Opposition guidelines – part 2

As promised by the INPI, the second and final part of their patent opposition guidelines has now been released. Here is the link to download the full pdf document. And as promised by me, here is now a summary of this new installment. As you will see, we now have a much clearer view of what the opposition à la française is going to look like. As a reminder, the presentation of the first part can be found here.

The opposition procedure consists of an admissibility phase, an instruction phase and a decision phase. I will pick up my comments again at the instruction phase, which starts after the expiry of the 9-month opposition time limit and after the end of the admissibility phase.

Notification of the opposition(s)

The INPI will “immediately” (French text: “sans délai”) notify all admissible oppositions to the patent proprietor and invite them to reply. As a side note, the admissibility phase seems to be ex parte, solely between the opponent and the INPI. I wonder whether the proprietor will be able to challenge the admissibility of the opposition after the so-called admissibility phase.

As to the notion of immediate notification to the patent proprietor, my understanding is that the notification will anyway not take place before the expiry of the 9-month time limit (even if an admissible opposition is filed a few days after the grant of the patent), as the instruction phase only starts after this expiry. Besides, in the case of multiple oppositions, the proceedings are supposed to be consolidated.

Overall timeline of the opposition proceedings

  • In its official communication to the patent proprietor, the INPI will invite the proprietor to respond to the opposition within a 3-month deadline, designated as “the first deadline“.
  • Within three months from the proprietor’s response, the INPI will communicate to all parties its preliminary opinion on the case, and invite all parties to file further observations within a 2-month deadline, designated as… “the second deadline“.
  • If one or more parties file observations within this second deadline, a so-called “written phase” begins. Each party will be invited to comment on the other parties’ submissions within another 2-month deadline  – yes, “the third deadline”, you nailed it!
  • Then the back and forth stops: no invitation to respond to submissions made within this third deadline will be sent.
  • An “oral phase” will take place upon request of one the parties, or on the INPI’s own motion (the expression “oral proceedings” was probably copyrighted).
  • If an oral phase takes place, summons to the oral phase will be issued, together with an additional opinion listing the main points to be addressed during the oral phase.

The first, second and third deadlines are not extendable. This means that the timeline is going to be tight, and the parties will have to be very quick.

Never play a game before carefully reading the rules.

Oral phase

The oral phase will take place at the INPI, in front of the “opposition commission” (the expression “opposition division” was probably copyrighted). As a reminder, this commission comprises three examiners. The chairperson can decide to add a legal member to the commission. The oral phase is public and will be conducted quite similarly to oral proceedings at the EPO. In particular, the opposition commission may interrupt the oral phrase for an interim deliberation, and the chairperson may then announce an intermediate opinion on one particular aspect. At the end of the oral phase, the chairperson will close the instruction phase of the opposition. It is not clear whether the final decision will be announced orally or not.

For the time being, the guidelines do not mention the possibility to conduct the oral phase by videoconference. I expect that the first hearings will likely not take place before approximately one year from now, which leaves some time for the INPI to decide to add this option, if they so wish.

Decision phase

If an oral phase takes place, the instruction phase ends once the oral phase is closed. In the alternative, the instruction phase ends:

  • at the expiry of the second deadline, if the parties have not replied to the invitation and have not requested to make oral observations;
  • or at least at the expiry of the third deadline, if the parties have not requested to make oral observations.

The end of the instruction phase is communicated to the parties. Then starts the decision phase, in which the INPI will draft and notify a reasoned decision on the opposition. If a decision is not issued within four months, the opposition will be rejected by default (the infamous “silence vaut rejet” principle). As already mentioned on this blog, the INPI will certainly make every effort so that this never happens.

The appeal deadline will be triggered by the receipt of the decision. As a reminder, the appeal will have to be filed in front of the Paris Cour d’appel, which is an entirely different kettle of fish. The appeal deadline is one month for a party residing in mainland France, two months for a party residing in the overseas territories, and three months for a party residing abroad – a rather unfortunate inequality. Appeal submissions must then be filed within three months after the notice of appeal.

Possible outcomes

The possible outcomes of the opposition are: the rejection of the opposition, the full revocation of the patent, the maintenance of the patent in amended form, but also… the partial revocation of the patent.

This fourth possible outcome is ambiguous in the statute and has given rise to some speculation. The guidelines give the example of an opposition challenging only claim 1, and a proprietor not filing any claim amendment. The INPI could then revoke claim 1 only. I wonder if this situation of partial revocation would also occur if the opponent challenges all claims, but the INPI concludes that only claim 1 is invalid.

In case of a partial revocation, the patent proprietor will be invited to file a request for modification of the patent in keeping with the decision of partial revocation. However, there is no deadline for doing so and no negative consequence if the patent proprietor remains inactive.

Commentators’ suspicions are thus confirmed: the partial revocation procedure does seem kind of messy.

Modifications of the patent 

The patent proprietor may file a modification of the patent at at least three stages: within the first deadline, the second deadline and the third deadline set out above. Any modification filed later, especially during the oral phase, will be deemed late-filed. Once the instruction phase is over, no more modification will be allowed.

Any modification of the patent must be occasioned by a ground for opposition raised by the opponent. This is more restrictive than at the EPO, where a modification may be filed to address a ground for opposition not raised by an opponent.

Naturally, amended claims will have to comply with all of the requirements of the Code de la propriété intellectuelle.

Interestingly, the description can only be amended to address the ground for opposition of insufficiency of disclosure. This provision is surprising. I do not expect that an objection of insufficiency of disclosure can frequently be overcome by amending the description – without adding new matter. What this also implies is that the description will not need to and actually cannot be adapted to amended claims. This is partly consistent with the examination guidelines, which do not require – but allow – an adaptation of the description when claims are amended in response to the search report.

Claim amendments can be filed in the form a main request and one or more auxiliary requests, which will be assessed in the order of preference stated by the proprietor, provided that their number is reasonable.

Late-filed submissions

The scope of the opposition and the grounds for opposition cannot be extended after the 9-month opposition deadline. This is more severe than at the EPO, wherein a late ground for opposition may be taken into account by the opposition division if it is prima facie relevant.

Facts and evidence which are not filed in due time by the parties may be admitted into the proceedings, at the INPI’s discretion. Factors to be taken into account include the relevance of the late-filed submission, the circumstances of the late filing and the possibility for all parties to debate it. This will apply in particular to new requests filed on the day of the oral phase.

A new submission made in the instruction phase as a direct and timely reaction to a submission of another party will not be considered late-filed.

It seems that new arguments may not be considered as late-filed. There is even a statement in the guidelines per which the parties should not merely repeat arguments already made in writing, during the oral phase – which sounds like an invitation to submit new arguments on the day of the oral phase.

That said, the boundary between new facts and new arguments probably remains to be determined. For instance, if a novelty objection based on D1 and an inventive step objection based on D2+D3 are raised within the 9-month period, will a new novelty objection based on D2 be considered as a late fact or a late argument (which would therefore be necessarily admissible)? How about an inventive step objection based on D2+D1? or based on D1+D3?

Language 

The language of the proceedings is French. Submissions must be filed in this language, otherwise they are inadmissible. French will also be the language used in the oral phase. The parties may bring their own interpreters to the oral phase.

Any exhibit or evidence should in principle be in French or translated into French. Otherwise, the INPI can invite a party to provide a translation within a deadline. It will be interesting to see how this provision will be implemented in practice. The majority of evidence filed in French opposition proceedings will likely be in English (or be translated into English). And it is a fact that all patent professionals, including INPI examiners, are able to read technical documents in English. We will see whether a French translation will be required for documents in the English language.

Stay of proceedings

There are several circumstances in which the opposition proceedings may be stayed: notably in case an ownership claim is filed in court, or if a nullity action is pending (although the judge may order a stay of the nullity suit, in which case the opposition can proceed).

As a more uncommon feature, the INPI may stay the proceedings if information is expected which may impact the outcome of the proceedings; or upon joint request of the parties, for a duration of four months, which can be renewed twice (thus for a total duration of 1 year). This may be useful in case the proprietor and the opponent need time to negotiate.

Apportionment of costs

For reasons of equity, for instance in the case of unjustified late submissions leading to additional expenditure, the INPI can order an apportionment of costs. However, the maximum amount to be apportioned is limited according to the following schedule:

  • 600 euros for costs incurred in the written phase.
  • 100 euros for costs incurred in the oral phase.
  • 500 euros for representation costs.

So the grand total would be 1200 euros, and it would likely only be possible to reach this amount in rather exceptional circumstances.

Therefore, it seems fair to say that parties may just as well completely forget about apportionment of costs, which will not be a factor – except for natural persons. The mere fact of requesting and arguing apportionment of costs may cost more than what may be finally apportioned.

* * *

These are the salient points that I have noted in the second part of the new guidelines.

Now that the first few oppositions have been filed – extremely few in fact, as far as I can tell based on recent issues of the Bulletin Officiel de la Propriété Industrielle – the opposition system is live. I hope readers will share updates on how it goes in practice.

A patent up in the air

With all the recent renewed talk about the UPC, the decision commented upon today reminds us how fragmented the European patent litigation landscape still is at this time.

The case at hand was in fact already mentioned on this blog a few months ago, when the judge in charge of case management, in an unusual move, decided that the court should hear a patent invalidity defense and rule on it first, before dealing with confidential exhibits in connection with the infringement claim, if necessary.

It turns out that this may have been the most efficient way to proceed after all, as the court has now declared that the claims of the patent in suit are invalid – so that the infringement claim no longer needs to be examined.

In this case, the patent proprietor is Lufthansa Technik AG, and the defendants are Thales Avionics Inc., Astronics Advanced Electronic System and Panasonic Avionics Corporation. The patent is EP 0881145, expired since May 2018, directed to a voltage supply apparatus for supplying voltage to electric devices in an airplane cabin.

The Paris Tribunal judiciaire deemed that the asserted claims are novel, but lack inventive step.

The reasoning does not lend itself to a full summary in a blog post such as this one; analyzing it in detail would require taking a hard look at the patent and the prior art.

What I do find interesting to note, though, is how the court commented on foreign decisions previously issued in connection with the same European patent.

Indeed, the patent was also asserted in Germany and in the UK against one of the same co-defendants.

In Germany, back in 2012, the patent was upheld by the Bundespatentgericht in amended form, with a combination of claims 1 and 2. The Mannheim Landgericht then found that the amended patent was infringed.

In the UK, the High Court found the same patent valid and infringed, in a judgment issued on July 22, 2020.

For the sake of completeness, I should add that Lufthansa was not so lucky on the other side of the pond, as the corresponding U.S. patent was held invalid for indefiniteness in a summary judgment issued by the district court of the Western district of Washington (upheld on appeal). But this is somewhat less relevant for us, since U.S. law is an entirely different story.

Going back to Europe, it thus appears that the French court came to a different conclusion from its German and British counterparts regarding the validity of the patent. Interestingly enough, the French judgment does not shy away from a comparison with the foreign judgments. On the contrary, it contains a couple of references to these foreign judgments.

The ups and downs of patent litigation.

First, in the novelty discussion, the court explicitly agreed with a portion of the British judgment, and relied on an admission made by one of the defendants’ experts in the UK to interpret a prior art document.

However, when examining inventive step of claim 2, the court expressed its disagreement with the position of the German and British courts, and more specifically with their interpretation of a prior art document called Neuenschwander. Let’s have a closer look at the point of contention.

Claim 1 of the Lufthansa patent is the following (with particular emphasis on the most important features for the discussion):

A voltage supply apparatus for providing a supply voltage for electric devices in an aeroplane cabin, comprising:
a socket to which the device is connectable by means of a plug and to which the supply voltage can be applied,
the socket comprising a socket detector detecting the presence of a plug inserted in the socket, and
a supply device being provided remotely from the socket and being connected to the socket via a signal line and via a supply line for the supply voltage,
the supply device applying the supply voltage to the socket when the plug detectors indicate the presence of the plug via the signal line to the supply device, characterized in that
the plug detector is formed such as to detect the presence of two contact pins of the plug in the socket, and the supply device only applies the supply voltage to the socket if the presence of two contact pins of the plug is detected simultaneously.

Claim 2 adds that:

[…] the supply device only applies the supply voltage if a maximum contact time is not exceeded between the detection of the first and the second contact pin of the plug.

A prior art document called Neuenschwander discloses a contact system for use at an outlet end of an electric supply line, comprising “two barrier portions, each of which is associated with [a connector end] and arranged between its associated connector end and [one opening] so as to operate [a] relay for connection of [a] supply line with [the] connector ends only when contact pins of an attachment plug are moved substantially simultaneously toward, and into contact with, said connector end (claim 3 of Neuenschwander).

One key issue was whether this teaches the claimed supply of voltage depending on a maximum contact time not being exceeded.

The TJ carefully looked at the analysis made by foreign European courts:

The meaning of this expression and the disclosure or not of a time out function by this prior art are extensively addressed in paragraphs 149 to 162 of the High Court judgment. Lufthansa Technik asserts, in keeping with the British judge’s ruling but also with the position adopted by the German court, that the notion of substantially simultaneous introduction of the contact pins is not mentioned as a condition for the supply – and thus as an additional level of desired safety – but as a fact related to the normal configuration of a plug. 

The Bundespatentgericht also rejected the assumption of a time out required by claim 3 of the Neuenschwander patent, because no time measurement is mentioned and none of the disclosed embodiments has a configuration including this timing function. […]

But the French judges disagreed with this assessment:

However, as rightly mentioned by the defendants, on the one hand this interpretation is remote from the literal wording of […] claim 3; and on the other hand, the EP’145 patent is not more explicit as to the implementation of this feature, since the scope of the invention is limited to a time measurement condition, or timing “concept”, irrespective of the technical means enabling its application, which leads to the conclusion that the skilled person was in a position to adapt the device by integrating such a function owing to their common general knowledge. 

The court went on with analyzing further documents to be taken into account in the inventive step assessment, and added the following general comment:

The implementation of this timing criterion involved operations of adaptation of the electric circuit within the skilled person’s reach, which Lufthansa Technik does not deny in its argumentation regarding the auxiliary objection of invalidity of claim 2 for insufficiency of disclosure, and which can be deduced from the very wording of the EP’145 patent which does not provide any indication in this respect.  

Lack of judicial consistency in pan-European patent litigation is usually considered a bad thing and one of reasons why we badly need the UPC.

On the other hand, since we do have a divided court system in place, I find it rather reassuring that each court pays close attention to reasonings developed abroad but still makes its own independent assessment of the case. Reasonable minds can differ, after all.

As another remark, and with the caveat that I have not looked in detail at the patent and the prior art and have thus not formed a personal opinion on this matter, it is interesting that the court has taken into account the extent of actual disclosure in the patent when determining whether a claimed feature is actually distinguishing over a similar general statement in the prior art.

It would appear that there is room for so-called squeeze arguments in France.

A big thank you to Sandrine Bouvier-Ravon and Jean-Martin Chevalier for sending this decision!


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 2ème section, December 4, 2020, Lufthansa Technik AG v. Thales Avionics Inc. et al., RG No. 18/04501.

Pay for delay

Happy new year to all readers! May you stay safe and healthy and as free as possible (yes, this is a new 2021 addition relative to previous wishes).

This year starts off on this blog with a somewhat misleading post title. Nope, this post will not be about competition law and pharma patents. Actually it will be about having to pay when you delay court proceedings. Advisory note: there is a risk that only true procedural law afficionados may enjoy today’s decision.

Waff is a French company founded in 2001 and specialized in inflatable pillows for physiotherapy and fitness.

Waff owns a European patent No. EP 1262125 on such a pillow. Waff considers that gym pillows marketed by the well-known Decathlon retail stores infringe its patent. After the customary infringement seizure and other pre-litigation skirmishes, Waff filed an infringement action in August 2019 with what was still the Paris Tribunal de grande instance and is now the Tribunal judiciaire.

On January 16, 2020, Decathlon filed submissions on the merits, claiming first (in limine litis) that the complaint was invalid.

At this point of the narrative, the aforementioned procedural law afficionados have probably started twitching, and we will understand why in a minute. On September 10, 2020, Decathlon repeated that the complaint was invalid, but this time in a motion in front of the judge in charge of case management. Waff replied, and one week later, Decathlon changed its mind and withdrew its motion.

In her order dated November 20, 2020, the case management judge acknowledged that the procedural motion was withdrawn. However, a ruling still had to be issued as the infringement plaintiff had filed a cost counterclaim.

What happened, and why did Decathlon withdraw its motion? To answer this question we need to look at the Code de procédure civile.

According to article 74, procedural exceptions must be raised before any defense on the merits; if not they are held inadmissible. According to article 73, a procedural exception is a defense aiming at holding proceedings irregular or extinct, or at staying proceedings. The argument that the infringement complaint is invalid is therefore such a procedural exception.

In this case, Decathlon raised the exception together with its first submissions on the merits – presumably before the actual discussion on the merits, and thus in limine litis. So far so good. However, article 789 also specifies that the judge in charge of case management, once he/she has been designated, has exclusive jurisdiction to rule on a number of motions, including procedural exceptions.

Therefore, the complaint invalidity defense should have been filed in front of the case management judge, and not together with the submissions on the merits, which are filed in front of the court, not the judge in charge of case management. This defense was thus inadmissible. A few months later, it was filed again in front of the right judge, but too late, as the submissions on the merits had already been filed, so that this second submission was thus no longer in limine litis.

This is an illustration that French procedural law is full of traps and is extremely (probably excessively) formalistic. But that’s what it is.

As a side note, the law changed in January 2020. The judge in charge of case management now has broader jurisdiction, in particular over other procedural motions known as “fins de non-recevoir” (in connection with e.g. the statute of limitations or standing to sue).

Going back to our pillow case, so to speak, the complaint invalidity defense was inadmissible, and the judge made sure to note it in her ruling, even though the motion had been withdrawn. And she did not stop there. She also held that this defense was clearly without merit anyway:

[…] Decathlon cannot state that it was impossible for them to determine the object of the complaint and thus defend themselves, while filing submissions on the merits at the same time. Besides, the complaint was clearly directed to patent infringement by reproduction of all of the claims (a main independent claim and five dependent ones) of the EP’125 patent, which was unambiguously identified, as was the […] allegedly infringing pillow, both by its reference and by the bailiff’s reports and infringement seizure reports in annex. 

The court then deduced that Decathlon had “voluntarily delayed the proceedings“, and sentenced them to pay a civil fine of EUR. 3,000, in accordance with article 32-1 of the Code de procédure civile.

This provision is seldom used at least in patent litigation. It makes it possible for a judge or court to punish any party filing a claim in a dilatory or abusive manner by a civil fine of up to EUR. 10,000. The fine should be paid to the state, not the other party.

This is quite harsh as a matter of principle, even if the amount itself is not very significant in view of the usual cost of patent infringement proceedings.

I rest my case.

I suspect that it is the conjunction of the motion being held inadmissible, ill-founded, and ultimately withdrawn which led to this unusual order. If it had been admissible but ill-founded, I assume that it would have been rejected without any civil fine. Unless this is a deterrent that the current IP judges of the Paris Tribunal judiciaire intend to showcase in 2021?

By the way, many thanks to the reader who sent me this decision. I am looking forward to receiving more! As has been repeatedly pointed out and complained about, rulings from the Tribunal judiciaire have stopped being published for a very long time, so word of mouth is all we’ve got.

So here is (finally) a non-Covid-related wish for 2021: may all court rulings which are supposed to be public be actually made public again.


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 3ème section, ordonnance du juge de la mise en état, November 20, 2020, SAS Waff v. Decathlon SE & Decathlon France SAS, RG No.19/10207.

Not a tough patent to crack

After electronic cigarettes in the latest post, I have decided to take this blog one giant step further today, by discussing a patent on… crack pipes.

There are three actors in this case.

First, Terpan is a company active in the field of STD prevention. Owing to a cooperation with seven associations in Paris, they designed a risk-reducing kit for crack cocaine users, called “Kit Base“. This kit can be employed by users to reduce the risk of blood-mediated HIV or hepatitis C infection.

Terpan filed a French patent No. FR 3002724 on this kit in February 2014 (claiming an internal priority of March 2013).

The second actor, Action Solidaire Développement (ASD) is a one-person business distributing risk-reducing kits to various associations.

Finally, SAFE is an association active with drug users. By the way, it is one of the seven associations that participated in the elaboration of the Kit Base with Terpan.

Until 2017, ASD and SAFE bought the Kit Base from Terpan. Then they stopped and started providing users with another kit (somewhat unsurprisingly called Kit Crack), which Terpan considers is an infringement of its patent. Terpan thus launched an infringement action in July 2017.

ASD and SAFE filed a nullity counterclaim.

The first ground of nullity addressed in the judgment is a rather exceptional one. The defendants argued that the invention was excluded from patentability because its commercial exploitation would be contrary to ordre public and morality.

Claim 1 of the patent is broadly directed to a “kit for consuming solid or semi-solid products by inhalation“. However, the court held that the context of the description makes it clear that the invention is specifically about drug (and more particularly crack cocaine) usage.

The defendants’ argument interestingly relied on an old judgment by the Tribunal civil de la Seine, in 1913, which held a patent on an opium pipe contrary to ordre public and morality. However, one century later, the Paris Tribunal judiciaire did not follow this case law.

The court noted that, although drug use is prohibited in France, a first law authorizing public health measures against drug addiction was enacted in 1970. More recent reforms in 2004 and 2018 strengthened this policy. And so there are in particular public centers dedicated to drug users, in which kits such as the patented one can be legally distributed. These kits may thus be viewed as tools of public health prevention, and they do not breach the ordre public requirement. The 1913 judgment is now outdated since this public health policy did not exist at that time.

The court then moved on to the second ground of nullity, namely lack of novelty over the public prior use of Terpan’s own Kit Base.

An effect of the Kit Base?

Remember that the FR’724 patent claims an internal French priority of March 4, 2013? Well, according to SAFE, Kit Base was marketed as from 2012. This was not challenged by Terpan. However, the patent proprietor stated that the kit was modified over time based on feedback from various associations so that there was no evidence that the kit in use in 2012 corresponded to the claimed invention.

The court was not persuaded by Terpan’s defense. The court took a body of evidence into account:

  • Terpan’s website mentions that the Kit Base “in its final version” has been available on the market since April 2012.
  • Terpan supplied one association in 2010-2011 with filters made of wire having exactly the dimensions and wire diameter specifications recited in dependent claims 2, 3, 6 and 7. The context makes it clear that these filters were intended to make drug usage kits.
  • In April 2012, Terpan supplied various drug risk reduction centers with the Kit Base, under a single common reference.
  • A Kit Base sample allegedly supplied to an association in 2012 was described in a bailiff’s report in 2017 as corresponding to the claimed invention.

Regarding this latter point, the court acknowledged that the evidence was not bullet-proof as the kit described in the report was not taken from an intact original package.

Nevertheless, overall, this body of evidence was sufficient to convince the court that the Kit Base marketed in the Spring of 2012 already contained the same elements as the current Kit Base which implements the FR’724 patent.

Therefore, all claims alleged to be infringed were held invalid as lacking novelty over Terpan’s own marketing of the Kit Base.

A few remarks on this finding, if I may.

The court seems to have applied some sort of balance of probabilities approach in appraising the available evidence.

This seems very reasonable. Since the alleged public prior use originated from the patent proprietor (and plaintiff) itself, said patent proprietor had (or should have had) all of the necessary evidence to counter the defendants’ allegations.

In particular, the proprietor’s contention that the Kit Base may have changed over time seems to be clearly lacking. Since the Kit Base is theirs, they should be able to precisely set out and prove which modifications were made and when. I often find it disheartening when a party makes a good prima facie infringement or invalidity case which is successfully brushed off by the other side simply because the burden of proof is completely one-sided. This was not the case here, and I think it is a sound approach.

Finally, the court made reference in its reasoning to article L. 611-13 Code de la propriété intellectuelle, which mirrors article 55 EPC and relates to non-prejudicial disclosures – and frankly I have no idea why.

The court noted that Kit Base was put on the market more than 6 months before the priority date of the patent at stake, “so that” the claims lack novelty. However, as far as I understand, there was no allegation that the disclosure was an evident abuse. In fact the disclosure was made by the proprietor itself, which seems to leave little room for a possible abuse argument. Therefore, and unless some points made by the parties are not properly reflected in the judgment, there was probably no reason whatsoever to refer to this 6-month period. Did I miss something, or are we talking about a French patent here and not a German utility model? Just to be clear, there is no grace period in this country.

The final part of the judgment relates to Terpan’s additional claim for unfair competition and commercial free-riding. Terpan reproached the defendants with copying features of its Kit Base.

Again, the court did not find in favor of the plaintiff.

First, Terpan’s alleged R&D investments were not proven, especially because the kit was the result of collective work together with various associations.

Second, the presentation similarities noted by Terpan between the defendants’ Kit Crack and the original Kit Base (presence of a soothing cream and of a kit assembling drawing) were said to relate to commonplace features; whereas, on the other hand, the court insisted on some significant differences between the two kits (such as the presence of an alcohol-imbibed pad, or different looking packages).

With a decision as interesting as this one, one could easily become addicted to case law.

PS: Many thanks to Jérôme Tassi for first drawing my attention to this decision!


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 3ème section, November 6, 2020, Terpan v. Action Solidaire développement & SAFE, RG No. 17/12393.

Seeing the patent half empty

As an introduction, I am pleased to pass on the announcement of the upcoming patent seminar of the Institut de Boufflers, which will take place next week – online as you may guess.

The program is here, it looks great as usual, and I personally will be honored to participate in a panel discussion on the second day of the seminar (Nov. 25), dedicated to the evolution of European patent law. See you there.

Moving on to today’s case law report, I rarely miss an opportunity to comment on a decision touching upon a serious point of insufficiency of disclosure.

As a matter of fact, this ground of nullity is so seldom successful that it suddenly becomes quite interesting when it is – especially in the non-medical arts.

Directbuy is a French company specialized in electronic cigarettes and related liquids and accessories. It is located in Heillecourt, Lorraine, 5527 inhabitants (says Wikipedia). It filed a French patent application in April 2015, which was granted on November 3, 2017 under number FR 3034627. The patent relates to a device for assembling an e-cigarette and filling it with liquid.

In January 2018, Directbuy initiated infringement proceedings based on this patent against LCCF Distribution, another company located in Saint Martial d’Albarède, population of 467, (yes, that would be more than 10 times fewer than Heillecourt) in Dordogne. What would I do without Wikipedia indeed.

LCCF Distribution filed a nullity counterclaim, raising several grounds of nullity.

Had they prevailed on their first ground of nullity, the decision of the Paris Tribunal judiciaire would have been even more remarkable – but they did not.

This first ground of nullity was indeed that the patent did not relate to an invention.

Here is claim 1 of the patent:

A device for assembling and filling a vial with liquid for an electronic cigarette comprising at least one means for filling said liquid to which means are connected for supplying this liquid, characterized in that said means for filling are connected to means for supplying at least two liquids of different compositions through selection means to select, under the impulse of appropriate control means, the distribution of a liquid or a mixture of liquid in varying proportions.

Liquid selecting means – so pre-Covid…

LCCF’s argument was that the claim merely recites results to be achieved and that the structural and functional means allowing to obtain these results were not disclosed. In other terms, only a technical problem was claimed.

As you can see, this argument already had a flavor of insufficiency of disclosure. It was squarely rejected by the court as follows:

It is recalled that, in order to determine whether a patent application relates to an invention falling within the scope of patents, it is necessary to examine the nature of the problem that the patent application proposes to solve and the solution it intends to provide therein. Patentability can relate only to solutions having a technical character, while an immediate technical result in the industrial field is necessary, even though this result is weak and of weak interest.

The patent in dispute, highlighting the shortcomings linked to the traditional method of making manual mixtures of liquid, sometimes dangerous for the user and with imprecise nicotine concentrations, intends to solve these difficulties by implementing a device for assembling and filling a liquid vial by methods providing for mechanical filling by means of supplying at least two different liquids through selection tools.

The patent, which does not simply describe results, therefore proposes a technical solution to solve a technical problem.

However, turning to the second ground of nullity, insufficiency, the court noted that the description of the patent was excessively empty:

The description is particularly limited as to the described device. It merely reproduces the wording of claim 1 of the patent to explain the only including figure which is extremely schematic.

No details are given on the nature of the filling means and the liquid supply means. The means of selection invoked are not described. No explanation is given on the means of calculating the nicotine concentration of the liquid mixture which are only mentioned.

The description does not include any embodiment of the invention which may clarify the claims. 

Consequently, the patent is not sufficiently described for a person skilled in the art to be able to implement the invention (with the sole assistance of the description and the drawing).

Therefore, the patent was revoked in its entirety, without examining the other grounds of nullity of lack of novelty and lack of inventive step.

I have had a look at the patent at stake, and it is true that the description is rather succinct. The description is only two and half pages long, of which one page is dedicated to the prior art. In the rest of the description, the various “means” recited in claim 1 and its two dependent claims are mentioned, but without much in terms of additional explanations.

In other words, the court’s analysis of the patent appears to be correct. What they did not address, though, is common general knowledge. Could it somehow make up for the shortcomings of the description?

That said, even if sufficiency had been acknowledged (taking into account common general knowledge), there may have been serious issues concerning novelty and inventive step as well – which may be why the court directly went for the jugular.

In fact, looking at the preliminary search report issued by the EPO (on behalf of the INPI), all three claims as filed were deemed to lack novelty over a D1 document and to lack inventive step over a D2 document combined with a D3 document.

In its response to the search report, the applicant did not amend the claims and argued thusly:

The prior art is analyzed as follows: 

Document D1 is an article published online and reviewing the state of the art in the field of electronic cigarettes and machines for filling vials with liquid for these cigarettes.

Document D1 does not disclose all the technical features recited in claim 1 of the invention. 

Document D2 is a patent application publication relating to a method for filling vials for electronic cigarettes and the related device .

Document D2 does not disclose all the technical features recited in claim 1 of the invention. 

Document D3 is a patent application publication describing a device for filling containers in the pharmaceutical field. 

Document D3 does not disclose all the technical features recited in claim 1 of the invention. 

These three documents are therefore not relevant for the appraisal of novelty. 

The applicant’s comments on inventive step were of the same nature. As a next step, the patent was granted.

As I am sure all readers are well aware, the French patent statute has been recently amended by the PACTE law. One major aspect of the reform was to strengthen examination of national patent applications in France. The patent at stake was granted under the former, pre-PACTE provisions, which, obviously, made it possible to obtain a patent without spending much effort on setting out why exactly the invention deserved one.

I have heard, and even expressed myself, concerns that the PACTE reform may hurt local applicants wary of the higher costs typically associated with more serious, EPO-type prosecution.

On the other hand, maybe today’s decision could be viewed as an example of why raising the bar, while not a perfect solution, was in fact necessary.


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 1ère section, February 6, 2020, Directbuy v. LCCF Distribution, RG No.18/02372.