One-two-three

Still warm from the press and courtesy of Matthieu Dhenne, come tidings of the fall of another important pharma IP, namely the Atripla SPC (Supplementary Protection Certificate).

Atripla is marketed as a pink tablet with “123” impressed on one side. It contains a combination of three anti-HIV drugs, namely efavirenz, emtricitabine and tenofovir.

The U.S. pharmaceutical giant Merck Sharp & Dohme Corp. (MSD) owns European patent No. EP 0582455, entitled “benzoxazinones as inhibitors of HIV reverse transcriptase“. The patent was filed on August 3, 1993.

Two SCPs were filed and granted in France based on the EP’455 patent, and on two successive marketing authorizations (MAs):

  • The first one, FR01C0012, was filed on April 10, 2001 and granted on May 18, 2001. It protected the active efavirenz per se. This SPC expired on November 20, 2013.
  • The second one, FR08C0021, was filed on May 27, 2008 and granted on November 20, 2009. It protects the triple therapy combination of efavirenz, emtricitabine and tenofovir (marketed as Atripla) and is set to expire on August 2, 2018.

On September 20, 2016, Mylan initiated legal proceedings against MSD in France, claiming that the FR’021 SPC is invalid. The Paris Tribunal de grande instance (TGI) issued its judgment on November 30, 2017.

The judgment is interesting both regarding the admissibility of the action and  the merits.

As far as admissibility is concerned, the nullity defendant claimed that Mylan was time-barred from requesting the nullity of the SPC.

As a first line of response, Mylan argued that the general statute of limitations in our Code civil, which provides a five-year limitation period for “personal or movable actions“, is not applicable to actions for nullity of an IP right. Unsurprisingly, the court disagreed, in keeping with recent case law at the first instance and appeal levels. The TGI made in particular reference to a trademark ruling by the Cour de cassation dated June 8, 2017. For the court, applying this ruling by analogy leads to the conclusion that an action for revocation of an SPC is indeed subject to the limitation period under ordinary law.

That being said, the real interesting point is the determination of the starting point for the five-year limitation period. Although there has been a lot of discussion (including on this blog) concerning the starting period for patent nullity cases, there has been no clear guidance for SPC nullity actions, as far as I am aware of.

MSD’s case was that the starting point for the limitation period was the publication of the SPC application. The court disagreed and set the following principles.

The starting point for the limitation period must be set to the day, determined in concreto, when Mylan knew or should have known, because it intended to market a generic version of the drug which received an MA on December 13 [2007], for the combination of [the] three actives, which is protected by the SPC, which represents an impediment for its business.

So, we all get the idea there – although a couple of words may be missing, which happens from time to time when your sentences are too long, and this is probably why my blog software keeps blaming me for using more than the recommended threshold of 25% of sentences containing more than 20 words.

The general principle of an in concreto assessment is in keeping with the TGI’s previous decisions in patent revocation cases. The court went on:

[…] Only the SPC matters as an impediment, and not the patent. 

One should not refer to the date of grant of the patent, since the validity of the patent is not challenged by Mylan, which acknowledges that the efavirenz active compound is the subject-matter of the invention protected by the EP’455 patent and then by the [FR’012] SPC which expired on November 20, 2013. 

Only the validity of the [FR’021] SPC […] is challenged […]. 

Thus the publication of the grant of the patent cannot be set as the starting point for the limitation period, as it would in fact require an unrealistic watch from stakeholders and is unrelated to the development of the project which gives standing to sue. 

Mylan’s standing does not derive from the publication of the title, be it the patent or the SPC, but from its concrete intent to market the same drug. 

In this case, they have to check that this intent to market the product does not infringe any IP, and if this is the case, to seek its revocation before launching. 

Watching patent or SPC registers cannot be required from stakeholders before they intend to develop a competing product. 

[…] In the present case, the first MA for Atripla […] was granted on December 13, 2007. In view of article R. 5121-28 of the Code de la santé publique, the generic company can only apply for an MA starting from the eighth year after the grant of the MA for the original drug, and cannot be granted one before ten years. 

Therefore, Mylan could not apply for an MA before December 13, 2015, and could not obtain it before December 13, 2017. As a consequence, the date at which Mylan’s standing can be taken into account is December 13, 2015, which is the date starting from which it could apply for an MA. Thus, Mylan is not time-barred as it had until December 13, 2020 to start legal action.

What is somewhat paradoxical is that the TGI calls for an in concreto appraisal but then defines what could possibly be a general rule for SPC cases, namely that the starting point for the limitation period is the date at which third parties may start applying for their own MAs.

We will need to wait for further cases to know for sure whether this is indeed a general rule or not.

Turning to the merits of the case, the discussion and the ultimate reasoning of the court are extremely similar to what can be found in the recent decision on Truvada, also reported on this blog a few weeks ago. 

Truvada is another anti-HIV drug based on the combination of tenofovir and emtricitabine. The SPC at stake in today’s decision relates to the combination of the same compounds, plus a third one, efavirenz. And the problems raised by this other combination are analogous.

According to article 3(a) of the SPC regulation (regulation (EC) No. 469/2009 of the European Parliament and of the Council), an SPC “shall be granted if, […] (a) the product is protected by a basic patent in force“.

How to determine whether a product can be considered as being “protected” by a basic patent has been the subject of intense litigation and numerous rulings from the CJEU, which are mentioned in the TGI’s judgment. Again, readers of this blog can refer to the Truvada post, which contains a short summary of the most important CJEU case law prepared by Lionel Vial.

CJEU case law on the interpretation of the SPC regulation: each ruling always leads to more referrals.

In the present case, none of the claims of EP’455 explicitly recites the combination of the three active compounds of the combination. Instead:

  • efavirenz is covered by a generic formula in claims 1 and 5 and is singled out in claims 2 and 12 (as well as in claims 8 and 9 but in combination with other drugs different from tenofovir and emtricitabine);
  • tenofovir and emtricitabine are not cited in the patent;
  • claims 7 and 16 relate to the combination of a generic formula (covering efavirenz), or of efavirenz specifically, together with a nucleoside analog;
  • tenofovir and emtricitabine belong to this category of nucleoside analogs.

According to the court, this is insufficient to consider that the combination of the three active compounds is protected by the EP’455 patent pursuant to article 3(a).

Says the court:

It turns out that the description never explicitly cites either tenofovir or emtricitabine which are not identified in the EP’455 patent, be it individually or collectively in a composition. And in addition the specific combination claimed as an active product “efavirenz + emtricitabine + tenofovir” is not implicitly but necessarily and specifically taught in the description, and no indication makes it possible for the skilled person to select emtricitabine and tenofovir as nucleoside analogs. 

In fact, if I understand correctly, emtricitabine and tenofovir were not even identified and known yet as anti-HIV drugs at the filing date of the EP’455 patent.

Furthermore, the court refused to consider the claims relied upon by MSD (reciting nucleoside analogs) as “functional claims” because “they do not describe the structure which should be present nor the function that the second and third products should have in this structure“.

For the sake of completeness, the court stated that even if the claims were considered as functional, the four-step test established by the Dutch patent office would then not be satisfied. Again, this same test was discussed in the previous Truvada post, so I will not describe it again here.

As a consequence, the SPC was found to be invalid under article 3(a).

By way of overkilling, the court added that the SPC was also invalid in view of article 3(c) of the SPC regulation, per which an SPC “shall be granted if, […] (c) the product has not already been the subject of a certificate“.

In this case, another SPC had been granted based on the same EP’455 patent, namely the efavirenz SPC. MDS relied on the Georgetown CJEU decision (C 484/12). According to this decision, article 3(c) does not preclude the grant of one SPC for a combination of active ingredients, and another SPC for a single active ingredient, based on the same patent.

Nevertheless, according to the TGI, Georgetown is only applicable if the mono and combo products are separate inventions.

In one brief paragraph, the court then held that:

the combination of efavirenz with emtricitabine and tenofovir does not represent a separate invention which may give the right to a second SPC. For this second reason, SPC [FR’021] is invalid under article 3(c) of the regulation. 

Those readers in favor of pan-European consistency (which probably means most readers of this blog) will be happy to know that the TGI’s decision mirrors a similar ruling in the UK handed down on March 21, 2017, per which the corresponding UK SPC was declared invalid by Mr. Justice Arnold.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, November 30, 2017, Mylan SAS v. Merck Sharp Dohme Corp., RG No. 16/14466.

A skinned patent

Prevailing as a patentee in France when your patent belongs to the chemical or pharmaceutical field is extremely difficult. I will in fact provide some figures on this matter soon.

More often than not, patents are skinned alive by the court – and, bad pun intended, even dermatology is not spared, as the present case shows.

Dermaconcept JMC is a French company active in the pharma / cosmetology business. It owns a French patent No. FR 2823671 as well as a European patent No. EP 1404327 claiming the priority of the French patent. Noreva-Led is their exclusive licensee, which markets the brand of products Actipur, for the treatment of acne skin and atopic dermatitis.

Together, they initiated legal proceedings against Laboratoire Bioderma in December 2014. Laboratoire Bioderma, later merged into Naos, was accused of infringing the above patents through their product Atoderm Intensive.

In May 2016, both patents were limited at the INPI (Institut National de la Propriété Industrielle) after record-breaking 8-day long proceedings. It is reasonable to assume that this limitation came as a reaction to Naos’ initial invalidity arguments.

The limitation was however apparently not good enough for the Paris Tribunal de grande instance (TGI), as the asserted claims were found invalid in spite.

The court started by throwing out claim 9 of the French patent.

In principle, when there are both a French patent and a European patent claiming the priority of the French patent, the effects of the former cease at the end of the opposition period (assuming that no opposition is filed against the European patent, as was the case here). See article L. 614-13 Code de la propriété intellectuelle (CPI). But this is traditionally believed to be true only insofar as both patents cover the same invention.

Here, claim 9 of the French patent is directed to

A method of cosmetic treatment characterized in that it consists in applying a composition based on nicotinic acid or nicotinic acid amide, and a sphingoid base according to any one of claims 2 to 7 on exposed areas, the composition being of the emulsion type.

As this claim is not present in the European patent, it survives in the French patent. Or rather, survived – until it got revoked by the court, that is.

Article L. 611-16 CPI is worded in a manner very similar to article 53(c) EPC, and it inter alia prohibits patents on methods of therapeutic treatment.

Referring to the description of the patent, the court noted that the composition at stake is meant to treat acne and atopic dermatitis, which are diseases of the skin.

Therefore, the method is not merely cosmetic but also therapeutic, since it does entail a therapeutic effect:

In this respect, the mere mention that the field of the claim is intended to cover only the cosmetic effect is not sufficient to shield this claim from the prohibition of article L.611-16 CPI, since the therapeutic effect is in fact inseparable, and actually is expressly presented as one of the advantages of the invention in the patent description. Therefore, the fact that this method produces an aesthetic effect on the skin, namely a fairer and smoother skin, is not sufficient to shield it from the prohibition of abovementioned article L.611-16 since this effect is only the consequence of the therapeutic treatment of the composition which reduces the presence of blackheads on the skin. 

The court also noted that a very similar claim was deleted from the European application before grant, as the European examiner had raised the same objection. I emphasize this, as it is not everyday that a French court feels bolstered by the opinion of an EPO examiner.

A butterfly batch – the ideal treatment for skin disorders.

Next up were claims 1 and 10 of the French part of the European patent – as limited in front of the INPI – which are respectively a product claim and a Swiss-type claim.

Claim 1 reads as follows:

A dermatological composition useful for the treatment of atopic dermatitis, characterized in that it comprises, in combination, nicotinamide (vitamin PP), and at least one sphingoid base selected from phytosphingosine, tetraacetylphytosphingosine, N-acetylphytosphingosine, and phytosphingosine hydrochloride. 

Claim 10 is directed to:

The use of nicotinamide (vitamin PP), and of a sphingoid base according to claim 1, for preparing a medicinal product for the treatment of atopic dermatitis.

Both claims fell for lack of inventive step.

The closest prior art was found to be a Procter and Gamble (“P&G“) PCT application No. WO 99/47114. Claim 1 of the P&G reference discloses a skin moisturizing composition comprising a vitamin B3 compound and a ceramide pathway intermediate or precursor thereof. Other passages of the document disclose that the vitamin B3 compound can be selected from a list comprising nicotinamide, and that the ceramide intermediate or precursor can be selected from a list comprising some sphingoid bases, including e.g. sphingosine.

Interestingly, the P&G reference does not explicitly mention phytosphingosine or its derivatives, recited in claim 1 of the European patent. As far as I understand, phytosphingosine is a compound which is different from sphingosine.

But the P&G reference contains the following statement:

Ceramide pathway intermediates or precursors are discussed in detail in U. S. Patent 5,578,641 to Simon et al. and U. S. Patent 5,610,040 to Smeets et al., both of which are herein incorporated by reference. 

And it turns out that phytosphingosine is recited as a preferred ceramide pathway intermediate in US 5,578,641.

The court considered that the teaching of this U.S. patent completes the explicit teaching of the P&G reference, so that:

The [P&G reference], the purpose of which is to provide a composition activating and increasing the rate of ceramide synthesis and to provide improved methods of skin moisturizing […] already discloses the composition mentioned in claim 1 of the EP’327 patent, with the additional remark that […] the synergistic effect of the combination was already known. 

In other words, the court relied on the incorporation by reference of US 5,578,641 in the P&G reference in order to determine its overall teaching.

As a next step, the court stated:

It remains to be determined if it was obvious for the skilled person to use this combination to solve the problem at stake, i.e. treat atopic dermatitis.

Thus, the only difference between the claims at stake and the teaching of P&G was the fact that the composition is used for treating atopic dermatitis.

This means that the court fully took into account the therapeutic purpose recited in product claim 1 (“a dermatological composition useful for the treatment of atopic dermatitis“) as well as in Swiss-type claim 10 (“for preparing a medicinal product for the treatment of atopic dermatitis“). 

This finding is rather logical but not so straightforward given the (past?) tendency of French courts to come up with unconventional claim constructions especially when therapeutic inventions are at stake.

Going back to the final step of the inventive step reasoning, the court noted that atopic dermatitis, as set forth in the patent in suit, is known as being related to an alteration of the barrier function of the skin.

The P&G reference itself mentions that the composition improves said barrier function.

The court then turned to a secondary reference, Korean patent application No. KR 2000-0024485, specifically concerned with the treatment of atopic dermatitis. It is explained in the document that atopic dermatitis is related to skin dryness, wherein skin moisturizing is significantly reduced, which impairs the barrier function. The Korean document adds that nicotinamide increases lipid synthesis in the skin, therefore supporting the barrier function of the skin and curbing atopic dermatitis.

The court thus concluded:

It can be derived from this that the skilled person, knowing the effects of the combination comprising a vitamin B3 compound and a ceramide precursor on skin moisturizing, looking for a way to alleviate the effects of atopic dermatitis, and knowing that the latter is characterized by skin dryness and impairs the barrier function thereof, but also that nicotinamide strengthens this barrier function and that its combination with an intermediate or precursor of ceramide synthesis produces an amplified effect on the ceramide synthesis properties of vitamin B3 compounds, would use this same combination for the treatment of atopic dermatitis without exercising any inventive step. 

Claims 1 and 10 were thus declared invalid, and the infringement claims were not examined.

Whether the judges got it right or not, at least the decision looks well reasoned and in line with European case law.  

One reservation, though, is that there is no discussion in the judgment as to whether P&G was a proper starting point for the inventive step reasoning at all, despite the fact that the claimed therapeutic purpose was not mentioned in the document.

This point may not have been raised by the nullity defendants. And it may not be a big deal anyhow. It can be surmised that a similar reasoning of lack of inventive step could have been made starting from the Korean application (which is concerned with atopic dermatitis) and combining it with P&G.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, July 7, 2017, Dermaconcept JMC & Laboratoires Nora-Led v. Naos, RG No. 15/00069.

An electric dispute

When Matthieu Dhenne kindly sent me a copy of the recent judgment Quadlogic Controls Corporation v. SA Enedis, I immediately knew that it would contain a part on the limitation period for nullity claims, as this is one of his favorite topics.

But quite to my delight, when diving into the judgment, I realized that extension of subject-matter is also discussed at length. And it turns out that this is one of my favorite topics.

I will leave it up to readers to decide which favorite topic is more off-putting, his or mine.

Quadlogic is a New-York based company specialized in energy management products. They own European patent No. EP 1260090 to a System and method for on-line monitoring and billing of power consumption.

Enedis, previously known as ERDF, is a subsidiary of EDF, the public company turned private which is still responsible for distributing most of the electricity used in France. Enedis on the other hand is in charge of handling the electricity network.

One huge project that has been keeping Enedis busy for a number of years now is the replacement of traditional electricity meters by smart (and somewhat controversial) meters known as the “Linky” meters. By the end of 2017, 35,000 new Linky meters are supposed to be set up every day.

It is therefore a pretty big deal that Quadlogic stated that the Linky technology infringed the EP’090 patent. In 2015, a number of letters were exchanged between the parties, but no amicable agreement was reached.

Thus, Quadlogic filed an infringement suit in February 2016, after performing an infringement seizure in January. Enedis raised a number of defenses and in particular challenged the validity of the patent and requested its revocation.

At this point, Quadlogic replied that Enedis was time-barred from filing a nullity counterclaim – a classical defense nowadays. However, this time the Paris Tribunal de grande instance (TGI) disposed of the issue relatively quickly.

Although the patent was filed as early as February 2001, it was only granted by the EPO in October 2013.

The court held:

It is established that the nullity of a patent can only be requested as from the date of grant, namely October 9, 2013 so that the nullity requested by Enedis for the first time in its counterclaim of February 21, 2017 is admissible. No limitation period can thus be raised against Enedis. 

As a reminder, there is now a limitation period for nullity claims in this country, according to recent case law, which is 5 years. The starting point of the period is much debated, with diverging views between first instance and appeal judges.

However, it is now relatively clear that the starting point cannot be before the grant of the patent. At least the TGI and the Cour d’appel are on the same page on this – see a recent report here.

The court then turned to the merits of the validity challenge and reviewed the amendments made during examination.

1911 – when electricity was still a miracle.

Claim 1 of the patent reads as follows:

A system for monitoring energy usage on a power line comprising:
(a) an electronic microprocessor-controlled digital electricity metering device coupled to a power line and including a non-volatile non-battery-powered memory, wherein said metering device is operable to perform interval metering for each of a plurality of intervals, is operable to store in said memory data acquired by said interval metering for each of said plurality of intervals, in a manner that enables recovery of measurements for individual intervals of said plurality of intervals and is operable to receive a data request and transmit data in response to said request over said power line; and
(b) a data collector coupled to the metering device via said power line, the data collector being operable to receive data from and transmit data to the metering device over the power line; operable to store data received from the metering device over the power line, and operable to receive data from and transmit data to a remotely located computer.

The expression highlighted above was added during examination and was at the center of the court’s attention.

The court noted that the expression could not be found in any of the 63 original claims and thus turned to the description and drawings. Quadlogic apparently relied on a single short passage as a support, which the court thought was a little bit too light:

Quadlogic only quotes the first sentence of paragraph 132 in its submissions, namely: “Interval metering stores independent records of metering data for future recall”. 

And this single sentence in a patent comprising 60 pages of description, supposed to be the crux of the invention, does not mean that individual records of the metering intervals are made. It mentions the possibility of independent records without stating that there is a prior problem that the skilled person had to solve. 

This mention cannot be considered as supporting the added feature, which makes it possible for the invention to exist, since the metering, storing and recovering of metering intervals on energy consumption were known; this feature is the only novel one in view of the known prior art. Since the entire device was known except this feature which is the only one to confer novelty to the invention, in order to avoid extension beyond the content of the application, elements to support the invention itself must be found in the description and drawings. 

What is remarkable in this explanation by the court is that a feature added in order to distinguish the claimed invention from the prior art seems to be subjected to a more thorough and strict evaluation than more innocent features. The EPO on the other hand usually does not make a distinction between novelty-conferring features and non-novelty-conferring features in the added matter analysis.

What is also remarkable is that the court did not simply look at the sentence in isolation, but took into account the general context of the entire patent. In this case, the supporting sentence is only recited in passing, without any statement of a technical problem to be solved. The way I understand it, in order for the invention to be redefined based on a specific feature, this feature must be originally identified as addressing a particular problem.

The court then delved into a more technical investigation.

This sentence “Interval metering stores independent records of metering data for future recall”  means that the recorded interval metering is independent from the values of counting energy consumption.  

The part of the sentence “for future recall” is much too elliptic to be admitted as supporting the recovery of measurements of individual intervals. It only refers to the existence in the system of a function for recovering stored data owing to a transfer to the computer. 

In other words, the sentence relied on by the patentee does not expressly refer to the notion of storing data so as to be able to recover measurements for individual intervals – as claimed. Moreover, the court found that it was not clear that this is what was implicitly meant there. See also the following statement in the judgment:

Indeed, the fact that measurements are stored as “independent records” does not imply that the measurements, wholly or partly related to these records, can be recovered in an individual manner.

In this respect, the EPO’s gold standard of direct and unambiguous derivability seems to be applied by the French judges.

Extensively examining the rest of the description and drawings, the court noted that there was no actual disclosure of technical means to perform the claimed feature:

No means for separately recovering one of the measurements of the non-volatile memory is ever mentioned in the description of the patent. 

[…]

And table 6 […] effectively shows that the measurements of intervals are recorded one after each other, half hour by half hour during a certain time, which is a measurement and storing mode already widely known without adding any means to individualize data. 

The court continued by noting that the recovery of an individual measurement for a certain interval requires for instance predefined addressable memory areas. But no such embodiment was disclosed in EP’090.

In summary, the subject-matter of claim 1 was found to extend beyond the content of the application as filed, the same conclusion applying to all of the following claims, and the patent was declared invalid.

The issue of infringement was accordingly not addressed.

Whether readers agree or disagree with the court’s findings, the good news is that a very thorough assessment of the technical information made available to the skilled person in the application as filed was performed, which looks every bit as good as what we could find in a decision by a Board of appeal of the EPO.

The judgment is also yet another reminder that completely redefining an invention during examination proceedings by digging for some isolated disclosure may be a winning strategy for the grant, but a losing one during opposition or litigation.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, November 2, 2017, Quadlogic Controls Corporation v. SA Enedis, RG No. 16/03165.

The name of the game

All French readers of this blog probably know the “Journées FNDE“. For the foreign readership who may not be aware of this traditional gathering, FNDE stands for Fédération Nationale pour le Droit de l’Entreprise; and the “days” in question, two in number, are dedicated to a review of recent French patent case law (as well as recent case law of the Boards of appeal of the EPO) by a panel of distinguished academics and practitioners. In short, this is a must-attend event for the national patent profession.

Last week, I was part of the audience for the second day of the event, the traditional subject of which is the exploitation of patent rights. I am not going to report on the various decisions that were commented upon during the day. In fact, and although I would hate to sound boastful, many of them were already discussed on this blog.

What I would like to report on instead is the excellent introductory presentation made by Pierre Véron. As an expert in Unified Patent Court (UPC) matters, he provided some insightful update on this – always – hot topic.

One focus of his intervention was the adaptation of French law in view of the (likely, imminent, possible) [delete as appropriate] entry into force of the AUPC (Agreement on a Unified Patent Court). It turns out that the ministry of justice has – finally! – issued drafts of a decree and a bill (“ordonnance”) intended to modify the Code de la propriété intellectuelle (CPI).

Of course, the drafts are subject to changes before they are adopted, but here is where we currently stand.

First, and most interestingly, the question of double protection by a European patent and a French patent.

The current rule (article L. 614-13) is that a French patent covering an invention for which a European patent has been granted to the same inventor or successor in title with the same filing or priority date ceases to be in effect at the expiry of the opposition time limit or, if an opposition is filed, at the date on which the opposition proceedings are closed with the maintenance of the patent.

In short, double protection is currently prohibited. According to the draft, the new rule will continue to prohibit double protection only if the European patent is opted out of the exclusive jurisdiction of the UPC (pursuant to Art. 83(3) AUPC).

On the other hand, a French patent and a European patent on the same invention to the same inventor or successor in title, with the same filing or priority date, will be allowed to coexist if the European patent is subjected to the jurisdiction of the UPC. This will concern all so-called unitary patents (European patents with a unitary effect) as well as traditional European patents that have not been opted out.

As far as I understand, a similar rule has been adopted in Germany. As this is viewed as a useful tool for the German patent system in general and for German businesses in particular, it was felt that a similar rule was needed in France in an attempt to be on an equal footing with our neighbors.

An inventor armed with his French patent and his European patent.

In the current state of affairs, French applicants will benefit the most from the new rule, since the filing of a French application as a priority application followed by the filing of a direct EP or Euro-PCT application is a common strategy for them.

However, foreign applicants should also consider filing both at the EPO and nationally in France (and e.g. Germany), at least for their important cases. Thus, they would not put all of their eggs in the same basket, and would be able to assert their IP both at the UPC and in front of national courts. The additional cost involved by this strategy would remain moderate as patent prosecution in France is quite inexpensive – while on the other hand requesting the unitary effect for the European patent would reduce the overall cost of renewal fees across Europe.

Another significant change in the law, according to the draft, is the period of limitation for infringement claims. Under current article L. 615-8 CPI, “infringement actions […] are time barred five years from the facts on which they rely“. This should be replaced by five years from the date on which the right owner became aware or should have become aware of the acts of infringement.

Again, this will harmonize French patent law with the AUPC (article 72), and also, oddly enough, with the general statute of limitations under French law (article 2224 of the Code civil).

This change will obviously be favorable to all right holders.

Apparently the draft is silent on another, much more controversial period of limitation, namely the one affecting nullity claims according to recent case law (discussed at length in a number of earlier posts). Admittedly, this issue is unrelated to the UPC.

Nevertheless, could there be a glimmer of hope that this issue will be addressed in the final version of the bill?

Among the other, more minor changes in the law, the definition of the acts of infringement is going to be slightly modified in order to be harmonized with the wording used in the AUPC. Therefore, the notion of “mise dans le commerce” will be replaced by “mise sur le marché“. According to Pierre Véron, the meaning is the same (“placing on the market” in English) and this change in wording will be inconsequential.

Pierre Véron then drew our attention to the dog that did not bark, i.e. what is not in the draft. Namely, the draft does not define what is the substantive law applicable to European patents in front of French courts during the transitional regime – i.e. French law or the AUPC. According to the interpretative note issued by the Preparatory Committee, competent national courts have to apply the applicable national law, and not the AUPC.

Yet, courts will not be bound by this interpretative note, so that an explicit provision in the statute could be helpful to avoid complex legal disputes. That said, it is probably only in very specific cases that which substantive law is applied would really make a difference – the Bolar exemption being an often quoted example.

Apart from this discussion on the adaptation of French law, Pierre Véron also updated us on pending challenges to the UPC – and in particular the German constitutional complaint. However, there may not be much to say on this topic, except “wait and see“. Let’s not underestimate how unpredictable and chaotic life sometimes is.

The one point that got me thinking, though, is the interaction between the Brexit timing and the possible entry into force of the UPC. According to Pierre Véron, if the Agreement can enter into force before the the UK officially leaves the EU (which may primarily depend on the fate and timing of the German complaint), then everything should be fine.

He said the Agreement would simply have to be slightly modified in order for the UK to stay in the system, for example by stating in article 2 that “Member State means a Member State of the European Union at the date of the entry into force of the Agreement” instead of “Member State means a Member State of the European Union” (period) in the current version. He added that this modification would be straightforward as it could be directly made by the Administrative Committee.

On the other hand, if the UK leaves the EU before the Agreement enters into force, then everything gets more complicated as a new Agreement would likely have to be signed in order for the UK to stay in the system – and this means a new diplomatic conference.

After hearing this, I read again article 87 AUPC on the revision of the Agreement, in order to see what the Administrative Committee can and cannot do in terms of altering the Agreement.

Paragraph 1 reads as follows:

Either seven years after the entry into force of this Agreement or once 2000 infringement cases have been decided by the Court, whichever is the later point in time, and if necessary at regular intervals thereafter, a broad consultation with the users of the patent system shall be carried out by the Administrative Committee on the functioning, efficiency and cost-effectiveness of the Court and on the trust and confidence of users of the patent system in the quality of the Court’s decisions. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to revise this Agreement with a view to improving the functioning of the Court.

It does not look like this provision would be relevant to the modification suggested by Pierre Véron. Indeed, the modification does not seem to relate to “improving the functioning of the Court“. Also, paragraph 1 is only applicable after a significant period of time and necessitates a “broad consultation with the users” as a preliminary step.

Then comes paragraph 2:

The Administrative Committee may amend this Agreement to bring it into line with an international treaty relating to patents or Union law.

Could the proposed modification of the AUPC fall under this provision? Would it be considered as bringing the Agreement into line with a potential UK/EU divorce treaty?

One can be skeptical. It could also be considered that expanding the definition of the Member States in the Agreement is a very fundamental alteration. As some have proposed, if past EU member states can be part of the system, why not also non-EU member states, such as e.g. Switzerland?

For the sake of completeness, paragraph 3 of article 87 provides:

A decision of the Administrative Committee taken on the basis of paragraphs 1 and 2 shall not take effect if a Contracting Member State declares within twelve months of the date of the decision, on the basis of its relevant internal decision-making procedures, that it does not wish to be bound by the decision. In this case, a Review Conference of the Contracting Member States shall be convened.

So, even if a revision of the Agreement is decided by the Administrative Committee, it could still be opposed by at least one of the contracting member states, which would then lead to a diplomatic conference.

In summary, this does not look like a piece of cake.

Here are for instance two questions which may come to mind:

  • What if the Administrative Committee revises the Agreement (for example as suggested above) and there is a possible argument that the revision is illegal, i.e. not compliant with article 87? Are there any means of redress and which ones?
  • What if the Agreement enters into force but then the amendment to the Agreement necessary in order for the UK to remain part of the system cannot be made in due time before the Brexit happens? What would then be the fate of pending cases?

In view of the above, there may be a decent argument that an upfront renegotiation of the AUPC before its entry into force would be the best and safest option. If I understood Pierre Véron correctly, it is actually the position of the French government that a renegotiation is necessary – although he added that the government’s reasons for this position are unknown.

Anyway, I would be ready to bet that the above issues will be discussed again at next year’s Journées FNDE.

Publicity stunt

There is no such thing as bad publicity, some say. Or, as Oscar Wilde wrote, there is only one thing in the world worse than being talked about, and that is not being talked about. 

This rule may have some merit in show business and in U.S. politics, but it is clearly inaccurate in the trade and industry business.

A recent illustration can be found in one of those never-ending French patent disputes, where judgments keep popping up every 2 to 3 years, namely Newmat v. Normalu.

In this dispute, Newmat is the patentee and original plaintiff, and Normalu the original defendant.

As a non-exhaustive summary, in October 2004, Normalu was found guilty of patent infringement at first instance. This was finally confirmed on appeal in May 2010 (in case you are wondering, yes that took a while, but only because there was a first appeal judgment which was set aside by the Cour de cassation, and the case was remitted back to the Cour d’appel).

The litigation continued for the purpose of damages computation. In January 2012, the Paris Cour d’appel issued its final ruling on damages.

A few months thereafter, Newmat published a document entitled “Legal information note on Newmat v. Normalu Barrisol – decision on patent infringement relating to a profiled part for hanging suspended ceiling”. The document contained the court order from the appeal ruling of 2010.

Normalu deemed that this internet publication was an act of unfair competition and therefore sued Newmat, to claim damages. This new branch of the litigation culminated in an appeal ruling from the Paris Cour d’appel issued in May 2015. In the ruling, the court found that Newmat was indeed guilty of unfair competition but limited the amount of damages to the minor amount of 5,000 euros.

Normalu was so disappointed with the outcome that they filed an appeal on points of law. The Cour de cassation rejected Normalu’s appeal on October 18, 2017.

Let’s have a closer look at the facts of the case.

In the first judgment of 2004 in which Normalu was found guilty of infringement, the court granted Newmat’s request that the order of the decision should be published in three journals or newspapers selected by Newmat, up to a cost of 3,000 euros per publication, to be paid by the defendant.

Such a “publication order” is a classical measure quite often ordered by the courts when there is an infringement verdict. An explicit legal basis for this type of order was in fact added to the statute in 2007 (article L. 615-7-1 of the Code de la propriété intellectuelle). It is seen as a complementary remedy to the trouble caused by the infringement.

A novel and inventive way to communicate on judgments

However, Newmat did not implement this publication order. Instead, they published the abovementioned “legal information note” on their website, and published links to this note in their newsletter and on Twitter.

Normalu argued that Newmat was only authorized by the court to publish the order of the judgment in the form mentioned in the judgment, i.e. in three journals or newspapers. Newmat was not authorized to give the judgment another and arguably broader form of publicity, and should thus be held liable.

The Paris Cour d’appel disagreed and noted that the infringement judgment was public, so that Newmat was free to communicate on it as they wished. The publication order in the judgment did not restrict in any way Newmat’s ability to publish the judgment in a different manner (at its own expenses, one can add). Therefore, the only issue that the court ought to check was whether there was any abuse in Newmat’s communication, and in particular if this communication was disparaging or otherwise represented an act of unfair competition.

In other words, the Paris Cour d’appel did not see any issue in principle with the publication of the judgment on Newmat’s own initiative; but it was nevertheless necessary to check whether the contents and the form of the publication were appropriate.

At this point, the court noted that the text published on the website was neutral and did not comprise any comment – so far so good. Then the court remarked that the text published on Newmat’s website was identical to the order actually contained in the infringement judgment, but for two exceptions.

The first exception was that the part of the order relating to the designation of an expert (for the assessment of damages) was omitted from Newmat’s publication. This was found by the judges to be without any consequence, as the reader was not misled due to the omission.

The second exception was that the order of the infringement judgment referred to the company Normalu, whereas Newmat’s note mentioned “Normalu (Barrisol)” instead. Barrisol seems to be a trade name under which Normalu operates and markets its products.

Newmat explained that it was necessary to specify that Normalu was Barrisol, so that the reader coud properly understand the provided information. On the other hand, Normal argued that, in view of the well-known reputation of the Barrisol trademark, the mention added by Newmat resulted in increasing the impact of the judgment publicity, beyond the exact wording of the judgment.

On this respect, the Cour d’appel sided with Normalu, which led to the conclusion that Newmat had indeed committed an act of unfair competition.

Turning to the computation of damages, Normalu claimed that they had to launch a radio advertising campaign in May 2012 in order to mitigate the effect of Newmat’s online communication. But the appeal judges held that the link between the radio ads and Newmat’s wrongdoing was not adequately proven by Normalu. This led the court to set the amount of damages to the rather symbolic amount of 5,000 euros.

Normalu pleaded its case again in front of the Cour de cassation, but as mentioned above, the supreme court judges found no error in the 2015 appeal decision and rejected Normalu’s appeal on points of law.

In particular, regarding the principle of the online communication performed by Newmat, the court held that:

legal decisions are public; thus the provisions of article L. 615-7-1 Code de la propriété intellectuelle (per which in case of an infringement verdict, the court may order any appropriate measure of judgment publicity, such as by poster or by a full or partial publication in newspapers or online communication services that it designates, in a form to be specified and at the expenses of the infringer), do not exclude the victim’s right to proceed, at its own expenses, with any other publicity measure regarding the condemnation granted to it.

This is a relatively important point.

It means that plaintiffs do not have to ask for the court’s permission before communicating on a ruling which is favorable to them. As long as they communicate at their own expenses, they can do it directly – under the proviso that they remain completely neutral and more generally do not act in an abusive manner.

I would add that it may not be a good idea for a plaintiff to publicize a first instance judgment which is not yet final.

Concerning now the form and contents of Newmat’s communication, the Cassation judges stated that the Cour d’appel was free to appraise the facts as it did, and thus that it issued a legally valid decision.


CASE REFERENCE: Cour de cassation, chambre commerciale, October 18, 2017, Normalu v. Newmat, No. 15-27136.