Reviewing the Court de Cassation’s decision from January 27th, 2021 (n° U 18-17.063)
In this case, the American law company Vision Sciences (owner of the EP patent 148 988) and their licensees confronted the Italian law company Xmed Srl. These three companies started legal actions for counterfeiting against Xmed for claims 1 to 4 and claim 6 for the French part of the patent.
The Court of Appeal of Paris rejected the counterfeiting action based on dependant claims, explaining that as the main claim had been withdrawn, the counterfeit of its dependant claims could not happen.
The decision was rejected on this point. If the validity of a main claim results in the validity of its dependant claims, the withdrawal of a main claim due to the lack of inventive step or novelty does not necessarily results in the withdrawal of the dependant claims. This means that any novel and inventive claim, even if dependant on a withdrawn claim, can be counterfeited.
This conclusion will not come as a surprise for IP professionals. However, it shines a light on how important dependant claims are as a fallback position during litigation proceedings. This also answer our clients’ question and surprise as to why we work so hard on perfecting claims!