Publicity stunt

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

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

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

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

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

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

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

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

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

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

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

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

A novel and inventive way to communicate on judgments

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

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

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

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

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

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

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

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

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

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

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

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

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

This is a relatively important point.

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

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

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


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

Smells like revocation

Believe it or not, it is somewhat difficult for this blogger to know what his readers are most interested in. Do they yearn for complex legal discussions? Are they rather keen on getting their hands dirty with an insight into actual patents and prior art documents?

The good thing is that today’s post will contain a little bit of both – hoping that the answer to my question is not “none of the above“.

Reckitt-Benckiser owns European patent No. EP 1891197 which is entitled “Process for manufacturing improved dispensing devices“. This patent owner is no small fish, but rather a giant in the hygiene industry. Think of the brands Air Wick, Calgon, Clearasil, Cillit Bang, Durex. But today, Harpic is the type of products we are talking about.

In June 2013, two companies of the Bolton group, namely the Italian Bolton Manitoba and the French Bolton Solitaire, filed a nullity suit against the French part of the European patent.

On March 13, 2015, the Paris Tribunal de grande instance (TGI) dismissed the nullity claim. Bolton appealed, and the Paris Cour d’appel issued its judgment a couple of weeks ago.

The first interesting aspect in the appeal judgment is… the application of the statute of limitations to the nullity claim.

One would think that we have heard enough about this topic on this blog lately, and one would be wrong.

As is usual now in a patent nullity lawsuit, the admissibility of the request for revocation was challenged by the patent proprietor. The proprietor deemed that the limitation period for the nullity claim started running from the publication date of the application.

In the present case, the application had been published before the amended statute of limitations entered into force on June 19, 2008 (as discussed here, this amended statute brought the default limitation period from 30 years down to 5 years, which initially created the legal mess that we are now in). Therefore, the patentee said, the starting point was postponed to June 19, 2008, when the amended statute entered into force; and the limitation period expired on June 19, 2013, i.e. five days before the nullity complaint was served.

On the other hand, the nullity plaintiff argued that the five-year limitation period only started from the publication of the grant of the patent, namely August 27, 2008, so that the nullity action was timely filed and admissible.

The court ruled that

[…] the limitation period can only start running from the date on which the person against whom [the patent] is asserted can validly act; pursuant to article 64 EPC, a European patent confers rights as from the publication of the mention of grant, so that a nullity action against a European patent application does not exist. The limitation period for the action can thus only start running, in the present case, from the publication of the patent grant at the earliest

There is a lot to digest in this single sentence:

  • It is a good thing that the publication of the application was not upheld as a valid starting point – this is the last thing we need right now.
  • The choice of the patent grant as the starting point is consistent with the recent ruling by the same panel of the Cour d’appel in Halgand v. RP Nicoll, discussed here.
  • The court did not perform an in concreto assessment, which currently continues to be applied by the judges in the TGI (see the discussion here).
  • However, the wording used by the court, i.e. can thus only start running in the present case, from the publication of the patent grant at the earliest“, does not fully contradict the in concreto approach. Here, the nullity plaintiff seems to have taken the position that the starting point did not need to be accurately determined, as it could anyway not be before the publication of the patent grant, which thus ensured the admissibility of the action in any case. And the appeal judges fully followed this approach.

Therefore, all in all, this new ruling does not change much relative to the previous situation. Or, as they say in every good mystery novel, the plot thickens.

Having found the nullity action admissible, the court turned to the merits of the case, and more particularly to the contention that claim 1 of the patent did not involve an inventive step.

This is the second interesting aspect in the judgment, since the Cour d’appel reversed the decision under appeal in this respect, and declared claim 1 invalid although it had survived the first instance proceedings.

The patent in suit is directed to a manufacturing process for a sanitizing toilet block. Claim 1 reads as follows:

A process for the manufacture of a lavatory dispensing device useful for the delivery of at least one treatment composition, preferably a cleaning composition and/or a sanitizing composition to a sanitary appliance, preferably a toilet bowl which method comprises the steps of: 

– providing a composition to an extruder,
– forming an extrudate from said composition;
– inserting part of a hanger into said extrudate;
– compressing the extrudate to encase or enrobe said part of a hanger thereby forming said lavatory dispensing device.

The next generation sanitary appliance for your toilets.

I understand that the relevant prior art was the following:

  • Some prior art references taught the manufacturing of toilet blocks by placing a hanger in a composition comprising paradichlorobenzene, and compressing the composition onto the lower end of the hanger. These blocks are “cageless”, that is they are provided on their own and not in a plastic cage.
  • Other prior art references disclosed the manufacturing of toilet blocks by an extrusion process, and their inclusion into cages.

In the first instance judgment, claim 1 was found to be inventive. The TGI commented on the teaching of the prior art as follows:

– the process of fixing a hanger to a cageless device only concerns compositions containing paradichlorobenzene, known for its low solubility, which has now been prohibited since it is considered as a dangerous material; 

– the insertion of the hanger occurs when the block is molded; 

– none of the […] patents suggests a compression after an extrusion, to attach the hanger; 

– compositions containing at least one surfactant (which leads to the block breaking off) are in the prior art always placed in a support. 

Therefore, the skilled person was not naturally prompted by this prior art to contemplate a toilet block containing surfactants, to be used without a cage, by inserting a hanger into a block obtained by extrusion, and then compressing the extrudate to encase the hanger. 

The existing prejudice that cages were required to support and contain sanitary treatment blocks was overcome, since it is now possible to make cageless devices which comprise a suspending hanger and a composition as a compressed full block tied to the suspending hanger, said solid block compositions comprising one or more chemical compounds, preferably at least one surfactant composition. 

It is remarkable that the first instance court did not apply the problem and solution approach. Though this reasoning “made in EPO” is more and more often relied upon by litigants and judges in France, it is by no means mandatory.

It is also noteworthy that the TGI, when discussing why the skilled person would not have achieved the invention in an obvious manner, made reference to a number of features which are actually not present in claim 1.

For example, the court seemed to consider that the composition of the block comprises surfactants and does not comprise paradichlorobenzene. According to the court, this is very important, as only paradichlorobenzene-based blocks were disclosed as being compressively tied to a hanger – in view of the particularly low solubility of this chemical. But claim 1 does not explicitly exclude the presence of paradichlorobenzene, and does not specifically call for the presence of surfactants (which are recited in dependent claim 10). Claim 1 merely mentions a “treatment composition, preferably a cleaning and/or a sanitizing composition“.

Furthermore, the court considered that there was a prejudice against cageless devices comprising a sanitary composition (as opposed to a merely deodorizing, paradichlorobenzene-based composition). But claim 1 does not explicitly exclude the presence of a cage in addition to the hanger. This is in fact the subject-matter of dependent claim 8.

As for the appeal judges, they did not follow the problem and solution approach either. But they did reach a different conclusion: 

In the end, at the priority date of European patent No. 1891197, in view of the teaching of the above documents, the skilled person […] knew processes for making blocks for toilet bowls suspended by hangers; desirous of making a cageless suspended lavatory block, not based on molded paradichlorobenzene (deemed toxic) but on treatment compositions comprising surfactants, obtained by extrusion, he could use the same process starting from an extruded composition as taught in [a couple of patents]; he also knew from the teaching of [another patent] that it was possible to compress an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger.   

It is striking that the Cour d’appel shared the TGI’s appraisal of the crux of the invention, namely providing a cageless device for a block comprising surfactants.

The TGI was thus not blamed for its extremely extensive interpretation of claim 1 in view of the description of the patent. 

As far as I can tell, the different conclusion was in fact reached due to a new prior art citation, namely a reference disclosing the compression “of an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger” – whereas the first instance judges had noted that “none of the […] patents suggests a compression after an extrusion, to attach the hanger”. 

First instance judgments are very often confirmed on appeal in France. One exception to this general trend is when new facts arise, such as a new prior art document like in the present case.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 2, October 20, 2017, Bolton Manitoba & SASU Bolton Solitaire v. Reckitt Benckiser LLC, RG No. 15/09777.

The bell always rings twice

This blog has now been around long enough for the same case to make it to a post several times, when new developments come up.

The present post is thus a sequel to my earlier comments on the litigation between Airbus Helicopters and Bell Helicopter Textron Inc.

As a reminder, the Paris Cour d’appel found Bell guilty of infringement of French patent No. FR 2749561 directed to a landing gear with skids.

Bell filed an appeal on points of law, and the Cour de cassation has now issued its judgment rejecting the appeal. Many different legal points were raised by Bell, but certainly the most interesting one relates to the finding of infringement concerning the so-called first version of helicopter Bell 429. This first version was a prototype, which was:

  • included in Bell’s catalogue;
  • shown in September 2005, which was reported on the website of a helicopter enthusiast (although Bell argued that this was a confidential presentation);
  • and put up on the website of Rotor & Aircraft, Bell’s distributor in France.

Bell’s defense was that this first version of the helicopter was not yet approved for sale. But the appeal judges noted that:

Offering for sale extends to any material operation aiming at putting a product in contact with potential customers, at preparing a commercial launch, even if said product, which in the present case was not yet approved, could not be marketed.

A helicopter prototype at a very early stage.

The “prototype” defense was raised again by Bell in front of the Cour de cassation, according to the seven following points.

First:

A mere prototype [was presented] in a private context and within a narrow circle of specialists; the prototype had not yet flown, and was later subjected to several modifications; in the absence of any prior certification, it could not be marketed; [this] cannot correspond to putting on the market nor even to a preparatory act for such putting on the market.

As a result, said Bell, the court breached the statute, by deciding that an offer for sale could relate to a product which could not be marketed.

The cour de cassation replied that the standard applied by the Cour d’appel was the right one, in particular because “the presentation of the product as a prototype can divert part of the clients of the patented product“. 

Second, the presentation of the first version of the landing gear was quickly followed by the marketing of the second version of the gear. Also, the certification of the second version was based on tests performed on the first version. Thus, the presentation was at best a preparation for the sale of the second version, and not an offer for sale of the first version.

The supreme court judges disagreed. In fact, the Cour d’appel had held that Bell intended to market the first version of the landing gear at the time it was presented.

Third, Bell blamed the appeal judges for relying on acts committed outside of France: an offer for sale abroad in a catalogue, and presentations in exhibitions in the U.S. and Canada. They said that only acts committed in France could possibly constitute an infringement.

However, for the Cour de cassation, the Cour d’appel did not hold any acts committed abroad as acts of infringement. They simply noted that the presentation in France had been preceded by offers for sale abroad. As I understand it, it is therefore OK to refer to acts committed abroad in order to characterize the overall context.

Fourth, Bell submitted that the report of the first version on a website owned by a helicopter enthusiast was an act committed in a private and non-commercial context – which is an exception to infringement.

Fifth, regarding the presentation of the helicopter on Rotor & Aircraft’s website, Bell argued that the landing gear could not be identified on the pictures appearing on the website.

Sixth, there was no evidence of the presentation of the first version in the Paris air show, since the bailiff’s report did not precisely describe the landing gear.

The Cour de cassation did not provide a detailed answer and simply referred to the appeal judges’ discretionary power for appraising the available evidence.

Seventh, the Cour d’appel refused to acknowledge that the acts committed related to the statutory experimental exception, because no test and no act of research were performed when the first version of the landing gear was presented. However, Bell said, the sole use of the landing gear could by itself aim at studying its behavior and therefore relate to the experimental exception.

But the cassation judges decided that the absence of evidence of any experimental testing was sufficient to reject the experimental exception.

Many other grounds were raised, regarding the validity of the patent, the validity of the infringement seizure report and the infringement by equivalence of the second version of the landing gear. They were all discarded.

One rather enjoyable part of the discussion relates to the way the bailiff drafted the infringement seizure report. The bailiff used in some instances the word “we” instead of “I“, so that it could not be determined, Bell said, what the bailiff had actually personally done or witnessed. The court replied that the use of the pronoun “we” was commonplace and could not be relied on to deduce that the bailiff had not carried out the seizure himself.

I wonder whether the pronoun “we” is that commonly used to designate a single individual. It is rather a specificity shared mainly by royalties and bailiffs, I would say.

Anyway, the take-away message from this important ruling remains that the presentation of a prototype can be considered as an offer for sale and thus an act of infringement, even if the product at stake is not yet marketable.


CASE REFERENCE: Cour de cassation, chambre commerciale, July 5, 2017, Bell Helicopter Textron Inc. & Bell Helicopter Textron Canada Ltd. v. Airbus Helicopters, case No. B 15-20.554.

One step forward, two steps back

The French statute of limitations for patent nullity actions. Yes: again. Seems like we can never get enough of this topic, can we?

Courtesy of Matthieu Dhenne (who, as regular readers of this blog may have noticed, is no fan of the time-bar on patent revocations), here is the latest installment of the saga.

In the previous episodes:

  • A trend slowly emerged at the Paris Tribunal de grande instance (TGI), per which actions for revocation are time-barred five years from the date at which the claimant became aware or should have become aware of the patent right at stake, as a potential impediment – said date being determined in concreto based on the specifics of the case.
  • Then, a ruling from the Paris Cour d’appel (Halgand v. RP Nicoll) issued on September 22, 2017 seemed to imply that the starting point is or should generally be the grant of the patent.

When I reported on this latest case, I wondered whether the TGI would apply the criterion set by the appeal judges. Well, we may have a beginning of an answer now – and it is a negative one.

Today’s decision was issued on October 5, 2017. The pleadings hearing took place on September 12, i.e. before Halgand v. RP Nicoll was issued. However, it is very likely that the court was aware of this appeal decision before drafting and issuing the judgment of October 5.

As this is not a common law country, there is no obligation for the TGI to defer to the legal analysis put forward by the Cour d’appel in another, unrelated case.

In summary: it seems that the TGI is sticking to its previous doctrine.

Going in circles around a tricky legal issue.

The case concerns French patent No. FR 2804186 (FR’186) owned by Valeo Embrayages (Valeo). The patent was filed on January 25, 2000 and granted on April 26, 2002.

On July 17, 2015, Valeo sent a warning letter to German company LuK GmbH & Co. Kg (LuK). Valeo claimed that several of its patents, including FR’186, were infringed by LuK, and requested that LuK should take a license.

On January 23, 2017, LuK filed an action for nullity of the FR’186 patent in front of the Paris TGI. Valeo raised the defense that the action was time-barred. The judge in charge of case management decided to hold a hearing in front of the whole court on this issue, in parallel to the exchange of submissions of the parties on the merits. Today’s decision thus solely relates to this legal issue.

First, LuK made the point that the defense based on the statute of limitations should not be examined separately from the merits of the case. Indeed, the determination of the starting point for the limitation period is related to the existence of an impediment to their business due to the patent, and therefore to the merits of the case.

The court rejected the argument as follows:

The fact that it is necessary to examine the scope of the patent and its potential points of contact with the technology of the nullity claimant to determine the starting point of the limitation period does not imply any analysis of the validity of the right subjected to the court. Even without the separation ordered by the judge in charge of case management to streamline the proceedings and reduce their cost in case of a success and otherwise remove a complex question, the court would anyway have decided on the issue of the statute of limitations first, and without considering the issue of validity of the patent or its infringement (if it were raised).

It is quite clear that the court has a discretionary power to deal with some issues first, especially a legal defense such as this one.

But LuK’s arguments do reveal one the drawbacks of the statute of limitations being applied to patent nullity suits, and of the in concreto appraisal of the starting point for the limitation period.

Even if determining when a party felt (or should have felt) impeded in its business by a patent is not synonymous with deciding whether there is or has been any patent infringement, it is still dangerously close. 

The court uses the enjoyable expression of “potential points of contact with the technology of the nullity claimant“. However, if would-be nullity claimants feel cornered into admitting or half-admitting infringement in order to be able to sue (and this is even more true if you take into account the issue of standing, which was not at stake here), this will act as a powerful deterrent.

The next point addressed by the judgment is the impact of a cross-license / settlement agreement dated 2014 between the parties.

LuK argued that Valeo was barred from invoking the statute of limitations due to the 2014 agreement. Indeed, one provision of the agreement recited that each party could challenge the validity of licensed patents within 12 months from a license request.

The court determined that the FR’186 patent did not belong to the technical field concerned by the 2014 agreement. Therefore, the agreement had no impact whatsoever on the present case. At any rate the above provision did not prevent the regular application of the statute of limitations as there was no clear intent to discard said statute; and as no license had been granted on this patent anyway.

And finally, the real meat of the judgment, that is the computation of the limitation period. As mentioned above, the TGI maintained its traditional approach: 

The starting point for the limitation period must be set to the date, determined in concreto, on which [LuK] knew or should have known, due to the progress in the development and industrial implementation of its TAC technology (which is the only one targeted by [Valeo]) that the FR’186 patent could impede it.  

Thus, the publication of grant of the patent is not a suitable starting point, as it would in fact demand an unrealistic watch from stakeholders and is unrelated to the performance of the project which gives standing to sue. Neither is the knowledge of the grounds of nullity of the patent, which may arise well before the knowledge of facts and economic considerations giving rise to standing to sue and actually is equivalent to the publication of grant. 

I discussed this point with Matthieu Dhenne, who agrees that this is an instance of what we call in this country “resistance of the lower courts“. Or rather, “coming to one’s senses” is I think the expression he used.

After this important point, the court reviewed the scope of the patent as well as LuK’s “TAC” technology in great detail. Valeo argued that the technology was developed from October 2007 at the latest and was disclosed in April 2010. As a result, the nullity action became time-barred in June 2013, they stated.

The judges disagreed and held that the technical features disclosed in the various LuK patents and publications relied on by Valeo were not sufficiently close to the subject-matter of the FR’186 patent to constitute the starting point for the limitation period:

Moreover, the article of April 14, 2010 and the patent applications filed do not reveal any relevant points of contact between the TAC technology and the FR’186 patent which could prompt [LuK] to worry about the patents of its competitor. 

Hum, those points of contact again!

[The fact that the FR’186 patent] was cited as prior art under category “A” in the search report of an international application of July 4, 2011 […] [is] irrelevant. Therefore, nothing shows that LuK intended, in the course of the development of its TAC technology, to define the nominal position of the gearing means owing to dedicated setting means as an element of its wear correction device. Consequently, the FR’186 patent represented a potential impediment only on the day it was expressly cited against them, i.e. on July 17, 2015. 

As a result, the case will now proceed to the discussion on the merits.

Readers will surely have noted that, since FR’186 was granted in 2002, LuK’s action would be time-barred if the Cour d’appel’s approach were applied instead of the TGI’s. 

This leads Matthieu to make the following remark:

The plaintiff did not submit that the statute of limitations is inapplicable. If there is an appeal, they should. This will provide them with an additional ground of cassation if the Cour d’appel confirms its case law of September 22, 2017 (as the action would be time-barred if the standard set in this case law stands). 

Well, I am sure it is only a matter of time before our supreme court gets to decide on this legal point. Whether people will like what they say is another kettle of fish.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, October 5, 2017, LuK GmbH & Co KG v. SAS Valeo Embrayages, RG No. 17/01156.

Representatives don’t count

Being a representative myself, my feelings tend to get hurt when I am told that representatives do not matter. Except, that is, when this is in the best common interest of attorneys and their clients, as in the present case.

In December 2013, Spanish company Agromet Ejea SL filed a French utility certificate application through its local French representative.

This is already an unusual start, since utility certificates are a rare species. But wait until you hear about the rest of the facts, which are rather unusual as well.

The second renewal fee for the utility certificate was due on December 31, 2014, and was not paid in due time. It was not paid either by the end of the 6-month grace period. This led the Institut National de la Propriété Industrielle (INPI) to issue a decision of noting of lapse dated August 31, 2015. This decision was notified to the French representative on September 3, 2015.

When the INPI sends you flowers.

A request for restoration of right was filed on November 16, 2015. The INPI rejected this request as inadmissible as it was filed too late.

The French provision on restoration of right is article L. 612-16 of the Code de la propriété intellectuelle. It is very similar to article 122 and rule 136 EPC. In particular, it is specified in the French provision that the request for restoration must be filed within two months of the removal of the cause of non-compliance.

The INPI considered that the cause of non-compliance had been removed upon notification of the decision of noting of lapse to the French representative on September 3, 2015. Therefore, according to the position of the office, the request for restoration should have been filed by November 3, 2015 at the latest.

The owner of the utility certificate appealed the decision in front of the Paris Cour d’appel.

They did well, as the court set aside the decision of the INPI and offered a different computation of the time limit for filing the request for restoration:

Contrary to the position of the [INPI], the legitimate excuse and the removal of the cause of non-compliance […] are appraised with respect to the owner of the IP right and not their representative

In the present case, Agromet Ejea SL stated that they entrusted a Spanish patent law firm with the filing and handling of the utility certificate […], which appointed firm [X] for France. They proved the deficiencies of their representatives in their submissions and with their exhibits, which led to the non-payment of the renewal fee […]. In December 2014, the email reminders of the French representative to the Spanish representative did not reach their destination due to an error of electronic address. In 2015, the IP portfolio management software of the French representative broke, preventing a reminder of the time limit for late payment. The employee of the French firm in charge of the file made several mistakes, leading to the termination of her employment agreement on September 9, 2015, with an effective departure on October 20, 2015. Finally, the decision of noting of lapse of August 31, 2015, notified on September 3, 2015 to the French representative was only communicated to the Spanish representative on October 12 and 16, 2015. The latter only informed the right owner on October 19, 2015. 

Besides, Agromet Ejea SL established that they inquired about the status of their right. Their Spanish representative asked the [French] representative about this by email on July 6, 2015. In view of the above, it can be derived, on the one hand, that Agromet Ejea SL could rely on a legitimate excuse for not paying the renewal fees of its IP right within the prescribed time limits, due to its representatives’ faults; and on the other hand that the cause of non-compliance was only removed on October 19, 2015, when they were made aware of the decision of lapse, or at the earliest when it was published in the BOPI on September 25, 2015

Thus, on November 16, 2015, since the two-month time limit had not yet expired and the payment of the surcharge was made on the same day, the request for restoration of Agromet Ejea SL was admissible.

In summary, the court held that the request for restoration was admissible and well-founded.

It is well known that the notion of legitimate excuse is assessed in a much more lenient manner in France than at the EPO.

In fact, a mistake made by a representative is a legitimate excuse per se, as illustrated by the present case. There is no need to demonstrate that the omission was the result of an isolated mistake within a satisfactory system for monitoring time limits, as demanded by the EPO. Fortunately so for the applicant in the present case, in view of the large number of deficiencies noted by the court…

But today’s decision illustrates that this different perspective also extends to the computation of deadlines.

According to established case law of the Boards of appeal, “the removal of the cause of non-compliance is a matter of fact which has to be determined in the individual circumstances of each case“. More particularly, “the removal of the cause of non-compliance occurs […] on the date on which the person responsible for the application (the patent applicant or his professional representative) is made aware of the fact that a time limit has not been observed“.

Usually, the receipt of a noting of loss of rights or negative decision is considered by the EPO as making the person in charge aware of the non-observance. In most cases, the relevant person is the European representative; but in other cases, it can be the applicant, or even a foreign patent attorney (see here), depending on the specifics of the case.

In contrast, the position of the Cour d’appel seems to be that only the receipt by the applicant can be relevant. Interestingly, the Cour d’appel also offered another possible starting point for the time limit, namely the publication of lapse in the BOPI (Bulletin officiel de la propriété industrielle), which is the local equivalent of the European patent bulletin.

In this case, the time limit was found to have been complied with irrespective of the exact starting point. But if the request for restoration had been filed e.g. on December 1, 2015, it would then have made a world of a difference whether the starting point was October 19 or September 25. So, it is somewhat strange that the court did not more clearly state its position.

The one unfortunate thing about this case though is that one of the very few advantages of utility certificates as opposed to patents is their reduced cost. But in this instance, I would not bet that any money at all was ultimately saved, in view of all the efforts necessary to keep the certificate alive.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, April 25, 2017, Agromet Ejea SL v. Directeur général de l’INPI, RG No. 16/11489.