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Requesting nullity of a patent in France: beware of time limitations

However on March 16, 2017, the judges decided that Actelion Pharmaceuticals’ request for invalidating European patent No. 1 200 092 owned by ICOS Corporation had not been timely lodged.

The Court referred to the statutory period of limitation which restricts civil actions to “five years following the day on which the owner of a right has known or should have known the facts allowing to exercise it” (as amended in 2008, by Article 2224 of French Civil Code). In consistency with earlier decisions, the Court considered that Actelion Pharmaceuticals was such “owner of the right” [to bring an invalidity action]. Interpreting what the “facts allowing to exercise” this right were, was more difficult. In a bizarre reasoning, the Court held that the starting point for this limitation period was the date on which the patent owner (namely ICOS Corporation) was granted a marketing authorization for its drug Adcirca® (tadalafil) to which the patent was considered to relate (although it does not protect tadalafil per se) . The Court indeed assumed that, at the date of this marketing authorization, “the Plaintiffs [Actelion] had known or should have known that patent EP 092 was such that it could represent a bar to their economical activity and that it could be opposed by its owner.”

Patent professionals advocate for adding specific provisions into the French patent Code in order to clarify the limitation, if any, and overcome this uncertainty.

In the meantime, generic companies and alleged infringers should not despair: they can still request inter partes invalidity as a counter claim in an infringement action.

Emmanuelle Renard