Patent assignment not entered in the register: the lesson of the Sony ruling
A patent assigned, a saisie-contrefaçon authorised, an action held inadmissible. The judgment handed down by the Commercial Chamber of the Cour de cassation on 24 April 2024 settles a point of pure procedure that nonetheless decides the fate of entire cases: the entry of the assignment in the national patent register.
The facts, in three dates
Three brevets européens designating France, filed in 1997 and 2001, protected features of the controller of a games console. Title to those patents was transferred through a demerger carried out under Japanese law and completed on 1 April 2010. The transfer was entered in the national patent register only on 28 June 2018. In between, on 14 December 2016, the assignee had obtained authorisation to carry out a saisie-contrefaçon at a competitor's premises, and then brought an infringement action.
The rule restated: no entry, no action
Article L. 613-9, first paragraph, of the French Intellectual Property Code makes the enforceability against third parties of instruments transferring the rights attached to a patent subject to their entry in the register kept by theINPI. The Court infers that, for as long as the transfer has not been entered, the successor in title cannot rely on the rights arising from the instrument and therefore has no standing to sue for infringement. This is not a question of substance, it is an objection to admissibility, and it may be raised at any time.
The correction made: regularisation covers the past
The Court of Appeal had held that regularisation in the course of proceedings operated only for acts committed after the entry. The Cour de cassation set that aside. On a combined application of Articles L. 613-9 and L. 615-2 of the Intellectual Property Code and Article 126 of the Code of Civil Procedure, the assignee becomes, as from the entry, entitled to sue for acts committed since the transfer, and even for acts predating the transfer where the deed of cession so provides.
Two practical consequences follow. A late entry does not destroy the case, it repairs it. And it is the drafting of the contrat de cession that decides access to acts predating the transfer, a point settled at the time of the transaction and not at the time of the writ.
A pragmatic solution, but a shaky one in logic
The construction calls for one objection. If the right is not enforceable against third parties before the entry, it is hard to see how regularisation can reach acts performed at a time when, on that very premise, the patent was not enforceable against the alleged infringer. The outcome is fair, the logic less so.
The way out is not to correct the regularisation, it is to reconsider what the publicity of the register protects. Entry serves to resolve conflicts between successive acquirers of the same patent, not to confer immunity on a party working the invention without authorisation. Read in that way, the absence of entry should not deprive the assignee of its action against the infringer, and the contradiction disappears.
What foreign groups should take from it
The trap closed somewhere other than where it was expected. The applicant was held liable not for acting without an entry, but for failing to disclose the assignment in its request. A measure obtained without an adversarial hearing requires that everything bearing on the applicant's standing be put before the judge, including an assignment not yet entered in the register.
Three reflexes follow. Before any action in France, check the entry of every link in the chain of title, in particular after foreign restructurings, mergers, demergers and partial business transfers, which move patents without anyone giving it a thought. In the deed of assignment, expressly provide for the transfer of the right to sue for earlier acts, and deal in the same way with existing licences and with any copropriété . In the request for a saisie, produce the chain of title and keep nothing back.
Before the Unified Patent Court, Article 47 of the Agreement reserves the action to the patent proprietor and, subject to prior notice, to the exclusive licensee. The French formality of entry in the register has no counterpart there, but proving title remains the first hurdle to clear, and it is prepared on the same documentary basis as a French saisie.
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This article is an updated adaptation of an analysis by Matthieu Dhenne originally published on Kluwer Patent Blog on 2 October 2024: Sony judgment of the Cour de cassation of 24 April 2024. Official source: Cour de cassation, Commercial Chamber, 24 April 2024, appeal no. 22-22.999, published in the bulletin, ECLI:FR:CCASS:2024:CO00199.