When early means late

One of the things I like best about blogging is I can sometimes hear interesting whispering from my flock of little birds.

Recently, little birds flying from Munich have brought me tidings of significant developments about to take place at the EPO, in the form of a new program called User Driven Early Certainty.

It turns out that the EPO will introduce the possibility for applicants to postpone the start of substantive examination for a maximum period of 3 years. The new program is scheduled to kick off on July 1, 2018 – in other words, tomorrow.

We have been hearing rumors about this for quite a while, but now more details start being available – finally. As a disclaimer, the explanations below are based on a preparatory document issued by the EPO. Some provisions may of course change when they are finally implemented.

One big little bird.

Here are the main highlights.

First, the procedure remains unchanged up until conclusion of the search stage.

Second, as a new procedural option, the applicant will be given the opportunity to request a postponement of the start of substantive examination. This will need to be done within the 6 months’ time window for filing a reply to the European search report or supplementary European search report (R. 70 and 70a EPC) or to an international search report drawn up by the EPO, after entering European regional phase (R. 161 EPC).

This request will need to be filed online using a dedicated form. It should be filed together with the request for examination or confirmation of an earlier examination request and, where applicable, the reply to the search opinion.

If the request is validly filed, the EPO will not begin substantive examination of the application before the expiry of a 3 year-period calculated:

  • from the expiry of 6 months after the date on which the European Patent Bulletin mentions the publication of the European search report, for an EP-direct application; or
  • from a valid entry into European regional phase, for a Euro-PCT application.

For divisional applications, the postponement period will be limited in relation to the earliest application, namely:

  • 5 years calculated from the earliest application’s filing or priority date, for an EP-direct application; or
  • 3 years from entry into European regional phase of the earliest application, for a Euro-PCT application.

It can be derived from these rules that the postponement period should normally end approximately 5 years from the priority date for an EP-direct application, and up to 5 years and a half (67 months) from the priority date for a Euro-PCT application.

Furthermore, the applicant can file a request to lift the postponement at any time. Filing a request for PACE or PPH would also have the same effect.

The request for postponement will be free, but the payment of existing fees (examination fee, designation fee, renewal fees, etc.) will still have to be performed in due time and cannot be delayed owing to the postponement.

In order to preserve the interests of competitors potentially affected by pending patent rights, a postponement is lifted if the EPO receives third party observations, provided that they are non-anonymous and substantiated.

By “substantiated” is meant that at least one specific objection (on novelty, inventive step, clarity, sufficiency of disclosure, non-patentable subject-matter, exceptions to patentability, industrial applicability or unallowable amendments) must be raised together with a brief indication of the facts and evidence presented in support of this objection.

I assume that the condition that the observations should be “non-anonymous” will still be fulfilled even if the third party is solely identified as a law firm, or a straw man, or a straw man in a law firm. There is no requirement for the third party to show a legitimate interest in lifting the postponement.

Also, if substantiated and non-anonymous third party observations are filed before the applicant requests a postponement, the request for postponement will be rejected.

When the postponement period ends, the subsequent fate of the application depends on how the postponement is lifted:

  • If the postponement ends due to the expiry of the maximum 3 year-period, the case will then be treated in a normal manner, in accordance with the priorities defined by the EPO.
  • If the applicant requests a treatment under PACE or PPH, the examining division will take its next action in an accelerated manner, as provided in the PACE and PPH programs.
  • Finally, if the postponement ends due to the filing of third party observations, the examining division will issue the next action within three months of receipt of the observations.

The applicant can of course still withdraw the application and get a refund of the examination fee if the examination phase has not started yet.

On a legal standpoint, since the timeline for requesting examination is not affected by the new program, and only the actual start of examination by the EPO is, the new procedure does not require an amendment of the EPC or of the implementing regulations.

It will thus simply be based on a notice to be published in the EPO’s Official Journal.

Turning to transitional provisions, the new procedure will enter into force on July 1, 2018 and apply to EP-direct applications for which the mention of the publication of the European search report occurs on or after this date, and to Euro-PCT applications which enter the European phase on or after this date.

What can we make of all this?

On the one hand, the new procedure brings additional flexibility to patent applicants, while preserving to some extent the interests of third parties, as they can have a direct impact on the handling of applications of concern to them. In this respect, the new system prima facie seems relatively fair and balanced. It is also probably a good thing that the early issuance of the search report will not be affected, as the outcome of the search is of general interest to the applicant and to the public.

On the other hand, I cannot for the life of me understand the name of the program, User Driven Early Certainty. I cannot figure out what kind of early certainty there is in postponing examination for 3 years. But after all, according to one the most important books of the 20th century, war is peace and freedom is slavery. Accordingly, and on a much less tragic note, early can certainly be late.

Many thanks for the heads-up, little birds, and please continue whispering.

A fitting approach?

It is not yet a trend in French courts, but it might become one. We would have to coin a name for it. In Germany, they have bifurcation, so this term is already taken. Maybe “dissociation“?

What I am talking about here is a court ruling on the validity of a patent first, before the question of infringement is addressed by the parties, even though it was raised first.

Why would a court proceed this way, whereas it may seem more time-effective to deal with all claims and counterclaims at the same time, and whereas our good friends in Düsseldorf or Mannheim generally do just the opposite, i.e. get a ruling on infringement first from the Landgericht, typically before getting a decision on validity from the Bundespatentgericht – unless a stay of proceedings is ordered by the Landgericht?

Well, because in some cases, the approach validity first – infringement second is more respectful of the defendant’s rights, and more specifically of its know how and trade secrets.

One harbinger of this possible trend may have been Quadlogic v. Enedis, already commented upon (on the merits) on this blog. On February 24, 2016, Quadlogic initiated infringement proceedings against Enedis. In July 2016, the plaintiff filed a motion with the court to obtain documents from the defendant, so as to be able to fully characterize the relevant technical features of the allegedly infringing Linky meters. Enedis resisted this motion, and the judge in charge of case management issued an order on November 17, 2016, per which “communicating these elements is premature since Enedis pledged to file an affidavit regarding the nature of the memory […] and the validity of the patent is challenged“.

The case proceeded further, with the Paris Tribunal de grande instance (TGI) declaring the patent at stake invalid on November 2, 2017, thus retrospectively confirming that forcing Enedis to produce technical documents beforehand would have been inappropriate.

This approach was taken one step further by a different section of the Paris TGI in Fittingbox v. Acep Trylive.

This case relates to French patent No. FR 2955409, directed to an “augmented reality method of integrating a virtual object into photos or videos in real time“. More particularly, the focus of the technology is the integration of eyeglasses into an image of a face. So that the face’s owner can see whether these glasses fit him or her well.

Yes they do fit perfectly well.

Fittingbox sued Acep Trylive for infringement of this patent on June 9, 2016, after performing an infringement seizure on May 11, 2016, in order to gather evidence of the alleged infringement. The seized evidence was sealed by the bailiff who conducted the seizure, probably upon request of the seized party and/or because the bailiff deemed that the evidence was sensitive in terms of know how and trade secrets.

The plaintiff filed a motion in order to be authorized to access the sealed evidence. More specifically, Fittingbox requested that an expert be appointed in order to study the source code of the software of the allegedly infringing process, and to draft a report.

On March 30, 2017, the judge in charge of case management rejected the motion, holding the following:

The parties at stake are two direct competitors in the very specific field of the virtual fitting of eyeglasses. 

Fittingbox offered to […] purchase the immaterial assets of Total Immersion, which were finally acquired by Acep Trylive, and revealing the source code would enable Fittingbox to access the know-how currently held by Acep Trylive. 

Besides, the validity of the patent relied upon by Fittingbox is seriously challenged both as far as clarity and novelty are concerned. It is put forward that the background section of the application does not mention Total Immersion’s software which was disclosed since 2008 […]. Besides, the INPI, when examining the patent application in 2010, mentioned a lack of inventive step and clarity […] and the EPO mentioned a lack of clarity when examining the European extension of the patent in suit […] and stated that “some of the objections are such that it does not seem possible to remedy them by modifying the application”. 

In view of the present circumstances, Fittingbox’ requests for unsealing should not be granted; first, the court should rule on the merits of the validity of the patent in suit, and then second, if the patent is held valid, the court will address the issue of whether the seals should be lifted in order to prove the existence of the infringement, and optionally also the extent and modalities of such lifting.

Four remarks here:

  • First, the court’s comment on the clarity of the patent will be addressed below.
  • Second, the court was certainly sensitive to the fact that the source code is bound to contain a trove of secret and extra-sensitive information. In principle, appointing an expert to examine the source code is supposed to prevent the defendant’s know how to be directly transmitted to the claimant; but the final report of the expert is then disclosed to said claimant, and it necessarily contains some relevant technical information.
  • Third, the court also took into account the context, namely the fact that both companies are direct competitors, who in particular competed to purchase a third company.
  • Fourth, the patent was perceived as potentially weak.

One problem with this fourth point is that the court relied on negative comments contained in the written opinion or substantive communications issued during prosecution in connection with the French patent itself and its European counterpart. The court was probably excessively impressed by these comments and did not realize that such comments are commonplace at the onset of examination.

Actually, I checked the EPO online register and the decision to grant the European patent was issued a couple of weeks ago, notwithstanding the examiner’s initial position that the application should be thrown out in its entirety. In fact, if I had received 1 euro each time I read a comment from an examiner similar to the one quoted above, although a patent was later granted, I would now be in a position to buy a couple of thick IP law books.

The bottom line is that the case got dissociated, if I may use this term, in order to protect the defendant’s know how and trade secrets, and the counterclaim for invalidity of the patent was examined first.

This leads us to the judgment issued on November 16, 2017. Interestingly, the court did not stick to the case management judge’s initial impression and found the patent valid.

Therefore, Acep Trylive’s counterclaim for nullity was dismissed, and the case was remitted to the judge in charge of case management to deal with the modalities of the unsealing of the seized evidence, and the request for expertise.

Whether this approach is fitting or not, as asked in the title of this post, is a matter for readers to decide.

It is certainly not ideal in terms of timeline, as it is bound to markedly increase the overall duration of the proceedings. But it may be the most fair and balanced way to proceed when the defendant’s know how and trade secrets are at stake. It should also be borne in mind that the rate of patent invalidation in France (just like in other European countries) is high, so that addressing validity first does make sense – timing constraints aside.

While we are at it, we might as well have a look at the merits of the validity ruling. After all, it is not every day that a computer-implemented process is held valid.

For those who are brave enough, here is the main claim at stake:

A method for creating a final real-time photorealistic image of a virtual object, corresponding to a real object, which is arranged on an original photo of a user, in a realistic orientation related to the position of said user, characterized in that it comprises the following steps:

– 510: detecting the presence of a placement area for the object in an original photo,

– 530: determining the position of characteristic points of the placement area for the object in the original photo, step 530 consisting in: 

– determining a similitude β to be applied to an original photo, to obtain a face, similar to a reference face, in size and orientation and

– determining the position of the exact external corner A and of the exact internal point B for each eye in the face of the original photo,

– 540: determining the 3D orientation of the face, i.e. the angles φ and ψ of  the camera having taken the photo relative to the principal plane of the placement area for the object, 

– 550: selecting the texture to be used for the virtual object, in accordance with the angle-of-view, and generating the view of the virtual object in the 3D (φ, ψ) / 2D (θ, s) position in question,

– 560: creating a first rendering by establishing a layered rendering in the correct position consistent with the position of the placement area for the object in the original photo,

– 570: obtaining the photorealistic rendering by adding overlays, referred to as semantic overlays, so as to obtain the final image.

Interestingly, it seems that the defendant did not raise any attack of patent ineligibility. What the defendant did raise is lack of clarity… which is not a ground for nullity.

But the court interpreted this line of argumentation as in fact relating to insufficiency of disclosure – which, of course, is indeed a ground for nullity.

Acep Trylive primarily relied on various objections raised during examination of the French patent in suit and of the corresponding European patent. But the court noted that the objections raised in France were overcome before grant, and that the objections raised at the EPO did not apply to the French claims, which were differently drafted.

Then, Acep Trylive argued that the claims lacked novelty over two videos available online, one from Fittingbox itself, and one from Total Immersion (remember, this is the third company that was eventually acquired by Acep Trylive).

The court held that the dates at which the videos were made available to the public were not indisputable. Too bad there is no detailed discussion of the evidence offered by the defendant regarding these dates, it would have been useful to see what was actually deemed insufficient by the court. One likely reason why the court did not dwell on this aspect is that the contents of the videos were held not to disclose the subject-matter of the main claim anyway. The first video only showed the result of the claimed method without explaining the technical details, while the second video did not show at least two of the steps of the claimed method.

The third and last validity attack was an alleged lack of inventive step. What is of interest in the court’s discussion in this respect is probably the fact that the skilled person would not have combined the various prior art references put forward by the defendant, according to the court.

The skilled person was defined by the court as a “specialist of system software and virtual fitting networks, having average knowledge in augmented reality and 3D modeling“. The technical problem at stake was to “make it possible to integrate a virtual object into photographs or videos in real time as realistically as possible“.

The closest prior art was D1, a prior Fittingbox patent, in the same technical field. Acep Trylive proposed a combination of this D1 with one or more of D2 to D6. But D3 to D6 were discarded by the court as not relating to the technical field of the skilled person. And D2 was commented upon as follows:

However, D2 exclusively deals with 3D modeling of architectural buildings and the skilled person wanting to improve realism of virtual fitting, notably spectacles, by a choice of texture, was taught by D2 away from applying it to another field than architecture. 

In particular, the abstract of D2 mentions: “the modeling system is efficient and robust because it exploits constraints that are characteristic of architectural scenes […]”. And: “a key aspect which distinguishes our approach from a structure of standard computer viewing of the formulation of movement / stereopsis (which makes it possible to circumvent the difficulties discussed in section 2) is that we are dealing with a particular field – architectural scenes – which entails a specific set of features that can be used to make the problem more simple”.

Sounds sound.

As a final note there is one interesting procedural aspect in this case.

According to article L. 614-15 of the Code de la propriété intellectuelle, when an infringement suit is initiated based on a French patent and there is a corresponding European patent or application, a stay of proceedings should be ordered as of right, until the European patent application dies or the European patent is granted and substitutes for the French patent (which takes place at the end of the 9-month opposition period, or, if an opposition is filed, at the end of the opposition proceedings).

In the present case, the grant of the European patent will be published this week, and therefore the application was still pending when the court issued its validity ruling.

Why did the defendant not request any stay of proceedings? Well, because the plaintiff had previously withdrawn the French designation of the European patent in April 2016, according to the EPO register. A possible strategy to keep in mind in situations of this kind.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 4ème section, November 16, 2017, Fittingbox v. Acep Trylive, RG No. 16/09680.

A light ruling

The case discussed today is not a light case of patent infringement. Nor is it a case of light patent infringement. It is rather a case of patent infringement regarding light technology, namely LED-based lamps emitting light in multiple colors.

The litigation at stake pits Philips Light North America Corporation against France-based Commerce Spectacle Industrie (CSI).

This is a multifaceted dispute, but the prong of the litigation of interest to us today is Philips’ infringement claim against CSI based on the French part of European patent No. EP 1016062, and CSI’s counterclaim for revocation.

As a one sentence summary, the Paris Tribunal de grande instance (TGI) held that the patent was valid but that infringement was not sufficiently proven.

For once, let’s start with the infringement part of the decision.

Claim 1 of the patent as maintained in amended form in opposition proceedings at the EPO reads as follows:

An illumination apparatus comprising:
– a plurality of light emitters of at least two different colours adapted to be coupled to a power circuit including a power source and a common potential reference;
– driver means for driving the plurality of light emitters, the driver means comprising at least two switches connected to the plurality of light emitters and said power circuit and corresponding to respective current paths of the at least two different colour light emitters;
– a controller for periodically and independently opening and closing the at least two switches, the controller having an alterable address assigned to itself such as to identify and respond to a respective portion of an input data stream assigned thereto, which data stream portion is assigned to that controller;
– each light emitter being an LED; and
– said controller being arranged to generate a plurality of PWM signals, the PWM signals having uniform frequency, each signal corresponding to a respective colour of the plurality of LEDs of different colours, each said PWM signal causing a respective one of the at least two switches to be opened and closed at the uniform frequency according to respective independent duty cycles, and wherein said data stream portion comprises data for determining the respective duty cycles of the at least two different colour LEDs.

An enlightening invention.

Philips’ case primarily relied on experimental tests conducted on the allegedly infringing lamps by an expert appointed by them.

CSI criticized the report drafted by the expert. One major criticism was that Philips’ expert had used an oscilloscope for the experimental tests, without following the procedure set out in the instruction manual for this apparatus. In particular, the expert’s report did not show that the oscilloscope had been preheated for 30 minutes as recommended in the manual, and that a proper calibration had been performed.

CSI added that there were a number of loopholes in Philips’ demonstration, namely that “the expert report does not mention a periodic opening and closing of the switches, that [Philips] does not show how the current paths are and does not establish the presence of respective current paths […], that they never show how a switch would be connected to the diodes“.

Did the court see the light, readers are probably wondering?

Of course the answer depends whose side you are on, but the court did find that CSI’s criticisms had merit:

For each product, [Philips] relies on measures made with an oscilloscope, the conditions of use of which are not specified in the expert report […], although it is true that the instruction manual [….] notably requires a preheating of at least 30 minutes and a calibration before each use so as to allow optimal measurements […]. These basic precautions were not taken, so that the measurements obtained are necessarily suspect. It cannot be understood how the absence of a calibration could have no impact on the shape or (supposedly uniform) frequency of the signals, nor how the absence of preheating would not affect the measurements. The [alleged] continuous use [of the oscilloscope] for all measurements after the first one, which cannot be determined in the absence of any timing information in the report, and which cannot be derived from the order of the annexes which does not necessarily reflect the order of the operations, is not proven and may not compensate for a possible original malfunction.

Frankly, I am not sure what to make of all this.

On the one hand, we all remember from our science classes that calibration is not just for window-dressing. Did the expert proceed according to accepted practice or not? If the report is silent on this, the defendant and the judges cannot know for sure.

But on the other hand, any experimental report can always, always, be criticized for some choices that were made in the setup, or some omissions in the report itself.

Therefore, wouldn’t it be reasonable to consider that, if one party has taken the trouble of conducting experimental trials to prove its case, and if the other party wants to challenge the results of the trials, this other party should also make the effort of conducting counter trials – instead of simply pointing to potential loopholes?

Well, at any rate it does not look like this is the approach followed in France. The infringement plaintiff has the burden of fully proving the existence of the infringement, and the burden does not shift to the defendant by providing evidence which is anything short of bullet-proof.

That said, it seems that in the present case the demonstration of infringement was incomplete anyway, irrespective of the credibility of the expert’s report. And this would have been by itself sufficient to throw out the infringement claim – although the judgment does not contain many details:

Assuming that these measurements were sufficient, they would demonstrate an independent command of colors, but not the existence of “respective current paths” […], i.e. paths related to each light source, since independence does not per se imply an exclusive assignment. And the diagrams supplied for each product only show one light source, which prohibits any appraisal of the “respective” character of the current paths. 

Philips’ solace was that the patent was found to be valid. CSI had only raised lack of inventive step as a ground of nullity.

As a confirmation of a now well-established trend, the court followed the problem and solution approach for assessing inventive step – primarily because the parties themselves used this reasoning.

Here is the court’s summary of the appraisal to be conducted:

Since the parties, at least primarily, apply the non-mandatory “problem/solution” approach, it will be adopted […] by the court. It requires, in order to allow an objective examination of the inventive step without hindsight: 

– objectively identifying the closest prior art, i.e. a prior art reference which discloses subject-matter developed for the same purpose or having the same goal as the claimed invention and essentially having similar technical features requiring few structural modifications, 

– assessing the technical results achieved by the claimed invention relative to this prior art, 

– defining the technical problem which the invention purports to solve by obtaining these technical results, 

– examining whether, in view of the closest prior art, the skilled in the art would or would not [have been] suggested with the claimed technical features to achieve the results obtained by the claimed invention. 

In brief, this quite closely matches the EPO’s beloved reasoning.

In the present case, the parties seemed to agree that there were two partial problems at stake. Here, again, the court relied on the EPO practice, even making reference to the Guidelines for examination:

As set out in section G-VII, 7 of the Guidelines for examination at the EPO, if the claimed invention is in principle considered as a whole, which excludes that the inventive step of a combination of features be appraised for each feature taken in isolation, such a separate appraisal is necessary if the claim is made of a juxtaposition of features, and not of their combination which implies that the functional interaction between them produces its own technical effect exceeding the sum of the technical effects that they individually produce, namely a synergy effect. 

Applying these principles to the EP’062 patent, the court focused on the first partial problem only, and found that some of the claimed features were in fact neither disclosed in the closest prior art, nor in the suggested secondary reference. Therefore, it was simply impossible to arrive at a conclusion of lack of inventive step. Besides, the rationale offered by CSI for combining the documents together did not take into account the technical problem at stake in the patent. And the respective prior art documents contained contradictory teaching.

All in all, there were thus several reasons to find the claim inventive, without even having to look at the second partial problem.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 1ère section, November 16, 2017, Philips Lighting North America Corporation v. SAS Commerce Spectacle Industrie, RG No. 15/09326.

Weaker together?

Best wishes to all readers of this blog!

I am sure most of them have made their list of new year’s resolutions. Among those, there might be the resolution of keeping up to date with SPC case law. And this is one which can just as easily be dropped by the end of January as the resolution of going to the gym three times a week.

Luckily, Patent My French! is happy to oblige, courtesy of Lionel Vial. He reports below on an interesting recent decision illustrating one further way in which an SPC application can be derailed.

The appeal decision we discuss today was rendered by the Paris Cour d’appel on December 19, 2017 in a case of rejection of a supplementary protection certificate (SPC) application by the Institut National de la Propriété Industrielle (INPI).

Was this decision an advance Christmas present for the appellant or rather a late visit from the Père Fouettard (aka Father Whipper)? This is what we are going to see.

Good old Indy – the best approximation of Père Fouettard that can be found in a patent.

French SPC application No. 14C0081, in the name of Medivir AB (bear in mind the name of the holder, it is important in the present case!), was filed on November 14, 2014, on the basis of European patent EP 1713823 and of marketing authorization (MA) No. EU/1/14/924. The MA is held by Janssen-Cilag International N.V. and is for simeprevir (Olysio®), a medicinal product indicated for the treatment of chronic hepatitis C.

According to the decision (online file inspection is not available for this SPC), during the examination procedure, Medivir AB received a communication from the INPI, probably stating that it contemplated rejecting the application in view of co-pending SPC application No. 14C0076.

French SPC application No. 14C0076, held by Medivir AB and Janssen Sciences Ireland UC (here again, mind the name of the holders), was filed on October 7, 2014, on the basis of European patent EP 1912999 and of the same MA for the same product (i.e. simeprevir).

In response to the communication, Medivir AB requested a stay in the examination procedure of SPC application No. 14C0081 until a decision was rendered for co-pending SPC application No. 14C0076.

French SPC No. 14C0076 was then granted on July 28, 2015 and SPC application No. 14C0081 was rejected on January 13, 2017 on the ground that EU regulations 469/2009 (the pharmaceutical SPC regulation) and 1610/96 (the phytosanitary SPC regulation) forbid that several SPCs be granted to a same holder (Medivir AB) in regard of a same product (simeprevir). The INPI stressed that Medivir AB did not justify why the fact that it was a co-holder of SPC n°14C0076 would warrant the grant of a further protection (for SPC application No. 14C0081).

Medivir AB appealed the rejection decision on April 12, 2017 and notably argued that the holder of a first SPC as sole proprietor is a different entity from the co-holders, taken as a whole, of a second SPC, because the rights of a co-holder are under the control of the other holders, and that it is of no importance in this regard that the sole proprietor of the first SPC is also a co-holder of the second SPC.

The INPI responded that a holder of several patents on the same product cannot have several SPCs granted for the same product.

The INPI stated that, according to the case law of the CJEU, several SPCs can be granted for a same product on the basis of several patents, provided the patent holders are different (see e.g. C-181/95 Biogen and C‑482/07 AHP). In the present case, Medivir AB having already been rewarded by the grant of SPC No. 14C0076, a second SPC cannot be granted to it.

The time has now come to open the Christmas present. Will it be a shiny SPC or a dreadful whip? Let’s see what the Court had to say:

Medivir has made the choice to team up with Janssen Ireland UC to commonly develop patent EP 1912999 and, even though Medivir knew of the difficulties associated with applying for two SPCs on the same products, it chose to favor the application based on patent EP 1912999, of which it is a co-holder, over the application based on patent EP 1713823.

Co-ownership of patent EP 1912999 does not prevent it from being worked by Medivir, pursuant to Article L. 613-29 of the Code de la propriété intellectuelle [on the co-ownership of patent applications and patents].

As such, in view of the choices made by Medivir, co-holder of patent EP 1912999 which forms the basis for a SPC, it cannot apply for another SPC for the same product on the basis of patent EP 1712823 of which it is the sole holder.

Accordingly, its appeal will be rejected.

Well, a whip it is then!

To sum up, the Court decided that when considering ownership of an SPC or SPC application, the different holders of a same SPC or SPC application should not be considered as a single entity but individually.

Although this decision may appear to be in line with recent case law of the CJEU stressing that a patent holder should not be afforded a compensation for the delay to the commercial exploitation of his invention by providing him with an additional period of exclusivity when he was already afforded one (see e.g. C‑443/12 Irbesartan, paragraph 40), it does not appear entirely coherent to us.

Indeed, as was noted by Medivir AB during the appeal proceedings, if the same reasoning was applied to a situation where the SPC No. 14C0081 had first been granted to Medivir AB alone, it would have probably led to the rejection of SPC application No. 14C0076, thereby depriving Janssen Sciences Ireland UC of the right to be compensated for the delay to the commercial exploitation of its invention.

That is, unless the Court would have considered that the situation was different and called for another appraisal because Janssen Sciences Ireland UC did not have the possibility to choose between two SPC applications.

In any case, considering that (i) Medivir AB and (ii) Medivir AB + Janssen Sciences Ireland UC are different patent holders appears to be a more coherent solution to conciliate the principles that SPC protection should be made available to different patent holders in regard of a same product on the one hand, and that SPC protection should not be made available more than once for a same patent holder in regard of a same product on the other hand.

It is to be noted that in the Netherlands both corresponding SPCs have been granted.

In the meantime, before the situation above eventually gets clarified in France, it is advised to avoid such ownership configurations.

In this regard, for the sake of a witty conclusion, a mechanism could be imagined whereby Medivir AB’s SPC application No. 14C0081 would have been assigned to a third party under an agreement granting an exclusive license to Medivir AB. Looking for such a third party, the Saint Regis Mohawk Tribe would appear to be just the right candidate to consider…

As always, thank you Lionel for this report.

I guess the other side of the coin is that, if the Cour d’appel had ruled in favor of Medivir, it might then have been possible to circumvent the prohibition of several SPCs to the same holder by putting together various co-ownership agreements.

Definitely a thorny issue then, which means that it will end up in front of the CJEU sooner or later.

By the way, did the CJEU also make some new year’s resolutions to make SPC law more simple and predictable for everyone? For sure, we will soon find out.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 1, December 19, 2017, Medivir AB v. Directeur Général de l’Institut National de la Propriété Industrielle, RG No. 17/07741.