Patent revocation actions

Why attack a patent. An invalid patent is an illegitimate barrier: revocation proceedings (art. L. 613-25 IPC, and for European patents art. 138 EPC) can clear a market, prepare a launch or neutralise the threat of litigation. Revocation has erga omnes effect (art. L. 613-27 IPC): it operates against everyone, not only against the parties.

The grounds of invalidity

Lack of novelty or of inventive step over the prior art, insufficiency of disclosure, added matter beyond the application as filed, and extension of the protection after grant. Each ground calls for its own method: prior-art searching (patent databases and technical literature), reconstruction of the state of the art at the filing date, and construction of the claims with the person skilled in the art as the compass.

Sur la plausibilité et la priorité, la solution française retenue dans l’affaire Apixaban prend le contre-pied de la décision britannique rendue dans la même affaire.

Choosing the right forum

Invalidity is argued before the Paris Judicial Court, before the UPC (revocation action), or before the EPO by way of opposition, within nine months of grant (art. 99 EPC): each with its own timetable, costs and territorial effects. The owner can respond by limiting its claims (art. L. 613-24 IPC, art. 105a EPC). We run these proceedings in attack and in defence alike, and it is precisely that dual practice which keeps our validity assessments realistic.

Who may sue, and within what time limit

An action for revocation is not subject to any limitation period (art. L. 615-8-1 of the Intellectual Property Code): an old patent remains open to attack, including after the title has expired where an interest survives, in particular in order to defeat a damages claim covering the past. Invalidity may also be raised by way of defence to an infringement action, without being confined by the ordinary limitation period.

The French administrative route

Since 1 April 2020, French patents whose mention of grant has been published from that date may be opposed before the INPI, within nine months of that publication (Ordinance no. 2020-116 of 12 February 2020). Utility certificates are excluded. That route is markedly cheaper than litigation, but it is confined within a short deadline and its outcome often shapes what follows: it is a decision to be taken in the weeks after the troublesome patent is granted, not when the dispute breaks out.

What the Unified Patent Court has changed

An action for revocation before the Juridiction unifiée has effect across all the Contracting Member States for which the European patent has effect (Article 65 of the Agreement). It therefore exposes the proprietor to centralised revocation, without waiting for the opening or the outcome of an opposition. That risk explains the massive recourse to theopt out during the transitional period, and it has to be measured before attacking: a revocation obtained in Paris counts for France alone, whereas a revocation obtained before the Unified Patent Court counts for the whole of the territory covered.

Building the attack

An action for revocation is worth no more than the prior art produced in support of it. The work begins with a broad documentary search, patent and non-patent literature alike, completed by reconstructing the common general knowledge of the skilled person at the priority date, and by examining the prosecution history, which often reveals the concessions made by the applicant. The timing of the attack is then set by the industrial project it is meant to serve: a launch, a fundraising, a licence renegotiation.

Is a patent blocking you? Let us assess how solid it is.

See also: Patent litigation et notre article Patent revocation in France.