The French infringement seizure (saisie-contrefaçon)

The saisie-contrefaçon is the evidence-gathering instrument specific to French intellectual property law. It allows the proof of an infringement to be recorded and taken away, before any proceedings, at the premises of the party committing it. No other European system offers a tool of comparable reach, and it is one of the reasons France remains a sought-after forum.

What the measure can obtain

The judge may authorise a detailed description, with or without the taking of samples, or the actual seizure of the products and processes alleged to infringe. The order may extend to technical and accounting documents: drawings, laboratory notebooks, invoices, purchase orders, customer and supplier lists. That is often where the extent of the loss is established — more so than the fact of the infringement itself.

Obtaining the order

The measure is granted on an ex parte application, without notice to the other side. The applicant must establish standing and produce the patent. The drafting of the application governs everything that follows: it fixes the scope of the order, the premises covered, the categories of document sought and the powers of the commissaire de justice. Too wide an order invites an application to set it aside; too narrow an order leaves the evidence where it lies.

Execution

The operations are carried out by a commissaire de justice, assisted where appropriate by an expert independent of the applicant, and at times by the police. The applicant's counsel does not attend. How the commissaire and the expert are briefed — what to look for, how to describe it, what not to do — determines the value of what is brought back.

Sequestration and trade secrets

The party seized may ask for the material taken to be placed under sequestration pending a ruling on its disclosure. The judge then balances the applicant's right to evidence against the protection of the other side's trade secrets. This stage, often overlooked, decides in practice what the claimant will actually be able to put before the court.

The deadline to sue on the merits

The seizure must be followed by proceedings on the merits within a short period, failing which it is void as of right and the evidence obtained is lost. That period runs from the operations themselves. It cannot be extended and it cannot be negotiated: it is calculated on the day of the seizure and it is kept.

Defending against a seizure

A seizure is not a settled gain for the party that obtains it. The party seized may apply to have the order set aside, seek its discharge, challenge the record of the operations and invoke the protection of its trade secrets. The most frequent irregularities concern operations exceeding the scope of the order, an inadequate application, or a lack of independence on the part of the expert.