Revocation action

An invalidity action seeks to have an industrial property right declared invalid, in whole or in part. For patents, the appropriate English term is generally a revocation action. The applicable grounds and procedure depend on the right and the forum.

Principle

The grant or registration of a right does not prevent a subsequent challenge to its validity. A challenge may be brought as a standalone action or by counterclaim in existing proceedings. Time limits must be checked for the relevant right and jurisdiction; in France, Article L. 615-8-1 of the Intellectual Property Code provides that patent revocation actions are not subject to a limitation period.

Bringing the challenge

A claimant must identify the legal grounds on which the right is challenged and the supporting facts and evidence. The competent court depends on the nature of the right and the governing rules. Administrative opposition or invalidity proceedings may also be available before the relevant intellectual property office.

Consequences

Revocation or invalidity can affect the right itself, pending infringement litigation and the contractual arrangements built around it. The implications for licences and royalties require separate analysis rather than an assumption that all payments are automatically recoverable. Technical evidence and the precise formulation of the grounds are often decisive.

Grounds for revocation of a patent

Article L. 613-25 of the French Intellectual Property Code identifies the grounds for revoking a French patent, including lack of patentability, insufficient disclosure, added subject matter and extension of protection. For European patents, Article 138 EPC governs revocation grounds and also addresses lack of entitlement under Article 60(1). Where a ground affects only part of the patent, limitation and partial revocation must be considered.

Choosing the forum

The Paris Judicial Court has exclusive jurisdiction over patent proceedings within the French national court system. Before the UPC, standalone revocation actions generally fall to the Central Division, subject to Article 33 UPCA. Where revocation is counterclaimed in an infringement action, the Local or Regional Division has the procedural options set out in Article 33(3), including dealing with both claims or referring the counterclaim to the Central Division.

Opposition before the EPO is available within nine months of publication of the mention of grant. Its timing, territorial effects, procedural framework and likely costs should be compared with litigation.

Practical significance

Revocation is not merely a defence confined to the parties: its effects can extend beyond the individual dispute. The choice between opposition, a standalone action and a counterclaim should reflect the timetable, the territories concerned and the commercial objective.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.