Vice-Presiding Judge, 3rd chamber, Paris regional court

Different practices at national courts: a challenge for the UPC

I. What happens to infringement rulings if the patent concerned is later revoked?

Practice in France

In France, if a patent is revoked or annulled following a final decision that it was infringed, that decision cannot be revisited, and has to be executed regardless.

The principle that revocation has erga omnes effect retroactive to the date of filing the application – which is thus deemed never to have existed – comes up against that of res judicata, i.e. the authority of a final decision is not open to challenge.

So infringement damages paid cannot be reclaimed, and it is not even possible to suspend the decision's execution (see judgment of 17 February 2012 given by the court of cassation sitting in plenary session).

Possible UPC practice

Personally, I believe it would be a good idea to allow such suspension, and reimbursement of damages paid for infringing a patent which is subsequently set aside in other proceedings.

II. Revocation suits before French courts if an opposition or appeal is pending at the EPO

Practice in France

If a granted patent is opposed or appealed at the EPO, suspension of the French proceedings can be requested, pending the EPO's decision.

Suspension is not a right.

In the absence of agreement between the parties, the court decides on suspension in the light of their written pleadings and any other submissions made in public adversarial proceedings.

The court will consider:

• the likely success of the opposition or appeal;

it will thus assess the submissions made to the EPO

• whether accelerated proceedings at the EPO have been requested
• the balance of the parties' interests, and the damage they are likely to suffer if suspension is granted and no decision on the alleged infringement is taken in reasonable time
• the revocation rate for EPO patents.

In nearly three quarters of cases, proceedings are not suspended pending the EPO's decision.

Possible UPC practice

I think a good solution is to let the court – whether national or "European" – decide if it needs to suspend its proceedings. Judges are used to making this legal and factual analysis, in this and many other areas, and whether they grant a suspension will normally depend on the balance of the parties' interests and the consequences of delay – criteria which the EPO does not apply because it does not hear infringement cases.

III. Effect of EPO board of appeal decisions on patent litigation before French courts

Practice in France

French courts believe that the EPO, up to and including the Enlarged Board of Appeal, is not a court but an office that grants or refuses patents. So they do not feel bound by board of appeal decisions.

For example, the Enlarged Board's decision that dosage regimes could be regarded as second medical uses has not convinced French judges either at first instance or on appeal (see judgment dated 20 March 2012 of the Paris regional court in Teva v Eli Lilly, and that dated 12 March 2014 of the Paris appeal court).

Another example is the court of cassation's refusal to uphold the decision that DNA was patentable (likewise, last June, the US supreme court set aside similar decisions taken by the USPTO).

Possible UPC practice

I regard the DNA patents as a good example of how a court and an office do not "react" in the same way to the same issue, because judges take account of aspects which offices do not consider. The facts may be identical, and the legal basis largely the same, but the debate is different and interpretations diverge.

So whilst EPO decisions – and other factors – can give national courts food for thought, they cannot directly affect their rulings. This, I believe, must remain the case before the UPC.

IV. Patentability of computer-implemented inventions (CIIs)

Practice in France

For a long time, INPI did not regard CIIs as patentable, but it has now done so provided they involve a supplementary technical effect and inventive step.

These patents were for software implementing computer programs in cash registers so that receipts could be issued in a single transaction, or for boiler maintenance work (remote maintenance records).

However, these inventions are arguably more a matter for software and method copyright. The patents for them are subject to some legal uncertainty in France, because their technical effect is sometimes hard to show, and it is by no means certain that they will be upheld; the large majority of decisions have found them null and void.

V. Inventive step: problem-solution approach

French courts have agreed to follow this approach in most cases, but it is not a rule.

Their yardstick is that the skilled person, given his technical knowledge, would necessarily have arrived at the invention, not just that he could have done.

As a result, the issue now is how to define that knowledge, at the date of filing or priority. If it extends to other technical fields, the applicant must explain why the skilled person had to have that extra knowledge. If the skilled person is a team – which the Paris regional and appeal courts now accept can be the case – it must be explained why its composition is as it is.