Editor's note: United Video Properties Inc. (Hereinafter referred to as "UVP" ) Prosecute in Belgium Telnet NV (Hereinafter referred to as "Telnet" ) Infringement of its patent right. Telnet counterclaim, Apply for invalidation of the patent in question. finally Telnet Win the case, UVP Be awarded compensation Telnet Expenses incurred in response to a lawsuit.

[background] United Video Properties Inc. (Hereinafter referred to as "UVP" ) Prosecute in Belgium Telnet NV (Hereinafter referred to as "Telnet" ) Infringement of its patent right. Telnet counterclaim, Apply for invalidation of the patent in question. finally Telnet Win the case, UVP Be awarded compensation Telnet Expenses incurred in response to a lawsuit. Court decision UVP The total amount of expenses payable is 11, 000 euro, This is also the maximum amount of damages under Belgian law. Telnet Put forward, The actual cost of their litigation far exceeded the award, requirement UVP Pay his lawyer's fees 185, 462. 55 Euros and fees for the services of a patent agency 40, 400 euro.

[discover] The first question the EU court will have to resolve is "Eu directive on enforcement of intellectual property laws (The first 2004/48/EC No) " (Hereinafter referred to as "European Union regulation 2004/48/EC Number instruction" ) The first 14 Whether the provisions of the Article on compensation expenses shall be construed as, National laws of member states shall be prohibited from establishing schemes of fixed compensation rates, Limit the amount of compensation for lawyer's services? To answer this question, The Court of Justice of the European Union stated "European Union regulation 2004/48/EC Number instruction" It provides two requirements for determining the compensation cost of intellectual property litigation: The amount of compensation shall be "reasonable (reasonable) " and "appropriate (proportionate) " . On one hand, The national laws of member States establish schemes for fixed compensation rates, Does not necessarily violate the above "European Union regulation 2004/48/EC Number instruction" request. because, If the purpose of the establishment is to ensure that the prevailing party is reasonably compensated for the costs of litigation, The specific value is also taken into account when setting the object of action, The total value of the lawsuit and the labor paid by the winning party to protect its rights and so on, Then setting up a fixed compensation rate scheme is not against "European Union regulation 2004/48/EC Number instruction" request. The above judgment applies especially in the following cases: The winning party signed with their lawyer "superelevation" Attorney's fee, The lawyer actually performs more than is necessary to enforce his or her intellectual property rights. Now if the winning party is allowed to claim the full cost of the action, For the losing side, The damages far exceed "reasonable" limit. On the other hand, Require the losing party to bear "reasonable" Cost of litigation, It does not mean that member states are allowed to make national laws "Far below" The average fixed compensation rate for lawyers' fees in that country. Claim responsibility "appropriate" Litigation costs, Does not mean that the losing party must bear "Total expenses of the prevailing party" , But at least it should be "A substantial or appropriate proportion of the reasonable costs actually expended by the prevailing party" . The second question addressed by the EU court of Justice is "European Union regulation 2004/48/EC Number instruction" The first 14 Article should be read as, National laws of member states are prohibited from providing only when the losing party is at fault, To assume the employment of the victorious party "Technical consultant" cost? The Court of Justice of the European Union first stated in its ruling, Only if there is a connection to the lawsuit "Technical consultant" The cost is the cost of the action. In this case, the technical consultant only identified and studied relevant behaviors, Conduct a general analysis of the market and identify potential violations of intellectual property laws and violations, But the analysis was not aimed at specific infringers, So it doesn't prove that "Technical consultant" Is closely enough directly related to the action itself. On the other hand, Whatever their nature, right, if "Technical consultant" The service is provided for the purpose of security in specific proceedings "Able to take effective legal action" , Then hire the "Technical consultant" The cost of providing the above services is "European Union regulation 2004/48/EC Number instruction" The first 14 Those provided for in this Article shall be borne by the losing party "other" Litigation costs.

[comment] Patent action, It requires the participation of highly professional lawyers and technical experts, So litigation is expensive. To this day, The litigants still believe that if they win the case, I can recover all the costs of litigation. In fact, Many countries impose a cap on the damages that can be claimed for the costs actually incurred in litigation. Preliminary ruling of the Court of Justice of the European Union in this case, It is bound to lead to widespread changes in the rules that limit the cost of litigation over patents and other intellectual property. The court of Justice of the European Union said in its ruling, Set up "Cost of litigation" The aim is to deter infringement, So the corresponding compensation has to be "reasonable" while "appropriate" the. Therefore, The winning party should be guaranteed even if it cannot recover all the costs of litigation, Can at least recover "Most of" Litigation cost. Judging by the ruling in this case, Here's the real limit "Too high" or "Well beyond normal" Litigation costs, There is no fixed rate of compensation in the law.

author: AntonioCASTÁN, A partner at Esaberi compile: Li Fangqian, The Esaberi intern proofreading: Liu Dan, Esabarry Legal Counsel source: Esabaril (ELZABURU) Intellectual property rights