France: Confidentiality obligations and SPC update

January 26, 2016

In June 2015, in a case concerning patent validity, the French Supreme Court (Cour de cassation) issued a decision (Cass Com 13-15.862) relating to confidentiality obligations to prevent any risk of public disclosure in an inter partes relationship:

i) Contrarily to what was mentioned in previous decisions rendered by courts of appeal, the Supreme Court decided that a confidentiality obligation could not be implied in commercial or business relationships between parties.

ii) To be valid, a confidentiality clause does not need to be in writing.

iii) An ownership clause – such as the usual "The transmitted documents are the ownership of the sender and cannot be transmitted" – should not be equated to a confidentiality clause.

In view of the above, I want to highlight the necessity of drafting written confidentiality clauses and the use of a corresponding "Confidential" mark on the documents they relate to.

In September 2015, the Tribunal de Grande instance of Montpellier issued a first instance decision (17.09.2015 RG2013/05047) in a case where the contractual relationship between the parties was based on an oral agreement or a so-called gentlemen's agreement concerning product development including exclusivity owed by the consultant for all projects retained by the creator.

According to the decision:

a) The protection of trade secrets is one of the consequences given to the consultancy agreement by equity, usage or law.

b) Scientific or technical information that result from the collaboration with a consultant are not considered information belonging to the public domain.

c) The use of trade secrets by the consultant to develop his own product or commissioned by a third party is a breach of contractual obligations of loyalty and confidentiality.

Impact of CJEU Seattle Genetics decision

The French Patent Office has confirmed that the new rule for calculating the duration of SPCs also applies to SPCs under examination.

For the already granted SPCs, the FPO can neither modify the granting decision, nor correct the term of the SPC. For informative purposes only, the patentee has the possibility to proceed with a registration in the French Patent Register in order to inform third parties about the date on which the marketing authorisation has been notified.