The neverending story

Happy new year to all readers!

And, to make sure that we are off to a good start in 2019, consider this: it has been a while since we last heard of Nergeco and Maviflex, right? One of the longest and messiest examples of French patent litigation, perhaps only equaled by the pravastatin case. 

But a few weeks ago, Jean-Martin Chevalier, from the law firm Cousin & Associés, was the first one to kindly draw my attention to the latest episode of the saga. 

Drum roll… Ladies and gentlemen, we now have a 4th (yes, fourth) cassation ruling partly setting aside a previous judgment by an appeal court.

My previous post on the saga was entitled Groundhog case.

I might as well copy here the timeline of the case from this post and simply add the latest developments at the end of the list:

  • At the end of the nineties, Nergeco (patentee) and Nergeco France (licensee) sued two companies, Mavil (now Gewiss France) and Maviflex, for infringement of a European patent.
  • On December 21, 2000, the Lyon Tribunal de grande instance (TGI) held that the plaintiffs’ claims were admissible but ill-founded. The plaintiffs appealed.
  • On October 2, 2003, the Lyon Cour d’appel set aside the first instance judgment and concluded that the patent was infringed. The court ordered an expertise to assess damages.
  • On October 15, 2005, the Cour d’appel issued a second judgment further to the expertise. The amount of damages was set to 60,000 euros to the patentee (Nergeco) and 1,563,214 euros to the licensee (Nergeco France). The defendants then filed an appeal on points of law.
  • On July 10, 2007, the Cour de cassation partly set aside the 2005 judgment regarding the damages to be paid to the licensee. The reason for the reversal was that the Cour d’appel had not addressed the argument that the license agreement had been registered in the patent register only in 1998, so that it was not enforceable against third parties before that date. The case was thus remitted to a different Cour d’appel, in Paris this time.
  • On June 2, 2010, the Paris Cour d’appel held that all claims against Mavil (now Gewiss France) were in fact inadmissible as Mavil no longer existed when they were initially sued; and reduced the amount of damages to be paid by the second defendant Maviflex to the licensee Nergeco France by approximately half (taking into account the date at which the license agreement was registered and became enforceable against third parties). Both sides filed another appeal on points of law.
  • On September 20, 2011, the Cour de cassation set aside the 2010 judgment. First, because the Cour d’appel should have ruled on an argument of invalidity of the license agreement (there was no res judicata on this issue, as it was not addressed in the 2003 and 2005 judgments). Second, because the argument that the claims against Mavil were inadmissible should not have been given any consideration, as Mavil / Gewiss France acted in the proceedings as if their designation in the initial complaint was correct. In fact, this part of the decision became very famous since it is one of the few illustrations of an estoppel principle in this country.  The case was again remitted to the Paris Cour d’appel.
  • On June 21, 2013, in a new judgment by the Cour d’appel, the case was reexamined pursuant to the instructions of the Cour de cassation. But the actual outcome was pretty much the same as in the previous judgment. In particular, the damages award to Nergeco France was similar to the one ordered in 2010. The defendants filed a third appeal on points of law.
  • On December 16, 2014, the Cour de cassation set aside the 2013 judgment. Once again, the supreme court ruled that the appeal judges should have ruled on some arguments relating to the inadmissibility of Nergeco France’s claims.
  • On October 28, 2016, the Paris Cour d’appel held that the agreement containing the license provision was invalid. Nergeco France further filed a claim based on unfair competition, but this claim was held as new and thus inadmissible at this stage.

This leads us to the latest development: on September 26, 2018, the Cour de cassation set aside the 2016 judgment and remitted the case once more back to the Cour d’appel in a different composition.

As Forrest Gump would say, this case is like a chocolate box, you never know what you’re gonna get.

There were two parts in Nergeco’s appeal. According to the first part, the agreement containing the license provision should not have been held invalid. This part of the appeal was rejected by the Cour de cassation.

As explained in my previous post, there are two reasons why the license agreement was held invalid by the Cour d’appel.

First, the agreement was allegedly executed at a date when Nergeco France was not yet registered in the commerce register. But the agreement mentioned that Nergeco France was registered in the commerce register of Le Puy, under a certain number – which was untrue, as this registration only took place later. The agreement was thus executed by a company with no legal capacity. It can be surmised from these facts that either the execution date was erroneous, or the document was forged – although the appeal decision did not go down that road.

Second, the agreement only licensed the European patent at stake in the lawsuit but failed to license the corresponding French
priority patent. Under French law, this omission made the license invalid.

In front of the Cour de cassation, Nergeco argued that the parties to the agreement had proven their willingness to renew or continue the agreement after the cause for nullity of the agreement had disappeared.

In particular, the agreement was filed at the national patent register several years later, and amendments were signed, at a time when Nergeco France was properly registered (as indicated in the original agreement) and the French patent had ceased to be in force (due to the substitution of the European patent).

The supreme court was not convinced. If an agreement is invalid due to an “absolute” ground for nullity, it cannot be retroactively confirmed. Nergeco did not argue that another, valid license agreement had been executed at a later stage, but rather argued that the initially invalid agreement later became valid, and this is not possible according to the court.

But then there was the second part of Nergeco’s appeal, per which the Paris Cour d’appel wrongly held Nergeco’s unfair competition claim inadmissible. Here, the cassation judges sided with Nergeco.

Here is my translation of the Cour de cassation’s take on this. First point:

[…] The judgment [under appeal] stated that Nergeco France’s claim is inadmissible because [the court] cannot rule on a claim for damages on a different ground from the patent infringement ground, on which the claim was originally based, and on which the Lyon Cour d’appel ruled in a final ruling that it could in principle be indemnified.

By ruling in this manner, the Cour d’appel [erred] as the judgment of the Lyon Cour d’appel of October 2, 2003 did not decide, in the order, on the dispute relating to the ground for damages [now] filed by Nergeco France.

Second point:

[…] Partie’s submissions [on appeal] are not new when they have the same purpose as those filed in front of the first instance judge, even if the legal ground is different.

[…] The judgment [under appeal] stated that Nergeco France’s claim for remedy further to the acts of infringement of patent No. EP 0398791 is inadmissible because this company cannot file a claim for damages on a ground which is different from the patent infringement one, on which its claim was initially based.

By ruling in this manner, the Cour d’appel [erred] as the claims successively filed by Nergeco France based on article L. 615-2 Code de la propriété intellectuelle and then on article 1382, now article 1240 Code civil, both had the purpose of obtaining a remedy further to the harm caused by the patent infringement.

So if I understand correctly the court’s reasoning, Nergeco France’s claim is not “new on appeal” (and thus inadmissible) because Nergeco France simply changed the legal ground for its claim for damages, but the damages are still requested for the same purpose, in view of the same acts. And on the other hand, this more recent legal ground was not previously examined and there was thus no res judicata.

I have to say that I am a little bit surprised by this reasoning.

There is case law aplenty per which an unfair competition claim cannot be based on the exact same facts as a patent infringement claim.

If this is correct, then how can Nergeco France’s unfair competition claim not be “new” relative to the original patent infringement claim?

Besides, irrespective of the correctness of the legal reasoning, the practical outcome of this cassation ruling appears to be most unfortunate.

I find it preposterous that this is the tenth ruling in this litigation, and that it is still not yet the final one. You can probably count on at least two more: a further judgment of the Paris Cour d’appel, and then back again to the Cour de cassation, unless of course there are yet additional twists in the story.

Fortunately, this case is exceptional and is not representative of IP litigation in France in general. But seriously, what a terrible example…


CASE REFERENCE: Cour de cassation, ch. com., September 26, 2018, Nergeco France et al. v. Gewiss France et al., pourvoi No. Y 16-25937.

To be continued

I think it is high time to wish all readers of this blog happy holidays. 2018 was an eventful year in the small world of European patent law, and there is little doubt that 2019 will be as well.

Before you go, here is a short summary of a few things to watch out for in the coming year – so that you can ponder over those and make your own 2019 predictions while indulging in device- or apparatus-shaped chocolates, or while humming typical Christmas songs such as “we wish you a valid patent, we wish you a valid patent, we wish you a valid patent, and a happy new grant“.

Let me start with the topic of last week’s post, the new mandatory web-based filing system implemented by the INPI. Let’s hope that it will improve next year and become more manageable and user-friendly.

Two side notes on this topic. One, the INPI guidelines have now been updated to reflect the new filing procedure. You can download them here. Second, there was an interesting discussion in the comment section of the post. There seems to be a strong argument that the Patent Law Treaty makes it impossible for the patent office to prohibit paper filing. One reader reported that, in one of his cases, the INPI accepted a paper filing when the representative insisted. But there has been no communication from the office on this issue. The updated guidelines no longer mention paper filing, and neither does the decision of the Director of the INPI which sets up the new system.

Hopefully we will get some clarification in the near future.

And while we are talking about the INPI, there is actually a lot going out right now, as reported in one of my previous posts. Will the legislative reform be successfully completed? What will the French opposition proceedings look like? Will there indeed be a full examination of French national applications? If the current expectations are confirmed, this will be an upheaval of French patent practice – but so far the always important practical details have not been forthcoming.

Things are also moving on the SPC battlefront – aren’t they always – with a number of important pending references to the CJEU. Just a few days ago, the opinion of the Advocate General in Abraxis (C-443/17) was issued, and it calls into question Neurim (C-130/11), which is one of SPC applicants’ favorite CJEU rulings. See a full report by Alexa von Uexküll and Oswin Ridderbusch here. We’ll see which way this one goes. And perhaps one day we will finally get to understand what a “product” is – almost a philosophical question.

“A kit for creating an illusion that suggests a Santa Claus visit”. Wait a minute? Is Santa Claus just an illusion?

Turning now to the EPO, no upheaval in sight, but still some interesting developments.

First, the new version of the Rules of procedure of the Boards of appeal will likely be finalized soon. As noted by a number of colleagues, such as Adam Lacy and Thorsten Bausch (here), this will likely make the lives of many parties in appeal proceedings more difficult.

One side remark again: when I reported on T 1914/12 (which by the way does not seem to be very much followed by other Boards, see Peter de Lange’s blog here), I wondered whether the proposed revision of the rules of procedure could potentially be considered as breaching article 114 EPC, if one were to adhere to the reasoning of Board 3.2.05 in this decision. Any thoughts on this?

Next, a new online user consultation has been launched by the EPO regarding the possibility of a postponed examination option (see here). A very recurring subject indeed. We’ll see whether and how it progresses in 2019.

Last but not least, the broccoli / tomato / bell pepper battle is still raging at the EPO. Remember that it was decided in G2/12 and G2/13 that the exclusion of essentially biological processes for the production of plants from patentability does not preclude patents on the plants themselves. But the European Commission subsequently expressed its disagreement with this position, which led to the amendment of R. 28 EPC in July 2017. And then bang! Board 3.3.04 in T 1063/18 decided that amended R 28 EPC violates art. 53 EPC. See Laurent Teyssèdre’s report here. It is quite difficult to predict where things will go from there.

As a consolation, faithful readers of this blog will be satisfied that Lionel Vial correctly anticipated some of the current difficulties with the application of amended Rule 28 EPC one and a half year ago. Are you skeptical? The evidence is here.

This post would not be complete if I did not say a word on the white whale of European patent law: the UPC. Rumor had it that the
German Bundesverfassungsgericht would issue a decision on the constitutional complaint in December, but you know how it is with UPC-related rumors. So I would be surprised if we had a decision under the tree on Christmas morning, and the suspense will likely continue for some time. Come March 29 and the actual Brexit, it is clear that the plan will have to be reworked.

That’s all folks, season’s greetings to all!

Nightmares before Christmas

Beside the tribute to Tim Burton’s work in the title, this post is probably going to be of little interest to non-French patent attorney readers.

Sorry for that. 

On November 19, 2018, the INPI (French patent and trademark office) launched a new web-based patent filing system, called “Portail Brevets“, and shut down the good old EPO-style OLF system which we had been using for a number of years. 

It is likely that in the future the new system will be viewed as a major improvement, in particular because it should make an actual online management of patent applications possible.

But so far, I am sorry to say that it has been all but a nightmare for many users. The suddenness of the switch from the old system to the new system (no more OLF, no more fax, no more in-person filing) did not play well. The fact that some important developments still seem to be missing in the software did not make us happy campers either (address book anyone? configuration of pre-filled fields anyone?).

But the main issue is the following.

The new system only accepts a docx file for the text and drawings of the patent application. You may no longer upload pdf files. The docx file needs to comply with a number of requirements. If your file is not compliant, you get an error message. But most of the time the error message is so vague that it does not make it possible to immediately understand what is wrong with your file.

To me this is the most serious defect of the current Portail Brevets, as you can easily waste hours trying to figure out why the system does not like your docx file. 

The point of this blog post is not to criticize the INPI.

I am grateful for the efforts made by good people in the patent office working hard to modernize their tools and to provide patent applicants with the best level of service. I can also imagine that times must be stressful for the INPI too, as they are probably confronted with angry customers on a daily basis. 

No, my idea was rather to just provide a few tips based on my own experience as a newbie with the Portail Brevets, in case they may be of assistance to others. It would also be fantastic if readers could give some tips of their own in the comment section of this post. 

If you have had a problem filing via the Portail Brevets or if you have identified a potential trap, it is more than likely that other users will also encounter the same problem or fall into the identified trap. Thus why not contribute and help the entire community? 

In fact, if this appears to be useful in view of the comments, I will consider completing this post in the future to incorporate all relevant contributions into the body of the post, so as to provide a useful resource to all stakeholders. 

Note that most if not all of the issues should be avoided if you carefully read and digest the user’s documentation (here, here, here and there). But putting theory into practice is never an easy task, and I tend to think that a sort of practical troubleshooting description can always be useful.  

Season’s greetings.

So here we go with the difficulties / traps that I have identified so far: 

  • In the drawings section, you should type [Fig. 1] or the like, then a single paragraph break (“enter“), then immediately insert your drawing image. If there are several paragraph breaks, you will get an error message. 
  • In the description, you want to make the first reference to your drawing figures in an individualized manner, and the figure tag should be exactly at the beginning of a line. Thus, you should type: “[Fig. 1] shows …“; and then on the next line: “[Fig. 2] shows…“. You should not write “[Fig. 1] and [Fig. 2] show…“. Nor should you write “An embodiment of the invention is shown on [Fig. 1]“. And since we are actually talking about French language texts, you should not write “La [Fig. 1]…” either, because then the figure tag is not at the very beginning of the line. 
  • Beware of lists in MS Word. For instance, if you have a list with a), b), c) and if item c) comprises a list with bullet points, the bullet points will be automatically renumbered as d), e) etc. in the pdf file generated by the software. One way to avoid this is to keep only the first list and manually insert hyphens or like symbols for the second list. At any rate, you should carefully check all lists in the pdf file generated by the software. 
  • The same applies all the more so to lists in the claim section. Paragraph breaks (“enter“) should be avoided within a claim, and only line breaks (“shift + enter“) should be used. Otherwise, your claim numbering and count could be erroneous. 
  • If you insert an image into your document, and if the docx file is not approved by the system, you may try to convert the image to a different type before reinserting it.
  • A number of expressions are recognized as tags by the software, even though they are without square brackets. This means that they will be renamed and treated as section headings in the pdf file that is generated. The list of relevant expressions can be found in one of the documentation files linked to above. As a result, (1) if you use a slightly different wording, the expression will not be recognized and treated as a section heading; and (2) you cannot change the headings in the generated pdf file. For instance, if you type “Description détaillée“, your final heading will read “Description des modes de réalisation“.  Too bad if, like me, you tend to prefer “Description de modes de réalisation” (embodiments vs. the embodiments). 
  • If you use the MS Word upper case style, for instance for the title of the invention, the formatting is lost in the generated pdf. In other terms if you have typed “DeVicE” in your docx file but it reads “DEVICE” because of the upper case style, the pdf will nevertheless show “DeVicE“. It may therefore be best not to use the upper case style at all. 
  • As a warning, when you press the pay button, the application is filed. There is no “file application” button or the like. 

That’s all for the time being. If you cannot figure out where the error is in your docx file, it is possible to call the INPI for help and possibly send them the file by email so that they can look at it and advise you. But of course this process takes a little bit of time. 

Good luck everyone!

Less limited guidelines

A few days ago, I had the privilege to speak at a joint INPI-EPO conference in the premises of the INPI in Courbevoie. My assigned topic was post-grant proceedings from a patent attorney’s point of view, and I had a few slides on sort of unresolved questions regarding French limitation proceedings. And just a couple of hours before my presentation, I learned that the INPI had just issued its long-awaited guidelines on limitation proceedings the night before. 

I frantically skimmed the fresh guidelines and as luck would have it, some of the points in my presentation were now obsolete. 

But that’s all right, I am glad that we now have more guidance from the patent office regarding their practice with respect to requests for limitation.

The updated and relevant part of the guidelines can be downloaded here.  

More guidelines – less guesswork.

Here are a few comments from me, after a second and less frantic reading. 

The first sentence of the new limitation section is actually a bit surprising. It reads: 

The patent proprietor may, at any time, the 5-year statute of limitations deadline being complied with, either renounce its patent entirely (total renunciation) or renounce one or several claims (partial renunciation) or limit the scope of the patent by modifying one or more claims (limitation). 

The surprising part is the reference to the 5-year statute of limitations deadline. Art. 2224 of the Code civil is cited on the side, next to this paragraph. This is the general statutory provision according to which personal actions or actions relating to a movable property are time-barred 5 years from the day the right owner knew or should have known the facts making it possible for him/her to exert the action. 

I must confess that it is the first time that I have seen any indication that this 5-year time bar, which we have discussed at length in the context of nullity suits, could be of any relevance whatsoever when it comes to the right of a patent owner to limit their patent in front of the INPI. 

Besides, the French version of this paragraph of the guidelines is actually ambiguous and could be interpreted as meaning that the deadline needs to be complied with, or that it is always complied with. 

I discussed this sentence with a couple of INPI people at the conference. After this discussion, I must say I still do not really understand the sentence, but I was told that it is not the INPI’s intention to refuse any request for limitation as being time-barred. 

And now, some other notable points, in no particular order: 

  • If the request for limitation is deemed inadmissible, a communication is issued, with a 2-month deadline to complete or correct the request. 
  • The request for limitation must be filed by or on behalf of the patent proprietor that appears on the national patent register. Otherwise, the request is inadmissible. This means that, in case of a change of ownership, this change must be officially recorded before a request for limitation can be validly filed. 
  • Auxiliary requests are not accepted and, if filed,  would make the request for limitation inadmissible. 
  • If the patent to be limited is a European patent, the request for limitation and exhibits must be filed in French. But, since the authentic text of the patent is the text in the language of the proceedings (before the EPO), the INPI must examine the limitation based on the text in this language. No translation of the patent into French is required. On the other hand, only the limited claims in the French language will appear on the national patent register. 
  • If the request for limitation is admissible but objections on the merits are raised (due for instance to a lack of clarity, or to the absence of an actual limitation), a communication is issued, with a 2-month deadline to correct any deficiency. This deadline can be extended by 2 additional months upon request. Again, it is not allowable to offer several modification proposals.
  • Third party observations are not admissible. 
  • The INPI will react to the initial request for limitation or to any further submission by the requester within 1 year, in view of the principle according to which “silence implies refusal” after a 1-year period. 

One takeaway message from the above is that the updated guidelines now officially confirm that auxiliary requests are not admissible at the INPI. And I assume that this is a general rule.

I wonder whether this will still be the case in the national opposition proceedings which may be set up in the near future. I am sure that all European patent attorneys will agree that the right to file auxiliary requests is absolutely fundamental in the patent proprietor’s defense in an opposition at the EPO. 

And now, the most important information in the guidelines, in my opinion: what is or is not considered as an actual limitation. 

First, it is possible to limit a dependent claim without amending the independent claims on which it depends. This is consistent with practice at the EPO. 

Second, a mere clarification of a claim is not allowed. The modification has to actually restrict the claim. 

Third, changing a claim category is generally not considered as a limitation. 

Fourth, the addition of claims, either broader or narrower than the existing ones, is prohibited. 

This fourth point is extremely important, because this has not always been the case. In one lawsuit that I worked on, the patentee had taken advantage of limitation proceedings to double the number of dependent claims without even restricting the main independent claim. Based on informal conversations at the conference, I understand that this would no longer be possible today. The INPI was probably influenced by a ruling from the Paris TGI discussed on this very blog (confirmed on appeal). 

Last but not least, what the Guidelines are silent on. 

To me, the elephant in the room is the extremely tricky question of what happens if a European patent is limited in France and then the patent is modified at the EPO in a different manner (in opposition or central limitation proceedings). I am not sure anyone has a clue what would happen in such a case.

I understand that the INPI is currently looking at possible options regarding the interplay between French limitation and the future French opposition. Could it be an opportunity to also revisit the interplay between French limitation and European opposition/limitation? 

I will conclude this post with some numbers.

With the help of my colleague Patrick Marollé (thank you), I have looked at the duration of limitation proceedings in France. Based on a sample of 25 cases, we have found an average duration of 11 weeks, from the request for limitation to the official issuance of the limitation.

A couple of years ago, I had conducted a similar analysis with respect to central limitation at the EPO, and had found an average duration of … 11 months. 

So, the winner is… the INPI. This is certainly due in part to a more straightforward procedure (no need for an invitation to file claim translations and pay a final fee for instance). But I am sure part of the explanation is also that INPI examiners handle requests for limitation with a high priority. As a reminder, in one of the recent cases reported on this blog, the limitation was formally issued only 8 days after the request was filed. That record will not be easy to break. 

Doppelgänger

The names of the parties in the case commented upon today first reminded me of the classic movie Kramer vs. Kramer. But you could also think about the Doppelgänger.

See, the case at hand is Novartis v. Novartis or, to be more precise, SAS Novartis Pharma v. Novartis Pharma AG.

The judgment is very short and utterly uninteresting in itself, but as you will see the underlying context is much more noteworthy.

Let’s start with the judgment per se first.

Novartis Pharma AG is the owner of European patent No. EP 1096932 entitled “Combined use of valsartan and calcium channel blockers for therapeutic purposes“.

Novartis Pharma AG is also the owner of French SPC No. 07C0042, which was granted in 2008. This SPC is based on the EP’932 patent and on a European Marketing authorization (MA) and is directed to a medicinal product comprising the two active substances valsartan and amlodipine.

The corresponding commercial drug marketed by the Novartis group is Exforge®.

The EP’932 patent was opposed by 8 different opponents at the EPO. In first instance, the patent was maintained in amended form by the opposition division.

On appeal, after the issuance of the summons to oral proceedings, Novartis Pharma AG withdrew all its requests and disapproved of the text of the patent, which led to the revocation of the patent on October 7, 2015.

On January 29, 2018, another company from the Novartis group, namely SAS Novartis Pharma, filed a complaint with the Paris Tribunal de grande instance (TGI) and requested that the TGI should revoke SPC No. 07C0042, as a consequence of the revocation of the basic patent.

The “defendant” Novartis Pharma AG agreed, and the court thus pronounced the requested revocation of the SPC on April 5, 2018.

Let me introduce the bunny and his feline Doppelgänger.

Now, in case you are wondering, of course the various Novartis companies have not run amok.

No, this unusual ruling seems to be the result of a very elaborate strategy, which can be (at least partly) comprehended based on publicly available information.

The first thing you need to know is that two divisional applications were filed based on the EP’932 patent.

The first one was deemed to be withdrawn, but the second one led to the grant of another patent, EP 2322174. On the face of it, the EP’174 patent contains claims which are somewhat similar to those of EP’932, and which still cover the combination of valsartan and amlodipine.

The second important thing is that another French SPC application (No. 16C0008) was filed based on the divisional patent EP’174, still for the combination of valsartan and amlodipine, on March 7, 2016 (thus a few months after the grant of EP’174 on September 15, 2015 and after the revocation of the parent EP’932 patent on October 7, 2015).

Based on publicly available information, the second SPC was initially granted in June 2016. But then, three months later, on September 26, 2016, the decision to grant the SPC was withdrawn by the INPI (French patent office). Indeed, the withdrawal or cancellation of any decision issued by the INPI is possible as a matter of principle within a four-month time limit.

Examination of SPC application No. 16C0008 was immediately resumed, and an office action was issued, in which an objection was raised based on the existence of the prior SPC No. 07C0042. As a reminder, article 3(c) of the SPC regulation (aka Regulation (EC) No. 469/2009 of the European Parliamant and of the Council of May 6, 2009) provides that a certificate can only be granted if “the product has not already been the subject of a certificate“.

As a first line of defense, Novartis replied that the revocation of the EP’932 patent also automatically entails the annihilation of the first SPC No. 07C0042, in a retroactive manner. Therefore, they argued, the valsartan + amlodipine product in the second SPC application No. 16C0008 had not already been the subject of a certificate.

But the INPI was not convinced and maintained its objection.

With that in mind, the strange Novartis v. Novartis action suddenly becomes much more understandable.

Novartis’ purpose was to obtain an official ruling from a court of law per which the first SPC was revoked. This strengthened their argument with the INPI. And the strategy was successful, as the objection based on article 3(c) of the SPC regulation was overcome and the second SPC was finally granted (for the second time) in June 2018.

Based on the arguments submitted by Novartis which can be read in the SPC file wrapper, second SPCs replacing the first round of SPCs were also obtained in a similar manner in a number of other European countries.

At this stage, one question remained for me: why did Novartis find it useful to surrender its parent patent and all SPCs obtained based on it, and to start the entire procedure from scratch based on the divisional patent and a second set of SPC applications?

Well, sometimes a blogger has to play detective. Comparing the two different SPC applications, it appears that both are based on the same MA having effect in France, namely European MA No. EU/1/6/371/001-24. But then one difference immediately becomes obvious in the next box of the application form.

In the first SPC application, the first MA obtained in the Community or EEE is indicated as being this same MA No. EU/1/6/371/001-24, dated January 16, 2007. But in the second SPC application, the first MA obtained in the Community or EEE is indicated as being a slightly earlier Swiss MA No. 57771/01-03, dated December 22, 2006. Actually, since the AstraZeneca judgment of the CJEU (C-617/12), we have known that Swiss MAs count as potential first MAs in the Community or EEE, as they are automatically recognized in Liechtenstein.

So the Doppelgänger mystery is solved – I think: the initial SPC application contained a mistake, in that the indication of the first MA obtained in the Community or EEE was not correct. Hence the need to get rid of the first patent and first SPC, in order to obtain a corrected SPC based on the second patent.  

I would be curious to know whether Novartis’ clever strategy succeeded in all European countries or whether it failed in some of them.

More generally, I would be curious to know what readers make of all this.

Should the revocation of a first SPC indeed make it possible to request a second SPC as if the first SPC had never been granted?

This does raise policy issues. Imagine that the first SPC had been revoked further to a nullity suit filed by a true third party. Would it be fair to allow the SPC owner to obtain a second SPC essentially identical to the first one, based on a divisional patent?

At any rate, this case will probably be a further incentive to file divisional applications for important inventions which could potentially be protected by an SPC. More than ever, divisional applications appear to be a very powerful (some would say, too powerful) tool in the hands of IP right holders.


CASE REFERENCE: TGI de Paris, 3ème chambre, 1ère section, April 5, 2018, SAS Novartis Pharma v. Novartis Pharma AG, RG No. 18/02118.