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CMS European Patents Review April 2008 Introduction

Welcome to the 2008 edition of the CMS European Patents Review. Our offices across Europe have collaborated to bring you a summary of major developments in patent law from around Europe from 2007. This year we have expanded our coverage to include jurisdictions in Central and Eastern Europe.

We begin with an overview of some significant decisions rendered by the European Patent Office (“EPO”) and the European Court of Justice (“ECJ”), before considering more specific developments on a country-by-country basis.

CMS is the organisation of independent European law and tax firms of choice for organisations based in, or looking to move into, Europe. CMS provides a deep local understanding of legal, tax and business issues and delivers client-focused services through a joint strategy executed locally across 31 jurisdictions with 59 offices in Western and Central Europe and beyond. Key qualities of utmost interest to our clients and which differentiate us from our competitors include: Hands-on and detailed knowledge and experience in patent litigation, commercialisation and counselling, including freedom to operate and validity opinions and patent due diligence on corporate transactions. Focused, proactive and solution-oriented approach to our clients and their business needs. Extensive coverage across Europe and beyond with patent attorneys delivering specific, consistently high-quality local knowledge and expertise. Contents

EPO and ECJ decisions 04

Austria 10

Belgium 13

Bulgaria 16

Czech Republic 19

England and Wales 20

France 29

Germany 31

Italy 36

The Netherlands 38

Poland 40

Russia 42

Spain 45

Switzerland 50

CMS European Patents Review – 3 EPO and ECJ decisions

The European Patent Convention and EPC 2000

The European Patent Convention which provides that a simpler claim has recently been extensively revised. for the substance limited to EPC 2000 came into force on 13 the new medical use may be used. December 2007. It has made a number of procedural changes, Art. 69 of the EPC has always including the introduction of an provided that the scope of a patent additional procedure for amending shall be determined by its claims, European patents centrally at the with the description and drawings European Patent Office so that the used to interpret the claims. The amendment will be effective in each Protocol on the interpretation of of the designated states. Article 69 previously stated that claims should not be literally inter- EPC 2000 has also made some preted, nor used only as guidance, significant amendments to the but that interpretation should fall substantive law. Two highlights are somewhere between these extremes. the changes to second medical use Now, a new provision has been claims and the amendments to added to the Protocol that provides the Protocol on the Interpretation that due account shall be taken of of Article 69. any element which is equivalent to an element of the claims. In the past, claims for a second medical use of a chemical compound A doctrine of equivalents was have had to be claimed in the form specifically rejected by the House “Substance X, for use in the of Lords in the UK’s leading case on manufacture of a medicament for patent construction, Kirin-Amgen v use in the treatment of disease Y” Hoechst and Transkaryotic Therapies in order to avoid falling foul of the (2004), so this amendment to the requirement for novelty in a patent EPC has the potential to lead to or the prohibition on claims for further divergence in the policy of methods of treatment. This form of the UK courts and that of the EPO. claim was known as the Swiss claim, The House of Lords considered that a as it was the Swiss patent office that doctrine of equivalents would leave first approved this format. EPC 2000 too much uncertainty in determining has specifically removed the require- the scope of protection granted by a ment to claim second medical uses in patent. this form with the new Article 54(5),

CMS European Patents Review – 4 The London Agreement A new agreement between Nick Beckett A key cost of prosecuting a members of the European Patent Partner, London European patent is that of Organisation is set to change the +44 20 7367 2490 translation. Article 65 EPC provides way in which Article 65 is applied, [email protected] that, once a European patent has and hopefully reduce the costs been granted by the EPO in one of associated with translation. The Stuart Helmer the official languages (French, signatory states to the London Associate, London German or English), the applicant Agreement have agreed to waive +44 20 7367 2687 must translate it into the national the requirements of Article 65 in [email protected] languages of all countries where relation to their language. The the patent is to come into force. London Agreement has now been This is very expensive. ratified by a sufficient number of countries to enable it to come into effect. It is expected to come into force on 1 May 2008.

New proposals for European patent litigation

With progress currently stalled on voluntary and open to all signato- a Community patent, there are ries to the EPC. Once implemented, currently several proposals under the EPLA would create a European consideration whose objective is Patent Court, staffed by specialist to harmonise patent litigation patent judges. The court would deal throughout Europe. with cases passed to it from regional first instance divisions Currently patent owners must in each Member State. enforce their rights in the separate national courts. This presents Not all signatories of the EPC are numerous problems, not least the members of the EU, and the uncertainty that a patent may be intention is that the European found to be valid, or infringed, in Patent Court would exist outside one jurisdiction but not in another. of the EU legal framework. This is perhaps the main reason why the One of the harmonising proposals, proposal has suffered a number of the draft European Patent Litigation setbacks. Although supported by Agreement (EPLA), aims to solve many European patent judges, the these problems by harmonising European Commission has opposed patent litigation across Europe. it. The Commission does not deem Uptake of the EPLA would be it an appropriate solution to the

CMS European Patents Review – 5 existing problems and cites the legal and validity. The local divisions to review either by the central difficulties of Member States would deal with infringement cases division or by members of a submitting to the jurisdiction of unless the parties agreed to refer specialist pool of patent judges to courts that are not subject to the them to the central division. The be established for this purpose. EU’s legal framework. central division would hear claims for revocation. Where a defendant The approach to language is a The second proposal comes from counter-claims for invalidity, the compromise, with proceedings the Portuguese Government, which local division, having considered the at Member State level being held the European Union presidency facts and concluded that the patent conducted in the native language during the second half of 2007, in should be revoked, would be able (subject to express agreement the form of a ‘non-paper’ setting to refer the case to the central otherwise between the parties). out features of a unified European division. This creates the possibility The central division would use the patent litigation system. of infringement and validity issues language of the patent itself. being heard in different courts. Among the key differences This approach is standard in some Finally, the Portuguese proposals on between the Portuguese proposal Member States, such as Germany, patent litigation are accompanied and the EPLA approach is that the but in jurisdictions such as England by an even more ambitious plan Portuguese proposal is for a and Wales, where infringement and to revive the Community Patent Community-based framework, with validity are almost always heard project. However, it remains to decisions subject to review by the together, there may be concern that be seen whether any of these ECJ. However, in other respects the patentees will be able to construe proposals will be more successful proposal includes many features their patents differently depending than any of their predecessors. similar to those suggested by the on the division in which they are EPLA. In particular, it features a first appearing. instance court with local divisions Nick Beckett based in Member States, together However, the current proposals Partner, London with a central division. There would appear to have addressed concerns +44 20 7367 2490 also be a second instance court to arising out of an earlier draft that [email protected] deal with appeals of judgments relatively inexperienced local from first instance decisions. divisions would be able to make Stuart Helmer decisions on the validity of patents Associate, London One controversial point is the throughout the EU, by providing +44 20 7367 2687 allocation of cases on infringement that such decisions shall be subject [email protected]

CMS European Patents Review – 6 EU Member States free to apply TRIPS directly

The ECJ has ruled that EU member Facts states are free to decide whether Merck & Co. Inc. owned a to apply the provisions of the Portuguese process patent for Trade-Related Aspects of Intellectual preparing a pharmaceutical Property Rights Agreement (TRIPS) compound containing the active directly, provided that doing so substance enalapril. The patent was does not give rise to a conflict with filed on 4 December 1979, granted Community law. on 8 April 1981, and used to produce Merck & Co.’s branded Background product Renitec from 1985. Article 33 of TRIPS (an annex to the 1994 Agreement establishing the In 1996, during the transition World Trade Organisation, which period before the 20-year patent came into force on 1 January 1995) term under TRIPS was in place, provides that the term of patent Merck Genéricos launched a gener- protection must not end before the ic enalapril product which it claimed expiry of 20 years from the filing was effectively the same product as date. Renitec. In the same year, Merck & Co. and Merck Sharp & Dohme Ldª Prior to 1 June 1995, the (who had been granted a right to Portuguese patents code provided exploit the patent) brought an that patents lasted for 15 years action against Merck Genéricos, from the date of issue. In who argued that the period of 15 September 1996, a transitional years of patent protection provided provision that patents resulting for by the old Portuguese law had from applications filed before expired in April 1996. Merck & Co. 1 June 1995 would only last for and Merck Sharp & Dohme Ldª dis- the previous 15-year period was agreed and sued for infringement repealed, without retrospective on the basis that under Article 33 effect. It was replaced by a the patent term would not have provision that patent applications expired until 4 December 1999. filed before the entry into force of the 1995 law and valid on, or The question referred to the ECJ issued after, 1 January 1996 would was whether the national court had also be valid for 20 years from jurisdiction to interpret Article 33 of the filing date. TRIPs, and if so, whether national courts must apply the Article on their own initiative or at the request of a party, in proceedings pending before them.

CMS European Patents Review – 7 Decision This decision creates uncertainty for Nick Beckett The ECJ held that Community law patentees, who, in the absence of Partner, London did not extend to patent matters clear guidance from the ECJ, will +44 20 7367 2490 and that since no Community have to await decisions in national [email protected] legislation stood in the sphere of courts to find out how long their patents, it was not contrary to patent protection will last. Stuart Helmer Community law for Article 33 of Associate, London TRIPS to be directly applied by The judgment is also significant +44 20 7367 2687 national courts, subject to any for the ECJ’s rejection of any [email protected] conditions provided by national law. suggestion that Community law might extend to patent matters.

Divisional Applications: Clarification after Enlarged Board Decisions

The Enlarged Board of Appeal of Several recent cases before the the European Patent Office (EPO) Technical Board of Appeal had issued two long-awaited decisions questioned existing practice, relating to the practice of filing which allowed subject matter in divisional applications on 28 June the divisional application that was 2007. In particular, the decisions additional to that contained in the concern an application’s compliance earlier or parent application to be with Article 76(1) EPC, which removed, so that the application governs the filing of divisional conformed with Article 76(1) EPC. applications. Case G1/05 Article 76(1) EPC states that: In order to clarify these matters, “[a divisional application] may be the first question referred to the filed only in respect of subject- Enlarged Board of Appeal under matter which does not extend case number G1/05 asked whether beyond the content of the earlier existing practice was permitted application as filed; in so far as this and whether the amended provision is complied with, the divisional application, having had divisional application shall be the additional subject matter deemed to have been filed on the removed, could enjoy the filing date date of filing of the earlier applica- of the parent application. The tion and shall have the benefit of Enlarged Board of Appeal decided any right to priority”. that an application that does not conform to Article 76(1) EPC on filing does not necessarily become

CMS European Patents Review – 8 invalid. Therefore, existing practice Case G1/06 Nick Beckett was confirmed as correct, and the The second decision issued by the Partner, London parent application filing date may Enlarged Board under case number +44 20 7367 2490 be maintained. G1/06 concerned a sequence of [email protected] applications consisting of a root The second and third questions application followed by divisional Stuart Helmer referred under case number G1/05 applications. It was asked whether, Associate, London were: when a divisional application is filed +44 20 7367 2687 based on another divisional [email protected] Whether a divisional application application, the later divisional could still be amended to meet application should be confined to the requirements of Article 76(1) subject matter in the claims of the EPC when the earlier application earlier divisional application. The is no longer pending; and Enlarged Board decided that anything disclosed in a divisional Whether there are any further application should be directly and limitations of substance to the unambiguously derivable from that amendments beyond those disclosed in each of the preceding imposed by Article 76(1) EPC applications. and 123(2) EPC. Practical implications The Enlarged Board considered In order to minimise the risk that that a divisional application is a new a later divisional application is application, which is independent deemed to be broader in scope from the parent application, and than its parent, applicants should that an amendment is allowed file the broadest possible claims in irrespective of whether the earlier the initial filing. Before filing a application is still pending or not. divisional application, the applicant Furthermore, in the Enlarged should ensure that there is a clear Board’s view, there are no further and unambiguous basis for its limitations for divisional applications claims in the earlier filing. beyond those imposed in the relevant articles. Therefore, they are subject to the same requirements as any other application.

CMS European Patents Review – 9 Austria

Utility models – the inventive step requirement

In its decision 4 Ob 3/06d, dated utility model rights. It sought 12 July 2006, the Austrian Supreme an interim injunction at the Court (“OGH”) ruled on the nature Commercial Court of Vienna in of the inventive step necessary for order to stop the defendant from utility model protection. offering, putting on the market, importing or stocking metallic Facts coverings for horizontal or inclined The claimant was the owner of an wooden profiles, particularly for Austrian utility model for metallic wooden profiles which are exposed coverings for horizontal or inclined to outdoor weathering. wooden profiles exposed to outdoor weathering, such as The Commercial Court of Vienna handrails, balcony or terrace railings rejected the application for an and stairs. This covering can be interim injunction. It held that the used on wooden constructions to claimant’s utility model lacked an protect them against weathering. inventive step. The Upper District Since the covering can be put on Court of Vienna confirmed this the existing constructions, there is decision. The claimant then no need to change or adjust them. appealed to the OGH.

The defendant sold a balcony railing Held that differed from the claimant’s The OGH remanded the case to utility model in that its aluminium the Commercial Court of Vienna handrail did not lie directly on the on the grounds that the facts wooden railing, but rested on the established by the Commercial metal pillars of the balcony railing. Court were insufficient. However, There was a space between the the OGH stated that the inventive handrail and the wooden step requirement for utility models construction. Furthermore, at a is not the same as that for patents, trade fair in 2005 the defendant in that it does not require a presented aluminium profiles that technical solution which is not could be used as a covering as obvious to an average person skilled described above. in the art. To be protected as a utility model, it is sufficient if a The claimant asserted that this technical solution is outside the constituted an infringement of its scope of the expert’s day to day

CMS European Patents Review – 10 practice, even if the average expert also ruled on the definition of art and which is outside of the can find such a solution. the inventive step. The latter puts scope of the expert’s day to day into perspective the differences practice even if the average expert According to the OGH, if the term between the inventive step and might be able to find such a “inventive step” is interpreted like inventiveness. The BGH held that, solution. this, the claimant’s utility model in assessing the requirements of fulfils this requirement: if a metallic the inventive step, the principles Under Austrian law, the definition profile is used to cover a horizontal developed concerning inventiveness of “patent” (used in the Patent Act) or inclined wooden profile exposed in patent law can be applied. and the definition of “utility model” to outdoor weathering, the However, the OGH approved the (used in the Utility Model Act) are protection achieved is beyond the view of the German author Frank different. Therefore, it seems state of the art. Peter Goebel, who found that the reasonable that there should be inventive step simply requires a different criteria for protection Comments technical solution which, as regards under patent law on the one hand At the same time as the OGH, the the state of the art, is not obvious and under utility model law on the German Bundesgerichtshof (BGH) to an average person skilled in the other hand.

Unjustified assertion of the infringement of intellectual property rights

In its decision 4 Ob 184/06x, production of the ophthalmoscope dated 21 November 2006, the OGH was an infringement of the ruled on unjustified assertions of defendant’s patent rights. It sought intellectual property rights to prevent the defendant from infringements. The defendant asserting such infringement. was the owner of a patent for an ophthalmoscope, an instrument The OGH remanded the case to used to examine eyes. The the Court of First Instance. The defendant wrote a letter to Court of First Instance had not another company, which planned to made any findings concerning the produce such an instrument jointly question of whether the with the claimant. The latter held a defendant’s assertion was correct or licence for another patent for an not. However, the OGH held that – ophthalmoscope. In the letter, the if the defendant’s assertion was defendant asserted that the unjustified – the caution issued by planned production of the the defendant would constitute a ophthalmoscope constituted an violation to Sections 1 and 7 of the infringement of its patent rights Austrian Unfair Competition Act and threatened to take legal action. (“UWG”). The claimant denied that the

CMS European Patents Review – 11 Section 1 UWG prohibits any action Gertraud Redl in the course of trade which is Associate, Vienna contrary to morality. Section 7 UWG T +43 1 404 43 155 forbids the assertion or the [email protected] spreading of facts concerning a competitor’s enterprise or its goods or services, which could be disadvantageous to his company. As regards the company that received the letter, the OGH held that the defendant would breach Section 1 UWG provided that it acted contrary to morality. The claimant, who was not the addressee but was mentioned in the letter, would have a cease and desist claim and a claim for damages.

CMS European Patents Review – 12 Belgium

Cross-border interim injunction

The Antwerp Court of Appeal, protection”. The Court referred in in a decision dated 25 April 2007, that respect to Article 31 of Council granted a “cross-border” interim Regulation 44/2001, which replaced injunction in summary proceedings. the Brussels Convention. According to the Antwerp Court of Appeal, Advanced Technology Materials Inc Article 31 does not preclude a (ATMI) provides materials and Belgian judge from pronouncing packaging for semi-conductor provisional, including protective, makers. In August 2006, ATMI filed measures having a cross-border a claim in Belgium against Praxair effect providing that there is a Inc and its Belgian affiliates, connection with Belgium. claiming infringements of the European patent ATMI holds for It is interesting that the Antwerp certain gas storage and delivery Court of Appeal made no systems. This patent concerns a distinction between the defendants, vacuum semi-actuated cylinder being Belgian, European and US product, which can safely deliver companies. The applicability of gases below atmospheric pressure. Council Regulation 44/2001 to a Praxair is a US multinational with defendant established in the US is Belgian subsidiaries. Following not apparent. Article 4 of Council the commercialization by Praxair Regulation 44/2001 states that if of a competing gas cylinder the defendant is not domiciled in a (“UpTime®”), ATMI filed a request Member State, the jurisdiction of for a preliminary injunction against the courts of each Member State Praxair Inc and its Belgian affiliates. shall be determined by the law of The request was granted in part by that Member State. The Antwerp the Antwerp Court of First Instance, Court of Appeal found that it had following which both parties international jurisdiction in this appealed the decision. matter given the connection with Belgium, because Belgium was The Antwerp Court of Appeal the country where all infringing granted a cross-border interim “UpTime®” gas cylinders were filled injunction against all the with gas for the entire Praxair defendants and “for all those Group and for all its customers countries where the European worldwide. Patent EP1000291 B1 provides

CMS European Patents Review – 13 On this basis, a Belgian injunction the case of a patent infringement, Unlike European patents, national would have been sufficient to stop in order to obtain an interim Belgian patents are granted without the defendants’ acts throughout injunction. The descriptive seizure any kind of pre-examination as to the world. In that case, Praxair’s proceedings provided for in Article the patentability of the invention. activities would have been stopped 1481 to 1488 of the Belgian Hence, in such circumstances, the with worldwide effect, even in Judicial Code allow the holder of a prima facie validity of a national those countries where ATMI does patent right (and other IP rights), Belgian patent is very questionable. not have or no longer has patent who suspects an infringement of protection. For that reason, the his patent rights, to file an ex parte The Brussels Court of Appeal Antwerp Court granted the cross- request with a Belgian court in and the Antwerp Court of Appeal border injunction only for those acts order to obtain a ‘descriptive recently came to completely that concern “delivery and use” in seizure order’. different conclusions with one of the countries designated in regard the infringement of the the European patent. The Belgian The descriptive seizure order may Supplementary Protection affiliate of Praxair is therefore still consist of a description of the Certificate (“SPC”) of the Belgian entitled to fill gas cylinders in alleged infringing activities, devices, Patent BE 896.453 regarding the Belgium that are intended for or methods by an expert, but may active substance “alendronate”. export to countries that are not also include injunctive relief. An On this basis, the Irish company designated in the European patent. interim injunction can thus be MSD Overseas, and its Dutch obtained on unilateral request licensee Merck Sharp & Dohme BV, Consequently, in this case a cross- without having to establish any started summary proceedings border injunction has been used to urgency, as is the case in summary against (i) TEVA in Antwerp and (ii) temper the worldwide effects of a proceedings. Indeed, the right to Eurogenerics in Brussels. mere national injunction. initiate summary proceedings is subject to a requirement of urgency. At first instance the claims were Finally, it is interesting to note that The condition of urgency is fulfilled dismissed, both in Antwerp and the Antwerp Court of Appeal found when the fear of a prejudice of a Brussels. In Antwerp, the decision that “in general by its nature” a certain gravity demands immediate was reached mainly because the patent infringement case is always intervention. prima facie validity of the SPC was urgent, so that the condition of not established given the numerous urgency, which is a prime condition However, in recent years there foreign invalidity decisions about for the granting of a court order in has been a tendency to start parallel SPCs. The Brussels Summary summary proceedings, is easily contradictory summary proceedings Judge dismissed the claim due to established in the case of an alleged immediately in order to obtain an lack of urgency because the patent infringement. interim injunction in cases of patent claimants had not started infringement, because descriptive proceedings on the merits in due “Prima facie” evidence of seizure orders are often overruled in time. the validity of a patent in opposition proceedings. One of the summary proceedings main reasons for this development Both cases were appealed. The During the 1990s, most patent is that the Courts are ready to find Antwerp Court of Appeal was the owners preferred to start descriptive that patent infringement cases are first to render a decision on 23 May seizure proceedings (saisie urgent and that there is a prima 2007. The Brussels Court of Appeal contrefaçon/beslag inzake namaak) facie valid patent if it concerns a gave its decision on 2 July 2007. instead of summary proceedings in European patent. Both Courts of Appeal confirmed

CMS European Patents Review – 14 the urgency of the matter, but Veerle Raus came to completely different Partner, Brussels findings regarding the prima facie T +32 2 743 69 00 validity of the Belgian patent and [email protected] SPC. The Antwerp Court of Appeal found that prima facie validity was not established given the numerous foreign decisions resulting in the invalidity of the parallel foreign patents and SPCs. Although the Brussels Court of Appeal was aware of the decision of the Antwerp Court when rendering its decision more than a month later, the Brussels Court nevertheless found that the prima facie validity of the SPC/Belgian patent was not questionable. Given that the parallel foreign patents were all national patents, with only very slightly different patent claims (as not derived from one EP), and the fact that the Belgian patent was granted under the old Patent Law of 1854, it came to the conclusion that the Belgian patent and its subsequent SPC would be regarded as valid until it was annulled in a case on the merits.

CMS European Patents Review – 15 Bulgaria

Effect of TRIPS agreement on the duration of patents

The Bulgarian Supreme on 25 March 2004 with the Administrative Court has ruled on Bulgarian Patent Office (BPO) the duration of patents in light of requesting that the BPO issue a the TRIPS agreement. certificate for maintenance of the patent for the years following the In its decision number 8612 of 15th year of the patent. The BPO 14 August 2006, the Supreme refused to issue a certificate for Administrative Court has ruled on maintenance of the patent for the the effect of the TRIPS Agreement 18th year. The patentee requested on the period of patent protection clarification from the BPO on the under Bulgarian legislation. The period of protection of the patent. patent owner was the Japanese The BPO replied in writing that company Ishihara Sangyo Kaisha patents registered before PRUMA Ltd, which had registered a patent entered into force enjoyed a for a herbicide composition and 15-year term of protection. method for fighting unwanted According to the BPO the TRIPS plants. The patent was registered Agreement, which was ratified by pursuant to a patent application Bulgaria in 1996, did not have filed on 31 January 1987 under retroactive effect. the operation of the Inventions and Rationalizations Act 1968 (IRA), The patent owner appealed the which was later repealed by the BPO’s refusal to maintain the Patent and Registration of Utility registration of the patent to the Models Act 1993 (PRUMA). Sofia City Court. The Court reversed Pursuant to the repealed IRA, the decision of the BPO. It held that the inventions enjoyed patent the refusal was unjustified and protection for 15 years. returned the file to the BPO to issue another decision according to the After the end of the 15th year of instructions given by the Court. the patent, the patentee continued paying fees for the maintenance of The BPO appealed the decision of the patent. They provided evidence the Sofia City Court to the Supreme of the fees paid during the 16th Administrative Court. The Supreme and 17th year of the patent. Administrative Court held that the Further to the fees paid, the conclusion reached by the Sofia City patent owner filed an application Court was correct and lawful.

CMS European Patents Review – 16 The Supreme Administrative Court the patent was still in force. The On 1 December 1996, when the based its findings on section 5 of legal grounds relied on by the Sofia TRIPS Agreement entered into force PRUMA, which provides that City Court are supported by Article in Bulgaria, the patent that was the patents for inventions issued before 70, paragraph 2 of the TRIPS subject of the litigation was already the entry into force of PRUMA shall Agreement, which provides that: in force. This means that Article 33 enjoy protection according to the of the TRIPS Agreement, which term of protection under the law Except as otherwise provided provides for 20-year protection for which was in force during the time for in this Agreement, this patented inventions, shall be they were issued. The invention that Agreement gives rise to applicable and enforceable in this was the subject of dispute was obligations in respect of all case and the invention subject of protected by a patent enjoying a subject matter existing at the the litigation shall be protected for 15-year term of protection, from date of application of this 20 years. This term had not expired 31 January 1987 until 30 January Agreement for the Member in by 25 March 2004, when the 2002. question, and which is protected patent holder filed an application in that Member on the said for extension of the patent During this term, the TRIPS date, or which meets or comes protection. The refusal of the BPO Agreement was ratified by the subsequently to meet the criteria to issue a certificate for extension Republic of Bulgaria. It entered into for protection under the terms of the patent was therefore force on 1 December 1996, when of this Agreement. unjustified and unlawful.

No patent protection for perpetual motion machines

In decision number 3112 of dismissed the appeal and held that 26 March 2007, the Supreme the decision of the BPO was issued Administrative Court has held that pursuant to Article 6, paragraph 2 perpetual motion machines are not of PRUMA, which provides that: patentable. The case was brought “Inventions in all areas of by the applicant for a patent for a technology that are new, involve an perpetual motion machine called inventive step and which are the Gravitator. Following susceptible to industrial application examination, the BPO considered shall be patentable”, and Article 10 that the product subject of the of PRUMA, which provides that: application was not patentable. “An invention shall be considered susceptible to industrial application The claimant appealed the decision if it can be made or repeatedly of the BPO to the Court of First used in any industry, including Instance (Sofia City Court), which agriculture”. confirmed the BPO’s refusal of the patent. The Sofia City Court

CMS European Patents Review – 17 The Court held that the Boyana Bounkova independent motion of the Associate, Sofia appliance without an external T +359 2 291 99 95 source of energy was impossible [email protected] because the amount of the potential and kinetic energy was constant, which excluded the possibility the appliance could perform useful work only with the force of gravity. This showed that the product subject to the claim was not industrially applicable and therefore it was not patentable.

The applicant appealed the decision of the Sofia City Court to the Supreme Administrative Court. The Supreme Administrative Court held that the appeal was unjustified because the subject matter of the application did not meet the requirements for industrial application specified in Article 10 of PRUMA.

CMS European Patents Review – 18 Czech Republic

A new Patent Court for the Czech Republic

Between 1990 and 2007, the This rule has consistently been Czech Republic lacked a Patent upheld and confirmed in the rulings Court or any other independent of the High Court in Prague, being judicial authority which would be the authority charged to review able to review decisions rendered by decisions of the Industrial Property the administrative authority, being Office under the 1993 laws. the Industrial Property Office of the Czech Republic. This situation is set to change with the establishment of the Since 1990, legislation has made Patent Court. The Patent Court, it impossible for courts to review established as a division of the some of the Industrial Property Municipal Court in Prague, will Office decisions. Both under the have exclusive jurisdiction over former (Civil Procedure Act) and cases concerning judicial review of the current applicable law (Code of the IPO’s decisions. It should also Administrative Justice, in force since have the technical expertise to 1 January 2003), there has been a allow it to hear even substantially provision providing that IPO technical cases. The Patent Court decisions are outside the Courts’ came into operation on 1 January jurisdiction. Section 70 of the 2008. Code of Administrative Justice provides that: Antonin Kazda The acts of an administrative Associate, Prague authority which are excluded +420 221 098 813 from judicial review are those [email protected] the issue of which depends exclusively on the assessment of the technical condition of things, unless they do not in themselves represent a legal obstacle to the performance of an occupation, employment or business, or any other economic activity.

CMS European Patents Review – 19 England and Wales

Court of Appeal allows disclosure of an inventor’s records to assess obviousness

In the case of Nichia v Argos disclosure, a party must make a (2007), the Court of Appeal has “reasonable” search for documents. allowed an appeal against the The relevant factors involved in High Court’s decision to refuse an assessing “reasonableness” include application for disclosure of an the number of documents involved, inventor’s records. In a majority the nature and complexity of the decision with the expert patent proceedings, the ease and expense judge, Lord Justice Jacob, of retrieving a particular document dissenting, the Court of Appeal and the significance of a document refused to endorse a prima facie likely to be located in the search. rule preventing inventors’ records from being disclosed. Despite However, in patent cases, the acknowledging Lord Justice Jacob’s standard disclosure rules are expertise in patent cases, the other modified. In patent cases standard judges considered that rather than disclosure does not require the adopting a blanket rule of non- disclosure of documents relating to disclosure of inventors’ records, in the infringement of a patent by a the interests of proportionality, product or process provided that disclosure should be tailored the defendant supplies full depending on the likely value and particulars of the product or significance of the evidence to be process, together with necessary disclosed and the costs of doing so. drawings or other illustrations. Regarding the disclosure of Standard Disclosure documents relating to grounds on Under the Civil Procedure Rules, which the invalidity of the patent is which govern civil procedure in claimed, standard disclosure is England and Wales, the parties limited to documents which came must provide “standard disclosure” into existence within the period unless the Court directs otherwise. from two years before to two years A party must disclose, among other after the earliest claimed priority things, documents on which he date. It is also not necessary to relies, and documents which disclose documents relating to the adversely affect his own case or issue of commercial success. another party’s case, or support another party’s case. In making such

CMS European Patents Review – 20 Nichia’s patents achieved by a more selective stake, would disclosure of this sort Nichia owns two patents for white approach to the documents to of material be appropriate. light-emitting diodes. Argos, a well be disclosed. known retailer, offered and sold The majority decision – Christmas lights consisting of 120 The minority decision – Jacob LJ Rix and Pill LJJ white LEDs. Nichia claimed that Jacob LJ noted that the test for Despite acknowledging his Argos’s products infringed the two obviousness as set out in legislation experience in the field of patent patents. Argos counter-claimed that and case-law is an objective one. litigation and agreeing with his the patents were both invalid On that basis there was a strong concerns regarding unnecessary because they were obvious in the argument for saying that what the and disproportionate expense, light of common general inventor actually did was completely the majority judges disagreed with knowledge and certain cited prior irrelevant. It therefore follows that Jacob LJ. They considered that publications. the corresponding disclosure would upholding the preliminary decision be irrelevant. However, Jacob LJ would mean, in practical terms, an At a preliminary hearing, there was also noted the inconsistency that, automatic bar on disclosure in this a dispute about the disclosure that in practice, the Court sometimes context. Rather than moving to a should be ordered. Nichia proposed attaches some weight to the blanket “no disclosure” rule, the that they should not give any. Argos inventor’s evidence. majority judges considered it would argued that Nichia should disclose be preferable to explore a means of documents about the making of In Molnlycke AB v Procter & addressing concerns about the cost the invention and certain Gamble, the Court of Appeal held of disclosure, while still applying the experiments that it had conducted that the inventor’s evidence was rationale of standard disclosure. A to prove infringement. Both kinds “secondary”, and “must be kept reasonable search should be tailor- of disclosure were refused. Argos firmly in its place”. Jacob LJ made to the value and significance appealed. regarded this as of great of the likely product of such a importance when considering the search. If the value of such A blanket rule of non-disclosure extent of the disclosure required. “secondary evidence“ is not likely of an inventor’s records? However, in his view disclosure of to be high, then the reasonable The Court of Appeal, in a majority the inventor‘s records has become search should be correspondingly decision, allowed the appeal. Lord routine, and has very considerably limited. It would be preferable to Justice Jacob, who gave the increased the expense of patent explore how the concerns of Lord dissenting judgment, suggested actions. Justice Jacob might be met by a that standard disclosure in the rigorous application of the rules context of obviousness should only Jacob LJ considered that the of standard disclosure. The parties require disclosure of an inventor’s principle of proportionality required should therefore explore ways of documents in very rare that disclosure should be tailored to limiting the search, for example, circumstances. However, the the size of the dispute. This meant by date or by the nature of majority judges, Lords Justice Rix that under normal circumstances, the document. and Pill, were concerned about the disclosure of the inventor’s records impact of a blanket rule of non- should not be ordered. Only in the Comment disclosure. They suggested that largest cases, where legal costs The Court of Appeal refused to proportionate disclosure could be formed a small part of what was at allow a rule that might

CMS European Patents Review – 21 automatically preclude evidence patent proceedings. Attempts to Nick Beckett from inventors. Although excessive reduce the overall cost of patent Partner, London disclosure can add to the costs of litigation should involve an +44 20 7367 2490 litigation, both parties, and the assessment of the process as whole, [email protected] court through its case management rather than focusing on just one powers, should encourage type of documentary disclosure. Stuart Helmer disclosure proportionate to the Associate, London issues involved and the commercial +44 20 7367 2687 value at stake. Further, parties may [email protected] also take advantage of other mechanisms to manage costs, such as the streamlined procedure for

House of Lords clarifies rules and procedure for post-grant patent entitlement claims

In Yeda Research and Development a patent will be granted to the Company v Rhone-Poulenc Rorer inventor or joint inventors or to (2007), the House of Lords has persons entitled to the patented clarified the substantive rules invention by virtue of a rule of law regarding entitlement to a patent or contract. The person applying and the procedure for amending a for a patent will be taken to be post-grant claim to a proprietary the person who is entitled to that entitlement to a patent. In so patent unless the contrary is doing, the House of Lords has established. overturned the principle set out in the Court of Appeal case of The Patents Act, enacting Articles Markem v Zipher (2005), that a 23 and 24 of the Community person claiming entitlement to a Patents Convention, also provides patent post-grant must show that a procedure for challenging the the registered proprietor had ownership of a granted patent. procured registration by a breach Such claim must be made within of a rule of law such as a breach two years from the date of the of contract or confidence. grant.

Law Under the Patents Rules of 1995, Under the Patents Act 1977, any the Comptroller is given the broad person can make an application for discretion to allow amendments of a patent, either jointly or alone, and the statements.

CMS European Patents Review – 22 Facts sought the amendments, the Right to the patent Scientists working in the 1980s two-year limitation period for The principle established in at the department of Chemical challenging the ownership of a Markem, that a person claiming Immunology at the Weizmann granted patent had expired. entitlement to a patent post-grant Institute of Science in Israel had must show that the registered established that two types of The Patent Office hearing officer proprietor had procured registration anti-cancer drugs, combined but allowed the amendments, but they by a breach of a rule of law such as not chemically coupled, gave better were disallowed on appeal to the a breach of contract or confidence, results than both the chemically High Court, and that decision was was wrong (although on its facts, coupled drugs and the drugs used upheld by the Court of Appeal. The Markem had been correctly decided). individually. They wrote up their main questions to be decided by results for publication, but before the House of Lords were: In Markem the Court of Appeal had publishing they sent a copy of the confused the rules for determining article to a former employee who What was required to be proved entitlement with those determining had supplied several of the in order to claim entitlement to validity. If a person, A, devises an antibodies used in the experiments. a patent which was registered in invention and imparts it to another, The former employee’s new the name of another party? B, in confidence, and B then applies employer, Rhone Poulenc, applied Was it sufficient for a claimant for a patent in respect of the for US and European patents in to show that he was the invention, A is entitled to the respect of the invention. inventor and the registered patent not by virtue of B’s breach proprietor was not, or was it of confidence but by virtue of being Yeda is an Israeli company that necessary to prove that the the deviser of the invention. If A exploits inventions developed at the proprietor had gained the wants to be substituted as the sole Weizmann Institute. It claimed that registration by breach of some inventor, he would also have to the invention was made at the other rule of law? prove that the B did not contribute Weizmann institute and that they to the inventive concept but he were entitled to it as assignee of Was it possible for a claim to would not have to prove that B had the rights of the inventors. After joint entitlement to be amended breached any other rule of law. filing their claim, two things to make it a claim to sole Breach of confidence went to the happened. First, having initially entitlement after the expiry of question of validity only; it was not sought to be named as joint owner the 2-year limitation period? relevant to the question of of the patent, Yeda changed their Or does that require a new entitlement. minds and decided to claim sole reference that would be ownership. Secondly, the Court of statute-barred? Amendment to claim Appeal gave the Markem decision. to entitlement Yeda therefore sought to amend its The House of Lords allowed the The question here was whether claim to entitlement, firstly to allege appeal and agreed with the initial the amendment of the claim to breach of a substantive rule of law decision of the hearing officer who entitlement was in fact a new as required by Markem, and had allowed the amendments. reference or an amendment of the secondly to change its claim from existing reference. The House of one of joint ownership to one of Lords found that it was the latter. sole ownership. By the time Yeda

CMS European Patents Review – 23 In particular, they held that the requested amendment amounted Nick Beckett concept of adding a new cause of to a new claim, but whether Partner, London action was derived by analogy from amendment of the statement of +44 20 7367 2490 the Civil Procedure Rules, but that facts relied on in the entitlement [email protected] this analogy did not apply. proceedings would make the Entitlement proceedings are reference a new reference. It was Stuart Helmer brought under the Patents Act, clear that the Comptroller is Associate, London not the Civil Procedure Rules. The entitled to allow documents filed +44 20 7367 2687 procedure under the Patents Act is in proceedings before him to be [email protected] governed by its own limitation amended. In the circumstances, the period and its own rules. The Patent Office hearing officer was question was not whether the entitled to allow the amendments.

Technical prejudice – an inventive step?

In Pozzoli SPA v Moulage Industriel Windsurfing case. However, the de Perseigne SA, the Court of Court of Appeal restated and Appeal rejected an appeal against reordered that test as follows: a decision that a patent was invalid for obviousness and that the patent Identify the notional had not been infringed by the “person skilled in the art”; defendants’ product. Identify the relevant common Pozzoli owned a European patent general knowledge of that for a CD container, in which two person; or more CDs are held vertically in moulded “seats” by central Identify the inventive concept of rosettes, and physically separated. the disputed claim or attempt to The defendants produced a construe it; and container which stored discs parallel to one another, held at their Identify the difference between periphery by a slot and two tabs. the claimed patent and the prior Pozzoli alleged infringement of its art; are these difference obvious patent. The defendants counter- to someone skilled in the art, claimed for invalidity. of did they require a degree of invention? Obviousness The classic 4-step test for an The Court stressed the need to inventive step was set out in the avoid a prolonged debate over the

CMS European Patents Review – 24 “inventive concept”. The Court did not want a better, smaller Commercial success viewed the critical factor as the shape, such as that achieved by It is often argued that the difference between that which is overlapping. As such, Pozzoli commercial success of a patented claimed in the patent and the prior claimed that a technical prejudice product shows the existence of a art. Pozzoli claimed that the must have existed which prevented “long-felt want” which would have difference between its container others from using the overlapping been fulfilled sooner if the way of and the prior art was that it method. doing so were obvious. Here, provided for partial overlapping of however, the Court noted that the CDs while physically separating The Court also found no evidence Pozzoli’s product was not a them, creating a compact and of technical prejudice in the commercial success until it had low-risk storage solution. industry against overlapping CDs. been significantly refined. In this Other containers existed which context the Court of Appeal The Court held that it was known were shorter in height, namely repeated a point it had made in in the industry that the 2-disc CD those which were the width of one Angiotech Pharmaceuticals v Conor container, which was already on the CD only; and overlapping was used Medsystems (2007): that the market (whereby two CDs were laid in a container patented by a third usefulness of commercial success in side by side and the container was party, albeit for a different type deciding a question of obviousness therefore double the height of one of disc. depended on being able to isolate CD), was too high. It followed that what had contributed to the if a “person skilled in the art” were However, the Court accepted that success. In both Angiotech and to look at reducing the height of overcoming a “technical prejudice” Pozzoli, success followed only much 2-disc CD containers, then it would could be an inventive step. There later and could therefore not be be obvious to that person that they had to be a demand for a particular attributed solely to the invention should overlap the CDs in order to type of invention, and a mistaken claimed; it might also have been reduce the height. It was also technical belief that a particular the result of later development of obvious that the discs should be idea would not work, thereby the product. physically separated in order to deterring the unimaginative skilled reduce the risk of damage. person from pursing a particular Automatic right of appeal Therefore, the Court concluded path. A patentee who contributes The Court of Appeal also held that that the invention contributed something new by showing that, Article 32 of TRIPS could not be nothing new to the common contrary to the mistaken prejudice, used to command an automatic general knowledge. the idea will work or is practical has right of appeal in cases which had shown something new and he already been judicially determined Technical prejudice deserves his patent. Where, to have no real prospect of success. Pozzoli claimed that its invention however, the patentee patents an Pozzoli argued, somewhat had overcome a technical prejudice, old idea thought not to work or to unconvincingly, that the Court which had prevented others from be practical and does not explain would be in breach of its creating a similar product. It how or why, contrary to the obligations under TRIPS if it did claimed that the inconvenient shape prejudice, it does work or is not provide an automatic right of of the 2-disc CD containers meant practical, his patent contributes appeal, regardless of the prospects that it would be unreasonable for nothing to human knowledge, of success. Unsurprisingly, the Court the Court to conclude that people and is therefore not inventive. rejected this notion. TRIPS required

CMS European Patents Review – 25 an opportunity for judicial review Comment Nick Beckett to be available, and a Court of This case illustrates the challenges Partner, London Appeal decision whether or not to facing a patentee in defending a +44 20 7367 2490 grant permission to appeal against fairly basic patent against a charge [email protected] revocation fulfilled this requirement. of obviousness, particularly where The Court added that it would be there is a considerable body of prior Susie Carr unworkable and illogical if it were art in existence. Patentees should Associate, London to grant leave to appeal even also be wary in arguing technical +44 20 7367 2551 though it had itself ruled an appeal prejudice, and should preferably [email protected] would have little prospect of obtain some evidence to show not success. only that this is present in their field but also that there is a genuine demand or need for their invention.

UK patent claims not stayed despite continuing EPO proceedings

In April 2007, the Court of Appeal These decisions indicate an in Unilin Beheer v Berry Floor ruled increased willingness on the part of that a decision in a UK Court that a English Courts to make a ruling UK patent is infringed and damages without waiting for the EPO. The are payable is unaffected by a Unilin decision also provides that a subsequent finding by the European UK Court’s award of damages will Patent Office that the patent is not be overridden by a subsequent invalid. Further, the Court of Appeal EPO ruling, even if this outcome rejected an appeal against the appears unjust. Patents County Court’s refusal to order a stay in proceedings in Background anticipation of an imminent EPO The EPO grants patents which take ruling. effect as national patents in the European jurisdictions designated In August 2007, the High Court in by the applicant. After the EPO Research in Motion UK Limited v grants a patent, a nine-month Visto Corporation held that a stay period begins in which anyone may of a revocation action pending seek to have the patent revoked by the outcome of EPO opposition the Opposition Division of the EPO. proceedings should not be granted. It may take several years for the EPO to decide whether to invalidate the patent.

CMS European Patents Review – 26 Infringement proceedings, or an The defendants applied to the PCC patent with a UK specification for a action to have a national patent to stay the inquiry as to damages system and method of synchronising revoked, may be brought in the pending the outcome of the EPO email across a network that was national Courts as soon as the opposition proceedings. In May registered to Visto. Visto applied patent is granted. Proceedings in 2006 Judge Fysh of the PCC held for a stay of RIM’s High Court the national Courts are generally that “the disposal of patent revocation action, pending the much quicker than in the EPO. Thus litigation…. should not in my view outcome of the EPO proceedings. national Courts may find a patent be made to depend upon the valid and infringed, only for it to be barometer of opposition business at Visto gave generous undertakings later found invalid and removed the EPO”. He concluded that there that, in return for a stay, it would from the register by the EPO. As a was no compelling reason why the not seek injunctive relief at any result, a question that frequently inquiry should not proceed. He also point in the future, and would not arises is whether a stay should be held that the defendants were not seek to recover damages or an granted in national litigation estopped from challenging Unilin’s account of profits based on pending the outcome of opposition entitlement to damages based on infringement for the period of the proceedings in the EPO. the later EPO decision, if it was stay or beyond, instead limiting favourable to them. their claim to a reasonable royalty There was previously a trend in the from the date of the decision in UK towards a presumption of Unilin appealed the finding the opposition proceedings. granting a stay. However, this trend that there was no estoppel. The seems to have reversed of late, with defendants appealed the refusal RIM argued that although the the Courts considering all the merits of the stay. undertakings by Visto addressed of individual cases; see, for example their concerns about having their Ivax Pharmaceuticals v AstraZeneca The Court of Appeal held that the product taken off the market, in (2004) and Glaxo Group v defendants were estopped from such a fast-moving and highly Genentech (2007). The RIM and challenging Unilin’s entitlement to competitive area of technology, Unilin decisions follow and confirm damages, whatever the ultimate it was essential for commercial this trend. results of the EPO. The public success that software and other interest in the finality of litigation aspects of the applications could be Unilin and in achieving commercial modified and advanced. RIM could In the Unilin case, the patentee, certainty outweighed the apparent not justify investing time, effort and Unilin, brought an infringement unfairness of the defendants having expense in the development of the action in the Patents County Court to pay damages for infringement of Blackberry when it was uncertain (PCC) for infringement of the UK a patent that was later found to be whether what they produced would designation of a European Patent invalid. Therefore the appeal for a be an infringement of Visto’s relating to floor panelling. The PCC stay of proceedings was dismissed. patent. found the patent to be valid in part, allowed an amendment and ruled RIM The concurrent EPO proceedings that it had been infringed. Research in Motion produces and were at a relatively early stage, and Meanwhile, opposition proceedings markets the Blackberry handheld would probably take about five were pending in the EPO. product and its software. The years to resolve. If the English patent in question was a European proceedings were stayed and the

CMS European Patents Review – 27 claimants failed in their EPO It is possible that other national been willing to stay English opposition, they would be likely to courts in Europe will adopt the UK proceedings in circumstances revive the English proceedings, approach, although in the RIM case where the EPO was also considering resulting in the total time for final it was observed that in Germany validity of the patent, despite the determination considerably revocation proceedings are not possibility of wasted costs. This has exceeding five years and increasing permitted pending the outcome of resulted in the English Courts and expenses. In contrast, if a stay was proceedings in the EPO. This may in particular the streamlined not granted, the matter could be have wider implications on the procedure being a more attractive decided in the English Courts in patentee’s choice of jurisdiction route for patentees to pursue advance of the EPO decision, in which to bring a claim for infringement proceedings. meaning that final resolution of infringement. the matter should take no longer The decisions may result in even than five years. The High Court A patentee may seek to bring less uniformity across Europe considered that the need for infringement claims in jurisdictions than before. A patent could be commercial certainty at the earliest where the procedure for doing so confirmed as valid in one country opportunity outweighed the cost is quick and efficient, in order to whilst held invalid in another, only savings which could be made by obtain a judgment before an to be later either upheld or revoked issuing a stay. It held that the grant unfavourable EPO ruling which by the EPO, which decision may of a stay is a discretionary power, could take several years. In England affect previous national decisions to be exercised with a view and Wales, patent infringement as to damages. primarily to achieving a just and actions can be dealt with promptly proportionate resolution of the under a streamlined procedure in dispute between the parties. which cases may proceed to trial Nick Beckett within six months and may reach Partner, London Comment appeal within nine months from +44 20 7367 2490 The decisions in Unilin and RIM issue of proceedings. The stream- [email protected] reinforce the general trend in the lined procedure may also be more English Courts in recent years not to cost effective than other processes. Alex Bowtell grant stays pending decisions by the Associate, London EPO. The impression these decisions However, defendants are more +44 20 7367 2035 give is of exasperation with the pace likely to seek a stay of national [email protected] of proceedings at the EPO. English proceedings pending opposition Courts are looking at the time procedures at the EPO. The disparity parties will take to get a decision in the time it takes to hear cases in from the EPO and concluding that England (and other national courts) achieving a quick result is more compared to the EPO is accentuated important than achieving a correct by the UK Court of Appeal’s refusal result; according to Lord Justice to grant a stay. These decisions Jacob in Unilin, “the purist approach follow a recent trend in which the makes bad business sense”. English Courts have frequently not

CMS European Patents Review – 28 France

Industrial property attorney as independent expert

The industrial property attorney, Aquaterra appealed this judgment even if they are the regular agent and sought to invalidate the of the applicant, exercises their seizure. Aquaterra observed that profession with independence and the industrial property attorney is therefore allowed to be appointed as expert by the Court appointed as an expert to assist the was the regular agent of the bailiff during seizure proceedings applicant and, as a consequence, (Aquaterra Solutions Sarl (France) C/ could not be independent in his Hesco Bastion Limited (UK), Paris role as technical assistant to the Court of Appeal, 11 May 2007). bailiff. The proceedings were therefore not fair, as required by Facts Article 6-1 of the European Hesco Bastion Limited owns a Convention on Human Rights European patent regarding a gabion (ECHR). (a steel cage filled with rubble used as a building material). Aquaterra is Held a French competitor company, On 11 May 2007, the Paris Court of which also manufactures building Appeal confirmed the judgment of materials. Hesco sued Aquaterra the Court of First Instance and gave alleging that the latter used its the following decision: patented process for their products. “The industrial property In its judgment of 8 July 2005, the attorney, even if a regular agent Court of First Instance held that of the applicant, exercises an Aquaterra infringed Hesco’s patent independent profession pursuant and consequently banned any to Article R 422-52 of commercial use of the infringing Intellectual Property Code and products. The Court ordered the is allowed therefore to be seizure of infringing products and designated as expert to assist appointed an industrial property the bailiff in the scope of seizure attorney to assist the bailiff during proceedings.“ the seizure, in pursuance of Article R 615-5 of the Intellectual Property As a consequence, there was no Code. breach of the principle of fair trial.

CMS European Patents Review – 29 This decision of the Paris Court of independence of the industrial Antoine Gendreau Appeal is in accordance with recent property attorney in these Partner, Paris case law of the Court of Cassation proceedings. Some judgments T +33 1 47 38 55 00 (Miniplus C/ Capitole Carton decided that the industrial property [email protected] Court of Cassation, Commercial, attorney was not independent in 8 March 2005). cases where he was the regular agent of the applicant. Comment Case law regarding the The Court of Cassation ended this independence of the expert in mistrust towards industrial property seizure proceedings has evolved. attorneys and highlighted their Previously, an expert who assisted professional ethics: “An industrial the bailiff during these proceedings property attorney shall exercise his could be a salaried agent of the profession with dignity, honour, applicant (Paris Court of Appeal, independence and probity (art R 18 April 1984). The independence 422-52 CPI)“. The Paris Court of of such intervention was widely Appeal applied this case law to accepted. The Court of Cassation patents: the independence of the put an end to this practice, industrial property attorney considering it opposed to the guarantees the observance of fair principle of fair trial under trial requirements in seizure Article 6-1 of the ECHR. Thereafter, proceedings. doubts appeared regarding the

CMS European Patents Review – 30 Germany

Obtaining evidence of patent infringement in Germany

In its ruling of 20 February 2006, potentially infringing products. They the Mannheim Regional Court can inspect the infringing product, upheld the “Düsseldorf inspection for example, at the premises of the practice”, under which patent alleged infringer, to obtain evidence holders who have good reason of infringement. In the course of to suspect patent infringement can such procedures, a court orders an ascertain whether there has indeed inspection of the product without a been infringement (Case: 2 O prior oral hearing and without 27/06). hearing the potential infringer. On this basis, the potentially infringing Background product can then be inspected Patent holders often face the within the framework of a “raid”, problem that while their patent often carried out with the rights appear to have been assistance of a court bailiff. infringed, they do not have the necessary evidence for a successful Such procedures are not yet claim because, for example, they do provided for under German law. not have a sample of the infringing However, as a Member State of product. the European Union, when implementing Article 7 of the Their claim will only be successful if Enforcement Directive, Germany they are able to demonstrate that a will be obliged to make statutory specific product has all the features interim injunction proceedings of the patents on which their claims available through which evidence are based. It will not be possible to of patent infringement can be do this if they are not familiar with secured. Therefore, the legislative the exact technical design of the bill intended to transpose the alleged infringing product and are Directive into the new amended unable to obtain a sample product statute section 140c of the Patent on the market. Act (PatG) provides that in the event of “sufficient likelihood” In such situations, foreign patent of patent infringement, a patent law systems, such as the French, holder may demand an inspection Italian, UK and US systems, provide of the possibly infringing product, patent holders with a statutory by way of interim injunction. procedure for the inspection of

CMS European Patents Review – 31 Under current German law, only By the ruling referred to above, the the inspected products infringe the individual elements of such a Mannheim Regional Court adopted patent holder’s rights. procedure are in place, such as a this practice, suggesting that it is statutory right to inspection now slowly catching on in the Business secrets of potential patent included in section 809 of the Civil German patent infringement courts. infringers can be affected by the Code (BGB), a procedure for an inspections and experts‘ reports. interim injunction and an If a patent holder is able to present For this reason, after the experts’ independent procedure for taking a court with good reasons why a reports have been presented, the evidence. For a long time, these patent infringement is likely, the courts consider any possible effect individual elements were not court will mandate by way of on the business secrets of potential combined in a single procedure. interim injunction that the allegedly patent infringers when deciding The right to inspection per se infringing product be inspected by whether the experts’ reports are to provides only the prerequisites as to an expert. Good reason can, for be provided to the patent holders when an inspection can take place; example, be based on the features at all. The rule of thumb for this it does not provide for a procedure of parallel products sold abroad or decision is: the more probable it is as to how the right can be enforced on specific advertising statements that there has been infringement, against a potential infringer. of the potential patent infringer. based on the report, the more likely Without being combined with an it is that the report will be provided interim injunction, an oral hearing According to currently applicable to the patent holder. was held when such a right to case law, an interim injunction with inspection was asserted. A potential the aim of inspection can be filed If experts’ reports are provided to patent infringer thus found out for without any time limits. So far, patent holders, they can be used about the upcoming inspection in compliance with any specific in patent infringement lawsuits advance and was able to make deadline after having received filed later and, under some changes to the product to be knowledge of the possible circumstances, make it unnecessary inspected before the inspection infringement has not been required, to call for more evidence from other took place. contrary to other interim injunction experts. cases. Potentially, the patent holder Comment could also use foreign inspection Inspection orders are usually issued In legal terms, the possibility of procedures. If this results in without oral hearings and, above inspection orders is a useful evidence, it can also be used in all, without hearing potential patent development. With the help of German patent infringement infringers beforehand. Potential the courts, this compensates for a proceedings. infringers are surprised by the deficit in the current German legal inspections and have to tolerate situation. However, this deficit will Mannheim Regional Court ruling them. In addition to experts, patent be corrected in the future by the For some time, the Düsseldorf holders’ legal counsel and patent implementation of the Enforcement Regional Court has joined together attorney may attend the Directive, because this inspection the various elements in place in inspections. Patent holders practice will then be provided for in Germany and has thus, in practice, themselves are not allowed to the planned amendment of section set up an independent inspection attend. After the inspections, the 140c of the Patent Act. Even if it is procedure. experts submit reports on whether possible for the German

CMS European Patents Review – 32 Implementation Act to be changed Dr Matthias Eck during the legislative process, it is Partner, Stuttgart expected that the amendment of +49 711/97 64-201 section 140c of the Patent Act will [email protected] include the basic structure and content of the inspection orders as Dr Jan Dombrowski LLM they have been issued by the Associate, Stuttgart Düsseldorf and Mannheim Regional +49 711/97 64-203 Courts, and thus there will be no [email protected] significant changes to the subject matter.

Inventive step to be assessed based on the invention as a whole not on individual features or groups of features or subtasks taken individually

Summary paper machines, especially through The German Federal Court of their drying drums. It is crucial for Justice has ruled that, even if an papermaker’s fabrics that the invention has been divided into surface is as smooth as possible in individual groups of features based the area in which the pulp lies on on subtasks, the evaluation of the fabric, and that the fabric inventive work is always to be allows steam to pass through to the based on the invention in the appropriate extent for the individual entirety of its features in their machine for the purpose of technical context. Individual producing paper, so that the drying features or groups of features process can be controlled. must not be examined separately (Case X ZR 273/02 – 15 May 2007 In the actions for annulment, – “Papiermaschinengewebe“). the claimant objected to two independent claims and a number Facts of dependent claims. It was claimed The action for annulment that the contents of the contested concerned the German designation patent claims were not capable of of a European patent for being patented as they were not papermaker‘s fabric with flat based on inventive work. In this machine direction yarns. The patent regard, the claimant referred to is for a papermaker’s fabric and has two U.S. patent specifications and 37 claims. Such fabrics continuously one published European patent feed paper sheets through the application as state of the art.

CMS European Patents Review – 33 The German Federal Patent Court then examined the citations the fabric made of warp and weft declared the disputed patent null claimant specified in its statement threads, but also specifically adapts and void in its decisions of 9 July of claim as state of the art with the permeability of the fabric as 2001 and 27 November 2003 to regard to whether it had given the well. In fact, it was true that the the extent of the patent claims person skilled in the art the idea for subtask of producing adequate objected to by the claimant, with the invention. The Federal Court of firmness and stability solved by the effect in the territory of the Federal Justice found that the citations did third feature group was already Republic of Germany. The appeals indeed show certain partial aspects shown in the European patent of the defendant linked together of the invention. In particular, the application the plaintiff referred to. for a consistent ruling contested type of weave with warp threads as Furthermore, it was also true that this; the defendant limited the such was known on the priority the remaining task of attaining a content of the first independent date of the contested patent. fluttering of the paper sheet on the patent claim and the dependent fabric if the fabric has a low degree claims referring to it to the effect Knowledge of this type of weave of permeability disclosed by the that the words “a papermaker‘s alone, however, did not necessarily fourth feature group of the first fabric” should replace the words include the step of using a type of independent patent claim, which “an industrial fabric”. weave, that is in itself known, to provided for the utilization of a control the permeability of a specific weaving method, was Decision papermaker’s fabric without further shown already in one of the U.S. The Federal Court of Justice motivation and especially without patent specifications the plaintiff reversed the decisions of the knowledge of the technical solution referred to. Federal Patent Court. The actions disclosed in the patent under for annulment were rejected under dispute. This motivation is also not However, when examining the legal the condition that the first the result of a combination of the issue of whether inventive work is independent patent claim and the citations concerning the state of present, as in the interpretation of dependent patent claims referring the art, since there would not have the patent claim, individual features to it were to be upheld in the been any reason for combining or groups of features must not be version limited by the defendant them at the priority date without examined separately even though with effect in the territory of the knowledge of the technical solution the invention can be divided into Federal Republic of Germany. disclosed in the patent in dispute. individual subtasks. Even in such cases, the entire content of the The Federal Court of Justice divided The opposite view held by the technical solution disclosed in the the first independent patent claim Federal Patent Court was based patent claim, together with all of its into four groups of features to on an inadmissible isolated features, must be taken into which in each case the fulfilment consideration of individual features. consideration. of a specific “subtask” could be It disregarded the fact that the allotted. After the Federal Court of overall combination of all of the Comment Justice had first dealt with the features of the invention as set out In this decision, the Federal Court qualifications of the person skilled in the first independent patent of Justice confirmed its view, on in the art (with respect to the claim did not only adequately assess which earlier decisions had also business area) that are relevant for and improve the weaving of warp been based, that when determining the presence of inventive work, it threads to a vertical coating of the whether inventive work is present,

CMS European Patents Review – 34 the assessment must always be Dr Thomas Hirse made in consideration of the Associate, Dusseldorf features of the invention as a whole +49 211 4934-301 in their technical context. Individual [email protected] features or groups of features are not to be considered singly. This also applies if the invention can be divided into individual subtasks. Therefore, the Federal Court of Justice follows the same approach to interpret a patent claim in infringement proceedings as well as in cancellation proceedings.

CMS European Patents Review – 35 Italy

Customs transit through Italy does not of itself infringe intellectual property rights

The Court of Bari has held that case, such goods did not infringe the mere external customs transit any party’s intellectual property of products covered by a patent rights. does not, in itself, constitute an infringement of intellectual property Decision rights. This is because the risk that By order dated January 18, 2007, the goods might not reach the the Court of Bari declared destination State (where the groundless and rejected the intellectual property is not requested preventive measure protected), but might be awarded to Koninklijke. fraudulently put on the market Accordingly, the Court gave in the State in which the transit instructions for the revocation of began, is only potential. the seizure order.

Facts Article 1(b) of EC Regulation No. Koninklijke Philips Electronics N.V. – 1383/2003 allows the adoption by owner of European patents for the customs authorities of measures production of recordable CDs and aimed at protecting intellectual DVDs – requested and obtained property rights, for example, as in from the Court of Bari, as a this case, customs seizures which preventive measure, the seizure of a can be ordered in case of a large load of CDs and DVDs of the suspected infringement of such Princo Corporation Ltd Company. rights by goods under a transit The disks were being transported regime. This gives intellectual via the port of Taranto. Koninklijke property rights holders a means of asserted that the expert protecting their rights, by keeping investigations carried out under EC infringing goods off the market. Regulation No. 1383/2003 revealed Nevertheless, the adoption of such that the CDs and DVDs, bearing a measure does not of itself the mark PRINCO, infringed their establish that an infringement has patents. actually taken place.

Princo objected to the seizure, Consequently, as held by the saying that the goods were only in European Court of Justice, mere transit in Italy, being addressed to transit is to be considered unlawful Greece and Hungary, and, in any only in case of an actual risk of an

CMS European Patents Review – 36 infringing release of the goods. The Comment Laura Opilio mere external transit of such goods The order in question is important Partner, Rome does not constitute, in itself, the since it represents the first decision +39 06478151 marketing of goods in the territory of the Italian domestic courts on [email protected] in which the transit has happened. customs activities, specifically with It therefore does not necessarily regard to the external transit of constitute an infringement of goods covered by a patent. The intellectual property rights. Court order, upon application of the intervention is required only in principles specified in the latest respect of conduct intended to put community case law, has therefore infringing goods on the market and established that the EC Regulation not for the mere external transit of must be interpreted as granting a goods. preventive measure safeguarding the rights of the patentee. Furthermore, the Court of Bari However, the preventive measure specified that it is for the claimant may be upheld only if it is to demonstrate that the infringing established that the transiting goods were put on the market the goods were intended for marketing Member State concerned. or other infringing use in the country of transit.

CMS European Patents Review – 37 The Netherlands

The Dutch Supreme Court allows wider use of the patent prosecution history file in interpreting the scope of patent claims

Some time ago the Dutch Supreme it comes to determining the scope Court ruled that alleged infringers of protection offered by the patent could invoke the prosecution claims, the patentee may not wish history file to substantiate their to be reminded of this narrow interpretation of claims of a interpretation. However, the alleged European patent. Before this infringer is always ready to do so in decision, the Dutch Court of Appeal order to try and narrow the scope in The Hague (the courts of The of protection. The information in Hague having exclusive jurisdiction the prosecution history file can in patent cases) approached the therefore be vital for the alleged interpretation of claims in a infringer, as the determination of different way. If, having been protection of the patent will be construed in accordance with decisive for the infringement claim. the patent specification, with the description and the drawings The Court of Appeal almost always serving to interpret the claim, the used to rule that if the meaning of meaning of the claim is clear, an the wording in a claim was clear, alleged infringer was not allowed this barred alleged infringers from to invoke so-called “file wrapper being able to invoke file wrapper estoppel”. estoppel.

File wrapper estoppel is a defence Dijkstra vs. Saier available to an alleged infringer Saier was the holder of a European which asserts, relying on the patent for a synthetic bucket with a prosecution history file, that the lid. Dijkstra filed an opposition to patentee is claiming a broader the European patent before the scope of protection in infringement EPO as a result of which, in appeal proceedings than it put forward by the decision of the Technical during the examination of its patent Board of Appeal, the patent was before the European Patent Office. only partially maintained and claim Sometimes during the examination 1 was adjusted by the patentee. period, the patent applicant has to assert a narrow interpretation of Proceedings before the the wording of the claim in order to District Court and Court convince an EPO examiner of of Appeal in the Hague novelty and inventiveness. After the Dijkstra summoned Saier to appear patent has been granted, and when before the District Court in The

CMS European Patents Review – 38 Hague, claiming a declaratory reason to consult the prosecution Still no patent harmonization judgement of non-infringement file in a case where the claim was in Europe of the Dutch and German parts sufficiently clear, was incorrect. This approach of the Dutch of Saier’s European patent, with Dijkstra argued that when a Supreme Court seems not to be in respect to two types of buckets third party, being accused of line with patent case law in other which Dijkstra marketed. Saier infringement, defends itself by European states. This decision disputed the claim and filed a consulting the prosecution history emphasizes that national courts of counterclaim, alleging that Dijkstra file to invoke a file wrapper member states of the European was infringing their patent. estoppel, this consultation must be Patent Convention, ruling on a allowed in order to confirm that the European patent, may determine The District Court in the Hague patent claim has been construed the scope of protection of a claim rejected Dijkstra's claim, and upheld correctly. differently, despite the intended Saier’s counterclaim. Both products harmonizing effect of article 69 of Dijkstra marketed infringed Saier’s The Supreme Court allowed the the EPC and its Protocol of patent. appeal. It ruled that a patentee may understanding. The question only adduce the prosecution file remains: what approach will lead Dijkstra lodged an appeal against where, even after interpreting the to the right and justified balance this decision. Dijkstra’s main description and the drawings, it still between the “fair protection for argument was that its buckets did remains reasonably doubtful to the the patentee” and the “reasonable not infringe the first claim of Saier’s average skilled person how to degree of certainty for third European patent because they determine the scope of protection parties”? could be opened and closed by of the claims. finger pressure. Saier’s patents did not cover, in Dijkstra’s opinion, However, the Supreme Court stated Willem Hoorneman these types of buckets. that where a third party, including Partner, Utrecht an alleged infringer, invokes the T +31 30 - 2121 727 Dijkstra invoked a file wrapper prosecution file in support of its [email protected] estoppel referring also to the patent narrow interpretation of the patent, as originally granted and the thus invoking a file wrapper decision of the EPO’s Technical estoppel, there is, in general, no Board of Appeal. restriction upon using the publicly accessible information found in However, the Court of Appeal ruled the prosecution file to interpret that there was no reason to consult the scope of protection of a claim the prosecution history file, because of the patent. claim 1 was sufficiently clear. Therefore Dijkstra’s appeal was Supreme Court Decision successful. Third parties may invoke Dijkstra lodged an appeal before the examination files of a European the Dutch Supreme Court. Dijkstra patent to substantiate their complained that the Court of interpretation of the scope of Appeal’s view, that there was no protection of a claim of a patent.

CMS European Patents Review – 39 Poland

Validity of Polish patents increasingly called into question

Following a period in which patents statutory requirements for the grant were applied for in large number of a patent have not been satisfied. and granted relatively freely in Poland, licensees and potential KGHM is the largest copper infringers are becoming more manufacturer in Poland. In the early willing to allege invalidity, often 1990s, it produced a great deal of based upon arguments that the pollution, which affected the city of invention was not novel because Lubin. In order to reduce this of an earlier article in a foreign pollution, a group of inventors language publications. constructed and patented a burner which significantly reduced caustic Facts substances. They then licensed In Poland, patents are granted KGHM to exploit this technology. to inventions which are new, which involve innovation and which After several years, and after an potentially have an industrial article was found in an industrial application. magazine describing research on a very similar solution dating from According to Article 25 of the before the date the patent was Industrial Property Law of 30 June obtained, KGHM asserted that it 2000, an invention shall be had unjustly paid for the licence. considered to be new if it does not KGHM requested that the patent form part of existing technology. be declared invalid. Existing technology comprises everything made available to the Held public by means of a written or oral The Adjudicative Council of the description, or by use, display or Polish Patent Office examined the disclosure in any other way, before case and declared the patent invalid the priority date. as a patent may only be granted for a new invention. It held that an On the basis of Article 89 of the invention can only be considered Industrial Property Law, a patent may new if information that would be declared invalid in whole or in make exploitation of the invention part at the request of any person possible has never been made who has a legitimate interest therein, publicly available, even in a foreign and who is able to prove that the language magazine.

CMS European Patents Review – 40 Comment In light of these cases it is likely This is one of several similar cases that the Patent Office will examine that have occurred in Poland patent applications more recently. Following a period in thoroughly in future. It is also which a large number of patents possible that fewer patents will be were granted, companies are now granted. checking the rights of their licensors or competitors. Bogdan Duda Associate, Warsaw In another case, pharmaceutical T +48 22 520 5507 company GlaxoSmithKline has [email protected] decided to limit its patent on the combined hepatitis vaccine. Knowledge of the vaccine with the use of specific substances existed at the time the patent was granted and was published in a Korean industrial magazine.

CMS European Patents Review – 41 Russia

Guidance on patent infringements subject to criminal liability

Summary obligatory precedents that must be On 26 April 2007, the Plenum of followed in similar cases. However, the Supreme Court of the Russian the Russian Federation Constitution Federation issued Decision enables the Supreme Court to No 14 “On judicial practice of clarify issues arising within court examination of criminal cases on practice. In most cases, the lower infringement of copyrights, courts follow these clarifications. associated rights, patent rights and illegal use of the trademark”. The RF Criminal Code provides for Decision No 14 does not refer to criminal liability for patent any particular case; it was adopted infringements if the amount of the in response to analysis of court damage caused by the infringement practice and clarifies the following is significant. However, before issues: calculating the amount of the damage, it is necessary to Criminal liability for patent determine the fact of the patent infringements; infringement. To do this, the courts have to refer to the provisions of Who shall be treated as an the applicable civil legislation, even inventor of the object protected within the criminal procedure. Due by the patent; to this, most of the clarifications provided by Decision No 14 refer Which actions could be to the provisions of the RF civil considered as patent legislation. infringements; Decision No 14 is supposed to be Which actions do not form applied by the “courts of common patent infringements; jurisdiction” and the clarifications contained within the Decision are What damage shall be not intended for the arbitration recognized as substantial courts. However, as the Decision damage to the patent holder. mainly contains clarifications on the civil norms, it might have significant Facts influence on the whole court In Russia, even decisions of the practice in the field of patent Supreme Courts do not create protection in Russia.

CMS European Patents Review – 42 Held According to the Supreme commission of the above acts in The Supreme Court approved the Court, the courts shall take into relation to a product obtained following guidelines applicable to account that the applicant for directly through a patented criminal cases involving patent the patent may be the inventor’s method; commission of the rights infringement: employer, who has the right to same acts in relation to a device, the patent if the employee has whose operation in accordance Rights protected under the RF created the protected object in with its purpose automatically Criminal Code shall be based on the course of carrying out his reproduces a patented method; a patent. The period of validity duties or specific tasks assigned and the reproduction of a of the exclusive right to him by his employer, unless method which uses a patented to an invention, useful model or otherwise provided for by the object. industrial design (hereinafter agreement between the referred to as “protected employee and employer. If necessary, the court should objects”) and of a patent have at its disposal an certifying that right, shall be The Supreme Court directed appropriate expert’s report or fixed under the RF civil the attention of the lower courts specialist’s opinion in order to legislation. to the fact that the infringement prove that the protected object of the patent might consist, has been used. The Supreme Court clarified that specifically, of the use of the the inventor of the protected protected objects without the The courts should take into objects shall be the individual consent of the patent-holder account that RF legislation whose creative endeavours expressed in the agreement provides that some actions are resulted in the creation of the registered under the order not recognised as patent protected objects. provided by the RF legislation, infringements. This includes, but unless such use without the is not limited to, use of the Where several people are patent holder’s permission is protected objects in order to involved in creating an allowed by the legislation. satisfy personal, family, day- invention, all of them shall be Violation of the terms of a to-day or other needs not regarded as the inventors. The licence agreement may of associated with entrepreneurial arrangements for exercising itself be regarded as patent activity, unless the purpose of the rights of the inventor shall infringement. If the patent such use is to gain profit. be determined by an agreement belongs to several people and is Moreover, any individual or legal made between them. used without the consent of at person who, prior to the date of least one of the patent holders, priority, has put an identical The right to be recognised as such use is infringing. invention to bona fide use in the inventor of the protected Russian territory, or effected object shall be inalienable and “Use” of protected objects arrangements necessary for untransferable, even where the may include: importation; such use, shall have the right to patent over the protected object manufacture; use; offering for continue using it, provided that is transferred to another person, sale; sale; introduction into they do not extend the scope of or when a third party is licensed circulation by other method; use. to use it. storage for the above purposes;

CMS European Patents Review – 43 Patent infringement may Comment consist of disclosing, without As of 1 January 2008, several pieces the consent of the inventor or of legislation regulating IP issues applicant, the essence of an have been replaced by one codified invention, useful model or legal act, Part 4 of the RF Civil industrial design prior to the Code. This replacement will lead official publication of data to changes in court practice. about them. However, the Supreme Courts Patent infringement is subject normally require several years to to criminal liability if it causes issue new guidelines and “substantial” damage to the clarifications on court practice, as patent holder. The RF Criminal the court practice needs to be Code does not define what developed. Moreover, Decision No amount is considered 14 was adopted after Part 4 of the substantial. According to the Civil Code had been approved, but Supreme Court, the courts may before it was in force. Lower courts recognise damage as substantial will therefore continue to follow the at their own discretion. The main guidelines of Decision No 14, Supreme Court held that the provided that they are not contrary courts should take into account to the new legislation. the circumstances of each specific case, including but not limited to the extent of damage, Olessia Akimtseva the amount of lost profit, and Associate, Moscow the amount of income gained T +7 495 258 5000 by the infringer. [email protected]

CMS European Patents Review – 44 Spain

Utility models: registration, infringement and inventive step

In its recent decision in Pal Plastic, The claimant’s utility model was S.A. v Aislux, S.A., the Madrid registered at the Spanish Trademark Court of Appeal has considered the and Patent Office as follows: requirements for registration of utility models and the tests for Claim one, involving the infringement and inventive step. configuration or shape given to the panel. Facts The claimant, Pal Plastic, S.A., Claim two, secondary and is the owner of a Spanish utility dependent on the first claim, model consisting of a panel with a protecting the clamping device. specific configuration and a clamping device. This invention has The defendant, the company Aislux, technical advantages when being S.A., subsequently registered used in normally dark warehouses another utility model consisting of a or industrial spaces, letting natural panel of similar characteristics, and light enter while guaranteeing afterwards started producing and strong resistance at the same time. marketing it. The panel in question is designed to be adapted to a specific pre-existing The claimant asserted that the structure, produced by a third distribution of the defendant’s company, usually employed in this products constituted an kind of industrial premises. infringement of his patent, arguing that the defendant’s panel fell The Spanish Patent Act provides within the scope of protection of that utility models are minor his utility model. The claimant inventions which must have novelty sought to prevent the defendant and an inventive step and provide from manufacturing, offering and an object with a configuration or selling his product. structure from which some technical advantages can be The Court of First Instance ruled obtained for its use or production. in favour of the claimant; the For example, utensils, tools, defendant subsequently lodged an instruments and devices, and parts appeal before the Provincial Court of them, may be registered as utility (“Audiencia Provincial”). models.

CMS European Patents Review – 45 Held Whilst it was possible that the expressly rejected by the Court, The Madrid Court of Appeal defendant had invented an which held that the mentioned confirmed that, in accordance with innovative clamping device, this did structures affected, but did not decided cases, the comparison to not allow him to produce and sell determine, the design of the panel. be carried out by the Court should a panel that reproduced the The defendant provided clear be between the registered utility characteristics of the utility model’s evidence of this by showing that his model and the infringing product. first claim, which is the panel, which was designed to be The Court of Appeal thus rejected configuration. This situation is adapted to the structures referred the defendant’s position, which was known as “patent dependence”. to above, was different from that of that the comparison ought to be the claimant. between the two registrations. The defendant also alleged that Pal Plastic, S.A.’s utility model was Regarding the novelty of the Having established this point, the invalid because it lacked an claimant’s registration, the Court Court compared the infringing inventive step. It also cited two therefore held that the technique product with the claimant’s utility prior granted patents in the same protected by the said registration model to determine whether the field of activity as evidence of lack was not part of the prior art. product fell within its scope of of novelty. protection. Lack of inventive step was alleged Miguel Ángel Rodríguez Andrés The infringement of the utility by the defendant on the grounds Partner, Madrid model’s first claim, despite the fact that the panel protected by the T +34 91 451 92 76 that it had a secondary and utility model had been adapted to [email protected] dependent claim relating to the specific and pre-existing structures, clamping device, was enough for produced by a third party. The Blanca Cortés Fernández the claimant to base a claim against defendant argued that the existing Associate, Madrid the producer of the competing structures to which the panel must T +34 91 451 92 84 panel. be adapted determined its specific [email protected] form or configuration. This was

Contradictory decisions on the same issue: priority of conflicting terms of the EPC and the TRIPS Agreement

The Spanish courts have recently should prevail? Unfortunately, the handed down several decisions courts have adopted two conflicting dealing with the relationship positions. Until the Spanish between the TRIPS agreement and Supreme Court is asked to rule the EPC. The question they have on the issue, this creates considered is, where provisions of considerable uncertainty for these treaties are in conflict, which patentees, particularly those holding

CMS European Patents Review – 46 pharmaceutical patents over Company. These claims protected the reservation and its effects were products applied for and/or chemical and pharmaceutical no longer in force. registered before 7 October 1992, products as such. and those seeking to challenge their Additionally, the Court stated that rights in Spain. Warner-Lambert’s European patent according to an Instruction of the had been applied for on 20 July Spanish Patent and Trademark Article 167 of the European 1990, during the period of the Office, the TRIPS Agreement has Patent Convention provided that reservation. Therefore, according to direct effect and results in direct contracting states could reserve the claimant, claims 1, 2, 3, 5 and 6 full application by Spanish Courts, their right to provide that European of the Spanish designation of the in accordance with the Spanish patents conferring protection on, European patent should be revoked. Constitution and the Spanish among other things, chemical and Civil Code. pharmaceutical products as such, However, Warner-Lambert argued shall be ineffective or revocable. that the Spanish reservation under Once the direct applicability of the However, processes of manufacture the EPC was not compatible with TRIPS Agreement was clarified, the or use of a chemical product, and Articles 27 and 70 of the TRIPS Court studied the issue at stake and of manufacture of a pharmaceutical Agreement. TRIPS had been in declared that the wording of Article product, were not affected. At the effect since 1 January 1996 and 27.1 of the TRIPS Agreement time of acceding to the EPC, the was directly applicable in Spain. applied. This establishes that: Kingdom of Spain exercised these According to the defendant, the rights and provided that, to the reservation was therefore no longer “Subject to the provisions of extent that European patents or in force and its effects should not paragraphs 2 and 3, patents claims of them confer protection be maintained. shall be available for any on chemical and pharmaceutical inventions, whether products products as such, such European The claim was rejected and the or processes, in all fields of patents or patent claims shall be decision was appealed to the technology, provided that they ineffective in Spain. Appeal Court, who rejected the are new, involve an inventive appeal based on the following step and are capable of Under Article 167.5 of the EPC, grounds. industrial application”. this reservation remained in force until 7 October 1992, and the The Court of Appeal held, firstly, Additionally, Article 70.7 of the effects of the reservation shall that any incompatibility between TRIPS Agreement establishes that: continue in force for the duration the wording of international of the relevant European patents. treaties, such as the EPC and “In the case of intellectual the TRIPS Agreement, must be property rights for which Decision of the Court of Appeal determined in the light of the protection is conditional upon of Madrid, 26 October 2006 Vienna Convention on the Law of registration, applications for The claimant, Ratiofarm España, Treaties of 1969, which provides protection which are pending on S.A. sought the revocation of claims that the later treaty shall prevail. the date of application of this 1, 2, 3, 5 and 6 of the Spanish Accordingly, the TRIPS Agreement Agreement for the Member in designation of a European patent prevails over the reservation question shall be permitted to owned by the Warner-Lambert contained in the EPC. Therefore, be amended to claim any

CMS European Patents Review – 47 enhanced protection provided Article 167 EPC reservation, whose patent as far as claims for products under the provisions of this effects shall continue in force for were concerned. Therefore, claims Agreement. Such amendments the duration of the patent. for protection on chemical and shall not include new matter”. pharmaceutical products as such The Court of Appeal by its decision were ineffective. In a decision of 18 September of 17 January 2008 dismissed the 2000, the World Trade Organization appeal based on, among other On 16 February 2006, after the Appellate Body interpreted Article things, the direct applicability of the ratification of the TRIPS Agreement 70.7 as covering not only pending TRIPS Agreement. It held that the by the Kingdom of Spain, DuPont applications but also pre-existing Spanish reservation under the EPC filed before the Spanish Patent and rights, such as granted patents. was not compatible with Articles 27 Trademarks Office a petition for The TRIPS Agreement therefore and 70 of the TRIPS Agreement, revision of the claims of the Spanish applies not only to pending rights and therefore, the TRIPS Agreement patent to include the claims related but also to patents that were shall prevail. to the product as such contained in already granted at the time of the the European Patent. TRIPS Agreement coming into force. Decision of the Mercantile Court of Barcelona, 19 September 2007 The petition was duly filed The Court of Appeal of Madrid has The claimant, Merck Sharpa & according to article 12 of Royal therefore held that the reservation Dohme España, S.A., was the Decree 2424/986, which and its effects are no longer exclusive licensee of a Spanish implemented the EPC in Spain. effective because the contradictory patent owned by DuPont. The It was accepted by the SPTO and provisions of TRIPS Agreement take Spanish patent was the Spanish published in the Industrial Property priority over the Convention. designation of European patent EP Bulletin. However, the defendant Therefore, the enhanced protection 253310 comprising the active filed arguments by means of an provided under the provisions of ingredient “losartán”. administrative appeal against such the TRIPS Agreement applies. revision. The SPTO rejected the Accordingly, in this case, the claims The defendant was the generic revision as “it implied the remained. manufacturer Laboratorios Stada, modification of the text and the S.A. Stada was effectively adding of claims not included in the Decision of the Court of Appeal commercialising a generic of original text of the Spanish patent”. of Barcelona, 17 January 2008 losartán from June 2006, and The claimants – and afterwards therefore, according to the The Administrative Courts appellants – were Laboratorios claimant, infringing its patent in supported the SPTO decision and Cinfa, S.A., Laboratorios Alter, S.A. the product. the defendant’s arguments and, and Kern Pharma, S.L., generic therefore, the revision was rejected. manufacturers, and Eli Lilly was the The European patent contained defendant. The claimants argued 48 claims regarding products and The Court held that the mechanism that claim 5 of Lilly’s European processes. Article 167 of the EPC, contained in Article 12 of Royal Patent EP 454436 related to a and the reservation expressed by Decree 2424/1986 was not valid pharmaceutical product. the Kingdom of Spain at the time for deactivating the reservation Accordingly, they argued that Lilly of ratifying the Convention, introduced by the Kingdom of could not enforce it pursuant to the discussed above, applied to the Spain at the time of ratifying

CMS European Patents Review – 48 the EPC. As noted above, the Comment reservation expressed that in so far These decisions derive from two as European patents or claims of different Courts and there is not, as them confer protection on chemical yet, any decision from the Supreme and pharmaceutical products as Court adopting a position in this such, such European patents or respect. Only case law from the specific claims shall be ineffective. Supreme Court has binding effect.

In contrast with the decision of Unless the Supreme Court establishes the Court of Appeal of Madrid otherwise, we suggest that the discussed above, the Mercantile position maintained by the Court of Court of Barcelona held that the Appeal of Madrid and the Court of broader protection given to patents Appeal of Barcelona is more likely by the TRIPS Agreement does not to be correct. Nonetheless, as the apply to patents granted in Spain facts indicate, this issue is highly before the TRIPS Agreement came complex. Moreover, the existence into force in Spain (1 January of these contradictory decisions 1996). Here, the European patent suggests problems with the was granted on 26 October 1994. application and interpretation of Merck’s claim was therefore the TRIPS Agreement that are not rejected. confined to Spain.

The Court in this case did not consider the interpretation of Article Maica Trabanco Quintanal 70 of the TRIPS Agreement given by Associate, Madrid the WTO Appellate Body, referred T +34 91 451 9275 to above, by which the TRIPS [email protected] Agreement applies not only to pending rights, but also to patents already in force at the time the TRIPS Agreement came into force.

CMS European Patents Review – 49 Switzerland

When are the Swiss courts competent under the Lugano Convention?

Introduction The Swiss Federal Supreme Tribunal The Lugano Convention (LC) of has developed a related court 16 September 1988 is equivalent to practice which has become the Brussels Convention of 1968, increasingly complex over the years. the predecessor of the Brussels The following is a summary of the Regulation. The Lugano Convention rules with a focus on the most rules court competence between recent decisions. Switzerland and the EEA members. It sets out three basic rules Declaratory Action regarding court competence, which The Swiss Patent Act (and likewise are also present in the Brussels the Trademark Act, Design Act etc.) Regulation. The overarching basic provides for basic remedies, being principle is that persons domiciled an order to cease and desist and for in a member state shall only be payment of damages. In addition, sued in the courts of that member however, the Patent Act permits the state (Article 2 LC). In intellectual request of a declaratory award. property matters, there are two The owner of a patent may bring major exceptions to this rule. In an action claiming that the court proceedings concerned with the declares his patent to be valid. This registration or validity of registered is termed a “positive” declaratory rights such as patents, the courts of claim, because the claimant the member state where that requests the positive declaration register is kept are exclusively of a patent‘s validity. Vice versa, a competent (Article 16 section 4 LC). potential infringer may bring an As a second exception, in matters action against the patent owner relating to tort, delict or quasi- requesting the court to declare the delict, action may be brought in patent invalid. This is termed a courts where the defendant is “negative” declaratory action, domiciled, or where the harmful because the claimant seeks event was carried out, or where declaration of a negative fact: the the damage materialized (Article 5 registered patent is not valid. section 3 LC); this exception used to be invoked in IP rights violations In practice, the patent owner cases, based on the view that IP always seeks a positive declaratory infringements are a kind of tort. action against the potential

CMS European Patents Review – 50 infringer. Why not request a cease validity of a patent; even if validity Recent refinements and desist judgment? Usually, is not confirmed by the court, this In “Ecofin / Scholand” (BGE 132 III because the infringement is obvious will not automatically lead to 579; decision of 5 May 2006), or even admitted, under reserve cancellation of the patent. there were three claimants of patent (in)validity. It follows that belonging to the same group a positive declaratory action This opens up a choice of “Ecofin”, all of them with “Ecofin” (request to confirm patent validity) jurisdiction, because once the in their company name. They sued is functionally quite close to an restriction of Article 16 section 4 LC Scholand, a German resident, who infringement action (cease and has gone, the claimant can choose owned a Swiss trademark ECOFIN. desist). among the possibilities of Article 2 Ecofin brought an action for LC and, in particular, of Article 5 cancellation of Scholand‘s ECOFIN Similarly, a negative declaratory section 3 LC. In the eyes of the trademark in Switzerland, claiming action (to confirm invalidity) is Swiss Federal Supreme Court, this that Scholand had no right to always brought by the potential constituted too much choice. register ECOFIN in Switzerland in infringer, thereby seeking to view of the Swiss Ecofin group of overcome the possible or obvious Basic decisions of 1991 companies, and that such infringement. Functionally, the and 1998 of the Swiss registration amounted to unfair request to declare the invalidity of Federal Supreme Court competition. Regarding court a patent is very similar to a In a decision of 17 November 1991 competence, Ecofin relied on Article straightforward cancellation action. (W. / P.; BGE 117 II 598), the Swiss 5 section 3 and Article 16 section 4 The difference between the two is Federal Supreme Court held that LC. Scholand disputed the that in the former case nullity is actions for the declaration of patent competence of the Swiss courts, only valid inter partes, while in the validity are functionally equivalent invoking the “Duijntsee / latter the patent will be taken off to infringement actions, and that Goderbauer” decision of the ECJ of the register. the court competence shall be 5 November 1983, alleging that the determined as such. dispute really was about who had Too much choice the better right to the ECOFIN There is more to this than In a decision of 13 November 1998 trademark, which would not fall immediately meets the eye, (Bank Audi / Volkswagen; BGE 124 under Article 16 section 4 LC. however. Article 16 section 4 of III 509), it was held that actions for the Lugano Convention provides the declaration of invalidity are The Swiss Federal Tribunal that the courts where the Patent functionally equivalent to a confirmed that an action for nullity Register is kept shall have exclusive cancellation action and shall obey of a registered right, brought for competence over litigious matters court competence rules for such. whatever reason, falls under Article concerning that Register. But an 16 section 4 LC, and thus action to declare the invalidity of a These were the leading court confirmed the competence of the patent does not strictly relate to the decisions in this area for almost a Swiss courts. Register, because the claimant does decade. A number of recent not request cancellation in the decisions provided the Federal In a decision dated 16 October Register; he only wants a Supreme Court with an opportunity 2006, the Zurich Commerce Court declaration of invalidity. The same to fine-tune its jurisdiction in held that the exclusive competence is true for an action to declare the various aspects. of the courts pursuant to Article 16

CMS European Patents Review – 51 section 4 LC is even applicable if The court held that it does not Conclusion the validity question is only a matter whether a potential infringer Article 2, Article 5 section 3 and preliminary question. The court thus acting as claimant requests a Article 16 section 4 of the Lugano stayed the proceedings until the declaration of invalidity or whether Convention may appear to provide claimant would have obtained a the patent owner and potentially a clear and simple answer to the decision of the competent foreign infringed party requests the claimant looking for the appropriate court on the validity. The court declaration that a patent has been place to bring an action. The above explicitly mentioned the ECJ‘s GAT / violated by the defendant. Either shows that determining the LuK decision of 13 July 2006, claim is a claim falling under Article competent court is more of an art referring to Protocol No. 2 of the 16 section 4 LC, and shall thus be than just reading the law. The Lugano Convention, which requires determined by the courts of the wording of the claims and the the courts of all convention state where the Register is kept. individual facts of the case play a member states to adjust their court The court acknowledged that a crucial role in finding out either practice to the ECJ’s. violation constitutes a tort, so what choices are available or, Article 5 section 3 LC might apply. rather, which single court is In a case decided on 23 October However, the court said that only competent. 2006 (G / A+B, BGE 132 III 778), under the most rare circumstances the question before the court was might it be appropriate to apply where an action requesting the Article 5 section 3 LC instead of Dr Robert G. Briner declaration that a patent was Article 16 section 4 LC. Partner, Zurich invalid must be brought. The T +41 44 285 11 11 claimant invoked Article 5 section 3 The court at the place where the [email protected] LC, saying that patent violation was infringement occurred (or where a damaging act, so that the the damage materialized, Article 5 claimant had a choice of either the section 3 LC) is not normally defendant‘s domicile, the place sufficiently “close” to the dispute where the violation occurred, that it would be justified for that or the place where the damage court to take precedence over the materialized. The claimant was a court where the Register is kept. Swiss resident, the defendants were This finding was again confirmed by domiciled in Germany, and the the Federal Supreme Court only action was brought in Switzerland months later, in a decision of 13 (the place where the damage March 2007 (A / B, BGE 133 III materialized). 282).

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