tag:blogger.com,1999:blog-2352189175211648260.post3316262311917707756..comments2023-10-24T14:45:41.342+02:00Comments on K’s Law: T 606/10 – Rest Not In Peaceorhttp://www.blogger.com/profile/07992102028406713066noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-2352189175211648260.post-68372404505911169622011-06-08T05:32:49.020+02:002011-06-08T05:32:49.020+02:00Thanks Oliver and Myshkin for your additional comm...Thanks Oliver and Myshkin for your additional comments!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-53132525816705041412011-06-03T17:22:30.603+02:002011-06-03T17:22:30.603+02:00I agree that the key here is retroactivity.
This ...I agree that the key here is retroactivity.<br /><br />This may not be fully accurate and certainly not under all national laws, but I would think:<br /><br />- if damages are still being claimed for past infringement (either in court or outside court), revocation will kill any such claim due to its retroactive effect;<br /><br />- if damages have already been paid without a court decision, after revocation the payment might have to be reimbursed for lack of a legal basis;<br /><br />- if damages have already been paid on the basis of a court decision, revocation will not matter unless under national law it is a reason to overturn the court decision;<br /><br />- if royalties have been paid on the basis of a licensing agreement, the effect of revocation will depend on the terms of the contract and/or national law. If the agreement is silent on this, then royalties probably do not have to be reimbursed (at least not in France, as I understand from Oliver).<br /><br />Note that an infringement action can lead to payment of damages, but also to a licensing agreement, and this line could be very thin. If an infringer "agrees to pay" a certain amount of money, he could be bound by this "agreement" even if the patent is later revoked.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-88542817419722671072011-06-02T23:07:38.686+02:002011-06-02T23:07:38.686+02:00@Early morning Anonymous
I am not a pharmacy spec...@Early morning Anonymous<br /><br />I am not a pharmacy specialist either, but as nobody has answered your question, here is my six pence worth …<br /><br />Most SPCs are nowadays governed by Council Regulation 1768/92 (469/2009), Article 15 of which stipulates that the certificate shall be invalid if …, after the basic patent has expired, grounds for revocation exist which would have justified [its] revocation …<br /><br />So I believe the post mortem revocation of the patent would entail the invalidity of the SPC (if there was one), and it should of course do so, because the legal situation is as if the patent had never existed.<br /><br />But the question arises irrespective of whether there are SPCs. What really makes the difference between withdrawal and revocation is the retro-active effect of the revocation. I remember wondering why the EPC 2000 introduced the request for revocation (A 105a EPC). Who would possibly want to make use of this ? In my personal practice, I have never come across a case where such a request would have been the appropriate thing to do, but I have heard of a case where an inventor/patentee was attracted into validity proceedings which he was eager to get rid of. Filing a request for revocation apparently saved him a lot of trouble and money. But as I do not really know the details of this case, I cannot comment on it.<br /><br />You also mention royalties. The question of whether and to what extent licence royalties would have be to be reimbursed if the underlying patent is revoked is a tricky one and certainly answered differently depending on national law. In France, as far as I can see, the licensor will not have to reimburse all the royalties in case the patent is revoked, because until the revocation the licensee enjoyed some advantages from the apparently valid patent (théorie de l’apparence). There was a decision to that effect before the Paris Court of appeal some years ago:<br /><br />« L’anéantissement du brevet n’a pas eu pour effet de priver le concédant d’une licence totalement du droit d’être payé ensuite de la sous-licence consentie, qui nonobstant le sort qui devait être réservé au brevet, n’en a pas moins pour la période considérée permis à Air Liquide de jouir de certains des effets du contrat, lui permettant d’imposer sur certains territoires la protection attachée au brevet. La valeur de cet avantage représente le tiers de la somme perçue. » (Paris Court of appeal, May 11, 2007 ; Aga and General Hospital v. Air Liquide Santé)oliverhttp://k-slaw.blogspot.comnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-81170717722095263882011-06-01T20:24:42.736+02:002011-06-01T20:24:42.736+02:00Well, this is a pretty bizarre case but for me its...Well, this is a pretty bizarre case but for me its most worrying aspect is the fact that the Oppsition Division took well over two years to get the written grounds of its decision out. In many jurisdictions this in itself would be considered as a substantial procedural violation.<br /><br />Also you don't often see a main request and an auxilary request of a patentee which are quite so disparate ... maintain the patent or alternatively revoke it! What larks, but at the end of the day it's you and me who pay for this form of intellectual masturbation.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2352189175211648260.post-12440416317368540622011-06-01T06:42:39.118+02:002011-06-01T06:42:39.118+02:00May I enquire as to the reasons why someone would ...May I enquire as to the reasons why someone would be interested in keeping the show going? Can license fees or damages be reimbursed? I would believe not.<br /><br />The patent concerned a vaccine, so there <i>may</i> have been a Supplementary Protection Certificate involved, and the patent would still have a kind of "afterlife". (Pharma isn't my field, so caveat emptor).<br /><br />If I understand correctly (cf. Azéma, Galloux: "Droit de la propriété industrielle", Dalloz, 2006, Rdn 386-396), the patent <i>might</i> still have an effect. <br />According to the reference, there are two SPC systems: the EU one under Directive 610/96 EC, and the earlier national ones it replaced, such as the French one, which can provide as long as 17 years of supplementary protection. The system in force would depend of the point in time when certification was obtained.<br /><br />This raises the question of what happens when the underlying patent is withdrawn. Is the SPC automatically cancelled? Maybe the proprietor would try to argue that the auxiliary request granted by the BoA does not change the situation w.r.t. the SPC, the cause of "death" of the patent being irrelevant.Anonymousnoreply@blogger.com