CJEU about the concept of “appropriate compensation” in the Enforcement Directive after unjustified interim measures

Concept of “appropriate compensation” must be given an independent and uniform interpretation: when the terms of a provision of EU law  makes no express reference to the law of the Member States its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union. Meaning of the concept of “appropriate”: justified in the light of the specific circumstances of the case. While the exercise of their authority to grant such compensation is strictly subject to the preconditions under which either the provisional measures must have been repealed or ceased to be applicable because of any action or omission on the part of the applicant, or it must subsequently be found that there is no infringement or threat of infringement of an intellectual property right, the fact that those conditions are satisfied in a specific case does not mean that the competent national courts will automatically and in any event be obliged to order the applicant to provide compensation. Article 9(7) of the Enforcement Directive must be interpreted as not precluding national legislation which provides that a party – even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid - shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case.

LITIGATION

Richter and Exeltis requested the Hungarian court that Bayer be ordered to provide compensation for the losses they claim to have suffered as a result of the provisional measures because of an alleged infringement of a subsequently declared invalid patent. The Hungarian court requested the European Court of Justice for a preliminary ruling concerning the interpretation of Article 9(7) of the Enforcement Directive, which provides that where provisional measures are revoked or where they lapse due to any act or omission of the claimant - or if it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right - the judicial authorities shall have the authority to order the claimant to provide appropriate compensation to the defendant for the losses caused by such measures.

The CJEU rules that the concept of “appropriate compensation” must be given a an independent  and uniform interpretation. Because when the terms of a provision of EU law makes no express reference to the law of the Member States its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union. It is for those national courts to decide whether it is appropriate to order the applicant to pay to the defendant compensation which must be ‘appropriate’, that is to say, justified in the light of those circumstances.

While the exercise of their authority to grant such compensation is strictly subject to the preconditions under which either the provisional measures must have been repealed or ceased to be applicable because of any action or omission on the part of the applicant, or it must subsequently be found that there is no infringement or threat of infringement of an intellectual property right, the fact that those conditions are satisfied in a specific case does not mean that the competent national courts will automatically and in any event be obliged to order the applicant to provide compensation for any losses suffered by the defendant as a result of those measures.

According to the CJEU the concept of "appropriate compensation" referred to in that provision, must be interpreted as not precluding national legislation which provides that a party shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss and which, in circumstances such as those in the main proceedings, results in the court not making an order for provisional measures against the applicant obliging him to provide compensation for losses caused by those measures even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case, including the conduct of the parties, in order, inter alia, to determine that the applicant has not abused those measures.

IPPT20190912, CJEU, Bayer v Richter Gedeon

C-688/17 - ECLI:EU:C:2019:722