Patent litigation in France: overview

A Q&A guide to patent litigation in France.

The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.

To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.

This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.

Sabine Agé and Eddy Prothière, Véron & Associés
Contents

Sources of law

1. What are the principal sources of law and regulation relating to patents and patent litigation?

France is a civil law country. The substantive law relating to patents is contained in the French Intellectual Property Code, which codifies almost all relevant acts and regulations.

Other relevant provisions can be found in the:

  • Civil Code.

  • Commercial Code.

  • Public Health Code.

Rules applicable to patent proceedings are contained in the French Code of Civil Procedure.

Other applicable sources of law arise from European legislation and international treaties, which take precedence over national rules. In particular, France is party to the:

  • WIPO Paris Convention for the Protection of Industrial Property 1883.

  • WTO Agreement on Trade-related Aspects of Intellectual Property Rights 1994.

  • Patent Cooperation Treaty 1970.

  • European Patent Convention 1973.

France is also party to the Unified Patent Court Agreement, which it ratified on 14 March 2014.

 

Court system

2. In which courts/government bodies are patents enforced?

Since 1 November 2009, patent disputes have been within the exclusive jurisdiction of the Paris Court of First Instance (Tribunal de Grande Instance de Paris) (at first instance) and the Paris Court of Appeal (Cour d' Appel de Paris) (on appeal).

The third chamber of the Paris Court of First Instance comprises four panels of three judges handling IP matters only. Preliminary injunction proceedings are handled by the presiding judge of one of the four panels or, when an action on the merits is already pending, by the judge in charge of case preparation of one of these panels. The fifth division of the Paris Court of Appeal comprises two chambers of three judges specialised in IP matters who deal with appeals against judgments relating to patent matters.

The French Patent Office (Institut National de la Propriété Industrielle) (INPI) has no jurisdiction in patent litigation. French patents cannot be subject to opposition proceedings before the INPI.

A local division of the Unified Patent Court will be established in Paris. It is expected to be located in the same place as the seat of the central division.

 
3. Do the courts/government bodies deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings?

The French judicial system is unified. Therefore, patent infringement and validity issues are almost always heard together in the same action.

 
4. Who can represent parties before the court and/or government body?

In France, there are two main categories of patent professionals involved in patent prosecution and litigation:

  • French or European patent attorneys (conseils en propriété industrielle and mandataires européens), who are trained and qualified to practise at the French Patent Office (Institut National de la Propriété Industrielle) and European Patent Office.

  • Attorneys-at-law (avocats), who are qualified to provide legal advice and to represent parties before French courts.

Before the Court of First Instance and the Court of Appeal, parties must be represented by an attorney-at-law. A specific body of attorneys-at-law, called avocats à la Cour de Cassation et au Conseil d' État, can represent parties before the Cour de Cassation, which is the highest court for civil matters.

Patent attorneys cannot represent parties before French courts, even in invalidity proceedings. They can be authorised to address the court during the oral hearing, but this is rare in practice.

 
5. What is the language of the proceedings? Is there a choice of language?

French is the official language in France. Foreign language documents adduced before the French courts must be translated into French, at least partially.

The French local division of the Unified Patent Court is expected to offer English and German, in addition to French, as possible languages of the proceedings.

 
6. To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts, or other national or international bodies, that have handed down decisions in similar cases?

French courts are not bound by national prior decisions on the same issues, not even by decisions of courts of a higher level (unless in the specific case where an appeal decision issued on remand after a first decision of the Cour de Cassation is subject to a second decision of this court, which must then be complied with).

However, courts give consideration to previous decisions of other French courts, in particular to decisions of the Cour de Cassation, leading to a harmonised case law and to a reasonable level of predictability.

French courts also give consideration to decisions of the Boards of Appeal of the European Patent Office and decisions of other European courts. French court decisions sometimes refer to foreign case law, although they treat these decisions as facts, rather than binding precedents.

 

Substantive law

7. How is patent infringement assessed?

Patent infringement is assessed by comparing all the relevant features and elements of the product or process and all the elements of the patent claims as they have been construed. A claim is infringed if the essential means of the claimed invention (that is, the new and inventive means that are necessary and sufficient to perform the function of the invention) are reproduced. Therefore, the lack of reproduction of a feature of a claim can be disregarded if this feature is of secondary importance.

French courts very often refer to the doctrine of equivalents, which is applied quite broadly compared to other European countries. According to the French Cour de Cassation, lower courts must always examine whether a patent is infringed under the doctrine of equivalents. A well-settled case law holds that a means having a different structure to the patented means is equivalent when it performs the same function, to achieve a similar result in the same way. It is irrelevant whether it was the intention of the patentee to cover this equivalent means or whether the equivalent means is obvious. The doctrine of equivalents is only available when the patented means cover a novel function. If the claimed means differ from the prior art only by their structure, the doctrine of equivalents cannot apply and the scope of the claim is limited to the claimed structure. On the contrary, if the claimed means differ from the prior art not only by their structure but also by their function, the scope of the claim extends to any equivalent means.

 
8. What defences are available to an alleged infringer?

The alleged infringer can rely on any defence, including disputing the claimant's capacity or authority to initiate proceedings, as well as disputing the validity and infringement of the patent at stake.

The validity of the patent can be challenged through a counterclaim for revocation (to obtain the revocation of the patent retroactively and erga omnes) or as a defence (in which case the patent is considered invalid only between the parties to the proceedings). The second option is rarely chosen because it has no significant advantages for the defendant. Invalidity and infringement arguments are assessed by the court in the same proceedings.

The validity of the French designation of a European patent can also be disputed through an opposition before the European Patent Office (EPO) (all national designations are concerned). Therefore, an alleged infringer has a double path to challenge the validity of the French designation of a European patent. A French court can be asked to decide on the infringement of the French designation of a European patent the validity of which is disputed through opposition proceedings before the EPO. In such a situation, the French court has discretion to stay the infringement action until the outcome of the European opposition proceedings, taking into consideration the balance of convenience and the strength of the opposition arguments. French courts are generally reluctant to stay infringement proceedings pending an opposition before the EPO.

The alleged infringer can also challenge the infringement of the asserted patent claims on the grounds provided in Articles L. 613-5 to L. 613-7 of the French Intellectual Property Code, that is, claim that the alleged infringing acts are:

  • Done privately and for non-commercial purposes.

  • Done for experimental purposes relating to the subject matter of the patented invention.

  • Done by pharmacists making up a prescription.

  • Related to studies, tests, or trials made with a view to filing an application for a marketing authorisation for a medicinal product for human use or for veterinary medicinal products (Bolar exemption).

  • Done on vessels and aircrafts that have temporally or accidentally entered French waters or crossed France.

  • Related to extra-atmospheric space vessels introduced into French territory.

  • Performed to create, discover or develop new plant varieties (breeders exemption).

  • Related to the "farmers privilege", which authorises a farmer to use for his own exploitation the harvested product (for patents covering plant genetic information or plant material) or to use livestock (for patents covering animal genetic information or animal biological material).

The defendant can also claim that the rights of the patent holder are exhausted if the patent holder (or its licensee) has consented to a first sale of a product implementing the invention within the European Economic Area (EEA).

Prior personal use is also an exception to patent protection. It enables any person who was in good faith in possession of the invention in France before the patent priority date to continue to personally work the invention. This exception applies irrespective of whether the use of the invention continues in the same way or to the same extent as the prior use.

Where the patent at stake has been declared essential to a standard, such as in the telecommunications industry, the defendant can challenge the essentiality of the patent (that is, demonstrate that the patented teaching is not implemented when the standard is complied with). The alleged infringer can also raise a fair, reasonable and non-discriminatory (FRAND) defence, that is, ask to benefit from the licence under FRAND terms that the patent holder has undertaken to grant to any third party willing to implement the standard to which the patent has been declared essential.

 
9. On what grounds can a patent be invalidated?

The court can invalidate a patent on any of the following grounds (Article L. 613-25, Intellectual Property Code; Article 138, European Patent Convention 1973):

  • The patented invention lacks novelty, inventive step or industrial applicability.

  • The subject matter of the patent cannot be regarded as an invention, which includes:

    • discoveries;

    • scientific theories and mathematical methods;

    • aesthetic creations;

    • schemes, rules and methods for performing mental acts, playing games or doing business;

    • presentations of information;

    • computer programs;

    • methods of surgical or therapeutic treatments of the human or animal body, and methods of diagnosis practised on the human or animal body;

    • inventions the commercial exploitation of which would be contrary to human dignity, public policy or morality;

    • the human body at different stages of its formation and development; and

    • animal breeds and plant varieties.

  • The invention is not described in the patent application in a manner that is sufficiently clear and complete for it to be performed by a person skilled in the art.

  • The subject matter of the patent extends beyond the content of the application as filed.

 
10. Can a court only partially invalidate a patent or transform it into a utility model?

The court can decide that the patent is only partially invalid. The patent holder must then refer the case to the French Patent Office (Institut National de la Propriété Industrielle), which limits the claims in accordance with the judgment holding the patent partially invalid.

Although utility certificates exist in France, the court cannot transform a partially invalid patent into a utility certificate.

 
11. Is it possible to amend patent claims during proceedings?

The patent holder of a French patent can, at any moment, either:

  • Renounce all rights conferred by the patent.

  • Limit the scope of its patent by amending one or several claims. A request for limitation is submitted to the Patent Office (Institut National de la Propriété Industrielle) (INPI). The limitation has an ab initio and universal effect.

The holder of a European patent can also, at any time, limit the scope of its European patent either:

  • Centrally with the European Patent Office under Article 105bis of the European Patent Convention, with effect for all designated countries.

  • Before the INPI, with effect only for France.

The court has discretion to stay the proceedings pending a decision on the limitation request.

 
12. Are there any grounds on which an otherwise valid patent can be deemed unenforceable?

There is no defence for inequitable conduct under French law.

A party can be estopped from filing a claim if it has brought this claim previously and lost. This principle is based on res judicata, which applies restrictively for matters decided between the same parties, for the same claim and the same cause.

There are no laches or acquiescence defences in France. In particular, the delay taken by the patent holder before initiating an action cannot be used as a laches or acquiescence defence to defeat the standing to sue, the infringement or the damages, except when the statute of limitations has run out, in which case damages can no longer be claimed in relation to the acts covered by the limitation period.

 

Parties to litigation

13. Who can sue for patent infringement?

Patent holder

The patent holder or each co-owner of the patent can sue for patent infringement.

Exclusive licensee

Unless otherwise provided for in the licensing agreement, the exclusive licensee can initiate infringement proceedings, provided that after being placed on notice, the owner of the patent does not institute proceedings.

The patent holder can intervene in the proceedings started by the exclusive licensee.

Licensing agreements are no longer required to be registered in the national patent register in order for a licensee to intervene in the proceedings. However, this registration remains recommended in the light of recent decisions assessing more strictly the right of a non-registered licensee to claim damages.

Non-exclusive licensee

A non-exclusive licensee cannot initiate a patent infringement action, but can intervene in the proceedings to obtain compensation for damages it has personally sustained.

Distributor

A distributor cannot initiate a patent infringement action, but can intervene in the proceedings to obtain compensation for its personal damages based on a claim of unfair competition.

 
14. Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement?

Actions for declaration of non-infringement are provided for by Article L. 615-9 of the Intellectual Property Code. To have standing to initiate such an action, the claimant must:

  • Have engaged in an industrial operation on the territory of an EU member state or demonstrate effective and serious preparation for that purpose.

  • Have invited the patentee to state whether the patent claims are implemented by the product or process at stake, a description of which must be provided to the patent holder.

An action for declaration of non-infringement can only be started if the claimant disagrees with the answer it receives from the patent holder or if it has not received an answer within three months from the notice sent to the patent holder.

In practice, actions for declaration of non-infringement are rarely started because they are seen as giving an advantage to the patent holder, who receives a clear description of the possibly infringing product or process and an indication that exploitation has started or is about to start. Therefore, the patent holder has an option to launch infringement proceedings within the three-month period before which the possible infringer can start a declaratory action.

 
15. Who can be sued for patent infringement?

Persons manufacturing in France or importing into France goods reproducing a patented product or directly obtained from a patented process are liable for infringement, irrespective of whether the acts have been committed with knowledge of the infringement. The same applies to those implementing in France a patented process.

Persons using, offering and holding goods reproducing a patented product or using or offering a process reproducing a patented process are liable for infringement only if they have been made aware of the patent at stake.

It is also prohibited to supply or offer to supply, on the French territory, to persons other than those entitled to exploit the patented invention, means of implementation, on this territory, of the invention, which relate to an essential element of the invention when it is known or where the circumstances make it clear that this means are suitable and intended for the implementation of the invention. If the means supplied are staple products, the supplier is only liable for indirect or contributory infringement if it induces the persons supplied to commit infringing acts. A legal entity that has not personally committed any act of direct or indirect infringement cannot be held liable as a joint tortfeasor.

Directors of a company cannot be held personally liable for infringement unless they have personally committed infringing acts.

 
16. Is it possible to add or remove parties during litigation?

A party can voluntarily intervene in existing proceedings and a party can also serve a summons on a third party to force it to join the proceedings.

A party can withdraw its claims, but if the other party has already filed counterclaims, the case can continue in relation to these counterclaims.

 

Enforcement options

17. What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?

Patent infringement is a tort or civil wrong. The patent holder can bring civil proceedings or criminal proceedings in respect of allegedly infringing acts (Article L. 615-1, Intellectual Property Code).

Civil proceedings

The patent holder or exclusive licensee can bring civil infringement proceedings n the merits or preliminary relief proceedings.

The main steps of proceedings on the merits are described in Questions 24 and 30.

For further detail on preliminary relief proceedings see Questions 31 to 34.

Criminal proceedings

The patent holder can initiate criminal proceedings against the alleged infringer, but this is rare in practice. The infringer is held guilty only if the infringement has been committed in bad faith. Patent infringement is punishable by a fine and/or a prison sentence of up to five years.

Border measures

Border measures are available in France under Regulation (EC) 1383/2003 on action against counterfeit and pirated goods or Article L. 614-32 of the Intellectual Property Code. These measures can be useful to detect the arrival in France of infringing goods and to allow the patentee to collect infringement evidence before the release of the goods.

The main steps for the adoption of customs measures are as follows:

  • The customs authorities intervene in principle on a prior written request of the patentee, which must contain all relevant information and documents to enable the customs authorities to identify as easily as possible the infringing product. In exceptional cases, customs authorities can intervene on their own initiative.

  • When the introduction of an accused product into France is detected by the customs authorities, they immediately notify the patentee of a detention order, which contains information relating to the nature and actual (or estimated) quantity of goods.

  • Within ten days from this notification (extended by ten days in exceptional cases, and reduced to three days in the case of perishable goods), the patentee must:

    • collect infringement evidence on the premises of the customs authorities (saisie-contrefaçon);

    • obtain provisional measures from the court; and/or

    • initiate proceedings before a court.

  • The detention order must be lifted as of right if the patentee fails, within the above time limits following the notification of the detention order, to justify that it has obtained provisional measures or started an action before a court (performing a saisie-contrefaçon is not sufficient to avoid the release of the goods).

  • If the patentee proves that it has taken one of the above measures, the customs authorities detain the products (or, in some very specific circumstances, destroy them).

  • The owner of the detained goods is also notified of the detention and can request the release of the goods.

Border measures are regularly used in France to help identify channels of importation of infringing goods. When a minimum of information can be provided to the customs authorities regarding possible channels of importation, border measures are very efficient. Border measures also are an efficient tool to enforce decisions granting an injunction against the defendant when it is based in a foreign country and disregards the court order.

 
18. Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings?

Cease and desist letters, although not compulsory, can be sent before an infringement action. They must be drafted carefully, in particular when they are sent to clients of the manufacturer or importer, to avoid the risk of being considered as acts of unfair competition.

A secondary infringer (that is, a defendant offering for sale, putting on the market, using or holding for those purposes an infringing product, other than the manufacturer or the importer) is not liable for these acts unless it has been made aware of the patent at stake (see Question 15) .

 
19. To what extent are courts willing to grant cross-border or extra-territorial injunctions (preliminary or permanent)?

The rules of jurisdiction and venue in Regulation (EU) 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters can give French courts jurisdiction to issue cross-border injunctions (that is, injunctions having effect in foreign countries). However, these injunctions, which can only be granted when conditions set by decisions of the Court of Justice of the European Union are met, are rare in France. According to the decisions of the (then) European Court of Justice interpreting Articles 16(4) and 6(1) of the Brussels Convention (which are now incorporated into Articles 24(4) and 8(1) of Regulation (EU) 1215/2012):

  • A national court cannot decide on the invalidity of a foreign patent raised as a defence or a counterclaim in an infringement action; only the courts of the country in which this patent is in force can rule on the validity of this patent. Therefore, an infringement action brought before a court with respect of a foreign patent must be stayed pending a decision on validity by another court (Gat v LuK (Case C-4/03) [2006]).

  • The provisions of the Brussels Convention allowing to sue multiple defendants before the courts of the country of one of these defendants if the cases against them are deemed to be connected (that is, if the cases, decided separately, could give rise to irreconcilable judgments) do not permit suing several foreign companies together with one local company before a single national court, if each defendant is sued on the grounds of a different national part of the same European patent. In such a scenario, the judgments issued in separate proceedings cannot be contradictory, as national parts of a European patent are governed by the national law of that jurisdiction (Roche v Primus (Case C-539/03), [2006]; Solvay v Honeywell (Case C-616/10), [2012]).

 
20. To what extent do courts recognise the blocking effect of "torpedo" actions abroad?

When the first torpedo actions were initiated in the early 2000s, the Paris Court of First Instance (Tribunal de Grande Instance de Paris) proved reluctant to stay the French proceedings after an action for declaration of non-infringement had been first started before Italian courts (Tribunal de Grande Instance de Paris, 28 April 2000, The General Hospital v Bracco, 33 IIC 68 (2002); Tribunal de Grande Instance de Paris, 9 March 2001, Scherrer v Fadis 33 IIC 225 (2002)).

However, since these judgments, the (then) European Court of Justice has held that the courts of EU member states must stay proceedings if they are seized after the court of another member state of a case having the same object between the same parties, even if the first action was initiated to slow down proceedings, thereby paving the path for further torpedo actions (Gasser v Misat, (Case C-116-02) [2003]).

 
21. To what extent are arbitration, and alternative dispute resolution (ADR) methods (such as mediation), available to resolve patent disputes?

Arbitration

Arbitration is available and used to resolve disputes concerning the interpretation and enforcement of contracts relating to patents.

See Arbitration procedures and practice in France: overview.

ADR

Mediation is more rarely used, and mostly at the stage of the proceedings where validity and infringement issues have been decided and damages remain to be set.

 

Competition and anti-trust

22. Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?

A patent holder can bring proceedings claiming both patent infringement and unfair competition in the same proceedings before the Paris courts having jurisdiction over patent litigation. However, the unfair competition claim must be based on different facts than the infringement claim.

 
23. To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?

The Paris Court of First Instance (Tribunal de Grande Instance de Paris) has held in various cases that the anti-competitive behaviour of an IP right holder can expose him to liability (for example, in Luk v Valeo, 26 January 2005, Docket No 00/16758, it stated that Luk's patent filing policy could be considered as an abuse of dominant position). No decision has been issued so far on the merits in cases related to standard essential patents in which an anti-trust defence was raised.

 

Procedure in civil courts

24. What is the format of patent infringement proceedings?

Proceedings on the merits are initiated by the service on the defendant(s) of a summons drafted by the claimant. A copy of the summons as served is then filed with the court, which registers the matter on its cause list and assigns it to one of the four panels of the third chamber of the Paris Court of First Instance (Tribunal de Grande Instance de Paris). The president of the panel appoints a judge in charge of the case preparation who sets the schedule for the filing of the parties' pleadings and the exchange of exhibits. This judge also has jurisdiction to issue various interim decisions, in particular to order expert proceedings or to order a party to produce evidence. Each party usually files two or three written pleadings until the closing of the proceedings and the oral hearing.

The oral hearing takes place in front of a panel of three judges and usually lasts between two and six hours. The judgment is generally issued within six to eight weeks after the oral hearing.

 
25. What are the rules and practice concerning evidence in patent infringement proceedings in your jurisdiction?

Under French law, each party must prove the facts necessary to the success of its own claim.

To prove infringement or any other claim, the parties can use different tools that are provided for in the Code of Civil Procedure and Intellectual Property Code, including:

  • Use of publicly available documents.

  • Search orders, notably the saisie-contrefaçon procedure (see below).

  • Witness statements of facts and expert reports (but it is not possible to cross-examine witnesses and experts during the final hearing).

  • Compulsory production of evidence by the other party or third parties.

  • Right of information. This is a request for a court order that information on the origin and distribution networks of the goods or process that infringe a patent be provided by the infringer and/or any other person involved in the manufacture or distribution of the infringing goods or the use of the process.

  • Reversal of the burden of proof for process patents.

  • Court-appointed experts who draft a report to the attention of the court providing an opinion on technical or financial issues. This opinion can be challenged by the parties in the proceedings. The expert does not testify at the oral hearing.

Among these tools, the saisie-contrefaçon procedure is the most commonly used.

In summary, a saisie-contrefaçon is performed on an authorisation granted by the presiding judge of the Paris Court of First Instance (Tribunal de Grande Instance de Paris) in ex parte proceedings.

A saisie-contrefaçon can be requested by the patentee or an exclusive licensee on the mere production of evidence that:

  • The applicant is the patent owner or an exclusive licensee.

  • Its rights are opposable to third parties (in practice, that they are registered on the French patent register or the European patent register).

  • The patent is still in force.

The presiding judge also requires prima facie evidence of the alleged infringement. However, the applicant does not have to produce detailed evidence of the infringement. In addition, it is not necessary to prove that evidence may not be available in another way or that there is a risk that evidence will be destroyed.

The judge very rarely refuses to authorise a saisie-contrefaçon, but he can amend the scope of the authorised measures. The court order authorises a bailiff, usually accompanied by an expert (in practice, the patentee's patent attorney), both chosen by the claimant, to enter the premises mentioned in the order, and to gather all available evidence of infringement, in particular to:

  • Describe the allegedly infringing product or process.

  • Copy any document regarding the alleged infringement.

  • Gather information regarding the extent of the infringement.

  • Take physical samples of the alleged infringing products or of means used to manufacture the alleged infringing product.

The bailiff drafts a report in which he records all his observations and those of the patent attorney and hands it to the claimant, who will exhibit it to the court. When confidential information is described or copied, the defendant can ask the bailiff not to describe it in his report, but to place the description or the seized documents or products in a sealed envelope to be kept by the bailiff and to be opened by an expert who will be appointed by the court.

The claimant must start proceedings within 31 calendar days following the saisie to avoid that it is held null and void.

All evidence gathered in France for the purpose of French proceedings is freely available for parallel proceedings, even evidence gathered through a saisie-contrefaçon. However, in specific matters, the court can order a confidentiality club for sharing sensitive information.

 
26. Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?

Evidence obtained in criminal proceedings is admissible in civil proceedings and vice versa.

 
27. Is evidence obtained in civil proceedings admissible in other civil proceedings?

Evidence obtained in civil proceedings is admissible in other civil proceedings.

 
28. To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?

Pre-trial discovery

Except for the saisie-contrefaçon, which is described in Question 25, there is no pre-trial discovery in French patent litigation.

Other mechanisms

Compulsory production of evidence by the other party or third parties is available under French procedural law, but the evidence requested must be very precisely described and relate to a limited number of documents. These conditions are strictly assessed by the courts. Therefore, compulsory production of evidence is rarely ordered. The patent holder should therefore use the saisie-contrefaçon to gather all necessary evidence before or during the proceedings.

Compulsory production of evidence can also be ordered in cases related to a patent for a process for the manufacture of a product. The court can order the defendant to prove that the process used to manufacture an identical product is different from the patented process. Failing such evidence, any identical product manufactured without the consent of the owner of the patent must be presumed to have been manufactured by the patented process provided that the two following conditions are met:

  • The product manufactured using the patented process is new.

  • There is a strong probability that the identical product has been manufactured using the patented process, but the owner of the patent has been unable, despite reasonable efforts, to establish what process has in fact been used.

Parties can rely on Regulation (EC) 1206/2001 on co-operation between the courts of the member states in the taking of evidence in civil or commercial matters to request that the court ask the court of another member state to gather evidence. If evidence is available outside the EU, the parties can also rely on the HCCH Convention on the Taking of Evidence Abroad in Civil and Commercial Matters 1970.

 
29. What level of proof is required for establishing infringement or invalidity?

There are no specific rules on the level of proof required for establishing patent infringement, unlike in Anglo-Saxon systems. The courts freely assess the exhibits adduced and the argumentation raised by the parties to take a decision, under the control of the Cour de Cassation.

 
30. How long do patent infringement proceedings typically last?

The average duration of patent infringement proceedings is as follows:

  • 18 to 24 months for first instance proceedings before the Paris Court of First Instance (Tribunal de Grande Instance de Paris).

  • 24 months for appeal proceedings before the Paris Court of Appeal (Cour d' Appel de Paris).

  • 18 months before the Cour de Cassation.

The first instance decision on liability almost always orders that the judgment is enforceable regardless of any appeal, and almost always orders an interim award of damages and a rendering of accounts, with final damages to be assessed at a further stage.

Fast-track procedures

For urgent cases, it is possible to request the authorisation of the presiding judge of the Paris Court of First Instance to serve summons for fast-track proceedings (procédure à jour fixe), which last between six to eight months on average, with a decision on the merits handed down within a few weeks after the hearing.

Timetable

The timetable of the proceedings is set by the presiding judge in the order authorising the fast-track route. From the summons to the oral hearing, the proceedings usually last less than six months.

Delay

If the arguments raised by the defendant show that the case is too complex to be tried within a few months (because, for example, serious invalidity issues arise) or that the emergency asserted by the claimant to file fast-track proceedings is in fact lacking, the court can set a longer timetable to proceed under the usual route.

 

Preliminary relief

31. Is preliminary relief available, and if so what measures are available and under what conditions?

Search and preservation orders

See Question 25 regarding the saisie-contrefaçon.

Injunctions

Preliminary injunction proceedings were first introduced into French law in 1984. The provisions were amended in 1990 and 2007 to lower the requirements to obtain a preliminary injunction, but the number of preliminary injunctions ordered remains very low.

In most cases, the requested measure is a preliminary injunction prohibiting the defendant from continuing the alleged acts of infringement under a penalty. Other complementary measures can be requested, such as the:

  • Payment of an advance on damages.

  • Placement under seal of the accused products.

  • Recall of the products from the distribution channels, although this is only granted in exceptional cases.

Preliminary injunctions can be ordered "only if evidence, reasonably accessible to the claimant, make it likely that its rights are infringed or that such infringement is about to be committed" (Article L. 615-3, Intellectual Property Code). To decide on the likelihood of infringement, the judge in charge of the preliminary injunction proceedings takes into consideration the arguments of the parties as to the alleged infringement and the validity of the asserted patent. When reviewing the validity of the patent, some decisions assess whether the asserted patent is "obviously invalid", whereas other decisions use the standard of "a serious dispute about validity". However, in practice, despite a difference of wording, this assessment always involves a thorough review of the validity of the patent.

Contrary to some other countries, there is no requirement regarding the time period elapsed between the knowledge of infringement and the request for a preliminary injunction, and no requirement for urgency.

Preliminary relief proceedings can be inter partes or ex parte. However, in almost all cases, preliminary relief proceedings take place inter partes. Ex parte proceedings are exceptional and only take place in cases of extreme urgency, when a delay would cause irreparable harm to the patentee.

If preliminary injunction measures are ordered before the commencement of proceedings on the merits, the claimant must start proceedings on the merits within 31 calendar days or 20 working days, whichever is the longest, from the date of the preliminary injunction order. Failing an action on the merits, the measures can be revoked at the request of the defendant, without prejudice of compensation for any injury caused by the preliminary measures.

 
32. Can a protective writ be filed at the court at which an ex parte application may be filed against that defendant?

Protective letters are not accepted by French courts. However, this is not critical as ex parte preliminary injunctions are exceptional (see Question 31, Injunctions).

 
33. What is the format/procedure of preliminary injunction proceedings?

General

Preliminary injunction proceedings can be started either before or after the commencement of an infringement action on the merits.

The first step for the claimant is to request a date for an oral hearing from the presiding judge of the court, which must be indicated in the summons to be served on the defendant. The defendant files a pleading in reply, often followed by a last exchange of pleadings before the oral hearing. Contrary to proceedings on the merits, preliminary injunction proceedings are oral proceedings and the parties' arguments are not limited by their written explanations. There is no scheduling conference in the framework of preliminary injunction proceedings.

Preliminary injunction proceedings are heard by a single judge of the third section of the Paris Court of First Instance (Tribunal de Grande Instance de Paris), who is either a delegate of the President of the Court (if started before any proceedings on the merits), or the judge in charge of the case preparation (if infringement proceedings on the merits are already pending).

The decision takes the form of an order and is issued a few weeks or days after the oral hearing, according to the urgency of the matter.

The order can be appealed before the Paris Court of Appeal (Cour d' Appel de Paris) (only together with the decision on the merits if it was handed down by the judge in charge of the case preparation). Appeals against preliminary injunction orders are heard by a panel of three judges. The decision of the Court of Appeal is issued within a few weeks after the oral hearing.

Level of proof

See Question 31, Injunctions

Evidence

All evidence available in proceedings on the merits are available in preliminary injunction proceedings, which often concentrate within a shorter period of time on the same arguments as in the proceedings on the merits.

Patent validity

The defendant can raise invalidity defences. The judge assesses whether these defences are likely to succeed in proceedings on the merits. The validity of the asserted patent usually gives rise to a discussion as detailed as the discussion on infringement.

Length of proceedings

Preliminary injunction proceedings generally last three to four months, but a preliminary injunction can also be issued within a week in extremely urgent matters.

Appeals in preliminary injunction proceedings take on average six months.

 
34. If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?

The claimant is liable, without further conditions, for any damage caused by the preliminary injunction if the order is later reversed. The claimant can be asked by the judge to provide a bond guaranteeing the payment of damages in the case of withdrawal of the preliminary injunction.

 

Final remedies

35. What remedies are available against a patent infringer?

Permanent injunction

If the court finds the patent to be valid and infringed (that is, the counterclaim for nullity is dismissed and the claims of the asserted patent are held to be infringed by the defendant), and if the patent holder requested an injunction, the court must order this injunction for the duration of the patent. The compulsory nature of the injunction is based on Articles L. 611-1 and L. 613-3 of the Intellectual Property Code (IPC). The right to an injunction triggers an obligation for the judge to order a permanent injunction when requested to do so. The specific scope of the injunction depends on what was requested by the patent holder, but it is usually broadly worded as an injunction from infringing given claims of a patent, and not restricted to a specific product or act. The injunction is generally directed exclusively against the defendant. However, it is possible to direct the injunction against intermediaries whose services are used by the infringer (Article L. 615-3, IPC). The injunction is usually subject to a penalty for each act of infringement.

In exceptional circumstances, a French judge can refuse to grant an injunction that has been requested despite a finding of infringement and before the expiration of the patent. These exceptional conditions require that the patentee's claims be based on fraud.

Monetary remedies

The patent holder and its licensees or distributors can obtain financial remedies to compensate the damage they have suffered from the infringement.

Claims for financial remedies are subject to a statute of limitation of five years, meaning that damages can be requested in relation to any act of patent infringement performed less than five years before the institution of court proceedings. This five-year limitation was introduced by the French Act No. 2014-315 of 11 March 2014, which entered into force on 13 March 2014. Previously, the limitation period was three years. As the new provisions cannot apply retroactively, the five-year limitation period does not allow claimants to request compensation for damages in relation to acts performed before 13 March 2011 (three years before the entry into force of the new provisions).

The rules of calculation of damages, set out both in the Civil Code and in Article L. 615-7 of the IPC, allow the injured party to obtain a sum that is very close to the damage actually suffered. To set the damages, the court distinctly takes into account the:

  • Negative economic consequences of the infringement, including the loss of earnings and any loss suffered by the injured party.

  • Moral prejudice caused to the injured party.

  • Profits made by the infringer, including the savings in intellectual, material and promotional investments that it has achieved from the infringement.

However, the court can, as an alternative and on the injured party's request, award a lump sum as damages. This sum must be higher than the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the right that it has infringed. This sum does not exclude compensation for the moral prejudice caused to the injured party.

There are no punitive damages.

In summary, French courts assess the damage suffered by the patentee, the licensee and other possible injured parties as follows:

  • If the patentee or the licensee is selling products implementing the patent or working the patented process and can demonstrate that, but for the infringement, it would have sold additional products, the patentee or its licensee can claim lost profits. These lost profits are assessed based on the number of lost sales and the incremental profit margin that the patentee or the licensee would have made on additional sales.

  • If the patentee or its licensee is not exploiting the patent or if it would not have sold more products, they can claim lost royalties. These lost royalties are based on the turnover made by the infringer and the ordinary market royalty rate, which is increased (generally by 50% to 100%) to take into consideration the fact that the royalty rate has not been negotiated and is given for a patent that has been found valid by a court.

In practice, both methods are combined and the damage is generally assessed as lost profits for a part of the infringing sales (if only part of the infringing sales have been lost by the patentee or the licensee) and as lost royalties for the remaining infringing sales. The damages (lost profits or lost royalties) are assessed on the basis of the sales of the infringing product and of any accessory or service usually purchased simultaneously with the product.

French courts can also take into account other sources of damage, such as:

  • The advantage obtained by the infringer from the infringement, which remains even after the infringement has actually stopped (for example, high market shares obtained from the infringement, which remain after the patent has expired).

  • Price erosion to compensate for the profit lost by the patentee on the sales that have not been lost but have been made at lower prices (for example, when the patentee had to lower its prices to compete with the infringer).

Since the entry into force of the new provisions of Article L. 615-7 of the IPC, as a result of the implementation into French law of Directive 2004/48/EC on the enforcement of intellectual property rights and the French Act No. 2014-315 of 11 March 2014, French courts must take into account the negative economic consequences, including profits made by the infringer. It is still unclear how French courts will apply this legislation. The general position is that this provision does not authorise the patentee to request the restitution of the profits made by the infringer by reason of the infringement. Rather, this provision enables the court to compensate for the negative economic consequence on the patentee resulting from the profits made by the infringer. However, some decisions appear to award to the patentee an account on the profits made by the infringer. The Cour de Cassation has yet to decide on this issue.

Delivery up or destruction of infringing goods

The court can order the delivery up and destruction of the infringing products.

Publication of the decision

The court can order the publication of the decision in designated newspapers or magazines, or on the Internet.

Recall order

The court can order the recall of the infringing products from the channels of commerce.

Declaration of infringement and validity

See above, Permanent injunction.

 

Appeal procedure

36. What avenues of appeal are available for a defeated party and under what conditions?

Any first instance decision can be appealed, without leave or permission being required. The appeal suspends the enforceability of the first instance decision on the merits, unless the court of first instance expressly decided in its judgment that the decision is enforceable notwithstanding appeal. In patent matters, the Paris Court of First Instance (Tribunal de Grande Instance de Paris) very often orders that its judgment be enforceable notwithstanding appeal, in particular regarding the permanent injunction and the advance on damages. Preliminary injunctions are always enforceable, even in the case of an appeal.

The Court of Appeal reviews the dispute in full (de novo). New claims cannot be asserted before the Court of Appeal, but parties can raise new arguments and produce new evidence. Therefore, new prior art documents or additional evidence of infringement can be adduced.

Decisions from the Paris Court of Appeal (Cour d' Appel de Paris) can be further appealed before the Cour de cassation. Patent matters are handled by the Commercial Chamber (Chambre Commerciale) of the Cour de cassation. No leave or permission is required to file such an appeal. An appeal before the Cour de cassation does not suspend the enforceability of the decision of the Court of Appeal.

The Cour de cassation only examines issues of law, not issues of fact. The Cour de cassation can declare that the appeal is not serious enough to be the subject of a detailed decision or dismiss the appeal. In either case, the decision of the Court of Appeal becomes irrevocable. Alternatively, it can quash the appeal decision if the legal reasoning is erroneous or if the Court of Appeal failed to answer the parties' arguments. In this case, the Cour de Cassation will remand the case to a different panel of the Paris Court of Appeal.

 

Litigation costs

37. What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?

There are no court fees to bring proceedings before French courts.

The cost of patent litigation, which mainly arises from the fees of attorneys-at-law and, possibly, of patent attorneys and experts, vary from case to case, depending on the technical difficulty, the interests at stake, the pugnacity of the parties and the number of patents involved.

The costs of patent litigation at first instance mentioned below are given for general information only, to be compared to the position in other countries:

  • EUR50,000 to EUR150,000 for simple matters.

  • EUR150,000 to EUR250,000 for matters of average difficulty with important interests at stake.

  • EUR250,000 to EUR500,000 for the most complex matters with very high interests at stake.

These relatively low figures compared to UK patent litigation are mainly due to the rules of civil procedure, in particular the absence of disclosure, the absence of examination and cross-examination of experts and witnesses, and a relatively short trial.

The level of cost for preliminary injunction proceedings is similar to the amounts mentioned above for a case on the merits, but the work done at the preliminary stage is not duplicated once the proceedings on the merits start.

The level of cost for appeal proceedings is usually two-thirds of that of the first instance proceedings.

The winning parties can request the recovery of the costs incurred in the proceedings, in particular attorneys' fees, bailiff's disbursements, and so on. The amount awarded in this respect is at the court's discretion. In practice, the parties usually produce, as an exhibit, a statement indicating the total amount of costs engaged. The court awards an amount corresponding to one-third to two-thirds of the actual costs. The costs order is contained in the main judgment. There are no separate proceedings regarding the recovery of costs.

 

Reform

38. What are the important developing and emerging trends in your country's patent law?

A new limitation period of five years applies to most civil actions under Article 224 of the French Civil Code, as amended by Act No. 2008-561 of 17 June 2008, which entered into force on 19 June 2008. As this new limitation period is drafted in general terms, it has been applied in several recent cases to revocation actions, which were previously considered as not subject to any time bar. There is still a controversy regarding the starting point of the five-year period. Under Article 224 of the Civil Code, the periods runs from the date on which "the owner of a right becomes aware or should have become aware of the facts" entitling him to bring an action. The Paris Court of First Instance (Tribunal de Grande Instance de Paris) has considered successively that the limitation period is triggered by the:

  • Publication date of the patent application (Tribunal de Grande Instance de Paris, Evinerude v Philippe Giraudeau and Air Lichens, 25 April 2013).

  • Publication date of the grant of the patent (Tribunal de Grande Instance de Paris, Bolton v Reckitt Benckiser, 13 March 2015).

  • Warning letter sent by the patentee to the party that started the revocation action, after having assessed in concreto the circumstances of the case (Tribunal de Grande Instance de Paris, Raccords et Plastiques Nicoll v MEP, 6 November 2014).

  • Date on which the applicant should have been made aware of the grounds for nullity of the patent at stake, which was considered to be the date on which it started developing a product in the same technical field as the patent (Tribunal de Grande Instance de Paris, Mylan v Hoffmann La Roche, 18 December 2015).

Defendants willing to start a revocation action should take this limitation period and case law into consideration.

 

Online resources

Legifrance

W www.legifrance.gouv.fr/initRechCodeArticle.do

Description. The official website Legifrance provides access to the various French codes. In particular, the following codes are available:

An English translation of these two codes is also available on the website but it is not up-to-date (www.legifrance.gouv.fr/Traductions/en-English/Legifrance-translations).

This website also contains numerous decisions of French case law (www.legifrance.gouv.fr/initRechJuriJudi.do).

French patent case law

W www.frenchpatentcaselaw.info

Description. This website, maintained by Véron & Associés, provides free access to a number of unofficial translations of French judgments relating to patent cases.



Contributor profiles

Sabine Agé, Partner

Véron & Associés

T +33 (0)1 47 03 62 62
F +33 (0)1 47 03 62 69
E sabine.age@veron.com
W www.veron.com

Professional qualifications. Attorney-at-law, member of the Paris Bar

Areas of practice. Intellectual property law; patent litigation.

Languages. French, English

Professional associations/memberships

  • International Association for the Protection of Intellectual Property (AIPPI).
  • Rhône-Alpes Industrial Property group (Groupe Rhône-Alpes de Propriété Industrielle) (GRAPI).
  • European Patent Lawyers Association (EPLAW) (secretary from 2012 to 2015).
  • French Association of Industrial Property Litigators (Association des Avocats de la Propriété Industrielle) (AAPI).

Publications

  • Co-author, Saisie-contrefaçon, Dalloz Référence collection.
  • Co-author, "Saisie-contrefaçon" in Droit et pratique des voies d' exécution, Dalloz Action collection.

Eddy Prothière, Associate

Véron & Associés

T +33 (0)1 47 03 62 62
F +33 (0)1 47 03 62 69
E eddy.prothière@veron.com
W www.veron.com

Professional qualifications. Attorney-at-law, member of the Lyon Bar

Areas of practice. Intellectual property law; patent litigation.

Languages. French, English

Professional associations/memberships

  • International Association for the Protection of Intellectual Property (AIPPI).
  • Rhône-Alpes Industrial Property group (Groupe Rhône-Alpes de Propriété Industrielle) (GRAPI).

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