Getting ready

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

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

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

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

But, there is a but, or actually two.

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

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

Waiting for the entry into force.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

3 thoughts on “Getting ready”

  1. There’s a good chance that the UPC optimists will be gloating at this news. In any case it is necessary that the UPC opens and that the Brexit related problems are solved. Why linking certain internal French measures with the upcoming of the UPC will remain a mystery. And even there not everything is straightforward.

    To reach this a number of difficulties have to be overcome.

    First of all, the UPC complaint before the German Federal Constitutional Court (GFCC) is far from decided. It should be recalled that there remain before the same Court a number of complaints relating to the functioning of the Boards of Appeal of the EPO which predate the complaint on the UPC. The two cases are not directly related, but since the UP is a EP issued by the EPO, it seems difficult to decide one case without knowing of the other. In the agenda of the UPC, the 4 complaints relating to the EPO are in position number 8, and the one relating to the UPC is in position 10. Those claiming that the complaint against the UPC will be dismissed at once in June or July must wear pink glasses.

    Should the GFCC decide to reject the complaint on the UPC before deciding on the complaints relating to the EPO Boards of Appeal, this could indicate that the GFCC could do the same with the complaints on the Boards of Appeal. It is difficult to conceive that a court of this importance would let itself go to this kind of action, because it would show a certain prejudice. If the GFCC decides to refer the matter to the ECJ, which I think is desirable, then it’s gone for a while. Depending on the result, the copy may even have to be thoroughly reviewed.

    In view of the problems posed by Brexit, even if the UPC starts with the participation of the United Kingdom, the latter’s post-Brexit participation is anything but certain. When one reads the proposals of some British lawyers, yes for the UPC, but no for the EP, one can only wonder:

    http://www.iam-media.com/blog/Detail.aspx?g=ff1a1e48-63cf-4424-a4b7-d1de442d50a9

    If such considerations, which show a galloping fantasy and look more than a hopeless attempt to save the trade which was expected to be made, were to become reality, where is the legal certainty of UPC users?

    The executive order is probably a necessary step, but it is far from sufficient to allow the UPC to see the light of day.

    It is not that harmonisation of IP within the EU is not desirable, or even necessary, aim, but perhaps not the harmonisation that is being proposed at the moment and that is forced down our throats.

Leave a Reply

Your email address will not be published.

This site uses Akismet to reduce spam. Learn how your comment data is processed.