An International Guide to
Patent Case Management for Judges

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).