CFS Bakel vs. Stork Titan: invoking patent while it is subsequently revoked or annulled
Supreme Court, 29 September 2006, LJN: AU6098. CFS Bakel B.V. versus Stork Titan B.V.
Patent law. Dispute between patent proprietors about the question whether a European patent applicant acts unlawfully by failing to bring all conceivable information known to him to the notice of the EPO and whether the proprietor of a patent examined by the EPO acts unlawfully on account of incorrect pretension towards competitors if the proprietor invokes the patent while it is subsequently revoked or annulled; Supreme Court does not reverse the decision of HR 6 April 1962, NJ 1965, 116; unjust enrichment?
Case concerning the possible nullity of the Dutch part of a European patent (for a furnace) by CFS Bakel. In cassation the dispute focuses on two questions: Does the applicant of a European patent act unlawfully in not bringing all information known to him to the attention of the EPO, and, does a patent owner act unlawfully if he appeals to a prior researched patent that is later on annulled or revoked in case he knows or should have known that there existed the serious and not to be dismissed possibility that the patent would not hold up in opposition of nullification proceedings?
The supreme court rules that the complaints put forth by CFS concerning nullification of the Dutch part of the patent cannot lead to cassation. Referring to article 81 RO no further motivation is offered for the rejection of the main request for review by CFS. The interlocutory request for review by Stork does present some interesting legal questions to the Supreme Court. These questions are so interesting even that Advocate-General Huydecoper has made an additional conclusion.
First of all, Stork is of the opinion that the court has neglected to answer the question whether the withholding by a patent owner of the fact that the added extra elements were not new and that CFS was familiar with that fact, is unlawful towards a competitor against whom that patent is used in the competitive struggle, in case that patent is later on nullified on the basis of the information already known to CFS.
The Supreme Court considers this complaint failed. The explicit mention by CFS that the added extra elements were not new, would in the opinion of the Supreme Court not necessarily have led to dismissal of the conclusion proposal concerned. Also the combination of the in itself already familiar elements may lead to an invention that complies with the novelty requirement.
Secondly, Stork disputes the legal consideration made by the court that the owner of a patent examined by the EPO may assume that his patent is legally valid and that he may therefore appeal to the ensuing rights towards third parties, also in case opposition is filed against the patenting.
The court only notes one exception to this rule, in case the patent owner knows, or has strong reason to suspect, that opposition will have a positive outcome. Stork argues that in case of patents it concerns an exception to free/open competition, which exception is only justified in case certain requirements (such as novelty and inventive step) are met. In this light, Stork argues that a patent owner continuing his appeal to the patent against potential buyers of his competitor after an opposition and/or nullification procedure has been initiated, unlawful towards this competitor in case the judgement of the EPO afterwards turns out incorrect and in case the patent is in retroaction revoked and/or declared void.
In the assessment of this appeal on an issue of law the Supreme Court indicates that the following two points of view must be taken into consideration:
"On the one hand the patent grant regonizes the achievement which is the basis of the invention embodied in the patent, and the research and investment of time and money made for this purpose. This encourages people to invent things, which also servesthe general interest. These considerations argue in favour of not holding the proprietor of an examined patent liable in tort to his competitors on the mere ground that the patent is subsequently revoked or declared null and void. Otherwise, this would discourage the patent proprietor from exercising his rights vis-a-vis the parties contesting his rights, which might diminish the stimulus to invent things."
"On the other hand the grant of a patent(or at any rate of a patent) has a restrictive effect on competition and gives the proprietor a lead over his competitors. Invoking the patent towards third parties is generally an appropriate means to influence; the behaviour of these third parties to the benefit of the proprietor. In this light the fact that our social system is precisely based partly on the promotion of free competition in the general interest constitutes an argument to make a party invoking a patent which is subsequently revoked or annulled bear the risk of his pretensios being found incorrect."
The Supreme Court attaches with reference to a judgement dated 6 April 1962 (NJ 1965, 116) more weight to the first point of view. Also in light of the prevailing school of thought in Germany and England the nature of the strict liability for the patent owner as argued by Stork is not accepted.
The mere circumstance that opposition or nullification proceedings have been initiated, constitute inadequate reason to assume unlawfulness on the part of the patent owner who continues to appeal to the patent against potential buyers of his competitor, in case the judgment of the EPO afterwards turns out incorrect and the patent is in retroaction revoked and/or declared void.
Read the entire judgement here.
IEFenglish
