Hungarian model captures Kat's heart, almost ...

Resisting the temptation to rush out into the street and kiss the first Hungarian he sees, the IPKat is currently rejoicing at some exciting news. As Kats go, not every feline has a position regarding the common-or-garden utility model. There's a famous fairy tale about the abused, poverty-stricken Cinderella and her two ugly sisters (here). Strange as it seems, the utility model appears to possess the characteristics of both. Like Cinderella, the utility model is a right that never gets invited to the fun events (when did you last go off to a fancy hotel to attend a conference or seminar on utility models?), while in the eyes of her detractors she is also an ugly sister, an ill-proportioned hybrid of other IP rights and the aspirations that accompany them.

This is why the IPKat is so thrilled that utility models have suddenly occupied centre-stage on the Curia website today with news that the Hungarian Fővárosi Bíróság (step up, Tibor Gold, and tell us how to pronounce those precious syllables) has referred some questions to the Court of Justice of the European Union for a preliminary ruling in Case C-180/11 Bericap Záródástechnikai Bt. v Plastinnova 2000 Kft., Szellemi Tulajdon Nemzeti Hivatala intervening. In case you're wondering, the questions posed of Europe's finest are as follows:

"1. Is it consistent with European Union law if, during proceedings to amend a decision relating to an application for invalidation of a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court is not bound by the claims or statements with legal effect made by the parties, and the court is entitled to order of its own motion any evidence that it may deem necessary? [Sudden thought: these aren't enforcement proceedings, so the question can't be anything to do with the IP Enforcement Directive and, while the European Patent Convention makes mention of utility models, the interpretation of its provisions doesn't fall within the Court's normal activities. And it can't be an oblique allusion to TRIPS, surely, since that Agreement doesn't mention them, does it? And that just leaves the Paris Convention on the Protection of Industrial Property, which does mention them but doesn't bind its Members to anything at the level of detail of this question. So what is going on? Can any kind reader explain?]

2. Is it consistent with European Union law if, during proceedings to amend a decision relating to an application for invalidation of a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court, when making its decision, is not bound by the administrative decision made in relation to the application for invalidation, or by the findings established therein, nor, specifically, by the grounds for invalidation indicated during the administrative procedure, or by the declarations, assertions or evidence submitted during the administrative procedure? [Merpel has just checked the Curia website. This reference is categorised under 'Intellectual Property' and not under 'Justice and Home Affairs', 'Procedure' or 'Principles of Community Law']

3. Is it consistent with European Union law if, during proceedings to amend a decision relating to a further application aimed at invalidating a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court excludes any evidence submitted with the further application, including evidence relating to the state of the art, to which reference was already made in connection with the previous application for invalidation of a utility model?" [Oh well, it was fun while it lasted ...]

Europe according to Hungarians here

Hungary goes for the PLT, while Monsanto and Cargill make a meal of costs

The World Intellectual Property Organization has today issued PLT Notification No. 19, which brings news that the Republic of Hungary, on 12 December 2007 deposited its instrument of ratification of the Patent Law Treaty (PLT), which was adopted at Geneva on 1 June 2000. The PLT entters into force for Hungary on 12 March 2008.

Text of Patent Law Treaty here
Contracting parties here
Great Hungarian inventions here
The greatest Hungarian invention here


The IPKat never quite got around to posting the decision of the Patents Court for England and Wales in Monsanto Technology LLC v Cargill International SA and Cargill plc [2007] EWHC 3113 (Pat) -- a decision handed down by Lord Justice Pumfrey on 21 December, just days before his premature demise. This was a decision on costs, following an earlier trial (noted here by the IPKat).

In essence, the court had to determine costs arising out of a patent infringement action brought by Monsanto which, to some extent, that company won -- though it failed on the validity of one of its claims and, in relation to infringement, also lost on one relatively short construction point regarding the meaning of the word "isolated". The costs were not insignificant: £2.2 million for Monsanto and £1.9 million for Cargill. so how should they be split?

The judge concluded as follows:

* Before the current Civil Procedure Rules (CPR) came into effect, the court exercised general control over costs through a process of certification. Following the CPR's abolition of the requirement for certification the court was required, in awarding costs, to identify the overall winner of the proceedings.

* Except in the most exceptional circumstances, the overall winner was likely to be entitled to payment of all costs that were not, or could not be, allocated to a particular issue.

* As to costs that could properly be allocated to issues on which the overall winner had nevertheless lost, two questions had to be asked: (i)should the winner recover his costs of that issue? (this used to be answered by the old process of certification) and (ii) should he pay the otherwise unsuccessful party's costs incurred in respect of that issue?

* In answering question (ii), one should have regard not just to the reasonableness in raising the issue at all, but to whether there was something more than conduct justifying his being deprived of the costs of the issue in the circumstances.

* The further one moved away from the general rule that the unsuccessful party should pay the costs of the successful party, an increasingly strong justification was required. Where such justification existed, it was convenient to treat both parties' costs arising from an issue as being equal to and double the deduction. Thus if a party failed to recover costs of an issue amounting to 15 per cent of his total costs, he would be deducted 30 per cent of his costs if the court concluded that he should also pay the costs of that issue to the other side.

* Applying those principles in this case Cargill, who had won on the infringement issue only on the construction point, did not receive its costs but had to pay half Monsanto's costs on that issue. Monsanto would also received its costs on the issue of validity, subject to a deduction for the single claim on which it failed.

The IPKat is always saddened by litigation that, in seeking to resolve costs issues, has the effect of increasing them. There is no comfortable way for judicial discretion to be preserved while also reducing the level of uncertainty that causes parties to ask for that discretion to be invoked.