The French INPI‘s magazine carries in its issue PIB1198 a review of a French court decision that I find interesting. A company had asked an industrial property agency to draft and file a patent application for an invention consisting of a signalling cone. Following the filing of a patent infringement action, some of the claims were annulled by the Court for lack of inventive step.
As a result, the patent-holding company sued the industrial property agency that it had hired to draft the patent application.
The decision refers to article 422-1 of the French Industrial Property Code, which defines the tasks performed by an industrial property agent and absolves the defendant, the industrial property agency, as the patent holder did not request services beyond those customary in such an agency. Moreover, these services are advisory and the result is not guaranteed. Nor, according to the Court, can the agency be criticised for not having dissuaded the company from taking legal action for infringement of the patent.
The agency reported that it had carried out an exploratory search, which could not be assimilated to an exhaustive search, and it is also stressed that the granting of the patent by the INPI does not guarantee that it cannot subsequently be revoked by the Courts.
This decision highlights one of the peculiarities of patent law, which is set out in Article 42 of the Spanish Patent Law 24/2015:
Article 42. Publication of the patent brochure.
The brochure shall state that the patent is granted without prejudice to third parties and without guarantee of the State as to the validity of the patent and the utility of the subject matter to which it relates.
While in Law 24/2015 what is said is that it will be stated in the brochure, in Law 11/86, article 40 states the same thing, without the need to refer to the brochure:
Article 40
1. The grant of a patent which has been prosecuted in accordance with the procedure with prior examination shall be without prejudice to third parties and without guarantee by the State as to the validity of the patent and the utility of the subject matter to which it relates.
For someone unfamiliar neither with patent law nor with grant procedures with substantive examination, it is reasonable that the above may seem surprising. But it is not if it is known that two of the main requirements that an invention must meet in order to be eligible for patent protection are novelty and inventive step. In order to evaluate both requirements, the invention is compared with the so-called “prior art”, which has a definition as broad as the one offered in Article 6.2 of Law 24/2015:
Prior art consists of everything which, before the filing date of the patent application, has been made available to the public in Spain or abroad by written or oral description, by use or by any other means.
That is the key, that “everything” is really immense and despite the fact that patent offices have examiners specialised in the different fields of technology and powerful search tools, it is impossible to rule out that at some point in the future a document, a prior art element, may arise thus jeopardizing the validity of the patent.
The AI golden age threatens to exponentially increase the content of prior art, especially when that generated by certain algorithms (all the claims.com , All Prior Art) acquires descriptive sufficiency. On the other hand, there are multiple sources of prior art, including science fiction and literature.
In addition to its immense magnitude that makes it virtually unmanageable, prior art can also provide surprises, when a patent document filed some years ago is published out of the blue, sometimes changing the outcome of an assessment of novelty and inventive step.
The publication of a patent application several years after its filing may be because such inventions were declared to be of interest for the national defence, classified and several years or decades later declassified and published, becoming part of the state of the art. Another instance of late published patents are submarine patents. This so-called “secret prior art” or “conflicting applications” is not dealt with in the same way in all legislations and is one of the pending issues of international harmonisation being addressed by the group B+.
The degree of uncertainty as to the validity of the patent is not the same in all patent granting procedures. There are procedures without substantive examination, where the uncertainty will be absolute. Other granting procedures provide with examination of patentability, which introduces a greater guarantee on the future of the patent if granted, and there are intermediate procedures with a search report. Finally, numerous administrative patent revocation procedures are available, allowing a patent to be revoked within a relatively short period after grant. However, no one can guarantee that a patent cannot be revoked during its legal life and thereafter (in Spain up to 5 years after its expiry, article 103.2 of the Patent Law 24/2015).
Conclusion The French judgment is entirely logical and in line with common sense. No one can guarantee that a patent granted by a Patent Office will not subsequently be annulled or revoked by the Courts. The immensity and unpredictability of prior art are to blame. On the other hand, the frustration of those applicants who see their patents revoked, when they are already exploiting them commercially, is understandable.
Leopoldo Belda Soriano
Examen Sustantivo 
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