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Intellectual property

Getting the Deal Through - Patents 2015

PATENT ENFORCEMENT PROCEEDINGS

1. Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Since 2009, all patent litigation has been centralized within the 3rd Division of the First Instance Court of Paris, which is devoted exclusively to IP cases and has jurisdiction for both infringement and/or validity matters.

This division is composed of 12 judges who have a true specialty over French and European patent Law. Cases on the merits are handled by a bench of 3 judges, while preliminary injunctions and ex parte proceedings are brought before one judge.

Approximately one third of the cases ruled in first instance is submitted to the Paris Court of Appeal, in which two sections have jurisdiction to review IP judgments. The Court of Appeal rules on both fact and law issues.

Finally, the Commercial division of the ?Cour de Cassation?, the French Supreme Court, is in charge of the harmonization of the law by the lower courts, which means that it rules only on law and not on facts.

The first instance decision in patent cases is all the more crucial since the confirmation rate before the Court of Appeal exceeds 80% of the cases and is quite similar before the Supreme Court.


2. Trial format and timing

What is the format of a patent infringement trial? (To what extent are documents, affidavits and live testimony relied on? Is cross-examination of witnesses permitted? Are experts used? Are disputed issues decided by a judge or a jury? How long does a trial typically last?)

A patent infringement trial on the merits is divided into 3 parts:

    -    A pre-trial phase: a single judge defines the schedule within which each party shall deliver its own written submissions and supporting documents. The parties rarely exchange less than 2 sets of submissions replying to each other.

    -    A short final oral hearing: it may take one hour to half a day, depending on how technical is the case. This hearing is used to make the judges understand the key technical elements of the patent and gauge the legal reasoning of the parties in view of the supporting exhibits.

    -    The deliberations: the decision is rendered between 1 to 3 months later, depending on the complexity of the case and the workload of the Court.

In respect with the adversarial principle, the hearings are solely based on the written reasoning presented in the briefs. Likewise, all pieces of evidence must have been brought to discussion before the final hearing.

There is no concept of cross-examination, all evidence being almost exclusively written.

Patent cases are exclusively decided by judges. No jury is involved.

In rare cases, the judges may decide to appoint and interview a legal expert to enlighten them on technical issues or on the assessment of damages. The expert delivers a written report which is challenged by the parties. The judges are usually guided by the opinions expressed by the expert, but  they are not bound by them.

In high-profile and/or technical cases, it is also common practice for the parties to support their opinions with the report of their own privately appointed expert.


3. Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof lies with the claimant for establishing the infringement of its rights. The claimant may request an authorization to conduct a seizure (saisie-contrefaçon see below topic n°9) aiming to find more evidence on the infringement and the quantum of the damages.
 
The claimant shall also demonstrate its standing to sue and justify that the patent is still in force with proof of payment of the last annual fee.

The burden of proof for invalidity or unenforceability of the patent lies with the defendant.


4. Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The right to bring an action for patent infringement belongs to the patent owner.

Such right may be also be granted to the exclusive licensee subject to the following requirements:

    -    The licensee agreement does not stipulate otherwise;
    -    The license agreement is in writing and registered in the patent registry;
    -    The patent holder does not initiate the proceedings despite the licensee's official letter inviting him/her to do so.

Any licensee (either exclusive or non-exclusive) can join the proceedings in order to get compensation of its own damages.

In all but a few cases, accused infringer replies to the claimant by bringing a counterclaim for patent invalidity. Sometimes, the defendant replies by claiming ownership of the patent, for instance in cases where claimant and defendant were former partners.

The accused infringer may also add to his/her defence a counterclaim for frivolous proceedings, which is successful in about 10% of the cases.


5. Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements (or steps) of a patent claim, but together they practise all the elements (or steps)?

Contributory infringement of patents is prohibited under French Law. Unless agreed by the patent owner, it is prohibited to supply or offer to supply, on French territory, the means of implementing an ?essential part? of the invention to a person other than a person entitled to work the patented invention.

Such prohibition applies where the third party knows, or where it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect. 

The prohibition does not apply where the means of implementation are staple commercial items, except where the patent owner is able to demonstrate that the third party induced the person to whom it supplies to commit infringing actions. 

French Law does not provide for joint liability in the case where each party only practises some of the elements of the invention. Multiple parties can be held jointly liable for patent infringement only if they practise together all the elements.


6. Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements (eg, the defendants are making, using or selling substantially similar methods or products, the defendants have some corporate or commercial relationship to the accused methods or products)? Must all of the defendants be accused of infringing all of the same patents?

In the case where multiple parties are involved in the same patent infringement, they can be joined as defendants in the same lawsuit.

For instance, multiple parties involved in the various steps that lead to the same offer or putting on the market of infringing goods, such as the manufacturer, the wholesaler, the seller, etc.


7. Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

French Courts have jurisdiction over any of the following activities, as long as they are performed in France:

    -    Manufacturing, offering, putting in the market, use, import or possession for the aforesaid purposes of the good covered by the patent;
    -    Use of a process covered by the patent (provided the third party knows that such use is prohibited without the consent of the patent holder);
    -    Offering, putting in the market, use, import or possession for the aforesaid purposes of the goods directly obtained through the process covered by the patent.

As concerns online sales, French Courts declare themselves competent where the litigious website aims at the French consumers and has a business impact on the French territory, makinguse of a bundle of indicators such as the language and currency used, the international activity of the merchant, etc.


8. Infringement by equivalents

To what extent can ?equivalents' of the claimed subject matter be shown to infringe? (Are there any statutory provisions or judicial decisions governing the scope of equivalents of a patent claim?)

French Intellectual Property Code does not provide for any rule governing infringement by equivalents.

The ?theory of equivalents? is governed by case-law which requires that:

    -    The structure of the product, although different, shall fulfil the same function, in order to achieve the same result or a similar one.

    -    However, the function of the means expressed in the claim must not be previously known over prior art (for in such case the patent can only protect the means in its form, but not in its function).


9. Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

No discovery procedure exists in France, the parties are free to disclose evidence they choose, provided it is not privileged.

The counterfeit seizure process (saisie-contrefaçon) is one of the most commonly probative tools used by French practitioners. As a consequence, many cases may either succeed or fail depending on whether the seizure was well or badly performed.

Such measure is obtained through an ex parte procedure by anyone who has the quality to bring an infringement action, leading to a detailed authorization granted by a single judge. The purpose is to create surprise and avoid dissimulation of proof by the alleged infringer. Only a bailiff can proceed, generally accompanied by an expert or patent attorney designated by the patentee, and by police officers if need be.

As its goal is to provide evidence for the infringement and the quantum of the prejudice, the bailiff may seize:

    -    Samples of infringing goods and any technical information,
    -    Any financial, accounting or commercial document needed for the assessment of the prejudice suffered by the patentee.

The claimant shall bring proceedings leading to a decision on the merits within 20 working days or 30 calendar days, failing which the search and seizure shall be held invalid.


10. Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

From the delivery of the writ of summons to the decision, the proceedings last on average 18 to 24 months in first instance and about the same in appeal.

11. Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs for patent litigation hugely vary depending on the technical complexity of the case. In order to obtain a first decision, the range vary between €30,000 and €150,000.

Very complicated and technical cases, such as pharmaceutical litigation may exceed €250,000.

Such range does not include the costs generated by a search & seizure measure, the seeking of a preliminary injunction, the appointment of a legal or private expert, etc.

The costs to expect in appeal may be slightly lower.

Over the past few years, the compensation for legal costs awarded to the winning party tends to increase.


12. Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

A recourse lodged before the Paris Court of appeal is the only avenue of appeal available against a decision in relation with patent infringement.


13. Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

French case-law offers examples where the publication of warning letters against the alleged infringer before obtaining a final decision, or the mere disclosure of a pending suit to the public, were qualified as unfair competition.

Enforcing a patent may also be a means of distortion of competition in the relevant market according to antitrust Laws.


14. Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Various forms of alternative dispute resolutions (ADRs) are available under French law.

Arbitration, mediation and conciliation are available even though they are seldom used.

However, it is prohibited under French law to submit to arbitration matters which are governed by public order.

Therefore, as concerns patent litigation, contractual disputes (mainly about assignments, licenses and manufacturing agreements) and issues related to ownership of a patent are within the scope of arbitration, whereas criminal liability for infringement and invalidity proceedings may never be resolved by ADRs.

The arbitrability of civil liability for infringement has never been admitted by French judges so far, but the legal doctrine tends to agree with it. 


SCOPE AND OWNERSHIP OF PATENTS

15. Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Innovations are patentable provided (i) they satisfy the usual legal requirements (novelty, inventive step, industrial character, sufficiency of description) and (ii) they are not specifically excluded by the French Intellectual Property Code.

Accordingly, the following innovations shall not be considered as inventions and therefore excluded from the scope of patent protection:

    -    Discoveries, scientific theories, mathematical methods;
    -    Aesthetic creations;
    -    Schemes, rules and methods for performing mental acts and playing games;
    -    Business methods;
    -    Software ?per se? (French case-law admits the patentability of software where their implementation produces a technical effect going beyond the simple effect resulting from the physical interactions between hardware and software).

The following inventions are not patentable:

    -    Therapeutic or surgical treatments methods or the human or animal body;
    -    Diagnostic methods applied to the human or animal body;
    -    Inventions whose commercial use would be contrary to public order, human dignity or morality;
    -    The human body, the discovery of the total or partial sequence of a gene, cloning of human, modification of the genetic identity of humans, use of human embryos for industrial or commercial use and total or partial sequences of genes;
    -    Plant or animal varieties.


16. Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Under French law, the first applicant of a patent is the holder exclusive rights over such patent. Therefore, the patentee and the creator of the invention may not necessarily be the same person.

Specific rules govern inventions made by an employee:

    -    Inventions made in the execution of duties or following the instructions given by the employer, automatically belong to the employer (inventions de mission), which triggers the right for the employee to get an additional pay.

    -    Inventions made outside the employee's duties, but during the execution of his functions, or in the field of the employer's activity by using technical means and knowledge provided for the company, should belong to the employee. However, the employer may require to be granted the property or licensed rights in consideration for a fair price.

    -    Inventions made by an employee outside the scope of his functions and which do not relate to the field of the employer's activity, belong to the employee.

As regards inventions created by independent contractors, the agreement usually provides for an assignment of the invention and patent rights to the client. In the absence of such provisions, the ownership belongs to the first applicant of the patent and the true inventor shall bring a judicial action in order to claim ownership of the patent if need be.

As concerns inventions created within a joint venture, the patent will be owned as follows:

    -    Where the inventor is an employee of the joint venture, the above-mentioned rules on ?employee's invention? apply and the invention may belong to the joint venture.
    -    Where the inventor is one of the members of the joint venture or one of its employees, the ownership will usually depend on the contractual provisions governing such case.

If the invention was created by multiple inventors, the rights on the patent may be jointly owned.

In any case, any patent assignment shall be evidenced in writing in order to be valid, and duly registered in the relevant patent registry in order to be enforceable towards third parties.


DEFENCES

17. Patent invalidity

How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

Patents are declared invalid mainly on the following grounds:

    -    The invention does not comply with the legal requirements of novelty or inventive step;
    -    The description does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
    -    The subject-matter of the invention is not patentable.

The validity of a patent may only be challenged before the Paris First Instance Court, either within a cancellation action brought regardless of any infringement in order to ?clean the market?, or as a counterclaim within an infringement action. The latter case is the most common.

In a few recent ruling related to generic cases, the Paris Court criticized the behaviour of generic manufacturers, blaming them for not having initiated a suit for invalidity within the time-limits enabling them to obtain a judgement on the merits, before proceeding with the marketing of the disputed drug.


18. Absolute novelty requirement

Is there an ?absolute novelty' requirement for patentability, and if so, are there any exceptions?

There is an absolute novelty requirement for patentability. However, disclosure of an invention is not taken into consideration in the assessment of such novelty if it is the result of:

    -    An obvious abuse against the inventor;
    -    An exhibition as defined by the international Convention of Paris dated 22 November 1928.


19. Obviousness or inventiveness test

What is the legal standard for determining whether a patent is ?obvious' or ?inventive' in view of the prior art?

French law refers to the current state-of-the art, meaning all inventions which have already been made available to the public before the date of the patent application.

In order to decide whether or not the invention is obvious, the French Patent Office and judges refer to the concept of ?person skilled in the art?, who can be defined as a practitioner who has general basic knowledge and average capacity concerning a given area on a given date.

The inventive step is usually established when the solution brought by the invention:

    -    Provides for an unexpected result, solves a technical issue that was never encountered in the past or overcomes a prejudice or meets an existing need;
    -    Is not the result of simple and intuitive operations carried on by the person skilled in the art, which would not require excessive efforts.


20. Patent unenforceability

Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

A valid patent cannot be deemed unenforceable because of misconduct by the inventors or the patent owner.

However, rights on a patent can be withdrawn owing to failure of payment of annual fees, or lack of ownership of the patent holder. As the patent holder is compelled to work the patent, failure to do so may entail the granting of compulsory licenses to third parties.


21. Prior user defence

Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

The French Intellectual Property Code provides for an exception to the patentee's exclusive rights in the case of prior personal possession of an invention by a third party.

Third parties who were, in good faith, in possession of an invention before the filing or priority date of the patent, have the right to commercially use this invention despite the patent.

This exception covers all types of inventions. It can be used in defence by the accused infringer.


REMEDIES

22. Monetary remedies for infringement

What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature?

French system follows the civil law principle called ?statu quo ante?, meaning that compensation is supposed to be limited to the prejudice actually suffered and justified. As a consequence, there are no punitive damages in France.

The claimant has an alternative between:

    -    The actual assessment of the prejudice (lost profits, infringer's unfair profits, moral prejudice, etc.),
    -    A lump sum corresponding to an increased royalty rate in order to take into account the constrained nature of the license with the infringer (plus moral prejudice).

In rare cases, the Court may also order the publication of an extract of the ruling in newspapers and/or in the infringer's website.

The Court may designate an expert for the assessment of the amount of damages to be granted but in most cases their amount is based on the assessments made by the parties on the basis of detailed accounting and commercial documentation.

French judges granted an average amount of damages of €50,000 over the last ten years in patent litigation. The highest amount ever awarded was €10,000,000 in 2007.


23. Injunctions against infringement

To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer's suppliers or customers?

Any person entitled to initiate an infringement action may try to obtain preliminary injunction against the alleged infringer, its intermediaries or suppliers, to prevent an imminent infringement or to make it cease.

Two types of summary proceedings are available depending on the emergency of the case:

    -    The ?référé? summons leads to a decision within 3 to 6 months,
    -    The ?référé d'heure à heure? (expedited summary proceedings) requires prior court authorization to summon the defendant in emergency, and may lead to a decision within a few days or weeks.

Preliminary injunctions are granted subject to reasonably available proof of infringement or imminent infringement. Although patents are deemed to be valid prima facie, judges may agree to take into account the fact that patent can be seriously disputed by the alleged infringer.

Any preliminary injunction is ordered at the own risk of the patent holder, who will have to compensate the damage suffered be the defendant should the patent ultimately be held invalid or not infringed.

Patent holders may obtain:

    -    Suspension orders or continuation of the alleged infringement subject to an adequate financial guarantee of the defendant,
    -    Seizure of the entire stock,
    -    Provisional allowance of damages (which is rare),
    -    Or even an injunction to disclose information in relation to the infringement, from the manufacturing to the distribution network.

In rare occasions, the above measures can also be granted within ex parte injunctions, subject to the demonstration that any delay would cause irreparable harm and of why the alleged infringer should not be heard prior to the injunction.

In any case, injunctions must be followed by proceedings on the merits. Failure to initiate such proceedings within 20 working days or 30 calendar days of the injunction entails its cancellation.


24. Banning importation of infringing products

To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

As a precautionary measure, customs authorities may block the importation the allegedly infringing goods upon patentee's intervention request. These customs seizures are under the control of the Council Regulation of the European Union.

The patent owner has ten days from the suspension to sue the alleged infringer before civil or criminal courts. Failure to do so entails the withdrawal of the measure.


25. Attorneys' fees

Under what conditions can a successful litigant recover costs and attorneys' fees?

The losing party is usually ordered by the court to pay certain costs of the proceedings (dépens), as well as an amount supposed to cover a ?fair share? of the lawyer fees paid by the winning party.

On average, such costs may amount to €10,000 to €50,000 and even €100,000 to €300,000 in the most complicated cases.

The total amount granted rarely covers all the costs but in the past few years, the Courts tends increase such award, especially if the attorneys and lawyers' bills are provided in order to support the compensation request.


26. Wilful infringement

Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?

Wilful infringement is required for the infringement action to be successful in criminal proceedings, which may entail up to a three-year' imprisonment and a € 300.000 fine. Criminal proceedings are seldom used in patent litigation.

In civil proceedings, the patent infringer will be held liable regardless of any wilful intent. However, the behaviour of the infringer may be taken into account in the assessment of damages, especially if it caused additional prejudice to the patent holder.


27. Time limits for lawsuits

What is the time limit for seeking a remedy for patent infringement?

Since a recent Law dated 11 March 2014, the time limit for seeking a remedy for patent infringement has increased from three to five years as from the alleged infringing facts.

Therefore, the patent owner can sue the infringer for the acts committed up to five years ago. Such time limit also applies to the compensation of the prejudice, which cannot be older than five years.


28. Patent marking

Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

Under French law, a patent holder is not required to mark its patented products. Therefore, there are no consequences regarding failure to mark.

However, false patent marking may be considered as trademark infringement and/or unfair competition, or as deceptive or misleading term, which are prohibited under civil and consumer laws.


LICENSING

29. Voluntary licensing

Are there any restrictions on the contractual terms by which a patent owner may license a patent?

The French Intellectual Property Code only requires the license agreement to be in writing.

French and European antitrust authorities are particularly watchful with respect to patent licenses or technology transfer agreements, especially within the pharmaceutical sector. 


30. Compulsory licences

Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The patent owner is under the obligation of using or marketing the invention. Failure to comply with this obligation entails that any third party may obtain a compulsory licence on the patent as from three years from the granting of the patent, or four years from the filing of the application.

Compulsory licences are limited to the cases where:

    -    The patentee has never begun to work the invention;
    -    Or he has not marketed the invention in sufficient quantities to meet the market needs;
    -    The patentee has begun to work the invention but nothing has been done for the last three years.

The terms of the compulsory licence are defined by the court and based on the usual terms and financial conditions practiced in the relevant market.


PATENT OFFICE PROCEEDINGS

31. Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The cost to obtain a patent must include the costs related to the drafting and the examination process handled by a patent attorney, the official taxes and the annual fees.

The official taxes to be paid to the French patent office (Institut National de la Propriété Industrielle) are quite low: €36 for the filing of the application, €500 for the delivery of the search report, €86 for the granting of the patent.

The annual fees progressively increase over the years, from €36 in the second year, they reach €900 in the twentieth year.  

Patent attorney's fees are usually in the range of €3,000 to €5,000 depending on the complexity of the invention and its technical field.

The French Office delivers a patent in 2.5 to 4 years following the filing date.


32. Expedited patent prosecution

Are there any procedures to expedite patent prosecution (eg, programmes such as the Patent Prosecution Highway, payment of extra fees)?

There are no procedure to expedite patent prosecution.


33. Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

French Law gives general principles governing the content of a patent. Accordingly, the patent application shall contain:

    -    The technical field of the invention;
    -    The prior art, as known by the applicant, which may be useful to establish the search report;
    -    Claims of the invention in order to understand the technical problem and its solution;
    -    A short description of the drawings;
    -    At least one way for carrying out the invention.

In any case, the description must disclose the invention in a manner sufficiently clear and complete for it to be easily carried out by a person skilled in the art.

The French patent office does not provide for official guidelines regarding the drafting of the application.

In practice, the subtleties of the drafting of a patent application are related to the nature of the invention (product, processes, etc.) or the limits to the patentability of the invention (software, therapeutic methods, gene sequences, etc.).
 

34. Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

The applicant is under no obligation to disclose all prior art to the patent office examiner. However, during the course of the examination, the examiner may request from the applicant to disclose prior art mentioned in foreign correspondence proceedings.


35. Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

The applicant may divide the earlier filed application by filing divisional applications, under the sole requirement that it does not extend beyond the scope of the patent.

Protection of the divisional applications will be granted from the date of the earlier filed application.


36. Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

The Paris Court of Appeal has exclusive jurisdiction concerning adverse decisions of the patent office.


37. Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

The French patent office does not provide for any mechanism for opposing the grant of a patent.

However, during the examination process, third parties may file observations before the patent office challenging the patentability of the invention. Such observations may influence the examiner and eventually lead to a modification or rejection of the patent claims.


38. Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

There is no mechanism for resolving priority disputes between different applicants for the same invention. The only criterion used to define who has priority is the date when the first application was filed.


39. Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

There is no procedures for re-examining or revoking a patent.

However, the patent owner may choose to abandon some claims, or limit the scope of the claims of his patent under the condition that this limitation does not extend the protection beyond the scope of the application.


40. Patent duration

How is the duration of patent protection determined?

The French Intellectual Property Code provides for a 20 years period of legal protection for a patent as from its filing date.

Protection of pharmaceutical inventions may be extended by filing a supplementary protection certificate (SPC), the duration of which cannot exceed 5 years from the expiry of the initial patent and 15 years from the issuance of the first marketing authorization.

The duration of SPCs may finally be extended by 6 months with the filing of a paediatric extension certificate.

A shorter title, called ?utility certificate?, is also provided by the French Intellectual Property: it lasts 6 years from its filing and is delivered without examination of a search report.


UPDATE & TRENDS

What are the most significant developing or emerging trends in the country's patent law?

As the result of the implementation in 2007 of the Directive 2004/48 on the enforcement of IP rights, French judges recently tend to increase the damages awarded to compensate patent infringement and legal costs. Such trend is also reinforce by the efforts made by patent owners to justify every types of prejudice suffered. 

Due to the expiry of numerous pharmaceutical patents and their related extensions, French case-law is also expanding on the constructions of the conditions for obtaining SPCs.


Benjamin May, Partner
Marie Liens, Counsel
may@aramis-law.com
liens@aramis-law.com