Paris: the Center of patent litigation in Europe

1

• Paris the  Center  of patent litigation in
  Europe?
• Christian NGUYEN VAN YEN
• Chair of CNCPI International Relations Committee
• Managing Partner, Marks Clerk France

2
Agenda

• Electing venue
• Collecting evidence
• Discussing validity reasoning on inventive step
• Discussing infringement beyond litteral
  infringement?
• Take away

3
Electing venue

• The legal framework
• Brussels Convention -gt Regulation 44/2001
• Art 6-1 place of business of one of the
  defendants
• Art 5-3 place of the harmful event
• Art 22-4 patent validity can only be decided by
  national courts
• Art 27 and lis pendens and related actions
• A court second seized must stay the proceedings
  until it has been decided upon competence of the
  court first seized
• Attacking
• The spider in the web
• ECJ seems to have stricken a blow to the spider
  strategy
• Defending
• The Italian torpedoe

4
Electing venue
5
Collecting evidence

• England and Wales
• Disclosure (ie discovery)
• Expert witness cross-examination
• Germany
• Mostly written proceedings
• France
• Saisie-contrefaçon
• Experts

6
Discussing validity reasoning on inventive step

• The standard problem solution approach is the
  preferred test of German and French Courts
• What is the objective technical problem solved by
  the differences between the invention and the
  closest prior art?
• Would this closest prior art have prompted the
  man skilled in the art to modify this art to
  solve the objective technical problem in a way
  which would fall within the scope of the claims
  of the patent in suit?
• There might be some nuances in applying the test
• French courts are less dogmatic in defining the
   objective technical problem  and can find more
  easily patentable subject matter in Computer
  Implemented business method inventions

7
Discussing validity reasoning on inventive step

• The UK Courts apply a different test (from
  Windsurfing Int vs Tabur Marine)
• What is the inventive concept?
• Consider the man skilled in the art with his
  common general knowledge
• Distinguish the differences with the prior art
• Decide if these differences were obvious for the
  man skilled in the art
• Even if the test is not very different
• There is a systematic reference to the common
  general knowledge
• The result has proven to be a higher standard of
  non obviousness in the UK

8
Discussing infringement beyond litteral
infringement?

• Judges in all member States are normally bound by
  Art 69 EPC and the Protocol on Interpretation
• The specification and the drawings can be called
  in to interpret the claims
• This interpretation should not lead to a too
  narrow construction based on a litteral reading
  of the claim (the UK way) or a too broad
  construction where claim wording has little
  importance (the German way)
• EPC2000 has explicitly accepted the notion of
  equivalent
• But the Diplomatic Conference could not agree on
  a common definition of equivalents

9
Discussing infringement beyond litteral
infringement?

• Before EPC2000, UK judges have always been very
  reluctant to accept the notion of equivalent
• Justice JACOB recently declared that the patent
  world would be better off without the doctrine of
  equivalents which creates a lot of uncertainty
  for third parties
• They prefered to apply a purposive construction
  of claims to analyse litteral infringement - Cf
  the 3 Catnic or Improver (Epilady) questions
• Same material effect
• Similarity obvious at the date of publication
• Language of the claim not obviously meaning that
  strict compliance is an essential requirement

10
Discussing infringement beyond litteral
infringement?

• German judges have always accepted a broad notion
  of equivalence, but the recent trend of BGH is to
  come closer to the UK approach
• The first two questions are the same
• Same material effect , this similarity being
  obvious
• The third is less stringent
• Is the variant an equivalent solution?
• French judges have a different approach
• First question is the same
• Same function same material effect similar
  result
• No obviousness of similarity test
• Novelty of the function gt Equivalent
• An example of divergent decisions
• Müller vs Hilti re EP 0 319 521 (Pipe clamp)

11
Take away

• Navigating through the various procedural and
  substantive laws in the EU can be complex
• In general terms
• DE tends to be pro patent but complex (Validity
  and infringement are separate actions) and costly
• GB is more on the defendant side and very costly
• FR tends to be a jurisdiction where a balance is
  kept between the interests of the patentee and
  third parties
• Cost efficient way to collect evidence and
  conduct proceedings
• There is a need for more harmonisation
• But it will take time and in the meantime
  professionals in the EU are here to advise their
  clients on the best options to optimise
  management of their case

12

• Any question?

Christian NGUYEN VAN YEN Managing Director, CPI,
EPA Tél [phone] Mail
cnguyen_at_marks-clerk.com