Counterclaim for revocation

A counterclaim for revocation is the riposte by which the defendant to a patent infringement action asks, in the same proceedings, for the revocation of the patent asserted against it. In France, it is brought before the Paris judicial court on the grounds of invalidity set out in Article L. 613-25 of the Intellectual Property Code and is not subject to any limitation period. Before the Unified Patent Court, it must be included in the statement of defence whenever the defence asserts that the patent is invalid, and its procedural fate depends on the choice made by the division seised between joinder and bifurcation.

Why the concept matters

The best defence to an infringement action is often an attack on the patent itself: a revoked patent is deemed never to have existed, and the infringement disappears with it. The counterclaim thus turns the infringement trial into a validity trial, shifts the burden of the debate to the prior art and inventive step, and changes each party’s calculation: the proprietor weighs the risk of losing its title against everyone, while the defendant gains negotiating leverage and, if it prevails, a victory that benefits the whole market.

The regime before the Paris judicial court

The counterclaim is made in the defendant’s written submissions during the proceedings and must be sufficiently connected to the main claim, which is always the case for the invalidity of the patent relied upon. The grounds of invalidity are those of Article L. 613-25: lack of patentability, insufficiency of disclosure, extension of subject matter beyond the application as filed, and extension of protection after limitation. Since the law of 22 May 2019, the revocation action is not subject to any limitation period. Revocation may be total or partial, confined to the claims affected, and the revocation decision, once final, has effect against all, subject to third-party opposition, and is then recorded in the national patent register.

The proprietor has a counter-move: limitation of its patent, requested from the French Patent Office, which allows it to narrow its claims to escape the prior art relied upon, including during the proceedings. The court then rules on the patent as limited. Where an opposition or a revocation action is pending before the European Patent Office or another court, the court may stay the proceedings, but is not obliged to do so.

The regime before the Unified Patent Court

Before the Court, a defendant asserting that the patent is invalid must, under Rule 25 of the Rules of Procedure, include a counterclaim for revocation in its statement of defence, lodged within three months of service of the statement of claim. The counterclaim sets out the grounds for revocation, which are those of Articles 138 and 139 of the European Patent Convention, together with the evidence and payment of the fee. The claimant replies within two months and may, within the same period, apply to amend the patent.

The local or regional division seised then chooses, under Article 33(3) of the Agreement, between three routes: deciding both the infringement action and the counterclaim itself, which is the dominant practice, referring the counterclaim to the central division and, at its discretion, proceeding with or staying the infringement action, known as bifurcation, or, with the agreement of the parties, referring the whole case to the central division. The Court’s decision on validity takes effect, for a classic European patent, in all contracting member states where the patent is in force and, for a unitary patent, across the whole unitary territory. A parallel opposition before the European Patent Office may justify a stay where a rapid decision is expected.

Useful distinctions

The counterclaim differs from the stand-alone revocation action, brought as a main claim by any interested person, in France before the Paris judicial court and, before the Court, before the central division. It differs from a mere invalidity defence, which does not exist as such in French law: a defendant wishing to set the patent aside must seek its revocation. Finally, it differs from the opposition before the European Patent Office, an administrative procedure confined to a period of nine months from grant, which may be pursued in parallel.

Key takeaways

For the defendant, the counterclaim requires a prior art search and a patentability analysis started as soon as the writ is received, because the deadline before the Court is short and the quality of the initial argument weighs on the whole trial. For the proprietor, it means assessing the strength of the patent before suing, preparing a fallback limitation and choosing the forum with full knowledge: revocation before the Court takes the patent away in eighteen states, whereas revocation in Paris affects only the French part. The infringement trial is, more often than not, won or lost on validity.

Sources

• French Intellectual Property Code, Article L. 613-25, grounds of invalidity
• French Intellectual Property Code, Article L. 615-8-1, no limitation period for revocation actions
• Agreement on a Unified Patent Court, Articles 33 and 65, and Rules of Procedure, Rules 25, 29, 30 and 37, official texts on the UPC website
• European Patent Convention, Article 138, grounds for revocation

Related terms

Revocation action · Patent infringement action · Patent limitation · UPC local and central divisions · Inventive step · Patent revocation actions · Defending against an infringement claim