Bringing a patent infringement action

Who may sue, against whom, and within what time limit. Infringement proceedings are open to the patent owner and, on the conditions set out in article L. 615-2 of the Intellectual Property Code, to the licensee: the exclusive licensee, and even a non-exclusive licensee where the contract so allows, after a formal notice to the owner has gone unanswered. They cover any unauthorised act of exploitation within the meaning of articles L. 613-3 and L. 613-4 IPC: making, offering, putting on the market, using, importing, holding, and also supplying means. They are time-barred five years from the day on which the owner knew or ought to have known of the last act founding the claim (art. L. 615-8 IPC).

Evidence first

An infringement case is won on the evidence: the saisie-contrefaçon (Article L. 615-5 of the French Intellectual Property Code), a French tool without equivalent, allows infringement to be recorded by a commissaire de justice, where needed with an expert, right inside the alleged infringer's premises. Carrying it out demands rigour: the ex parte application, the scope of the mission, sequestration, and the time limit for bringing the action on the merits on pain of nullity. It is a speciality of the firm.

Choosing the forum

For a European patent, the action may lie before the Paris Judicial Court or the Unified Patent Court, each with its own logic: timetable, language of proceedings, territorial reach of the injunction, and exposure to a counterclaim. That choice, largely irreversible, shapes everything that follows: we document it systematically before issuing proceedings.

Une action peut être portée simultanément devant plusieurs juridictions nationales, comme l’illustre l’assignation de Pfizer et BioNTech par Moderna, engagée le même jour devant le tribunal du district du Massachusetts et le Landgericht de Düsseldorf. Nous revenons sur cette stratégie dans notre analyse.

Sur la compétence du juge français pour connaître d’actes commis à l’étranger, la Cour de cassation a cassé le 29 juin 2022 l’arrêt qui refusait de les apprécier : nous en tirons les conséquences dans cette étude.

Compensation

Article L. 615-7 of the French Intellectual Property Code requires the negative economic consequences suffered, the moral prejudice and the infringer's profits to be taken into account, or, as an alternative, a lump sum higher than the royalty that would have been due. Reconstructing the loss is an economic exercise in its own right, which we conduct with financial experts.

Le tribunal judiciaire de Paris a alloué 28 millions d’euros de dommages et intérêts à Eli Lilly dans l’affaire Pemetrexed, montant alors inédit en Europe.

The right of information

Article L. 615-5-2 of the Intellectual Property Code allows a party to obtain, if need be under a penalty payment, the production of documents or information held by the defendant or by third parties, in order to establish the origin and the distribution networks of the products complained of, unless there is a legitimate impediment. It is often by this route that the basis of the damages claim is built, where the saisie has established no more than the facts themselves.

The measures the court can order

Beyond compensation, Article L. 615-7-1 allows recall from the channels of commerce, definitive removal, destruction or confiscation for the benefit of the injured party, together with measures publicising the decision, all at the infringer's expense. An injunction, whether provisional or final, comes with a penalty payment whose amount and periodicity are argued in the written pleadings, not after judgment. Before the Unified Patent Court, the injunction covers all the Contracting Member States for which the patent has effect and in respect of which the court is seised, which changes the scale of the risk for the defendant.

The real timetable

Proceedings on the merits before the Paris Judicial Court are counted in years, with case management absorbing most of that time. Proceedings before the Unified Patent Court are by contrast designed to reach a hearing within about a year of service of the claim, with strict time limits for written submissions and little tolerance for late applications. In practice that difference in pace is one of the first criteria in the choice of forum, alongside the risk of a counterclaim for revocation.

Acting fast without acting badly

The temptation to sue immediately is a poor counsellor. Three checks usefully precede any action: the strength of the title against the prior art, standing to sue and its recordal in the register, and the availability of evidence. Where the infringement is established, provisional measures make it possible to obtain an injunction before judgment on the merits.

Do you suspect infringement of your patents? Let us discuss strategy before acting.