Traditionally, in civil law systems, all subjective rights can be subjected to the prohibition of AoR  [3] and a common concept of abuse is generally accepted, i.e. the exercise of a person’s rights in a manner which is unreasonable, with consequent harm to another, whether there was an intent or mere carelessness or indifference as to resulting harm (or not).  [4] The AoR principle is commonly understood as an instrument, which allows judges to find a remedy for an imbalanced situation and a tool for recovery of distorted exercises of a right.  [5] An abuse can be considered as a crossing of internal limits, revealing that despite adherence to formal and external limits by a right holder (the exercise is not illegal), the exercise of a right may be considered reprehensible (the exercise is considered illegitimate).  [6] The principle rejects a rigid adherence to the letter of the law in the evaluation of an individual exercise of rights. In light of the creativity of right holders and their ability to circumvent rules, the principle of AoR proves to be a necessary complement to the principle of formal legality.

Long considered as a realm where right holders benefit from the most absolute freedom of conduct, the theory of AoR nonetheless has its roots in the field of property law (Art. 544 of Belgian and French civil codes). The well-known Clement-Bayard case of the French Cour de cassation provides the most striking example of the application of the theory of AoR in the field of property law. Mr Coquerel had acquired a piece of land near the airship hangar of the Clement-Bayard Company. He built two tall wooden scaffoldings bristling with iron spikes, which made it difficult for airships to take off and land from the hangar. The Court ordered Mr Coquerel to pay damages and to remove the iron spikes. Although it may have seemed as if Art. 544 of the French civil code granted an absolute right to the property owner to do whatever he deemed fit on his piece of land; the Court held that he had abused his property rights, given his intention to cause damage.  [7] It was clearly established in this case that if property rights holders are entitled to extract the best of their rights, it is only under the conditions of a legitimate exercise.  [8]

In Belgium and France, the prohibition of AoR constitutes a jurisprudential construction built upon different provisions.  [9] The most common legal basis is Art. 1382 of their respective civil code for non-contractual (tortious) matter and its regime of liability with fault. This provision requires the fulfilment of three conditions in order for a right holder to be held liable for his actions. First, it is necessary to prove that the right holder is at fault. Second the victim of this fault must demonstrate that he/she suffered a harm. Finally, the fault must be at the origin of the harm suffered (i.e. the causal link). Belgian and French courts have developed a set of criteria in order to assess if a right has been abused and therefore demonstrate that a right holder is at “fault”. These jurisdictions have adopted a “mixed test” of abuse, based on both a subjective and an objective element; in other words, determining the intention of the right holder and an assessment of all the circumstances of the case.

Under Belgian case law  [10] an abuse is present if the limits of the normal exercise of a subjective right by a careful and cautious person placed in the same circumstances are manifestly exceeded (the generic criterion).  [11] To assist the judge in the determination of what constitutes a manifestly unreasonable exercise of a right, a non-exhaustive and alternative list of specific criteria has been developed.  [12]

A first criterion relates to a subjective element. Abuse will be considered to take place when the aim of the right holder is to harm third parties (the intention to harm criterion). A second criterion – sometimes perceived as including most of the specific criteria – is the proportionality criterion. There will be an abuse when, facing a choice between different ways of exercising his/her right, a right holder chooses the one which provides him/her a disproportionate benefit compared to the disadvantage inflicted on the other party. In such cases, judges operate a balance of interests - on the one hand, the advantage of the holder's right to such an exercise, and on the other hand, the damage sustained by third parties,. A third criterion relates to the interest of the right holder. Abuse will take place when a right holder exercises his right without legitimate or reasonable interest. A fourth criterion relates to the different ways of exercising a right. Abuse will occur when amongst the options equally beneficial to the right holder, he/she chooses the option that is the most disadvantageous to third parties or disregards the general interest. Finally, there will be an abuse whenever the exercise of a right goes against the purpose of this right (the right-function criterion). According to this criterion, it cannot be accepted that a right is exercised for a purpose other than the one which animated the legislature, and the notion of abuse is intrinsically linked to the idea of the existence of a social function of subjective rights.  [13]

Under French case law  [14] , there is no generic criterion as in Belgium. However, an abuse has to be characterised (“un abus caractérisé”). It is recognised that there will be a characterised abuse when a right holder does not act as a normally prudent and reasonable person would act in the same circumstances  [15] , which is fairly similar to the Belgian generic criterion.

Three – specific – criteria  [16] are generally used by courts to assess if a right has been abused, i.e. the intention to harm criterion  [17] , the proportionality criterion, and the right-function criterion.  [18] These criteria can be defined in the same manner as under Belgian case law. In the French doctrine, much ink has been spilled on the right-function criterion. According to this standard, and as explained above, the legislator has conferred rights upon individuals with specific social aims in mind and these aims should be respected by the right holder.  [19] All rights conferred by law are relative; they are only the means to achieve certain social objectives. It is necessary that the enforcement and exercise of rights stay compatible with such social functions. If they are exercised for other objectives or diverted from their legitimate functions, they can no longer be protected.  [20]

In both jurisdictions, the sanction of an abuse is not the forfeiture of the right which has been abused. Rather, it is only the exercise of this right which is limited to a proper use. The prohibition of AoR is rather considered as a “shield than a sword”  [21] : the sanction is there to remove the ability from the right holder to assert his right in a manner considered improper by a judge. The objective of the sanction is to re-establish the victim of abuse in a state as if the abuse did not occur. The sanction includes the possibility for allocation of damages  [22] . To obtain compensation for the harm suffered, a victim of the abuse must show that the conditions of Art. 1382 of the civil codes are met.  [23] Accordingly, he/she must demonstrate that the right holder was at fault (he/she abused his/her right), that he/she suffered harm, and that there exists a causal link between the fault and the harm suffered. To quantify such harm is generally difficult for the victim of abuse, therefore, courts frequently rely on an evaluation ex aequo et bono and grant a lump sum to compensate the harm suffered.  [24]

It is indisputable that exercising the right of access to justice  [25] , the right of defence, the right to sue, the right to appeal a decision, or the right to request protective measures from a court is not abusive per se.  [26] To take legal action does not, in itself, engage the liability of the litigant.  [27] Nonetheless, legal remedies are powerful means and they must be handled with care and in good faith.  [28] In that regard, litigants must avoid unnecessary expenses and ought to act in a diligent way, namely by taking into consideration the legitimate procedural interests of the other parties involved  [29] as well as the interests of the court itself.  [30] As any other right, procedural rights are not absolute and can be the object of legitimate limitations.  [31] Therefore, when litigants institute legal procedures – or persevere in a legal action – with the sole purpose of harming the defendant (the intention to harm criterion), in a disproportionate manner (the proportionality criterion) or with a particular objective not intended by the legislator (the right-function criterion)  [32] , it can become abusive.

Even though the assessment criteria are based on the general principle of the prohibition of AoR, the terminology adopted in the course of litigation to qualify an unacceptable procedural behaviour as an abuse varies. Courts refer to concepts such as “unfair procedural behaviour”  [33] or “using the procedure to manifestly slow down the litigation process”  [34] or “for unlawful purposes”  [35] . However, the prohibition of AoR is essentially referred to via the concepts of “frivolous/reckless and vexatious” litigation  [36] . Frivolous and reckless litigation means irresponsible or thoughtless litigation, or situations where a litigant institutes legal proceedings without worrying about the consequences or the risks involved for him- or herself or incurred to third parties.  [37] It can also be considered reckless for a litigant to introduce a claim which manifestly lacks sound reasoning.  [38] An action is considered vexatious when a litigant uses the procedure to (intentionally/maliciously) hinder or harm third parties.  [39] In short, there will be an AoR in the course of litigation when the right holder exercises his/her rights with either, the intention to harm or when he/she is inexcusably negligent, frivolous or indifferent to the consequences of this exercise.  [40]

According to Belgian case law, procedural abuse is entirely modelled on the general principle of the prohibition of AoR. Therefore, the generic and the specific criteria developed supra have to be assessed in the same manner in order to establish a procedural abuse.  [41] There will be a procedural abuse if the court is of the opinion that a party litigates in a manner that clearly goes beyond the limits of the normal exercise of his right by a cautious and careful litigant.  [42] It is worth noting that prior to 2003, the intention to harm criterion played a predominant role in the evaluation of AoR in the course of litigation. However, in a landmark decision regarding procedural abuses, the Belgian Cour de cassation/Hof van cassatie clarified that this criterion was not unique, and that manifest excesses in the exercise of a right can turn a procedure into a vexatious litigation  [43] .

Similarly to the 2003 decision of the Belgian Cour de cassation/Hof van cassatie, the French Cour de cassation has also declared that procedural abuse does not require an intentional element. Specifically, it was deemed sufficient to demonstrate that the right had been used for another purpose than its social goal  [44] or that the right holder acted with frivolousness  [45] .

There are essentially two types of sanctions for an abuse in the course of litigation: damages to the injured party  [46] and a civil fine  [47] . These two sanctions remedy two different effects of the abuse. The first compensates the injury caused to the litigant victim of the abuse, while the second corrects the harm caused to the judicial system. Specific provisions to remedy to this second effect of abuse exist in Belgian and French procedural codes (Code judiciaire/Gerechtelijk Wetboek and Code de procédure civile respectively). Art. 780bis of the Belgian judicial code and Art. 32-1 of the French code of civil procedure clearly stipulate that the party who uses judicial proceedings to clearly delay the procedure or for unlawful purposes (i.e. in a dilatory or abusive manner), shall be sentenced to a civil fine, without prejudice to other damages which could be claimed.  [48] The civil fine aims at compensating the fact that procedural abuse twists the judicial process and disrupts the good functioning of justice.  [49] The imposition of such a fine is part of the discretionary powers of the court  [50] and is limited to the amount provided by law.

As for the procedural costs involved in litigation, Belgium and France provide for a “loser-pay” rule  [51] , meaning that the losing party has to bear the procedural costs (i.e. judicial expenses and costs of the winning party). In addition, specific provisions exist for attorney’s fees. Art. 1022 of the Belgian judicial code provides for the allocation of a (fixed) recoverability of attorney’s fees  [52] , while Art. 700 of the new French code of civil procedure (CCP) allows for the recovery of costs not covered by the exhaustive list  [53] provided by Art. 695 CCP (les dépens). This covers expenses incurred during litigation such as attorney’s fees, expert opinions or other irrecoverable costs (les frais irrépétibles).  [54] In the assessment of these costs, judges can take into consideration all the circumstances of the case in order to grant an appropriate compensation (including the behaviour of the litigants).  [55] If under French law judges can decide in equity  [56] , under Belgian law the allocation cannot exceed the fixed minimum and maximum amounts  [57] .

Knowledge – The knowledge of a patent holder (or the fact that he/she should have known) regarding the invalidity  [66] of a patent and/or the lack of infringement  [67] , or even regarding other pieces of information considered crucial for a court, is a key element in the assessment of abuse. If it can be established that a patent holder had such knowledge but did not act in good faith, the patent holder can be held liable.

This type of abusive action is particularly well illustrated by a decision from the Paris District Court.  [68] In this case, the American electronic company TYCO argued that the French company TTK infringed two of its European patents regarding a method for detecting and obtaining information about changes in variables.  [69] Back in 1996, TYCO suspected that TTK violated its patents and engaged into various procedures for infringement. TTK claimed that the lawsuit had only been introduced to fuel a long-lasting dispute between competitors and that TYCO knew of the existence of a US patent application back in 1993, that would constitute prior art and invalidate its patent  [70] . Despite that knowledge, TYCO decided to advance with multiple proceedings and used all of the available mechanisms in order to delay these proceedings. TYCO did not show any willingness to reach a solution in this case, and adopted a procedural behaviour which slowed down the judicial process to the detriment of TTK. According to TTK, the combination of these actions demonstrated that TYCO was manifestly abusing its right to claim infringement. The Court invalidated both patents and rejected the claims for infringement. It also deemed it to be abusive to introduce this lawsuit, and to pursue this litigation by unfair means, since it was clear that TYCO’s actions had been driven by bad faith. The knowledge of the patent holder regarding the highly potential invalidity of its patent, and the bad faith adopted during litigation in order to unnecessarily prolong the procedure were deemed sufficient for the Court to hold the patent owner liable for abuse of the right to claim infringement.

Despite the fact that the knowledge of the patent holder represents a key element in the assessment of abuse, patent holders have also been excused in many cases.  [71] The difficulty in interpreting the scope of a patent led courts to rule that the patent holder could have misjudged or misinterpreted the scope of its rights and therefore could not be held liable for abuse. Moreover, courts also found that alleged infringers often failed to prove that the patent holder had such knowledge, either when introducing an infringement claim or during the litigation process. The burden of proof of such knowledge is particularly heavy on claimants of abuse.

In a controversial Belgian case  [72] , the Ghent District Court for Commercial Matters even dismissed the argument of abuse although the patent holder himself once claimed the invalidity of its own title. In this case, the Belgian company Lotus Bakeries (owner of a Belgian patent on a Speculoos spread  [73] ) was opposed to one of its competitors (the company Willems). Back in 2006, two individuals applied and obtained a Belgian patent on the Speculoos spread. Two years later, Lotus approached the patent owners and alleged that the patent was invalid. However, the claim of invalidity was withdrawn and Lotus obtained the exclusive rights on the Speculoos spread. After having obtained and enforced a seizure measure at the premises of two Belgian supermarkets, the patent holder filed an infringement action against its competitor. Willems considered this opportunistic from Lotus to now enforce the patent with panache and verve, as Lotus had once claimed its invalidity. The Court dismissed the argument of abuse and held that in light of the principle of freedom of trade, Lotus could decide to change its strategy. The Court ruled that it was the defendant’s decision not to commercialise its own Speculoos spread and that this decision had not been influenced by any allegedly aggressive scheme on the part of Lotus.

Intention to Harm – Although Belgian and French supreme courts declared that the “intention to harm” criterion was not unique  [74] , and that an abuse could be based on other criteria, it is clear from the cases analysed that the “intention to harm” still has a meaningful role to play in the assessment of abuse in the framework of patent litigation.

In 2014, the Paris Court of Appeal had to decide on a landmark case regarding the possibility of sanctioning a pharmaceutical company for abuse of rights. It all started in 2008 when Biogaran, a French pharmaceutical company specialised in generic drugs, obtained three marketing authorizations (MAs) for an anti-arthritic medicine. The German multinational Madaus Pharma was the holder of a European patent  [75] (EP414) on an anti-arthritic medicine. Laboratoire Medidom and Laboratoire Negma being its licensees. Madaus’ licensees, convinced that the generic drug was infringing EP414, put Biogaran on notice so that they would prevent the commercialisation of the generic by all means deemed necessary. Soon thereafter, Biogaran introduced an action for invalidity of claim 14 of EP414. In parallel, it started the commercialisation of its generic products. In light of this commercialisation, the licensees filed a request for preliminary injunctions. They obtained and enforced the preliminary injunctions (i.e. a ban on the commercialisation and distribution of the generic drugs and a call-back of the allegedly infringing products), but soon after, claim 14 of EP414 was declared invalid for lack of novelty and therefore the preliminary injunctions were withdrawn. In light of these decisions, Biogaran introduced a new action before the Paris District Court and notably claimed that the licensees should be liable on the basis of Art. 1382 of the civil code for dilatory manoeuvres and intention to harm. Biogaran argued that Laboratoire Medidom and Laboratoire Negma fraudulently and intentionally created a monopoly on the medicine at the expense of their competitors. Biogaran based its argumentation on various actions undertaken by two laboratories, such as, but not exclusively limited to; dilatory manoeuvres, blocking strategy for the commercialisation of generic medicines, manoeuvres against the grant of MAs by pressuring the administrative body in charge of the grant, unfair communication to pharmacists, multiplicity of litigation and delaying tactics. In first instance  [76] , the Court rejected the claim, and held that the licensees merely used all the legal procedural tools at their disposal and did not adopt an unfair behaviour.

The Paris Court of Appeal  [77] adopted a very different position concerning the abuse argument. The Court identified the fact that the licensees intervened before the French agency delivering marketing authorization in order to delay the grant of MAs as essential to the assessment of abuse. Although Laboratoire Negma’s claim as an exclusive licensee was doubtful, Laboratoire Medidom nonetheless proceeded with multiple administrative actions in order to delay the resolution of this dispute. More than twenty judicial decisions were handed down between the claimants. False or inaccurate notice letters were sent to pharmacists in order to discredit Biogaran’s products. According to the Court, it was the combination of these actions and the manipulation of the legal process, which amounted to an abuse of rights and caused patrimonial and reputational damages to Biogaran. The Court held that the licensees were liable under Art. 1382 of the civil code and had to compensate Biogaran for commercial harm of EUR 3.500.000 as well as for reputational harm of EUR 150.000.

As with the difficulty to prove the knowledge of the patent holder, it is quite clear from the cases analysed that, for the argument of abuse to succeed, it is necessary to demonstrate a manifest intention to harm or to clearly objectify this intention by relying on the particular circumstances of the case.

Unfair Competition Practices – In many cases, the arguments of abuse and unfair competition were intertwined.  [78] Although courts appeared to be more comfortable with sanctioning a patent holder on grounds of unfair competition practices than on grounds of abuse of rights, actions considered as unfair competition practices have occasionally been subsumed under the umbrella of the prohibition of AoR and essentially covered three types of potentially harmful actions.

Denigration Campaign – First, a patent holder has to be careful when providing information related to an infringement claim to third parties (e.g. customers of the alleged infringer or public officials),  [79] and must avoid entering into a denigration campaign. The terms of the notice must be objective, prudent and carefully weighed and the patent holder must comply with the general duty of good conduct vis-à-vis its competitors  [80] . The notice can be considered abusive when delivered with a clear intention to harm the suppliers or customers of an alleged infringer  [81] , or in cases where an immoderate notice negatively affects a commercial relationship established between an alleged infringer and third parties.  [82]

Disorganisation of the Market or Internal Disorganisation of a Competitor – Second, the impact of a patent holder’s misconduct on the market has been scrutinised and taken into consideration for the assessment of abuse, in particular where the misconduct led to the disorganisation of the market or the internal disorganisation of a competitor business.  [83]

This can be illustrated by the following case. The English biomedical research charity Wellcome Foundation was the holder of a supplementary protection certificate (SPC) on the molecule acyclovir. It developed and commercialised its product VALTREX on the basis of this molecule. In 1997, it requested from Flamel, a French specialty pharmaceutical company, to stop its on-going clinical trials on the GENVIR, an allegedly infringing product. Wellcome introduced an infringement action. Flamel claimed that Wellcome adopted a malicious strategy, including fictitious negotiations, abusive seizures and procedures, and unfair competition practices. The overall scheme aimed at preventing Flamel from entering the market with its competitive product. The Paris District Court  [84] argued that the introduction of an infringement action could not be abusive in itself. However, if the goal of the right holder in introducing such action is not to safeguard its rights but to eliminate or block a competitor from the market, it could be considered abusive. The Court analysed all the circumstances of the case  [85] and concluded that Wellcome had a malicious intent and adopted an abusive behaviour. The Court concluded that since Wellcome knew these rights were not infringed upon, the seizure measures and the infringement action did not aim at safeguarding the rights derived from the SPC, but only intended to delay the entry on the market of a competitive product. As for the fictitious negotiations, the Court held that Wellcome relied on Flamel’s belief that it was the best possible partner to develop the GENVIR to enter into such negotiations and unfairly obtain information about the development of the said product. Therefore, the Court held that Wellcome was liable, not only because it entered into fictitious negotiations with a potential competitor, but also because it developed an abusive scheme in order to delay the entry in the market of a competitive product.

In most instances involving such market oriented analysis, courts focused on the aim pursued by the patent holder when initiating an infringement action. If the objective of the right holder was not to safeguard its rights but to eliminate or block a potential competitor from entering (or expanding in) the market, courts held that the patent holder abused its rights and/or was liable for unfair competition practices. By focusing on the distortion of the objective of an infringement action, courts seem to be particularly attentive to the general “right-function” criterion of the principle of the prohibition of AoR.  [86]

Threats and Pressure – Thirdly, occasionally, patent holders have used their exclusive rights to intimidate and pressure not only the alleged infringer but also third parties.  [87] For example, in 2007, the Brussels Court of Appeal compensated an alleged infringer for the abusive exercise of its rights by a patent holder not only because of its bad faith, and the denigration campaign it undertook, but also because of the threats and pressures it inflicted on the alleged infringer and its resellers. In parallel to the infringement action, the patent holder reached out to resellers and potential clients of the alleged infringer, affirming patent infringement, spreading rumours and threatening these third parties with potential complicity in patent infringement. These actions led to a significant drop in the alleged infringer’s sales although the lawsuit was only in an initial phase. The Court  [88] decided to hold the patent holder liable for its misconduct in light of the bad faith, the “free wickedness”, and the relentlessness of the patent holder.

In the majority of cases, the knowledge and/or intention of the patent holder and unfair competition practices have not been analysed independently. As pointed out earlier, the proof of a specific knowledge and/or an intention to harm is cumbersome. Evidence of unfair competition practices introduces a more tangible or objective element to the assessment of the case. It provides more room to manoeuvre for judges seeking to sanction a patent holder for abuse of rights.

This combination was at the heart of a 2003 French Supreme Court case.  [89] The company Neptune (and its manufacturer and reseller Cuisimer) held a French patent on a process for the manufacturing of surimi.  [90] Suspicious of patent infringement and unfair competition practices by its competitor (Fleury Michon) Neptune and Cuisimer brought an action before the Paris District Court. At first instance, the Court rejected the claim of infringement and awarded damages to Fleury Michon for abuse of rights.  [91] On appeal, the Paris Court of Appeal  [92] confirmed that Neptune and Cuisimer were liable for abuse of their right to introduce an infringement action, as well as their right to introduce an unfair competition claim. In last resort, the French Supreme Court confirmed the decision of the Court of Appeal which held that, in light of the state of the art and the specific market in which the parties were involved as competitors, it was manifestly abusive for a patent holder to enforce a patent for which he/she could not have misunderstood, in good faith, the extent of its scope (i.e. the knowledge of the patent holder). Therefore, a patent holder could not have initiated an infringement action when he/she knew, or should have known, that its patent was actually not infringed upon. To do so could only have been explained by the intention to intimidate a competitor and to drive them out of the market (i.e. unfair competition practices).

Disproportionate Damages – A particular case falling within the scope of general misconduct focuses on the adequate compensation in case of established infringement. In principle, a patent holder has the right to obtain compensation for the harm suffered, however, this compensation must be proportionate.

This type of misconduct has been recognised in 2013 by the Mons Court of Appeal. In 2009, a patent holder (the plaintiff) entered into license negotiations with a competitor (the defendant) for the commercialisation of a gardening tool, the “Rigolet”. Together, they presented the invention to the press and during trade fairs. The defendant even created a company for the manufacture, production, and commercialization of the patented product, and made important investments regarding the development of the product. However, a conflict arose between the parties. The plaintiff requested and obtained a descriptive seizure as well as a preliminary injunction to stop the commercialisation of the “Rigolet”. The defendant immediately complied with this order. During the procedure on the merits, the plaintiff claimed damages for infringement. The Court  [93] declared that the plaintiff’s claim for damages was disproportionate to the harm caused to the defendant, considering the investments made to produce and commercialise the patented product. In light of the history of the parties (i.e. presentation to the press and trade fairs, negotiation phase) and the immediate stop on commercialisation, it was considered that the plaintiff acted without legitimate motive and did not exercise its right as a prudent and diligent right holder. The Court decided that it was abusive for the patent holder to seek such a disproportionate amount of damages, notably because during negotiations the patent holder had encouraged the commercialisation of the infringed goods, but also because the infringement actions had only led to a minimal benefit for the alleged infringer.

In this case, the criterion of proportionality played a crucial role in the establishment of abuse. The court balanced the interests of the parties in light of all the circumstances of the case and considered that it would have been abusive to allocate a disproportionate amount of damages to the patent holder. In the majority of cases, the criterion of proportionality is less clearly distinguishable. This could be explained by the fact that patent litigation traditionally focuses on two essential questions, i.e. the validity of the title and infringement.  [94] During the evaluation of infringement, patent holders are in a stronger position due to their exclusive right and the presumption of validity of their title. However, once the question of infringement is answered in the following phase, which consists in the evaluation of damages, parties are more or less reinstated in a situation of equality. This situation requires judges to weigh the interests of the parties involved in the process and to reach an outcome considered as proportionate., Considering the harm suffered by the patent holder but also the benefits made by the infringer, a patent holder claiming a disproportionate amount of damages can be held liable for abuse of rights.

Initiating the Procedure – The exercise of the right to exclude third parties, i.e. the right to claim infringement, represents a fundamental mechanism of protection for patent holders.  [95] An infringement action can only be brought by (a) a plaintiff with appropriate grounds to sue (b) derived from the patent in suit and (c) against the proper defendant who is alleged to have infringed such patent.  [96] To initiate an infringement procedure while knowing that one or more of these prerequisites are not met, led courts to conclude that a patent holder abused his/her rights. The “knowledge” of the patent holder  [97] on one or more of these three prerequisites was particularly decisive when enquiring potential abuses in the introduction of an instance.

Plaintiff with Proper Standing – For instance, the Paris Court of Appeal  [98] , found that it was abusive for an (ex) exclusive licensee to, not only initiate a claim for infringement, but also to have seizure measures performed at the premises of one of the alleged violators, when the exclusive licensee knew he/she did not bbenefit from this value any longer.  [99]

Patent(s) in Suit – For example, it has been considered abusive for a patent holder to claim infringement of titles known to be part of the public domain,  [100] or to introduce a claim for infringement when the patent holder relied on different patents (or different patent claims) during different proceedings but against the same alleged infringer and for the same claim of infringement.  [101] The latter can also be considered a judicial harassment technique.

The role played by the patent(s) in suit on the appreciation of abuse was notably at the heart of the 2012 UVP v. Telenet  [102] case. In this case, the Belgian cable broadband provider Telenet developed a multimedia platform (Yelo) which allows digital TV users to watch programs on TV and mobile devices. The American company United Video Properties Inc. (UVP) and its affiliated companies (jointly called ROVI) alleged that Yelo was infringing upon its European patent regarding an interactive television program guide system having multiple devices within a household.  [103] Despite multiple requests from Telenet to obtain more information on the potentially infringed patents, ROVI constantly refused to provide such information. It also refused to provide information regarding the actual acts of infringement. It only provided a list of more than 100 patents and patent applications and argued that it was for Telenet to identify the relevant patents for its defence in court. Telenet repeatedly asked for more information and indicated to ROVI its intention to advance the matter amicably. ROVI only responded that it would be more expensive for Telenet to contract individual licenses for the infringed patents than to opt for a general license on ROVI’s portfolio. In light of these circumstances, the President of the Antwerp District Court for Commercial Matters held that ROVI abused its rights in serving a summons for infringement to Telenet without specifying the relevant patents infringed upon. The President highlighted the importance of the determination of the scope of the invoked patent by its holder in the event of an infringement action. It stressed that if the patent holder decided to serve a notice letter to an alleged infringer, it had to specify which patents were actually infringed upon. The lack of precision regarding the identification of the claims infringed on, although repeatedly requested by the alleged infringer, played a decisive role in the qualification of abuse.

This case also illustrates why “unfair competition practices” have been included in the general misconduct section.  [104] Although the actions taken by the patent holder related to the mandatory procedural requirements of properly introducing an infringement claim, the President of the District Court took the view that the argument based on AoR was actually merged with the argument of unfair market practice and the general standard of good faith in the market.  [105] The President concluded that if ROVI had an exclusive right to exclude third parties, this right came with responsibilities and had to be exercised with caution. To merely refer to various patents without specifying which patents were actually infringed upon and which actions were constitutive of patent infringement, especially when the alleged infringer sought clarification on this point, amounted to an AoR and therefore an act of unfair competition.  [106]

Proper Defendant/Alleged Infringer  [107] – For instance in 2008, the Paris District Court  [108] held that since the patent holder knew (or at least should have known) that the alleged infringer had no commercial activity in the French market, the latter could not be considered as an importer and therefore could not be considered an alleged infringer  [109] . The patent holder knew (or at least should have known) that its claim for infringement could not succeed. To lock the alleged infringer in a procedure, despite such knowledge, was manifestly an abuse of rights.

Judicial Harassment and (Unnecessarily) Lenghty Procedure – Initiating redundant and unnecessary procedures or unduly prolonging the procedures against the same defendants for the same infringement claim and on the basis of the same patent (or the same patent claims) can constitute a fault leading to the liability of the patent holder on the basis of the prohibition of AoR.  [110]

Right to Appeal – If the exercise of the right to initiate an infringement claim can turn into an abuse, the exercise of the right to appeal a decision may as well be considered abusive. Occasionally, courts considered it abusive to appeal a decision which was particularly well substantiated and sufficiently clear for the patent holder. A reasonable and prudent litigant must evaluate its chances of success properly before appealing a decision.  [111] Rushing to an appeal procedure without thoroughly evaluating the circumstances of the case or in order to unduly prolong a dispute can turn result in an abuse. However, and more frequently, courts concluded that even if a patent had been invalidated in first instance, to appeal this decision could not be considered an abuse since the invalidity decision was detrimental to the holder and therefore justified its interest in appealing this particular case.  [112]

Belgian  [113] and French law  [114] provide efficient mechanisms for patent holders to fully enforce their right to exclude third parties. The provisions related to seizure measures are perceived – beyond national boundaries – as being particularly useful.  [115] Even before the adoption of the Enforcement Directive, Belgium and France were known for their provisions on saisie-description or saisie-contrefaçon.  [116] Certain conditions must be met in order for a patent holder to obtain seizure rights. However and despite these conditions governing the grant of the measures, abuses remain possible. In particular regarding the way in which patent holders actually enforce the seizure once obtained.

Diverted Purpose – With regard to the grant or the enforcement of seizure measures, it is worth mentioning that the “right-function” criterion  [117] played an essential role in the assessment of claims of abuse. The aim of seizure measures is evidentiary;  [118] it is to obtain elements to prove the existence, origin, destination and scope of the alleged infringement. Seizures can not aim at being “fishing expeditions” or performing industrial espionage.  [119] To enforce such measures as a way to obtain confidential information, or to unduly exploit such information from a competitor has sometimes been declared abusive.  [120] In addition, to divert the evidentiary purpose of these measures and to use these enforcement mechanisms to throw public discredit on the reputation of an alleged infringer has also been considered abusive.

In a landmark case, the French Supreme Court heavily sanctioned a patent holder who used the seizure procedure to conduct a fishing expedition rather than to gather evidence of infringement in a fair manner. In this case, the Swiss company Vetrotech Saint Gobain was the holder of a European patent  [121] on a light-transparent heat-protection element. In 2006, it suspected that its French competitor Interver was infringing its patent by making and selling glazing in France. Vetrotech obtained and enforced various seizure measures followed by the introduction of an infringement action regarding the French tier of its European patent. In first instance, the Paris District Court  [122] found that Vetrotech had enforced the seizures under very unusual circumstances. Three patent attorneys were present during the seizure and the bailiff had a list of 24 specific questions to address to the alleged infringer. In light of these facts, the Court partially offset the minute of the seizures since the latter was closer to a fishing expedition than a proper means to obtain evidence of infringement. After an assessment of the allegedly infringing products via the minute of the seizure, it was clear for the Court that Vetrotech had the necessary and sufficient elements to recognise that Interver’s technology was actually not infringing the patent invoked. The non-infringement also stemmed from Vetrotech’s own analysis and reports. This set of facts led Interver to claim that the patent holder abused its rights. In first instance, the Court ruled that both the seizure measures and the actual infringement action were abusive and that the commercial harm inflicted upon Interver should be repaired. Vetrotech appealed this decision but the Paris Court of Appeal  [123] confirmed the judgement of first instance. Vetrotech lodged an appeal in cassation. The French Supreme Court  [124] held that the decisions on abuse were legally justified by the fact that Vetrotech obtained undue information on the manufacturing process of a direct competitor and that the seizure had served as an excuse to conduct illegal investigations. This was considered sufficient to characterise a fault on the part of Vetrotech and to sustain that the lower courts did not err in law.

(Unnecessary) Multiplication of Seizures and Place of Enforcement – Next to the diversion of the evidentiary objective of seizure measures, the unnecessary multiplication of seizures as well as the place of enforcement of such invasive enforcement mechanisms have also played a significant role in the assessment of abuse in patent litigation.  [125]

With regard to the number of seizures, the Paris District Court  [126] held a patent holder liable for abuse when, following a first seizure at the premises of the alleged infringer which provided him with sufficient elements to prove infringement, it multiplied the number of seizures, in particular at the place of business of a subsidiary of the alleged infringer as well as at the premises of one of the alleged infringer clients. The patent holder should have proceeded with more caution when enforcing these measures and should have refrained from multiplying the number of such unnecessary seizures.

As for the place of enforcement, a patent holder has the right to have a seizure enforced at any place deemed necessary to prove infringement.  [127] The measure allows for a surprise inspection at the domicile or business premises of a competitor  [128] , but also at the show booth during a public trade fair. However, it appears from the cases  [129] analysed that the place chosen by the patent holder for the enforcement of a seizure led courts to consider this exercise abusive. For example, if the patent holder already identified the alleged infringer but decided to have seizures conducted at different premises (e.g. that of customers); if the patent holder already had seizure measures conducted at different premises and were sufficient to gather elements of proof; or if the place of enforcement had been chosen to publicly “humiliate” the alleged infringer.

It should be noted that unfair competition practices and the knowledge or the intention to harm on the behalf of the patent holder have played a crucial role in the final determination of an “abusive scheme” including misconduct in the enforcement of seizure measures. To enforce seizure measures can amount to unfair competition practices either with the intention of pressuring a competitor’s client or seeking to harm the reputation of the alleged infringer. They can also lead to the disorganisation of a group of competitors. However, courts have regularly excused patent holders on the grounds of a legitimate mistake.

The right to obtain and enforce (preliminary) injunctions can be of inestimable value for a patent holder.  [130] Similar to the wrongful enforcement of seizure measures, harm arising from wrongful enforcement of (preliminary) injunctions has occasionally been remedied via the application of the prohibition of AoR. Noticeably, it is in the framework of patent litigation in the pharmaceutical sector that the argument of abusive (preliminary) injunctions has been predominantly raised.

This was the case during one dispute between the Israeli company Medinol Ltd., and the American group Jonhson & Johnson, before the President of the Brussels District Court for Commercial Matters  [131] . Medinol was the holder of a divisional European patent  [132] (EP450) which was split off from another European patent  [133] (EP856) which had been revoked at the EPO in March 2004. Before the revocation of EP856, Medinol already entered into numerous litigations across Europe  [134] . However, given the invalidity of EP856, Medinol started to launch proceedings on the basis of EP450.  [135] In this case, Medinol attempted to obtain a preliminary (cross-border) injunction against Johnson & Johnson. The President held that Medinol’s behaviour was inconsistent with the requirement of urgency and the multiple legal actions did not reflect the general principles of patent law. EP450 did not add anything to EP856 and it was considered that the multiple patents were confusing.  [136] Medinol essentially attempted to keep its competitors “on the hook” as long as possible by initiating various legal proceedings across Europe on the basis of a divisional patent,  [137] although the parent patent had been revoked at the EPO. In light of these circumstances, the President declared that the patent holder abused its rights to exclude third parties through the grant of a preliminary (cross-border) injunction in a summary proceeding.

In a second Belgian pharmaceutical case, the German company Merck was opposed to the English company GSK. GSK held a European patent on the anti-depressant “Paxil”. At the time of the procedure, this patent had lapsed in most countries where it was validated, including Belgium. GSK obtained a new term of protection due to the grant of another European patent (EP403).  [138] In 2002, Merck announced it would start commercialising its own anti-depressant. In light of this up-coming commercialisation, GSK initiated an infringement action and requested an injunction. Merck petitioned that the principle of “reasonableness and fairness” should be taken into consideration when assessing the necessity of an injunction, in particular considering the public interest. The Brussels judge  [139] recognised that the injunction would have profound repercussions on the company’s business and that, although judges deciding on the grant of an injunction have wide discretion when deciding upon such measures, they nonetheless have to take into consideration the interests of the various parties involved. On the one hand, the company, which will have to suffer the consequences of the injunction will not be able to sell its product for the duration of the preliminary order. On the other hand, in case of infringing products, to deny the injunction could cause significant harm to the patent holder. In the particular case of “generic-originator” pharmaceutical dispute, the court must take into account the benefits for the public interest of cheaper generic drugs, and the financial cost of R&D suffered by the patent holder. In first instance, the Brussels judge granted the preliminary injunction, and argued that it would be more harmful to the patent holder to deny such a measure than it would be harmful for the defendant not to be able to sell its product for a certain period. However, the Brussels Court of Appeal reversed this decision.  [140] It held that there was a strong implication that the second patent (EP403) provided for a second period of protection on the original product and did not protect a new product. The Court declared that the interest of the patent holder, who attempted to obtain an extended period of protection beyond the one intended by the legislator, could not prevail over the interest of the defendant who invoked the expiry of the legal period of protection. The injunctions were therefore revoked.

These cases present two similarities. First, judges in charge of granting a (preliminary) injunction did take the interest of the parties into account before granting such a measure. In the pharmaceutical sector, and specifically in litigation between an originator and a generic company, judges held that the impact of the measure on the public interest contributed greatly to the proportionality exercise.  [141] This balancing test could have been considered as an illustration of the “proportionality criterion”  [142] used to determine if a right holder abuses its rights. However, in the framework of a (preliminary) injunction, the balance is performed ex ante and is statutory. In the cases at hand, the prohibition of AoR only arose once the injunctive measures were granted, i.e. ex post. It served as a mitigating mechanism for the over-enforcement of injunctions by patent holders. Second, the decisions of abuse were based on the fact that patent holders aimed at illegitimately extending the scope of their patents beyond what had been conceived by the legislator. Patent holders obtained a patent on a product which had already been patented and for which the term of protection had expired. By focusing on the aim of the patent holder, which was in contradiction with the general principles of patent law, the “right-function” criterion was directly involved. Moreover, the intention to harm potential or actual competitors in the market by relying on such a title was highly influential in recognising an abuse. These cases demonstrate once again how to substantiate a claim of abuse by relying on multiple misconducts; the “intention to harm”, potential “unfair competition practices” and to base a claim on an “irregular patent”.

The prohibition of AoR requires judges to analyse all the circumstances of the case. Therefore, the conduct of a patent holder before administrative bodies such as patent offices (national  [143] or the EPO) or authorities granting marketing authorisation (in the pharmaceutical sector) has also been taken into account in the assessment of abuse in patent litigation.

For example, in one of the cases analysed, the Paris District Court  [144] scrutinised the attitude of the patent holder during the EPO opposition procedure. In particular, the knowledge of the patent holder regarding the exact extent of its rights. The Court held that if the plaintiff amended its claims during the opposition procedure, it was solely to have the defendant’s product fall within the scope of its patent. It was manifest that the patent application and its amendments aimed to obtain a monopoly detrimental to the activities of a competitor and did not aim to develop the patent holder’s own activity. In light of these elements, the Court ruled that the patent holder was liable on the basis of Art. 1382 of the French civil code.

Notably, an interesting aspect of this case lies in the fact that what has been taken into consideration for the establishment of an abusive scheme, was the attempt from the patent holder to obtain a monopoly and block competition instead of developing its own activity. Connections with the “right-function” criterion of abuse can be established considering the goals of patent law. Patents represent incentive to innovate, encompassing the promotion of the development of products and services for consumers. In this case, the patent holder did not use its rights in order to fulfil this particular purpose of the law. This diversion led the Court to conclude an abuse on behalf of the patent holder. Another noteworthy aspect relates to the fact that, once again, importance has been given to unfair competition practices, the specific knowledge of the patent holder, or its intention to harm.

At this stage of the paper it is important to emphasize that it is the combination of various misconducts that guide courts towards ruling patent holders liable for abuse. It is the elaboration of an “abusive scheme” encompassing numerous misconducts which lead to a sanction. When taken separately, the misconducts highlighted above are rarely considered sufficient to substantiate a claim of abuse. For instance,  [145] it is not solely because a patent holder enforces a seizure at the premises of a client of an alleged infringer rather than at the alleged infringer’s place of business, that a court will rule that the seizure is abusive. However, a court could conclude that a patent holder is liable for abuse of rights if combined with actions such as: introducing an infringement action solely on the basis of the minutes of the bailiff, which are not clear on the question of infringement; not requesting nor enforcing any physical seizure; accessing and obtaining information non-related to the infringement proceeding from a competitor etc. After reviewing the different cases, it can be said that the misconducts identified as “the knowledge” of the patent holder, its “intention to harm”, and objective “unfair competition practices” are the dominant actions leading courts to declare that a patent holder developed an “abusive scheme” and holding them liable on the basis of Art. 1382 of the respective civil codes.