Brief IP news

briefs_1131. Protecting your shop interior: what are the options? For more information here.

2. Protecting your intellectual property. For more information here.

3. Patentability of pharmaceutical inventions, 15.01.2020 – 16.01.2020, Brussels. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

Patents, pharmaceutical products and compensations

capsule-pill-health-medicine.jpgThe European Court has issued a decision in case C‑688/17 Bayer Pharma AG v Richter Gedeon Vegyészeti Gyár Nyrt., which concerns the following:

On 8 August 2000, Bayer filed an application for a patent relating to a pharmaceutical product containing a contraceptive ingredient at the Szellemi Tulajdon Nemzeti Hivatala (National Intellectual Property Office, Hungary; ‘the Office’). The Office published that application on 28 October 2002.

Richter, in November 2009 and August 2010, and Exeltis, in October 2010, began marketing contraceptive pharmaceutical products in Hungary (‘the products at issue’).

On 4 October 2010, the Office granted Bayer a patent.

On 8 November 2010, Richter filed an application with the Office for a declaration of non-infringement seeking to establish that the products in question did not infringe Bayer’s patent.

On 9 November 2010, Bayer applied to the referring court, the Fővárosi Törvényszék (Budapest High Court, Hungary) for provisional measures to prohibit Richter and Exeltis from placing on the market the products at issue. Those applications were rejected on the ground that the plausibility of the infringement had not been demonstrated.

On 8 December 2010, Richter and Exeltis submitted an application for a declaration of invalidity of Bayer’s patent to the Office.

On 25 May 2011, Bayer submitted further applications for provisional measures before the referring court, which, by enforceable orders of 11 July 2011, entering into force on 8 August 2011, prohibited Richter and Exeltis from putting the products in question on the market, and also requiring them to provide guarantees.

On 11 August 2011 Bayer initiated infringement proceedings against Richter and Exeltis before the referring court. Those proceedings were suspended until a final decision is issued in the proceedings for the declaration of the invalidity of Bayer’s patent.

Having heard appeals by Richter and Exeltis against the orders of 11 July 2011, the Fővárosi Ítélőtábla (Budapest Regional Court of Appeal, Hungary), on 29 September and 4 October 2011 respectively, set aside those orders on the grounds of procedural defects and referred the case back to the referring court.

By orders of 23 January 2012 and 30 January 2012, the referring court refused Bayer’s applications for provisional measures. Whilst it took into account that Richter and Exeltis had entered the market in infringement of the patent, the referring court held that, having regard, in particular, to the advanced stage of the proceedings for a declaration of invalidity of Bayer’s patent and for revocation of an equivalent European patent, the adoption of such measures could not be deemed to be proportionate. By decision of 3 May 2012, the Fővárosi Ítélőtábla (Budapest Regional Court of Appeal) upheld those two orders.

By decision of 14 June 2012, the Office granted in part the application for a declaration of invalidity in respect of Bayer’s patent submitted by Richter and Exeltis. Following a further application by Richter and Exeltis, the Office withdrew its decision of 14 June 2012 and, by decision of 13 September 2012, declared that patent invalid in its entirety.

By order of 9 September 2014, the referring court set aside the Office’s decision of 13 September 2012. It also varied the Office’s decision of 14 June 2012 and declared Bayer’s patent invalid in its entirety.

By order of 20 September 2016, the Fővárosi Ítélőtábla (Budapest Regional Court of Appeal) upheld that order.

On 3 March 2017, the referring court terminated the infringement proceedings between Bayer and Exeltis following Bayer’s withdrawal from those proceedings.

By decision of 30 June 2017, the referring court definitively dismissed the claim for infringement brought by Bayer against Richter on the grounds of Bayer’s patent having been definitively declared invalid.

Richter, by a counterclaim brought on 22 February 2012, and Exeltis, by a counterclaim lodged on 6 July 2017, requested that Bayer be ordered to provide compensation for the losses they claim to have suffered as a result of the provisional measures referred to in paragraph 21 of the present judgment.

Before the referring court, Bayer submitted that those claims should be rejected, arguing that Richter and Exeltis themselves caused the losses they claim to have suffered by having intentionally and unlawfully placed the products in question on the market. In accordance with Article 340(1) of the Civil Code, there is therefore no justification for their claim for compensation for these losses.

In that context, the referring court considers, in essence, that, in the absence of any provision in Hungarian law specifically governing the situations referred to in Article 9(7) of Directive 2004/48, the general rules of the Civil Code relating to liability and compensation must be interpreted in the light of that provision. However, the referring court first raises questions regarding the scope of the rule contained in Article 9(7) of that directive and asks, in particular, whether that provision merely guarantees the defendant a right to compensation or whether it also defines the content of that right. Secondly, the referring court asks whether Article 9(7) of that directive precludes the national court, applying a provision of the civil law of a Member State, from examining the defendant’s role in the losses occurring.

In those circumstances, the Fővárosi Törvényszék (Budapest High Court, Hungary) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘1.  Should the expression ‘provide … appropriate compensation’ referred to in Article 9(7) of Directive [2004/48/EC], be interpreted to mean that Member States must establish the substantive rules of law on the liability of parties and the amount and method of compensation, by virtue of which the courts of the Member States can order applicants to compensate defendants for losses caused by measures which the court subsequently revoked or which subsequently lapsed due to an act or omission by the applicant, or in cases in which the court has subsequently found that there was no infringement or threat of infringement of an intellectual property right?

2. If the answer to the first question referred for a preliminary ruling is in the affirmative, does Article 9(7) of [Directive 2004/48/EC] preclude opposition to the legislation of a Member State by virtue of which the rules to be applied to the compensation referred to in that provision of the Directive are the general rules of that Member State on civil liability and compensation according to which the court cannot oblige the applicant to provide compensation for losses caused by a provisional measure which was subsequently held to be unfounded due to the invalidity of the patent, and which were incurred as a result of the defendant’s failure to act as would generally be expected in the circumstances in question, or losses for which the defendant is responsible for that same reason, provided that, when requesting the provisional measure, the applicant acted as would generally be expected in those circumstances?’

The Court’s decision:

Article 9(7) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, in particular, the concept of ‘appropriate compensation’ referred to in that provision, must be interpreted as not precluding national legislation which provides that a party shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss and which, in circumstances such as those in the main proceedings, results in the court not making an order for provisional measures against the applicant obliging him to provide compensation for losses caused by those measures even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case, including the conduct of the parties, in order, inter alia, to determine that the applicant has not abused those measures.

Who are the IP superheroes?

robin-1115934_960_720.jpgDennemeyer & Associates published an interesting article for Lexology discussing intellectual property protection and the different specialist involved and their roles as IP superheroes. According to this article, there are several roles:

  • “Shadow Hunter” – anti-counterfeiting;
  • “The Visionary” – patent examiner;
  • “Doctor Inventor” – patent engineer;
  • “The Lawman” – patent prosecutor;
  • “Major Trail” – patent litigator;
  • “Captain Europe” – patent attorney;
  • “The Sidekick” – IP paralegal;
  • “The Wonder” – trademark attorney;
  • “The Alliance” – consultants and trainers

We would like to add one more role:

  • “New Stars” – Intellectual property managers that are responsible for the strategic management of all corporate intangible assets;

What can you find in the latest issue of WIPO Magazine?

pexels-photo-315658.jpegWIPO announced the new issue of it WIPO Magazine, where you can find:

  • GII 2019: Creating healthy lives – the future of medical innovation
  • Curbing cultural appropriation in the fashion industry with intellectual property
  • Singapore’s biggest copyright reform in 30 years
  • The harsh reality of life as a musician: an interview with Miranda Mulholland
  • With Teqball the world is curved
  • Five years after Alice: five lessons learned from the treatment of software patents in litigation
  • A History of Intellectual Property in 50 Objects

For more information here.

Global Innovation Index 2019

gii_2019_1200.jpgWIPO published its Global Innovation Index for 2019. Switzerland was ranked as the most innovative nation in the world followed by Sweden and the US. The rest of the countries in the top 10 are Nederland, Finland, the UK, Singapour, Germany, Denmark, and Israel.

Bulgaria is ranked 40 which is three places behind the last year’s position. More data for the country can be found here.

More information regarding this index you can found here.

Companies rely on IPRs are more prone to growth according to a new study

computer-767776_960_720EPO and EUIPO published a very interesting study called “High-growth firms
and intellectual property rights”.

This study tries to make a connection between the protection of intellectual property assets and the likelihood of a company’s growth.

According to the study:

SMEs that have filed at least one IPR are 21% more likely to experience a subsequent
growth period, and 10% more likely to become an HGF. The likelihood of experiencing a high growth period is 9% higher for SMEs that have filed at least one patent and 13% higher for those that have filed at least one trademark.

The likelihood of experiencing a high growth period is 17% higher for SMEs that have filed at least one European IPR. Filing a European IPR, therefore, provides a positive indicator of an SME’s readiness to scale up business to European level.

In high-tech industries, the likelihood of high growth is 110% higher for SMEs that have filed one or more European patents. Interestingly, the predictive power of European patents is particularly high in low-tech industries (+172%), where a patent filing can be a relatively rare event.

IP bundles involving trade marks systematically outperform other bundles and single IPR categories, thus suggesting that trademarks are the basic building block of effective IP bundles. This is likely due to the fact that a trademark registration is related to market entry and thus turnover growth.

The full text of the study can be found here.