The Situation: In France, actions for patent revocation are subject to strict rules regarding interest to sue and to a five-year statute of limitation.
The Impact: This decision confirms that French courts control the claimants' interest to sue for patent revocation actions and that not anyone can initiate such action, and also that the notification of the patent triggers the five-year statute of limitations for patent revocation actions.
Looking Ahead: The decision points to the belief that the starting point of the statute of limitation applicable to patent revocation actions cannot be the publication date of the patent, as such rule would unrealistically oblige third parties to monitor every patent in their domain of activity.
On April 28, 2017, the French tribunal de grande instance de Paris issued an interesting decision regarding both standing to sue and statute of limitations applicable to patent revocation actions.
Background and Procedural History
Zodiac Aerotechnics is the holder of European patent No. 2 004 294, filed on April 13, 2006, published on October 25, 2007, and granted on July 21, 2010, which relates to a respiratory gas supply circuit for aircraft-carrying passengers.
On September 2, 2011, Zodiac Aerotechnics brought its patent to the attention of Aerospace Systems, asking whether the latter developed products claimed in the patent.
On October 19, 2012, Aerospace Systems initiated an action for the revocation of the German designation of Zodiac Aerotechnics's European patent, before the Bundespatentgericht, and on May 6, 2014, the Bundespatentgericht revoked the German designation of this patent.
Aerospace Systems wrote to Zodiac Aerotechnics to mention that a similar action would be initiated in France, unless Zodiac Aerotechnics agreed to abandon the French designation of its patent or to grant it a royalty free license. Because Zodiac Aerotechnics did not comply with Aerospace Systems's request, the latter initiated a patent revocation action in France on June 30, 2015.
Zodiac Aerotechnics disputed the claimants' right to sue and opposed the statutes of limitation to dispute the admissibility of Aerospace Systems' claims for patent revocation.
On the Standing to Sue
Zodiac Aerotechnics disputed the claimants' standing to sue by arguing that it did not demonstrate that the patents at issue could be an obstacle to products or activities it developed in France or under development by the claimant in France.