Shooting gallery

We are all familiar with the quote “Football is a simple game. Twenty-two men chase a ball for 90 minutes and at the end, the Germans win. Turns out the quote has an author, by the way, if Wikipedia can be trusted on this one.

Well, the same could be said of public prior use as a patent invalidity defense. It is a simple game. The alleged infringer (or the opponent) collects bits and pieces of evidence for months, and at the end the court (or the EPO) says the patentee wins.

This is because no matter how thorough and careful you are when documenting a public prior use story, it seems that you are almost never thorough and careful enough.

OK, this is oversimplified of course. But I have already reported on how severe judges can be with evidence of public prior use. And the Filmop decision that I talked about last week is another telling example of how a public prior use story can be wiped out, piece by piece, like in a shooting gallery.

This shooting gallery was patented in 1914 – a year sadly famous for many other shootings.

In my previous post, I explained that the FR’204 patent to Concept Microfibre was revoked for lack of inventive step on appeal. But before getting there, the court first discarded allegations of lack of novelty in view (among others) of two public prior uses.

The first public prior use was a so-called Puli-Srub washcloth, which was precisely the allegedly infringing product. According to the defendants, this product was already marketed by Korean companies B&H and Daego, starting from the end of 2006.

The second public prior use was a so-called MN Heavy washcloth, supposedly marketed by Swedish company MN Produkter Ab since 2006.

The FR’204 patent was filed in January 2008.

Regarding the Puli-Srub product, we can gather from the decision that the following evidence was offered:

  • one or more affidavits from the CEO of B&H, with a sample of washcloth attached, concerning sales to a company called Lilleborg in 2006;
  • an affidavit from the CEO of B&H, with a sample of washcloth attached, concerning sales to another (Danish) company called Stadsing, together with an affidavit from Stadsing itself;
  • screenshots from the 2006/2007 Stadsing catalogue;
  • invoices from Daego to Stadsing dated 2006-early 2007;
  • emails dated 2007 between B&H and Lilleborg;
  • emails dated 2005 between Daego and Filmop (one of the alleged infringers in the lawsuit);
  • invoices from Daego to Filmop as well as travel documents dated 2006;
  • affidavits from two employees of DME (the other alleged infringer in the lawsuit, a subsidiary of Filmop).

Quite an impressive list, right? Uh, no, in fact the court was not impressed at all.

First, the court remarked that the B&H affidavits, “drafted more than six years after the facts, are not confirmed by contemporaneous objective evidence”. Further down, they noted that some of the other affidavits were drafted by “employees of DME, a party to the present proceedings”.

I think the bottom-line is that the court does not really trust affidavits. Those signed by employees of a litigant are inherently suspect, while those signed by third parties are also deemed untrustworthy if they relate to facts which took place in the distant past. Such mistrust is understandable but, on the face of it, somewhat unfortunate. Testimonies should be given serious consideration – even though they should of course be carefully examined. Also, they are necessarily prepared only when litigation arises, as there is no need for them beforehand. But as will appear below, in this case there were probably a number of objective reasons for not simply trusting the affidavits.

So, it seems that affidavits are only really taken into account if they confirm non-testimonial evidence on the record.

Here, the non-testimonial evidence was deemed inconclusive.

For instance there was no clear evidence that the washcloth samples were the same as those marketed from 2006. Besides, the packing list which was provided regarding B&H’s sales to Lilliborg was only dated 2008.

The Stadsing affidavit was altogether ignored as it was in English and untranslated. The screenshots of the Stadsing catalogue were said to be less conclusive than an original version or even a photocopy, and were also said to be illegible – which certainly does not help.

The Daego invoices contained product references which could not be directly linked to the Puli Srub product. And the various emails on file concerned various projects, labeling or technical issues, but not actual sales.

Regarding the alleged sales to DME / Filmop, the court primarily relied on the patentee’s evidence, namely the infringement seizure dated July 2012. Based on the bailiff’s report and on the Filmop catalogues, the court held that the Puli Scrub was placed on the market only in 2010. DME and Filmop’s argument was that the same product was previously marketed under the name Micro Activa. But the court concluded that it was a different product, as it was still advertised in the catalogue in 2010 and 2011 beside Puli Scrub. Furthermore, based on the 2007 catalogue, it appeared that the Micro Activa washcloth was made of microfibers only – and therefore was not according to claim 1 of the patent (as reproduced in the previous post).

Next, regarding the MN Heavy prior use, we can gather from the decision that the following evidence was offered:

  • printouts of the MN Produkter website made by a bailiff in 2015;
  • a letter from the CEO of Decitex dated 2015, further to a judicial request made by the appellants, regarding the provision of a sample of MN Heavy from MN Produkter to Decitex;
  • emails dated 2008 and 2016 between the CEO of Decitex and MN Produkter’s commercial manager.

Starting with the website printouts made by the bailiff, the nullity claimants apparently relied on the mention “copyright 2006” on the website to argue that the content of the 2015 website was the same as that of the 2006 website. The court replied that this mention was no evidence at all. In addition, an interesting argument was made based on the photograph dates of the MN Heavy product on the website, which were apparently earlier than the patent filing date.

In this respect, the court relied on a counter-report filed by the patent proprietor, which showed that an online photograph date can easily be modified by editing the properties of the file. Therefore, the photograph dates found by the bailiff in 2015 were not necessarily the exact dates at which the photographs were taken. And, most importantly, what mattered was the date at which the photographs were posted online – which remained unknown anyhow.

Turning now to the CEO of Decitex, he stated that he received a sample of MN Heavy when he visited MN Produkter in the summer 2008. This was after the filing date of the patent, but he added that the product was on the market since at least January 2007. The court noted that the circumstances of the supply of the sample were unclear, and doubted how the CEO could possibly be certain that the 2008 sample corresponded to a product on the market since 2007. On a more formal (if not formalistic) note, this person did not testify as an individual but rather as the CEO of Decitex (since the judicial request to which he replied was addressed to the company itself). And he joined Decitex only in 2010, namely two years after the reported supply of sample by MN Produkter.

The 2008 emails between Decitex and MN Produkter were not persuasive as it can be derived from them that MN Produkter ordered washcloths from Decitex, and not the other way around.

Finally, the 2016 emails were also discarded. Although we do not know their detailed contents based on the decision, it seems that they made reference to an old page of the MN Produkter website, available on the web.archive.org website. The court stated that this is:

an archive service operated by a private entity without any legal authority and the operation conditions of which are unknown, which does not make it possible to consider that the date or content of the archived webpage are undeniably proven.

It is interesting to make a parallel with the EPO’s policy in this respect. Although the archive.org website was originally considered in some board of appeal decisions as an insufficiently reliable archive source (see e.g. T1134/06), more recent decisions seem to consider the website as trustworthy (see e.g. T286/10) – although this is also a matter of which standard of evidence the Board decides to apply in each case.

In section G-IV, 7.5.4 of the Guidelines for examination, it is now stated that the archives on this website “are admittedly incomplete, but this does not prejudice the reliability of the data that they contain”.

It is likely that the court, in the present case, was not fully briefed on how archive.org works and why it can be considered as a reliable source of information. If they had been, maybe their approach would have been more similar to the EPO’s.

Apart from that, the court’s way of dealing with public prior use allegations does not strike me as markedly different to the EPO’s. According to the latter, the date, subject-matter and circumstances of the public prior use are to be established in a precise manner (Guidelines for examination, G-IV, 7.1). Again, if there is any loophole, inconsistency, or lack of reliability in the evidential record, the conclusion is generally that the public prior use is not adequately proven.

This is harsh on opponents or litigants who happen to know (or believe) for a fact that the public prior use allegation is true and relevant but have a hard time collecting evidence. But this high standard is the price to pay to prevent patents from being revoked due to unreal or made up prior art.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 1, September 27, 2016, Filmop Srl & SASU Distribution de Matériel Européen v. SAS Concept Microfibre, RG No. 14/18000.

Clean sweep

There are at least three interesting aspects in today’s decision, as well as a sort of infuriating one. The interesting points are limitation, public prior use and inventive step. The infuriating one is a mistake made by the court, which stumbled over dependent claims – despite vocal criticisms of this type of mistakes made by various commentators over the years.

But before I address these points in turn, a few words on the background. The claimant in this case is Concept Microfibre, a French company specialized in microfiber textiles, as its name suggests. They own two French patents filed on the same day, FR 2926204 (FR’204) and FR 2926205 (FR’205).

In 2012, Concept Microfibre sued another French company Distribution de Matériel Européen (DME) as well as its Italian mother company, Filmop, for infringement of the two French patents. Further to the classical nullity counter strikes, the Paris Tribunal de grande instance (TGI) revoked claims 1, 2 and 3 of FR’205 (which were relied upon by the patent proprietor) in its judgment dated July 3, 2014; but the other patent FR’204 was upheld, and the defendants were found liable for infringement.

They appealed, which leads us to the judgment of September 27, 2016 by the Paris Cour d’appel.

On appeal, the patentee did not fight the revocation of claims 1, 2 and 3 of FR’205 by the TGI. So, this was quite easy to deal with for the appeal judges, and this part of the TGI decision was confirmed. What was more challenging for the court was to handle the other patent FR’204.

The first challenge was that the FR’204 patent was limited during the appeal proceedings, or more precisely at the onset of the appeal proceedings. The appeal was lodged on August 27, 2014, and a request for limitation of FR’204 was filed less than 2 months later, on October 16, 2014, at the INPI (French patent and trademark office). The limitation was accepted by the INPI on January 9, 2015.

The limitation consisted in combining claim 1 with claims 2 and 4.

The alleged infringers claimed that this limitation was invalid, because the limitation was requested “in order to adapt the right so as to escape a looming revocation” (uh, yes, that’s kind of the whole point of limitation proceedings) “and so as to harmonize it with the features of the products that they market” (right, too bad the patentee did not add a feature clearly not present in the alleged infringing products).

The alleged legal basis for the invalidity of the limitation was the legal principle “fraus omnia corrumpit“.

As much as I like Latin phrases, especially when I happen to know what they mean, the argument was clearly a long shot. The court easily concluded that the limitation was neither fraudulent nor improper, and that the defendants had had enough time to challenge the validity of the limited claims.

What I do find puzzling in this limitation case, though, is why the claims were limited in the first place. Usually, claims are limited on appeal when the patent is revoked in first instance (see a recent example in the Orange v. Free litigation). But in this case the patent was upheld in first instance.

Did the appellants immediately file submissions together with their appeal of August 27, 2014, and did these submissions contain new arguments which appeared more serious and threatening to the patentee? It is possible, but we cannot know for sure as the file wrapper is not part of the public record.

As far as I can tell, no new prior art was cited on appeal.

On the other hand, it seems that the appellants developed a proper argumentation of lack of inventive step, which was not the case in first instance.

In first instance, it looks like the defendants were so confident with their lack of novelty attack that they did not really focus on inventive step. Thus, the TGI simply discarded the inventive step attack by noting that:

regarding the first part of the characterizing portion [of the claim], the defendants did not make any observation on its inventive character and on the approach that the skilled person would have to make this composition and its particular structure. 

So I can only speculate that a convincing argument of lack of inventive step was newly introduced very early on appeal, which led to the limitation – unless readers have other ideas?

Anyway, the proprietor may actually have underestimated the new argument in spite, as the main claim as limited was ultimately found not to be inventive by the court!

The claim at stake was the following:

Cleaning cloth, in particular for cleaning the floor, intended to be carried by a broom, said cloth having a cleaning surface intended to come into contact with the floor, said cleaning surface comprising a textile composition made of polyolefine, and a textile composition made of hydrophilic microfibers, characterized in that:

– each of said textile composition made of polyolefine and said textile composition made of hydrophilic microfibers comprises a thread extending towards the cleaning surface, 

– the titer of the thread of said textile composition made of polyolefine is greater than the titer of the thread of said textile composition made of hydrophilic microfibers, 

– the first textile composition defines scrubbing areas and the second textile composition defines absorption areas, and

– on the cleaning surface, the textile composition made of polyolefine is slightly below the textile composition made of hydrophilic microfibers.

Brooms are not just useful for scrubbing and absorbing fluids.
Brooms are not just useful for scrubbing and absorbing fluids.

The court relied on an EPO-like approach to assess inventive step, in particular with respect to the definition of the closest prior art:

the closest prior art which is selected must be relevant, that is it must correspond to a similar use and must require the fewest structural and functional modifications to arrive at the claimed invention; said closest prior art must therefore have the same purpose or effect as the invention or at least belong to the same technical field as the claimed invention or a closely related field. 

The court identified the technical problem addressed in the patent as improving the efficacy of cleaning cloths both for scrubbing dirt and for absorbing fluids, owing to the two textile compositions. Then, the court identified three relevant documents which could represent the closest prior art, without really singling out one among the three. They all belonged to the same technical field although their purpose was slightly different (namely, the prior art cloths were intended for sweeping, not scrubbing).

The court then held that all claimed features could be found in various prior art documents. As far as I understand:

  • Two Korean documents both taught two textile compositions, one made of hard polyolefine fibers (suitable for scrubbing) and one made of hydrophilic fibers (suitable for absorbing fluids), the titer of the former being greater than the titer of the latter.
  • A PCT application disclosed distinct areas, with fibers made of a single thread extending towards the cleaning surface.
  • Finally, a U.S. patent disclosed a cloth made of fabric comprising thread loops of different lengths depending on their purpose (absorption of dirt for the longer loops and absorption of liquid for the shorter ones).

The court did not explicitly state that all these documents could be combined due to a “partial problem” approach, but this is probably what they more or less had in mind. At any rate, they noted that the claimed invention:

does not contravene any prejudice, does not represent any breakthrough relative to the methods already taught, does not overcome any technical difficulty and does not provide any unexpected or surprising result. 

On the face of it, and with the important caveat that I have not examined the prior art nor the submissions of the parties (which are not public), this conclusion seems to make sense.

On the other hand, what makes absolutely no sense is that one of the dependent claims was then revoked for lack of novelty:

Claim 5 recites that the polyolefine is polypropylene, but this claim lacks novelty, since claim 1 of Korean patent 10-0718962 already discloses fibers areas made of polypropylene. 

It is unfortunately relatively common for our judges to get dependent claims wrong. Here, the court apparently focused only on the features contained in claim 5, without realizing that these features should be read in combination with those of claim 1. If claim 1 is novel, then claim 5 is also novel. It can at best lack inventive step, like claim 1.

By the way, the frequency of this type of error regarding dependent claims is probably a factor to be taken into account by patent proprietors when determining their litigation strategy. If you know that your main claim is weak, it is probably better to amend it by way of a limitation rather than assume that a stronger dependent claim will survive if the main claim is revoked. Of course, that can happen, but you’d better not count on it.

As mentioned at the beginning of the post, the way the court handled the public prior use defense was also interesting, I will try to address it in another post.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 1, September 27, 2016, Filmop Srl & SASU Distribution de Matériel Européen v. SAS Concept Microfibre, RG No. 14/18000.

Stay ordered in a rush

Today’s post will remain delightedly short – for once – as I would just like to update readers on the currently hot topic of “biological patents” (this expression being a shortcut of course). 

At the end of a recent post co-penned with Lionel Vial, I briefly mentioned a notice by the European Commission regarding the so-called biotech Directive 98/44/EC. The Commission took the view in this notice that the EU legislator’s intention in the Directive was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

This view by the Commission is contrary to the position recently taken by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 of the Tomato and Broccoli sagas. The final words in the post were that patentability of biological materials in Europe is currently on moving grounds, and that more episodes of this developing story were to be expected.

No, this is not an illustration of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.
No, this is not a picture of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.

However, what Lionel and I did not expect is that the new developments would be so quick.

According to a notice from the EPO dated November 24, 2016 (but actually published only on December 12), “follow-up measures” further to the Commission’s notice are under discussion with representatives of the member states of the European Patent Organisation.

In the meantime, the president of the EPO has decided that all proceedings before examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio.

This notice from the EPO does come as a surprise.

Clearly, the notice from the European Commission has no binding effect on the EPO. The EPC is a non-EU international agreement. Rule 26 EPC specifies that the biotech Directive shall be used “as a supplementary means of interpretation” when it comes to European patent applications and patents concerning biotechnological inventions. But there is no organic link between EU institutions and the EPO. Thus, the EPO or the Enlarged Board of Appeal may very well have a different interpretation of the biotech directive than the EU institutions.

On the other hand, since the majority of the EPC contracting states are members of the EU (and this is supposed to remain the case in the future, Brexit notwithstanding), some consistency between the approaches taken by the various institutions involved would be highly desirable.

Gossip has it that the president of the EPO is looking for any opportunity to throw tomatoes (or broccoli) at the Enlarged Board of Appeal – things between them being what they are. Now, gossip is seldom reliable; but is it conceivable that the EPO management might currently show less deference to the Enlarged Board’s views on a number of topics than in the past?

What will happen next is anyone’s guess – though of course the stay of proceedings does not bode well for biological product patents or applications.

  • Will the EPO align its practice on the Commission’s notice? If so, how? Will an amendment of the Implementing Regulations be proposed?
  • Shouldn’t the EPO wait first for the Court of justice of the EU to have its say on the matter, one way or another? After all the Luxembourg judges may not necessarily share the same interpretation of the Directive as the Commission.

The bottom-line is that the fate of products obtained by essentially biological products is becoming again very much a matter of public policy.

In this respect, it is quite interesting to note that France, sometimes mocked by its neighbors for its handling of patent matters, was first to act before the Commission’s notice, as reported in the earlier post.

Finally, as explained by Lionel in the post, most interesting is the definition of which processes are essentially biological and which processes are not. Various stakeholders have vastly different views in this respect. Is it possible that, on this issue as well, the Boards of Appeal’s position could at some point of time be at odds with that of member states or EU institutions?

An eccentricity issue

Judgments in which a mechanical engineering patent is revoked for insufficiency of disclosure are few and far between. Typically, insufficiency problems tend to arise in the context of chemical or medicinal inventions – although they are not unheard of with mechanical inventions.

So, today’s decision may be viewed as somewhat eccentric in this respect. But the best part is that the feature which was found to be problematic revolves around… an eccentric (mechanism). End of pun.

In the case at hand, the patent (EP 1023111) was commonly owned by its three inventors, and licensed to a company called LPG Systems. LPG are the initials of one of the inventors, who, not unexpectedly, was a partner of the licensee.

At some point of time, things must have gone wrong, as LPG put an end to the license agreement. As a result, the two other owners of the patent filed suit for wrongful termination. And as a counter-strike, LPG filed a patent nullity action.

The patent was revoked for insufficiency of disclosure in first instance. This was confirmed in a judgment by the Cour d’appel de Paris dated September 9, 2014. The two disgruntled patent proprietors filed an appeal on points to law with the Cour de cassation (judicial supreme court). This final appeal was dismissed in a judgment dated October 4, 2016.

In order to properly understand what was wrong with this patent, it is easier to go back to the 2014 appeal ruling, as judgments from the Cour de cassation have this tendency to be somewhat cryptic and in particular to only partially recall the relevant facts.

The patent at stake relates to an apparatus for restoring the balance of the human body.

Due to various medical conditions, patients sometimes need to have their balance corrected or restored. This can be achieved owing to a training apparatus, such as the one claimed in the patent:

Apparatus for restoring the balance of the human body, consisting essentially of a mobile circular platform intended to support the subject to be treated and which can have an oscillatory movement imparted to it, and in which the said platform has its oscillatory movement imparted to it about a central support point, this movement being combined with a reciprocating rotational movement, by means of a single motor connected to transmission means and without the intervention of the patientthis being in the plane of the platform supporting the subject, about the geometric axis perpendicular to the said platform and passing through its centre, the amplitude and speed both of the oscillation and of the rotation being adjustable and capable of being varied during use, means being associated with the said apparatus so that the subject can be held on the platform either in a standing position or in a crouched or seated position.

The expressions highlighted above are probably the most significant ones for the decision.

LPG claimed that the patent at stake does not disclose appropriate means for adjusting the amplitude of the oscillation and rotation during use and that the skilled person would not be able to implement this feature of the claim.

The Cour d’appel agreed. The court reviewed the description of the patent. Said description does disclose a mechanism for providing the claimed oscillatory and rotary movement of the platform: the platform is mounted at the extremity of a shaft of a cylinder, which imparts the desired oscillations. And rotation can be generated owing to another shaft connected to an eccentric.

The court stated that both the rotation amplitude and the oscillation amplitude could be adjusted by acting on respective relevant parts (cylinder shaft and eccentric). However, it was only possible to do so when the apparatus was not working. But the claim required the possibility to adjust this amplitude in use. Such possibility was not taught in the patent.

The appellants submitted two expert opinions aiming at showing possible ways to implement the claimed feature. The description of the opinions is very brief in the judgment. It seems that the first one suggested to use an electric or hydraulic cylinder for the eccentric itself, so that the patient could actuate it during use; and that the second one offered to mount an electric or hydraulic cylinder on the eccentric so as to actuate it and rotate with it.

The court dismissed these expert opinions. They noted that the first opinion called for the intervention of the patient; and that both relied on the presence of an additional motor. And this was not consistent with the teaching of the patent. They also added that the technical solutions contemplated in the expert opinions required more than mere implementation steps.

Eccentricity can sometimes be brilliant.
Eccentricity can sometimes be brilliant.

In order to challenge an appeal judgment in front of the Cour de cassation, it must be shown that the law was not correctly applied. This is seldom an easy task. It is often said that appeal courts are skilled in drafting judgments relying almost entirely on facts (and not on any particular interpretation of the law) in order to reduce the risk of being overturned. Conversely, cassation appellants tend to artificially disguise arguments that the Cour d’appel erroneously assessed facts as arguments that the Cour d’appel violated the law. An interesting game indeed.

In the present case, first the appellants stated that the Cour d’appel had come up with an argument of its own (which they are not supposed to do) without hearing the parties on it (which they are not supposed to do either). The argument in question was that the adjustment at stake could not possibly be made by the patient him/herself. The Cour de cassation disagreed because this argument made by the appellate judges was actually derivable from the main claim itself.

Second, the appellants submitted that the patent does not require the claimed adjustment to be made without the intervention of the patient, and with a single motor – as asserted by the appellate judges. The main claim requires on the one hand that the oscillatory movement is “combined with a reciprocating rotational movement, by means of a single motor“; and on the other hand that “the amplitude and speed both of the oscillation and of the rotation [are] adjustable and capable of being varied during use“.

In other words, there is no explicit limitation in the claim to an adjustment by means of a single motor, without any intervention of the patient. Paragraph [0026] of the description mentions an “oscillatory movement around a central support point, which is combined with an alternate rotation movement, owing to a single motor connected to transmission means and without any intervention of the patient”. Here again, it is not explicitly stated that the requirements of a single motor and of the absence of intervention of a patient apply to the adjustment of the movement.

Here is how the cassation judges dealt with the argument:

This description is not clear and accurate. It does not mention that the single motor does not provide the adjustment of the speed and amplitude of oscillation or of the alternate rotation. Nor does it mention that another means should be used for that purpose. The Cour d’appel held that the addition of a supplementary motor was contrary to the teaching of the patent based on an interpretation which had to be made due to the ambiguity of the description – and therefore the decision was correctly reasoned. 

In other words, the appellate judges were at a liberty to interpret the claim in a restrictive manner because the description of the patent did not clearly and unambiguously lead to a different interpretation. Again, it is not the Cour de cassation’s job to redo the work done by the Cour d’appel. They only focus on possible errors of law. I figure that a blatant interpretation mistake could be considered as misapplying the law, but this was not the case here.

The appellants also blamed the Cour d’appel with not sufficiently taking into account the experts’ opinions in its reasoning. But the Cour de cassation considered that the reasoning was sufficient: based on the above claim interpretation, the movement adjustment was supposed to be performed owing to the single motor – according to the patent. Since the experts’ opinions relied on an additional motor, the Cour d’appel did not err in rejecting those.

I guess this is one of those cases where it is in fact a lack of clarity of the claims which made the patent fall down the abyss of insufficiency of disclosure.

Probably not that eccentric an outcome, if you ask a chemical engineering patent attorney.


CASE REFERENCE: Cour de cassation, ch. com., October 4, 2016, Bardon & Tudico v. Guitay & LPG Systems, appeal No. Y 15-12.294.

Biological patents: an endangered species

Last August, while most of the patent profession was enjoying well-earned holidays, the Code de la propriété intellectuelle (CPI) was amended in a way that may significantly alter the fate of patents on biological materials.

So much so that my colleague Lionel Vial wonders whether France may become a safe haven for copies of patented plants.

Here are his thoughts on the subject.

The so-called law for the recovery of biodiversity, nature and landscape dated August 8, 2016, which entered into force on August 9, 2016, has introduced two amendments into the Code de la propriété intellectuelle (CPI).

The first amendment is the addition of a new paragraph in article L. 611-19 CPI:

I – The following shall be unpatentable:

1° Animal varieties;

2° Plant varieties as defined in Article 5 of Regulation (EC) No. 873/2004 […];

3° Essentially biological processes for the production of plants and animals. A process that consists entirely of natural phenomena such as crossing or selection shall be regarded as such;

3° bis Products entirely obtained by the essentially biological processes defined in 3°, including the elements constituting these products and the genetic information they contain;

4° Processes for modifying the genetic identity of animals which are likely to cause them suffering without substantial medical benefit to man or animal, as well as animals resulting from such processes.

II – Notwithstanding the provisions of (I), inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.

III – The provisions of I (3°) shall be without prejudice to the patentability of inventions which concern a technical process, in particular a microbiological one, or a product obtained by means of such a process; any process involving or resulting in or performed upon a microbiological material shall be regarded as a microbiological process.

According to parliamentary discussions during the lawmaking process, this amendment was essentially triggered by decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) of the Enlarged board of appeal of the EPO. As a reminder, these two decisions provided that the exclusion of essentially biological processes for the production of plants from patentability in article 53(b) EPC does not extend to product claims directed to plants or plant materials such as plant parts.

The idea was also to push for a modification of European Union law, in particular of Directive 98/44/EC, after similar amendments were made in German and Dutch national laws (see Patentabilty of Plants in epi information 4/15:156-168).

However, the French version of this new exclusion from patentability is broader than a prohibition of patents on products entirely obtained by essentially biological processes, like in Germany and the Netherlands. Indeed, the exclusion also encompasses elements constituting these products and the genetic information they contain.

According to statements made by members of parliament promoting this amendment, the aim was to further prevent native traits of plants from being patented.

As a consequence, the exact scope of this new exclusion from patentability is not simple to delimit. Indeed, from a teleological point of view, it appears that elements from plants previously occurring in nature are also intended to be excluded from patentability by this provision. In contrast, based on a literal approach, only elements from plants entirely obtained by essentially biological processes, and thus obtained by human action, should be excluded from patentability. This would also be consistent with article 3.2. of Directive 98/44/EC per which

Biological material which is isolated from its natural environment may be the subject of an invention even if it previously occurred in nature.

The impact of the amendment of article L. 611-19 CPI should nevertheless be relatively limited, as it applies only to French patents. Besides, the INPI (French patent and trademark office) had already decided, before the entry into force of the new law, that it would not apply G 2/12 and G 2/13 and that it would refuse to grant French patents pertaining to biological material obtained by essentially biological processes.

But lawmakers also added a third paragraph in article L. 613-2-3 CPI which defines the protection conferred by a patent on biological material and which applies both to European and French patents (possibly including those already granted before the entry into force of the new law):

The protection conferred by a patent on a biological material having specific characteristics as a result of the invention shall extend to any biological material derived from that biological material through propagation or multiplication and having the same characteristics.

The protection conferred by a patent on a process for producing a biological material having specific characteristics as a result of the invention shall extend to biological material directly obtained through that process and to any other biological material, derived therefrom, by reproduction or multiplication and having the same characteristics.

The protection conferred by a patent relating to a biological material having specific characteristics as a result of the invention does not extend to biological materials having these specific characteristics, obtained independently from the patented biological material and by an essentially biological process, nor to biological materials obtained therefrom, by reproduction or multiplication.

Our readers may have difficulties determining the exact scope of this exclusion from patent protection. If so, we would be inclined to think that this is not entirely due to the translation, as the French text itself is quite cryptic.

Let’s try to get things straight.

The aim of this amendment is mainly to prevent seed makers who use essentially biological processes to generate genetic diversity when producing new seeds from being prohibited to use or sell the new seeds thus obtained because of existing patent rights.

An enlightening example for understanding the motives of the lawmakers in this regard relates to the aphid-resistant lettuce case which was referred to by several members of parliament during the debates.

In this case, the French seed maker Gautier Semences, a family business, was allegedly forced into a license agreement with Rijk Zwaan in respect of European patent EP 0921720, to be able to continue to market the aphid-resistant lettuce seeds it had been selling before the patent was filed.

As a side note, claim 1 of the patent as maintained in amended form after opposition proceedings reads as follows:

Lettuce plants of the species Latuca sativa L. which are resistant to the aphid Nasonovia ribisnigri due to presence in the genome of the Nr resistance gene, characterized in that the genetic information responsible for the CRA phenotype is absent from the genome of the plant at least to such an extent that in the presence of the Nr gene in homozygous condition the CRA phenotype is not expressed.

But how on earth could this patent be enforced against Gautier Semences, as they should benefit from prior user rights? In addition, shouldn’t there be a serious novelty issue in view of the seeds marketed by Gautier Semences?

The response is that in theory Gautier Semences should indeed have been immunized against the effects of Rijk Zwaan’s patent. However, evidence of prior user rights or of public prior use may be difficult to provide, especially for an SME.

The new provision should therefore facilitate the defense of those marketing biological materials covered by a patent, when the materials were obtained by an essentially biological process. However, it will probably still be necessary for those wishing to take advantage of this provision to prove the latter fact.

Besides, it should be noted that the new provision goes beyond simply addressing situations such as the above aphid-resistant lettuce case, as it applies to any biological material obtained by an essentially biological process, irrespective of whether it was obtained before or after the patent was filed.

Now that we have a better view of the aim of the new provision, let’s examine two interesting consequences.

The first one is in relation to the meaning of the expression “essentially biological processes”.

At least we can tell that this plant material was not obtained by an essentially biological process.
At least we can tell that this plant material was not obtained by an essentially biological process.

This expression is not defined as such in the rest of the statute. Reference is made to “essentially biological processes for the production of plants and animals” in Article L. 611-19 3° CPI. The same article also provides that “processes that consist entirely of natural phenomena such as crossing or selection shall be regarded as [biological processes]”.

Accordingly, it is possible that the expression “essentially biological processes” in Article L. 631-2-3 CPI could be construed as not being limited to processes entirely consisting of natural phenomena such as crossing or selection.

This may be apparent from the parliamentary history of the new provision which, until the last round of amendments and vote (out of 7!) still recited:

The protection defined in the first paragraph of the present article does not extend to the biological materials entirely obtained by the essentially processes defined in the third paragraph of part I of article L. 611-19 CPI.

The result of this last minute amendment, the justification of which was to protect the French seed industry, was to cancel any explicit reference to a process that entirely consists of natural phenomena such as crossing or selection being regarded as a biological process.

A consequence could therefore be that plants obtained by a process involving, among steps of a biological nature such as crossing or selection, a step of random mutagenesis, and having properties similar to a plant covered by a patent, could be considered as being obtained by an essentially biological process and would thus be excluded from patent protection.

Indeed, the French union of seed makers (Union Française des Semenciers) for instance considers that random mutagenesis, e.g. by the use of chemical agents or ionizing radiations, yields native traits, i.e. traits that could be obtained through natural processes

It will be interesting to see how case law will develop in this regard, especially in view of new mutagenesis techniques, such as the superstar CRISPR/Cas9 technique for which Monsanto has just secured a non-exclusive license.

Another consequence of this last minute amendment, which might be seen as a huge side effect, is that the exclusion from patent protection set by the new provision in article L. 613-2-3 CPI is not confined to plants and animals but now encompasses all biological materials and potentially microorganisms.

Again, it remains to be seen how patents pertaining to isolated microorganisms endowed having specific characteristics, e.g. food transformation or health properties, will be enforced against microorganisms having these characteristics but which were isolated independently from the patented microorganisms.

At present, there is no way for patentees to escape the new provision. However, there might be one in the future owing to the Agreement on a Unified Patent Court. Indeed, the limitations of the effects of a non-opted out European patent will be defined by Article 27 of the Agreement… and not by the French statute. That is, if the agreement ever enters into force…

Many thanks, Lionel. Struggling to figure out what a new legal provision exactly means, and guessing about unintended fallout are probably the perks of every single patent law reform.

Conformity of the new provisions to the biotech directive 98/44/EC could also be an interesting and tricky question. All the more so that the European Commission released a notice which was published in the Official Journal of the European Union a few days ago.

The notice addresses a number of aspects of the biotech directive. It is in particular stated that:

The Commission takes the view that the EU legislator’s intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

The Commission’s view is thus contrary to the position taken by the Enlarged Board of Appeal and on the face of it consistent with at least part of the recent amendment of French law.

Clearly, patentability of biological materials in Europe is on moving grounds right now. I would not be surprised if there were more episodes of a tomato, brocoli or lettuce saga coming up in the near future.