SPC is presumed valid in proceedings for injunctive relief, says top Austrian court

This weblog does not often receive news from Austria, but International Law Office has recently posted a note on a ruling of the Austrian Supreme Court on 16 February (17 Ob 5/11a). The ruling arose from an unusual set of facts in which the holder of an SPC challenged the grant of a later SPC which, it alleged, was based on the same active ingredient as its own earlier SPC.  In patent infringement proceedings the holder of the later SPC had secured interim injunctive relief against the holder of the earlier one but, once the patent on which the later SPC was based had expired, the holder of the earlier one sought a discharge of that injunction on the basis that, on the expiry of the admittedly valid patent, the injunction was now based only on the SPC which should not have been granted.

The Supreme Court considered that, for the purposes of interim relief -- where the degree of investigation open to the court is limited -- granted rights such as SPCs must be presumed to be valid unless there was sufficient evidence to the contrary. Interim injunctions are governed by the Austrian Enforcement Act (not the Patent Act) and, while this law provide for the possibility of a stay of enforcement if sufficient monetary security is offered, this option is not available in patent and SPC litigation since the consequences of continuation of an infringement cannot be foreseen with sufficient certainty.

Source: "Court clarifies legal aspects of supplementary protection certificates", by Ferdinand Graf and Tanja Melber, Graf & Pitkowitz Rechtsanwälte GmbH, Austria, International Law Office, 27 June 2011