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.
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.