Litigation / Foreign Patent Litigation / France

Patent Litigation in France

Infringement and validity are dealt with in the same proceedings. The existence of the saisie procedure provides limited possibilities for discovery. Proceedings are normally reasonably speedy and not too expensive.

Points in Substantive Patent Law

In France, the scope of protection afforded by the patent is reasonably broad and replacement of a specified integer of a claim by an equivalent will not normally result in avoidance of infringement. As M. Mathely puts it in his book Le Droit Francais des Brevets d'Invention "It would be contrary to morality if the reproduction of a protected invention, disguised by some difference, was not subject to sanction".

Contributory infringement is actionable unless the material supplied is a staple article of commerce.[1]

Furthermore, the offer, commercial disposal, use, importation or stocking of the direct product of a patented process is an infringement of that process patent.[2]

Infringement Actions

Patent infringement in France gives rise ro both civil and criminal liability.[3]

Patent infringement actions in France can be brought only before certain specified Tribunaux de Grande Instance (i.e. those in Bordeaux, Lille, Limoges, Lyons, Marseilles, Nancy, Paris, Rennes, Strassbourg and Toulouse). These courts have an enlarged territorial jurisdiction for patent actions. There are specialist patent judges in Paris and Lyons, which courts, together with that in Lille, hear the vast majority of patent actions. Appeals from the Tribunaux de Grande Instance lie to the Regional Courts of Appeal and thence to the Cour de Cassation (Supreme Court); but only in cases where there has been an improper application of law by the lower court. If the Cour de Cassation disagrees with the Court of Appeal's decision, that decision is quashed and the case remanded to a different Court of Appeals for further consideration.

Audience before the French courts is confined to certain general lawyers (avocats). Although the old distinctions between avocats, avoués and agrées were abolished in 1972, there are still classes of general lawyers (conseil juridigue and notaires) who do not have the right of audience in court. Patent attorneys (conseil en brevets) also do not have the right of audience before the courts. There are several avocats who specialize in patent cases, especially in Paris.

If one does not already have evidence in one's possession, it is possible to request the President of a Court of first instance (Tribunal de Grande Instance) for an order of saisie.[4] Once the order has been issued the court bailiff, possibly accompanied by an expert and the police may make an inspection of the defendants premises and make a report on what was found there and possibly seize tangible evidence. In order for such evidence to be used in an infringement action, the plaintiff must then commence such an action for infringement within 15 days. If the main action is not commenced within this period, the plaintiff may be liable to the alleged infringer for any damage caused to him by the saisie.

Unlike Germany and Japan invalidity of the patent being sued on is a defence to an infringement action and the defendant can counterclaim for revocation of the patent.[5] If the defendant is successful the patent will be declared invalid with general effect (i.e., there is a pronouncement of invalidity in rem). The court may, alternatively, conclude that the patent is valid in part and pronounce its "revocation" in the form of a limitation of the claims. If this occurs, the patentee must submit the revised claims to the Patent Office for its approval.[6]

Infringement actions in France are tried by a three judge court. Formal hearings are also before a three judge panel. Evidence is in the form of documents or actual articles, possibly together with reports from a party's experts. It is not normal for the court to hear live testimony and the whole procedure is largely in writing. Normally, there will be a number of hearings prior to the final hearing. One problem that does occur in France is that as a result of the relatively rapid rotation of judges through various judicial posts, there may be fairly frequent changes of judges throughout the procedure. This can lead to some inefficiency and unpredictability. The courts have the power to appoint court experts, but it is rare for them to do so. The first instance proceedings are concluded with a formal hearing at which counsel for each side present a file of written evidence and argument.

Since 1984, the law has provided for the grant of interlocutory injunctions. Although the law was amended in 1990 to try to clarify the basis for the grant of such injunctions, they are still not all that common.[7] In order to succeed, the plaintiff must have started a regular infringement action and have a clear case on both infringement and validity (e. g. a completely clear novelty report). Furthermore proceedings must be started promptly after the plaintiff becomes aware of the infringement ( the Paris Court of Appeals has indicated that a delay of six months is the maximum that it will contemplate unless there have been active negotiations to settle the matter without the need to go to court).

Damage awards are based on lost royalties, if the patent is licensed, or otherwise on the basis of profits lost by the patentee. Successful parties are entitled to an award of their reasonable costs as determined by the courts. It is understood, however, that judges are not over generous in their awards of costs. The statute of limitation period is three years.[8]

Typically, it takes one and a half to two years from commencing the action to obtain a first instance decision and a further year to year and a half for an appeal.