The Supreme Court has upheld a decision granting damages for exceeding a saisie-contrefaçon, and therefore allowing the misappropriation of a competitor's manufacturing secrets.(1)

The French saisie-contrefaçon is an effective tool for patent holders to collect evidence of infringement ex parte. The goal is to describe the infringing process and faciliitate the seizure of the resulting products. It allows a patentee to send a bailiff to a competitor's premises in order to make a description of the relevant products or processes (in writing, by photographing or filming, or in another way) and/or to seize the products. However, this must be balanced against the right of the alleged infringer to avoid abuses and 'fishing expeditions', in which the patent holder takes advantage of the saisie-contrefaçon mechanism to gain access to the competitor's premises and misappropriate its trade secrets.

Vetrotech Saint-Gobain International AG holds a European patent for a "light-transparent heat-protection element" in the field of fire-resistant glass and its manufacturing process. Swiss company Interver Sécurité manufactured and marketed safety glass in France. Vetrotech claimed that this safety glass was obtained by using its patented process and applied for a saisie-contrefaçon from the presiding judge of the Paris Court of First Instance.

The court granted authorisation for a saisie-contrefaçon performed by a bailiff at Interver's premises. Exceeding the court order, the bailiff asked Interver's staff 24 questions generally relating to the process used when manufacturing the products.

Interver counterclaimed for damages for abuse of the saisie-contrefaçon, stating that it had enabled Vetrotech to obtain information about its manufacturing process.

The court ordered Vetrotech to pay €100,000 in damages to Interver because of the abusive saisie-contrefaçon. The Paris Court of Appeal confirmed the decision, stressing that the bailiff may ask only questions that are necessary to describe the process and for the actual seizure of sample products. As a consequence, the parts of the bailiff report regarding the 24 questions were cancelled and could not be used as evidence. IThe court also confirmed that Vetrotech should pay Interver compensatory damages for abuse of the process resulting from the improper use of the saisie-contrefaçon.

Vetrotech further appealed to the Supreme Court, claiming that the bailiff might have committed an abuse, but not Vetrotech. However, the Supreme Court rejected the argument, holding that Vetrotech was liable for "unduly receiving information on the manufacturing processes of a direct competitor thanks to the questions asked by the bailiff during the performance of his mission".

As a consequence, patentees must be careful not to stretch a saisie-contrefaçon in the hope of benefiting from unfairly gained information. On the other hand, alleged infringers might on occasion let the bailiff do as he or she wishes, in the hope that this will exceed the scope of the court order.

For further information on this topic please contact Stanislas Roux-Vaillard at Hogan Lovells International LLP by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (stanislas.roux-vaillard@hoganlovells.com).

Endnotes

(1) Supreme Court, Decision of February 12 2013, 11-26361, Vetrotech Saint Gobain International AG v ISG Interver Special Glass.

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