Gumming up a patent

Based on a number of judgments issued in France over the last couple of years, it seems that there has been a new trend towards the invalidation of patents due to extension of subject-matter. I have a feeling that, not so long ago, this used to be a ground of revocation that no one really took seriously outside of the EPO. And especially so in France, where there has been a long standing tradition of judges looking more closely at the description of a patent than at its claims, and coming up with their own definition of what the invention really is about, notwithstanding the exact wording used in the claims.

But as a famous singer once said, the times they are a-changin’, which brings us to the invalidation proceedings initiated by Normandy-based company Nexira against the British and Japanese owners of European patent EP 1611159. The patent relates to a modified gum arabic from Acacia senegal (that’s the scientific name of the tree from which the gum is collected). This gum can notably be used as an emulsifier in food products.

The main claim of the patent reads as follows:

A water-soluble modified gum arabic from Acacia senegal, having a weight average molecular weight of not less than 0.9 million Da or an arabinogalactan protein content of not less than 17 weight %, and an RMS-radius of gyration of 42.3 to 138 nm, obtainable by heating unmodified gum arabic at 110°C for not less than 15 hours, wherein the weight average molecular weight, arabinogalactan protein content, and RMS-radius of gyration are obtained by processing the data obtained by subjecting the modified gum arabic to a GPC-MALLS using software ASTRA version 4.5 and wherein said data for the whole peaks in the chromatogram obtained using an RI detector are processed as two peaks, the two peaks being divided into the eluted fraction of high molecular weight components containing the arabinogalactan protein of the gum arabic which eluted first and the eluted fraction of low molecular weight components which eluted at a later time, wherein the arabinogalactan protein content corresponds to the obtained recovery ratio of the peak of the eluted fraction of high molecular weight components which eluted first.

The crux of the discussion was the feature of the radius of gyration. The range of 42.3 to 138 nm was not disclosed per se in the application as filed; but the end values of the range were disclosed in the context of two respective examples.

The judgment does not explicitly refer to the case law of the Boards of appeal of the EPO. But there can be little doubt that the court relied on it, since they called this situation a case of “intermediate generalization”, which is typical EPO parlance. What is more, the standard put forward by the court for determining whether the intermediate generalization is admissible or not closely matches the test routinely applied in Munich. Said the court:

It is possible to generalize a range of values from an example, but such intermediate generalization is only admissible under Art. 123(2) EPC if the skilled person can deduce without any doubt from the application as filed that these features are not closely linked to other features of the embodiment, but that they directly and unambiguously apply to the more general context.

In order for this intermediate generalization to be admissible, it must result from the non-ambiguous information that the skilled person would derive by reading the example and the content of the application as filed.

Taking into account the whole content of the application, determining whether features isolated from the examples are closely tied to other features or not, and using direct and unambiguous derivability as a threshold: all European patent attorneys are familiar with these principles, as they are cornerstones of the assessment of extension of subject-matter by the Boards of appeal.

In the Nexira case, the outcome of the Court’s appraisal was negative:

In the present case, the skilled person could not deduce, without any doubt, when reading the international application, that these features, taken from two embodiment examples based on gum arabic having particular dimensions and composition, are not closely linked to other features of these embodiment examples, and directly and unambiguously apply to the more general context.

As a result, the addition of this range of radius of gyration RMS in claim 1 of the EP’159 patent whereas it was not in claim 1 of the international application, shows an extension of its subject-matter beyond the initial application.

How do you write "gum" in Arabic?
How do you write “gum” in Arabic?

Strictly speaking, it would have been interesting to get more detailed explanations in the decision as to why the radius of gyration in the examples should be viewed as being specific to the samples in question. One can also wonder about the relationship between the range of the radius of gyration and the other parameters recited in the main claim, such as the molecular weight, the protein content and the product-by-process features.

The question of who primarily has the burden of proof in this respect (the plaintiff or the defendant-patent proprietor) is also an interesting one which is not clearly addressed in the judgment –  as there was probably no reason for addressing it.

Anyway, the outcome of the case should not come as a real surprise: it is a risky gamble indeed to take values from an example section of a patent application and insert them into a claim. If the patent at stake had been subjected to opposition proceedings, chances are it would probably have faced a hard Art. 100(c) EPC challenge. The patent proprietors were lucky enough not to be faced with an opposition; but not lucky enough to get their patent tried by a court insensitive to EPO traditional case law.

This situation stands in sharp contrast with other French cases previously discussed here and here, where major deviations from EPO case law were observed, in connection with the issue of patent eligibility.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 4ème section, Nexira v. San-Ei Gen FFI Inc. et al., May 28, 2015, RG No. 12/11963.

Quel dommage – part 2

In this second post on damages assessment in the Vorwerk v. Taurus case, I will focus on the computation of the royalty rate used for the assessment of damages (the first part of the story is here).

According to established case law, the rate used for assessing damages needs to be based on a reasonable royalty rate that the parties would have agreed on, had they negotiated a license agreement, but then a multiplying factor needs to be applied to the basic royalty rate. This is often termed an indemnifying royalty.

Some believe that, according to a fundamental principle of civil law, damages cannot have a punitive nature as they are meant to repair a harm suffered by a victim (“all the harm, but not more than the harm”). Thus, an indemnifying royalty simply reflects the fact that a defendant found guilty of infringement would not be in a normal bargaining position and would be put at a disadvantage at the negotiation table.

Others are of the opinion that an indemnifying royalty is necessarily punitive in nature. This line of thought in fact seems to be consistent with what the court itself suggests in the Vorwerk damages decision:

[…] One should take into account the detrimental situation that the patent proprietor is in, since they have to put up with an exploitation of the invention that they have not decided. It would thus be unfair to simply apply a royalty rate equivalent to the one that they would have agreed on if they had negotiated a license agreement.

In the case at hand, the court was confronted with three different calculations of a royalty rate.

The first calculation was the expert’s: the defendants’ operating margin before taxes is 9.6%. A normal royalty rate should thus be 25% of this figure, so approximately 2.5%. However, this rate should further be cut in half and then rounded up to 1.5%, taking into account the fact that the importance of the patent was not paramount for marketing the food processors at stake. Then, three possible multiplying factors were offered by the expert to the court, namely 1 (which is not much of a multiplying factor), 2 or 3.

The second calculation was the plaintiff’s: the main difference between this calculation and the expert’s is that the plaintiff requested that the rate be calculated based on the defendants’ contribution margin, which was assessed to be significantly higher than the operating margin before taxes, at 22%. According to the plaintiff, some fixed costs were erroneously deduced by the expert from the margin, since the defendants would have supported these fixed costs anyway.

Then, the plaintiff suggested a royalty rate of 25 to 33% of the above margin, to which a true multiplying factor should be applied. The plaintiff disagreed with the expert’s finding regarding the lesser importance of the patent for the food processors at stake. But on the other hand, they agreed that those food processors in which the infringing steam-cooking cover was only optional (namely the Mycook Pro series) should be subjected to a lower overall rate than food processors in which the infringing steam-cooking cover was mandatory (the Mycook series).

Last (and least, in terms of figures), the defendants’ calculation was based on the proposition that the royalty rate should not be based on the overall turnover of the complete food processors, but rather on the turnover attributable to the steam-cooking cover. The price of the cover represents approximately 8% of the overall price. As far as the royalty rate itself is concerned, Taurus sided with the expert’s proposition of 2.5% to be cut in half – so, 1.25% without any rounding up. Taurus objected to any multiplying factor, by relying on the principle recalled above that there cannot be punitive damages under French law, and by adding that Vorwerk did not suffer from any negative consequence in the absence of evidence of any direct or indirect exploitation of the patent.

A calculator of royalty rates
A calculator of royalty rates

So, in summary, the three royalty rates offered to the court were:

  • 13% for the Mycook processors and 6.5% for the Mycook Pro processors (patentee);
  • 1.5, 3 or 4.5% for all processors, depending on the indemnifying multiplying factor (expert); and
  • 0.1% for all processors, if my math is correct: 1.25 % times 8 % (defendant).

The court selected the middle option, namely the expert’s. And among the three possibilities offered by the expert, they chose again the middle one, namely the 3% rate.

In particular, the court agreed with the selection of the operating margin, and with the proposition that 25% of this margin should represent a valid starting point for the royalty rate. Said the court, this coefficient of 25%

represents an allocation key which is commonly accepted in terms of patent licensing. 

It is indeed common thinking in patent licensing that approximately one fourth to one third of the profit made by the licensee owing to the invention should be paid back to the licensor, while the licensee should keep the rest of the profit. It is rather comforting that the court adopted this real-world pragmatic approach.

The court also agreed with the reduction of the rate suggested by the expert:

[…] In the marketing of the food processors at stake, the part taken by the exploitation of the patent itself needs to be put into perspective and reduced since other intangible assets may have contributed to the sales of these products.

Again, this looks like a sound approach. Traditional French case law on computation of damages was mainly established in situations wherein one invention equals one patent equals one product. But this probably no longer correctly reflects the current state of affairs, IP-wise. Even though food processors are not smartphones which incorporate technologies protected by thousands of patents, it seems plausible that they may incorporate a number of patented inventions – not to mention other sources of value.

Finally, the court applied a multiplying punitive-like factor of 2, apparently trying to strike a balance between a low factor which would be unfair to the patentee who did not agree to the exploitation of their patent, and a high factor which would also be unfair since the patentee did not clearly explain how the patent is directly or indirectly exploited by them and thus how there could be additional economic harm.

As mentioned in the first post on this topic, an additional amount of 6,255 euros was also awarded in terms of financial harm. This additional amount was calculated by the expert (with the approval of the court) based on the long-term interest rate in Germany, and was meant to compensate for the accrued interest that the claimant should have earned based on the collected royalties.

It would be interesting to see whether readers believe that other national courts in other European countries would have likely come up with the same kind of figure or whether there are any marked differences of approaches.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 2ème section, September 26, 2014, Vorwerk & Co. Interholding GmbH v. Electrodomesticos Taurus SL, Lacor Export, Lacor Menaje Profesional SL & Taurus France. RG No. 2008/10729.

Quel dommage – part 1

As interesting as revocation verdicts may be, patents are sometimes found valid and even infringed.

In such a case, a court in France has two main options for determining the amount of damages: either they decide on the quantum in the same ruling in which the patent is found valid and infringed, or they decide on validity and infringement first and then appoint an expert with the task of making a recommendation to them; it is in view of the expert’s report and of further submissions of the parties that the court then determines the quantum.

Damages computation tends to be more detailed and better reasoned in cases of the second category than cases of the first category. Therefore, I thought it would be interesting to have a closer look at one recent case where use was made of an expert, as an example of computation methodology.

On January 11, 2011, the Paris Tribunal de Grande Instance (TGI) held that Electrodomesticos Taurus SL and other codefendants infringed a European patent owned by Vorwerk & Co. Interholdings GmbH by inter alia importing food processors of the brands Mycook and Mycook Pro into France and marketing those on French territory. The TGI appointed an expert and entrusted him with the task of estimating the proper amount of damages.

This second part of the procedure led to another judgment handed down on September 26, 2014 – yes, this is three and a half years later I am afraid. In this judgment, Vorwerk was awarded 127,367 euros of damages corresponding to lost profits, and 6,255 euros corresponding to financial harm. However, since they had already been awarded 310,000 euros as a provision on damages, they in fact had to pay the difference back to the defendants.

This is probably not the end of the story though, since:

  • there may be an appeal pending further to the ruling of September 26, 2014 (any information that readers may have on this question would be welcome);
  • although the initial validity and infringement verdict was confirmed on appeal on February 15, 2013, the Cour de cassation (supreme court) set aside the appeal judgment on November 25, 2014, due to some procedural violation during the appeal proceedings, and remitted the case back to the Cour d’appel in a different composition.

So, on the procedural standpoint, this is a relatively unusual and interesting situation indeed.

Anyway, let’s go back to this amount of damages of 127,367 euros and how it was reasoned by the court.

Vorwerk had not been working the patent itself – although other companies of the same group had apparently been. Therefore, the “lost profits” that they claimed were in fact lost royalties.

In order to assess these lost royalties, a classical two-step process was applied: first, the turnover generated by the infringement (or “infringing mass”) was calculated; second, the royalty rate was assessed.

As to the first step, the court defined the starting point and the end point of the period of time during which infringement took place. The end point was the date of the first judgment on validity and infringement. The plaintiff requested that posterior acts be also taken into account but this request was denied since such posterior acts were prohibited by the injunction pronounced in the first judgment, so that any breach of the injunction should give rise to specific remedies (to be recovered in different proceedings).

The starting point was taken to be three years prior to the commencement of the legal proceedings against the defendants, in keeping with the French statute of limitation (the limitation period has now been extended to 5 years according to new legislation).

One interesting defense raised by some of the codefendants was that they were not “direct infringers so that the starting point should be postponed as far as they were concerned. Under French law, manufacturers or importers of infringing products are defined as direct infringers and are therefore liable for the infringement regardless of whether they were aware of it. In contrast, distributors, users or marketers of infringing products are liable only insofar as they are aware of the infringement – provided that they are different from the manufacturers / importers.

Here, there were four codefendants: two Spanish companies and two French companies. The two French companies argued that they were not direct infringers, and therefore were only liable when they became aware of the infringement, that is when legal proceedings were started against them.

This argument was unsuccessful, as the court did not want to make any difference between the defendants:

It obviously derives from the judgment of January 14, 2011 that the court held Taurus France and Lacor Export [the French companies] liable for the importation acts and did not distinguish their case from that of Taurus Spain and Lacor Spain [the Spanish companies].

Besides, even though these companies are incorporated under French law and are located in France, it results from the statements provided by the defendants to the expert that Taurus France exclusively buys from Taurus Spain, and that Lacor Export handles order placed in France for Lacor Spain, so that they are co-authors of the acts of importation.

Therefore they are liable regardless of any awareness. Consequently, the starting point for the infringement period should be three years prior to the commencement of legal proceedings against each company, as posited by the expert.

The exact date of the starting point was not the same for all companies as legal proceedings were started against them at different points in time, but the take-away message here is that indirect infringers (such as marketers or distributors) having close ties with direct infringers (manufacturers or importers) are not viewed as actual indirect infringers but rather as co-authors of the acts of direct infringement.

Then the court turned to the determination of which articles were infringing. Here, one issue was that some food processors were sold with a steam cooking cover while others were not. The court analyzed the first judgment and deduced from this judgment that the patent infringement was related to the presence of the steam cooking cover. Food processors sold without a steam cooking cover were not infringing. On the other hand, the defendants also marketed steam cooking covers independently of (the main part of) the food processors.

A steam cooking cover for humans.
A steam cooking cover for humans

The court decided that the number of infringing articles corresponded to the sum of (1) food processors sold with a steam cooking cover and (2) steam cooking covers sold separately. The court’s reasoning was that standalone steam cooking covers were necessarily meant to be used with food processors previously sold without a cover. Therefore, the sum of (1) and (2) should indeed be equal to the number of cover-equipped food processors held by end users.

Based on the definition of the relevant period of time and of the relevant articles, the court was able to compute the overall turnover generated by the infringement – based on the numbers provided in the expert’s report.

In the second post on this topic, we will look at the second main step of damages assessment, namely the computation of the royalty rate.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 2ème section, September 26, 2014, Vorwerk & Co. Interholding GmbH v. Electrodomesticos Taurus SL, Lacor Export, Lacor Menaje Profesional SL & Taurus France. RG No. 2008/10729.

Red card for Orange

In a previous post, I gave an example of a French patent which was revoked because it was considered as not relating to an invention but to a mere discovery.

Still on the subject of patent eligibility, the same section of the Paris Tribunal de Grande Instance (TGI), chaired by the same presiding judge, Ms. Courboulay, confirmed their relatively harsh stance on this topic, this time in relation with a computer-implemented invention. The judgment was already reported on the Blog du droit européen des brevets but since it is really remarkable I thought it would be worth mentioning it here as well, just in case some readers missed it.

The telecommunications giant Orange brought an infringement action against its competitor Free, based on European patent No. EP 2044797. Unsurprisingly, Free filed a revocation counterclaim, and, as the title of this post suggests, Orange lost the case. Indeed, the court revoked all of the patent claims which were asserted by Orange.

Some of these claims were held invalid due to lack of novelty, but this is not the part of the decision which I would like to discuss. I would like to focus on claims 12, 13, 14 and 15.

Claim 12 read as follows:

Computer program product downloadable from a communication network and/or stored on a computer-readable medium and/or executable by a microprocessor of a mobile terminal (2) including means for detecting the radio field (160) of a base station (16) of a home local area network (150), said home local area network including one or more home equipments (11-14) connected to a home gateway (15), said mobile terminal (2) including means for exchanging data with said gateway via a radio link with the base station (16), characterized in that it includes program code instructions for sending to said home gateway (15), in response to detection of the radio field (160), information relating to the establishment of a multimedia session in progress between said mobile terminal (2) and an applicative system (20), and in that it further includes program code instructions for displaying a list of home equipments sent by the home gateway (15) and means for selecting at least one home equipment (11; 12; 13; 14) in said list.

The court was apparently not very happy with how this claim was drafted. They stated:

Article 52 EPC is perfectly clear and does not require any interpretation: programs for computers as such are excluded from patentability, and this is because they are protected by copyright.  

The emphasis on “as such” was put by the court, and the way I understand it, the expression was interpreted as meaning that programs for computers are “inherently” or “absolutely” excluded from patentability.

But, wait a minute, isn’t this understanding completely at odds with the position taken by the Boards of appeal of the EPO? After all, the Enlarged Board of Appeal, in its opinion G 3/08 on computer programs, stated that:

The present position of the case law is thus that […] a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium (reasons, 10.13).

In other terms, according to the case law that the Enlarged Board endorsed, the wording “as such” in Article 52 means quite the opposite to what the TGI believes, i.e. it means that only pure computer programs can possibly be excluded from patentability, but any mention of a technical feature such as a computer or a storage medium is sufficient to escape exclusion from patentability. To make this easier to understand, the Enlarged Board made a comparison between computer programs and pictures (also excluded from patentability as such), which can be printed on a (patentable) physical support:

a claim to a computer implemented method or a computer program on a computer-readable storage medium will never fall within the exclusion of claimed subject-matter under Articles 52(2) and (3) EPC, just as a claim to a picture on a cup will also never fall under this exclusion.

The TGI was evidently well aware of the EPO case law on the issue but was unimpressed:

It cannot be validly argued, as the sole defense to deny nullity of these two claims, that the practice of the EPO is to admit claims to programs for computers by calling them ‘program-products’.

In fact, it cannot be accepted that a mere trick of language would make it possible to grant patents contra legem. Indeed, the grant of patents to computer programs, even if they are called program products, is not supported by any statute or by any difficulty of interpretation of the EPC, and on the contrary those are clearly excluded as such from patentability.

Claims 13 and 14 contained the same wording of “computer program product” as claim 12 and they were therefore smashed for the same reason.

As for claim 15, it was directed to a “storage medium storing the program according to any one of claims 12 to 14”, but the court found that this does not make any difference:

In this case, and in view of the way claim 15 of the EP’797 patent is drafted, it appears that the storage medium does not have any particular technical feature. It is again a dressing which does not make it possible to escape the exclusion from patentability which concerns computer programs. There is in fact no more information on this storage medium in the description of the patent, and Orange has obtained a protection and the consequent monopoly on an object the only function of which is to contain computer programs which are excluded from patentability.

Claim 15 was therefore canceled as well.

US5331499-1
A storage medium suitable for storing non-inventions.

Scathing comments in a ruling often add some spice to it, and Ms. Courboulay did not skimp on those. In this respect, her statement on the EPO’s contra legem practice of granting patents to computer program products is nothing short of astonishing. I will leave it up to the readership to decide for themselves whether the red card mentioned in the title of this post should in fact be shown to her court rather than to the claimant.

But beyond this parfum de scandale, applicants should keep in mind that, at least according to latest case law, claims directed to computer programs seem to be simply outlawed in France. Therefore, they should definitely include method claims in their French or European applications if they want the novelty and inventive step of their inventions to be assessed at all.

In view of the very firm stance taken by the court in Orange, I would not bet on any argumentation advocating the technical character of computer program inventions in front of the TGI.

As to the significant discrepancy between French case law and EPO practice, there are other striking examples (not just in the software field), and I will probably come back to this issue in future posts.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 1ère section, SA Orange v. SAS Free & SAS Freebox, June 18, 2015, RG No. 14/05735.

Revocation out of thin air

Patent eligibility has been quite a hot topic in the U.S. since the Alice, Myriad and Mayo Supreme Court decisions. Whether a patent simply attempts to preempt an abstract idea or a law of nature or whether it is truly directed to an application of those – worthy of patent monopoly – is, as far as I can understand, the million-dollar question that everyone now has to struggle with on the other side of the Atlantic, and will have to struggle with in the foreseeable future.

Over here, on the Old Continent, things look pretty different, on the face of it. The EPO has set a low threshold for the so-called “technical character” requirement, actually such a low threshold that it is barely a threshold at all. Of course, this is not the end of the story, because “non-technical features as such, do not provide a technical contribution to the prior art and are thus ignored in assessing inventive step” as the November 2014, soon-to-be-revised Guidelines for examination nicely put it. So, inventive step can be a real challenge, but patent eligibility is at least one concern that applicants can forget about, right?

Well, we may have to think again, in view of a judgment from the Paris Tribunal de Grande Instance (TGI) of July 3, 2014.

This case is an action for revocation brought by a company named Evinerude against French patent No. FR 2822237 assigned to Aair Lichens. According to the first and only claim of the patent, the invention relates to the use of lichens exposed to sources of emission of chlorinated compounds, and used in the form of transplants or cultivars, for making quantitative measurements of polychlorodibenzodioxine (PCDD) or polychlorodibenzofurane (PCDF) compounds and evaluating their impact on the environment.

Indeed, it turns out that lichens are good indicators of the presence of PCDD and PCDF air pollutants. Thus, by measuring the amount of these chemicals in lichen samples, it is possible to evaluate the level of atmospheric pollution that they have been exposed to.

An elegant breathing device which could become handy in case of a polychlorodibenzodioxine or polychlorodibenzofurane leak.
An elegant breathing device which could become handy in case of a polychlorodibenzodioxine or polychlorodibenzofurane leak.

It looks like the PCDD and PCDF-loaded Parisian air was not favorable to Atlantic coast-based Aair Lichens, since the TGI revoked the patent based on Article L.611-10 of the Code de la Propriété Intellectuelle, which mirrors Article 52 of the European Patent Convention and provides a list of things which are not inventions, discoveries being the first item in the list.

The court started by recalling the long-standing principle that

A mere discovery cannot be patentable. Actually, the discovery preexists man’s intervention, whereas the invention is the result thereof. A discovery thus does not bring any novelty to the state of the art since it is at the stage of sheer knowledge. However, although the subject-matter of a discovery is not patentable, a practical application can give rise to the grant of a patent.

In this case, the invention relied on the discovery of a natural phenomenon, namely the absorption of PCDD and PCDF compounds present in the ambient air by lichens. The patent proprietor’s position was however that the patent was not directed to this discovery per se but rather to process steps of measuring the amounts of these chlorinated compounds in lichens and then evaluating their impact on the environment. But the court was not convinced, and replied as follows:

As it is drafted, the only claim of the patent does not protect the process steps but merely the statement that measurements can be made to evaluate the impact on the environment, which is not a process invention. The technical means for carrying out this statement could be protectable if they were described and claimed as such.

The patent was thus revoked.

To me, this looks more like a US-type approach than an EPO-type approach. After all, it seems that the court’s reasoning could be applied in a similar manner to many use claims which are routinely granted by the EPO.

An important caveat is that the patent at stake was somewhat light, with four pages of description and a single claim. It appears from the file wrapper that the application was drafted and prosecuted by the inventor himself, which is always risky. In fact, it is not every day that one comes across a claim starting with the words “the invention relates to”. The text does contain an example of measures performed in samples taken from various geographical areas, but there are no detailed explanations in the text on a possible process to be implemented. Also, the court noted that the skilled person, at the filing date, already knew that the pollution of a site by PCDDs and PCDFs results in atmospheric contamination, and that these compounds are easily absorbed by plants such as lichens [sic, I am not sure lichens can be considered as plants] so that these are good pollution indicators.

In other terms, one could infer from the court’s findings that the patent could also have been revoked for insufficiency of disclosure or lack of novelty or inventive step.

It is difficult to assess to what extent these flaws played a part in the TGI’s decision. Would the situation have been different if the patent had contained more technical information or if the prior art had been less relevant? It is certainly possible. But on the other hand, the way the claim was drafted did seem to play a critical part in the decision.

Therefore, when an invention relates to an application of a natural phenomenon, applicants would be well advised to draft at least some claims reciting the invention in terms of practical process steps and not just use claims broadly covering the basic concept of the invention.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 1ère section, Evinerude SARL v. Philippe Giraudeau & SARL Aair Lichens, July 3, 2014, RG No. 10/14406.