Tribunal of Second Instance reverse a ruling and finds patent infringed awarding monetary damages
This is a very relevant local ruling given the very small number of final decisions issued by the competent Court of Appeals over patent infringement, which has not reached even a case per year so far.
According to the text of the decision, the key fact of the case to decide was whether patent No. 255,628 (the â628) protecting the active principle FIPRONIL, which has been broadly used as an insecticide since the middle of the 90Â´s, was infringed or not.
Patent 628 was originally filed in Argentina under former Argentine Patent Law No. 111 by Rhone Poulenc Agroculture Limited (that later become Bayer Cropscience S.A.), which in turn granted an exclusive license to Merial Ltd., the plaintiff in this case against Labyes S.A. and other defendants.
The claim of Patent 628 on which Merial Ltd based this infringement action read as follows a derivative of N-Fenilpirazol excluding its use for the treatment of the bodies of humans and animals carried out by a physician or veterinary as a therapy; a process to prepare it; a composition that encompass it; a method for the repression of plagues of arthropods, nematodes of plants, earthworm and protozoon as well as compounds useful as intermediaries (this is our own translation).
Therefore, the tribunal had to determine whether the infringing product was among the subject matter excluded from the claims or not, which had been made given that treatments for humans and animals were unpatentable under Law 111.
According to the plaintiff, the infringing product was not a veterinary product so it should not be excluded from the reaching of the claims because it was used to clean the skin of animals from insects and acarus such as flea and ticks, which, in his view, was the right interpretation supported by the fact that veterinary and insecticides were included in different classes of the pertinent classification.
In the first instance, the judge agreed with the defendant but in second instance, surprisingly, the tribunal overturned that decision and awarded monetary damages applying the standards developed by local case law. Under these standards, the amount of damages were calculated as the 30% of the commercial value of the infringing products (without using the this term, the tribunals are applying the method of reasonably royalty) or the 80% of the revenues received by the infringer (this method would also be the equivalent to lost of profits).
There are many other consequences deriving from this case related to local patent law, which are not included herein given space limit.
Decision of the Court of Appeals in Civil and Commercial Matters, Chamber III, date November 12, 2009 in Merial LTD v. Labyes SA y otro s/cese de uso de patentes, daÃ±os y perjuicios, case no. 6631/03