Sued for patent infringement: organising the defence

The first few days count double. A cease-and-desist letter or a writ for infringement is never a trivial matter: evidence must be preserved, sales teams informed, supply and distribution contracts reviewed, and the insurer notified where appropriate. Before any reply to the claimant, the real risk must be mapped: validity of the patent relied on, construction of its claims, exposure of the products concerned, and the chain of liability (manufacturer, importer, distributor).

The lines of defence

They combine: denial of infringement (a claim-by-claim analysis setting out the technical differences), a counterclaim for revocation of the patent (Article L. 613-25 IPC), challenges to the saisie-contrefaçon operations (application to set aside, discharge, narrowing of the sequestration, protection of the trade secrets seized), procedural objections and, where the activity is long-standing, prior personal possession (Article L. 613-7 IPC). Ahead of any dispute, a company seeking to secure a launch may also take the initiative of an action for a declaration of non-infringement (Article L. 615-9 IPC).

Negotiating without showing your hand

Most patent disputes end in a settlement. But the negotiation has to happen at the right moment, on the basis of a documented balance of power (strength of the patent, real exposure, cost of the proceedings for each side) and without irreversible evidentiary concessions. We run these negotiations alongside the defence, never in its place.

Challenging the saisie

A saisie-contrefaçon carried out against you opens a dispute of its own, with its own timetable. The party searched may apply to set aside the order or to have the seizure lifted before the judge who made it, may challenge the officer's departure from the scope of the mission, and above all must organise the protection of documents covered by trade secrecy, kept under sequestration until an inter partes debate (art. L. 153-1 of the Commercial Code). If the claimant fails to bring proceedings on the merits within the regulatory time limit, twenty working days or thirty-one calendar days if that is longer, the whole of the saisie, including the description, is annulled on the application of the party searched, who need give no reason (art. L. 615-5 of the Intellectual Property Code).

Opposition and limitation, parallel weapons

For a European patent, opposition before the European Patent Office remains open for nine months from publication of the mention of the grant (Article 99 EPC). Its effect is centralised across all designated states and it continues independently of national actions, which makes it as much a bargaining lever as a defence. The proprietor for its part may request limitation or revocation (Article 105a EPC), and in France may surrender or limit the claims (art. L. 613-24 of the Intellectual Property Code), often used to save a title by narrowing its scope.

Before the Unified Patent Court

Sued before the Unified Patent Court, a defendant works to short and mandatory time limits: the statement of defence is filed within three months of service, and the counterclaim for revocation is brought together with it. Theopt out of the patent in suit is no longer available once the action has been brought before the court (Article 83 of the Agreement): the question must be checked on day one, for the other titles in the portfolio as much as for the one under attack.

The cost of doing nothing

Ignoring a cease and desist letter does not make the risk go away: silence feeds the case for bad faith and prepares an application for provisional measures. Conversely, an over-detailed reply hands the claimant the technical analysis it has not yet done. A good reply is short, reserves every argument and imposes a timetable for the exchange.

Served with a writ or a seizure? Call us today, +33 1 71 60 61 46.