THE SUPREME COURT ORDERS A COMPLETE, DETAILED EXAMINATION OF THE PRIMA FACIE VALIDITY OF THE PATENT INVOKED IN SUPPORT OF A REQUEST FOR A COUNTERFEIT SEIZURE
Supreme Court, 12 September 2014, Syral Belgium v. Roquette Frères, C.13.0232.N, available here.
TEXT AND CONTEXT
Section 1369bis/1 of the Belgian Judicial Code provides that the court ruling on a petition for a counterfeit seizure must examine the prima facie validity of the intellectual property right invoked.
In order to challenge this prima facie validity, defendants frequently cite cases in which the patent relied on has already been ruled to be void. These may be either first instance decisions that are not yet final (otherwise, were the patent to be finally set aside, it could not be founded on for a counterfeit seizure petition) or foreign decisions whose grounds the defendant argues must apply by analogy to the patent relied on in Belgium.
However, challenging the prima facie validity of a patent based on a decision from foreign court or that is not res iudicata is often no easy task. Based on the rule that issued patents are in principle to be considered valid, the Belgian courts often reject such arguments on the ground that a patent is to be considered valid until revoked by a final decision or, at least, one that is provisionally enforceable. Foreign decisions are often rejected outright by the court on the ground – correct in and of itself, though questionable as to its relevance – that they relate to foreign rights that are of no effect in Belgium.
BETWEEN THE LINES
In its judgment of 12 September 2014 (1) , the Supreme Court underlines the insufficiency of such grounds and urges courts to do a more substantial analysis of such situations.
a) Decisions that are not yet final
In the case in question, a French patent had been cited in support of a petition for a counterfeit seizure filed in Antwerp. The patent had been entirely revoked for want of novelty in a reasoned judgment handed down by Lille Tribunal de Grande Instance, which the defendant cited to challenge the patent’s prima facie validity. The patent holder himself merely cited the appeal filed against the first instance judgment and the appeal’s suspensive effect. Antwerp Court of Appeal accepted this reasoning and held that “the revocation is not (for the moment) of any legal effect and the patent holder can therefore continue to invoke the exclusive rights attaching to his French patent”. The Supreme Court rejected this analysis and held that section 1369bis/1 of the Judicial Code requires the court to take into account all the facts and circumstances cited by the parties in the context of the debate on the prima facie validity of the patent. Therefore, the court can take the patent into account even if it has been revoked by a decision against which an appeal is pending, thus suspending the effects of the initial judgment. However, if there is a serious challenge to the validity of the patent, the court cannot accept its prima facie validity by merely relying on the suspensive effect of the appeal filed against the revocation decision.
Useful parallels can be drawn between this case and two other cases ruled on by the Supreme Court, on 5 January 2012 and 24 June 2013.
In the first judgment, the Court held that the decision to revoke rendered by an opposition division of the EPO, against which an appeal is pending, has no effect on the prima facie rights of the patent holder until a final decision is rendered in the opposition procedure. In its judgment of 12 September 2014, the Supreme Court seems to overturn this previous decision by considering that the court – even ruling on a provisional basis – must take into account all the facts and circumstances cited by the parties, which should include at least the averments that led to the patent being revoked at first instance before the EPO.
In the second judgment, rendered on 24 June 2013, it was held that the court ruling on an interim injunction petition may, in assessing the existence of the plaintiff’s prima facie rights, reasonably have regard to the European patent it holds in Belgium, even if it has been revoked by a commercial court ruling, as long as there is no final ruling on the appeal against that first instance decision. The judgment of 12 September 2014 does not contradict the judgment of 24 June 2013. Their combined dicta indicate that the court ruling on the prima facie validity of a patent (whether in the context of a counterfeit seizure or in that of summary proceedings) must consider not only the existence of a patent whose revocation is not yet final but also take account of the grounds that led to it being revoked: it is only on the basis of such an “overall” assessment of all the facts and circumstances of the case that the court can render a legally sound decision.
Although the patent in question in this case was a foreign patent, the court’s reasoning would also seem to apply in situations where a Belgian patent has been revoked by a decision that is not yet final in Belgium.
b) Foreign decisions
With regard to the reference to foreign decisions, the court points out that, according to the European Patent Convention, a European patent has the same effects and is subject to the same rules as a national patent in each of the Contracting States for which it has been granted. In addition, it points out that, under article 138(1) of the Convention, the grounds for revoking a European patent are the same in all Contracting States, from which it concludes that, even though the effects of a revocation decision are limited to the territory of the State where it was rendered, the revocation and its underlying grounds can be relevant for an examination of the patent’s prima facie validity in another State, such as Belgium. The revocation and its grounds can therefore constitute facts and circumstances that have to be taken into account by the court ruling on a petition for a counterfeit seizure. The court cannot legally justify its decision by simply founding on the limited territorial effect of the foreign decision to reject arguments based thereon in the debate on the prima facie validity of the patent.
The decision commented on here usefully qualifies the case law of the Supreme Court according to which interim measures can be granted on the basis of a patent that has been revoked at first instance. The decision underlines the necessity for the court to take into account the grounds that led to the revocation and not to grant the requested measures on the sole ground that the decision is not yet final.
Another positive aspect of the judgment is the grounds concerning the impact of foreign decisions on the assessment of a patent’s prima facie validity. In the European and international context in which patent litigation often plays out, this decision should contribute to greater consistency and harmonisation in the case law at an international level.
The substantive effect of this judgment must not be underestimated. Patent holders will now have to reckon with the new case when considering filing a petition for counterfeit seizure or interim measures in Belgium. They will have to be particularly careful when the patents on which such measures found have been revoked, even if revocation is still likely to be overturned or was ordered abroad.
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(1) Simont Braun acted for the petitioner before the Supreme Court.