PATENT INFRINGEMENT AND REVOCATION JURISDICTION REPORT: HUNGARY
Eszter Szakács Danubia Patent & Law Office
An essential characteristic of the patent litigation system in Hungary is that patent infringement proceedings and revocation proceedings are strictly separate. According to the rules of civil procedure, the court can suspend any lawsuit if its adjudication is dependent on the outcome of another— ongoing—administrative or civil lawsuit, forming a preliminary question. Te courts have confirmed that in an infringement proceeding, the court will start by looking at the actually registered status of the patent, and if a revocation proceeding is started, the infringement court has no competence to prejudice its outcome. From this, it follows that if the defendant certifies in a patent infringement proceeding that the validity of the patent in suit has been challenged by a revocation action, this becomes a preliminary question and the infringement procedure is consequently stayed by the courts. Importantly, according to the court practice, the adjudication of an interlocutory injunction cannot be prevented by reference to an ongoing revocation proceeding.
The Supreme Court
Te Supreme Court recently delivered a decision that the result of a revocation proceeding is essential to the decision in the infringement proceeding and therefore suspension is a must.
In this case, the defendant of the infringement lawsuit appealed against the judgment establishing infringement on the grounds that he had initiated a revocation proceeding against the patent in suit before the Hungarian Patent Office. Te Metropolitan Court of Appeal suspended the infringement proceeding, declaring that the result of the revocation proceeding in question constitutes a preliminary question for the patent infringement proceeding. Te court found that the plaintiff’s interests are properly protected by the earlier granted preliminary injunction.
Te plaintiff submitted an appeal against this decision, stating that according to section 152 (1) of the Code of Civil Procedure, the court is not obliged to stay the proceedings, but is only entitled to do so aſter assessing the relevant circumstances. Te plaintiff emphasised that since the litigation started more than six years earlier, and the defendant had not questioned the patent’s validity since then (nor in the previous 19 years of the patent’s lifetime), the proceedings were in bad faith and an intentional delay of the proceeding. Te plaintiff also claimed that the defendant was in default for launching the revocation proceeding without any good reason and so it should not be considered.
Te Supreme Court held that a revocation proceeding constitutes a preliminary question on the subject of the same patent and, consequently, the court must suspend the infringement proceeding until a legally binding
“ ACCORDING TO THE RULES OF CIVIL PROCEDURE, THE COURT CAN SUSPEND ANY LAWSUIT IF ITS ADJUDICATION IS DEPENDENT ON THE OUTCOME OF ANOTHER—ONGOING—ADMINISTRATIVE OR CIVIL LAWSUIT, FORMING A PRELIMINARY QUESTION.”
decision is made in the revocation proceeding, regardless of when it started. Tis is the first time the court has declared that even though the wording of the law is permissive, revocation proceedings must stay a patent infringement case.
Te court further held that the limitation of the allowable evidence at second instance does not exclude staying a proceeding even during an appeal.
Repeated revocation actions
In another case, the Supreme Court dealt with the issue of a repeatedly filed revocation action. Te patentee had initiated a patent infringement lawsuit in 1993 based on a certain patent. Due to the revocation request filed by the defendant, the infringement lawsuit was suspended for nearly 10 years. Aſter the proceeding was resumed and infringement established in 2005, the plaintiff began to sue another defendant in a new patent infringement proceeding based on the same patent. Tis new defendant also filed a revocation action against the validity of the patent. Te infringement court stayed the infringement proceeding pending the resolution of the revocation proceeding. Although the patentee objected and appealed against the suspension, arguing that the revocation request is based on the same revocation grounds—although referring to new prior art too—as the previous revocation action, the Metropolitan Appeal Court confirmed in its decision that the outcome of the repeated revocation action is a preliminary question and the suspension of the infringement lawsuit is necessary even if it is harmful to the interests of the plaintiff. Once again, the court refused to deal with the potential admissibility of the repeated revocation request, arguing that it belongs to the competence of the Hungarian Patent Office.
Conclusion
Te strict separation of infringement and revocation proceedings forms such an essential character of the Hungarian patent litigation system that it needs to be taken into account when it comes to enforcing patent protection.
Eszter Szakács is an attorney at Danubia Patent & Law Office. She can be contacted at:
central@danubia.hu
84 World Intellectual Property Review November/December 2010
www.worldipreview.com
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