Court of Appeal of Paris, Decision of 1 July 2011, No. 10/16205, Teva Sante & Teva Pharmaceuticals Ltd, Le Directeur de L'INPI v. Eli Lilly & Co.

In this landmark case, the Court of Appeal of Paris ruled that the French Patent Office has jurisdiction and power to limit the French designation of a European patent.

Teva Sante & Teva Pharmaceuticals Ltd (Teva) sued Eli Lilly & Co. before the First Instance Court of Paris, seeking patent nullification for lack of patentable subject matter, lack of inventive step, lack of clarity, and extension beyond the scope of the application. Eli Lilly and its licensees counterclaimed patent infringement.

Parallel to the nullification/infringement proceedings, Eli Lilly filed a request with the French Patent Office (INPI) to limit only the French designation of its granted European patent, on the grounds of Article L.613-24 of the Intellectual Property Code[1]. INPI accepted the limitation.

Teva filed an appeal against this decision, claiming that Article L.613-24 of the Intellectual Property Code did not apply to the French designation of European patents but only to French patents. In this respect, Teva claimed that European Patents should only be limited centrally at the EPO.

The Court of Appeal of Paris did not agree with Teva's claims.

The court stated that even if Article L.613-24 of the Intellectual Property Code in combination with Article L.613-25 and Article L.614-12 (which respectively deal with the nullification of patents in general and with the nullification of French designations of European patents) does not specifically name French designations of European patents, it does not discriminate between French patents and French designations of European patents: "Nothing in these provisions restricts the owner's acknowledged right to limit the scope of its European patent either voluntarily or within a nullification action, by requiring it to limit its patent in all the States designated, whereas its title is only subject to nullification proceedings in a single one of these States."

Consequently, the Court of Appeal of Paris decided that Article L.613-24 of the French Intellectual Property Code applied equally to French designations of European patents and to French patents so that a voluntary limitation before the French Patent Office was open to owners of European patents designating France for limiting "only" the French designation of the same.

In light of the above, the Court of Appeal of Paris ruled that Teva did not have a legitimate interest on the basis of which to appeal the decision of the Director of the Patent Office.