COURT OF APPEAL OF PARIS, DECISION OF 30 MARCH 2011, TEISSEIRE FRANCE S.A.S. & LE DIRECTEUR DE L'INPI V. LA SOCIETE ROUTIN S.A., NO. 10/10045

The Court of Appeal of Paris rendered one of its first decisions regarding the admissibility of a third party appeal against the decision of the Director of the French Patent Office to limit a French patent further to the voluntarily request of its owner.

Routin SA sued Teisseire France SAS (Teisseire) for patent infringement before the First Instance Court of Paris. In counterclaim, Teisseire requested the nullification of the patent (for lack of novelty, inventive step and insufficiency of disclosure).

While the infringement / revocation proceedings on the merits were pending before the First Instance Court, Routin filed a request before the Patent Office seeking limitation of its patent, on the grounds of Article L.613-24 of the Intellectual Property Code1. The limitation was granted by the Patent Office, thus strengthening the patent vis-à-vis the prior art, while limiting its scope.

Knowing that it would be easier to nullify the initial broader patent, Teisseire filed an appeal against the decision of the Director of the Patent Office to accept the limitation and claimed that the limitation was not a real limitation and did in fact result in an undue extension of the scope of the patent.

However, the Court of Appeal of Paris ruled that such an appeal was not admissible. To reach this conclusion, the court took into account two findings.

Firstly, the judges indicated that according to Article L.613-25 d) of the Intellectual Property Code, "a patent shall be revoked by court decision [...] if, after the limitation, the scope of protection conferred by the patent has been extended." The judges held that this provision means that the question of the validity of the limitation (i.e. "Is there or is there not an actual limitation?") can only be decided by a court ruling on the merits on a claim for revocation of the patent (either as a main claim or as a counterclaim) brought before the First Instance Court of Paris, and then possibly on appeal before the Court of Appeal of Paris - but not in the course of an appeal made against an administrative decision of the Director of the Patent Office to accept the limitation.

Secondly, the judges also said that Teisseire did not prove that the decision of the Director of the Patent Office to accept the limitation requested by Routin would be harmful to them.

The court explained that if the limitation was in fact unduly extending the scope of the patent, Teisseire could seek its nullification on the merits in the course of the pending infringement / revocation proceedings.

Therefore the Court of Appeal of Paris ruled that Teisseire did not have a legitimate interest on the basis of which to appeal the decision of the Director of the Patent Office.

These findings regarding a national French patent should apply similarly to French designations of European patents.