2015, one year of patents in France

No revolution on the patent front this year in France. Yet here are a few changes of note.

• Are drug dosages patentable again?

While the European Patent Office (EPO) has been granting patents to drug dosages or regimen, the French patent office (INPI) has been refusing to do the same, relying on a First Instance decision of September 28, 2010, in the "Finasteride" case involving Actavis Group and Merck Sharp & Dohme. The Paris Court (Tribunal de Grande Instance) revoked a claim drafted as

Use of [Finasteride] for the preparation of a medicament for oral administration, used in the treatment of androgenic alopecia in a subject and wherein the amount of administration is about 0.05 to 1.0 mg,

considering this would be a method of therapeutic treatment, excluded from patentable inventions.

The doubt remained as to whether such European patents granted by the EPO were even valid in France.

The position of the Court of Appeal was therefore eagerly awaited.

A decision was rendered on January 30, 2015. The Court of Appeal of Paris has finally recognized the patentability of a claim on a dosage: "Patentability of a second therapeutic use claim based solely on a dosage is admissible"

To be valid such claim should nevertheless "meet the requirement of the existence of a technical education”. In this particular case, the Court analyzed that the claim did not involve a technical effect that would distinguish from the prior art and concluded that the claimed invention lacked novelty.

We now expect that the INPI review its practice vis-à-vis the French patent applications, to reflect that decision and adopt the position that prevails throughout Europe.

• A further obligation for the French employers

According to an Act of August 6, 2015, called «Loi Macron», the French employer of an inventor must inform his employee, when a patent is filed, but also when the patent is granted (Article 175 of the Act).

• A few additional days for Supplementary Protection Certificates

Supplementary Protection Certificates (SPC) extend the term of a patent relating to drugs which have obtained a marketing authorization (MA). The SPC takes effect at the end of patent protection for a period calculated on the basis of the period between the patent filing date and the date of the first marketing authorization in the European Union.

In a decision of October 6, 2015 (Case C-471/14, Seattle Genetics Inc.), the Court of Justice of the European Union held that, for a marketing authorization granted by the European Medicines Agency (EMA), the date of "first marketing authorization" was the date of communication of the decision and not the date of decision. This can result in a few additional days which are precious for the innovator in his war against the early entry of generics on the market.

Accordingly the French patent office (INPI) now calculates the term of the SPC based on the Communication of the marketing authorization from the EMA. Any holder of a SPC already granted can have this date of Communication recorded in the National Patent Register.

• Absolute confidentiality rules apply to French patent counsels

In a decision of November 24, 2015, the Paris Court of Appeal confirmed that Article L.422-11 of the Intellectual Property Code meant that "the French patent counsel is obliged to absolute confidentiality and the extent of its obligations in this regard is similar to that of lawyers."

Comforting to hear.

Wishing you a Happy New Year!

Marion Chajmowicz & Béatrice Tézier Herman