EPLAW PATENT BLOG

HU – Preliminary injunction is not available if the scope of protection defined in the main claim is different from the one that can be derived based on the description

Posted: November 2nd, 2010

Hungary, Mertropolitan Court (first instance decision), 29 October 2010

The Metropolitan Court ruled in a first instance decision that a preliminary injunction is not available if the scope of protection defined in the main claim is different from the one that can be derived based on the description.

The patentee is the owner of a pharmaceutical patent which extends to an injectable pharmaceutical product having a taxane derivative as ingredient, a certain surfactant defined by its quality and an additive defined by its molecular weight, the latter serving the prevention of gelling or breaking the gelled phase when the patented solution is injected into perfusion.

In order to assess the probability of infringement in a preliminary injunction proceeding the court examined the scope of the protection defined by the main claim and established that in the product of the defendant, all components listed in the main claim – a taxane derivative as active ingredient, a surfactant and an additive with limited molecular weight – are present. Therefore, the court concluded that the product of the defendant falls into the scope of the patent.


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The court then turned to the argument of the defendant according to which water turns out to be a necessary element of the product based on the description, although it is missing from the claim, which may be of relevance since the defendant’s product contains no water (or only very little).

The Metropolitan Court noted that the scope of protection is clearly defined by the main claim and in course of examining the main claim the court shall not take into account any characteristic that is not included in the claim itself. However, after establishing the before mentioned the court still turned to examining the description and the examples.

Based on the analysis of the description the court established that the scope of protection defined by the main claim is not the same (wider) than the scope that can be derived from the description and the examples, since based on the latter ones water is indeed an essential element of realizing the inventive idea, while it is not listed among the components in the main claim.  Therefore, the court found that a contradiction exists between the claim and the description.

The court then concluded that such contradiction cannot be resolved in the short timeframe of the preliminary injunction proceeding, therefore the preliminary injunction cannot be granted. The court also noted that even considering that the solution of the defendant may contain a few percentages of water, again, the short time-frame of the preliminary injunction proceeding is not sufficient to obtain evidence whether this amount is eligible to fill in the role of water according to the inventive idea in the absence of any basis in the description or in the examples.

Consequently the request for preliminary injunction was rejected in the absence of probability of infringement.The decision is made on first instance and may be subject to appeal by either party.

Head note and summary: Eszter Szakacs

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