Restricted claims and the assumption of validity

01 March 2010

The vast majority of patent cases are factually driven, but the Austrian Supreme Court has recently handed down two judgments that assess several questions of law. Accordingly, these decisions are likely to serve as the leading cases for many patent judgments in the future.

The cases concerned a supplementary protection certificate for a European patent protecting the use of nebivolol for improving the effectiveness of blood pressure-reducing drugs.

As parallel cases were also litigated in Germany and the UK and in these jurisdictions first instance decisions were rendered while the case was pending before the first instance court in Austria, the parties disagreed as to what extent these foreign decisions on the validity of the European patent should have evidentiary value in the Austrian proceedings for a preliminary injunction.

The Supreme Court correctly found that foreign judgments on the same European patent do not affect the Austrian part of the European patent as revocation judgments only have legal effect in the country where the decision is taken. However, the reasoning of these judgments might be used as evidence of the invalidity of the patent in suit during Austrian proceedings for a preliminary injunction.

However, if the invalidity of the patent in suit cannot be fully shown within the restrictions of proceedings for a preliminary injunction, the legal assumption of the validity of the patent prevails. The possibility that the legal basis of the injunction might fall away due to later revocation of the patent should be taken into account by requiring a security payment by the patentee.

With respect to pharmaceutical products, it was until now contentious in Austria whether the confirmation of being able to supply a certain drug (which is necessary to get entered into the refunding list of drugs that are accepted by the general Austrian social security carriers) already constitutes an infringing act. It was now found that such a request to get entered into this list does satisfy the exclusive right of offering for sale. Accordingly, the patent is also infringed if the infringing products are merely offered for sale during the patent lifetime under the condition that the products are to be put on the market only after the end of the patent term.

Generally all the Court's findings on the questions of law raised in these proceedings are correct, but only when considered on an abstract level. The peculiarity of the decided cases was that the patentee did not rely on the patent as granted but on a limited scope of protection; the subject matter of these limited claims was neither searched nor examined. Accordingly, it seems unjust that the Supreme Court assumed the validity of the voluntarily restricted patent in suit. If the patentee voluntarily restricts the patent in suit, it seems equitable to assume that the patent was not valid as granted. Thus, the patentee should bear the burden of proving that the restricted scope of protection satisfies the requirements of patentability. If such an assessment cannot be made within the limits of proceedings for preliminary injunctions, the validity of the patent in suit cannot be assumed, and the request for a preliminary injunction must fail.

As this was the first judgment of the Supreme Court dealing with a patent that was restricted during litigation (by applying new Article 105a EPC), it remains to be seen whether the Supreme Court will adhere to the legal assumption of the validity of a voluntarily restricted and thus (totally) unexamined patent.