EUPillar SA GlaxoSmithKline Biologicals v SA Sanofi Pasteur - 2007/AR/3214

Summary

The validity and the infringement of a patent are both totally different questions. Consequently, if a confidential agreement authorises a party to use the confidential information with the sole purpose of evaluating the opportunity of introducing an infringement action, it cannot make use of this information to amend the patent with the aim of meeting the nullity motives which might affect it. The holder of a patent may modify it except if, for that purpose, he makes use information which he is not meant to know and which was covered by a confidentiality agreement. In view of obtaining redress for any damage caused by the violation of a contractual obligation not to do something (such as the one which is the object of a confidentiality agreement), the creditor has the right to ask that the legal acts taken in violation of this obligation be annulled. This is a particular application of the principle of “reparation in kind”. In this case, reparation in kind implies the nullity of the legal act in question. The patent claims that were amended in violation of a confidentiality agreement cannot be admitted in the procedure. As to the request to force Sanofi to withdraw the same patent claims before the EPO and to forbid it from filing any other modified claim, based entirely or partially on the confidential information, in any country or before any patent office, the Court is not competent to issue such an order. Indeed, if it is true that in matters relating to a contract, a person domiciled in a Member State may be sued in another Member State, in the courts of the place of performance of the obligation in question, in the present case, the obligation of Sanofi is an obligation not to do something which must be performed at its head office. The head office of Sanofi is in France. Moreover, Art. 22(4) Brussels I Regulation provides that “in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place. Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State.” Short critique It is interesting that the court decides that an obligation not to do something, which in fact by definition is world-wide, has to be performed at the head office of the defendant. The court uses a different route but reaches the same practical conclusion as the ECJ in Besix, where it was decided that if it is impossible to determine the place of performance of the obligation, one has to fall back on the general rule of Art. 2 Brussels I.