Patent infringement action

The patent infringement action allows the holder of a patent to have the unauthorised exploitation of the protected invention sanctioned. A licensee may also bring it, under the conditions provided by law. Articles L. 613-3 et seq. and L. 615-1 et seq. of the French Intellectual Property Code, available on Légifrance, govern it. For unitary patents and European patents without an opt-out, it falls within the jurisdiction of the Unified Patent Court.

The acts sanctioned by the patent infringement action

Without the consent of the holder, no one may manufacture, offer, place on the market, use, import, export or tranship the product covered by the patent. The law likewise prohibits stocking it for those purposes. For a process patent, the prohibition covers first the use of the process. It then extends to the same acts relating to the product obtained directly by that process. The supply of means for implementing the invention constitutes indirect infringement. Finally, the court assesses infringement by comparing the claims with the product or process at issue, literally or by equivalence.

Procedure

First, the Paris Judicial Court has exclusive jurisdiction in France, at first instance, over the patent infringement action. Second, the action is time-barred after five years. That period runs from the day the holder knew, or should have known, the last fact enabling it to sue. Third, the holder most often establishes the facts through a saisie-contrefaçon, supplemented by bailiff reports and expert evidence. In response, the defendant usually counters with a counterclaim for revocation of the patent. The strength of the title must therefore be assessed before serving a writ.

Measures and compensation

The court may first order, under penalty, an injunction against continuation of the acts. It may also order the recall and destruction of the products, as well as publication of the decision. It further compensates the loss. To set damages, it takes into account the negative economic consequences, including lost profits and losses sustained. It also considers the moral prejudice and the profits made by the infringer. In the alternative, the holder may claim a lump sum higher than the royalties that would have been due. Provisional measures may moreover be obtained in summary proceedings, before any judgment on the merits. In practice, the firm conducts these actions before the Paris Judicial Court, the Paris Court of Appeal and the UPC, as presented on the page bringing a patent infringement action.

Key points

A patent infringement action is prepared upstream: precise identification of the acts complained of, choice between saisie-contrefaçon and other modes of proof, assessment of the invalidity risk raised in defence. The claimant also arbitrates between the French court and the Unified Patent Court according to the title at issue and the territorial scope sought. Compensation finally requires documenting early the infringing volume and the loss sustained.