Action in nullity and nullity exception

2. The action for nullity

Difference between action for a declaration of invalidity and exception for invalidity

Before going into the heart of the matter, let's look at a point of civil procedure that will be useful for the future.

The action (here, in nullity) is a procedure initiated before a jurisdiction to obtain the respect or the recognition of a right or a legitimate interest (here, the recognition that the patent is null). 

A plea of nullity is, in law, an argument which is raised even before referring to the merits of the case, and which tends to see the annulment of a part of the proceedings or, possibly, the whole of the proceedings, because of the violation by one of the parties of an essential provision of law (here in this case, the existence of the patent). In case of admission of the exception of nullity, the piece (here the patent) is removed from the debates and can no longer base the judgment.

You still did not see the difference?

So, here is the "non-legal" explanation that I give sometimes:

  • a nullity exception is a kind of joker:
    • "Stop, Judge, because the patented villain is in fact not patented since the latter is nil";
    • This is not a request, but a finding that will make the infringement action irrelevant;
    • No decision as to the invalidity of the patent will be rendered but a decision will find the lack of basis for the action for infringement;
  • a counterclaim in nullity is a real request:
    • "Judge, I ask that before declaring me responsible for infringement, you notice that his patent is null";
    • This request for invalidity will make the action for infringement also without object,
    • A decision as to the invalidity of the patent will be rendered.

This may seem like a detail ... but concerning the prescription, you will see that it changes everything (well probably more since the Covenant law but let's move on).

The action for nullity



The action for nullity introduced as principal (53 CPC) seeks the invalidity of a patent while no other civil action is pending (L613-25 CPI for French patents and L614-12 CPI for European patents).

Competent courts


Only the Tribunal de Grande Instance of Paris is competent to hear actions in nullity (L615-17 CPI together D211-6 CPI).

The Paris Court of Appeal has jurisdiction on appeal (Court of Appeal of Paris, Pole 5, 1st ch., June 20, 2012).

Clarification as to the jurisdiction of the courts of appeal since November 1, 2009

The application of the 2009 decree granting exclusive jurisdiction to the Paris Court of Law on patent issues has raised questions to determine the competent court of appeal in case of appeal of a judgment rendered by a provincial court of law entered before the 1st November 2009.

For the Court of Cassation (C. Cass. com., March 3, 2015, No. 14-10568), nothing is indicated in the Decree No. 2009-1205 of 9 October 2009 concerning an exclusive jurisdiction of the Paris Court of Appeal: only the jurisdiction of the TGI of Paris is recognized for the patents.

Therefore, it is appropriate to apply the general principles of Article R311-3 of the Code of Judicial Organization according to which the Court of Appeal is competent to know the decisions of the Intermediate Courts located in its jurisdiction.

The interest and the quality to act

The invalidity of a patent may be requested by any person having an interest direct and staff Act (31 CPC).

It is often said that the interest in acting must be personal and direct, legitimate, born and present.

Mundane actions

In the majority of actions in nullity, it is said that theaction is banalthat is, there is no condition as to the standing to act: every person having a direct and personal interest in acting can introduce action (31 CPC).

Here are some examples of interest in acting.

A formal notice / threat from the patentee

The interest to act may be a formal notice or a threat of infringement action by the holder (Civil Court of Seine, August 11, 1864, or in terms of brand Paris District Court, 3rd c. 1st Sect., 19 September 2013).

The person threatened / put in default can then request the nullity of the opposite patent.

Patent hinders a competitor

The patent can really hinder a competitor, because a marketing in France could be hindered by the patent (Court of Appeal of Paris, Pole 5, 1st ch., January 11, 2012).

Historically, interest in acting could be justified byCourt of Appeal of Paris, 4th ch., Sect. B, May 13, 2005) to have a corporation whose object is to

  • close to the object of the patentee;
  • close to the patented device.

Today, magistrates seem to ask for more: it is necessary to demonstrate the existence ofpreparatory acts or serious projects implementation of a technique close to the disputed patents (Court of Appeal of Paris, Pole 5, 1st ch., March 6, 2013).

The fact that the plaintiff seeks to release an upcoming exploitation of the patented technique or a similar technique (Court of Appeal of Paris, Pole 5, 1st ch., April 9, 2019, RG n ° 17/08631).

Nevertheless, a third party manufacturing a product B cooperating with the product A does not have any interest to act for an action in nullity of the product A which it does not manufacture: the theory of the commercial whole can not justify this interest (Paris District Court, June 5, 2014).

The patent hinders the former patentee?

It may happen that the patent has been surrendered, but that the assignor wishes to continue to exploit the invention.

If it finds itself in the situation of a competitor who is embarrassed by the patent, one may wonder whether the conclusions of the preceding section are applicable.

The answer is no !

In fact, the assignor owes to the assignee the guarantee of eviction of his personal fact, a guarantee of public order (1628 Civil Code).

Therefore, he will not be able to claim the nullity of the patent as his principal Court of Appeal of Paris, Pole 5, 1st ch., April 9, 2014).

Licensee no longer wishes to pay royalties

A licensee always has an interest in requesting the nullity of the patent to claim then the nullity of its license agreement for lack of object (C. Cass. com., March 17, 1980, No. 78-14361).

The licensee wishes to see disappear the ownership clauses of the improvements

A license agreement may provide that improvements to a patent, devised by the licensee, must be communicated to the patentee, who reserves the right to file such improvements in his own name.

The licensee, wishing to retain the ownership of these improvements, has an interest in invoking the nullity of the original patent, to cascade these property clauses (C. Cass. com., July 8, 1997, No. 95-17589).

The impact of the patent on the price of a product

It would be quite conceivable for a consumer to be able to apply for the invalidity of a patent if he considers that the patent has a negative impact on the price of the patented product.

Still, will it be necessary to prove:

  • the patent has a negative impact on prices (which can be complex) and
  • the product is likely to be purchased by the applicant.

Nevertheless, no judge has yet to pronounce on this situation ... This situation has been envisaged only by the doctrine.

Refusal to pay compensation to a non-operating co-owner

Refusing to pay compensation to a non-operating co-owner (of the article L613-29 CPI) seems to be an interest in acting sufficiently.

Decisions to the contrary (Court of Appeal of Paris, 4th ch., Sect. B., 19 December 2003) but the conclusion seems questionable. In the present case, the Court of Appeal had held that the fact of having considered a patent valid for such a long time was a waiver of any action for nullity: if one followed the reasoning of the judges, that would also be valid for the licensee. Moreover, this comes to say that the plaintiff can not change his mind ...

Interest in acting for the patentee himself

If the patentee has bought the patent from a third party (ie he is the assignee), he may want to cancel the sale to recover his money: he then has an interest in acting (C. Cass. com., July 8, 1981, No. 79-15844 or Court of Appeal of Paris, 4th ch. sect. A, 19 October 2005).

The action in nullity could be seen as a " action in verification of the object of the contract of assignment ».

Nevertheless, knowledge prior to the assignment by the assignee of the defect renders the application for invalidity inadmissible (C. Cass. Req., November 9, 1864, Ann. Prop. ind. 1864, p377).

The filing of an application by an unauthorized person

The fact that a patent application European has been filed by an unauthorized person may allow the invalidity of the associated patent (A138 (1) (e) EPC).

However, only the person claiming to be the real person authorized to file the patent application may bring the action for a declaration of invalidity (it is a relative nullity, C. Cass. com, February 14, 2012 # 11-14288).

Focus on patents "drugs"

For patents of pharmaceuticals It is not necessary to obtain a marketing authorization or any other administrative authorization to justify an interest in acting (Paris Tribunal de Grande Instance, 3rd c., 4th Sect. September 30, 2010).

Assigned actions
Public minister

The intellectual property code provides for only one case where the action is assigned, that is to say open to a person by name: the Public minister (L613-26 CPI).

It is not necessary to demonstrate any interest in acting: the public prosecutor therefore acts by mere opportunity.

A syndicate

A union can demand the invalidity of a patent, because the law allows them to act to defend the collective interests of the profession they represent (L2132-3 Labor Code).

An association

A association can act in nullity of a patent, because it can act in the name of collective interests, as soon as they enter into its social object (L421-1-1 Consumer Code or C. Cass 1st civ., 18 September 2008, No. 06-22038).


It may happen that the introduction of the action for nullity is perceived as an abuse on the part of the plaintiff (eg it seeks to damage the image of the patentee, to circumvent the authority of the res judicata in a other instance, etc. Paris District Court, 3rd Division, 1st Sect., June 5, 2014).

In this case, the plaintiff is liable to pay substantial damages (Paris District Court, 3rd Division, 1st Sect., June 5, 2014).



Counterclaim (64 CPC) in nullity is the action, when one is pursued for infringement, to request the invalidity of the patents serving as a basis for the action for infringement.

The quality and the interest to act

When the main action is an infringement action

When the main action is an action for infringement, the interest in bringing an action for a counterclaim in nullity is obvious: the defendant seeks to cut short any discussion relating to counterfeiting.

The requirement of sufficient link »Of the article 70 CPC is then filled.

However, the counterclaim must only be aimed at:

When the main action is an action in execution of a license agreement

When the main action is an action in execution of a license agreement, the interest to act of the counterclaim is then justified since the latter action tends to reject the opponent's request by removing the object of the contract. .

The requirement of sufficient link »Of the article 70 CPC is then filled.

When the main action is an action relating to the ownership of the patent

Where the main action is an action relating to the ownership of the patent, it will not be possible to bring a counterclaim for revocation (C. Cass. com., November 19, 1963).

Indeed, the questions of validity of the title and legitimate property "Of the title are very distinct subjects.

Forced intervention of the holder?

In the event that the exclusive licensee files an infringement action, the patentee is not party to the proceedings.

Therefore, the counterclaim in nullity must be directed against the patent owner, in compulsory intervention (331 CPC), so that the patentee is able to defend his rights: in the absence of intervention of the holder (forced or voluntary), the counterclaim will be inadmissible.

Competent courts

In civil matters

This question may seem superfluous, as one might think that the competent court is that of the main action.

However, what happens if a dispute over a license agreement occurs between two professionals (jurisdiction of the commercial court) and incidentally, the question of the validity of the patent is raised ...

For the Court of Cassation, since a question relating to a patent is asked, only the Paris Court of First Instance is competent (C. Cass. com., January 21, 2004, No. 02-16958, see L615-17 CPI together D211-6 CPI) and it is not possible to derogate from it.

The Paris Court of Appeal has jurisdiction on appeal (Court of Appeal of Paris, Pole 5, 1st ch., June 20, 2012).

In criminal matters

If Article 52 of the law of 3 January 1968 on the patent of invention originally provided that the questions of nullity are decided by the civil judge, this is no longer the case.

Today, the criminal court seized of an action for infringement does not have to refer the dispute before the special court of the article L615-17 CPI if it is also seised of a counterclaim in nullity (this article only dealing with the civil aspects, by analogy in mark C. Cass. Crim., June 19, 2013, No. 12-84533): the criminal court may very well know the action for nullity against the patent.

Defender in action

The defender is the owner of the patent.

If an assignment has taken place, the action against the assignee must be directed: the action against the assignor must be declared inadmissible (Court of Appeal of Paris, 4th ch., Sect. B, May 13, 2005).

If the transfer has not yet been published, the action may be declared inadmissible (but this inadmissibility will guide you to the new holder). In the context of a counterclaim in nullity, there should be less difficulty since the plaintiff in the action for infringement normally communicates the chain of rights.

Invalidity of patent and / or patent application

Patent pending

This point is not really a problem since the article L613-25 CPI (for French patents and article L614-12 CPI for European patents) explicitly mentions that a nullity action may be directed to a patent.

Expired or forfeited patent

It seems quite possible to act in nullity against a title already expired.

Indeed, because of the retroactivity of the nullity (contrary to the lapse or the expiry), the applicant can have interest to obtain the nullity of the patent:

Patent application

If, at first glance, it seems to me that an action in nullity can be directed only towards a patent (in the light of the letter of the article L613-25 CPI for French patents and article L614-12 CPI for European patents), it would seem unfair for a person to bring an action for infringement on the basis of a claim (L615-4 CPI) without the defendant being able to oppose the nullity of the claim.

Judges have thus sometimes allowed the action in nullity directed against a patent application (Paris District Court, c. 03 sect. 02, October 5, 2001 or Paris District Court, 3rd Division, 3rd Sect., 16 November 2005) or have sometimes rejected it (Paris District Court, 3rd Division, 2nd Sect., October 20, 2005).

In short, the situation is uncertain ...

Prescription of nullity action

Before May 23, 2019

Principle and deadline

Like any legal action, it is necessary to ask the question of the prescription of the action.

Indeed, the article 122 CPC has:

It constitutes a plea of inadmissibility any means tending to declare the opponent inadmissible at his request, without examination on the merits, for lack of right to act, such as lack of quality, lack of interest, prescription, the delay prefix, the thing judged.

Before 19 June 2008, the common law prescription of 30 years applied (2262 of the Civil Code, which in fact amounted to a lack of prescription given the 20-year validity period of the patent).

The prescription has nevertheless been changed since Law n ° 2008-561 of June 17, 2008. Since the prescription of ordinary law is 5 years (2224 of the Civil Code).

Starting point

Due to the writing of the article 2224 of the Civil Code, the starting point does not seem to be the filing of the patent application, because at this date the application is secret.

Some think that the starting point of the deadline would be the date of publication of the application (Paris District Court, 3rd Division, 1st Sect., 25 April 2013 or Court of Appeal of Paris, Pole 5, 1st ch., November 8th, 2016, RG n ° 2014/15008).

It would be much more logical to consider that the prescription of the action runs from the date of date of publication of the grant of the patent (Paris District Court, March 13, 2015, 3rd Division, 3rd Section, RG No. 2013/09605) or Court of Appeal of Paris, pole 5 bedroom 2, September 22, 2017): it is at this date that the thirds are warned of the existence of a true title of industrial property "definitive".

Some have even considered that the prescription of the action runs only from the moment when the person who acts in nullity actually had knowledge of the title which is opposed to it (Paris District Court, 6 November 2014, 3rd ch., 1st Sect., RG n ° 2013/14239 or Paris District Court, 3rd ch., 3rd Sect., December 18, 2015, RG n ° 2014/04698).

I let you get by ...

Prescription period not running?

It is possible to ask whether in some cases the limitation period does not begin to run.

In my opinion, if the plaintiff at the action in nullity is a minor (or a major under guardianship), the article 2235 of the Civil Code order not to run the limitation period (or suspend it).

This provision immediately brings to mind another, more interesting case: what about a society that is not yet formed? Personally, I will find it logical that the prescription does not run until society is formed (because it can not act before), but we must recognize that nothing is provided by law (or at least that I know).

New starting point in case of limitation?

In the event of a limitation, it seems reasonable to think that a new limitation period is starting to run again.

Contractual modifications of the limitation period

It is a priori possible that a license agreement will change, within a window between 1 and 10 years, the limitation period (2254 of the Civil Code).

This new deadline will only apply between the parties to the license agreement.

Special case of counterclaim

The counterclaim is concerned with the prescription, just as with the main action (see above).

The prescription of the counterclaim is not suspended by the introduction of the main action: the prescription is suspended only on the date of filing of the counterclaim with the registry (C. Cass. 2nd civ. November 26, 1998, No. 96-12262).

Prescription invoked at the appeal stage

The prescription can be invoked at first instance, but also at the appeal stage (2248 Civil Code).

From May 23, 2019


Since the PACTE law, we can say that it is simpler (or not…).

Indeed, Article 124 of the Law No. 2019-486 of May 22, 2019 on the growth and transformation of enterprises (or law PACTE for intimates), provides that the action nullity is now imprescriptible.

This provision is transcribed in Article L615-8-1 CPI.

Transitional provisions

The transitional provision (Article 124, III of the Law No. 2019-486 of May 22, 2019 on the growth and transformation of enterprises) provides that this imprescriptibility applies to all patents in force except for decisions having the force of res judicata.

First, it is unfortunate to have excluded titles that are not in effect since a infringement action may be initiated on the basis of an expired title, provided that the prescription for that action is not acquired.

Debate on retroactivity

Once the transitional provisions are stated, we may ask whether this wording indicates that a prescription already acquired is retroactively canceled?

Formally, the transitional provision does not say: "for patents in force and even if the prescription is acquired".

Therefore, does this provision call into question the prescriptions already acquired?

Indeed, some could rely on theArticle 2222 of the Civil Code which provides that "The law that extends the duration of a prescription or a time limit of foreclosure has no effect on a prescription or foreclosure acquired".

Nevertheless, we must not forget that the court of cassation accepts the fact that a law provides for retroactivity of its provisions: it then requires that this law be explicit regarding this retroactivity.

Most often this retroactivity is justified by imperatives of general interest (Court of Cassation, 1re Civ., 18 June 2014, appeal againsto 13-13471) because even an explicit retroactivity can be dismissed by the court of cassation if the justification does not seem sufficient (Court of Cassation, Soc., March 21, 2012, appeal againsto 04-47532).

In my opinion, retroactivity must apply here because there is no other way to interpret the transitional provision.

Indeed, assuming that this provision does not provide for retroactivity, then what does it mean? That this only applies for the future (since this only applies to titles in force on the date of publication of the law)? Why, then, did it make a transitional provision if, in fact, the general principles of law in time were to prevail?

Why add " They have no effect on decisions having the force of res judicata ": If there is no retroactivity, such precision is meaningless since these decisions are a thing of the past. The only explanation for this sentence is (from my point of view) to explain that a judicial decision having recognized the prescription of the action for annulment can not be called into question because of the retroactivity provided for by the transitional provisions.

In conclusion, if the transitional provisions do not contain the word "retroactive", there are no other reasonable interpretations and such retroactivity must be recognized.

… Besides, it greatly simplifies our life because the previous situation was really too complex…

Purpose of cancellation


The patent may be canceled in whole or in part (L613-27 CPIparagraph 3).

Total cancellation of the patent

In case of cancellation of all claims of a patent, the patent is annulled and is deemed never to have existed (see below for effects).

If the total cancellation of the claims does not pose a major problem, partial cancellation requires more development.

Partial cancellation of the patent

In reality, the terminology can cover two distinct notions:

  • some claims are canceled while others are kept as is;
  • certain claims are modified (their scope is limited) by the judge via a referral to the INPI (L613-27 CPIparagraph 3).
Cancellation of certain claims
Fate of an independent claim when canceling another independent claim

Each independent claim is ... independent: thus, the nullity of an independent claim has no automatic impact on the other independent claims (Paris District Court, 3rd c. sect. May 02, 2001).

Fate of a claim dependent on a canceled claim

If a claim is considered invalid, this does not automatically mean that the dependent claims must be rescinded.

For example, the cancellation of a claim for lack of inventive step does not automatically result in the nullification of the claims that depend on it (C. Cass. com. May 20, 2014, No. 13-10061 or C. Cass. c. com., January 7, 2014, No. 12-25955).

This may seem obvious with respect to a nullity for lack of novelty orinventive activity (dependent claims constituting limitations of the claims on which they depend), but the Court of Cassation is obliged regularly to recall it (C. Cass. com. July 9, 2013, No. 12-18135).

Similarly, a claim may be insufficiently described while a dependent claim is no longer so (the precise embodiment then claimed is precisely described in the description).

The same goes for thepatent extension beyond the application as filed: this defect does not necessarily "contaminate" the dependent claims (C. Cass. com., July 12, 2005, No. 04-10105).

If a claim is annulled, the claims that depend on it must be considered independent and their validity must be analyzed (Court of Appeal of Paris, 4th ch. sect. B, May 7, 2009) while taking into account the context of the canceled claim (Court of Appeal of Paris, 4th ch., November 8, 2000).

Fate of a dependent claim to a maintained claim

On the other hand, if a claim is considered valid, it does not automatically mean that the dependent claims must be upheld.

Of course, if a claim is considered new and inventive, the dependent claims of it:

Limitation of certain claims

In most cases, the limitation of the claims is requested by the owner of the patent himself to avoid a total cancellation of the claim requested by the opponent.

In case of limitation, the judge refers the patentee to the INPI to proceed to it (L613-27 CPI3rd paragraph).

Nevertheless, this limitation is not a right: if the judge prefers a total annulment, he may very well pronounce it (Court of Appeal of Paris, 4th ch., Sect. B, May 20, 2005).

Examples of limitations

Judges have already agreed to limit claims as part of a extension of the purpose of the patent beyond the content of the application as filed (eg if a claim had been extended to " cooking appliance " instead of " deep fryer ", The judge can return to the original smaller scope in order to restore his" true scope », C. Cass. com., November 15, 1994, No. 93-12917).

Nevertheless, if the patent defect consists in the addition of a limitation to a claim contrary to Article L613-25 CPI (c) (eg limitation not initially disclosed by the request), the judge can not simply delete this feature: indeed, such a deletion would constitute a defect under Article L613-25 CPI (d) because the scope of the claim would be expanded.

It seems possible to obtain a limitation if thescope of patent protection has been increased after delivery (L613-25 CPI d)): in this case the judge may limit to the initial bearing of the granted claim (as long as this limitation is not contrary to Article L613-25 CPI c)).

Moreover, if the claim presents alternatives (eg " aluminum or iron" ) and only one of the alternatives is new and inventive, it seems possible that the judge pronounces a limitation to the only branch of the valid alternative.

Finally, if a dependent claim has been found to be unpatentable even though the claim on which it depends is, the judge may impose a limitation by removing that dependent claim.

Unlikely Limitations

If in order to overcome the flaw affecting a claim, it is necessary to carry out a complete patentability analysis on the basis of the limitation introduced, it is likely that the judge will grant it: the role of the judge is not to redo an examination. by examining the different proposals for modification of the holder!

A pure and simple cancellation of the claim is more likely ...



On the patent

The cancellation of a patent has an effect absolute or erga omnes (L613-27 CPI).

Moreover, cancellation has an effect retroactive (general principle of invalidity of legal acts) on the patent: the rights then attached to the patent are deemed never to have existed (" principle that what is zero is deemed never to have existed », C. Cass. 3rd civ., June 22, 2005, no. 03-18.624, " the cancellation of a patent leads to its annihilation on the day of the filing of the patent application », C. Cass. com., June 12, 2007, No. 05-14548).

In the event of a European patent, it is not excluded that a French decision may annul a patent, whereas a parallel opposition may subsequently maintain the patent in a modified form: the absolute effect of the annulment the EPO's subsequent decision (although, in most cases, French judges stay ingood administration of justice, Paris District Court, c. 03, March 24, 1999).

On the supplementary protection certificate

The cancellation of the patent entails the disappearance of the supplementary protection certificate (or CCP) attached to it (L613-28 CPI).

The alleged acts of infringement

Since the patent is canceled retroactively (see above), the acts of exploitation of the invention can no longer be considered to be acts of infringement (C. Cass. com., June 12, 2007, No. 05-14548).

The abusive nature of the infringement action

The fact that the patent is canceled does not make de facto infringement action (see 32-1 CPC, Court of Appeal of Paris, 4th ch., Sect. A, February 5, 2003 and Court of Appeal of Paris, ch. 04, sect. B, March 29, 2002).

The assignments of the patent

If the patent is totally annulled, the possible assignments (the patent of which could have been the object before its cancellation) can be canceled for lack of object and / or cause (C. Cass. com., July 8, 1981, No. 79-15844 or Court of Appeal of Paris, 4th ch. sect. A, 19 October 2005).

If the patent is partially annulled, the judge must seek the " common intention of the parties By the interpretation of the contract and determine if a contract would have been signed for a patent thus limited.

The legal basis of this annulment seems to be, according to the doctrine, the guarantee of hidden defects (1641 Civil Code) owed by the transferor to the transferee (a minority argued that the guarantee due was related to the non-eviction guarantee by third parties, Court of Appeal of Paris, 4th ch. sect. A, 19 October 2005).

In accordance with the common law of nullity, it is advisable to try to put the parties in the situation which was theirs before the conclusion of the contract. If the patent can not be rendered, it is possible (1644 of the Civil Code):

  • to return the sale price patent through a redhibitory action (total cancellation of the patent) (1648 of the Civil Code);
  • to restore part of the transfer price patent through a estimated action (partial cancellation of the patent);

Profits realized by the transferee during the effective period of the patent may be deducted from the transfer price for " compensate for The destruction of the patent and its non-restitution (1647 Civil Code) but this remains at the discretion of the judge.

Moreover, it is quite possible to provide for a clause in the contract of assignment exempting the transferor from the guarantee (1643 Civil Code) or to provide that the contract would be random contract. This clause must nevertheless be rejected in case of fraud of the seller (C. Cass. Pl., June 30, 1998, No. 96-11866).

On existing licenses

If the patent is canceled in its entirety, the license agreement may be canceled for lack of purpose and / or cause (eg for trademarks, C. Cass. com., June 1, 1999, No. 97-12853).

The legal basis of this cancellation seems to be, as for the assignment, the guarantee of latent defects (for the rental of a thing, 1721 Civil Code) due by the licensor to the concessionaire.

In the event of partial cancellation of the patent, the licensee may (in the image of what happens for the assignment) request the annulment of the contract for lack of object and / or cause or a reduction of royalties for the future .

Nevertheless, it appears that licenses already paid must not be repaid even if the patent is deemed never to have existed (C. Cass. com, January 28, 2003, No. 00-12149, the licensee having benefited This approach is consistent with the classic position that the termination of a contract operates without retroactivity for successive execution contracts (C. Cass. Civ. 1, October 1, 1996, No. 94-18657).

In addition, the licensor may be liable (on the basis of 1721 Civil Code paragraph 2):

  • to return a portion of the royalties received from the date on which the licensee's disturbance began, and
  • pay damages for the future loss of profits.

It is quite possible to provide for a clause in the license agreement exempting the grantor of the guarantee (C. Cass. Company, March 11, 1986, No. 84-11231).

On transactions between an alleged infringer and the holder

It is possible that an alleged infringer has traded with the patentee to avoid a lawsuit.

In this case, the transaction will not be canceled and the sums paid have no particular reason to be reimbursed (C. Cass. com, January 28, 2003, No. 00-12149).

On the decisions having condemned third parties for counterfeiting

It may happen that a person is, initially, sentenced on the basis of a patent and that, in a second time, this patent is canceled.

This raises the question of the conflict of res judicata (ie the conviction of the infringer) and the retroactive annulment of the patent which would deprive the conviction of a legal basis.

After some jurisprudential hesitation (ex. C. Cass. com., March 3, 2009, No. 06-10243), the Court of Cassation, in plenary session, finally indicated that the cancellation of a patent does not base the refund of sums already paid in execution of its conviction (C. Cass. pl. n ° 10-24282, February 17, 2012): the authority of res judicata is a principle superior to the retroactivity of nullity.

Nevertheless, it is reasonable to think that the enforcement judge (L213-6 COJ) will refuse:

For'General Counsel Le-Meslethese last points would be justified by the wording of the article itself L613-27 CPI : the annulment has an absolute effect, thus justifying the cessation of the effects of the judgment of conviction for the future.


The decision rejecting the invalidity of a patent has no absolute effect (C. Cass. com., May 5, 1987, No. 85-16892).

Nevertheless, if there is the triple identity of demand, parties and cause, the authority of the res judicata will prevent the plaintiff to the action to ask for the nullity (1351 CPC).

Nevertheless, it will remain possible:

  • for third parties to request the invalidity of a patent for the same causes / reasons, or
  • for the same party to request the cancellation of the patent on the basis of a new ground for annulment or cause (C. Cass. com., March 10, 1980, No. 78-11697):
    • knowing that by " grounds for cancellation "Or" cause "must be understood insufficiency of description, nullity, inventive step ... (Court of Appeal of Paris, 4th ch. sect. A, May 7, 1996) not important being the proofs of this reason (ie documents of the prior art, characteristics attacked different for insufficiency of description Court of Appeal of Paris 4th Ch., May 27, 1998, etc.);
    • if the patent has been modified, it is probable that the same reason may be re-invoked, except (in order not to come into conflict with the authority of res judicata):
      • the one that caused the modification of the patent;
      • arguing that the patent amendment is an extension of the protection of the post-grant application (L613-25 CPI d)).
    • Nevertheless, it should be noted that the Court of Appeal of Paris seems to return to this jurisprudence (Court of Appeal of Paris, Pole 5, 2nd chapter, May 9, 2014) on the ground that the plaintiff must present, at the time of the first application, all the means which he considers capable of founding the application (application of the principle of concentration of means " of the C. Cass. Plen., July 7, 2006, No. 04-10672).

In the event of a European patent, it is not excluded that a French decision may maintain a patent while a parallel opposition later cancels / amends the patent. In this case, the decision of the European Patent Office is binding on the national courts (A68 CBE).

The objection of nullity


In order to defend itself, it seems quite possible to raise a nullity exception patent (ex. C. Cass com., December 17, 1964, No. 60-12295 in which an objection of nullity is raised by a party).

Legal nature of the exception

The term " exception Seems, in fact, to be an abuse of language because exceptions of nullity Of a patent are not procedural exceptions within the meaning of the Code of Civil Procedure (see the Article nullity exception). 112 CPC).

If the law of July 5, 1844 (Article 46) provided for the possibility of resorting to an exception allowing the criminal court to know the validity of the patent, this provision has now disappeared: exceptions of nullity Raised today seem to be, in fact, defenses at the bottom (provided for in Article 71 CPC):

It constitutes a defense on the merits of any means that tends to reject as unjustified, after examination on the merits of the law, the contention of the adversary.

Exception and counterclaim

If the objection of invalidity requires more than this rejection, the plea of nullity should have been made in the form of a counterclaim (64 CPC): therefore, any additional claim (eg restitution of amounts paid under a license agreement) expressed outside the limitation period must be declared inadmissible (C. Cass. 1st civ. 1 December 1998, No. 96-17761).

Competent courts

In civil matters

It is questionable whether, in accordance with Article L615-17 CPI together D211-6 CPIonly the District Court of Paris is competent when a nullity exception is raised.

The answer is Yes !

In fact, the judge of the principal is also competent to know of all the defenses " with the exception of those raising a matter within the exclusive jurisdiction of another jurisdiction " (49 CPC): this is the case with the patent and a referral will have to be made.

In criminal matters

As for the counterclaim in nullity, the criminal court can know the patent's nullity exception (384 CPP): the criminal judge is competent to rule on any exception raised.

The defendant except

Is it possible to invoke an invalidity of the patent where the exclusive licensee has brought the action for infringement in the main proceedings (see above with regard to the counterclaim).

In my opinion, the " admissibility The exception must not be analyzed in the light of what can be done for an action: the exception must simply be relevant to defend itself.

Therefore, if a counterclaim in nullity can not be directed against a licensee, the exception, it seems to be opposed to any person (because it allows to defend, see C. Cass. 1st civ., February 21, 1995, No. 92-17814 in the matter of sale, the nullity of a contract is opposed to a third party).


If the objection of nullity is allowed

The effect of a judgment welcoming a nullity exception is widely discussed in the literature.

If some think that, contrary to the main and counterclaim actions, the nullity exception does not cause a patent annulment erga omnes (ie opposable to all) (because the exception is only for the rejection of adverse claims and not the nullity of the patent), the Court of Cassation has already pronounced for an absolute effect of this cancellation (C. Cass. , January 20, 1987, Conforglace v. Miroiterie Voironnaise H. Heir: PIBD 1987, No. 410, III, p.

It is necessary to refer to the operative part of the decision (480 CPC) to determine whether the question of nullity raised by an exception will have the force of res judicata (1351 CPC).

If the objection of nullity is rejected

It is quite likely that the effect of the rejection of a plea of nullity is comparable to the rejection of an action for nullity (see above).



In civil procedure, there is a Latin adage qua temporalia sunt agendum, perpetua sunt ad excipiendum " (ie " what ephemeral by action is perpetual by way of exception") (Ex. C. Cass. 3rd civ., May 10, 2001 No. 99-11762).

Thus, it seems quite possible to raise an objection of nullity of the patent as a defense, regardless of the eventual prescription of the action.

Limitation period expired

Nevertheless, the Court of Cassation specifies that the exception of nullity is admissible only if the limitation period has expired (C. Cass. com. May 26, 2010, No. 09-14431 or C. Cass. 1st civ, May 4, 2012 No. 10-25558 or C. Cass. com. Dec 3 2013, No. 12-23976): if it has not expired, priority must be given to the counterclaim in nullity.

Commencement of contract


In the context of a contractual relationship, the execution of the contract impedes the perpetuity of the exception (C. Cass. 1st civ, May 4, 2012 No. 10-25558), was the nullity invoked relative or absolute (C. Cass. Civ. 1st, 24 Apr. 2013, No. 11-27082).

License agreement case

If, in general, this principle does not apply (because there is often no contract between the owner and the infringer), we can wonder about the applicability of this principle in the hypothesis where a licensee is sued for infringement to exceed the limits set by its license agreement.

If the licensee has already paid licenses (ie execution of part of the license contract), will he be entitled to invoke a nullity exception against the patent, subject of the license?

In my opinion, the licensee would be perfectly entitled to raise this exception, since the nullity exception is not directly directed to the license agreement itself, but to the patent that is the subject of the contract.

Limitations on patent challenge


The owner of a patent (respectively the assignee) may wish to insert in the license (or assignment) contracts a clause prohibiting the direct or indirect challenge to the validity of the patents granted (respectively assigned) (clause deemed a priori valid by principle C. Cass. com, December 7, 1964).

Consequence in the event of non-compliance with the clause

The Court of Cassation indicated that the violation of this obligation should be sanctioned by a dismissal (C. Cass. mix., February 14, 2003, Nos. 00-19423 and 00-19424).

Limitation and framework of the contract

A priori, such a clause may limit the bringing of an action for nullity (as principal or counterclaim) as part of the performance of the contract.

Nevertheless, if the licensee is prosecuted for infringement (because he has overstepped the contractual framework of its license), it seems possible to defend itself by raising the nullity of the patent by way of counterclaim or exception (C. Cass. com., December 17, 1964).

Limitation and Community law


A clause prohibiting the challenge of a patent in a license agreement was historically prohibited by the Regulation 2349/84 of 23 July 1984 (ban on free competition, see also Commission Decision 2 December 1975, 76/29 / EEC).

Principle: a probable ban on limitation

If the Regulation 772/2004 of 7 April 2004 (now replacing Regulation 240/96 and Regulation 2349/84) does not explicitly list prohibited clauses, it is reasonable to think that such a clause would still be prohibited (at least, it should be analyzed, on a case-by-case basis, under Article 101 (1) 101 (3) of the Treaty on the Functioning of the European Union).

A clause terminating the agreement in the event of a dispute remains possible (Article 5.1.c of the Regulation 772/2004 of 7 April 2004).

Exception to this prohibition

The ECJ had stated some time ago (judgment of 27 September 1988 of the ECJ, case 65/86) such a clause should be prohibited except:

  • whether such a clause was intended to put an end to a dispute pending before a national court;
  • if the license is granted free of charge;
  • if the license relates to a technically outdated process.

Limitation and former patentee

The assignor owes to the assignee a guarantee of eviction of his personal fact, a guarantee of public order (1628 Civil Code) that he can not dismiss.

Therefore, he can not claim the nullity of the patent as principal.


  1. Hello,

    Congratulations for your blog.

    In case of res judicata, it is indicated that it will remain possible for the same party to request the cancellation of the patent on the basis of a new ground for annulment.

    However, in its judgment n ° 12/15690 of May 9, 2014, the Paris Commercial Court applies the Juriprudence Cesareo. P. Vigand comments on this decision in the Industrial Property n ° 9, September 2014, comm. 61.

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