In the latest patent law case by
the Patent and Market Court of Appeal at the Svea Court of Appeal in Sweden,
PMT 360-18, the Court overturned the ruling of the Patent and Market Court,
thereby rejecting a claim of contributory infringement of
European patent EP0868002B1 in
connection with submission of a public tender. The infringement claim was
rejected on the ground that the patent in question is invalid due to a lack of
inventive step.
Contributory infringement occurs when a third party provides another party with
the necessary preconditions (a method, a device, materials) in order to commit
patent infringement (e.g., under Chapter
1 3§2 in the Swedish Patent Law). In
this case, contributory infringement was alleged in connection with a tender
concerning delivery of VSCs to a plant providing for transfer of high voltage
direct current, such that the VSCs were to be combined with polymer-insulated
cables in accordance with the patent.
In ruling that the alleged
infringed patent was invalid due to lack of inventive step, the Patent and
Market Court pointed to prior art, consisting of a previous patent that covered
a converter connection for conversion between AC and DC, especially at high
voltage DC. From this piece of prior art, it was clear how VSCs can be used to alter
the feeding direction of electric effect through the voltage network without
altering shifting polarization.
The Court considered how the
man skilled in the art would view the use of polymer-insulate cables and took into
account that the technical solution provided should be both environmentally-friendly
and economically sustainable.
The Court stated that although
there was no industrial use of such cables prior to the priority date, it did not mean that the man skilled in the art, facing the objective problem stated in the
patent document, would fail to reach the same technical solution as that
provided by the invention. As well, the use of such cables constitutes a clear,
albeit expected environmental benefit, in relation to traditional overhead
wires. Thus, the invention lacked inventive step.
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It's electric waiting for a ruling on public procurement |
From the point of view of
jurisprudence, once the issue of invalidity was determined, the question of contributory
infringement in connection with the submission of a tender in a public
procurement (here, the Swedish government authority Svenska Kraftnät), was put
off until another day.
But the issue remains: what is
the relationship between the circumstances of public procurement and the
preservation of the rights of the patent holder? What happens when the public
procurement specification describes the technology that is covered by patent
protection? The public authority that is interested in the specific technology
is under an obligation to proceed with an open public procurement. But in doing
so, it (even if only indirectly) invites interested parties to submit tenders
that constitute patent infringement.
The perhaps odd effect is that
the public authorities may proceed in such a way that encourages infringement of
a patented technology by turning them into technological standards, on the
basis of which the tenders are meant to be submitted. The last word (even the first word?) on this challenging issue has yet to be
given.
Great post Frantzeska! It reminds me of a Dutch case where a party submitted an add-on for trucks in a municipal procurement round; the add-on infringed and the District Court of the Hague issued an injunction on request of the patentee (ECLI:NL:RBDHA:2017:4). That seems to be the most logical outcome, though it of course does not address potential liability of the procuring agency. In the case that led to C-423/17 (Warner Lambert/CBG), the lower Dutch court held that government agencies may act unlawfully by inciting patent infringement. Perhaps the same could apply to procurement proceedings, though I imagine the circumstances would have to be fairly specific.
ReplyDeleteVery interested in the response. Here in Italy, a federal agency has appropriated my husband's patented technology and made it a technical standard for public procurement tenders. They've posted online instructions on how to reproduce the technology, complete with reserved know-how on to perfect it--all the while omitting to indicate the technology is patented. It's a nightmare we cannot seem to stop.
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