An extract from The Intellectual Property Review, 9th Edition

Enforcement of rights

i Possible venues for enforcement

Patent enforcement in France is for courts to ascertain. The civil First Instance Court of Paris has exclusive jurisdiction over patent cases, as well as Community trademarks and designs. This allows for some harmonisation of case law at first instance level.

In theory, upon a showing of intent, infringement amounts to an offence, allowing a case to be brought before the criminal courts. The same is true with registered trademarks, registered designs and author rights.

The administrative route before the INPI is open for cancellation actions against French designs or French trademarks regarding statutorily listed grounds. Other grounds of nullity are still the exclusive jurisdiction of judicial courts.

Starting in April 2020, the INPI is also in charge of opposition proceedings by third parties against French patents examined and granted by the INPI.

Patent holders may voluntarily amend the scope of the claims of their title, notably post-grant. The amended patent retroactively becomes the only patent that ever existed. The application for amendment has to be filed with the INPI. The INPI decides on the grant of the amendment within a few months.

When civil proceedings on the merits regarding the validity and possibly infringement of a patent as granted are pending, the initiation of an amendment procedure at the INPI does not automatically trigger a stay of the civil proceedings. The Court of Appeal of Paris has made clear that amendment application before the INPI is available both for national French patents and for European patents designating France.

Actions for nullification of a decision of the INPI remain the exclusive jurisdiction of the Court of Appeal of Paris.

ii Requirements for jurisdiction and venue

For patent matters, exclusive jurisdiction is vested in the First Instance Court of Paris. Civil actions over patents include infringement actions, nullification actions and declaratory suits for non-infringement.

To sue for infringement, a patent holder must notably evidence that it has title, ownership and that the patent is enforceable by payment of maintenance fees. An exclusive licensee may also, upon authorisation by the patent holder, initiate a patent infringement case. A non-exclusive licensee may join the procedure initiated by the patent holder to recover damages for its own loss. To sue for patent nullification a third party must show that it has a personal interest in seeking patent nullification (e.g., being a competitor on the French market needing freedom to operate). To initiate a declaratory suit for non-infringement, a party must show that it is using its invention industrially in the European Union or that it is effectively and seriously preparing to do so.

iii Obtaining relevant evidence of infringement and discovery

Under French civil procedure, the burden of proof regarding the facts on which a claim is based lies on the claimant.

Infringement may be proved by any evidentiary means. This includes bailiff reports, bailiff purchases (i.e., purchases made by an independent party under the scrutiny of a bailiff reporting under oath on the actual sale on the market) and documentary evidence.

There is no equivalent to the US discovery in France, but as regards intellectual property rights and trade secrets, French law provides for a specific means of obtaining evidence, the infringement seizure. The infringement seizure is a highly effective evidence-gathering mechanism whereby a patent holder, suspecting an infringement of its rights, applies ex parte for an order of the presiding judge of the First Instance Court of Paris authorising a bailiff and possibly an independent person knowledgeable in the art, to enter any premises where the evidence of the infringement could be found (notably the premises of a competitor) to seize the allegedly infringing product, or to describe, take pictures or videos and copy any information as listed in the presiding judge's order.

This evidence-gathering procedure is performed under the liability of the patent holder. Consequently any abuse resulting in gaining access to information not directly related to the seizure of sample products or the description of the allegedly infringing product or process will be penalised: evidence gathered beyond the scope of the presiding judge's order will be inadmissible and the patent holder may have to compensate the seized party for any loss resulting from the abuse.

Where the infringement-seizure takes place on the premises of a competitor, the latter will often have any information seized put in sealed envelopes, to protect confidentiality.

In addition or as an alternative to the infringement seizure, it is possible to have the court order that an alleged infringer provide some information on the extent and origin of the infringement. The Court of Cassation has had the opportunity to decide that such right of information may be applied for and ordered before trial, while a case on the merits is pending and before trial regarding infringement.

iv Trial decision-maker

In France, the third chamber of the First Instance Court of Paris specialises in intellectual property and has exclusive jurisdiction for patent cases. The third chamber is divided into three sections of three judges. These judges do not have a technical background. There is no jury system in French courts and fact-finding is for the judges to carry out.

At trial, patent cases will usually be heard by the three judges belonging to the section to which the case was assigned. If necessary, the court may, during the proceedings on the merits, appoint an expert from the court list of experts to clarify specific issues in a report filed before trial. This is not, however, often the case.

v Structure of the trial

Since the procedure in civil cases in France is mainly conducted in writing, judges will read the briefs filed by the parties to understand and decide a case. The trial is an opportunity for lawyers to emphasise and synthesise the key issues of the case. Judges will usually listen to the oral arguments of each party one at a time and ask few or no questions. Judges rely heavily on documentary evidence and information gathered during the saisie-contrefaçon. Witnesses are, in practice, never heard by French courts and party-appointed experts' affidavits are given relative weight and experts are never examined or cross-examined.

French civil procedure does not set specific standards of proof in patent cases. Patents are always presumed valid. In patent nullification cases, the Court of Appeal of Paris has indicated, as regards evidencing insufficient disclosure leading to nullity, that it 'must be established beyond a reasonable doubt and that the doubt should benefit the patent holder'. This should also be applicable to other grounds for judicial nullification of a patent.

vi Infringement

To correctly assess infringement, claims will first be construed. Claim construction is made in light of the description and drawings. Additionally, the Court of Cassation has had the opportunity to decide that even if there exists no 'file-wrapper estoppel' as such in France, limitations made during prosecution of the disputed patent should nevertheless be taken into account to assess the scope of the granted patent.

French law lists acts that when performed without the consent of the patent holder amount to infringement, including manufacturing, importing and selling the patented products or processes. An offer for sale, defined as any presentation of a product or its prototype, which may result in potential or actual clients disregarding the patented invention, is also an act of infringement.

Infringement may be found by literally reading the claims of the patent or by applying the doctrine of equivalents. Indirect infringement also triggers the liability of the person offering essential means for implementing the invention, even where the essential means are consumable supplies.

Claim construction and infringement (and nullity counterclaims) are all dealt with and decided at the same time.

vii Defences

The most common defence to infringement is the invalidity of the intellectual property right at stake, often resulting in a counterclaim for nullification.

In patent cases, nullity is most often sought for lack of inventive step and lack of novelty of the patented subject matter. Lack of novelty requires a single piece of prior art determining form and function of the invention and achieving the same result. A demonstration for lack of inventive step allows for the combination of several relevant pieces of prior art and the general knowledge of the person skilled in the art. However, it should also be demonstrated that the person skilled in the art charged with assessing the inventive step over the prior art had good reason to combine the selected pieces of prior art. In assessing inventive step, the Court of Appeal has followed the exact approach of the EPO, from the selection of the most relevant prior art to the 'could or would' approach. Other grounds for nullity can serve as defences against infringement, notably undue extension of the granted patent as compared to the application as filed or insufficient disclosure of the invention even if French courts have traditionally been flexible in assessing the latter.

Under French law, ownership is not a defence to infringement.

Other common defences are the personal prior use right developed independently earlier than the priority date of the disputed patent and patent rights exhaustion. As regards the latter, it occurs where the patented product has been put on the market with the, possibly implicit, consent of the patent holder.

A defence specific to the pharma industry is the Bolar provision, construed broadly in France, following which acts even outside of France, to gain regulatory approval for any medicinal products, are exempt from patent infringement.

viii Time to first-level decision

It usually takes roughly 24 months to decide a patent infringement and validity case on the merits on first instance.

ix Remedies

Intellectual property right holders may choose to seek a preliminary injunction in an expedited prima facie case before seeking a finding of infringement on the merits.

In patent cases, the requirements for a grant of a preliminary injunction are that the patent holder shows the patent is granted, that it is enforceable at the time the preliminary injunction is sought, that there is a prima facie case of infringement or of clear threat of infringement. The defendant to the injunction may challenge the prima facie nature of the infringement notably by evidencing a prima facie case of nullity of the patent. Preliminary injunctions are usually requested in summary proceedings (inter partes) but may also be sought on ex parte petition. The Court of Appeal of Paris, however, decided that an injunction requested ex parte cannot be ordered unless specific factual circumstances make it reasonable not to hear the defendant in inter partes proceedings. Preliminary injunctions are decided within a few months and even within a few weeks where urgency commands it.

On the merits, intellectual property right holders will mainly seek a permanent injunction and compensatory damages. There are no exemplary or punitive damages in France.

Courts focus on the rightholder's economic loss to assess damages. Damages mainly amount to lost profits, corresponding to a lost royalty or the gross margin of the patent holder on the infringing turnover. Alternatively, account of profits is available and has been awarded by a French court where it allows a greater compensation than lost margin or lost royalty.

When given sufficient supporting evidence regarding costs, courts order that attorneys' fees be fully borne by the defeated party.

Other available measures include the recall from the channels of commerce or the destruction of the infringing products as well as the publishing of the decision in full or in part.

x Appellate review

The Fifth Chamber of the Court of Appeal of Paris has two sections that specialise in patent cases. Each section has three judges. These judges do not have a technical background.

Appellate review in France is de novo on both facts and law. New evidence may consequently be added at the appellate level but not new legal claims. Appeal decisions are usually rendered within 24 months.

xi Alternatives to litigation

Alternative dispute resolution is available to reach an outcome in patent litigations. Ad hoc mediation allows for reaching a settlement. Additionally, French patent law now clearly states that the exclusive jurisdiction of the First Instance Court of Paris 'does not preclude the use of arbitration'. This was in practice already the case as regards patents, but the statutory change clarifies the situation.