NATIONAL JUDGES' PRESENTATIONS
FR France
FR France - Sophie DARBOIS - Conseiller [judge] at the Cour d'appel in Paris - Recent developments in European and national patent law and case law
Decision handed down by the Paris Court of Appeal on 2 July 2010
Parties: TREVES vs RENAULT, SILAC, SIMOLDES PLASTICOS FRANCE
Facts
The company Treves, which designs, produces and markets products aimed primarily at the automobile industry, filed:
- a French patent application on 10 April 1995 which was published on 11 October 1996. The patent entitled "dispositif de montage de la tablette arrière d'un véhicule automobile" [device for mounting a motor vehicle rear window shelf] was granted on 20 June 1997
- a European patent application, which concerned the same invention, claimed the priority of the French application and designated France, on 5 April 1996. This patent was granted on 29 December 1999.
Treves did not pay the first renewal fee, due in France on 30 April 2000, for the French part of the European patent, or the fee plus additional fee. The head of INPI, the French Patent Office, went on to declare the forfeiture of the French part of the European patent in a decision issued on 31 December 2001. This decision was not appealed.
Treves brought an infringement case against the companies Silac and Simoldes, having discovered that they were producing rear window shelves and supports for same to fit out the Renault Clio car which Treves maintained copied the claims of its French patent.
Questions raised:
(1) Did the French patent continue to have effect in spite of the substitution of the European patent designating France and of the forfeiture of the rights to the French part owing to the non-payment of the fee?
(2) When did the forfeiture take effect?
Parties' arguments:
Treves submitted that it had forfeited its rights to the French part of the European patent on 30 April 2000 (and not on the day the decision was issued by the head of INPI), i.e. before the end of the time limit for opposition on 29 September 2000. It concluded that on 29 September 2000, the date on which the European patent should have substituted the French patent, the French part of the European patent had already lapsed owing to the non-payment of the renewal fee, so the French patent, for which renewal fees had been paid, continued to have effect.
The defendant companies argued that the French patent ceased to have effect on 29 September 2000 and the French part of the European patent was still in force on that date because the decision of the head of INPI did not take effect until 31 December 2001. They concluded that Treves could no longer take an infringement case based on its French patent.
Court's reasoning
The Court of Appeal held that:
(1) The Intellectual Property Code stipulated that there was a deadline for the payment of renewal fees but that they could be paid up to six months after that date, subject to payment of an additional fee. The head of INPI was therefore obliged to wait for this additional time limit to pass before deeming the renewal fee not to have been paid. No decision on forfeiture could be taken before this date.
(2) Treves could have paid the fee up to 30 October 2000, i.e. a date following the expiry of the time limit for opposition of the European patent. That time limit having expired on 29 September 2000, the European patent irrevocably substituted the French patent on that date, the latter ceasing to have effect on 29 September 2000.
(3) A decision had to be issued in respect of the forfeiture of rights to the French part of the European patent owing to non-payment of a fee; such forfeiture was not automatic. However, this decision took effect from the expiry of the time limit for fee payment, i.e. 30 April 2000 in the case at hand.
(4) Article L 614-13 of the Intellectual Property Code did not make express reference to forfeiture but the Court of Appeal referred to Article 50 of the Luxembourg Agreement of 15 December 1989 which states, firstly, that a Community patent will lapse if a renewal fee and any additional fee have not been paid in due time and, secondly, that the lapse of a Community patent for failure to pay a renewal fee and any additional fee within the due period will be deemed to have occurred on the date on which the renewal fee was due.
(5) Consequently, the European patent having substituted the French patent on 29 September 2000, prior to the rights to the French part of the European patent having been deemed to have been forfeited, Treves can no longer assert rights to its French patent.