12.6.2 Pre-action and pre-trial
Before filing an infringement action, the patent owner and other parties with standing derived from the patent can petition the competent commercial court judge to authorize urgent measures (inquiries or investigations) to take evidence substantiating whether exclusive rights granted under the patent are being infringed.
Such urgent inquiries and investigations, regulated by Articles 123 et seq. of LP-2015, are intended to assist interested parties having prima facie evidence of infringement in seeking evidence that their exclusive rights are in fact being infringed.
The purpose is to avoid a long and costly trial over potential patent infringement when it cannot otherwise be substantiated by the prospective plaintiff.
Since these measures are preliminary to judicial action, their authorization is subject to requirements designed to protect the alleged infringer against unfounded petitions.
Accordingly, before deciding on such a petition, the judge may order such reports and investigations as they deem necessary.
These measures may only be authorized, moreover, when it can be presumed, under the circumstances in the case, that the substantiation of patent infringement will not be possible without them.
In authorizing such inquiries or investigations, the judge must fix a deposit to be made by the petitioner to meet any damage or prejudice they might cause.
To avoid the possible elimination of any traces of infringement, these measures are conducted without giving prior notice to the persons targeted.
To ensure protection for the trade secrets or confidential information of the prospective defendant and avoid the possibility that acts of unfair competition might subsequently be committed by the petitioner, the latter does not take part in the enforcement of these measures.
Such inquiries or investigations are ordered by the judge with the participation of one or more experts they may designate for the purpose. Having subsequently been informed of the results, and having heard the arguments of the petitioner, the judge then determines whether evidence of the alleged infringement has indeed been substantiated.
If they deem it has not, the inquiry or investigation is closed and a separate record of it is made (and kept secret: the petitioner is notified that they will not be informed of the results).
Conversely, if a presumption of patent infringement is found to be warranted, the judge, assisted by the designated expert or experts, must make a detailed inventory of the machines, equipment, products, processes, facilities or activities by means of which such infringement was presumably carried out.
A copy or certification of the findings is then provided to the petitioner solely for use in pursuing the infringement action, after which the petitioner has 30 working days to do so. If the petitioner fails to bring the infringement action within that time, the findings resulting from this process cease to have effect and may not be used for any subsequent judicial action.
If the findings are rejected, or the infringement action is not filed within the allotted time, the person targeted by these measures can request appropriate compensation for expenses and damage incurred, including loss of income, to be charged against the deposit, all without prejudice to such additional liability as the petitioner may have incurred.