France: Patent Litigation

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This country-specific Q&A provides an overview of the legal framework and key issues surrounding patent litigation law in France.

This Q&A is part of the global guide to Patent Litigation.

For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/patent-litigation/

  1. What is the forum for the conduct of patent litigation?

    In France, since 1 November 2009, only one single Court has exclusive jurisdiction over patent litigation: the Paris civil court of first instance (Tribunal de grande instance de Paris, hereinafter “the Paris District Court”) has exclusive jurisdiction over patent disputes, i.e. patent infringement, patent revocation, declaration of non-infringement entitlement disputes, patent co-ownership disputes. The Paris Court has one Chamber (the 3rd Chamber) with four panels of three judges in charge of IP matters. The presiding judge of one of the panels hears preliminary injunction proceedings or, if proceedings on the merits are already pending, they are heard by the supervising judge in charge of the management of the case.

    The fact that in France, only one single Court has exclusive jurisdiction is a great advantage, to ensure legal certainty and a consistency of case law, even though when a new legal provision is inserted into French law, certain discrepancies can be observed. However, one of the presiding judges of the Panels plays the role of coordinator for the whole Chamber to ensure consistency. This situation avoids forum shopping which is called to be discouraged according to the right to a fair and just trial.

    The appeal of the judgments of the Paris District Court are directed to the Paris court of appeal which has a Chamber specialized in IP with two panels of three judges

    As in most of the jurisdictions in Europe, the judges of the court of first instance and of the court of appeal are not technical judges but have the ability to understand technical questions.

  2. What is the typical timeline and form of first instance patent litigation proceedings?

    In France, validity and infringement proceedings are heard together. Damages can also be decided simultaneously together with the ruling on validity and infringement, provided that the court have sufficient financial data. In the negative, it either sets a provisional financial award pending the transmission by the infringer of financial data, by application of Article 8 of the IP Enforcement Directive or appoints an expert who will then file a report to assist the court in determining the entire damage suffered by the claimant.

    The fact that both validity and infringement are heard together has several advantages:

    - The same court will construe the patent claims to decide on validity and infringement: this ensures a consistency in the construction of the patent claims;
    - There is no gap between the decisions on infringement and on validity;
    - There is no risk of suspension of the infringement proceedings pending the outcome of a revocation claim, which can lead to delay and is unfavourable to the patentee or its licensee.

    In general, in patent disputes - if no special motion is filed – a decision on the merits is obtained within 18 months in first instance. In case of a proven emergency, the Presiding judge of the Paris District Court can authorize the claimant to commence a streamlined procedure for infringement

  3. Can interim and final decisions in patent cases be appealed?

    A decision of the Paris District Court can be appealed before the Paris Court of appeal within one month from its service on the other party, if the latter is domiciled in France; this deadline is extended by one month for the party domiciled in the French overseas territories, and by two months for foreigners.

    The appellant submits its notice of appeal with the registry of the court of appeal, which notifies the defendant hereabout. The grounds of appeal have to be submitted within 3 months from the notice of appeal. This deadline is extended by two months for foreigners. The defendant has to respond within 3 months from the filing of the grounds of appeal if it desires to file a counter-appeal.

    The appeal suspends the enforceability of the judgment, unless the District Court has decided differently, which is generally the case for the interim injunctions and provisional damages awarded. Where the provisional ruling would have evident excessive consequences, upon request, the Presiding judge of the Paris Court of appeal can order the suspension of the provisional enforcement. Such suspension is exceptionally granted.

    On appeal, the case is heard de novo; i.e. the parties can add new arguments and exhibits, which had not been submitted in first instance. However they are not admissible to file new claims and the case is reheard in its entirety by the court of appeal. Each party has a right to appeal, so that no permission to appeal is required. Proceedings before the court of appeal last in general 18-22 months.

    A decision of the court of appeal can be appealed before the Supreme Court; this appeal is not suspensive and is limited to questions of law. The Supreme Court only ascertains that the challenged decision does not contain errors in law. No permission to appeal before the Supreme Court is required. In general, a decision is obtained within 18-24 months.

  4. Which acts constitute direct patent infringement?

    Pursuant to Article L. 613-3 of the Intellectual Property Code (hereinafter the “IPC”), are constitutive of direct patent infringement, the following acts:

    - Making, offering, putting on the market or using a product which is the subject matter of the patent, or importing or stocking a product for such purposes;
    - Using a process which is the subject matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the owner of the patent, offering the process for use on French territory; and
    - Offering, putting on the market or using the product obtained directly by a process which is the subject matter of the patent or importing or stocking for such purposes.

  5. Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?

    Article L. 613-4 of the IPC defines contributory infringement .

    Save consent by the patentee, it is prohibited to supply, or offer to supply, on the French territory, to a person other than a person entitled to work the patented invention, the means of implementing the invention in France with respect to an essential element thereof where the third party knows, or it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect.

    However, this prohibition shall not apply where the means of implementation are staple commercial articles, except where the third party induces the person supplied to commit infringement acts.

  6. How is the scope of protection of patent claims construed?

    Article L. 613-2 of the IPC, equivalent to Article 69 of the European Patent Convention, defines the scope of protection of the patent.

    French courts do not construe the claims literally, but in light of the description and the drawings, and where the language of the description is ambiguous it is impossible to add, by way of interpreting, any element or feature which was not originally in the description or the claims.

    Drawings are used to complete the description, but cannot replace it, unless the shape or the layout of the invention cannot be described in words and the description expressly states that such shape or layout is represented by a drawing.

    Where the literal infringement is not constituted, the doctrine of equivalents might apply. This doctrine is based on the principle that a 'means' whose structure does not literally reproduce the claims of the patent is equivalent when it has the same function as the patented means and achieves similar results. The “means” are considered in:

    • their form or structure;
    • their technical function; and
    • the technical result they achieve.

    The doctrine of equivalents is only available when the patented means cover a novel function. If the claimed means differ from the prior art only by their structure, the doctrine of equivalents cannot apply and the scope of the claim is limited to the claimed structure. On the contrary, if the claimed means differ from the prior art not only by their structure but also by their function, the scope of the claim extends to any equivalent means.

  7. What are the key defences to patent infringement?

    In addition to motion for lack of standing or capacity to act, a counterclaim for revocation can be filed. After several years of debates about the starting date of the 5-year time bar to file such counterclaim, according to the Law adopted on 22 May 2019; actions for revocation are imprescriptible. When an opposition against a European patent is pending, the Paris court; before which an infringement action of the French designation of that patent is pending has, upon request by one of the parties, discretion to stay the action until the outcome of opposition, taking into consideration the balance of convenience and the strength of the opposition arguments. French courts are generally reluctant to order such stay.

    The alleged infringer can also challenge the infringement by application of Articles L. 613-5 to L. 613-7 IPC, arguing that the acts are notably:

    - done privately and for non-commercial purposes;
    - done for experimental purposes relating to the subject matter of the patented invention;
    - done by pharmacists making up a prescription;
    - related to trials made for the purposes of the application for a marketing authorisation for a drug (the so-called ‘Bolar exemption’);
    - done on vessels and aircrafts having temporally or accidentally entered French waters or crossed France;
    - related to space vessels introduced into France;
    - performed to create, discover or develop new plant varieties (breeders exemption) or related to the farmers’ privilege, which authorises a farmer to use for his/her own exploitation the harvested product (for patents covering plant genetic information or plant material) or to use livestock (for patents covering animal genetic information or animal biological material).

    The defendant can also rely upon the exhaustion of the rights where the patentee or his/her beneficiary have consented to the introduction of a product implementing the patented invention within the European Economic Area (EEA).

    It enables any person who was in good faith in possession of the invention in France before the patent priority date to continue to personally work the invention. The prior use does not extend to improvements or updated versions of the invention and is limited to personal use, i.e. is not transferrable.

    Where the patent at stake has been declared essential to a standard, such as in the telecommunications industry, the defendant can challenge the essentiality of the patent. The alleged infringer can also raise a fair, reasonable and non-discriminatory (FRAND) defence..

  8. What are the key grounds of patent invalidity?

    A patent can be revoked on any of the following grounds set forth under Article L. 613-25, IPC and Article 138, EPC):

    - added matter;
    - insufficient description;
    - lack of novelty;
    - lack of inventive step; or
    - lack of industrial applicability.

    The French designation of a European patent can also be revoked if its proprietor had no right to the invention.

  9. How is prior art considered in the context of an invalidity action?

    Pursuant to Articles L. 611-11 and L. 611-14 IPC, ‘prior art’ for the purposes of assessing novelty and inventiveness comprises everything made available to the public having the ability to understand the technology; by means of a written or oral description, by use or in any other way, before patent application date (or priority date). Should also be considered as ‘prior art’, only for the assessment of novelty, the content of French patent applications and of European or International patent applications designating France, the application dates of which filing prior to the the patent application date and published on or after that date.

  10. Can a patentee seek to amend a patent that is in the midst of patent litigation?

    The patent holder of a patent can, at any moment,:
    - Withdraw its patent;
    - Limit the scope of its patent by amending one or several claims; with an effect ab initio, by filing an application for limitation of:

    • the French patent or the French part of a European patent at the Institut National de la Propriété Industrielle ; or
    • the European patent at the EPO (central limitation)
  11. Is some form of patent term extension available?

    Apart from Supplementary Protection Certificates provided for medicinal products, there is no patent term extension in France.

  12. How are technical matters considered in patent litigation proceedings?

    Only in exceptional cases, in where the court considers that a given technical subject requires a specific expertise, it will appoint a technical expert, and if the court is not capable of assessing any relevant technical issues itself, a technical expert is appointed.

    Court-appointed experts draft a report providing an opinion on technical issues, which can be challenged by the parties. The expert does not testify at the oral hearing, and therefore is not cross-examined. The Court is not bound by the opinion of the expert.

    In some technical matters, in order to prove infringement and to assist the court’s technical understanding, the parties can:

    - hire a private expert to submit a privately commissioned opinion, such as a report;
    - use a witness statement of facts.

    It has to be pointed out that if the experts can be heard in some exceptional cases, there is no cross-examination in France.

  13. Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?

    French law being a civil law system does not have discovery/disclosure, however other tools are at the disposal of a claimant to collect evidence.

    In summary, a saisie-contrefaçon is performed upon an authorisation granted by the presiding judge of the Paris District Court on an ex parte basis, on the mere production of evidence that:

    - The applicant is the patentee or a registered exclusive licensee;
    - The patent is still in force; annuities have been paid
    - there is a suspicion of infringement.

    The order authorises a bailiff, with the assistance of a patent agent and/or an IT expert, to enter the premises where the suspected infringement occurs, and to gather all available evidence of infringement, in particular to:

    - Describe the allegedly infringing product or process.
    - Copy any document regarding the alleged infringement.
    - Gather information regarding the extent of the infringement.
    - Take physical samples of the alleged infringing products or of means used to manufacture the alleged infringing product.

    The bailiff drafts a report recording his/her observations and those of any other persons present. Copies hereof are handed down to the defendant and to the claimant. Where confidential information is at issue, the defendant cannot prevent the bailiff form seizing but can request him/her not to describe it and to place the description or the seized documents or products in a sealed envelope to be kept by the bailiff and to be opened by a Court expert within a confidentiality club.

    The claimant must start proceedings within 31 calendar days following the performance of the saisie-contrefaçon, failing that it will be declared null and void and the defendant is entitled to compensation in case of misuse of the saisie-contrefaçon procedure.
    All evidence gathered in France for the purposes of French proceedings is freely available for parallel proceedings, even evidence gathered through a saisie-contrefaçon, unless Court has decided otherwise.

  14. Are there procedures available which would assist a patentee to determine infringement of a process patent?

    In respect of process patent infringement, Article L. 615-5-1 IPC, the Court provides for a reversal of the burden of proof, i.e. the defendant has to prove that the process used to manufacture an identical product is different from the patented process.

    Failing to provide such proof, any identical product shall be presumed to have been manufactured by the patented process.

  15. Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?

    Even if it was already an established practice, the Decree of 11 December 2018 in application of the Law of 30 July 2018 implementing the EU trade secrets Directive endorsed the mechanism to protect confidential information in the course of patent litigations.

    For example, it is possible to request:

    - the placement of pieces of evidence under escrow to ensure the protection of trade secrets, upon the decision of the judge;
    - to restrain the communication of some pieces of evidence that contain trade secrets information to a strict number of persons (equivalent to the well-known clean team system);
    - to restrict the number of persons accessing to the courtroom (Article L.153-1 of the French Commercial Code);
    - to issue, upon request of a party, a redacted version of the judgment containing only the operative part and bearing the enforcement order.

  16. Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?

    Currently, there is no system of post-grant opposition proceedings against French Patent, but the Loi of 22 May 2019 provides for opposition proceedings but their conditions have not been determined yet. In case of an opposition before the European Patent Office, a stay is optional when the action is based on a European patent designating France.

  17. To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?

    There is not a real impact or influence from decisions of other fora/jurisdictions on French courts, and it is even more so, as French courts are not bound by national prior decisions on the same issues, even of a higher-level jurisdiction.

  18. How does a court determine whether it has jurisdiction to hear a patent action?

    A court, being recalled that only the Paris District Court has jurisdiction over patent disputes, has jurisdiction to hear a patent case every time acts infringing a patent having an effect in France occurs.

  19. What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?

    There is no mandatory ADR provisions in patent cases, but Courts are increasingly in favour of alternative dispute resolution and always suggest mediation on appeal.

  20. What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?

    Apart a thorough due diligence (patent, owner, inventor, prior assignments of the invention including priority right, of the patent, license, registration of the assignments and licences), there are no procedural steps that would be peculiar to France.
    The limitation period is 5 years.

  21. Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?

    IPC does not contain specific provisions on whom has standing to commence a patent invalidity action. Reference should thus be made to Article 31 of the Code of Civil Procedure providing that "the action is open to anyone who has a legitimate interest in the success or rejection of a claim".

    In practice, the claimant for invalidity action is most often a competitor who enacts to free the market and avoid the risk of a possible infringement action against its future product or process.

  22. Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?

    IPC does not contain specific provisions on whom has standing to commence a patent invalidity action. Reference should thus be made to Article 31 of the Code of Civil Procedure providing that "the action is open to anyone who has a legitimate interest in the success or rejection of a claim".

    In practice, the claimant for invalidity action is most often a competitor who enacts to free the market and avoid the risk of a possible infringement action against its future product or process.

  23. Are interim injunctions available in patent litigation proceedings?

    Any person entitled to initiate an infringement action, i.e. the patentee or the exclusive licensee, may request preliminary or provisional / permanent injunctions against the alleged infringer, its intermediaries or suppliers, to prevent an imminent infringement or to make it cease. Preliminary injunctions can be obtained ex parte or inter partes depending on the urgency of the case. Indeed, for an ex parte proceedings the applicant must show that any delay would cause him / her irreparable harm.

    Provisional injunctions can be subject to the payment of a bond or the Court may authorize the continuance of the infringement pending the outcome of an appeal subject to a bond.
    For preliminary injunctions, the claimant is required to demonstrate that infringement is likely or imminent and that the patent at issue is prima facie valid. In that respect, only prima facie and obvious invalidity of the patent makes the infringement not plausible as patents enjoy a presumption of validity. In preliminary injunction cases, extensive debates on validity occur at that level. Obviously, the judge in charge of the preliminary injunction application has no jurisdiction over patent validity but the judge will make a pre-assessment of the risk of revocation of the patent at issue. It is impossible to obtain a preliminary injunction when infringement by equivalence is argued.

    Unless the injunction is granted in the course of pending proceedings, the applicant must initiate proceedings on the merits within 20 business days or 31 calendar days whichever is the longer, otherwise the preliminary injunction is void and the defendant may be entitled to be compensated for the damage arising out of the injunction.

  24. What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?

    The Court, pursuant to Article L. 615-7 of IPC, takes into consideration:

    • the negative economic incidence of the infringement, including loss of profit and loss suffered by the patentee;
    • the moral prejudice caused to the latter; and
    • the profits made by the infringer, including the savings in intellectual, material and promotional investments that he has made from the infringement.
  25. On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?

    The Court, pursuant to Article L. 615-7 of IPC, takes into consideration:
    - the negative economic incidence of the infringement, including loss of profit and loss suffered by the patentee;
    - the moral prejudice caused to the latter; and
    - the profits made by the infringer, including the savings in intellectual, material and promotional investments that he has made from the infringement.

  26. How readily are final injunctions granted in patent litigation proceedings?

    A permanent injunction request is quasi-systematically granted when the patent is declared valid and infringed, provided that such injunction be requested by the claimant.

    In very few cases the judge may discretionary refuse to grant a permanent injunction, notably on the basis that the infringer has ceased its activity or has already undertaken to put an end to the infringement or the patent is about to expire.

  27. Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?

    Any person, who proves an industrial exploitation on the territory of a Member State of the European Union, or real and effective preparations to that effect, may invite the patentee to take position on the enforceability of his/her patent against such exploitation.
    If within three months, the patentee has not taken position or has indicated that he considers that the envisaged exploitation falls within the scope of the patent, a declaration of non-infringement (DNI) can be filed before the Paris District Court.

  28. What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?

    There are no court fees to bring proceedings before French courts.
    Either for first instance or the appeal proceedings, the costs depend on the complexity of the case (technology, national or cross-border patent dispute, number of patent claims number of prior art documents):

    • for a simple case: €100,000 to 200,000;
    • for a middle case: €200,000 to 400,000;
    • for a complex case: above €400,000.
    • Pharmaceutical and Telecom cases are always more expensive as and so are the cross-border patent cases and cases based on European patents.
  29. Can the successful party to a patent litigation action recover its costs?

    Pursuant to Article 700 of the Code of Civil Procedure, the Court shall order the losing party, to pay to the other party its costs in whole or in part by taking into the balance of convenience. It is recommended to produce a statement proving the costs incurred, in patent matters the costs awards are more and more close to the actual costs incurred by the successful party.

  30. What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?

    In France, there is an increase of patent litigation in life sciences and telecoms sectors.

  31. What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?

    In the coming months, the FRAND defense might be one of the most contentious issues. .

  32. Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?

    Our French system might be adapted to allow accelerated procedures as they exist in the Netherlands. Currently accelerated procedures exist but they require the proof of emergency and are not adapted to patent disputes as the defendant can file its defence (including its counterclaim for invalidity) just before the hearing. Moreover, they would be adapted in SEP litigation where prior to filing its action, the patentee has to offer a FRAND licence, failing that its action would be considered as an abuse of dominance.

  33. What are the biggest challenges and opportunities confronting the international patent system?

    The main challenge in international patent litigation is the need to commence action everywhere infringing acts are committed together with the risk of irreconcilable decisions.

    However, when knowing the peculiarities of each system, it is possible to map a dispute and select the jurisdictions where to commence a case depending on the objectives to be achieved.

    Such international battles are also a way to make deals and can be part of a licensing program.
    Other opportunities are expected when the UPC will be alive, if ever once…