International Patent Litigation in France

The patent owner is entitled to sue for patent infringement.

If a patent is owned by more than one entity / person, each co-owner is entitled to take action for infringement for its own exclusive benefit provided that it notifies the other joint owners of the action that has been brought. If, after formal notice, the owner of the patent does not instigate patent infringement proceedings, the beneficiary of an exclusive license, or a compulsory license or an ex officio license is entitled to initiate such proceedings, unless otherwise agreed in the licence agreement.

Finally, any licensee is entitled to take part in the infringement proceedings instituted by the patentee in order to obtain compensation for any loss sustained by that party.

The action can be brought against several co-defendants from the start of proceedings. One defendant may also add another defendant as the case progresses.

Where there are separate actions involving the same claimant but different defendants and which are brought before two distinct courts, if there is a link between the cases that means that it is in the interest of good justice to have them examined and determined together, the matters may be joined.

Yes, it is possible to join suppliers or other third parties as defendants under the above-described conditions.

It is also possible for suppliers or other third parties to join as claimants. However, if such suppliers or other third parties are not exclusive licensees, they will not be entitled  to form an infringement claim. They may be entitled to claim for compensation for the loss which would directly derive from the infringement under general tort liability regime (e.g. loss of revenues corresponding to a decrease of orders in the scope of a supply agreement as a consequence of the infringement).

Proceedings for patent infringement must be brought within five years from the day on which the owner of a right has known or should have known the last fact allowing it to exercise its right.

No, the French law does not provide any requirement to invoke all potentially infringed patents at once. Separate proceedings may be brought or an additional patent may be added to an existing infringement procedure

(provided that such procedure is still at an early stage).

The Paris Judicial Court (Tribunal Judiciaire de Paris) has exclusive jurisdiction for patent (both French and European) infringement and invalidity proceedings. In particular, patent proceedings are assigned to the third chamber of the Paris Court. This chamber is divided into four sections, each being composed of three judges.

Both infringement and validity are considered in the same proceedings when the defendant raises the nullity of the patent as a counterclaim.

France will fully take part in the UPC. France ratified the UPC in 2014. The UPC will include a Central Division with its seat in Paris and several local and regional divisions, of which one will also be in Paris.

Yes. Any person who proves industrial use of a product / process in the territory of a member state of the EEC (European Economic Community) or real and effective preparations to that effect, may invite the owner of a patent to provide its opinion as to whether such product / process constitutes an infringement. If the person disagrees with the patentee’s position, it may bring the case before the Court which will give its opinion as to whether the activities infringe. This action may lead to a binding declaration of non-infringement.

The first case-management hearing is scheduled within two to three months following service of the writ of summons.

In urgent cases, the president of the Court may permit the plaintiff, upon its petition, to summon the defendant to an earlier fixed date. The petition must set out the reasons why the matter is urgent and must include the pleadings and supporting documents.

During first instance, proceedings take between  16 to 20 months from filing the writ of summons  to the decision.

The judges are not required to have a technical (Engineering / Sciences degree) background to decide  on patent cases.

It is not compulsory for the Court to stay the proceedings if there is an opposition pending before the EPO. The Court has discretion whether to allow the stay if necessary in the interests of good justice. Hence, depending on the circumstances of the case, the mere existence of an opposition may be insufficient. The opponent will have to demonstrate the seriousness of the arguments used in the opposition proceedings to obtain a stay of proceedings.

Yes, the only condition for a party to initiate an action for nullification of a patent is to have standing to sue (“intérêt à agir”).

Yes, it is possible.

As an example: the judicial court of Paris on 6 February 2020 declared itself competent in FRAND licensing matters. In this case, the TLC companies considered that the Philips companies refused to negotiate FRAND licenses and therefore did not comply with FRAND conditions. TLC therefore sued Philips before the Paris judicial court to obtain an injunction against Philips to grant a FRAND license to TLC.

In a patent infringement action, a party may raise a FRAND defence. The defendant in such an action may indeed claim that the conditions under which the FRAND license must be requested have not been respected.

As an example, within the framework of a case opposing IPCOM, holder of patents that it considered essential, the latter sued Lenovo and Motorola for patent infringement. These defendants successfully raised a FRAND defence (Judicial Court, 20 January 2020 n°19 / 60318).

The Court may determine a FRAND rate. Although the

Paris Court of Appeal did not set a FRAND royalty rate (in this case it considered the patents to be non-essential), it acknowledged in its 16 April 2019 decision that it could do so (Paris Court of Appeal, 16 April 2019 n°15 / 17037). Therefore, to date there is no precedent in French case law that gives a concrete example.

Nevertheless, several methods of calculation have been identified through case law in France and abroad, which provides an overview of the issue. In general, two methods can be distinguished: the comparable method and the top-down method:

Parties or the court may appoint an expert during the proceedings (to issue a report on technical aspects of the case) or once the decision has been issued (to handle a report on damages).

The appointment by the court of an expert on validity or infringement aspects is rare. Courts are more likely to appoint experts on damage assessment aspects.

In addition to Court appointed experts, parties are free to rely on “private” experts who will be hired by one party.

Experts will prepare a written report and will not be cross-examined.

Judges are not bound by the expert’s report.

There is no general discovery under French Law. However:

• the claimant may use the “saisie-contrefaçon” to gather evidence before the beginning of the court proceedings, as described in the following answer;
• a party may apply during the course of the proceedings to the court for an order for disclosure of specific documents. This measure may be used to obtain any document or information helpful in determining the origin and distribution network of an infringing good, unless a legitimate interest prevents disclosure of such.

The claimant may use the “saisie-contrefaçon” to gather evidence before the beginning of the court proceedings. The saisie-contrefaçon is authorised by a judge in the scope of expedite ex parte proceedings. The authorization is generally granted within 24 hours from the hearing. The judge generally authorises a bailiff to gather evidence  in some specific designated locations (generally the defendant’s premises, plants, shops, fairs, etc.) without prior information of the defendant. The bailiff is authorised to take samples of the litigious products, to take pictures of the manufacturing process, to gather technical and financial documentation regarding the litigious products (including documentation that will allow them to determine the number of infringing products manufactured / sold).

An appeal against a first instance decision is lodged before the Paris Court of Appeal, which may then entirely or partially retry the case.

A second appeal to the French Supreme Court (Cour de cassation) is possible.

The Court of Appeal considers appeals on issues of both fact and law.

The French Supreme Court only hears appeals on the exact application of the Law.

If an appeal is lodged against the decision of the first instance court, the proceedings will take between  18 and 24 months.

If an appeal is lodged against the decision of the Court of appeal, the Supreme Court generally issues its ruling between 18 and 24 months.

No. The first instance decision is not suspended while an appeal is pending. First instance decisions are provisionally enforceable by law, unless the party files an appeal for suspension of provisional execution via an interim procedure before the First President of the court.

Fees for patent litigation may vary depending on the nature and the difficulty of the case, from sixty thousand euros (60,000 EUR) to one hundred and fifty thousand euros (150,000 EUR) and higher for certain technical cases such as pharmaceutical or electronic cases.

The costs of appeals in patent litigation can also vary significantly, from thirty thousand euros (30,000 EUR) to one hundred and fifty thousand euros (150,000 EUR) and higher for certain very technical cases.

There are no specific rules regarding the compensation of legal costs which are at the court’s discretion.

However, the first instance court awards to the winning party an amount which generally covers at least 70 / 85% of the actual costs of litigation.

There are various forms of ADR available, including mediation, conciliation and arbitration. Mediation is increasingly suggested by French Courts. International or domestic arbitration is an alternative dispute resolution for patent infringement proceedings (except in criminal cases involving counterfeiting) when the parties have agreed to such, for example in a license contract. Arbitration remains rare in patent disputes.

Yes, mediation is increasingly suggested by French Courts at the beginning of proceedings but it can always be refused by the parties.

The parties can decide themselves to settle their dispute at any stage in proceedings. The settlement will then be negotiated by the parties’ counsels without the Court’s involvement. Once an agreement has been reached between the parties, they can withdraw the litigation from the Court.

The remedies available are:

• damages;
• a recall of the infringing goods from the distribution network or the destruction of the recalled goods and stock;
• publication of the finding of infringement in newspapers; and
• an injunction.

The claimant can choose how damages are to be assessed. They can request either:

• an amount to compensate the claimant for the negative economic consequences suffered (including loss of profit, the benefit gained by the infringer and the moral wrong caused to the claimant); or
• a lump sum which cannot be lower than the amount of royalties that would have been paid if the infringing party had requested a licence to use the patent.

If damages are awarded under the first point above, the amount awarded is calculated as follows:

• the number of infringing products sold x gross margin of the patentee for the patented goods it sells.

In order to determine the gross profit on the direct cost realised by the sale of the goods, it is necessary to take into account the invoiced sale price per unit minus: the cost of raw materials, production costs etc.

Although note that the Court may decide to reduce this amount on the basis that the claimant may not have made all the infringing sales had the infringement not occurred.

Usually, the claimant can calculate its loss based on figures and elements seized during a “saisie-contrefaçon”. It may also ask to the Court to order the seizure of additional documents (relating to sales made between the “saisie-contrefaçon” and the issuance of the first instance decision). This information is usually sufficient for the court to determine what damages award to make.

In certain circumstances, the court may appoint an expert to assess the damages. In such a case, the court would require the defendant to make full disclosure of its profits / sales etc. The appointed expert will assess the damages and issue a report. There will be another hearing following which the Court will usually rely on the report to make its decision on damages.

The fact that the infringement was deliberate is not taken into account as such, but other elements may be taken into account for the assessment of the damage, such as:

• the damage caused to the reputation of the patentee;
• the moral damage;
• the depreciation of the price of the goods; and — the loss of contractual partners.

Yes, it is possible. The French law provides that in the event of a civil conviction for infringement, the court may order, at the request of the injured party, that the products recognised as infringing be recalled from the commercial channels, permanently removed from these channels, destroyed or confiscated for the benefit of the injured party.

The law does not give any limitation in time, it is left to the judge’s discretion.

Yes. The patentee or its exclusive licensee may ask the President of the Court to issue an interlocutory injunction in order to prevent any imminent infringement of its patent or to prevent the continuation of the allegedly infringing acts.

Such interlocutory injunction may be granted either inter partes or ex parte without the defendant having been heard. An ex parte injunction will only be ordered in circumstances where any delay would cause irreparable harm to the right holder.

It is also possible to get an injunction inter partes once the trial has started.

To obtain an interlocutory injunction, the plaintiff must provide the court with any reasonably available evidence that is enough to satisfy the court with a sufficient degree of certainty that it is the patent right holder and that its right is being infringed, or that such infringement is imminent.

Case law suggests that preliminary injunctions are often granted when the patentee’s rights and the validity of the patent cannot be seriously / obviously challenged.

Yes in theory only. When an injunction is granted ex parte, the defendant will be aware of this injunction only at the moment it is served on it. It is possible for the defendant to contest the injunction before the judge who made the order. The judge has the right to modify or withdraw his / her order (even if the matter is referred to the trial judge).

An injunction may be obtained:

• within about three days in ex parte proceedings;
• within about 15 days in summary proceedings;
• within about three months before the pre-trial judge.

A preliminary injunction may be obtained in inter partes proceedings. In such cases, the defendant will be heard and will have the possibility to present its arguments and evidence.

An appeal can be lodged before the President of the Court of Appeal against this decision, except under specific circumstances. The appeal does not suspend the effect of the injunction.

In principle, the judge may make it a condition of the injunction that the plaintiff provides a guarantee to cover possible indemnification for loss suffered by the defendant if the infringement proceedings are subsequently considered to be unfounded and the injunction withdrawn.

In practice, judges do not require securities and preliminary injunctions are directly enforceable.

The claimant enforces the injunction at its own risks and can be liable for the wrong suffered by the defendant if the injunction is later invalidated.

Yes, the decision is only preliminary and further proceedings on the merits are required in order to obtain a final injunction.

French Courts consider that even when there are several national patents stemming from one European Patent, each title is independent, and its infringement is determined according to the national Law.

Consequently, there have been no cases in which the French Court expressly granted a cross-border injunction.

Recently, French judges were confronted with an AntiSuit-Injunction for the first time in the case of IPCom v. Lenovo. The first instance judges considered that this injunction was contrary to French public policy.

However, the Court of Appeal held that the injunction constituted a manifestly unlawful trouble but did not rule on whether it was in conformity with French public policy. This decision seems to open the possibility for the introduction of future Anti-Suit-Injunctions.