MACAU SAR Law and Practice Contributed by: João Nuno Riquito, Bruno Almeida, Bernice Kwok and Kimberley Cheong, Riquito Advogados
5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights Currently, there are no special procedural provi- sions for intellectual property rights proceedings. 5.2 Decision-Makers As intellectual property matters fall under the jurisdiction of civil courts, there are currently no technical or intellectual property-specialised judges in Macau. The parties have no influence on who is the decision-maker and trial by jury is not provided for in the law. However, as men- tioned in 3.6 Role of Experts and 3.8 Procedure for Third-Party Opinions , both the court and any of the parties may request that expert opinion or guidance be provided in regard to highly spe- cialised issues, for the purpose of which one or more experts will be appointed to deliver a report Provided they are in agreement, the parties may choose to settle their dispute at any time, before the judge or privately (in which case they must notify the court of the execution of the settle- ment and discontinue the proceedings). In any event, it is necessary for the judge to endorse the settlement by confirming each of the parties’ capacity to settle and the matter’s availability for settlement. As criminal prosecution regarding the infringe- ment of IP rights is of a public nature (ie, irre- spective of claim by respective title-holder), set- tlement between the parties does not entail the termination of related criminal proceedings. 5.4 Other Court Proceedings Two (or more) proceedings, including arbitra- tion, dealing with the same intellectual property and provide testimony. 5.3 Settling the Case
matters, cannot be held simultaneously within the jurisdiction of Macau SAR. Should the court receive notice of action with regard to an instance of pendency, the opposing party will be acquitted and tried in the proceedings where it was summoned first, although this acquittal is understood as a mere formality and not as res judicata.
6. Remedies 6.1 Remedies for the Patentee
In Macau SAR, the main remedies available to the patentee in an infringement lawsuit consist of search and seizure orders, restraining orders and other types of injunctions, plus damages. Upon receiving an injunction request, the judge has discretion to order different or additional injunctions. When it comes to damages, the patent holder must prove their existence, namely in the form of actual damages and loss of profits. If the defendant still does not comply with the remedies after the court decision becomes enforceable, the patentee can choose to initi- ate an enforcement procedure by petitioning the court to coercively enforce the judgment. 6.2 Rights of Prevailing Defendants A prevailing defendant (ie, where the court rejects the infringement claim) may be entitled to receive court fees and other expenses incurred during the case, which include lawyers’ fees (with limitations), costs of experts (if any) and court fees. Additionally, the defendant may also claim for compensation for damages should the court accept the defendant’s claim that the counter-
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