Export vs. import, validity of a patent and request for recall of infringing products
In a recent decision the Austrian Supreme Court has handed down a judgment that may answer some burning questions on patent infringement proceedings.
The case concerned a patent for a transdermal patch for administration of a narcotic, namely fentanyl. The defendant had an Austrian marketing authorisation and sold transdermal patches containing fentanyl; the plaintiff used his granted European Patent as well as an Austrian Utility Model branched off from that European Patent for his attack against both defendant and the German parent company.
At the time of the Austrian infringement proceedings in first instance, the European Patent had been opposed by seven different parties (1st instance), in Germany three Utility Models branched off from that European Patent had already been revoked.
In his complaint, plaintiff asked for an interlocutory injunction to prohibit both defendant and the German parent company from selling, using, possessing and/or importing and bringing into Austria for selling, using and/or possessing transdermal patches which fall under one or more of the claims of said European Patent and said Austrian Utility Model, respectively. Plaintiff furthermore requested to assign defendant with a recall of such products from intermediary and wholesaler dealers against refund of the acquisition price.
The Court of Commerce (1st instance) rejected both requests, asserted that both European Patent and Austrian Utility Model are invalid and held that it could not ascertain that the German parent company of the defendant imported the product into Austria. Regarding invalidity, the Court held that there was no detailed submission of facts by the defendant, so the Court had to make its own conclusions based on the evidence filed by the defendant. Those conclusions, however, did remain within the framework of defendant's pleading (in fact, defendant had filed a detailed expert's opinion about validity of the Austrian Utility Model and had referred to the opposition proceedings in front of the EPO).
The Higher Regional Court (2nd instance) granted all requests. It held that defendant had not filed a factual submission from which invalidity of both European Patent and Austrian Utility Model could be seen, therefore the respective conclusions of the Vienna Court of Commerce must remain unconsidered. According to the Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, an Austrian interlocutory injunction could also be enforced in Germany against the German parent company.
The Austrian Supreme Court as the last instance once again overturned the Higher Regional Court and rejected all requests.
First, the Supreme Court held that there is a difference between an export from Germany (which export the German parent company of the defendant had admitted) and an import into Austria. Export of a product does include import of the same product, but exporter and importer do not have to be identical and normally also are not identical. The German parent company can only be prohibited from deeds committed within the territorial scope of protection of the Austrian part of the European Patent and the Austrian Utility Model, i.e. deeds committed in Austria. An export from Germany is no deed committed in Austria, not even if Austria is the receiving country of export.
Secondly, the Supreme Court held that if the Court of Commerce as the court of 1st instance gathers facts and makes conclusions as to novelty and inventive step of a protective right, these conclusions have to be considered also by the 2nd instance Court, if they allow a coherent assessment of novelty and inventive step and therefore of the validity of the protective right.
Lastly, as to the request to recall products from intermediary and wholesaler dealers against refund of the acquisition price, a claim for destruction can only be granted if the elimination is within the power of disposition of the infringer. Plaintiff has to allege and prove the power of disposition of the infringer. However, once a product has been delivered and the purchase price has been paid, the vendor normally loses his power of disposition over the product. Accordingly, a request for a recall from the purchaser of a product is not legitimate, irrespective whether a protective right was infringed or not.
DI Peter Pawloy