Introduction

Hungary has been a member of the European Patent Convention (EPC) since 2003 and of the European Union (EU) since 2004. Consequently, the legal background regulating the prosecution and enforcement of IP rights is substantially harmonized with that of the EU, and all European-wide protection systems elaborated for obtaining IP rights (like European patents, Community trademarks and Community designs) can also be used for obtaining IP rights in Hungary besides the so called national route.

As a consequence of Hungary being a member of the EPC, Hungarian patent attorneys may also qualify for being European patent attorneys being thereby fully authorized for representation work before the EPO and OHIM, i.e. representing clients in procedures for obtaining European patents, Community trademarks (CTMs) and Community designs (RCDs). Furthermore, importantly enough, Hungarian patent attorneys are also fully authorized for representing clients in IP matters before all Hungarian courts, also including the Supreme Court.

Patent

Obtaining and challenging patents on the basis of the EPC European patents (EP patents) may also be obtained with an effect extending to Hungary after national validation. Once the EPO acknowledges the filing date of a European patent application (EP patent application), it shall be considered as having the same effect in Hungary as a national patent application – retaining the priority date of the EP patent application.

Provisional patent protection conferred by the publication of an EP patent application becomes effective in Hungary once the Hungarian Intellectual Property Office (HIPO) has published concerning information in its official journal. Such publication takes place upon the request of the applicant who has submitted to the HIPO the Hungarian translation of the claims of the EP patent application.

In order to obtain final patent protection in Hungary for an EP patent (i.e. to validate the granted EP patent in Hungary), the holder of the EP patent shall submit to the HIPO the Hungarian translation of the claims of the granted EP patent and the English or Hungarian translation of the description (if the language of the EPO proceeding was German or French) within 3 months from the publication of the granting of the EP patent in the European patent Bulletin.

If this requirement is fulfilled, the granted EP patent has the same effect in Hungary as a national patent.

Translation issues must be considered carefully when an EP patent is validated in Hungary. Should the Hungarian translation of the claims define a narrower scope than in the original EPO proceeding language, the narrower scope applies. It is however, always possible for the patentee to request the correction of the translation but the narrow translation may give rise to further user rights before it gets corrected.

Although it is not required to submit the Hungarian translation of the description of an EP patent in order to have an effect in Hungary, in inter partes legal disputes, such as proceedings for the declaration of non-infringement and infringement lawsuits, the patentee may be obliged to submit the Hungarian translation of the patent description. If a Hungarian legal entity or natural person is sued for damages arising from the infringement of an EP patent, it is a precondition of their liability that the Hungarian language translation of the description should be available. Thus it is advisable to holders of EP patents to submit the Hungarian translation of the description at the moment they become aware of possible patent infringement in Hungary, even if during the validation only the English language description had been submitted. The subsequent filing of the Hungarian translation with the HIPO is possible any time after validation.

EP patents validated in Hungary can be challenged by third parties by filing an opposition with the EPO (within 9 months from the granting date) or via filing a national nullity request. The effect of the latter – if the patent is annulled – extends only to the Hungarian counterpart of the EP patent, while a successful opposition terminates patent protection in all countries where the patent is validated, including Hungary.

It may occur that a granted EP patent is challenged at the same time by opposition action before the EPO and by a nullity action before the Hungarian Intellectual Property. In such a case, the HIPO may suspend the Hungarian nullity proceeding and wait for the outcome of the EPO revocation proceeding.

Obtaining, challenging and enforcing patents via the national route National patent applications and granted patents have effect only in the territory of Hungary. When an EP patent is validated in Hungary or a foreign patent application is brought to Hungary via the PCT/HU national route, they have the same effect as national patent applications and patents in terms of the scope of protection.

National patent applications may be filed with the HIPO. Foreign nationals should be represented by a Hungarian patent attorney or attorney-at-law. The claim and the description shall be filed in Hungarian, however, other documents (such as priority documents) may be filed in foreign language as well, English, German and French being the usually accepted languages, unless the HIPO requires a translation.

The HIPO automatically conducts formal examination of the application and also a novelty search, the report on which is sent to the applicant. Substantive examination is only carried out upon the specific request of the applicant, but should the applicant fail to request substantive examination within 6 months from the availability of the search report, the application shall be considered withdrawn.

18 months after the earliest date of priority, the HIPO publishes the patent application in the Gazette of Patents and Trademarks. This publication confers provisional patent protection for the application, based on which the patentee is already entitled to enforce the patent; however, any infringement lawsuit would be suspended until the grant of the patent. Also, from this date onwards the files of the patent application at the HIPO become public, and may be inspected by anyone.

During the granting proceeding, the applicant may amend the patent description, claims and drawings, however, the subject matter shall not extend beyond the content of the application at the date of filing. The applicant may file a new application claiming internal priority within twelve months from the date of filing.

Time limits given by the HIPO are usually shorter than those given by the EPO, but they are extendable, subject to the payment of an administrative fee.

In the last step before the grant of the patent, the HIPO sends the applicant the text of the description, the claims and drawings forming the basis of the grant, to which the applicant may comment before the final text is confirmed. After this, if the patent application meets all the requirements of the examination, the HIPO grants the patent and issues the patent certificate to the patentee. The term of patent protection is 20 years from the filing date and can be actually enforced after the grant of the patent.

Once the patent has been granted, it may only be limited by third parties during a revocation proceeding. The annual fees shall be paid in advance on the anniversaries of the filing date. However, annual fees due before publication of the patent application following the formal examination, shall only be paid after the publication. Importantly, the HIPO does not give notice in advance when the annual fee becomes due, so it is important for patent applicants and holders to have their representative take care of the payment of the annual fee in due time.

With certain time limitations, it is possible to convert the patent application into a utility model application and vice versa.

Supplementary protection certificates ensuring up to 5 years of additional protection are available for patents protecting human or veterinary medicines or plant protection products in line with the respective EU laws, compensating for the time lapsed between the filing of a patent application and the grant of the first marketing authorization in the Community for a given product protected by the patent in question.

Granted Hungarian patents can be challenged by filing a revocation request with the HIPO. Revocation proceeding can be initiated by anyone without time limitation. The revocation action shall be aimed at the establishment that the subject matter of the patent or the patent application respectively, at the time when the patent application has been permitted, did not satisfy the patentability requirements. The evidence proving the absence of patentability shall be filed by the Claimant.

The HIPO forwards the revocation request to the patentee who is given an extendable deadline to respond and there is usually a further exchange of writs between the parties before the Office sets a date for an oral hearing. If the patent is subject to a patent infringement lawsuit or preliminary injunction proceeding, either party may request an accelerated revocation proceeding, where deadlines are shorter and possibilities of deadline extension are limited.

Revocation proceedings also provide a possibility for the patentee to restrict the scope of the patent voluntarily.

The decisions of the HIPO can be appealed at the Metropolitan Court. The final judicial Forum is the Metropolitan Appeal Court and, in exceptional cases, the Curia (Supreme Court).

Besides the revocation proceeding, it possible for third parties to submit observations during the granting proceeding which are considered by the Office when deciding on the grant of the patent. However, those filing observations have no right to appeal against the granting of the patent, they should file a revocation proceeding once the patent is granted.

The Hungarian patent system also provides for a proceeding for the declaration of non-infringement of a patent. Such proceedings may be requested by anyone who is concerned about being sued based on a patent and only before the filing of a patent infringement lawsuit by the patentee; however, the Hungarian patent Office does not substantially investigate whether such concern is justified. Once the absence of infringement is established with respect to the relation of a certain patent and a given product/ process, it is not possible for the patentee to file an infringement lawsuit based on the same patent against the same product/process.

Both national and EP patents can be enforced in Hungary after the patent application is published in the Gazette of the patents and Trademarks issued by the HIPO. Infringement lawsuits initiated before the grant of the patent will be suspended and no preliminary injunction is available before the granting of final patent protection.

A patent can be enforced by submitting a patent infringement lawsuit or a request for preliminary injunction with the Metropolitan Court. Such requests are decided by a panel of three judges out of which two are technical judges and at least one of them has a technical degree in the given field of technology.

Infringement lawsuits can be initiated by the patentee and/or by the licensee provided that they are registered as such in the patent register of the HIPO.

If the defendant challenges the validity of the patent in suit by filing a revocation action, the revocation action will be separately decided by the Hungarian Patent Office and its appeal fora, while the infringement lawsuit at the court will be suspended. A pending revocation action does not prevent the patentee, however, from asking for a preliminary injunction, if its requirements are met.

In patent infringement proceedings the scope of the patent shall be determined by the claims interpreted in line with the description and the drawings. Infringement is established when all features of the claim are realized in the given product or process. The doctrine of equivalence also applies, i.e. equivalent features may still be considered as infringing. Party experts and judicial experts are regularly involved in patent infringement lawsuits.

Economic entities must be represented by a patent attorney or an attorney at law in infringement proceedings. Legal costs shall be compensated by the losing party, the court generally requires invoices of the attorney to accept the legal costs demanded by the winning party.

The decision of the Metropolitan Court can be appealed at the Metropolitan Appeal Court and in exceptional cases (regarding questions of law) at the Curia.

Accelerating the prosecution of foreign (e.g. US and JP) applications on the basis of a HU counterpart – the Patent Prosecution Highway (PPH) When someone files a Hungarian patent application it may not only serve the purpose of obtaining a Hungarian national patent but it can also be used by the applicant to establish a foreign or international priority. If the Hungarian priority is claimed in foreign countries, there respective simplified search and examination can be enjoyed by the applicant if the PPH route is used. This concerns Austria, Finland, Japan and the United States.

In these countries, if the Hungarian patent is granted or at least allowance is indicated, the PPH treatment can be claimed, and if in the PPH country there is at least one claim that corresponds to the granted or allowed Hungarian claim, the national examination is not repeated but the national patent Office may accept the examination and search made in Hungary. By this possibility the prosecution time of the foreign applications will get shorter and the chances of acceptance will be higher. The specific values can be experienced especially in the case of obtaining a patent in Japan or in the US based on an allowed Hungarian patent application.

If a Hungarian national application intends to utilize PPH, the HIPO (HIPO) provides a possibility for expedited proceeding. Apart from these advantages, a cost item emerges, because both the Hungarian claim and the decision have to be translated into the language of the Office where PPH route is requested.

Utility Model

In Hungary, utility model protection can be sought for the construction, the structure or arrangement of the components of a product, if it is novel, can be used in the industry and involves an inventive step. No methods, material compositions or computer programs can be protected by utility models.

A utility model application can be filed as a national filing (with claiming Convention priority), as the national phase of PCT application or can be derived from pending patent applications, even from pending European patent applications.

In a utility model application only one invention may be claimed. During the registration procedure, only formal requirements are examined, there is no substantive examination with respect to novelty and inventive step. The examination process starts right after filing and usually takes less than one year. The utility model is published upon granting. The period of protection is ten years from the filing date.

A utility model application can be converted into a patent application, which is a very useful tool to extend the term of protection up to 20 years, provided that the invention protected by utility model meets the requirements of patenting. After such a conversion into patent, the invention will be subject to full substantive examination.

Since the required level of inventiveness is lower for utility models than for patents, a utility model protection can be more easily defended in an invalidation procedure, which is treated, at first instance, by the HIPO upon request of a third party.

The rights conferred by utility model protection are practically identical with those offered by patent protection. Utility model infringement proceedings are treated by the Metropolitan Court at first instance, and the Metropolitan Appeal Court at second instance. Declaration of non-infringement can also be requested before the HIPO until an infringement action is initiated against the petitioner.

Trademark

Obtaining, challenging and enforcing trademarks via national and international routes Trademark protection in Hungary can be obtained in one of three ways:

1. National filing.

2. Using the Madrid System.

3. Obtaining community trademark protection.

Ways 1 and 2 are similar. When filing the trademark and the list of goods and services, the name and address of the applicant should also be given.

Three classes according to the Nice classification can be claimed with the single filing fee. Thereafter separate fees should be paid after all class. The list should preferable go beyond the class headings, however, the Office accepts class headings, but this might cause problems at a later stage. A power of attorney can be filed in 2 months, no legalization is needed.

The Office (HIPO) carries out an examination on absolute grounds only, and if no objection is found, the application is published for oppositions. If no opposition is filed within three months from the publication, the trademark is registered.

An opponent can be the owner or certified user of earlier rights. In opposition proceedings, the use of the older trademark should be proven. Up to the end of the opposition period, anyone can file observations against a trademark, but the observant will be no party to the proceeding. The observations can raise any issue concerning non-compliance with an absolute requirement or if the observant can prove that the application was filed in bad faith.

Latest in 5 years from the registration, use must be started otherwise anyone can file a petition for cancellation because of non-use. If use is established only in connection with a portion of the list of goods and services, the protection might be limited to the used part. If the owner does not use through 5 years and no one attacks the trademark, use can be resumed any time.

A trademark owner has strong rights against illegal uses of the trademark or a designation which is similar to the trademark so that the pertinent user can get confused by the illegal designation or might associate the designation with the registered trademark. Enforcement includes the right to sue for trademark infringement and also to claim preliminary injunction. This should happen in 2 months after the trademark owner has got information on the illegal use.

If a trademark owner has tolerated through more than 5 years the existence and use of a later similar trademark, then he loses the right to protest against such use.

The granting procedure and the opposition procedure are held before the HIPO, and any party can file a request for reconsideration to the Metropolitan Court which is the central competent court in Hungary in IP matters. Against the decisions of the Metropolitan Court appeals can be filed to the Metropolitan Appeal Court, and the decision of the appeal court is final.

Trademark infringement proceedings and requests for preliminary injunction should be lodged at the Metropolitan Court.

The international trademark proceeding differs from the national route in that the proceeding starts if the HIPO finds a ground for objection and then issues a preliminary rejection decision, then the applicant must entrust a local patent attorney or lawyer to eliminate such objections. The same happens if an opposition is filed against the International trademark application.

Concerning Community trademarks: the CTM protection is valid in Hungary and enforcement takes place in similar ways to that of the national trademarks.

In Hungary the most important way to take thorough and effective legal steps against trademark infringements, similarly to the general practice of other EU countries, is launching a lawsuit for trademark infringement. The lawsuit provides the best solution for matters related to trademark infringement, including those special cases in which the trademark infringement takes place on websites and in or as a part of domain names as well. However, reaching the final decisions often takes 2-3 years.

Within the framework of litigation several civil law claims are available for the trademark owner to enforce its rights; it can demand (a) a court ruling establishing that trademark infringement has occurred; (b) cessation of the trademark infringement or threat of infringement and inhibition of the infringer from further infringement; (c) that the infringer provide data in connection with the details of the infringement (e.g. parties taking part in the manufacture of and trade in goods etc.); (d) that the infringer makes public amends for his action, by declaration or in some other appropriate manner; (e) that the infringer gives restitution of the economic gains achieved through infringement of the trademark; (f) the seizure of those assets and materials used in the infringement, as well as of the goods infringing or their packaging, or demand that they are delivered to a particular person, recalled and withdrawn from commercial circulation, or destroyed. In addition, the trademark owner may demand compensation for damages in accordance with the provisions of civil liability.

There is a single competent court in trademark matters: the Metropolitan Court, and against the decisions of that court appeals can be lodged at the Metropolitan Appeal Court.

The most effective and quickest way to prevent any imminent threat of damage, to preserve the status quo, or to protect the trademark owner’s rights is to file a request for preliminary injunction with the court either simultaneously with the initiation of lawsuit for trademark infringement or before. The measures ordered by the court on the basis of the request for the preliminary injunction remain in force until taking the court’s final decision. In addition, there is a special type of the preliminary injunction, the so-called separate preliminary injunction, which means that the request for preliminary injunction is filed with the court prior to initiating lawsuit for trademark infringement, and filing a special request for ex-parte proceeding is also possible when the court takes action without hearing the infringing party. In such cases the infringement of the trademark must be apparent and the interest to have a fast decision must be motivated in a convincing way.

In domain name-related trademark infringement cases the following rapid, cost effective and therefore very popular solutions are also available: Notice and Takedown Procedure is one of the quickest remedy against the infringing contents of websites. In this procedure the service provider of the website comprising infringing contents could be liable for any unlawful information he has made available on the webpage. Any trademark owner whose rights are infringed by any information to which a service provider has given access is entitled to request for removing the information in question.

On the basis of this request, the service provider shall take the measures necessary for the removal of the information indicated in the notification, or for disabling access to it within twelve hours from the receipt of the trademark owner’s notification. Failure to lodge any objection against the removal of the information contested, the service provider shall keep access to the illegal information disabled or shall keep it removed. In the event of objections, the service provider shall proceed without delay to restore access to the information in question, and shall simultaneously send a copy of the objection to the trademark owner. In this case the owner can initiate a lawsuit with filing a request for preliminary injunction on the basis of which the service provider shall disable of access to the website again.

Upon registration of infringing .hu domain names, there is also a legal possibility to oppose the registered infringing domain names out of court: within the framework of the Alternative Dispute Resolution Procedure (ADR Procedure) the transfer or the revocation of a particular domain name from a registrant may be initiated by the trademark owner. The Consulting Board drafts their opinion on the basis of the two parties’ (the trademark owner as complainant and the registrant as respondent) written statement within three months, even though this decision could not be considered final and could be subject to appeal before the court.

Design In Hungary, design protection can be obtained through both national and European way.

The protection of a registered (or unregistered) Community design is also effective in the territory of Hungary, and is independent of the national protection for the same design. A registered Community design confers substantially the same rights to the right holder as a registered national design.

A national design application is to be filed with the HIPO. In one design application up to 50 designs may be filed, provided that they belong to the same class of the International Classification of Locarno.

The examination of a design application consists of a formal part and a substantive part. Upon granting, the design is officially published and it is not possible to defer publication of the design.

The term of protection is 5 years as from the application date, which can be extended up to 25 years. Working of the design is not obligatory.

Nullification (declaration of invalidity) of a design can be claimed by the HIPO upon request by a third party if registration violates filing provisions. Negative statement (declaration of non-infringement) in relation of a particular design can be requested also before the HIPO until a design infringement lawsuit is launched against the requester.

Design infringement proceedings are treated by the Metropolitan Court acting as a first instance national and Community design court and its decisions can be appealed at the Metropolitan Appeal Court.

Copyright The Hungarian copyright law is fully harmonized with the relevant directives of the European Union and is perfectly in line with the international copyrights treaties like the Bern Convention, the TRIPS Agreement, the WIPO WCT and WPPT treaties and the Universal Copyright Convention.

Copyright protection automatically exists with respect to original, individual artistic, scientific (e.g. software) and literary works; it derives from the creation of the work itself, without having to meet any formal requirements. Copyrights are protected through the whole life of the author and for further 70 years after the author’s death. There is no requirement to have the copyright protection indicated on the work and in order to gain copyright protection a registration or a deposit is not needed. However, it is possible to deposit the work at the Hungarian Intellectual Property Office (HIPO) which will cause a rebuttable legal presumption that the person who made the deposit shall be considered the author or the owner of copyrights or connected rights, and will be entitled to introduce rights enforcement action in his or her own name.

Provided by Danubia Patent & Law Office