An International Guide to
Patent Case Management for Judges

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