No U.S. torpedo

No breaking new today, as the case I am going to talk about has already been commented upon in many various places.

Looks like I may have some catching up to do.

And yet, this is a prominent international patent case with a French component, and it involves a quite unusual point of law. So, I would be remiss if I failed to mention it on this blog.

The German company IPCom owns a telecom patent portfolio acquired from Robert Bosch. These patents are presented by the owner as essential for the 2G, 3G and 4G standards.

IPCom has been negotiating a license for some time with the Chinese group Lenovo (which also owns Motorola Mobility) – without any luck so far. 

Lenovo was the first to shoot, litigation-wise, by filing a complaint with the District Court for the Northern District of California in March 2019, seeking the setting of the conditions of a worldwide FRAND license for the IPCom portfolio.

In July 2019, IPCom retaliated by initiating infringement proceedings based on one of their patents, EP 1841268, in the UK.

Probably wary of a likely escalation in other jurisdictions as well, Lenovo filed a motion for anti-suit injunction with the California court on September 18, 2019.

On October 16, 2019, IPCom performed infringement seizures against the French Lenovo subsidiaries and filed a motion for preliminary injunction.

On October 24, 2019, IPCom filed a petition with the juge des référés (the judge in charge of emergency interim proceedings) in Paris, seeking the withdrawal of the motion for anti-suit injunction filed by Lenovo in the U.S.

In other words, IPCom reacted to the motion for anti-suit injunction in the U.S. by a motion for anti-anti-suit injunction in France.

The hearing on the motion for anti-suit injunction in the U.S. was originally scheduled on November 14, 2019. Lenovo, in an attempt to beat the French proceedings, tried to bring this hearing forward by filing a motion to expedite with the U.S. court. IPCom was not intimidated and obtained an ex parte order from the French judge dated October 30, 2019, per which Lenovo was ordered to withdraw the motion to expedite, so that the hearing on the motion for anti-anti-suit injunction in France could take place on November 6, 2019, before the hearing on the motion for anti-suit injunction in the U.S.

Still on October 30, 2019, the motion to expedite was rejected by the U.S. court. The hearing in front of the juge des référés took place on November 6, 2019 as planned, and the judgment was issued on the same day, which is really remarkable.

At this point, you would probably venture that this post will mainly thrill civil procedure geeks, and not so much GSM, UMTS or LTE geeks – and you would be right.

Now that you have been warned, we can go through the judgment.

Before the judge was able to decide on the very procedural motion at stake… there were of course a few procedural preliminary objections to deal with.

First, Lenovo argued that the October 25, 2019 petition had not been properly served on the U.S. defendants before the deadline of October 29, 2019 which had been originally set by the judge for this service to take place.

However, the judge deemed that the formalities were properly performed by the due date. A French bailiff sent the petition on October 25, 2019 to the U.S. process server, and in parallel shipped it by express mail – which was received on October 28. Still in parallel, the petition was also sent to Lenovo’s usual French attorney. The petition was referred to by Lenovo on October 28 when they filed their motion to expedite with the California court. As a result, the juge des référés deemed that everything was in order, even if the U.S. process server did not provide the proof of service before the due date.

Second, Lenovo objected that the French judge lacked jurisdiction and that only the District Court for the Northern District of California had jurisdiction.

The judge dismissed this objection, mainly based on article 46 Code de procédure civile, per which, in a non-contractual dispute, a plaintiff may initiate proceedings in “the court of the place of the event causing liability or the one in whose district the damage was suffered”. 

The judge noted that, if the anti-suit motion was granted in the U.S., IPCom would suffer harm in France. Therefore, the French judge had jurisdiction over the petition for an anti-anti-suit injunction.

Third, Lenovo raised an objection due to lis pendens and related proceedings.

Since a lawsuit was already pending in California, the French judge should defer to the U.S. court, Lenovo argued. Once again, the juge des référés disagreed, noting that the present action related to a different matter from the one in front of the U.S. court; and that it would not be proper (in the original text: “pas d’une bonne administration de la justice“) to defer to the U.S. court when the very purpose of IPCom’s petition is to prevent the U.S. proceedings from interfering with the French proceedings.

Finally, the judge was able to address the petition on the merits, so to speak.

The judge stated that article 808 Code de procédure civile empowers her to order any measure which is not serious challenged or which is justified by the existence of a dispute, if there is an emergency.

In the present case, the existence of an emergency was easy to establish, in view of the pending motion in front of the U.S. court.

Then, the judge stated that anti-suit injunctions are not allowed among member states of the EU.

With regard to a non-EU country such as the U.S., the judge held that an anti-suit injunction would violate the French international public order – except if a jurisdiction clause or an arbitration clause was at stake, which was not the case here.

Wrote the judge:

Indeed, the anti-suit injunction (except in the cases mentioned above) is an interference with the jurisdiction of the courts and indirectly results in violating the exclusive jurisdiction which each state enjoys in order to freely define the international jurisdiction of its courts. 

Therefore, the judge granted IPCom’s petition.

Lenovo was ordered to immediately withdraw their motion for anti-suit injunction, insofar as it relates to legal proceedings which could be initiated by IPCom in France regarding EP 1841268. Lenovo was ordered not to file any other similar motion anywhere in the world. This order was issued under a penalty of 200,000 euros per violation and per day of non-compliance.

All in all, this ruling is a quite spectacular affirmation of sovereignty from the French court. The docket was fast-tracked at quasi-light speed, including with the interim issuance of the ex parte order mentioned above (which is rather exceptional), to make sure that the anti-anti-suit injunction was issued before the U.S. court could rule on the motion for anti-suit injunction.

My initial reaction is that this judgment fully makes sense. Patent infringement is a matter of national law, and it would thus be shocking if a patent proprietor could be prohibited by a foreign court to even attempt to assert its IP.

Accordingly, I understand that the high court in the UK also granted IPCom an anti-anti-suit injunction in the same case (see here). A few months earlier, in a different case and under different circumstances, an anti-anti-suit injunction was also issued in Germany (see here).

That said, without knowing of course who is acting in more or less good faith or bad faith, I do also have some sympathy with Lenovo’s position to some extent. The central issue in this dispute is that of setting the terms and conditions of the FRAND license for the IPCom portfolio. If the parties cannot agree, litigation must solve the issue.

But once the matter has already been brought in front of a court of law, what is the point in filing patent infringement suits here and there, beside exerting additional pressure on the would-be licensee?

To Lenovo’s point, centralized litigation makes more sense on a global standpoint.

But then again, on the other hand, there is something wrong in the notion that the first party to act can choose the forum that they please and then stop and freeze any possible initiative of the other party outside of that forum.

Why should the first one to pull the trigger always have the upper hand? After the Italian torpedoes which were in fashion some time ago, Lenovo tried to launch a U.S. torpedo, but it fizzled out.

Anyway, the case can easily make one think of a house of mirrors. It seems like an endless source of paradoxical questions.

In a procedural maze.

To wit:

  • Could Lenovo have filed a motion for anti-anti-anti-suit injunction in the U.S.? And so on? Is there any theoretical end to this game?
  • By issuing the anti-anti-suit injunction, didn’t the French judge achieve exactly what she wanted to avoid in the first place, i.e. interfere with another court’s business? In other terms, if an anti-suit injunction is per se illegitimate, isn’t there some illegitimacy in an anti-anti-suit injunction as well?
  •  What if the anti-suit injunction had been granted in the U.S.? What would the effect have been in France? The injunction would have targeted the patent proprietor, not the French court itself. So, could the French court have thwarted the effect of the injunction by e.g. granting damages to the patent proprietor for any loss suffered due to non-compliance with the U.S. injunction? Would the court have had jurisdiction to do so?

Anyway, now that a few months have passed since this ruling, I bet that multiple new developments have taken place in this multinational game of 3D procedural chess, and I would be delighted to be updated by any readers in the know.


CASE REFERENCE: Tribunal de grande instance de Paris, ofronnance de référé, November 8, 2019, IPCom GmbH & Co. KG v. Lenovo Inc. et al., RG No. 19/59311.

Haunted

In the patent profession, cases have this way of always coming back at us.

You may work hard on a case and complete a difficult action, possibly with some sense of achievement (or relief). But then, a few months or years later, the case is back with a vengeance.

Happy about the way you have drafted your patent application, having navigated through all of the prior art and the inventor’s wishes? Wait until you get the search report. Enjoying your ride or flight back home after having been steam-rollered in opposition oral proceedings? Let’s meet again in 2 years’ time for the appeal. Satisfied that you have managed to digest the other party’s 300-page submissions just in time to file your reply in court? As well you should, although next time you will get 350 pages from them.

And so it is with this blog.

Almost exactly 2 years ago, I published a post on Ethypharm SAS v. Merck Sharp & Dohme Corp. 

Now that the appeal judgment has been handed down, it seems like a good time to revisit this litigation.

Most appeal judgments in France confirm the first instance decisions (it is said that the confirmation rate is around 80%). But this one did not confirm, which makes it all the more interesting.

As a reminder, the case pitches Ethypharm as a nullity plaintiff against Merck Sharp & Dohme Corp. (MSD), defendant and owner of the patent in suit, EP 1455756.

The first topic addressed in my previous post was the assessment of whether the action was time-barred. On this aspect, the appeal judges came to the same conclusion as their colleagues below, with a slightly different reasoning.

The TGI had decided that the starting point for the 5-year limitation period was the date of the EPO Board of appeal’s decision (July 7, 2014), announced during the oral proceedings, per which the patent under opposition was to be maintained in amended form.

As noted in my post, this finding was already a deviation from earlier case law.

The Paris Cour d’appel took an even later date as a starting point, namely the day on which the amended patent was published by the EPO (September 23, 2015). Said the court: “this is when the modified patent became opposable to third parties“.

An entirely reasonable finding, but which makes it more difficult than ever to know and predict how this limitation period should be computed in general. Case law keeps going all over the place. Fortunately, the statute has now been amended so as to take away this disastrous limitation period. We will still have to live with this legal mess, but less and less so.

The other notable point in my earlier post was that I felt there may be some contradiction in the TGI’s position regarding sufficiency on the one hand and inventive step on the other hand.

As a reminder which is probably quite necessary (at least for me), claim 1 reads as follows:

A nanoparticulate composition comprising the compound 2-(R)-(1-(R)-(3,5-bis(trifluoromethyl)phenyl)ethoxy)-3-(S)-(4-fluoro)phenyl-4-(3-(5-oxo-1H,4H-1,2,4-triazolo)methylmorpholine [a.k.a. aprepitant], or a pharmaceutically acceptable salt thereof, the compound having adsorbed on the surface thereof at least one surface stabilizer in an amount sufficient to maintain an effective average particle size of less than about 1000 nm; where “effective average particle size of less than about 1000 nm” means that at least 95% of the particles, by weight, have a particle size of less than about 1000 nm.

Ethypharm’s insufficiency challenge failed at first instance, as the court noted that there was a prior U.S. patent disclosing the so-called “Nanocrystal” method, for making nanoparticles with a surface modifier adsorbed thereon, having an average size of less than 400 nm. This Nanocrystal patent also taught that such nanoparticles improve the bioavailability of poorly water-soluble actives.

Ethypharm also argued lack of inventive step of claim 1 over this Nanocrystal patent, but the attack failed. The lower court held that the teaching of the Nanocrystal patent could not be applied in an obvious manner to aprepitant, and that there were many technical uncertainties.

I was not completely comfortable with the articulation between both positions.

Maybe the appeal judges also had trouble with this approach: while they agreed that the invention was sufficiently disclosed in the patent, they held that it lacked inventive step.

Starting with sufficiency, the court tackled plausibility, an essential phase of most pharma cases. The court repeated the now well-established French criterion per which the patent must “directly and unambiguously reflect the therapeutic effect” at stake. But then they added that “it is not systematically required that the description of the patent should contain tests, this condition is not required in case of a product claim”. A helpful comment, quite in line with the Boards of appeal’s stance on the matter.

The court further remarked that the patent in suit made reference to the U.S. Nanocrystal patent, which made it plausible for the skilled person that nanoparticulate aprepitant had improved bioavailability. Ethypharm did not demonstrate that this was not the case and thus did not discharge its burden of proof. In fact, it appears that some test reports were filed by the plaintiff to support the sufficiency challenge, but they were deemed inconclusive.

Turning then to inventive step, MSD’s case was that increasing bioavailability was a complex problem, and that there were many parameters to be taken into account.

To them, reducing the size of aprepitant particles to less than 1000 nm was not an approach that the skilled person would have used.

But the court relied on expert’s evidence showing that the dissolution rate is often a limiting factor in bioavailability; and that reducing the particle size of a drug makes it possible to increase the contact surface area between the undissolved active and the solvent, which generally increases the dissolution rate. Reference was made in particular to a 1982 textbook.

MSD countered that reducing the particle size to less than 1000 nm was not commonly practiced at the priority date, and had been little explored. The court was not persuaded. Some nanoparticulate drugs were tested already in the 1990s, and it had been proposed in a general manner that a poorly soluble drug could be reduced to a nano size. The Nanocrystal technology of course was also taken into consideration. Not just the patent, but also a press release by Elan Technologies, according to which their process was broadly applicable to many poorly soluble actives.

MSD further relied on a document showing that micronization of aprepitant did not give satisfactory results, so as to show that the skilled person would not have continued with this approach. But the document was an internal one and the skilled person would of course not have been aware of it.

In the end, the court did not deny that there were several possible approaches for the skilled person, but found that the nanoparticulate approach was nevertheless obvious to try:

Even if the skilled person knew of other methods and if the EP’299 patent only showed tests on three different active ingredients, he […] knew that nanonization improved the bioavailability of poorly soluble active substances and was thus incited, based on converging information […], to start research on this pathway in order to improve the bioavailability of aprepitant when used as a drug.

The Board of appeal decision per which the patent was maintained in amended form, namely T 210/11 (Board 3.3.07) reached an opposite conclusion of course:

It results that the skilled person, looking for a solution to the problem as defined above, faces multiple possible solutions to said problem of low bioavailability of aprepitant, and would not be conducted by the teaching of documents (5), (6) or (7) to the use of a nano-particulate composition of aprepitant.

Ethypharm was not a party to the opposition proceedings at the EPO, and the Paris court may have been presented with additional evidence that the Board did not see.

But my overall impression is that this is basically a matter of the court and the board placing the inventive step bar at different heights. This may be one of those grey-area cases, with complex facts to consider, which may very well go one way or the other depending on who looks at them.

This is the end of the story – for now, unless there is a cassation appeal and the case comes back to haunt this blog again.

Here it comes again.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, October 29, 2019, SAS Ethypharm v. Merck Sharp & Dohme Corp., RG No.18/03876.

Patent still standing

The appraisal of standing in patent nullity suits in France is complex and harsh. The topic has been addressed in a number posts, for instance this one, that one or that other one.

The ruling commented upon today revisits the issue, in a quite unusual way.

Today’s case relates to the LEVOTHYROX® controversy.

LEVOTHYROX® is a drug containing a manufactured form of the thyroid hormone thyroxine (T4). It is used to treat thyroid hormone deficiency. The drug is marketed in France by Merck Biopharma.

According to a press release, the French health authorities (ANSM) requested a modification of the formulation so as to better stabilize the active upon storage. In March 2017, Merck Biopharma thus switched to a new formulation containing different excipients. A few months later, a number of patients complained about side effects seemingly caused by the new formulation. A couple hundred thousand people signed a petition demanding that the old formulation be put back on the market.

The existence and the origin of the side effects were hotly debated and I am not aware that any consensus has been reached yet as to what may have gone wrong.

Anyway, it turns out that there is also an IP aspect to this matter. Indeed, European patent EP 2885005 B1, owned by Merck Patent GmbH, protects the new LEVOTHYROX® formulation. Claim 1 is directed to a solid pharmaceutical preparation comprising levothyroxine sodium, gelatin, citric acid and a filler.

In December 2018, 139 individuals claiming to be patients affected by side effects related to the new LEVOTHYROX® formulation filed a lawsuit in front of the Paris TGI, requesting the revocation of the EP’005 patent. They were later joined by 34 additional individuals as well as a patient association, Alerte Thyroïde.

As a defense, Merck Patent GmbH claimed that the plaintiffs lacked standing. A hearing on this defense took place on December 4, 2019, and the judgment has just been handed down. The court has sided with Merck and dismissed the nullity suit for lack of standing.

To some extent, the outcome is unsurprising. As I said in the beginning, the appraisal of standing in patent nullity suits is harsh – excessively so, in my view. If even competitors of a patent owner are sometimes considered as lacking standing, a reasonable gut feeling would be that there is no way individual patients or even a patient association can have standing.

But in fact, looking at the reasons for the decision, the court seems to have actually walked a fine line when deciding the issue.

The starting point in the reasoning is article 31 Code de procédure civile, per which “any person having a legitimate interest in having a claim accepted or rejected may initiate legal proceedings, except if the law restricts the possibility to sue to specific persons […]“.

First, the court recalled the usual criteria that are applied when the litigants are competitors:

When the nullity action relates to two competing parties, the advantage expected from the action under article 31 Code de procédure civile is traditionally understood […] as being an improvement in the legal situation of the plaintiff. It is generally requested from said plaintiff that they should demonstrate the existence of a sufficient interest to free a future exploitation of the patented technology or a similar one. 

But then the court accepted that non-competitors, including members of the general public, could also have standing under article 31:

However, […] the competition / economic case is not the only situation in which a nullity suit could be initiated, and cannot define standing, which by nature is shape-shifting. Therefore, the standing of the plaintiffs, who are not competitors of the proprietor of the patent at stake but consumers and patients directly impacted, notably in terms of material and financial availability of the drug subject to a monopoly, must be appraised in concreto, based on the object and the purpose of the nullity suit […], without neglecting the fact that such an action, which aims at terminating any undue monopoly, is also useful for the general interest, since a revocation would benefit to all. 

There are different ways to achieve standing.

In other terms, the court did not completely close the door to the initiation of patent nullity proceedings by non-traditional plaintiffs. The notion of “general interest” in the last sentence is in fact pretty far-reaching.

The court went on in the following terms:

In fact, whether the grant of a patent is a compensation for investments and efforts made by the creator of the invention or for the disclosure of the invention, it confers a beneficial monopoly to its owner, and additionally an undeniable control over prices. In a context of free competition and free innovation, this is legitimate and admissible only if the validity conditions are met. It is of general interest, in particular in the pharmaceutical field and in case public prosecution, which is first and foremost in charge of defending general interest, fails to act, that an end should be put to the monopoly when the patent is invalid or merely aims at preserving a monopoly conferred by a previous patent about to expire, thus allowing competing generic pharmaceutical companies to offer accessible generic drugs at a lower cost to patients in need of the initially patented drugs. 

I have never heard of a public prosecutor filing a patent nullity suit to open up a market. But the court, based on the above statements, seems to accept the possibility that members of the public could take up this role.

In this respect, the plaintiffs precisely argued that the patent generally protects any levothyroxine formulation containing citric acid, gelatin and any filler, so that the existence of the patent prevents competitors from marketing alternative formulations with other fillers. This is relevant because the filler used in the new LEVOTHYROX® formulation, namely mannitol, was suspected to be responsible for the side effects.

The court responded to the argument as follows:

It is true that, by suppressing the monopoly on [the new formulation] in France, the revocation of the French part of the EP’005 patent […] would not only make it possible to market generics of this drug with perhaps a reduced price, but would also make it possible for other laboratories to make a formulation identical to the old formulation of LEVOTHYROX, which is, according to the plaintiffs, currently impossible because it may infringe the patent at stake which unduly covers the old formulation. 

However, as rightly noted by the defendant, the potential success of the nullity suit would not result in the automatic production and marketing of the old formulation […], which currently no longer benefits from a marketing authorization. 

[…]

The causal link between the nullity suit and the expected effect, namely that Merck or a third party should resume the manufacturing and marketing of [the old formulation] thus appears to be purely hypothetical and may not improve the legal and/or economical situation of the plaintiffs, so that they do not have standing in this case. 

In summary, the ultimate goal of the plaintiffs was to have a different levothyroxine drug available on the market. The court acknowledged that the revocation of the patent would be helpful for this goal. But it would not automatically result in the achievement of the goal, as a MA for a different drug would still be necessary – and is currently lacking.

To my mind, the reasoning is not really satisfactory. Has the court considered that a pharma company may not want to take the pain of requesting a new MA if a patent stands in the way? Therefore, can’t the revocation of the patent be considered as a necessary prerequisite for achieving the claimants’ stated goal?

At the risk of oversimplifying the discussion, shouldn’t any person or company willing to spend the (sometimes considerable) time and effort needed to revoke a patent be presumed to have a legitimate interest in the revocation? Shouldn’t the standing bar be lowered so as to only set aside abusive and frivolous lawsuits?


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, January 24, 2020, Alerte Thyroïde et al. v. Merck Patent GmbH, RG No. 18/14575.

The dead line

There is something ominous about the word “deadline” in English.

It makes you suspect some dire background. And rightly so, according to some online resources, which mention a line that you would cross at the risk of losing your life.

The French word “délai” sounds much less sinister, but the consequences of missing a “délai” are pretty much the same as those of missing a “deadline“, as a recent decision of the Paris Cour d’appel reminds us.

In this case, a French patent application was filed on November 6, 2015, claiming the benefit of the filing date of an earlier French application, namely April 1, 2015. This is what is sometimes conveniently referred to as an “internal priority claim“.

One of the requirements of claiming an internal priority is that you must provide a copy of the initial patent application (plus you must identify the modifications made in the later filing). As the applicant failed to do so upon filing the later application, the INPI issued a communication dated August 9, 2016 and notified on August 16 to the representative, inviting the applicant to submit the missing copy within a two-month period.

The applicant still did not file the requested document, so that a decision to refuse the application was issued on November 4, 2016, and notified on November 10, 2016 to the representative.

On January 8, 2018, the applicant filed a request for restoration of its rights. On August 17, 2018, the INPI issued a negative decision, holding that the request for restoration was inadmissible as it was filed past the statutory deadline.

The applicant lodged an appeal in front of the Paris Cour d’appel, which resulted in a judgment dated November 5, 2019.

The key provision in this case is article L. 612-16 Code de la propriété intellectuelle:

The applicant who failed to comply with a deadline set by the [INPI] may file a request for restoration of its rights, if it has a legitimate excuse and if the non-compliance directly resulted in a refusal of the patent application or of a request, in the lapse of the patent application or patent, or in the loss of any other right. 

The appeal must be filed […] within a two-month deadline from the removal of the cause of non-compliance. The missing act must be performed within this deadline. The request is admissible only within a one-year deadline from the expiry of the missed deadline.

[…]

The main question is that of the starting point of the one-year deadline. The INPI currently considers (and this is reflected in its Guidelines for examination, section E.3.3.1.b, Oct. 2019 edition) that the “missed deadline” starting point is the “initially missed deadline”.

As a side note, this did not appear in the previous versions of the Guidelines – I suspect that they may have been modified based on the present case.

Here, the applicant was notified on August 16, 2016 of the invitation to file the copy of the earlier filing. The deadline for filing this copy expired on October 17, 2016. The INPI thus deemed that the one-year restoration deadline expired on October 17, 2017.

The talking calendar – the must-have gadget for handling your deadlines this year.

The applicant’s defense relied on the fact that there was another possible legal remedy, namely a request for further processing. See article R. 612-52 Code de la propriété intellectuelle:

If a patent application is refused or may be refused due to non-compliance with a time limit set by the [INPI], the refusal is not issued or is revoked if the applicant files a request for further processing. The request must be filed in writing within a two-month deadline from the communication of the refusal decision. The missing act must be performed within this deadline. The request is admissible only if the required fee is paid. 

Thus, the applicant argued that the missed deadline was the two-month further processing deadline, and not the initial two-month deadline starting from the INPI communication. The request for restoration was thus filed with respect to the further processing deadline.

This reasoning will probably sound familiar to many European readers, as this is exactly the approach used at the EPO.

Applying this reasoning to the facts at hand, the deadline for requesting further processing expired on January 10, 2017 (date of notification of the refusal decision + 2 months), and therefore the one-year restoration deadline expired on January 10, 2018 – so that the request for restoration was timely filed.

But the appeal judges did not follow this argumentation. They stuck to the INPI’s interpretation of L. 612-16 and considered that the missed deadline used as a starting point must be the initial missed deadline, and not the further processing missed deadline. The INPI’s decision was accordingly confirmed.

Don’t ask me for the reasons why they chose one interpretation over the other. They just did, and there is no actual justification in the judgment.

This is all the more unfortunate as the summary of the facts reveals that two interesting case law decisions were discussed by the petitioner: a cassation ruling dated April 15, 1986, and a later judgment of the Paris Cour d’appel dated January 14, 1987.

The petitioner argued that the INPI misinterpreted the 1986 cassation ruling – from which it can be inferred that this ruling was the basis for the INPI’s position.

The facts underlying the 1986 ruling are that a patent application was refused for failure to pay the grant fee; a request for restoration was filed but it was held inadmissible as it was filed more than one year after the expiry of the time limit for paying the grant fee. The petitioner tried to take advantage of an additional two-month period corresponding to the filing of a request for further processing – to no avail.

The cassation judges stated the following: 

The non-compliance of the deadline for the request for further processing is not excluded from the provisions of [what is now art. L.612-16]. But the provisions of [what is now art. R. 612-52] do not result in extending the one-year deadline set in the second paragraph of [what is now art. L.612-16]. The Cour d’appel held that, irrespective of the grounds for the request for restoration, it is only admissible within a one-year deadline from the final date on which the initially omitted act had to be performed, and therefore rightly justified its decision. 

This is quite clear, right? The one-year deadline must be computed from the expiry of the initial deadline. Well, not so fast.

Looking at the specifics of the case that led to the 1986 cassation ruling, it turns out that, in that case, the request for restoration had been filed with respect to the initial time limit (i.e. the time limit for paying the grant fee). It had not been filed with respect to the (missing) request for further processing. 

Let’s now turn to the second case discussed by the petitioner. It is an appeal judgment which was issued after the 1986 cassation ruling. In this case, it was also the grant fee which was not paid in time. But the difference is that the applicant filed a request for restoration with respect to the (missing) request for further processing.

And the appeal judges computed the one-year deadline from the expiry of the period for requesting further processing, not from the expiry of the initial deadline for paying the grant fee: 

[…] The petition is admissible as to time limits. Indeed, according to [what is now art. L.612-16] the time limit for filing a request for restoration is one year from the expiry of the deadline not complied with. The request for further processing was due by April 17, 1982, so that the time limit for filing the request for restoration expired on April 17, 1983. The request for restoration was filed on April 15, 1983.

In summary, reading between the lines, we have:

  • On the one hand, a 1986 cassation ruling which could at first sight be seen as supporting the INPI’s position, except that the facts were different and that the relevant statement in the ruling is ambiguous. There is a reference to “the initially omitted act” but it is unclear what we should make of it. The cassation judges did simply not have to decide on a request for restoration with respect to a request for further processing.
  • On the other hand, a 1987 appeal decision based on facts similar to the present facts, and that is manifestly contradictory with the decision commented on today.

It is thus a real pity that the Cour d’appel did not seriously address these issues. 

I would also add that, one a purely pragmatic standpoint, it seems to me that there may be some contradiction in the INPI’s approach (and in the court’s present approach) to this matter. Indeed, the INPI acknowledges that a request for restoration may be filed with respect to a missed deadline for a request for further processing. This is stated in the table that you can find on the last page of the Guidelines for examination.

But what is the point in requesting restoration of right with respect to the further processing deadline, if the one-year time limit is to be computed from the initial missed deadline? I cannot think of any situation in which requesting restoration with respect to the further processing deadline would then be of any use.

I would not like to conclude this post without wishing all readers a very happy new year.

I hope that I have not missed the deadline for doing so – but hey, I have always heard that it is all right to send your best wishes until January 31. This may not be true elsewhere, but as you can see there is some cultural specificity about French deadlines.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, November 5, 2019, … v. Directeur Général de l’INPI, RG No. 18/20057.

The opposition battleground

As regular readers of this blog now know very well, the recently enacted loi PACTE authorized the government to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent in France.

This is of course a major change and an exciting development for patent professionals, in particular patent attorneys – but also INPI examiners.

I have had the privilege to work with them over the past few months as part of an opposition training program, and I must say that it has been a real pleasure. They are very well aware of the various challenges that they will face, but also enthusiastic and eager to get into it all.

A draft of the ordonnance as well as of the implementing rules (décret) has been released on November 22. It is in the process of being dissected and commented upon by various professional associations. Just like in my previous post on the draft provisions regarding utility certificates and provisional applications, there may be some changes in the final version. But we now probably have a pretty good idea of what the system will look like.

Ready for battle?

One convenient way to look at it is to break down the various provisions into two groups: those which are identical to EPO opposition proceedings, and those which are different, or which are specific to French opposition proceedings.

Oh, and I have focused on the main points only.

As an initial warning, whenever I refer to the INPI in the following, it is in fact the Director of the INPI who is formally mentioned in the draft. French law  peculiar: it is drafted as if the head of the patent office were the only person working on cases and issuing decisions…

Let’s start with the familiar waters of EPO-like provisions:

  • The time limit for filing an opposition is 9 months from the publication of the mention of grant of the patent. There can be no restoration of right with respect to this time limit, if the would-be opponent misses it.
  • Any person can file an opposition. In other terms, no standing is required, and straw man oppositions are allowed.
  • Parties must be represented by a patent attorney or an attorney at law if they reside outside of the European Economic Area.
  • The grounds for opposition will be extension of subject-matter, insufficiency of disclosure, lack of novelty, lack of inventive step, and the various sorts of exclusion from patentability / exception from patentability.
  • The opposition can be filed against all claims or only some of them.
  • The notice of opposition must comprise the identity of the opponent, the reference of the opposed patent, a statement of grounds, facts and evidence, the justification that the opposition fee has been paid (the amount of this fee has not been published yet) and optionally the appointment of a representative.
  • If the notice of opposition is defective, the opponent gets an opportunity to regularize its filing, but this needs to be done within the 9-month deadline (except for the appointment of the representative). Otherwise, the opposition is rejected as inadmissible.
  • If several oppositions are filed against the same patent, they are joined into a single opposition procedure.
  • The opposition proceedings comprise a written phase and an oral phasei.e. oral proceedings are summoned upon request of at least one party or upon decision of the INPI itself.
  • The opposition procedure is adversarial – there is thus a right to be heard for each party at every step of the procedure.
  • During the opposition proceedings, the patent proprietor may modify the claims of the patent to address a ground for opposition (but please note that the current draft specifies: a ground for opposition raised by the opponent, which is more restrictive than R. 80 EPC).
  • Of course, any amendment filed during opposition must not introduce any extension of subject-matter, nor any extension of the scope of protection. The amended claims must comply with the requirements of clarity and sufficiency of disclosure (let’s see whether the INPI adopts the same approach as G 3/14).
  • The decision on the opposition has retroactive effect back to the filing date of the patent.
  • If the patent is amended, a new patent document is published, once the decision has become final.

Let’s then turn to those provisions which are so French:

  • Oppositions can be filed not only against patents but also against utility certificates. However, SPCs cannot be opposed.
  • The timeline of the opposition proceedings is slightly different.
    • First the patentee is invited to reply to the opposition, with a deadline prescribed by the INPI (and thus not set in the draft provisions).
    • Then, the INPI sends a preliminary opinion on the case within a 2-month deadline from the expiry of the patentee’s response deadline.
    • This preliminary opinion is communicated to the parties, who are invited to file written submissions within a prescribed deadline.
    • If at least one party files written submissions at this stage, the other parties are invited to file a response within a prescribed deadline.
    • Parties are optionally summoned to oral proceedings.
    • Finally the INPI issues its decision.
  • The opposition is deemed rejected if the INPI fails to issue a decision within 3 months from the closure of the examination of the opposition. Said closure takes place either when a deadline to file observations expires, if the parties fail to file observations or request oral proceedings; or at the latest on the day of the oral proceedings.
  • Not only the scope, but also the reasons for the opposition cannot be extended after the expiry of the opposition time limit.
  • There is no equivalent to art. 105 EPC, i.e. no possible intervention of an alleged infringer after the 9-month deadline.
  • The opposition is stayed in case of claim for ownership of the patent in front of the Paris TGI, or if a claim for revocation is pending in front of a court when the opposition is filed, or if the INPI is waiting for information relevant to the opposition or the situation of the parties, or if all parties request so (for a maximum duration of four months, renewable once). This latter provision will be useful in case the parties are in a negotiation process.
  • There are four possible outcomes of the opposition proceedings: rejection of the opposition, maintenance of the patent in amended form, full revocation. And the fourth one is: partial revocation. In other terms, the INPI will look at all of the challenged claims one by one and may decide that some of them are invalid and others are valid. In that case, only the invalid claims will be revoked. This stands in sharp contrast with the EPO practice of looking only at a set of claims as a whole, a single defect in the set meaning that it has to go down completely.
  • In case of a partial revocation, the patent proprietor will be requested to provide a modified set of claims complying with the partial revocation. The modified set of claims is refused if it is not compliant.
  • The INPI may not continue the opposition proceedings in case all opponents have withdrawn their oppositions, or in case the patent has ceased to be in force.
  • An examiner having examined the patent application may not work on the opposition, but he or she can be heard during the opposition proceedings.
  • A request for limitation is inadmissible if filed when an opposition is pending. If a limitation procedure is ongoing when an opposition is filed, the limitation procedure is closed. But there is an exception if the request for limitation is in the context of a nullity suit.
  • Upon request of the winning party, the losing party is ordered to pay part or all of the costs of the winning party, within the boundaries of an official fee schedule (to be determined).
  • An appeal against the opposition decision can be filed in front of the Paris Cour d’appel within a one-month deadline from the communication of the decision. The statement of grounds of appeal needs to be filed within a three-month deadline from the notice of appeal. The defendant has a three-month deadline from the communication of the grounds of appeal to file its reply brief and possibly a counter-appeal. The parties will need to act through an attorney at law.
  • Third parties may intervene in these appeal proceedings, either in a voluntary or forced manner. Normal rules of civil procedure will apply here.
  • The court re-judges the entire case, in fact and in law. It is explicitly stated that the parties can file further grounds, evidence and arguments relative to the first instance. This does not extend to new requests, in the general sense of the term (“prétentions“), unless they are related to an intervention on appeal, occasioned by a new fact, or have the same aim as those filed in first instance, even on different legal grounds.
  • All deadlines on appeal are extended by one month for parties residing in French overseas territories and by two months for parties residing abroad.
  • The INPI will not be a party to the appeal proceedings. But it gets the opportunity to make written or oral submissions.
  • After the appeal ruling, the parties can file an appeal on points of law in front of the Cour de cassation. The INPI can also file such a cassation appeal.
  • There is an estoppel principle: a claim for nullity of a patent is inadmissible if a final decision on an opposition having the same object and the same cause has already been issued between the same parties.

This is a lot to process, and it is actually unfortunate that stakeholders have been given only something like two weeks and a half to provide their comments.

This new opposition procedure is a major development, and many provisions may have unforeseen consequences which it would be good to have time to think about.

So far, I have heard colleagues wonder or worry about two points in particular.

One is the automatic rejection of the opposition if the INPI does not issue its decision in due time.

This is one of those so-called SVR (“silence vaut rejet“) provisions that popped up everywhere a few years ago. Such automatic rejection would of course be highly unfair to the opponent.

However, I am not excessively preoccupied. We already have to live with SVR deadlines, and I am certain that the INPI will do whatever it takes not to fall into the trap of an automatic rejection. Besides, we are actually lucky that the SVR deadline is computed from the closure of the examination of the opposition: thus, the INPI will have the complete submissions at hand and can work on its decision within the deadline. It would have been much riskier if the SVR deadline had been computed, say, from the filing of the opposition – regardless of the number and timing of the parties’ submissions.

Another point that has everyone gossiping is the role of the INPI on appeal.

Indeed, the INPI can make submissions. If they make use of this right, it means that they will necessarily side with one party or the other. Besides, they even have the right to file a cassation appeal once the appeal decision has been issued. Isn’t it strange for the patent office to first have to act as an impartial arbitrator between the parties and then become a quasi-party or an actual party to the proceedings at a later stage?

Like my colleagues, I also have questions of my own.

For instance, will the INPI apply EPO-like standards or rather French court standards when examining oppositions?

I am not talking here about the problem and solution approach or about the gold standard, because I do not believe that there is a huge difference between Munich and Paris in this respect. I am mainly talking about claim interpretation. On this particular topic, the EPO and French courts could not be further apart.

The many differences between the proceedings in front of the INPI and at the appeal stage also raise some concerns.

For instance, there can be no intervention in first instance, but there can be on appeal. Furthermore, as far as I understand, the opponent will be severely limited in terms of any new objections that it may come up with in first instance, after the expiry of the 9-month time limit; but new objections, on the other hand, may be allowed on appeal. Isn’t this contradictory?

Once we have the final provisions in front of us, there will be a lot of strategic planning to make, both in terms of patent drafting (think about this notion of partial revocation, which is certainly an incentive to have as many validity fallbacks in a granted patent as possible) and in terms of freedom-to-operate / litigation.

To be continued, for sure!