Back to the old normal?

Let me first start by wishing that all readers are safe and well, in these exceptional and difficult times.

As so many of us have to remain home all day in the foreseeable future, with the dreadful pandemic newsfeed as a main distraction, I said to myself, what better way to take my mind off it than to write about… a pharma case?

And so, here is an update on the Inegy® patent dispute (judgment kindly provided by Denis Schertenleib).

Difficult to think about anything else these days.

One year ago, Lionel Vial and I reported on a preliminary injunction ordered against Mylan due to the likely infringement of SPC FR05C0040 owned by Merck Sharp & Dohme Corp. (MSD).

In that post, we expressed some surprise at the decision since, back in April 2018, a judge in charge of emergency interim proceedings had refused to issue a preliminary injunction against another generic drug company, Biogaran, based on the same SPC, because the latter was considered likely invalid, which was confirmed on appeal on June 26, 2018 (see this post).

We wondered whether there was thus a new, more patentee-friendly trend in France with respect to preliminary injunctions in general and pharma patent litigation in particular, which is why the March 2019 post was entitled The new normal.

But now, we seem to be back to the old normal, as the Cour d’appel has overturned the preliminary injunction, and effectively re-raised the bar for pharma patent holders. 

As a reminder, Inegy® is a combination of ezetimibe and simvastatin, which is prescribed for reducing cholesterol levels.

Ezetimibe reduces intestinal absorption of cholesterol while simvastatin (belonging to the family of statins) is an HMG-CoA reductase inhibitor which inhibits cholesterol biosynthesis.

MSD’s SPC protecting Inegy® is based on European patent EP0720599 (EP’599) for the product “ezetimibe optionally in the form of its pharmaceutical acceptable salts in combination with simvastatin”.

EP’599 specifically claims:

  • a very broad family of compounds in claim 1 (in the form of a Markush formula);
  • ezetimibe as a specific compound in dependent claim 8; and
  • a pharmaceutical composition for the treatment or prevention of atherosclerosis, or for the reduction of plasma cholesterol levels, comprising an effective amount of the above compounds, alone or in combination with a cholesterol biosynthesis inhibitor selected from the group consisting of lovastatin, pravastatin, fluvastatin, simvastatin, CI-981, DMP-565, L-659,699, squalestatin 1 and NB598, in a pharmaceutical acceptable carrier (claim 17).

On October 17, 2017, Mylan initiated nullity proceedings, to which MSD responded by requesting, on November 30, 2018, that a preliminary injunction to stop selling Mylan’s ezetimibe/simvastatin combination and to pay provisional damages be issued against Mylan.

On March 7, 2019, the judge in charge of case management (JME) granted the preliminary injunction. Mylan appealed, and the JME’s judgment has now been overturned by the Paris Cour d’appel on February 14, 2020.

Like in first instance, Mylan argued that the SPC was invalid because:

  • It was granted for a combination which is not protected as such by the basic patent, in breach of Article 3(a) of the SPC regulation (No. 469/2009), since it does not form the core inventive advance of the patent, which is centered on ezetimibe, in particular in the absence of any research conducted on the ezetimibe/simvastatin combination.
  • The product protected by the basic patent was already the subject of a certificate (i.e. SPC FR03C0028 granted for ezetimibe) in breach of Article 3(c) of the SPC regulation.
  • As is usual in SPC-related cases, the court analyzed the relevant case law from the CJEU. But the court interpreted the Gilead decision (C-121/17, Teva UK Ltd. et al. vs. Gilead Sciences Inc.) differently from the JME at first instance.

According to Gilead:

Article 3(a) of [the SPC regulation] must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent:

the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and

each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.

The Cour d’appel held that the conditions of Gilead are not automatically met merely because the claims of the patent explicitly mention the active ingredients of the combination product. Something more is required.

The court insisted on the the link between the claimed combination and the technical problem at stake, based in particular on reason 48 of Gilead, which reads: “it is necessary to ascertain whether a person skilled in the art can understand without any doubt, on the basis of their general knowledge and in the light of the description and drawings of the invention in the basic patent, that the product to which the claims of the basic patent relate is a specification required for the solution of the technical problem disclosed by that patent“.

The court also turned to earlier decisions of the CJEU, namely Sanofi (C-443/12, Actavis Group PTC EHF & Actavis UK Ltd v. Sanofi) and Boehringer (C-577/13, Actavis Group PTC EHF & Actavis UK Ltd v. Boehringer Ingelheim Pharma GmbH & Co. KG) and found that the facts of the present case are similar to those of these earlier decisions.

Here is the court’s summary of Mylan’s key argumentation:

Mylan argues that the basic patent lists a large number of products, namely all known cholesterol-lowering products to be combined with the new active compound ezetimibe, that it does not contain any information on the specific effects of these combinations, and in particular the one associating ezetimibe with simvastatin, and that this combination is therefore not a product distinct from ezetimibe alone, for which the patentee has already obtained an SPC, which would make it possible for them to prohibit the sale of ezetimibe combined with any other product, so that the [SPC] is likely invalid.  

And here is the summary of MSD’s rebuttal:

MSD argues that [the expressly designated] composition of ezetimibe and simvastatin necessarily pertains to the invention for the skilled person, in keeping with Gilead. They add that this combination product is not a mere juxtaposition of two known active substances; it effectively makes it possible to solve the technical problem stated in the patent, namely the development of more effective drugs in the treatment and prevention of atherosclerosis, avoiding side effects, in view of the complementary modes of action of ezetimibe and simvastatin; and that this is a second invention of the EP’599 patent, covered by this patent under article 3(a) of the regulation, so that this case is different from Sanofi and Boehringer. They add that the combination product of ezetimibe and simvastatin has not given rise to an SPC under article 3(c) of the regulation yet, that several products can be protected as such by a basic patent, and that the condition of article 3(c) is also met so that the SPC is valid. 

In summary of the summaries: for MSD, there are two inventions in the basic patent, namely ezetimibe on its own, and the combination of ezetimibe with other complementary drugs such as simvastatin; for Mylan, the patent is only about ezetimibe itself.

In order to decide between these two propositions, the court looked at the structure of the basic patent, and at the nature of the combined effect of the two active substances.

Concerning the structure of the patent, the court noted that the summary of the invention primarily focuses on the class of compounds to which ezetimibe belongs. And then:

[…] The next paragraphs 15 to 17 which disclose product compositions and notably the association of a hydroxy substituted azetidinone and a cholesterol biosynthesis inhibitor are introduced by the following wording: “in still another aspect, the present invention relates to a pharmaceutical composition” or “the present invention also relates to”, so that the skilled person could consider the combination […] as being another “aspect” of the invention relating to hydroxy substituted azetidinones, and not a distinct invention. 

That sounds like a fair point, but on the other hand, it should scare the hell out of all patent drafters that an apparently innocuous choice of wording can have such dramatic consequences more than 25 years after the patent was drafted.

Concerning the “combined effect” of the active substances (an expression used at paragraph 53 of the reasons of Gilead), the court noted the following:

MSD states in its submissions that the “combined effect” under Gilead of the association of ezetimibe and simvastatin lies in the fact of not having to administer the maximum dose of statin and reducing the risk of side effects. This is not mentioned in the patent, which indifferently mentions that the effect of both hydroxy substituted azetidinones alone and their combination with a cholesterol biosynthesis inhibitor is the “treatment and prevention of atherosclerosis”. Therefore, the skilled person, who knew from the prior art that it was possible to combine two anti-cholesterol substances having different modes of action […] and who knew statins and especially simvastatin, in use since the end of the 80s for the treatment of hypercholesterolemia, would not consider that this combination is a distinct product of the patent (in the absence of any indication at the filing date as to the combined effect of ezetimibe and simvastatin, and the results from later research not having to be taken into account) […].

Consequently, the court seems to consider that, in order for a combo drug to be considered as distinct from a mono drug in a patent, this needs to be stated in the patent itself, and there must be a specific effect for the combination disclosed in the patent.

It remains an open question whether a mere mention of a specific combined effect would suffice or whether the combined effect would have to be plausible at the filing date (by analogy with the requirements of sufficiency of disclosure).

The above will probably be controversial enough, but an additional point made by the court, after concluding that the validity of the SPC was seriously challenged, may be even more controversial. To wit:

At any rate, the proportionality of the measures ordered at first instance is not justified in view of the respective interests relating to originator and generic drugs having obtained marketing authorizations. A financial harm cannot be seen as non-repairable or even poorly repairable, as long as it can later be cured by a damages award, unless under exceptional circumstances which are not justified in the present case, as the SPC at stake expired on April 2, 2019, i.e. less than two months after the preliminary injunction order.   

Just like in the latest post on this blog (in the context of telecom SEP litigation), the proportionality principle has thus been emphasized by the court, which seems to be a tendency on the rise. And just like in this other case, the fact that the expiry date of the IP at stake was nigh was a factor taken into account in the proportionality assessment.

This must be very worrying for originators, as preliminary injunctions have been a powerful deterrent for competitors, and as there are concerns that damages may never completely compensate for the competitive advantage gained by generic drug companies launching before expiry.

The case on the merits is probably going on in parallel, so we will probably get further updates on this case.

As a final note, a very similar decision was issued on the same day, with Sandoz instead of Mylan as the generic defendant.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, February 14, 2020, SAS Mylan v. Merck Sharp & Dohme Corp. & SAS MSD France, RG No. 19/06114.

The dead line

There is something ominous about the word “deadline” in English.

It makes you suspect some dire background. And rightly so, according to some online resources, which mention a line that you would cross at the risk of losing your life.

The French word “délai” sounds much less sinister, but the consequences of missing a “délai” are pretty much the same as those of missing a “deadline“, as a recent decision of the Paris Cour d’appel reminds us.

In this case, a French patent application was filed on November 6, 2015, claiming the benefit of the filing date of an earlier French application, namely April 1, 2015. This is what is sometimes conveniently referred to as an “internal priority claim“.

One of the requirements of claiming an internal priority is that you must provide a copy of the initial patent application (plus you must identify the modifications made in the later filing). As the applicant failed to do so upon filing the later application, the INPI issued a communication dated August 9, 2016 and notified on August 16 to the representative, inviting the applicant to submit the missing copy within a two-month period.

The applicant still did not file the requested document, so that a decision to refuse the application was issued on November 4, 2016, and notified on November 10, 2016 to the representative.

On January 8, 2018, the applicant filed a request for restoration of its rights. On August 17, 2018, the INPI issued a negative decision, holding that the request for restoration was inadmissible as it was filed past the statutory deadline.

The applicant lodged an appeal in front of the Paris Cour d’appel, which resulted in a judgment dated November 5, 2019.

The key provision in this case is article L. 612-16 Code de la propriété intellectuelle:

The applicant who failed to comply with a deadline set by the [INPI] may file a request for restoration of its rights, if it has a legitimate excuse and if the non-compliance directly resulted in a refusal of the patent application or of a request, in the lapse of the patent application or patent, or in the loss of any other right. 

The appeal must be filed […] within a two-month deadline from the removal of the cause of non-compliance. The missing act must be performed within this deadline. The request is admissible only within a one-year deadline from the expiry of the missed deadline.

[…]

The main question is that of the starting point of the one-year deadline. The INPI currently considers (and this is reflected in its Guidelines for examination, section E.3.3.1.b, Oct. 2019 edition) that the “missed deadline” starting point is the “initially missed deadline”.

As a side note, this did not appear in the previous versions of the Guidelines – I suspect that they may have been modified based on the present case.

Here, the applicant was notified on August 16, 2016 of the invitation to file the copy of the earlier filing. The deadline for filing this copy expired on October 17, 2016. The INPI thus deemed that the one-year restoration deadline expired on October 17, 2017.

The talking calendar – the must-have gadget for handling your deadlines this year.

The applicant’s defense relied on the fact that there was another possible legal remedy, namely a request for further processing. See article R. 612-52 Code de la propriété intellectuelle:

If a patent application is refused or may be refused due to non-compliance with a time limit set by the [INPI], the refusal is not issued or is revoked if the applicant files a request for further processing. The request must be filed in writing within a two-month deadline from the communication of the refusal decision. The missing act must be performed within this deadline. The request is admissible only if the required fee is paid. 

Thus, the applicant argued that the missed deadline was the two-month further processing deadline, and not the initial two-month deadline starting from the INPI communication. The request for restoration was thus filed with respect to the further processing deadline.

This reasoning will probably sound familiar to many European readers, as this is exactly the approach used at the EPO.

Applying this reasoning to the facts at hand, the deadline for requesting further processing expired on January 10, 2017 (date of notification of the refusal decision + 2 months), and therefore the one-year restoration deadline expired on January 10, 2018 – so that the request for restoration was timely filed.

But the appeal judges did not follow this argumentation. They stuck to the INPI’s interpretation of L. 612-16 and considered that the missed deadline used as a starting point must be the initial missed deadline, and not the further processing missed deadline. The INPI’s decision was accordingly confirmed.

Don’t ask me for the reasons why they chose one interpretation over the other. They just did, and there is no actual justification in the judgment.

This is all the more unfortunate as the summary of the facts reveals that two interesting case law decisions were discussed by the petitioner: a cassation ruling dated April 15, 1986, and a later judgment of the Paris Cour d’appel dated January 14, 1987.

The petitioner argued that the INPI misinterpreted the 1986 cassation ruling – from which it can be inferred that this ruling was the basis for the INPI’s position.

The facts underlying the 1986 ruling are that a patent application was refused for failure to pay the grant fee; a request for restoration was filed but it was held inadmissible as it was filed more than one year after the expiry of the time limit for paying the grant fee. The petitioner tried to take advantage of an additional two-month period corresponding to the filing of a request for further processing – to no avail.

The cassation judges stated the following: 

The non-compliance of the deadline for the request for further processing is not excluded from the provisions of [what is now art. L.612-16]. But the provisions of [what is now art. R. 612-52] do not result in extending the one-year deadline set in the second paragraph of [what is now art. L.612-16]. The Cour d’appel held that, irrespective of the grounds for the request for restoration, it is only admissible within a one-year deadline from the final date on which the initially omitted act had to be performed, and therefore rightly justified its decision. 

This is quite clear, right? The one-year deadline must be computed from the expiry of the initial deadline. Well, not so fast.

Looking at the specifics of the case that led to the 1986 cassation ruling, it turns out that, in that case, the request for restoration had been filed with respect to the initial time limit (i.e. the time limit for paying the grant fee). It had not been filed with respect to the (missing) request for further processing. 

Let’s now turn to the second case discussed by the petitioner. It is an appeal judgment which was issued after the 1986 cassation ruling. In this case, it was also the grant fee which was not paid in time. But the difference is that the applicant filed a request for restoration with respect to the (missing) request for further processing.

And the appeal judges computed the one-year deadline from the expiry of the period for requesting further processing, not from the expiry of the initial deadline for paying the grant fee: 

[…] The petition is admissible as to time limits. Indeed, according to [what is now art. L.612-16] the time limit for filing a request for restoration is one year from the expiry of the deadline not complied with. The request for further processing was due by April 17, 1982, so that the time limit for filing the request for restoration expired on April 17, 1983. The request for restoration was filed on April 15, 1983.

In summary, reading between the lines, we have:

  • On the one hand, a 1986 cassation ruling which could at first sight be seen as supporting the INPI’s position, except that the facts were different and that the relevant statement in the ruling is ambiguous. There is a reference to “the initially omitted act” but it is unclear what we should make of it. The cassation judges did simply not have to decide on a request for restoration with respect to a request for further processing.
  • On the other hand, a 1987 appeal decision based on facts similar to the present facts, and that is manifestly contradictory with the decision commented on today.

It is thus a real pity that the Cour d’appel did not seriously address these issues. 

I would also add that, one a purely pragmatic standpoint, it seems to me that there may be some contradiction in the INPI’s approach (and in the court’s present approach) to this matter. Indeed, the INPI acknowledges that a request for restoration may be filed with respect to a missed deadline for a request for further processing. This is stated in the table that you can find on the last page of the Guidelines for examination.

But what is the point in requesting restoration of right with respect to the further processing deadline, if the one-year time limit is to be computed from the initial missed deadline? I cannot think of any situation in which requesting restoration with respect to the further processing deadline would then be of any use.

I would not like to conclude this post without wishing all readers a very happy new year.

I hope that I have not missed the deadline for doing so – but hey, I have always heard that it is all right to send your best wishes until January 31. This may not be true elsewhere, but as you can see there is some cultural specificity about French deadlines.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, November 5, 2019, … v. Directeur Général de l’INPI, RG No. 18/20057.

Divide and not conquer

Many decisions that I have commented on relate to complex cases, involving multiple patents, or various actions in front of different courts, or endless back and forth bouncing between the Cour de cassation and the Cour d’appel.

So I am grateful, that, just this once, the mailman has delivered a short decision on a relatively simple legal point.

On March 21, 2008, Kubota Corporation filed a French patent application on a lawn mower, published as FR2915847.

On April 22, 2015, they filed a first divisional patent application, published as FR3019966.

On March 1, 2018, they filed a second divisional patent application. However, on August 27, 2018, the INPI (French patent office) refused this second divisional application as inadmissible.

The reason for the refusal was that the second divisional application was filed after the fee for grant for the grandparent application (FR’847) had been paid, back in April 2015.

Indeed, the INPI Guidelines for examination recite the following (section B.III.2):

A division can only be requested until the date of payment of the fee for grant and printing for the initial application. When this fee has already been paid or when the grant procedure has ended because of a refusal, withdrawal or lapse of the initial application, the division is refused. […]

When the division relates to a divisional application (B) stemming from an initial application (A), this control concerns application (A), and not divisional application (B)

French practice therefore differs from EPO practice.

At the EPO, you may file a second generation divisional application as long as the first generation divisional application is still pending, even if the grandparent application has already proceeded to grant. This is not possible according to the INPI guidelines.

Kubota filed an appeal against the refusal with the Paris Cour d’appel. They challenged the INPI’s interpretation of the statute.

The provision at stake is article R. 612-34 of the Code de la propriété intellectuelle:

Until the payment of the fee for grant and printing of the patent, the applicant may, on its own initiative, file divisional applications of its initial patent application. 

The key issue is how to understand to which application the time limit refers. The INPI’s position is that it is the original application in the family; whereas the appellant’s position is that it is rather the application from which a division is filed.

In this case, the fee for grant and printing for the first divisional application (FR’966) was paid on March 7, 2018, i.e. after the filing of the second divisional application at stake here – so that the filing would be admissible under the appellant’s interpretation of R. 612-34.

The court sided with the INPI on this interpretation issue.

First, they made reference to article L. 612-4:

The patent application can only relate to one invention or a plurality of inventions which are related so as to form a single general inventive concept. 

Any application not meeting the requirements of the previous paragraph must be divided within the statutory deadline; divisional applications benefit from the filing date and optionally priority date of the initial application

Thus, the court concluded that the “initial application” is the first one in the family – the one that defines the filing and priority dates for the entire family.

Second, the court stated that, in article R. 612-34, the term “patent” (cf. “until the payment of the fee for grant and printing of the patent”) refers to the same IP right as the “initial patent application” (cf. “may […] file divisional applications of its initial patent application“).

Ergo, the time limit condition applies to the payment of the fee for grant and printing in connection with the original application in the family.

In its submissions, Kubota made reference to articles L. 612-12-3 and L. 613-25 which prohibit extension of subject-matter in a divisional application, beyond the content of the “initial application as filed“. But the court was not convinced, noting that, precisely, this prohibition applies to a comparison with the original application in the family.

The court also remained insensitive to a comparison with other patent offices having a different practice: “the harmonization objective relates to the principle of the ability to divide a patent application, not the modalities of this division”.

All in all, the court’s position does not appear unreasonable. But is it compelling?

This lawn mower looks skeptical about the appeal decision.

Let’s take a step back. Article R. 612-34 does not strike me as being crystal clear. I suspect that this may be because its drafters did not have in mind the case of cascading divisional applications, i.e. divisional applications of divisional applications.

Furthermore, both main points of the court’s reasoning could potentially be challenged.

Starting with the second point in the court’s reasoning, how can we be certain that the term “patent” and the term “initial patent application” in R. 612-34 relate to one and the same thing? After all, they are not the same terms.

And then, going back to the first point, the court referred to L. 612-4 and concluded that the term “initial patent application” refers to the original application in the family.

But: 1, even if this is the case, the term “initial patent application” may or may not have been used perfectly consistently in the Code de la propriété intellectuelle; where is the evidence that it has exactly the same meaning in R. 612-34? And 2, “initial patent application” in L. 612-4 could also be interpreted as relating to the (immediate) parent application based on which the division is performed. It is true, that ultimately, the same filing date / priority date applies to the entire family, but in the case of cascading applications, it could simply be because the filing date of the “initial” application (meaning the parent application) is itself defined by reference to the filing date of its own “initial” application (meaning the grandparent application). A transitive definition, if you will.

Again, article R. 612-34 recites that “the applicant may, on its own initiative, file divisional applications of its initial patent application“. On the face of it, isn’t the “initial patent application” in this provision the one based on which the division is made, i.e. the immediate parent?

If so, we would come to the conclusion that:

  • Either it is only possible to file a divisional application based on the original application, i.e. cascading or second generation divisional applications are not allowed.
  • Or else, cascading applications are allowed, and the time limit in R. 612-34 applies to the previous application in the cascade, not to the source of the cascade.

In turn, if the above reasoning is correct, then this means that the INPI’s position that has just been validated by the court (cascading divisional applications are OK but the time limit applies to the original application) is contradictory.

In fact, on a practical standpoint, what is the point in allowing cascading divisional applications if you can only file a divisional application when the original application in the family is still pending? This is rather useless, and you may as well decide that only divisional applications stemming from the original application are possible.

As a final and important remark, the court acknowledged in passing that the INPI’s practice prior to 2011 was different, but added that this does not matter.

Well, does it not? I am quite curious about this. Do readers have any information to share about this change of practice and what caused it? Article R. 612-34 has been here and has not been modified since 1995.

Now that it is time to finish this post, I am left with the impression that even simple legal points are not necessarily straightforward.

Let’s see if there is a cassation appeal, and if so, what the court will make of this.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, November 22, 2019, Kubota Corporation v. Directeur Genéral de l’INPI, RG No. 18/27433.

Outdated soon

Glad to be back on the blog, with a report on a decision which already has the flavor of a thing from the past. I am very grateful to Philippe Schmitt for providing this judgment, after commenting it on his blog.

Thales, the famous electronics company, filed a French patent application at the INPI (Institut National de la Propriété Industrielle) on December 17, 2010. It was published under No. FR 2969124. A decision of refusal of the application was issued on July 17, 2018. Thales appealed, which leads us to the judgment at stake.

Here is claim 1 of the application, as modified during examination proceedings:

A method for displaying the steps of a mission of an aircraft on a screen of a display device, the mission being a flight plan, wherein each step corresponds to a waypoint of the flight plan, characterized in that the different steps are displayed in a first graphical window comprising a time scale, or “timeline” (TL), the different steps being displayed opposite the schedule corresponding to their accomplishment, and the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device.

The application was refused by the INPI as they deemed that:

  • The application merely relates to a presentation of information associated to a mathematical method, without any technical features.
  • The claimed subject-matter cannot be searched and thus compared with the state of the art.

More precisely, the INPI considered that the problem at stake in the application was to facilitate the reading and correlation of data relating to the steps of an aircraft mission, provided by different display windows. In the absence of any such facilitation, operators have to check themselves the consistency of the information provided by various windows. Thus, the INPI held, the problem at stake relates to the interpretation of the data by the operators, and not to a technology of data representation. In other terms, the problem at stake is intellectual and not technical.

Regarding the last feature of claim 1, per which “the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device”, the INPI remarked that the description of the application does not specify by which technical means the user displays “a part of the timeline“. Therefore, this feature is not characterized on the technical standpoint and no technical effect deriving from human-machine interactions is disclosed in the application.

The Paris court of appeal set aside the refusal, on the following grounds.

First, the court referred to the INPI guidelines and also to the EPO guidelines, regarding the definition of a “presentation of information“. The court thus held that information that is presented is not patentable, but that the way information is presented may comprise patentable technical features if it is distinct from the information itself. In particular, a feature which credibly helps the user perform a technical task owing to a continuous or guided human-machine interaction process provides a technical effect.

Next, the court analyzed that the objective of the patent is to transmit information to a user, more specifically the pilot or copilot of an aircraft, so that he/she has a consistent and integrated representation of the mission, in order to make decisions based on a complete knowledge of the state of the aircraft and of its environment.

The court then turned to the first characterizing feature of the claim, and concluded that it is not a technical feature. Namely:

The first feature relates to a window comprising the “timeline”, which displays the different steps opposite the schedule corresponding to their accomplishment. […] Such a window, oriented with past at the bottom and future on top, vertically divided in its center by a timeline, comprises way times on its left and remarkable way points on its right, including mentions such as speed, altitude, beside the current position of the aircraft represented by a symbol “A”. It thus appears that this feature, although it is key to the patent applied for, only relates to the transmission of information to the pilot of the aircraft, both concerning the cognitive information content (way times and way points) and the manner it is presented (as a function of a timeline). There is no distinct technical feature and it is thus not patentable per se. 

However, the court’s take on the very last claimed feature was quite different:

On the other hand, the second feature recites that when the length of the timeline is longer than the length of the first graphical window, the user (pilot) may display only part of the timeline (imposed by him/her). This is a technical means distinct from the content of the information itself. It should be added that this means helps the pilot select the most relevant of said information and thus produces a technical effect […].

In order to conclude that this feature is nevertheless not patentable, the [INPI] asserts that it only mentions a result to be achieved, namely imposing the display of part of the timeline, without clearly setting out the technical means allowing such result to be achieved. However, during examination proceedings, the [INPI] does not have the power to rule on the insufficiency of disclosure of the patent, so that this reasoning is moot. [The INPI] also asserts that this insufficiency of disclosure does not allow a comparison with the state of the art and the preparation of a search report. However, nothing prevents a prior art search, for instance in the “WL” window displaying the list of way points as a table, [to check] if the user can, when the length of this list is greater than the length of the window, display only part of this list. 

Presentation of information can be technical after all.

In summary, the court held that the last feature of the claim is a technical feature, so that the claimed subject-matter is an invention (or rather, is not a non-invention, as patent law is somewhat Carrollian).

The absence of disclosure of precise technical means in the description of the application should not be taken into account, the court added, since insufficiency of disclosure is not a ground for refusal of a French patent application.

In fact, the current list of grounds of refusal of a French patent application is quite limited. For example, lack of inventive step is not one of these grounds, and this is why there is no discussion of inventive step whatsoever in the judgment. This is also why the decision will be outdated soon, as additional grounds of refusal (including lack of inventive step) will be taken into consideration in the near future – see my previous report here on the Pacte bill.

A case like this one is actually probably a good argument in favor of this bill. Indeed, it makes little sense for the court of appeal to set aside a refusal without having to discuss or consider inventive step at all – which of course should be an important point to look at, since lack of inventive step is a ground for nullity of a granted patent.

This case has also made me realize that insufficiency of disclosure has not been introduced as a new ground for refusal in the Pacte bill. Why that is is a conundrum. If the aim is to strengthen French national patents and beef up examination proceedings, why leave a ground for nullity out of the INPI’s purview?

As a final remark, I am, like the court of appeal, unconvinced by the alleged impossibility to perform a prior art search. This is a current and actual ground for refusal, but in my view it should be limited to extreme cases in which the claims are for instance so poorly drafted that they are not understandable. On the other hand, as a matter of policy I do not believe that this provision should apply to features which are alleged to be non-technical – which is always a debatable notion, as shown above.

Now, here is another interesting thing. There is no European patent application equivalent to the French application at stake. But the French application was sent out to the EPO for a prior art search, as is the case for all French applications which do not claim a foreign priority.

And the file wrapper shows that the EPO examiner refused to perform the search, and noted that the claims “relate to a an abstract and generic process of displaying data, independently from any technology. This subject-matter is excluded from patentability, like any abstract method of graphical representation as such, as it is equivalent to a mathematical method“.

Therefore, to some extent, the INPI’s refusal was really based on an EPO examiner’s position.

The feature found to be technical by the court was present in claim 2 of the original claim set. So perhaps the EPO examiner did not pay as much attention to it as he should have. Or perhaps the Paris court of appeal has a more generous view of technical features than the EPO, when it comes to graphical user interfaces. Or perhaps the court would have found the claims invalid based on another ground if all grounds were within its purview.

When the new examination proceedings come into force, it can be expected that the number of refusals will markedly increase, especially in the particular field of technology of graphical user interfaces. This could give the court of appeal the opportunity to further elaborate on its views on this topic.

And if it turns out in the end that its stance is less strict than the EPO’s, this could entail a dramatic shift in filing strategies.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, May 21, 2019, Thales v. Directeur Général de l’INPI, RG No. 18/19669.

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.