France a safe route for patent limitation
Paris Appeal Court has recently rendered its ruling in a litigation involving an alleged infringer versus French Patent Office (INPI). It is one of the first decisions about the possibility of a third party to take part in a decision related to a patent limitation.
According to the French patent law, it is possible for a patentee to get a post grant limitation of his French patent or of the French part of his European patent upon request to the French Patent Office.
In the above mentioned litigation, the question dealt with the possibility for a third party to take part to the Patent Office decision. In that case, the third party was an alleged infringer with which the patentee was involved in a pending litigation.
As one may guess, the alleged infringer had probably some prior art enabling the revocation of the patent as granted and the patentee may have found a way to limit the scope of his claims to avoid such prior art while maintaining the alleged infringer products therein. It was thus the patentee interest to limit his patent and the alleged infringer interest to struggle to avoid it.
The question was then: is such situation legitimating an interest for the alleged infringer to take part to the limitation procedure before the French Patent Office?
The Paris Appeal Court answered clearly “no”. It seems to be in line with both with the wording and the spirit of the French law on the topic but it raises an important point. The only possibility of challenging the results of a limitation will be by requesting the revocation of the patent before the Court, moreover by using the limited grounds of revocation given by the law (lack of patentability, lack of disclosure, extension of initial content, extension of granted scope). Even if the Office seems to be ready to grant a new patent with limited claims despite informal irregularities or despite more severe issues, the alleged infringer will not have the opportunity to be part of the procedure before the French Patent Office to defend his position.
As a conclusion, it is confirmed that limitations are an interesting way to enhance patents strength without major risks. For European patents, it is especially interesting to use national route in France (as opposed to European route) when it is appropriate to avoid to limit a patent in a single direction.
Author: Jean-Christophe Rolland - Publisher: Managing IP
