Patents

• Author: International Law Group

In April 1985, the Societe Civile D'Investigations Pharmacologiques D'Aquitane of Bordeaux, France (hereinafter "SCIPA"), entered into a joint development contract, concerning the development of new products for medical use, with Horphag Overseas Limited of the English Channel Islands (hereinafter "Horphag"). The contract specified that the parties would jointly file any patent applications resulting from said collaboration. The contract clearly stated that any litigation concerning the interpretation or implementation of the contract would remain under the exclusive jurisdiction of the courts of Bordeaux, France.

On April 9, 1985, a United States patent application ('360 patent) was filed, listing Jacques Masquelier of SCIPA as the sole inventor of a method for extracting an active ingredient from plants able to counteract the aging of cells. Eight days prior to this filing, Masquelier had assigned his rights in the prospective '360 patent to SCIPA and Horphag. In 1994, SCIPA further granted its rights in this '360 patent to International Nutrition Company of Liechtenstein (hereinafter "INC"). Horphag filed suit in the Bordeaux court the following year to void the assignment to INC. In 1996, Masquelier reconfirmed his assignment to INC of any rights that may revert to him.

The Bordeaux court held that the 1994 assignment of rights was void. Masquelier had violated French statutes barring joint owners from unilaterally assigning or granting their ownership stakes in patents. Furthermore, the court also voided the 1996 confirmatory assignment of rights on the grounds that Masquelier had lost these rights the first time he assigned them in 1994. Since INC had received no interest in the '360 patent from Masquelier's void assignment of rights, it therefore retained no rights regarding the '360 patent.

INC brought suit in the Connecticut federal court, alleging copyright infringement of the '360 patent by Horphag and other affiliates. The court extended international comity to the Bordeaux decisions because they had the power to determine ownership interests under the joint development contract, and because they were not seriously contrary to American principles of law. The district court further found that INC retained no ownership interest in the '360 patent and therefore lacked...