Two Recent French Cases on Invalidation Actions/Declarations of Noninfringement

The first is Raccords et Plastiques Nicoll v. MEP, TGI Paris, Nov. 6, 2014, PIBD no. 1020, III-44, discussed in the April 2015 issue of Propriéte Industrielle by Jacques Raynard and Privat Vigand.  The plaintiff filed an action for a declaration of patent invalidity.  The defendant argued that, since a statutory amendment in 2008, the applicable statute of limitations for actions involving personal property (found in the French Civil Code article 2224) was five years, that the five year period began to run from the date on which the patent application had been published (February 11, 2005), and that the action (filed October 4, 2013) was therefore time-barred.  The plaintiff responded that the statute began to run from the date on which the patent owner had put it on notice of its alleged infringement (February 25, 2013).  The court agreed with the plaintiff, stating that the statute begins  to run from the moment when the plaintiff has had effective knowledge of the patent.  Professors Raynard and Vigand note some ambiguity whether article 2224 applies to such an action, but that the parties assumed it did.  Nevertheless, they argue that the rule the court announced goes too far in one direction and not far enough in another.  On the one hand, the date on which the statute begins to run should not be the date on which the plaintiff becomes aware of the patent, but the date on which it should have been aware of it.  On the other, it should not be enough that the plaintiff knew (or should have known) of the patent, but rather when it knew the ground for the patent’s invalidity.  They also argue that, in a passage concluding this potion of the opinion, the court meant to say that if the defendant had filed sued for infringement, the plaintiff would have been able to assert invalidity notwithstanding the statute of limitations (though they wonder whether a judgment of invalidity under the circumstances would be applicable only inter partes or erga omnes).

Second, in Bolton Manitoba SpA v. Reckitt Benckiser LLC, TGI Paris, Mar. 13, 2015, PIBD no. 1028, III-341, the plaintiff filed an action for a declaration of invalidity and noninfringement.  The court held that the five-run statute of limitations did not run from the date of publication, but rather from the date of grant.  On the other hand, the request for a declaration of noninfringement was not cognizable.  As I discuss in my book (p.281), under article L. 615-9 of the Intellectual Property Code:

Any person who proves working on the territory of a Member State of the European Economic Community, or real and effective preparations to that effect, may invite the owner of a patent to take position on the invocability of his title against such working, the description of which shall be communicated to him. If such person disputes the reply that is given to him or if the owner of the patent has not taken position within a period of three months, he may bring the owner of the patent before the Court for a decision on whether the patent constitutes an obstacle to the working in question, without prejudice to any proceedings for the nullity of the patent or subsequent infringement proceedings if the working is not carried out in accordance with the conditions specified in the description referred to in the above paragraph.

Here, the above conditions were not complied with, and while it would be permissible to file such a claim as a counterclaim to an action for infringement, adding it to a claim for a declaratory judgment of invalidity was not permissible absent a sufficient connection to that claim.  The two claims pursue different objectives.