Infringement action

The infringement action is the court action by which the holder of an intellectual property right puts an end to the interference with its right. It also obtains compensation for its loss. The action exists for every title: patent, trade mark, design, copyright, plant variety. The holder most often brings it before the civil courts, more rarely before the criminal courts.

Who may bring the infringement action

First, the owner of the title may sue. Second, the exclusive licensee may also do so, unless otherwise stipulated, where the holder fails to act after formal notice. Third, the non-exclusive licensee may intervene in the proceedings to obtain compensation for its own loss. The French Intellectual Property Code organises these rules for each right. The provisions can be consulted on Légifrance.

Jurisdiction and limitation

In patent matters, the Paris Judicial Court has exclusive jurisdiction for the whole territory. For trade marks, designs and copyright, ten judicial courts share jurisdiction. Paris nevertheless remains solely competent for European Union titles. Unitary patents and European patents without an opt-out fall within the jurisdiction of the Unified Patent Court. Finally, the civil 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 act.

Evidence and remedies

The holder may prove infringement by any means. The saisie-contrefaçon, an evidentiary measure authorised on ex parte application, remains the most effective instrument. The court may then order an injunction under penalty, the recall and destruction of the products. It may also order publication of the judgment and award damages. Damages take into account the negative economic consequences for the victim. They also include the moral prejudice and the infringer’s profits.

In practice, the success of the action therefore depends on the preparation of the evidence. It also requires anticipating the counterclaim for revocation. The firm devotes its activity to this litigation, presented on the page bringing a patent infringement action.

Key points

The essence of an infringement action is decided before the writ: building the evidence, choosing the court and verifying standing, notably where the claimant is a licensee. The five year limitation period requires dating the known facts precisely. For a unitary patent or a European patent without an opt-out, jurisdiction belongs to the Unified Patent Court, which changes the calendar as much as the evidentiary strategy.