NATIONAL JUDGES' PRESENTATIONS
FR France
Sylvie MANDEL - Court of Cassation judge - Alice PEZARD - Court of Cassation judge - Appeal No. A 10-24.282 - Judgment No. 604
In a judgment of 17 February 2012, the Court of Cassation, plenary assembly, decided that the authority of res judicata takes precedence over the loss of the legal basis for a verdict of guilty in an action for patent infringement (patent revoked): where an infringer has paid sums pursuant to an irrevocable finding that he is guilty of patent infringement, no action lies for the recovery of those sums on the ground of unjustified enrichment following the revocation of the patent.
The Court of Cassation and the trial judges dismissed the infringer's requests for the restitution of sums paid. The decision turned on the relationship between two opposing legal principles: the erga omnes effect of declaring a patent invalid, which was invoked as the ground of appeal, and the authority of res judicata.
Under Article 613-27, paragraph 1, of the Intellectual Property Code, a decision to revoke a patent has absolute effect, subject to opposition from third parties. Paragraph 2 of the same article specifies that decisions which become final are communicated to the director of the French Patent Office, the Institut national de la propriété industrielle (INPI), for entry in the national patent register. Thus all revocation decisions have absolute effect.
Pending actions for infringement will undoubtedly be declared unfounded if the patent in suit is revoked in the course of proceedings, allowing the infringer to resume use of the invention. The revocation of the patent however will not be retroactive in its effect and will not impact on compensation in the case of infringement.
It is true that the Court of Cassation had previously ruled that the revocation of a patent nullified it from the filing date of the application and that the procedure resulting in payment of damages was devoid of any legal basis (Commercial Division, 12 June 2007, Bulletin No. 158, appeal No. 05-14.548). However, that case is not comparable with the one in question here: the guilty verdict in the infringement action and the revocation of the patent were given in proceedings which, although different, were between the same parties and the procedure for fixing the amount of compensation for the injury resulting from the infringement was still pending when the patent was revoked.
Academic legal writing is very divided on this. Some advocate challenging a verdict having the authority of res judicata, while others suggest taking some account of the supervention of a new fact or the loss of legal basis. Under Article 55 of the Council Regulation (EC) of 26 February 2009 on the Community trade mark, the retroactive effect of the invalidity of a Community trade mark or a Community design may affect decisions on the infringement of that trade mark or design which have acquired the authority of a final decision, unless these decisions were enforced prior to the invalidity decision.
"The patent is presumed valid." As Advocate General Le Mesle pointed out to the plenary assembly, "what would be the point of this maxim if all the effects of a duly filed patent could be revoked at any given moment by a later (possibly even much later) judicial decision? Clearly, that would serve to severely undermine the patent, and even encourage the proprietors' competitors to pay little heed to his patent".