechnology Limited and another  EWCA Civ 1. In considering whether to grant an Arrow declaration in the exercise of its discretion, the court will take into account justice to the parties, whether the declaration would serve a useful purpose, and whether there are any other special reasons why the court should or should not grant the declaration. Arrow declarations are increasingly sought in patent litigation proceedings and the recent cases have focused on whether such declarations will serve a “useful purpose”. For example, in Glaxo Group Ltd & Ors v Vectura Ltd  EWHC 3414 (Pat), the court granted the claimant an Arrow declaration, focusing in its reasons on the useful purpose that doing so would serve in the circumstances. Conversely in Pfizer Ltd v F. Hoffmann-La Roche AG & Anor  EWHC 1520 (Pat), the court declined to grant Arrow declarations on the basis that doing so would not serve a useful purpose in the circumstances.
Parties in patent litigation may seek declaratory relief on the issues of infringement and validity. In practice, accused infringers very often assert counterclaims asking the court to declare that the asserted patent is invalid or not infringed. For an accused infringer to file a first-instance complaint seeking declarations of invalidity or noninfringement, a case or controversy needs to exist. That is, the patentee must have made a real and concrete allegation of infringement, giving rise to a ripe dispute between the parties.
There are no declaratory proceedings in Vietnam