Industrial Property Law

An action to have a patent declared invalid may be brought by any person with a legitimate interest in the matter (Art. 31 of the Code of Civil Procedure), whether the beneficiary of a license , a transferee, an undertaking sued for infringement of the patent in question, a trade organization or a consumer association. The public prosecutor may act of his own motion (Art. L. 613-26 IP Code).

An interest in bringing an action is assessed on the day the claim is filed, and must be direct, personal, vested and present It does not necessarily depend on the applicant's use of the technology covered by the patent. Thus, an undertaking which implements the patented technique, and where the principal has been prohibited from marketing by the patent owner, does not justify an interest in bringing an action if it does not provide proof that its activity has been affected by this prohibition . The interest in bringing proceedings as a principal party is assessed on a case-by-case basis, with the claimant having to prove that they carry out or intend to carry out an economic activity in the specific field covered by the patented invention, without being required to specify which claims would be infringed by the product they market or are preparing to market .

By way of exception, a patent invalidity action based on Article 138(1)(e) of the EPC (Revocation of European patents), which covers the situation where the proprietor of a European patent was not entitled to the right to it, is not open to all interested parties, but only to injured parties, insofar as the revocation action on this basis is designed to protect the private interests of the actual proprietor of the patent or his/her successor in title .

Cass. com, 17 March 1980, LawLex202200001146JBJ, which specifies that an operator is entitled to invoke the exception of patent invalidity due to a lack of novelty and inventive step, even if he was never concerned about the validity of the patent during its exploitation.

CA Paris, 5 May 2017, LawLex202200000792JBJ, relating to an undertaking that continued its subcontracting activity, which consisted of an activity not dependent on the invention of the opposing patent, and of which the development towards other customers in France was not hindered by the marketing ban imposed on its principal.

CA Paris, 5 June 2024, LawLex202400004241JBJ.

Cass. com. 14 February 2012, LawLex202200003281JBJ.

363. Interest in bringing action/Standing