A is the owner of a patent relating to a method for producing turf. This involves cutting holes of various sizes into the turf to create a specific pattern. This pattern, together with a special cutting process, ensures that the turf can be separated from the ground more easily without tearing, while at the same time improving the aeration and water absorption of the soil.
A characteristic feature of the turf produced in this way is that traces of the holes cut remain visible in the soil or turf for a few weeks immediately after laying, especially immediately after the first laying. These traces indicate that the special manufacturing process has been carried out, but they disappear over time as the turf continues to grow and compact.
B, a competitor of A, grows turf in Poland and uses exactly the same process to produce turf rolls. He supplies turf rolls to various private and commercial end customers in Austria. When the turf is rolled out and laid, the typical residual patterns of the punctures are still visible.
Patent protection for a process covers not only its implementation, but also the immediate result produced by this process. This principle is referred to as protection of the end product of the process. It is particularly important in cross-border cases: if the process is used abroad, but the resulting product is imported into a country with patent protection, this end product also remains covered by the scope of protection.
Since patent protection for processes extends not only to the implementation of the process but also to the direct end product, the turf imported into Austria is also protected. If the patent holder can prove that the turf supplied was produced using the patented process, this constitutes a patent infringement.
A major problem in enforcing patent protection for end products of processes is proving that the patented process was actually used. In many cases, it is almost impossible to trace the manufacturing process abroad, especially if it is carried out legally and the manufacturer does not disclose any information about it. This presents the patent holder with considerable difficulties in proving infringement.
If the manufacturer of the turf claims to use a different process, there is initially no way to force them to disclose their process, making it difficult to prove patent infringement. One possible way to prove this is, for example, to obtain information directly from the company premises (by legal means) or to confront the manufacturer with its own advertising statements in order to prove that the process is being used abroad.
Proving that a particular product was actually manufactured using the patented process can be very complex in individual cases. However, the law provides for a simplification in the form of a reversal of the burden of proof if the end product is new. In this context, novelty means that the product was unknown on the filing date of the patent and can be clearly traced back to the protected process by means of characteristic features.
In the present case, patent protection exists exclusively for the process of manufacturing rolled turf. However, the turf produced using this process has characteristic indentations in the turf layer, which are still visible for some time immediately after laying. These characteristics are not only a result of the process, but are also detectable on the end product itself.
If such pieces of turf with the typical indentations were unknown on the date of filing of the patent, they are considered new. This means that the end product can be clearly traced back to the patented process. No additional inventive activity is required for this; the novelty of the product alone is decisive.
In order to facilitate proof of the process, the law provides for a reversal of the burden of proof: if a new end product is brought onto the market that can only be produced using the protected process, it is initially assumed that this process was actually used.
This shifts the burden of proof to the manufacturer or importer of the product. If they are unable to prove that a different – unprotected – process was used, they are liable for patent infringement. For the defendant, this may mean that they have to disclose their own manufacturing process, even if it is practiced abroad.
The reversal of the burden of proof creates a particularly delicate situation for the Polish manufacturer. It is generally assumed that the turf imported into Austria was produced using the protected process. In order to refute this assumption, the manufacturer must take action itself.
One option is to disclose its own manufacturing process. This would allow them to prove that they use an alternative, unprotected process. However, this step comes at a high price: the manufacturer would have to disclose confidential production processes and risk revealing valuable trade and business secrets.
If, on the other hand, they decide not to disclose their process, the legal presumption remains. In this case, they will be treated as if they had used the patented process. As a result, the patent holder can successfully assert injunctive relief and prohibit the import of the turf into Austria.
The manufacturer thus finds itself in a classic dilemma: either it protects its secrets and risks patent infringement with a market ban, or it defends itself by disclosure and may lose its protected know-how.
The protection of a process end product requires that the result of the patented process be a physical object. Purely intangible results, such as mere measurements, calculations, or data, cannot be considered a protected end product. Patent protection therefore only covers products that enter into circulation as physical objects.
This problem does not arise with turf: turf is an actually existing, physical product that can be harvested, transported, offered for sale, and laid.
