An International Guide to
Patent Case Management for Judges

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.