1 August 2010Jurisdiction reportsImre Molnár

Breaking the expert taboo

Parties can request an appeal against HPO decisions with the Metropolitan Court of Budapest—the first instance court in Hungary for patent matters. The Metropolitan Court’s decisions are supervised by the Appeal Court.

In one recent case, the request for revocation was filed against a patent covering the preparation of foodstuffs consumed by sportsmen to improve muscular performance. The technical problem addressed by the patent was that the active ingredient of the foodstuffs—a known compound—suffers from practical disadvantages. It is highly hygroscopic (becomes liquid by absorbing the air humidity) and has a very unpleasant, fish-like odour.

The patent aimed to solve the problem by using the compound in the form of a specific salt that does not have these disadvantages. However, the salt was already known prior to the patent’s priority, though without any reference to its properties when used as foreseen by the patent. The petitioner who instigated the nullity proceeding questioned the novelty and invention of the preparation process disclosed in the patent.

The patent was revoked by the HPO based on lack of novelty and invention. The HPO’s main point was that although the documents that allegedly pre-empted the patents did not describe the non-hygroscopic property of the specific salt in question, the mere fact that this property was not specifically mentioned cannot mean that it was not known, since chemical literature would specifically mention just the opposite for any hygroscopic salt.

The patentee filed a request for reconsideration with the Metropolitan Court, together with an expert opinion. (In Hungary, these are not treated as ‘neutral’ or ‘independent’ expert opinions, but rather as party statements). In this opinion, a pharmaceutical chemist presented his views of why the patent in question should be considered novel and inventive. The Metropolitan Court accepted this position, and reversed the HPO’s decision, maintaining the validity of the patent.

“[The Appeal Court] pointed out that an expert should be proficient in the releva nt field of the invention and that the positions of the pharmacological experts were more convincing than those of the experts who were obviously not at home in the specific field.”

The petitioner then filed an appeal against this decision with the Appeal Court. The appellant attached to the appeal a different expert opinion prepared on its behalf by an organic chemist. In this opinion, the expert rejected the patent’s novelty and inventive character, repeating almost exactly the HPO’s standpoint. The fact that the non-hygroscopic character of the specific salt in question was not mentioned in the prior art is itself proof that this property exists, because the convention in existing chemical literature is to mention if a compound is hygroscopic and not to mention it if it is not.

Having established the contradictory standpoints of the parties’ experts, the Appeal Court invited the parties to agree on a third, neutral expert. The parties couldn’t agree, so the court turned to an expert registered on the Ministry of Justice’s list of judicial experts. The court asked the expert to prepare a neutral opinion on the product’s novelty and inventive nature. This expert confirmed the standpoint of the organic chemist and HPO, denying novelty and inventive activity.

The patentee decided to turn to another expert, the head of a university institute of pharmacological sciences with experience of drugs production, and asked her to review the previous opinions and present her standpoint. She confirmed the existence of both novelty and inventive activity, and the patentee submitted the new opinion to the Appeal Court, requesting an oral hearing and cross-examination of the patentee’s and the court’s expert.

The Appeal Court declined to hold an oral hearing and upheld the favourable decision of the first instance court, validating the patent. It pointed out that an expert should be proficient in the relevant field of the invention and that the positions of the pharmacological experts were more convincing than those of the experts who were obviously not at home in the specific field.

The unique significance of this decision lies in the fact that the Appeal Court didn’t accept the Ministry of Justice’s expert’s evidence, but relied on the experts employed by one of the parties, whose specific knowledge was more convincing than the expert appointed by the court. By doing so, a long-established taboo has been broken.

Imre Molnár is deputy managing director and Hungarian and European patent attorney at Danubia Patent & Law Office LLC. He can be contacted at: imolnar@danubia.hu

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