Smells like revocation

Believe it or not, it is somewhat difficult for this blogger to know what his readers are most interested in. Do they yearn for complex legal discussions? Are they rather keen on getting their hands dirty with an insight into actual patents and prior art documents?

The good thing is that today’s post will contain a little bit of both – hoping that the answer to my question is not “none of the above“.

Reckitt-Benckiser owns European patent No. EP 1891197 which is entitled “Process for manufacturing improved dispensing devices“. This patent owner is no small fish, but rather a giant in the hygiene industry. Think of the brands Air Wick, Calgon, Clearasil, Cillit Bang, Durex. But today, Harpic is the type of products we are talking about.

In June 2013, two companies of the Bolton group, namely the Italian Bolton Manitoba and the French Bolton Solitaire, filed a nullity suit against the French part of the European patent.

On March 13, 2015, the Paris Tribunal de grande instance (TGI) dismissed the nullity claim. Bolton appealed, and the Paris Cour d’appel issued its judgment a couple of weeks ago.

The first interesting aspect in the appeal judgment is… the application of the statute of limitations to the nullity claim.

One would think that we have heard enough about this topic on this blog lately, and one would be wrong.

As is usual now in a patent nullity lawsuit, the admissibility of the request for revocation was challenged by the patent proprietor. The proprietor deemed that the limitation period for the nullity claim started running from the publication date of the application.

In the present case, the application had been published before the amended statute of limitations entered into force on June 19, 2008 (as discussed here, this amended statute brought the default limitation period from 30 years down to 5 years, which initially created the legal mess that we are now in). Therefore, the patentee said, the starting point was postponed to June 19, 2008, when the amended statute entered into force; and the limitation period expired on June 19, 2013, i.e. five days before the nullity complaint was served.

On the other hand, the nullity plaintiff argued that the five-year limitation period only started from the publication of the grant of the patent, namely August 27, 2008, so that the nullity action was timely filed and admissible.

The court ruled that

[…] the limitation period can only start running from the date on which the person against whom [the patent] is asserted can validly act; pursuant to article 64 EPC, a European patent confers rights as from the publication of the mention of grant, so that a nullity action against a European patent application does not exist. The limitation period for the action can thus only start running, in the present case, from the publication of the patent grant at the earliest

There is a lot to digest in this single sentence:

  • It is a good thing that the publication of the application was not upheld as a valid starting point – this is the last thing we need right now.
  • The choice of the patent grant as the starting point is consistent with the recent ruling by the same panel of the Cour d’appel in Halgand v. RP Nicoll, discussed here.
  • The court did not perform an in concreto assessment, which currently continues to be applied by the judges in the TGI (see the discussion here).
  • However, the wording used by the court, i.e. can thus only start running in the present case, from the publication of the patent grant at the earliest“, does not fully contradict the in concreto approach. Here, the nullity plaintiff seems to have taken the position that the starting point did not need to be accurately determined, as it could anyway not be before the publication of the patent grant, which thus ensured the admissibility of the action in any case. And the appeal judges fully followed this approach.

Therefore, all in all, this new ruling does not change much relative to the previous situation. Or, as they say in every good mystery novel, the plot thickens.

Having found the nullity action admissible, the court turned to the merits of the case, and more particularly to the contention that claim 1 of the patent did not involve an inventive step.

This is the second interesting aspect in the judgment, since the Cour d’appel reversed the decision under appeal in this respect, and declared claim 1 invalid although it had survived the first instance proceedings.

The patent in suit is directed to a manufacturing process for a sanitizing toilet block. Claim 1 reads as follows:

A process for the manufacture of a lavatory dispensing device useful for the delivery of at least one treatment composition, preferably a cleaning composition and/or a sanitizing composition to a sanitary appliance, preferably a toilet bowl which method comprises the steps of: 

– providing a composition to an extruder,
– forming an extrudate from said composition;
– inserting part of a hanger into said extrudate;
– compressing the extrudate to encase or enrobe said part of a hanger thereby forming said lavatory dispensing device.

The next generation sanitary appliance for your toilets.

I understand that the relevant prior art was the following:

  • Some prior art references taught the manufacturing of toilet blocks by placing a hanger in a composition comprising paradichlorobenzene, and compressing the composition onto the lower end of the hanger. These blocks are “cageless”, that is they are provided on their own and not in a plastic cage.
  • Other prior art references disclosed the manufacturing of toilet blocks by an extrusion process, and their inclusion into cages.

In the first instance judgment, claim 1 was found to be inventive. The TGI commented on the teaching of the prior art as follows:

– the process of fixing a hanger to a cageless device only concerns compositions containing paradichlorobenzene, known for its low solubility, which has now been prohibited since it is considered as a dangerous material; 

– the insertion of the hanger occurs when the block is molded; 

– none of the […] patents suggests a compression after an extrusion, to attach the hanger; 

– compositions containing at least one surfactant (which leads to the block breaking off) are in the prior art always placed in a support. 

Therefore, the skilled person was not naturally prompted by this prior art to contemplate a toilet block containing surfactants, to be used without a cage, by inserting a hanger into a block obtained by extrusion, and then compressing the extrudate to encase the hanger. 

The existing prejudice that cages were required to support and contain sanitary treatment blocks was overcome, since it is now possible to make cageless devices which comprise a suspending hanger and a composition as a compressed full block tied to the suspending hanger, said solid block compositions comprising one or more chemical compounds, preferably at least one surfactant composition. 

It is remarkable that the first instance court did not apply the problem and solution approach. Though this reasoning “made in EPO” is more and more often relied upon by litigants and judges in France, it is by no means mandatory.

It is also noteworthy that the TGI, when discussing why the skilled person would not have achieved the invention in an obvious manner, made reference to a number of features which are actually not present in claim 1.

For example, the court seemed to consider that the composition of the block comprises surfactants and does not comprise paradichlorobenzene. According to the court, this is very important, as only paradichlorobenzene-based blocks were disclosed as being compressively tied to a hanger – in view of the particularly low solubility of this chemical. But claim 1 does not explicitly exclude the presence of paradichlorobenzene, and does not specifically call for the presence of surfactants (which are recited in dependent claim 10). Claim 1 merely mentions a “treatment composition, preferably a cleaning and/or a sanitizing composition“.

Furthermore, the court considered that there was a prejudice against cageless devices comprising a sanitary composition (as opposed to a merely deodorizing, paradichlorobenzene-based composition). But claim 1 does not explicitly exclude the presence of a cage in addition to the hanger. This is in fact the subject-matter of dependent claim 8.

As for the appeal judges, they did not follow the problem and solution approach either. But they did reach a different conclusion: 

In the end, at the priority date of European patent No. 1891197, in view of the teaching of the above documents, the skilled person […] knew processes for making blocks for toilet bowls suspended by hangers; desirous of making a cageless suspended lavatory block, not based on molded paradichlorobenzene (deemed toxic) but on treatment compositions comprising surfactants, obtained by extrusion, he could use the same process starting from an extruded composition as taught in [a couple of patents]; he also knew from the teaching of [another patent] that it was possible to compress an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger.   

It is striking that the Cour d’appel shared the TGI’s appraisal of the crux of the invention, namely providing a cageless device for a block comprising surfactants.

The TGI was thus not blamed for its extremely extensive interpretation of claim 1 in view of the description of the patent. 

As far as I can tell, the different conclusion was in fact reached due to a new prior art citation, namely a reference disclosing the compression “of an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger” – whereas the first instance judges had noted that “none of the […] patents suggests a compression after an extrusion, to attach the hanger”. 

First instance judgments are very often confirmed on appeal in France. One exception to this general trend is when new facts arise, such as a new prior art document like in the present case.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 2, October 20, 2017, Bolton Manitoba & SASU Bolton Solitaire v. Reckitt Benckiser LLC, RG No. 15/09777.

7 thoughts on “Smells like revocation”

  1. One conclusion is that the Paris TGI will always surprised us. The Paris court of appeal may be a bit less.

    To me the point raised here is more general. Why on earth has a limitation period for nullity actions been introduced by the legislator?

    There were a series of regulations enacted in order to simplify administration. I seem to remember that lack of reply means refusal of a request. This had the odd consequence, that if the INPI did not reply, any request would be deemed rejected if a reply was not given by INPI during the set time limit. To my knowledge, this has been changed. May be this rule should be changed as well.

    In my opinion, it deprives the alleged infringer of its classical reply: I do not infringe as your patent is not valid. Why is the right of the alleged infringer curtailed in such a dramatic way? Is the balance of power between parties not distorted to the detriment of one of them? May be a preliminary question of constitutionality (OPC) to be brought before the Conseil Constitutionel.

    How is this to be brought into relation with the UPC (should it ever see light)? I see no such limitation in the UPCA. Here might be another reason for opting-out.

    It might be legitimate to limit the time for a nullity action per se, like the opposition period at the EPO is limited as well. However, since the proprietor can limit its EP patent as long as it is in force, why should the opposition period be limited to 9 months?

    Any opinion?

    1. The legislator has not specifically introduced a limitation period for nullity actions. It was a (probably unforseen) consequence of a general reform of the statute of limitations. This is unfortunate. But the rights of the alleged infringer are not necessarily curtailed in a dramatic way: it seems to me that the alleged infringer. According to the rule “Quae Temporalia Sunt Ad Agendum Perpetua Sunt Ad Excipiendum”(*), the alleged infringer can always raise nullity defense, but the nullity will then be relative – back to the law of 1844! Only “primary” nullity actions are affected.

      (*): Things which afford a ground of action, if raised within a certain time, may be pleaded at any time, by way of exception

      1. Thanks for the reply. Even if the situation is not as bleak as it looks at a glance, having a relative nullity is not the best situation.

        Even if the general reform of the statute of limitations was necessary, it shows to me that it has not been thought off in all its consequences. Why is it not possible to change it again in order to overcome this “unfortunate” consequence?

        In the interest of the public at large, it is manifest that patents which have no reason to exist, should be nullified. Or is the contract theory in patents to be forgotten? In the absence of contribution to the art, no monopoly should be granted.

  2. I enjoy your blog the most for the differences between French patent law on one hand and UK and DE patent law on the other hand. Judgements in patent cases of UK and DE patent cases are generally well publicized in various blogs, FR cases often only on this blog (at least in English).

  3. Thanks for your blog Renaud,
    The answer to your question is “both”.
    In addition, although I am French I appreciate to have this in English.
    This is very useful to explain the subtelties of French IP law and case law to my non French colleagues.

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