E-News No.47

E-News No.47

The Finnish Market Court Considered the Meaning of  “Identical” under Article 34 of the TRIPS Agreement

by Juhani Sinkkonen (Roschier, Attorneys Ltd. – Finland)

Teva Pharmaceuticals USA, INC., v. Sandoz, Inc., 574 U.S. ___ (2015)

Fédération Cynologique Internationale, C 561/11, EU:C:2013:91

Nadia Plesner Joensen v. Louis Vuitton Malletier SA, ECLI:NL:RBSGR:2011:BQ3525 (in Dutch)

Neste Renewable Fuels Oy and Neste Oyj v. UPM-Kymmene Oyj, MAO:866/15 (in Finnish)

The Finnish Market Court applied the Finnish Patents Act (FPA) in light of Article 34 of the TRIPS Agreement, and found reverse burden of proof applicable even if a product obtained by an allegedly infringing process is not fully identical to a product obtained by the patented process.

Pursuant to Section 57a FPA: “If a patent has been granted for a process for obtaining a new product, any identical product produced without the consent of the proprietor of the patent shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process.” This implements in Finland the requirement of reverse burden of proof provided for by Article 34(1)(a) of the TRIPS Agreement.

In Neste Renewable Fuels Oy and Neste Oyj v. UPM-Kymmene Oyj the Market Court found the product obtained by the patented process new. After that the Court contemplated whether the product obtained by the allegedly infringing process was identical with the new product obtained by the patented process.

The defendant argued that the product obtained by its process was not identical because different starting materials and a different process resulted in a different product. The defendant stated that its product contained a mixture of a wide range of hydrocarbons (C1 to C21) as well as other side products and water, and had been registered as a new product by the European Chemicals Agency. Furthermore, the defendant claimed that the patented process gave anhydrous middle distillate the main component of which was C18 n-paraffin.

The Court stated that, in light of the TRIPS Agreement, the product obtained by the allegedly infringing process does not have to be fully identical with the new product obtained by the patented process in order to be considered identical within the meaning of Section 57a FPA. Instead, the refinery products in question were to be deemed identical if they were identical as to their essential composition, purpose of use and qualities.

The Court found that the primarily desired end product of both processes was hydrogenated and isomerized middle distillate. Side products allegedly formed in the defendant’s process as a result of feeds and reaction conditions were considered irrelevant to the assessment of the desired end products’ identity.

The parties presented arguments also about the density of the end products. The Court found that, on the basis of the evidence, density of the product obtained by the patented process was dependent on reaction conditions and feed. Furthermore, examples set out in the description of the patent-in-suit did not indicate that the product obtained by the patented process could not have the same density as the defendant’s product. Interestingly, the Court also found that the REACH registration of the defendant’s commercial product did not have any significance when comparing the desired end products.

On the above basis, the Court concluded that the end product of the defendant’s process was used for the same purpose as the product obtained by the patented process, i.e. as middle distillate. Based on the evidence, both end products could be used as a diesel fuel as such and as blends in all ratios. Furthermore, the facts invoked by the defendant did not mean that the end products would have been materially different with regard to their chemical composition or qualities required by their purpose of use. Consequently, the Court found the defendant’s product identical with the product obtained by the patented process and applied the reverse burden of proof provided for by Section 57a FPA and Article 34(1)(a) TRIPS.