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., October 21, 2014, Appeal No. 13-15.435.