Léonard on Abuse of Right Under Belgian, French, and E.U. Law

Amandine Léonard has published an article titled L’abus de droit dans le contentieux des brevets:  Entre divergences nationales et vœu d’harminisation de la jurisdiction unifiée du brevet—une piste à suivre? (“Abuse of right in patent litigation:  between national differences and the desire for harmonization in the unified patent jurisdiction—a path to follow?”) in the January 2017 issue of Propriété Industrielle (pp. 10-14).  Here is the abstract (my translation):

The present work deals with the interpretation of the principle of “abuse of right” within the specific context of patent litigation.  It is submitted that more clarity on the question would permit us to know the extent to which “abuse of right” could counter certain excesses on the part of patent owners when they enforce their rights, particularly before the future Unified Patent Court.

As the author notes, abuse of right is a civil law doctrine the Japanese and Dutch courts have sometimes used to deny injunctive relief to owners of standard-essential patents.  (For discussion of cases in which the doctrine has come up in this context, see the Joint Research Centre’s report Licensing Terms of Standard Essential Patents:  A Comprehensive Analysis of Cases, available here.  I’d also advise clicking on this blog’s link to the topic “Abuse of Right” for my previous posts on cases and commentary discussing the doctrine.)  According to Ms. Léonard, over the past century France and Belgium have developed a body of jurisprudence on abuse of right.  In Belgium in particular, the courts have developed a list of “generic” criteria for abuse, stating that there would be an abuse when “the limits for the normal exercise of the subjective right by a prudent and reasonable person placed within the same circumstances are manifestly exceeded.”  For further guidance, the Belgian courts have developed a list of “specific” criteria, including (1) an owner’s exercise of a right with an intention to harm; (2) the exercise of a right contrary to the objective intended by the legislation granting it; (3) a disproportionate exercise of a right; (4) the exercise of a right without a legitimate and reasonable interest; and (5) when a right could be exercised in different ways, and the owner chooses the own most prejudicial for third parties or for the general interest.  In the context of patent law, in the two countries it has been considered abusive (1) to assert a claim when the owner knew or should have known that the patent was invalid or not infringed; or (2) when the owner sought provisional measures with an intent to harm; or (3) when the owner engaged in unfair competition, for example by disparaging the defendant’s goods; or (4) when the owner sought to enforce her rights in a manner not intended by the legislature, for example by requesting a saisie-contrefaçon in order to engage in a “fishing expedition.”  These lists are not exhaustive, and courts consider all the circumstances.  The manner in which the owner has conducted itself before the relevant agencies (e.g., the EPO) also may play a role.  The author also briefly discusses and cites to materials on abuse of right or analogous concepts in the laws of other countries (p.12).

The author concludes by suggesting that in the future Unified Patent Court the judges, culled from across the E.U., should develop an abuse of right doctrine in light of both the governing UPC instruments (which for example contemplate that the rules and procedures will be used in a "just and equitable" manner), and to E.U. legal principles as embodied in, for example, article 3(2) of the Enforcement Directive and (non-patent-related) case law of the CJEU (which she says have required a both an "objective" and a "subjective" element).  (To be honest, I'm not familiar with these CJEU cases, and I should make a note to take a look at them.  The author cites several cases, beginning with the March 9, 1999 Centros decision, Case C-212/97, through the 2007 Kofoed judgment, Case C-321/05.)  She also alludes, at the beginning of the article, to the possibility that abuse of right could be a tool for reining in perceived abuses by patent trolls, which in my view is worth exploring further.  Although the CJEU's judgment in Huawei v. ZTE constrains the owners of FRAND-committed SEPs from asserting claims for injunctive relief under certain conditions, Huawei is a competition law case and its conditions wouldn’t seem to apply when the patent owner lacks substantial market power.  Thus the civil law doctrine of abuse of right, nebulous that it sometimes may appear to be, arguably could provide a basis for more frequently denying injunctive relief on proportionality grounds, or in a manner analogous to the discretionary standards for injunctive relief applied in common-law countries.