Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

The High Court has jurisdiction. Nature of the dispute will determine if the dispute is to be by way of a Writ or Originating Summons.

Writ: Witness testimony through trial.

Originating Summons: affidavit evidence only.

Time to judgment is approximately 9-12 months.

Reliefs available depend on the subject matter and generally includes damages, injunctions and costs. Appeal is possible to the Court of Appeal and finally to the Federal Court.

Norway Small Flag Norway

Only the court instances in Oslo have jurisdiction to hear intellectual property civil court cases. For cases concerning the Marketing Act and PI proceedings, general civil procedural rules on jurisdiction apply.

The civil court proceedings are initiated by filing a statement of claim to the Oslo District Court. A PI case is initiated by the PI request. In both cases, the defendant will be given a deadline for filing a statement of defence. Having received the statement of defence, the Court arranges a case management conference (CMC) to be held with the parties’ counsels. In the CMC, the parties agree with the Court on the further timeline of the case and other issues, such as the timing for the trial. The parties are allowed to file pleadings and evidence up until the closing date for the case preparation, which is normally two-three weeks prior to the oral hearing. The trial is normally scheduled around 9-12 months from filing the statement of claim.

The parties present their cases starting with the claimant, both in opening and closing arguments. Following the defendant’s opening arguments, testimonies, including expert witness evidence, are heard. The hearing usually lasts from three to eight court days. In the most complex cases, longer hearings may occur.

The time to judgment is normally four-eight weeks, depending on the size of the case. The judgment may be appealed within one month from the serving of the judgment. The general rule is that the winning party is awarded costs.

Singapore Small Flag Singapore

Trade mark, patent, and registered design infringement claims of all values and copyright infringement and passing off claims worth more than SGD250,000 are properly commenced in the High Court. The High Court will also hear trade mark and registered design revocation claims at first instance, and patent revocation claims which arise as a counterclaim in an infringement suit.

Copyright infringement and passing off claims worth less than SGD 250,000 are properly commenced in the State Courts.

However, pending legislation proposes to simplify the current system by consolidating most civil IP disputes in the High Court, including all forms of infringement and passing off.

Proceedings in all courts are commenced by filing a Writ and Statement of Claim setting out the particulars of the claim. The parties then exchange further pleadings to delimit the issues in dispute.

This is followed by the process of discovery where the parties produce and exchange documents which they may then relay upon as evidence. Interrogatories may also be requested and ordered.

Evidence for the trial is usually provided by way of affidavits of evidence-in-chief a few weeks before the commencement of trial proper. At the trial, after the parties’ opening statements are made, the witnesses, both factual and expert, are subject to cross-examination by opposing counsel. After all evidence has been led, the Court usually requests for written closing submissions be filed.

A party who is not satisfied with the High Court’s decision may appeal it to the apex Court of Appeal to set aside or vary the decision.

Mexico Small Flag Mexico

Court

How to start

Basics

Time to trial

Format

Time to judgement

Any available appeals?

Federal Administrative Court

 

By filing an initial pleading

1)In written

 

2)PoA required

 

3)No discovery

 

1 - 2 years; however, it would depend on the complexity and particularities of the case.

1) Initial pleading

 

2)Response by the defendant

 

3)Closing arguments

 

4)Revision of evidence

 

5)Ruling/Decision

 

6 - 8 months; however, this time would depend on the complexity and particularities of the case.

Yes

Civil Courts

Criminal Courts

Federal Circuit Court

 

Mexican Supreme Court

 

No

China Small Flag China

Jurisdiction: where the defendant is domiciled or where the infringing act or results take place.

Commencing Proceedings: Plaintiffs must file (1) a Power of Attorney, (2) a copy of Certificate of Incorporation and (3) a Certificate of Identity of the Legal Representative (if the Plaintiff is a legal entity rather than an individual)

After the case is accepted by the court, the court shall send a copy of the plaintiff’s complaint to the defendant within five days, and the defendant shall file a defence, if any, within 15 days from receipt of the copy of the plaintiff’s complaint. When the defendant files a defence, the people's court shall send a copy of it to the plaintiff within five days from its receipt.

Trial Format: Simple IP trials usually last several hours, while complex ones could be longer. And the trial mainly consists of three parts:1) Court investigation; 2) Court debate;3) Final statement.

Judgements, Relief and Appeal: Civil cases concerning only domestic parties shall be concluded within six months of the date the case was accepted. While civil cases involving foreign parties have no fixed timeline.

If infringement is found, judges in civil cases can award monetary damages or injunctive relief for rights holders.

If a party refuses to accept a judgment of first instance of a people's court, he shall have the right to file an appeal with the people's court at a higher level within 15 days from the date of the service of the judgement.

Ecuador Small Flag Ecuador

The Administrative Court and the civil judges have the jurisdiction regarding intellectual property matters in Ecuador. Most trials have a single hearing in which the judgement is delivered, but others have two in which the judgement is delivered in the second. Judgements delivered by civil judges can be appealed, but not those delivered by the Administrative Court cannot.

Time of judgement depend on the dates the judges decide to hold the hearing, which are usually around three to five months after filling the lawsuit or after the first hearing (if applicable).

South Africa Small Flag South Africa

Patents:

All patent litigation must take place in the Court of the Commissioner of Patents (a single Judge of the High Court). Proceedings are bifurcated and can either start by way of Application on Notice of Motion accompanied by a Founding Affidavit setting out the relevant evidence to which the Respondent replies with an Answering Affidavit, however, the only relief available by this procedure is an interdict preventing further infringement and no damages can be claimed or awarded. The reasonable costs of the litigation, usually about 50% of the actual costs, can be awarded by the Court to the successful party. The time to the first hearing can be a year.

If damages are to be claimed, Action proceedings commence with a Summons accompanied by a Particulars of Claim to which the Defendant will Plea. The case will proceed through various procedural steps until the trial is held with witnesses leading viva voce evidence (only under exceptional circumstances will evidence be allowed to be adduced by way of Affidavit). The relief available is an interdict, damages, and an award of costs as explained above. The time to the first hearing can be 18 months to 2 years.

In both cases several levels of Appeal are possible to a Court with a full bench of 3 Judges, and then to the Supreme Court of Appeal and finally event to the Constitutional Court.

All litigation relating to Trade Marks, Copyright, Plant Breeders Rights, and Registered Designs must eventually take place in the High Court (a single Judge of the High Court), although for Trade Marks the Commissioner of Trade Marks has some powers to hear oppositions and in the case of Plant Breeders Rights a Tribunal is the Court of first instance whereafter the matter can proceed to the High Court. Again proceedings are bifurcated and can either start by way of Application on Notice of Motion accompanied by a Founding Affidavit setting out the relevant evidence to which the Respondent replies with an Answering Affidavit, however, the only relief available by this procedure is an interdict preventing further infringement and no damages can be claimed or awarded. The reasonable costs of the litigation, usually about 50% of the actual costs, can be awarded by the Court to the successful party. The time to the first hearing can be a year.

If damages are to be claimed, Action proceedings commence with a Summons accompanied by a Particulars of Claim to which the Defendant will Plea. The case will proceed through various procedural steps until the trial is held with witnesses leading viva voce evidence (only under exceptional circumstances will evidence be allowed to be adduced by way of Affidavit). The relief available is an interdict, damages, and an award of costs as explained above. The time to the first hearing can be 18 months to 2 years.

Again several levels of Appeal are possible to a Court with a full bench of 3 Judges, and then to the Supreme Court of Appeal and finally event to the Constitutional Court.

Cyprus Small Flag Cyprus

A court action for an infringement of an IP right is commenced with the filing of a writ of summons, generally endorsed.

The suit is served to the defendant who has the right to file an appearance to the court proceedings in question and thereafter a defence.

Following the submission of the pleadings (i.e. particulars of the claim, defence and counterclaim, response of plaintiff), the hearing stage would take place. The trial has an adversarial character and the level of proof is the balance of probabilities.

In certain cases which concern copyright infringement and the proceedings relate to a criminal offence, the burden of proving the existence or a license or consent of the beneficiary regarding control of a work or of a substantial part thereof, is born by the defendant.

In copyright infringement cases where there is either proof of the infringement or a confession thereof, however, it is proven that at the time of the infringement the defendant had not known, nor had any valid reasons to believe that the work under dispute was protected by copyright, the plaintiff is not entitled to any damages due to the infringement. However, the plaintiff would be entitled to an account of profits.

In adjudicating damages for copyright infringement, the Court would take into consideration the gravity of the infringement and any benefit which is proven to have been gained by the defendant due to the infringement.

The Police is granted powers, in cases of copyright infringement which have been settled, to destroy any infringing goods without compensating the defendant, or to take them of the market, as well as to take against the goods any other measure which has the effect of effectively preventing the defendant(s) from reaping any economic benefit from infringing acts.

Any decision of a civil court may be appealed again with a recourse to the Supreme Court of Cyprus.

A civil action for infringement of an IP right would customarily seek damages and further, a declaration that an infringement has occurred, possibly an injunction preventing the defendant from repeating the offence, an account of profits as well as legal costs and legal interest.

Interim orders may be sought in the form of an injunction, such as freezing order, disclosure orders, inspection orders and search orders.

Japan Small Flag Japan

For litigation concerning patents and utility models, or program copyrights, the Tokyo District Court or the Osaka District Court has exclusive jurisdiction as the court of first instance.

For litigation concerning other intellectual property rights (designs, trademarks, or copyrights except program copyrights), as in other litigation, a district court having jurisdiction over the defendant’s residence has jurisdiction over the case. Additionally, in IP infringement litigation, a district court having jurisdiction over the place where the defendant sells the infringing products (as the place where the tort occurred) has jurisdiction over the case. In addition, the Tokyo District Court or the Osaka District Court has concurrent jurisdiction as the court of first instance.

To initiate proceedings, the plaintiff (the right owner) files a complaint with a district court. In general, the court holds the first hearing in about a month after the filing of the complaint. The court usually holds a hearing once a month or once every two months. Both parties submit briefs and evidence from time to time. A hearing generally takes about 15-30 minutes. The court reads and examines the briefs and evidence submitted by the parties before the hearing, poses questions to the parties accordingly, discusses the plans for the next hearing with the parties and sets the next hearing date. The proceedings are mainly based on the documents submitted by the parties. Witness examinations are usually not conducted in IP litigation.

As for the length of the proceedings, see the answer to #18.

When the plaintiff (the right owner) prevails, the court usually grants an injunction and awards damages if the plaintiff has sought them.

The losing party in the first instance can appeal the judgment of the first instance. For litigation concerning patents, utility models, or program copyrights, the Intellectual Property High Court has exclusive jurisdiction as the court of second instance. For litigation concerning other intellectual property rights, a high court corresponding to the court of first instance has jurisdiction as the court of second instance.

The losing party in the second instance can file a final appeal with the Supreme Court; however, very limited grounds exist for filing a final appeal.

Switzerland Small Flag Switzerland

In IP matters, each of the 26 cantons have designated a Court which handles intellectual property disputes as a sole instance (in the cantons Zurich, Berne, Aargau and St. Gallen the so called "commercial courts" are competent), with the exception of patent disputes regarding validity, infringement or grant of licenses which are all handled by the Federal Patent Court.

Proceedings are initiated by filing a written submission with the competent Court. The Court will then set a deadline to the claimant to deposit a security in advance. Upon payment of the security, the claim will be served upon the defendant with a deadline - from 30 days to 3 months - to respond. In complex matters, the Court may order and the claimant can request a second exchange of briefs (in the Swiss court's language "Replik" and "Duplik"). Each party has an unconditional right to take position on the other party's arguments. The Court will then set a hearing. In complex cases, the scope of the first hearing (so-called "instruction hearing") is to prepare the main hearing (discuss the matter in dispute in an informal manner, give details regarding the witnesses, etc.). In practice, the instruction hearing is mostly used to encourage the parties to reach a settlement of the dispute and judges tend to present their legal reasoning on the case to that particular effect. In more simple cases, this instruction hearing will be immediately followed (within the same session) by the main hearing, where the taking of evidence will take place. The time to judgement depends on various factors, such as the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court.

The decisions of the Cantonal Courts in IP-related matters (sole first instance) or the Federal Patent Court can be appealed to the Federal Supreme Court (second instance).

Brazil Small Flag Brazil

The Federal venue has jurisdiction for reviewing decisions taken by the BPTO or SNPC, in terms of granting or not granting an IP right. On the other hand, the State venue has jurisdiction over determining the infringement of an IP right, as well as in non-infringement declaratory actions.

After a complaint has been filed and served to the defendant, the parties can choose whether or not to take up preliminary mediation procedures. In case it doesn’t occur, or the mediation doesn’t have positive results, the defendant needs to submit an answer and the discovery begins. After discovery phase, there may be a phase for production of expert witness report. After that, the judge will enter into judgement, without the need for jury trial, and issue a ruling. The defeated party may appeal to request a review of the ruling to the Court of Appeals. The Court’s decision may be further appealed to the superior courts if a federal law or the Constitution itself is disregarded during the hearing of the appeal. The appeals to Superior Courts will be heard only if admitted by the Courts, which is rarely the case.

The time elapsed from filing to ruling hugely varies depending on the IP right involved. For patents, for instance, time to the first judgement can take between 3 and 5 years. On the other hand, the award of relief may be conceded shortly after the complaint is filed, if the judge understands that the requisites for granting the injunction are present.

United Kingdom Small Flag United Kingdom

The courts which have jurisdiction in intellectual property disputes in England and Wales are discussed above (see Question 17). Before commencing court proceedings, there are pre-action procedures which should be considered (see Question 23). Proceedings can then be commenced by the Claimant filing a Claim Form, followed by Particulars of Claim, which outline details of the case. In a typical case, once the Defendant has filed its Defence and any Counterclaim, and the Claimant has had the opportunity to respond, the case will then proceed to a Case Management Conference ("CMC").

At the CMC, the court will set out the timetable for the case, up to the date of trial. Between the CMC and the trial, the parties will exchange the names and evidence of their expert witnesses and fact witnesses, undertake and produce the results of any experiments, provide any models, photographs, survey evidence and any other evidence to be relied on at the trial, and give disclosure, if it is ordered.

Shortly before the trial, the court will hold a pre-trial review hearing to finalise matters such as the timetable for trial.

The trial itself will typically last 1-2 days in the IPEC and 3 to 15 days in the High Court. The trial commences with opening submissions from the parties, followed by any cross-examination of expert and fact witnesses, and closing submissions. Specialist intellectual property barristers are typically instructed to represent the parties in the Court, although in some circumstances solicitors and patent attorneys may also make submissions in Court.

An appeal is available if the judgment contains, or may contain, an error of law. An appeal will review only the law and how it has been applied - there is no re-trial of the facts of the case, and very limited ability to introduce new evidence during an appeal.

The primary remedies sought in civil litigation are typically:

  • for an IP owner, a declaration that its right has been infringed, an injunction to prevent the other party infringing its rights, monetary relief (damages or an account of profits) and recovery of its legal costs, plus interest; and
  • for the alleged infringer, an order that the IP right is invalid and/or that it is not infringed by the allegedly infringing acts, plus recovery of its legal costs and interest.


The jurisdiction of the court is broad and the type of relief awarded by the court therefore continues to evolve to adapt to developments in the commercial and technical environment of disputes.

Israel Small Flag Israel

Jurisdiction: patent infringement actions are litigated before a district court. Other IPRs infringement actions are usually litigated before a district court , which has jurisdiction over monetary claims exceeding ILS 2.5 million and claims where injunction is sought. Claims less than ILS 2.5 million are tried before a magistrate court. The plaintiff must pay court fees of up to 2.5% of the damages sought.

Procedure and format: litigation begins with submission of pleadings, which must set forth the facts showing a cause of action. The defendant may file a defense statement within 60 days and the plaintiff may file a reply. After exchange of pleadings, preliminary proceedings of discovery and written interrogatories are conducted; there are no depositions. The court may hold pretrial hearings. At the last pre-trial hearing the court will issue an order setting a timetable for filing written evidence (affidavits and expert opinions). The court will then set a date for trial during which the affiants and experts will be cross-examined. The parties may also subpoena a person unwilling to sign an affidavit to testify in trial. Following trial, the parties file written summations and the judge takes the case under advisement and renders judgment.

Time to judgment: the average length of a patent trial, from filing of the action until a final decision, is several years.

Appeal: Final judgements may be appealed by right to the Supreme Court. Appeals on other decisions requires leave.

France Small Flag France

Jurisdictions

In accordance with the Judicial Organization Code and the IPC:

• Paris Court of First Instance has exclusive jurisdiction over patent-related matters;
• the following Courts of First Instance have exclusive jurisdiction in relation to copyright and neighbouring rights, design, trademarks and geographical indications: Bordeaux, Lille, Lyon, Marseille, Nanterre , Nancy, Paris, Rennes, Strasbourg, Fort-de-France;
• the following Courts of First Instance have exclusive jurisdiction over plant varieties certificates related matters: Marseille, Bordeaux, Strasbourg, Lille, Limoges, Lyon, Nancy, Paris, Rennes, Toulouse.
ii. Proceedings

Proceedings are initiated with a writ of summons being served by a bailiff to the defendant.

A first procedural hearing takes place during which the pre-trial judge checks whether:

• the defendant has appointed a lawyer, and
• the claimant has provided the defendant’s attorney with his exhibits (usually eight weeks after the first procedural hearing).

A second procedural hearing is set for the filing of defendant’s submissions in defence and exhibits (usually six-eight weeks from filing the writ with the Court).

A third procedural hearing is set for the filing of the defendant’s submissions in defence and exhibits in reply (approximatively six-eight weeks after the second procedural hearing).

The judge can schedule additional hearings to allow the parties to file supplementary submissions or close the debates and set a date for the final hearing (approximatively six-eight weeks after the third procedural hearing).

A final hearing is held for pleadings, the Court’s decision being usually issued between one to three months after the oral pleadings.

Appeals must be filed with the Court of Appeal within one month from the notification of the first instance decision. Foreign companies are granted an additional two months delay.

Germany Small Flag Germany

For patents, utility models, trademarks, designs, copyright and unfair competition, the relevant pieces of legislation concentrate court proceedings with specified courts in each Federal State.

Proceedings are initiated by a complaint. The court may then order written proceedings or schedule an early oral hearing.

The time to trial depends on the procedure chosen by the court in regular proceedings, and can vary from a few months until the oral hearing to over a year. Following the oral hearing, the court will close the proceedings and issue a decision in due course.

Remedies available include injunctive relief, disclosure of information and rendering of accounts, damages, destruction of goods, publication of the decision etc.

In preliminary injunction proceedings, a decision can be obtained within 24 to 48 hours. Remedies available include, depending on the IP right involved, injunctive relief, a very limited claim for disclosure of certain information, surrender of goods to a sequester, right to inspection.

Italy Small Flag Italy

The owner has several options to react against infringement of IP rights depending on the scale and type of infringement, and the value of the infringed trademark. The owner might commence civil and/or criminal proceedings and can alert the customs authorities in the case of counterfeiting. A range of interim measures is available in civil proceedings.

In proceedings on the merits, the right-holder can request declaratory judgment, definitive injunction, definitive removal from the market of the counterfeit goods, their destruction, assignment of infringing goods, publication of the judgment and award of damages.

As from 1 July 2003, specialized divisions, spread all over the Italian territory, have exclusive jurisdiction on IP matters. Article 2 of Law Decree No 1 of 24 January 2012 renames the Special Section in Industrial and Intellectual Property as the Special Section for Enterprises (Sezioni per le Imprese).

Infringement proceedings can be established before the forum of the alleged infringer (forum rei) or before the court where the infringement has occurred (forum commissi delicti).

Italian Law does not require formalities such as a cease-and-desist letters or mediation before commencing infringement proceedings, but it is rather common in Italy for the IP rights owner to send a cease-and-desist letter as a first action, in order to reach a solution – and stop the infringement – faster and without commencing judicial action. However, under Italian law, whilst the granting of injunction is based on strict liability principles (i.e. regardless of any culpability), the compensation for damages can be awarded only if the infringing party have acted with malice or in a negligent way. Typically, the subjective element is presumed for those who manufacture/import a patented product, whilst a greater degree of awareness must be proven for those who merely offer and market a patented product. In that case, the previous sending of the warning letter informing the recipient of the existence of the IP right and requesting it to restrain from or cease carrying out any act that may constitute an infringement of such a patent could be helpful. In any event, the pros and cons of sending warning letters should be assessed on a case-by-case basis.

After this stage, a claimant that wants to bring an action, has to serve upon the counterparty a writ of summons (atto di citazione). The writ of summons is drafted and signed by legal counsel with authority (by power of attorney) to sign on behalf of his client. The writ of summons must contain all the elements necessary to identify the claim and causes of action, and must contain the vocation in ius (summons to court). Between service of the writ of summons and the date given for the first hearing, the defendant has at least 90 days (or 150 days in the case of a defendant residing abroad) to prepare its defence. The writ of summons must be filed at the court after service in order for the case to be entered on the court register and assigned to a specific judge. Italian ordinary civil proceedings are essentially “written”, based on the filing of pleadings exchanged between the parties and made up of a number of hearings fixed by law, each devoted to certain activities. After the statement of the defendant, the plaintiff can slightly modify or amend his/her claims, in the light of the objections and possible counterclaim raised by the defendant; however, the plaintiff cannot submit a completely new claim (the so- called mutatio libelli is forbidden).

As for the duration of such proceedings, see answer to question 18.

The first instance decision may be appealed before the specialised section of the competent Court of Appeal, which also has full authority to revoke the first decision on the merits.

The decisions of the Court of Appeal may be challenged before the Italian Court of Cassation only on certain grounds, therefore it is excluded a new scrutiny on the factual background of the dispute.

Greece Small Flag Greece

Pursuant to law 2943/2001 (articles 6-11), special divisions have been established for Community (now EU) trademarks in the civil first and second instance courts of Athens and Thessaloniki.
The specialized courts also hear national trademark infringements when they are competent ratione loci. According to the prevalent opinion in legal theory and related case law, said divisions are not competent for preliminary proceedings (temporary restraining orders and injuctions). Said proceedings are tried by local courts. If, however, the Athens and Thessaloniki's courts are competent ratione loci, the proceedings are introduced in the EU trademark divisions.

The specialised divisions also adjudicate civil cases relating to patents, utility models, industrial designs and models, supplementary protection certificates and generally, related matters of IP law. The first instance courts of Athens, Thessaloniki and Piraeus have a special division for copyright cases.

Proceedings are initiated via an introductory writ filed with the court and served upon the defendant.

The civil action starts with the filing of the lawsuit with the competent first-instance court. The plaintiff must serve the lawsuit within 30 days (or 60 days in case the defendant resides abroad) as from filing.

Parties must file their written arguments and evidence within 100 days (or 130 days for parties residing abroad) the action and a reply to each other's arguments and evidence must be filed within a further period of 15 days. Witness testimonies are submitted in the form of sworn affidavits. With the expiry of this term, the file is deemed as closed and, within another 15 days, the judge in charge of the case is appointed. The hearing of the case takes place within the next 30 days, without examination of witnesses in court, unless the bench decides that this is absolutely necessary.

The first instance decision may be appealed before the Court of Appeal within 30 days as of the notification of the decision or within 60 days as of its notification, if the party resides abroad.

In case no notification of the decision took place, the term is two years as of the publication of the decision.

An appeal in cassation, only on specific points of law, may be filed before the Supreme Court, (Areios Pagos).

India Small Flag India

The court in question will be first determined based on the location of the alleged infringement, or, alternatively, the location of the Defendant’s place of business. In a case involving trademark and copyright infringement, a suit may be filed depending on the Plaintiff’s place of business or residence as well.

Further, based on the sum of the relief claimed, the district court or the relevant High Court will have jurisdiction of the matter. These rules are determined by the various states in India and therefore there is no uniformity in terms of pecuniary jurisdiction between the various states.

A suit needs to be filed along with Interlocutory Application for temporary injunction etc., based on the procedure as laid out by the court in question. Once the case has been heard on preliminary issues, the matter is admitted and then heard in detail on merits. Both parties are given time to submit both oral and written submissions, and admission and denial of documents and examination of witnesses is undertaken.

The time to formal judgment is typically between 2-5 years.

Relief sought (such as injunction, delivery up of infringing materials, rendition of accounts etc.) are granted along with damages. However, the quantum of damages would depend on the merits of the case.

Yes, provision of appeal is available to any party who is aggrieved by any order or judgement of the court.

Peru Small Flag Peru

The competent court to see these cases is the Contentious-Administrative court. These procedures do not have an exact term of duration due to the judicial courts’ workload and the complexity of each case. However, they can last an approximate of 10 months minimum, per instance, to review the evidence and perform the Oral Hearing where each party will have the opportunity to express their main arguments to their favour. After the oral hearing is done, the court must emit a final resolution which can take up to 2 to 3 months long.

In the case of the cassation, this lawsuit is filed before the Supreme Court, specifically, the Constitutional and Social Transitional Law chamber. This process can take even longer due to the fact that each stage of the process is reviewed by more judges.

Malta Small Flag Malta

IPR infringement action must be filed by sworn application before the First Hall of the Civil Court, which is a court of superior jurisdiction. However, patent infringement and revocation actions must be filed before the Patents Tribunal (there exists another procedure for revocation actions to be filed, as previously mentioned, with the Comptroller of Industrial Property).

When the claim is a monetary claim for damages, the competence of the Maltese courts will be decided on an ad valorem basis and therefore the case may be heard before the courts of inferior jurisdiction or the courts of superior jurisdiction, according to the value of the claim. Therefore, if filing a strict IP infringement claim for a declaration of infringement, and this accompanied by a claim for damages, such an application for action would have to be filed before the First Hall of the Civil Courts or the Patents Tribunal according to the lex specialis applicable in each case.

Once an application for a case on the merits is filed it is usually appointed for a first hearing within a few weeks of application. The court case before the First Hall of the Civil Court starts off with a first hearing in which the parties give an introduction to the case and declare what type of evidence they wish to file – whether documentary or viva voce witnesses or both. The next court sessions will be dedication to the hearing of witnesses, starting with the plaintiff’s witnesses and followed by defendant’s witnesses and cross-examinations. Should there be any preliminary pleas, these will also be heard at the beginning of proceedings. The length of proceedings would usually depend on this stage. Following evidence, the case usually proceeds to the parties submitting a note of submissions which may be accompanied by oral submissions held before the court.

Following that, the court will then pass judgment, with any of the parties having the right to file an appeal to the Court of Appeal if they feel aggrieved. If judgement awards damages, the losing party will usually pay same together with the award of costs given by the court – this is usually dealt with in the same decision. Should the losing party fail to pay that which was awarded by the courts, executive warrants may be filed, such as the executive garnishee order to freeze and deposit into court any assets held by the losing party equivalent to the amount awarded.

Saudi Arabia Small Flag Saudi Arabia

The Commercial Court has jurisdiction over trademark infringement matters. A statement of claims must be filed before the court in writing. There are no pre-trial procedures. In few cases, the Commercial Court refused to accept its jurisdiction over trademark infringement matters however these decisions are challenged before the higher courts. Decision of first instance court is appealable before Court of Appeal. Final appeal before the High Court can be filed only on question of law.

In case of Patent and Design rights, the Saudi Patent Committee has original jurisdiction. A statement of claims must be filed with Committee and there are no pre-trial procedures. Decision of Committee is appealable before Administrative Court of first instance. Decision of Administrative Court of first instance is appealable before the Court of Appeal. Final appeal before the High Court can be filed only on question of law.

Australia Small Flag Australia

Most intellectual property litigation is commenced in the Federal Court of Australia. The Intellectual Property ‘National Practice Area’ covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder’s rights and appeals from the Commissioner of Patents or Register of Trade Marks. The Federal Court comprises specialist judges who will hear intellectual property proceedings.

The Federal Circuit Court also has jurisdiction to hear and determine civil disputes concerning copyright, designs, trade marks, plant breeder’s rights and claims under the Australian Consumer Law, but not patent matters. The ‘Intellectual Property Pilot Scheme’ commenced on 1 July 2018 and aims to give litigants certainty in enforcing their intellectual property rights by providing a more streamlined and cost-effective process.

By way of example, a patent case that is filed in the Federal Court of Australia might proceed as follows:

  1. Proceedings are commenced;
  2. A Request for Expedition might be made (in appropriate cases only);
  3. The Court may refer a matter to mediation at any stage of the proceeding;
  4. A Case management hearing takes place and the parties will identify the genuine issues in dispute as well as whether all appropriate parties have been joined and whether any cross-claim is to be made;
  5. In an appropriate case, the Court will order that the parties produce an agreed primer explaining the technical background to the invention claimed in the specification in suit;
  6. Requests for discovery may be made;
  7. Any Interlocutory matters will be heard;
  8. A timetable for the filing and service of evidence will be set down;
  9. A pre-trial case management hearing will generally be heard prior to the scheduled trial date;
  10. The hearing will take place;
  11. Judgment will be provided, and orders will be made;
  12. The parties will make submissions as to costs.

Any appeal from the final decision of a judge of the Federal Court will be heard by the Full Court of the Federal Court. Any appeal will be heard during the allocated appeal periods.

United States Small Flag United States

Federal and state courts can hear various IP disputes depending on the right and the substance of the complaint. For federal courts, filing a complaint starts the litigation process. After the Defendant answers the complaint, the court will hold a Case Management Conference where the schedule leading up to trial is established. Next, the parties engage in discovery where each side exchanges information followed by expert discovery where the parties exchange materials and reports developed by technical experts. After discovery has closed, the parties engage in motion practice to resolve evidentiary issues before trial during pre-trial proceedings. Last, the trial is held followed by post-trial proceedings. The complexity of facts can affect the time to judgment, but typically a case can be resolved from start to finish in approximately two years.

The type of relief customarily requested is monetary and injunctive relief   When a trial court decision is final, issues may be appealed to the appropriate Court of Appeals, which for patent cases is the Court of Appeals for the Federal Circuit, and for other non-patent cases can be the regional appellate court.

Updated: September 12, 2019