Supreme Court clarifies rules for patent trials
When patent and trademark offices, like the European Patent Office (EPO), make decisions on whether or not to grant a patent or a trademark, they are acting as the public administration.
That means there are certain rules they must follow – e.g. the rules on written explanations for their rulings, and their duty to inform and guide the parties during a case.
When an office in the public administration makes a decision, the decision can – for the most part – be tried before a court of law. But when is something an "administrative decision" – how much does it take to constitute a decision when dealing with patents? A new ruling from the Danish Supreme Court has the answer.
In 2010, the Danish biotech-company Novozymes filed for a patent with the EPO. Shortly after, the company DuPont Nutrition Biosciences ApS (hereinafter DuPont) filed a lawsuit against Novozymes. DuPont demanded that Novozymes acknowledge that the patent belonged to DuPont.
Novozymes pointed out that the patent had not been granted yet, and that there was thus no descision from the public administration to base the law suit on. EPO had only issued an “intention to grant”, but was in reality still able to change their minds on the patentability.
DuPont claimed that the “intention to grant” was the same as an actual decision. EPO only needed to “push the button” to grant the patent, which made the trial between DuPont and Novozymes a possibility. DuPont stated that they had a legitimate interest in clarifying the ownership of the patent as fast as possible.
The case ended up before the Danish Maritime and Commercial Court, who sided with Novozymes. The court stated that an “intention to grant” wasn't the same as an administrative decision from the public administration, and that DuPont was forced to postpone the lawsuit until the patent was granted.
DuPont was not satisfied with the verdict, and they appealed to the Danish Supreme Court. DuPont emphasized that the case would only have effect inter partes, as they were only interested in getting Novozymes to acknowledge that DuPont was the rightful owner of the future patent.
The Supreme Court did not, however, buy that explanation. The court stated that the patent laws dealt with all the possibilities for opposing a patent, and that this could only happen after the grant. EPO’s “intention to gran” could not be compared with an actual grant of patent and therefore not with an administrative decision.
To allow trials before a grant would undermine the whole patent system, and even though DuPont had a legitimate interest in the clarification of the ownership of the patent, there was no reason to stray from the rules laid out in the patent laws. DuPont’s attempt to narrow the scope of the case to inter partes did not change the court’s opinion. The ruling from the Maritime and Commercial Court was upheld, and DuPont was denied access to file their lawsuit against Novozymes.
The ruling is not surprising. The rule demanding a final decision by the public administration is established widely in the world of administration law – but it is nice to have the Supreme Court’s take on the rule when it comes to patents, and to know that an “intention to grant” is not the same as an actual grant of the patent.