The Metropolitan Court of Appeal in a decision of 03/03/2011 dealt with the question of proof of oral disclosure in the context of lack of novelty argued in a patent revocation proceeding. The Court ruling differs from the decision in parallel UK proceedings.
The Patentee was the holder of an - in the meantime expired– patent related to a given pharmaceutical composition. The Petitioner – after being sued for infringement – initiated a revocation proceeding based on many revocation grounds, including lack of novelty. In the circle of lack of novelty the Petitioner argued that the subject of the invention was orally disclosed at a conference held some time before the priority date, by display of the stereochemical structure of the given compound. In support of such statement the Petitioner submitted a written publication that compiled written articles that the oral presenters made about their lectures. This book was published after the priority date.
However, doubts were raised by the Patentee, since besides the publication published only after the priority date nothing included the allegedly novelty destroying presentation of the compound including the presentation abstract disseminated to the participants before the presentation as well as the notes of one of members of the audience which was obtained (in fact, said notes contained the structure of the compound but without the stereochemical indications which contained the allegedly novelty destroying information). Witness statements were obtained by both parties but none of the witnesses were able to make statements without uncertainty, given the decades elapsed since the date of the conference.
Interestingly, the case had a parallel proceeding in the UK where Mr. Justice Floyd has ruled that it was more likely that the stereochemical information was disclosed orally and therefore established lack of novelty and stated that the patent is invalid.
The Hungarian Patent Office, acting as first instance authority also accepted the post-priority date published conference book as primary evidence of novelty destruction and annulled the patent, based on the same evidences which was primarily filed in the UK procedure. However, when the case was revealed by the Metropolitan Court, the court reversed the decision and maintained the patent arguing that the Petitioner failed to prove without doubt that the novelty-bearing information was indeed disclosed orally.
The Metropolitan Court of Appeal has maintained the decision of the lower court and this maintained the patent. The Court of Appeal agreed, that notes of the members of the audience as well as the content of the abstract disseminated before the presentation suggest that the Petitioner’s allegation constitute doubts against the allegation of oral disclosure. In such a situation the Metropolitan Court of Appeal relied on Article 164 of the Code of Civil Procedure which establishes that the burden of proof relies on the party who is interested in making the court accept an allegation as true and pointed out that the lower court was right when applied this provision to the prejudice of the Petition, due to the doubts concerning whether oral disclosure indeed happened. The Appeal Court also pointed out that it is neither bound nor influenced by decisions of foreign courts even if they concern an analogue patent, since different national courts are free to decide on patentability based on their own – sometimes different – judicial practice and legal traditions.
The significance of this decision lies in the confirmation of the independence of the Hungarian judicial practice from the influence of foreign jurisdiction with respect to validity national patents.
(EPLAW Patent Blog) E. Szakács