The legal effects of a patent invalidity

بسم الله الرحمن الرحيم

The legal effects of a patent invalidity

Written by: Sami A Alawad.

Introduction:

In my presentation before I talk about the patent expiration and the invalidation cases according to the Jordanian patent law, in my presentation I had focus on my point of view that there is a mistake in article 30 from the Jordanian patent law.

From my point of view the mistake in article 30, that there’s a big difference between the elapsing of the patent and the invalidation of patent, at this presentation I mention one deference as example which it is the retroactive effect of the invalidity, but I saw that this is not enough and the subject of the patent invalidity needs a lot of explaining, so I decided to write my essay about the legal effects of the patent invalidity.

By reading the Jordanian patent law we found the legislature talk about the patent invalidity in very wide way without talking in the details of the legal effects in the patent law.

So I divide my essay in tow topics the first one I talk about the invalidation in Jordan patent law and in the second topic I talk about the legal and juristic principles which treat the invalidity:

I: – The invalidity in Article 30 from JPL

The provisions in Article 30 related to patent invalidation:

” A. The patent title and rights shall lapse in any of the following cases:
2- Issuance of a final judgment on the patent invalidation by the competent authority.

B. The Registrar shall announce the lapsed patents under paragraph (A) of this Article in the way prescribed in the regulations to be issued for this purpose.
C \ 1- Whoever is concerned may resort to the High Court of Justice for invalidation of the patent granted in contravention to the provisions of this law. The Registrar shall strike the patent off the Register when the invalidation decision is issued.

About article 30 paragraph A\2 :
In this paragraph the lawmaker said that the title of the patent and the rights of the patent shall lapse in the case of Issuance a final judgment on the patent.
In this text we found that the effect of the invalidation which decided by the court well be the lapse of the patent and its rights, but this text is not enough to tell us about all effects of the patent invalidation because its written in general words, but anyway we understand that the patent (certificate) and any right granted to the invention shall execute.

About article 30 paragraph B:
It talks only about the regulation which will issued to recognize the registrar announce of the lapsed patent , in this paragraph there’s nothing about the effect of the invalidation.

About article 30 paragraph C \ 1 :

This paragraph talk about the resorting to the High court of Justice to invalidate a patent , also it says that the registrar shall strike the patent off when the court issued the invalidation judgment.

This about the provisions of the invalidation in the Jordanian patent law , this provisions are not enough to control the rules off the patent invalidation effects ,to know what is the effects shall attend by the patent invalidation, we had to look in the civil law , legal principles ,and the juristic principles which it organize this issue.

II : – The legal principles of the patent invalidation effects:

The result of the patent invalidity is executing the invalid patent retroactively from the legal side , also the judicial statement of the invalidity has an absolute conclusiveness against the all.

A: The retroactively effect of the invalidation:

When the court issued the statement of invalidate the patent this attend that the patent shall be absolute nullity as if it were not be in the past , present and future too.
However the invalidation demands that the subject matter of the patent well be permissible for all people any one can use sell import, or offer to sell the invention.

In addition the patent invalidity has another impact , that all the infringement acts which committed by any infringer shall not considered as infringement acts, but this does not effect the sanctity of the preceding judicial decisions , for example, a person who convicted of the forgery, he cant claim to return the fine funds or to return back the seizure equipments to him.

Moreover, the patent licensing contract and all other types of legal actions become invalid because of lack of contract venue, in this case there’s is no difference between who has good faith or bad faith , with preserving the right of the injured person to claim for compensation according the provisions of the omissive responsibility .

But there is one exception from this rule when the plaintiff in the invalidate lawsuit won the case to return the patent back to himself as he is the real inventor , at this instance the patent well be invalid for the prior owner but all the rights well alienate to the judgment beneficiary.

However its useful to say that when the invalidity related to specific part from the patent, the invalidity well be just about the invalid part.

B : The absolute determinative effect of judicial statement invalidity.

The General rule that the court decision has a relatively determinative effect , but the patent invalidation has a absolute conclusiveness against the all.

In addition there is another result for the absolute determinative , the right to protest in the invalidation not only for the plaintiff but any one who is interested he has the right to protest in the patent invalidation, that mean the invalidity return back to the normal position which is the permitting to all to exploit the invention.

This rule is required logically because the invalid is nothing and the nothingness well never result efficacy, and the invalid shall never be true how much a time go over.

This is about the issuance of the judgment of decree of nullity the patent which I said has a retroactive effect against the all even if the person is not part in the lawsuit.
but if the court decide to dismiss the lawsuit at this instance the effect of the judgment well be relatively between the lawsuit parties when the are same in subject and the legal reason, at this instance any one just the parties he can make any lawsuit for the same reason or any deferent reason to claim that the patent is invalid, not only every one he has a legal interest but also the same plaintiff he can make a new lawsuit to invalidate the patent but shall be base on deferent legal reason.

In addition, the retroactive effect of the invalidity of the patent, which leads to destroy the patent retroactively from the time of issuing this could be justifiable because it is to correct the corrupt situation that existing before, and also the absolute retroactively effect doctrine of the invalidation is necessary for the stability of the legal positions, this is because anything is build in null shall be null.

Case for study:

What if there’s assignment contract between the inventor and another person to exploit the invention for a substitute royalties, thin the licensee use the license and carry a wealth from this invention , after a time a case make against the inventor to invalidate the patent and the court decide that the patent is invalid, after that can the licensee make a case against the licensor to return his money back?
According to the Jordan law and the legal principles when the court decide that patent is invalid the licensee can return back all his money from the licensor on the bases of omissive responsibility and because as I said that the invalid is nothing and the nothingness has no efficiency.
But I find the opposite view in the same issue in the Sudanese industrial property law issued in year 1971 in article 48 \ 1 , and in the United Arab Emirates patent law number 44 year 1992 in article 36 says in both :

” The annunciation of invalidate a patent shall consider null from the date of the issuance, but if there’s a license contract was make according it , the Issuance of judgment on the patent invalidation the licensor shall not have to return back the money to the licensee if the licensee has make a benefit from such contract ”

About the Sudanese and UAE laws I think that this is not true and injustice, because if the licensee cannot return his money back while he is still responsible facing to the others whom pay to him to use or import the invention.

Conclusion:
At the end I see that even if the legislature didn’t mention the effects of the patent invalidation expressly, but that not mean there is no effects because this issue is managed by the civil law as a general law and by the juristic principles.

References

1- Jordan patent law number 32 year 1999.
2- Jordan Civil Law number 43 year 1976.
3- United Arab Emirates , patent law number 44 year 1992 .
4 – Sudan patent Law year 1971 .
5- Jordan Cassation court , principle number 451 \ 1998 published in 1999 page 1873.
6- High Court of Justice , principle number 371 \ 1994 , published in 1995 page 3281 .
7- patent litigation – Thoughts on future practice , Erik Nootboom , published by the internet at
ftp://ftp.cordis.europa.eu/pub/patinnova99/docs/3_9_nooteboom.pdf

8- بحث في دعوى بطلان براءة الاختراع ، د محمد الهيني ،منشور على الانترنت . على الرابط
http://www.courappelfes.ma/ar/actualite/hini.doc

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