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
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