WORKING SESSION
The Unified Patent Court
Headword
Judgment of the Court of Cassation
Commercial Division
Public session on Tuesday, 29 November 2011
Appeal No. 10-25277
Published in bulletin:
Annulment
President: Ms Favre
Judge-Rapporteur: Ms Mandel
Advocate General: Ms Batut
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 second limb of the sole ground of appeal,
having regard to Articles L. 411-4 and L. 615-17 of the Intellectual Property Code (hereinafter: "CPI"),
gives the following judgment:
As set out in the contested judgment, SEW-EURODRIVE GmbH & Co. KG filed a European patent application in German on 4 June 2002 and was granted European patent No. 1281883 by the European Patent Office (hereinafter: "EPO") on 14 January 2009. It wished to file a French translation of this patent with the French Patent Office (hereinafter: "INPI"), but its Director General refused to accept it.
The Paris Court of Appeal declared that it lacked competence to rule on SEW-EURODRIVE's appeal against the INPI Director General's decision, basing that declaration on its findings that, under the applicable provisions, the filing of translations of European patents no longer has any bearing on their grant or maintenance and that SEW-EURODRIVE's appeal was not aimed at the grant or maintenance of its patent.
In so ruling, even though the courts' jurisdiction is not limited to appeals against decisions of the INPI Director General which have a direct bearing on the grant or maintenance of industrial property rights, the Court of Appeal breached the CPI provisions cited above.
For the above reasons, the Court, observing that there is no need to examine the remainder of the ground of appeal:
- annuls the Paris Court of Appeal's judgment No. RG 09/20020 of 26 May 2010 in its entirety and, consequently, restores the case and the parties to their position prior to that judgment and refers them for a ruling to a different composition of the Paris Court of Appeal;
- orders the Treasury to bear the costs;
- refuses the request under Article 700 Civil Procedure Code;
- asks the Advocate General to have this judgment transmitted for attachment to the annulled judgment.
Judgment of the Commercial, Financial and Economic Division of the Court of Cassation, delivered by its President in open court on 29 November 2011.
ANNEX:
Ground of appeal submitted by SEW-EURODRIVE GmbH & Co. KG'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 declaration that it lacked competence to rule on SEW-EURODRIVE's appeal against the INPI Director General's decision of 20 May 2009 refusing to register the full French translation supplied on 9 February 2009 of European patent No. 1281883, and its referral of SEW-EURODRIVE to the competent appeal forum.
The Court of Appeal based the contested judgment on the following reasons:
Article L. 411-4 CPI provides that the courts of appeal have jurisdiction to hear appeals against decisions taken by the INPI Director General "when granting, refusing or maintaining industrial property rights", while Article R. 411-19 governs those courts' territorial jurisdiction to hear appeals against such decisions "with regard to the grant, refusal or maintenance of industrial property rights". It followed that, in order to determine whether the Court had jurisdiction to hear the appeal, as the State Counsel and SEW-EURODRIVE had claimed, or not, as INPI asserted, it had to be established whether the decision to refuse to publish the translation in the national patent register as requested by the patent proprietor (SEW-EURODRIVE) had been taken "when granting" or "with regard to the grant". SEW-EURODRIVE had conceded (page 4, paragraphs 3 and 4 of its finals pleadings) that the provisions of Article L. 614-7 et seq. CPI referring to the need for a French translation had been abolished by the Law of 17 (in fact: 29) October 2007 authorising ratification of the London Agreement, so that a translation no longer had to be supplied for a European patent to be valid in France with effect from publication of the mention of its grant. Under Article 65(1) of the European Patent Convention 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 the Law of 29 October 2007, had provided that if the text in which the EPO granted a 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. Those provisions had thus established that the effects of a granted patent in France depended directly and necessarily on the supply of a French translation. 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. Article 1(1) in conjunction with Article 9 of the London Agreement, in force in France from 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, by providing that "Any State party to this Agreement having an official language in common with one of the official languages of the European Patent Office shall dispense with the translation requirements" provided for in Article 65(1) EPC. Article L. 614-7, first paragraph, CPI, as amended by Law No. 2007-1544, which entered into force on 1 May 2008, now provides that the authentic text of a European patent or application is that of its language of proceedings before the EPO. 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. They did not concern the substance of the patent right, so that, as the INPI Director General had rightly contended, the translation requirements for certain categories of patents no longer had any legal basis. Their entry into force had removed any link between the supply of a translation and the grant, refusal or maintenance of industrial property rights for the purposes of the provisions in which those terms were linked to the jurisdiction of the courts of appeal to hear appeals concerning those matters. Indeed, SEW-EURODRIVE itself wished its request that INPI be ordered to register its patent translation to be understood not as a means of obtaining the patent's grant, contesting its refusal or ensuring its maintenance, but solely as a measure promoting a better understanding of the invention and preventing infringement by third parties acting in good faith. That was why it had expressly cited the INPI task of centralising and disseminating all information needed to protect innovations, set out in the first indent of Article L. 411-1, No. 1, CPI, rather than that defined in the second indent, which relates to "receipt and examination of applications for industrial property rights …, the grant or registration of such rights and supervision of their maintenance". It followed from the above that the contested decision did not fall within the scope of Article L. 411-4 CPI and the INPI Director General was therefore right in asserting that the Court was not competent to hear SEW-EURODRIVE's appeal. Accordingly, the Court had to declare that it lacked competence and refer the appellant to the competent forum.
SEW-EURODRIVE contests the Court of Appeal's ruling on the ground that:
According to Article L. 411-4 CPI, the courts of appeal have jurisdiction to hear appeals against decisions taken by the INPI Director General when granting, refusing or maintaining industrial property rights. This confers on them general competence to rule on appeals against decisions of the INPI Director concerning industrial property rights. Therefore, in declaring that it lacked competence to rule on the appeal against the INPI Director's decision to refuse to register the full translation of European patent No. 1281833, even though that decision related precisely to an industrial property right and had been issued at the end of the related grant procedure, and so "when" granting a patent within the above meaning, the Court of Appeal failed duly to exercise its powers in breach of Article L. 411-4 CPI.
In any event, the jurisdiction of the courts of appeal is not limited to hearing actions against decisions having a direct bearing on the grant or maintenance of industrial property rights. Therefore, in basing its declaration that it lacked competence to rule on the appeal against the INPI Director General's decision refusing to register the translation of European patent No. 1281833 on the fact that, since entry into force of the London Agreement and Article L. 614-7 CPI as amended by Law No. 2007-1544 of 29 October 2007, the supply of a translation is no longer relevant for the grant or maintenance of a patent, and that SEW-EURODRIVE was not seeking to obtain the grant, contest the refusal or ensure maintenance of its patent, the Court of Appeal ruled on irrelevant grounds in breach of Article L. 411-4 CPI.
Abstract
Publication:
Contested decision: judgment of Paris Court of Appeal of 26 May 2010
Keywords and summary: JURISDICTION - Jurisdiction ratione materiae - Court of Appeal - French Patent Office (INPI) - Director General's decision - Direct bearing on industrial property rights - Whether needed (no)
Jurisdiction under Articles L. 411-4 and L. 615-17 CPI is not limited to hearing actions against decisions of INPI's Director General which have a direct bearing on the grant or maintenance of industrial property rights.
Those articles are therefore infringed where a court of appeal declares that it lacks competence to hear an appeal against a decision of INPI's Director General refusing to accept the French translation of the description of a European patent resulting from an application filed in one of the EPO's other two official languages.
JURISDICTION - Jurisdiction ratione materiae - Court of Appeal - French Patent Office (INPI) - Director General's decision - Supply of patent translation
Provisions applied:
Articles L. 411-4 and L. 615-17 CPI