JURISDICTION REPORT: HUNGARY
RELIABLE WITNESSES: WHO DO COURTS BELIEVE?
Judit Kerény Danubia Patent & Law Office
Tis case is interesting because its outcome in Hungary was different from those in parallel UK and German cases. Te decision is not yet final, but it demonstrates the way Hungarian patent authorities think about patent matters.
A request for the revocation of the Hungarian patent for a successful blood pressure-reducing agent was filed, based on lack of novelty and inventive step.
A conference book was published including an article containing potentially invalidating prior art. However, it was published aſter the patent’s priority date, though the petitioner claimed it was based on a presentation given by an employee before the priority date. Te petitioner claimed that the published article was an exact reproduction of the presentation, as it described an essential feature of the invention summarised as follows: the protected blood pressure-reducing active agent is in fact a stereo-isomeric mixture—a 1:1 mixture of the d- and l-isomers of a compound. Te compound was previously known, but without its stereochemical structure. Terefore, the presentation constituted a bar to novelty.
In response to the allegation, the patentee stated that the presentation did not include the critical information about the stereochemical structure, and this only appeared in the article.
Te petitioner attached witness statements from conference participants to prove the allegation. One of the witnesses said that he did not know why the critical information on the stereochemical structure would not have been disclosed. Te other witness said that although he took handwritten notes during the presentation, he did not record the stereochemical structure.
Te lecturer himself declared that he could not remember precisely aſter 20 years, but he was convinced that he did not disclose the stereochemical structure, since he had signed a confidentiality agreement with his company not to.
Te UK proceeding included a cross-examination; the judge was not convinced of why the lecturer would have not mentioned the stereochemical structure, and revoked the patent accordingly.
Te other basis of the revocation proceedings was that the patent was based on a selection invention. Te basic molecule, without the stereochemical structure, was known before the priority date in an earlier patent. Tis molecule comprised four stereochemical isomers, of which two were selected in the attacked patent, mixed and combined to a previously
undisclosed effect. According to the petitioner, this surprising effect was a mere routine activity and was inherent in the earlier patent. Te petitioner also highlighted that no comparative results were filed to demonstrate the difference between the new and old inventions.
In the UK, the judge acknowledged the inventive nature of the two selected isomers, aſter a formal delimitation of the claim from the known compound. Te UK judge revoked the patent exclusively because of the presentation.
In Germany, the patentability of selection inventions was generally not acknowledged at the date of the proceeding, and the patent was revoked on that basis.
Te Hungarian Patent Office essentially accepted the decision of the UK court, acknowledged the selection invention, but established lack of novelty due to the alleged identical nature of the orally disclosed information and the published article. It accepted the first witness statement and essentially ignored the declaration of the lecturer, which it considered biased.
Both parties appealed: the petitioner in order to get a better reasoning, and the patentee to change the decision.
Te Metropolitan Court decided to uphold the patent because it accepted
the lecturer’s statement. According to the court, an article published aſter the priority date per se cannot be anticipatory. As the petitioner could not prove that everything was orally disclosed at the conference, lack of novelty could not be established.
Te court disapproved of the patent office’s decision to discriminate between the statements of witnesses and the declaration of the lecturer, just because the lecturer was employed by the patentee, and accepted the lecturer’s argument.
As far as the chemical arguments are concerned, the court was of the opinion that the invention could not be deduced from the earlier patent. It could not be foreseen that one isomer enables the blood pressure-reducing effect of the other. On this aspect, it confirmed the patent office’s decision.
Te patent was upheld, but the patent term has since elapsed.
Judit Kerény is a partner at Danubia Patent & Law Office LLC. She can be contacted at:
kereny@danubia.hu
82 World Intellectual Property Review September/October 2010
www.worldipreview.com
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