An exclusive interview – part 2

This is the second part of my interview of Ms. Marie-Christine Courboulay, former judge at the Paris Tribunal de grande instance (TGI), in charge of IP matters and especially patent litigation.

The first part of the interview can be found here.

In today’s part, Ms. Courboulay reflects on the strengths and weaknesses of the French judicial system. She explains how French judges interact with their foreign counterparts, and tells us about the role of case law – French case law, foreign case law, and most interestingly EPO case law, as the rift between the approach of the Boards of appeal and the approach of French courts has not really been reduced over the past few years. The interview would not be complete without some words on the UPC, and you will see that Ms. Courboulay is very optimistic regarding the attractiveness of the Paris local division of the court.

Again, a big thank-you to Ms. Courboulay for sharing her views on this blog.

Justice explained to all.

What do you see as the main strengths and weaknesses of the French judicial system, particularly regarding patents, compared to our European neighbors?

The French judicial system has several advantages, in the field of patents:

  • In the case of provisional measures, an adversarial decision can be issued in an extremely short amount of time, namely within a few days: for example summons may be authorized by a judge on Monday, the oral argument may be heard on Wednesday, and the decision issued on Friday. This is perfectly compliant with the standard set by the CJEU, which intends to favor the adversarial principle even at this stage.
  • Infringement seizure, which provides evidence of alleged infringement through an ex parte request. It should be mentioned that this is the only ex parte order for which the judge does not have to justify the reasons why the adversarial principle does not apply.
  • Judgments on the merits that are now issued within a timeframe which is comparable to those of other European courts which base their decisions on continental law and not on common law, and which rule both on the validity of the patent and on infringement, since there is no bifurcation in French law.
  • A single court (the Paris TGI and the Paris Cour d’appel) which therefore concentrates the entire litigation, so that the judges handle many patents and develop their expertise.

As for the weaknesses: the main one is the judges’ turnover, and sometimes their level of English proficiency.

Do French IP judges have regular exchanges with their counterparts in other European countries? What do they get out of these exchanges? Do they strive for harmonization with the practice of neighboring countries? If so, what are the limits of this desire for harmonization?

French judges have regular exchanges with their European and even American colleagues at European or international conferences, but also at workshops organized by the EPO or by the EUIPO on trademarks and designs.

These exchanges are important because they make it possible to understand how the same text (when it is a regulation) can be interpreted differently from one country to the next, to understand nuances or consequences evaluated one way or another, and why certain specificities are preserved, when a directive is transposed.

These exchanges make it possible to learn about solutions found by other judges based on a same text and / or a same case, and to discuss future developments or modifications to be considered in the different areas of IP.

There is indeed a desire to harmonize IP case law; it is mandatory in the trademark and design area, and by extension, it is sought in the patent area as well, even if this not legally required. This is less true of copyright, except in the case of private copying, which has been the subject of numerous decisions by the CJEU.

However, the decisions of the CJEU which are meant to ensure harmonization are read by all European judges and should also lead to harmonization, including for example concerning SPCs or FRAND licensing.

There is one limit which is the applicable national law, when there is a difference between a directive and its transposition law.

For instance, regarding infringement, the notion of good or bad faith was not incorporated into the French statute, whereas it exists in other European countries, where a bona fide infringer and a pirate are not handled in the same manner. The French judge cannot make any prima facie difference based on the notion of good faith, which should not be taken into account when it comes to infringement.

On the other hand, French judges, due to the harmonization desire, and after discussing with other European judges who regretted an excessive difference relative to other national rights, introduced the requirement for the person who requests an infringement seizure to provide a reasonably accessible beginning of proof. This is taken from the non-transposed part of the directive, but the judge may add a criterion for assessing the grant of the order, i.e. a condition which preserves equal rights before the court dealing with the merits, and which especially preserves the rights of the alleged infringer.

If the Code de la propriété intellectuelle provides that the infringement seizure is a right, it should be borne in mind that there is no absolute right, that this right is subject to the appreciation of a judge who must in his/her decision weigh the grounds on which the request is based, and those which could lead him/her to refuse the infringement seizure or to limit it in its scope. This is in view of a concern, acknowledged by the CJEU, of proportionality of the rights of litigants, which must more particularly be taken into account in ex parte proceedings that lead to a particularly intrusive measure before any judgment.

In the context of multinational patent litigation, how important are foreign decisions in the eyes of French judges?

I know that there was a time when French magistrates said that they were not bound by foreign decisions, and that they did not even read them.

But that time is over.

If it is true that we are not bound by the decision of a court of another member state in the procedural sense of the term. But, when a decision is issued in the same litigation by a foreign court and it is submitted to the court, it is part of the file wrapper. Decisions are read and analyzed, first to ensure that they indeed relate to the same dispute, and especially that the arguments under discussion are the same, which is not always the case. Second, if the grounds relied on are the same in the dispute between the same parties, the decision will be very carefully read to understand and analyze the reasoning followed by the foreign court, because in general the same causes lead to the same legal grounds, which lead to the same consequences.

I would say that the judge will determine whether he/she is convinced by the reasoning of his/her colleague. At any rate, as far as I am concerned, these decisions are of a special importance, which is greater than that of a legal opinion for example, even if I also pay close attention to such opinions.

Or we can find food for thought in other decisions, and we can take a hold of criteria developed by another court or another office to assess the validity of an SPC for example, if these criteria appear to be relevant.

I would add that in case of a disagreement with the foreign court, it will be necessary to try to provide an even clearer and more precise reasoning, so that the parties can understand and follow the reasoning proposed by the French judges.

In fact, there may be disagreements of analysis and interpretation with foreign colleagues which are similar to those which may exist with French colleagues.

How is the case law developed by the EPO boards of appeal on the validity of patents considered by French judges? In particular, French courts have sometimes explicitly discarded some decisions of the EPO’s Enlarged board of appeal (for example on computer programs, or on claims to dosage regimens). Some observers were surprised at such differences in practice between Munich and Paris, which do not seem to be found to the same extent in other European countries. Is there a French distinctive identity in this respect?

The case law of the boards of appeal and of the Enlarged board of appeal are known to the 3rd chamber and to the Cour de Cassation, that expressly referred to it in its judgment of December 6, 2017. But they come from an office and not from a court; they do not have the same value for French judges as judgments from another court.

The other point is that the boards of appeal of the EPO have a tendency to interpret the texts on which they base their decisions in an extremely extensive manner. They try to grant patents (which is their primary objective and the source of their financing) even when the conditions are not met.

This is the reason why the European Commission has taken up the subject in the broccoli cases, or why the Paris Cour d’appel has referred a preliminary question to the CJEU as to whether a new molecule already known for an already known treatment could be considered as a second therapeutic application.

Lastly, German judges who are presented with an action for nullity of a patent must stay the proceedings as long as the decision by the EPO on the patent is final, which is not our case. This difference necessarily affects the influence of EPO decisions on French courts, as they will validate or revoke a patent without waiting for the EPO decision, when the patent is still under opposition.

So, I do not know if French judges are more reluctant than others to follow the decisions of the EPO boards of appeal, but they are in any case cautious about how they should be analyzed.

The French legal tradition differs from common law, which is centered on precedent. Apart from the main judgments of the Cour de cassation, do you think that there is a French patent case law which courts strive to follow? Or do the judgments of the TGI and of the Cour d’appel only represent specific decisions without any general influence on judges in other cases? Mention can be made for example of the different approaches which have recently been noted between the Paris TGI and Cour d’appel concerning the application of the statute of limitations to patent nullity suits.

There is no need for a tradition of precedent to create a consistent case law that attempts to develop a set of universally understandable enforcement rules. In France, the Cour de cassation carries out the necessary harmonization between the different courts and thus indicates the direction that future decisions will have to follow.

While of course each judgment is a case in point, it is clear that case law reveals major trends and defines interpretations of the legal bases proposed by the parties in their submissions.

Concerning the statute of limitations, the first instance court has proposed an interpretation of the rule which has not been followed by the Cour d’appel and it will be up to the Cour de cassation to provide the interpretative framework that the courts will have to follow.

So, as always, the rule and its interpretation will be general and elaborated by the Cour de cassation or the CJEU, which also provides an interpretative framework or “instructions for use” of a law, and which leaves it to national courts to apply the rule thus interpreted to the case at hand.

In your opinion, does patent law in its current state offer a satisfactory balance between the interests of right holders and third parties? Do you wish for some legislative changes, either in terms of substantive or procedural law?

I would say that there is a certain balance between right holders and third-party competitors as long as patents are not granted too loosely, and as long as they reward investments actually made for research and innovation by a 20-year monopoly, as the CJEU always reminds us. That’s why I’m not at all in favor of theories per which patents may have other purposes than the reward of an invention, notably a communication to the public when a particular product is advertised as being patented. To me, this benefit is a form of lie, when it is not based on a real invention (so-called blocking patents that distort competition) and that is why I am in favor of a real examination of French patents by the INPI (with the human and financial resources that should go with it as I said above).

Turning to consumers who are also third parties, I would like the concept of public interest, particularly in the area of ​​medicines, to be more fully taken into account and even integrated into the statute.

This public interest concern is in line with the senators’ concern, as they have debated the notion of “essential drugs”, and have taken interest in drug shortages, or in new therapies that are burdened by an exceedingly high price.

The same considerations apply to standard essential patents and the resulting consequences on the market, the price of IT products, the monopolies thus created and the extra cost to the consumer. This is the field of so-called FRAND licenses and the necessary balance that must be achieved between licensees, competitors, start-ups and consumers.

You have been involved in extensive preparatory work regarding the unified patent court. If this court does come into force soon, which position do you think French courts will have in the future?

I still am involved. I think that if the UPC fulfils the objective assigned to it, which is to issue decisions on infringement and validity of unified and European patents throughout the members states of the European Union that have ratified the Agreement, within an extremely short timeframe (one year), then, after the 7-year transition period during which there will be shared jurisdiction over European patents between the UPC and national courts, national courts will then only have to deal with national patents.

On the other hand, the Paris local division should be able to attract a larger share of the European patent litigation than the one currently handled by the 3rd chamber because it will be possible to plead in the three languages ​​of the European patent. Two French judges will be part of the three-judge panel, and the proximity of the central division will have a great attractive force in favor of the local division.

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