WORKING SESSION
The Unified Patent Court
Hana PIPKOVA - Judge, Prague Court of Appeal (Městský soud v Praze) - Patent litigation system
Directive 2004/48/EC of the European Parliament and the Council of 29 April 2004 on the enforcement of intellectual property rights was transposed into Czech law by Law No. 221/2006.
This law governs the division of jurisdiction in patent matters in the Czech Republic. The court competent to rule on infringements of intellectual property rights (including industrial property rights) is the Prague Court of Appeal (Městský soud v Praze).
This court has four divisions: Civil Law, Criminal Law, Administrative Law and Commercial Law; the latter two being competent to hear patent cases.
The Administrative Law Division is responsible, among other things, for opposition, limitation and appeal proceedings.
The defendant is always the Czech Patent Office (CPO) in Prague.
The claimant may be the patent applicant, the inventor or an interested third party.
The subject of the proceedings is a decision of the CPO (validity cases).
The Commercial Division deals with cases of unfair competition.
The defendant and the claimant can be natural or legal persons.
The proceedings concern the protection of intellectual property rights and associated injunctions against infringers (infringement cases).
The two procedures are entirely independent.
Judgments of the Court of Appeal's Administrative Law Division become final on service to the parties. The only recourse against such judgments is an extraordinary appeal to the Supreme Administrative Court (Nejvyšší správní soud).
The Commercial Division's judgments do not become final on service and the parties can challenge them by ordinary appeal to Prague High Court (Vrchní soud v Praze) and - as an extraordinary remedy which is not automatically admissible - an appeal on a point of law to the Supreme Court (Nejvyšší soud).
If you compare my talk with the previous speaker's, you will see that the Czech system is very similar to the German one. The difference is at the final instance: in Germany, the Federal Court of Justice acts as the final instance in all proceedings, whereas we have two - entirely independent - final instances.
Given the degree to which the Czech legislation on IP rights has been harmonised with EU law, the Czech system can be considered adequate. The main aim of the administrative courts is to guarantee that the legal protection required as a fundamental civil right is afforded as effectively and promptly as possible and that all state action is lawful. In keeping with that aim, an oral hearing constitutes a fundamental element of the procedure before the Czech administrative courts, although they may dispense with such a hearing with the parties' consent or if the contested decision is not open to review. At the hearing, the court gathers evidence, in particular by inspecting the material offered as proof, examining the parties, witnesses, experts and third parties and consulting other documentary evidence obtained. The scope of the court's review of a contested administrative decision is determined by the claimant's statement of claim.
Ruling in the form of judgment, the courts can annul the contested decision (administrative act), if it is found to be unlawful, and remit the case to the CPO for fresh proceedings and decision, or they can dismiss the action.
There are at most two stages to the CPO grant procedure: examination and, as the case may be, opposition. The parties can appeal against the CPO's decision. The CPO President decides on this appeal (which has suspensive but not devolutive effect). An appeal against the President's decision can then be lodged with the Administrative Division of Prague Court of Appeal.
The major Czech inventors are never parties to, or interested third parties in, proceedings before the Administrative Division. The Czech Academy of Sciences' Institute of Organic Chemistry and Biochemistry, which ranks among the Czech Republic's top inventors and patent applicants (especially under Prof. Antonín Holý), files patent applications for its inventions with the US Patent Office as a matter of course. Within a year of grant, it files an application in Europe too, either with the CPO or the EPO in Munich. Not only are patents granted more quickly in the USA than in Europe, but also the fees, which are anyway lower, are reduced by a further 50% for academic institutions. The renewal fees are not payable annually, but only every three-and-a-half years.
The invention in respect of which the patent proprietor is entitled to protection by virtue of the patent is determined by the patent claims. The parties to proceedings before Prague High Court are usually foreign pharmaceutical companies. Let us now look at some real-life cases from the pharmaceutical sector:
Method according to any of claims 11 and 12 wherein the bisphosphonic acid or a pharmaceutically acceptable salt thereof is administered as defined in any of claims 1 to 10.
European patent No. 1 506 041 "Ibandronic acid for the treatment and prevention of osteoporosis"
Filing date: 2.5.2003
Priority date: 10.5.2002 (EP)
Applicant: F. HOFFMAN-LA ROCHE AG, Basle (CH)
Application published: 20.11.2003
Patent published: 24.10.2007
The invention relates to a method for the use of a bisphosphonic acid or pharmaceutically acceptable salts thereof to manufacture medicaments for the prevention or treatment of disorders characterised by pathologically increased bone resorption, especially for the prevention and treatment of osteoporosis.
The proprietor of European patent No. 1 506 041 brought an action before the Commercial Division against (1) Teva Pharma B.V., Utrecht (NL), (2) Teva Pharmaceuticals s.r.o., Prague (CZ), and (3) Teva Czech Industries s.r.o., Opava (CZ), alleging patent infringement and a breach of the Law on unfair competition and requesting both an injunction and an order prohibiting the defendants from marketing their drug "Ibandronic Acid Teva 150 mg, film-coated tablets" (No. EU/1/10/642/003 and No. EU/1/10/642/2004) on the Czech market.
In a preliminary decision, the Commercial Division granted the proprietor's requests with respect to defendants (2) and (3). This decision was upheld by Prague High Court on 14.12.2011, even though the EPO's decision of 9.12.2010, issued after opposition proceedings, to maintain European patent No. 1 506 041 as granted with minor amendments to the claims had been contested in an appeal filed by some of the opponents (including Teva Pharma B.V.). The appeal before the EPO is still pending, as is the national action for infringement and breach of the Law on unfair competition.
Czech patent No. 298 499 "Controlled release of oxycodone compositions"
Filing date: 25.11.1992
Priority date: 27.11.1991 (USA)
Applicant: Mundipharma Medical GmbH, Basel (CH)
Application published: 13.4.1994
Patent published: 17.10.2007
Patent term: until 25.11.2012
The invention relates to a method for substantially reducing the range in daily dosages required to control pain in approximately 80% of patients whereby an oral solid controlled release dosage formulation having from about 10 to about 40 mg of oxycodone or a salt thereof is administered to a patient.
The formulation, when administered repeatedly at 12 hour intervals, provides a mean maximum plasma concentration of oxycodone from about 6 to 60 ng/ml from about 2 to 4.5 hours after administration, and a mean minimum plasma concentration from about 3 to 30 ng/ml from about 10 to 14 hours after administration.
Another embodiment is directed to a method for substantially reducing the range in daily dosages required to control pain in substantially all patients.
The proprietor of Czech patent No. 298 499 brought an action before the Commercial Division against Zentiva k.s., Prague (CZ), alleging patent infringement and a breach of the Law on unfair competition and seeking both an injunction and an order prohibiting the defendant from marketing its drug "Dolocodon 10 mg, 20 mg and 40 mg" (reg. Nos. 65/674/10-C, 65/675/10-C and 65/676/10-C) in the Czech Republic.
The CPO President had already issued a final decision on 27 June 2011 on the defendant's request for a finding that Dolocodon did not collide with the scope of Czech patent No. 298 499. He had refused the request on the ground that the drug displayed all the essential features of the cited patent claims. Although the defendant could have done so, it refrained from lodging an appeal with the Administrative Division.
The proprietor's requests were granted by a preliminary decision, and this decision was upheld by Prague High Court on 11.6.2012.
Commenting on the defendant's submissions, Prague High Court explained that, in arriving at its preliminary decision on the request for an injunction, the court could not merely consider the patent's term and its assessment had to take account of factors other than the fact that protection would end on the date of the patent's expiry (here: 25.11.2012). The action for infringement and breach of the Law on unfair competition is still pending.
Czech patent No. 300 514 "Pharmaceutical combination of ethynylestradiol and drospirenone for use as a contraceptive agent"
Filing date: 31.8.2000
Priority date: 31.8.1999 (USA), 31.8.1999 (EP)
Applicant: Bayer Schering Pharma Aktiengesellschaft, Berlin (DE)
Application published:
14.8.2002
Patent published:
3.6.2009
The proprietor of Czech patent No. 300 514 brought an action before the Commercial Division against Gedeon Richter, Budapest (HU), alleging patent infringement and a breach of the Law on unfair competition and seeking both an injunction and an order prohibiting the defendant from marketing its drug "Maitalon" (No. 17/267/10-C) in the Czech Republic.
The Commercial Division granted the proprietor's requests by a preliminary decision, upheld by Prague High Court on 23.3.2011.
Commenting on the defendant's contention that preliminary decisions in patent cases, which lasted more than nine years according to statistics issued by the Czech Ministry of Justice, were tantamount to a final settlement of the matter and its citation of the CPO's decision of 7.2.2011 to revoke Czech patent No. 300 514, Prague High Court observed that it sufficed for the purposes of the preliminary decision that the claimant had proven the various claims. The defendant's conduct was classed as a breach of the Law on unfair competition.
The defendant's objection that the patent had ceased to have effect following its revocation by the CPO's decision of 7.2.2011 was irrelevant for the Commercial Division's decision since, despite the provisional outcome of the revocation proceedings, it remained bound by the patent's registration until it had been definitively revoked.
The CPO's decision to revoke the patent was later upheld by decision of its President of 1.12.2011. Although it could have done so, the proprietor refrained from lodging an appeal with the Administrative Division.
The action for patent infringement and breach of the Law against unfair competition having then been withdrawn on 16.12.2011, the Czech proceedings were closed on 23.2.2012.
A patent application for this invention was also filed with the EPO and, after examination, granted as European patent No. 1 214 076. On 18.8.2004, HEXAL Pharmaforschung GmbH (DE) filed notice of opposition to the patent, and the EPO revoked the patent by decision of 7.7.2011. A petition for review was filed on 25.11.2011, and, while the parties have already been notified of the date for the oral proceedings (22.11.2012), the proceedings are still pending. The judges in the Commercial Division respect the expert decisions of the CPO and EPO, as - more or less - does the Administrative Division. At issue in these proceedings were patent infringement and inventive step. As judges specialised in law, we are not in a position to assess the novelty or inventive step of inventions.
I would like to close my report with a comment on the Commission's proposals of autumn 2011 on the European and EU patent. To quote my favourite author, Milan Kundera: "Life is elsewhere". I cannot imagine how we - as members of a regional chamber of the Unified Patent Court also composed of colleagues from Slovakia, Poland and Hungary - are going to assess and rule on patent infringement and validity. That is my honest view.
As far as the conclusions of the European Council's meeting on 28 and 29 June 2012 are concerned, I see room for improvement, particularly on the proposals for the central court and the local chambers, which, in my opinion, should be composed only of judges from the host state of the chamber in question.