An International Guide to
Patent Case Management for Judges

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