Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

A patentee may enforce its rights by instituting civil or criminal proceedings, although criminal proceedings are seldom used.

The Paris District Court and the Paris Court of Appeal have exclusive jurisdiction over any litigation relating to patents and related unfair competition matters.

The Court of Cassation is the highest authority, with jurisdiction to decide on matters of law to ensure a uniform body of case law.

What scope is there for forum selection?

There is no scope for forum selection as the Paris District Court has exclusive jurisdiction over patent matters.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

In case an alleged infringer does not manufacture or import the subject matter of the patent, the patentee must send a warning letter alerting the alleged infringer of the infringement and ascertaining its liability. Litigation will usually commence with an infringement seizure, which is provided for by the IP Code. The patentee has the burden of proof of the infringement – which may be provided by any means of civil law – the infringement seizure carried out by a bailiff with the assistance of a patent attorney enforcing an ex parte court order, is the most common way to afford proof of infringement in France. It may also be advisable to order a bailiff to draft a report on available evidence (eg, online evidence). 

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

The Paris District Court takes a proactive approach to case management and it is difficult for a party to delay proceedings without good reason or the other party’s agreement.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A nullity action can be brought before the Paris District Court at any time and by any party. However, the plaintiff must show that he or she has an interest to act, combined with the statute of limitation. The limitation period is five years and starts according to the latest decision:

“The nullity claimant must justify that, at the time the complaint is filed, there is a sufficient interest to free an upcoming exploitation of the patented technology or a similar one, and establish that the patent at stake seriously threatens to impediment its economic activity.”

The day on which a party acquires standing is also the starting point for the limitation period.  According to French Order 2018-341 of 9 May 2018 relating to the European Patent with Unitary Effect and the Unified Patent Court "a patent invalidity action is not statute-barred." However, this new provision is subject to the entry into force of the agreement and has no effect on a limitation period that has already passed. It applies to actions for which, on the date of its entry into force, the limitation period has not yet expired.

Nullity is often raised by an alleged infringer’s counterclaim in infringement suits initiated by patentees.

At trial

What level of expertise can a patent owner expect from the courts?

French judges have a general legal background. However, four Paris District Court chambers and two Paris Court of Appeal chambers specialise in IP matters, which implies that they have good knowledge of all problems that arise from patent cases. In addition, a judge can designate a consultant with a technical background to question the parties.

Are cases decided by one judge, a panel of judges or a jury?

All cases on the merit are decided by a panel of judges. Preliminary injunction cases are decided by one judge.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There are no jury trials.

What role can and do expert witnesses play in proceedings?

Parties may use private experts to provide evidence that supports their technical or financial arguments. The court may – if deemed necessary – appoint experts to draft a report providing an opinion on technical or financial issues, which the parties can challenge during the proceedings. Experts do not testify at trial hearings.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

French courts use the term ‘means’ to determine an infringement by equivalents, which encompasses any technical feature (ie, features of both the process and the product).

Means are characterised by:

  • their form or structure;
  • the function that they fulfil; and
  • the first or immediate result and the technical result that can be achieved (ie, the final result).

The doctrine of equivalents has been created by judicial decisions; there are no statutory provisions.

According to French case law, two means are considered to be equivalent and will infringe the claimed subject matter if – despite their different form or structure – they fulfil the same function in order to provide a result of the same nature or to the same degree. However, this applies only if the function is novel.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

The IP Code provides for interim and permanent injunctions. Interim preliminary injunctions can be obtained in inter partes or ex parte proceedings.

Any party authorised to act in an infringement may obtain interim measures against an alleged infringer or intermediary person (eg, a supplier). Such interim measures are used against the alleged infringer to prevent an imminent infringement or the continuation of infringing acts. The only condition for such measures is that the patentee must afford evidence that it is likely that there has been an infringement or that an infringement is imminent. In determining the likelihood of infringement, courts also tend to take into account the apparent validity of the patent.

An ex parte interim injunction can be ordered if the case’s circumstances prevent inter partes proceedings or if any delay would generate an irreparable prejudice. The Court of Cassation confirmed a decision of the Paris Court of Appeal which annulled an order granting an ex parte injunction on the basis that “the grounds presented for justifying the departure from the principle of inter partes proceedings are unreasonable”.

During proceedings, courts may also issue on the merits an injunction to the alleged infringer to provide information on the origin of the alleged infringing products and the distribution channels.

How are issues around infringement and validity treated in your jurisdiction?

There is no bifurcation, which implies that validity and infringement will be decided by the same court at the same trial.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

French courts are not bound by national prior decisions on the same issues, including decisions of higher courts (unless an appeal decision issued on remand after a first decision of the Court of Cassation is subject to a second decision of the Court of Cassation, which must then be complied with).

However, courts do consider previous French court decisions – particularly Court of Cassation decisions – which has led to harmonised case law and a reasonable level of predictability.

French courts also consider decisions of the European Patent Office Boards of Appeal and other European courts. French court decisions sometimes refer to foreign case law, although they treat these decisions as facts, rather than binding precedents. 

Damages and remedies

Can the successful party obtain costs from the losing party?

Courts may order the payment of attorneys’ fees. These used to be nominal, but in recent years have taken into account litigation costs. Figures in the range of €150,000 to €300,000 are now common. Patentees or defendants must provide their attorney at law and IP attorney bills.

What are the typical remedies granted to a successful plaintiff?

  • Permanent injunctions – if a court finds a patent to be valid and infringed and the rights holder requested an injunction, the court must order this injunction for the duration of the patent. The injunction is usually subject to a penalty for each infringement act.
  • Monetary remedies – the rights holder and its licensees or distributors can obtain financial remedies to compensate the damage that they have suffered from an infringement.
  • Delivery up or destruction of infringing goods – courts can order the delivery up or destruction of infringing goods.
  • Publication of decision – courts can order publication of the decision in designated newspapers or magazines or on the Internet.
  • Recall order – courts can order the recall of the infringing goods from the commerce channels.

How are damages awards calculated? Are punitive damages available?

Monetary remedies or damages are based on the Civil Code, which prescribes that any act that causes damages must be repaired by the party at fault.

According to the IP Code (as amended in 2007), in order to determine the amount of damages the court must consider:

  • the negative economic consequences, including the patentee’s lost profits and other financial losses;
  • the infringer’s profits; and
  • the moral prejudice, if any.

Alternatively, the court may allocate a lump sum to the patentee – at the patentee’s request – which must be higher than the royalties that would have been due if the alleged infringer had requested a licence.

The statute of limitation dates back five years from the date on which litigation is commenced. Thus, damages start to accrue five years before the date on which an infringement suit commences.

In summary, French courts will assess the damage suffered by patentees, licensees and other possibly injured parties as follows:

  • If the patentee or its licensee is exploiting the patent or conducting the patented process in its business it can claim lost profits. These lost profits will be assessed based on the number of lost sales and the profit margin that the patentee or licensee would have made from additional sales.
  • If the patentee or its licensee is not exploiting the patent or it would not have sold more products, it can claim lost royalties. Lost royalties will be based on the infringer’s turnover and the ordinary market royalty rate, which will be increased to take into account the fact that the royalty rate was not negotiated.

French courts can also take into account other sources of damage, such as:

  • the advantage the infringer gained from the infringement (the ‘springboard effect’); and
  • price erosion to compensate for the patentee’s lost profits (when it had had to lower its prices to compete with the infringer).

Punitive damages are not provided for by law. However, in some cases the use of a higher royalty rate and the damages linked to negative economic consequences cumulated with the infringer’s undue profits and moral prejudice may be considered punitive.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

A permanent injunction is compulsory if requested by the patentee.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The average duration of patent infringement proceedings is 18 months for first-instance proceedings before the Paris District Court and appeal proceedings before the Paris Court of Appeal.

For urgent cases, it is possible to request authorisation from the Paris District Court to serve summons for fast-track proceedings, which take between six to eight months on average. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

The cost of patent litigation varies from case to case, depending on:

  • technical difficulty;
  • the interests at stake;
  • arguments and procedural objections raised by the parties; and
  • the number of patents involved.

The cost of patent litigation at first instance is approximately €50,000 to €150,000 depending on the complexity.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Any first-instance decision can be appealed without permission. The appeal will be a de novo case (ie, the party may cite prior art or other facts not cited in the first instance).

Appeals typically take approximately 18 months. A fast-track procedure is also available for appeals.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Alternative dispute resolution is available under French law. The International Chamber of Commerce and the Paris Arbitration Chamber provide such services in France, while the World Intellectual Property Organisation and other foreign organisations do so abroad. The Paris Court of Appeal has ruled that arbitration chambers can rule on the validity of a patent by declaring the patent non-enforceable. However, such a ruling has only an inter partes effect and is not binding on third parties.