Enforcing patents in France

22 August 2005

Paule Drouault-Gardrat

What options are open to a European patent holder, whose rights cover your jurisdiction, when seeking to enforce its rights in your jurisdiction?

A European patent designating France affords the same rights as those conferred by a French patent (as long as the European patent has first been translated into French within a time period of three months after publication of the grant of the European patent). As a result, the holder of such a European patent has notably the following options:

  • The sending of a warning or cease and desist letter.

  • Actions in order to obtain evidence of infringement through bailiffs’ affidavits (constats d’huissier) or infringement seizures (saisie contrefaçon).

  • Actions in order to get from the court an interlocutory injunction or a decision on the merits.

Does your jurisdiction have specialist patent courts? If not, what level of expertise can a patent owner expect from the courts?

Actions relating to patents fall under the exclusive jurisdiction of 10 courts of first instance (Tribunal de Grande Instance) specialised in patent litigation, which are as follows: Paris, Lyon, Lille, Nancy, Strasbourg, Marseille, Toulouse, Bordeaux, Limoges and Rennes. These Courts have indeed an extended territorial jurisdiction for patent actions. Appeals from their decisions are heard exclusively by their corresponding courts of appeal (Cour d’appel).

In Paris, the court of first instance and court of appeal have a specialised chamber dedicated to Intellectual Property matters.

Is it possible to cross-examine witnesses at trial? How far are proceedings based on written evidence? Are there restrictions on the use of evidence from experts?

Cross-examination of witnesses during trials is not possible but the judges have the power to ask questions they deem necessary or appropriate to the parties.

All common means of evidence are receivable including, eventually, live testimony. However, such oral evidence is hardly ever used in practice and the whole procedure is chiefly based on written evidence.

There is no specific restriction on the use of evidence from experts, either private or court-appointed. However, the parties generally have the opportunity to dispute the report made by an expert in further briefs before the court. For instance, where the court decides to appoint an expert, it will normally specify his mission by setting out the questions to be answered by the expert. If the expert goes beyond his mission, the parties will have the chance to dispute, wholly or partly, evidence so obtained.

The use of court-appointed experts in order to clarify any technical problem concerning the existence of an infringement or the valuation of the amount of damages to be paid to the patentee as a result of the infringement is increasingly frequent.

Are infringement and invalidity dealt with simultaneously? What level of proof is necessary to demonstrate one or the other?

Infringement and invalidity are dealt with simultaneously in the same proceedings.

A claimant can prove infringing activities or the invalidity of a patent by any means it feels fit: documentary evidence, bailiffs’ affidavits, expert’s reports, presumptions, live testimony, etc. Evidence admissible in summary proceedings and proceedings on the merits is the same.

As regards patent infringement action, the French Intellectual Property Code (CPI) provides that if the patent covers a process for obtaining a product, the burden of proof is reversed and lies with the defendant. Indeed, in such a case, the court may order the defendant to prove that the process used to obtain an identical product is different from the patented process. If the defendant fails to produce such proof, any identical product manufactured without the consent of the patent holder shall be deemed to have been obtained using the patented process either when the product obtained by the patented process is new; or when it is highly probable that the identical product was obtained using the patented process, although the holder of the patent has been unable to determine which process was actually used, despite reasonable efforts to do so.

To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted?

French law contains no process akin to that of discovery, i.e. a process conducted before trial and during which each party requests relevant information and documents from the other in an attempt to collect evidence.

The French Civil Procedure Code provides that where there is a legitimate reason to preserve or to establish before any proceedings evidence of factual circumstances upon which the resolution of the dispute could depend, any measure may be ordered by the judge at the request of one party by way of a petition or a summary interlocutory procedure. However, this cannot be used to make up for a party’s failure to produce sufficient evidence.

The CPI provides a specific procedure to collect evidence of infringement by way of a seizure called saisie contrefaçon. This seizure is very efficient and is often used in practice. It is ex parte and thus made without any notification to the alleged infringer. The holder of a patent or patent application must request an order from the president of the court of first instance of the place of the alleged infringement in order to be entitled to instruct a bailiff, assisted by a patent agent, to carry out investigations at the premises of the alleged infringer. The seizure may take the form of a certified description of the alleged infringement (saisie descriptive) or actually involve removing samples of any alleged infringing product (saisie réelle). It is extremely rare for the court to allow the seizure of all the infringing products.

If the claimant fails to institute proceedings before the court within 15 days, the seizure is automatically void and the claimant is liable to the alleged infringer for any damage caused to him by such seizure.

To what extent does any doctrine of equivalents apply in an infringement action?

The doctrine of equivalents is widely applied in France. According to French case law, two means are technically equivalent if they fulfil the same function in order to obtain the same result or a similar one, while having a different form or structure. In France, the equivalency test is as follows: French courts first assess whether the patent covers not only the form of the means but also its function, and then whether the means used in the allegedly infringing product is a technical equivalent.

Are there certain types of patent right that may be granted by the EPO – biotech or computer software-related, for example – that are more difficult to enforce than others?

Normally, there is no specific type of patents granted by the EPO that could be difficult to enforce in France. One exception, however, may relate to computer software-related inventions. Indeed, the European Patent Convention and French law exclude computer programs “as such” from patentable inventions but, in practice, the EPO has granted many patents in the field of software in recent years. Nevertheless, when such a European patent is issued it may subsequently not be upheld in an invalidity proceeding or a patent infringement proceeding (which generally implies a counterclaim for invalidity of the patent by the defendant) before French courts, which generally view the above-mentioned exclusion in a strict light.

To what extent are courts willing to consider, or are bound by, the opinions and decisions of other courts that have dealt with similar cases?

The stare decisis principle on the basis of which lower courts are bound to follow the decisions of higher courts that have dealt with similar cases does not apply in France. Nonetheless, in practice, the need for predictability results in the fact that lower courts generally defer to precedents from higher courts.

To what extent are courts willing to consider the reasoning given by foreign courts that have handed down decisions in similar cases?

French courts will consider the reasoning given by foreign courts in similar cases only for informational purposes. The reasoning of a foreign court may be of some influence and particularly as regards interpretation of facts and evidence submitted. French courts make no reference to foreign courts’ decisions in their own decisions.

What options are open to a defendant seeking to delay a case? How can a plaintiff counter delaying tactics?

Enforcing patents in France

Besides the regular delaying tactics of civil procedure, there are no specific options open to a defendant to delay a case.

It is worth noting, furthermore, that the delaying tactic known as the torpedo is normally useless in France as case law does not allow pan-European related-claims exceptions in that respect. This tactic stems from the Brussels Convention (and subsequent Council Regulation (EC) No 44/2001), which makes it possible to obtain cross-border declarations of non-infringement. A potential or actual patent infringer uses it in order to start an action for a declaration of non-infringement and revocation of the patent before the Court of a European Union member state where proceedings are very lengthy (for example, the Italian courts). By doing so, this potential or actual infringer is willing to have the possibility to invoke Council Regulation (EC) No 44/2001, which requires a court to decline jurisdiction when the same or a related action is already pending before the court of another member state, in the event of the patent holder bringing an infringement action in another member state. Indeed, it would then raise the argument that the court chosen by the patentee is the second to be seized and has to stay the proceedings until the court first seized has decided whether it has jurisdiction, and if so, until it has tried the declaration of non-infringement issue.

In France, even if the claims appear to be related, the judges consider that the stay of proceedings is an option, which shall be chosen taking into consideration all the circumstances of the case. Consequently, where judges believe that the defendant is trying to freeze an infringement action, they may well disallow the stay of proceedings, considering that the purpose of Council Regulation (EC) No 44/2001 is not to allow a party to freeze deliberately a pending instance for several years.

How available are preliminary injunctions and how do you get them?

A patent holder who has launched an action on the merits for patent infringement can petition for a preliminary injunction in order to enjoin the alleged infringer from continuing its allegedly infringing acts under penalty of a daily fine, or subject them to the posting of a bond by the alleged infringer to cover possible indemnification of the patent holder, until the judgment on the merits is rendered.

Such an injunction is only granted if the petition was brought shortly after the patent holder learned of the allegedly infringing acts (maximum six months later) and if the underlying action on the merits seems serious and well founded.

The judge may further condition the injunction on the posting by the petitioner of a bond in order to compensate the defendant in the event that the judgment on the merits finally goes against the petitioner.

How long does it take to get a decision at first instance? Is it possible to expedite this process?

The average time in order to get a decision at first instance is around two years. It is not possible to accelerate this process.

What avenues for appeal are open to the defeated party in a first instance case? What criteria are there for granting an appeal? How long does the appeal process take?

A judgment rendered by a court of first instance can be appealed to the competent court of appeal within one month (three months for companies that are abroad) from the service of the judgment. The average time to obtain an appeal decision is about two years.

A decision from a court of appeal is appealable before the Cour de Cassation (highest court of the French judicial system), which only judges on points of law and not on facts.

To take a case through to a first instance decision, what level of cost should a party to a litigation expect to incur?

The amount of costs that a party should expect to incur depends on the complexity of the case at stake. It could include in particular bailiffs’ fees, experts’ fees, patent agents’ fees and attorneys’ fees. The decision rendered can declare the losing party liable to pay part of the winning party’s costs such as attorneys’ fees. The court generally grants a lump sum inferior to the costs actually incurred.

Who can represent parties in court? Is specialist representation required?

The parties have to be represented by attorneys at law registered at a French bar (avocats à la cour). Attorneys are generally assisted by patent agents (conseils en propriété industrielle) for technical matters. Patent agents do not have the right of audience in court.

Before the court of appeals, the parties must further select an avoué for the procedural aspects of their case (the avocats will only plead). Before the Cour de Cassation, only specific attorneys who are registered as avocats aux conseils can represent the parties.

What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances?

Damages awards are calculated on the basis of prejudice suffered. Where the patent holder uses its own patent, the damages are calculated based on its lost profits. Where the damages awards will depend on lost royalties.

Profits made by the infringer will not be taken into consideration and no punitive damages will be awarded.

French courts typically appoint an expert in order to calculate the amount of the damages.

Are there any realistic alternatives to litigation in cases relating to patent disputes?

Alternative dispute resolution techniques such as mediation or arbitration are possible for disputes relating to patent exploitation and, in certain circumstances, as regards ownership of patent.

Validity of a patent relates to public policy because it concerns the existence of a monopoly granted by the state. Consequently, as French law provides that “matters relating to public policy” are not arbitrable, disputes relating to patent validity normally remain the exclusive jurisdiction of national courts.

Are there any other features of the enforcement system in your jurisdiction that you would like to point out?

The French government recently announced the creation of a judiciary policy and an action plan in order to fight against counterfeiting which will notably include the training of judges in the IP field, as well as the drafting of a bill to strengthen anti-counterfeiting tools in the very near future.

Enforcing patents in France

First published in the August 2005 issue of Patents in Europe.