ENFORCEMENT OF PATENT RIGHTS IN EUROPE

The Hungarian way

Zsolt SZENTPÉTERI

S.B.G.&K. Patent and Law Offices, Budapest

International Seminar

Intellectual Property Rights – Advantage Business

13-14th of February 2010

History

• European Patent Convention - 5.10.1973.

• Hungary joined the EPC on January 1, 2003.

• First Hungarian Patent Act: 1895

• Substantial changes: - Act II of 1969

- Act XXXIII of 1995

History

• Act XXXIII of 1995: prepared with the intention to harmonize the Hungarian patent law to the European patent law and accelerate the accession of Hungary to the EPC

• With the accession of Hungary the validation of European Patents becomes possible also for the territory of Hungary (only for patents with a first filing date on or after January 1, 2003)

The European Patent

• European patent: regional patent

• the patent is equivalent to a national patent in each member state (where validated)

• The application is examined and the patent is granted

by one authority (EPO) only

• The member states give up their rights for examination and grant.

The European Patent

• However, if the European Patent is granted it has to be validated in each country the Applicant wishes to get the patent protection.

• Conditions of validation: payment of the necessary fees, filing of the translation of the specification (substantial changes due to the London agreement)

• After validation: the European Patent provides the same protection as a Hungarian national patent

Patent infringement

• In case of as valid patent always exists the possibility of infringement.

• Q: Who can be an infringer?

A: Any person who unlawfully exploits a patented invention commits patent infringement.

The rights provided by a patent

• What are the rights provided by a patent?

- exclusive right to exploit the invention - prevent any person from making, using, putting on the market or offering for sale a product which is the subject matter of the invention, or stocking or importing the product for such purposes

- prevent any person from using a process which is the subject matter of the invention

The rights provided by a patent

- prevent any person from making, using, putting on the market, offering for sale or stocking or importing for such purposes a product obtained directly by a process which is the subject matter of the invention.

- prevent any person from supplying means relating to an essential element of the invention, for carrying out the invention where it is obvious that the means are suitable and intended for carrying out the invention (contributory infringement)

Remedies

• Patentee's possible remedies:

- request for the declaration of infringement by the court

- request for injunction

- request for giving information on the persons involved in

the production and distribution of the infringing goods or

the provision of infringing services and of their channels

of distribution;

- request for satisfaction from the infringer by declaration

(public) or by other appropriate means;

Remedies

- request for surrender of the enrichment

- request for seizure, the transfer to a specific person, the recall and the definitive removal from the market, or destruction, of the infringing products, and means and materials used for infringement.

Request for declaration of infringement

by the court (patent suit)• Patent suit - starts before the Metropolitan Court (first instance) - professional

panel having three members (two of them with technical degree)

• Second instance: Court of Appeal: a panel having three members (only law degree)

• Third instance (rather unusual): High Court: only in case of serious violation of rights by the first and/or second instance courts.

Injunction

• An injunction can also be requested

- Instant protection, can be executed regardless

of any appeal

- Provisions: - proper substantiation of the fact of infringement

- a situation subject to special reasonableness

- theoretical deadline for decision: 15 days.

- oral hearing can be held but the court is not obliged to do so

• if the request for injunction is successful : the patent suit has to be started.

Validation Issues

• Q: Can validation issues be the subject of an injunction?

• A: No, but the Metropolitan Court has to consider all aspects of the particular case, for example the fact that any equivalent of the patent in question has been nullified in any foreign country especially in any country being member of the EPC.

•

Validation issues

• Q: Can validation issues arise during a patent suit?

• A: Yes. The validity of the patent is essentially pre-judicial for the patent suit. The Metropolitan Court has to suspend the patent suit until the nullity claim (if any) has been decided on.

Defence

• The alleged infringer's possibilities

- counterclaim against the injunction

- initiation of a nullification action

- request for establishment of non-infringement

Defence

• The latter two will be started by the HPO. The HPO decides in a three-membered panel, all of the members have technical degree. The decision of the HPO can be appealed before the MC.

• In case of a nullification action an oral hearing has to be held while during an establishment of non-infringe- ment process the oral hearing is optional only, especially, if Patentee agrees that the solution of Claimant does not fall in the scope of the patent.

Case Law

• Case law:

1. Servier vs Actavis Hungary

2. Aventis Pharma vs Pharmacenter Hungary

Thank You for Your Attention