An International Guide to
Patent Case Management for Judges

13.5.3 European Patent Convention

The European Patent Convention (EPC) sets forth the legal framework governing European patents.

Article 2(2) of the EPC specifies that a European patent, once granted, is subject to the same regulations and effects as a national patent, contingent upon the provisions outlined in the EPC. Consequently, the French part of a European patent will be subject to the same regulations as a French patent, unless the EPC stipulates otherwise.

For example, in matters of validity (Articles 52 et seq.), extent of protection (Article 69 of the EPC and its interpretative protocol), or revocation (Article 138), national courts must apply the provisions of the EPC directly. The objective is to standardize the interpretation of patents before national courts. However, the taking of evidence, title, infringement and remedies are dealt with under national law (Article 64(3)).

13.5.3.1 General overview of the interrelationship between proceedings before EPO and national proceedings

Article 99(2) of the EPC states that “the opposition shall apply to the European patent in all the Contracting States in which that patent has effect.” Consequently, when an opposition is filed with the EPO against a European or unitary patent, the decision taken at the conclusion of the procedure (revocation, maintenance or limitation of the patent) will automatically and uniformly apply in all the Contracting States designated by that patent, in particular and where applicable in France. In the event of a patent revocation, the patent will be considered as having had no effect in the countries concerned.

In accordance with Article 139(3) of the EPC, the French legislature has chosen to implement a distinct cumulative regime for unitary patents and conventional European patents (see Section 13.2.1.4).

The grant of a European patent (subject to an opt-out) and the absence of opposition, or its maintenance as granted following opposition proceedings before the EPO, also have consequences for any corresponding French patent that covers the same invention. The French patent is granted to the same inventor or their successor in title and must share the same filing or priority date (these three conditions being cumulative).

According to Article L. 614-13 of the IPC, the French patent is rendered ineffective in this case, and the European patent supplants it for all claims that are common to both patents. This exception is not applicable if the European patent remains exclusively within the jurisdiction of the UPC and is not subject to an opt-out, as outlined in Article L. 614-13(II).

That substitution takes effect in one of three instances: (i) as of the date on which the opposition period expires without an opposition having been filed; (ii) as of the date on which the opposition proceedings are closed; or (iii) as of the opt-out, if the latter occurs after the two preceding dates.

Where the European patent is maintained in an amended form, such that some of its claims differ from their French equivalents, the claims of the French patent and the amended European patent may also coexist, including in the event of an opt-out.

13.5.3.2 Rules of interpretation by the national court and coordination with the case law of the EPO Boards of Appeal

While not bound by the case law of the EPO Boards of Appeal,⁴⁴³ French courts may nevertheless adhere to the principles derived from it. For instance, when evaluating the inventive step of a patent, judges may draw inspiration – with or without express reference – from EPO standards, particularly the so-called “problem-solution” approach, which serves as its standard test for the inventive step, when requested by the parties involved.

This approach is consistent with the objective of convergence in the interpretation of common legal texts, as established by the Court of Cassation in its ruling of August 30, 2023.⁴⁴⁴

13.5.3.3 Effects of proceedings before EPO on a national dispute

In France, an infringement action may be based on a patent application, including a European patent application that designates France (subject to translation requirements, see Articles 67 of the EPC and L. 614-9 of the IPC). In such cases, Article L. 615-4 of the IPC stipulates that the court must stay proceedings until the patent is granted.

A European patent that is subject to opposition proceedings before the EPO could be revoked or amended by the Office. That, in turn, could result in a conviction for infringement being issued for a title that no longer exists or the scope of which has changed. Thus, where an infringement action is initiated before a national court in the case of a European patent for which such proceedings are pending, the presiding judge must determine whether the national action should proceed or whether it would be prudent to stay proceedings until the opposition has been resolved.

Under French law, judges are not obligated to stay proceedings in such cases. The determination of whether to exercise such discretion rests with the presiding judge, who must assess, in light of the particulars of the case and with a view to the effective administration of justice, the suitability of such an action.

The aforementioned regulation pertaining to the automatic stay of patent applications (Article L. 615-4 of the IPC) does not apply to European patents that have already been granted, or to opposition proceedings relating to them.

Two distinct approaches have emerged in French case law with regard to European patents that have been granted and are subject to opposition.

In the first category of cases, the court grants or denies a stay following an examination of the particular circumstances of the case. For instance, the stay is granted if the opposition arguments appear prima facie serious or if the proceedings before the EPO are sufficiently advanced. Conversely, the stay is denied when the court, after a summary examination, finds that the seriousness of the newly presented arguments and documents relating to the prior art in the opposition proceedings is not sufficiently substantiated.⁴⁴⁵ Alternatively, the stay is denied when the proceedings before the EPO have already been pending for three years, so that the resolution of the dispute cannot be further delayed.⁴⁴⁶

In the second category, the decision regarding the stay is made upon a more abstract assessment, or even a position of principle (e.g., because opposition proceedings before EPO are ongoing and therefore cast doubt on the validity of the patent, or because the judge considers that it is not their place to prejudge their outcome, which perception could be conveyed by the order of a stay).

If a stay is ordered, one of the parties may petition for its revocation and the resumption of proceedings. The judge may also revoke the stay. For instance, a stay that was initially ordered at the commencement of opposition proceedings may be subject to a request for revocation following a decision by the opposition division in favor of the patentee, even if the stay was initially ordered to remain in effect until a final decision by the EPO.