Getting ready

Little by little, everything seems to finally come into place for the kick off of the UPC – pending the outcome of the constitutional complaint in Germany.

A major step has now been taken in France, with a modification of the Code de la propriété intellectuelle (CPI) to make national law ready for the UPC, by way of an executive order dated May 9.

And one of the most important amendments thus introduced… well in fact has little do with the UPC, and everything to do with this very French debate on the statute of limitations applicable to patent nullity actions.

Indeed, a new article L. 615-8-1 is introduced, per which the statute of imitations is simply not applicable to patent nullity actions. So, back to the situation that everyone took for granted ten years ago, and back into line with the practice of other European countries. Very good news indeed.

But, there is a but, or actually two.

First, this new provision will only come into force when the UPC agreement comes into force – since the overall purpose of the order is the application of the UPC agreement. Second, the new provision will not be applicable to nullity actions which are already time-barred at the time the provision comes into force.

So you can still expect a lot of discussion for a few more years on how the statute of limitations should be applied and how the limitation period should be computed, before this really becomes history.

Waiting for the entry into force.

Now, back to the other, truly UPC-related provisions. One important aspect is how double protection by a French patent and a European patent for the same invention is handled.

The current situation is that, when a French patent and a European patent granted to the same inventor or successor in title cover the same invention and have the same priority date, the French patent ceases to be in force at the expiry of the 9-month European opposition period (if no opposition is filed) or when the opposition proceedings are closed, the patent being “maintained” (either in amended form or as granted).

Under the new version of article L 614-13 CPI, this remains the case, but only for European patents that have been opted out from the exclusive competence of the UPC (under article 83 of the Agreement). For non-opted out European patents (including of course unitary patents) on the contrary, there will no longer be any such so-called substitution. Thus, applicants will be able to secure both a national patent, enforceable in front of our national courts, and a European patent enforceable in front of the UPC, for the same invention. This is of course primarily of interest for French applicants who do their first filings at the INPI and then file at the EPO. But of course foreign applicants could also use this tool, for super-important inventions, by filing at the EPO and then in France, or simultaneously at the EPO and in France.

Now, what happens if a European patent is opted out at a late stage, for instance after the 9-month opposition period? The answer provided in the new law is that double protection then ends at the time of the opt out, i.e. the French patent ceases to be in force on the date of the opt out.

By the way, any substitution is irreversible. If a European patent is invalidated or lapses or if the opt out is withdrawn after a substitution has taken place, the corresponding French patent does not come back to life.

Another amendment relates to the prohibition to transfer, or to grant rights on, a French patent or application independently from a European patent or application, for the same invention, having the same priority date, and filed by the same inventor or successor in title.

This prohibition remains in place for all non-opted out European patents (including unitary patents), as well as opted out European patents (before the substitution takes place). In addition, the recordal of a transfer at the French national patent register is only effective if a parallel recordal has taken place at the European national patent register.

Next topic, a particular procedural rule in connection with patent litigation.

Currently, if a French patent is asserted and there is a corresponding European patent or application, the court stays the proceedings as of right until the substitution takes place, or until the European patent or application disappears (by way of a withdrawal, refusal, revocation, etc.) before any substitution takes place. This rule will remain in place but solely for opted out European patents. When a non-opted out European patent / application is present, an action based on the French patent will be able to proceed independently of the fate of the European patent / application. It remains to be seen how this will play out in practice. The court will still have the possibility to order a stay anyway, under the general rules of civil procedure, if they deem that a stay is appropriate for a good administration of justice.

On a few other aspects, French law has been harmonized with the UPC Agreement.

This is especially the case regarding the wording used to define the acts of infringement and exhaustion of rights. Besides, non-exclusive licensees will now be allowed to assert a patent if this is expressly authorized by the license agreement, and provided that the patent proprietor is given prior notice. This is a new possibility under French law, which mirrors article 47(3) of the UPC Agreement.

The limitation period for infringement damages remains five years but the starting point will now be the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action, in keeping with article 72 of the Agreement. In the current version of article L. 615-8 CPI, the starting point is “the facts” on which the action is based. The effect of this significant modification will be twofold: right holders will in some cases be able to claim more damages; and more complex debates regarding the determination of the starting point of the limitation period can be expected, as the new definition is more fuzzy than the traditional one.

Last but not least, new article L. 615-18 CPI clarifies that the UPC shall have exclusive jurisdiction over unitary patents and non-opted out traditional European patents.

So, now that the rules of the game are known, all readers can start looking for potential loopholes or ambiguities, and imagining unusual scenarios. Isn’t this what new laws are primarily for?

An uplifting patent

It seems that we will not be getting any UPC case law to comment on any time soon after all… In fact, some in the European IP profession have expressed quite a bit of distress at last week’s political upheaval. So I thought that today’s post had better be uplifting in order to curb current gloominess.

Unfortunately all that I have been able to find in terms of uplifting is… a patent case related to a lifting platform. Well, at least that’s something, isn’t it?

So, cheer up and back to good old national case law!

There are two different aspects which may be of some interest in today’s decision. One relates to patent substitution, and the other one relates to public prior use.

But first things first with the basic facts of the case.

FOG Automotive Distribution is the owner of a French patent No. FR 2896785 and of a corresponding European patent No. EP 1813568, claiming the priority of the French one. Or rather, was, as the company was liquidated during the litigation, its interests being then represented by the liquidator.

FOG sued three interrelated companies Launch France, Launch
Europe GMBH and Launch Tech, for, ahem, “launching” lifting platforms infringing the patent.

At first instance, the Paris Tribunal de grande instance (TGI) held that the French patent had ceased to be in force but that the French part of the European patent was indeed valid and infringed.

On May 27, 2016, the Cour d’appel confirmed most of this ruling and put an end to the case by directly awarding the liquidator a (relatively modest) amount of damages.

As I explained in a previous post, a European patent is said to substitute for a French patent, when both patents have three elements in common:

  • Same inventor(s).
  • Same filing or priority date.
  • Same invention.

By way of analogy with the assessment of a priority claim, the most frequent issue is whether both patents actually relate to “the same invention“. In order to properly answer the question, you need to look at the claims and more particularly the main claims of both patents.

In this case, claim 1 of the French patent reads as follows:

Lifting platform, in particular for a motor vehicle, comprising at least one column (1), at least one carriage (2) which is movable along the at least one column (1), and designed to support the motor vehicle or part of the latter directly or by means of a support element, and means forming a locking/unlocking lock designed to lock in a given position the said at least one carriage or allow it to be movable along the column, the locking/unlocking means consisting of a rail comprising a plurality of slots (6) and means forming a locking/unlocking (20) catch, characterised in that along the at least one column there are at least two catches (20, 40) spaced apart from one another in respect of their height, the height dimension of the rail being approximately equal to the distance between the at least two catches (20, 40).

Claim 1 of the European patent is identical but for the last underlined part, which reads as follows: “the height dimension of the rail being lower than the height of the catch (40) furthest from the base of the at least two catches“. 

The court held:

[…] The European patent was more specific than the French patent claim. The latter only specified approximately equal heights, while the European patent was more specific by indicating a height dimension for the rail which is lower than the height of the catch. […] Therefore, the first instance judges rightly held that FOG’s claims relating to the French patent are inadmissible due to the grant of the European patent on the same invention which results in the French patent no longer being in force. 

I think the conclusion is correct but the reasoning is not very accurate. Indeed, unless I missed something, I think it is the European claim which is broader than the French claim and not the other way around.

The European claim merely recites a maximum value for the height dimension of the rail, whereas the French claim demands that the height dimension be approximately equal to a certain value. Therefore, it certainly makes sense for the European patent to fully substitute for the French patent. The most usual situation is for a European patent to be more restricted than the French priority patent. In this case, part of the broader French patent survives the substitution. But the present situation is different.

Another form of platform: a platform shoe with a storage compartment. The application suggests to use this compartment for "keys, driver’s license, money, and other small but necessary articles".
Another form of platform: a platform shoe with a storage compartment. The application conveniently suggests to use this compartment for “keys, driver’s license, money, and other small but necessary articles”.

The second point of interest in the decision is the novelty challenge raised by the appellant, which was based on an alleged public prior use. Launch Tech first argued that they had publicly presented several lifting platforms to the public before the priority date of January 27, 2006: some at a fair in Frankfurt in September 2004 and others at the Equip’auto fair of October 2005.

As evidence, Launch offered photographs of the equipment presented at the fairs. Those were however quickly dismissed by the court, since their date was not proven.

Then Launch made reference to a lifting platform referenced as TLTE 240SBA and delivered to a workshop in Dillenburg, Germany.

Launch filed a report written by a patent attorney. The patent attorney stated that he went to the workshop and took pictures of the platform. He noted the presence of a metal plate under the platform bearing the reference number TLTE 240SBA, the manufacturing date “2005/08” and the name and address of Launch Tech.

The court noted:

[…] He indicates that the information was engraved on the plate which was connected to the column and adds: “at first sight this is the original plate i.e. I do not think that it was replaced by another plate”. This indication is obviously an impression reported by Mr. T. which cannot prove the date of the lifting platform at stake and does not make it possible to retain it as prior art. 

Still concerning this lifting platform in the Dillenburg workshop, the alleged infringer also filed an affidavit by one of its technicians. The technician stated that he remembered delivering and putting the machine into service in December 2005. A copy of the corresponding intervention request was annexed to the affidavit.

Again, the court rejected the evidence.

First, the court noted a discrepancy between the platform reference number in the document in annex (TLTE 40SBA) and the actual platform reference number (TLTE 240SBA). An explanation for the discrepancy, though: the first number was an abbreviation for the second number, the missing figure 2 simply meaning a platform with two columns.

Second, the court more generally put the credibility of the witness into question:

[…] Nevertheless this affidavit was drafted by an employee of Launch Tech; and it is also questionable because, although Launch Tech markets different types of materials and lifting platforms, he stated that he remembered the serial number of a platform sold in 2005 when he wrote the affidavit on May 2, 2014. 

As a final remark on this issue, the court blamed the appellant with simply stating that the claims of the European patent were anticipated by its platforms TLTE 232SBA, TLTE 240SBA, TLT 235SBA and TLT 235SCA, without explaining the differences between the models and without describing their specific features (including the catches).

Consequently, the novelty challenge failed. So did the inventive step challenge. And the appeal judges also confirmed the first instance finding of literal infringement based on a bailiff’s saisie report of October 2011.

Interestingly, the infringing platforms bore the reference numbers TLTE 32SBA and TLTE 40SBA, i.e. similar references to those used in the unsuccessful public prior use defense. So at least the fact that the alleged prior use apparatuses had all claimed features appears relatively credible – although it can always be theoretically contemplated that the design of a device with a certain reference number can change over time.

In summary, the demonstration of public prior use in this country requires a high burden of proof – as in “Everest high” – just like at the EPO, although we do not use the warlike expression “up to the hilt”. 

On the one hand it is certainly very reasonable to demand absolute certainty when the patent proprietor has no personal knowledge of the alleged prior use and no access to the relevant evidence.

But on the other hand, this situation can also be quite frustrating for a nullity plaintiff (or similarly for an opponent at the EPO). You sometimes get the feeling that actual public prior uses are impossible to rely on in practice because there will never be enough records from that time and because every document or affidavit can be criticized one way or another as being incomplete or doubtful.

How a more fair balance could be reached is a tricky question. Maybe through greater resort to depositions of witnesses under oath?


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, May 27, 2016, Launch Tech Company Ltd. v. FOG Automotive Distribution, RG No. 14/02829.

The undetected fall

Today’s patent is directed to a method for detecting a person’s fall. Such a method has utility in for instance taking care of elderly people. However, in this case, I am afraid that at least one fall went undetected, namely the court’s own fall into the trap of so-called “patent substitution”.

Taking one step back, the case was brought by a certain Laurent M. against his employer Telecom Design. As a side note, it is the INPI’s (French patent office’s) practice to redact people’s names in the court rulings that they publish. Although the need to protect privacy is understandable, this sometimes makes decisions more difficult to read. Besides, oftentimes, these people’s names are available on the public record anyway. For instance, Laurent M. is a designated inventor in a patent identified in the decision, and it is somewhat difficult to miss his full name on the patent’s front page.

Anyway, Laurent M. was hired in February 2008 by Telecom Design. Info Network Systems (INS), Telecom Design’s mother company, filed a French patent application directed to a method for detecting a person’s fall on January 12, 2009. One year later, the same company filed a European patent application claiming the priority of the French patent application. Laurent M. was designated as an inventor on both applications, together with two managers of the company.

Laurent M filed suit against Telecom Design and INS in front of the Paris Tribunal de grande instance (TGI), claiming that he was the sole inventor of this invention, and that he had made the invention before joining Telecom Design. Thus, he claimed, the French IP belonged to him.

Laurent M. won in first instance, since the court acknowledged that he was the sole inventor, and ordered the transfer of the French IP to him. Telecom Design and INS appealed. During the appeal proceedings, Laurent M. requested that the European patent (which had been granted in the meantime) should also be transferred to him.

It is in order to address this additional request by the plaintiff that the Cour d’appel had to deal with the notion of “patent substitution”, which is a principle laid down in Article L. 614-13 of the Code de la propriété intellectuelle:

Insofar as a French patent covers an invention for which a European patent was granted to a same inventor or his successor in title with the same filing date or priority date, the French patent ceases to be in force either at the date at which the time limit for filing an opposition to the European patent expires without any opposition being filed, or at the date at which the opposition proceedings are closed, the European patent being maintained.

However, if the French patent is granted at a later date than either one or the other mentioned in the previous paragraph, as the case may be, this patent does not come into force. [….]

In other terms, in order to avoid a form of double protection on the French territory, a European patent is said to substitute for a French patent, when both patents have three elements in common:

  • Same inventor(s).
  • Same filing or priority date.
  • Same invention.

The court applied this test to the Telecom Design invention and concluded that the European patent had substituted for the French patent, so that the French patent had ceased to be in force on July 19, 2012 (i.e. at the end of the EPO opposition period).

However, this finding is problematic for at least two reasons.

The first reason is that, believe it or not, there was no French patent at all. Looking at the INPI file wrapper, the application never proceeded to grant. The application was declared lapsed on September 30, 2013 for failure to pay the fifth renewal fee. It seems that a request for restoration of rights was submitted and rejected by the INPI – but it is not possible to get more detailed information online.

Article L. 614-13 is quite clear in that substitution can only apply to a granted national patent and not to a national patent application. This makes sense since the claims are not necessarily in a final form until the patent is effectively granted (although in France the opportunities for an applicant to amend claims are more restricted than at the EPO).

I am not sure that the court is to blame for what seems like a serious mistake. Indeed, French courts are strictly bound by the submissions of the parties, and we do not know in this case whether either party submitted that the French patent application had not proceeded to grant, and drew the proper legal consequences from this fact.

The second reason why the court’s finding is in my opinion problematic is that they applied the above “substitution test” differently from traditional case law.

According to said traditional case law, substitution takes place only to the extent that the scope of protection afforded by both patents is identical. So, if the French patent has a broader scope of protection than the European patent, which is actually very frequent, then the French patent partly survives, with respect to the subject-matter not covered by the European patent. This view is supported by the wording “insofar as a French patent covers an invention for which a European patent was granted […]” in Article L.614-13.

In Telecom Design, the Cour d’appel seems to have changed its tune.

The priority French patent application contains thirteen claims in total: twelve to a method for detecting a fall, and one to a device for detecting a fall. The European patent contains ten claims: nine method claims, and one device claim.

The court first noted that both descriptions are identical. Then, the court compared the two set of claims and found that

[…] claim 1 of the European patent is the contraction of claims 1 to 4 of the French patent [sic].

In fact, the features recited in claim 1 of the European patent are those of claims 1, 2 and 4 of the French patent application, but not claim 3. The features of French claim 3 were left out in European claim 1 as granted. But the court ignored this and considered that the limitations of French claim 3 are nevertheless implicitly present in European claim 1:

[…] it is true that claim 3 of the French patent [sic] […] is not expressly contained in claim 1 of the European patent, but nevertheless it is implicitly included in its scope due to the interpretation of this claim which must be made by reference to paragraph [0062] of the description, which expressly mentions it. It is reminded that according to Article 84 [EPC], claims define the protected subject-matter and must be supported by the description.

This is a bold statement. INS clearly voluntarily drafted a main European claim without the features of French claim 3. Stating that these features are implicitly contained in the main European claim in spite is a daring and non-obvious conclusion which would require at least some detailed explanations as to why the description makes it so clear that the missing features are implicitly present.

A fall can never be fully prevented, but at least it can be made more enjoyable.
A fall can never be fully prevented, but at least it can be made more enjoyable.

More importantly, it is plain to see that the scope of protection afforded by the European patent is (much) more restricted than the scope of protection of the French patent application. It is thus strange that the court finally held that

[…] the French patent [sic] and the European patent relate to exactly the same invention […].

For the sake of completeness, the device claims were also different, one limitation present in the French claim having been removed in the European claim. Again, the appeal judges took a shortcut and stated that

[…] although [claim 10 in the European patent] does not expressly contain the reference to the notion of battery life of the detection device in claim 13 of the French patent [sic], said reference is also implicitly included in its scope by the interpretation that needs to be made in view of paragraphs [0096] to [0099] of the description which expressly mention it.

Is this an isolated decision, or does it mean that the identity of invention (for the purpose of patent substitution) should now be appraised globally – basically checking only if the respective descriptions are the same? Maybe the Cour de cassation will shed some light on this, if a cassation appeal has been filed – which I do not know.

By the way, for those readers who are interested in the final outcome for Mr. M. and his employer, Mr. M. was indeed confirmed by the Cour d’appel as the sole inventor of the invention at stake. But the court decided that the invention was made in the course of Mr. M.’s inventive mission with his employer. So, the first instance decision was reversed and the court did not order the transfer of either of the French application or the European patent from INS to him. He was however awarded an amount of 50,000 euros as a retribution for his invention, and 20,000 euros of damages in relation to moral prejudice.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, 1ère chambre, June 30, 2015, Telecom Design SA & Info Network Systems SA v. Laurent M., RG No. 2013/10097.