Legislative Implementation of Flexibilities - Andorra

Title:	Article 35 of the Law on Patents of 10/06/1999
Field of IP:	Patents
Type of flexibility:	Criminal sanctions for patent infringement
Summary table:

Provisions of Law

Article 35 - Right to Bring Action; actions; procedure

(1) Violation of any right established by article 23 constitutes an infringement of the rights of the patent proprietor. Any infringement of the rights protected under this law, shall make the infringer liable to civil and/or criminal prosecution.

(2) The proprietor of a patent may institute the appropriate civil and/or criminal proceedings before the judicial authorities against any person who infringes his rights, in particular:

(a) to obtain an injunction ordering the infringer to cease and decease from actual and threatened use of the patented invention;

(b) to obtain an adequate compensation for damages;

(c) to obtain an order for the disposal outside the channels of commerce or the destruction without compensation, of infringing goods as well as of materials and implements, predominantly used for the creation of infringing goods or the making of the infringing process.

(3)

(a) Unless the license contract provides otherwise, any licensee may request the proprietor of the patent to institute Court proceedings for any infringement of the rights of the patent proprietor, who must specify the relief desired.

(b) Such licensee may, if he proves that the proprietor of the patent refused or failed to comply with the request within the period prescribed by the Implementing Regulations, institute such proceedings on his own behalf after notifying the proprietor of the patent of his intention. The proprietor of the patent shall have the right to join in the proceedings.

(c) Where before the expiry of the period referred to in subparagraph (b), the licensee proves that immediate action is necessary to avoid substantial harm, he may institute the proceedings mentioned in that subparagraph immediately.

(d) Any licensee shall be entitled to join in any proceedings instituted by the proprietor of the patent, in order to secure adequate relief for any injury suffered by him as a result of the infringement, without prejudice to the proceedings that such licensee may institute on his own.

(4) Unless a provisional measure has been applied for under article 37, infringement proceedings may be instituted only after such confirming evidence as referred to in Article 21 has been submitted to the Patent Office and, if required, the patent specification has been amended accordingly.

(5) Civil actions derived from the violation of the rights of a patent proprietor must be instituted within a period of five years from the date when the patent proprietor or, where appropriate, the licensee, has obtained knowledge of the infringement and of the identity of the alleged infringer.

(6) Proceedings concerning a patent application may be instituted only after a patent has been granted on that application.

(7) Where the subject-matter of the patent is a process for obtaining a new product, the same product when produced by any third party shall in the absence of proof to the contrary be deemed to have been obtained by the patented process. In the adduction of proof to the contrary in the course of legal proceedings, the Judicial Authority shall, after declaring that it its pertinent, proceed with the due caution to ensure the protection of the legitimate interests of the defendant in protecting his manufacturing and business secrets.

(8) The Judicial Authority shall order the loosing party to pay the winning party its legal costs, including appropriate counsel fees, unless the Judicial Authority considers the case as doubtful.