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  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Angolan law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including trademarks, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including designs, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Patents

Remedies for infringement

Angola

Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

Argentina

The Patent Law provides both civil and criminal law remedies for cases of infringement.

Civil remedies include the compensation of damages and termination of the infringing activities.

A complex system of rules for preliminary remedies in patent cases is included in the Patent Law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

Criminal procedures and sanctions are rare.

Australia

The available remedies for infringement include injunction and damages or an account of profits. The damages may be calculated with reference to the value of the diverted sales or the going royalty rate that the infringer would have had to pay had a license been granted.

A court can refuse to award damages or make an order for an account of profits if it determines that the infringement was innocent. An innocent infringement occurs when the defendant was not aware, and had no reasonable grounds for suspecting, that their act constituted an infringement.

Austria

Civil remedies for infringement include:

  • Cessation of infringement (preliminary or permanent injunction)
  • Claim for elimination of the circumstances constituting the infringement
  • Rendering of account
  • Publication of judgment
  • Monetary relief

Criminal remedies may include:

  • Monetary fine
  • Imprisonment

Based on a regulation of the European Council (EC No. 608/2013) in combination with the Austrian Product Piracy Act (PPG 2004), an application for action may be filed with the Customs Authorities in order to prevent the import of infringing goods.

Belgium

The remedies for patent infringement and the principle of exhaustion are similar to those applicable to copyright infringement.

Brazil

Criminal remedies for patent infringement include: imprisonment, monetary fine and seizure of infringing products.

Civil remedies for patent infringement include: injunction to prevent the continuation of infringements and damages. Furthermore, interested parties may file a court action requesting a cancelation of the patent before the Federal Court.

Canada

The Patent Act permits awards for damages following the grant of a patent and reasonable compensation for infringing acts before grant, together with interest.

Equitable remedies include an accounting of profits (as an alternative to damages) and interlocutory or permanent injunctions. Punitive damages awards are rare and require high-handed, egregious and oppressive conduct in carrying out the infringing acts.

Chile

The owner of the invention can generally require to stop the acts that violate the invention, the indemnification of damages, the implementation of necessary measures to prevent the infringement from continuing, and the publication of the judgment at the expense of the convicted person, through advertisements in a newspaper of the holder's choice.

The law provides for criminal penalties that range from 25 to 1,000 UTM (approx. 1,600 to 65,000 USD).

China

Damages can be calculated based on:

  • Lost profits
  • Illegal gains by the infringer
  • Up to three times the reasonable royalty

Should it be difficult to determine the damages based on any of these mechanisms, the court has the discretion to grant statutory damages the maximum of which is ¥1 million under the current Patent Law.

Injunctive relief is also a possible remedy.

Colombia

Resolution 486 establishes different mechanisms to protect the patent or its validity. Firstly, any interested third party or the SIC ex officio may decree the absolute invalidity of the patent in compliance with the causes defined by law. Moreover, the SIC may cancel a patent when it has been granted to a person not entitled to such grant. The action for cancellation may only be brought by the person to whom the right to the patent belongs.

The owner of the patent may claim its right before the ordinary jurisdiction of its country. Nevertheless, the judge must request that the Andean Court of Jurisdiction of the CAN provide its opinion on the case prior to the taking of the decision, which shall apply and consider the opinion of the Andean judge.

 

Furthermore, patents are protected by criminal law. For this reason, infringements may be investigated by the general prosecutor and penalized by the criminal courts with fines and prison sentences between 4 and 8 years.

Czech Republic

Possibility to claim actual damages for infringement.

Possible to seek preventing importation of goods that are infringing.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Denmark

Remedies for negligent or willful patent infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by the infringement. Costs and reasonable attorneys' fees can also be recoverable.

It is possible to obtain a court order for destruction of infringing products. An initial step can be to obtain a preliminary court order for the confiscation of infringing products and equipment used in the manufacture thereof.

Criminal penalties are possible.

Finland

Remedies for patent infringement include a reasonable, non-punitive compensation for the use of the patent, typically calculated on the basis of what an applicable license would have cost. In case of negligence, compensation for other damages may also be awarded. Reasonable legal costs can also be demanded from the infringing party. Injunction can be granted by a court in patent infringement cases, as well as the destruction of infringing goods. Criminal penalties such as fines and even imprisonment are possible.

France

French law prohibits both direct infringement and contributory infringement.

Patent infringement actions may be brought before Paris courts (which have exclusive jurisdiction), usually after having gathered evidence via an infringement seizure (saisie-contrefaçon), by way of an action on the merits and a summary action in order to obtain an interlocutory injunction.

Manufacturers and importers are regarded as automatic infringers (ie, need not be aware of the patent at stake to qualify as infringers).

Since 2019, such infringement action needs to be brought within 5 years of the acts concerned, provided such action is not subject to any other statutes of limitations.

An injunction against the further manufacture, import, offer, sale, use or storage of the work can be ordered with immediate enforceability and subject to penalties.

In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into account distinctively:

  1. The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the rights holder
  2. The moral harm suffered by the rights holder and
  3. The profits earned by the infringer, including intellectual, tangible and promotional investments saved or not incurred by the infringer.

As an alternative and upon request of the rights holder, French courts may set the damages as a lump sum. This sum must be greater than the royalties that would have been owed if the infringer had sought a license. This amount is not exclusive of compensation for moral harm caused to the rights holder.

Remedies also include, notably, the recall, destruction or confiscation of the infringing products and the publication of the judgment.

Before the criminal courts, an infringer faces a fine of up to EUR300,000 (or EUR750,000 in certain circumstances) and imprisonment for up to 3 years (7 years in certain circumstances).

Germany

Different remedies are possible, with the most commonly sought remedies being injunction and damages. Also, an exclusive licensee may enforce patent or utility models against infringers. Damages may be calculated as adequate license fees, infringer's profits or lost profits of the rights holder. In order to calculate damages, the rights holder can ask for a rendering of accounts.

Rights holders or exclusive licensees may make a claim for recall and destruction of infringing products. Customs seizure to stop the import of infringing products is also available.

Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by German law.

Hong Kong, SAR

The remedies for infringement include order for delivery up or destruction of the infringed article, damages, an account of profits, declaration of infringement and injunctive relief.

Relief for groundless threats of infringement is available. Relief may be in the form of a declaration that the threats are unjustifiable, an injunction against the continuance of the threats or damages for any loss that has been sustained by the threats.

Hungary

Article 35 of the Patent Act contains special remedies, eg, the following can be requested from the court: establishing the infringement, claim for cease and desist, amendment declaration by the infringer, providing information on the infringement, among others confiscating or destroying the products affected by the infringement and also the tools and materials used for the infringement.

In regards to financial remedies, compensation for damages according to the civil law and restitution of the economic gains achieved through the infringement can be requested. According to the court practice the amount of such economic gain can be equal to the unpaid license fee, or with the net income (after the deduction of the costs) achieved through the infringement. In each case, the proportion of the patented part within the infringing product shall be taken into account.

Attorneys' fees can be recovered, although the court has the power to reduce such fees, should they be excessive.

Injunctive relief is also a possible remedy even before initiating a lawsuit. Ex parte injunctive relief can be requested as well.

India

The relief, which a court may grant in any suit for infringement includes an injunction and at the option of the plaintiff, either damages or an account of profits. The court may also order goods which are found to be infringing and materials and implements, the predominant use of which is the creation of infringing goods, to be seized, forfeited or destroyed.

If the person committing an offense is a company, then the company, as well as every person in charge of and responsible to the company for the conduct of its business at the time of the commission of the offense would be deemed to be guilty of the offense and be liable to be proceeded against and punished accordingly.

No criminal penalties are awarded under the Patents Act in respect of patent infringement claims.

Indonesia

Compensation, injunction or a combination of the two may be ordered by the Commercial Court as remedies for infringement. Criminal sanctions are in the form of imprisonment and/or fine.

Ireland

The primary remedies available to a patent holder in relation to infringement are:

  • Injunctive relief
  • Damages
  • An account of profits
  • Delivery up of the infringing product and/or
  • A declaration that the patent is valid and has been infringed

Israel

As with copyrights, injunctive and monetary relief are available, although the likelihood of possible double recovery is low. It should be noted that no statutory damages are available for patent infringement.

Italy

Any person with reason to fear for the infringement of rights belonging to them under the Italian Intellectual Property Code, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that their right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, including injunction and damages.

Injunctions can be granted also as preliminary measures, by way of a summary proceedings, which could stop the infringement within 3 to 9 months from the petition date. The court may also order the seizure of the products and of all matters constituting an infringement of the patent.

Another relevant remedy is the so-called "search order," which allows the patent owner to collect evidence of the infringement through access to the infringer’s premises (or any other place where the evidence is deemed to be) at the presence of a bailiff and, and where necessary, of an expert appointed by the court.

Criminal sanctions may apply as well under certain circumstances.

Japan

Monetary damages can be levied. There are certain statutory presumptions to calculate damages but punitive damages are not available under Japanese law.

Injunctive relief, including seeking/preventing importation of infringing goods, is available as a remedy.

Measures are available to restore the business reputation of the patent holder and exclusive licensee (eg, publishing an apology in a newspaper).

Each joint owner can seek a remedy for infringement without the other owner's consent.

Criminal penalties are possible for patent infringement.

Luxembourg

The possible remedies for infringement are set out under title IX "Trademark counterfeiting" of the Patent Act:

  • Cessation of infringement (provisional or permanent), possibly accompanied by the penalty of a daily fine
  • Publication of the judgment
  • Damages to make good the harm caused
  • Confiscation or destruction of infringing goods and of the instruments, devices or means specifically intended for committing the infringement

Reference should also be made to the description and saisie-contrefaçon procedures (Article 79 of the Patent Act), which respectively allow for:

  • The drawing up of a detailed description of the allegedly infringing articles and the instruments that have served to commit the alleged infringement by a sworn expert
  • And the unexpected seizure of allegedly infringing articles and the instruments that have served to commit the alleged infringement

Both procedures serve the purpose of gathering evidence of and more information regarding infringements and may not exceed a period of three months from notification of the order to the person or to his domicile.

Mexico

Violation may lead to payment of damages and losses, which shall be determined by a court of law based on actual damage and loss.

Criminal penalties may be imposed.

Netherlands

A patent holder is entitled to remedies for infringement similar to those available for infringement of other intellectual property rights, which warrant both (interim and final) injunctive and monetary relief (see Article 70 et seq of the Dutch Patent Act).

Damages as well as surrender of profits made can only be awarded if the infringer knew or should reasonably have known his or her actions entailed a patent infringement. A number of supplementary, injunctive sanctions may be applied for, such as:

  • A recall or definitive removal from the channels of commerce, surrender to the patent holder or destruction, of the infringing goods and in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods
  • The right of information, ordering the infringer to share precise information on the origin of the infringing goods or services, the distribution channels and the identity of any third parties involved in the infringement
  • The dissemination of the decision in full or in part

A European rule of exhaustion applies, which means that if a particular patented product, or product that has been directly obtained through the patented process, has been brought into circulation for the first time with the consent of the patent holder within the Community, and/or Curacao or St. Martin, then the bringing of that particular product into circulation in any other way shall not be considered patent infringement.

According to Article 1019h of the Dutch Code of Civil Procedure, generally the losing party is obliged to pay the legal costs of the winning party. However, the judge has the authority to decide that these costs will be partly compensated by the winning party.

New Zealand

Infringement proceedings may be brought in court by the patentee or, in some cases, the licensee. The relief available includes injunctive relief and, at the option of the plaintiff, damages or an account of profits.

However, the court may not award damages or an account of profits for infringement if the defendant proves that, at the date of infringement, the defendant did not know and ought not reasonably to have known that the patent existed or that the complete specification had become open to public inspection. If a product is marked merely to indicate that it is patented, this will not be sufficient to presume the defendant ought to have known the product was patented.

Norway

Remedies for patent infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by negligent or willful infringement. Criminal penalties and injunctions against continuous infringements can also be granted.

Philippines

The patent statute permits an award of damages in an amount adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs. Some awards may be a combination of lost profits and a reasonable royalty.

Treble damages up to three times actual damages are possible if the infringement is willful.

Failing to include appropriate patent marking can preclude recovery of damages for past infringement.

Injunctive relief is also a possible remedy.

A criminal action patent infringement is a remedy available only for repeated patent infringement.

Poland

Polish law provides remedies for patent holders to combat patent infringement, such as demands to cease infringement, to compensate for damage incurred (also by paying a license fee), and the return of unfairly gained profits. Furthermore, under Polish law it is possible to pursue claims to prohibit actions constituting a threat of patent infringement. The patent holder may also seek a preliminary injunction before initiating the main proceedings, under which, for example, the infringing actions must be ceased and the infringing goods seized and held for the duration of the main infringement proceedings before the court.

In some instances, patent infringement may be regarded as the misappropriation of third party economic right.

Patent infringement claims may be pursued once the patent is granted. However, the patent holder may pursue claims against an infringer for infringements that occurred from the moment the patent application was published by the Patent Office (under some circumstances, also for an earlier period) or, in the case of a European patent validated in Poland, from the moment the information on the submission (to the Polish Patent Office) of a translation of the patent claim is published by the Polish Patent Office.

Contributory or indirect infringement and inducement is not regulated in the Industrial Property Law Act. However, based on general civil law rules, any person that induces another person to inflict damage, or that assists this person, as well as any person that consciously benefits from the damage inflicted on a patent holder, may be held liable for these acts.

In patent infringement litigation, the losing party must, upon the request of the adverse party, reimburse the court costs and attorneys' fees (capped fees). When only a part of the claims is awarded, the costs may either be waived or proportionally shared between the parties. In specially justified cases, the court may also charge the losing party with only a part of the costs or no costs at all. In the case of a settlement, the costs are waived, unless the parties agree otherwise.

Portugal

Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne with the protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

If it is impossible to quantify the losses effectively suffered by the injured party, the court may, provided this is not opposed by the injured party, alternatively define a fixed amount with recourse to equity, that is based, as a minimum value, on the remuneration that the injured party would have received if the infringer had requested authorization to use the industrial property rights in question and the costs borne with the protection of the industrial property right and the investigation and termination of the harmful conduct.

Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 3 years or a fine.

Romania

Patent law permits an award of damages in an amount adequate to compensate for the infringement which includes the actual loss and loss of profit.

Injunctive relief is also a possible remedy.

Infringement of patent rights is a criminal offense in the form of counterfeit punishable by imprisonment in certain conditions.

Russia

The owner of the patent or an exclusive licensee is entitled to the following primary remedies:

  • Demand to stop infringement
  • Demand to redress damages in full and
  • Demand seizure of media bearing infringing objects; criminal penalties may also apply under certain circumstances.

Saudi Arabia

A wronged party can seek damages/compensation for infringement of its rights and harm suffered. In addition, the Patents Law stipulates certain penalties for infringement (without prejudice to further liability which may arise from other laws), including:

  • An injunction
  • A fine of up to SAR 100,000 (which may be doubled for a repeat offender)
  • A possible jail term (including referral to the Board of Grievances)
  • Naming and shaming in two daily newspapers and the Official Gazette (the cost of which is borne by the party in breach)
  • Any other prompt measures considered necessary to prevent damages resulting from the infringement

Singapore

The patent owner and his exclusive licensee are entitled to take legal action against an infringing party. Remedies available to the patent owner and his exclusive licensee include applying for an injunction to stop the infringing action, demanding for the profits gained by the infringing party or seeking damages for the loss suffered.

Slovak Republic

In the case of an unauthorized interference with the rights, the owner of a patent is entitled mainly to seek prohibition of unlawful interferences of the rights or threats to the rights and removal of the consequences of such interferences. If due to such interference with the owner's rights any damage has been caused, the owner shall have the right to damages including loss of profits. If non-pecuniary damage has occurred, the owner has the right to reasonable compensation, including financial compensation. Right to unjust enrichment is not affected.

The right to remuneration of damages as well as loss of profits shall become statute-barred three years after the date on which the owner of the patent becomes aware of the caused damage or non-pecuniary damage and who is responsible for it. Pursuant to the Civil Code, in the case of a breach or a threat of an intellectual property right which may be the object of a license agreement (such as patent), the amount of damages shall be at least equal to the remuneration for a license granted at the time of unauthorized interference with the right.

In addition, criminal sanctions pursuant to the Criminal Code shall apply.

South Korea

The remedies available for infringement are:

  • Criminal sanction (quite rare)
  • Preliminary injunction
  • Permanent injunction
  • Damages

Under the amended PA which became effective on July 9, 2019, courts are authorized to award damages as a punitive measure of up to three times the amount of actual damages for intentional or willful acts of patent infringement. 

Spain

According to the Spanish Law 24/2015 on Patents, the owner of a patent may bring appropriate action of any type or nature before the ordinary courts against any person who infringes his rights and he may demand the necessary measures to safeguard those rights.

The owner whose patent rights have been infringed may, in particular, seek:

  • Cessation of the acts that infringe his rights
  • Compensation for the damages suffered
  • Seizure of the objects produced or imported in infringement of his rights, as well as the means used for such production or for carrying out the patented process
  • Whenever possible, attribution of the ownership of the objects and means seized. In such cases, the value of the goods concerned shall be deducted from the compensation for damages. Where that value exceeds that of the compensation granted, the owner of the patent shall pay the excess to the other party
  • The adoption of the necessary measures to prevent continued infringement of the patent, in particular, the transformation of the objects or means seized, or their destruction when such is indispensable in order to prevent infringement of the patent
  • Publication of the judgment against the person infringing the patent, at his cost, by means of announcements and notification to the persons concerned

Any person who, without the consent of the owner of the patent, manufactures or imports items protected by the patent or uses the patented process, shall be liable for the damages.

Compensation for damages due to the owner of the patent shall not only include the amount of the loss that he has suffered, but also the profits lost through infringement of his rights.

The owner of the patent may also require compensation for the damage suffered as a result of the loss of reputation of the patented invention caused by the person infringing his rights through defective manufacture or unsatisfactory presentation of the invention on the market.

Sweden

Remedies for patent infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by negligent or willful infringement. Costs and reasonable attorneys' fees can also be recoverable.

It is possible to file customs actions applications to prevent importation of infringing goods, as well as to obtain a court order for destruction of infringing products and equipment used in the manufacture thereof.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Switzerland

Available remedies for infringement include declaratory actions, actions for performance, damages, confiscation and destruction.

Actual damages can be monetary loss suffered by the patent owner, or profits gained by the infringer. Injunctive relief and publication of judgments are also possible remedies.

It is possible to seek the prevention of importation of infringing goods.

Criminal penalties are also possible.

Taiwan, China

  • Claim for damages and, in the case of willful infringement, damages up to three times proven damages
  • Request to stop or prevent infringement
  • Request for destruction of the infringing articles, materials and implements used in the infringing act
  • Apply to the Customs authorities for tentatively seizing the imported or exported articles that are suspected of infringing the patent right(s)

  • Request for restoration of the impaired reputation

Ukraine

The patent owner or an authorized person (eg, licensee) may seek the following remedies under Ukrainian law:

  • Termination of the infringement
  • Cancellation of the infringing patent
  • Reimbursement of damages, including loss of profit
  • Recognition of a right
  • Seizure of infringing goods
  • Prohibition of import and
  • Publication of the court decision on the case concerning IP rights infringement.

In addition, the Criminal Code of Ukraine dated April 5, 2001 provides for criminal liability for infringements of intellectual property right with regard to inventions and utility models.

United Arab Emirates

The Patent Law sets out four criminal acts relating to infringement:

  • Producing false documents to obtain a patent, utility certificate, know how or an industrial design or drawing registration
  • Declaring false information to obtain a patent, utility certificate or know how or an industrial design or drawing registration
  • Copying an invention, a process, an element of know how or an industrial design or drawing
  • Intentionally infringing any right protected by the Patent Law

A right holder or a licensee may apply for a precautionary attachment order ex parte to the urgent matters judge. The Patent Law gives the court the right to confiscate attached items but does not give the right to grant prohibitory injunctions (either on an interim or a final basis), which would order the defendant to stop the infringing acts. The claimant also has a right to claim damages in respect of the infringement.

United Kingdom

Remedies for infringement can include injunctions (or interdicts in Scotland), damages, an account of profits, an order for delivery up, seizure or destruction, as well as a declaration of validity and/or infringement. No statutory damages are available. The starting point for the damages calculation is generally a reasonable license fee.

It is also possible to prevent the import of infringing products.

The Patents Act provides an actionable right against those who make unjustified threats of patent infringement.

United States

The patent statute permits an award of damages in an amount adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs. Some awards may be a combination of lost profits and a reasonable royalty.

Treble damages up to three times actual damages are possible if the infringement is willful.

Failing to include appropriate patent marking can preclude recovery of damages for past infringement.

Injunctive relief is also a possible remedy.