An International Guide to
Patent Case Management for Judges

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.