Is it possible to attack a SPC though an administrative procedure in France?
Third Parties Observations (TPOs) during SPC examination?
French Law does not provide for TPOs during the SPC examination procedure. As such, the French IP Office (i.e. INPI) rejects TPOs.
Still, it is common practice to file such a TPO because:
– we assume that it could unofficially influence the examiner;
– it is costless (approx. 1 k).
We do not have a definite knowledge of the impact of TPOs during the SPC examination procedure. Only assumptions can be made.
No special formal requirements have to be respected as TPOs are not provided by Law.
Appeals against a granted SPC?
Appeals against decisions issued by INPI are generally supposed to be lodged with the Paris Court of Appeal.
In a related domain, a number of third parties have thus tried to challenge decisions of limitation of patents in front of the Court of Appeal, by directly appealing these decisions. But they lost and their appeal being deemed inadmissible. The Paris Court of Appeal has always held that challenges against the limited claims must be brought in the context of a nullity lawsuit. This means that the Paris High Court (i.e. Tribunal de grande instance de Paris) has an exclusive competence for challenges on nullity grounds and that it is therefore impossible to do so before the Court of Appeal (see e.g. Free and Avery Dennisson cases). A contrario, according to this caselaw, an appeal against a decision issued by INPI, which is not founded on nullity grounds, could be admissible (in patent cases and a fortiori in SPC cases).
Therefore, it would be possible to attack a granted SPC on administrative grounds, since the plaintiff does not invoke nullity grounds.
There is no reason to consider that such an administrative proceedings would not succeed provided that:
– the appeal is not founded on a nullity ground;
– the plaintiff has standing, i.e. he can prove his interest to taking legal action (e.g. with an application for a marketing authorization).
This brief paper results from a joint thinking with my friend Lionel Vial.