Posted: August 25th, 2022
TATA STEEL IJMUIDEN B.V. et al v. ARCELLORMITTAL SA, Court of Appeal Luxemburg, 27 July 2022, Case no. 113/22 – IX – CIV
ARCELORMITTAL has submitted a patent application (EP 2 906 734) on “A method for manufacturing a metal sheet with a ZnAl [Zinalium, a zinc-based metal] coating and with optimized drying, corresponding metal sheet part and vehicle”, as well as a divisional patent application (EP 3 056 581).
The TATA STEEL group (in short) wanted to be recognised as co-owner of these applications on the basis of a report drawn up by TATA STEEL employee Sylvia MEIJERS within the framework of the VRC (Virtual Research Center) research project, more specifically the VRC 0211 project, a centre set up following the signature on 16 May 2000 of an R&D (Research and Development) agreement between the TATA STEEL group and ARCELORMITTAL. ARCELORMITTAL contested all claims and filed a counterclaim requesting damages for the profits lost since the grant of its patents was delayed by the introduction of these proceedings.
In an earlier judgment, (which can be read here) the District Court of Luxemburg dismissed Tata’s claims, as well as ARCELORMITTAL’s counterclaim.
At first instance, it was agreed to apply Belgian law to the question of co-inventor status in the case of Sylvia MEIJERS, as her research, which was invoked in support of the application, was carried out in Belgium, with the logistical support of an association under Belgian law (CRM), within the framework of an agreement implicitly governed by Belgian law (VRC-CRM).
The appeal does not concern the applicable law, so the Court of Appeal rules that it is appropriate to take up what was thus decided by the court. The Court of Appeal also confirms that the relevant provisions of Luxembourg and Belgian law are substantially the same.
From the applicable Belgian law as well as from Articles 60 and 61 EPC the Court of Appeal derives that it is clear that there always has to be a fraudulent character to the evasion, which was neither invoked nor, above all, proven by TATA STEEL. The judges of the first instance were therefore right according to the Court of Appeal to dismiss the first instance of the claim: this part of the judgment a quo must be confirmed.
The Court of Appeal reviews law and case law and concludes that from all these definitions of invention and inventor, a clear line emerges, which grants protection only to the one who has made a substantial, important contribution.
After a review of the facts, it follows according to the Court of Appeal that no contribution, a fortiori substantial, of Sylvia MEIJERS in the development of the invention is established and that the quality of inventor cannot be granted to her. The Court of Appeal also finds no breach of contractual or legal obligations.
With respect to TATA STEEL’s request for an unlimited and free right to use the claimed invention and, if applicable, the patent as granted, the Court of Appeal rules that since there is no evidence of a link, however minimal, between the work carried out by TATA STEEL, the TATA STEEL group’s requests for a free and unlimited right to ARCELORMITTAL’s claimed invention remain pure allegations. The Court of Appeal therefore does not grant them.
Finally, the Court of Appeal rejected ARCELORMITTAL’s counterclaim for damages, as even if a fault had been found against the TATA STEEL, ARCELORMITTAL failed to prove concrete damage.