Judgments of 14 April 2010 by the Paris Court of Appeal, division 5, 1st chamber1
Presiding judge:
Mr Pimoulle
Headword:
"Translation of European patents amended after opposition"
Articles:
Art. L614-7 of the French Intellectual Property Code; law No. 2007-1544 of 29 October 2007; Art. 65 EPC
Keyword:
"London Agreement – filing translations – transitional provisions"
Summary
On the same day, the Paris Court of Appeal handed down 24 identical judgments on the same point of law concerning the transitional provisions for applying the translation regime under the London Agreement to European patents in respect of which the mention of grant was published before 1 May 2008 but which were subsequently amended in opposition proceedings.
A number of European patents granted before 1 May 2008 had been amended following EPO opposition proceedings ending after that date, and their proprietors had provided INPI (French Patent Office) with a translation into French of the amended European patent effective in France.
INPI refused these translations on the grounds that since 1 May 2008 – the date on which, by the law of 29 October 2007, the London Agreement entered into force – France had dispensed with translation requirements for European patents.
The patent proprietors however argued that amended texts of European patents granted before the new law's entry into force were still subject to old Article L614-7 of the French Intellectual Property Code (CPI), and the translation requirements still applied.
The Appeal Court judge found against them: Article L614-7, first paragraph, CPI as amended by the law of 29 October 2007 was to be interpreted as dispensing immediately with all translation requirements, also for European patents in respect of which the mention of grant had been published before the Agreement's entry into force. The new rules concerned a procedural formality, not the substance of the patent right, and as such were applicable immediately.
Reasons for the decision (extracts)
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Unilever NV is the proprietor of European patent No. 1 278 687. The application was filed in English on 19 March 2001, and the mention of grant before opposition was published in the European Patent Bulletin of 25 May 2005. A French translation of the granted patent was filed with INPI on 30 June 2005. After opposition, the text of the patent was amended and mention of this published in the Bulletin of 6 August 2008.
On 5 September 2008, pursuant to old Article L614-7 CPI, Unilever supplied INPI with a translation of the patent as thus amended.
The INPI Director General refused to accept this translation, on the grounds that since 1 May 2008 France had dispensed with translation requirements under Article 65(1) EPC.
Unilever appealed against that decision, arguing that translations of amended texts of European patent granted before 1 May 2008 still had to be supplied; the Director General's refusal to accept one put its patent at risk of ceasing to have effect under Article L614-7 CPI as worded prior to the entry into force of the law of 29 October 2007.
In response, the INPI Director General maintained his position and held that the appeal should be dismissed.
The public prosecutor's office took the same line.
Under Article 65(1) EPC 1973, "Any contracting state may prescribe that if the text, in which the European Patent Office intends to grant a European patent or maintain a European patent as amended for that state, is not drawn up in one of its official languages, the applicant for or proprietor of the patent shall supply to its central industrial property office a translation of this text in one of its official languages …"
French law made use of that possibility in Article L614-7 CPI which, as worded prior to the law of 29 October 2007, provided that if the text in which the EPO granted a patent, or maintained it in amended form, was not in French, its proprietor had to supply INPI with a French translation, failing which the patent would have no effect in France.
But although Article 65(1) EPC 1973 enables contracting states to require translations, it also allows them not to. And whilst Article 1(1) in conjunction with Article 9 of the London Agreement (LA), in force in France since 1 May 2008, has specifically done away with translation requirements for European patents in respect of which the mention of grant was published in the European Patent Bulletin as from that date, by providing that "Any state party to this Agreement having an official language in common with one of the official languages of the European Patent Office shall dispense with the translation requirements" under Article 65(1) EPC, it does not exclude the option of dispensing with such requirements where the mention of grant was published before that date.
Indeed, that option is expressly foreseen in Article 1(4) LA: "Nothing in this Agreement shall be construed as restricting the right of the states party to this Agreement to dispense with any translation requirement ...".
In the light of the above provisions, Article L614-7, first paragraph, CPI, as amended by law No. 2007-1544 of 29 October 2007, which provides that the authentic text of a European patent or application is that of its language of proceedings before the EPO, is to be interpreted as dispensing immediately with all translation requirements, also for European patents in respect of which the mention of grant was published in the European Patent Bulletin before the said law's entry into force on 1 May 2008.
The new provisions mark a return to the basic principle, enshrined in the spirit of the EPC, that a patent is valid and protected in its language of filing, independently of any translation. They concern not the substance of the patent right but a procedural formality, namely the filing of a translation. Therefore, as the INPI Director General has rightly argued, the translation requirements for certain categories of patents no longer have any legal basis.
Nor does application of the new provisions call into question the right of third parties under Article L614-10 CPI, the wording of which is maintained in law No. 2007-1544 of 29 October 2007, to avail themselves, in case of litigation, of the European patent's French translation if its scope is narrower than in the text in the language of filing.
In view of the above and for the reasons stated, the appeal is dismissed.
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FR 1/10
1 Translation of the official text. The Official Journal editorial office has drafted the summary and abridged the judgment for publication.