Court rules on burden of proof in patented process case

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Court rules on burden of proof in patented process case

burden-min-final.jpg

The reversal of burden of proof in civil proceedings concerning the enforcement of rights for patents for processes is a provision that exists in the laws of many countries, including Greece.

The same provision is included in Article 34 of TRIPS. This gives judicial authorities the power to order the defendants to prove that their process is not infringing.

The defendant's burden of proof is laid down in Article 17 Paragraph 6 of Law 1733/87, which provides that "if the invention relates to a process for the manufacture of a product, each product of the same nature is presumed to have been manufactured according to the protected process."

Article 34 of TRIPS imposes an additional condition for the infringement presumption to apply. In order for this to apply, the product obtained by the patented process must be new.

The issue of which conditions should apply for the reversal of burden of proof to be ordered was examined in a recent judgment from the Athens Single Member Court of First Instance hearing a preliminary injunction application based on a patent with process claims. In these proceedings, the patentee was relying on the reversal of burden of proof as regards infringement of the patented process. The defendant objected, arguing that the reversal of burden of proof cannot apply under the circumstances, since the product obtained under the process was not new. The objection was based on Article 34.1a of TRIPS and the defendant argued that these provisions of TRIPS overrule the broader provisions of national law.

The court rejected the objection and found the national law provisions applicable. In its judgment it referred to CJEU judgment C-414/11 and ruled that, in view of this judgment, TRIPS does not have a direct effect on the member states, given that the rules of the TRIPS Agreement fall within the meaning of "commercial aspects of intellectual property" and by extension, the "common commercial policy" and fall within the exclusive competence of the EU, based on the provisions of TFEU Articles 3.1(e) and 207.1.

kilimiris-constantinos.jpg

Constantinos Kilimiris


Patrinos & Kilimiris

7, Hatziyianni Mexi Str.

GR-11528 Athens

Greece

Tel: +30210 7222906, 7222050

Fax: +30210 7222889

info@patrinoskilimiris.com

www.patrinoskilimiris.com

more from across site and ros bottom lb

More from across our site

Speaking to Managing IP, Kathi Vidal says she’s looking forward to helping clients shape policy when she returns to Winston & Strawn
AA Thornton and Venner Shipley’s combination creates a new kid on the block, but one which could rival the major UPC players
Amit Aswal explains why you should take on challenges early in your career and why the IP community is a strong, trustworthy network
Five members of Qantm’s leadership team, including its new managing director, discuss how the business is operating under private equity ownership and reveal expansion plans
In our latest UPC update, we examine an important decision concerning the withdrawal of opt-outs, a significant victory for Edwards, and the launch of a new Hamburg-based IP firm
The combined firm, which will operate under the Venner Shipley name and have 46 partners, will go live in December
Vidal, who recently announced her departure from the USPTO, said she decided to rejoin the firm because of its team and culture
Osborne Clarke said John Linneker’s experience, including acting for SkyKick in the seminal dispute with Sky, will be a huge asset to the firm
Fieldfisher led arguments in court before Kirkland & Ellis took over shortly after SkyKick was acquired, it was revealed last week
Lawyers at Finnegan and Fross Zelnick explain why privacy formed a natural extension of their firms’ IP practices and share expansion plans
Gift this article