13.5 Interactions with international standards and systems
13.5.1 Applicable EU laws relating to patents
France is a member state of the EU, the law of which is applicable in its legal system. There is a distinction between the standards derived from primary and secondary treaty law, and their specific rules of interpretation.
13.5.1.1 Primary EU laws relating to patents
Although primary law derived from the Treaties376 does not contain specific provisions on patent law, it reserves the adoption of measures “aimed at the establishment and functioning of the internal market”377 to the ordinary legislative procedure. The foundations of these measures include the promotion of scientific and technical progress.378 Additionally, the Treaties reserve the adoption of measures “relating to the creation of European titles to ensure uniform protection of IP rights within the Union, and to the establishment of centralized authorization, coordination and supervision regimes at the Union level”379 to the ordinary legislative procedure. The implementing provisions for those measures are defined by regulations.380
Article 17 of the Charter of Fundamental Rights of the European Union states the following in general terms:
- 1. Everyone has the right to own, use, dispose of and bequeath his or her lawfully acquired possessions. No one may be deprived of his or her possessions, except in the public interest and in the cases and under the conditions provided for by law, subject to fair compensation being paid in good time for their loss. The use of property may be regulated by law in so far as is necessary for the general interest.
- 2. Intellectual property shall be protected.
The CJEU protects IP as part of the fundamental right to property, as outlined in Article 17(2) and Directive 2004/48/EC.381 The Court also guarantees the “fundamental right to effective judicial protection.”382 These general principles of EU law are equal in value to the Treaties and are implemented in accordance with Article 11 of the First Protocol to the ECHR, which protects property rights and the right to freely engage in economic activity. Thus, the infringement of such rights may only be contemplated in so far as it is in the public interest, is proportionate to the aim pursued and does not undermine the substance of those rights.383
EU law provides exceptions to competition law to protect the IPRs of patent holders. Thus, competition law does not, in principle, consider patent ownership to be an illegal agreement384 or an abuse of a dominant position,385 but rather, it sets out the conditions for applying such rules to patents. That also applies to the FRAND licensing regime386 and free licensing.387 Challenging the validity and scope of a patent is part of normal competition.388 The CJEU directly protects the right of the patent holder to prohibit the marketing of an infringing product from another member state unless the patent holder has placed the product on the market. This is an exception to the prohibition of quantitative restrictions on imports and exports in the EU.389
13.5.1.2 Secondary EU laws relating to patents
EU law does not cover substantive law relating to IPRs, such as patents, except in the case of supplementary protection certificates. However, several specific texts apply to procedural matters.
Secondary EU law applicable in France protects the effectiveness of IPRs, including those of patent holders, through Directive 2004/48/EC. The legislation also establishes rules regarding territorial jurisdiction and the mutual recognition of court decisions through Regulation (EU) No. 1215/2012.390 The legislation also contains provisions relating to certain types of patents, particularly in the pharmaceutical field, as well as the European unitary patent system.
Directive 2004/48/EC of April 29, 2004, on the enforcement of IPRs, has been transposed into the French IPC. The Directive aims to eliminate distortions of competition and foster an environment conducive to innovation and investment by safeguarding IPRs, including industrial property rights.391
The Directive essentially creates procedural rights for rights holders, authorized users, and collective management and professional organizations. It stipulates that remedial measures and procedures must be fair and equitable without being unnecessarily complex, costly or prone to delay. It further states that the measures and sanctions provided by national law to protect such rights must be “effective, proportionate and dissuasive.”392
The Directive’s main provisions enable rights holders to gather evidence before trial,393 including tax and commercial bank documents in the event of commercial-scale infringement.394 More broadly, the Directive provides for a right to information in the event of proven infringement.395 The Directive provides for remedies,396 including damages (such as lump sums), the recall and destruction of infringing products, and the prohibition of further infringement. Precautionary measures that may be ordered in summary proceedings to protect IPRs, as well as publication measures, are also mentioned.397
The Directive has been transposed with more favorable provisions regarding the seizure of infringing goods and damages for the right holders.
Directive 2016/943/EU of June 8, 2016, defines trade secrets and regulates their protection against “unlawful acquisition, use and disclosure.” Recognizing that trade secrets are an important factor in a business’s return on investment, the Directive considers the disclosure of such a secret to be unlawful if it is done without the consent of its holder, in an unlawful manner, or contrary to honest commercial practices.398 However, exceptions are provided for where legitimate interests are at stake.399 Above all, the Directive establishes provisions for penalties and remedies that must be proportionate and dissuasive,400 as well as procedural rules to protect trade secrets during court proceedings401 and when court decisions are published.402
Regulation (EU) No. 1215/2012 of December 12, 2012, establishes rules on jurisdiction in civil and commercial matters, including patent disputes. It is based on the principle of the court of the defendant’s jurisdiction,403 with exceptions mainly relating to the place of performance of a contractual obligation or where a harmful event occurred.404 The Regulation does not apply overseas; such territories are covered by the 1968 Brussels Convention.405 The Regulation recognizes and enforces406 in all EU member states court decisions issued by a court in another EU member state without further proceedings, applying the principle of mutual recognition of court decisions407 using a standardized form.408
Regulation (EU) No. 1257/2012 of December 17, 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection, establishes the European unitary patent in 25 participating states.409 It falls within the exclusive jurisdiction of the UPC for the 18 member states that have ratified the Agreement on a Unified Patent Court,410 which entered into force on January 1, 2023. The unitary patent aims to promote scientific and technical progress by providing easier, less costly and legally secure access to the patent system. As an instrument of enhanced cooperation, it may evolve legally over time. It is based on a unitary protection register411 that treats the patent as a national patent in all participating states412 as soon as it is published by EPO.413 However, the Regulation requires a single set of claims.414 It provides a protection mechanism that allows the patent holder to prevent third parties from committing acts that infringe on their rights415 and sets out the conditions for licenses. On the same day, Regulation (EU) No. 1260/2012416 was adopted. It stipulates that, in the event of a dispute, the patent holder must translate the patent into the language of the alleged infringer's state of residence or the place of infringement, at the alleged infringer's request.417 The systematic translation of patents filed in English is provided for, but only on a transitional basis.418 The CJEU resolved legal obstacles relating to the requirement for uniform application of EU law and its language regime in appeals initiated by Italy and Spain.419
Regulation (EC) No. 469/2009 of May 6, 2009,420 concerning the supplementary protection certificate for medicinal products, is designed to promote pharmaceutical research. It does so by extending the term of protection conferred by the basic patent from the time between the filing of the application and the date of the first marketing authorization. That period is reduced by five years and cannot exceed five years in total. A supplementary protection certificate is only issued if the product is protected by a patent and has been granted a first marketing authorization421 in accordance with Directive 2001/83/EC, Regulation (EU) No. 2019/6 of December 11, 2018422 or Regulation (EC) No. 1610/96 of July 23, 1996.423 Combined with those texts, the Regulation has given rise to extensive case law from the CJEU and has also been applied directly by the Court of Cassation.424 Regulation (EC) No. 1610/96 of July 23, 1996, establishes a similar mechanism for a supplementary protection certificate for plant protection products. It covers substances and mixtures that contain active ingredients used on plants.
The above key directives and regulations are supplemented periodically in the field of patent law by additional material, which has, however, given rise to few disputes. Thus, registering a patent may be considered an economic activity subject to value-added tax (VAT) under Directive 2006/112/EC of November 28, 2006.425 Furthermore, Regulation (EC) No. 1383/2003 of July 22, 2003, is interpreted as providing litigants with a right of recourse in the event of infringement of an IPR.426
13.5.2 Rules of interpretation of EU law
EU law is directly integrated into the French legal system and is applied and interpreted427 by French courts in accordance with the decisions of the CJEU, the only body that can declare it invalid.428
Integrating EU law creates an “ever closer union among the peoples of Europe”429 and requires specific application rules based on its primacy, loyal application and the preliminary rulings procedure.
13.5.2.1 Primacy of EU law
Like any international treaty, EU law takes precedence over national laws and regulations.430 This means that, in the event of a conflict, national laws and regulations must be set aside in order to apply EU law. Their creation must also be prevented if they are contrary to EU law.431
The primacy of EU treaties and regulations is achieved through their direct applicability to individuals within their jurisdiction.432 Directives create a more complex situation by leaving it up to member states to transpose them to achieve their intended outcomes.433 In a dispute between individuals, the parties must rely on domestic laws that transpose the directive; they cannot invoke its provisions directly against the opposing party, subject to the following qualifications.
Thus, judges applying the law that transposes a directive or any other EU law must apply the principles of interpretation derived from the case law of the CJEU:
The principle of effectiveness of EU law requires judges to ensure that the application of the rules does not render the exercise of rights conferred by EU law impossible or excessively difficult in practice.434
The principle of equivalence requires judges to verify that internal procedural rules, which are autonomous within each member state, do not treat situations covered by EU law less favorably than those covered by domestic law.
The principle of consistent interpretation requires judges to interpret domestic law in light of the relevant EU law and its purpose so as to achieve the result set out therein, using all the discretion available to them.435
However, the principle of consistent interpretation cannot be used to set aside a domestic law that transposes a directive, even if it is contrary to the directive due to incorrect transposition. It also cannot be used to disregard fundamental rights or general principles of law. For example, it cannot be used to call into question situations that have been legally established by a final court decision or by the expiry of a statute of limitations.436 On the other hand, judges may refer questions for preliminary rulings to interpret EU law and ascertain whether an interpretation in conformity with EU law can be achieved.437
13.5.2.2 Application of loyalty in EU law
The principle of loyal application in EU law implies that the judge applying such law shall adhere to the principle of mutual recognition.438
Therefore, French judges must consider decisions made by authorities, including courts, in other EU member states to be equivalent to those made at the national level.
In order to demonstrate loyalty in the application of EU law, judges must refer a question of law that presents a difficulty of interpretation to the CJEU. Said referral must be made in accordance with Article 267 of the TFEU.
A preliminary ruling may only be requested from the CJEU by a body that possesses the characteristics of a court or tribunal. Such a body essentially guarantees independence and impartiality and exercises decision-making powers.
The form of preliminary questions is characterized by its flexibility, which is further elaborated upon in the context of practical recommendations for courts.439 These recommendations underscore the imperative for the court to specify its national law with precision, encompassing the case law applicable to the particular dispute under its jurisdiction. Furthermore, in the judgment referring the question for a preliminary ruling, the court may also highlight elements that may assist the CJEU, including relevant doctrine, and give its opinion on the interpretation of EU law. If deemed necessary, the Registry of the CJEU may request that the referring court provide clarification on specific aspects of the dispute.
A preliminary ruling requires the national court to stay proceedings pending a response from the CJEU. In exceptional circumstances, it may request that the case be dealt with under the expedited procedure, which is most often used in cases involving measures limiting individual freedom.
Individuals involved in the legal proceedings may not submit a question to the CJEU for a preliminary ruling themselves. However, the parties retain the right to propose a question and, in practice, they do so in many cases. They are welcome to seek academic advice to support their arguments on the relevance of a question.
The Court of Cassation, like any court whose decisions are not subject to appeal under domestic law, is required to refer questions for a preliminary ruling,440 unless it finds that the question is not relevant or that the question has already been interpreted by the CJEU in a manner that is “so obvious as to leave no scope for any reasonable doubt.”441
A violation of EU law is considered a malfunctioning of the justice system, entitling the party who has suffered harm as a result to compensation. However, this liability is strictly assessed and requires proof of a clear violation of the applicable law or well-established case law of the CJEU.442
13.5.3 European Patent Convention
The European Patent Convention (EPC) sets forth the legal framework governing European patents.
Article 2(2) of the EPC specifies that a European patent, once granted, is subject to the same regulations and effects as a national patent, contingent upon the provisions outlined in the EPC. Consequently, the French part of a European patent will be subject to the same regulations as a French patent, unless the EPC stipulates otherwise.
For example, in matters of validity (Articles 52 et seq.), extent of protection (Article 69 of the EPC and its interpretative protocol), or revocation (Article 138), national courts must apply the provisions of the EPC directly. The objective is to standardize the interpretation of patents before national courts. However, the taking of evidence, title, infringement and remedies are dealt with under national law (Article 64(3)).
13.5.3.1 General overview of the interrelationship between proceedings before EPO and national proceedings
Article 99(2) of the EPC states that “the opposition shall apply to the European patent in all the Contracting States in which that patent has effect.” Consequently, when an opposition is filed with the EPO against a European or unitary patent, the decision taken at the conclusion of the procedure (revocation, maintenance or limitation of the patent) will automatically and uniformly apply in all the Contracting States designated by that patent, in particular and where applicable in France. In the event of a patent revocation, the patent will be considered as having had no effect in the countries concerned.
In accordance with Article 139(3) of the EPC, the French legislature has chosen to implement a distinct cumulative regime for unitary patents and conventional European patents (see Section 13.2.1.4).
The grant of a European patent (subject to an opt-out) and the absence of opposition, or its maintenance as granted following opposition proceedings before the EPO, also have consequences for any corresponding French patent that covers the same invention. The French patent is granted to the same inventor or their successor in title and must share the same filing or priority date (these three conditions being cumulative).
According to Article L. 614-13 of the IPC, the French patent is rendered ineffective in this case, and the European patent supplants it for all claims that are common to both patents. This exception is not applicable if the European patent remains exclusively within the jurisdiction of the UPC and is not subject to an opt-out, as outlined in Article L. 614-13(II).
That substitution takes effect in one of three instances: (i) as of the date on which the opposition period expires without an opposition having been filed; (ii) as of the date on which the opposition proceedings are closed; or (iii) as of the opt-out, if the latter occurs after the two preceding dates.
Where the European patent is maintained in an amended form, such that some of its claims differ from their French equivalents, the claims of the French patent and the amended European patent may also coexist, including in the event of an opt-out.
13.5.3.2 Rules of interpretation by the national court and coordination with the case law of the EPO Boards of Appeal
While not bound by the case law of the EPO Boards of Appeal,443 French courts may nevertheless adhere to the principles derived from it. For instance, when evaluating the inventive step of a patent, judges may draw inspiration – with or without express reference – from EPO standards, particularly the so-called “problem-solution” approach, which serves as its standard test for the inventive step, when requested by the parties involved.
This approach is consistent with the objective of convergence in the interpretation of common legal texts, as established by the Court of Cassation in its ruling of August 30, 2023.444
13.5.3.3 Effects of proceedings before EPO on a national dispute
In France, an infringement action may be based on a patent application, including a European patent application that designates France (subject to translation requirements, see Articles 67 of the EPC and L. 614-9 of the IPC). In such cases, Article L. 615-4 of the IPC stipulates that the court must stay proceedings until the patent is granted.
A European patent that is subject to opposition proceedings before the EPO could be revoked or amended by the Office. That, in turn, could result in a conviction for infringement being issued for a title that no longer exists or the scope of which has changed. Thus, where an infringement action is initiated before a national court in the case of a European patent for which such proceedings are pending, the presiding judge must determine whether the national action should proceed or whether it would be prudent to stay proceedings until the opposition has been resolved.
Under French law, judges are not obligated to stay proceedings in such cases. The determination of whether to exercise such discretion rests with the presiding judge, who must assess, in light of the particulars of the case and with a view to the effective administration of justice, the suitability of such an action.
The aforementioned regulation pertaining to the automatic stay of patent applications (Article L. 615-4 of the IPC) does not apply to European patents that have already been granted, or to opposition proceedings relating to them.
Two distinct approaches have emerged in French case law with regard to European patents that have been granted and are subject to opposition.
In the first category of cases, the court grants or denies a stay following an examination of the particular circumstances of the case. For instance, the stay is granted if the opposition arguments appear prima facie serious or if the proceedings before the EPO are sufficiently advanced. Conversely, the stay is denied when the court, after a summary examination, finds that the seriousness of the newly presented arguments and documents relating to the prior art in the opposition proceedings is not sufficiently substantiated.445 Alternatively, the stay is denied when the proceedings before the EPO have already been pending for three years, so that the resolution of the dispute cannot be further delayed.446
In the second category, the decision regarding the stay is made upon a more abstract assessment, or even a position of principle (e.g., because opposition proceedings before EPO are ongoing and therefore cast doubt on the validity of the patent, or because the judge considers that it is not their place to prejudge their outcome, which perception could be conveyed by the order of a stay).
If a stay is ordered, one of the parties may petition for its revocation and the resumption of proceedings. The judge may also revoke the stay. For instance, a stay that was initially ordered at the commencement of opposition proceedings may be subject to a request for revocation following a decision by the opposition division in favor of the patentee, even if the stay was initially ordered to remain in effect until a final decision by the EPO.
13.5.4 Rules on the international jurisdiction of French courts
13.5.4.1 Brussels Ia Regulation
In patent matters, the jurisdiction provisions under Regulation (EU) No. 1215/2012 of December 12, 2012 (Brussels Ia Regulation) apply.
Under Article 4 of the Regulation, individuals residing within the territorial boundaries of a member state are subject to the jurisdiction of the courts in that member state, irrespective of their nationality. Individuals who are not nationals of the member state in which they are domiciled are subject to the jurisdiction of that member state. Therefore, the aforementioned article establishes the jurisdiction of the court of the defendant's domicile as a matter of principle.
The Brussels Ia Regulation also provides for optional jurisdiction.
The place of the tort: Article 7.2 of the Regulation first offers the claimant the possibility of bringing proceedings before "the courts of the place where the harmful event occurred or may occur", thereby directly determining the competent court within the member state. This ground for jurisdiction is most frequently invoked in patent infringement cases. It enables the owner of a French or European patent designating France (excluding unitary patents) to initiate legal proceedings against any individual or entity infringing the patent, irrespective of the defendant's domicile.
The location of the co-defendant: Article 8.1 of the Regulation stipulates that an individual domiciled in the territory of a member state may be subject to legal action "where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings."
In the Solvay judgment,447 the CJEU clarified that in instances where two or more companies established in different member states, in proceedings pending before a court of one of those member states, are each separately accused of committing an infringement of the same national part of a European patent by virtue of their performance of reserved actions with regard to the same product, “irreconcilable judgments” could result from separate proceedings. Such cases can constitute “related actions” and it is for the national court to assess whether that is so, taking into account all the relevant information in the case in question.
In France, the provision contained in Article 8.1 was the subject of a ruling by the Court of Cassation on June 29, 2022.448 In that case, the Court of Cassation reversed the decision of the Paris Court of Appeal, which had declined to adjudicate on the merits of acts of infringement committed abroad. The refusal was based on CJEU case law449 relating to Article 8.1. The Court of Cassation has indicated that a French court may adjudicate cases involving acts of infringement committed in multiple member states, provided that said acts concern the same national part of a European patent relating to the same product. The Court has further noted a risk of irreconcilable judgments if such cases are be judged separately. It stipulates that the national court is responsible for evaluating this risk, taking into account all the factors specific to each case. In the case at hand, the Paris Court of Appeal had transgressed those principles by declining to examine the possibility of such a risk, despite the fact that Hutchinson had alleged infringements in France, Germany and Great Britain of the same national parts of its European patent relating to the same product.
Under Article 24(4) of the Regulation, the courts of the member state in which the application was filed or the registration was made retain exclusive jurisdiction over the validity of the title, including in instances where the matter is raised by way of exception.
The recent CJEU judgment in BSH v. Electrolux450 has shed considerable additional light on the applicable jurisdictional rules in cases of patent infringement involving European patents with multiple national designations, including those outside the EU. In the judgment, the question arose as to whether the Swedish courts, which had jurisdiction on the basis of the defendant’s domicile (pursuant to Article 4 of the Regulation), could hear cases of infringement affecting national designations of the European patent, including those relating to third countries, even though the validity of those titles was contested by way of exception. In response, the CJEU delineated a distinction between the jurisdiction of a member state of the EU or state party to the Lugano Convention, and451 that of a third country that is a member of the EPC:
In the first case, the court retains its jurisdiction to proceed with the infringement case, while also maintaining the prerogative to stay proceedings.
In the second case, Article 24.4 does not apply. Consequently, the court may rule on validity on an inter partes basis, thereby respecting the sovereignty of the state in question.
Such extension of jurisdiction also applies to provisional measures. Moreover, Article 35 of the Regulation permits the request for provisional and protective measures from the courts of a member state even if the courts of another member state have jurisdiction to hear the merits of the case. However, the scope of such measures is then limited to the territory of the state of the court seized, which considerably reduces their effectiveness in combating cross-border counterfeiting.452
13.5.4.2 French private international law
French private international law establishes extensive rules of jurisdiction based on French nationality. Article 14 of the Civil Code ensures that French nationals have the right to initiate legal proceedings in French courts, regardless of their role in the case. This rule, which was once a matter of principle, has become subsidiary in application. Its application requires that the defendant not be domiciled in France and that no ordinary criterion of jurisdiction justify the jurisdiction of the French courts.
Article 6.2 of the Brussels Ia Regulation states that “any person domiciled in a Member State may, whatever his nationality, avail himself in that Member State of the rules of jurisdiction there in force [...]” That privilege therefore extends to all plaintiffs domiciled in France.
In the event of an infringement that takes place partially in France, the subsidiarity of Article 14 of the Civil Code raises questions. Article 46 of the CCP establishes territorial jurisdiction, limited to harm caused in France. Therefore, it would be possible to combine Article 14 of the Civil Code (for harm caused abroad) and Article 46 of the CCP (for harm caused in France).453
13.5.4.3 Anti-suit injunctions
An anti-suit injunction is a legal mechanism that is part of ordinary law. It is a tool that a court can use to restrain a party from bringing or pursuing legal proceedings before a foreign court.
In principle, anti-suit injunctions are not permitted in the EU under the Brussels I Regulation, as was reiterated in the West Tankers Inc. ruling by the Court of Justice of the European Communities on February 10, 2009.454 The Court determined that anti-suit injunctions are incompatible with the Brussels I Regulation, as they may hinder its effective implementation. European case law emphasizes that prohibiting a party from bringing proceedings before a foreign court “undermines the mutual trust that member states place in each other’s legal systems and judicial institutions, on which the system of jurisdiction under Regulation No. 44/2001 is based.”
That said, an anti-suit injunction issued by a court outside the EU may be recognized in France. In a ruling dated October 14, 2009, the Court of Cassation held that “an anti-suit injunction which, outside the scope of conventions or Community law, is intended solely [...] to punish the breach of a pre-existing contractual obligation is not contrary to international public policy.”455 However, such recognition remains contingent upon adherence to the standard criteria for exequatur, particularly with regard to conformity with international public policy and the absence of any fraudulent activities.
That approach applies primarily in situations where the injunction is intended to enforce a jurisdiction clause that has been mutually agreed upon by the parties. The Court of Cassation has determined that there is no denial of access to the courts when the purpose of the decision is to enforce a mutually agreed upon clause.
13.5.5 Related actions and lis pendens
13.5.5.1 Related actions
Article 30 of the Brussels Ia Regulation stipulates that in instances where related actions are underway in courts of different EU member states, the second court may stay proceedings. The application of intra-European related actions is contingent upon the prior submission of related claims to two courts of member states that have jurisdiction under European rules or under their domestic law.
Under Article 30(3) of the Regulation, claims are considered related “where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”
As a stay of proceedings is a discretionary measure, the decision to grant it lies with the judge.456
With regard to international related actions, claims falling within the jurisdiction of an EU member state under Articles 4, 7, 8 or 9 of the Regulation are subject to related actions between a court of a member state and a court of a third country.
Three cumulative conditions must be met:
The court of the member state must determine that it is in the interests of justice to hear the related claims together in order to avoid irreconcilable judgments (Article 34(1)(a) of the Regulation).
The decision of the third state must be likely to be recognized and enforced in the member state (Article 34(1)(b)).
The stay of proceedings must be necessary for the proper administration of justice (Article 34(1)(c)).
13.5.5.2 Lis pendens: parallel infringement and non-infringement proceedings
Intra-European lis pendens presupposes that two courts in member states are hearing the same case. For intra-European lis pendens to apply, those courts must have jurisdiction, and the cases must involve the same subject matter, cause of action and parties.
In such cases, Article 29 of the Regulation (formerly Article 21 of the Brussels I Convention) provides that where claims having the same subject matter and cause of action are brought between the same parties before courts of different member states, the second court shall of its own motion stay proceedings until the jurisdiction of the first court is established.
As with intra-European related actions, international lis pendens allows the second member state court to stay proceedings on a discretionary basis only when it has jurisdiction under Articles 4, 7, 8 or 9 of the Regulation).
Two conditions must be met for that to occur. First, the court of the third country must be capable of rendering a decision that will be recognized and enforced in the member state (Article 33(1)(a) of the Regulation). Second, the court of the member state must determine that a stay of proceedings is necessary for the proper administration of justice (Article 33(1)(b)).
The “Italian torpedo” was a common strategy employed by a party planning to market a potentially infringing product in Europe, whereby it would file declaratory actions for non-infringement in a country where proceedings typically take longer, particularly in Italy. The initiation of such legal proceedings would result in the stay of ongoing judicial proceedings by foreign courts (such as in Germany or France) owing to the existence of ongoing proceedings in Italy. The patent holder was then unable to enforce its patent in other European jurisdictions owing to the applicable lis pendens rules.
The judgment of the Court of Justice of the European Communities in Gasser v. Misat nevertheless refuses to allow a derogation in the presence of such practices.457 French courts have on multiple occasions succeeded in undermining that strategy, ruling that it constitutes a circumvention of the jurisdiction rules set forth in the Regulation.458
13.5.6 European and international judicial cooperation
International judicial cooperation is sometimes required in patent litigation, particularly where an invention, its exploitation and acts of infringement may span multiple jurisdictions. The French system operates within an international and European framework that provides for certain mechanisms of mutual legal assistance and mutual recognition of judicial decisions.
France is a participant in international judicial cooperation, pursuant to several legal instruments.459
At the international level, France is a signatory to the Hague Convention of 18 March 1970 on the taking of evidence abroad in civil or commercial matters. It primarily governs the issuance and execution of international letters rogatory, that is, requests sent by a court to a foreign authority to conduct investigative acts (such as hearing witnesses, producing documents and obtaining expert opinions). The convention also permits the taking of evidence by “commissioners” (who may include private individuals or lawyers).
Prior to the entry into force of the new Regulation No. 2020/1783 on cooperation between the courts of the member states in the taking of evidence in civil or commercial matters (taking of evidence), the Paris Court of Appeal had noted460 that the Hague Convention, in force between France and the United States, applies exclusively to the taking of evidence abroad in civil or commercial matters in the context of a dispute concerning the admissibility and enforceability in France of an American order directing the production of documents held by a French bank. In this case, it was determined that the procedures outlined in the Convention had not been adhered to, and as a result, the evidence located in France could not be seized based on an American decision that did not comply with the Convention’s procedures.
At the European level, Article 131 of the EPC provides that “the European Patent Office and the courts or authorities of Contracting States shall on request give assistance to each other by communicating information or opening files for inspection.”
Regulation No. 2020/1783, which replaced Regulation No. 1206/2001, is intended to streamline the transmission and execution of requests for measures of inquiry between EU member states. It enables a French court to submit a request directly to a court in another member state for the purpose of obtaining evidence, without the involvement of a ministry or authority of either of the two states concerned. The Regulation establishes strict deadlines for the execution of requests. This instrument governing letters rogatory is especially important in practice because it is in force in all EU member states (except Denmark). Above all, it takes precedence over all other international treaties in the areas covered by its scope, including the Hague Convention. The latter remains a useful tool, particularly because its scope is limited to measures of inquiry, excluding other judicial acts. However, its role in relations between member states has diminished significantly.
International judicial cooperation is sometimes used to obtain evidence located abroad, serve procedural documents on foreign parties or enforce decisions.
Under certain provisions of foreign national law, it is thus possible to seek evidence on the territory of a state for the purposes of litigation before French courts (e.g., the discovery proceeding provided for in Section 1782 of Article 28 of the United States Code). These provisions are implemented regularly. For example, in Lufthansa Technik AG v. Astronics AES, Panasonic Avionics, and Thales Avionics,461 Lufthansa Technik initiated several discovery proceedings in the United States under Section 1782 against US companies. The purpose of those proceedings was to obtain information concerning, in particular, the volumes of disputed products sold or delivered in France. Following that initiative, American courts ordered the transmission of relevant documents, subject to protective orders guaranteeing confidentiality, for the purposes of the proceedings initiated in France.
Conversely, French evidence-gathering measures may be used for the purposes of a trial abroad.
French courts are committed to safeguarding the fundamental rights of the parties involved. That is exemplified by the courts’ adherence to the adversarial principle and the protection of business secrecy during the execution of international investigative measures. Additionally, the courts ensure that evidence gathered in France is not used abroad without the authorization of the relevant authorities.462
13.5.6.1 Execution of international letters rogatory in France
A request for international legal assistance is formalized through an “international letter rogatory” (letter of request) when the objective is to gather evidence. In practical terms, it is a formal request made by a judicial authority of one state (the requesting state) to a judicial authority of another state (the requested state). The request is made for one or more acts specified in the request, to be carried out on the requesting state's behalf. The procedure is carried out exclusively between judicial authorities.
The international letter rogatory may concern any investigative act, including hearings, interrogations, confrontations, searches, seizures, expert reports, findings and the transmission of evidence, files or documents. At the request of the concerned party, the date and location of execution of the letter rogatory may be disclosed. The requested state is obliged to execute it in accordance with the procedures enshrined in its own law.
France is committed to upholding the principles of sovereignty, public order and the rights of the defense when executing international letters rogatory. When a foreign court sends a letter rogatory to a French court, it is executed in accordance with the rules of the CCP. Accordingly, the judicial court of the place of execution has exclusive jurisdiction over foreign letters rogatory (Article 735 of the CCP).
For European patents, Rule 120 of the EPC applies, and under the conditions set out therein, the French judge is permitted to hear a witness or expert under oath or in any other legally binding manner.
It is essential to adhere to the principles of a fair trial, particularly the adversarial standard, from the outset of foreign proceedings and, at a minimum, within the context of French proceedings.463
In principle, the execution of letters rogatory is free of charge (Article 748 of the CCP). However, the costs associated with witnesses, experts, interpreters or the application of a particular form are borne by the foreign authority (Article 748 of the CCP).
For the purposes of the Hague Convention and requests from the EPO, the central authority receiving letters rogatory for transmission to the competent court is the Ministry of Justice.
According to Article 23 of the Hague Convention, France does not implement letters rogatory of the "pre-trial discovery of documents" type commonly used in common law countries, unless the documents are specifically listed and directly related to the dispute.
The judge must refuse to execute the letter rogatory if it infringes on the sovereignty or security of the French State, if the request does not fall within their jurisdiction (Article 743 of the CCP) or if it has been transmitted irregularly (Article 745 of the CCP). Failure to comply with those provisions may result in the nullity of the acts thus executed.
However, the court may not refuse to execute a letter rogatory on the grounds of exclusive jurisdiction or the absence of an equivalent legal remedy (Article 742 of the CCP).
Any decision to refuse must be properly documented and communicated to the issuing court (Articles 746 and 747 of the CCP).
The documents certifying execution or refusal shall be transmitted to the requesting court by the same means as the initial letter rogatory (Article 747 of the CCP).
Rule 150 of the EPC does not specify grounds for refusal, but it does require compliance with national law when executing letters rogatory.
13.5.6.2 Requests for investigative measures abroad
In a similar vein, the French court may request the execution of an investigative measure by a foreign court by sending its request to the central authority of the territory of execution. This request must be made in accordance with the Hague Convention and Articles 734 to 734-2 of the CCP.
In the EU, requests for evidence abroad are governed by Regulation No. 2020/1783, referred to above. This regulation stipulates that requests for evidence are to be made directly from one court to another, without going through a central authority. However, the central authority makes itself available to provide assistance if necessary. A fully electronic transmission system will be introduced in the near future.464
CJEU, January 30, 2020, Case C-307/18, para. 41.
Court of Justice of the European Communities, July 12, 2005, Cases C-154/04 and C-155/04, para. 126.
CJEU, January 30, 2020, Case C-307/18; CJEU, March 25, 2021, Case C-611/16, paras 50–65.
Court of Justice of the European Communities, October 5, 1988, Case C-53/87.
CJEU, July 16, 2015, Case C-170/13.
CJEU, June 24, 2024, Case C-201/19P, paras 292–293 and Case C-176/19P, paras 181–182; CJEU, January 30, 2020, Case C-307/18, para. 81.
Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovenia, Slovakia, Sweden and, initially, the United Kingdom.
CJEU, May 5, 2015, Case C-147/13; CJEU, April 16, 2013, Cases C-274/11 and C-295/11.
See, for example, Court of Cassation, Com., March 19, 2025, Appeal No. 23-20.000; Court of Cassation, Com., February 1, 2023, Appeal No. 21-15.221; Court of Cassation, Com., September 16, 2014, Appeal No. 13-10.189; Court of Cassation, Com., November 26, 2013, Appeal No. 12-23.775.
CJEU, October 27, 2011, Case C-504/10, para. 46.
CJEU, April 9, 2014, Case C-583/12.
Court of Justice of the European Communities, October 22, 1987, C-314/85, paras 15–20; CJEU, April 28, 2022, Case C-415/20, para. 66; unless the validity of EU law is established of its own motion in order to apply it; in this regard, CJEU, July 3, 2019, Case C-644/17, para. 28, and Court of Cassation, Com., December 18, 2024, Appeal No. 23-13.250.
Court of Justice of the European Communities, March 9, 1978, Case C-106/77.
CJEU, November 17, 2022, Case C-175/21, paras 65–69; CJEU, December 21, 2021, Case C-497/20, para. 58.
Court of Justice of the European Communities, April 10, 1984, Case C-14/83, para. 28; CJEU, August 7, 2018, Case C-122/17, para. 39.
CJEU, August 7, 2018, Case C-122/17, para. 40.
Court of Justice of the European Communities, October 5, 2004, Cases C-397/01 to C-403/01, paras 113–114; CJEU, October 5, 2023, Case C-496/22, paras 24–29.
Court of Justice of the European Communities, February 20, 1979, Case C-120/78.
Court of Justice of the European Communities, October 6, 1982, Case C-283/81.
Court of Justice of the European Union, October 6, 2021, Case C-561/19.
Court of Cassation, Plenary Assembly, November 18, 2016, Appeal No. 15-21.438; Court of Justice of the European Communities, September 30, 2003, Case C-224/01; and CJEU, July 28, 2016, Case C-168/15.
Paris Court of Appeal, January 19, 2021, RG No. 18/28089.
Court of Cassation, Com., August 30, 2023, Appeal No. 20-15.480, para. 9.
Paris Regional Court, July 1, 2009, RG No. 08/04417.
Paris Regional Court, September 28, 2004, RG No. 01/18501.
CJEU, July 12, 2012, Case C-616/10.
Court of Cassation, First Civil Chamber, June 29, 2022, Appeal No. 21-11.085.
CJEU, July 12, 2012, Case C-616/10, referred to above.
CJEU, February 25, 2025, Case C-339/22.
Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention) OJ L339/3.
For applications, see Court of Justice of the European Communities, April 28, 2005, Case C-104/03, and in France, Court of Cassation, First Civil Chamber, March 14, 2018, Appeal No. 16-19.731, Bulletin No. 52; Court of Cassation, First Civil Chamber, January 27, 2021, Appeal No. 19-16.917.
See Orleans Court of Appeal, May 6, 2003, Critical Review of Private International Law, 2004. 139; but for a contrary ruling, see Court of Cassation, First Civil Chamber, June 29, 2022, Appeal No. 21-11.085.
Court of Justice of the European Communities, February 10, 2009, aff. Case C-185/07, Allianz and Assicurazioni Generali v. West Tankers Inc.; and an application for French case law v. Paris Court of First Instance, November 8, 2019, RG No. 19/59311; Paris Court of Appeal, March 3, 2020, RG No. 19/21426.
Court of Cassation, First Civil Chamber, October 14, 2009, Appeal No. 08-16.549, 08-16.369, Bull. 2009, I, No. 207. In this case, an American firm and a French company had concluded a distribution contract that included a clause naming the State of Georgia as having jurisdiction to hear disputes. Upon termination of the contract, the French party brought a claim before a French court, while the American firm took it to the American court. The latter issued an anti-suit injunction to prevent the French party from having the case heard in France.
See Court of Cassation, First Civil Chamber, November 23, 2022, Appeal No. 21-11.254.
CJEU, December 9, 2003, Gasser GmbH v. Misat Srl, Case C-116/02.
Paris Court of First Instance, April 28, 2000, The General Hospital v. Bracco; Paris Court of First Instance, March 9, 2001, Schaerer v. Fadis; Paris Court of Appeal, February 6, 2009, IP Ressource Ltd, No. 07/11637; Paris Judicial Court, May 21, 2026, S.A.R.L. Magna Engineered Glass Europe, No. 25/07418.
Court of Cassation, First Civil Chamber, March 14, 2018, Appeal No. 16-19.731, Bull. 2018, No. 52; Court of Cassation, First Civil Chamber, January 27, 2021, Appeal No. 19-16.917.
Paris Court of Appeal, December 13, 2007, RG No. 06/09164.
Paris Regional Court, December 4, 2020, RG No. 18/04501.
See Paris Regional Court, August 23, 2013, RG No. 13/55102, where this possibility was limited to non-confidential documents seized during a counterfeiting raid, but denied with respect to the most sensitive documents describing the technical or commercial know-how of the party subject to the seizure; see also Paris Regional Court, November 21, 2014, RG No. 2010/14073.
Court of Cassation, First Civil Chamber, February 22, 1978, Appeal No. 77-10.109: "While the French conception of international public policy precludes the recognition of a foreign judgment that has not respected the rights of the defense, those rights are not infringed upon provided that the testimony taken abroad has been subject to adversarial proceedings before the French court."
For example, see Paris Judicial Court, order of the pre-trial judge, October 11, 2024, RG No. 23/03672.