Patent Litigation. Inventions of mission and additional remuneration due to the inventor for such inventions

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1 PATENTS Patent Litigation The most interesting Court decisions concerning patent litigations published in 2004 and early in 2005 focus on employee s inventions, on a French style file wrapper estoppel and on the appreciation of infringement by equivalence. As regards employee s inventions, the decisions focused on the inventor s additional remuneration in the case of an invention of mission, and on the fair price due for an invention outside mission and attributable to the employer. Apart from these issues, one decision considered the question of the ownership of an invention made by a trainee. Inventions of mission and additional remuneration due to the inventor for such inventions Two issues of interest were considered in the decisions published recently. The first issue was the question of whether the additional remuneration shall be linked to the salary paid to the employee. Both in case law and in the proposals of the CNIS (Commission Nationale des Inventions des Salariés), the salary had frequently been taken into account in determining the additional remuneration. In two cases, the Tribunal de Grande Instance of Paris (the most important first Instance Court dealing with patents) ruled to the contrary, considering that no French regulation sets forth that the amount of the additional remuneration due to the employee for an invention of mission be linked to the salary paid to the employee (Re. Ray v. Rhodia Chimie 30 September 2003, and Re. Brinon vs. Vygon 9 March 2004). In this latter decision the judges also stated that the royalty rate of industrial licences granted by the employer was also not relevant in determining the additional remuneration as the licences had been granted once the employer had assumed all costs for the research and development of the concerned product. Finally, the judges stated that although the Collective Agreement for Chemical Industries applicable to the case indicates four criteria for the determination of the additional remuneration due to the inventor (these criteria being the general framework of the invention, the difficulties in the practical achievement thereof, the personal and original contribution of the employee and finally the commercial interest of the invention), the determination of this remuneration shall focus on two of these criteria, namely the general framework of the invention which allows the appreciation of the personal contribution of the employee in discovering the invention and the relative value of said invention to the employer, which can only be determined on the basis of the turnover and the margin resulting from the industrial applications of the patent. The judges justified their choice of these two criteria by reference to the specific system applicable to civil servants in France, underlining that unjustified differences between employees of the public sector and those of the private sector must be avoided.

2 The second issue was the applicability of the stipulations of a Collective Agreement regarding employees inventions when these stipulations are less favourable to the employee than the law, that is to say Article L of the French Intellectual Property Code. In its decision of 19 September 2001 issued in Re. Jouillat vs. Valois (decision just published), the Tribunal de Grande Instance of Paris decided that the less favourable stipulations of a Collective Agreement shall not apply. In this case, the applicable Collective Agreement subordinated the additional remuneration to a double condition : the exceptional value of the invention and the effective exploitation of said invention by the employer, although this double condition is not provided for by Article L of the IPC. The Court of Appeal of Lyons adopted the same position in a case where the Collective Agreement for Chemical Industries was considered. This Collective Agreement allocates a remuneration to the employee when the invention is of an exceptional value, the magnitude of which cannot be compared to the employee s salary. The Court ruled that this condition was not to be taken into account as it is not mentioned in Article L of the IPC (Court of Appeal of Lyons 14 November 2002). The position taken by the Court of Appeal in this decision was approved by the Cour de Cassation on 18 February These decisions illustrate a tendency of the French Courts to apply strictly the principle set forth in Article L of the IPC : only contractual clauses more favourable to the employee can derogate from the stipulations of said Article. Determination of the fair price of an invention made by an employee outside a mission and attributable to his employer The Cour de Cassation (Supreme Court) considered this issue in its decision of 18 February 2004, in Re. Company Z vs. Mr. X and Mr. Y. Messrs. X and Y, employees with Company Z, filed French and corresponding foreign patent applications covering an invention outside mission and attributable as defined in article L of the French Intellectual Property Code. Company Z notified Mr X of its intention to have the ownership of the rights attached to the invention attributed to it; an assignment agreement was signed between the parties and a first payment was made to Mr X representing a part of the fair price, the other part of which was intended to be a participation in the results of the exploitation of the invention. Subsequently, Company Z renounced the exploitation of the invention and proposed to grant Mr X back his rights. Mr X filed an action for damages against Company Z for the prejudice resulting from the violation of its implicit obligation to work the patents. The Cour de Cassation, confirming the decision of the Court of Appeal, stated that, according to the assignment agreement, Company Z had undertaken to pay a price consisting in a participation linked to the working of the invention and that consequently Company Z had an obligation to carry out this working. Furthermore, the Cour de Cassation stated that the assignment signed between the

3 employee and the employer was binding to both parties and could not be terminated unilaterally by Company Z. Invention made by a trainee In its decision of 10 September 2004 issued in Re. CNRS vs. Dr Puech, the Court of Appeal of Paris considered the situation of an invention made by a trainee. This case was between the CNRS, a public establishment of scientific and technologic character and Dr. Puech, a reputable physician who joined as an unpaid trainee a laboratory forming part of the CNRS, called LIP. During this training, Dr. Puech filed patent applications, the subject of which resulted from his works within the LIP. CNRS filed an action claiming ownership of these patents on the basis of Article L of the French Intellectual Property Code, but was dismissed by the Tribunal of First Instance of Paris on 2 April CNRS filed an appeal against this judgment. The Court confirmed firstly that Dr. PUECH was the sole and true inventor of the concerned patents. On the other hand, CNRS obtained a favourable decision regarding ownership of the patents: the Court stated that the inventor, as a trainee in a laboratory forming part of an establishment in charge of a public service mission, was the user of the administrative public service and was thus subject to the in house agreement ruling said service which set forth that the patents on works conducted within the laboratory will belong to the CNRS; this in house agreement having been signed by Dr. Puech during his training. Consequently, the Court admitted the action claiming ownership of CNRS and substituted CNRS for Dr. Puech as the owner of the French patent as well as of the corresponding foreign patents. However, this decision is not yet final as Dr. Puech filed an appeal against it (pourvoi) before the Cour de Cassation, which is presently pending. Among the numerous cases dealing with the question of infringement, two recent decisions considered important issues : the doctrine of file wrapper estoppel and infringement by equivalence. French style file wrapper estoppel The examination procedure at the French Patent Office is a rationalized one since, while being based on the search report issued by the European Patent Office and citing prior art as to novelty and of non obviousness, it does not allow the French examiner to reject a patent for lack of inventive step. For this reason, the file wrappers of French patents are in most cases not very informative to third parties, the patentees refraining from developing many arguments. Probably for this reason, the file wrapper estoppel doctrine, which is for example well known in the United States, had not been applied by French Courts until recently. However, in Re. Posimat vs. Vasquali, the Court of Appeal of Paris indeed applied such doctrine in its decision of 24 September The French patent was directed to a machine for positioning containers. The main claim as originally filed, listed several features of the machine, including at least one positioning disc. In his response to the

4 search report filed at the French Patent Office, the patentee amended the main claim of his patent by introducing therein the precision that the machine comprised an upper positioning disc and a lower positioning disc. The presumably infringing machine reproduced all the features of this main claim, except that it had only one positioning disc. The patentee argued that the feature of the machine comprising a lower and an upper positioning disc (rather than one positioning disc) was only a secondary feature, which was relevant neither to the patentability of the claim nor to the resolution of the technical problem. Therefore, the patentee considered that, despite this minor difference, the presumably infringing machine indeed infringed the patent. The Court did not follow the patentee s argumentation and stated that this feature cannot be analysed as being a secondary one because [ ] it was not mentioned in the claim as initially drafted and has been added to this claim in response to the search report. Based on this analysis, the Court decided that the patent had not been infringed. Before that decision, the French Court had ruled in a similar manner in Re. Bobst vs. United Container Machinery Group (14 May 1999), in which the situation was different insofar as the patent involved was not a French Patent but a European patent validated in France. In this former case, the patent claim covered a device for transporting elements in the form of plates comprising four features A, B, C and D. The presumably infringing device comprised only features A, B and D. The patentee s argumentation that feature C was a secondary one was not followed by the Court which noted that feature C could not be considered as a secondary one since, not only during the grant procedure at the European Patent Office but also during the grant procedure of the parallel US patent, the patentee had insisted on the importance of feature C in stating that, together with features A, B and D, this feature was necessary to solve the technical problem. In these two decisions, the Court of Appeal of Paris, which is the most important Court dealing with patent matters in France, applied a file wrapper estoppel by considering that a feature added to a claim and/or presented as an essential feature during the grant procedure could not be held as a secondary feature so that a device which did not comprise this feature did not infringe the patent. Infringement by équivalence The doctrine of equivalence is now well established in France, since the Cour de Cassation (Supreme Court) acknowledged this doctrine in The conditions for the acknowledgement of an infringement by equivalence are that a claimed element is replaced in the presumably infringing device or method by a technically equivalent element, that is an element which performs the same function as the element that it replaces, and that the claim has not been restricted to the particular definition of the claimed element that the equivalent replaces for reasons of patentability. More precisely, a device or a method incorporating a technical equivalent means infringes a patent if the patent covers the function which is fulfilled both by the technical equivalent means and by the corresponding element in the claim. The claimed element which the equivalent replaces is defined in the claim by its structure. Its function is covered by the patent if a claim defining this element by its function (means for achieving the function) would also have been valid.

5 In its decision of 31 March 2004 issued in Re. Duthoit and Coopérative Ouvrière de Production Agricole vs. Ruffié, the Cour de Cassation over ruled a decision of the Court of Appeal of Bordeaux that had acknowledged an infringement by equivalence. The Court of Appeal decision had stated that the essential means of the patent were reproduced by equivalence since the presumably infringing device comprised two cables with fixed tips equipped with a fixing device having the function of drawing a vein. The Cour de Cassation decided that this decision was erroneous insofar as it did not make it clear that such a function was itself new and inventive and, as a consequence, was protected by the patent (in fact, the Court of Appeal had instead noted that this function was known in the art). In this case, the first condition for establishing an infringement by equivalence was met since the presumably infringing device presented technically equivalent means, but the Cour de Cassation insisted once again that this condition was not sufficient : for an infringement by equivalence to be established, the function of the technically equivalent means must be covered by the patent, that is to say : this function must be new and inventive in the context of the invention. Didier Intès & Evelyne Rouah Cabinet Beau de Loménie March 2005