When it comes to infringement matters, our office handles contentious cases on a team work basis: our patent attorneys are assisted by lawyers with extensive litigation practice (“barristers”). All patent infringement cases in Hungary are handled by the very same board of judges at the Metropolitan Court and thanks to several years spent with infringement matters our lawyers are familiar with the board’s practice and are highly successful.
Our office has four patent attorneys working in the mechanical field and two patent attorneys working in the chemical field. Their work is sometimes backed up by outside experts if necessary. It is worth to note that one of our patent attorneys in the chemical field, namely Dr. Szarka used to be the President of the Hungarian Patent Office.
Most commonly our clients seek for legal help in cases of unauthorized use. There is a wide range of civil remedies the patentee may claim:
- request that the fact of infringement be declared by the court;
- request an injunction that the infringer cease his infringement;
- demand satisfaction by declaration or by other appropriate means;
- require surrender of the enrichment obtained by infringement;
- request the seizure and destruction of the instruments used for infringement and the infringing products;
- require information on business relations in connection with infringement;
- claim compensation for damages in accordance with the provisions of civil liability.
1. Infringement action in Hungary
The first hearing(s) will deal only with the injunction if it is requested. The court will decide on the material questions of the case later, after at least one further hearing. Several weeks may pass between hearings in the injunction phase, several months may pass between hearings in the second phase when the court decides on the merits of the case. First instance procedures will take between one and two years time (if not stayed/suspended because of revocation).
In case of infringement there is only one chance of appeal, and the appellate court works relatively quickly. Additional 6 months may pass all the same.
2. Interim injunction: the patent holder may ask the court for an injunction if an infringement process is started. Evidence needs to be submitted regarding the fact that the product falls within the claims and that the respondent has been selling or advertising the product. Temporary measures offer effective protection taking into consideration that court shall rule on them in special proceedings, before making its decision on the merits.
2.1. Time-limits: In principle there is no limit for submitting the claim for injunction but the practice is that (with a few exceptions) the injunction will only be granted if the claim is filed within 60 days from the day when the holder has become aware of the infringement activity of the respondent. If the infringement activity has been going on longer than 6 months, the chances of an injunction will also be minimised. The rule behind the practice is that if the deadlines are not kept, the holder must prove that there is a direct danger that the plaintiff will suffer damages or some other “special equitable” reason exists in favour of the plaintiff. The patent holder must also prove that the benefits for the plaintiff will outweigh the drawbacks that will arise for the respondent.
2.2. Procedure: First instance decision takes about 2-3 months. At the very beginning: within approximately 2 weeks the petition of the plaintiff will be sent by the court to the respondent with a short timeframe requesting a reply. If no reply is given, the court may order the injunction without a hearing, but this happens rarely.
If the respondent replies to the claim then it is most likely that a hearing will be scheduled for a date within 2 months. The court will decide about the injunction after the hearing but the decision will only be communicated to the parties several weeks later. There is a possibility to appeal against the decision but if the injunction has been ordered then the decision may be enforced irrespective of the appeal process.
Appeal process in the matter of the preliminary injunction takes additional 2-3 months.
2.3. Undertakings: If the respondent proves that actual damages will arise on his side by an injunction, the court may order the plaintiff to deposit a payment as collateral. There is no limit for the amount of this. There were instances with several million of Euros worth of collateral requested. If this is not paid then the injunction will not have effect, apart from that it means no further obligations for the plaintiff.
2.4. Documents required (when acting for the plaintiff): signed POA, company registry extract, evidence about the person and the activity of the respondent (the violator of the patent), previous correspondence with the respondent, patent registry extract (may be acquired by our office if needed).
3.1. Infringement and validity (revocation) are handled by the same court in Hungary, but in case of a revocation the first forum to decide on the matter is the Patent Office. The court will only deal with the revocation after an appeal.
3.2. As the rule reads it is in fact not an obligation for the court to stay infringement proceedings if a revocation action is started against the patent at the Patent Office, but the practice of the court is that they do actually stay the proceedings until a decision with full force. Same applies to the EPO proceedings but that can only happen if it is a fresh European patent (opposition period running) otherwise it is the HPO.
3.3. If a claim for injunction is filed then the court may not stay the proceedings until there is a decision about the injunction. Even if the revocation has already been ordered by the Hungarian Patent Office, the court will have to decide about the injunction first. It is however the practice of the court that they will not give way to the injunction if the revocation has already been ordered by the Hungarian Patent Office/EPO.
4. Patent matters are handled by a specialist court in Hungary. All patent infringement cases in Hungary are handled by the very same board of judges at the Metropolitan Court. If an appeal is filed, the “Appellate Metropolitan Court” decides, also a specialist court. Revocation starts before the Patent Office, but after the first appeal the same two courts will decide later on. Note that in case of revocation there is a 3 level system with 2 appeals.
5. If the legal action is an infringement proceeding, it is necessary to warn the other party before instigating legal action. According to the Code of Civil Procedure the judge will dismiss the action without examining the matter of the case if the proper correspondence with special requisite formulas is not attached to the file. This is a new rule, the court practice is not solid yet. We even had a case where the injunction was given while we have not previously provided the said correspondence. Still we advise our plaintiff clients that they should provide such a correspondence if possible.
There is in fact a possibility to file the claim for injunction without the complete infringement action. In this case the plaintiff will have 15 days to file the action if the injunction stands. If the plaintiff chooses this course of action then there would be time to complete the correspondence while waiting for the court to decide on the injunction.
6. Process for the revocation of a patent
A revocation action will prevent the preliminary injunction only if the Hungarian Patent Office has revoked the patent. If the decision of the HPO is not yet given, the injunction is likely to be ordered. The court usually refuses to give way to the injunction if the revocation has already been ordered by the Hungarian Patent Office/EPO.
I. HPO phase (7-15 months)
1. Application to Hungarian Patent Office (HPO)
2. The presumed response of the other party will be forwarded > filing reply with additional arguments
3. Oral hearing (1 or maybe 2 times)
II. Court phase (1-2 years)
4. (If there is an appeal against the decision of HPO) > Metropolitan Court of Budapest
III. Appeal court phase (6-12 months)
5. (If appeal is filed against the decision of the court) > Court of Appeal of Budapest