C-35/87

OPINION OF MR MISCHO — CASE 35/87

OPINION OF MR ADVOCATE GENERAL MISCHO delivered on 28 April 1988 *

Mr President, (c) The exclusion of 50-year old specifi­ Members of the Court, cations under section 50 of the 1949 Act does not apply to patents granted under the Patents Act 1977; 1. This request for a preliminary ruling relates to a patent infringement action in which Thetford Corporation (USA) and (d) The plaintiffs have not sought to obtain Thetford (Aqua) Products Ltd (UK) (which any corresponding patent in any other I will refer to as 'Thetford') are suing Member State; Fiamma SpA and Fiamma UK (which I will refer to as 'Fiamma'). The latter are, respectively, the manufacturers in Italy and the importers into the United Kingdom of (e) The alleged infringing articles were portable toilets patented by Thetford in the manufactured in Italy and imported and United Kingdom, and in that Member State sold in the United Kingdom. alone. Thetford, from which Fiamma has no licence whether in the United Kingdom, in Italy or elsewhere, is relying in particular on a patent (which I will refer to as 'Patent The first question 235') issued under the Patents Act 1949, which continues to govern the patent despite its having been replaced by the 3. The first of the two questions referred to Patents Act 1977. the Court by the Court of Appeal is as follows :

(b) in a specification describing the invention for the purposes of an application for protection in any country outside the United Kingdom made more than 50 years before that 8. However, in its judgment in Keurkoop v date; or Nancy Kean Gifts 2the Court made it clear that in the state of Community law then obtaining it would not examine the precise (c) .. . ' conditions laid down by national law for the grant of an intellectual property right. The question at issue in that case was whether 5. Consequently, it is not possible in United Article 36 of the Treaty permitted the Kingdom law to base an action for the revo­ application of a national law which, like the cation of a patent on a specification issued Uniform Benelux Law on Designs, gave an in the United Kingdom or in any other exclusive right to the first person to file a country more than 50 years before. design, without persons other than the author or those claiming under him being entitled, in order to challenge such an 6. The first question put by the Court of exclusive right or defend an action for an Appeal therefore seeks to establish whether injunction brought by the holder of the the derogation from Articles 30 to 34 of the right, to contend that the person filing the EEC Treaty which is set out in the first design was not the author of it, the person sentence of Article 36 necessarily applies to who commissioned the design from him or all patents or whether, on the contrary, that his employer. The Court stated that exception does not apply to patents which, were it not for section 50 (1) of the Patents Act 1949, would be liable to be revoked, that is to say patents granted by virtue of the principle of relative novelty. 'in the present state of Community law and in the absence of Community standardi­ zation or of a harmonization of laws the 7. The defendant in the main proceedings determination of the conditions and (Fiamma) considers that the freedom which, procedures under which protection of according to the Court, 1 the Member States designs is granted is a matter for national have to define the conditions for the rules' (paragraph 18 of the judgment). 1 — Sec in particular the judgment of 31 October 1974 in Case 15/74 Centra/arm v Sterling Drug [1974] ECR 1147, 2 — Judgment of 14 September 1982 in Case 144/81 Keurkoop paragraph 7 at p. 1162. v Nancy Kean Gifts [1982] ECR 2853.

10. However, Fiamma further argues that whereas there has been little harmonization in the field of designs, with which Keurkoop 15. In sum, I therefore consider that the was concerned, the same cannot be said of judgment in Keurkoop does in fact patents. There has been significant progress constitute a relevant precedent, and that towards harmonization of national laws there is no reason for not applying in this regarding patents, and at Community level case the Court's ruling to the effect that the agreement has even been reached on matters definition of the conditions for the existence of substantive patent law, including novelty. of industrial and commercial property rights Account should therefore be taken of that is a matter for the Member States, 1 even if development. the resulting differences between national laws creates obstacles to the free movement of goods. Thus in Parke Davis and Deutsche Grammophon, 3 Dutch and German law 11. What is the actual position? The 1975 made provision for industrial or commercial Luxembourg Convention for the European property rights which were unknown in patent for the common market (Community Italy and in France respectively. However, Patent Convention) has still not entered into the Court did not call in question the force. Member States' freedom to grant industrial or commercial property rights within the meaning of Article 36, even though differences between those rights were the 12. The Strasbourg Convention on the source of a potential barrier to the free unification of certain points of substantive movement of goods. law on patents for invention and the 1973 Munich Convention on the grant of 1 — See in particular the judgment of 31 October 1974 in Case European patents (European Patent 15/74 Centrafarm v Sterling Drug [1974] ECR 1147, paragraph 7 at p. 1162. Convention) also incorporate the principle 3 — Judgment of 29 February 1968 in Case 24/67 Parke Davis of absolute novelty, but those conventions and Others v Centrafarm [1968] ECR 55, at p. 71; judgment of 8 June 1971 in Case 78/70 Deutsche Gram- are not part of the Community legal order. mophon v Metro [1971] ECR 487.

18. It would not be entitled to protection if 22. It was, moreover, on the basis of the the prohibition or restriction on imports second sentence of Article 36 that the Court 4 based on the existence of a patent held in the 'Sekt and Weinbrand' case, constituted a means of arbitrary discrimi- which Fiamma cites in support of its nation or a disguised restriction on trade argument, that Article 30 of the Treaty had between Member States within the meaning been infringed because German law granted of the second sentence of Article 36. the protection provided for indications of origin to appellations which, at the time when such protection was granted, were merely generic in nature. 19. In fact, it could be that an injunction prohibiting the importation of a product, issued in view of the existence of a patent, may constitute such discrimination or such a 23. Can the protection of a patented restriction simply because the patent was product against imports from another granted in circumstances indicative of a Member State despite the relative novelty of protectionist intention. the invention likewise constitute arbitrary discrimination or a disguised restriction on imports?

20. Therefore, in this case the Court is not called upon to consider — as Fiamma asks it to do — whether a patent such as the one 24. Certainly, according to the established granted to Thetford constitutes a genuine case-law of the Court the specific subject- patent (under United Kingdom law that is matter of a patent consists in in fact the case), but to consider whether in the light of the circumstances in which the 4 — Judgment of 20 February 1975 in Case 12/74 Commission v patent was granted (that is to say, despite Germany [1975] ECR 181, paragraph 16 at p. 199).

27. Other arguments tend to show that this is not one of the cases covered by the second sentence of Article 36. First, para­ graphs (a) and (b) of section 50 of the Patents Act 1949 make no distinction between specifications describing an 25. Consequently, where there is no effort invention lodged in connection with a to reward, a prohibition on importation can patent application in the United Kingdom scarcely be anything other than the and those lodged in connection with a expression of a discriminatory or protec­ patent application in another country: in tionist attitude (the example of the football). both cases specifications which are more than 50 years old are not taken into consideration. (Moreover, it was not contested that specifications relating to patent applications made abroad are available at the United Kingdom Patent Office). 26. The United Kingdom and the Commission argue that there is reward for 28. It is also uncontested that foreign an effort in this case, namely the effort put nationals applying for a patent in the United in by the author of the 're-invention', who Kingdom have the same rights as British makes a forgotten invention available once nationals in regard to the 50-year rule. again to the country. This reasoning seems Hence, if Fiamma had lodged its patent to me to be valid, especially since only application before Thetford and if its patent specifications going back more than product had not been described in a publi­ 50 years are excluded from the state of the cation available in the United Kingdom art by section 50 of the Patents Act 1949. In Fiamma would have obtained a United other words, publication in forms other than Kingdom patent. It would have been able to patent specifications and previous use going enforce that patent both with respect to back more than 50 years may be relied on in imports (except imports of its own products order to obtain the revocation of the patent. marketed with its consent in other Member (I would observe that the national court States) and with regard to any infringers of asked us to assume simply as a working that patent in the territory of the United hypothesis that Thetford's patent is valid Kingdom. under United Kingdom law.) Anticipation is ignored only where the old invention exists only in the form of old documents lodged at 29. It may be concluded, therefore, that a the Patent Office. In that context it seems to prohibition or restriction on imports granted me to be possible to speak of re-invention with a view to protecting the exclusive and rewarding re-invention, whether the rights of the holder of a patent issued in 'inventor' was wholly ignorant of the old respect of an invention the novelty of which specifications and made an invention quite in the absence of the 50-year rule could independently of them or whether he have been contestedwould not constitute arbitrary discrimination or a disguised 5 — See, most recently, the judgment of 9 July 1985 in Case 19/84 Pharmon vHoechst [1985] ECR 2281, at p. 2298. restriction on trade between Member States

30. It remains for me to say a few words about a related issued raised by the Commission in answering the questions put The second question by the Court: under the Patents Act 1949 it was possible to obtain a patent in the United Kingdom for an invention which was freely 32. In its second question the Court of used or published (and could therefore be Appeal asks whether, if a patent such as freely used) in another Member State at the Thetford's is entitled to the protection of time of the application. Like the Article 36, the only relief justified under Commission, I take the view that if such that article would, as Fiamma has argued, legislation still existed now a prohibition on be an order for the payment of a reasonable importation granted in order to protect a royalty (or other monetary award) but not patent obtained on that basis would an injunction. constitute arbitrary discrimination or a disguised restriction on trade between Member States. As to whether the Treaty could now be invoked in order to deprive 33. According to the established case-law of the holder of a patent which was validly the Court: 6 granted in 1969 — that is to say, before the United Kingdom became a member of the Community — of the right to oppose imports, in my view that question raises very 'the substance of a patent right lies essen­ complex problems involving, inter alia, tially in according the inventor an exclusive concepts such as the transitional period, right of first placing the product on the legal certainty, legitimate expectations and market so as to allow him to obtain the vested rights. There can be no question of reward for his creative effort. It is therefore the Court's dealing with them by way, so to necessary to allow the patent proprietor to speak, of an obiter dictum when the Court prevent the importation and marketing of of Appeal has not even raised the matter. products manufactured under a compulsory licence in order to protect the substance of his exclusive rights under his patent' (paragraph 26 of the judgment).

35. Consequently, prohibiting importation would constitute an arbitrary discrimination is the normal method of protecting the within the meaning of the second sentence specific subject-matter of the patentee's of Article 36. This follows from the Court's right and there is no room for consider­ judgment of 3 March 1988 in Case 434/85 ations based on the principle of propor­ Allen and Hanburys Ltd v Generics (UK) tionality. Moreover, it would be paradoxical Ltd, where the Court ruled that to require United Kingdom law to tolerate the importation of products manufactured abroad without the patentee's consent 'Articles 30 and 36 of the Treaty must be whereas if the products were manufactured interpreted as precluding the courts of a in the United Kingdom it would be possible Member State from issuing an injunction to restrain the. manufacturer's activity by prohibiting the importation from another means of an injunction. Member State of a product which infringes a patent endorsed "licences of right" against 36. In contrast, the situation would be quite an importer who has undertaken to take a different if, all other things being equal, an licence on the terms prescribed by law infringer established in the country in where no such injunction may be issued in question could only be ordered to pay the same circumstances against an infringer royalties but could not be restrained by who manufactures the product in the injunction from manufacturing. In that case national territory' (paragraph 23 of the an injunction issued against importers alone judgment; see also paragraph 22).