Orange on a new track

One of the first posts of this blog was dedicated to a prominent lawsuit between two telecom operators, Orange and Free. As was reported at the time, Orange claimed infringement of the French part of its European patent EP 2044797.

Orange lost in first instance, as the Paris Tribunal de grande instance (TGI) revoked the patent in a judgment dated June 18, 2015. Some of the claims were found to lack novelty, while others were found to be directed to computer programs as such, i.e. were found not to be directed to patent-eligible subject-matter.

Orange lodged an appeal against this decision on July 27, 2015 – which as far as I can tell is still pending. However, there was an interesting side development, which leads me to today’s discussion.

On August 26, 2015, Orange filed a request for limitation of the French part of the European patent at stake. This is now a classical move in patent litigation in this country: amending claims so as to render a nullity challenge moot. Since the confirmation rate at the appeal stage is relatively high, the limitation of a patent after a revocation in first instance is sometimes the only way to shake things up for the patentee.

On September 2, the Institut National de la Propriété Industrielle (INPI) accepted the request for limitation. This is only one week after the request was submitted. This is fast, isn’t it? As in light’s speed fast, actually. A centralized limitation of the patent at the European patent office (EPO) would certainly have taken much longer, at least several months. This is certainly a strong incentive for going the national way when considering the limitation of a patent.

Free, the alleged infringer and nullity claimant, that prevailed in first instance, lodged an appeal against the limitation decision. Appeals against decisions issued by the INPI are handled by the Paris Cour d’appel. In this case, the appeal gave rise to two judgments, both dated September 9, 2016.

Why two judgments? Well, part of the case made by Free was that several provisions of the Code de la propriété intellectuelle (CPI) are contrary to the French constitution. This what is called a QPC, which stands for “question prioritaire de constitutionnalité” (or priority constitutionality question). QPCs are referred to the Conseil constitutionnel – which is our supreme court for constitutional issues – but only after passing two filters. The first filter is that the court to which the QPC is submitted must accept to forward the QPC to the Cour de cassation or the Conseil d’Etat (respectively judicial supreme court and administrative supreme court). The second filter is that the Cour de cassation or the Conseil d’Etat must then accept to forward the QPC to the Conseil constitutionnel.

The QPC system is out of the scope of the present post. It will suffice to say that in the present litigation the QPC was handled separately from the rest of the case, hence the two judgments.

The constitution - beautiful as a pyramid. But wait - this is not the right constitution is it?
The constitution – beautiful as a pyramid. But wait – this is not the right constitution is it?

However, the outcome was similar as both Free’s appeal per se and its QPC were held inadmissible.

There are not many details in both judgments regarding Free’s arguments on the merits. It is simply stated that they claimed there was “an absence of clarity and concision of the limitation, which, in the absence of a corresponding description, is not a limitation“.

The court discarded these objections to the limitation with the following paragraph:

[…] The arguments made by Free and Freebox in favor of their request for cancellation of the decision of the INPI’s director can in fact be analyzed as arguments of nullity of the patent which is asserted against them in the context of the infringement suit […]. These arguments intend to call into question the limitation itself, namely the conformity of the amended claims to the applicable legal provisions. They pertain to the jurisdiction of the judge in charge of controlling patent validity, which in this case is actually already involved. This jurisdiction extends to arguments relating to an alleged extension as well as relating to a lack of clarity of the claims or their absence of support in the description. 

This finding will not come as a surprise to all those familiar with previous case law on limitation proceedings. It is consistent with a number of previous rulings. Courts are not keen on allowing appeals against national limitation decisions; they believe that whether the limitation complies with the requirements of the CPI should be handled in the context of a nullity action or claim.

However, to some extent this established case law is problematic, as many observers have long realized. Indeed, grounds for nullity (be it of a French patent or a French part of a European patent) include inter alia lack of novelty, lack of inventive step, insufficiency of disclosure, extension of subject-matter and extension of the scope of protection. This list of grounds for nullity is provided in article L. 613-25 CPI for French patents and article 138 EPC for European patents (to which article L. 614-12 CPI makes reference).

However, a lack of clarity or concision of the claims, or a lack of support of the claims by the description, are not grounds for nullity. All European practitioners know very well that lack of clarity or support by the description are not grounds for opposition at the EPO – well the same is true of grounds for nullity.

On the other hand, clarity, conciseness and support by the description are requirements which are to be taken into account in examination proceedings but are not supposed to be reviewed in a nullity suit.

Importantly, these requirements are also taken into account during limitation proceedings – which may be viewed as a partial reopening of examination. This is true of centralized limitation at the EPO, but also of national limitation. See in particular article L. 613-45 CPI, which sets a number of conditions to be examined by the INPI when a request for limitation is filed:

[…] If, when the limitation is requested, the amended claims are not a limitation with respect to the previous claims of the patent, or if they do not meet the requirements of article L. 612-6, this is notified in a substantiated manner to the petitioner. A time limit is set to regularize the request or file observations. If there are no regularization and no observations overcoming the objection, the request is rejected by a decision of the director of the INPI. […]

As for article L. 612-6 referred to above, it reads:

The claims define the subject-matter of the protection which is requested. They must be clear and concise and be supported by the description. 

Therefore, it seems that clarity, conciseness, and support by the description are legal requirements that the INPI must check when examining a request for limitation. And those are not grounds for nullity. Thus, if amended claims that are unclear, lack conciseness, or are unsupported by the description (which is not the same as covering subject-matter extending beyond the contents of the application as filed) are nevertheless accepted by the INPI, it would make sense to be able to challenge the work done by the INPI in the context of an appeal against the limitation decision.

But the Cour d’appel, in this case like in previous ones, said this was the job of the judges in charge of the nullity complaint. Therefore, we can only hope that, for reasons of consistency, those judges will actually and seriously review compliance of the amended claims with article L. 612-6 CPI – even if it is not part of the official list of grounds of nullity…

Another argument made by Free was that a number of provisions of the CPI contravene non only our constitution, but also article 6 of the European Convention on Human Rights (ECHR) on fair trial. The court noted that the objection based on article 6 ECHR was actually the same as the objection which gave rise to the QPC. Thus:

First, the INPI is an administrative public institution which cannot be subjected to all rules on fair trial. Second, it was already stated that this [QPC] is the subject-matter of a distinct procedure registered under number RG 15/24934 and is dealt with in another judgment also issued today. Free and Freebox can therefore not ask the court to decide on a question which they request should be examined first by the Conseil constitutionnel. 

If I understand the first sentence in this paragraph, I cannot help wondering about the second part. If my law school memories are correct, the Conseil constitutionnel does not control compliance of French laws with the ECHR or any other international treaty. This task is left to judicial and administrative judges. It seems that Free’s objections to the law were basically the same from the viewpoint of the ECHR and of the French constitution. But there were apparently two distinct legal bases for the objections, and I wonder whether it was correct to lump them together.

So, let’s move on with the second judgment on the QPC. The legal provisions which were challenged in the QPC were articles L. 613-24, L. 613-25 and L. 614-12 CPI. The first one is the main legal provision allowing a patentee to request a limitation of its patent. The second one contains the grounds for nullity of a French patent and specifies that the patent may be limited in the course of a nullity action. The third one provides that the grounds for nullity of a European patent are set forth in article 138 EPC and that it is possible to limit the patent in the course of a nullity action. According to Free, these articles breach fundamental rights enshrined in the constitution, including the right to a fair trial.

What was the court’s reaction? Well it simply dismissed the QPC by noting that

the admissibility of the [QPC] which is raised in the course of the appeal against the decision of the INPI of September 2, 2015 depends on the admissibility of said appeal.

Since the appeal was dismissed as inadmissible, as noted above, the QPC was therefore also held inadmissible.

This is a little bit of a vicious circle. According to this reasoning, how can one possibly challenge the constitutionality of a legal provision which makes an appeal inadmissible?

We will see what happens in case Free raises the QPC again in the course of the appeal proceedings in the merits.

As a last word, it may be interesting to look at the claims as limited, which can be found here on the online register. Claims 1, 4, 9 and 11 were modified by the insertion of a number of additional features.

Also, claims 12 to 15 directed to a software product and to a support for the software were deleted. Those were the claims which were found in first instance to relate to excluded subject-matter.

The deletion of these claims looks like a good move, strategically speaking. But it is too bad that we will not get the Cour d’appel’s take on the patentability of claims directed to “software products” as well as software supports.

CASE REFERENCES: Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/21319; and Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/24934.

Of employees and drugs

No, this is not a post about employees who do drugs. In fact, contrary to what the title suggests, there is nothing in common between employees and drugs in my mind, except that I would like to briefly report on two different subjects and that it is somewhat more convenient to group both in a single article.

Drugs first, with a follow-up on the sofosbuvir case which was reported on earlier on this blog.

As readers may remember, an opposition division of the EPO maintained Gilead’s patent EP 2203462 on a blockbuster drug for the treatment of HCV infection further to the oral proceedings which took place on October 4-5, 2016. Several granted claims were deleted in the amended version of the patent due to extension of subject-matter, including a claim specifically directed to sofosbuvir. One remaining claim recited a generic formula which could be interpreted either as covering both sofosbuvir and its stereoisomer, or as covering only the mixture of sofosbuvir and its stereoisomer. This left a number of observers wondering what the amended patent is really about, and more importantly whether it sill protects Gilead’s drug.

The update is that the written decision of the opposition division was issued on October 31, 2016. It can of course be downloaded from the online register.

In this decision it seems quite clear that the opposition division has chosen the second interpretation. In other terms, they believe that the main remaining claim covers a mixture of sofosbuvir and its stereoisomer. Indeed, the term “racemate” is repeatedly used in the decision when referring to the subject-matter of the claim.

This is especially clear in the section of the decision which deals with the ground of opposition of insufficiency of disclosure. It was alleged by one of the opponents that the patent did not contain enough information to make the individual stereoisomers. The opposition division rejected the objection with the following statement:

The OD considers that claim 1 is directed to a racemate i.e. a mixture of the enantiomers and not the pure enantiomers. As indicated by the Patentee it is not contested that the racemate of claim 1 can be produced. This interpretation of claim 1 means that it is not necessary to come to a decision as to whether or not the patent in suit sufficiently discloses how to isolate and characterise the enantiomers. This issue is not relevant to claim 1. The OD considers that the auxiliary request 1 meets the requirements of Art. 83 EPC.

So, if one follows the opposition division’s interpretation, it seems that the amended patent may no longer cover Gilead’s drug, which is as far as I understand a pure isomer and not a mixture. But here is the catch: national courts are not bound by the interpretation put forward by the EPO. As regards French courts, many illustrations of this have already been provided in previous posts. So, the conundrum is still there. Also, it is all but certain that multiple appeals will be filed. So, in 2 to 5 years we will be able to read the Board’s take on this issue.

But we will not have to wait that long to comment on the case again, as new interesting developments still keep coming up. In a letter dated November 3, 2016, the proprietor’s representative requested a correction of the minutes of the oral proceedings, as well as of the decision. She stated that the minutes and decision misrepresent the patentee’s position regarding the scope of claim 1.

Indeed, the opposition division reported that the patentee had stressed that claim 1 “does not embrace individual stereoisomers“; whereas in fact, says the representative’s letter, the patentee always expressed the view that individual stereoisomers are “within the scope of claim 1” but that claim 1 “does not particularize individual stereoisomers“.

Even if the opposition division were to correct the decision and the minutes as requested by the patentee (which could be a long shot), the opposition division’s own assessment of the scope of claim 1 would remain unaltered. But the patentee’s actual statements during the oral proceedings might possibly be of relevance in front of a judge, which is the reason for this pre-appeal move.

Interestingly, the representative asked for new oral proceedings if the request for correction were to be rejected. So, make sure to grab your bucket of popcorn and to watch the comments section below for any update on this matter – all the more so that one of the opponents also made a (different) request for correction. The opposition division’s job is certainly not an easy one in such a high profile case.

As a side note, the decision of the opposition division contains a number of other interesting aspects. Entitlement to priority was challenged, which gave rise to a review of U.S. law in relation to assignments. There is also a long discussion on the public availability of a document D5 which is a university thesis. The opposition division came to the conclusion that the document was not part of the prior art because, on the balance of probabilities, there seems to have been a bar on access to the document at the relevant period of time.

The inventive step section is also noteworthy. Several starting points were taken into consideration by the opposition division, and the surviving claims were found inventive over all starting points, the technical problem being the provision of alternative HCV inhibitors.

Now, here comes the “employees” part of the post which, as I warned, is truly unrelated to the first part.

A device for employees' drug screening
A device for employees’ drug screening

The French patent and trademark office (INPI) has recently released an extensive study on compensation policy for employees’ inventions.

According to French law, all inventions made by employees in the context of a task assigned to them by their employer (be it a general task assigned in the employment agreement or a specific task assigned during the course of employment) belong to the employer. But the employer must pay a bonus to the employees – or “rémunération supplémentaire“.

The core of the INPI’s study is a survey on how businesses deal with this legal requirement. This is quite enlightening as the statute does not provide many details and leaves it open how the compensation should be calculated and when it should be paid. Case law on this topic has provided some guidelines without however setting any generally applicable rules.

There are many interesting questions in the survey, but I picked a few ones which I found particularly blog worthy:

First, the form of the compensation. 60.5% of companies offer a lump sum-only compensation. Only 1.2% provide a compensation which is entirely dependent on whether/how the invention is exploited. The rest of the surveyed rely on a combination of both. Lump sum-only systems are certainly easier to implement (and potentially cheaper). But compensation systems which somehow take into account the exploitation of the invention might be more resistant to a court challenge.

Second, the points in time at which the compensation is paid. There are many different possibilities here, and in some companies several installments are paid over time. Thus, bonuses are typically paid when the initial patent application is filed (76.5% of respondents); when patent applications are filed abroad (33.3%); when a patent is granted at the EPO or abroad (34.6%); during exploitation of the invention (33.3%); etc. Interestingly, 8.6% of the surveyed said an installment is paid as soon as the employer becomes aware of the invention.

Third, the amount of the compensation. This is of course a key aspect. The study makes a distinction between lump sum-only compensation systems and mixed compensation systems (wherein the exploitation of the invention is partly taken into account):

  • In lump sum-only systems, the median value of the minimum awarded bonus is 500 €, while the median value of the maximum awarded bonus is 2,000 €. The maximum amount reported in the entire survey is 11,000 €.
  • In mixed systems, the median value of the minimum awarded bonus is 400 €, while the median value of the maximum awarded bonus is 15,000 €. The maximum amount reported in the entire survey is 105,000 €.

In summary, the span is broader in mixed systems, with a shift towards higher compensations. I assume that the higher bonuses must be rare: they must correspond to exceptionally valuable inventions.

The study also contains a breakdown of lump sum installments, depending on the point of time at which they are paid. For instance, in the majority of cases, the bonus for the initial patent application filing is between 500 and 1,000 €. But foreign filing bonuses and patent grant bonuses are somewhat higher, with a majority of cases between 1,000 € and 2,500 €.

Fourth, the frequency of disputes between an employer and its inventors. Fortunately, 67.2% of those surveyed reported no dispute. In 10.1% of cases, the employer received at least one complaint from an inventor. In 10.1% of cases, a dispute had to be handled by the national conciliation commission (CNIS, Commission nationale des inventions de salariés). In 6.3% of cases, a dispute went as far as a lawsuit in front of the Tribunal de grande instance (TGI).

If we add the CNIS and TGI cases, this is 16.4%, which seems to me like a relatively high dispute rate.

The study contains a number of other interesting data. It offers a comparison with a similar study performed in 2008. It provides practical examples of compensation systems set up by a number of companies, such as Air Liquide. This should be most useful for those businesses which still need to set up their own compensation system. In this respect, 7.4% of those surveyed still do not have a compensation system in place, although this is required by the law. My guess is that among those not surveyed, including many IP-unaware SMEs, the proportion could be significantly higher.

The study also provides a comparison of the French legal framework with other systems abroad.

Some of the annexes are also useful. One of them provides a list of bonuses awarded by the CNIS between 2011 and 2015. The amount awarded by invention ranges from 333 € to 50,000 €, with a total amount (for all inventions in dispute) ranging from 1,000 € to 300,000 €. This broad range certainly corresponds to a large variety of inventions, from useless ones to extremely profitable ones.

Another annex provides a list of damages awarded to employees by courts of law (as a compensation for unpaid invention bonuses) in the past few years. Again, the span is broad. However, the highest amount on the table (more than 1,000,000 € for two inventions) was in fact in a case where the inventions were not made in the context of a task assigned to the employee and therefore pertained to a different legal regime – one where the employer has a right on the invention but must buy the invention from the employee.

In summary, this is a must-read in particular for in-house patent attorneys and more generally for all involved in employees’ inventions in this country.

Biological patents: an endangered species

Last August, while most of the patent profession was enjoying well-earned holidays, the Code de la propriété intellectuelle (CPI) was amended in a way that may significantly alter the fate of patents on biological materials.

So much so that my colleague Lionel Vial wonders whether France may become a safe haven for copies of patented plants.

Here are his thoughts on the subject.

The so-called law for the recovery of biodiversity, nature and landscape dated August 8, 2016, which entered into force on August 9, 2016, has introduced two amendments into the Code de la propriété intellectuelle (CPI).

The first amendment is the addition of a new paragraph in article L. 611-19 CPI:

I – The following shall be unpatentable:

1° Animal varieties;

2° Plant varieties as defined in Article 5 of Regulation (EC) No. 873/2004 […];

3° Essentially biological processes for the production of plants and animals. A process that consists entirely of natural phenomena such as crossing or selection shall be regarded as such;

3° bis Products entirely obtained by the essentially biological processes defined in 3°, including the elements constituting these products and the genetic information they contain;

4° Processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, as well as animals resulting from such processes.

II – Notwithstanding the provisions of (I), inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.

III – The provisions of I (3°) shall be without prejudice to the patentability of inventions which concern a technical process, in particular a microbiological one, or a product obtained by means of such a process; any process involving or resulting in or performed upon a microbiological material shall be regarded as a microbiological process.

According to parliamentary discussions during the lawmaking process, this amendment was essentially triggered by decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) of the Enlarged board of appeal of the EPO. As a reminder, these two decisions provided that the exclusion of essentially biological processes for the production of plants from patentability in article 53(b) EPC does not extend to product claims directed to plants or plant materials such as plant parts.

The idea was also to push for a modification of European Union law, in particular of Directive 98/44/EC, after similar amendments were made in German and Dutch national laws (see Patentabilty of Plants in epi information 4/15:156-168).

However, the French version of this new exclusion from patentability is broader than a prohibition of patents on products entirely obtained by essentially biological processes, like in Germany and the Netherlands. Indeed, the exclusion also encompasses elements constituting these products and the genetic information they contain.

According to statements made by members of parliament promoting this amendment, the aim was to further prevent native traits of plants from being patented.

As a consequence, the exact scope of this new exclusion from patentability is not simple to delimit. Indeed, from a teleological point of view, it appears that elements from plants previously occurring in nature are also intended to be excluded from patentability by this provision. In contrast, based on a literal approach, only elements from plants entirely obtained by essentially biological processes, and thus obtained by human action, should be excluded from patentability. This would also be consistent with article 3.2. of Directive 98/44/EC per which

Biological material which is isolated from its natural environment may be the subject of an invention even if it previously occurred in nature.

The impact of the amendment of article L. 611-19 CPI should nevertheless be relatively limited, as it applies only to French patents. Besides, the INPI (French patent and trademark office) had already decided, before the entry into force of the new law, that it would not apply G 2/12 and G 2/13 and that it would refuse to grant French patents pertaining to biological material obtained by essentially biological processes.

But lawmakers also added a third paragraph in article L. 613-2-3 CPI which defines the protection conferred by a patent on biological material and which applies both to European and French patents (possibly including those already granted before the entry into force of the new law):

The protection conferred by a patent on a biological material having specific characteristics as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication and having the same characteristics.

The protection conferred by a patent on a process for producing a biological material having specific characteristics as a result of the invention shall extend to biological material directly obtained through that process and to any other biological material, derived therefrom, by reproduction or multiplication and having the same characteristics.

The protection conferred by a patent relating to a biological material having specific characteristics as a result of the invention does not extend to biological materials having these specific characteristics, obtained independently from the patented biological material and by an essentially biological process, nor to biological materials obtained therefrom, by reproduction or multiplication.

Our readers may have difficulties determining the exact scope of this exclusion from patent protection. If so, we would be inclined to think that this is not entirely due to the translation, as the French text itself is quite cryptic.

Let’s try to get things straight.

The aim of this amendment is mainly to prevent seed makers who use essentially biological processes to generate genetic diversity when producing new seeds from being prohibited to use or sell the new seeds thus obtained because of existing patent rights.

An enlightening example for understanding the motives of the lawmakers in this regard relates to the aphid-resistant lettuce case which was referred to by several members of parliament during the debates.

In this case, the French seed maker Gautier Semences, a family business, was allegedly forced into a license agreement with Rijk Zwaan in respect of European patent EP 0921720, to be able to continue to market the aphid-resistant lettuce seeds it had been selling before the patent was filed.

As a side note, claim 1 of the patent as maintained in amended form after opposition proceedings reads as follows:

Lettuce plants of the species Latuca sativa L. which are resistant to the aphid Nasonovia ribisnigri due to presence in the genome of the Nr resistance gene, characterized in that the genetic information responsible for the CRA phenotype is absent from the genome of the plant at least to such an extent that in the presence of the Nr gene in homozygous condition the CRA phenotype is not expressed.

But how on earth could this patent be enforced against Gautier Semences, as they should benefit from prior user rights? In addition, shouldn’t there be a serious novelty issue in view of the seeds marketed by Gautier Semences?

The response is that in theory Gautier Semences should indeed have been immunized against the effects of Rijk Zwaan’s patent. However, evidence of prior user rights or of public prior use may be difficult to provide, especially for an SME.

The new provision should therefore facilitate the defense of those marketing biological materials covered by a patent, when the materials were obtained by an essentially biological process. However, it will probably still be necessary for those wishing to take advantage of this provision to prove the latter fact.

Besides, it should be noted that the new provision goes beyond simply addressing situations such as the above aphid-resistant lettuce case, as it applies to any biological material obtained by an essentially biological process, irrespective of whether it was obtained before or after the patent was filed.

Now that we have a better view of the aim of the new provision, let’s examine two interesting consequences.

The first one is in relation to the meaning of the expression “essentially biological processes”.

At least we can tell that this plant material was not obtained by an essentially biological process.
At least we can tell that this plant material was not obtained by an essentially biological process.

This expression is not defined as such in the rest of the statute. Reference is made to “essentially biological processes for the production of plants and animals” in Article L. 611-19 3° CPI. The same article also provides that “processes that consist entirely of natural phenomena such as crossing or selection shall be regarded as [biological processes]”.

Accordingly, it is possible that the expression “essentially biological processes” in Article L. 631-2-3 CPI could be construed as not being limited to processes entirely consisting of natural phenomena such as crossing or selection.

This may be apparent from the parliamentary history of the new provision which, until the last round of amendments and vote (out of 7!) still recited:

The protection defined in the first paragraph of the present article does not extend to the biological materials entirely obtained by the essentially processes defined in the third paragraph of part I of article L. 611-19 CPI.

The result of this last minute amendment, the justification of which was to protect the French seed industry, was to cancel any explicit reference to a process that entirely consists of natural phenomena such as crossing or selection being regarded as a biological process.

A consequence could therefore be that plants obtained by a process involving, among steps of a biological nature such as crossing or selection, a step of random mutagenesis, and having properties similar to a plant covered by a patent, could be considered as being obtained by an essentially biological process and would thus be excluded from patent protection.

Indeed, the French union of seed makers (Union Française des Semenciers) for instance considers that random mutagenesis, e.g. by the use of chemical agents or ionizing radiations, yields native traits, i.e. traits that could be obtained through natural processes

It will be interesting to see how case law will develop in this regard, especially in view of new mutagenesis techniques, such as the superstar CRISPR/Cas9 technique for which Monsanto has just secured a non-exclusive license.

Another consequence of this last minute amendment, which might be seen as a huge side effect, is that the exclusion from patent protection set by the new provision in article L. 613-2-3 CPI is not confined to plants and animals but now encompasses all biological materials and potentially microorganisms.

Again, it remains to be seen how patents pertaining to isolated microorganisms endowed having specific characteristics, e.g. food transformation or health properties, will be enforced against microorganisms having these characteristics but which were isolated independently from the patented microorganisms.

At present, there is no way for patentees to escape the new provision. However, there might be one in the future owing to the Agreement on a Unified Patent Court. Indeed, the limitations of the effects of a non-opted out European patent will be defined by Article 27 of the Agreement… and not by the French statute. That is, if the agreement ever enters into force…

Many thanks, Lionel. Struggling to figure out what a new legal provision exactly means, and guessing about unintended fallout are probably the perks of every single patent law reform.

Conformity of the new provisions to the biotech directive 98/44/EC could also be an interesting and tricky question. All the more so that the European Commission released a notice which was published in the Official Journal of the European Union a few days ago.

The notice addresses a number of aspects of the biotech directive. It is in particular stated that:

The Commission takes the view that the EU legislator’s intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

The Commission’s view is thus contrary to the position taken by the Enlarged Board of Appeal and on the face of it consistent with at least part of the recent amendment of French law.

Clearly, patentability of biological materials in Europe is on moving grounds right now. I would not be surprised if there were more episodes of a tomato, brocoli or lettuce saga coming up in the near future.

Useless drawings

If anyone still had a doubt that French courts have gotten really tough on extension of subject-matter, despite previous indications to this effect (here, here, here and there), the present post may come as a final confirmation.

The patent which was revoked this time is EP 1215336, in the name of Paper Machinery Technology Italia SpA (or PMT Italia) – as first reported on this French blog. As the name of the company suggests, the patent relates to a machine for manufacturing paper.

PMT Italia sued French Alps-based ABK Machinery for infringement of the patent in February 2012. The defendant lodged a nullity counterclaim which was successful, according to a judgment from the Paris Tribunal de grande instance dated May 7, 2014.

PMT Italia appealed. The appeal proceedings were suspended between January 2015 and June 2016, as ABK Machinery went bankrupt, before resuming in the presence of the court-appointed liquidator. On October 7, 2016, the Cour d’appel confirmed the first instance judgment.

Claim 1 of the patent as granted reads as follows:

A counterblade assembly (10) for a wet section (1) of a paper machine, comprising a fixed structure (13) fixed to a frame (5) of the machine; a counterblade (9) connected to said fixed structure (13) and movable, with respect to it, by actuating means (25) to exert pressure on two wires (2, 3) travelling between said counterblade (9) and a guide surface (8) along a substantially horizontal traveling path (P); and connecting means (22) interposed between said counterblade (9) and said fixed structure (13), characterized in that said connecting means (22) are articulated-parallelogram type connecting means and include a plurality of articulated rod elements (16) hinged to said fixed structure (13) and to said counterblade (9) about respective horizontal axes (A, B) perpendicular to said travelling path (P).

In the above paragraph, expressions in bold are those which were added relative to claim 1 as filed.

This modification was introduced by the applicant in response to the sole communication from the examining division during examination proceedings. Here is what the representative wrote in the letter to the EPO regarding compliance with Art. 123(2) EPC:

The added feature in the claim is at least implicitly disclosed in the description as originally filed (page 5, second paragraph) and clearly and unambiguously disclosed in the drawings (figs. 2 and 4). Therefore, the amendment does not contravene art. 123(2) EPC. However, an explicit support has been added in amended sheet 5 of the description.


Amended drawings 1 and 2 are also filed, with added reference signs for axes A, B and added reference signs P1, P2 in fig. 1.

Therefore, although an implicit support for claim 1 was supposed to be present in the application as filed, it appeared necessary to modify the description and drawings to make the support more explicit.

Clearly, the court was not very fond of this approach.

The judges started by looking at the modified paragraph of the description, which reads as follows:

More specifically, each connecting assembly 22 comprises two pairs of elements 16 located on opposite sides of post 15 and bar 21, and each defined by two parallel elements 16 extending in a substantially horizontal direction. Each element has one end 16a hinged to post 15, and one end 16b hinged to bar 21 about respective horizontal axes A, B that are perpendicular to the traveling path P of wires 2, 3.

Again, the underlined phrase corresponds to the addition relative to the application as filed.

Says the court:

The respondent rightly notes that, in the original application, nothing taught the skilled person […] about the orientation that the articulation axes should have, namely a position perpendicular to the direction of travel of the wires, for implementing the invention as recited in the claim as amended during examination proceedings. 

Indeed, the paragraph relied upon […] does not contain nor suggest any information on this orientation which was precisely set at 90° during examination proceedings, and the appellant wrongly claims that it is implicitly disclosed. 

Quite frankly, I have not fully studied the application, but the above assessment seems to make a lot of sense. The original paragraph at stake was simply silent on the orientation of the articulation axes.

The next step in the court’s reasoning is probably more controversial, though. Indeed, the court stated that Figures 2 and 4 of the original application as filed could not possibly be relied upon

insofar as the implicit disclosure from the above-mentioned second paragraph on page 5 cannot be acknowledged; the drawings are optional, they are meant to supplement the description which is the only one which is mandatory, since it is not possible to protect something which is claimed without being described (so as to interpret it), and not the other way around.

It seems that the court introduced a hierarchy between the description and drawings (because the presence of a description is mandatory whereas drawings can very well be omitted). According to this hierarchy, the drawings could not be used as the sole support for a claim amendment.

There can certainly be valuable arguments for this approach, but it is contrary to the case law of the Boards of appeal, per which drawings are “to be treated on an equal footing with the other parts of the application” (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, July 2016, section II.E.1.12.1, p.453).

It is in fact also contradictory with earlier case law from the Cour d’appel itself. Indeed, at least in a judgment Knauf Insulation v. Saint-Gobain Isover dated May 16, 2014, the court accepted that a certain claimed feature could be derived from the drawing figures of the application as filed.

In the present case, the stricter standard applied made all the difference, because it seems that the perpendicular orientation of the axes recited in claim 1 of the granted patent with respect to the traveling path P was indeed visible on the drawings.

This does not imply that the amendment was necessarily allowable by the Boards of Appeal’s standards, though. Indeed, according to the latter, “the EPC does not prohibit the amendment of claims to include features from drawings, provided the structure and the function of such features were clearly, unmistakably and fully derivable from the drawings by the skilled person and not at odds with the other parts of the disclosure. Nor could any element be dropped” (Ibid.). A thorough analysis would thus be necessary to come to a conclusion -which was not performed by the court.

Sometimes drawings are the crux of a patent
Sometimes drawings are the crux of a patent

There are two different ways of looking at this, a pessimistic one and an optimistic one.

The pessimistic view is that the court made an error of law by conflating support of the claims in the description and extension of subject-matter, or in other terms Art. 84 EPC and Art. 123(2) EPC. Indeed, Art. 84 EPC, which was explicitly cited in the decision, provides that the claims “shall be clear and concise and be supported by the description“. Note: “by the description“, the law says, and not “by the description and/or the drawings“.

But non-compliance with Art. 84 EPC is not a ground for revocation of a granted patent. Only non-compliance with Art. 123(2) EPC is (see Art. 138(1)(c) EPC). And the latter broadly makes reference to “the content of the application as filed“, without distinguishing between the original description, claims and drawings. In summary, according to this pessimistic view, the court had it all wrong.

But there is a more optimistic view, which is that the court in fact made a thorough assessment of the application as filed, and came to the conclusion that, in this particular case, the amendment could not possibly be justified by the drawings.

The reasoning is not sufficiently explicit to definitively exclude one of these two views, but the optimistic one can be supported by the following statements in the judgment.

First, the court noted that the description makes it clear that variations can be made relative to what is depicted in the drawings. If my understanding is correct, the added feature was therefore considered by the judges as a non-essential, or even unimportant one, in view of the original disclosure, so that the skilled person would not have isolated it from the disclosure to include it in the main claim.

Second, the court emphasized that the applicant heavily relied on the added feature during examination proceedings in support of inventive step. For the court, “the new claim brings a technical contribution to the invention, it does not merely correspond to a reformulation of the technical problem and of its solution which could be deduced from the overall content of the application as filed“.

Again, trying to translate what is meant there, the point is the added feature completely changes the problem at stake and its solution. As this change was not derivable from the original application, the addition is unallowable.

In summary, if the optimistic view is correct, the analysis made by the French judges may not be that different from the analysis that a Board could have made, after all.

Anyway, claim 1 was held invalid. The same applied to dependent claims 2-7, quite easily so as the patentee did not develop any specific argumentation to defend these claims.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, October 7, 2016, Paper Machinery Technology Italia SpA v. SA ABK Machinery, RG No. 14/16544.