An International Guide to
Patent Case Management for Judges

13.4 Other patent-related actions

13.4.1 Patent interpretation for validity and infringement

The interpretation of a patent and its claims is subject to the independent assessment of the judges on the merits. The Court of Cassation has therefore handed down only a limited number of rulings on the interpretation of claims: appeals are only admitted in cases of misrepresentation of claims.²²⁷

Based on early case law of the Court of Cassation,²²⁸ which is always applied by the competent courts, the aim of interpretation is to “give [the terms of the claims] their full significance.”²²⁹ The principle therefore remains that the interpretation of claims is mandatory but may not entail additions to the claims.²³⁰

In this context, French case law applies the principle, now recognized in a decision of the EPO Enlarged Board of Appeal,²³¹ under which “the description and any drawings are always referred to when interpreting the claims, and not just in the case of lack of clarity or ambiguity.”

The courts apply an identical rule of interpretation for both French and European patents, as with the text of Article L. 613-2 of the IPC²³² having been amended to be identical to Article 69(1) of the EPC.²³³ The Protocol on the Interpretation of Article 69 of the EPC does not apply directly to French patents, but its principles have now been integrated into the case law of the courts.

As indicated in Article L. 613-2 of the IPC and Article 69(1) of the EPC, such interpretation is based on the description and drawings of the patents.

However, alleged infringers may, in support of the interpretation they present, refer before the courts to disclosures made by the patentee to the INPI, the EPO or even the authorities that examined the foreign counterparts of the patent at issue.

In such cases, there can be no estoppel: the Court of Cassation has ruled that estoppel (contradicting oneself to the detriment of another) implies, in particular, common ground between the parties²³⁴ and that there is a contradiction during the judicial proceedings, in the same case.²³⁵ Estoppel therefore cannot be applied to either the EPO grant procedure or to an opposition procedure involving the same parties,²³⁶ and still less to a grant procedure in another country.²³⁷

Such disclosures – like the examination and opposition procedures, or the pleadings in foreign court proceedings – are factual evidence that magistrates may take into consideration.

As a result, many decisions contain references to disclosures made by the patentee in grant procedures (at the EPO or elsewhere); magistrates often refer to them as support for the interpretation that they reached on the basis of the description and drawings.²³⁸

In substance, the courts first apply the rule of interpretation to give the terms of the claims their full significance when these terms are not clear in themselves. For example, when there is a functional limitation, the Court of Cassation agreed with the Court of Appeal, which had consulted the description to understand the meaning of the limitation and to deduce the essential features of the claim.²³⁹ The claim involved was for a mass suitable for casting: the Court of Appeal noted in the description, on the one hand, that the suitability for casting depended on the water content and, on the other hand, on the lower value of the range mentioned in the description. It thereby deduced that, because the alleged infringer presented a significantly lower water content, this product did not reproduce the patent claim.

The interpretation may also involve taking into consideration the technical problem solved by the patent, in accordance with the traditional definition of an invention as a technical solution to a technical problem. As a result, courts may, in their interpretation, take into consideration the technical problem solved (even if it is not explicitly mentioned in the claims). The Court of Cassation expressly ruled on this in a widely discussed case.²⁴⁰

A similar approach was taken in a more recent ruling.²⁴¹ The patent concerned a medicine for piglets. The claims invoked were for a formulation and its use, independent of any method of administration. The defendant in the infringement proceedings maintained that there could be no infringement, given that the product that they marketed, even if it was covered by the wording of the claims, was administered by injection, whereas only the oral form was proposed in the patent description. The patentee maintained the opposite: that the method of administration was not mentioned in the claim and that the scope of protection could not be limited to a particular embodiment that was disclosed only in the description. He further maintained that oral administration was claimed in a dependent claim (not invoked).

The court noted that the full description, as well as the examples proposed therein, made reference to oral administration. The court also highlighted that the technical problem indicated in the application could not be posed in the same terms for administration by injection. It then emphasized that the inventive step in the proposed solution was linked to oral administration by citing the reasoning of the Opposition Division of the EPO.

The court therefore rejected the provisional prohibition measures against the product administered by injection, despite the lack of detail about the method of administration of the product claimed in the terms of claim 1, as read in the light of the description and, in particular, the definition of the technical problem raised and the solution proposed.

This judgment is representative of the rule of interpretation followed by French courts. It is important to highlight that the court not only addressed the technical problem, but also emphasized that the inventive step was justified only in terms of the method of administration (although not claimed).

Interpreting does not mean adding to claims: an invention is a technical solution to a technical problem posed in the description. Claims therefore cannot be read independently of the description, which does not serve simply to dispel uncertainties or a lack of clarity.

As indicated previously (Section 13.3.2.1), when assessing infringement, French judges have an additional freedom of interpretation linked to the assessment of the “essential aspects of the invention.”

13.4.2 Action for patent annulment

In contrast to infringement proceedings, which may be brought from the time of publication of the patent application or the communication of this application to the defendant, patent annulment proceedings may only be brought after the title has been granted.

13.4.2.1 Interest in taking legal action

Interest in taking legal action to annul a patent is assessed in accordance with the provisions of Article 31 of the CCP, which states that action may be brought by anyone with a legitimate interest in the success or rejection of a claim, except in cases where the law grants the right to take action only to persons qualified by law to pursue or contest a claim, or to defend a specific interest.

An economic operator has a legitimate interest in requesting the annulment of an industrial property title when, as the producer of products similar to those covered by the patent, their application is intended to remove an obstacle to the use of the technique for the requirements of their economic activity.²⁴²

The party requesting annulment does not have to demonstrate the existence of serious and effective plans to use a product implementing the patented technology (which is the condition for the admissibility of an action for a declaration of non-infringement provided for in Article L. 615-9 of the IPC – see the following section).

13.4.2.2 Grounds for annulment

According to Article L. 613-25 of the IPC, a French patent is declared null and void by a judicial decision: (a) if its object is not patentable under the terms of Articles L. 611-10, L. 611-11 (novelty) and L. 611-13 (inventive step) to L. 611-19 of the IPC; (b) if it does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) if its subject matter extends beyond the content of the application as filed or, when the patent was granted on the basis of a divisional application, if its subject matter extends beyond the content of the initial application as filed; or (d) if, after limitation or opposition, the scope of protection conferred by the patent has been extended.

Under Article L. 614-12 of the IPC, a European patent is declared null and void in France by judicial decision for any of the grounds mentioned in Article 138(1) of the EPC. According to the Convention, a European patent may be revoked with effect for a Contracting State only on the grounds that: (a) the subject matter of the European patent is not patentable under Articles 52 to 57 of the EPC; (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (c) the subject matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application filed under Article 61 of the EPC, beyond the content of the earlier application as filed; (d) the protection conferred by the European patent has been extended; or (e) the proprietor of the European patent is not entitled thereto under Article 60(1) of the EPC.

The grounds for annulment of a patent are listed exhaustively, with a lack of entitlement not considered a ground for annulment of a French patent. Furthermore, the provisions of Article 138(1)(e) of the EPC, on annulment owing to the patent holder’s lack of entitlement, are interpreted as intended to protect the private interests of the true patent holder or their successor in title so that their violation is punished by relative nullity, which can only be invoked by the injured parties and not by a competitor.²⁴³

13.4.2.3 Absence of patentability

The concept of an invention is not subject to any positive legal definition. However, the IPC specifies that a patent can be granted for inventions “in all fields of technology” (Article L. 611-10(1) of the IPC), that the descriptive part of the patent must include a statement enabling “understanding of the technical problem as well as the solution provided” (Article R. 612-12(3)) and that “the claims define the subject matter for which protection is requested by indicating the technical features of the invention” (Article R. 612-16). The invention must also be considered a technical contribution to a technical problem.

The most common type of dispute concerns the patentability of computer-implemented inventions. French case law is still guided by the criterion for contribution to the prior art in a field that is not excluded from patentability.

The IPC also excludes mere presentations of information from protection (Article L. 611-10(2)), so that an invention on new ways of displaying an aircraft’s route, without claiming any technical means related to the display method and merely describing what the pilot sees, is not patentable.²⁴⁴

While parts of the human body are not patentable, it is possible for “the technical application of a function of a part of the human body” to be protected by patent (Article L. 611-18).

13.4.2.3.1 Assessing the validity of priority

Under Article 4(A) of the Paris Convention, any person who has duly filed an application for a patent, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed; and any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

Determination of the successor in title is a matter for the applicable national legislation on the transfer of rights,²⁴⁵ which is not aligned with the solution adopted by the EPO.²⁴⁶

In French law, the transfer of the priority right must be done in writing²⁴⁷ and may not arise from a general statement.²⁴⁸

Under Article 4(H) of the Paris Convention, “priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.”

French courts, like the EPO Enlarged Board of Appeal,²⁴⁹ generally apply the “gold standard” to assess the criteria of the same invention. The conceptual breakdown of a claim²⁵⁰ has not yet been the subject of a specific decision from French courts.

13.4.2.3.2 Absence of novelty

According to both Article L. 611-11 of the IPC and Article 54 of the EPC, an invention shall be considered to be new if it does not form part of the prior art, with the prior art comprising everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.

To be included in the state of the art and be lacking in novelty, the invention must be found in its entirety in a single, undisputed prior art reference, with the elements that constitute it in the same form and the same arrangement, with the same functioning to produce the same technical result.²⁵¹ Case law then refers to the “complete” prior art.²⁵²

The fact that a prior art reference may be complete, including when it only implicitly discloses certain features, is admitted by judges on the merits.²⁵³

In contrast to EPO practice (EPC Guidelines, F-IV, 4.13.1), indicating a purpose in a product claim confers novelty on this claim, even when there is a prior art suitable or appropriate for that purpose.²⁵⁴

13.4.2.3.3 Absence of inventive step

Under Article L. 611-14 of the IPC, which was drafted to be identical to Article 56 of the EPC, an invention shall be considered as involving an inventive step if, having regard to the prior art, it is not obvious to a person skilled in the art.

In this respect, judges may apply the problem-solution approach²⁵⁵ developed by the European Patent Office if they consider it relevant, but this method of assessment is not mandatory.²⁵⁶

The term “obvious” refers to that which follows logically from the prior art and does not assume any specific skill beyond combining elements reasonably accessible to a person skilled in the art.²⁵⁷

13.4.2.3.3.1 Definition of a person skilled in the art

As an essential stage of the inventive step assessment, the Court of Cassation confirms that judges have defined the person skilled in the art.²⁵⁸ Their art is the technical area relevant to the problem that the invention, the subject matter of the patent, proposes to solve.²⁵⁹ This person has standard knowledge of the relevant field and is able, through their professional skills alone, to develop the solution to the problem that the invention proposes to solve.²⁶⁰ The person skilled in the art may not consult a specialist in another field²⁶¹ and may not refer to documents from a field other than their own.²⁶² In contrast, they may consult documents in related fields, if prompted to do so because the problem to be solved also arises there.²⁶³ If that is the case in the technical field in question, the person skilled in the art may also consist of a multidisciplinary team.²⁶⁴ In France, the person skilled in the art is defined in accordance with their technical skills and not only by reference to their level of qualification.

13.4.2.3.3.2 Means of assessing the patent's contribution to the prior art

The starting point for assessing the contribution to the prior art is the person skilled in the art.

The person skilled in the art is considered to be “encouraged” (in principle) to consult patents in the same field that address the same technical problem. The same applies to similar technical fields²⁶⁵ or general documentation when the technical problem is posed in the same terms. The encouragement to combine prior art documents is thus technical, but it may also be commercial (the person skilled in the art may, for example, be encouraged to suggest to clients an electrical outlet that works without an adapter). In contrast, the person skilled in the art cannot be considered to be encouraged to combine documents from different technical fields or intended to solve different technical problems.²⁶⁶ Encouraging the person skilled in the art to combine a prior art document or documents with their general knowledge appears to be a more flexible approach than that developed by the EPO. However, the Court of Cassation confirms that the judges have not engaged in ex post reasoning.²⁶⁷

Under French case law, a patent is not considered valid when, in the opinion of the person skilled in the art, it would not make any contribution to the prior art or enable its applicant to pursue a field of research that has not yet yielded concrete technical results. An invention must therefore have a “credible” or “plausible” technical impact at the time of filing, and the absence of such an impact is penalized on the grounds of a lack of inventive step.²⁶⁸ The credible nature of the technical impact is assessed at the date of priority or of filing,²⁶⁹ in view of the elements contained in the application, including the disclosures of the patentee, who is not required to provide in the application the results of tests or trials or any other data.²⁷⁰ Patentees are entitled to demonstrate, through evidence existing at the time of filing, that they have been in possession of the invention since that time, provided, of course, that the person skilled in the art can deduce what the invention and the technical impact claimed consist of, from the patent alone, on the basis of common general knowledge.²⁷¹ Evidence subsequent to the filing may also be taken into consideration, but it may not be the sole basis for demonstrating the credibility of the technical impact.²⁷²

It is incumbent on the party applying for annulment of a patent to provide proof of the prior art (or the general knowledge of the person skilled in the art) on which it relies to secure its annulment; the prior art cannot be based merely on disclosures,²⁷³ but must be supported by documentary evidence or testimony.

13.4.2.3.4 Lack of industrial application

Only an invention with a possible industrial application is patentable (Article L. 611-10 of the IPC), i.e., if its subject matter can be manufactured or used in any type of industry, including agriculture (Articles L. 611-15 of the IPC and 57 of the EPC), with “industry” referring to all types of technical activity.

13.4.2.3.5 Insufficient disclosure

An invention is considered sufficiently disclosed when the person skilled in the art, through reading the description and through their normal professional, theoretical and practical knowledge, is able to reproduce the invention. Moreover, if some elements essential to the functioning of the invention are not explicitly included either in the text of the claims or in the description, or in the drawings of the invention claimed, it does not necessarily mean that the invention has not been disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.²⁷⁴

When a claim concerns a subsequent therapeutic application of a substance or composition, obtaining this therapeutic effect is a functional technical feature of the claim; as a result, while it is not necessary to demonstrate this therapeutic effect clinically to satisfy the requirement for sufficient disclosure, the patent application must nonetheless directly and unambiguously reflect the therapeutic application claimed so that the person skilled in the art understands, on the basis of commonly accepted models, that the results reflect this therapeutic application.²⁷⁵

In contrast to most EPO case law, French courts do not necessarily require the invention to be capable of being implemented across the entire scope of the claim: a single example can be enough to demonstrate that the invention has been sufficiently disclosed. In other words, insufficient disclosure requires it to be demonstrated “that it is impossible for the person skilled in the art to reproduce the invention and implement it from reading the description, claims and drawings [...]”²⁷⁶ The Court of Cassation has not yet ruled on this issue.

13.4.2.4 Annulment arising from modifications

13.4.2.4.1 Extension beyond the subject matter of the application

Under Article L. 613-25(c) of the IPC and Article 123(2) of the EPC, a patent shall be declared null and void by judicial decision [...] when its subject matter extends beyond the content of the application as filed.

There is undue extension of the application when the modification does not arise directly and unambiguously from the information contained in the application as filed, taking into account the general knowledge of the person skilled in the art. French courts therefore use the “gold standard” defined by the EPO, with an approach similar to that of the Boards of Appeal. However, judges pay particular attention to the definition of a person skilled in the art, as discussed in reference to the inventive step.

The addition or removal of a feature may be considered an undue extension. An intermediate generalization – which consists of claiming, in the patent as granted, subject matter that is less than that which was filed, but that is more than the embodiments explicitly described in the disclosure or explicitly claimed – is also prohibited.²⁷⁷ An isolated feature therefore cannot be removed from a particular embodiment of the invention and added to the claim if it is inextricably linked to other features of this embodiment.²⁷⁸ Again, this is an approach similar to that taken by the Boards of Appeal.

13.4.2.4.2 The extension of protection

After being granted, and in accordance with Article L. 613-25(d) of the IPC and Article 123(3) of the EPC, a patent shall be declared null and void by judicial decision [...] when, after limitation, the protection conferred by the patent has been extended.

In order to demonstrate the extension of its scope, it is sufficient to show that the new claims cover a new element that initially fell outside the scope of the patent.

The means of assessment, which are indicated in the above provisions, are therefore similar to those applied before the EPO. The courts consider the scope of protection, taking into account the interpretation of claims by the person skilled in the art.

13.4.2.5 Annulment owing to absence of entitlement

Under Article 138(1)(e) of the EPC, a European patent may be annulled, in line with the law of a Contracting State, with effect in the territory of that state [...] if the owner of the European patent is not entitled under Article 60(1). The latter article provides that the right to a European patent shall belong to the inventor or their successor in title and that, if the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the state in which the employee is mainly employed.

For domestic patents, French law does not provide that an action for annulment may be brought in the event of an invention being taken away from its inventor, but Article L. 611-8 of the IPC enables an inventor who has been unduly deprived of their industrial property title right, as well as their successors in title, to bring an action to claim the patent (see Section 13.4.4).

The absence of a right to an invention may only be brought before national courts after the patent has been granted. The provisions of Article 138(1)(e) of the EPC are interpreted by French courts to mean that, in order to protect the private interests of the lawful patent holder or their successor in title, their violation shall be punishable by relative nullity, which may only be invoked by the injured parties. As a result, a company that claims only that a patent relates to an invention made by an employee, the patent rights to which belong to the employer, is not entitled to bring an action for annulment of that patent.²⁷⁹

13.4.2.6 Absolute or partial annulment: legal limitations

The second paragraph of Article L. 613-25 of the IPC provides that if the grounds for annulment only partially affect the patent, annulment shall be pronounced in the form of a corresponding limitation of the claims. In the context of patent annulment proceedings, the patentee is entitled to limit the patent by amending the claims; the thus limited patent is the subject of the annulment action brought.²⁸⁰

Under Article L. 613-27(3) of the IPC, when a claim has been partially annulled in the decision the patent holder shall be referred to the INPI to present a draft of the amended claim in accordance with the provisions of the ruling. The INPI Director General has the power to reject the amended claim for failure to comply with the ruling, subject to an appeal to the Paris Court of Appeal.

13.4.2.7 Effects of annulment

Under Article L. 613-27 of the IPC, a ruling annulling an invention patent shall have absolute and retroactive effect, subject to opposition from third parties. Final decisions are notified to the INPI Director General so that they can be recorded in the National Patent Register.

In accordance with the above-mentioned provisions of Article L. 613-27 of the IPC, a ruling annulling one or several patent claims that has absolute effect must be recorded in the Register in order to be binding on all parties.

In practice, the ruling is recorded in the Register at the request of an interested party. The first instance ruling is recorded in the absence of an appeal, which requires a “certificate of non-appeal”; in contrast, the appeal decision may be recorded without waiting for a possible appeal in cassation.²⁸¹

The defendant in an infringement action may also be limited to arguing the annulment of a patent as a means of defense by way of a plea, i.e., without filing a counterclaim. The annulment finding then only has effect between the parties and this plea in defense is not subject to any limitation, regardless of the provisions of Act No. 2019-486 of May 22, 2019.²⁸² Annulment may also be argued through a plea in defense to an application for a provisional prohibition in summary proceedings,²⁸³ or to oppose a request for prohibition concerning national parties to a European patent other than the French party.²⁸⁴

13.4.3 Action for the declaration of non-infringement

Under Article L. 615-9 of the IPC, any person who can prove that they are involved in industrial activity on the territory of a member state of the European Economic Community (a concept referring to the European Union, Iceland, Liechtenstein and Norway), or that they have made serious and effective preparations to that effect, may invite a patent holder to take a position on the enforceability of their title with regard to that form of activity, a description of which will be communicated to them. If that person disputes the response received or if the patent holder has not taken a position within three months, the person may bring legal proceedings against the patent holder to seek a ruling that the patent does not prevent the activity in question, without prejudice to any action for annulment of the patent and any subsequent action for infringement in the event that the activity is not carried out under the conditions specified in the description in the previous paragraph.

13.4.3.1 Conditions

To be accepted, any action brought must be preceded by an out-of-court phase, during which the plaintiff must communicate to the patentee a description of the activity that they are carrying out or preparing. Only if the patentee does not take a position within three months or if the plaintiff disputes the response received may the plaintiff bring action. The plaintiff in a non-infringement action may only bypass this stage if they demonstrate that the patentee has expressed clear and unambiguous support for a finding of infringement.

With regard to the obligation for use, the production of two prototypes by a Chinese subcontractor for a product designed by a European manufacturer is considered to constitute serious preparations under Article L. 615-9 of the IPC.²⁸⁵

The court that can hear infringement proceedings in a given territory (determined in accordance with the clarifications provided by the case law of the CJEU and, most recently, by the judgment in BSH Hausgeräte GmbH v. Electrolux AB of February 25, 2025²⁸⁶) is the court with jurisdiction.

The success of the proceedings requires the plaintiff to establish, before the court, the non-infringing nature of their use and that their actions, whether completed or prepared, do not constitute or will not constitute infringement (for assessment of infringement, see Section 13.3.2.2).

13.4.3.2 Effect

An action brought in the first instance against the holder of a European patent domiciled in France, to seek a finding of non-infringement of that patent, including its other national parties, will normally lead to a stay of proceedings in the infringement action brought subsequently by those national parties in another member state, where the claims and parties are the same, in accordance with the provisions of Articles 29 et seq. of Regulation (EU) No. 1215/2012 of December 12, 2012 on jurisdiction, recognition and enforcement of judgments in civil and commercial matters. In turn, the French judge will take the same approach in implementing the same article if another jurisdiction is hearing a case on non-infringement of the patent by a French party.

13.4.4 Patent claims action

Under Article L. 611-6 of the IPC, the industrial property title right referred to in Article L. 611-1 belongs to the inventor or their successor in title. Article 60 of the EPC contains identical provisions. These provisions are interpreted as meaning that the exceptions to the principle that the patent belongs to the inventor may only arise from the law.²⁸⁷

Under Article L. 611-8 of the IPC, if an industrial property title has been claimed either for an invention taken from the inventor or their successors in title, or in violation of a legal or contractual obligation, the injured party may claim ownership of the application or the title granted.

It is specified in Article 74 of the EPC that, unless the Convention provides otherwise, the European patent application as an object of property shall, in each designated Contracting State and with effect for such state, be subject to the law applicable in that state to national patent applications.

Article 139(3) of the EPC adds that any Contracting State may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications and patents.

Making use of this freedom, French legislators have retained a principle of non-accumulation of two titles for the same invention (unlike the unitary European patent).

Article L. 614-13 of the IPC thereby provides that:

where a French patent covers an invention for which a European patent has been granted to the same inventor or their successor in title with the same date of filing or of priority, the French patent shall cease to have effect either on the date by which the time limit for lodging an objection to the European patent expires without an objection having been lodged, or on the date on which opposition proceedings are closed, with the European patent having been upheld [...].

Unless some of the claims under the French patent are not included in the European patent, the substitution is total.²⁸⁸ The French patent and the European patent will nonetheless continue to coexist as long as the European patent is not granted irrevocably.

13.4.4.1 Jurisdiction of the French court

If the patent applicant has France as their domicile or main place of business, only the Paris Judicial Court has jurisdiction in claim actions for French patents.

For European patent applications, the jurisdiction of the Paris Court is also determined by the convergent provisions of Regulation (EU) No. 1215/2012 – Brussels Ia Regulation and the Protocol on Recognition.

A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating member states as a national patent of the participating member state in which that patent has unitary effect and in which, according to the European Patent Register: (a) the applicant had their residence or principal place of business on the date of filing of the application for the European patent; or (b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent, in accordance with the provisions of Article 7 of Regulation (EU) No. 1257/2012 of December 17, 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection.

13.4.4.2 Jurisdiction over foreign counterparts of French patents

When the patent filing in France constitutes an initial application under Article 4 of the Paris Convention and when it is regular, the person who files shall be the beneficiary of the French patent application and is entitled to claim, before the French courts, ownership of European and American patents, applications for which were filed in infringement of their rights by a third party who was not a valid assignee of the right of priority.²⁸⁹

13.4.4.3 Applicable law

Only French law is applicable to ownership of a French patent, in particular when it constitutes a “first application” under Article 4 of the Paris Convention.

Under Article 74 of the EPC, the European patent as an object of property shall, in each designated Contracting State, be subject to the law applicable in that state.

However, Article 60(1) states that:

[t]he right to a European patent shall belong to the inventor or their successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached.

13.4.4.4 Conditions for bringing action

Article L. 611-8 of the IPC envisages only two cases in which a claims action is possible:

• the invention has been removed from its inventor or their successors in title;²⁹⁰

• the filing has only been possible through the breach of a legal or contractual obligation.

As a result, the Court of Appeal violates this article when it grants a claim for ownership of an invention patent without noting the existence of either of those conditions.²⁹¹

The plaintiff must establish that they are the real inventor, i.e., they must demonstrate that they are the originator of the information on the basis of which the patent application was filed.²⁹²

Claims actions are prohibited for five years following publication of the grant of the industrial property title (since 2014), except in cases of bad faith at the time of grant or acquisition of the patent, in which case the limitation period begins upon expiry of the title.

The limitation period to take action to claim a European patent that, insofar as it designates France, completely replaced the French patent prior to the filing of the claims action, begins on the date of publication of the grant of the European patent and not on the date of grant of the French patent.²⁹³

13.4.4.5 Remedies: suspension of the grant proceedings and transfer of the patent and its proceeds

Article R. 611-18 of the IPC provides that patent claims actions shall be recorded in the National Patent Register at the request of the person who brought the action. Patent claims actions also have a suspensive effect on the grant proceedings (Article R. 611-19 of the IPC/Rule 14 of the EPC Implementing Regulations).

When the claim application is accepted, ownership of the patent is transferred, retroactively, from the initial date.²⁹⁴

When the action concerns the right to a European patent application, Article 61 of the EPC applies. There is no similar provision in French law.

However, during the grant proceedings, the EPC allows, under Articles 61 and 13 of its Implementing Regulations, a party whose patent right has been infringed to prosecute the European patent application as their own application in place of the applicant.

In that respect, a patent claims action brought before a national judge has a suspensive effect on the grant proceedings (Article R. 611-19 of the IPC and Rule 14 of the EPC Implementing Regulations).

Bad faith is not a condition for claims action in that breach of an obligation or removal may occur without bad faith. In such cases, the restitution of the proceeds of exploitation of the relevant patent (profits arising from the use of licenses) to the rightful holder may only occur from the date of the claims notice.²⁹⁵ In cases of bad faith, the proceeds must be repaid from the date of filing.

13.4.5 Disputes concerning employee inventions

Articles L. 611-7 and L. 611-7-1 of the IPC establish a public order system for the inventions of employees and interns,²⁹⁶ which is applied in the absence of a contractual provision more favorable to the employee. This system is an exception to the general principle that the title right belongs to the inventor;²⁹⁷ it is therefore logical that the Court of Cassation ruled that the exceptions provided for in Article L. 611-7 were limited and can only be applied to the persons referred to therein.²⁹⁸ Specifically, non-salaried corporate officers cannot be subject to those provisions.

This system applies both to private sector employees and to civil servants and public officials. The latter are, however, subject to specific provisions,²⁹⁹ in particular in relation to the calculation of additional remuneration.

In practice, the system under the IPC may be supplemented and expanded by:

• collective agreements;

• company agreements;

• employment contracts; or

• uses established unilaterally by employers.

Collective agreements are, for the most part, comparatively imprecise and largely repeat the provisions of the law. In particular, they do not generally specify the rules for calculating additional remuneration or fair prices.³⁰⁰ Where company agreements exist, a significant proportion of disputes about additional remuneration concern the application of such practices. These practices may be cited by employees, but it is normal for employees to contest their enforceability by calling for higher additional remuneration than that paid by their employers.

Three categories of inventions are provided for in the IPC.

The first consists of inventions made in the course of employment. They are produced by the employee in the conduct of “either an employment contract including an inventive assignment consistent with their actual tasks, or studies or research with which they are explicitly tasked.” Such inventions belong to the employer; from their creation, the employer has the sole patent right. The quid pro quo for this automatic devolution of the inventor’s rights to the employer is that the employee has the right to “additional remuneration.”

The second category of employees’ inventions consists of attributable inventions made outside the scope of employment. This concerns inventions that: (i) are not inventions made in the course of employment, but (ii) are linked, in one way or another, to the company of the employee inventor. This link may take various forms and the law targets inventions made “either during the performance of one’s duties, in the company’s field of activity, or through knowledge or use of techniques or means specific to the company, or data procured by it.” Such inventions belong to the employee, but the employer may exercise a right of attribution through the payment of a “fair price.”

The third category consists of inventions that are neither inventions made in the course of employment, nor attributable inventions made outside the scope of employment: they belong to the employee.

Articles L. 611-7 and L. 611-7-1 of the IPC apply to all inventions, whether or not they have been patented, provided that they are patentable.³⁰¹ The IPC actually applies to all inventions, whether or not they are protected by patent.³⁰² In practice, disputes concerning unpatented inventions are infrequent. The case law has clarified that the legal framework only applies to patentable inventions.

To enable the classification of inventions and uphold the employee inventor’s rights, as well as those of the employer, the IPC requires the employee inventor to disclose all inventions to their employer, with a precise system of mandatory deadlines. In principle, this system allows the employer to have all the information, enabling the classification of inventions.³⁰³ The law also requires the employee and the employer to refrain from any disclosure of the invention as long as there is disagreement about its classification or until a decision has been made on the matter; one of the parties, with the aim of upholding their rights, may file a patent application, but they must notify the other party and postpone the publication of the application for as long as possible.³⁰⁴

The IPC has also established, at the INPI, a joint conciliation committee: the National Commission for Employee Inventions (CNIS).³⁰⁵ Employers or employees may ask the Commission to develop a proposal for conciliation for “any dispute concerning the application of Articles L. 611-7 and L. 611-7-1 of the IPC.”

In France, disputes on employee inventions are therefore not only a matter for the courts, but also for the CNIS.

More specifically, disputes on the status of inventor fall within the jurisdiction of the courts alone; the CNIS takes the view that, by law, it is only competent to hear disputes on the application of the articles on employee inventions, and that disputes on the status of inventor therefore fall outside its jurisdiction.

Disputes on the classification of inventions – as inventions made in the course of employment or attributable inventions made outside the scope of employment – is shared between the CNIS and the courts.

The most frequent type of dispute, concerning the amount of additional remuneration or fair pricing, is also shared between the CNIS and the courts.

Discussed in the following sections are:

• cases before the CNIS;

• particular features of cases before the courts in relation to employee inventions, including the competence of industrial tribunals³⁰⁶ and courts of law;

• the statute of limitations for employee claims.

13.4.5.1 Cases before the CNIS

The CNIS, established under Article L. 615-21 of the IPC, is a joint entity chaired by a magistrate in the judiciary – for several years, it was chaired by a sitting or honorary magistrate from the Court of Cassation – who is supported by two assessors, one representing employers and the other representing employees.³⁰⁷

The CNIS is headquartered at the INPI, which provides its secretariat.³⁰⁸ Its organization and stable composition give its proposals great consistency.

Cases before the CNIS are confidential, as it is a conciliation body. Article R. 615-31 of the IPC states that, in the absence of agreement between the parties before the CNIS, it shall itself draft a sole proposal for submission to the court.³⁰⁹

CNIS procedures are very flexible, and faster and less expensive than legal proceedings. They have the advantage of providing the employer and employee inventor with a conciliation proposal drafted by an independent entity. The CNIS proposal is not binding on the courts but is a valuable source of guidance for the parties. That is why a significant proportion of the disputes brought before the CNIS are settled amicably after the CNIS presents its proposal.³¹⁰

Statistics published by the CNIS for the period from 2022 to 2024 show that there were:

• 16 referrals in 2022;

• 8 referrals in 2023;

• 13 referrals in 2024.

Statistics published by the Judicial Court show that there were:

• 3 referrals in 2022;

• 4 referrals in 2023;

• 4 referrals in 2024.

There is, of course, a delay between a case being referred to the CNIS and a potential referral to the court. Nevertheless, these figures show that a high proportion of the cases brought before the CNIS result in an agreement, either because the CNIS proposal becomes final or because the parties arrive at a compromise by freely adapting the proposal.

In close to 90 percent of cases, referrals are at the employee's initiative. It can also be assumed that referrals at the initiative of employers are made when the employee has applied directly to the courts.

In 77 percent of cases, the referrals concern requests for additional remuneration; the remaining referrals relate, in roughly equal proportions, to: (i) the classification of inventions (inventions made in the course of employment or attributable inventions made outside the scope of employment); and (ii) a request for a fair price.³¹¹

The procedure is adversarial.³¹² There is free choice of representation; it is common for employees to be supported by union representatives or lawyers. Employers are often supported by industrial property advisers or lawyers.

Either party may bring an action before the CNIS; requests are not subject to any formal requirement and may be filed with the CNIS secretariat or sent by registered letter with a request for acknowledgement of receipt. The CNIS calls the parties to a preliminary meeting, notifying them of the composition of the CNIS and informing them of the option of requesting a change in assessors.³¹³ At the same time as this summons, the CNIS sends the parties advice prepared by the INPI.³¹⁴ In practice, an INPI examiner informs the CNIS of the geographic scope of the applications filed to protect the invention and produces guidance on the patentability of the invention, most often through the granting procedure for a French patent application or a European patent application protecting the invention(s) subject to the referral.³¹⁵ This summons also establishes a deadline for written submissions from the parties.³¹⁶

During the preliminary meeting, the CNIS hears the parties, as well as the INPI examiner who prepared the report on the patentability of the relevant invention(s). The objective established in the law is for the CNIS to “endeavor to align [the] opinions [of the parties] and reach a conciliation.”³¹⁷

By law, the CNIS President may “take any investigative measure”:³¹⁸ in practice, this means that the President (or his or her authorized assessors) may question the parties during the meeting.

After having heard the parties, the CNIS deliberates and informs them of the proposal it intends to make; if it notes conciliation between the parties as to the classification and/or the sum proposed, it prepares an official report of the agreement reached.

In the absence of conciliation, the CNIS announces the date on which it will submit a conciliation proposal to the parties, setting out the points outlined.³¹⁹ On that date, the parties (and their representatives, where required) are notified of the conciliation proposal.³²⁰

By law, the CNIS drafts a conciliation proposal within six months of the referral. In practice, it usually takes between nine and 12 months.

At the same time that it notifies the conciliation proposal, the CNIS reminds the parties that this proposal constitutes an agreement if, within a month of its notification, neither of them has brought the matter before the competent judicial court to dispute the proposal.³²¹

If the case is brought to the judicial court before the CNIS, it must stay proceedings in accordance with Article R. 615-30 of the IPC, in principle until the expiry of the six-month period that the CNIS has to prepare a conciliation proposal. In practice, the court waits for the conciliation proposal, even beyond this six-month period.³²²

13.4.5.2 Cases before the courts

This section primarily concerns the competence of courts³²³ and industrial tribunals: the cases themselves follow the usual rules of the CCP, with the exception that cases following a CNIS proposal are addressed by the judicial court sitting in chambers and the proceedings are therefore not public.³²⁴

The different types of disputes brought before the courts will be discussed:

• The courts have exclusive jurisdiction to rule on the status of inventor; this matter does not fall within the competence granted to the CNIS under Article L. 615-21 of the IPC, with referral to the CNIS assuming the filing of a patent application and the designation of the applicant as inventor.

• Disputes on the classification of inventions and the amount of additional remuneration or fair pricing are shared with the CNIS; a significant proportion of disputes concern setting amounts of additional remuneration.

The first issue is jurisdiction: it is widely known that disagreements that may arise during any private employment contract fall, in principle, under the exclusive jurisdiction of industrial tribunals. However, industrial tribunals have no jurisdiction to hear disputes assigned to another court by law.³²⁵ In industrial property, Article L. 615-17 of the IPC establishes that civil action and applications for invention patents, “including cases provided for in Article L. 611-7”, shall be brought exclusively before the Paris Judicial Court.³²⁶

The words “including cases provided for in Article L. 611-7” were added to Article L. 615-17 of the IPC by Act No. 2014-315 of March 11, 2014. At the time, observers saw, in this amendment, the intention of the legislature to bring disputes concerning employee inventions under the exclusive jurisdiction of the Paris Judicial Court.

In general, Article L. 615-17 of the IPC (and similar provisions in other IP laws) are interpreted by the Court of Cassation by applying the principle of “specific rules”: disputes only fall under the jurisdiction of a specialized judicial court when they involve the application of specific rules in the IPC.³²⁷

Most disputes concerning employee inventions have long been brought before the CNIS and the Paris Judicial Court.

Through a decision of May 3, 2018, the Social Chamber of the Court of Cassation³²⁸ ruled that claims for remuneration for “inventions” that were neither patentable nor theoretically patentable fell under the jurisdiction of industrial tribunals when they do not require assessment of the existence or non-existence of a patent right.³²⁹

It has become more common for employees to include ancillary claims relating to creations – software or inventions – in disputes concerning their dismissal. In the above-mentioned decision of 2018, the Social Chamber of the Court of Cassation recognized the jurisdiction of the industrial tribunal in a dispute in which an engineer from an IT company, who had been fired, had submitted claims for patentable software. The Court stated that:

[...]the employee sought the benefit of additional remuneration for the invention by calling for the implementation of Article 75 of the National Collective Agreement for Technical Consultancy Firms, Engineering Consultancy Firms and Consultancy Firms of December 15, 1987 (SYNTEC) [...].³³⁰

The Social Chamber recently clarified its case law in a case where an employee, upon being fired, applied to the industrial tribunal for additional remuneration for an invention that was not the subject of a patent application. The employer contested the claim on the grounds that the products to which the invention in question related “had not been the subject of patent applications and it had not been demonstrated that they would be patentable.” Logically, as it was necessary to examine the patentability of the invention to resolve the dispute, the Court concluded that the additional remuneration action fell within the exclusive jurisdiction of the Judicial Court.³³¹ The ruling indicates that:

[...] it follows from Article L. 615-17 of the Intellectual Property Code that action brought by an employee who has made an invention belonging to the employee, in regard to the payment of additional remuneration in implementation of Article L. 611-7 of the same Code, falls under the exclusive jurisdiction of the Judicial Court.

Independently of the question of jurisdiction, an initial dispute brought before the Paris Judicial Court concerns the status of inventor. As indicated earlier, the CNIS is not considered competent to rule on the status of inventor, as it was established to hear “any dispute concerning the implementation of Articles L. 611-7 and L. 611-7-1”:³³² as establishing the status of inventor is a prerequisite for applying those articles, it must necessarily precede their application.

Assessment of the status of inventor involves determining the extent to which the purported inventor was able to make a contribution to the invention claimed. That is what the Court of Cassation stated in a ruling where it considered that the inventor:³³³ “was not merely an employee responsible for producing working drawings of the displays designed by the team of engineers; the Court of Appeal, which thus characterized the inventive step used by this person, [...] had justified its decision.”

This case law continues to be applied, with the difficulty lying in when to assess the status of inventor: should one consider the inventive contribution when the invention is made or, on the contrary, assess it when the court gives its ruling, in view of the prior art as it stands following the examination? That question appears not to have been settled, doubtless because it is theoretical; if it transpires that an invention is not patentable, the probability of a dispute arising over its exploitation (and over the remuneration owed to the employee inventor) would seem to be limited.

This dispute is highly fact-based and requires the respective contributions of the inventors to be identified years after the invention, which raises issues of evidence. Invention disclosures proposed by employers often invite inventors to specify their respective contributions, but in the form of percentages, without specifying the nature of the contributions; moreover, practice shows that inventors do not always provide the requested percentages.

The second type of dispute brought before the courts – or before the CNIS – relates to the classification of inventions. The question raised is thus that of the task assigned to the employer, regardless of whether it is inventive; the additional remuneration for an invention made in the course of employment is actually intended as a reward for the employee's invention, which is not equal to the value of the invention. Conversely, the fair price must reflect the value of the contribution. The fair price is thus, by nature, even more important than the additional remuneration: the employee inventor therefore has a clear interest in arguing that the invention is an invention made outside the scope of employment, whereas the employer has an incentive to argue that the invention is an invention made in the course of employment.

Article L. 611-7 of the IPC provides, first, that an invention falls into the category of inventions made in the course of employment when it is made by the employee in the performance “of an employment contract involving an inventive task corresponding to their actual duties.”

The first part of the definition does not pose any specific issue, with the law merely requiring the court to verify that the inventive task in the employment contract corresponds to the employee's actual duties. Systematically including an inventive task in employment contracts is therefore not decisive as the courts verify the duties assigned to the employees and the existence of an inventive task in their duties at the time the invention was produced.

Article L. 611-7 of the IPC then states that an invention falls within the category of inventions made in the course of employment when it is made by the employee when carrying out “studies and research explicitly assigned to them.”

An invention produced in the context of a one-off study and research task is an invention made in the course of employment. Most disputes on classification involve the assumption that employee inventors do not have an inventive task in their employment contract. The courts then undertake a factual analysis of the tasks assigned by the employer, using a highly pragmatic approach by focusing on the actual tasks carried out by the employee.³³⁴

The third type of dispute brought before the courts – or before the CNIS – concerns the amount of additional remuneration (or fair price). It is, by far, the most statistically significant type of dispute.

As indicated earlier, the law applicable to private sector employees does not specify the means of calculating additional remuneration; collective agreements are not much more specific. Article R. 611-14-1 of the IPC, on the other hand, provides specific calculation rules for civil servants and public officials and it has been clearly decided that those rules do not apply to private sector employees.³³⁵ Disputes on the calculation of additional remuneration therefore largely concern the implementation of collective agreements; unilateral practices established by employers may be invoked by employees, but the employees then argue that those practices are not enforceable against them in order to claim amounts higher than those paid to them.

The Court of Cassation long ago rejected the principle that additional remuneration should be determined on the basis of salary.³³⁶ that argument had been put forward by employers to limit additional remuneration.

In the same judgment, the Court also approved the proposed calculation for additional remuneration, in the following terms:

Given, secondly, that having stated that none of the parties were disputing the expert's conclusions on the legal framework for this additional remuneration, on the definition, scientific importance and challenges of the practical implementation of the invention, and on the importance of M.Y.'s personal contribution [...] the Court of Appeal was right to rule as it did, having not determined the amount of the additional remuneration owed to him solely on the basis of the economic value of the invention, as alleged by Hoechst.

Following that decision, the trial courts apply (in the absence of other provisions of collective conventions or agreements) the following criteria:³³⁷

• the inventor's personal contribution;

• the broader context of the research;

• the challenges of developing the invention;

• the economic significance of the invention.

The inventor's personal contribution is most often limited to merely taking into account the number of inventors, in the absence of additional clarifications on the respective contributions of the different inventors. The courts are reluctant, years after the invention and in the absence of the other inventors, to risk allowing the inventor who launched the dispute to minimize the contribution of those other inventors.

The criterion of the broader context of research calls for consideration of the circumstances under which the invention was made. Inventors often refer to the efforts they had to make to convince their employer of the importance of their invention. In contrast, it may be assumed that this criterion would be less important for an employee who invents in the context of a research program run by their employer.

The challenges of developing the invention indicate how much the employer has invested to exploit the invention. In other words, assessment of the economic significance must take into account not only the income generated by the invention, but also the amounts spent by the employer.

There remains the most discussed issue: economic importance. Employee inventors often claim amounts proportionate to the turnover of the products or services that incorporate the invention (or the corresponding profits), on the grounds that such turnover or profits are an indication of economic significance. The Court of Cassation has not taken a position on that issue, but the trial courts recall that "the salary bonus owed to the employee inventor may not in any case be treated as a license fee proportionate to turnover generated or profit made."³³⁸ This solution is logical, as the proportional remuneration is a bonus, but does not constitute a license. That said, significant exploitation should lead to higher additional remuneration.

Another aspect of the assessment of economic importance is the causal link between the invention and the commercial success of the products or services that incorporate the invention; that assessment does not differ vastly from assessments carried out by the courts to award damages for infringement. The classic example, for an equal turnover, is that the economic importance of an invention involving a medicine's active ingredient should be greater than that of an invention involving a marginal improvement to the production process.

In conclusion, the assessment of additional remuneration (as with damages for infringement) remains highly fact-based. Practitioners' attempts to identify strict mathematical rules are hampered by judges' obligation to assess the facts of each case.

The final type of dispute concerns fair prices, owed when the invention is an invention made outside the scope of employment and when the employer exercises the right of attribution. The law establishes that the fair price is set by the CNIS or the courts and that:

they will take into consideration all evidence that may be provided to them, including by the employer and by the employee, to calculate the fair price in accordance with both on the basis of the initial contributions of each party and the industrial and commercial utility of the invention.

It is true that the fair price is of a different legal nature from additional remuneration. This different nature is reflected in the average amounts in CNIS proposals. Between 2010 and 2023, the average additional remuneration, per invention, was 6,116 euros, while the average fair price, per invention, was 38,000 euros.

Those sums seem small to inventors in relation to the value of the invention; however, the fair price should not correspond to the value of the invention, as it may be assessed in an assignment agreement. The law stipulates that consideration be given to the initial contributions of the inventor and their employer.

In one of its few published decisions on the matter, the Paris Court of First Instance ruled:³³⁹

The fair price being the compensation for the allocation, its amount must be determined as at the date on which the claim of Mr. J.D.C. arose, independent of the subsequent industrial or commercial success or failure of the invention: only the potential industrial and commercial utility of the invention on the date the option is exercised may be taken into consideration and not the turnover attributed to its industrial implementation, which is not attributable to the employee but to the company in accordance with its own manufacturing, promotional and marketing capabilities, all subsequent evidence may only be used to inform the court of the circumstances at the time of allocation but not to determine the fair price directly.

It should be emphasized that the fair price is not equal to the value of the invention.

Again, setting a fair price is based on facts. The Court of Cassation has, nonetheless, specified a number of rules to help with assessment:³⁴⁰

If the fair price must be assessed as at the date when the employer exercises its right of attribution, evidence subsequent to that date may be taken into account to confirm the assessment of the invention's development potential.

As specified in the same ruling, "the fact giving rise to the payment of a fair price is the production of the invention", but the judge remains free to consider the economic reality presented years after the production of the invention.

In practice, it is still difficult to propose strict calculation rules in disputes based heavily on facts. The methods used for the CNIS proposals mentioned earlier are only indicative, as the number of cases remains very limited, with one or two cases per year. The number of cases before the courts – around 10 published decisions – is also too small to be statistically significant.

13.4.5.3 Statute of limitations for bringing action

Most actions brought by employee inventors occur at the expiry or termination of the employment contract, explaining why the statute of limitations is invoked by employers in almost all cases.

Actions brought by employee inventors are not subject to the specific statute of limitations for bringing infringement actions, as mentioned earlier, but rather to the general rules on statutes of limitations (Section 13.3.1.3). Regarding the procedure, pleas of inadmissibility based on the statute of limitations fall within the competence of the pre-trial judge, who may refer the case to the court, as mentioned earlier (Section 13.3.6.2.3).

The length of the statute of limitations depends on the nature of the employee's claims. Additional remuneration for inventions made in the course of employment is analyzed as a supplement to the salary. It follows the broader system for the statute of limitations regarding salaries: the statute of limitations is thus three years.³⁴¹ In contrast, for attributable inventions made outside the scope of employment, the fair price is considered a debt between the trader (the employer) and the non-trader (the employee inventor), with a five-year statute of limitations.³⁴²

13.4.6 Licensing disputes: compulsory licenses, essential patents

13.4.6.1 Licenses for a patent essential to a standard

The holders of patents essential to a technical standard that enable the interoperability of products meeting the standard must undertake to grant licenses under fair, reasonable and non-discriminatory (FRAND) conditions to anyone wishing to market products complying with the technical standard in question.

That principle, taken from competition law owing to the dominant market position conferred by holding an essential patented feature, is applicable, in Europe, to all standardization bodies. In telecommunications, the most important standardization institute is the European Telecommunications Standards Institute (ETSI), an association governed by French law and whose members develop the most widely used telecommunications standards in the world. The ETSI statutes, rules of procedure and IP rules, and the commitment made by holders of patents essential to a technical standard for each ETSI standard (FRAND commitment) are expressly subject to French law.

It has now been established, in French, British, American and Chinese jurisdictions, that the FRAND commitment includes a “third-party beneficiary” clause³⁴³ subject to the provisions of the former Article 1121 of the Civil Code, under which a provision may be made in favor of a third party where this is a condition of a provision made for oneself or of a gift made to another. The party who made such a provision may no longer revoke it if the third party has declared their intention to benefit from it.

Based on that provision, French case law has consistently recognized that the third-party beneficiary clause is valid if the beneficiary may be determined on the date on which it comes into force³⁴⁴ and that it creates, in favor of the third-party beneficiary, a direct and independent right against the promisor.³⁴⁵

The third-party beneficiary clause generally grants the beneficiary a simple entitlement, but it may also involve a real right and entail, for example, the transfer of ownership.³⁴⁶

As regards patents, it seems that the third-party beneficiary clause grants the beneficiary a right of use and the related obligation to pay consideration for such use. While, in principle, a contract cannot impose on a beneficiary an obligation entered into by other parties,³⁴⁷ French case law nonetheless accepts that the third-party beneficiary clause does not exclude, in the event of acceptance by the beneficiary, the possibility that the beneficiary will be bound by certain obligations.³⁴⁸

The right of use and the related obligation to pay consideration correspond almost exactly to a license, which lacks only the identification of the related patent(s) in order to match completely.³⁴⁹ The license must be obtained in writing (Article L. 613-8 in fine of the IPC) and must clearly identify the patents to which it relates (which ties in with the obligation identified by the CJEU in the first stage of the FRAND negotiations in the Huawei v. ZTE judgment³⁵⁰ for the patent holder to clearly identify the patents concerned).

For a patent-licensing contract with the status of a services contract,³⁵¹ such contracts exist regardless of whether a price has been agreed; Article 1716 of the Civil Code allows, in such cases, for the price to be determined by expert assessment, with the parties being, in any event, subject to the general principle of contractual negotiation in good faith³⁵² that obliges them to disclose relevant information and avoid tactics that could harm the negotiation process. A party who makes use of the patent while using such tactics may be found liable for infringement, while the patentee may be held liable in tort under French ordinary law.

This regime is to be compared with that of compulsory licenses, which constitute limitations on the exclusive right conferred by the patent and are described in detail in Section 13.3.2.5.4.

13.4.6.2 Breach of a licensing agreement (determination of competent jurisdiction)

13.4.6.2.1 Internal jurisdiction

Disputes concerning patent licenses only fall under the jurisdiction of specialist judges of the Paris Judicial Court when it is necessary to examine the existence or non-compliance with a right attached to a patent.³⁵³ Disputes on the determination of a license fee for a patent or a portfolio of patents essential to a standard, insofar as they require the examination of a right attached to a patent, fall under the jurisdiction of the Paris Judicial Court.

13.4.6.2.2 International jurisdiction

In a judgment of April 23, 2009, the CJEU³⁵⁴ ruled that a license agreement for an IP right (IPR) is not a contract for the provision of services within the meaning of the regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, and that to determine the jurisdiction competent to hear a payment claim under such an agreement, it was for the judge to determine, in accordance with their own conflict-of-law rules, the law applicable to the legal relationship in question and establish, in accordance with that law, the place of performance of the contractual obligation in dispute.³⁵⁵

French jurisdictions apply the connecting factor to the law of the country with which the agreement in question has the closest links.³⁵⁶ Judges must thus take into consideration the language in which the agreement was drafted, the place in which it was concluded, the parties' place of business, the law to which it is expressly subject and so on.³⁵⁷

Article L. 613-8 of the IPC establishes that the rights conferred by a patent application or patent may be invoked against a licensee who breaches any of the terms of their license.

13.4.7 Abuse of procedure and disparagement

13.4.7.1 Abuse of procedure

A party who brings undue legal action, whether it is the title holder who is bringing the infringement action or the party challenging its validity, may be held liable under general civil liability, as defined in Articles 1240 and 1241 of the Civil Code, without it being necessary to establish bad faith or an intention to cause harm.³⁵⁸

However, there are few examples in the case law in which abuse of the right to bring legal action is accepted, with access to the courts being a fundamental principle recognized in both constitutional case law and the case law of the European Court of Human Rights. The Court of Cassation requires judges to specify the exact circumstances under which the exercise of the right to bring legal action may constitute wrongdoing.³⁵⁹

In practice, the Paris Judicial Court bases its decisions on the following criteria:

The right to bring legal action is abused when it is exercised with knowledge of the total absence of merit of the action brought, or is inexcusably frivolous, requiring the other party to defend itself against an action or a means that nothing can justify except the desire to obtain what one knows to be wrong, an intention to harm, or indifference to the consequences of one's frivolity.

13.4.7.2 Disparagement

In France, freedom of expression is a constitutional right, but its abusive exercise can be punished, including in the context of disparagement, typically defined as the disclosure of information that could discredit the products or services of a third party,³⁶⁰ even if only in the eyes of a single client, and where harm, even if only non-pecuniary, arises from an act of disparagement.³⁶¹

As a result, “disclosure to a manufacturer’s clients of an infringement action that has not given rise to a judicial decision, and that lacks a sufficient factual foundation in that it is based solely on the legal proceedings initiated by the rights holder, constitutes wrongful disparagement.”³⁶²

In that regard, it is important to specify that the proceedings, the parties’ submissions and the evidence exchanged are not published. In contrast, pre-trial hearings and pleadings are public.

The parties, and in particular the patent holder, must therefore exercise caution in their communications with third parties, even those who could be described as infringers, including in letters of notification of infringement that the right holder is entitled to send under Article L. 615-1 of the IPC:

The sending of a letter to a company’s clients by the holder of European patents, exclusively concerning the licensing scheme implemented by the holder and drafted in threatening terms, with no explanation of the evidence supposedly constituting the alleged infringement, is not a mere notification to vendors of a risk of patent infringement in the event of their continued commercialization under Article L. 615-1, paragraph 3, of the Intellectual Property Code and, insofar as it questions the loyalty of that company and its supplier in the manufacture and commercialization of their products, constitutes an act of disparagement amounting to unfair competition.³⁶³

13.4.7.3 Publication of judicial decisions

Decisions are delivered in open court.

However, with regard to the publication or dissemination of judicial decisions, the case law makes it clear that such procedures (see Section 13.3.4.4) do not preclude the victim’s right, except in the event of abuse, to take, at their own expense, any other steps to publicize the ruling handed down in their favor.³⁶⁴

The first restriction on the spontaneous publication, unauthorized by the court, by one party to the proceedings lies in the demonstration of abuse consisting of an intention to cause harm or a use of this right of publication that diverges from its intended purpose or serves no useful purpose. It is thus wise for such a publication to be limited to the terms of the judicial decision without giving it an “excessive scope”³⁶⁵ or a meaning that it does not have, which may constitute disparagement of products or services.

The second restriction concerns the specific rules governing trade secrets. When a trade secret infringement is alleged, the judge may “at the request of a party or a third party, if the protection of this secret cannot be guaranteed otherwise and without prejudice to the exercise of the rights of the defense [...] adjust the grounds for their decision and the conditions of its publication to the requirements for protection of the trade secret.”³⁶⁶ In practice, a decision that does not refer to the full grounds will be made available to the public as it does not disclose protected elements. The full decision will only be disseminated to the parties affected by those grounds.

A third restriction also exists for the specific case of a natural person who runs a commercial business and whose privacy may be infringed as a result of their professional activities, which “may fall within Article 8 (of the European Convention on Human Rights) where [such activities] have repercussions on the manner in which they construct their social identity by developing relationships with others.”³⁶⁷

The law now stipulates that judicial decisions shall be made freely available to the public in electronic form,³⁶⁸ provided that the names of natural persons and any element that may jeopardize their privacy or safety are redacted. Legal persons who would like their names to be redacted from judicial decisions have, like all interested parties, a right of before the First President of the Court of Cassation,³⁶⁹ which is little used in practice.

13.4.8 Criminal proceedings

Criminal cases on patent infringement are rare. They are provided for under Articles L. 615-12 et seq. of the IPC. In particular, Articles L. 615-14 and L. 615-14-1 of the IPC stipulate that attempts to deliberately violate the rights of a patent holder, as defined in Articles L. 613-3 to L. 613-6 of the IPC, are punishable by three years’ imprisonment and a fine of 300,000 euros. When the offense has been committed by an organized gang or via an online public communication network, or where the offense involves goods that are hazardous to human or animal health or safety, the penalties are increased to seven years’ imprisonment and a 750,000 euro fine. In the event of repetition of the offences set forth in Article L. 615-14, or where the offender is or has been contractually bound to the injured party, the penalties incurred are doubled. In addition, guilty parties may, for a period of no more than five years, be deprived of the right to elect and be elected to commercial courts, regional chambers of commerce and industry, and chambers of trade, as well as industrial tribunals. The Code specifies the punishments applicable to natural persons; for legal persons, Article 131-38 of the Criminal Code establishes that the maximum fine applicable shall be five times as much as the fine applied to natural persons under the law governing the offense.

Article L. 615-17 of the IPC establishes that civil proceedings on invention patents shall be brought exclusively before the courts specified in the regulations. As this is an exception to the general rule on jurisdiction, the text is interpreted strictly and applies only to civil proceedings; specialization therefore does not apply to criminal courts.

Civil proceedings may be brought before a criminal judge at the same time as criminal proceedings (Article 3(1) of the Code of Criminal Procedure). They may also be brought before a civil court, separate from criminal proceedings (Article 4(1) of the same Code). However, in such cases, judgments are stayed until a final decision has been reached in the criminal proceedings, where such proceedings have been instituted (Article 4(2) of the same Code).

Criminal proceedings are introduced either at the initiative of the public prosecutor or by the victim of infringement who may, at their own initiative, register a claim for criminal indemnification with an examining judge, after having filed a complaint with the public prosecutor or having a direct summons issued by the criminal court.

The patentee may have infringing goods seized, as provided for in Articles L. 615-5(2) and R. 615-1 to R. 615-4 of the IPC, before initiating criminal proceedings.³⁷⁰ The patentee must bring proceedings on the merits in accordance with the last paragraph of Article L. 615-5 and within the time period established in Article R. 615-1 of the IPC.

Within that time period, the patentee may issue a direct summons to appear before the criminal court, or initiate proceedings to bring a civil action before the investigating judge,³⁷¹ which is admissible only on condition that the patentee has first lodged a complaint with the public prosecutor or the police and that the prosecutor has informed the patentee that they will not be bringing proceedings themselves, or that three months have elapsed since the complaint was made to the prosecutor or a copy of the complaint was sent to the police (Article 85(2) of the Code of Criminal Procedure, in the version resulting from Act No. 2007-291 of March 5, 2007).

The success of the proceedings is subject to evidence of intentionality. It must be demonstrated that the infringer was aware, on the one hand, of the existence of the patent and, on the other hand, that they were infringing the patent by reproducing its claims.

Under Article 121-7 of the Criminal Code, an accomplice to the criminal offense of infringement may also be prosecuted. An accomplice is a person who deliberately, through aid or assistance, facilitated the preparation or commission of the offense. Acts of complicity in infringement that may be established are essentially acts that took place prior to the main offense. However, such acts, if they constitute the supplying of or an offer to supply means intended for the principal perpetrator to commit the act of infringement, shall be considered infringement in their own right, through the provision of means under Article L. 613-4 of the IPC.

Determining the statute of limitations for civil proceedings depends on the court (civil or criminal) before which action is brought, in application of the principle of consistent statutes of limitations under Article 10(1) of the Code of Criminal Procedure.³⁷² If action is brought before a criminal court, the statute of limitations for an infringement claim is governed by the rules applicable to criminal proceedings (six years). If brought before a civil court, the statute of limitations is governed by the rules applicable to civil proceedings, as established in Article L. 615-8 of the IPC.

The criminal liability of a legal person does not preclude that of natural persons, offenders or accomplices for the same crimes, in accordance with the provisions of Article 121-2(3) of the Criminal Code. It is therefore possible to bring joint proceedings against a legal person and their legal representative as co-perpetrators of the infringement.

Under French law, personal liability of the representative(s) may only be invoked in the case of intentional misconduct of such severity that it is considered incompatible with the normal performance of their duties and, as such, “separable from the duties” of a representative.³⁷³ A representative who commits wrongdoing constituting an intentional criminal offense, thus separable from their social duties, is criminally liable to third parties who have suffered as a result of that wrongdoing.³⁷⁴

The criminal court hearing a patent infringement case has jurisdiction to rule on objections raised by the defendant (Article 384 of the Code of Criminal Procedure). The defendant may therefore challenge, through a plea in defense (see Section 13.3.2.5.1), the validity of the patent or the scope of the claims.

Article L. 615-7 of the IPC, on compensation for damages arising from infringement, is applicable in criminal proceedings, where it may be imposed alongside a fine.³⁷⁵