Since of April 15, 2011 the Hungarian Patent Act contains a provision in Article 104(2) according to which in circle of ruling on the necessity to protect the plaintiff’s rights deserving special appreciation which one of the preconditions of ordering preliminary injunction the court shall specifically take into account whether the subject patent was revoked by the Hungarian Intellectual Property Office, or the European patent effective also in the Republic of Hungary was revoked by an opposition division of the European Patent Office or in another Member State of the European Patent Organisation.
In November 2009 the Metropolitan Court banned the Respondent by means of preliminary injunction from distributing its pharmaceutical product upon the request of the Patentee. The patent in suit covers a pharmaceutical composition consisting of a given active ingredient and certain additives defined in the claim. The product of the defendant contains the said active ingredient and among its additives ethanol, which in the Metropolitan Court’s assessment fulfilled the requirements concerning the additives described in the patent. The Metropolitan Court placed the preliminary injunction even though there were pending nullity requests against the patent, with respect to the specialty of the Hungarian patent litigation system, namely the strict separation of infringement and validity questions (bifurcation). The Patentee was obliged to approx. EUR HUF 570 000 as security.
In October 2010, the Hungarian Patent Office (now renamed as Hungarian Intellectual Property Office) has made a decision as first instance authority in the nullity proceeding and limited the main claim in a way that it excluded ethanol from the circle of additives.
While it was not yet known whether any party will appeal against the decision of the Hungarian Patent Office the Respondent referred to this decision and requested the Metropolitan Court to withdraw the preliminary injunction as based on the restriction its product is no longer infringing being ethanol excluded from the additives. The patentee requested the court to maintain the preliminary injunction partly because the restriction is not yet final and also because it considered that other additives in the Respondent’s product make it still infringing.
After receiving the parties’ arguments the Metropolitan Court maintained the preliminary injunction and rejected the Respondent’s request for withdrawal of its earlier decision.
In its reasoning the Metropolitan Court has declared that earlier it placed the preliminary injunction with respect to its conviction that patent infringement was probable. The court found that in the absence of a binding decision concerning the validity if the patent, the claims are still valid, therefore there is no change in the facts of the case.
The court stated that with the limitation decision of the Hungarian Patent Office still being subject to the right of appeal, the scope of protection is too uncertain to conclude that infringement ceased to exist.
The court pointed out that non-binding decisions of the Hungarian Patent Office may be changed by the rulings of the court acting as appeal forum, so if in infringement cases the court attributed special significance to non-binding decisions of the Hungarian Patent Office, the right of the Patentee would be unduly harmed without having been provided any security from the Respondent. On the other hand, the court pointed out, the patentee is obliged to deposit security when the preliminary injunction was placed, so Respondent is secured. The court concluded that if non-binding decisions of the Metropolitan Court were of capital importance that would mean that patentees receive less protection for their rights than potential infringers.
The court further confirmed the bifurcation system by stating that in line with guidelines of the Supreme Court the infringement court is not entitled to make assumptions concerning the outcome of the nullity proceeding. Therefore the court decided to maintain the preliminary injunction even after the Hungarian Patent Office limited the scope of the patent without examining whether the product of the Respondent still falls into the scope of the restricted claim.
The Respondent appealed this decision with success, namely the court of second instance annulled the decision of the Metropolitan Court and ordered it to repeat the proceeding.
The Metropolitan Court of Appeal took into account the provisions of the Patent Act and the Code of Civil Procedure which provide for the annulment of the preliminary injunction and emphasized that preliminary injunctions are quick, effective but at the same time temporary measures. The Metropolitan Court of Appeal emphasized that Article 104 (2) does not require the binding force of decisions ruling on revocation.
Although the Metropolitan Court of Appeal shared the opinion of the lower court in stating that with regard the probability of patent infringement there is no change in the facts as long as the patent is not revoked with a final effect, the court of second instance also thought that it cannot be left out of consideration that there was a change in the scope of protection which requires the review of the justification of preliminary injunction. This – according to the Metropolitan Court of Appeal – is only possible via the examination whether the allegedly infringing product falls in the restricted scope of the patent. The Metropolitan Court of Appeal also pointed out that in the revocation proceeding the Claimant offered the restriction of the patent and did not appeal against the restriction while the Respondent appealed for total revocation which made the Appeal conclude that with regard to the restriction the decision of the Hungarian Intellectual Property Office is binding and shall be taken into account. With respect to this the Metropolitan Court of Appeal annulled the decision and ordered the court of first instance to repeat the proceeding instructing them to examine the allegedly infringing product in light of the restricted claims of the patent.
E. Szakács