WORKING SESSION
The Unified Patent Court
Headword
Judgment of the Court of Cassation
Commercial Division
Public session on Wednesday, 2 November 2011
Appeal No. 10-23162
Published in bulletin:
Dismissal
President: Ms Favre
Judge-Rapporteur: Ms Mandel
Advocate General: Mr Mollard
Appellant's counsel: Mr Bertrand, SCP Hémery et Thomas-Raquin
Full text
FRENCH REPUBLIC
IN THE NAME OF THE FRENCH PEOPLE
THE COMMERCIAL DIVISION OF THE COURT OF CASSATION,
ruling on the sole ground of appeal, gives the following judgment:
As set out in the contested judgment (Paris Court of Appeal, 14 April 2010), Rolls-Royce plc is the proprietor of a European patent. It filed its patent application in English on 17 March 1997 and the mention of grant before opposition was published in the European Patent Bulletin of 23 April 2003. It supplied the French Patent Office (hereinafter: "INPI") with a French translation of the granted patent. After opposition proceedings, the patent was amended and the new text published in the Bulletin of 13 May 2009. Rolls-Royce therefore supplied INPI with a French translation of the amended patent on 20 August 2009, but its Director General refused to accept it.
In support of its challenge to the Court of Appeal's dismissal of its appeal against that decision, Rolls-Royce submits that, under Article L. 614-7 of the French Intellectual Property Code (hereinafter: "CPI"), as worded prior to the entry into force of Law No. 2007-1544 of 29 October 2007, non-French texts of European patents granted or maintained in amended form have effect in France only if the patent proprietor has supplied INPI with a translation in accordance with the requirements and by the deadline prescribed by decree. As amended by Article 10 of Law No. 2007-1544, Article L. 614-7 CPI now provides that the text of a European patent application or European patent is the authentic text, and there is no need to supply INPI with a translation. However, according to Article 10 of Law No. 2007-1544, the new provision applies from the entry into force of the Agreement of 17 October 2000 on the application of Article 65 EPC (hereinafter: "London Agreement"). Its ratification was authorised by Law No. 2007-1477 of 17 October 2007, which entered into force in France on 1 May 2008. Moreover, under Article 9 of the London Agreement, "This Agreement shall apply to European patents in respect of which the mention of grant is published in the European Patent Bulletin after the Agreement enters into force for the State concerned." Rolls-Royce contends that, since Article 10 of Law No. 2007-1544 states, without providing any other details, that the wording of Article L. 614-7 CPI is amended only "from entry into force of the [London] Agreement", it cannot have been intended to dispense with the translation requirement for European patents granted prior to 1 May 2008. By ruling, on the contrary, that the INPI Director General was right to refuse to accept the translation of the amended version of a European patent which, though published in the European Patent Bulletin after 1 May 2008, was granted prior to that date, the Court of Appeal thus infringed Article 10 of Law No. 2007-1544, Article 9 of the London Agreement and Law No. 2007-1477 authorising that agreement's ratification.
The Court, however, endorses the Court of Appeal's finding in the contested judgment that Article 1(1) of the London Agreement, which has been ratified by France, and Article 10 of Law No. 2007-1544 must be regarded as provisions having no bearing on the actual existence of European patent rights and, as such, are applicable with effect from 1 May 2008, the date of their entry into force, irrespective of whether the original text of the European patent was published before that date. The appeal is therefore unfounded.
FOR THE ABOVE REASONS, THE COURT:
- dismisses the appeal
- orders Rolls-Royce plc to pay the costs.
Judgment of the Commercial, Financial and Economic Division of the Court of Cassation, delivered by its President in open court on 2 November 2011.
ANNEX:
Ground of appeal submitted by Rolls-Royce's counsel, SCP Hémery et Thomas-Raquin, advocates with right of audience before the Council of State and the Court of Cassation
This appeal challenges the Court of Appeal's dismissal of Rolls-Royce's appeal against the Director General of INPI's decision of 3 September 2009 to refuse to accept the French translation of its European patent No. 0801230 as amended after opposition, the original version of which had been granted prior to 1 May 2008.
The Court of Appeal based the contested judgment on the following reasons:
Under Article 65(1) of the Convention on the Grant of European Patents of 5 October 1973 (hereinafter: " EPC 1973"), "Any Contracting State may prescribe that if the text, in which the European Patent Office intends to grant a European patent or maintain a European patent as amended for that State, is not drawn up in one of its official languages, the applicant for or proprietor of the patent shall supply to its central industrial property office a translation of this text in one of its official languages …". French law had made use of that possibility in Article L. 614-7 CPI, which, as worded prior to Law No. 2007-1544 of 29 October 2007, provided that if the text in which the European Patent Office (hereinafter: "EPO") granted a European patent, or maintained it in amended form, was not in French, its proprietor had to supply INPI with a French translation, failing which the patent would have no effect in France. However, although Article 65(1) EPC 1973, cited above, had enabled contracting states to require translations, it had to be found, by necessary implication, that they had not been obliged to do so. By providing that "Any state party to this Agreement having an official language in common with one of the official languages of the [EPO] shall dispense with the translation requirements" under Article 65(1) EPC, Article 1 in conjunction with Article 9 of the London Agreement, in force in France since 1 May 2008, had since made it compulsory to do away with translation requirements for European patents in respect of which the mention of grant was published in the European Patent Bulletin as from that date of entry into force, but that did not prevent states from choosing to dispense with such requirements where the mention of grant had been published before that date. Indeed, that option was expressly conferred in Article 1(4) of the London Agreement: "Nothing in this Agreement shall be construed as restricting the right of the states party to this Agreement to dispense with any translation requirement ...". In the light of the above provisions, Article L. 614-7, first paragraph, CPI, which, as amended by Law No. 2007-1544, provides that the authentic text of a European patent or application is that of its language of proceedings before the EPO, had to be interpreted as dispensing immediately with all translation requirements, also for European patents in respect of which the mention of grant was published in the European Patent Bulletin before the new law's entry into force on 1 May 2008. Indeed, the new provisions marked a return to the basic principle, enshrined in the spirit of the EPC, that a patent is valid and protected in its language of filing, independently of any translation. Since they concerned not the substance of the patent right but a procedural formality, namely the filing of a translation, they were immediately applicable. Therefore, the INPI Director General, supported by the State Counsel, had rightly argued that the translation requirements for certain categories of patents no longer had any legal basis. Nor did application of the new provisions call into question the right of third parties under Article L. 614-10 CPI, the wording of which had been maintained by Law No. 2007-1544, to avail themselves, in case of litigation, of the European patent's French translation if its scope is narrower than in the text in the language of filing (see contested judgment, end of p. 2 and p. 3).
Rolls-Royce contests the Court of Appeal's ruling on the ground that, under Article L. 614-7 CPI, as worded prior to entry into force of Law No. 2007-1544, the non-French text of a European patent granted or maintained in an amended form has effect in France only if the proprietor provides INPI with a translation in accordance with the requirements and by the deadline prescribed by decree. As amended by Article 10 of Law No. 2007-1544, Article L. 614-7 now provides that the text of a European patent application or European patent is the authentic text, and there is no need to provide INPI with a translation. However, according to Article 10 of Law No. 2007-1544, the new provision applies from entry into force of the London Agreement. Its ratification was authorised by Law No. 2007-1477 of 17 October 2007, which entered into force in France on 1 May 2008. Moreover, under Article 9 of the London Agreement, "This Agreement shall apply to European patents in respect of which the mention of grant is published in the European Patent Bulletin after the Agreement enters into force for the State concerned". Since Article 10 of Law No. 2007-1544 states, without providing any other details, that the wording of Article L. 614-7 CPI is amended only "from entry into force of the [London] Agreement", it cannot have been intended to dispense with the translation requirement for European patents granted prior to 1 May 2008. By ruling, on the contrary, that the INPI Director General was right to refuse to accept the translation of the amended version of a European patent which, though published in the European Patent Bulletin after 1 May 2008, was granted prior to that date, the Court of Appeal thus infringed Article 10 of Law No. 2007-1544, Article 9 of the London Agreement and Law No. 2007-1477 authorising that agreement's ratification.
Abstract
Publication:
Contested decision: judgment of Paris Court of Appeal of 14 April 2010
Keywords and summary: INDUSTRIAL PROPERTY - Patents - Application of international agreements - European patents - Effects in France - London Agreement of 17 October 2000 - Application ratione temporis
Article 1(1) of the London Agreement of 17 October 2000, which has been ratified by France, and Article 10 of the Law of 29 October 2007 must be regarded as provisions having no bearing on the actual existence of European patent rights and, as such, are applicable with effect from 1 May 2008, the date of their entry into force, irrespective of whether the original text of the European patent was published before that date.
Provisions applied:
Article 1(1) of the London Agreement of 17 October 2000; Article L. 614-7 of the Intellectual Property Code, as amended by Article 10 of the Law of 29 October 2007.