Intellectual property

Patent Litigation in France

With around 350 new cases every year in first instance and 110 appeals, France is the 4th country in the world for patent litigation and the 2nd country in Europe.

The French Forum is now becoming even trendier with the creation of the Unified Patent Court, for the central division of the first instance court will sit in Paris (for more details, see our article on the Unitary Patent).

1. Specialized judges gathered in Paris

Since 2009, all patent litigation has been centralized within the 3rd Section of the First Instance Court of Paris devoted exclusively to IP cases.

This Section is now composed of 12 judges who have acquired a true specialty over French and European patent Law. Every case is handled by a bench of 3 judges.

Approximately one third of the cases ruled in first instance is submitted to the Paris Court of Appeal, in which two sections are sole competent to review IP judgments.

Finally, the Commercial division of the ?Cour de Cassation?, the French Supreme Court, is in charge of the harmonization of the texts by the lower courts by ruling only on law and not on facts.

2. Efficient enforcement measures

The French judicial system is not dualistic as in Germany: both the infringement and the validity of the patent are handled in the same proceedings.

Patentees' armory is provided with various potent weapons whether on interim measures or proceedings on the merits.

    - Preliminary injunctions

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

    - The ?référé? summons leads to a decision within 2 to 6 months,
    - The ?référé d'heure à heure? requires prior court authorization to summon the plaintiff in emergency and may lead to a decision within a few weeks.

Preliminary injunctions are granted subject to reasonably available proof of infringement or imminent infringement.

Although patents are supposed to be valid prima facie in summary proceedings, sometimes judges agree to take into account the fact that patent can be seriously disputed by the alleged infringer.

Either way, any preliminary injunction is ordered at the own risk of the patentee, which could have to fully compensate the damage suffered be the defendant should the patent ultimately be held no to infringe or to be invalid.

At this stage, patentees 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.

    - Ex parte injunctions

In rare occasions, such measures can also be granted within ex parte injunctions. The patentee is therefore required to demonstrate why any delay would cause him irreparable harm and why the alleged infringer should not be heard prior to the injunction.

The Courts are quite demanding towards this kind of injunction. When granted, defendants may immediately trigger summary proceedings against it in order to try to get it reversed.

    - Proceedings on the merits

Injunctions obtained via summary or ex parte proceedings 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.
More than 8 out of ten legal actions consist in an infringement claim which in most cases is challenged by an invalidity counterclaim. The rest of the caseload is generated by contractual disputes, employee inventions, ownership claims and revocation (excluding infringement).

The main goal of the proceedings is to obtain damages, but the judges may also grant:

    - Destruction of infringing goods at infringer's costs,
    - Recall from distribution channels,
    - Confiscation of manufacturing equipment,
    - Publication of the decision in newspapers or on the infringer's website at its cost.

Provisional enforcement is also granted in more than 80% of the cases, which means that the appeal proceedings will not suspend enforcement of the first instance judgment.

The judges have an active role as concerns the timetable of the case: they settle deadlines within which the parties must exchange their written pleadings and the date for the final oral pleadings is usually set from the start of the proceedings.

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

3. Rules of evidence

    - The French Search and Seizure

Before its adoption in Directive 2004/48/CE of 29 April 2004, the ?saisie-contrefaçon? had been introduced in France from the very beginning of IP law in the 18th century.

Since then, it has become one of the most commonly probative tools used by practitioners for no discovery is organized in France. As a consequence, many cases may either succeed or fail depending on whether the search and seizure was well or badly performed.

A detailed authorization is granted by a Court within an ex parte procedure, in order to create the element of surprise to the alleged infringer. Only a bailiff can proceed, generally accompanied by an expert or industrial property attorney designated by the patentee and by police officers if need be.

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

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

    - Other means of evidence

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

There is no concept of cross-examination either, all evidence being almost exclusively written. In rare cases, the judges may decide to appoint and interview a judicial expert to enlighten them on technical issues.

The final oral hearing is usually crucial to make the judges understand the key technical ideas of the patent and gauge the arguments of the parties in view of the supporting exhibits.

4. Chances of success

Approximately 75% of the patents used in infringement actions are held valid and almost half of valid patents are held infringed.
Chances of success for patentees are therefore quite high in France.

The Novartis v. Johnson & Johnson case is a good example of this tendency as the French judges held Novartis' patent on contact lenses valid when the same patent had been held invalid in Germany, Austria and the UK.

5. Awarded damages and litigation costs

French judges granted an average amount of damages of €50,000 over the last ten years. The highest amount ever awarded was €10,000,000 in 2007. Compensation is supposed to be limited to the prejudice actually suffered and justified, and there are no punitive damages in France.

The claimant has an alternative between:

    - The assessment of the prejudice (lost profits, infringer's unfair profits, moral prejudice, etc.),
    - A lump sum corresponding to an increased royalty rate.

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 assumptions made by the parties.

The losing party is ordered by the Court to pay the legal costs aiming at partly compensating the winning party's attorneys' fees. On average, such costs are around €15,000 but it may amount to €200,000 to €400,000 in the most complicated cases.

6. Litigation trend on SPCs

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

    - The product protected by the SPC has to be covered by the basic patent in force,
    - The product has not already been the subject of an SPC,
    - The marketing authorization referring to the product must be the first one.

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For further information, contact Benjamin May, Partner
Tel: +331 5330 7700 -