Where is the finish line?

Did you think you would never hear again of the thrilling subject of the French statute of limitations, and of its very controversial application to patent nullity suits? Well, think again.

In a previous post on the loi PACTE, I mentioned that the new provision putting an end to the time bar on patent nullity suits would immediately enter into force but that it remained to be seen how this would be interpreted in practice.

And so it is that, after spending lots of ink and pixels on how the statute of limitations applies to patent nullity actions, we may now have to devote more ink and pixels to a discussion on how exactly the statute will no longer apply.

Without further ado, as they say, I will now leave the floor to Matthieu Dhenne who will provide his insight on this matter.

I would like to come back to an issue close to my heart, as readers of this blog already know: the limitation period of actions for the annulment of industrial property titles.

I will not recall here the entire debate, already mentioned many times on this blog. The issue can be summarized by recalling that French judges applied a 5-year limitation period of the French Civil Code to these actions and that a debate has arisen about this case law, in particular because of the disastrous solutions to which it led.

The legislator has since intervened to combat this case law by declaring that these actions shall not be time-barred.

But a new debate is starting to emerge. Indeed, French Act No. 2019-486 of May 22, 2019, on the growth and transformation of companies – known as the “PACTE Act” – specifies that actions for the annulment of industrial property titles are not subject to any limitation period, while providing that that this applies to the “titles in force on the day of its publication“.

How should we interpret this provision?

The statute of limitations – the finish line.

Let us immediately rule out the interpretation according to which the parliament, by aiming at the titles in force on the day of the publication of the act, has excluded, on the contrary, the titles that were not (yet) in force on this date. This interpretation is disqualified, because it makes no sense. Indeed, we cannot consider that a transitional provision may have another object than transitional law, which deals with the application of an Act to past facts (i.e. facts that happened prior to its entry into force).

Only one question seems interesting with regard to the transitional provision discussed here: could it induce a retroactive effect by applying to titles in force on the day of the publication of the act, even though this day is after the limitation period has expired?

For instance, could a Court of Appeal apply the new Act to a case in which the limitation period applied at first instance? We should recall that the prevailing principle in French Law is that of the non-retroactivity of new laws, which is deduced from Article 2 of the French Civil Code; and that its counterpart is the immediate effect of new laws. Article 2222 of the same Code specifies that the limitation period, once expired, cannot be called into question.

The legislator may, however, provide, by way of exception, for the retroactivity of a law, if this is clearly and sufficiently stated. In this case, Article 124 of the PACTE Act does not specifically state that it is “retroactive”, but this is not required by Article 2 of the Civil Code or by the interpretation of the French Supreme Court (Cour de Cassation). Moreover, the specific mention that the law is “retroactive” would, as such, be of little use because it would be too vague.

Except if one considered that a specific reference to retroactivity is indeed mandatory – which the Cour de Cassation has never held – there is no evidence to suggest that the transitional provision in question is not clear or sufficient. We are therefore in a situation where it will be up to the judges to interpret the provision as closely as possible to the spirit of the text.

It must be kept in mind that the legislator intended to put an end to a jurisprudence that was belied by its text. It was therefore appropriate to refrain from restricting its application either to ongoing trials or to proceedings for annulment introduced after its entry into force or to actions for annulment based on titles issued after its entry into force. On the contrary, the text had to be worded in such a way that it could apply to all titles in force, which included all the aforementioned cases, but also titles previously issued and which had not given rise to legal proceedings on the date of the publication of the law.

Thus, the wording “titles in force on the day of its publication” seems to cover all pending and future actions and seems therefore retroactive.

I will have the opportunity to come back in more detail to this subject next week on @DeBoufflers Blog and then in the journal Propriété Industrielle (December issue); the latter will include a detailed response to an article supporting the opposite thesis, which was published in the same journal this summer.

Thank you Matthieu.

Transitional provisions are often tricky and can give rise to divided case law.

We have been there before, when the number of courts having jurisdiction in patent matters was reduced from 10 to 7 and then down to 1. And so, I would not be surprised if we got surprised again.

Data scarcity

Data scarcity is not the first feature that comes to mind when one thinks about our present time.

Plethora, excess and overplus are probably more accurate descriptors.

But French patent law may be (once again) an exception, as there has been for a number of months a real shortage of online accessible judgments.

Like most court decisions in this country, patent law rulings are in theory public documents. But, nowadays, can a document be considered as truly made available to the public if it is not available online, and if you have to place an official written or in-person request with the court’s clerks in order to hopefully get a copy?

In recent years, access to patent law decisions has made huge progress, in particular thanks to the online case law database hosted by the French patent office (INPI). But the database is not up-to-date and has not been for months now.

As far as I understand, the problem was caused by a new general policy of the justice administration, reflected in a memo dated December 2018.

The memo acknowledges that most judgments must be made available to the public, and that copies thereof can be individually communicated, upon request.

But then the memo adds that a massive communication of decisions “should be in principle avoided“. It provides the courts with a number of reasons why they can / should refuse such requests:

  • Such requests can place an undue burden on the (notoriously understaffed and underfunded, I should add) departments in charge.
  • Massive communication can breach principles of data protection.
  • In particular, decisions should not be communicated before being redacted to remove personal information.

I understand that this policy aims at thwarting legaltech companies (as well as more conventional editors?) eager to siphon off all of the justice administration data to process it (and make a profit out of it). And there may be good reasons for this. But the policy apparently had the side effect of also freezing access to legal information on the website of the INPI – a public institution.

A number of appeal and cassation appeal rulings are still published more or less regularly on the INPI website – although there is no way to know if this publication is exhaustive or not.

On the other hand, there are almost no more recent first instance decisions on the database (I can see only two first instance patent-related rulings issued in 2019 as I am writing this post). And the current general justice administration website (Legifrance) has zero – it has always been little useful in the field of patent law. This leaves us with subscription-based websites – but they are subscription-based; and I have heard that their collections may also be incomplete.

I assume that the administration’s plan is to set up its own new platform giving access to all decisions, including first instance ones.

Consider article L.111-13 of the Code de l’organisation judiciaire. When it was introduced in 2016, the initial wording of its first paragraph was:

Without prejudice to particular provisions on access to justice decisions and their publicity, judgments issued by judicial courts are made available to the public for free, making sure that privacy of those concerned is not impinged on. 

In March 2019, this paragraph was amended as follows, and another one was inserted:

Subject to specific provisions on access to justice decisions and their publicity, judgments issued by judicial courts are made available to the public for free in electronic form

Family names and first names of the individuals mentioned in the judgment, when they are parties or third parties, are redacted prior to release. Any element making it possible to identify parties, third parties, judges and court clerks is also redacted when its disclosure may impinge on the safety or privacy of these persons or their relatives. 

As you can see, things have gotten more specific: all decisions should fortunately be available online, not just communicable upon manual request. But they have to be carefully redacted first – including possibly by deleting the judges’ names. Could it be that this constraint is what is making everything more complex?

Do not expect to find this type of functionality in the future government case law database.

Another paragraph in the same article adds that the specifics of these provisions will be set by way of executive order. As far as I understand, no such executive order has been issued yet – so that the above provisions are not yet applicable. 

Interestingly, the December 2018 memo mentions the following:

The fact that article L. 111-13 […] on open data of court decisions is not applicable in the absence of an executive order to this end cannot be bypassed by way of a massive communication process which would not provide useful guarantees for the protection of personal data. 

In other terms, until the administration’s intended complete open database materializes, there will be no similar database elsewhere.

If any reader is privy to information on the timing of completion and release of the future database, I would be happy to know. Otherwise, let’s hope that the INPI will soon be able to resume a timely publication of all patent-related rulings.

As shown above, redaction of personal information in judicial decisions seems to be a primary concern of the administration. In this respect, another interesting paragraph was introduced into article L. 111-13 in March 2019:

Identification data of judges and court clerks cannot be reused so as to assess, analyze, compare or predict their real or assumed professional practice. A breach of this prohibition is punished according to articles 226-18, 226-24 and 226-31 of the Code pénal, without prejudice of measures and sanctions provided in Law No. 78-17 of January 6, 1978 relating to computer sciences, data and liberties. 

By way of information, article 226-18 Code pénal sets maximum penalties of a five-year imprisonment and a EUR. 300,000 fine. The other two articles add complementary sanctions for legal entities and individuals, respectively.

How very French to try to make us forget that judges are individuals having their own specific views – and what a contrast with what they do in the U.K. or the U.S.

On the one hand, I can see why data analysis targeting specific magistrates can be a problem. What if, knowing that Mr. X or Mrs. Y usually rules in this or that manner, parties are able to go forum-shopping by choosing the judge they like best. My understanding is that this is not possible for cases on the merits, but is possible for ex parte petitions, such as infringement seizure petitions, as different judges of the third chamber of the Paris Tribunal de grande instance (TGI) are on duty on different days of the week. And I am talking only about IP here, I am sure there are more serious potential concerns in other areas of the law.

On the other hand, if there are indeed differences of practice between judges, and I am still talking only from an IP law perspective, is this not information the public should be entitled to have?

One of the major issues of patent law, in my view, is unpredictability for all stakeholders. When a company asks whether a patent is valid or not, whether it is infringed or not, or what to do in order not to infringe, those are usually tremendously complex questions.

They make our lives as patent attorneys interesting, I will grant you that. But, on the economic standpoint, not being able to have any certainty on issues of validity and infringement is a problem. It also paves the way for various sorts of abuse. Think about the infringer willing to take a chance with a patent that its owner will not be certain to be able to successfully assert. And think about the patentee knowingly wielding its invalid title as a sword of Damocles.

Therefore, isn’t all information allowing stakeholders to reduce the level of uncertainty as much as possible legitimately useful?

Last week’s post on the different insufficiency doctrines used by Board 3.2.05 and Board 3.2.06 of the EPO offers a nice example. Isn’t this discrepancy important to know as a patentee, opponent or third party involved in the diaper industry or any other relevant technical field?

Even though the judges of the TGI work together in order to harmonize their judgments as explained in this post, they may still have different approaches. Even more importantly, the appointment of new judges to the IP chamber may also bring about significant changes.

By restricting (heck, by outlawing) any judge-based data analysis, stakeholders will be left in the dark.

In fact, this may even foster inequality between patent professionals, and between patent stakeholders. There will always be lawyers in the know, because they regularly handle many cases in front of the same judges and may even occasionally have informal discussions with them – and all the others.

Now, I would like to bring these thoughts to a conclusion, on a more self-centered point of view.

Obviously, this blog cannot properly report on French case law without any court decisions.

I do have a couple of sources, and appeal rulings seem to still be forthcoming. But first instance decisions are also essential to review; because many cases don’t give rise to an appeal ruling, and because first instance judgments tend to be more thorough and thus more interesting to analyze.

So I would be most grateful if readers could pass on what they have, so that it can be shared here.

I am happy to cite my informants or to keep them anonymous. And if you supply a decision and would like my post to include a comment from you on the decision, I am also happy to oblige.

A packed Pacte

France has a funny bicameral system.

Both chambers of the parliament, the Assemblée nationale and the Sénat, get to debate on, amend and vote bills. But if they fail to agree on the same version of a bill, in the end the Assemblée nationale has the last word.

And so it is with the so-called “Loi Pacte“, first discussed on this blog post. There was some suspense as to what the bill would finally contain, as it bounced back and forth, being amended and dis-amended from one chamber to the other. But now the suspense has come to an end as the bill has been finally adopted and will become the law of the land.

Well, unless there is a last minute surprise, as the constitutionality of the bill will likely be challenged in front of the Conseil constitutionnel (our constitutional supreme court) by disgruntled members of parliament.

The final text is here and it is 408 pages long (yes, that is some packed Pacte). It has many different aspects, including some controversial ones – like the privatization of ADP (the company that runs Paris’ airports). It also contains some provisions on IP, including just a few ones on patent law – but they are very important provisions indeed.

Basically, the report that I previously made on the draft still stands, although the articles have been renumbered:

  • The maximum duration of utility certificates will be brought from 6 years to 10 years (article 118).
  • It will be possible to convert a utility certificate application into a patent application within a deadline which still needs to be determined, whereas only the opposite is possible as of today (article 118).
  • The government is authorized to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent (article 121).
  • The INPI (French patent office) will be able to refuse a patent application if its subject-matter is not an invention or is excluded from patentability, in contrast with the current formulation, per which its subject-matter is “manifestly” not an invention or is “manifestly” excluded from patentability (article 122).
  • The INPI will be able to refuse a patent application if its subject-matter is not novel or not inventive, in contrast with the current formulation, per which an application may be refused if it was not modified despite a “manifest” lack of novelty (article 122).
  • Infringement actions will be time-barred five years after the day the right owner knew or should have known the last fact allowing them to act, as opposed to the current formulation, which is five years “from the facts” (article 124).
  • The statute of limitations will no longer apply to patent nullity actions (article 124).

So, there you have it, I don’t know if it is spring or winter, but a new season is definitely coming.

In the year 2525 – if patents can survive.

So what next? Well, first we will have to carefully look at transitional provisions.

In this respect, I have noted the following:

  • The new provisions on utility certificates shall enter into force when the implementing decree is published, or one year from the publication of the law at the latest.
  • The timeline for the introduction of the opposition proceedings is still unclear, as it will depend on the regulations (ordonnance) that the government will issue.
  • Provisions extending the scope of examination of patent applications by the INPI shall enter into force one year from the publication of the law.
  • The new provision on the statute of limitations for nullity actions will immediately enter into force – but will have no effect on decisions that have become res judicata. It remains to be seen how this will be interpreted in practice.

The bottom line is that, regarding the biggest changes for patent applicants, patent attorneys and the patent office, we have some time to get prepared – but we all know how that usually flies.

The nitty-gritty of the new system is still unclear and will require our full attention.

Moreover, another question mark is how the INPI will adapt to this upheaval.

Based on a report on a meeting between the INPI management and representatives of the patent profession a few weeks ago, the following seems to be contemplated at present:

  • The projected date of entry into force of the patent opposition proceedings is January 1, 2020 (this is quite ambitious).
  • The projected start of the examination of inventive step is mid-2021 (this is because the new law will only apply to newly filed applications, I presume).
  • In terms of HR efforts, 15 patent examiners currently working on a backlog of national search reports will be redeployed to deal with opposition cases, and 16 new patent examiners will be hired to deal in particular with the increased workload related to the examination proceedings.

We also learn from this report that the new French “provisional patent application“, that we have heard of a number of times, is not dead. It should be created soon by way of a government decree.

I am curious to know what such a provisional application will look like. So far, patent professionals have been extremely skeptical about this – to put it mildly.

According to one apocryphal anecdote, President Macron was told by a French start-upper a few years ago that U.S. law is much more favorable to innovators than French law, because they have provisional applications in the U.S.

As a reminder, filing a French patent application without claims and without paying any taxes gives you a filing date, which is all you need to later claim priority. So, if there is any truth to this anecdote, it probably means that our President never met a French patent attorney – or at least that such a meeting did not leave as strong an impression as the ones he had with start-up folks. Which, let’s face it, is quite understandable.

An exclusive interview – part 2

This is the second part of my interview of Ms. Marie-Christine Courboulay, former judge at the Paris Tribunal de grande instance (TGI), in charge of IP matters and especially patent litigation.

The first part of the interview can be found here.

In today’s part, Ms. Courboulay reflects on the strengths and weaknesses of the French judicial system. She explains how French judges interact with their foreign counterparts, and tells us about the role of case law – French case law, foreign case law, and most interestingly EPO case law, as the rift between the approach of the Boards of appeal and the approach of French courts has not really been reduced over the past few years. The interview would not be complete without some words on the UPC, and you will see that Ms. Courboulay is very optimistic regarding the attractiveness of the Paris local division of the court.

Again, a big thank-you to Ms. Courboulay for sharing her views on this blog.

Justice explained to all.

What do you see as the main strengths and weaknesses of the French judicial system, particularly regarding patents, compared to our European neighbors?

The French judicial system has several advantages, in the field of patents:

  • In the case of provisional measures, an adversarial decision can be issued in an extremely short amount of time, namely within a few days: for example summons may be authorized by a judge on Monday, the oral argument may be heard on Wednesday, and the decision issued on Friday. This is perfectly compliant with the standard set by the CJEU, which intends to favor the adversarial principle even at this stage.
  • Infringement seizure, which provides evidence of alleged infringement through an ex parte request. It should be mentioned that this is the only ex parte order for which the judge does not have to justify the reasons why the adversarial principle does not apply.
  • Judgments on the merits that are now issued within a timeframe which is comparable to those of other European courts which base their decisions on continental law and not on common law, and which rule both on the validity of the patent and on infringement, since there is no bifurcation in French law.
  • A single court (the Paris TGI and the Paris Cour d’appel) which therefore concentrates the entire litigation, so that the judges handle many patents and develop their expertise.

As for the weaknesses: the main one is the judges’ turnover, and sometimes their level of English proficiency.

Do French IP judges have regular exchanges with their counterparts in other European countries? What do they get out of these exchanges? Do they strive for harmonization with the practice of neighboring countries? If so, what are the limits of this desire for harmonization?

French judges have regular exchanges with their European and even American colleagues at European or international conferences, but also at workshops organized by the EPO or by the EUIPO on trademarks and designs.

These exchanges are important because they make it possible to understand how the same text (when it is a regulation) can be interpreted differently from one country to the next, to understand nuances or consequences evaluated one way or another, and why certain specificities are preserved, when a directive is transposed.

These exchanges make it possible to learn about solutions found by other judges based on a same text and / or a same case, and to discuss future developments or modifications to be considered in the different areas of IP.

There is indeed a desire to harmonize IP case law; it is mandatory in the trademark and design area, and by extension, it is sought in the patent area as well, even if this not legally required. This is less true of copyright, except in the case of private copying, which has been the subject of numerous decisions by the CJEU.

However, the decisions of the CJEU which are meant to ensure harmonization are read by all European judges and should also lead to harmonization, including for example concerning SPCs or FRAND licensing.

There is one limit which is the applicable national law, when there is a difference between a directive and its transposition law.

For instance, regarding infringement, the notion of good or bad faith was not incorporated into the French statute, whereas it exists in other European countries, where a bona fide infringer and a pirate are not handled in the same manner. The French judge cannot make any prima facie difference based on the notion of good faith, which should not be taken into account when it comes to infringement.

On the other hand, French judges, due to the harmonization desire, and after discussing with other European judges who regretted an excessive difference relative to other national rights, introduced the requirement for the person who requests an infringement seizure to provide a reasonably accessible beginning of proof. This is taken from the non-transposed part of the directive, but the judge may add a criterion for assessing the grant of the order, i.e. a condition which preserves equal rights before the court dealing with the merits, and which especially preserves the rights of the alleged infringer.

If the Code de la propriété intellectuelle provides that the infringement seizure is a right, it should be borne in mind that there is no absolute right, that this right is subject to the appreciation of a judge who must in his/her decision weigh the grounds on which the request is based, and those which could lead him/her to refuse the infringement seizure or to limit it in its scope. This is in view of a concern, acknowledged by the CJEU, of proportionality of the rights of litigants, which must more particularly be taken into account in ex parte proceedings that lead to a particularly intrusive measure before any judgment.

In the context of multinational patent litigation, how important are foreign decisions in the eyes of French judges?

I know that there was a time when French magistrates said that they were not bound by foreign decisions, and that they did not even read them.

But that time is over.

If it is true that we are not bound by the decision of a court of another member state in the procedural sense of the term. But, when a decision is issued in the same litigation by a foreign court and it is submitted to the court, it is part of the file wrapper. Decisions are read and analyzed, first to ensure that they indeed relate to the same dispute, and especially that the arguments under discussion are the same, which is not always the case. Second, if the grounds relied on are the same in the dispute between the same parties, the decision will be very carefully read to understand and analyze the reasoning followed by the foreign court, because in general the same causes lead to the same legal grounds, which lead to the same consequences.

I would say that the judge will determine whether he/she is convinced by the reasoning of his/her colleague. At any rate, as far as I am concerned, these decisions are of a special importance, which is greater than that of a legal opinion for example, even if I also pay close attention to such opinions.

Or we can find food for thought in other decisions, and we can take a hold of criteria developed by another court or another office to assess the validity of an SPC for example, if these criteria appear to be relevant.

I would add that in case of a disagreement with the foreign court, it will be necessary to try to provide an even clearer and more precise reasoning, so that the parties can understand and follow the reasoning proposed by the French judges.

In fact, there may be disagreements of analysis and interpretation with foreign colleagues which are similar to those which may exist with French colleagues.

How is the case law developed by the EPO boards of appeal on the validity of patents considered by French judges? In particular, French courts have sometimes explicitly discarded some decisions of the EPO’s Enlarged board of appeal (for example on computer programs, or on claims to dosage regimens). Some observers were surprised at such differences in practice between Munich and Paris, which do not seem to be found to the same extent in other European countries. Is there a French distinctive identity in this respect?

The case law of the boards of appeal and of the Enlarged board of appeal are known to the 3rd chamber and to the Cour de Cassation, that expressly referred to it in its judgment of December 6, 2017. But they come from an office and not from a court; they do not have the same value for French judges as judgments from another court.

The other point is that the boards of appeal of the EPO have a tendency to interpret the texts on which they base their decisions in an extremely extensive manner. They try to grant patents (which is their primary objective and the source of their financing) even when the conditions are not met.

This is the reason why the European Commission has taken up the subject in the broccoli cases, or why the Paris Cour d’appel has referred a preliminary question to the CJEU as to whether a new molecule already known for an already known treatment could be considered as a second therapeutic application.

Lastly, German judges who are presented with an action for nullity of a patent must stay the proceedings as long as the decision by the EPO on the patent is final, which is not our case. This difference necessarily affects the influence of EPO decisions on French courts, as they will validate or revoke a patent without waiting for the EPO decision, when the patent is still under opposition.

So, I do not know if French judges are more reluctant than others to follow the decisions of the EPO boards of appeal, but they are in any case cautious about how they should be analyzed.

The French legal tradition differs from common law, which is centered on precedent. Apart from the main judgments of the Cour de cassation, do you think that there is a French patent case law which courts strive to follow? Or do the judgments of the TGI and of the Cour d’appel only represent specific decisions without any general influence on judges in other cases? Mention can be made for example of the different approaches which have recently been noted between the Paris TGI and Cour d’appel concerning the application of the statute of limitations to patent nullity suits.

There is no need for a tradition of precedent to create a consistent case law that attempts to develop a set of universally understandable enforcement rules. In France, the Cour de cassation carries out the necessary harmonization between the different courts and thus indicates the direction that future decisions will have to follow.

While of course each judgment is a case in point, it is clear that case law reveals major trends and defines interpretations of the legal bases proposed by the parties in their submissions.

Concerning the statute of limitations, the first instance court has proposed an interpretation of the rule which has not been followed by the Cour d’appel and it will be up to the Cour de cassation to provide the interpretative framework that the courts will have to follow.

So, as always, the rule and its interpretation will be general and elaborated by the Cour de cassation or the CJEU, which also provides an interpretative framework or “instructions for use” of a law, and which leaves it to national courts to apply the rule thus interpreted to the case at hand.

In your opinion, does patent law in its current state offer a satisfactory balance between the interests of right holders and third parties? Do you wish for some legislative changes, either in terms of substantive or procedural law?

I would say that there is a certain balance between right holders and third-party competitors as long as patents are not granted too loosely, and as long as they reward investments actually made for research and innovation by a 20-year monopoly, as the CJEU always reminds us. That’s why I’m not at all in favor of theories per which patents may have other purposes than the reward of an invention, notably a communication to the public when a particular product is advertised as being patented. To me, this benefit is a form of lie, when it is not based on a real invention (so-called blocking patents that distort competition) and that is why I am in favor of a real examination of French patents by the INPI (with the human and financial resources that should go with it as I said above).

Turning to consumers who are also third parties, I would like the concept of public interest, particularly in the area of ​​medicines, to be more fully taken into account and even integrated into the statute.

This public interest concern is in line with the senators’ concern, as they have debated the notion of “essential drugs”, and have taken interest in drug shortages, or in new therapies that are burdened by an exceedingly high price.

The same considerations apply to standard essential patents and the resulting consequences on the market, the price of IT products, the monopolies thus created and the extra cost to the consumer. This is the field of so-called FRAND licenses and the necessary balance that must be achieved between licensees, competitors, start-ups and consumers.

You have been involved in extensive preparatory work regarding the unified patent court. If this court does come into force soon, which position do you think French courts will have in the future?

I still am involved. I think that if the UPC fulfils the objective assigned to it, which is to issue decisions on infringement and validity of unified and European patents throughout the members states of the European Union that have ratified the Agreement, within an extremely short timeframe (one year), then, after the 7-year transition period during which there will be shared jurisdiction over European patents between the UPC and national courts, national courts will then only have to deal with national patents.

On the other hand, the Paris local division should be able to attract a larger share of the European patent litigation than the one currently handled by the 3rd chamber because it will be possible to plead in the three languages ​​of the European patent. Two French judges will be part of the three-judge panel, and the proximity of the central division will have a great attractive force in favor of the local division.

An exclusive interview – part 1

Today, Patent my French! features a special post. Indeed, I had the honor and privilege to interview Marie-Christine Courboulay.

Ms. Courboulay recently retired after serving for almost 13 years as a judge in the 3rd chamber of the Paris Tribunal de grande instance (TGI), namely the chamber in charge of IP litigation. You can see her name on the front page of a number of prominent patent judgments issued over the years.

Ms. Courboulay was probably the single most senior and experienced patent judge in France in the recent past – given that, and this was one of the subjects we discussed, the turnover of IP judges in this country is usually very high.

Thus, my understanding is that she took a major part in framing recent case law on some of our favorite hot topics here on the blog, such as exclusion from patentability, or the application of the statute of limitations to patent nullity suits.

Therefore, I am sure that her views on the French legal system and on the current state of patent law will be of interest to all readers.

So I am very grateful that Ms. Courboulay accepted to (electronically) sit and have this chat.

In the first part of the interview, Ms. Courboulay tells us a little bit about her career; then she provides some insider’s perspective on how the 3rd chamber of the TGI operates; she also offers some advice to litigants and their attorneys, gives her opinion on the quality of patents. The last bit of today’s installment focuses on the more specific issue of prosecution file history – is there or isn’t there a notion of estoppel in this respect?

One final note: I translated the questions and answers into English, therefore any residual error despite the usual extensive proofreading would be entirely on me.

Some of the cutting-edge interview tools that we use here at Patent my French!

Can you briefly recount your career? What positions did you hold as a magistrate? How long were you in charge of IP cases at the 3rd chamber of the Paris Tribunal de grande instance (TGI)?

I joined the magistracy in January 1982, after a master’s degree in business law at the University of Paris I. I was a trainee judge for two years, and I did my internship in a court in Bobigny.

Then, I was appointed judge (juge d’instance) from March 1985 to September 1996, first in a small court in Coulommiers, then in the Tribunal d’instance (TI) of the 19th arrondissement in Paris, and finally in the TI of the 13th arrondissement.

During this period of time, I worked a lot on the then new laws relating to over-indebtedness and I got to train the members of the over-indebtedness commissions in a program set up by the Banque de France.

I joined the Paris TGI in September 1996 and I worked for three years in the 18th chamber (specialized in commercial leases) and another three years from September 1999 to September 2002 in the 9th chamber (specialized in banking law). At that time, I worked on the start of electronic contracting and on the proof of consent, when the first agreements were executed online.

I was also in charge, like all judges of the 9th chamber, of the execution of international letters rogatory assigned to the Paris TGI, and I took a lot of interest in this work, which required a knowledge of the law applicable in the countries making the requests.

In September 2002, I joined the 1st chamber of the Nanterre TGI as a vice-president, and I discovered literary and artistic property on this occasion.

I came back to the Paris TGI in September 2005, in the 3rd chamber, and I did not leave it for the rest of my career, as I did not want to be deprived of such beautiful litigation, open to the world.

How many different cases does a judge of the 3rd chamber of the Paris TGI handle per year, on average?

At least two judgments on the merits per week, or eighty per year.

Approximately twenty-five case management orders per year.

Approximately thirty urgency judgments (“référés”) each year, plus extreme urgency judgments (“référés d’heure à heure”).

Among these cases, what is the approximate distribution between copyright, trademark, design and patent cases?

I cannot precisely answer this question because I do not have the statistics.

I would say that half of the cases are trademark cases, 10% are design cases, 25% to 30% are copyright cases (including copyright on clothing) and 10 to 15% are patent cases.

How much time does a judge have to devote to a patent case, on average?

It depends on the complexity of the patent and the level of expertise of the judge. Between three and ten full days.

Do you think that the training of judges is sufficient for handling patent cases, or that it should be improved?

The training of judges to deal with patents, but also IP as a whole (because an artistic copyright case is at least as complicated as a patent case), should be improved in the sense that this function should be considered as a full-fledged specialty. Each new judge should be offered a compulsory theoretical training from one week to fifteen days before taking office.

For how long are judges appointed to the 3rd chamber of the Paris TGI, on average, and do you consider that this is sufficient, or too short?

Judges are appointed to the 3rd chamber for an average of three years, and this duration tends to increase.

This is much too short because judges leave when they begin to be really well trained, which creates a huge loss of value for the court. Furthermore, it requires a constant (and exhausting) effort for training newcomers, despite their generally high merits and hunger for knowledge.

At last, it seems that there may be a possibility for judges to be able to get promoted without leaving, thanks to the creation of the Economic Pole by President Hayat. This could make it possible to keep judges interested in this subject for a longer period of time, as they would be able to make part of their career there.

Is it an asset for a judge of the 3rd chamber to have held a previous magistrate position in a field other than IP, and if so why?

Of course, to understand IP law, you need to have an overview of society as a whole: its evolution, its major trends, and especially its innovations. I would say that one must take an interest in all economic sectors of society, but also have a pronounced taste for culture.

For example, if you have worked on the renewal of commercial leases, you know that the establishment of competing brands in a same sector is a factor of increase in commerciality, which in turn makes an increase in rent possible. This is a factor which can be used to reason, when it is claimed that competitors’ ads on a result page of a Google search creates a prejudice. What is true in “real” life is also valid in the so-called virtual economy (which it obviously is not).

So, yes, previous experiences of judges are useful and rewarding, as well as their personal history.

Similarly, I am very much in favor of the integration of judges who had a career in the private sector, or as independent professionals. It is again a great opportunity to have a colleague in the court who worked in another context and who can shed light on what litigants expect in this area, or on the difficulties they may have. And when this previous career was in the field of IP as was the case several times (I had colleagues who had been IP lawyers or had worked at the INPI), the benefit to be gained from their experience is even greater.

How do the different judges of the 3rd chamber work together? In particular, is there an effort of harmonization among judges to avoid discrepancies between judgments?

First, the judges of the 3rd chamber work in three-judge panels and deliberate on the cases assigned to their panel. But of course, they also discuss the various cases between them, and they try to find harmonized solutions to avoid any disorder with litigants.

All magistrates are very much aware of the fact that their decisions must comply as much as possible with the requirement of predictability. For example, they circulate the decisions that they issue when a new point is raised and a solution is provided by one of the panels (for example regarding the application of the statute of limitations to patent nullity suits, or regarding the nullity of infringement seizures).

Also, there are so-called chamber meetings with an agenda on points of law where there seem to be differences of interpretation or appreciation. There are also information meetings organized by the Cour de cassation on specific topics (trademarks, patents, etc.) to raise the awareness of judges on solutions to various current legal issues.

Patent cases are sometimes highly technically complex (e.g. in the biotech or telecom field). How do judges deal with this technical complexity? Are the explanations of the parties’ counsels in their submissions and during the hearing generally sufficient to fully understand the underlying technical issues, or would an additional effort of popularization be useful?

The hearing time, if it is well calibrated (I would say at least half a day per patent), is enough to explain the issues, and it is obviously more than necessary for the court.

However, in the case of a particularly complex lawsuit, it is possible to appoint a consultant whose main task will be to objectively explain the patent, the technology, but also the prior art.

The statute thus gives the court the necessary tools to understand the technology involved in e.g.  telecom patents – which to me are the most complex ones.

In patent cases, it is not uncommon for parties’ submissions to reach several hundred pages. Is this too much? Do judges have the time needed to read and digest such large file wrappers, given their heavy workload?

Yes, this is too much, and I must unfortunately say that, often, many pages are irrelevant, since they contain repetitions in various forms.

We must remember this sentence: “sorry, I did not have time to keep it short”.

Judges from other European countries also complain about the same phenomenon and also conclude that the strength of the case does not depend on the weight of the written submissions; and I know that in the United Kingdom, on appeal, submissions are limited to 25 pages, because the court already has the first instance judgment.

Judges do not forget that this can be, in some cases, a tactic to drown them, so that they are not able to properly handle the litigation anymore, if each case reaches 200 pages without any reason.

I believe that, one day, it will be up to the case management judge to limit the number of pages allowed per case, in view of the first exchanges (complaint and defense).

What do you think is the role and use of the attorneys’ pleadings in the trial?

As far as patents are concerned, oral argument is essential to clearly explain the invention and to allow the judge rapporteur who has read the submissions and the patent to verify that he/she has properly understood what the case is about.

It is also essential for the presentation of the prior art, and the voice of each party sheds a different light on the topic.

Finally, it is essential for presenting the comparison between the invention and the alleged infringement by the patent proprietor and by the defendant.

On the other hand, for the determination of damages, clear written submissions with convincing supporting documents are more than enough.

Is there any advice you could give to parties and their counsels to improve their chances of convincing the court in patent litigation?

A clear presentation of the invention, optionally with the help of diagrams or slides.

A debate limited to the real issues at stake.

Avoid raising quibbles instead of arguments and avoid raising inadmissibility pleas and other motions on the communication of exhibits that pollute the real debate and sometimes weaken the position of those who raise such objections without any serious reason.

Do you consider that patents granted by the INPI or the EPO are generally of a good quality? Or is this quality insufficient in your opinion?

In the midst of a debate on the granting procedure of French patents, I can only say that the French patents that were submitted to me often suffered from a lack of quality, and I have some oddities in mind which were worthy of a cabinet of wonders.

I am in favor of a better control of French patents by the INPI, in particular by not focusing on the sole criterion of novelty, which is totally insufficient and puts us in a miserable position compared to other European offices. However, it seems to me that, in order for this reform to make sense and not give rise to other criticisms on the process of granting French patents, it will be necessary to hire many examiners trained in the analysis of inventive step, sufficiency of disclosure and extension of subject-matter beyond the application as filed, and also trained in discussing with the applicant and then with possible opponents, in full compliance with the adversarial principle.

With regard to European patents, their quality often depends on the technical field. Despite a more in-depth analysis of the various criteria mentioned above, there is a significant invalidity rate in French courts, but also in German, Dutch or English courts, of the order of 60 to 70%, which is still a lot.

I would say that the other criticism that can be made against European patents is the extreme length of the proceedings before the examining division and then the opposition division.

What is the role of the modifications made by the patent proprietor during examination proceedings, as well as of their statements in front of the patent office concerned, at the litigation stage? In your opinion, should the proprietor be bound by the strategy and the procedural choices adopted during examination?

Both French case law and Dutch case law take into account the amendments made during examination proceedings and the statements made to the patent office, when they are submitted to the court, because they are then elements of the dispute.

And the patent proprietor is bound by the modifications, which are in any case enshrined in the patent as granted, which is the very basis of the case, but also by its statements, insofar as they make it possible to understand what the proprietor itself considers as the perimeter of its invention, as the proprietor specifies the limits thereof (what is part of it and what is not part of it).

That said, the proprietor may take another position, but the new interpretation will be read in the light of the modifications made and ratified by the patent office in the granted patent, and of the reasons for which the modifications were agreed to be made.

It seems that the German Supreme Court in Düsseldorf has now slightly opened the door to this possibility, which it had long refused, even though some regional courts, including the one in Munich, already took statements before the patent office into account.

To be continued.