FRANCE Trends and Developments Contributed by: Denis Schertenleib, Marc Lauzeral and Célia Benmesbah, Schertenleib Avocats
Since Global Wheel, which is based in South Africa, is no longer in the litigation, there is still the question of the territorial jurisdiction of the French courts to hear alleged acts of infringe- ment committed outside French territory by a company which is not based in a member state. In addition, it should be noted that the Court excluded its jurisdiction regarding the assess- ment of the nullity of each national part of the European patent, which is in line with constant case law. Admissibility of the Assignee’s Action Registered During Proceedings and Compensation for Acts Committed Prior to Registration Court of Cassation, 24 April 2024, Case No 22-22.999, Sony Interactive Entertainment v Subsonic The Japanese corporation Sony Computer Entertainment filed three European patents des- ignating France, which protect various features of the controller for the “PlayStation” console, marketed by the Sony Group since 1994. Ownership of these patents was transferred to a new entity, Sony Computer Entertainment, whose rights were subsequently assumed by Sony Interactive Entertainment (Sony), follow- ing a name change. This transfer was registered in the National Pat- ent Register on 28 June 2018, and published on 13 August 2018. Before this registration, on 16 January 2017, Sony, as the patent owner, along with Sony Inter- active Entertainment Europe and Sony Interac- tive Entertainment France, which manage these patents in France, filed an infringement and unfair competition action against Subsonic.
The Court of Appeal held Sony inadmissible in its infringement action for all acts committed prior to 13 August 2018, the date on which the trans- fer of rights to these patents in favour of Sony was recorded in the National Patent Register. The Court of Cassation overturned the Court of Appeal’s decision. It ruled that the transferee has the right to bring an infringement action to seek compensation for the harm caused by acts committed since the transfer of propriety date. This may also apply to the harm caused by acts committed before the transfer if it is specified in the instrument transferring the rights. This decision, favourable to the licensee, may raise criticism since the alleged infringer could be held liable to the licensee for infringement acts prior to its registration in the National Patent Register, and thus, before this licence is public. Clinical Trials In 2024, further clarifications were provided regarding the impact of the disclosure of Phase I, II, or III clinical trials on the inventive step of a patent to which they are specifically related. Phase I Clinical Trials are Sufficient to Demonstrate the Lack of Inventive Step of a Dosage Patent in the Absence of Technical Prejudice Judicial Court of Paris, S.A.S. Sandoz v Bayer Intellectual Property GMBH, 28 March 2024, Case No 22/08612 Bayer Intellectual Property is the owner of a European patent covering the treatment of thromboembolic disorders using Rivaroxaban and its use in a once-daily administration via a fast-release tablet. The patent is set to expire on 19 January 2026.
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