The implementation in France of Directive 2004/48/EC on the Enforcement of Intellectual Property Rights has introduced various new provisions into the French patent law.
As will be seen below, the French courts are still coming to grips with the practical effect of these changes to the law.
Evidence gathering: “Saisiecontrefaçon”
There are some key changes relating to the “saisie-contrefaçon”, which is the most powerful way to gather evidence of infringement in France.
Firstly, whereas the former law only provided for the description or the seizure of samples of products allegedly in infringement of a patent, the new law provides for the seizure of all products or processes allegedly in infringement.
It is anticipated that despite the change in the law, it will still be applied restrictively.
Secondly, the new law has now provided for the seizure of materials and equipment used in the production and/or distribution of the alleged infringing products as well as documents relating to such materials and equipment.
Finally, a Decree dated 27 June 2008 provides that following a saisiecontrefaçon, an action on the merits must be started within a period not exceeding 20 working days or 31 calendar days, whichever is the longer as from the date of the “saisie”. Under the former law, the specified period of time was 15 days.
Provisional and precautionary measures
There are six major changes relating to orders for provisional and precautionary measures.
First, preliminary injunctions can be granted on the basis of an ex-parte application and not only an inter-partes application as was case under the old law.
Secondly, urgency is no longer a prerequisite to the grant of a preliminary injunction.
Thirdly, as with application for a saisiecontrefaçon, an action on the merits must now be started within a period not exceeding 20 working days or 31 calendar days from the date of the order granting the preliminary injunction. Under the old law, preliminary injunctions could only be requested after the start of the action on the merits.
Fourthly, preliminary injunctions can now be granted to prevent an “imminent infringement”, not merely to prevent an actual infringement.
Fifthly, the action on the merits no longer needs to “appear serious” – previously this was the standard which had to be met by an applicant. Under the new law however the applicant has to provide “reasonably available proof that make likely the actual infringement of the applicant’s right, or that such infringement is imminent”. Finally, preliminary injunctions can now be made not merely against the infringer of an IP right but also against any intermediary whose services are being used to facilitate the infringement of that IP right.
The new law in practice
On 21 July 2008, before the First Instance Court of Lyon, Bird & Bird Paris obtained for the first time in France a preliminary injunction preventing an imminent act of infringement that it was alleged was likely to be committed by a generic pharmaceutical company. The imminent act of infringement consisted of the upcoming launch of a generic version of a drug onto the French market which it was alleged infringed a patent still in force. In its decision, the First Instance Court of Lyon pointed out the defendant’s arguments relating to the invalidity of the patent in suit were not to be considered as part of the court’s assessment of the “likely of infringement”.
On 20 January 2009 before the First Instance Court of Paris, in a similar case, but involving different parties, the preliminary injunction was refused. In that case, the First Instance Court considered that the fact that the generic pharmaceutical company has raised serious arguments regarding the validity of the patent required an examination of the merits.
Appeals have been lodged against both decisions and are still pending.
Right of information
The French Code of Civil Procedure already provided a “right of information”. However, the new law that literally implements the relevant provision of the Enforcement Directive into the Intellectual Property Code introduced a change that has caused an increase in the number of such claims being made to the Courts.
French case law on when such relief can be granted is confused as a result of contrasting decisions from the first and the second section of the third chamber of the First Instance Court of Paris, both of which have jurisdiction on patent matters.
The second section considers that a Right of Information order can be granted even before a decision on the merits acknowledging infringement (see Order of the President of the First Instance Court of Paris 21 March 2008 rendered in a trade mark matter but also applicable in patent matters), whereas the first section considers that a Right of Information order can only be granted after a decision on the merits acknowledging infringement (see Order of the President of the First Instance Court of Paris 19 November 2008).
In relation to the assessment of the damages, the main change is that the new law provides that profits accrued by the infringer shall be taken into consideration when deciding how much to award to the patent holder. Under the old law, the patent holder could only expect to receive compensation for the prejudice that he actually suffered, that is to say, lost profits or a reasonable royalty.
There is as yet no case law applying this new provision as it is only available for infringing acts happening after the entry into force of the new law.
Until now, the licensee of a patent could not obtain compensation for the prejudice which it had suffered, unless the licence agreement had been recorded in the national patent register. Under the new law, the recording of a licence agreement is no longer a condition for a licensee joining an infringement action initiated by the patentee. Accordingly, a licensee, whose licence agreement has not been registered, can nevertheless voluntarily intervene in an action and if the action is successful, he can then seek compensation from the alleged infringer for the damages suffered by him.
New opportunities for claim limitation
Under the old law, apart from one very uncommon exception, it was not possible to amend the claims of a granted patent. Obviously, under the EPC, amendments to a European patent could be made during the course of opposition proceedings and also since the adoption of EPC 2000, amendments could be requested to be made at any time.
Under the new law, however, a patentee can now file a request for the amendment of the claims of a French national or European patent either on its own or in the course of nullity proceedings. If granted, the amendment takes effect retrospectively.
The intention of the French legislators was to provide patent holders with the opportunity to amend claims and thereby allow them to clarify the scope of protection of patents and as a result, increase the efficiency of the patent system in France.