An International Guide to
Patent Case Management for Judges

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. 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. 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