Copy and paste

What is new in today’s post? Well, strictly nothing. Nope, nothing new under the sun. 

In fact, the recent ruling by the Cour d’appel de Paris in Avery Dennison RIS France & Avery Dennison Sytèmes d’étiquetage France v. Directeur général de l’INPI is pretty much a copy and paste of Free & Freebox v. Directeur général de l’INPI issued a few months ago and already reported on here.

So is there really a need to discuss it? After all, case law is more interesting when it tackles new issues or when it features a change in practice.

But the point is, sometimes even established case law can be somewhat questionable from a practitioner’s perspective. And in this case, I must say I struggle with fully understanding the court’s reiterated rationale.

Copying an IP judgment – a paradox?

The issue at stake is the limitation of a patent in front of the INPI (which is the French patent and trademark office), and which options are available to third parties to challenge this limitation. Appeals against decisions issued by the INPI are generally supposed to be lodged with the Paris Cour d’appel. Accordingly, a number of third parties have tried to challenge decisions of limitation of patents in front of the Cour d’appel, by directly appealing these decisions – oftentimes parallel to ongoing litigation. And they have lost, their appeals being deemed inadmissible. The present case is no exception.

In particular, the Paris Cour d’appel (with the support of the Cour de cassation in Teisseire v. Directeur général de l’INPI) has consistently held that challenges against the limited claims must be brought in the context of a nullity lawsuit. This means that such challenges have to be brought in front of the Paris Tribunal de grande instance (TGI), not the Cour d’appel.

But here is the thing. Grounds for nullity are supposed to be listed in a limitative manner in the law, be it in article L. 613-25 Code de la propriété intellectuelle (CPI) for French patents, or in article L. 614-12 CPI together with article 138 of the European patent convention (EPC) as far as French parts of European patents are concerned. These grounds of nullity notably comprise lack of novelty, lack of inventive step, insufficiency of disclosure, extension of subject-matter beyond the contents of the application as filed and extension of the scope of protection after grant.

What the statutory grounds for nullity do not comprise is lack of compliance with article 84 EPC (or its equivalent in the CPI), per which the claims “shall be clear and concise and be supported by the description” is not a ground for nullity. Just like a lack of clarity is not a ground for opposition at the EPO either.

Nevertheless, when the INPI examines a request for limitation, they are supposed to check whether the claims as limited are clear and concise and supported by the description. See article L. 613-45 CPI together with article L. 612-6 CPI.

The question is whether and how third parties may challenge the result of this part of the examination conducted by the INPI.

If we turn to the parallel situation of limitation proceedings at the EPO, the answer is clear. Only parties to the proceedings can file an appeal against a decision issued by the EPO. A third party, as its name indicates, is not a party to the limitation proceedings and thus cannot appeal the decision of limitation, even if they deem that the limited claims are e.g. unclear.

In France, third party appeals are not ruled out as a matter of principle. By way of example, it is relatively common for a third party to challenge a decision of restoration of a patent by the INPI. See an example here.

But when it comes to decisions of limitation, third party appeals are usually stroke out in view of the arguments raised by the appellant.

In the present case, the French part of a European patent was limited by Gemalto, parallel to ongoing patent infringement proceedings against two companies of the Avery Dennison group. Avery Dennison appealed the decision of limitation and argued (among others) that the claims as limited are unclear.

The Cour d’appel rejected the appeal as inadmissible and held in particular that: 

[…] The arguments by Avery Dennison supporting their request for cancellation of the decision of the general director of the INPI, per which the claims as limited are not clear and not supported by the description, are analyzed as arguments of invalidity of the patent enforced against them in the framework of the infringement suit. These arguments, which put into question the limitation itself, i.e. whether the modified claims comply with the law, pertain to the jurisdiction of the judge in charge of assessing the validity of the patent. In this case, there is a counterclaim for nullity of the claims of the […] patent pending in front of this judge. His jurisdiction extends to all patent validity challenges, be it arguments of extension of an absence of limitation or arguments of a lack of clarity of the claims or a lack of support in the description, which are indeed exceptions which can lead to the nullity of a patent

Just to be very clear on this: I perfectly understand that it may make a lot of sense for the same court (the TGI) to be in charge of assessing all challenges against the patent claims.

What I do not understand is the last sentence in the above quote. In other terms, why does the Cour d’appel deem that a lack of clarity of the claims or a lack of support in the description, can lead to the nullity of the patent? 

I can come up with three possible explanations. 

Option 1: the court simply did not (does not) understand that not all conditions to be examined before granting limited claims can be challenged after the limitation, based on the listed grounds of nullity. I think this is unlikely, because the point has certainly been explained to the court time and time again in this case and previous similar ones.

Admittedly, it is probably easy to confuse a lack of support in the description (not a ground for nullity) with insufficiency of disclosure (ground for nullity). Both concepts are quite close, as explained in section F-IV, 6.4 of the EPO guidelines for examination. Actually, lack of support can also be easily confused with extension of subject-matter.

But lack of clarity on the other hand is quite clearly different from insufficiency of disclosure, or any other ground for nullity for that matter.

Option 2: the court deems that judges have such a large discretion in examining the actual grounds for nullity, such as insufficiency of disclosure or even lack of novelty, that they can very well revoke a patent under one of these statutory grounds if there is a lack of clarity in the claims.

This would be a pragmatic approach but not a satisfactory one on the legal standpoint. The legislator purposefully set out a number of distinct requirements to be handled differently. So why should judges be allowed to blur the lines between them?

Option 3: the court believes that all statutory conditions may be examined in the context of a nullity claim or counterclaim, including clarity and conciseness mentioned in article 84 EPC or article L. 612-6 CPI.

This would be a very bold position, since, at least as far as European patents are concerned, article 138 EPC provides that “a European patent may be revoked with effect for a Contracting State only on the grounds that“, and then comes a list of grounds which does not contain lack of clarity and conciseness.

But let’s explore option 3 a little bit more.

If this is indeed what the court has in mind, is this situation specific to limited patents? Does it also extend to patents modified in opposition at the EPO? Or has lack of clarity now also become a ground for nullity for all patents, even those which were not modified after grant?

Dear readers, please feel free to provide more information or to speculate as to yet further possibilities not contemplated here…

One other argument which – as far as I understand – was raised in the appeal, was that the modified claims were not a limitation. Here, the court’s position seems to be that modified claims necessarily lead to a limitation of the scope (and thus are allowable) or to an extension of the scope (and thus can be revoked in a nullity challenge).

But aren’t there yet other situations in which the modified claims could result neither in a limited scope nor in an extended scope? What about for example claims which are modified only to provide some clarification? In such a scenario, shouldn’t a third party be allowed to challenge the decision of limitation per se? After all, the INPI is supposed to only grant actual limitations, not clarifications. And if no extension of scope results from the modification, it should not be possible to challenge it in a nullity suit, oder?

I must admit that this latter question is trickier. But at least the main point raised above really needs to be clarified once and for all.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, February 10, 2017, Avery Dennison RIS France & Avery Dennison Systèmes d’Etiquetage France v. Directeur général de l’INPI, RG No.15/25007.

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