NATIONAL JUDGES' PRESENTATIONS
AT Austria
AT Austria - Irmgard GRISS - President of the Supreme Court - Decisions of the Austrian Supreme Court, available at http://www.ris.bka.gv.at/Jus/
(1) 17 Ob 35/09k dated 9 February 2010
This decision concerns a product marketed as a food supplement ("Vita Lady Vitalkapseln") which allegedly infringes a European patent protecting the use of an isoflavone phyto-oestrogen extract of soy or clover for the manufacture of a medicament for administration in unit dosage form for the treatment of pre-menstrual syndrome, symptoms associated with the menopause, or prostate cancer.
The defendant denied infringement, arguing that its product was a food supplement with no therapeutic healing effect. The lower courts did not rule on this argument, finding the patent to be infringed simply because the defendant's product contained an isoflavone phyto-oestrogen extract of red clover.
In the Supreme Court's view that is not sufficient; what matters is whether the active ingredient is used in the infringing product to a practically significant extent for the same purpose.
In principle, the burden of proof rests with the plaintiff. Yet if the defendant advertises its product as being suitable for treating the same diseases or disorders as the medicament protected by the patent, that constitutes prima facie evidence that the infringing product achieves the effect of the patent to a practically significant extent. The defendant may be able to refute this prima facie evidence by demonstrating the genuine possibility that its product has no effect. In that case the plaintiff would have to provide complete proof of the alleged infringement.
(2) 17 Ob 13/09z, 17 Ob 24/09t, both dated 19 November 2009
These decisions relate to a European patent protecting medicaments for lowering blood pressure with nebivolol as their active ingredient. The defendant wished to market a generic product containing the same active ingredient, and applied to have that product listed in the Reimbursement Code of the Central Association of the Austrian Social Insurance Institutions.
The plaintiff based its request for injunctive relief on a limited version of the patent claims, in that in claim 4 it replaced "umfassend" [comprising] with "bestehend aus" [consisting of] and thereby claimed infringement only in respect of compositions consisting only of certain isomers.
(Claim 4: A pharmaceutical composition comprising a pharmaceutically acceptable carrier, a compound of formula (I) as defined in any of claims 1-3 (1-nebivolol), and a blood pressure reducing agent having adrenergic and/or vasodilating activity, said agent being other than the said compound of formula (I).)
The issue was whether such a limitation was admissible. The Supreme Court maintained that it was: what mattered was that the scope of protection was reduced by the limitation and did not extend beyond the original disclosure (thus also 17 Ob 26/08k – Pantoprazol).
In its defence, the defendant cited decisions of the German Federal Patents Court and the English High Court in which the patent had been (partially) revoked, but on differing grounds, the German court saying that it involved no inventive step, while the High Court said it did, but held its teaching to have been prematurely disclosed.
The Supreme Court denied that it was formally bound by these decisions per se, but confirmed that in the event of proceedings relating to protective measures it would be possible to cite the grounds for them to refute the prima facie evidence of validity that was provided by the granting of the patent. The decisions might substantiate a submission to that effect, which might reduce the risk of conflicting national judgments.