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.

Recording a change in the French Patents Register

Unfair competition in France

In France, the action for unfair competition is based on the civil aquilian responsability (Articles 1382 and 1383 of the French Civil Code).

According to the common right, the responsability of the author of the damage is involved only if the following three conditions are met:

  1. The author of the damage must have commited a fault.
  2. The victim must have suffered from a damage, which might be only moral.
  3. The causalty relation between the fault and the damage must be proved.

The acts can be considered as faulty when the author of the damage and the victim are in competition.

Parasitism

A situation of fault is also possible when the two parties are not in competition but the faulty acts of the first may inflict injury to the activities of the second, particularly to its image.

The action for unfair competition can be engaged alone, jointly with an action for infringement or as accessory action.

When engaged jointly to an action for infringement, the action for unfair competition is admissible only if distinct facts from those of the infringement exist. For example, the use of lower prices, the use of similar colors or presentation of a product in case of infringement of a trademark, the diversion of customers...

Seizure-infringement as an element of proof

The inspection of property (saisie contrefaçon) or seizure-infringement is an element of proof, not a confiscation measure. It must allow to identify the acts of direct infringement (manufacture of the product, use or offering to use of the process, importation of the patented product or of the product directly obtained by the process). In case of an indirect infringer (a person other than the manufacturer), the seizure can allow to establish the full knowledge of the infringer.

The proceedings of seizure-infringement requires a legal authorization :

A detailed petition for a judge's order has to be presented to the President of the First Instance Court of Paris :

  • Identification of the plaintiff ;
  • Identification of the person against which the seizure must be performed ;
  • Indication of the solicited measures of execution.

The President gives an order. He cannot refuse the descriptive seizure but he can refuse the actual seizure ;

  • He can ask for a consignation (in order to garantee the reparation for an inquiry which could be caused by the seizure).
  • The order can designate an expert who will examine the seized documents under the seal of confidentiality ;
  • Sometimes the order can allow the seizure against people not designated but revealed by the first seizure (for example : resellers), on the territorial venue of the First Instance Court ;
  • The order can indicate the place of the seizure or authorize all the buildings belonging to, or occupied by, the designated person (on the territorial venue of the First Instance Court) ;
  • The order is for provisionnal enforcement, it can be restricted in time.

The object of the seizure

  • in case of products claims: the components of the product, the finished product or the product in an intermediate state ...
  • in case of process claims: agents as used, product as obtained, ...

"any establishment of fact useful in order to ascertain the origin, the consistence and the extent of the infringement": drawings, notices, invoices from suppliers, shop books, elements from accounting departments ...

Who conducts the seizure

The seizure is conducted by a bailiff (process-server) chosen by the patentee (territorial venue).

The bailiff can be accompagnied by one or more experts (counsel - patent agent -, photographer, specialist worker to disassemble and re-assemble the counterfeited object), a police inspector or a police constable.

The affidavits made by the bailiff are authentic, the explanations of the expert are not.

Progress of the seizure

* before carrying out the seizure, the bailiff must give a copy of the order (as well as the act ascertaining the deposit of a guarantee) to the holders of the objects (responsible person, shop chief), under penalty of nullity of the seizure. The name of the person to which the copy is given must be mentioned, under penalty of nullity of the seizure.

* actual seizure: the bailiff offers to pay the price of the seized objects (actual seizure of specimens). The seized objects are placed under the bailiff's seals or are deposited at the clerk of the Court. Specimens can be given to the patentee.

* The bailiff establishes a report describing the operations as conducted and the seized objects. A copy of this report must be given to the holder of the seized objects (at the end of the seizure or served later).

Action for infringement

After the seizure, it is compulsory to lodge a petition before the First Instance Court within 20 working days or 31 calendar days (whichever is longer), under the penalty of the nullity of the seizure.

Instead of serving a writ of summons to the person against which the seizure has been conducted, it is possible within this period, to serve a writ of summons to another infringer who has been revealed by the seizure (for instance : a manufacturer).

In addition to the person against which the seizure has been conducted, it is possible to serve a writ of summons out of this fortnight period to another infringer, even if he has been revealed by the seizure.

The seizure can be considered as being unauthorized (for example if it has been conducted with the intention of injuring or under useless and excessive conditions). An unauthorized seizure can allow the defendant to ask for damages, but it does not influence the action for infringement as it is only an element of proof.

This website uses cookies

This website uses cookies to improve user experience. By using our website you consent to all cookies in accordance with our Cookie Policy.