In a decision of 3 June 2022, opposing NOVARTIS and BIOGARAN, the Tribunal Judiciaire de Paris accepted the admissibility of a request for provisional measures based on a European patent application. This solution, however surprising it may seem at first sight, could nevertheless be justified.

The decision under review is an order rendered in a case between NOVARTIS and BIOGARAN concerning a marketing authorization obtained by the latter for the active substance fingolimod used as a monotherapy for the treatment of very active forms of relapsing-remitting multiple sclerosis. The European patent application n° EP 2 959 894, which covers the said specialty, had been invoked by its proprietor (NOVARTIS) as the basis for its request for provisional measures, immediately after the EPO Board of Appeal had ordered the Examining Division to grant the patent on the basis of only one of the 11 claims submitted to the Office, even though the patent had not yet been granted. However, the Judge accepted the admissibility of such an action based on the European patent application, while considering that the single claim at issue was apparently neither new nor inventive so that interim measures were not justified.

This position seems, at first sight, surprising. The interpretation of Article L. 615-3 of the IPC questionable. While it is true that this text refers to “the rights conferred by the title“, it is also true that this title is, in principle, understood as the patent granted. Thus, Article L. 615-4 expressly provides that “the court hearing an infringement action based on a patent application shall stay the proceedings until the patent is granted“. The interpretation adopted could also contradict Article L. 614-9 of the same Code, which lists exhaustively the rights arising from the application and does not mention those provided for by Article L. 615-3.

However, on closer examination, the position adopted in the decision commented on could be consistent with the texts and logical, and not dangerous, provided that the applicant provides sufficient guarantees. Indeed, the patent right arises from the filing of the application. Thus, in the case of a European patent application, Article 67(1) of the EPC states that “as from its publication, the European patent application shall provisionally afford the applicant, in the Contracting States designated in the application, the protection provided for in Article 64“. Article 64 which states “the rights conferred by the patent”. In the light of these texts, the “rights conferred by the title“, referred to in Article L. 615-3 of the IPC, should include both the patent and the published application. All the more so since, if Article L. 614-9 provides for a stay of proceedings, it is only for the specific case of an infringement action (and not for provisional measures), and above all, it does not expressly refer to the “published” application, but only to “the application“. Moreover, as surprising as it may seem, the solution adopted by the commented decision is not new, in that it had already been adopted by the French case law. Moreover, the action for preliminary injunction tends to be similar to the action for infringement, as much from the point of view of its effects as of the conditions of its admissibility.


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7 comments

  1. An interesting decision, no doubt influenced by the decision of the board of appeal, ordering the examining division to grant a patent. While on the face of it, the ED does not have any flexibility to re-consider the application and not grant a patent the BoA decision has triggered the submission of third party observations, which the ED must also consider. Which has more weight – the BoA decision or Article 115 EPC?

  2. The wording of the claims is res judicata for the ED and cannot be challenged by the ED. See Art 111.
    ART 115 observations will have no influence whatsoever on the wording of the claim.
    I doubt that further prior art cited under Art 115 will find their way in the introductory part of the description as they cannot have any influe on the wording of a claim.
    It is most probable that the third parties having filed observations will become opponents.
    The the game starts anew as the OD will not be bound by the decision of the BA in examination.
    I am not sure that the decision of the court although correct in law was the wisest thing to do.

  3. The decision of the French Paris court regarding the admissibility of a request for preliminary injunction based on a European application is indeed surprising. But it should be considered in combination with the rejection of the request by the Paris court. It seems the objective for the court was to reject the request on the basis of a detailed analysis of a pre-filing Novartis public disclosure, and for that, the request had first to be found admissible.
    Third party observations under Article 115 submitted a few days ago, after the Paris Court’s decision, coming after numerous earlier observations, provide extensive background information. According to these observations, a similar situation took place in the Netherlands, with a decision of the Dutch court similar to that of the Paris court.
    All in all, this has generated the highly unusual situation in which national courts provide assessments of the patentability of a European pending application.

  4. Just recently, the German Federal Patent Court decided differently: BPatG, Urteil vom 25.02.2022, 3 Ni 23/20 (EP). http://juris.bundespatentgericht.de/cgi-bin/rechtsprechung/document.py?Gericht=bpatg&Art=en&sid=cc0b41fd31a8d228433ae479951b9c5f&nr=42907&pos=0&anz=736&Blank=1.pdf

    It held, that validity proceedings are inadmissible in a case, where the BoA instructed the OD to maintain the patent with a given set of claims. It argued, among other points, that the patent would lapse, if the necessary fees are not paid or the necessary translations are not provided (validity proceedings are only admissible after pending opposition proceedings).

    Of course, the case in Paris concerned infringement while the case at the BPatG concerned validity and there is the difference between examination and opposition… Still, one requires the other (infringement proceedings without the possibility for validity proceedings would be a case of gross injustice).

    1. @Fragender – it will be interesting to see if this decision is overturned by the BGH. In the recent past, the Sixth Senate has seen no problems with the admissability of a revocation action prior to the OD issuing its decision to maintain a patent after the BoA decision.

      1. It all depends on the prior art at stake.
        Should the opponent have found better prior art in appeal before the BA, it might not be admitted dur to the RPBA20.
        Late filings are possible in German practice, but not before a BA.

    2. How many times is the patent revoked due to lack of translation of the claims or lock of payment of the printing fee? Not a lo
      If the proprietor is neither paying the new printing fee nor filing the required translations, it means that the interest of proprietor for his patent has gone!

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