In a decision of 3 June 2022, opposing NOVARTIS and BIOGARAN, the President of the Paris High Court accepted the admissibility of a request for a preliminary injunction based on a patent application.

This decision was rendered in a case relating to the GILENYA product, which includes fingolimod hydrochloride as active ingredient and is indicated as monotherapy for the treatment of very active forms of relapsing-remitting multiple sclerosis (MS). The European patent application EP 2 959 894, that covers the said speciality, was invoked by its proprietor (NOVARTIS AG) as the basis for a request for a preliminary injunction, immediately after the EPO Board of Appeal had ordered the Examining Division to grant the patent on the basis of one of the claims submitted by the applicant. While the request for a preliminary injunction was rejected, the Judge accepted its admissibility on the basis of the patent application.

Such a position may seem surprising if one looks at the letter of Article L. 615-3 of the French Intellectual Property Code (“IPC”). Indeed, this text requires the existence of a “title”, therefore a patent, and not only an application. This is all the more surprising as Article L. 614-9 of the same Code, which lists the rights arising from the application, does not mention Article L. 615-3.

However, the fact remains that, from a fundamental point of view, the patent right arises from the filing of the application and not from the grant, so that in this sense the decision rendered merely rectifies an imperfect text. This seems also justified as the action for preliminary injunction tends to be similar to the action for infringement, both in terms of its effects and the conditions governing its eligibility. The urgency also argues in favour of the possibility of invoking a patent application. The impossibility to request the revocation of a title or to file an opposition until the granting of the patent could nevertheless create difficulties. Let us hope that the Judges will be able to separate the wheat from the chaff among the preliminary injunctions that will be submitted to them.


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Kluwer IP Law
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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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