JURISDICTION REPORT: HUNGARY
THE NEVER-ENDING PATENT STORY Michael Lantos
Danubia Law Office LLC
A Hungarian inventor designed a sports shoe intended mainly for football players. The inventor’s contribution lay in that the presence of grooves and ribs improved ball control; and the grooves were able to divert the ball in the desired direction, which increased the player’s accuracy of targeting the ball. A Hungarian patent was granted to the inventor covering this shoe.
The inventor noticed that one of the world’s largest sports shoe manufacturers brought a similar design into the market. He then launched a patent lawsuit in Hungary against the company, and in response the company filed a nullity proceeding against the patent. The infringement lawsuit was suspended by the competent court awaiting a final decision in the nullity case.
The basis of publications, wherein different
the nullity proceeding was two or three prior patent features of
the attacked patent were
disclosed. However, it was never disclosed that the shoe must have more than one zone in which the directions of the grooves and ribs are different, and that the ball-reflecting edges made on the surface of the prior art shoes were edges of discrete rubber areas instead of being densely juxtaposed grooves and ribs.
Te nullity proceeding was dealt with first by a Senate of the Hungarian Intellectual Property Office (HIPO). Te first decision maintained the patent in force but limited the wording of the claims—a few features visible on the drawing, but not essential for the function, were initially included. Te limitation was against the interest of the inventor and he filed a request for reconsideration to the Metropolitan Court, which is the competent patent court in Hungary. In the appeal the inventor suggested a different limitation and wording for the main claim and pointed out that the features introduced by the HIPO were not always necessary for making the invention. Te court then set aside HIPO’s decision and returned the case to it for consideration of the inventor’s new claims.
After much debate, HIPO accepted the position of the inventor and granted the patent substantially using the claim language submitted. The petitioner filed an appeal and the case was again before the Metropolitan Court. Besides attacking novelty and inventive step, the petitioner also attacked the alleged vague definitions used by the patent specifications and fought against the acceptability of
the wording,
objecting to broadening the scope and claiming that the wording had no support in the disclosure.
The court returned the case again to HIPO, stating that a clear and well- supported claim language has to be made. In this repeated proceeding
www.worldipreview.com
Michael Lantos is deputy managing partner at Danubia Law Office LLC. He can be contacted at:
lantos@danubia.hu
World Intellectual Property Review July/August 2012 61
“BESIDES ATTACKING NOVELTY AND INVENTIVE STEP, THE PETITIONER ALSO ATTACKED THE ALLEGED VAGUE DEFINITIONS USED BY THE PATENT SPECIFICATIONS AND FOUGHT AGAINST THE ACCEPTABILITY OF THE WORDING.”
a redefined terminology was used in the claims and the HIPO granted the patent with these amendments.
The petitioner filed another appeal, and the Metropolitan Court allowed the patent with further revised claim language which was acceptable to the inventor.
Te petitioner filed an appeal against this decision, and the case arrived at the Metropolitan Appeal Court, which is the final tribunal. In the appeal proceedings the parties substantially repeated their positions and earlier statements, and the Appeal Court sustained the decision of the Metropolitan Court, adding only minor corrections to the motivation thereof.
There are several lessons from this long history, but especially that a correct and precise definition in the description and good quality drawings have high significance during enforcement. If they are missing, it is a challenge to draft the claims without the addition of new matter. In addition, it was clear for all patent tribunals, that the prior art was not really relevant, and at the end of the day a good compromise could be made as to the wording of the claims.
A further lesson is that the Senate of the HIPO might do better to take the comments of the parties into account when suggesting limited claims, as any repeated process requires a large time and cost investment for the parties and for the office itself.
Finally, if the invention underlying a patent under attack is good, there can eventually be a victory even if a very strong and powerful attack is launched against it.
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