Is the Patent Court the patent license court?

Published onMarch 2016

First of all, let’s remind our foreign readers that the French legislative body entrusted the entire litigation of intellectual property law to specialized courts of the judiciary system, in an attempt to enhance the specialization of French judges and to improve the quality of judgments.

As a result, there are only ten first instance courts in France with jurisdiction in connection with copyright, designs, trademarks and geographical indications (Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France).

The solution is even more drastic as far as patents are concerned since the First instance court of Paris has exclusive jurisdiction for all patent-related civil litigations.

Now, what about litigations arising from a patent license?

This is the very question the Court of Appeals of Lyon recently answered in a case opposing both parties to a patent license.

The owners of a patent were trying to terminate the contract they had with their licensee when a disagreement occurred about the payment of royalties. The first instance judge of Bourg-en-Bresse (a town in the vicinity of Lyon, centre-east of France) claimed he had no jurisdiction over the case because a patent was involved and referred the parties to the First instance court of Paris.

On appeal however, the Court of Appeals of Lyon decided the exact opposite (1st civil chamber, 28 January 2016, case number 2015/06886). According to the court, the litigation between the parties was not about the patent itself but only about the license contract. Patent law was not involved and no consequence should be feared for the patent itself or its validity. Therefore, the court decided the First instance court of Bourg-en-Bresse could hear the case.

Following this judgment, the Patent Court, the First instance court of Paris, would not have systematically exclusive jurisdiction for patent-related matters.

Nevertheless, the decision from the Court of Appeals of Lyon is rather unsettling. Actually many questions arise.

By considering the litigation was not about the patent at all, hasn’t the court anticipated the final judgment at a stage of the proceedings when the parties have not been heard on the whole case yet? Hasn’t the court contained the case to contractual matters exclusively before the arguments of the parties are even final? Hasn’t the court prevented the parties to raise any questions or issues even remotely related to the patent itself?

From a political point of view, isn’t this decision contradictory to the choice of the parliament to entrust the whole scope of patent litigations to one and only court?

And now what? Could the First instance court of Paris declare having no jurisdiction over contractual matters related to patents if the parties are not from its territorial jurisdiction? Would the commercial court have jurisdiction in some cases if both parties are businesses?

These questions are of major importance. They need clear answers as soon as possible if legal uncertainty is to be avoided. Let’s hope the answers come fast.

© INSCRIPTA