Acting for infringement of a French patent

Which court ?

According to the French law, "proceedings for infringement of patents shall be heard exclusively by the First Instance Court". Since November, 1st 2009, only Paris First Instance Court has competency to deal with actions for infringement of a patent.


Who can institute proceedings ?

The owner of the patent

- if the proprietary is an individual, the action taken by a company is inadmissible.

The owner of a patent application

- the patent application must have been published or notified

- the establishement of the search report must not have been postponed

- the Court must stay the judgement till the granting of the patent

The joint owners

- according to Art L. 613-29 of the Intellectual Property Code, "each joint owner may take action for infringement for his own exclusive benefit" and shall notify the other joint owners of the action that has been brought.

The assignee of the patent

- he is admissible to act only as from the registration of the assignment in the National Patent Register

The licensee

- he must be an exclusive licensee

- the licence has to be registered in the National Patent Register

- the licence agreement must not debar him from the right to act

- the licensee has first to sent to the patentee summons to bring an action for infringement

Infringement acts

Acts of infringements are defined by articles L. 613-3 and L. 613-4 of the French law.

Among the exceptions listed in article L. 613-5, one can underline that the jurisprudence generally considers that tests carried out for a commercial purpose are not done "for experimental purposes". For example, in the drug field, comparative tests can be done between a new molecule and the patented product. However tests done for obtaining Marketing Autorization for a counterfeiting product are infringement acts, even if the marketing is carried out only after the expiration of the patent.

Article L. 613-6 limits the patent titular's rights, according to the free movement of goods in the European Community. Thus, a patented product sold in a European country can be re-introduced in France. This importation will not be considered as an infringement act.

The seizure-infringment

The seizure - infringement is an element of proof, not a confiscation measure.

When acting for infringement ?

To act for infringement, the patent has to have effect against others.

The actions for infringement of a patent are barred at the end of three years as from the facts which are the cause of them.

The provisional measures to stop the acts of infringement (L615-3)

It is possible to have the acts of infringement provisionally forbidden. Such an action is admissible if :

- it is based on a granted patent ;

- it is connected with a substantive action for infringement (the action must have been formed by a writ of summons and have been entered before a Court) ;

- the action for infringement must have been instituted within a short time of the day on which the patentee became aware of the facts on which the proceedings are based ;

- the substantive action must appeared well founded (the judge must not have a serious doubt on the merits of the case when studying the validity of the patent and the materiality of the infringement).

The judge may condition the injunction on the furnishing by the plaintiff of a guarantee to cover possible indemnization of damages suffered by the defendant if the infringement proceedings are subsequently judged to be unfounded.