Since our comments last year in The right of priority, its successor in title: an example of international common sense to follow … – DTMV the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has just, on 10 October, ruled (G 01 and 02 / 22) that this priority can be the subject of an implicit agreement between the first US applicants and the second PCT applicants to benefit from it on the territory of the EPO.

While this EBA cites only its decision of 16 February 1962 in Valence, which it presents [p. 34 § 95] in a manner divergent from that adopted in particular by Professors Bodenhausen, Le Tarnec and Mathély, French case law has regularly accepted, for more than ten years, that this right of priority may indeed be the subject of an implicit assignment in favour of a third person, whom Articles 4 A 1) of the Paris Convention (PC) and 87 (1) b) of the European Patent Convention (EPC) qualify precisely as “his successor in title”.

However, French judges have stipulated that while such an assignment may be implicit or tacit, it must still be certain under its governing law.

Like any agreement between two persons, an assignment can only be governed by a single applicable law. This is clearly the case for the sale of patents (trademarks, designs, etc.) registered even in several countries, but where the substance or content of the contract is governed exclusively by the law chosen by the contracting parties.

I. The EPO’s EBA considers itself firstly competent to assess a challenge raised by an opponent as to the date on which the state of the art that he wishes to oppose to the contested patent ends, which seems quite natural.

It is generally accepted, particularly in our European procedures, that the judge of the action (demands) is also the judge of the objection raised in defence. Articles 49 of our French Code of Civil Procedure (CPC) and 32-1.a) of the Unified Patent Court (UPC) make provision for this.

In this case, although a dispute over the right of priority is not a ground for opposition, it is nevertheless common sense that in order to examine the novelty or inventive step, the EPO must, in order to decide whether or not to grant a patent, determine the state of the art to be retained, and consequently define the dates, including the priority date claimed before it.

That being said, the EBA prefers to characterise this challenge as whether this second PCT applicant is entitled to claim the priority provided for in Article 87(1) of the EPC before the EPO.

However, it is surprising that, on the grounds of the autonomy of the EPC, the EBA refuses, if not to apply, at least to examine the law of the contract which transfers the right of priority to the successor in title.

Just as the EBA admits this for national judges who each have their own conflict of laws rule, the autonomy of this 1973 “Convention on the Grant of European Patents” nevertheless allows it, if not to create its own conflict of laws rule, at least to decide that if this EPC grants the applicant before the EPO a presumption of his right to claim priority by virtue of article 88(1) of the EPC, an opponent nevertheless has the right to rebut it, in particular by challenging a so-called transfer to a successor in title, as being non-existent or contrary to the agreed contractual law.

Perhaps the EBA would have preferred to take account of the generally accepted principles in this area in the EPC countries, to which Article 125 allows it to refer.

It is true that European case law (in particular German, English, French, Dutch, etc.) differs on the grounds for assessing the transfer of priority to a successor in title:

• is it a question of assessing the right of priority specific to this intellectual property (IP) which arises in one country only to be exercised in reality in another country, in order to erase in particular twelve months of the state of the art there?
• or is it an assignment contract subject to the general or common obligations and rights of our laws or civil codes?

Is this not why the EBA declares [p. 42 § 115] that its solution on this rebuttable presumption in favour of the applicant before the EPO is not binding on the judges who are bound by their own conflict of laws rules?

However practical it may be, and in line with Articles 60(3) of the EPC and L. 611-6 of the French Intellectual Property Code (CPI) in favour of the applicant to exercise or have the right to a patent, will the EBA’s solution have any significant authority, particularly before our judges in Europe, for example, as well as before other Offices around the world?

Wouldn’t the EBA have had more influence even outside Europe if, applying the law agreed for the whole world between its owner and his successor in title, it had given its opinion on the transfer of this priority that arose at the time of the first filing, here in the US?

 

II. In these circumstances, the EBA decided as a matter of principle to grant this rebuttable presumption to the second PCT and EPC applicants [here party B], even if they are not the same as the first US applicants [here party A].

The reasoning behind this decision deserves attention. A priori, since the applicants are not the same, a link between the two parties A and B should at least be explained.

The EBA explains that “joint filing implies an agreement between parties A and B allowing party B to claim priority, ...”.

For this purpose, it appears that in reality the EBA thought it could interpret the factual situation and modify the question referred to it.

In its decision [p. 52 II § 2], the EBA considers that in the PCT application “filed jointly by parties A and B”, A is designated “for one or more designated States” and B is designated “for one or more other designated States“.

• The EBA’s hypothesis is ambiguous, to say the least, for two reasons.
  • Indeed, the EBA itself quotes [p. 1 § 1] the question referred to it, pointing out that “the PCT application designates party A as the applicant for the US only and party B as the applicant for the other designated States, including the regional protection of the European patent” [p. 1 § 1. II. 1)].This wording of the question seems more appropriate.

• • The EBA also states [p. 1 § 2]:

• • • the first application, which gives rise to the right of priority, was filed in the US in 2004 by the three inventors (natural persons)
      (Mr. Rother, Mr. Wang, and Mr. Zhong) [i.e. by party A],
    • while the PCT EPC application was filed in 2005:
      • by two US-based legal entities (the University of Ontario and Alexion Inc.) [i.e. party B] “for all designated states except the US“,
      • as well as party A designated for the US “only“.

 

• The question immediately arises as to what is “common“, “joint” or “jointly” about the filing of this PCT EPC application, since the rights in question are distinct and exercised independently, as well as in different territories.The three inventors filing in the US [party A] in fact wish to exercise their right of domestic priority within the US exclusively, which the PC never provided for, since the priority established there is exclusively from one country to another [article 4 A 1)]. For this reason, it should be noted that they likely had to attach the text of their US priority to their PCT application.

  Party B [the two PCT EPC applicants], on the other hand, wishes to exercise exclusively the right of international priority provided for in the PC, outside the US to the rest of the world and in particular to Europe.

In these circumstances, it is by no means certain that in Europe or on other continents, national judges will follow the EBA’s assumption to admit a presumption in favour of those second PCT EPC applicants who claim the international priority of the PC, even if this claim is deemed to comply with Article 88 (1) EPC.

What’s more, the evidence to the contrary that would destroy this presumption seems obvious.

Because a priori :

• the first US inventor applicants [party A] only exercised a domestic US right in their PCT application, which is not the right provided for abroad by the PC, even though this application was presented in a single form signed by a common representative,
• whereas, in the opposite direction, the second PCT EPC applicants [party B] had given this representative the task of enabling them to benefit outside the US from the international priority provided by the PC, in particular in Europe via the EPC.

It remains to be seen whether:

• in particular in view of the assignment of his right of priority by one of the three inventor applicants in the US, but the non-existence of any such assignment by the other two prior to the filing date of the PCT EPC application (in other words during the life of this right of priority) [p. 2 § 4],
• the law of the original contract (in this case, it would be a US law) [see p. 22 § 64 and 65, p. 37 § 100] makes it possible, even after the priority right has expired, to confirm expressly that, before it expired, each of parties A and B had indeed intended to assign and acquire with certainty not only the right to file patents abroad, but also the right of international priority of the PC, which the EBA distinguishes from the other attributes of the patent right arising from its first filing.

Finally, while the EBA points out that the PC, PCT and EPC are intended, under certain conditions, to provide the best possible protection for inventions in several countries, and that the EU Charter guarantees IP among its fundamental rights, European judges, who are also bound by their full jurisdiction to assess (especially after a patent has been granted) a patent infringement, are keen to respect the principle of proportionality between these fundamental rights, which are IP and freedom to exploit what must remain available to all.

To be continued …

Thierry Mollet-Viéville

                                                                         avocat à la Cour – DTMV

                                                                         former president of Aippi and of Afppi

             

                                                                         December 8. 2023 

Here, the discussion will be limited essentially to the assessment of damages (d-i) according to civil liability (art. 1240 et seq. C.Civ.) to compensate the owner who does not exploit his title on the market, but who is injured by one or more infringements.

 

Remarks

 

• It seems natural here to leave the concept of “punitive damages” to criminal liability, which its judges assess in the general interest of public order.

 

In sometimes clumsy wording, art. 45 and 13 of TRIPs and Directive 2004/48 have allowed some to say that d-i should be reduced, if the convicted infringer has nevertheless acted “unknowingly”, even if the harm caused to his victim exceeds his profits to be “recovered” or “pre-established damages” [sic].

 

But at least in France, where its legislator wanted to exclude this “attenuating circumstance of good faith infringement”, everyone agrees to try to put the victim back in the state he or she should have been in if the infringement had not existed.

 

• This note does not deal with the questions of the jurisdiction and powers of the judge, for example the French (FR) judge, to assess, according to one or more local laws, the d-i due for infringements committed on several EU territories, in particular those of an unique title such as the EU trademark or design.

 

• The FR texts [L 331-1-3, 521-7, 615-7, 716-4-10 and 722-6 IPC] are identical regardless of the right at issue; however, their purpose differs between them, in particular that of the trademark which does not confer a priori any protection on the product or service it designates.

 

All victims are considered here, even if it is essentially those of patent infringement.

 

As in the past, these texts do not exclude any d-i, provided that it is real, attributable to the infringement, and provided that the judge is convinced of this by the evidence submitted by the victim, who is often unable to bear such a burden.

 

But from now on, it is under the control of the Court of Cassation that our judges must in a motivated decision assess these directions given by these texts.

 

• No doubt it is also necessary here to bear in mind the essential attributes of the exclusive right enforceable against all:

– the right to be the only one to put onto the market,

– the right to prohibit and/or the right to reward.

 

• An important clarification must be made regarding the reality of the negative economic consequences of infringement: if the holder does not exploit his title, he may in fact have it exploited on an industrial or commercial market by a third party whom he has authorised under certain conditions.

 

It is therefore necessary to consider two distinct situations for this victim who does not exploit himself: no licensee exploits or, on the contrary, his licensee exploits the title in question.

 

In this case, the negative economic consequences of the infringement are certainly not the same and it should not be possible to accumulate them. (see below)

 

Compensations or lump sum?

 

• The first paragraphs of all these texts of the IPC (para.1) use the two criteria that have always been known for assessing the compensation due to the injured party: the missed earnings and the loss incurred.

 

A missed earning is a gain that has certainly been missed but has not been actually sustained.

 

This is the case, for example:

 

• the missed earnings that the operator could have made on the marketing of the infringing mass (when to meet those charged by the infringer, he also had to lower his prices thus losing on his own sales part of his profits),

 

• the missed royalty that the infringer on his turnover should have paid to the holder of the unexploited title, if he had fairly asked him for a licence (when the royalty lost by the holder would be the one that his licensee did not actually pay him on the additional turnover that this licensee would have made if he had been able to market the infringing mass). (see also below)

 

Our judges have always taken into consideration the profits (gross, semi gross and/or net) of the infringers, if only to evaluate the rate of this indemnifying royalty, at around a quarter (and sometimes a third) of the profits that a licensee can hope to make from his licence. This consideration could also reinforce the economic reality of the missed earnings that the injured operator claims before them.

 

In both cases, it is indeed an indemnifying royalty, to which should be added, as our Court of Cassation specified, all the other benefits that the licence may have brought to its licensor (development and launch efforts, quality of the objects, knowledge of the market and its needs, distribution and promotion efforts, brand image etc.).

 

• For the first time in 2007 and 2014, it is in their second paragraph (para.2) that these texts institute the lump sum at the request of this same injured party.

 

And these texts expressly refer to the alternative nature of this choice; in other words, choosing one of the branches of this alternative means of course renouncing its other branch (see also below).

 

But parodying this missed indemnifying royalty, the legislator characterises this lump sum as consisting of:

 

• the price of the licence, even if this licence is a posteriori,

 

• increased by a coefficient:
  • this is certainly to compensate for the advantages that an infringer, even if licensed a posteriori, could not have given to the holder,

• • which the CJEU recalls, however, that if the doubling clearly and considerably exceeds the d-i, it could then constitute an abuse of rights prohibited by art. 3 of our Directive [CJEU 25 January 2017, Oławska Telewizja Kablowa / Filmowców Polskich (§ 31) C:2017:36],

• • but for which the victim nevertheless has the burden of proof (without, however, having to disclose especially to an illegitimate competitor, his own profits, or losses, and/or other ways of exploiting his protected subject matter), the FR judge for his part refraining from taking into consideration his personal knowledge (unless it is notorious).

 

It should be noted here that in principle the power to authorise or prohibit the exploitation of a title is within the hands of the owner alone. It is true that the exclusive licensee may, under certain conditions, sue for infringement and, in any event, may require his licensor to be the only one on his market.

 

On the other hand, the non-exclusive licensee has agreed not to be alone on his market; he therefore has no power to prohibit exploitation by a third party; he would not therefore be entitled to charge a price to lift this prohibition.

 

One might therefore wonder whether the price of the authorisation making up this lump sum is due to the victim, when it does not have this right to prohibit, especially if, apart from the infringer, it is not the only one occupying the market.

 

• Let us now consider the hypothesis of the holder who, for example, acknowledges having given a free licence to his subsidiaries.

 

In these conditions, the infringement does not seem to have caused him any financial damage, nor does it seem to have caused him to lose a royalty, which his licensees would not have paid him either if they had also been able to market the infringing mass.

 

However, nothing prevents these licensees from intervening in the proceedings brought by the holder to claim compensation for their own d-i.

 

In this respect, at least in patent matters, if a writing is required under art. L 613-8 IPC, a written confirmation, including for the past of these licences, even if they are not recorded at Inpi (see, since 2008 at least, art. L 613-9 § 3 IPC) and even during the course of proceedings (according to the latest Paris case law), allows them to intervene to claim their own d-i.

 

In this case, on the earnings missed by these licensees on the infringing mass, has the licensor not nevertheless lost some counterpart, notably by virtue of the agreed exploitation of their businesses?

 

• This is the regime in which our IPC now guides our judges in setting the d-i in all its para.1.

 

Moreover, is it not beyond legal theories that the economic reality must impose itself in this evaluation of the d-i really caused by counterfeiting?

 

Let us reason for a moment by the absurd, which, however, as we shall see, is not far from judicial reality.

 

Indeed, the Parisian judge thought he could on some occasions grant, if only as a provision:

 

• a royalty (estimated at around 20% of the infringing turnover) to be paid to the owner by the infringer

 

• and missed earnings (estimated at around 40% of the same infringing turnover) to be also paid to the licensee by the same infringer.

 

At 60%, this amounts to a real confiscation, in surplus of the turnover!

 

It is undoubtedly disproportionate and contrary to the opinion of our Court of Cassation, which has already recalled that the confiscation of incomes should be limited to the actual d-i suffered by the injured author.

 

Such an accumulation of para.1 and 2 seems illegitimate on the same turnover of the infringer. Professionals point out that the royalty to be paid to the licensor, should in that case come from this 40% of missed earnings.

 

And conversely if the infringer has paid the owner the lump sum under para.2, which, it should be remembered, consists of an overrun of the royalties or fees on his infringing turnover, he thus becomes a posteriori authorised by the owner. He would therefore no longer have to pay any further sums in respect of the d-i provided for in para.1.

 

Conclusions

• It should be deduced from these observations that the lump sum higher than the price of the authorisation (royalties or fees owed) that our legislator has instituted in all of its para.2 only as an “alternative”, should be requested by each of the injured parties, failing which the judge will remain obliged to only apply the regime of the d-i of its para.1.

 

This lump sum could only be granted if no other negative or economic consequence of para.1 had been requested, with the exception of course of the compensation for moral prejudice which the legislator wanted to add to this lump sum in para.2.

Such a solution seems to be accepted by all, when the owner exploiting the market alone has preferred not to disclose his lost profits and/or missed earnings, or his own intellectual, material, and promotional efforts under para.1, in order to request “as an alternative” this lump sum under para.2, subject of course to his moral prejudice.

 

• Thus, the owner whose title is not exploited by anyone, is entitled to obtain a missed indemnifying royalty from para.1 on the infringing turnover. It should be noted here that this will generally be assessed in much the same way as the price of the authorisation in para.2.

 

But if the title is exploited by its licensee, the owner should be able to claim, not a royalty on the infringer’s turnover, but all the benefits he should have received from his licensee if the latter had been able to market this infringement.

 

• Consequently, the owners and their licensees should agree on the way they are to be compensated by the infringers, before one of them requests from a judge the payment of the lump sum instituted in para.2.

 

Thierry Mollet-Viéville

attorney at Law – DTMV –

former president of Aippi and Afppi

The French (FR) Supreme Court has just clearly recalled that also in patent matters, the FR judge may assess infringements committed outside France (FR), [double cassation of June 29. 2022, appeal G 21-11.085, judgment 540 F-D: Hutchinson (FR) / Global Wheel (ZA), Tyron (GB), Dal (FR) and LaVi (FR)].

This court case is as follows:

• The FR plaintiff is the owner of an European patent (EP) designating FR, Great Britain (GB) and Germany (DE).
• This patentee is accusing four defendants :
• • the South African (ZA) manufacturer, for supplying onto England (EN) and FR,
  • the EN importer, for exhibiting in FR, offering on his EN website and reselling from his country in particular towards FR and DE,
  • the two FR defendants, for offering from this EN website the incriminated items in particular towards FR.

• In 2018, this patentee asked the Paris courts to assess these infringements in FR as well as in GB and DE, of course according to the national law of each of these three countries.

The validity of the involved EP is not challenged by anyone.

• The two FR defendants in their own regard admit this international jurisdiction of the FR court, particularly in view of the 1995 Fiona Shevill decision (CJEU).

However, at the request of the ZA and EN defendants, the Parisian judges twice declared having no jurisdiction to deal with the infringements of which these two foreign defendants were also accused in GB and DE.

The double cassation is pronounced for violation:

• and of art.8 (1) of Regulation (EU) 1215/2012 dated December 22. 2012, when there is a certain plurality of defendants [§6],
• and of art.14 of our Civil Code, because of the FR nationality of the plaintiff [§10].

The plurality of defendants

The Parisian judges had in fact considered (imitating the former Roche/Primus CJEU decision of 2006) that, given his EN law on infringement, it was not irreconcilable that the EN judge could assess that there was no infringement on his territory, whereas the FR judge, applying his FR law, could assess that there was indeed infringement in his country, while in addition the involved products would not have been identical in GB and in FR.

But this was forgetting (which the CJEU had already held in its more recent Solvay/Honeywell decision of 2012) the following points:

• The FR court must also rule on the infringements in GB which are alleged against the two FR defendants.

And this will be under the same EN law for infringement of the same EN part of the EP. Under these circumstances, it would be “surprising” if not “irreconcilable”, to say the least, if his decision differed from that of the EN judge in respect of the infringements committed on the same EN market by the two other defendants, the ZA supplier and the EN importer.

• Moreover, the acts of which the FR are accused in EN are one of the two sides of the same coin as those of their EN supplier and ZA importer onto the same EN market.

It is indeed the same source and the same marketing channel through several EU countries.

Just like the manufacturer in Marseille, the Parisian wholesaler and the Breton reseller of the alleged infringements are legitimately summoned only before the Parisian judge.

• Finally, on this EN market, it is indeed every version of the same product that the patentee is accusing of infringements before this FR judge.

The French nationality of the plaintiff

• This art. 14 of our Civil Code has provided for several centuries that “A foreigner, even one not residing in France, may be […] sued before the courts of France, for obligations contracted by him in a foreign country towards French persons.“.

Conversely, its art. 15 provides that “A Frenchman may be sued before a French court, for obligations contracted by him in a foreign country, even with a foreigner. ».

This privilege exclusively in favour of a FR litigant only applies if no other national, regional or international text benefits the foreigner.

In that case, this privilege is of general scope, and it applies :

• • to litigation even of a tortious nature,
  • for the sole reason that the plaintiff is of FR nationality.

This is the case when the ZA manufacturer delivered onto GB; he can therefore be sued by the FR patentee before this Paris Court.

Since Brexit and until further notice, this will also be the case for the GB who trade from their country.

In practice, many FR plaintiffs disregard this privilege, which is neither compulsory nor of FR international public policy.

Could it be to avoid having to multiply the evidence of several infringements under each of the local laws on infringement ?

However, in Europe in particular, many national laws have been put in line with the Marrakesh Agreement of April 15. 1994 (art. 28 et seq. about the exercise of patent rights).

• Following this traditional logic of FR private international law, could the FR patentee before a FR judge summon the American (US) manufacturer or the Chinese (CN) trader who would infringe in his country the title of this FR plaintiff, still according to US or CN law ?

This may seem :

• • exorbitant, for example for legal persons who more often than natural persons have the means to spread their legal claims over each of our continents…
  • risky to see the reciprocal being inflicted on the FR in these countries …

• But how close are we in this world to a privilege when faced with powerful people who wish to protect the interests of their own nationals abroad ?

Should we then demand that this foreigner also infringe in FR ?

Specialists in this field of private international law answer in the negative.

Indeed, at least from the point of view of civil liability, our intellectual property disputes are no different from other tort disputes.

Remarks

At the beginning of the 20th century, the FR judge had already declared himself competent to assess, if not the validity, at least the almost non-existent scope of a Greek trademark or of a Spanish import patent, in particular to reject in these two countries the infringements submitted to him by their FR owner.

If Art. 24 (4) of the same EU Regulation 1215/2012 now prohibits our judges from ruling on the validity of a title in the EU that has not been granted by its State, the FR infringement judge could well react like the DE judge with his bifurcation system, and for example stay the ruling on the foreign infringement if the validity of the foreign title appears to him to be seriously doubtful.

Conclusion

It is fortunate that this international competence of our judges, which has long been recognised for copyright, design and trademark infringements, or even for unfair competition, is now recognised by our Supreme Court in patent matters. Not to mention their SPC !

1/ The Paris Convention (PC, art. 4 A to I) created and instituted, in 1883, the principle of the right of priority for the benefit of the applicant of his first application for an industrial property title (patent, trademark and design).

The Washington Treaty (PCT, Art. 8) and the European Patent Convention (EPC, Arts. 87-89) also provided for this in 1970 and 1973, for the patent in their territories.

 

a. Like the patent itself – at least according to French law – this right of priority constitutes a movable intangible property right enforceable against all.

It is therefore a negotiable asset; and in 1911, the PC confirmed its extension to the successor in title of the applicant.

Under what conditions may it then be exercised and negotiated?

Between the applicant and its successor in title, it can only be through the law of contracts which enshrines the common will of the parties.

This contract has at the very least an international vocation; it is therefore in the best interest of all to be subject to and assessed by one and the same law, and this for the whole world.

As the PC does not address this issue, this law should naturally be the law of the country where the right of priority arises.

Failing to agree otherwise, it would be appropriate, as usual, to also take into account the nationality of the applicant and of his successor in title, their domicile or establishment, the place of execution, the language of the contract, etc.

It is in this sense that our French judges apply American law to assess the transfer of the right to file abroad, as well as the transfer of the right of priority in the agreement subject to American law, when, for example, it was concluded in the United States between the American inventor who filed his first application in his country, and his assignee, who is also American, and who are both based in this same country.

On the other hand, several countries and certain regions provide this contractual regime with a legal regime that imposes itself and supplants it, for example, social labour law, which would also be part of the international public order.

This is indeed what Art. 60 (1) of the EPC provides for in order to impose, when the invention has been made by an employee, a single applicable law (that of the State in which the employee is mainly employed, or failing that, that of the State in which the employer has the place of business to which the employee is attached).

 

b. But let us nevertheless remember two things:

• The right to a patent and the right to a priority are quite distinct rights, even if one may depend on the other.

The right to a patent generally belongs to the inventor, whereas priority exists only within the hands of the first applicant and expires after a short time.

While the inventor naturally has the right to file a patent application, the ordering of his invention may require him to transfer his right to a patent to the person who ordered the invention and who becomes his legitimate “successor in title”.

But for all that, the regime of hired inventors, which comes under this right to the patent, cannot be automatically transposed for the right to the priority, which until now has not existed on the inventor’s head, even if he is the first one.

• On the other hand, the assignment of a (national or regional) patent application does not necessarily convey the right to file new applications outside its territory.

 

2/         In fact, born out of the PC, this priority right is actually intended to be exercised abroad, where the subsequent application will effectively benefit from its priority date.

Under these conditions, the applicant’s successor in title, the assignee of the priority, will have to respect the conditions under which these two conventions, one multilateral (PCT) and the other regional (EPC), recognise and implement this right of priority; in the same way as the EPC countries recognise their obligation to protect, according to their own methods of exercise, the non-European inventions of individuals from PC countries, in the same way as for their own nationals.

It is in this respect that one can refer not only to the law of origin, but also to the law of the country where protection is sought:

• not to violate the public international order of the recipient country, particularly in terms of social labour law,
• properly complete the local formalities for claiming this right of priority (copy, translation, deadlines, fees, etc.).

In Europe, for the assignment of the European patent application, Art. 72 (EPC) requires a written document signed by the contracting parties, which effectively facilitates evidence, if it becomes necessary.

However, this writing requirement is not expressly sanctioned in this international treaty by the nullity of this assignment, contrary to French law (L.613-8 § 5 CPI) according to its principle of “no nullity without text”.

But neither this formal requirement nor the other property rights provided for in Articles 71, 73 and 74 (EPC) are provided for the priority right and its successor, especially when the patent has been definitively granted.

Therefore, the Paris Court has already been able to assess the assignment of the right of priority in particular under agreements concluded under US law between US employees and their employer, all of whom are established in the same country.

In view of affidavits from US lawyers, this Court has even admitted that the transfer of the right of priority could indeed be implicit, provided that it is certain; this would be the case when it results from obligations to do, even if they were concluded before the priority arose for the inventors who are going to be the first applicants in the USA.

Of course, the right of priority is ephemeral. Nevertheless, it seems wise to respect the fundamental principle of the autonomy of will of the parties, who may all agree to transfer and acquire an emerging right, even if it means mutually confirming such a transfer, even when it has expired.

In the end, common sense would seem to dictate that :

• to grant foreign inventors who are individuals from the PC countries a legal title like its own nationals,
• but to apply a single law to govern and assess a contract agreed upon by several persons on one of the attributes of the right conferred by the filing of the first application, and this for the whole world.

3/         There remains the delicate question of the authority’s competence and power to assess the substance (including the content) and form (including the method of evidencing) of this assignment, the sanction for which is in principle only the loss of the priority date, but not the nullity of its title.

 

a. French judges have fortunately and for a long time considered themselves competent to rule on these assignments of priority, even if it means applying the law of origin, convinced of the reality, even if only implicit, of the parties’ willingness to agree on the effective transfer between them – not only of the right to file abroad – but also of the right to the priority, especially during the time of its existence as provided for by our international conventions.

 

b. Since the lack of priority is not a ground for opposition, the EPO is not competent to rule on the content and scope of the agreement invoked for the transfer of this right, one of the attributes of this intangible property which is enforceable against all, even after the final grant of the patent.

However, the offices are generally competent to rule on the lack of novelty or inventive step of a patent not yet definitively granted.

In order to do so, the office must naturally know the date on which the state of the art opposable to the application ends in order to know whether an intermediate document can destroy its patentability.

But does this mean that an Office has the power to go beyond a mere formal check of the regularity of the claim in its territory?

One could imagine following the rule accepted before several offices, according to which the applicant is deemed to be entitled to exercise the right invoked before it [see for example Art. L.611-6 French IPC and 60 (3) EPC].

This will not be the case if it is clear and obvious that the applicant is not entitled to the benefit of a priority.

This should be quite clear when the PCT and EPC applicant is not the same as the inventor filing the first application in the US.

The non-existence of the transfer of the priority invoked appears all the more manifest and obvious when the company filing its PCT and EPC applications has itself declared to the EPO that no assignment or work contract existed with its employee filing in the USA.

In these circumstances, if there is relevant prior art between this US priority and the European filing, it would be interesting, if only from a practical point of view and in the interests of all concerned, to know the opinion of such an office as to the exact date from which the application in Europe may actually benefit.

Then, if the office decides to revoke the grant of such a patent, in particular for lack of novelty in view of the intermediate prior art, judicial review should still be available to the victim of this revocation [see Art. 32 and 41.4 of TRIPS].

As far as the INPI is concerned, the Paris Court should be able to hear such an appeal, this time judicial, in order to fully assess the substance and form of even a foreign assignment.

What about the EPO, whose Enlarged Board of Appeal will soon give its opinion?

What about the UPC, where the failure to transfer priority, which leads to a lack of patentability, would be a defence falling within its “exclusive” competence [see Article 32-1. a) of the Agreement] ?

One could imagine, according to the equitable principle that the judge for the main action is also the judge for the defence exception, that the UPC should take up this defence, even if it means simply dismissing the infringement plaintiff, without granting an “erga omnes” effect or « res judicata » to its assessment of the transfer of the priority right.

Finally, the decision of the first court hearing this assignment should, if not be binding, at least be retained and taken into consideration by all the other courts.

This is the same issue that arises about a Frand licence.

 

4/   This is where private international law, as known in particular in the Vienna and Rome Conventions for all contracts, should be retained with common sense, if only because this private international law is accepted and practised by most countries at least in Europe.

to be continued …

 

In the case of the Economic and Social Unit, the social pole of the litigation of professional elections of the judicial court is considered as competent. But on what basis? In an article published in the JCPE, Lin Nin and Sarah Larbi review the notion of UES and its functioning.

You can read their article (in French) here

Publication of the « Panorama de droit pharmaceutique 2021 » of the Revue Générale de droit Médical. Jean-Baptiste Leca discusses the access to data obtained from pharmacological and clinical trials in light of the French Trade Secret Law and recent CJEU case law.

Read the article here

Does the filing of an industrial model outside the European Union (EU) confer a priority right to file such a model in the EU?

The answer would seem obvious.

However, art. 41 of Regulation 6/2002 of 12 December 2001 on designs and models now in the EU does not! This art. 41 only refers to the design, the model and … oh surprise … the “utility model”, but not to the industrial model to give rise to such a priority right.

Isn’t this a clerical error that should be corrected? And as soon as possible?

Everyone knows the essential difference between these two model regimes:

– the industrial model, which, like the “patent design”, tends to protect the visual aspect (or the ornamental forms) of its object,

– on the contrary, the utility model which, like the “Gebrauchsmuster”, tends to protect its technical functions (or its useful functional forms), regardless of its ornamental aspect.

This Council Regulation of 12 December 2001 on Community designs seems to recognize this:

– since it associates the industrial model with the Hague and Locarno Arrangements, in its title and in art. 25, 37, 40 and 106,

– while it brings the utility model closer to patents for invention in its recital (31) and art. 96.

The same is true of Directive 98/71 of 13 October 1998 in its recital (7) and art. 16, without mentioning an “industrial model”, nor the foreign title which would give a priority right to filing in the EU.

This is also what we are reminded of in our Paris Convention of 1883, its articles 1 2) and 4), 4 A.- 1), 4 C 1), 4 I, 4bis 1), 4ter, 5 D, 5bis 2), 5quater, 5quinquies, 11 1), 12 1) and 2):

• patent, inventor’s certificate or utility model on the one hand,
• and design or industrial model on the other.

Why, then, does the Council Regulation of 12 December 2001 on Community designs suddenly mention utility models in its art. 41 to create this priority right, while omitting industrial designs?

It is true that the Paris Convention allows, in its art. 4 E 1) and 2), the filing of a utility model to grant a priority right for filing an industrial model outside its borders. In this case, the time limit is six months and not twelve as in the case of patents.

However, the famous Professor Bodenhausen immediately points out in his book (pp. 51-52) published in 1969 by the then BIRPI, that it is rare for national (or regional) legislation to authorize an “overlap”, i.e., a single common protection for the same industrial item in its ornamental aspects and in its technical novelty.

This is not the regime we have in Europe.

The future will tell us whether these gymnastic or sports equipment are validly protected by the designs registered by the EUIPO, which taking into account the wording of this Article 41 of the RDMC, admitted in its decisions of October 31, 2018 and June 13, 2019 that could arise from a PCT application (which effectively includes utility models), a priority to file a model in the EU.

Since this solution was not criticized either by the applicant or by the EUIPO before it, the Tribunal of the EU [TUE] had to admit it in its decision of April 14, 2021 [T-579/19], but extended its duration from six to twelve months. This decision is now under appeal (declared admissible).

And if some were to think that a PCT application could give rise to a priority right to file also a trademark application, on the pretext that its sign has been described therein to designate its goods or services … would it be the “same subject matter”, as required by our secular convention, in particular in its art. 4 C 4)?

Is this not what the Council Regulation of 12 December 2001 on Community designs wanted to take up in its art. 41 1. according to its expression “for the same design or model or for the same utility model”?

Is this one of the reasons why the EUIPO has announced the potential introduction of a utility model in the EU?

To be continued …

Thierry Mollet-Viéville, avocat à la Cour – DTMV, former president of AIPPI

The rapport “Le Data Altruisme : Une initiative Européenne, les données au service de l’intérêt général” (in French) was submitted to France Secretary of State for the Digital Transition and Electronic Communications, Cédric O, on Thursday 24th of February 2022. Grimaud Valat was the rapporteur of this project.

Read the report here : https://www.human-technology-foundation.org/fr-news/rapport-altruisme-de-la-donnee