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Punitive damages in Europe? The ECJ will have a word on it!

The newly established 15th Patent Senate of the Appeals Court of Düsseldorf (Presiding Judge Dr. Ulrike Voß) has referred a number of questions concerning the calculation of damages in IP cases to the European Court of Justice. This opens the floor for the ECJ to talk about damages, as far as I know for the first time in IP matters.

In the case which now has been referred to the ECJ plaintiff had already successfully sued defendant for infringement of its plant variety protection right and now tried to collect damages for the past infringement on the basis of a reasonable royalty. In calculating the damages on this basis, plaintiff requested to take into account several factors which he [...]

Dependent Claims, Supreme Court of Justice of Austria, 27 August 2013

1. Also in case a dependent claim is patentable on its own, fulfillment of all features of both the main claim and the dependent claim is required for infringement.

2. The scope of a patent is defined by its claims; the prosecution file may only be considered for interpretation if there are contradictions between the claims, the description and/or the drawings.

The full summary of this case has been published on Kluwer IP Law.

Pharmaceutical Price Index, Supreme Court (Oberster Gerichtshof), 12 June 2012

The act of including a generic product into the official Austrian pharmaceutical product index before expiry of the relevant patent/SPC, is considered an act of “putting into circulation” and therefore a patent infringement. By the same token the act of applying for reimbursement by an application to be included into the “Red Box” pursuant to the Code of Reimbursement of the Association of (Austrian) Social Security Carriers constitutes patent infringement.

Click here for the full text of this case.

A summary of this case will be posted on

N.A. v. N.A., Supreme Court (Oberster Gerichtshof), 19 September 2011

The right to an unpatented invention does not entitle to its exclusive use; it ceases to exist if the invention is made public without patent protection. The right to an unpatented invention encompasses no more than (i) the right to file a patent application and (ii) the right to claim the patent, in case a third party registers the paent in bad faith.

Click here for the full text of this case.

A summary of this case will be posted on

SPC – Novartis v Actavis (valsartan): the sequel

As already explained in a previous post, the company governed by the laws of Switzerland, Novartis AG, is the holder of patent EP 0 443 983 entitled “Acyl compounds”, whose subject-matter is a group of antihypertensive compounds, including valsartan, pharmaceutical preparations containing them and processes for the preparation of these compounds.


This patent, filed on 12 February 1991, was to have expired on 12 February 2011. However, Novartis AG endeavoured to extend that protection by obtaining the grant of the supplementary protection certificate (SPC) No. 97 C 0050. This SPC should normally expire on 13 May 2011 but its validity was extended until 13 November 2011, through a “pae [...]

Escitalopram, Supreme Court (Oberster Gerichtshof), 16 February 2011

A supplementary protection certificate SPC granted for an enantiomer (escitalopram) cannot be declared void because a prior SPC was granted for the racemate (citalopram) when both the racemate and the enantiomer are protected by individual patents and thus are different products. This must be so because otherwise the enantiomer patent would be invalid for lack of novelty. The patent’s expiration and the SPC’s entry into force do not constitute reason to lift a preliminary injunction (PI), if the infringing product also falls within the scope of the SPC.

Click here for the full text of this case. A summary of this case will be posted on

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