1. EPO decisions, the Convention and national courts

BE Belgium

Mons Commercial Court of 23 October 2014 (14/5716) – Oliver Funderingstechnieken v Votquenne Foundations

Keywords: institutional matters – EPO – indication

The Court concluded that Votquenne's objections to the validity of the European patent had to be rejected. It noted moreover that, though not binding on the Court, the fact that the EPO examiner had not reacted to the amendment of the patent application was yet another indication of its validity.

Editor's note: For a full summary of this judgment and for another judgment addressing this aspect (Mons Court of Appeal, 03.04.2017 (17/1385) – Nouvag v Dr M.), see Chapter E.4. Amendments to claims.

CH Switzerland

Federal Patent Court, 7 October 2015 (O2013_006)

Keywords: institutional matters – harmonisation

The Swiss Federal Patent Court, noting that parallel proceedings on this case had already been brought before an EPO board of appeal and before Germany's Federal Patent Court, observed that any related judgments by foreign courts should be taken into account, in the interests of harmonisation within Europe. Parties should therefore bring them to the Court's attention straight away, at whatever procedural stage they were issued.

Editor's note: For a full summary of this judgement, see Chapter B.1. State of the art.

DE Germany

Federal Court of Justice, 2 December 2014 (X ZB 1/13) – Device for the numbering of seating

Keywords: institutional matters – harmonisation – EPO decisions – right to be heard

The respondent was the proprietor of a German utility model for a device for numbering the seats in rows placed in arenas, halls or the like.

It complained that the Patent Court's decision had considered neither the EPO opposition division's interlocutory communication (placed on the case file) setting out its provisional opinion on an opposition to the parallel European patent nor its subsequent dismissal of that opposition; in both cases, the opposition division had concluded, based on the same citations, that the proposed device for numbering seats was patentable. On the question of whether the utility model's subject-matter involved an inventive step, it had assessed two technical aspects differently from the Patent Court.

The Federal Court of Justice found that the respondent's right to be heard had not been breached. German courts indeed had to consider earlier decisions by EPO departments or courts in other EPC contracting states that pertained to a largely similar issue and, where the conclusion in that earlier decision had been different, address the reasons why; that applied especially to whether the subject-matter of a property right was obvious from the prior art (Federal Court of Justice judgment Xa ZB 10/09 – Roll-forming machine). Failure by a court to meet this requirement might amount to breaching a party's right to be heard.

But that was not the case here. The Patent Court had evidently noted the opposition division's preliminary communication and decision to reject the opposition; the Patent Court’s reasons for its decision showed that it had considered these documents to a degree that ensured the respondent's right to be heard. It was not possible to generalise on how detailed written reasons had to be on the outcome of such due consideration of another decision on a largely similar issue; that depended on the individual circumstances.

In its headnote, the Federal Court of Justice summarised its ruling as follows: in certain cases a court can also meet the requirement that it consider a decision by the EPO or a court in another EPC contracting state that differed from its own (Xa ZB 10/09 – Roll-forming machine) by addressing the reasons for that differing decision in the reasons for its own decision.

FR France

Paris District Court, 21 November 2014 (10/14073) – Ethypharm v AstraZeneca AB  & Cipla Ltd

Keywords: institutional matters – authority of EPO board of appeal decisions

In this judgement AstraZeneca claimed that the arguments put forward by Ethypharm in support of its complaint of infringement of Art. 123 EPC were the same as those already rejected by the EPO departments. The Court observed that, while certainly read with great interest, the decisions of the EPO, an administrative body, were not binding on French patent courts. On inventive step the Court noted that Art. 56 EPC did not prescribe the problem-solution approach, in which the first step was to identify the prior art closest to the contested patent, as the method of ascertaining whether or not the patent involved an inventive step. Though established in the case law of the EPO boards of appeal, it was not binding upon the French courts.

Editor's note: For a full summary of this judgement see Chapter C.2. Problem-solution approach. For other judgments reported in this publication and addressing this aspect, see also: Paris District Court, 15.01.2016 (13/17432) – Time Sport v Decathlon; Paris District Court, 14.04.2016 (14/05992) – SAS Bayer Healthcare & Bayer Animal Health GmbH v Intervet International BV; Paris District Court, 26.05.2016 (14/05090) – Ms W and France Brevets v Nintendo; Paris Court of Appeal, 07.10.2016 (14/16544) – PMT Italia v ABK Machinery.

2. Stay of national proceedings

BE Belgium

Brussels Court of Appeal, 5 March 2015 – Shamrock Technologies v Belgium

Keywords: institutional matters – stay of national proceedings – Art. 1 Protocol 1 ECHR

Shamrock Technologies is the proprietor of European patent 1 001 880, which was granted in English. Under a Belgian law of 1977, a translation into an official language of Belgium had needed to be filed within three months of the date of publication of the mention of grant. Since Shamrock had not done so, the Belgian Patent Office had deemed the patent void in Belgium.

Shamrock argued that the 1977 law disproportionately interfered with its right to the European patent as its property, as guaranteed by Art. 1 of Protocol 1 to the European Convention on Human Rights (ECHR).

Brussels Court of Appeal stayed the proceedings and sought a preliminary ruling from the Belgian Constitutional Court, which had ruled in its decision 3/2014 of 16 January 2014 that the 1977 law contravened Art. 16 of the Belgian constitution in conjunction with Art. 1 of ECHR Protocol 1 (a patent being property within the latter provision's meaning).

Belgium, the Court of Appeal held, could not argue that, in the absence of a translation of the original patent specification, it could cease to treat the patent as property. Nor could it argue that the patent was not existing property or that it could become property only on the condition that a translation had been filed within the prescribed three-month period. Shamrock had invoked the ECHR's first protocol not to acquire property, but to contest having been deprived of property it already had. Since the national validation process cited by Belgium – the filing of a full translation – was not part of the procedure leading to the grant of a European patent, but came after it, it could not be a precondition for that IP right to come into existence on its grant by the EPO (Art. 64 EPC). Art. 65 EPC and the 1977 law did not alter the granted patent's legal status as property; they provided merely that, if no translation were filed, the patent would become void – in other words unenforceable against third parties.

Although the lack of a translation had almost no bearing on whether third parties could learn of the patent's existence and scope, the Belgian legislature had chosen to impose an extreme sanction that was not mandatory under Art. 65(3) EPC. Depriving Shamrock of the property at issue had been disproportionate to the aim pursued and so unlawfully interfered with its right to that property.

The Court observed that, in this case, no third party's rights would be impaired by the retroactive effect of the ruling.

Ruling that, under Art. 64 EPC, the patent had full effect in Belgium because, and from the date (21 September 2005) that, the EPO had granted it, the Court ordered that the entry that it was void be deleted from the Belgian patent register.

Editor's note: As of 1 January 2017, it has no longer been necessary in Belgium to file a translation of the specification of a European patent granted in English, this requirement having been abolished by a law of 29 June 2016 amending various provisions of economic law.

FR France

Paris District Court, 14 April 2016 (15/06549) – Piaggio v Peugeot Motocycles (pre-trial case-management order)

Keywords: institutional matters – stay of national proceedings optional – exercise of discretion

Italian company Piaggio sued French company Peugeot Motocycles for infringement of four European patents, including EP 1 635 234 entitled "Electronic control system for operating groups of a vehicle". At the pre-trial stage, Peugeot filed a preliminary motion to stay all of Piaggio's claims pending a final, unappealable decision from the EPO on oppositions filed against EP 1 635 234.

The judge handling the pre-trial management of the case noted that there was no obligation to stay an action for infringement of a European patent pending the outcome of opposition proceedings before the EPO. It was a matter for courts to decide at their discretion, having regard to what was appropriate to ensure the proper administration of justice. While it was not for courts to establish whether an opposition or appeal was indeed well founded, before staying the infringement proceedings they at least had to make sure that the motion to do so was not a mere delaying tactic and that the basis for the opposition or appeal was sound.

Assessing the case at hand, the judge noted that two oppositions had been filed against EP 1 635 234, by Japanese company Yamaha and, in July 2015, by Peugeot Motocycles, which, she ruled, had rightly argued that its decision to contest the patent's validity before the EPO, and not in France, was justified primarily because proceedings were pending against it in at least two countries: France and Italy. In October 2015, Peugeot had asked for the EPO proceedings to be expedited, which should have led to a decision in the first quarter of 2017; in December 2015, Piaggio had asked for an extension to the term for reply. Peugeot could therefore not be accused of either negligence in its opposition or of stalling for time. Moreover, it had disclosed its and Yamaha's opposition cases in its written submissions to the Court, including supplying the supporting evidence. The judge summarised three of the four grounds for opposition, noting for instance alleged extension beyond the content of the application as filed on the basis that "gearcase" in the original description had been replaced by "controller", and alleged lack of novelty, for which the judge held the most persuasive argument to be that Piaggio had previously filed an almost identical European application – naming the same inventor – which belonged to the prior art. The judge concluded that, given these arguments and Peugeot's submissions, the oppositions were sufficiently sound and not a delaying tactic, and ordered that the proceedings be stayed pending the EPO opposition-division decision. The parties having agreed to regard the four patents as interrelated, the stay applied to the entire case.

Editor's note: For another recent case where staying the infringement proceedings pending the opposition appeal proceedings decision was optional, see Paris District Court of 17 November 2016 – Novartis v Biogaran, referring to parallel proceedings (PIBD 2017, No. 1064, III, p.33); for a case where a stay was rejected on the ground that there was no sound basis for opposition, see Paris District Court of 17 April 2015 (PIBD 2015, No. 1028, III, p. 363). For a case where a stay was mandatory under both Art. L 614-15 (alleged infringement of a French patent while a European application claiming its priority and designating France was pending) and Art. L 615-4, last paragraph (pending patent application) of the French Intellectual Property Code, see Paris District Court of 24 November 2016 (RG 15/15648) – NCAM Technologies v Solidanim (pre-trial case-management order).

GB United Kingdom

Patents Court, 2 October 2015 – Fontem Holdings 1BV & Anor v Ten Motives Limited & Ors [2015] EWHC 2752 (Pat)

Keywords: institutional matters – stay of national proceedings – opposition pending before the EPO

The case concerned an application by 10 Motives for defendants' summary judgment and, in the alternative, a stay of Fontem’s claim in respect of its patent, which taught inter alia an atomiser structure that improves aerosol effects and atomising efficiency in electronic cigarettes.

On the requested stay in the light of pending EPO opposition proceedings, the court referred to the principles established in IPCOM GmbH v HTC Europe Co Limited [2013] EWCA Civ 1496 (for a summary of this judgment see third edition "Case Law from the Contracting States to the EPC" (2011-2014), supplementary publication – OJ 2/2015, p.170). The essential point was that the discretion to grant a stay must be exercised to achieve a balance of justice between the parties having regard to all the relevant circumstances of the case: and that was always the ultimate question. That said, if there were no other factors, a stay of national proceedings pending the determination of concurrent proceedings in the EPO concerning the validity of the patent was the default option.

Norris J based his decision on a number of factors. These included the length of the stay, with opposition proceedings at the EPO unlikely to be concluded before 2019. Furthermore, there was the likely low risk of wasted costs if proceedings went ahead. He also weighed the effect of stays in very fast moving commercial markets, such as e-cigarettes.

The market for e-cigarettes was dynamic and developing very rapidly. The major participants were using what Fontem said was its patented technology. The patent could contain the key intellectual property concerning atomisers. It was desirable to achieve as much commercial certainty as possible for as many market participants as possible as early as possible. The contest at that moment was all about establishing market share for particular brands. Once a brand established a market share (even with an infringing product) it could introduce all sorts of new products. To preserve for 10 Motives a 35% share of the UK market by virtue of its having filed an opposition at the EPO whilst the other market participants fought similar (but not absolutely identical) issues out with Fontem in May 2016 would distort the market hugely.

In a rapidly developing market (i) the financial consequences of any wrongdoing should be assessed sooner rather than later (because the more delayed the exercise, the harder it became to disentangle the consequences of wrongdoing from market changes); and (ii) the more important it was to test whether 10 Motives' products infringed (because if they did not then 10 Motives could compete fully and might decide to abandon the opposition proceedings).

Weighing the competing considerations Norris J concluded that a stay ought to be refused, but without prejudice to the ability of 10 Motives to make a further application immediately before questions of relief were to be determined.

GB United Kingdom

Patents Court, 18 February 2016 – Eli Lilly and Company v Janssen Sciences Ireland UC (formerly Janssen Alzheimer Immunotherapy) [2016] EWHC 313 (Pat)

Keywords: institutional matters – stay of national proceedings – opposition pending before the EPO

Eli Lilly's claim was for revocation in respect of Janssen's European (UK) 2 305 282 divisional patent and a declaration of non-infringement. Janssen applied for a stay of the proceedings pending a decision on validity by the EPO.

The court applied the principles set out in IPCOM GmbH & Co KG v HTC Europe Co Ltd [2013] EWCA Civ 1496 (for a summary of this judgment, see the third edition of "Case Law from the Contracting States to the EPC" (2011-2014), supplementary publication – OJ 2/2015, p.170). Thus, if there were no other factors, a stay of the national proceedings was the default option. There was no purpose in pursuing two sets of proceedings simply because the Convention allowed for it.

The main issues arising from the application of the IPCOM factors in this case were:

(i) What were the relative likely timings of the English and EPO proceedings?

(ii) Was Eli Lilly prejudiced by significant commercial uncertainty if the English proceedings were stayed and it had to wait for the EPO proceedings to be finalised?

(iii) Were the undertakings offered by Janssen sufficient to reduce the commercial uncertainty faced by Eli Lilly to an acceptable level if a stay was granted?

(iv) Did the other facts in IPCOM as applied to the facts here point in favour or against the grant of a stay?

On the question of timing, Rose J considered that the advanced stage of the EPO proceedings pointed in favour of a stay. It was likely that the EPO decision on validity even at appellate level would be available before the result in the English proceedings. This was even though the EPO proceedings could be driven off course by, for example, requests for postponement by other opponents or remittal of further issues if Janssen's appeal was allowed in respect of the parent patent. Concerning the potential duplication of proceedings, the judge found that the cost of the English proceedings going ahead was not significant in light of the amount at stake commercially for both parties. Regarding commercial uncertainty, in the circumstances, Janssen's undertakings were insufficient as it would remain difficult for Eli Lilly to decide when to start the process of authorisation for its product solanezumab. There was considerable value for Eli Lilly in knowing as soon as possible whether solanezumab would infringe Janssen's patents if valid and also whether Janssen was likely to be able to rely on solanezumab to apply for a supplementary protection certificate. The further factor that a fully reasoned judgment of the English court considering validity and infringement together would provide an important tool for settlement of the parties' Europe-wide disputes was considered a neutral point, while the public interest in dispelling uncertainty about a therapy with the potential to be a blockbuster product weighed against granting a stay.

Balancing all points at issue, Rose J decided to dismiss Janssen's application for a stay. There was a chance that the EPO proceedings would not be determinative of all the issues between the parties. The infringement issues were important in this case, and it was better that the English proceedings, before the only forum in which the infringement issue could be decided, continue.

NL Netherlands

The Hague Regional Court of Appeal, 17 March 2015 – Doebros v Rijkswaterstaat

Keywords: institutional matters – stay of national proceedings – opposition pending before the EPO – exercise of discretion

On 30 October 2013, Doebros lodged an appeal against the Hague District Court's judgment of 31 July 2013 allowing a claim for revocation of the Netherlands part of its European patent for a fire extinguishing post (EP 1 224 954) brought by Rijkswaterstaat (the Netherlands government department responsible for public works and waterways), which – along with Ajax Chubb Varel B.V. – had also filed opposition to the patent's grant with the EPO.

In its first ground of appeal, Doebros contested the District Court's refusal to stay the revocation proceedings in view of the pending opposition proceedings before the EPO and reiterated its request that they be stayed on that basis. The Court first of all endorsed the District Court's observation that the power under Art. 83(4) of the Netherlands Patent Law to stay national proceedings pending the outcome of EPO opposition proceedings was discretionary. It then noted that the opposition proceedings in question were, more than two years later, still only at a preliminary stage: no oral proceedings had been scheduled and the opposition division had not yet issued a provisional opinion. In fact, nothing had happened since the hearing before the District Court and Doebros had not requested accelerated processing. Given that the opposition division's decision would be open to appeal to a technical board of appeal, it could still take a long time before a final decision on the patent's validity was taken. In any event, national courts were not bound by decisions of EPO opposition divisions or technical boards of appeal and had to form their own view as to whether a granted patent was valid. Given that the Court considered Doebros's patent invalid, it could see no reason to stay the proceedings.

See also Chapter B.1. State of the art.