On 12 September 2014, the Belgian Supreme Court (Hof van Cassatie/Cour de Cassation) issued a judgment on the interpretation to be given to the notion of the “prima facie” validity of patents. The Supreme Court held that the finding that there is no final judgment invalidating the patent is not sufficient to determine the prima facie validity of that patent.
At issue was a seizure in counterfeit matters (beslag inzake namaak/saisie-contrefaçon) pursuant to Article 1369bis/1, §3, paragraph 1 of the Judicial Code (Gerechtelijk Wetboek/Code Judiciaire) which had been imposed on Syral Belgium (“Syral”), a manufacturer of complex sugar. The counterfeit seizure had been requested by a French competitor of Syral’s, Roquette Frères (“RF”). RF’s request was based on the French and Belgian branches of EP 0 905 138(“EP’138”).After being granted by the European Patent Office (“EPO”), the EPO patent becomes a bundle of national patents, subject to the national law of each state. This means that for each jurisdiction, the national branch of the patent exists separately from the other national branches of the patent.
The French branch of EP’138 had been declared invalid by the French Court of First Instance and the English courts had also annulled their national part of EP’138.
In appeal proceedings in which the seizure in counterfeit matters had been challenged, the Court of Appeal in Antwerp held that, notwithstanding the foreign judgments invalidating the national patents, RF could still rely on the prima facie validity of its French patent because the French annulment had not yet become final pending the appeal against the French Court of First Instance’s judgment. As a result, the French proceedings had no relevance for the Belgian procedure. Similarly, the annulment of the patent by the UK Court did not influence the Belgian patent, because of its limited territorial effect. Syral brought an appeal against the judgment of the Court of Appeal before the Supreme Court.
The Supreme Court explained that, under Belgian law, interim measures pursuant to Article 1369bis/1, §3, paragraph 1 of the Judicial Code can be ordered if the judge finds that the intellectual property right invoked appears to be valid (ogenschijnlijk geldig/ selon toutes apparences valable). Thereby, the judge does not have the authority to carry out a full legal analysis and a substantial technical examination. Still, the Supreme Court added that the examining court should “take into account all facts and circumstances invoked by the parties relating to the validity of the patent”.
The majority of the case law on prima facie validity currently agrees that the starting-point of the legal assessment is the presumption of validity of a patent that is in force. This is based on the fact that European patents, prior to being granted, are subject to review by experts carrying out a substantive assessment.
The Supreme Court judgment appears to warn against an overly formalistic application of this theory. The Supreme Court held that it results from Article 1369bis/1, §3,first paragraphof the Judicial Code that the court must take account of all the elements raised by the parties. Accordingly, a Court cannot simply ignore a decision at first instance, even if it has not become final and the patent therefore remains in force. Similarly, the judge must consider the invalidation of other national branches of the same EPO patent. Hence, the judgment must explain why in its view there is no reason to follow such decisions.
The Supreme Court judgment is expected to create an unwelcome burden for plaintiffs in prima facie procedures. Indeed, the Supreme Court did not give any guidance for the assessment of prima facie validity and how it is different from a validity assessment on the merits. Clearly, the purpose of such a prima facie review should be to have only a cursory examination of the validity of a patent (as opposed to the often very long and complex review of validity in proceedings on the merits). The Supreme Court would now seem to encourage defendants in counterfeit seizure cases to mount invalidity defences.