HUNGARY Law and Practice Contributed by: Árpád Pethő, Levente Pethő, Eszter Szakács and József Tálas, Danubia Patent & Law Office
6. Remedies 6.1 Remedies for the Patentee
Parties may also settle during the HIPO phase of a revocation action. However, the HIPO is enti- tled to continue the proceeding ex officio. As far as is known, the HIPO has never exercised this right, although logically the settlement of the parties should not determine the validity of the IP rights. 5.4 Other Court Proceedings The Hungarian system is basically bifurcated, which means that validity and infringement pro- ceedings are decided in separate proceedings and in different forums: patent infringement pro- ceedings fall within the exclusive competence of the Metropolitan Tribunal at first instance, while revocation actions are initiated before the HIPO, the decision of which can be appealed before the Metropolitan Tribunal. If parallel revocation proceedings are pending, according to the established court practice of the Metropolitan Tribunal, the infringement pro- ceedings are always stayed until the final conclu- sion of the revocation proceedings. The excep- tion is that, as of 1 January 2022, the defendant in an infringement lawsuit may decide to file a revocation action as a direct counterclaim in the infringement lawsuit, so that the court decides on both issues in a unified proceeding. Impor- tantly, the ongoing revocation action does not stay the preliminary injunction, and does not pre- vent the court from making a decision and – if justified – granting a preliminary injunction. According to recent court practice, the revoca- tion action against the Hungarian-validated part of a European patent may be stayed until the resolution of the EPO opposition proceeding if that is still pending.
If the court finds the patent to be infringed, it shall order a final injunction (eg, declaration of infringement, cease-and-desist obligations). Importantly, the court may only order such rem- edies as were contained in the statement of claims of the patentee; even in that case, the court may not order this in a form that was not specifically requested by the plaintiff. Following the implementation of Directive (EU) 2016/943 (the “Trade Secret Directive”), unlike in the case of registered technical IP rights, in trade secret litigation the court has a degree of discretion regarding the remedies ordered, subject to pro- portionality. As to monetary remedies, the patentee may request the return of any enrichment (profit or an unpaid licence fee) gained through the infringe- ment of the patent, or may demand compensa- tion for damages in accordance with the provi- sions of civil liability. The main difference between the return of enrichment and damage compensation is that the first is objective and the second depends on the infringer’s liability. The plaintiff should, how- ever, prove the amount of enrichment, and that it resulted directly from infringement. Damages, on the other hand, depend on the liability of the defendant. If the patentee failed to submit the Hungarian translation of a European patent as required by law, and the infringer’s home address or regis- tered office is located in Hungary, the infringe- ment may not be imputed to that person unless the patentee is able to verify that the infringer should have understood the original text of the
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