13.3 The infringement action
13.3.1 General overview
13.3.1.1 Centralized and unified litigation
Infringement litigation is at once centralized, specialized and unified:
Since 2009,57 it has been centralized for proceedings on the merits in a specialized chamber of the Paris Judicial Court, the only court of first instance in France with jurisdiction over litigation concerning patents (as well as supplementary protection certificates and utility models). It has similarly been centralized for appeal proceedings in a specialized chamber of the Paris Court of Appeal, and centralized again, on subsequent appeal, within a specialized section for industrial property within the Commercial Chamber of the Court of Cassation.
Infringement litigation is unified in that all questions necessary to resolve disputes can be decided in cases brought before those courts. The court hearing patent infringement claims is also competent to rule on challenges to the patent's validity (potentially resulting in partial nullity and limitation of claims). This ensures more consistent interpretation of a patent's scope and a faster means of definitively and comprehensively resolving infringement issues while minimizing uncertainty over subsequent annulment in separate proceedings.
The same courts are also competent for such related matters as unfair competition and other IP rights (copyright, trademarks, designs, plant variety rights). For more information on the jurisdictional system, see Section 13.2.2).
13.3.1.2 Parties to the proceedings
Infringement actions are “reserved”: only patent owners or, under certain conditions, licensees may bring them (Article L. 615-2 of the IPC).
The decision to initiate an infringement action is in principle up to the patentee, but a license contract may also authorize the licensee to do so. Such authorization is automatic in the case of an exclusive license, unless otherwise stipulated, but subject to prior notification to the patentee. It must be expressly provided for in the case of a non-exclusive license.
If the action is initiated by the patentee, any licensees may then intervene voluntarily in the proceedings (without prior authorization) to seek remedy for the prejudice suffered.58 It is not necessary in this regard for the license to be recorded in the register. Conversely, once an action is initiated by a licensee, the patentee may also intervene.
The patentee and licensees may also act together, from the outset, by issuing a joint summons if they choose to do so.59
According to Articles 31 and 32 of the CCP, each party must demonstrate their personal interest in acting. Such actions cannot be conducted by “straw men”, or on behalf of unidentified third parties (“no one may plead by proxy”).
The defendants in these cases are the parties targeted in the document initiating the proceedings. Other parties may join the proceedings voluntarily or be summoned. They may include licensees, other parties liable for the infringement, and creditors' representatives in the event of insolvency proceedings, insurers, and others.
In practice, company directors are likely to be involved in such proceedings only in rare cases, notably when their personal liability is engaged owing to fault separable from their duties.
13.3.1.3 Statute of limitations
Patent infringement actions benefit from a statute of limitations regime permitting legal action long after infringement begins, if it continues over time.
Pursuant to a reform that entered into force on May 22, 2019,60 an infringement action is barred only five years after the owner became aware of, or should have become aware of, the latest fact enabling the owner to exercise that right (Article L. 615-8 of the IPC).
This provision implies that even for acts begun (and known about) many years in the past, infringement actions remain possible where such acts have occurred within the last five years. That makes it possible to prevent continued infringement, although underway for many years before, and to obtain damages for the prejudice suffered during the last five years.61 That represents a more favorable regime for actions against patent infringement than that available under ordinary law (or earlier applicable law), under which the starting point for reckoning the statute of limitations is (or was, under earlier applicable law) the date of first knowledge (or presumed knowledge) of the infringement, “regardless of whether it continued over time.”62 Under currently applicable law, in other words, where infringement consists of a series of distinct acts, the statute of limitations is reckoned from the day the patent owner became (or should have become) aware of each successive act.63
The burden of proof on this point lies with the party relying on it.
Strictly speaking, the pre-trial judge alone is competent to rule on the issue of the statute of limitations prior to proceedings on the merits. However, the pre-trial judge may join it in the latter proceedings (cf. Section 13.3.6.2.1).
13.3.2 Infringement: acts and defenses
Infringement involves reproduction of the protected subject matter and the commission of at least one of the acts of infringement not covered by an exception.
13.3.2.1 Reproduction of the claims
The “material” dimensions of patent infringement are assessed in accordance with Articles L. 613-2 et seq. of the IPC, the first paragraph of which provides that “the extent of the protection conferred by the patent shall be determined by its claims; nevertheless, the patent’s description and drawings shall be used to interpret the claims.”
Such assessments involve examining whether the features of each claim have been reproduced in the allegedly infringing product or process – rather than comparing that product with any other product legally marketed under the patent.
13.3.2.1.1 Literal reproduction of claims
Infringement is assessed based on similarities (notwithstanding the presence of additional features not mentioned in a patent’s claims). Infringement is said to be literal when all of a claim’s features are found in the infringing product or process.
It is also considered literal when an invention’s “essential means” (technical features necessary for it to serve its purpose) are found in the infringing product.64
An infringement is thus considered literal, even where a feature of the infringing product differs in a secondary way from the invention’s claims, if it is obvious for a person skilled in the art, upon considering the description and drawings, that the patent claims have a broader scope that is also present in the infringing product.65
13.3.2.1.2 Infringement through equivalents
Even where an allegedly infringing product or process does not literally reproduce a patent’s claim, it may still fall within the scope of patent protection if it applies equivalent means.
This consideration of equivalents is provided for in the Munich Convention on the European Patent (Article 2 of the Protocol on the Interpretation of Article 69 of the Convention) and is governed in France by case law.
That case law identifies “infringement through equivalent means” as occurring where the means of a product or process, though structurally distinct from the patented means, performs the same function – provided that function was not previously known – to achieve an identical result. “Function” is understood as the action of producing an immediate technical effect for the purpose that the means is intended to serve.66
This “immediate technical effect” is not to be confused with the technical result produced by the invention: infringement through equivalents does not refer to alternative means that produce the same technical result, but rather alternative means that contribute to that technical result through the same function – that is, the same immediate technical effect – within the application given to it in the patent.
The means protected by the doctrine of equivalents may consist of a combination of means, provided such combination itself produces a new function.67
For example, it has been held68 that in a claim protecting the use of a specific salt having the active ingredient pemetrexed in the manufacture of a medication, combined with vitamin B12 for the purpose of reducing the toxicity of that active ingredient, the function was not the reduction of toxicity (that being the technical result of the claim), but the physiological process initiated by combining vitamin B12 with pemetrexed, contributing ultimately to lowering the latter’s toxicity. Accordingly, the combination of vitamin B12 with another salt having the same active ingredient and the same therapeutic effect performs the same function (has the same physiological effect) contributing to the same technical result. As this function was not already known, this alternative combination constitutes infringement by equivalents even though the claim does not literally cover the use of that other salt. Conversely, the combination of a pemetrexed salt with another element having a different effect in the body from that produced by the combination with vitamin B12 would not constitute infringement by equivalents, even if that different function ultimately produced the same technical result of reducing the toxicity of pemetrexed.
In other words, to be illicit, the allegedly infringing means must contribute to the technical result in a way that is substantially identical to that of the patented means, which aligns with the criteria adopted in other countries applying the Munich Convention, consistent with the objective of convergence of interpretation, as referenced by the Court of Cassation.69
Naturally, application of the equivalents doctrine must not have the indirect effect of protecting a prior state of the art: for this reason, the protected function must be new. More generally, the scope given to the patent through equivalents must be consistent with the scope that allowed it to be judged new and inventive.
13.3.2.2 Acts of infringement
According to Article L. 615-1(1)-(2) of the IPC, “Any infringement of the rights of the patent owner, as defined in Articles L. 613-3 to L. 613-6, constitutes an infringement. Infringement shall engage the civil liability of its author.”
Once infringement is established, the infringer’s good faith becomes irrelevant70 and cannot be taken into account by the judge in assessing damages – in contrast to the distinctions found in Article 13(2) of Directive 2004/48/EC and in Article 68(4) of the UPCA.
However, Article L. 615-1(3) of the IPC specifies that:
[...] offering, placing on the market or using an infringing product, or possessing it with a view to using or placing it on the market, where such acts are committed by a person other than the manufacturer of the infringing product, shall only engage the liability of that person if the acts are committed with full knowledge of the facts.
The law distinguishes between acts of direct infringement and acts of infringement by supply of means.
13.3.2.2.1 Direct infringement
Direct infringement is the violation of a patentee's rights through the unauthorized reproduction of the essential features of the patented invention. The acts likely to be characterized as direct infringement are listed in Article L. 613-3 of the IPC, which provides:
The following shall be prohibited absent the consent of the patent owner:
- (a) manufacturing, offering, placing on the market, using, importing, exporting or transshipping a product covered by the patent, or possessing such a product for the aforementioned purposes;
- (b) using a process covered by the patent or – when a third party knows, or the circumstances make it obvious, that use of the process is prohibited without the patent owner's consent – offering the use of such a process on French territory; and
- (c) offering, placing on the market, using, importing, exporting or transshipping a product obtained directly by a process covered by the patent, or possessing such a product for the aforementioned purposes.
13.3.2.2.1.1 Product claim
With regard to product claims, Article L. 613-3(a) of the IPC provides that manufacturing, offering, placing on the market, using, importing, exporting or transshipping a product covered by a patent, or possessing such a product for the aforementioned purposes, constitute acts of infringement.
Manufacturing is understood as the physical production of the patented product (regardless of the manufacturing process used).
Importing, within the meaning of French patent law, consists of bringing goods into France from abroad. The importer is the person or economic operator responsible for the introduction into French territory of products manufactured abroad. The importation of an infringing product is prohibited, whether it originates from a member country of the European Union (EU) (if the patentee's rights have not been exhausted) or from another third country.
Offering refers to any physical operation tending to bring an infringing product into contact with a clientele or to prepare the clientele for the upcoming marketing of said product. For example, the display of a product at a trade fair intended for potential buyers constitutes a prohibited offer, as such a presentation – even without indicating a price – is likely to divert the patentee's clientele.71
Placing on the market refers to making the product available in any way to the benefit of unauthorized third parties.
Using refers to employment of the product, allowing its technical or economic benefits to be derived.
Exporting to a foreign country refers to an act of removing the product from French territory; it constitutes an autonomous act of infringement for which it is not necessary to demonstrate a purpose of offering, placing on the market or using abroad.
Transshipping refers to the physical act of transferring a patented product from one mode of transport to another.72
Possessing constitutes infringement only when intended for the purposes of using, placing on the market or offering the product.
These acts constitute infringement if they are committed on French territory and do not fall under a legal exception.73
Unlike manufacturing, importing, exporting and transshipping, which always give rise to liability, offering, placing on the market or using an infringing product, or possessing such a product with a view to using or placing it on the market, give rise to liability only where the person concerned acted with full knowledge of the facts – that is, knowing the potentially infringing nature of the act performed. Knowledge of the facts classically presupposes not only knowledge of the patent but also of the fact that the allegedly infringing product reproduces the patent. The conventional response is therefore to send a letter of formal notice before initiating an action against parties performing those acts. It has been held, however, that professionals in the field may be presumed to act with full knowledge of the facts.74
13.3.2.2.1.2 Process claim
13.3.2.2.1.2.1 Using a process or offering it for use
Article L. 613-3(b) of the IPC prohibits:
The use of a process consists of implementing its means following steps indicated in the patent claims to obtain the result for which the process has been patented, good faith being irrelevant in this case.
The burden of proof that a product was obtained by means of the patented process normally lies with the patentee.
To remedy the fact that proving the use of a process can be difficult, Article L. 615-5-1 of the IPC, which transposes Article 34 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), allows for a reversal of the burden of proof, enabling the court to order proof from the defendant that a process different from the patented process has been used. Failing such proof, the patented process is presumed to have been used in two cases:
when the product obtained by the patented process is new;
when there is a high probability that the identical product was obtained by use of the patented process and the patent owner has been unable, despite reasonable efforts, to determine the process actually used
The offer of a process for use is infringing only when it is both received on French territory and relates to a use of the process in France. Proof of an intentional element must be provided here: the offer constitutes an infringement only if the person making it knows – or if the circumstances make it obvious that they could not have been unaware – that use of the process is prohibited on French territory.
13.3.2.2.1.2.2 The product obtained directly by the patented process
The protection provided by process patents extends to products obtained directly through implementation of the protected processes.75 Offering, placing on the market, using, importing, exporting or transshipping such products, or possessing them for such purposes, are therefore also prohibited under Article L. 613-3(c) of the IPC. The prohibited acts are thus the same as those referred to in Article L. 613-3(a) for product claims – except, of course, for manufacturing, which is prohibited as the use of a patented process under Article L. 613-3(b).
“Products directly obtained” means those resulting immediately from, remaining closely associated with, and owing their essential characteristics to implementation of the patented process.76
In the case of patented processes for the production of biological material, Article L. 613-2-3 of the IPC extends protection not only to biological material obtained directly from a process, but also that obtained through reproduction or multiplication of such material and endowed with the same properties.
13.3.2.2.2 Infringement by supply of means
Patent infringement by supply of means is defined in Article L. 613-4 of the IPC, addressing scenarios where a person does not directly engage in infringement but provides unauthorized third parties with the means to do so.
Delivering or offering to deliver means intended for implementing a patented invention in France constitutes infringement by supply of means. For an activity to be characterized as such, four cumulative conditions must be met:
there must be a delivery or offer of delivery on French territory;
the means provided must relate to an essential element of the invention, meaning a constituent element of the invention that contributes to its result;77
implementation of the invention must be intended to take place on French territory;
the third-party supplier must know, or it must be obvious to that supplier, that the means are suitable and intended for such implementation.
Infringement by supply of means is therefore subject to a double condition of territoriality:
the delivery or offer of delivery must be made on French territory;78
the means delivered, or offered to be delivered, must be intended for implementation of the invention on French territory.79
Infringement by supply of means also involves an intentional element: the third party must know – or circumstances must make it obvious – that the means provided are suitable and intended for implementation of the invention.
In order not to criminalize the sale of items of common necessity, which may serve a multitude of uses, Article L. 613-4(2) of the IPC provides that supplying such staple commercial products as electricity, standard screws or various chemicals does not constitute infringement by supply of means – unless the supplier induces the person supplied to commit prohibited acts, indicating the supplier's awareness of the use intended for such supplies (namely, infringement).80 Such inducement may be overt or discreet, continuous or sporadic – or isolated – but it must be targeted.81
13.3.2.3 Actors involved in infringement
According to Article L. 615-1 of the IPC, any violation of a patent owner's rights constitutes infringement and engages the liability of the actor that committed it.
Each such actor is liable under a regime distinct and autonomous from ordinary law.
A question arising in this regard relates to the identity of importers. Those importing patent-infringing goods, even if unaware of the patent's existence, may be held liable for infringement.82
Such importers may include foreign manufacturers of the products concerned, but only those maintaining "specific links" with France.83 The Paris Judicial Court, for example, recently dismissed a patent infringement action after refusing to characterize the defendants as importers, because the patentees had failed to establish that they had any activity, subsidiary or establishment on French territory.84
In another case, the Paris Court of Appeal found a person who had ordered an infringing product to be a co-actor in its manufacture, having provided detailed specifications and precise instructions to the manufacturer.85
The supply of prototypes, plans and detailed descriptions, and the grant of technology licenses, may also constitute participation in acts of infringement if products manufactured and marketed according to such plans are infringing.86
13.3.2.4 Liability of intermediaries
According to Article L. 615-3 of the IPC, any person with standing to bring a patent infringement action may apply in summary proceedings for court-ordered measures against intermediaries whose services are used by an alleged infringer, to prevent or stop imminent or ongoing activity believed to be infringing, subject to periodic penalty payments if necessary.
That provision transposes Directive 2004/48/EC into domestic law. Article 9 of that Directive provides that an interlocutory injunction may be issued, under the same conditions as those applying to an alleged infringer, against an intermediary whose services are being used by a third party to infringe an IP right.
In a judgment of July 7, 2016, the Court of Justice of the European Union (CJEU) interpreted the concepts of “intermediaries” and the “injunctions” that may be issued against them.87 It ruled that Article 11, third sentence, of Directive 2004/48/EC must be interpreted as meaning that the concept of “intermediaries whose services are used by a third party to infringe an intellectual property right”, within the meaning of that provision, includes the lessee of market halls who sublets points of sale to merchants, some of whom use their space to sell infringing trademarked goods, and that the conditions to which the injunction is subject are identical to those relating to injunctions that may be addressed to intermediaries in an online marketplace, as set out in the judgment of July 12, 2011, L’Oréal v. eBay.88
The concept of intermediary is broad and in practice relates to all who participate in infringement without being characterized as infringers, as they do not engage in any of the acts listed in Articles L. 615-1 and L. 613-4 of the IPC.
Only an injunction may be issued against such “intermediaries”, whose liability may be sought not for infringement but only under the conditions of ordinary law (Articles 1240 and 1241 of the Civil Code if the acts are committed in France).
These provisions of Article L. 615-3 of the IPC are used relatively little by practitioners in patent matters, and, to date, more in matters of literary and artistic property or trademarks (notably with respect to internet intermediaries or lessors of premises commonly leased to infringers89).
13.3.2.5 Grounds of defense and exceptions
The protection conferred by a patent, as just defined, is subject to limits and exceptions.
Defendants in infringement proceedings, apart from contesting allegations that they have reproduced patent claims, as discussed previously, also have specific grounds of defense at their disposal.
The most common defense is to challenge the patent’s validity, but other defenses are also employed, as discussed below.
13.3.2.5.1 Patent annulment by a counterclaim or by way of defense
An action for patent annulment may be brought before a civil judge by way of a principal claim, a counterclaim or a plea in defense.
As a principal claim, an action for patent annulment may be brought by any third party with an interest in bringing it; the decision then carries erga omnes effect from the time it is pronounced (the conditions are the same; see Section 13.4.2).
A counterclaim for patent annulment constitutes an incidental claim, by which the defendant broadens the scope of the proceedings, seeking not only dismissal of the infringement action but also retroactive annulment of the patent. The decision in this case also carries immediate erga omnes effect.
As a plea in defense, patent annulment is sought solely to defeat the opposing claim on the merits.
These methods differ essentially in the effects they produce: the action for annulment (as a principal claim) and the counterclaim for annulment (as an incidental claim) both carry erga omnes effect. Patent nullity raised as a plea in defense has effect inter partes only.
The plea-in-defense method, moreover, may enable a French defendant to defeat an infringement action based on a non-European patent, but the French judge does not have jurisdiction to annul that patent, or any other foreign title.
An advantage of the plea-in-defense approach has been its ability to bypass statute-of-limitations constraints formerly applicable to patent annulment actions. Prior to the PACTE Act, principal claims or counterclaims for the annulment of industrial property titles, unlike pleas in defense, were subject to a five-year statute of limitations, running from the time plaintiffs knew or should have known the facts enabling them to bring such actions. Thus, there were cases where the validity of a patent could be challenged only by way of a plea in defense.
With the PACTE Act now in force, that is no longer the case. None of the approaches to patent annulment is now constrained by a statute of limitations.
On the question of standing, Article L. 615-2(7) of the IPC provides that the validity of a patent “may not be challenged during an infringement action initiated by a licensee if the patent owner is not a party to the proceedings.”
To date, case law has not ruled on the admissibility of a nullity plea in proceedings to which the patentee is not a party.
The retroactive annulment of a patent does not in principle entitle the licensee to the restitution of royalties paid prior to the annulment decision, these having potentially found compensation in prerogatives the licensee may have enjoyed with respect to third parties.90
Nullity actions are discussed in further detail in Section 13.4.2.
13.3.2.5.2 Prior personal possession
Prior personal possession can be invoked as a defense on the merits based on the right of persons having had possession of an invention to continue exploiting it despite a patent covering that same invention being subsequently filed by a third party.
The rationale for this regime is to protect the legitimate interests of prior innovators who have chosen to protect their inventions through secrecy, but then find themselves faced with patents filed subsequently for the same inventions developed independently by third parties. It was enshrined in law in 1968 but confirms long-standing and consistent case law dating back to the 19th century.
With a view to ensuring such protection, Article L. 613-7(1) of the IPC provides that persons “who, in good faith, at the filing or priority date of a patent, were in the territory where this book is applicable and in possession of an invention covered by that patent, have the personal right to exploit that invention, the existence of said patent notwithstanding.” This represents an exception to the patentee’s monopoly, allowing a third party to continue exploiting the invention.
Prior personal possession (prior use right) should not be confused with the concept of prior public use, which refers to an invention having been made accessible to the public, by its inventor or by a third party, before the filing or priority date of a patent; such accessibility may result from marketing, an exhibition, a publication or any act that places the invention at the disposal of the public without sufficient protection of confidentiality. Prior public use can thus be invoked to contest the novelty or inventive step of an invention and result in patent annulment (or rejection of a patent application). It may notably result from an act by the patent owner, for example, exhibiting or marketing a prototype without confidentiality precautions.
A recent decision by the Paris Judicial Court recalled the four conditions required under Article L. 613-7 of the IPC for a right of prior personal possession to be upheld:
the possession must have been prior to the filing or priority date of the patent application;
the technology possessed must be identical to that of the patented invention;
the technology must have been possessed on French territory;
the claim of such possession must be made in good faith.
The first condition, as to the timing of possession, has been assessed flexibly. French case law and doctrine have predominantly considered intellectual possession to be sufficient and that commercial or industrial exploitation of the invention, or even serious preparations for such exploitation, are unnecessary. The possessor need only have attained, prior to the patent filing or priority date, intellectual mastery of the invention enabling a person skilled in the art to implement it.
That interpretation has been confirmed by the Paris Court of Appeal.91
Prior personal possession may be proven by any means, including documents, drawings, formulas, manufactured products or any evidence demonstrating precise and complete knowledge of the invention. Case law has even recognized such possession for inventions never exploited but described in sufficient detail in archives or technical files. One of the means of pre-establishing proof of such possession is filing a “Soleau” envelope (now e-Soleau) with INPI, which allows any type of industrial development to be dated and kept secret for a period of five years, renewable once.
The second condition is that the technology possessed must be identical to that covered by the patent. Since industrial possession is not required, courts commonly scrutinize in detail differences between the previously possessed and the allegedly infringing technology. Some decisions have dismissed the exception on the basis of only minor differences.92
The third condition is proof that the technology was possessed on French territory. This may result from it having been developed in France – manufactured, marketed or tested there, for example. It may also result from being acquired abroad and then “transported” to French territory.93 It is not sufficient, however, to acquire and implement the technology exclusively abroad, even if prior to the filing or priority date, and then transfer it to France afterwards.94
The fourth condition is that the person invoking prior personal possession must do so in good faith. This requires more than a simple absence of fraud. It presupposes that the possessor personally created the invention or received it legitimately without any prohibition on its use, which is not the case when possession results from contractual relationships involving an obligation of confidentiality or a prohibition on exploitation, as is the case for an employee or a licensee subject to such clauses. By way of illustration, the Court of Cassation found an absence of good faith on the part of a company claiming personal possession that “only had gained access to the invention concerned because of its contractual relationship with the future patentee.”95 It similarly upheld a Court of Appeal decision finding an absence of good faith in the case of a newly created company invoking the prior personal possession of its director, who had filed a patent as inventor of the technology concerned in the name of another company that they managed at the time.96
If the four conditions above are met, the possessor is entitled to exploit the invention on French territory, with no particular limitation as to duration or the quantity of products or services sold.
In such cases, the right of exploitation arising from prior personal possession is strictly personal.
That right may only be transferred, according to Article L. 613-7(2) of the IPC, “together with the goodwill, business or part of the business to which it is attached.” It cannot be assigned in isolation. Nor can it be licensed. The right of a prior personal possessor to engage in subcontracting is disputed in legal doctrine and not clearly settled in case law. Here again, intellectual possession is considered sufficient to benefit from the exception, so a pragmatic approach seems reasonable. As one author puts it,97 anyone who has the right to manufacture a product should be able to have it manufactured on their behalf.
13.3.2.5.3 Exhaustion of rights
By application of EU law, the rule of exhaustion of rights is an exception to the territorial protection provided by patents, justified by the principle of the free movement of goods. According to Article L. 613-6 of the IPC:
The rights conferred by the patent shall not extend to acts relating to the product covered by that patent, performed on French territory after that product has been placed on the market in France or on the territory of a State party to the Agreement on the European Economic Area (EEA) by or with the consent of the patent owner, unless there are legitimate grounds justifying the owner’s opposition to further marketing of the product.
A specific exhaustion regime is provided for patents covering genetic sequences. Article L. 613-2-4 of the IPC provides that patent protection does not extend to biological material obtained by the reproduction or multiplication of such material placed on the market in the EU or EEA by, or with the consent of, the patent owner, provided that such reproduction necessarily results from the material’s intended use and that the material thus obtained is not used again for reproduction or multiplication.
The application of this rule presupposes the fulfillment of two conditions: (i) the patented product must have been placed into circulation with the owner’s consent; and (ii) it must have been placed into circulation on EEA territory.
The first condition, relating to the owner’s consent, ensures that the owner retains control over the initial marketing of the patented product. The consent must in principle be express.98
Such consent might take the form of direct marketing of the patented product by the owner or an authorized third party (such as a licensee). However, if the product is marketed under a compulsory license, that would constitute legal compulsion rather than free consent, so the exhaustion rule would not apply.99
The second condition – that the patented product’s introduction into public circulation must occur in an EEA country – stems from Article 34 of the Treaty on the Functioning of the European Union (TFEU), which establishes the principle of the free movement of goods.
Exhaustion occurs when the product in question has been effectively commercialized within the EEA. A mere offer without actual commercialization would not trigger exhaustion.
This means that the patentee can no longer prohibit the entry into France of a product lawfully placed on the market in another EU or EEA country, its exclusive right of importation into France having thereby been exhausted.
It is incumbent on defendants who rely on the rule of exhaustion to demonstrate that the two conditions required have been met for each product concerned, which may prove challenging, particularly where successive sales are involved.100
The Court of Cassation has clearly affirmed that, “while introduction into the European Community market, by or with a patent owner’s consent, of products implementing a patented invention implies exhaustion of the owner’s rights with respect to each of the products introduced, it does not have the effect of exhausting the patent right itself, which remains enforceable against any operator who, without the owner’s authorization, places products using that invention on that same market.”101
However, a patent owner may, by way of exception, have legitimate grounds for opposing further commercialization of such products.
13.3.2.5.4 Other defenses
There are limits to the exclusive rights conferred by patents that may exempt certain acts from liability for infringement. A non-exhaustive list is presented below.
13.3.2.5.4.1 Compulsory licenses
The compulsory licensing regime provided for in Article L. 613-16 of the IPC constitutes one such limit. Compulsory licenses impose measures on patent owners to ensure that the exclusive rights conferred by their patents do not result in unexploited or underexploited inventions.
A classic distinction is made between two types of compulsory licenses: judicial licenses and administrative licenses.
13.3.2.5.4.1.1 Judicial licenses
These include: (i) compulsory licenses for failure to work an invention; and (ii) compulsory licenses for dependency of an improvement, granted to the owner of a later patent to protect an improvement representing a significant technical advance in relation to the content of the earlier patent.
Licenses for failure to work are governed by Articles L. 613-11 and L. 613-12 of the IPC. They may be granted where the patent owner has not started to exploit the invention, nor undertaken effective and serious preparations to do so, on the territory of a member state of the European Economic Community (a concept referring to the European Union, Iceland, Liechtenstein and Norway), or of another state party to the EEA Agreement. The same applies where the owner has not marketed the patented product in sufficient quantity to meet the needs of the French market.
Applicants for such licenses must demonstrate that they have been unable to obtain an amicable exploitation license from the owner and that they are in a position to exploit the invention in a serious and effective manner.
Such licenses may only be requested after a period of three years following the grant of the patent, or four years from the filing of the application. This double temporal requirement aims to guarantee patent owners a reasonable period in which to exploit their inventions before third parties can forcibly seek to exploit them.
Dependency licenses for improvements are provided for in Article L. 613-15 of the IPC, which states:
Where the owners of patents cannot exploit them without infringing a prior patent held by a third party, the Judicial Court may grant those owners a license to exploit the prior patent to the extent necessary to exploit their own patents, provided that the inventions they have patented constitute significant technical progress in relation to the prior patent and are of considerable economic interest.
As with licenses for failure to work, Article L. 613-15 of the IPC provides that applicants must demonstrate that they have been unable to obtain an amicable exploitation license from the owner and that they are in a position to exploit the invention in a serious and effective manner.
13.3.2.5.4.1.2 Administrative licenses
Administrative licenses are granted by administrative authorities in specific fields, such as public health, the national economy or national defense, distinguishing such licenses as markedly in the public interest. The initiative for their implementation lies with the minister competent for the branch to which the patent corresponds.
The regime for ex officio licenses in the interests of public health is provided in Articles L. 613-16 and L. 613-17 of the IPC. The Minister for Industrial Property may, at the request of the Minister for Public Health, apply the ex officio licensing regime to any patent granted for a medicine, medical device, related therapeutic product, its manufacturing process or an ex vivo diagnostic method (where living cells, tissues or organs are removed from a body). Use of this license may only be ordered where such products are available to the public in insufficient quantity or quality, at abnormally high prices or under conditions contrary to the interests of public health. The procedure, which involves a consultative commission chaired by a State Counsellor and comprising 12 specialized members, permits any qualified person to apply for an exploitation license after publication of the order. It should be noted that these ex officio licenses relate to granted patents only, thus excluding applications currently under examination. Attention was drawn to these ex officio licenses during the COVID-19 crisis, as a means to increase the availability of vaccines. To date, however, no patent has been subjected to such a license.
Ex officio licenses in the interests of the economy, established in 1968, are intended to protect national industry from harmful interference by foreign companies. Pursuant to Article L. 613-18 of the IPC, these licenses are employed where patents are not being exploited or are being underexploited in terms of quality or quantity, causing “serious prejudice to economic development and the public interest.” The procedure begins with a formal notice issued by the Minister for Industrial Property allowing the owner one year to exploit the invention, failing which a decree by the Council of State may subject the patent to this ex officio licensing regime.
Other ex officio licenses are more specific in character: there is one for the benefit of national defense, allowing the state to obtain an ex officio license at any time (Article L. 613-19 of the IPC), and another relating to veterinary medicinal products for the needs of the livestock economy (Article L5141-13 of the Public Health Code).
The system of administrative licenses includes similar regimes for plant varieties: an ex officio license for varieties essential to human or animal life or of interest to public health, and a license for national defense. These licenses are granted by order of the Minister of Agriculture and are necessarily non-exclusive.
All of these mechanisms fall within the framework of the Paris Convention and the TRIPS Agreement.
13.3.2.5.4.2 The experimental use exception
According to Article L. 613-5(b) of the IPC, the rights conferred by a patent do not extend to “acts performed for experimental purposes relating to the subject matter of the patented invention.” This provision applies only to experimental activity for scientific, technical or academic research to understand or improve the invention’s functioning – but not to use the invention.
The rationale for this exception, which is interpreted strictly, is to overcome hindrances to research and development.
13.3.2.5.4.3 The Bolar exception
Article L. 613-5(d) of the IPC provides that the rights conferred by a patent do not extend to studies and trials required for authorization to place a medicine on the market, or the acts necessary to do so.
The Bolar exception, unlike the experimental use defense, has a commercial rather than scientific purpose.
Patent owners cannot invoke their exclusive rights to prevent the administrative and material acts necessary for obtaining medicine marketing authorizations (MAs).
The French Bolar exception is broader than the European provision transposed by Article L. 613-5(d) of the IPC: Directive 2001/83/EC of the European Parliament and Council of 6 November 2001 on the Community code relating to medicinal products for human use. The French exception is not limited to trials conducted to obtain an MA for a generic or biosimilar medicine: it applies to all medicinal products. Like the Directive, however, it does not apply to medical devices.
This exception has also been ruled (in the context of a motion to set aside a summary order) to apply to acts performed to obtain foreign MAs, even outside the EU.102
Article L. 613-5(d)bis of the IPC also exempts the acts necessary for authorization (“visas”) from the National Agency for the Safety of Medicines (ANSM) to advertise medicinal products to professionals.
13.3.2.5.4.3.1 Exception for objects intended to be launched into outer space and introduced into French territory
This “temporary presence” exception, provided for in Article L. 613-5(e) of the IPC, stems from Article 5ter of the Paris Convention. This article provides:
The following shall not be considered as infringing the rights of a patentee: [...] the use of the means forming the subject of the patent in the construction or operation of aircraft or land vehicles of other countries of the Union, or of accessories of such aircraft or vehicles, when those aircraft or vehicles temporarily or accidentally enter the said country.
The public interest objective pursued by this provision is to limit the rights a patent owner might wish to assert against satellites belonging to foreign clients of Ariane and Arianespace, which are only temporarily on French territory while awaiting their launch into space. The objective is to guarantee the free preparation of launches and preserve the competitiveness of the French space industry.
13.3.3 Evidence: infringement seizure, right to information and customs measures
13.3.3.1 General rules
Evidentiary practice in patent litigation is for the most part governed by the same ordinary rules that apply in civil litigation generally, as outlined below. One area of specificity, however, relates to the regime for obtaining evidence, as discussed later in this chapter.
13.3.3.1.1 Burden of proof
French law places the initial burden of proof in patent cases on plaintiffs, who, according to Article 9 of the CCP, must prove in accordance with the law the facts necessary for the success of their claims. The same then applies to the defendant if they file a counterclaim.
This regime distinguishes, however, between the proof of legal acts, which must follow certain forms, and the proof of legal facts, which need not.
Legal acts critical to the litigation (such as contracts or donations) must be proven by the party relying on them (such as creditors seeking compliance with obligations). If they provide such proof, liable parties must prove release from those obligations.
Parties relying on an assignment or license agreement, if priced or valued at over 1,500 euros,103 or on other patent-related agreements, must provide proof of their existence, such as a signed written document or notarized deed.104
Absent a signed document – owing to the material or moral impossibility of obtaining it, or to an established practice of dispensing with such documents, or to the loss of the document resulting from force majeure – prima facie written evidence of its plausibility (non-formalized, unsigned and attributable to the opposing party) may be produced. Further supporting evidence must then be provided.105 Such an act may further be proven by a party's admission (against that party's own interests) that it indeed exists (Article 1383-2 of the Civil Code for judicial admission or Articles 1385 to 1385-4 of the Civil Code for the decisive oath).
Unlike legal acts, a legal fact, relating to any situation, may be proven by any means.106 This is particularly true in infringement cases, a principle recalled in Article L. 615-5(1) of the IPC. Evidence of all kinds may be produced: publications, witness statements, bailiff reports, private expert reports, technical documents, etc. This principle is important because most proceedings in France are purely written, without involving witnesses or experts.107
It is thus incumbent on parties to provide evidence and communicate it to their opponents. Based on that evidence, if “serious, specific and consistent”,108 judges then form their opinions and presumptions.
The role played by judges is neutral: they do not in principle request evidence on their own initiative. However, once a trial on the merits has begun, the judge may, at a party's request – and without making up for a party's deficiency in assembling evidence109 – enjoin the production of a document “useful for establishing the truth.”110 In practice, it is a pre-trial judge111 who usually handles such requests, which might include the production of a contract concluded with a third party, accounting and financial materials falling under the right of information or products alleged to be infringing. Judges may also order any legally admissible investigatory measures, even if an infringement seizure has not previously been ordered.112
The burden of proof may be reversed by legal presumptions, most commonly in relation to patent ownership.
It is then up to the defendant to rebut such presumptions, either by providing evidence during the trial or by bringing an action to claim or recover patent ownership in the defendant's own name.113 The validity of the patent is also presumed until proven otherwise.
The law also allows judges to order a reversal of the burden of proof in cases involving patented processes.114
13.3.3.1.2 Freedom and fairness of evidence
The freedom of evidence principle allows for all modes of evidence to prove a legal fact and for any element to be produced in court to support a party's demonstration.
The right to a fair trial, enshrined in Article 6(1) of the European Convention on Human Rights, underpins the evidentiary rights of parties,115 including both the right to produce the evidence of a party's choice before the judge ruling on the merits of the case and the right to obtain it from a third party, where appropriate, by court decision.
The corollary to this right is the obligation for the judge to conduct an examination of the parties' grounds, arguments and offers of proof.116 In the event a party requests a judicial search for evidence, the judge determines whether such a search is necessary, to respect the applicant's right to evidence, and proportionate to the conflicting interests of the persons concerned.117
Parties are under no obligation to disclose all evidence in their possession or knowledge. They may select the evidence they deem most relevant and favorable to their interests. However, the judge may of their own motion invite a party to produce a document the existence of which has been positively demonstrated but which has not been disclosed.118 At the request of a party, the judge may also order the production of a document.119
The law provides specific protection for trade secrets.120 A judge ordering an investigatory measure or ruling on the merits may arrange a special procedure to examine evidence characterized by a party as a trade secret, to form their own opinion about it or set it aside. The judge may examine such evidence alone, seek an expert's opinion, order the content of documents to be summarized, render a decision in camera, or communicate only part of their reasoning to the parties.121 It is up to the applicant to demonstrate the existence of each trade secret associated with specific aspects of the case, and not simply characterize everything as unconditionally requiring blanket secrecy.122 Trade secrets are defined restrictively as information not easily accessible, having commercial value and justifying reasonable protection measures under the circumstances of the case.123
Some evidence is excluded by the courts as unlawful, being contrary to public policy rules or infringing on another party's or a third party's rights. This is the case, for example, if a conversation is recorded without the knowledge of the party against whom it is then invoked.124 On the other hand, the Court of Cassation, ruling in plenary session (full bench), has ruled that "[...] in a civil trial, unlawfulness or unfairness in obtaining or producing an item of evidence does not necessitate its exclusion from the proceedings", provided its inclusion "is an essential exercise of the right to evidence and the encroachment is strictly proportionate to the aim in committing it."125 A party's right to evidence can thus justify the admission of such evidence, previously deemed unfair and inadmissible, for consideration in the case.
When judges consider requests for different forms of evidence, they perform this same exercise of weighing proportionality between the right to evidence and the conflicting interests at stake.126
In matters relating to IP, they must be guided in particular by the evidentiary principles set out in Directive 2004/48/EC.127
13.3.3.2 Modes of proof
Plaintiffs may resort to various ordinary modes of proof depending on what they deem necessary and what is in fact accessible to them.
13.3.3.2.1 Material evidence
In compiling material evidence, plaintiffs may purchase potentially infringing products themselves, retaining proof of purchase (receipt, invoice, etc.) and performing, or having performed, relevant technical inspections thereof. They may also take photographs or make screenshots of relevant websites. While such evidence may indeed be effective, parties often resort in practice to bailiff reports instead, to avoid disputes over probative value.
Such bailiff reports, obtained at the plaintiff's expense, provide a means to maximize probative value for this type of evidence, as bailiff findings are considered irrefutable until proven otherwise.128 These reports record what the bailiff has observed, such as the content of a website (accompanied by screenshots), the performance of a product purchased, its disassembly or technical examinations carried out in the bailiff's presence.
While unquestionably a solid means of evidence, bailiff reports also have certain limitations. First, bailiffs can in principle only record what is publicly accessible. They cannot enter stores – which are private places, even if open to the public – without disclosing their identity. Nor can they have an active role in the operations they record. They cannot personally purchase products, only observe third persons doing so (entering the store empty-handed, leaving it with the product – or purchasing it on the internet with receipt of the package also recorded). Nor can they tamper with products physically, only record a third person doing so. Bailiffs failing to observe these restrictions may see their reports invalidated.
Plaintiffs seeking evidence of infringement that can only be obtained on premises not accessible to the public, belonging to the infringer or a third party, must resort not to a simple report but to an infringement seizure (see Section 13.3.3.3).
13.3.3.2.2 Witness testimony
Each party may call upon witnesses to testify, which in practice results in written statements only (in accordance with Articles 200 to 203 of the CCP). When statements refute or contradict one another, the judge sovereignly assesses their scope and probative weight.
Pre-trial judges may also hold hearings to question witnesses, a procedure known as an “inquiry”, governed by Articles 204 to 231 of the CCP. Lawyers may request the judge to ask certain questions during such hearings, but the judge remains in control of the process (with no cross-examination). In practice, however, such inquiry hearings are extremely rare.
When witnesses reside far from a court's jurisdiction, judges may, at the request of the parties or ex officio, have testimony collected or even investigatory measures and other judicial acts carried out, as they deem necessary, in another domestic jurisdiction or in a foreign state. This entails the use of letters rogatory (Articles 730 to 734-2 of the CCP).
13.3.3.2.3 Probative value
Guided by the principle of freedom of evidence discussed above, the judge freely assesses the probative weight of the evidence submitted.
No evidence may be rejected on principle as not probative a priori: the judge must examine all evidence that is legally admissible and subjected to adversarial proceedings and personally assess its probative value.
That assessment is based on the intrinsic quality of the evidence, contextual factors tending to corroborate or cast doubt on it, and how some pieces of evidence might corroborate or contradict others. For example, absent indications to the contrary, a screenshot may be sufficient to prove a given fact, leaving it up to the defendant to explain why it is not, rather than relying on abstract considerations.
Unlike the legal systems of other countries, there is no general principle in France requiring judges to hold as true a fact alleged by one party and not contested by the other; the general rules for assessing evidence apply.
13.3.3.2.4 Technical evidence
The freedom of evidence principle is qualified where technical issues are concerned. Plaintiffs are certainly free to produce evidence as they choose regarding the technical aspects of a dispute – citing expert technical studies, for instance, to clarify facts unknown to the court, or beyond its own expertise. That cannot, however, be the only evidence considered on the point concerned.
The court cannot, in fact, rely exclusively on such a private expert report: it must determine whether other evidence exists to corroborate it.129
It might, for instance, seek corroboration in another private expert report – even if produced by the opposing party – or consult another expert in the field concerned, or even in the appendices to the report, if these are not the work of the expert himself.130
The court might in fact order such a report itself (paid for in advance by the party requesting it, as the case may be) – and such judicial investigatory measures, governed by Articles 232 to 284-1 of the CCP, need not be corroborated by other technical evidence. Such measures are cumbersome, however. Apart from a prior judicial decision, they entail a degree of formalism whose terms, duration and cost are beyond the parties' control. The expert involved, moreover, may under no circumstance comment on legal questions (interpretation of claims, patent validity or whether rights have been infringed, for instance).
13.3.3.3 Infringement seizure
13.3.3.3.1 Subject matter, scope, petition and order
Infringement seizure constitutes a specific, commonly used and central evidentiary tool in French IP law, particularly in the case of patents, but also trademarks, designs and copyright. According to Articles L. 615-5 and R. 615-4 of the IPC, infringement seizures can be used to establish proof of infringement. Derogating from ordinary law, they enable parties alleging infringement to obtain judicial authorization, through an ex parte procedure, for a bailiff to go wherever the infringement of products or processes (which must be precisely specified) is suspected to be occurring, in order to record it and perform an actual seizure (for evidentiary purposes) and/or a descriptive seizure, with or without taking samples, as is frequently done in practice.
An “ex parte procedure” is one in which the person targeted by the seizure is not informed of it in advance, to avoid the risk of concealment or destruction of evidence.
The bailiff, the public officer responsible for executing the measure, may perform such seizures on private or professional premises – if necessary, including those of third persons not directly parties to the litigation.131
Infringement seizure thus makes it possible to seek and secure evidence that would otherwise be inaccessible, given the secret, concealed nature of infringement.
In practice, infringement seizure may consist of:
preparing a detailed description of the products or processes concerned;
taking photographs and/or videos;
physically seizing product samples;
copying or seizing documents (including data hosted abroad if accessible from the seizure location in France132); and
conducting tests on the products or processes concerned.
This measure is intended to provide proof of the infringement, including its origin, nature and extent, and thus may entail the seizure of commercial, financial and even accounting documents, subject to the distrainee's right to obtain protection for trade secrets. Thus, while intrusive, the measure is also regulated to balance the patent owner's right to proof of infringement against the distrainee's right to protection for legitimate interests.
Given its ex parte character, the basis for ordering an infringement seizure requires reasonably accessible evidence suggesting that infringement may be occurring. Once this condition is met, the judge must order the seizure, even if minimal, determining its intensity and scope based on the proportionality of the plaintiff's request from the perspective of the distrainee.
As noted, the IPC transposes Directive 2004/48/EC into domestic law and must therefore be interpreted in light of Articles 3 and 7 of that text, which provide that judges must ensure the fair and proportionate nature of these measures, as well as their effectiveness for the patent owner.
Judges authorize infringement seizures in response to ex parte applications, without the applicants having to justify their necessity in adversarial proceedings (unlike the ordinary law procedures provided for in Article 145 of the CCP, which must be reasoned). The ex parte applicants, moreover, are under an obligation to disclose any information they know of that might influence the judge's decision, particularly as to the scope of the measure.133
Judges have the power to set the conditions and scope of an infringement seizure. Before Directive 2004/48/EC, the Court of Cassation had ruled that judges could not refuse authorization to proceed with the seizure if requested in the form and with the justifications required by law.134
Under current practice, the patent owner's lawyer submits a petition, supporting documents and a draft order to the duty judge (delegated by the President of the Judicial Court), who then rules within a few hours or days. See on this point the Protocol for the Evolution of Procedural Practice, concluded between the Paris Judicial Court and the Paris Bar (EPP Protocol).135 The petition is not argued orally unless the judge requires explanations from the petitioner's lawyer before issuing the order.
Although an infringement action may be initiated after a patent has expired (in order to target acts committed before then), infringement seizures may neither be requested nor carried out, under current case law, after expiration has occurred.
While seizures are most often initiated before litigation – to establish proof of infringement – they may also be requested during the proceedings. They may only be ordered in the latter case by the presiding judge of the chamber that has been assigned the case, or is already hearing it. That judge's competence may only be challenged on grounds of lack of jurisdiction.
13.3.3.2 Execution of the infringement seizure
Infringement seizures need to be executed within the time frame specified by the order (usually one month) by a bailiff chosen by the applicant (patentee), possibly assisted by an independent expert should technical and/or scientific knowledge be required – and if authorized by the judge. The expert may be an industrial property attorney, including the applicant's usual industrial property attorney, since members of that profession are bound by a statutory obligation of confidentiality.136 A computer expert or other qualified person may also be authorized by the judge to act in this capacity.
Neither applicants themselves nor persons under their control may join the bailiff as participants in infringement seizure operations.137 Their exclusion is intended to guarantee the impartiality and neutrality of the operations against any pressure or influence on the part of the applicant.
Bailiffs have the obligation to serve the order authorizing the infringement seizure immediately before the start of operations; their formal reports must then indicate the exact time of such service and of the subsequent commencement of operations. Service of the order on short notice is not in itself sufficient to invalidate the procedure.138
Bailiffs must precisely record all their actions and findings (including the collection of any statements from representatives of the distrainee) in their formal reports, copies of which are provided to the parties at the conclusion of the operations. The probative value of those reports is particularly high. Bailiffs may ask the questions necessary to accomplish the tasks entrusted to them but must refrain from conducting interrogations.139
If it transpires during an operation that documents to be seized by the bailiff are considered trade secrets by the distrainee, and if the judge has not already ordered the provisional sealing of those documents ex officio, it is up to the distrainee to immediately request their placement under seal. Where documents have been placed under provisional seal, the distrainee has up to one month following service of the ex parte order to apply to the judge for a revocation or modification, in order to obtain appropriate protective measures for documents that are necessary for the litigation – and that truly constitute trade secrets – upon their disclosure to the applicant. To rule on such a request, the judge may order a sorting procedure. Failing such action, the documents provisionally sealed are automatically handed over to the applicant.140 The provisional seal regime is the exclusive method for protecting trade secrets in this context.141 It is intended to balance evidence gathering with protection for a distrainee's sensitive information.
After execution of the seizure has been completed:
The formal seizure report is communicated to all parties within a few days (any annexes containing documents relating to trade secrets may be subject to specific protection and communicated subsequently, following an amicable discussion between the parties or a court decision).
The applicant must then initiate civil or criminal proceedings on the merits within 20 working days or 31 calendar days if this period is longer (regardless of the date of communication of the formal seizure report), failing which the entire seizure, including the description, may be invalidated if the distrainee so requests, without having to justify that request (Articles L. 615-5 and R. 615-6 of the IPC). This requirement guarantees the use of infringement seizures as an instrument for initiating actual legal proceedings rather than as an end in itself (for “fishing expeditions” or even industrial espionage).
13.3.3.3 Litigation relating to infringement seizure: revocation, modification, invalidation
An action to set aside, modify or invalidate an infringement seizure places the case back on an adversarial footing. Article 497 of the CCP authorizes judges who have ordered such measures to revoke or modify them at a party's request, particularly if the adversarial process reveals that the measure should not or could not have been ordered, in whole or in part, because a necessary condition for ordering it had not been met or information likely to have changed the ordering judge's opinion was not disclosed.
Annulment by the judge on the merits: in the event of an irregularity committed during an infringement seizure operation (the bailiff exceeds the scope of the assignment, for instance), the distrainee may ask the court seized on the merits to annul the operation, in part or in whole. If the court agrees, only those parts of the operation affected by the irregularity, and references to them in the formal report, are then annulled.142
That court's competence to annul the operation is not limited, however, to cases where irregularities are committed during its execution. The court can invalidate the procedure on grounds derived, inter alia, from the conditions for ordering it, irrespective of the exclusive jurisdiction of the ex parte judge concerned to hear motions for its revocation or modification.143
The retroactive annulment of the patent concerned in an infringement seizure renders null the procedure itself, no part of which therefore subsists, making it likewise impossible to base any pretensions thereon and nullifying any measure following therefrom.144
Apart from this annulment hypothesis, however, a formal seizure report constitutes evidence that may be used in support of any proceedings in France or abroad (before those foreign courts that accept such evidence). French courts refuse to ban the use of such evidence in proceedings abroad.145
13.3.3.4 Right to information
In France, the right to information offers another avenue for patent owners to determine the origin and scale of infringement. It is an investigatory measure available through adversarial proceedings by which a patent owner can request a court to order a defendant, or any person involved in the distribution chain concerned, to disclose any documents or information relating to the origin, scale and distribution of products or processes alleged to be infringing (Article L. 615-5-2 of the IPC). This right can be exercised against the main defendant as well as any person who possesses, uses, provides or offers to provide allegedly infringing products or services.
Stemming from the transposition of Directive 2004/48/EC and inspired by the TRIPS Agreement, this right enables a patent owner to determine the nature and extent of infringement activity, combat distribution networks and precisely assess the resulting prejudice. In cases of patent litigation, it allows parties to obtain disclosure of relevant, specifically identified documents, and more broadly, require defendants or any persons holding the products concerned to provide all information useful to tracing their distribution chain, potentially opening the way for additional actions. Generally accompanied by periodic penalty payments, right-to-information measures are particularly useful in combating structured infringement networks, enabling patent owners to act effectively against all actors involved in the circulation of infringing products.
The right to information may be exercised independently of or in addition to an infringement seizure, to compile information on the names and addresses of producers, manufacturers, distributors and other holders; the quantities produced, marketed, delivered, received or ordered, and the prices obtained for the goods or services in question.146
Grounds of defense relating to trade or banking secrets must be debated before the judge, who must weigh the conflicting interests involved and the relevant characteristics and factors of the specific case. Parties alleging such secrets must demonstrate the need for protective measures on a case-by-case basis, in accordance with procedures defined in Articles L151-1 to L151-9 of the Commercial Code.
The right to information offers plaintiffs a means to compel defendants, and potentially third parties, to disclose commercial or accounting documents not otherwise accessible, for use in assessing damages and closing down infringement activity known to such actors. As a means to obtain accounting documents from suppliers or resellers, it provides a particularly useful complement to infringement seizures.
Where such evidence is required before proceedings on the merits of an infringement case are initiated, to assess the prejudice and profits resulting from infringement, with the potential involvement of third parties, it can be obtained through recourse to a summary proceedings judge and subsequently a pre-trial judge, both of whom have the powers necessary, under Article 788 of the CCP, to rule on requests for such evidence.147
Right-to-information measures are often ordered alongside judgments on the merits, particularly regarding the information necessary for the assessment of prejudice. Provisional rulings are issued with respect to indemnity claims pending the disclosure of evidence and resumption of proceedings necessary for the final assessment of damages.
13.3.3.5 Customs measures
Customs measures constitute a complementary mechanism for combating IP infringements, allowing patent owners to prevent the circulation of goods that infringe their rights.
These measures are divided into two complementary regimes according to whether goods suspected of infringement cross the external border of the EU or enter French territory from another EU member state. In the first case, a customs detention mechanism is established in Regulation (EU) No. 608/2013 repealing Council Regulation (EC) No. 1383/2003.148 In the second, Articles L. 614-32 et seq. of the French IPC establish national regulations in this area. Given the preeminence of the EU regime in harmonizing customs detention procedures throughout the country, the scope of the national regulations is essentially residual.
It is important to note that customs detention does not prejudice the eventual outcome of infringement litigation on the merits, and that patent owners must initiate such litigation to assert their rights within a specified time frame, failing which the detention is lifted.
Should detention prove unjustified, holders of the goods detained may seek damages, provided they can demonstrate loss (resulting from storage costs, for instance).
13.3.3.5.1 National measures
The national regime established under the IPC applies primarily to goods circulating between EU member states, without passing through external EU borders. There are two methods of detention for such goods.
The first is detention requested by a patent owner or persons authorized to exploit the patented invention. Such requests are made through a prior written application filed with the customs administration to detain goods suspected of infringement. Applications must justify the right invoked, providing proof of patent ownership or authorization to exploit the patented invention, and identifying the goods suspected of patent infringement, with a technical, precise and detailed description of the authentic goods and information enabling customs authorities to easily recognize infringing ones – or providing examples of common infringements. Applications must be addressed to the Directorate General of Customs and Indirect Taxes (DGDDI), Tariff and Commercial Policy Department (COMINT3), which must accept or reject them within 30 days. If complete and properly reasoned, applications are granted for a renewable one-year period.
When goods are detained, the applicant, the holder of the goods and the public prosecutor (procureur de la République) must be immediately notified. The right holder may then request specific information about the goods, including their nature, quantity, origin and destination, and permission to examine the goods. The holder then has 10 working days (or three for perishable goods) to take action. This period may be extended by an additional 10 days upon a reasoned request (Article L. 614-32 of the IPC).
Goods can be detained ex officio when customs controls identify goods suspected of infringing a patent. Rights holders are immediately notified of such detentions and then have four working days to file an application, failing which the detentions are automatically lifted. The 10-day time limit for rights holders to take action runs from the acceptance of that application (Article L. 614-33 of the IPC).
Holders of the goods are in any case notified of the detention and may contest it, or request release of the goods, if the right holder fails to initiate timely action. In the event of unjustified detention, holders may seek damages, if able to prove prejudice, before the competent court. Applicants, for their part, may request destruction of the goods and/or initiate legal proceedings (civil or criminal).
13.3.3.5.2 EU measures
The EU regime, applicable to goods crossing external EU borders – upon importation, exportation or transit through a free zone or free warehouse – is governed by Regulation (EU) No. 608/2013. According to that Regulation, where customs authorities identify goods suspected of infringing an IP right, such goods “shall” be detained if an application for the authorities to take action, filed by the right holder or other authorized person, has been granted (Article 17), or “may” be detained if no such application has been previously granted (Article 18). The procedure provided for by the Regulation is similar to the procedure provided for under national law.
Applications for customs authorities to take action in such cases must contain, inter alia, information proving the applicant’s standing, indicating the IP right to be enforced and enabling authorities to identify potential infringement (Article 6). Applications that are granted are valid for one year (Article 11) and may be extended for an additional year (Article 12). They are submitted online via the European Union Intellectual Property Office (EUIPO) IP Enforcement Portal (IPEP).149
Once applicants have been notified that their applications have been granted, they may inspect the goods and have samples taken (Article 19) – but may also disclose information received from customs authorities for the purposes of legal proceedings, criminal investigations, etc. (Article 21). The goods may then be destroyed under customs control provided three conditions are met: the right holder confirms in writing, within 10 working days (three for perishable goods), their consent to the destruction; they affirm their conviction that their rights have been infringed; and the declarant or holder of the goods also consents in writing to the destruction – or does not explicitly oppose it within the same time limit, failing which their agreement is presumed (Article 23).
Unlike national law, however, Regulation No. 608/2013 excludes small quantities of “goods of a non-commercial nature” contained in travelers’ personal luggage, as well as goods manufactured with a patent owner’s consent – even those exceeding the agreed quantities (Article 1).
13.3.3.6 Confidentiality of evidence (protection of trade secrets)
The protection of trade secrets belonging to the party from whom the evidence obtained by the applicant originates is most often settled by means of a confidentiality ring, the terms of which are determined flexibly by the parties and their counsel. The EPP Protocol referenced earlier provides in particular for this practice.
Failing agreement between the parties, French law provides for a procedural regime to organize this protection (Articles L153-1 et seq. and R153-1 et seq. of the Commercial Code, transposing Directive 2016/943/EU of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure).
This protection aims to limit so far as necessary the risk of trade secrets being breached. It cannot, however, prevent the disclosure of evidence necessary for the litigation.150
13.3.4 Remedies
Judicial remedies in the event of infringement are governed by Directive 2004/48/EC.
According to Article 3 of that Directive, such measures, procedures and remedies must be “fair and equitable, shall not be unnecessarily complicated or costly and shall not entail unreasonable time-limits or unwarranted delays”; they must also “be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.”
13.3.4.1 Injunctions
Like all IP rights, the right conferred by a patent is exclusive, conveying the power to prohibit third parties from certain acts (Article L. 613-3 of the IPC). When that exclusivity is disregarded, one of the measures a court may order – undoubtedly the most important in practice along with redress for the prejudice suffered – is an injunction.
A court injunction relates to the continuation of an act the court has deemed unlawful.
This act must therefore be identified with sufficient precision: the product or process, the commercialization of which is prohibited, must in particular be identified or identifiable – but without limiting the injunction to a product name, which the infringer could easily modify. An injunction must not be general or abstract, such as a prohibition from marketing “any product infringing the patent”, or “any similar product.”151
This does not prevent the prohibition of acts on a preemptive basis, provided they are already identifiable and can therefore be deemed unlawful. That would include the sale of a product whose characteristics are already known – because it has already been commercialized in other territories, for instance, or consists of a generic medicine its manufacturer is preparing to commercialize.
In principle, since the act concerned is by definition deemed unlawful, an injunction merely restores a patentee's rights, and therefore cannot be refused by the court. The law provides for an exception, however, in the case of inventions exploited for national defense (Article L. 615-10 of the IPC).
Furthermore, injunctions, like other measures, must be proportionate. It is therefore possible in certain exceptional cases, for the prohibition of an exploitation – even an infringing one – to be deemed disproportionate, and consequently refused by the court, or modified to allow for delays or exceptions in exchange for compensation. In one case, for example, the sale of spare parts for infringing medical equipment, having already been fitted to patients, was allowed for a certain period.152
Since a definitive injunction can only be issued once the court has ruled on the merits, the applicant may seek a provisional injunction in the meantime (see Section 13.3.7).
A party undertaking to cease infringing acts does not preclude the patent owner from seeking a permanent injunction.
13.3.4.2 Product recall, destruction and confiscation
Beyond the injunctions discussed above, which target defendants in infringement proceedings, Article L. 615-7-1 of the IPC provides for measures to rapidly terminate the commercialization of infringing products already in the hands of third parties, who are neither involved in the proceedings nor subject to the injunctions. Those measures consist of product recalls, confiscation and destruction, as well as destruction of the means of manufacturing infringing products:
In the event of a civil conviction for infringement, and at the request of the injured party, the court may order that the products found to be infringing, as well as the materials and equipment mainly used to manufacture them, be recalled from the channels of commerce, definitively removed from those channels, destroyed or confiscated for the benefit of the injured party.
These measures are ordered at the infringer's expense (Article L615-7-1(3)).
13.3.4.3 Damages
The damages payable to the patentee in redress for the prejudice resulting from infringement are fixed in accordance with Article L. 615-7(1) of the IPC, which requires judges to factor in separately each of the following considerations: first, the negative economic consequences of the infringement, including lost profits and the loss sustained by the injured party; second, the moral prejudice caused to the injured party; and third, the profits made by the infringer, including the savings in intellectual, material and promotional investments derived from the infringement.
Those provisions transpose into national law Directive 2004/48/EC, Article 13 of which provides for damages to compensate for the “actual prejudice suffered” by the victim of the infringement, and Recital 26 of which provides for account to be taken of all appropriate aspects of the damage suffered, including profits unjustly made by the infringer (without however providing for punitive damages). These provisions, therefore, do not derogate from the principle of full compensation.153
French law does not provide for reduced liability for infringers acting in good faith, as envisaged by Article 13(2) of Directive 2004/48/EC.
A patent owner's economic prejudice resulting from infringement does not depend on having personally engaged in exploitation of the patent;154 not having done so does not, in itself, preclude compensation for the infringement. It does, however, remain an important consideration in determining whether, and to what extent, the owner has suffered prejudice and, consequently, the amount of damages they may potentially obtain.
Given the principle of full compensation, among other objectives set out in the Directive, judges may not fix a patentee's compensation at a sum lower than that determined on the basis of the entire infringing volume (or infringing mass), unless it is proven that the patentee's calculation on that point is erroneous, or that the patentee was unable to commercialize products in quantities corresponding to the infringing volume – owing, for example, to the relative production capacities of the parties, or to the price charged for products marketed by the patentee.155
As an alternative (second paragraph), and at the request of the injured party, the court may award a lump sum in damages, which must be greater than the amount of royalties or fees that would have been owed if the infringer had requested authorization to use the patent in question. That amount is not exclusive of compensation for the moral prejudice caused to the injured party, but may not be combined with amounts payable under the first and third considerations indicated in the first paragraph of this section – except in the case of a joint request by the right holder and the licensee, after deducting the amount of royalties paid from the licensee's losses.156 This sum may be calculated by applying an adjusted royalty rate, increased to account for harm caused to the value of the patented products and for unauthorized use of the invention.
Judges may not impose a lump-sum assessment of prejudice on the patentee;157 this is a transposition of Article 13(2) of Directive 2004/48/EC, which is more favorable to the patentee.
In applying these principles, judges evaluate the patentee's losses in most cases – when they are known (particularly following an infringement seizure, see Section 13.3.3.3) – by taking into account the entire volume (or mass) of infringing products placed on the market by the infringer.
13.3.4.4 Publication
The publication of judicial decisions on patent cases is governed by special provisions contained in Article 15 of Directive 2004/48/EC, transposed into French law by Article L. 615-7-1 of the IPC.
In cases where patent-protected rights have been infringed, and particularly where such infringement has been proven, the court may order, at the infringer's expense, "any appropriate publicity measure for the judgment, including posting or publication in full or in part in newspapers or through designated online public communication services, according to such modalities as the court may specify."158
Such publicity measure must be requested by one of the parties to the proceedings. It is subject to the discretionary judgment of the court and consistently treated as a means of redress for the damage caused.
The content and scope of such publicity must be determined based on the principle of full compensation, excluding any punitive damages. That entails an assessment of its proportionality, the media most appropriate for communicating it, such as newspapers, as well as the cost, not to exceed limits set by the judge – and assessed more strictly, in terms of proportionality, in the case of online publicity on the internet than in specialized journals.159
It is within those limits that the French judge sets the modalities for the publication of decisions rendered in patent infringement cases, striving for consistency in the interpretation of EU law with respect to the objectives defined in Recital 27 of Directive 2004/48/EC: deterring future infringers and contributing to greater public awareness.
The publication of judgments is also a means of redress for prejudice under ordinary law, subject to three cumulative conditions: civil fault, injury and a causal link between the two.160 For that reason, as the prejudice is often sufficiently redressed, publication measures are rarely ordered in patent matters.
In practice, the court provides in the operative part of its judgment the content for the notice the patentee is authorized to publish. That may consist of a summary of the judgment, an extract from its operative part or the full text of the judgment. The court decides this after the parties have debated it, although the modalities are generally left to its discretion. The court may also authorize publication in several newspapers at the infringer's expense and at the right holder's choice, with a maximum cost generally between 3,000 and 5,000 euros.
13.3.5 Enforcement
13.3.5.1 Provisional enforcement and its suspension
Article 514 of the CCP currently provides that first instance decisions may be enforced provisionally, unless otherwise provided for by law or in the decision.
The absence of provisional enforcement is therefore the exception.
Article 514-1 of the CCP also provides that the judge may not set aside provisional enforcement "when the judge rules in summary proceedings, orders provisional measures for the duration of the proceedings, orders protective measures or grants an advance to the creditor in the capacity as pre-trial judge."
In the event of an appeal, the first president of the court of appeal may suspend the provisional enforcement of the decision. Thereafter, its rulings in summary proceedings are not subject to appeal (Article 514-6 of the CCP).
According to Article 514-3 of the CCP, two cumulative conditions must be met:
First, there must be a serious ground for annulling or reversing the judgment under appeal.
Second, there must be a risk of clearly excessive consequences for the losing party at first instance. The decision on clearly excessive consequences is made in concreto.
Paragraph 2 of this article adds that "an application [by a party who appeared] at first instance without commenting on provisional enforcement is admissible only if, in addition to the existence of a serious ground for annulment or reversal, provisional enforcement is likely to entail clearly excessive consequences which became apparent after the decision at first instance." To obtain the suspension of provisional enforcement, the unsuccessful party must therefore normally have submitted its observations on provisional enforcement at first instance. Failing this, it may be subject to an admissibility ruling.
Court interim orders, on the other hand, are automatically subject to provisional enforcement.
13.3.5.2 Enforcement methods
To shorten the appeal period and ultimately obtain enforcement of a decision, the winning party must serve the decision. This service is performed by a judicial officer (formerly known as a bailiff). The process can be remarkably expeditious in cases where the losing party is domiciled in France. In cases where the losing party is abroad, the judicial officer will implement the procedures outlined in Regulation (EU) No. 2020/1784,161 where service is to be effected in another member state of the European Union, or other applicable international conventions, such as the Hague Service Convention.162
Meetings between lawyers must always occur beforehand.
Once the decision has been rendered, the winning party may, if necessary, initiate enforcement proceedings if the opposing party does not comply voluntarily. Failure by the appellant to comply may also result in the dismissal of any appeal or further appeal that may have been lodged or brought against the enforceable decision.
The party proceeding with the enforcement of a provisional decision does so at its own risk (Article L. 111-10 of the Code of Civil Enforcement Procedures).
13.3.5.3 Penalty
To ensure the effectiveness of prohibitions, recalls or destruction, a penalty payment is often imposed (Article L. 131-1 of the Code of Civil Enforcement Procedures). This is a sum that the losing party must pay to the patent holder in the event of non-compliance. The amount is established on the basis of the length of the delay in implementation (an amount is due for each day of delay) or on the basis of the extent of the non-compliance (an amount is due for each breach of the obligation, for example, for each product sold despite the prohibition). The amount is determined based on the financial capacity of the debtor, serving as a deterrent.
The penalty payment is a corollary relief intended to ensure the enforcement of a judgment.163 Its role is strictly punitive, i.e., to constitute a sufficiently serious threat to encourage the debtor to comply voluntarily. Conversely, the penalty payment is not intended to compensate for losses and therefore is not related to damages (Article L. 131-2).
In the event of non-compliance, the creditor may request payment of the penalty. The judge will then determine the amount to be paid by the debtor by applying the sums provided for to the duration or extent of the non-compliance. This calculation will take into account the conduct of the person to whom the injunction was addressed and the difficulties they encountered in complying with it, where applicable (Article L. 131-4). The total amount must remain proportionate to ensure compliance with the law. For this reason, the decision initially setting the penalty also sets a ceiling, in principle, on the duration of the penalty or its amount.
Where the defendant fails to comply with the imposed measures, the plaintiff is responsible for referring the matter to the relevant court for a decision on the payment of the penalty in their favor. The judge who orders the penalty payment is the judge with territorial jurisdiction for its enforcement, unless the court that issued the decision itself rules on the amount to be paid, which is frequently the case.
Disagreement may then arise regarding the amount of the penalty and the terms of payment. The judge must now apply a proportionality test to the debtor's property rights when deciding the amount to be paid. Without mitigating the punitive nature of the penalty, the aim of which is to ensure enforcement of the court's decision, this test allows for a reduction in the amount payable where it is deemed disproportionate to the nature of the infringement.164
Once the decision regarding the penalty payment has been made, the losing party shall pay the amount of the penalty to the winning party.
13.3.6 Proceedings on the merits
13.3.6.1 Pre-litigation
In France, the pre-litigation phase is a critical component of managing patent disputes. It is customary and common practice to seek an amicable solution to a dispute before taking legal action. In practice, such an attempt may take the form of formal and informal direct exchanges between the parties' managers or representatives, or by sending a formal notice to the alleged infringer.
Formal notice may be sent directly by the patent owner or its licensee, but it is more common for it to be drafted and sent by their lawyers. In such cases, the lawyer has a professional obligation to invite the recipient to forward the letter to their own counsel. Communications between French lawyers or industrial property attorneys remain confidential.
The aim of the formal notice letter is to inform the recipient of the facts and charges against them, particularly the patent(s) and product(s) in question. It also offers them the opportunity to cease the infringement, agree not to repeat it and pay compensation for the prejudice suffered before any referral to the courts.
The letter creates an opportunity for the recipient to share their perspective, and for the parties involved to present their initial arguments and thereby assess the merits of their respective claims.
Nevertheless, caution should be exercised when sending such a letter. In principle, it should be addressed only to the alleged infringer and not to third parties, such as resellers, distributors or their customers. It should be couched in neutral, measured and objective language and use conditional phrasing when necessary. Threatening language should be avoided. Otherwise, it may constitute an act of unfair competition and/or defamation, for which the author may be held liable.165
Although common and useful in most cases, sending a formal notice is not a mandatory prerequisite for initiating legal action. Indeed, certain special procedures, such as seizure for infringement or an ex parte provisional injunction, need to be initiated without notifying the opposing party, in order to achieve an element of surprise and prevent the destruction of evidence.
Third parties other than the manufacturer, importer, exporter or transfer agent (i.e., those guilty of offering, placing on the market, using, or holding for the purpose of use or placing on the market) may be held liable for claims relating to a product or a product obtained directly by a process only if they were aware of the alleged infringement (Article L. 615-1 of the IPC).
In certain contractual contexts, seeking an amicable resolution between the parties may constitute a mandatory prerequisite for bringing an infringement action. For example, this would apply in the event of a dispute between a licensor and a licensee if the contract contains a clause requiring a prior attempt at amicable resolution of the dispute (e.g., an escalation clause) or mandating conciliation or mediation.
In that regard, case law excludes the application of conciliation clauses that are overly general or vague.166 Only those that are precise and clearly impose mandatory amicable procedures before legal action is initiated have legal force (for instance in the case of a plea of inadmissibility).
Even when pre-litigation steps are not mandatory, they are nevertheless recommended in practice. They are often the subject of specific details mentioned in the statement of facts of any subsequent complaint to explain to the court the events that led to the initiation of the proceedings.
Lastly, sending a formal notice, even by registered mail with acknowledgment of receipt, is merely a prelude to legal action and does not affect the statute of limitations;167 therefore, particular attention must be paid to the timing of filing the action to ensure that it is not barred by a statute of limitations.
13.3.6.2 Conduct of the trial
In France, patent litigation is conducted according to the general rules applicable to civil and commercial court proceedings. Those rules are designed to ensure compliance with fundamental due process guarantees. The rules of procedure are those of general civil litigation law, subject to certain specific provisions, such as territorial jurisdiction, evidentiary measures, reversal of the burden of proof and declaratory actions.
In urgent cases where a decision on the merits is necessary, the plaintiff may use a special proceeding known as the “fixed-date proceeding,” which allows a decision to be obtained within a few months. The conditions for the fixed-date proceeding are set forth in Article 840 of the CCP and are authorized by the president of the court upon a motion filed by the plaintiff in an ex parte proceeding. The plaintiff must set forth the grounds for urgency in the motion and submit the draft summons and documents to be produced. The plaintiff must present all claims, arguments and evidence when the summons is served. They cannot add anything except in response to their opponent’s arguments (a “front-loaded” proceeding).
In ordinary proceedings, pre-trial preparation and scheduling a hearing rarely take less than two years.
The roles of the parties and the judge are determined by the principle of party disposition (Articles 1–13 of the CCP), whereby the parties (i) initiate the proceedings by filing the complaint and performing the necessary procedural acts in the required form and within the prescribed time limits, and (ii) indicate the subject matter of the dispute through their respective claims, which are binding on the judge. The judge may not alter the subject matter nor base a decision on facts or arguments that lie beyond its scope (prohibition of judgments rendered infra or ultra petita), except in certain cases. For example, pursuant to Article 125 of the CCP, the judge may raise points of order on their own initiative, provided that they concern matters of public policy. This is particularly true when the failure is to observe the time limits within which remedies must be exercised or to initiate a remedy.
The parties are also responsible for bringing charges and presenting evidence of the facts supporting their claims (Article 9 of the CCP) while respecting rights protected by law and using fair procedures. The parties have access to tools specific to patent litigation, particularly the infringement seizure procedure and the right to information.
The judge, particularly the pre-trial judge, acts as guarantor of the proceedings' proper conduct and compliance with deadlines. In that capacity, the judge must ensure that communications are timely,168 bearing in mind that extensions to deadlines set in the schedules may be granted only for serious cause,169 and may order a partial closure of the proceedings in the event of a party's failure to meet deadlines.170
The judge ensures the regularity of the proceedings, sets deadlines to structure the trial and may invite the parties to provide explanations or, on the judge's own initiative, order legally admissible investigative measures.
The judge also ensures compliance with the adversarial principle, making sure that each party is aware of the opposing party's arguments and documents in a timely manner and can address them (Articles 14 to 16 of the CCP). The judge thereby ensures a balance between the parties' rights and the proper administration of justice, while respecting the freedom of the defense and the public nature of the proceedings.
The pre-trial judge rules under relatively flexible procedures by means of a "note in the record", that is, an entry in the case management software. In practice, French judges, either on their own initiative or at the request of the parties, schedule judicial hearings to efficiently resolve issues arising during the pre-trial phase. That approach ensures flexibility. The judge is authorized to issue orders exclusively in response to requests for disclosure of documents, advance payments, pleas of inadmissibility and exceptions, as well as to declare the proceedings terminated.171
13.3.6.2.1 Pre-trial proceedings and preliminary hearing
In France, patent litigation proceedings begin with a preliminary phase known as "pre-trial proceedings." These proceedings are governed by Articles 776 et seq. of the CCP and conducted under the supervision of a judge from the chamber assigned to the case. The judge's role is twofold: to ensure the smooth conduct of the proceedings, particularly by ensuring the timely exchange of pleadings and the production of documents; and to resolve any procedural issues that arise. That allows the focus to remain on the merits of the case.
The preliminary hearing: once the plaintiff's summons has been served on the defendant and filed with the court clerk's office, the case is called during the preliminary hearing. The hearing is held by the presiding judge of the division to which the case has been assigned. If the presiding judge determines that the case is not ready for immediate adjudication (Article 779 of the CCP), as is typically the case in patent litigation, they will appoint a pre-trial judge. This hearing takes place in person, not remotely; judges strongly encourage attorneys to be present, in particular with a view to considering a participatory procedure (Article 776 of the CCP), discussing potential mediation, clarifying the course of the proceedings (timeline, other procedural issues already identified), or filing a non-compliance judgment if the defendant, despite having been duly summoned, fails to appear (Article 778, paragraph 4, of the CCP).
Pre-trial proceedings: Once the pre-trial phase begins, pre-trial hearings are held regularly on dates set by the presiding judge or the pre-trial judge, in consultation with the attorneys. During this phase, written pleadings and supporting documents are exchanged between the parties until the case is ready for trial. These hearings are conducted remotely, and communications between attorneys and judges take place electronically via the RPVA. Nonetheless, the parties may request in-person hearings, known as “judicial meetings,” to engage in adversarial discussion with the other party before the judge regarding one or more issues or potential difficulties.
During the pre-trial phase, judges have numerous powers allowing them to ensure the smooth conduct of proceedings. Those powers fall into two categories: (i) judicial administration and (ii) jurisdictional powers. The pre-trial judge may set the procedural timetable (Article 781, paragraph 1 of the CCP), grant extensions (Article 781, paragraph 2), issue orders to conclude or communicate documents (Article 780, paragraph 3), or impose penalties for non-compliance with those deadlines by the parties (Articles 800 and 801). Under their jurisdictional powers, pre-trial judges may rule on points of law and disputes before the case proceeds to consideration of the merits. Judges may rule on procedural objections and certain pleas of inadmissibility, grant a provisional payment for the trial when the claim is not seriously contested, or order certain provisional measures (Article 789). Judicial acts, unlike judicial administration measures,172 carry the force of res judicata and are subject to appeal.
For instance, during the pre-trial phase, the plaintiff may file a related claim for unfair competition or infringement, or request a seizure of infringing goods or provisional measures. The plaintiff may, of course, raise any defense against the counterclaim filed by the defendant during the proceedings.
The duration of the pre-trial phase varies based on several factors. They include the number of pleadings exchanged (in principle, a summons, a defense, a reply and a rejoinder), compliance with the schedule set by the pre-trial judge and the nature or complexity of the case. In practice, however, it generally takes a minimum of approximately 12 months for the case to be ready for trial.
Once the file is complete, the pre-trial judge declares the instruction closed at the end of a virtual hearing, as soon as the state of the case allows. At that point, the case is referred back to the court to be heard on the date set by the president or by the judge, if they have been delegated to do so.
After closure, it is not possible to file new pleadings or produce new documents, under penalty of automatic inadmissibility (Article 802), except in certain cases (revocation of the closure order by the judge, voluntary intervention, etc.).
13.3.6.2.2 Written exchanges between the parties involved
Written exchanges relate to the substance of the case and contain the parties' claims, arguments and defenses. They also concern exceptions and pleas of inadmissibility. Such matters must be addressed in separate pleadings, as detailed in Section 13.3.6.2.3.
Written exchanges between the parties take the form of “closing” pleadings. According to Article 768, paragraph 3, of the CCP: “The parties must include the claims and arguments presented or invoked in previous pleadings in their final pleadings. Otherwise, the court deems them to have been abandoned, and the court will only rule on the final pleadings.”
Consequently, each new version of the pleadings must refer to all the arguments and claims, old and new, unlike the practice in some countries, where only new arguments are mentioned. Where a claim is not included in a party's final pleadings at first instance, it is considered to have been abandoned. Furthermore, if an appeal is filed, that claim will also be considered a prohibited new claim. The same principle applies before the court of appeal (Article 954, paragraph 4, of the CCP).
The pleadings must adhere to a specific structure that enables the court to swiftly comprehend the contested issues, the pertinent facts and the legal arguments presented. They commence with a cover page that identifies the parties involved and their respective counsel.
The principles of concentration of arguments and timely delivery of justice determine the number of exchanges between the parties. In principle, they are limited to a summons, a defense, a reply and a rejoinder, followed by the closing arguments. Beyond two sets of pleadings per party, any new pleading must be specifically justified and may only be intended to respond to new arguments or new evidence presented by the opposing party. Such a new pleading may not introduce elements that could have been included in the initial pleadings. In practice, the parties generally exchange between two and four sets of pleadings each.
The exchange of pleadings and exhibits among attorneys is mostly conducted electronically, primarily via the RPVA. It is necessary and customary, when a party files pleadings, to provide the opposing party and the court with a version in which changes from the previous pleadings are clearly indicated, for example by a line in the margin, to allow for quick identification of additions or changes (Article 768). Additionally, the transmission message must clearly indicate that these are pleadings, and the attached files must include the docket number, date and names of the parties involved.
The documents are to be communicated separately and must be listed in a schedule attached to the pleadings. Their numbering must remain unchanged throughout the proceedings and be retained in any new communications. Documents in a foreign language must be submitted in a language that is comprehensible to the parties and the court. In practice, documents in English are sometimes submitted without translation. When a translation is provided, it may be unofficial and there is no requirement to use a certified translator.
In France, there is no requirement for front-loading, meaning that while it is preferable to present as many arguments and exhibits as possible at the outset of the proceedings, the addition of new arguments or exhibits during the proceedings is not prohibited in principle. However, the judge may consider any late submission of arguments or evidence, particularly in the context of Article 700 of the CCP, which addresses the award of costs known as irrecoverable costs (primarily lawyers' and consultants' fees) in cases of conduct designed to delay proceedings.
The pleadings and documents exchanged between the parties are not accessible to the public. The public is privy only to the proceedings, including the hearings, and the court's decision. However, certain hearings may be closed to the public and held in chambers, particularly when dealing with trade secrets. Additionally, the court has the discretion to issue two versions of its judgment: one public and the other confidential.
13.3.6.2.3 Procedural objections and pleas of inadmissibility
The pre-trial judge has sole jurisdiction from the moment of appointment by the president of the section until the closure of proceedings. The judge rules on two types of incident that may lead to the suspension or termination of proceedings. Those incidents most often occur at the defendant's initiative and include procedural objections and pleas of inadmissibility, pursuant to Article 789 of the CCP. In practice, the parties submit separate pleadings relating to each incident, addressed specifically to the pre-trial judge (Article 791 of the CCP).
Under the standard instruction procedure, applicable as of September 1, 2025,173 the pre-trial judge retains the authority to adjudicate procedural objections and pleas of inadmissibility.174 That said, pre-trial judges rarely rule on the pleas of inadmissibility brought before them. Rather, they are referred to the court to be examined at the same time as the merits. This mechanism is intended to prevent pleas of inadmissibility from being used as a delaying tactic to prolong the proceedings.
According to Article 73 of the CCP, procedural objections generally result in one of three outcomes: the declaration of an irregularity in, or termination or suspension of proceedings. Such objections relate primarily to the court's lack of jurisdiction,175 lis pendens,176 the invalidity of procedural documents177 or a judicial stay of proceedings.178
Therefore, objections must be submitted to the judge before any defense on the merits or pleas of inadmissibility,179 in other words before any other defense argument.180 There are two exceptions. The first applies where the act whose nullity is sought is performed after the commencement of proceedings. The second applies where the defect concerns a lack of capacity to appear in court or the representative's lack of authority.181 Where a procedural objection is to be made, the party that notices it must raise the issue promptly. Any deliberate delay in doing so renders that party liable.182
The aim of pleas of inadmissibility is to have the opponent's claim declared inadmissible without examination of the merits (Article 122 of the CCP). Unlike procedural objections, such pleas relate to the individual and the claims made, rather than the lawsuit itself.
Pleas of inadmissibility may be brought at any time during pre-trial proceedings,183 but not after their closing, unless their ground comes to light after that order. Such pleas may be remedied by the party against whom they are brought.184
The plaintiff's lack of standing or interest in bringing the action is a plea of inadmissibility that is frequently raised before the judge.185 In that regard, it has been ruled that the assignee of a patent is only entitled to initiate an infringement action from the date of registration of the assignment in the national patent register.186
Pleas of inadmissibility may also relate to actions brought after deadlines, as in the case of a statute of limitations or extinctive time limits,187 or where avenues of appeal are only available to a person harmed by a patent alleged to be invalid, to the exclusion of any other interested party.188
Appeals against the decision of the pre-trial judge are subject to specific rules. If the appeal is directed against a decision regarding an objection or a plea of inadmissibility that terminates the proceedings, it may be lodged immediately.189 Otherwise, it is necessary to wait for the judgment on the merits, and it will then be possible to appeal the decision of the pre-trial judge together with the appeal against the judgment on the merits. This regime also applies to the nullity of procedural acts. However, special rules exist for other exceptions, in particular for stays of proceedings.
13.3.6.2.4 Bifurcation
Bifurcation (or splitting), also known as "sequencing", is a novel procedural instrument derived from the practices of judges and attorneys specializing in IP. It has been codified in Articles 807-1 to 807-3 of the CCP. Its purpose is to enhance the efficiency of the proceedings by focusing on the main issue in dispute.
The parties may decide to refer only part of their claims to the judge by means of a document countersigned by a lawyer. The presiding judge then issues an order to refer the matter to the court, which rules only on the issues raised by the parties.
In practice, the split allows the entire dispute to be avoided when a preliminary issue needs to be decided. For example, the commission of acts of infringement in France, or more generally the principle of infringement, can be decided without addressing the issue of remedies. This tool is also useful in the case of essential patents subject to a fair, reasonable and non-discriminatory (FRAND) standard.190 It allows for the preliminary determination of validity and infringement, followed by the determination of a license rate if necessary.
Once the judgment on this issue, known as a “partial judgment”, has been rendered, the case is referred back to the pre-trial judge, and the pre-trial proceedings can continue. However, it is common for the parties to attempt an amicable settlement at this stage, given that the central issue of their dispute has been decided by the partial judgment.
It is also possible to organize the split as part of the conventional pre-trial proceedings. In this case, however, the case must be referred to the pre-trial judge.
The court’s ability to order an accounting before a separate proceeding on damages and interest does not fall within the scope of the split. It is an old practice that predates this system.
13.3.6.2.5 Amicable methods of dispute resolution during proceedings
Amicable dispute resolution methods have long existed in French law, but have developed considerably since the entry into force of Act No. 2019-222 of March 23, 2019, on the programming and reform of the justice system, and Decree No. 2025-660 of July 18, 2025, which strengthen the judge’s hand in encouraging parties to resolve their disputes amicably.
The age-old principle is that “it is part of the judge’s role to reconcile the parties” by determining with them “the most appropriate method of dispute resolution for the case.” In practice, lawyers are invited to offer their professional opinion on the most appropriate means of amicably resolving the dispute, or to explain why such a settlement is not possible. The latter may be necessary in cases of proven bad faith on the part of one of the parties or alleged violence between them.
Common aspects of amicable dispute resolution methods. Such methods may be initiated at any stage of proceedings if the parties agree, including before, during and after the trial, and during the court’s deliberations. The parties may address their dispute, as well as any external elements of conflict that may have caused it, even if the judge lacks jurisdiction over those other points. It is therefore possible, for example, to discuss foreign proceedings or non-legal matters. The aim of amicable dispute resolution procedures is to facilitate flexible dialogue between the parties. Third parties involved in the dispute, such as industrial property attorneys, in-house counsel or company employees, may participate in such amicable meetings provided that the parties agree. Other parties not involved in the proceedings may also be included. However, the parties may only conclude an agreement on “rights over which they have free disposal.”191 In other words, agreements relating to the rights of third parties or contrary to public policy or morality are not permitted.
Amicable dispute resolution options at trial. Under Article 1528 of the CCP, several tools are available to help the parties find the most appropriate amicable solution.
Mediation is defined as “a structured process, however it is named or referred to, in which two or more parties to a dispute voluntarily attempt to reach an agreement on the resolution of their dispute with the assistance of a mediator.”192 The mediator remains neutral and does not propose a specific resolution. Rather, they help the parties to build or re-establish dialogue and reach agreement. Mediation is a paid service, governed by the contractual agreement between the parties involved. Referred to as conventional mediation,193 it may occur in parallel with legal proceedings. In certain cases, the judge may order mediation, in which case it is referred to as “judicial mediation.”194 One benefit of this option is its limited duration, which is capped at a maximum of five months.195 It can be renewed once if all parties and the mediator agree. The cost is typically between 3,000 euros and 5,000 euros for patents, which includes 10 hours of work, typically spread over two to three meetings.
Conciliation is rarely used in patent cases. Unlike with mediation, the conciliator actively proposes concrete solutions to the parties, which they must either accept or reject. It is generally shorter and has the advantage of being free of charge. In principle, the judge acts as conciliator196 and oversees proceedings. However, because the parties are not physically present during those proceedings, which are managed by their respective lawyers, the judge rarely appears personally. Rather, the judge delegates the task to a judicial conciliator by a decree defining the latter's duties197 and sets the parameters for the conciliation attempt.
The amicable settlement hearing198 is akin to mediation conducted by a judge, who can inform the parties about the “understanding of the legal principles applicable to the dispute”199 and take delivery of their documents and submissions. In practice, the judge overseeing the case will appoint another judge from the court who specializes in patent law to attempt to find a mutually acceptable solution. A meeting generally consists of collective and separate discussions, during which the amicable settlement judge meets privately with each of the parties and their respective lawyers. Where the parties fail to reach an agreement, this judge may not then rule on the case in question.200 The amicable settlement hearing is confidential, and the judge is therefore prohibited from discussing the case with the judges assigned to the case. Finally, the judge ensures that the agreement between the parties relates to rights over which they have free disposal and does not contain any clauses contrary to public order.
The participatory procedure to reach an amicable resolution is an informal process organized solely by the parties and their lawyers, without the involvement of a third party. It requires a formal agreement whereby the involved parties commit themselves to working together in good faith to resolve their dispute amicably.201 The parties are then free to organize the terms of their discussions and the drafting of their agreement.
The confidentiality rules for amicable proceedings are set out in Article 1528-3 of the CCP. Unless the parties agree otherwise, anything “said, written or done during the amicable settlement hearing, the conciliation entrusted to a judicial conciliator, or the mediation is confidential.” While documents drafted during such proceedings are also treated as confidential, pre-existing documents exchanged during those proceedings are not. In practice, particularly in patent matters, a confidentiality or non-disclosure agreement may need to be signed before such documents are provided during amicable exchanges.
The judge's active role in promoting an amicable settlement. The presiding judge may order the parties involved to convene with a mediator or judicial conciliator.202 Attendance in person is mandatory for the parties involved. Failure to attend without a valid justification may make them liable to a fine of up to 10,000 euros.203
In such cases, the parties are required to attend a preliminary session with the mediator free of charge. During the session, the mediator explains the benefits of mediation, how it works and the associated costs. The parties then decide whether to proceed with conventional or judicial mediation, or to decline.
Ordering meetings with a mediator in this way allows parties to engage in talks without taking the initial step, which may be perceived as a sign of strategic weakness in certain cultural contexts. The measure frequently leads to the lawyers reaching agreements as part of their mission to propose such avenues, without the mediator's intervention. Judges frequently order parties to meet a mediator over an extended period, enabling lawyers to engage in negotiations that, ultimately, mediation can guide to a successful resolution of the most contentious issues. As yet, little statistical information is available on this comparatively new approach. It may nevertheless be observed that such orders are now issued in most cases and result in approximately 33 percent of settlements or withdrawals following settlement before the specialized patent chamber of the Paris Judicial Court.
The issue of the confidentiality of exchanges at the first session following an order to meet a mediator is a source of contention because, after all, it is held merely to provide information and does not require exchanges between the parties. Often, however, the parties embark directly on mediation after the information session. In such cases, the confidentiality of the mediation process is legally protected. Nevertheless, it is advisable to sign a confidentiality agreement to formally qualify it as such and prevent any potential disputes later on.
An alternative to mandatory mediation is a system involving the direct participation of the judge, which is permitted under European law.204 In France, the system applies only to small claims of less than 5,000 euros,205 but the regulatory authorities wish to expand it. Encouragement to mediate should not compromise access to the courts, as guaranteed by Article 6(1) of the European Convention on Human Rights. That article “establishes the right to a court hearing, including the right to access the court system for civil matters.”206
The Third Chamber of the Paris Judicial Court and the Paris Court of Appeal ensure that orders to meet with a mediator are organized in consultation with lawyers, whose opinion is systematically sought on the appropriateness and timing of such a measure, thus allowing for debate. The Court of Cassation is also developing these instruments. According to recent feedback, the most opportune time to reach an agreement after an injunction is one month before the hearing on the merits of the case, or during the pre-trial proceedings at a time chosen by mutual agreement between the parties. Injunctions at the beginning of the proceedings or after the closing order are generally less effective. The chamber’s procedural protocol, which was concluded with associations of lawyers specializing in IP, describes best practices in that regard.207
Mediators are selected by the involved parties or, if necessary or at their request, by the judge. They must have no conflict of interests with the parties or the latter’s lawyers, be qualified mediators, have no criminal convictions and be of sound character.208 The Paris Court of Appeal is responsible for verifying those three conditions and maintaining a list of mediators within its jurisdiction who are readily available.209 Since 2023, the Third Chamber of the Paris Judicial Court has maintained an internal list, accessible to all mediators who specialize in IP. The list currently comprises approximately 50 such mediators and five mediation centers.
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center has been formally recognized by the judges of the Third Chamber of the Paris Judicial Court as a venue for mediation and judicial mediation in cases involving injunctions. The Center is particularly appropriate to handle disputes that have significant international dimensions or where the mediators are required to speak languages other than French, English or German.
The enforceability of agreements reached through amicable settlement is guaranteed by French and EU law. Neither France nor the EU are signatories to the Singapore Convention on Mediation.210
Under French law, an agreement is not automatically enforceable upon signature; an additional document on enforcement must be attached to it. For an agreement to be considered valid, it must adhere to public policy and include reciprocal concessions,211 as outlined in civil law under the term “settlement agreement.” With the exception of small claims worth less than 10,000 euros, legal representation is mandatory. The settlement effectively prevents any legal action related to the dispute, which, in practice, amounts to a dismissal.
Once the parties have drafted the agreement, the most common way to make it enforceable is to have it signed before a notary, which costs a few hundred euros. The notary's primary responsibility is to verify the identity of the parties involved, ascertain their legal capacity to enter into a contract, and confirm that all parties have consented to the terms of the agreement. The notarized document is considered an authentic instrument under Article 58 of Regulation (EU) No. 1215/2012 of December 12, 2012 (Brussels Ia Regulation),212 making it enforceable throughout the EU.
If the agreement is the result of legal action, it may be presented to the judge for approval, provided that it complies with public policy.213 The agreement is then certified as enforceable by the clerk of the court. The judge confirms the authenticity of the signature on the agreement.214 The approval procedure is an ex officio measure granted upon request, which may be a non-adversarial procedure. The decision is made promptly, typically within 48 to 72 hours. In the event that the judge refuses, a rationale must be provided for the decision. That decision may be appealed before the court of appeal.215 If the judge accepts it, the decision is final. In the event that one party requests approval of the agreement while the other party does not, the non-approving party may seek to have it revoked in order to reopen the adversarial proceedings.216 A recent procedural reform has streamlined the certification process for agreements signed by the parties. Now, if their respective lawyers countersign the agreement,217 it can be directly certified as enforceable by the court clerk. The decision is then enforceable throughout the EU.218
When the agreement is decided before the judge at a hearing, the parties may also submit it for approval. Once all parties, the judge, and the clerk have signed the agreement, the clerk will issue the enforcement order.219 This tool is primarily designed for agreements that are reached during procedural hearings or after amicable settlement hearings.220 In practice, the lawyers withdraw to formalize the terms and return before the judge for signature, which has the advantage of producing a decision within 24 hours.
When an agreement is concluded abroad, it is enforceable if it falls under the law of an EU member country, pursuant to Article 59 of the aforementioned Brussels Ia Regulation or Article 6 of Directive 2008/52/EC of May 21, 2008,221 if it is the result of mediation.222 If the agreement originates from another country, it is not enforceable in France. Therefore, it must be subject to an enforcement proceeding. This is an adversarial procedure involving the parties to the agreement.223 The following elements are then verified: the jurisdiction of the foreign court that issued the decision, the conformity of the decision with international public policy, and the absence of fraud.224
13.3.6.2.6 Hearing for oral arguments
As the procedure is written, it is not possible to modify or add to the claims and arguments during the hearing for oral arguments. The sole purpose of the hearing is to allow the parties to explain their pre-existing written arguments.
The reason for the hearing is thus to allow lawyers to present their arguments orally to the judges and to respond to any questions the judges may have and to the observations of the opposing party. During the hearing, lawyers can clarify the key points of the dispute for the panel of judges. In standard court proceedings, the hearing is typically held before the court in its panel capacity, unless the case has been assigned to a single judge. However, Article 805 of the CCP allows the pre-trial judge or the reporting judge to preside alone over the hearing to hear the arguments, provided that the lawyers do not object.
The purpose of the hearing is not to reproduce the entire written submissions, but rather to highlight the important points and those that encapsulate the nature of the disagreement between the parties, and to summarize the arguments.
In the absence of technical judges in France, the hearing must explain the technological background to the court.
The participants in this public hearing are the judges, including the presiding judge, who acts as the “police” of the hearing; the lawyers, who are the only ones authorized to speak; and, where applicable, industrial property attorneys and clients, who may be present but do not speak. The court clerk is also present to ensure that the proceedings are conducted properly and keeps notes in which any incidents are recorded. In certain cases, particularly when the proceedings concern trade secrets, all or part of the hearing takes place in chambers, away from the public and, where applicable, unauthorized persons (representatives and/or counsel who are not part of any confidentiality club set up to protect said secrets).
In accordance with Article 804 of the CCP, the hearing commences with a report by the judge. That report includes a summary of the subject matter of the dispute and the parties’ arguments, the questions of fact and law, and any other information relevant to the proceedings. The same article prohibits the reporting judge from offering personal views, thereby excluding any “preliminary opinion.”
The presiding judge then allocates time for the lawyers to present their cases, ensuring that each has an opportunity to speak.
The organization of the hearing and the allocation of speaking time between the lawyers and, where applicable, by topic (validity, infringement, damage, related unfair competition) may be agreed in advance between the parties and the pre-trial judge. This is particularly important to promote clarity in the proceedings. During or at the conclusion of the pleadings, judges often pose questions to obtain clarification or to better understand certain technical or legal aspects of the case.
Lawyers frequently use a collection of documents called a “judges’ folder” to focus their arguments in court. That file, which includes the specific documents on which the pleadings will focus, is provided in advance to the court and the opposing party. They may also project images or videos and show and handle copies of the products in question to facilitate the court’s understanding.
The total duration of the hearings depends on the complexity of the case and the number of parties involved. Generally, it is between one and three hours per patent, but in some cases, it may extend to one or even two full days.
Once the proceedings are closed, the case is taken under advisement, and the court indicates the date on which it will render its decision. The time between the hearing and the judgment is determined by the workload of the chamber and the complexity of the case, with an average duration of approximately two months.
13.3.7 Provisional injunctions
In some cases, it is necessary to prohibit infringement quickly, without waiting for the outcome of a trial. This is because continuing the unlawful competition constituted by the infringement during the trial may cause irreparable harm to the patent holder or give the infringer a lasting advantage.
Accordingly, Article L. 615-3 of the IPC provides a mechanism for patent holders to seek provisional injunctions against ongoing or imminent infringement, pursuant to Article 9 of Directive 2004/48/EC.
However, prohibiting acts that are ultimately deemed lawful may cause the defendant to lose commercial opportunities that are also difficult to remedy. This article, therefore, provides a mechanism that balances those conflicting interests.
13.3.7.1 Ordering measures
Article L. 615-3 of the IPC provides for a broad provisional injunction targeting all parties involved to stop infringement quickly and effectively:
[...] if necessary, and subject to a penalty payment, against the alleged infringer or intermediaries using its services, any measure intended to prevent imminent infringement of rights conferred by the title, or to prevent continuation of alleged infringing acts.
The court may prohibit the continuation of alleged infringing acts, require the provision of guarantees to ensure possible compensation for the claimant, or order the seizure or delivery to a third party of products suspected of infringing the rights conferred by the title, in order to prevent their introduction into or circulation in commercial channels. (emphasis added)
In addition:
If the claimant can prove that there are circumstances that could compromise the recovery of damages, the court may order the seizure of the alleged infringer's movable and immovable property, including the freezing of their bank accounts and other assets, in accordance with ordinary law. To determine the assets that may be seized, the court may order the disclosure of banking, financial, accounting or commercial documents, or access to relevant information.
The court may also grant the claimant an advance payment when the existence of their loss is not seriously disputed.
The general wording of the article allows the court to order the measures mentioned in Section 13.3.4 on a provisional basis. The court exercises proportionality control over these measures and may require the provision of security to prevent their unjustified effects. Due to this extensive control, French courts rarely set deposits.
As these measures are only provisional, the plaintiff must, when they are ordered in their favor, act promptly on the merits in order to obtain a final decision:
In instances where measures are taken to put an end to an infringement of rights and proceedings on the merits are subsequently initiated, the claimant is required to either initiate civil or criminal proceedings within a period of [20 working days or 31 calendar days, whichever period is longer] from the date of the order, or file a complaint with the public prosecutor. Failing this, at the request of the defendant and without the latter having to justify their request, the measures ordered shall be annulled, without prejudice to any damages that may be claimed.
(Last paragraph of Article L. 615-3 of the IPC, and Article R. 615-3 of the IPC regarding the duration of the period.)
13.3.7.2 Conditions
The same article stipulates that such measures may be ordered on behalf of “any person entitled to take action for infringement”, i.e., essentially the patent holder and licensees.
It specifies that:
“The court may only order the requested measures if the evidence reasonably available to the applicant makes it likely that their rights are being infringed or that such infringement is imminent.”
The decision to grant a provisional injunction is primarily based on the probability of infringement, which also takes into account the assumed validity of the patent when contested. This assessment considers the severity of the grounds for invalidity, without requiring the defendant to demonstrate that such invalidity would be obvious.225 The standard of proof is thus commensurate with a process leading to a provisional injunction.
More generally, the measures ordered must be proportionate, in accordance with the principles set out in Directive 2004/48/EC. The analysis is also contingent on the severity of the harm caused by the infringement to the applicant and the consequences of a prohibition (or lack thereof), taking into account the foreseeable duration of the measure.
The court may also:
Ensure that the enforcement of the measures ordered is contingent upon the provision of guarantees by the claimant. Such guarantees would ensure the possible compensation of the defendant if the infringement action is subsequently found to be unfounded or the measures are annulled.
Therefore, there is no requirement for urgency. However, the judge may consider the time that has elapsed since the infringement began or since the patentee became aware of it when evaluating the interests involved.
The concept of imminence necessitates a thorough evaluation of the defendant's progress in preparing to commit the alleged acts. This necessitates a discussion of its temporality and causality.
13.3.7.3 Timing
Provisional injunctions may be requested prior to any trial from the judge hearing the application for interim relief. The judge's role is to rule on urgent requests. However, it is also possible to request a provisional injunction after the initiation of civil proceedings from the pre-trial judge. The powers of the pre-trial judge are outlined in Section 13.3.6.2.1; with regard to summary proceedings, see Section 13.2.2.4.1.
The appeal process varies depending on whether the order is issued by the judge at the summary proceedings (immediate appeal) or the pre-trial judge (appeal with the decision on the merits).
13.3.7.4 No ex parte motions as a rule – no protective letter
In principle, the application for a provisional injunction is made in the presence of the person concerned, in adversarial proceedings.
In exceptional cases, such measures may be ordered upon request (ex parte), "when circumstances require that such measures not be taken in adversarial proceedings, particularly when any delay would cause irreparable harm to the applicant" (Article L. 615-3 of the IPC). This is rarely the case in practice, particularly in patent matters, as the seriousness of the prohibition measures most often requires an adversarial hearing. Typically, prohibitions ordered upon request (in trademark and copyright matters) concern cases of obvious fraud bordering on swindling, where the perpetrator is often difficult to identify.
Consequently, economic actors have limited incentive to seek preventive protection from a sudden injunction that would be imposed without their knowledge. In certain territories or before certain courts, they can obtain such protection through protective letters and similar measures.
13.3.7.5 Remedies
The decision regarding provisional measures may be appealed, but the appeal does not have suspensive effect. According to Article 514-1 of the CCP, decisions made in summary proceedings and decisions granting provisional measures for the duration of the proceedings must be accompanied by provisional enforcement. This is necessary to ensure that such measures are effective as quickly as possible. In cases where a provisional injunction is requested, if the judge does not grant it, the applicant may appeal (after first asking the judge to reconsider their position). If the judge grants it, any interested party may ask the judge to modify or withdraw the decision.226 This triggers adversarial proceedings, resulting in an order with provisional enforcement, which the parties may appeal.
In the event of an appeal against the decision on a request for provisional measures, the trial on the merits (which must have been initiated within one month) continues without delay (the court of appeal usually rules within nine to 12 months). The judge who ruled on the request for interim relief may not be part of the panel of judges that will rule on the merits of the case.
The final decision on the merits of the case is intended to replace the provisional decision, by ordering the same prohibition or terminating it. For example, if the infringement initially deemed likely to have occurred proves not to have taken place, the original decision will be terminated.
Court of Cassation, Com., July 13, 2010, Appeal No. 06-15.136 (first ground of appeal) rendered in trademark matters, but applicable by analogy.
See, by analogy, regarding plant variety rights, CJEU, October 14, 2021, José Cánovas Pardo SL, Case C-186/18, para. 36.
Court of Cassation, Com., November 15, 2023, Appeal No. 22-21.878, point 6.
In matters of copyright, see Court of Cassation, First Civil Chamber, September 3, 2025, Appeal No. 23-18.669. And, for an example in patent matters, see Paris Judicial Court, order of the pre-trial judge, May 6, 2021, RG No. 20/07066.
Court of Cassation, Civ., July 5, 1878; Court of Cassation, Com., January 4, 1994, Appeal No. 91-20.644; Court of Cassation, Com., November 23, 2010, Appeal No. 09-15.668; Court of Cassation, Com., November 6, 2012, Appeal No. 11-19.375; Court of Cassation, Com., March 20, 2024, Appeal No. 22-22.406; Court of Cassation, Com., October 15, 2025, Appeal No. 24-10.010.
For an example, see Paris Judicial Court, September 11, 2020, RG No. 20/01710.
Court of Cassation, Com., June 27, 2018, Appeal No. 16-20.644; Court of Cassation, Com., February 6, 2019, Appeal No. 17-21.585; Court of Cassation, Com., June 28, 2023, Appeal No. 22-10.124.
Court of Cassation, Com., September 15, 2009, Appeal No. 08-14.741.
Paris Judicial Court, October 20, 2023, RG No. 19/13662, paras 101 to 109.
Court of Cassation, Com., August 30, 2023, Appeal No. 20-15.480, para. 9.
Court of Cassation, First Civil Chamber, July 10, 2013, Appeal No. 12-19.170.
Court of Cassation, Com., July 5, 2017, Appeal No. 15-20554.
Court of Cassation, Com., March 12, 2002, Appeal No. 99-16.926.
Paris Court of Appeal, November 20, 2012, RG No. 11/16328.
The essential element is a constituent element of the protected invention: it refers to the means "necessary for [the] implementation [of the invention] to achieve its result" (see, for example, Paris Judicial Court, March 24, 2023, RG No. 20/03907). The characterizing part of the claim constitutes an essential element of the invention (Paris Judicial Court, March 4, 2022, RG No. 18/07635).
For example, Paris Court of First Instance, June 27, 1997, Propriété Industrielle – Bulletin Documentaire (PIBD) 1997, III, 581, upheld by the Paris Court of Appeal, January 19, 2000, PIBD 2000, III, 303.
Court of Cassation, Com., May 24, 2011, Appeal No. 10-15.760.
Azéma, J. and J.C. Galloux (2017). Précis [Manual], 8th edition. Dalloz.
Paris Court of First Instance, March 15, 2012, RG No. 09/17677; Paris Court of First Instance, March 14, 2013, RG No. 11/04212.
Court of Cassation, Com., July 5, 2017, Appeal No. 15-20.554.
Paris Judicial Court, February 8, 2024, RG No. 20/10445.
Paris Judicial Court, May 25, 2023, RG No. 20/12127.
Paris Court of First Instance, October 18, 1989, PIBD 1989, No. 471, III, 70.
Court of Cassation, February 12, 2008, PIBD 2008, No. 872, III, p. 237 and Paris Court of Appeal, May 16, 2012, RG No. 10/01278; Paris Court of First Instance, October 18, 1989, PIBD 1989, No. 471, III, p. 70; Court of Cassation, November 19, 2002, Appeal No. 00-15.203.
CJEU, July 7, 2016, Case C-494/15, concerning trademark rights but applicable by analogy.
CJEU, July 12, 2011, Case C-324/09.
Paris Court of Appeal, March 8, 2023, RG No. 21/09769.
Court of Cassation, January 28, 2003, Appeal No. 00-12.149.
Paris Court of Appeal, April 17, 2015, RG No. 13/17363.
Paris Court of Appeal, December 16, 2022, RG No. 20/10947. The Court notes that minor differences exclude the benefit of the right of prior user in the case of a product that has undergone modifications – a failure to meet the burden of proof is established in the present case.
Paris Court of First Instance, December 19, 2003, RG No. 02/05063; Paris Judicial Court, interim order, February 14, 2019, RG No. 19/50489.
Paris Judicial Court, February 14, 2019, RG No. 19/50489.
Court of Cassation, Com., April 25, 2006, Appeal No. 04-15.995.
Court of Cassation, Com., May 20, 2003, Appeal No. 01-14.957.
Passa, J. (2013). Droit de la propriété industrielle [Industrial Property Law], Vol. 2, LGD, para. 516.
However, the case law of the CJEU in trademark matters has accepted that such consent could be implied (CJEU, November 20, 2001, Cases C-414/99 and C-416/99).
CJEU, July 9, 1985, Case C-19/84.
Mutatis mutandis, Court of Cassation, Com., April 7, 2009, Appeal No. 08-13.378.
Court of Cassation, Com., April 25, 2006, Appeal No. 04-15.995.
For a marketing authorization in Brazil, see Paris Court of First Instance, December 15, 2014, RG No. 14/58023; and for a European marketing authorization, see Paris Court of First Instance, October 7, 2014, RG No. 14/12276.
A notarized deed is mandatory for gifts, to which royalty-free patent assignments are assimilated.
European Court of Human Rights, October 10, 2006, No. 7508/02.
European Court of Human Rights, May 13, 2008, No. 65087/01.
Court of Cassation, Second Civil Chamber, March 25, 2021, Appeal No. 20-14.309; Court of Cassation, Second Civil Chamber, June 10, 2021, Appeal No. 20-11.987.
Court of Cassation, Second Civil Chamber, October 12, 2006, Appeal No. 05-12.835; Paris Court of First Instance, March 11, 2016, RG No. 11/11460.
See CJEU, July 16, 2015, Case C-580/13, para. 39.
Court of Cassation, Full Bench, January 7, 2011, Appeal No. 09-14.316.
Court of Cassation, Full Bench, December 22, 2023, Appeal No. 20-20.648.
See, to that effect, Court of Cassation, Mixed Chamber, May 12, 2025, Appeal No. 22-20.739.
Article 1, II, 2, of Ordinance No. 2016-728 of June 2, 2016, on the status of judicial officers.
Court of Cassation, Mixed Chamber, September 28, 2012, Appeal No. 11-18.710; Court of Cassation, Second Civil Chamber, September 7, 2017, Appeal No. 16-15.531.
Court of Cassation, Com., April 1, 2026, Appeal No. 24-17.785.
Paris Court of First Instance, March 11, 2016, RG No. 11/11460.
Paris Court of Appeal, October 25, 2024, RG No. 23/17701; Paris Judicial Court, February 29, 2024, RG No. 23/10347.
Court of Cassation, Com., December 6, 2023, Appeal No. 22-11.071.
Court of Cassation, Com., June 29, 1999, Appeal No. 97-12.699, Bull. 1999, IV, No. 138.
Court of Cassation, Com., April 18, 2000, Appeal No. 97-19.631; Court of Cassation, Com., March 8, 2005, Appeal No. 03-15.871, Bull. 2005, IV, No. 53; Court of Cassation, Com., March 27, 2019, Appeal No. 18-15.005, Bull. 2019, IV, No. 27325.
Court of Cassation, First Civil Chamber, December 2, 1997, Appeal No. 95-17.029, Bull. 1997, I, No. 347; Court of Cassation, First Civil Chamber, July 6, 2000, Appeals No. 97-22.430, No. 97-22.392, No. 97-21.404, No. 97-22.141, Bull. 2000, I, No. 210; Court of Cassation, Com., April 28, 2004, Appeal No. 02-20.330, Bull. 2004, IV, No. 75.
Court of Cassation, First Civil Chamber, March 19, 2015, Appeal No. 13-25.311, Bull. 2015, I, No. 65.
Paris Judicial Court, March 22, 2022, RG No. 18/04575 and Paris Judicial Court, June 2, 2023, RG No. 21/09331.
Court of Cassation, Com., February 1, 2023, Appeal No. 21-22.225.
Court of Cassation, Com., November 14, 2024, Appeal No. 22-20.447.
Court of Cassation, Com., March 17, 2015, Appeal No. 13-15.862.
Court of Cassation, Com., September 28, 2022, Appeal No. 20-16.874.
See, on the proportionality of such use, Paris Court of Appeal, October 4, 2019, case no. 18/23120.
See, for example, Paris Court of Appeal, February 17, 2010, RG No. 09/15065 ordering the defendant to provide information "on the networks, the infringing quantity, and the extent of the damage".
See mutatis mutandis in trademark matters Court of Cassation, Com., December 13, 2011, Appeal No. 10-28.088, Bull. 2011, civ.; decision relating to the pre-trial judge.
Court of Cassation, Com., October 9, 2012, Appeal No. 11.28-498.
Paris Court of Appeal, October 16, 2024, RG No. 21/18176.
CJEU, March 17, 2016, Case C-99/15, para. 25.
Court of Cassation, Com., January 23, 2019, Appeals No. 17-14.673, 16-28.322.
Court of Cassation, Com., June 5, 2019, Appeal No. 16-25.110.
Court of Cassation, Crim., May 27, 2025, Appeal No. 23-86.955.
Court of Cassation, Com., March 17, 2021, Appeal No. 17-28.221, 18-19.206.
Court of Cassation, Com., October 9, 2012, Appeal No. 11-20725, including in criminal matters, Court of Cassation, Crim. Chamber, January 28, 2009, Appeal No. 08-83.705.
Regulation (EU) No. 2020/1784 of the European Parliament and of the Council of 25 November 2020 on the service in the Member States of judicial and extrajudicial documents in civil or commercial matters (service of documents) (recast).
Convention of 15 November 1965 on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (Hague Service Convention).
Court of Cassation, Second Civil Chamber, September 24, 2015, Appeal No. 14-14.977 and 14-14.978.
Court of Cassation, Second Civil Chamber, January 20, 2022, Appeal No. 19-23.721; Court of Cassation, Second Civil Chamber, January 20, 2021, Appeal No. 19-22.435; and Court of Cassation, Second Civil Chamber, January 20, 2021, Appeal No. 20-15.261.
Court of Cassation, Com., May 27, 2015, Appeal No. 14-10.800, Bull. 2015 No. 5, IV, No. 88; Court of Cassation, Com., January 9, 2019, Appeal No. 17-18.350 mutatis mutandis.
Court of Cassation, Third Civil Chamber, July 11, 2019, Appeal No. 18-13460.
Court of Cassation, Com., May 18, 2022, Appeal No. 20-23.204.
With the exception of another objection, a request to annul the summons may, for example, be filed after a request for objection to jurisdiction.
Court of Cassation, Com., April 24, 2024, Appeal No. 22-22.999.
Court of Cassation, Com., May 17, 2023, Appeal No. 22-10.744; for example, in cases involving an appeal against a decision to revoke a trademark issued by the INPI Director General more than two months after notification.
Court of Cassation, Com., February 14, 2012, Appeal No. 11-14.288.
Decree No. 78-381 of March 20, 1978, on judicial conciliators.
European Court of Human Rights, March 26, 2015, No. 11239/11; Court of Justice of the European Union, June 14, 2017, Case No. C-75/16, paras 49 and 50.
European Court of Human Rights, March 15, 2018, No. 51357/07.
United Nations Convention on International Settlement Agreements Resulting from Mediation of December 20, 2018.
If the document is signed electronically, the digital identification method must comply with the requirements of Regulation (EU) No. 910/2014 of the European Parliament and of the Council of July 23, 2014.
Directive 2008/52/EC of the European Parliament and of the Council of 21 May 2008 on certain aspects of mediation in civil and commercial matters.
Court of Cassation, First Civil Chamber, December 17, 2014, Appeal No. 13-21.365.
Court of Cassation, Com., October 21, 2014, Appeal No. 13-15.435.