CELEX: 61987CC0035
Language: en
Date: 1988-04-28 00:00:00
Title: Opinion of Mr Advocate General Mischo delivered on 28 April 1988. # Thetford Corporation and others v Fiamma SpA and others. # Reference for a preliminary ruling: Court of Appeal (England) - United Kingdom. # Protection of industrial and commercial property - Patents - Free movement of imported goods. # Case 35/87.

Important legal notice

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61987C0035

Opinion of Mr Advocate General Mischo delivered on 28 April 1988.  -  Thetford Corporation and others v Fiamma SpA and others.  -  Reference for a preliminary ruling: Court of Appeal (England) - United Kingdom.  -  Protection of industrial and commercial property - Patents - Free movement of imported goods.  -  Case 35/87.  

European Court reports 1988 Page 03585

Opinion of the Advocate-General

Mr President,Members of the Court,1. This request for a preliminary ruling relates to a patent infringement action in which ThetfordCorporation (USA) and Thetford (Aqua) Products Ltd (UK) (which I will refer to as Thetford)are suing 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 portabletoilets patented by Thetford in the United Kingdom, and in that Member State alone. Thetford,from which Fiamma has no licence whether in the United Kingdom, in Italy or elsewhere, isrelying in particular on a patent (which I will refer to as Patent 235) issued under the Patents Act1949, which continues to govern the patent despite its having been replaced by the Patents Act1977.2. The Court of Appeal of England and Wales, before which the main proceedings are pending,asks this Court to make the following assumptions:(a) Patent 235 is a valid patent under United Kingdom law;(b) Patent 235 would be invalid under the laws of other Member States, except possibly Ireland,because seven patent specifications were published more than 50 years before the priority datebut excluded from consideration in the United Kingdom under section 50 of the Patents Act 1949;(c) The exclusion of 50-year old specifications under section 50 of the 1949 Act does not applyto patents granted under the Patents Act 1977;(d) The plaintiffs have not sought to obtain any corresponding patent in any other Member State;(e) The alleged infringing articles were manufactured in Italy and imported and sold in the UnitedKingdom.The first question3. The first of the two questions referred to the Court by the Court of Appeal is as follows:(1) Whether a subsisting patent which has been granted in the United Kingdom under theprovisions of the Patents Act 1949 in respect of an invention which but for the provisions ofsection 50 of that Act would have been anticipated (lacked novelty) by a specification as isdescribed in paragraphs (a) or (b) of section 50 (1) of that Act constitutes industrial orcommercial property entitled to protection under Article 36 of the Treaty of Rome?4. Section 50 (1) of the Patents Act 1949 provides as follows:An invention claimed in a complete specification shall not be deemed to have been anticipated byreason only that the invention was published in the United Kingdom:(a) in a specification filed in pursuance of an application for a patent made in the United Kingdomand dated more than 50 years before the date of filing of the first-mentioned specification;(b) in a specification describing the invention for the purposes of an application for protection inany country outside the United Kingdom made more than 50 years before that date; or(c) ...5. Consequently, it is not possible in United Kingdom law to base an action for the revocation ofa patent on a specification issued in the United Kingdom or in any other country more than 50years before.6. The first question put by the Court of Appeal therefore seeks to establish whether thederogation from Articles 30 to 34 of the EEC Treaty which is set out in the first sentence ofArticle 36 necessarily applies to all patents or whether, on the contrary, that exception does notapply to patents which, were it not for section 50 (1) of the Patents Act 1949, would be liable tobe revoked, that is to say patents granted by virtue of the principle of relative novelty.7. The defendant in the main proceedings (Fiamma) considers that the freedom which, accordingto the Court,  the Member States have to define the conditions for the existence of intellectualand commercial property rights must necessarily be subject to limits and not exceed a certain areaof discretion. Accordingly, it considers that a right granted by a national legislature does notconstitute a patent and cannot qualify for the protection afforded on that ground by Article 36unless certain fundamental conditions are fulfilled. In particular, a patent granted in the absenceof novelty or an inventive step could not be regarded as industrial and commercial property.8. However, in its judgment in Keurkoop v Nancy Kean Gifts  the Court made it clear that in thestate of Community law then obtaining it would not examine the precise conditions laid down bynational law for the grant of an intellectual property right. The question at issue in that case waswhether Article 36 of the Treaty permitted the application of a national law which, like theUniform Benelux Law on Designs, gave an exclusive right to the first person to file a design,without persons other than the author or those claiming under him being entitled, in order tochallenge such an exclusive right or defend an action for an injunction brought by the holder ofthe right, to contend that the person filing the design was not the author of it, the person whocommissioned the design from him or his employer. The Court stated thatin the present state of Community law and in the absence of Community standardization or of aharmonization of laws the determination of the conditions and procedures under which protectionof designs is granted is a matter for national rules (paragraph 18 of the judgment).9. Moreover, despite the fact that the Uniform Benelux Law afforded protection to a productwhich in fact had not been commonly known in the industrial and commercial circles concernedin the Benelux territory during the 50 years prior to the filing of the design (paragraph 15 of thejudgment) the Court ruled thatIn the present state of its development Community law does not prevent the adoption of nationalprovisions of the kind contained in the Uniform Benelux Law, as described by the national court(paragraph 1 of the operative part of the judgment).10. However, Fiamma further argues that whereas there has been little harmonization in the fieldof designs, with which Keurkoop was concerned, the same cannot be said of patents. There hasbeen significant progress towards harmonization of national laws regarding patents, and atCommunity level agreement has even been reached on matters of substantive patent law, includingnovelty. Account should therefore be taken of that development.11. What is the actual position? The 1975 Luxembourg Convention for the European patent forthe common market (Community Patent Convention) has still not entered into force.12. The Strasbourg Convention on the unification of certain points of substantive law on patentsfor invention and the 1973 Munich Convention on the grant of European patents (EuropeanPatent Convention) also incorporate the principle of absolute novelty, but those conventions arenot part of the Community legal order.13. Furthermore, they did not enter into force until after the patent in question was granted toThetford (the Strasbourg Convention on 1 August 1980 and the Munich Convention, as far as theUnited Kingdom was concerned, on 7 October 1977).14. Lastly, both the Munich Convention and the Luxembourg Convention allow national patentsto continue to exist alongside European patents. Since Thetford's patent was not applied for underthe Munich Convention, it is purely national and continues to be governed by the provisions ofUnited Kingdom law.15. In sum, I therefore consider that the judgment in Keurkoop does in fact constitute a relevantprecedent, and that there is no reason for not applying in this case the Court's ruling to the effectthat the definition of the conditions for the existence of industrial and commercial property rightsis a matter for the Member States, $1 even if the resulting differences between national lawscreates obstacles to the free movement of goods. Thus in Parke Davis and Deutsche Gramophon, Dutch and German law made provision for industrial or commercial property rights which wereunknown in Italy and in France respectively. However, the Court did not call in question theMember States' freedom to grant industrial or commercial property rights within the meaning ofArticle 36, even though differences between those rights were the source of a potential barrier tothe free movement of goods.16. Those are the observations which, in my view, are called for with regard to the first sentenceof Article 36, which, in the opinion of the representatives of the United Kingdom and Thetford,is the only provision to which the Court of Appeal intended to refer.17. However, in my view the appraisal of the issue would be incomplete were we to ignore thesecond sentence of Article 36. The national court asks not only whether a patent granted underthe conditions described constitutes industrial or commercial property, but whether it constitutesindustrial or commercial property entitled to protection under Article 36 of the Treaty of Rome.18. It would not be entitled to protection if the prohibition or restriction on imports based on theexistence of a patent constituted a means of arbitrary discrimination or a disguised restriction ontrade between Member States within the meaning of the second sentence of Article 36.19. In fact, it could be that an injunction prohibiting the importation of a product, issued in viewof the existence of a patent, may constitute such discrimination or such a restriction simplybecause the patent was granted in circumstances indicative of a protectionist intention.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 granted to Thetford constitutes a genuine patent (under UnitedKingdom law that is in fact the case), but to consider whether in the light of the circumstances inwhich the patent was granted (that is to say, despite the existence of specifications going backmore than 50 years) the prohibition on the importation of products of the type in questionconstitutes arbitrary discrimination or a disguised restriction on trade.21. It is from that point of view that Fiamma's example of the grant of a patent for a perfectlyordinary football may be helpful. If a Member State were in fact to grant a patent for such anarticle in everyday use, without any doubt its motive would be to reserve a monopoly for anational manufacturer, thereby imposing a disguised restriction on trade within the meaning of thesecond sentence of Article 36.22. It was, moreover, on the basis of the second sentence of Article 36 that the Court held in theSekt and Weinbrand case,  which Fiamma cites in support of its argument, that Article 30 of theTreaty had been infringed because German law granted the protection provided for indicationsof origin to appellations which, at the time when such protection was granted, were merelygeneric in nature.23. Can the protection of a patented product against imports from another Member State despitethe relative novelty of the invention likewise constitute arbitrary discrimination or a disguisedrestriction on imports?24. Certainly, according to the established case-law of the Court the specific subject-matter of apatent consists inaccording the inventor an exclusive right of first placing the product on the market so as to allowhim to obtain the reward for his creative effort. 25. Consequently, where there is no effort to reward, a prohibition on importation can scarcelybe anything other than the expression of a discriminatory or protectionist attitude (the exampleof the football).26. The United Kingdom and the Commission argue that there is reward for an effort in this case,namely the effort put in by the author of the re-invention, who makes a forgotten inventionavailable once again to the country. This reasoning seems to me to be valid, especially since onlypatent specifications going back more than 50 years are excluded from the state of the art bysection 50 of the Patents Act 1949. In other words, publication in forms other than patentspecifications and previous use going back more than 50 years may be relied on in order to obtainthe revocation of the patent. (I would observe that the national court asked us to assume simplyas a working hypothesis that Thetford's patent is valid under United Kingdom law.) Anticipationis ignored only where the old invention exists only in the form of old documents lodged at thePatent Office. In that context it seems to me to be possible to speak of re-invention and rewardingre-invention, whether the inventor was wholly ignorant of the old specifications and made aninvention quite independently of them or whether he discovered them on the shelves of the PatentOffice and developed a modern product from them.27. Other arguments tend to show that this is not one of the cases covered by the second sentenceof Article 36. First, paragraphs (a) and (b) of section 50 of the Patents Act 1949 make nodistinction between specifications describing an invention lodged in connection with a patentapplication in the United Kingdom and those lodged in connection with a patent application inanother country: in both cases specifications which are more than 50 years old are not taken intoconsideration. (Moreover, it was not contested that specifications relating to patent applicationsmade abroad are available at the United Kingdom Patent Office).28. It is also uncontested that foreign nationals applying for a patent in the United Kingdom havethe same rights as British nationals in regard to the 50-year rule. Hence, if Fiamma had lodged itspatent application before Thetford and if its product had not been described in a publicationavailable in the United Kingdom Fiamma would have obtained a United Kingdom patent. It wouldhave been able to enforce that patent both with respect to imports (except imports of its ownproducts marketed with its consent in other Member States) and with regard to any infringers ofthat patent in the territory of the United Kingdom.29. It may be concluded, therefore, that a prohibition or restriction on imports granted with a viewto protecting the exclusive rights of the holder of a patent issued in respect of an invention thenovelty of which in the absence of the 50-year rule could have been contestedwould not constitutearbitrary discrimination or a disguised restriction on trade between Member States within themeaning of the second sentence of Article 36.30. It remains for me to say a few words about a related issued raised by the Commission inanswering the questions put by the Court: under the Patents Act 1949 it was possible to obtaina patent in the United Kingdom for an invention which was freely used or published (and couldtherefore be freely used) in another Member State at the time of the application. Like theCommission, I take the view that if such legislation still existed now a prohibition on importationgranted in order to protect a patent obtained on that basis would constitute arbitrarydiscrimination or a disguised restriction on trade between Member States. As to whether theTreaty could now be invoked in order to deprive the holder of a patent which was validly grantedin 1969 -- that is to say, before the United Kingdom became a member of the Community -- ofthe right to oppose imports, in my view that question raises very complex problems involving,inter alia, concepts such as the transitional period, legal certainty, legitimate expectations andvested rights. There can be no question of the Court's dealing with them by way, so to speak, ofan obiter dictum when the Court of Appeal has not even raised the matter.31. For all the reasons set out above I propose, therefore, that the first question should beanswered as follows:A subsisting patent which was granted in the United Kingdom under the provisions of the PatentsAct 1949 in respect of an invention which but for the provisions of section 50 of that Act wouldhave been anticipated (lacked novelty) by a specification as is described in paragraphs (a) or (b)of section 50 (1) of that Act constitutes industrial or commercial property entitled to protectionunder Article 36 of the Treaty of Rome.The second question32. In its second question the Court of Appeal asks whether, if a patent such as Thetford's isentitled to the protection of Article 36, the only relief justified under that article would, as Fiammahas argued, be an order for the payment of a reasonable royalty (or other monetary award) butnot an injunction.33. According to the established case-law of the Court: the substance of a patent right lies essentially in according the inventor an exclusive right of firstplacing the product on the market so as to allow him to obtain the reward for his creative effort.It is therefore necessary to allow the patent proprietor to prevent the importation and marketingof products manufactured under a compulsory licence in order to protect the substance of hisexclusive rights under his patent (paragraph 26 of the judgment).34. There is all the more reason to reach such a conclusion where there is not even a compulsorylicence in the country of manufacture or any form of consent on the part of the patentee to themarketing of the product concerned (see Merck v Stephar,  and Centrafarm v Sterling Drug).35. Consequently, prohibiting importation is the normal method of protecting the specificsubject-matter of the patentee's right and there is no room for considerations based on theprinciple of proportionality. Moreover, it would be paradoxical to require United Kingdom lawto tolerate the importation of products manufactured abroad without the patentee's consentwhereas if the products were manufactured in the United Kingdom it would be possible to restrainthe manufacturer's activity by means of an injunction.36. In contrast, the situation would be quite different if, all other things being equal, an infringerestablished in the country in question could only be ordered to pay royalties but could not berestrained by injunction from manufacturing. In that case an injunction issued against importersalone would constitute an arbitrary discrimination within the meaning of the second sentence ofArticle 36. This follows from the Court's judgment of 3 March 1988 in Case 434/85 Allen andHanburys Ltd v Generics (UK) Ltd, where the Court ruled thatArticles 30 and 36 of the Treaty must be interpreted as precluding the courts of a Member Statefrom issuing an injunction prohibiting the importation from another Member State of a productwhich infringes a patent endorsed 'licences of right' against an importer who has undertaken totake a licence on the terms prescribed by law where no such injunction may be issued in the samecircumstances against an infringer who manufactures the product in the national territory(paragraph 23 of the judgment; see also paragraph 22).37. For all those reasons I propose the following answer to the second question:Article 36 permits the courts of a Member State to issue an injunction prohibiting the importationand marketing of a product infringing a patent issued in that State where, in the same situation,an injunction could be issued against an infringer manufacturing the product in the nationalterritory.