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Limitation of the reach of a preliminary injunction and no absolute application of the prima facie validity of a patent

PI proceedings have always been a powerful weapon for patentees in Belgium.  In such proceedings before the President of the Commercial Court a full legal analysis of the parties’ rights cannot be made. The President will only prima facie asses the parties’ rights and claims. As a result, invalidity arguments are not taken into account given the presumption of validity of a European patent, even if the patent has been revoked in EPO opposition proceedings or if there are foreign decisions invalidating the parallel national pat­ents. 

In the Belgian escitalopram-litigation Lundbeck was able to obtain a PI under its escitalopram SPC despite the fact that an earlier first instance deci [...]

The wording of Prayers for Relief: A complicated Swiss affair

The wording of prayers for relief in patent infringement proceedings remains a hotly debated issue in Switzerland. In a landmark decision dated 2004 (BGE 131 III 70) the Swiss Federal Supreme Court ruled that the patent infringing goods or procedures had to be exactly described in the prayers of relief of a cease-and-desist order. Since then, it has not been sufficient to simply repeat the wording of the claim of the allegedly infringed patent. In particular, this holds true if the interpretation of the claim features is highly controversial between the parties. The authorities that are in charge of the enforcement of an injunction cannot be expected to reassess the meaning of the patent cla [...]

No Mercy: Exhaustion of patent rights and burden of proof

The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore. This concept of exhaustion is not only applicable to the territory of Germany, but to the entire territory of the EU and EEA, i.e. the common European market. This Europe wide exhaustion of patent rights is the basis for parallel imports, in particular for parallel imports of pharmaceuticals and plant protection products.

Being a defense, the burden of prove showing that the product has been put onto the market by the patentee or a licensee lies with the defendant. However, applying this [...]

There’s Life in the Old Dog Yet – Ex Parte Injunctions in Switzerland

Ex parte measures are rather difficult to obtain in patent matters in Switzerland (except from evidence-protection measures). Nevertheless, the Swiss Federal Supreme Court had the opportunity to opine on this subject in a recent decision dated 21 August 2013. Although this case will become better known because it was the first time that the first instance, the Swiss Federal Patent Court, had to deal with the doctrine of equivalence (and affirmed an infringement by equivalent means, see the preliminary decision of the Federal Patent Court here), it is also worth to analyze the requirements of ex parte measures in Switzerland.

In the case at hand, the patentee was informed in December 2012 by [...]

Clearing the way

A long time has already passed since 23 October 2001, when Judge Jacob ordered a preliminary injunction preventing the launch of the first paroxetine generics in England.  To cut a long story short, the rationale was that, if there is an obstacle blocking your way into the “garden”, you have to clear the way before entering the “garden”.  Otherwise, you may be injuncted.  This rationale has since then been followed by Judges in England, but also in other jurisdictions such as Germany.

 On 22 July 2013, Commercial Court number 4 of Barcelona handed down an interesting decision wherein the same logic transpires.  The patent owner had sent a warning letter to a third party who had obtained [...]

Parents are liable for their children – Does this also apply to companies?

A recent decision of the Higher Regional Court (Oberlandesgericht) Düsseldorf now confirms that a holding company cannot easily dive away under the patent infringing activities of its subsidiaries.

Background

Many companies are designed in the form of a group, having a holding company at the top and a number of subsidiaries which are directly or indirectly owned by the holding company. Different working areas are split between the companies of the group.

If one of these subsidiaries infringes a patent, the question arises whether and to what extent the holding itself is responsible for the infringement. Is the holding liable to compensation of damages? Does the holding have to render accoun [...]

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