HUNGARY Law and Practice Contributed by: Árpád Pethő, Levente Pethő, Eszter Szakács and József Tálas, Danubia Patent & Law Office
annual fee, and is to be paid within a year of the lapse occurring. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Owners of IP rights cannot themselves initiate any post-grant proceeding to amend the scope of the issued IP right, but in the course of an invalidity action initiated by a third party they have the right to limit the scope of their right where patents or utility models are concerned.
A pending non-infringement action causes the stay of the corresponding infringement action, but does not stay the preliminary injunction pro- ceeding. If non-infringement is declared with a binding effect, there can be no infringement action against the same product or method. A revocation action in front of the HIPO against a patent can be commenced by anyone. If there are several revocation requests against the same patent, the proceedings are often joined. A pending revocation action causes the stay of the corresponding infringement action but does not stay a corresponding preliminary injunction pro- ceeding. A first-instance decision by the HIPO declaring the invalidity of the patent causes the lifting of a preliminary injunction in place and thus effectively excludes ordering a preliminary injunction. It is possible for the parties to make a settlement in the revocation action; however, the HIPO still has the authority to continue the revo- cation ex officio, though this seems to be a rath- er theoretical possibility as there are no cases where the HIPO would have exercised this right (as far as is known). The defendant of a patent infringement lawsuit may also choose to chal- lenge the validity of the patent-in-suit directly as a counterclaim. Importantly, as long as there is no revocation proceeding at the HIPO, as an alternative, the revocation request can be filed as a direct counterclaim in the infringement court proceeding. A compulsory licence may be obtained in the event of lack of genuine use of the patent or dependency of patents, as well as under Regula- tion (EC) No 816/2006 or for addressing a public health emergency. Compulsory licences on the grounds of either dependency or lack of use are adjudicated exclusively by the Metropolitan Tribunal. A suc-
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
In the event of infringement, the owner of a tech- nical IP right may consider civil or criminal routes of enforcement, or customs measures. Civil law enforcement includes initiating a preliminary injunction proceeding and/or a main lawsuit related to patent or utility model infringement. Wilful infringement of IP rights is also considered a criminal offence and may incur penalties. Cus- toms measures are available in the framework of Regulation (EU) No 608/2013. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Importantly, it is not possible to file a protective letter with a court in Hungary. Third parties who find themselves in potential conflict with a patent or other technical IP rights (eg, a utility model) may have the following options. A non-infringement action before the HIPO may be started against a patent by anyone who is concerned that an infringement action will be initiated against them by the patentee. In the request, the product or method of the applicant has to be compared to the patent in question.
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