The concept of individualization, i.e. singling out a specific embodiment from a generic disclosure, in various instances is a key concept of the EPO for assessing the “quality” of disclosures. It is applied in the examination of novelty of selection inventions. If the features of the claim characterize an individualized embodiment, the claim is novel with respect to a generic prior art disclosure encompassing this embodiment. It is equally important for the comparison of claims with the disclosures of the application as filed or the priority document when examining added matter and entitlement to priority, respectively. A claim pertaining to an individualized embodiment contains added matter in respect of a generic original disclosure and it cannot validly claim entitlement to priority of a generic disclosure in the priority application. Of course, the situation is reversed if the claim and the respective other disclosure are both generic, or if both are individualized. The following tables summarize the different scenarios:

In the past, the author (and presumably other practitioners, too) relied on some simple rules when determining whether a contemplated amendment is “safe” in view of the risk of creating added matter or losing priority. For instance, it was considered that a single selection from a single list should be safe (relying on the two lists theory established in T 12/81 and T 7/86), and that a shrinking of lists should also be safe, provided the majority of previously claimed embodiments is maintained in the amended claims (relying on T 615/95). In both cases it was thought that the amendment keeps the subject-matter of the amended claim at the same level of generality as in the claim before amendment, so that no individualization is created where there was none before.

The following decisions suggest that it may be time to reconsider whether such simple rules of thumb are generally applicable:

• The patent-in-suit in T 98/09 was about compositions containing a fungicide in combination with an insecticide. During examination already, the main claim has been restricted to one single fungicide representing a member of a list of originally disclosed 47 individual fungicides. During opposition, the insecticide was restricted, starting from a generic formula (I) as granted, to all specific embodiments originally disclosed (i.e. 6 compounds). The Board held that the resulting combination contains added matter in relation to the original disclosure. This finding was primarily based on the understanding that the 1×6 combination in the claim individualizes all six combinations claimed, while the original 47×6 combination was generic in nature. It is conspicuous that the reasons given by the Board would apply in exactly the same manner if the six specific insecticides had been present in the claim already at the time of filing, i.e. if only a single restriction of the claim had been effected.

• In T 1808/08, patentee amended a claim directed to a polymerization process by canceling four of the eight listed monomer types, and by deleting one of the three listed catalyst types. The Board found these deletions to give rise to a novel selection from the previous claim. In the absence of better support elsewhere, the amendment was not allowed. Whilst not being expressly stated in the reasons of the decision, it is apparent that the Board considered the 2×4 combination of the amended claim to individualize all eight combinations, whereas the previous 3×8 combination was apparently found to be a generic disclosure.

• T 783/09 was in the field of pharmaceuticals. The claim at issue concerned a combination of a single dipeptidylpeptidase (“DPP”)-IV inhibitor with at least one of three listed antidiabetic agents. This feature combination was based on an original disclosure of preferred combinations of two DPP-IV inhibitors with 22 antidiabetic agents. The Board took the view that the amendment complied with Article 123(2) EPC mainly because all 44 combinations of the original disclosure were found to be disclosed in individualized form – just like the three combinations after the amendment.

The following table summarizes the rulings of the above decisions with respect to the concept of individualization.

The conclusions to be drawn from these decisions are:

• In some instances, an individualized disclosure may be created by a single selection.

•  A presumed shrinking of lists risks may turn out to be an individualization of feature combinations even if only a minor part of the embodiments is deleted.

•  An individualized disclosure may be found in (or created by) feature combinations covering far more than a simple 1×1 combination.

So, how may this affect our daily practice?

1. When drafting applications, it is recommended to expressly describe not only preferred and more preferred features, but also different combinations of such groups of preferred features. But beware, a mere listing of all conceivable permutations could be counterproductive if the total number of listed combinations becomes too large: it has already happened in such cases that EPO examiners completely disregarded such disclosures of feature combinations as being of no technical significance.

2. When amending the claims – especially before grant – one should be even more careful not to delete alternative feature combinations from the claims if not strictly necessary in view of the raised objections.

3. When defending amended claims in opposition proceedings, T 783/09 may prove to be helpful if there is a disclosure of a subgenus of comparable level of generality that could provide support for an amended claim.

4. When attacking in opposition proceedings, all of the above decisions may provide good ammunition for denying novelty by selection. Depending on the circumstances, these decisions may also be useful for attacking amendments, especially if they were justified by patentee as being a mere shrinking of lists in accordance with T 615/95.

Of course, each case is different and a variety of further factors will also have to be considered, such as the information content in the examples or the presence or absence of technical effects associated with the selection. Hence, the applicability of the above case law and conclusions should be checked on a case-by-case basis. Moreover, it is clear that there are many other decisions of the EPO, which apply different standards. Keeping the above decisions in mind may nevertheless be advantageous – especially when prosecuting important cases – to avoid unpleasant surprises after grant.

 
Matthias Wolf/Martin Bachelin

In a recent patent case, the Polish Supreme Administrative Court invalidated a decision issued in 2007 by the Polish Patent Office which refused to grant a patent for an invention related to digital electronics. Pursuant to its longstanding practice in the area of so-called software patents, the Polish Patent Office held that the invention was not of a technical character and therefore was not patentable, despite the fact that the European Patent Office had granted a European patent for the same invention. In other words, the Polish Patent Office refused to issue a patent to an applicant already approved by the EPO.

As previously posted on this blog, the Polish Supreme Administrative Court has already focused its attention on the issue of whether the granting of a European patent should have any binding effect on decisions made by the Polish Patent Office. In other words, the question is whether the Polish Patent Office has the authority to refuse a patent if the applicant has already been approved by the EPO. Nevertheless, the judgment of the Polish Supreme Administrative Court of 19 March 2012 is without precedent because it has changed the Polish Patent Office’s usual approach in determining the technical character of inventions. Furthermore, in its ruling, the Court referred not only to the provisions of the EPC and the TRIPS Agreement, but also to the technological advances of humankind.

The Court clearly held that while examining patentability requirements, the Polish Patent Office should take into account the current state of the art, which is variable by its very nature. Furthermore, patentability requirements should be examined in the light of the statutory aims of Polish patent law. The court also noted that great technological advances across many industries have been made in recent years, which must have an effect on the practice of the Polish Patent Office. Thus, the Polish Patent Office, while conforming to the provisions of Polish patent law, should change its approach on the subject matter of the technology. In addition, in order to do so, the Polish Patent Office should use appropriate methods of interpreting legal rules in order to guarantee the fulfillment of their statutory aims.

The Polish Supreme Administrative Court also confirmed that Polish patent law does not provide a definition of what constitutes an invention. However, in order to be patentable, an invention must meet the patentability criteria: an invention should be new, involve an inventive step, and possess potential for industrial application. Furthermore, the Court held that, according to Polish patent law, patents are granted for inventions regardless of the field of technology. The Court also highlighted the similarity between Polish regulations and those expressed in Article 52.1 of the EPC. Thus, because Poland signed and ratified the requirements of patentability formulated in the EPC, the Polish Patent Office should adopt comparable requirements. Furthermore, the Polish Supreme Administrative Court held that as a signatory to the Convention, Polish national law should not only be adjusted to the Convention, but it should also use the broadest interpretation of patentability requirements expressed in the decisions of the EPO.

It can be argued that this judgment encourages a more liberal application of patent requirements for technical inventions and at the same time remains within the bounds of EPC customs in order to account for the technological advances of humankind. Therefore, it may be truly ground-breaking in nature. However, future decisions will show whether this was simply a one-off case or whether it signals the beginning of a new era in judicial decisions related to computer implemented inventions in Poland. Only time will tell if the Polish Patent Office will indeed follow the rules formulated by the Polish Supreme Administrative Court.

Under paragraph 103 of the German Insolvency Act, an insolvency practitioner has the right to choose whether or not to honour existing contracts of the insolvent company. Does this right also apply for any patent licences granted by the insolvent company?

The Regional Court Munich has ruled in a case in which the insolvent patent holder had granted a simple licence to a third party (judgment of 9 February 2012 – Az. 7 O 1906/11). Astonishingly, there is currently no case law for such a constellation – after all, it is of substantial financial importance for the licensee that any investments in manufacturing plants, warehouses and marketing be safeguarded. The Regional Court Munich assumes that, where both parties have met their obligations arising from the licensing agreement, the insolvency practitioner does not have the right to choose. The Court further assumes such obligations to have been met where (i) the licence has been granted irrevocably and without time limit, and (ii) the licensee is no longer required to pay licensing fees, for instance because the licence is a paid-up “one-stop shop” licence or else a royalty-free cross license.

This decision has been criticised as being too narrow on the grounds that simple licences are assets, and as such must be exclusively granted to the licensee and no longer be at the patent holder’s disposal. It would then be irrelevant whether the licensee has outstanding contractual obligations, as in the case of revenue-dependent licensing fees (Haedicke, GRUR-RR 2012, 145).

Conclusion: Insolvency unsolved. The judgment of the Regional Court Munich is not final. It remains to be seen whether a supreme-court pronouncement will follow to clarify the issue: are simple patent licences insolvency-proof?

Novartis AG is the holder and SAS Novartis Pharma is the licensee of French patent FR 88 02 597 and of SPC No. 98C0033, both relating to “Rivastigmine”, which is a phenyl carbamate with anticholinesterase activity useful in the treatment of senile dementia.

Rivastigmine is marketed by SAS Novartis Pharma in France, under the name Exelon, for the symptomatic treatment of Alzheimer’s disease and Parkinson’s-related dementia.

The rights on SPC No. 98C0033 expire on 31 July 2012.

Since October 2010, Novartis AG and Novartis Pharma (hereinafter referred to as “Novartis”) had become aware that Mylan and Qualimed were carrying out the necessary formalities to place on the French market generic drugs of the proprietary drug Exelon (1.5, 3, 4.5, 6 mg, capsule):

• On 1 and 4 October 2010, the Agence Française de Sécurité Sanitaire des Produits de Santé (AFSSAPS) granted Mylan and Qualimed the marketing authorisation (MA) for the proprietary drugs named “Rivastigmine Qualimed” and “Rivastigmine Mylan” (1.5, 3, 4.5, 6 mg, capsule);
• These MAs were registered in the index of generic drugs by way of a decision of the AFSSAPS dated 23 December 2010;
• Mylan and Qualimed filed an application with the Comité Économique des Produits de Santé (CEPS) for the registration of their proprietary drugs “Rivastigmine Qualimed” and “Rivastigmine Mylan”;
• On 17 February 2011, the CEPS informed Novartis Pharma that Mylan, which is the owner of Qualimed, had indicated that it “could market its generic drugs without infringing Novartis’ rights over SPC No. 98C0033” within six months following their registration in the Official Journal;
• The drugs Rivastigmine Qualimed and Rivastigmine Mylan were registered in the list of refundable medicinal products on 29 April 2011.

Consequently, on 17 March 2011, Novartis summoned Mylan and Qualimed to appear before the Judge ruling in preliminary proceedings of the Tribunal de Grande Instance of Paris, requesting, an order enjoining them from infringing patent FR 597 and SPC No. 98C0033 pursuant to Article L. 615-3 of the French Intellectual Property Code.

According to Article L. 615-3, as amended by the 29 October 2007 Act, implementing Article 9 of Directive (EC) No. 2004/48, any person with authority to bring an action for infringement may request that the Judge ruling in preliminary proceedings order any measure aimed at preventing an imminent infringement of its rights or aimed at putting a stop on allegedly infringing acts.

Article L. 615-3 of the French Intellectual Property Code “Any person with authority to bring an action for infringement may, in preliminary proceedings, request the competent civil court to order, under a penalty of a daily fine if necessary, against the alleged infringer or intermediaries whose services it uses, any measure aimed at preventing an infringement about to be committed against rights conferred by the title or aimed at stopping any further allegedly infringing act. [...]The court, in preliminary or ex parte proceedings, may order the requested measures only if evidence, reasonably accessible to the claimant, make it likely that its rights are infringed or that such infringement is about to be committed”.

In this particular case, the claimants precisely wanted to prevent an imminent infringement of their rights and they requested, pursuant to Article L. 615-3, that the two competitors be enjoined from importing and/or manufacturing, holding, using, offering for sale and selling, and more generally from marketing the drugs Rivastigmine Mylan and Rivastigmine Qualimed (1.5, 3, 4.5 and 6 mg, capsules), under this name or any other name.

However, by way of an order handed down on 21 June 2011 after hearing all the parties, the Judge ruling in preliminary proceedings of the Tribunal de Grande Instance of Paris dismissed Novartis’ claims against Mylan and Qualimed mainly on the grounds of the dispute relating to the lack of inventive step, based on some prior art documents, likely to deprive of validity patent FR 597, whose claimed protection extends to SPC No. 98C0033.

Novartis then lodged an appeal against this decision.

It set out that, pursuant to Article L. 615-3, the preliminary injunction is subject to the likelihood of the infringement. If the patent seems obviously invalid to him, the Judge ruling in preliminary proceedings is certainly right in deeming the infringement not likely. However, this obviousness of the patent invalidity was not the criteria or the condition held in the order, as the first instance Judge thought he could based his decision on the likelihood of a lack of validity of Novartis’ patent. However, the mere likelihood of a lack of validity is not enough to dismiss the claim based on Article L. 615-3 since the Judge ruling in preliminary proceedings, who is also referred to as the “juge de l’apparence” (judge ruling on appearances) or “juge de l’évidence” (judge ruling on obviousness), does not rule on the merits of the case but only renders an interim decision based on the elements that are brought before him, and therefore does not have at his disposal all the necessary elements to decide whether the patent in dispute should be held valid or not. Therefore, Novartis asserted that the appealed order contained a “serious error” on this issue.

It also set out that, in the present case, the likelihood of the infringement of Novartis’ patent and SPC was neither disputed nor disputable since the generic drugs of Mylan and Qualimed were, by definition, copies of the patented drug. Nor was there any doubt or real dispute as to the imminence of the infringement before the first instance Judge.

Novartis also developed arguments to dispute the invalidity of its patent because of a lack of inventiveness. In turn, Mylan and Qualimed requested that the Cour d’Appel of Paris affirm the appealed order and developed arguments according to which the basic patent was invalid.

In its 21 March 2012 decision, the Cour d’Appel of Paris accedes to Novartis’ reasoning about the condition for initiating preliminary injunction proceedings provided for by Article L. 615-3.

The procedure provided for by Article L. 615-3 is autonomous and the conditions for its application differ from those set by Articles 808 and 809 of the French Code of Civil Procedure concerning general preliminary proceedings.

Article L. 615-3, as amended by the 29 October 2007 Act, merely subordinated its measures “to the likelihood of the infringement of the protected rights and not to the likelihood of the validity of the patent from which they derive”. And “before the Judge ruling in preliminary proceedings, Judge ruling on obviousness, only the obvious invalidity of the title can make it unlikely that these rights are about to be infringed”.

In this case, there was precisely such a likelihood that Novartis’ patent and SPC were about to be infringed and there was no obvious invalidity of patent FR 597, whose claimed protection extends to SPC No. 98C0033:

• Mylan and Qualimed’s generic drugs were, by definition, copies of the patented drug and, consequently, potentially infringing products (“it is not disputed that these drugs, which constitute generic drugs, i.e. products that are drugs having the same qualitative and quantitative compositions in active ingredients as the reference drug as well as the same pharmaceutical form, copy the drug covered by SPC No. 98C0033, whose rights benefit Novartis and expire on 31 July 2012”);
• The mere formalities carried out by Mylan and Qualimed before the AFSSAPS and the CEPS could not demonstrate an imminent infringement. The French legislator had expressly authorised generic manufacturers to carry out all the necessary formalities to place on the market their products before the extinguishment of the intellectual property rights over the proprietary drug (Article L. 5121-10 of the French Public Health Code; see also Article L. 613-5 d) of the French Intellectual Property Code). However, the declaration of Mylan, before the CEPS, that it “could market its generic drugs without infringing Novartis’ rights over SPC No. 98C0033” within six months following their registration in the Official Journal, assuredly demonstrated sufficiently that the infringement was imminent;
• While only the obvious invalidity of the title can make it unlikely that the protected rights are about to be infringed, such was not the case of Novartis’ patent FR 597 whose claimed protection extends to SPC No. 98C0033. Unless he was setting himself up as a scientist, the Judge ruling in preliminary proceedings, in view of his powers, could not consider as obvious all of Mylan and Qualimed’s arguments against the inventiveness while the respondents themselves underline the necessary interpretation of scientific documents and analyses. We must agree with this idea, already stated, for example, by the Cour de cassation in another context (Civ. 1re, 11 July 2006, No. 03-19838): by definition, what needs interpretation is not obvious.

The Cour d’Appel of Paris finally underlines the practical legitimacy of its solution which dismisses the claim for a preliminary injunction against an imminent infringement only on the grounds of the obvious invalidity of the title.

Although they had been granted the MA for their generic drug on 1 and 4 October 2010, had decided to market it approximately fifteen months before the expiry of the SPC in issue, and although patent FR 597 had been filed for approximately twenty years, Mylan and Qualimed waited until the last moment, i.e. the day after the summons to appear in preliminary proceedings which had been served upon them by Novartis (17 March 2011), to serve a summons upon Novartis in order to note the invalidity of patent FR 597 for lack of novelty or inventive step.

Therefore, Mylan and Qualimed could only blame themselves if they suffered from the effects of the immediate injunction based on a patent that might be held invalid later by the trial court. The preliminary proceedings are not appropriate to defend themselves by invoking grounds that are not obvious in support of their claim for invalidity.

“Mylan and Qualimed only had to serve the summons for invalidity of the said patent within the time limit allowing them to obtain a judgment on the merits, before proceeding, if necessary, to the marketing of the drug at issue, in order to avoid infringing the rights of the holders of this patent”.

It has some flavour of the “clear the way” concept applied by the English courts (which may be given less weight since the judgement of the High Court in Cephalon v Orchid & Generics (UK) t/a Mylan [2010] EWHC 2945 (Pat)).

Original French decision.
English translation.
Author: Nicolas Bouche, Head Legal Research and Literature, Véron & Associés, Paris, France

Against this background the Danish Judicial Council has drafted and now submitted to the Danish Justice Department a report suggesting a number of changes and modernizations of the judicial framework regulating interlocutory injunction proceedings in Denmark.

Some of the most significant changes suggested by the Judicial Council are:

- Transferral of the competence to grant interlocutory injunctions from the bailiff’s court to the civil court department of the municipal courts, thus ensuring (at least in theory) that to a greater extent, the bench will be more experienced (though not necessarily in patent litigation).

- The Maritime and Commercial Court, which today serves as specialty court regarding intellectual property rights is to be given the competence to hear interlocutory injunction proceedings in, inter alia, cases concerning patents.

- The establishment of a system whereby interlocutory injunction proceedings are heard by several judges (as opposed to one) while at the same time giving the courts the possibility of appointing temporary expert judges to join the bench in the adjudication of e.g. a patent case.

And perhaps most controversially, the Judicial Council has suggested the abolition of confirmatory actions except as regards the validity of the enforced right.

The system today is built on an assumption that a patent once granted is valid (until irrevocably revoked). In practice, a defence based on lack of inventive step of the patent-in-suit is never accorded any weight as the presiding judge in interlocutory injunction proceedings regarding patents is not an expert judge and therefore unfit to question validity (and thus enforceability) except in cases involving a clear novelty–destroying citation. By the same token, the bailiff’s cannot invalidate a patent, but only turn down an application for interlocutory injunction on the grounds that it is considered unlikely that the patent will be upheld as valid.

Today, if an application for an interlocutory injunction is granted, the patentee must subsequently file a confirmatory action (during which the court may appoint expert judges as well as expert witnesses of its own) and ultimately invalidate the patent-in-suit whether due to lack of novelty or lack of inventive step.

The Judicial Council in its report now suggests that in future the confirmatory action shall only determine whether or not the patent-in-suit is valid (and thus enforceable), the reason being that if the competence to grant injunctions is moved from the bailiff’s court to the civil court department, there is no reason for the (in the eyes of the Judicial Council more competent) civil court department to revisit its decision to grant an injunction. Instead, the decision to grant an injunction may be appealed to the Maritime and Commercial Court.

The report has only just been made available for comments by any interested parties and, no doubt, its suggestions will be subject to extensive discussions which we will be following the outcome of.

As of the implementation of the EPC, prior use in and of itself no longer anticipates a patent claim under UK patent law. The English courts have also now adopted the EPO approach on ‘availability to the public’ (as set out by the Enlarged Board in decision G1/92), although the English courts refer to the requirement for an ‘enabling disclosure’. If the person skilled in the art is able to discover the composition or internal structure of the prior art product and reproduce it without undue burden, then there may be an availability to the public giving rise to an enabling disclosure. However, the disclosure to be derived from the public availability of a product depends on the extent to which the public have unrestricted access to the product.

In this case, the patent claimed a type of paint spray gun. One of the alleged prior disclosures was a prototype example of a paint spraying device demonstrated at a trade fair. The device was demonstrated to members of the public visiting the fair. The public were also permitted to, and did, use the sprayer themselves. The relevant claimed integers (holes in the air cap of the spraying device) would have been visible to anyone who looked at the spray gun with interest.

Having held that that a product falling within the scope of the claims had been demonstrated publicly, the judge had to decide whether it anticipated the patent. Although the person skilled in the art would have seen the holes in the prototype spray gun at the trade fair had he examined the device, the judge held that the invention would not have been disclosed to him. The person skilled in the art would need to have been able to deduce clearly and unambiguously two further aspects of the air holes, which in the circumstances he could not have done. The evidence at trial did not demonstrate that any particular prominence was given at the time to the presence of the air holes, as there was no evidence that the representatives of the company demonstrating the spray gun told any members of the public what the holes were for or of any contemporaneous documentary evidence as to the importance of the holes. On the other hand, the patent claims were held obvious over the prior disclosure of the prototype.

*[2012] EWHC 984 (Pat)

Article 158 of the new Code of Civil Procedure (in force since 1 January 2011) and article 77 of the Swiss Patent Act both provide pre-trial discovery measures.

While Article 158 ZPO allows such measures if the applicant can prove that he has a legal interest worthy of protection the version in dispute of Article 77 PatG (as in force until 1 January 2012) required that the applicant makes plausible that his patent rights are infringed.

The Court of Commerce of the Canton of Aargau decided in the case at hand that in patent matters only Article 77 PatG and its more severe requirements shall apply and that Article 158 ZPO should not be available in patent proceedings. On appeal, the Swiss Federal Supreme Court rejected this opinion and hold that Article 158 ZPO also applies in patent matter, without any additional requirements.

The facts of the case can be summarized as follows:

A German patent holder suspected that a Swiss company supplied a Swiss refuse incineration plant with parts and, therefore, was to be held liable for contributory patent infringement because the Swiss plant and the used methods met all the features of the patent in dispute.

To avoid a long and expensive lawsuit, the German patent holder asked the Commercial Court of the Canton Aargau for a pre-trial inspection of the plant.

The Commercial Court of the Canton Aargau refused to arrange the requested pre-trial discovery inspection and decided that under article 158 ZPO as well as under Article 77 PatG the applicant has to make plausible that its patent rights are infringed. This is hardly possible since the applicant normally lacks sufficient evidence and, therefore, asks for the pre-trial taking of evidence.

The German Patent holder therefore appealed the decision to the Swiss Federal Supreme Court.

The Swiss Federal Court rejected the appeal because the Patent holder did not show that there was a contributory infringement even if the facts that came out of the pre-trial discovery corresponded to its allegations.

However, the Federal Supreme Court backed the appellant’s opinion according to which the decision of the Cantonal Court of Aargau was wrong as it requested that the appellant had to make plausible that all the features of its patents were fulfilled by the litigious device that should be the object of the pre-trial inspection.

According to the Federal Supreme Court, it is sufficient that if a party who wants to rely on article 158 ZPO shows that if the alleged facts correspond to the party’s allegations then its patent rights would be infringed.

Plaintiff (1) is the owner of a utility model concerning an ink cartridge. Plaintiff (2) is his exclusive licensee in Germany. Subsequent to court decisions confirming infringement and (laborious) proceedings to obtain information and rendering of accounts, plaintiffs claimed in new proceedings the payment of damages according to the calculation method infringer’s profit. The first-instance court decided that only the exclusive licensee is entitled to damage payment.

Defendants appealed the first instance decision on the amount of damages. The appeal court did also dismiss the action of the exclusive licensee, since he had not specified the internal distribution of loss between patentee and exclusive licensee. This decision is based on an obiter dictum of the FCJ in its decision “Ink Cartridge I” in which the court ruled, if patentee and and/or its exclusive licensee sue individually for damage payment, they must disclose that loss turnover or loss income incurred due to the infringement.

The exclusive licensee appealed to the FCJ. The FCJ set aside the decision and remanded the case to the Court of Appeal.

The FCJ did not deviate from its obiter dictum but pointed out that if patentee and exclusive licensee jointly assert damage payment, they will become “essential joint litigants” pursuant to Sec. 62(2) CCP. Therefore, any court decision has to be identical regarding patentee and exclusive licensee. This is what the first and the second-instance courts had not realized.

The FCJ explained that “essential joint litigants” means that a right can only be claimed by several parties and must be determined uniformly. A party which is an “essential joint litigant” will necessarily have to remain participant in the proceedings, even though it abstained from appeal. Further, one of the parties cannot decide afterwards to pursue only its own claim of damages.

The other option to claim damage payment without the necessity to disclose the internal position of losses is that the patentee assigns its claims to the exclusive licensee or vice versa.

It seems a good practical solution for patentee to assign its claims of damages to exclusive licensee for litigation purposes or vice versa.

Parties should preferably agree on details, for instance, what kind of calculation method shall be chosen or how to internally share the damage payment, in a written contract.

Holger Folz