Céline Bey and Clémence Lapôtre have written the French Chapter of the 2021 Chambers Patent Litigation guide. It provides the latest information on patent rights (granting procedures, initiating a patent infringement lawsuit, patent revocation/cancellation, patent remedies, litigation costs, alternative dispute resolution (ADR), and assignment and licensing of patent rights).
In France, the Paris Judiciary Court ruled that it had jurisdiction to hear claims from an SEP implementer against both the SEP holder and the European Telecommunications Standards Institute (ETSI) in order to have them set a FRAND rate for a worldwide FRAND offer. In its decision of February 2020, the Court held that ETSI is domiciled in France and that the claims against the SEP holder were so closely connected to those against ETSI that they had to be heard together.
In the pharmaceutical sector, the Paris Judiciary Court had the chance to consider the Pemetrexed and vitamin B12 case, and awarded a record high EUR28 million in provisional compensatory damages for patent infringement, a record in Europe. This decision of 11 September 2020 also found that a generic product was literally infringing even though the active principle was commercialised in a different pharmaceutical form than the one literally mentioned in the patent claims.
In 2020, the legal provisions creating an after-grant opposition procedure against French patents granted by the French National Institute of Industrial Property (INPI) entered into force, allowing third parties to request the revocation or modification of a patent through administrative proceedings. This applies to all French patents where the grant was published as from 1 April 2020.
Patent Litigation 2021
- Intellectual Property Rights and Granting Procedure
- Initiating a Patent Infringement Lawsuit
- Patent Infringement
- Patent Revocation/Cancellation
- Patent Litigation: Trial and Settlement
- Patent Litigation Remedies
- Appealing Intellectual Property Cases
- Patent Litigation Costs
- Alternative Dispute Resolution in Intellectual Property Matters
- Assignment and Licensing of Intellectual Property Rights
1. Intellectual Property Rights and Granting Procedure
1.1 Types of Intellectual Property Rights
The French Intellectual Property Code (IPC) provides three types of intellectual property rights for the protection of inventions, namely patents, utility certificates and supplementary protection certificates.
French patents are granted for inventions which are products or processes that are new, inventive and capable of industrial application, provided that such inventions are not excluded from patentable subject matter. Patent rights arise from the filing of an application with the French Office for Intellectual Property (INPI).
Similarly, an inventor can also file for a French utility certificate with the INPI and obtain protection identical to a patent but for a shorter duration. Since 11 January 2020, applicants can convert a utility certificate application into a patent application (Article L. 612-15 IPC introduced by the Law PACTE - implementing into French law the Directive 2015/2436/EU of 16 December 2015 approximating the laws of the member states relating to trademarks and the European Union Trademark Regulation (EU) No 2017/1001 of 14 June 2017).
Supplementary protection certificates are further discussed in 1.6 Further Protection for Technical Intellectual Property Rights after Lapse of Maximum Term.
France is a party to the European Patent Convention (EPC) and may therefore be a designated jurisdiction in a European Patent. Likewise, France is a party to the Patent Cooperation Treaty (PCT) and may consequently be designated in a PCT application as a party to the EPC.
In addition, the EU directive 2016/943 – implemented into French law (Article L. 151-1 of the French Commercial Code) by the Law on Trade Secrets of 20 July 2018 – protects trade secrets (ie, information that is secret, has commercial value because of its secrecy and has been subject to reasonable steps to keep it secret against its unlawful acquisition, use and disclosure).
France is a statute-based jurisdiction and uses case law mainly for the purposes of construing applicable statutes. The IPC contains the core of French patent law.
1.2 Grant Procedure for Intellectual Property Rights
The grant procedure for both French and European patents begins by filing an application with the INPI or the European Patent Office (EPO), respectively.
As for the French procedure, the INPI examines the application within two to five months from the filling date. As a result of the Law PACTE, the INPI now has the authority to refuse an application for lack of inventive step, where previously the INPI could only refuse a patent for lack of novelty or non-industrial applicability. Then, the INPI transmits to the applicant a prior art search report with its opinion on the patentability of the invention. Within three months from receipt of these documents, the applicant can respond to the INPI's observations and/or, if relevant, amend its claims.
The EPO procedure slightly differs as the prior art search report and the opinion on patentability is transmitted before any substantive examination of the application. This allows the applicant to consider the strength of the application and thus abandon it or pursue for further examination.
The publication of application in the Official Bulletin of Industrial Property (BOPI) for French patents or on the EPO's website for European patents occurs 18 months after the filing date.
As for the French procedure, within a period of three months from publication, the applicant may receive observations from third parties to which they must reply. At the end of this period, the INPI establishes a final report and, provided that the registration fees are paid, the patent is generally granted within six months.
As for the EPO, within six months from the publication, the applicant can decide to abandon or pursue with an examination on the merits by the EPO. During this period prior to the grant, the EPO may require the applicant to provide additional information or to respond to some of its observations.
The grant procedure for a French utility certificate is essentially the same as the above-mentioned patent procedure, with the exception that it does not involve any prior art or substantive validity examination by the INPI. Publication of the application occurs 18 months after the filing date or priority date, if any.
There is no grant procedure for trade secrets, as protection is automatically conferred to the person lawfully in control of confidential information for which reasonable steps have been implemented to preserve its secrecy.
1.3 Timeline for Grant Procedure for Intellectual Property Rights
The grant procedure for French and European patents can last several years and will depend on the complexity of the invention and the technical field concerned.
On average, it takes from two-and-a-half to four years for the INPI and four years for the EPO, to grant the patent after the filing date.
Representation by a qualified attorney is not mandatory before the INPI, but is recommended. Similarly, applicants can file European patent applications themselves, unless their residence or place of business is located outside an EPC contracting state.
Obtaining a patent entails costs for the drafting and the examination process handled by the patent attorney, official taxes and the annual fees.
Official taxes are payable to the INPI: EUR26 for the filing of the application, EUR520 for the search report and EUR90 for the granting of the patent. Fee reductions may apply for individuals, education or research non-profit organisations and small companies. Patent attorneys' fees range between EUR3,000–5,000, but ultimately depend on the complexity of the invention and concerned technical field.
As for European patents, the total procedure costs approximatively EUR6,100 (or EUR5,875 for online applications).
The grant of a utility certificate usually takes two years after the filing. The above patent fees equally apply to utility certificates, with the exception of the search report fee.
1.4 Term of Each Intellectual Property Right
Protection for both French and European patents lasts for a period of 20 years from the application date, provided annual fees are duly paid.
Since 23 May 2020, utility certificates are granted for a period of ten years from the application date.
Trade secrets are protected indefinitely, until they are disclosed to the public.
1.5 Rights and Obligations of Owners of Intellectual Property Rights
The patentee has the exclusive right to exploit the patented invention during a 20-year term.
In particular, the patentee has the exclusive right to use the invention to manufacture and put on the market the patented products or those obtained by the patented process. The patentee is also entitled to assign or license their rights and decide who can use, make, distribute or sell the patented invention. Unauthorised use of the invention qualifies as an infringement for which the patentee may request an injunction and obtain damages.
In France, the patentee must exploit the invention, failing which any third party can request the grant of a compulsory licence before the Paris Court of First Instance (Article L. 613-11 IPC). A patent is deemed unexploited if, in the absence of any lawful excuse, at the end of a three-year period after the grant, or four years from the application date, the patentee:
- has not exploited the patented invention or made effective and serious preparatory measures to do so;
- has not marketed the patented products in sufficient quantity to satisfy the French market's needs; or
- has abandoned the exploitation of the patent for more than three years.
Lastly, an annual fee shall be paid to maintain the exclusive rights in force.
1.6 Further Protection for Technical Intellectual Property Rights after Lapse of Maximum Term
In principle, the patent protection cannot be extended beyond the 20-year period from the application date (Article L. 611-2 IPC). However, the following patents are eligible for a Supplementary Protection Certificate (SPC):
- a medicinal product;
- a process for obtaining a medicinal product;
- a product necessary for the manufacture of a medicinal product; or
- a process for the manufacture of a medicinal product.
In essence, SPCs aim at extending the period of protection by taking into consideration the time required to obtain a marketing authorisation (MA). SPCs must be filed within six months after the grant of the first MA, or alternatively, within six months of the grant of the patent if the MA is granted before the patent.
SPCs take effect on the expiry of the patent for a seven-year period or alternatively, 17 years from the grant of the MA (Article L. 611-2 IPC).
The EU regulation 2019/933 on Supplementary Protection Certificates, which entered into force on 1 July 2019, has created waivers to the protection conferred by an SPC to ensure competitiveness between manufacturers of generic medicines established within, and those outside, the EU. Importantly, the SPC no longer offers protection against certain acts, which would have otherwise required the consent of the certificate owner. As a result, the manufacture of a product or a medicinal product containing the concerned product, for the purposes of exporting to third countries, or any related act strictly necessary for the manufacture or export of such a product is permitted.
Furthermore, this EU regulation allows MA holders to conduct all preparatory acts for the marketing of the generic in an EU member state six months before the expiry of the SPC.
1.7 Third-Party Rights to Participate in Intellectual Property Grant Proceedings
According to Article L. 612-13 of the IPC, any third party may submit written observations to the INPI related to the novelty or inventive step of an invention. Such observations can be submitted up to three months after the publication of the search report (Article R. 612-63 IPC). As for utility certificates, third parties can submit observations until the patent grant (Article R. 616-1 IPC).
If the applicants choose to reply to the observations, they must do so within a one-time renewable period of three months (Article R. 612-64 IPC).
After the publication of a European patent application, third parties may also file observations concerning the patentability of the invention specifying the grounds on which they are based.
1.8 Remedies against Refusal to Grant Intellectual Property Right
The refusal of the INPI to grant a patent or utility certificate application is notified to the applicant. The first remedy is to file with the INPI a request for a review of the decision (recours gracieux). Such a request is admissible only if the decision is deemed to be unlawful, no ground of expediency is accepted. Thereafter, the INPI can withdraw its decision within four months after the date of the decision.
Alternatively, an applicant can appeal INPI's decisions before the Paris Court of Appeal within one month from the notification of the decision. This delay is extended by one month for residents of French overseas territories and two months for foreigners (Articles R. 411-21 and R. 411-43 IPC). The decision handed down by the Court of Appeal may also be appealed before the Supreme Court (Cour de cassation), either by the applicant or the INPI.
Where a European patent is refused, the applicant can appeal to the EPO's Boards of Appeal within two months of the notification of the decision. The applicant may further lodge an appeal before the Enlarged Board of Appeal against an unfavourable decision.
1.9 Consequences of Failure to Pay Annual Fees
Failure to pay annual fees of a French patent by the due date can lead to the lapse of the exclusive rights. The payment is due on the last day of the month of the application anniversary date (Article R. 613-46 IPC). According to Article L. 612-19 of the IPC, failure to do so can be remedied, within a grace period of six months, subject to the payment of the fees plus a penalty amounting to 50% of the belated fees.
1.10 Post-grant Proceedings Available to Owners of Intellectual Property Rights
French law gives any patentee the right to abandon or amend ex parte one or several patent claims to reduce the scope of protection of the invention (Article L. 613-24 IPC), in particular when challenged by third parties. Under Article R. 613-45 of the IPC, the request to abandon or amend a patent must be submitted to the INPI by the patentee or its agent in writing. In cases of co-ownership, such waiver or limitation must be requested by all co-owners. The request must include the full text of the amended claims and, where applicable, be accompanied by the amended descriptions and drawings. In general, the INPI issues its decision within 12 months from the date of reception of the request (Article R. 613-45-1 IPC).
If filed after the introduction of an opposition, a request to amend is deemed inadmissible as long as the decision on the opposition is subject to appeal, unless it is ordered by a court decision ruling on the invalidity of the patent. Similarly, if an amendment request is pending on the date an opposition is filed, the request will be dismissed, unless it was ordered by a court decision ruling on the invalidity of the patent.
In the context of opposition proceedings, the patentee is entitled to amend the claims, provided that such amendments:
- correspond to one of the grounds of opposition raised by the opponent;
- do not extend the subject matter of the patent beyond the content of the application as filed or extend the protection conferred by the patent; and
- comply with the patentability requirements under the IPC (Article L. 613-23-3 IPC).
Subject to the same aforementioned restrictions, the patentee can amend the description and drawings.
See 4.3 Amendments in Patent Revocation/Cancellation Proceedings with respect to amendments in inter partes revocation/cancellation proceedings.
In any event, the subject matter of the patent cannot be extended beyond the content of the application through such amendments (Article L. 613-25 d) IPC).
2. Initiating a Patent Infringement Lawsuit
2.1 Actions Available against Infringement for Owners of Technical Property Rights
In France, patent infringement is a tort under civil law and the patentee can either initiate civil or criminal proceedings (Articles L. 615-1 and L. 615-14 IPC).
A civil procedure on the merits can be initiated either through regular or accelerated proceedings (approximately five to six months). For the latter, the claimant must obtain, in an ex parte procedure, the authorisation to summon the defendant on a fixed day under special emergency rules.
Article L. 615-3 of the IPC further allows preliminary measures to prevent imminent infringement or stop infringement against the alleged infringer to be requested (see 2.7 Interim Injunctions for Intellectual Property Matters). Several preliminary measures are available for claimants, including:
- preliminary injunctions to stop the alleged infringing acts, eventually under a penalty;
- the seizure of the goods or their withdrawal from distribution; and
- a financial provision to the benefit of the claimant, if the existence of the damage is not seriously questionable.
Summary proceedings generally last between three and five months in first instance, and six months in appeal.
Criminal proceedings are rarely initiated for several reasons, including:
- the requirement to prove the infringer's bad faith;
- the unavailability of injunctions;
- the absence of specialised intellectual property judges; and
- the low cap of recoverable damages.
In practice, criminal proceedings are more popular in cases concerning pirated goods or where the claimant seeks to establish the criminal liability of a corporate director.
Border customs measures are equally available under Regulation (EC) 1383/2003 as well as under Article L. 614-32 of the IPC. Such measures are useful to detect the entry into French territory of infringing goods and allow the patentee to gather infringement evidence before the release by the customs of the detained goods or the initiation of a court action.
2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Rights
The Law PACTE has created an opposition procedure before the INPI against patents registered from 1 April 2020 (Articles L. 613-23 et seq and Articles R. 613-44 et seq IPC). Oppositions can be filed :
- within nine months following publication of the grant of the patent;
- by any third party; and
- if the subject matter of the patent is not patentable, if the patent does not describe sufficiently the invention for a person skilled in the art, or if the subject matter of the patent extends beyond the content of the application.
If the opposition is upheld, the patent can be either revoked in whole or in part, or be maintained in an amended version taking into account the modifications made by the owner in the course of the proceedings (Article L. 613-23-4 IPC). The INPI's opposition decisions, which are issued approximately 17 months from the filing of the opposition, can be appealed before the Paris Court of Appeal.
Pursuant to Article 31 of the French Civil Procedure Code (CPC), a revocation or invalidation action may be initiated, within the legal limitation period, by any third party with a legitimate interest, defined as a direct and personal interest, on the date of the introduction of the proceedings. In the context of pharmaceutical patents, French judges have specified that "the interest in bringing an action for a declaration of invalidity:
- "must be recognised for any person who, in a personal capacity, sees his economic activity in the field of invention actually or potentially but certainly hindered by the claims whose invalidation is sought";
- but also, for "plaintiffs who are not competitors of the patent holder but consumers and patients […] it being specified that such an action is in favour of the public interest" (Paris Court of First Instance, 16 March 2017 and 24 January 2020).
Action for a Compulsory Licence
To apply for a compulsory licence, the applicant must prove (Article L. 613-12 IPC) that:
- they can exploit the invention in a serious and effective manner; and
- they cannot get a licence from the patentee.
Thereafter, the court sets the terms and conditions of the compulsory and non-exclusive licence (Articles L. 613-12 and L. 613-13 IPC).
Declaration of Non-infringement
Pursuant to Article L. 615-9 of the IPC, a declaration of non-infringement can be introduced by any third party providing evidence of serious preparatory acts for industrial exploitation and of having asked the patentee to state whether the patent would be infringed by such exploitation. If the patentee fails to answer within three months, or in the case of a disagreement, the third party can bring an action before the Paris Court of First Instance, requesting that it hold that the exploitation does not fall within the scope of the patent at stake.
2.3 Courts with Jurisdiction for Patent Litigation
At first instance, patent disputes fall within the exclusive jurisdiction of the Paris Court of First Instance (Tribunal Judiciaire de Paris) handled by specialised judges of the third chamber (divided into four sections of three judges). Appeals are examined by the fifth division of the Paris Court of Appeal.
Once the Unified Patent Court (UPC) is operational, it will assume exclusive jurisdiction for disputes concerning unitary and European patents in regard to:
- infringement actions;
- declaration of non-infringement;
- actions for provisional and protective measures and injunctions; and
- actions for revocation and the related counterclaims
As a result, the French courts will have exclusive jurisdiction for French patents and for any other subject matter that is not within the jurisdiction of the UPC. The UPC will allow for a European patentee or a third party to use a single channel to protect or challenge the patent, instead of filing several actions in different European countries. The UPC is set to include a decentralised Court of First Instance comprised of three subdivisions located in three different countries, including France, with each specialising in a designated technical domain, as well as a common Court of Appeal.
German Ratification of the UPCA
On 18 December 2020, the Parliament in Germany, the last European state whose ratification was required, voted and approved the Agreement on the Unified Patent Court (UPCA) and its Protocol on the Provisional Application.
However, on the same day, two constitutional complaints against the UPCA were filed before the Constitutional Court of Germany. As the Constitutional Court has formally prohibited the President from signing the law before ruling on the two complaints, it is likely that implementation of the UPC will once again be delayed.
2.4 Specialised Bodies/Organisations for the Resolution of Patent Disputes
The INPI has no jurisdiction over patent infringement disputes.
A local division of the UPC is expected to be established in Paris.
2.5 Prerequisites to Filing a Patent Lawsuit
The first prerequisite is to gather evidence of the alleged infringement by any means available (see 2.10 Mechanisms to Obtain Evidence and Information for Patent Disputes).
Subsequently, the patentee (or exclusive licensee) usually sends a formal notice notifying the infringer of the infringement and requesting the cessation of these infringing acts.
In addition, pursuant to Articles 54 and 750-1 of the CCP, if the value of the dispute does not exceed EUR5,000 (which is rare in patent matters), the claimant is required to attempt conciliation before filing the action and to justify of such diligence in the writ of summons served, which is usually by the production of the formal notice offering to amicably settle the dispute. However, this formality may be waived in cases of urgency or when an ex parte decision is needed.
Then, if the infringer fails to respond to the formal notice, or if the patentee is not satisfied by the outcome, patent proceedings can be introduced by serving a writ of summons upon the defendant before the Paris Court of First Instance.
2.6 Legal Representation in Intellectual Property Matters
Any attorney-at-law from the Paris Bar can represent the parties in patent litigation in first instance and in appeal. Attorneys from other French Bars may also represent the parties before the courts during oral hearings, but must appoint a member of the Paris Bar to serve as representative during the case management hearing.
For any dispute before the Supreme Court, parties must be represented by specialised attorneys called avocats à la Cour de Cassation et au Conseil d'Etat.
2.7 Interim Injunctions for Intellectual Property Matters
Article L. 615-3 of the IPC allows any person with standing to bring an infringement action the right to request, either ex parte or inter partes, any preliminary relief to prevent imminent infringement or to stop infringement against the alleged infringer or its intermediaries.
Preliminary injunctions are usually granted where the patent is likely to be found valid, the infringement is probable and there is a significant risk of damage for the patentee resulting from the infringement. In any case, preliminary relief measures must strictly comply with the European Directive of 29 April 2004, according to which preliminary measures must remain proportionate to the specific circumstances of the case and the damage allegedly suffered.
For instance, the Paris Court of First Instance found IPCom's requests to prohibit the sale of the alleged infringing products and their withdrawal from distribution channels against the French subsidiaries of Lenovo and Motorola, to be disproportionate, since the patent invoked was to expire in the following weeks and was not personally operated by IPCom (Paris Court of First Instance, 20 January 2020).
On similar grounds, the Paris Court of Appeal recently decided to overturn the preliminary injunction granted to Merck Sharp & Dohme (MSD) prohibiting Mylan from selling an ezetimibe/simvastatin combination (Paris Court of Appeal, 14 February 2020).
Preliminary proceedings may be filed either before or after the action on the merits. In the former scenario, the action on the merits must be brought within 20 business days (or 31 calendar days if longer) starting from the date of the court order. Failing to do so triggers the automatic cancellation of the measures granted.
2.8 Protection for Potential Opponents in Patent Litigation
In France, protective letters against potential ex parte injunctions or a saisie-contrefaçon are not admitted. However, such restriction is balanced by the fact that:
- ex parte preliminary injunctions remain rare; and
- potential opponents may file a motion to challenge the order authorising the saisie-contrefaçon (see 2.10 Mechanisms to Obtain Evidence and Information for Patent Disputes).
2.9 Special Limitation Provisions in Intellectual Property Matters
The limitation period for infringement actions is five years from the day on which the patentee knew or should have known that the act of infringement had occurred.
As for criminal actions, they must be filed within six years of the day on which the offence was committed.
Finally, pursuant to Article L. 615-8-1 of the IPC, no limitation period apply to patent nullity actions, which avoids maintaining invalid patents for the sole reason that the action is time-barred.
2.10 Mechanisms to Obtain Evidence and Information for Patent Disputes
In France, there is no discovery procedure. Therefore, the parties remain free to disclose the evidence of their choice subject to what is set out below.
In practice, infringement seizure is one of the most widely used and efficient probative measures in France. To perform an infringement seizure, the claimant must obtain an order from the Paris Court of First Instance president by way of an ex parte request. If granted, the order must precisely specify the scope of the bailiff's mission. The seizure can only be performed by a bailiff, generally alongside an expert or patent attorney for technical assistance only.
The bailiff may seize samples of infringing goods and any documents needed for the assessment of the infringement and the damage suffered. Seizures are only valid provided the claimant brings proceedings on the merits within 20 working days or 31 calendar days.
The patentee may also gather evidence by means of a bailiff’s report. The bailiff takes note of the offer to sale of the litigious products and the purchase by an independent third party. Case law tends to apply strict rules protecting the interests of the person seized and imposes the independence of the bailiff and the purchaser.
In this respect, the Paris Court of Appeal, in a decision of 28 February 2020, ruled that provided that the bailiff specifies in the report that the third-party purchaser is a trainee from the law firm representing the patentee, the report is valid. However, if the bailiff indicates that the purchaser is merely a witness and obliterates the fact that they are a trainee, the report shall be held as invalid.
Information about Distribution
Furthermore, Article L.615-5-2 of the IPC provides for a right of information allowing the patentee to request any documents and information necessary to determine the origin and the extent of the distribution networks of the alleged infringing products or processes.
Judges are also vested with investigative powers and are entitled to issue injunctions requesting the production of evidence against one party, if necessary, under a penalty payment (Articles 11 and 138 CPC). They may also, at the request of one of the parties, order the production of any document held by a third party provided there is no legitimate impediment.
2.11 Initial Pleading Standards for Patent Disputes
As a preliminary step, the claimant must demonstrate its legitimate interest to sue and confirm the validity of the patent by the production of the payment statement.
The claimant, on whom the burden of proof lies, is required to present, in the writ of summons, detailed legal arguments, facts and evidence.
The courts have the freedom to evaluate the relevance and probative value of the evidence and arguments of the parties to rule on the dispute.
Several pre-trial hearings will be set for the filing of submissions and exhibits in reply to the arguments raised by the other party.
However, if a claimant has opted for expedited proceedings on the merits, all arguments and evidence must be gathered when serving the writ and additional claims or new evidence will not be allowed afterwards.
In any event, once the closing order is issued by the court, the parties cannot further amend their claims or introduce additional arguments or evidence.
Only the facts, legal arguments and evidence disclosed in the written submissions and communicated between parties can be discussed during oral pleadings.
2.12 Representative or Collective Action
Article 826-2 of the CPC provides a list of the specific domains for which a class action is admissible that does not include intellectual property matters.
2.13 Restrictions on Assertion of Intellectual Property Rights
In France, there is no defence for inequitable conduct. Nevertheless, a patentee can be estopped from filing a claim if they had previously brought the same claim and lost. Based on the principle of res judicata, this restriction applies strictly for matters decided between the same parties, for the same claim and the same cause.
Similarly, no acquiescence defence exists under French law (ie, the delay taken by the patentee before the proceedings cannot be used as a defence, except when the statute of limitations period has run out).
In general, French competition law does not prevent the patentee from obtaining compensation by way of damages or injunctions in case of infringement. Nevertheless, patentees are sometimes restricted in their assertion of rights by the courts to prevent anticompetitive behaviours, such as an abuse of a dominant position. Following the Huawei decision of the CJEU (16 July 2015, C-170/13), French courts would consider whether a FRAND licence was offered beforehand, in which case the patentee should be allowed to bring an infringement action and seek an injunction without this being regarded as an abuse of a dominant position. On the contrary, courts may refuse to grant a preliminary injunction due to fear of distorting the pending negotiations.
3. Patent Infringement
3.1 Necessary Parties to an Action for Patent Infringement
An infringement action can be initiated by the patentee, or in case of patent co-ownership, by each co-owner for their own benefit, provided that the others are informed, unless otherwise stated in the co-ownership agreement.
If the patent has been assigned, the assignee can only initiate proceedings if the assignment agreement has been registered at the INPI and published. The assignee cannot claim damages for infringing activities that occurred prior to the assignment publication, unless expressly agreed upon between the parties.
An exclusive licensee may initiate infringement proceedings provided the licensing agreement does not stipulate otherwise, and if, after formal notice, the patentee has failed to institute proceedings. In any case, the patentee has the right to intervene in the proceeding initiated by the exclusive licensee. As for non-exclusive licensees, they are not entitled to take such action, even with the patentee's consent. They can only intervene in the proceeding to obtain compensation for damages they have personally sustained.
However, if the UPC comes into force it would amend the aforementioned provisions as Ordinance No 2018-341 of 9 May 2018 is expected to enter into force at the same time. In that case, the exclusive licensee will be able to initiate proceedings unless otherwise provided for in the licence agreement. Similarly, the non-exclusive licensee shall be able to initiate proceedings if expressly allowed in the licence agreement.
Criminal actions can be brought by the patentee, its exclusive licensee, the prosecutor or the French customs.
3.2 Direct and Indirect Patent Infringement
According to Article L. 613-3 of the IPC, the following acts are deemed to be direct infringement:
- the manufacturing, offering, placing on the market, use, import, export or transhipment of the patented product; and/or
- the stocking of the patented product for the above-mentioned purposes.
In this case, the court may grant the patentee an injunction, monetary damages, destruction of the infringing products, publication of the court decision, etc (see 6.3 Types of Remedies for Technical Intellectual Property Rights).
As per Article L. 613-4 of the IPC, indirect infringement occurs where an unauthorised person delivers or offers to deliver in France the means of implementing an "essential part" of the patented invention; or the invention in itself when the person knows or should know, given the circumstances, that those means are used to implement the protected invention. The prohibition does not apply if such means are common commercial items. Indirect infringers can only be liable for damages if they knew that their activities were infringing.
For this reason, warning letters should be sent to put indirect infringers in full knowledge of the infringement.
Special attention should be paid to the drafting of any letter informing clients of the alleged infringement. It can qualify as disparagement and unfair competition against the infringer insofar as the addressees of the letter cannot verify the merits of the claims and do not have access to the infringer's objections (French Supreme Court, 9 January 2019).
3.3 Process Patent Infringement
Pursuant to Article L. 613-3 c) of the IPC, offering, putting on the market, using, importing, exporting, transhipping or stocking for such purposes, a product obtained directly by a process which is the subject matter of the patent amounts to infringement itself.
In addition, Article L.613-4 of the IPC, prohibits, in the absence of the consent of the patentee, delivery or the offer of delivery, on the French territory, to an unauthorised person to exploit the patented invention, of the means to implement the invention or those relating to an essential element thereof, where the third party knows or where the circumstances make it obvious that such means are suitable and intended for such implementation.
It should be underlined that the placing on the market, offering for sale or importing into France can be held even against a foreign operator.
As a matter of fact, French courts have qualified as an importer "the operator carrying on all or part of his activities in France with the aim of introducing into the French territory products even if they have been manufactured outside France. This operator may be the foreign manufacturer itself if it carries out an activity in France or if there are special links between the foreign manufacturer and the French operator" (Paris First instance Court, 20 April 2017).
The provision of an after-sales service, or the setting up of a selective distribution network are elements that can be taken into account to hold a foreign operator liable in France (Paris First instance Court, 7 September 2017).
3.4 Scope of Protection for an Intellectual Property Right
In principle, the scope of protection is determined solely by the claims, in light of the description and drawings.
Claim construction should be as accurate as possible in regard to the claims, without, however, being too literal, and shall not distort the subject-matter protected by the patent.
French case law has defined a doctrine of equivalents under which an infringer may be held liable for patent infringement even if the infringing product or process does not fall within the literal scope of the claims, but is nevertheless equivalent to the claimed invention. In this context, the infringement is constituted if the essential means of the patent are equivalent, meaning that, despite being different, they perform the same function to reach an identical or similar result, and provided the said function is novel.
When invoked by a party, judges take the prosecution history into account as part of the factual context, both when interpreting the claim and when considering whether there is infringement pursuant to the doctrine of equivalents.
In particular, they pay attention to any narrowing of the claim(s) that has been made to avoid any conflict with relevant prior art and to secure the grant of the patent. In such cases, the extent of protection can be limited to the particular claimed means and the doctrine of equivalents would not apply.
3.5 Defences against Patent Infringement
Invalidity and Procedural Defences
First, the alleged infringer can dispute the claimant's capacity or authority to initiate proceedings, and can assert procedural defences including the lack of claimant's standing to sue, nullity of the writ of summons and/or the running of the statute of limitations. Good faith cannot constitute a valid defence, except for indirect infringers.
Furthermore, defendants can always challenge the validity of the patent on the basis of:
- lack of novelty;
- lack of inventive step;
- lack of industrial application;
- excluded subject matter;
- added matter beyond the content of the application; or
- extension of the scope of the patent claims after limitation or amendment.
Other available defences are set out below.
Under Articles L. 613-5 et seq of the IPC, exclusive patent rights cannot be infringed by:
- private non-commercial use;
- experimental use relating to the subject matter of the patented invention;
- preparation for individual use in a pharmacy;
- acts, studies and tests required for the filing of an application for a marketing authorisation or the grant of an advertising visa (the Bolar exemption);
- acts performed to create, discover or develop new plant varieties;
- objects intended to be launched into outer space introduced into French territory;
- the farmer's privilege, allowing farmers to use the product of their harvest for propagation or multiplication on their own farm; and
- the breeder's privilege, allowing breeders to use the protected livestock for agricultural purposes.
Under French law the Bolar exception applies to any drug and also covers the allocation of medical drugs to patients in the context of a temporary use authorisation (Court of First Instance of Paris, Ono Pharmaceutical Co. Ltd, BMS v MSD France, 15 March 2016).
Personal Prior Possession
Any person who, in good faith on the date of patent filing or priority, was in possession of the patented invention, is entitled to exploit the invention. Recently, the French court welcomed such an exception when Fresenius, the patentee for a drug for the treatment of autoimmune diseases initiated an infringement action against Amgen, a drug manufacturer selling in France (Court of First Instance of Paris, Fresenius Kabi Deutschland GMBH v Amgen, 14 February 2019).
The decision recalls the four requirements to benefit from the exception:
- the technique must be possessed in good faith and be identical to the invention; and
- the prior possession must be established on French territory and prior to the filing date, or the priority date, of the patent application.
However, no proof of exploitation is required.
Exhaustion of Rights
Pursuant to the principle of free movement of merchandise, goods and services within the EU, a patentee cannot prevent the sale, marketing or import or export of a patented product within the EU if it had already been put onto the market in another member state by the patentee or with their consent (Article L. 613-6 IPC).
French courts take into consideration fair, reasonable and non-discriminatory (FRAND) issues related to standard-essential patents (SEPs) before granting injunctions on the basis of such rights.
See also 2.13 Restrictions on Assertion of Intellectual Property Rights.
3.6 Role of Experts in Patent Infringement Actions
French judges may appoint legal experts to assist them on technical issues or on the assessment of damages, either on their own initiative or at the request of the parties.
Legal experts shall issue, within a determined period, a written report which can subsequently be challenged by the parties. Expert reports are not binding on judges.
The parties themselves can also support their case with private experts' opinions.
3.7 Procedure for Construing the Terms of the Patent's Claim
There is no separate procedure for construing a French patent's claims. Issues related to validity, claim construction and infringement are assessed within the same proceedings.
4. Patent Revocation/Cancellation
4.1 Reasons and Remedies for Patent Revocation/Cancellation
Since the Law PACTE, revocation/cancellation actions are no longer subject to a limitation period.
They may be initiated by any third party with a legitimate interest, defined as a direct and personal interest, on the date of the introduction of the proceedings (see 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Rights).
Revocation/cancellation can also be requested by way of counterclaim in the context of an infringement action.
Article L.613-25 of the IPC provides that a French court may revoke/cancel a patent if:
- the subject matter of the patent is not patentable (namely that it lacks novelty, inventive step, is not capable of industrial application and/or is generally excluded from patentable subject matters);
- the patent does not clearly and completely describe the invention for a person skilled in the art;
- the subject matter of the patent extends beyond the content of the filling application; or
- the scope of protection has been extended after limitation or opposition.
4.2 Partial Patent Revocation/Cancellation
A French patent can be revoked/cancelled partially, as a result of an invalidity decision issued by the court (Article L. 613-27 IPC).
4.3 Amendments in Patent Revocation/Cancellation Proceedings
The patentee can amend their patent claims in the context of revocation/cancellation proceedings before the French courts; such an amended patent will be the subject matter of the revocation/cancellation action. It should, however, be noted that a party who, in the course of the same proceedings, makes several limitations to their patent in a dilatory or abusive manner, may be ordered to pay a civil fine up to EUR3,000, without prejudice to any damages that may be requested.
4.4 Patent Revocation/Cancellation and Patent Infringement
There is no bifurcation before French courts, claims related to both validity and infringement are assessed in the same proceedings.
5. Patent Litigation: Trial and Settlement
5.1 Special Procedural Provisions for Intellectual Property Rights
Rules applicable to intellectual property proceedings follow the procedural laws of the CPC. Special procedural provisions, including the IP-specific summary proceedings, proceedings on the merits and infringement seizures, are set out in the IPC and described, notably, in 2.1 Actions Available against Infringement for Owners of Technical Property Rights and 2.10 Mechanisms to Obtain Evidence and Information for Patent Disputes.
In France, the Commercial Code provides a specific protection for trade secrets, which is of interest in patent litigation, both for the claimant and the defendant.
In the context of an infringement seizure, Article R.615-2 of the IPC provides that the judge, either ex officio or at the request of the defendant, may sequester seized documents in order to preserve their confidentiality.
During the course of the proceedings, the judge may also implement procedures to preserve the confidentiality of the evidence exchanged. The judge may examine the document individually, seek the opinion of the parties, and then decide to limit the disclosure of the document by way of a summary or restrict the access to certain persons (so-called Confidentiality clubs).
5.2 Decision-Makers in Patent Litigation Cases
Although patent litigation is handled by specific chambers of the Paris court, with exclusive jurisdiction over patent-related matters (as detailed in 2.3 Courts with Jurisdiction for Patent Litigation), the judges do not have a technical background and no jury system exists. In no event do the parties have influence over the choice of decision-maker for the respective court.
Should the technicality of the issue require it, the court may decide to appoint an expert to clarify specific issues in a report issued before trial (see 3.6 Role of Experts in Patent Infringement Actions).
5.3 Settling Patent Litigation Cases
Settlements in the course of French patent infringement proceedings prior to trial are quite common in practice. The patentee can try to settle the case amicably through a settlement agreement or through other forms of ADR (see 9.1 Intellectual Property Actions Where Alternative Dispute Resolution is Used). As a matter of fact, over the last year in France, approximately 50% of patent infringement cases were settled prior to trial.
It should be noted that, according to Article 127 of the CPC, the judge may recommend, at any time during the proceedings, a conciliation or mediation measure to the parties, especially if they do not justify any steps taken to reach an amicable resolution of the dispute.
5.4 Effect of Other Court Proceedings on Cases
Due to the territorial nature of patent rights, proceedings initiated before the French court can be continued without having to stay the case pending other courts proceedings.
However, the French courts can take into consideration the decisions of other courts, both as regards the validity of the patent and infringement.
In addition, an infringement action based on a French patent must be stayed when the patentee has also applied for a European patent over the same invention. Such a suspension is only lifted after the grant, rejection or withdrawal of the European patent application.
Likewise, if French judges are asked to rule on the infringement of the French part of a European patent, while an opposition before the EPO is pending, the judges are required to stay the infringement action until the outcome of the European opposition proceeding (Article L. 614-15 IPC).
When determining whether to stay the proceedings in other circumstances, judges will focus on ensuring a proper administration of justice, and will take into account:
- the seriousness of the invalidity grounds invoked;
- the stage of the opposition proceedings; and
- the extent of any harmful consequences for the patentee.
6. Patent Litigation Remedies
6.1 Remedies for the Patentee
Should the patentee succeed in his/her infringement action, available remedies would include permanent injunctions, damages, recall and destruction, and publication.
In France, an injunction is usually an automatic consequence of a decision in which the court has admitted infringement, except:
- when the patent has expired at the date of the decision;
- when a SEP/FRAND issue prevents any injunction;
- when a compulsory licence has been granted; or
- when a national defence exploitation is at stake (Article L. 615-10 IPC).
In practice, injunctions are generally subject to penalties (per day or per act of non-compliance or both).
The French judicial system follows the civil law principal status quo ante, according to which the damages suffered must be repaired in full although punitive damages are prohibited. For the assessment of damages on the merits, judges (pursuant to Article L. 615-7 IPC) have to distinctly consider:
- the negative economic consequences suffered by the injured party, including lost profits, and any other losses incurred;
- any unfair profits earned by the infringer, including investment savings regarding the intellectual, material or promotional work; and
- where appropriate, elements other than economic factors, such as the moral prejudice caused to the right-holder by the infringement.
Alternatively, the court may, at the request of the patentee, award a lump sum as damages, which is higher than the royalties the infringer should have paid if they had taken a licence. In such cases, the judge determines the rate, which in practice amounts to the average rate applicable in the field concerned, generally increased by 50%.
It is worth noting a steady increase in the amounts of damages granted by the Paris courts, over the past few years. Most notably, the Paris Judicial Court has granted a provisional amount of EUR28 million for infringement and unfair competition, in its 11 September 2020 Eli Lilly and al v Fresenius Kabi decision.
On 7 January 2021, a provisional sum of EUR4 million was awarded to Eli Lilly by the Paris Judicial Court in compensation for the damage resulting from the infringement of the French part of its European patent .
Recall and Destruction
French law allows judges to order the recall of infringing products from their distribution channels and their destruction. The latter remedy is carried out at the expense of the infringer but enforced at the claimant's own risk.
The court can also order the publication of the decision in full or in part in newspapers or online. If granted, the remedy is carried out at the expense of the infringer. In any event, the claimant may publish the judgment in whole or in part on its own website, without the prior court's authorisation. However, the claimant must act carefully when publishing the judgment in order to avoid any claim for unfair competition by denigration.
Such civil remedies are available regardless of any wilful intent.
In criminal proceedings, wilful infringement is required for a successful outcome, which may lead to criminal sanctions of up to three years of imprisonment and a fine of up to EUR300,000 (Article L. 615-1 IPC). For legal entities, the fine can be equal to up to five times the amount set for individuals (Articles 131–13838 Criminal Code).
6.2 Rights of Prevailing Defendants in Patent Cases
Firstly, in the case of preliminary action, the court can subject the execution of an injunction to a financial provision from the claimant, to ensure compensation to the defendant if the infringement action is subsequently rejected or the measures annulled.
Secondly, prevailing defendants in any type of action can request the recovery of the costs incurred in the proceedings (see 8.3 Responsibility for Paying the Costs of Patent Litigation).
Lastly, winning defendants may also claim compensation for the damages causes by reckless and/or vexatious proceedings by the claimant, in accordance with general civil liability principles.
6.3 Types of Remedies for Technical Intellectual Property Rights
In France, the same remedies – which are listed in 6.1 Remedies for the Patentee – apply to each type of technical IP right, namely: patents, utility certificates and supplementary protection certificates.
6.4 Injunctions Pending Appeal in Patent Cases
Following the reform of civil procedure applying to actions filed as of 1 January 2020 (Decree No 2019-1333 of 11 December 2019), provisional enforcement is now available as of right. Therefore, all decisions issued by the court, including the grant of injunctions, are immediately enforceable (ie, despite a pending appeal).
Provisional enforcement may only be lifted by the Court of Appeal president in very specific situations, notably if it is prohibited by law or likely to result in disproportionate consequences.
7. Appealing Intellectual Property Cases
7.1 Special Provisions for Intellectual Property Proceedings
The right of appeal is granted in all matters against judgments at first instance (Article 543 CPC).
Parties have one month to appeal a first instance decision from the notification date (Articles 528 and 538 CPC). Foreign companies are granted an additional two-month delay (Article 643 CPC). As for Court of Appeal decisions, parties have two months (plus one or two months) to appeal before the Supreme Court (Article 612 CPC).
7.2 Type of Review Available at Appeal of Intellectual Property Cases
Although parties may invoke new arguments and produce new documents or evidence before the Court of Appeal, submitting new claims is prohibited, except in order to have adverse claims dismissed or to respond to questions arising from disclosure of new facts or a third-party intervention (Articles 563 and 564 CPC).
The Court of Appeal reviews the dispute in full (de novo): the judgment of first instance can be challenged on both legal and factual grounds (Article 561 CPC).
As for the Supreme Court, only issues of law can be examined on appeal (Article 604 CPC).
8. Patent Litigation Costs
8.1 Costs before Filing a Patent Lawsuits
Costs arising before filing a lawsuit are essentially those of the attorneys-at-law, patent attorneys, experts and bailiffs, which are needed for collecting relevant information and evidence, assessing the merits of the case and engaging in pre-litigation actions (for instance, issuing warning letters, saisie-contrefaçon) and conducting the proceedings.
8.2 Calculation of Court Fees for Patent Lawsuits
There are no court fees to commence proceedings before French courts. However, the filing of an appeal is subject to the payment of EUR225.
8.3 Responsibility for Paying the Costs of Patent Litigation
Under Article 700 of the CPC, the prevailing party can request that the losing party pay the legal costs incurred by the proceedings. Such awards can be quite substantial and may cover fees relating to attorneys-at-law, patent attorneys, experts and bailiffs. To do so, the winning party will usually produce an exhibit proving the total amount of costs incurred. The ultimate amount granted is at the court's discretion and will usually represent one-third of the actual costs. In any case, there are no separate proceedings relating to costs recovery.
9. Alternative Dispute Resolution in Intellectual Property Matters
9.1 Intellectual Property Actions Where Alternative Dispute Resolution Is Used
Even though arbitration, mediation and conciliation are available, these alternative dispute resolution (ADR) techniques are rarely used.
Typically, the recourse to arbitration must be agreed on a contractual basis, usually by an arbitration clause either in the agreement before any dispute arises or in a separate agreement once the dispute has arisen.
Arbitration is unavailable for matters that are governed by public order.
Contractual disputes – generally about interpretation and enforcement of assignments, licences and manufacturing agreements – as well as ownership-related issues, can be submitted to arbitration. In contrast, issues of a patent's invalidity are part of the exclusive jurisdiction of the Paris Court of First Instance (Article L. 615-17 IPC). Therefore, if an arbitrator holds a patent invalid, such a decision shall have effect only between the parties (Articles 2059 et seq French Civil Code).
In order to try to reach an amicable solution, "mediation" can also be considered. With the agreement of the parties, a mediator is appointed for a period of three months, renewable once, and for a flat-rate fee shared between the parties. The mediator shall consult with the parties and the lawyers on a confidential basis and help them find an amicable solution. The proceedings – stayed during this period – can be resumed if the parties fail to settle the dispute.
Another available solution to attempt to negotiate an amicable settlement is to ask for a conciliation. These are handled, free of charge, by judges themselves and the parties remain free to accept the solution offered by the judges. Usually, the parties accept such solutions as they are representative of what the court could decide if the proceedings were to go on.
10. Assignment and Licensing of Intellectual Property Rights
10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights
According to Articles L. 613-8 and L. 613-9 of the IPC, an assignment of a patent application or patent must be in writing and registered with the INPI in order to be enforceable against third parties. Where a French and European patent cover the same invention, separate assignments are strictly prohibited.
10.2 Procedure for Assigning an Intellectual Property Right
The parties may draft a non-disclosure agreement (NDA) beforehand in order to ensure the confidentiality of the negotiations.
As a principle, general rules of contract law govern patent assignment.
For the assignment to be lawful:
- the assignor must have the right to assign such rights;
- the contract must have a valid object, meaning that the assigned rights are in force;
- the price must be fixed or, at least, determinable; and
- the duration of the contract must be specified, either indefinite or for a specific period only.
The assignment, although effective between the parties upon its signature, must be registered to be enforceable against third parties.
10.3 Requirements for Restrictions to License an Intellectual Property Right
Pursuant to Article L. 613-8 of the IPC, a licence agreement must be in writing to be valid. Aside from this restriction, parties are generally free to determine the licence terms, including the exclusivity and the duration of the licence, the royalty rate and the conditions of exploitation. To be enforceable against third parties, the licence must be registered with the relevant office.
French and European antitrust authorities are rigorous with respect to patent licences or technology transfer agreements, particularly those within the pharmaceutical sector. Therefore, licensing agreements must comply with the European Regulation No 316/2014 of 21 March 2014, framing technology transfer agreements. This regulation provides for exemptions to licence agreements that in principle would distort competition and be prohibited. The regulation provides, firstly, for a list of hardcore restrictions, which contains clauses that if included in a licence, invalidate the whole licence agreement, and secondly, a list of restrictions, which if included in the licence, only invalidate the said clause.
10.4 Procedure for Licensing an Intellectual Property Right
It may also be recommended to draft an NDA and/or a memorandum of understanding before signing a licence agreement.
As for assignment contracts, the licensee must have the right to license such rights, the contract must have a valid object, the price must be fixed or determinable, and the duration of the contract, either indefinite or for a specific period, must be specified.
The licence agreement must precisely define its scope. The identification of the patent, whether the licence is granted exclusively or not (ie, preserving the possibility for the patentee to exploit the invention itself), the duration, the territory at stake and the calculation of the royalties are all essential elements that must be provided in the agreement.