What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?

Patent Litigation

Australia Small Flag Australia

Patent proceedings are generally commenced by filing of an application and statement of claim. The applicant must also file a ‘genuine steps statement’ setting out the steps it has taken to attempt to resolve the dispute.

An action for infringement must be brought by the later of either three years from patent grant or six years from the date of infringement. Generally an action can be brought any time within this period, subject to the possible application of doctrines such as acquiescence and laches.

Delay is an important factor when an application for an interlocutory injunction is made. In this case the applicant must act as quickly as possible after learning of the infringing activity, as failure to do so will be relevant to consideration of the balance of convenience.

Austria Small Flag Austria

No specific procedural steps are required before filing a lawsuit; neither engaging in mediation nor warning letters are necessary.

With regard to PI proceedings also urgency is not a requirement.

Only the general limitation period applies, which for all infringement claims is:

  • (a) 3 years after becoming aware of the injuring party and damage or
  • (b) 30 years after the damaging act took place (absolute time limit) if (i) the damaged person is not aware of the damage or the injuring party, or (ii) the damage results from an intentional criminal offense, with a possible prison sentence of up to 1 year.

Brazil Small Flag Brazil

Lawsuit can be filed as soon as you learn about infringement activities. Five year limitation might be applicable depending on the case.

Canada Small Flag Canada

Once a Canadian patent has issued, a party may commence a patent action in the Federal Court. There is no requirement to serve a cease and desist letter or take other steps prior to commencing a patent action, however, new rules in the Patent Act require that any written demands comply with certain prescribed requirements, not as yet enacted. The regulations once enacted are expected to address bad faith allegations which fail to contain sufficient information to enable the recipient to assess its merits.

Pursuant to the Patent Act, a patentee cannot recover damages or profits for infringing conduct that occurred more than 6 years before the commencement of the infringement proceeding with respect to patents issued from applications filed on or after October 1, 1989. For patents issued from applications filed before these dates, the limitation period may be governed by the provincial legislation of the province where the infringing activities occurred, depending on the circumstances, and may be as short as two years. In some situations a patentee’s delay in asserting its rights may also lead to various common law equitable defences such as laches, acquiescence or estoppel.

China Small Flag China

In order to commence a patent litigation, the plaintiff shall submit complaints, preliminary evidence for infringement and identity documents (such as business licence, identification of the legal representative, PoA) to the court. In addition, the plaintiff shall pay court costs for the case. The limitation periods for commencing an action shall be three years, commencing from the date on which the patentee or interested party becomes or should become aware of the infringement.

Czech Republic Small Flag Czech Republic

The plaintiff has to file a front-loaded claim with the appropriate court, the City Court in Prague, within 3 years of infringement or becoming aware of the damage for which monetary compensation is claimed.
If the plaintiff wishes to seek costs of the proceedings against the defendant it must send a pre-litigation demand to the defendant’s last known address at least 7 days before the claim is filed. Failure to do so does not impact on the chances of success. Costs may be awarded in some cases even though this pre-litigation letter was not sent.

France Small Flag France

Apart a thorough due diligence (patent, owner, inventor, prior assignments of the invention including priority right, of the patent, license, registration of the assignments and licences), there are no procedural steps that would be peculiar to France.
The limitation period is 5 years.

Germany Small Flag Germany

Under German law, there is generally no procedural step that must be satisfied before filing of a patent infringement action. However, in some cases it seems advisable to send a formal warning letter requesting the alleged infringer to voluntarily refrain from the infringing activity and threatening legal proceedings. While this course of action is not mandatory, it may reduce the cost risk, if the other party immediately fully accepts the asserted claims (which is rarely the case, of course).

From a risk perspective, it is advisable for claimant to investigate and procure all facts and evidence of the infringement in detail already prior to the litigation. As there are no disclosure obligations, it is up to the claimant to present a substantiated case in the statement of claim, including any evidence (German proceedings are “front-loaded”).
The general limitation period is three years with knowledge of infringement, starting at the end of the year, and ten years without.

Greece Small Flag Greece

Parties in infringement cases have no legal obligation to undertake mediation or arbitration before initiating court proceedings. The patent owner may directly file a preliminary or main proceeding action against the alleged infringer. According to practice the patent owner used to serve a warning letter on the alleged infringer before initiating legal action. Pursuant to the provisions of the Code of Civil Procedure, parties involved in infringement cases had the option of reaching an out-of-court settlement. In practice, serving a strong warning letter could prove sufficient to make infringers cease the infringing actions. As mentioned above, Law 4512/2018 initiated compulsory use of mediation in legal disputes arising from patent, trademark and industrial design infringements, but has not been applied yet.

India Small Flag India

a) Article 88 of the Limitation Act, 1963 provides a period of limitation as three years from the date of infringement and not from the date of the grant.

b) Procedural steps before a patent action can be instituted:

  • There are no pre-requisites that must be satisfied before a patent infringement suit may be instituted. There are some procedural steps while filing a patent infringement suit.
  • However, in case of a declaratory suit under Section 105 of the Patents Act, 1970, there 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.

Ireland Small Flag Ireland

Whilst there is no requirement under the Patents Act to send a cease and desist letter to an alleged infringer before issuing patent infringement proceedings, it is usual to do so. Failure to send a cease and desist letter may be looked upon unfavourably by the Court when it comes to dealing with the question of costs.

A claim for patent infringement is time-barred six years from the date of the infringing act.

Israel Small Flag Israel

Only a registered patent owner (including a patent co-owner) and a recorded exclusive licensee have standing under the Patents Act to bring a patent infringement action. However, courts may be inclined to allow also the parent company of the registered patentee to bring an action.

In addition, a court-appointed receiver or liquidator assumes the power of the patentee or the exclusive licensee to bring a patent infringement action.

Italy Small Flag Italy

Under Italian law, patents do not need to have received formal grant before they can be enforced. They can be enforced already at their stage of application, provided that no judgment in ordinary proceedings can be pronounced before formal grant. PIs can instead be granted based on patent applications only.

A special procedural requirement applies to the enforcement of (the Italian designation of) European patents or patent applications. These need to be validated by means of formally filing the Italian translation of the patent with the PTO before they can be enforced. For European patent applications, enforcement requires the filing of a translation of the patent claims only.

There are no statutes of limitation for commencing a patent infringement action, although a statute of limitation period does apply in respect of damages and return of profits.
The statute of limitation for patent infringement damages is the same as normally applicable to damages connected to tort liability i.e. 5 years.

There is some controversy as to whether the same statute of limitation applies to the return of infringer’s profits, which patentee can claim alternatively to damages. Recent case law has stated that the return of profits remedy does not belong to the tort liability system and is therefore subject to the ‘general’, longer statute of limitation, namely 10 years.

Japan Small Flag Japan

No particular steps are required. It often happens in practice that a warning letter is sent before a lawsuit is filed and the parties have negotiations therebefore; however, it is possible for a party to proceed by directly filing a lawsuit without sending a warning letter. There exists a general statute of limitations relating to claims for damages, but there are no particular limitation periods for commencing an action. There are also no rules corresponding to the common-law equitable doctrine of laches. It should be noted, however, that a Complaint basically needs to specify the allegedly infringing product(s) and to clarify the specific configuration(s).

Norway Small Flag Norway

The procedure is governed by the Norwegian Civil Procedural Act.

Before trial is initiated the plaintiff must notify the defendant of his intention to start litigation setting out his claims and the legal basis for the claims. Failure to notify may have an impact on the court’s decision regarding costs but cannot lead to dismissal of a case.

The limitation period with regard to claims for damages arising from an infringement of a patent right is subject to a limitation period of three years measured from the date on which the party obtained, or reasonably ought to have obtained, necessary knowledge of the damage and the responsible party. This limitation period will nevertheless expire at the latest twenty years after the fault was committed or other basis for liability ceased.

A patent infringement claim, e.g. a claim for an injunction, may in itself not be time barred.
A claim for invalidation of a patent may be filed any time during the period the patent is in force.

Poland Small Flag Poland

There are no special procedural provisions governing the patent action that would differ from general civil proceedings.

Unlike many other jurisdictions, Polish law provides for relatively strict requirements for filing new arguments and evidence.

Each party is allowed to file one brief (statement of claim/statement of defence) which should, in principle, contain all arguments and evidence (including requests to produce evidence which is not available to that party – e.g., documents belonging to a third party). Additional submissions with complementary arguments (apart from statement of claims and response to the statement) may only be submitted upon the court’s explicit permission. Any new evidence is allowed only when it would not be reasonably necessary to request in the statement for claim/statement of defence or if it will not delay the proceedings.

Each party is entitled to file written evidence, such as private or official documents, as well as to request oral examination of witnesses. As the Polish courts are not experienced in patent cases and are never composed of technical judges, typically each party would submit a private expert opinion.

The statement of claim must contain information on whether any attempt of an amicable resolution was exercised but there are no major effects linked with the failure to exercise such a measure.

Applicable limitation periods are in nature substantive law periods, i.e. referring to the statute of limitation.

The single procedural limitation period applies when a preliminary injunction has been granted prior to commencing a full legal action. In such event the full action must be commenced within a deadline prescribed by the court in the PI decision, no later than within 14 days from obtaining the PI or otherwise the PI will be cancelled.

Portugal Small Flag Portugal

VdA: Cease and desist letters may be sent, although not procedurally required.

Nullity can be argued at any time. Annulment actions must be filed within a 5-year period after the grant of the patent. In pharmaceutical patent cases, an agreement with the generic to submit the dispute to arbitration must be achieved within 30 days from the publication of the MA application by INFARMED or an action should be brought before the IP Court within the same period (Law 62/2011).

Russia Small Flag Russia

Patent infringement court action with a claim for an injunction can be filed with the Court without obligatory pre-trial procedure. Meanwhile, a plaintiff must send a warning letter to defendant before claiming damages or material compensation for a patent infringement. Filing such patent infringement suit with damages compensation claim is permitted not earlier than 30 days after sending of the warning letter.

Singapore Small Flag Singapore

Proceedings for patent infringement are to be begun by writ.

As patent infringement is a statutory tort, the limitation period of 6 years for an action founded on a tort applies. Where there is ongoing infringement of the patent in question, a fresh cause of action accrues every day. However, the patentee’s right to bring an action is restricted to the part of the wrong which was committed in the past six years.

While not mandatory, a letter of demand is usually sent before proceedings are commenced. This depends on whether the patentee wishes to engage the alleged infringer in negotiations prior to the commencement of proceedings. That being said, the patentee must be aware that in the event that the Court eventually finds that the patentee’s patent has not been infringed, the Court has the discretion to award the alleged infringer relief for groundless threats of infringement. Such relief could include a declaration that the threats are unjustifiable, an injunction against the continuance of the threats and/or damages for any loss sustained thereby.

Where applicable, it is also prudent to conduct trap purchases before the start of any proceedings. A lawyer may conduct the trap purchases on behalf of its client, or a private investigator may be engaged to do so.

South Korea Small Flag South Korea

The Korean patent law does not establish procedural requirements to be met before filing a patent infringement action, and there is no statute of limitation for filing an injunction. Injunctions can be filed anytime if there is an ongoing or imminent infringement. A lawsuit seeking damages, however, must be filed within ten years from the date of the last infringing act and within three years from the date of patentee’s learning of the infringing act.

Sweden Small Flag Sweden

There are generally no formalities which need to be observed before proceedings are brought. There is no statutory requirement that the defendant has been requested to cease infringement before proceedings are brought. However, legal counsel of the Swedish Bar can normally not assist in the bringing of proceedings unless the defendant has been requested to cease and desist. Not sending such notice may also have consequences insofar costs for the proceedings are concerned.

Damages cannot be claimed for infringements which occurred more than five years prior to filing of the suit but can this notwithstanding always be sought within one year of patent grant.

Switzerland Small Flag Switzerland

An infringement action can be brought by the patent holder or an exclusive licensee, unless the license agreement specifically excludes this right. The exclusive licensee does not need to be registered to have standing. By contrast, non-exclusive licensees have no right to sue for patent infringement. However, they may join an action for damages in order to claim their own damages.

Taiwan Small Flag Taiwan

A patentee shall in the complaint state precisely which products being sold/manufactured by the defendant(s) infringe the patentee’s patent, together with a claim chart, illustrating how the products read on the specific claims the patentee would like to assert in this proceeding. For the infringing products, the patentee shall specifically indicate in the complaint the product numbers or other information that is able to identify the products. A rough description of the infringing products will not be accepted.

Taiwan patent law does not set forth any provisions specifically imposing upon patentees any limitation periods for commencing patent infringement proceeding. For those patentees who would like to seek damage remedies, the statute of limitations requires them to file a lawsuit within two years after they become aware of infringing activities.

Thailand Small Flag Thailand

A patent action is commenced by filing a written complaint with the IP&IT Court that clearly states standing, the disputed patent, the cause of action, and the remedies requested. The complaint, along with a summons issued by the Court, is then served on the defendant(s).

The Patent Act itself does not specify the limitation period. However, based on the Civil and Commercial Code, the right of claim for damages arising from a wrongful act shall be barred by prescription after the lapse of one year from the day of the wrongful act and the person bound to make compensation having become known to the injured person or ten years from the day the wrongful act was committed. This section also applies to patent infringement, which is a form of wrongful act. Therefore, a civil patent infringement action should be filed with the court within one year from the date that the patentee becomes aware of the infringing act and the identity of the infringer, or within ten years of the date of the infringing act, whichever occurs first. If the infringing act continues, then the limitation period is extended accordingly.

Turkey Small Flag Turkey

The actions are filed through the recordal of the plaint petition, which should clearly indicate the court, the name and address of the plaintiff, the defendant and their attorneys, all facts basis to the action, the plaintiff’s claims, the clear final request and indication of which evidence will prove which claim. Moreover, the relevant official fees must be deposited.

Patent invalidation actions may be filed any time during the protection term of the patent and within five years as of expiry of the protection.

Patent holders can file a patent infringement action within two years of the date on which the he/she becomes aware of the infringement and infringer. In any event, the right to file an infringement action expires within ten years as of the date of the infringing act.

United Kingdom Small Flag United Kingdom

There are no patent-specific pre-action procedural steps that must be satisfied before a patent action can be commenced in the UK. Under CPR 7, proceedings commence when the court issues (i.e. seals and dates) a claim form at the request of the claimant. A claim form is a brief document, setting out key information about the claim and the relief sought. Once issued by the court it must be served within four months (or six months where it is to be served outside the jurisdiction). More detailed information about the claim is set out in the particulars of claim, which must be contained in, or served together with, the claim form, or served on the defendant within 14 days of service of the claim form (but no later than the latest time for serving the claim form). Given that the claimant has four months from the date of issue of the claim form to serve the claim form and particulars of claim on the defendant(s) (or six months for defendants located out of the jurisdiction), and given that the particulars of claim can be provided separately to the issued claim form, the claimant has a significant amount of time to finalise its particulars of claim even after the claim form is issued.

Although not technically a procedural step, the CJEU outlined in Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH (Case C-170/13), a number of steps that a SEP holder must comply with in SEP/FRAND actions in order to prevent a claim for an injunction being regarded as an abuse of a dominant position. In summary, these steps involve alerting the alleged infringer of the SEP and how it is alleged to have infringed it, and presenting a written offer for a licence on FRAND terms, specifying the amount of the royalty payable.
Patent infringement is considered a ‘tort’ under English law and therefore the limitation period is six years from the date on which the infringing act took place. Each infringing act (e.g. each sale of an infringing product) is considered separately for this purpose, so where a claim is brought more than six years after the first infringing act, this will not bar the claimant from all recovery – they will still be able to recover damages for any infringing acts that occurred within the limitation period.

United States Small Flag United States

Plaintiffs must perform a reasonable and good-faith pre-suit investigation into the facts and law underlying their claims. Failure to do so may result in sanctions. Plaintiffs also must file their suit in a court that has subject matter jurisdiction, has personal jurisdiction over the defendant, and has proper venue.

There is no formal statute of limitations for patent suits. Nevertheless, under 35 U.S.C. § 286 patent owners are unable to recover damages based on infringement occurring more than six years before they file suit.

Vietnam Small Flag Vietnam

In administrative actions, the statute of limitations is two years from the date of termination of the patent infringement. If the infringement is ongoing, the statute of limitations is two years from the time the infringement was detected. In civil actions, the statute of limitations is three years from the date on which the patent holder becomes aware that its legitimate rights and interests are being encroached.

Normally, before pursuing civil action, the patent holder can prepare the following steps:

Step 1: Obtain expert opinion from VIPRI.
Step 2: Collect evidence on infringement such as samples in the witness of the bailiff office.

Updated: November 4, 2019