February 2011

There are countries, e.g. the United States, where it is common to file a declaratory action with the courts solely based on the ground that the IP right of the defendant is invalid. This is not possible in Austria, decided now the Austrian Supreme Court (OGH).

The case concerns a granted Supplementary Protection Certificate (SPC) which - of course - is based on a (European) Patent. It is, however, relevant for all IP rights.

As everybody knows, declaratory actions are only possible when a legal interest for it exists. Here, the plaintiff argued that the defendant replied to a letter that it will insist in respecting the SPC. Generally, when someone asserts the existence of an IP right which he will use against the plaintiff, such legal interest exists. However, such interest does only exist when a declaratory action is the most suitable means to destroy the endangering of the plaintiff. The principle of subsidiarity of declaratory actions demands that such legal interest is missing when the plaintiff disposes of a simpler way to achieve the same binding result.

In Austria invalidity actions of IP rights resort solely to the Patent Office. This is also true for invalidity actions against SPCs. A court action including declaratory actions should be stayed if the invalidity of the IP right, especially patents, is claimed to allow for filing a nullity action before the Patent Office. Therefore, an additional court action for a declaratory judgment has no additional value for the case if it is based solely on the invalidity of an IP right. That leads to the rejection of such a declaratory action for lack of legal interest.

DI Helmut Sonn