1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
As France is party to several international or regional treaties and agreements, French patent law sources are both national and supranational. In this article, patent law refers to patents (which are granted for 20 years), utility certificates (which are granted for six years) and supplementary protection certificates (which are granted for a maximum period of seven years from the expiration of the patent).
National sources
French intellectual property law is mostly contained in the French Intellectual Property Code (IPC) which was created by the Loi (Statute) of 1 July 1992. Patents and related rights are covered by Title I of Book VI of the IPC (the legislative part being contained in Art L. 611–1 et seq and the regulatory part being contained in Art R. 611–1 et seq).
The IPC provisions relating to patents stem from the codification of the Loi of 2 January 1968 on patents and its subsequent amendments.
European Community sources
As a Member State to the European Union, French patent law has to take into account all the Community instruments relating to technical inventions as interpreted, as the case may be, by the Community courts, ie:
International sources
On the international level, France is a party to the major agreements relating to intellectual property in general and to patents in particular, such as:
Worldwide agreements
European-wide agreements (in the geographical meaning of the term)
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
France has adopted a monist approach as regards the relationship between international and internal law.
Thus, Art 55 of the French Constitution provides that: ‘Treaties or agreements duly ratified or approved shall, upon publication, prevail over Acts of Parliament, subject, in regard to each agreement or treaty, to its application by the other party’.
It results from Art 55 that international and EC law (primary and secondary legislation) take precedence over French Lois. However, French case law considers that such ‘conventional’ law may not take precedence over the French Constitution or over legislation which is taken in direct application of the Constitution.1
As for EC law, the French Conseil Constitutionnel (Constitutional Council) fine-tuned this principle by ruling that only a specific, express and contrary provision of the Constitution might prevent the implementation in France of a Community Directive.2 It is interesting to note that the second decision of the Council on this issue was rendered in relation with the first Loi implementing the EC directive on biotechnological inventions. The council found that such Loi was not unconstitutional.
Role of case law in French patent law
Patent case law comes principally from judiciary courts (as opposed to administrative or constitutional courts).
Judiciary case law may be considered as a kind of law source since its role is to clarify written law, to adapt it to factual circumstances, to rule upon contradictory aspects of the law or even to fill gaps in the law.
However, judiciary case-law solutions may always be superseded by a loi.
2.1 In which courts are patents enforced? Are they specialised patent courts? If not, what level of expertise can a patent holder expect from the courts?
Article L. 615–17 of the IPC grants exclusive jurisdiction in patent-related matters to a limited number of Tribunaux de grande instance (civil courts of first instance) and the corresponding Cours d’appel (Courts of Appeal). Decree No 2005-1756 of 30 December 2005 has restricted such number to seven Tribunaux, covering the French territory (Bordeaux, Lille, Lyons, Marseilles, Paris, Strasbourg and Toulouse). This also applies to related rights such as utility and supplementary protection certificates and to topographies of semiconductor products. These courts also have jurisdiction for unfair competition issues related to a patent infringement action (Art L. 615–19 of the IPC).
In these courts, judges have no technical background or expertise. However, they are familiar with patent issues. Thus, in Paris, the Third Chamber of the Tribunal de Grande Instance before which all civil patent infringement cases are heard is specialised in intellectual property matters. At the appeal level, the cases are heard before the Fourth Chamber of the Cour d’appel, which is also specialised. In the other Tribunaux de Grande Instance and Cours d’appel with exclusive jurisdiction over patent infringement, the case is also likely to be heard by judges who are familiar with patent issues. In the Cour de Cassation (the French Supreme Court in the judiciary order, which rules upon the decisions of the Courts of Appeal, on points of law), patent cases are heard by the Commercial Chamber.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decision in similar cases?
French courts, although they may be influenced by decisions of foreign courts, are not bound by them and take care to assert their independence any time a litigator tries to bring forward such a foreign case.
They are, however, willing to apply EC case law as they are bound to construe French rights in the light of EC law.
In the judiciary order, the case law of the higher courts is not binding on the lower courts (except when the case has already gone twice before the Cour de cassation). However, lower courts tend to conform to the jurisprudence of the Cour de Cassation.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
Invalidity actions directed at a French patent or at the French part of a European patent may be brought only before the seven specialised Tribunaux de grande instance mentioned above. There does not exist any administrative invalidity procedure before the Institut National de la Propriété Industrielle (the French Patent Office).
An invalidity action may be introduced directly as a main claim. However, it is more often introduced by means of a counterclaim as a defence in an infringement action. In this case, the invalidity and the infringement actions are examined in the same proceedings, the court dealing first with the validity issue. The infringement issue is only examined if the invalidity claim has been rejected.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Before the Tribunal de Grande Instance ruling on the merits, the Court of Appeal and the Cour de Cassation, the parties are not authorised to defend themselves. They must be represented and assisted by legal attorneys, who alone have the right to argue cases before these courts.
In patent matters, the parties are in practice always assisted by an attorney who is specialised in patent litigation. For the purely technical aspects of the case, these specialised legal attorneys work in collaboration with patent agents, but the latter are not authorised to represent parties or to argue a case before the courts.
Besides these specialised attorneys, the parties often have to be represented by a secondary attorney who has authority to represent parties before a given court.
For example, before the Tribunaux de Grande Instance, only attorneys who are members of the bar of such tribunal have the right to represent parties before it. In most non-Parisian local bars, it is difficult to find an attorney specialised in patent matters. Therefore, the patent owner will usually hire two attorneys: the patent law specialist who is in charge of the case, who drafts the legal papers and who will argue the case; and a member of the local bar who merely represents the plaintiff in court for procedural matters and transmits to the court the papers prepared by the patent specialist.
The same principles apply before the Cour d’appel. The patent owner will be assisted by a patent law specialist and will be represented by an avoué (attorney specialised in appellate proceedings).
Before the Cour de cassation, all parties must be represented by an avocat au conseil (attorney specialised in proceedings before the Cour de Cassation). Their role is more active than that of the local attorneys or avoués and they work in close collaboration with the specialised attorney.
In the criminal court, neither the representation nor the assistance of an attorney is compulsory. However, given the complexity of patent law, it would be highly inadvisable not to get assistance from a specialist.
2.5 What is the language of the proceedings? Is there a choice of language?
The language of the proceedings is French.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
There is little French case law concerning cross-border injunctions, but what there is shows that French courts are not adverse to granting cross-border or extra-territorial injunctions.
French decisions issuing cross-border injunctions
The Paris Commercial court has granted a preliminary injunction authorising a seizure in Italy in a registered design infringement case. The defendants were Italian and French and the alleged infringement had taken place both in Italy and France.3
The following year, the Paris Court of Appeal ruled on a software infringement case which had taken place in Spain, even though no infringement had taken place in France. The French court held the French defendants liable on the ground of the Spanish copyright law of 1879.4
In 1999, the Paris Tribunal de grande instance issued an injunction aiming at preventing French and British publishers from publishing Asterix books in the United Kingdom.5
To the best of our knowledge, there is no similar decision relating to patent infringement.
Enforcement in France of cross-border foreign injunctions
French courts enforce foreign cross-border injunctions relating to patents.6
Moreover, the Paris President of the Tribunal de grande instance rejected an action aimed at preventing the effect of a foreign cross-border injunction in France.7 The defendant, against whom a cross-border injunction had been issued by the court of The Hague in relation to intravascular stents, had petitioned the Paris court in order to obtain an authorisation to keep on marketing such products in France. When dismissing the action, the French court stressed that the action had been launched exclusively in order to prevent the effect of a foreign court’s decision and that they were not entitled to rule on whether such foreign court’s jurisdiction was justified or whether its injunction was well-grounded.
This case law shows that a French court would probably not be opposed to granting cross-border injunctions in a patent-related matter.
Prospective thinking on the French approach to cross-border injunctions in patent-related matters
Application of the Fiona Shevill Rules
It is likely that, should they be called upon to grant cross-border injunctions in patent infringement cases, French courts would apply the rules set up by the European Court of Justice in the Fiona Shevill case8 and would only grant extra-territorial measures if their jurisdiction were grounded on the defendant’s domicile. The Cour de Cassation has indeed already applied the Fiona Shevill rules in a copyright infringement case.9
Application of the ‘spider in the web’ theory
To the best of our knowledge, French courts have not had the opportunity to rule on cases similar to those having given birth to the ‘spider in the web’ theory.10 ie situations where a plurality of defendants, belonging to a same group of companies, each infringe on their respective territory, the corresponding national part of a European patent (the French entity infringes the French part of the patent, the German entity infringes the German part of the patent, etc).
Until the judgment of the European Court of Justice in the Roche/Primus case11, it was unclear how French courts would react to this type of situation and whether they would consider that they had jurisdiction to rule on the whole case.
One decision, rendered in a copyright infringement case, indicates that a French court, seized on the ground of one of the defendants’ domicile, might have been willing to consider that such ‘pan-European’ infringement situation presented a sufficiently close connection as to allow such court to rule on the whole case. In the Asterix case,12 the Paris court rejected the British defendant’s claim that they had no jurisdiction to rule on infringement allegedly committed in Britain by a British domiciled party. The court seems to have implicitly grounded its dismissal of such claim on the consideration that there was a close connection between the action against the British party and the action against the French defendant.
However, a few days later, the same court refused to consider that there was a close connection between two parallel actions launched in Italy and France and grounded respectively on an Italian and a French patent, even though these patents covered the same invention.13 This judgment was confirmed by the Court of Appeal.14
A few years later, called to draft a report on the subject for the Seoul Executive Committee of October 2003, the French group of the AIPPI recommended that French courts should apply the ‘spider in the web’ doctrine and accept jurisdiction for the whole case only if the ‘spider’ is French.
In any case, French courts’ position on this matter is very likely to be guided by the judgment of the European Court of Justice in the Roche/Primus case which, following the opinion of Advocate-General Léger, seems to have put an end to the possibility to grant cross-border injunctions in such types of case.15
2.7 To what extent do courts recognise the blocking effect of ‘torpedo actions abroad’?
In a decision which has attracted much professional attention, the Paris Tribunal de grande instance refused to stay the proceedings in a ‘torpedo’ case.16
In this case, the German and Italian defendants had launched an invalidity action and a declaratory action on non-infringement in Italy, immediately after the patent holder had initiated saisie-contrefaçon proceedings in France.
When the patent holder filed for infringement in Britain, Germany and France, the defendants claimed that the proceedings should be stayed until the end of the Italian proceedings.
The Paris Court grounded its refusal to stay the proceedings on the consideration that: ‘the writ of summons delivered by the defendants before the Court of Milan shows that they made use of the European civil proceedings rules, in order to block the infringement action launched against them in France, by launching in Italy, a declaratory action on non-infringement of the Italian part of the European patent… It cannot be seriously denied that such use of the European civil proceedings system constitutes a fraud, since the principal aim of such system is to avoid the issue of contradictory decisions by the courts of two contracting States in identical or connected matters, and not to enable a party to wilfully block a legal action for several years even if it serves its personal interests.’
It is unlikely that such position would still be sustained in the light of the recent ECJ rulings on interpretation of the Brussels Convention in the Gasser/Misat17 and Turner/Grovit18 cases.
The former judgment ruled that a court in a Contracting State may not ground a refusal to stay proceedings,on the reason that the duration of proceedings before the court first seized are supposedly excessive. The second one condemned the English practice of ‘anti-suit injunctions’ (ie injunctions by which a court prohibits a party from commencing or continuing legal proceedings before a court of another Contracting State), ‘even where that party is acting in bad faith with a view to frustrating the existing proceedings’.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
General principle
There is a general principle under French law that assessment of patent infringement means comparing similarities rather than differences.
This means that a patent is held to be infringed if the allegedly infringing product or process reproduces the essential means of the patented invention.19 Minor differences applying to secondary means will be treated as ‘slavish’ infringement.
Application of the doctrine of equivalents
French courts recognise a doctrine of equivalents and apply it for certain cases of non-literal infringement where the allegedly infringing product or process is structurally different from the essential means covered by the patent, but may be considered as equivalent to said essential means, so that it falls under the scope of the patent.
Equivalence may only be recognised if such structurally different means perform the same function (ie the same primary technical effect) as the patent, in order to achieve the same or a similar result.20
Three hypotheses should be distinguished:
Contrary to the doctrine of equivalents in certain other countries, obviousness is irrelevant for the assessment of patent infringement by equivalence in France. French courts will therefore not consider whether the allegedly equivalent means was obvious or not for the person skilled in the art.
The intention of the patentee to cover or not equivalent means is also considered irrelevant by French case law.23
Until recently, there was no ‘file wrapper estoppel’ under French law. Therefore, even though judges would have been likely to take such factual elements into consideration in order to assess infringement, a patentee would not have been barred from using the doctrine of equivalents by the mere fact that the allegedly infringed claim had been restricted during the file prosecution. However, French law has recently evolved on the subject of estoppel, the Supreme Court having expressly applied, in an arbitration matter, the rule of estoppel.24 In a patent matter, the Paris Court of Appeal very recently applied the same principle (but without referring explicitly to the rule of estoppel).25
For his defence, the alleged infringer may put forward the invalidity of the patent and/or the absence of reproduction of the claims.
He may also put forward the defence that he had knowledge of the invention before the patentee made his filing (prior possession defence) which grants him a personal right to work the invention despite the existence of the patent (Art L. 613–7 of the IPC).
The alleged infringer may also bring forward a series of defences listed at Art L. 613–5 of the IPC: acts made privately and for non-commercial purposes, acts made for experimental purposes and individual extemporaneous preparations of a medicine made in a pharmacy.
In criminal cases, the defendants who are not the manufacturer of the allegedly infringing products may bring forward a bona fide defence. However, case law tends to consider that professional parties can never be in good faith.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
As regards patent right and antitrust rules, French case law is in line with EC case law and regulations.
French law considers that the enforcement of a patent may not be considered as violating competition law for the mere reason that the patentee enjoys a monopoly. However, competition law may prohibit certain types of patent right enforcement that may amount to an abuse of dominant position.
It was thus held that the acquisition by Tetra Pak (which holds a dominant position on the market of aseptic cardboard packaging) of a competitor, which held an exclusive licence on a technology permitting automated filling of packs, constitutes an abuse of dominant position since it prevents the entry of new competitors on the market.26
It has been ruled by the Paris Court of Appeal that the refusal to give access to an ‘essential facility’ (as defined by EC law) consisting in a computer program may constitute an abuse of dominant position.27 In this case, it concerned a software program created by the French leading press distributor and used by wholesale newsagents. This solution might without doubt be transposed to patents.
A patent may be invalidated for the reasons listed at Art L. 613–25 of the IPC, ie:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
A court may invalidate a patent in part. In this case, invalidation is pronounced in the form of a corresponding limitation of the claims.
According to Art L. 613–17 of the IPC:
‘Where a decision partially revokes a claim, the owner of the patent shall be referred to the National Institute of Industrial Property in order to submit a modified wording of the claim in accordance with the terms of the decision. The Director of the Institute shall be empowered to reject the modified claim for lack of conformity with the decision, subject to appeal to one of the appeal courts designated under Art L.411–4 of the Code.’
A court may not transform the patent into a utility model.
Article L. 613–24 of the IPC provides that the patentee may at any time relinquish either the entire patent or one or more claims under the patent. Such relinquishment must be effected in writing with the National Institute of Industrial Property and takes effect on the day of its publication.
It follows from this that the patentee may amend the patent claims during a law suit. However, such amendment may only consist in the relinquishment of a claim. The alleged infringer may not be adversely affected by such modification.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
The grounds on which an otherwise valid patent can be deemed unenforceable are:
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
A patent holder may not bring a law suit claiming both patent infringement and unfair competition for the same set of facts.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
Article L. 615–2 of the IPC provides that infringement proceedings shall be instituted by the owner of the patent.
However, the exclusive licensee may, unless otherwise stipulated in the licensing contract, institute infringement proceedings if, after notice, the owner of the patent does not institute such proceedings himself.
The same right is awarded to the holders of a licence de droit (licence of right), a licence obligatoire (compulsory licence) or a licence d’office (ex officio licence).
Any licensee is entitled to take part in the infringement proceedings instituted by the patentee in order to obtain compensation for the loss he has personally sustained (on the ground of unfair competition).
Case law generally considers that the licensee needs to be registered to sue.
Each joint owner may initiate infringement proceedings for his own benefit, but he must notify the other joint owners under penalty of the action to be held inadmissible.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
Article L. 615–9 of the IPC provides for the possibility of obtaining declaratory judgments on non-infringement. The conditions are the following:
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
It follows from Arts L. 613–3 and L. 613–4 of the IPC that the persons who may be sued for infringement are those, unless the patent owner consents:
The offering, the putting on the market, the using and the stocking for such purposes, of infringing products, when committed by a person other than the manufacturer of the infringing products, shall make him liable only if he had full knowledge of the facts.
The patent owner may sue all or any of the alleged infringers, be they individuals or corporations. Company directors may only be sued if they have committed a personal fault which may be separated from their functions.
It is possible to add parties during litigation provided there is a sufficient link between the action brought against the added party and the initial action.
It is also possible to subtract parties, but the party whose subtraction is envisaged must give his consent if he has already filed a brief in answer to the claim.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
When seeking to enforce his rights, the patent holder may either try to stop the infringement by direct negotiations and an amicable settlement agreement, or go to court or, if the defendant agrees, refer the case to arbitration or mediation.
Patent infringement being both a criminal and civil offence, patents may be enforced either in criminal or civil courts under Arts L. 615–1 and L. 615–14 of the IPC.
Criminal actions are brought before the Tribunal correctionnel (criminal court). The alleged infringer’s bad faith must be proven. In practice, criminal proceedings are only initiated when the infringement is blatant and the case clear cut, which is relatively rare as far as patents are concerned. Patent holders use this track when they want to set a public example.
The sanctions are up to three years of imprisonment and a €300,000 fine. The penalty is raised to five years of imprisonment and a €500,000 fine if the infringement was committed by an organised gang. In the event of repetition of the infringement, or if the offender is or has been contractually bound to the aggrieved party, the penalties involved are doubled.
The guilty parties may in addition be deprived, for a period not exceeding five years, of the right to elect and be elected to commercial courts, chambers of commerce and industry and professional chambers and to join conciliation boards.
Contrary to French trade mark and registered design law, French patent law does not provide for any border measures. However, EC regulation No 1383/2003 of 22 July 2003 provides for Customs’ intervention in patent infringement cases.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your patent office recognise and execute an arbitral award declaring a patent invalid?
Alternative dispute resolution methods such as arbitration or mediation are available provided the parties agree to use them.
Arbitration may not rule on the validity of the patent, which may only be decided by a court.
The procedure in a civil patent infringement case is as follows:
Commencement of proceedings
When the plaintiff chooses to initiate civil proceedings, he must serve a writ of summons on the alleged infringer and file the writ with the Tribunal de Grande Instance for entry on the case list.
Conduct of proceedings
Once the writ of summons has been referred to the court, the parties exchange their claims, arguments and lists of supporting documents under the supervision of one judge of the court who is in charge of setting the calendar and determining certain incidental procedural matters (Juge de la mise en état). According to Decree No 2005/1678 of 28 December 2005 on civil proceedings, which came into force on 1 March 2006, the judge should set the date of the closure of the debates and the date of the oral hearing at the beginning of the proceedings.
There is no jury in civil proceedings. Disputed issues are always decided by judges.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
In civil cases, the evidence which is produced usually consists of documents and, when necessary, affidavits.
French judges do not put much faith in documents emanating only from one party without any objective elements to corroborate them. This is why witnesses and private experts are rarely heard in court and why depositions and affidavits are much less abundantly submitted than in certain other countries.
Courts rarely appoint experts except for the valuation of damages. The expert’s report, though not binding on the judge, generally has great weight.
6.4 To what extent is a pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
Pre-trial discovery does not exist in France.
Under Art 9 of the Code of Civil Proceedings (CCP), each party must provide evidence of the facts necessary for the success of their claims. Articles 15 and 132 of the CCP provide that the parties must exchange their evidence within a reasonable period of time before the hearing of the case.
A party is supposed to spontaneously supply his evidence. The parties are not required to provide evidence which might be detrimental to them. If a party withholds a document, the judge may, at the request of the other party, order its production if he considers that such evidence is relevant to the ruling of the case (Art 133 of the CCP).
Third parties may also be ordered to produce any relevant documents. Failure to produce the documents may result in a penalty fine. However, it should be emphasised that if a party fails to request information from a third party, the judge cannot, as a rule, order the production of documents. Therefore, the judge will rule on the basis of the available information.
There exists, besides, a mechanism called saisie-contrefaçon which enables the patent holder to gather evidence of the infringement (see below question 8.3).
6.5 What level of proof is required for establishing infringement or invalidity?
There is no specific level of proof required for establishing infringement or validity. Infringement may be proven by any means.
For alleged infringement of a patented process, the burden of proof is reversed. If the product obtained through the allegedly infringing process is the same as the one obtained through the patented process, the court may order the defendant to prove that the process he used is different from the patented process.
If the defendant fails to bring such proof, the product shall be deemed to have been obtained through the patented process in the following cases:
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Proceedings in the Tribunal de Grande Instance, from the date of the writ of summons to the oral hearing, last generally from 18 months to two years, depending on the complexity of the facts and the number of cases pending before the court.
If the matter requires urgency, it is possible to expedite this process by using a procedure with a set date which will last from four to six months. However, the plaintiff will have to communicate all his evidence at the beginning of the proceedings and the defendant may hold his brief in response up to the hearing.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of a defendant?
The defendant may delay the proceedings by petitioning the judge for the postponement of the dates set by the procedural calendar. However, this may become difficult given the provisions of new Decree No 2005/1678 on civil proceedings (see above question 6.1).
The defendant may try to raise incidental claims which will delay the examination of the case on the merits.
The defendant may try to use European civil proceedings rules (such as torpedoes). The success of such tactics may not be predicted (see above question 2.7).
To counter delaying tactics, the plaintiff may show that the defendant is in bad faith and ask the judge to refuse postponement of the calendar and to maintain the initial closure date. He may also petition for the dismissal of the request to stay the proceedings.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing products, publication of the decision, recall-order, monetary damages, etc)?
The remedies available against a patent infringer are:
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
The final banning injunction normally applies only to the defendant.
However, depending on how such injunction is drafted, it may have the effect of obliging the defendant to recall the products that are still on the market, which may have an impact on the infringer’s supplier or customers, even though they were not party to the law suit. If such a measure is ordered and the judgment may still be reversed, the defendant may try to obtain an order that the patent owner post security pending the final judgment.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits or some other basis)? Are punitive damages available? If so, under what conditions?
Who is awarded monetary remedies?
The patent owner (or the exclusive licensee acting in the place of the patent owner) is awarded damages. If the action is brought only by one of the joint owners of a patent, he is compensated in proportion to his property rights.
The licensee whose licence has been duly registered with the French Patent Register may ask for damages in order to compensate his own injury which results from the commercial loss and the unfair use by the infringer of its promotional investments.
Valuation of monetary remedies
The basic principle of compensation under French law is that the aggrieved party should be compensated so that he is placed in the position he would have been in had the infringement not occurred. Such party is entitled to full compensation for his loss, but no compensation beyond his loss.
As a result, punitive damages are not available under French law. The infringer will not have to give back to the patent holder the profits he made through the infringement, if these profits are higher than the actual loss.
Valuation of the loss is entirely left to the courts’ discretion. The courts may appoint an expert to assess the damages or may grant a lump sum when the case does not justify the expense of an expert.
French law considers that damages should compensate for the loss actually suffered by the plaintiff and the profits he has been deprived of.
Loss suffered
(1)The loss of the advantages attached to the monopoly: Under Art L. 613–1, the right in a patent is a property right. Therefore, any violation of the patent causes injury to the owner, even if the infringement has not resulted in any commercial loss (for instance if the infringing products have not been marketed). It must be noted that because an ordinary licensee is not in a monopolistic position, he cannot claim for compensation of the loss of the advantages attached to the monopoly.
(2) Depreciation of the value of the patent: Infringement may cause depreciation in the image of the product if the infringing product is of lower quality.
(3) Loss sustained as a result of competition from the infringer: Infringement may lead the patent owner to sustain loss in order not to be evicted from the market: this includes situations where the patentee is forced, in order to remain competitive, to lower the price of his goods, to increase his advertising costs or to lower the rate of the licence fees.
Lost profits
Lost profits are constituted by the profits the patent holder would have made if the patent had not been infringed. Assessment is not easy to do, which is why courts often appoint experts.
In any case, the result will depend on whether the patent is exploited or not.
(1) If the patent is not exploited: Lost profits correspond to the royalty fees the patent owner may have obtained in consideration for granting a license to the infringer. The indemnity fee is fixed on the basis of the owner’s own business practices and/or general practice in the relevant industrial sector. It is applied to the revenues generated by the sales of the infringing goods.
(2) If the patent is exploited: Sometimes, the rate of the plaintiff’s sales decreased at the same time and in the same proportion as the infringer’s rose, which is very convenient in assessing the amount of lost sales. However, cases are rarely as clear-cut as this in real life. This is why assessment methods have been devised.
Assessment implies the taking into account of three criteria: the amount of the infringement, the lost sales rate, and the lost profit rate per unit.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg, preliminary injunction) and under what conditions?
Preliminary relief is available under the form of a mechanism called référé-interdiction governed by Art L. 615–3 of the IPC. This mechanism is independent from the general interim relief system which is contained in the Code of Civil Proceedings. A preliminary relief action launched in a patent infringement case has to be introduced in compliance with Art L. 615–3 of the IPC. Any other procedure would be held as null and void.
Article L. 615–3 imposes three conditions in order to obtain preliminary relief:
The courts have had occasion to rule that these criteria are necessary but sufficient to obtain preliminary relief. Therefore, criteria belonging to general preliminary relief proceedings (such as urgency or the fact that the patentee is not likely to suffer irreparable damage unless urgent relief is granted) are not applicable to the specific patent interim relief procedure.28
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
There are no ex parte preliminary injunction proceedings under French law.
However, saisie-contrefaçon may constitute a type of ex parte relief when the judge orders the actual seizure of the infringing goods (see below question 8.3).
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefacon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
It is an ex parte procedure described at Art 615–5 of the IPC, by which the patent owner requests the court to issue an order authorising a search and seizure of a few samples of the allegedly counterfeiting items or devices.
The request is made by the patent owner or its exclusive licensee through an attorney to the President of the Tribunal de Grande Instance.
The President is obliged to issue, either immediately or shortly afterwards, on the mere basis of sufficient evidence of the validity of the patent, an order of seizure (ordonnance) allowing the patent holder to appoint a bailiff to obtain evidence at the alleged infringer’s premises.
Usually, the parent holder is only authorised to have two samples of the counterfeiting products seized, the bailiff writing a full description of the products in his statement (saisie descriptive). However, the judge may also order a seizure of the entire stock of the allegedly counterfeiting products (saisie réelle). The President may also permit the bailiff to search for any documents revealing the names of the suppliers of the items and the number of articles purchased or manufactured by the alleged infringer (invoices, order forms or bills of lading, either on paper or from computer hard drives etc). The bailiff may be assisted by a person skilled in the domain covered by the patent. Such person may not be an employee of the patent holder but he may be the latter’s patent agent. The bailiff must remain strictly within the scope of the President’s order and not seize documents which are not related to the allegedly infringing products, on pain of invalidation of the saisie.
It should be noted that certain judges, especially in Paris, are reluctant to authorise the seizure of the entire stock of goods since this may amount to confiscation. A plaintiff seeking seizure of the entire stock may be required to post security to compensate any damage suffered by the defendant if it subsequently appears that the seized products are not infringing.
The patent holder must imperatively file his law suit within 15 days from the date of the seizure, failing which the seizure would become null and void. The defendant may petition to obtain the withdrawal of the saisie if he has reason for that.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The defendant may put the validity of the patent in issue in référé-interdiction proceedings.
He will generally do so, in order to show that the action fails to meet the likelihood of success criterion. If the judge considers that there is a serious risk of the patent being invalidated, he will not grant the preliminary injunction.
The President of the Tribunal de Grande Instance has jurisdiction.
The procedure is initiated by serving a writ of summons on the defendant.
The President has the power to:
Moreover, the patent owner may be authorised to seize the entire stock of goods by an order in summary proceedings even though he has been denied an ex parte order to do so. The defendant may also be ordered to recall the allegedly infringing products.
In the past, courts seldom used to grant such preliminary relief. Nowadays, orders in summary proceedings are more frequently granted when the statutory conditions (which the judges rigorously apply) are met.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
The evidence usually consists of documents and, when necessary, affidavits.
French judges do not put much faith in documents emanating only from one party without any objective elements to corroborate them. This is why witnesses and private experts are rarely heard in court and why depositions and affidavits are less abundantly submitted than in certain other countries.
Courts do not appoint experts in référé-interdiction proceedings. If an expert is needed, it means that the case is non obvious and the judge would dismiss it on the ground that the plaintiff fails to prove his action is likely to succeed.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
There is no specific level of proof required for establishing infringement or validity in preliminary injunction proceedings. Infringement may be proven by any means.
The procedure is expedited and the President will render his order in about one month’s time.
If the judge finds that the case is not suitable for preliminary injunction proceedings (for instance because of its complexity), but that the matter is urgent, he may directly fix a date for hearing the case to be heard on the merits (passerelle). In principle, the judge who has ruled in the preliminary injunction proceedings should not hear the case on the merits.
9.1. What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
In main proceedings, an appeal may be filed with the Court of Appeal by any of the parties up to a month after the judgment of the Tribunal de Grande Instance has been served on that party. The period is extended for an additional two months when the party is domiciled in a foreign country.
The appeal procedure usually prevents the enforcement of the judgment, unless the latter has expressly provided for immediate enforcement.
In preliminary injunction proceedings, the order issued by the President of the Tribunal de Grande Instance is also subject to appeal up to a month after the judgment has been served on that party. However, such an order is generally provisionally enforceable irrespective of the appeal.
Judgments of the Court of Appeal may be reviewed by the Cour de Cassation, but only on the basis of violation of law since the French Supreme Court does not rule on the facts of the case. Instead, it reviews the manner in which the rule of law was applied to those facts. The appeal to the Supreme Court does not suspend the enforcement of the judgment of the Court of Appeal.
9.2 How long do appeal proceedings typically last?
Appeal proceedings typically last from 18 months to two years.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
A patent infringement procedure at the first instance court level costs between €80,000–150,000.
Such costs mainly consist of attorneys’ (which are generally billed on an hourly basis) and patent agents’ fees to which may be added experts’, translators’ and local attorneys’ fees, if necessary.
The costs depend upon the complexity of the facts and legal arguments, the number of seizures, the initiation of summary proceedings in addition to a law suit on the merits, the necessity of hiring one or more attorneys, the urgency, the follow-up and difficulties of the enforcement of the decision.
Costs are roughly similar at the appeal level.
10.2 Are costs recoverable from the losing party?
The court usually awards the plaintiff with damages under Art 700 of the Code of Civil Proceedings which covers a portion of the recoverable costs. Experts appointed by the courts are generally paid by the defeated party.
It should be noted that this amount is routinely underestimated even though the Parisian courts seem to be aware of the problem and to try to give better compensation to the winning party. Providing the court with invoices helps to obtain better compensation.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
There is no significant developing and emerging trend in French patent law as such.
However, new developments in more general areas are likely to have an impact on day-today practice.
Thus, the Decree on civil proceedings, which entered into force on 1 March 2006, introduced new procedural rules that aim at expediting procedures.
Besides, the courts of Paris have decided to create an important intellectual property pole aiming at further improving the professional training of IP specialised judges (both in civil and criminal courts).
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
France has not yet implemented EC Directive No 2004/48 of 29 April 2004 on the enforcement of intellectual property rights. Even though the mechanisms advocated by the Directive (saisie-contrefaçon, specific interim relief etc) already exist under French law, full implementation necessitates the amendment of the IPC.
Since the implementation deadline is 29 April 2006, a new Loi should soon be passed. However, no bill has been officially presented yet.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Textbooks
There are very few recent textbooks relating specifically to French patent law. Reference will
therefore be made to general industrial property textbooks in which a part is dedicated to
patent law.
Paul Mathély (ed) Le nouveau droit français des brevets d’invention (JNA, 1992)
Michel Vivant Le droit des brevets (Dalloz Connaissance du droit, 2nd ed, 2005)
Patrick Tafforeau Droit de la propriété intellectuelle (Gualino Editeur, Coll Manuels, 2005)
J Schmidt-Szalewski and JL Pierre Droit de la propriété industrielle (Litec, 3rd ed, 2003)
Jean-Luc Piotraut and Pierre-Jean Déchristé Jugements et arrêts fondamentaux de la propriété
intellectuelle (TEC & DOC, 2002)
Pierre Véron Saisie-Contrefaçon (Dalloz, 2nd ed, 2005)
Periodicals
Propriété Industrielle Bulletin Documentaire (La Documentation Française) (bimonthly) Propriété industrielle (Editions du Jurisclasseur) (monthly)
Encyclopaedia
Jurisclasseur Commercial (Brevet) (quarterly)
Websites
www.legifrance.gouv.fr: French official site for legal information: gives access to all French
legislation, to the case law of the Cour de Cassation and a selection of lower courts’ case law.
www.inpi.fr: website of the French Industrial Property Office.
www.irpi.ccip.fr: website of the IRPI (an institute specialised in research on intellectual
property).
FOOTNOTES
