Action for a declaration of non-infringement

An action for a declaration of non-infringement asks the court to determine that a specified product or process does not infringe a particular patent. It can address uncertainty before an industrial launch, without waiting for the proprietor to sue. The French national procedure is governed by Article L. 615-9 of the Intellectual Property Code.

Requirements under French law

The claimant must establish industrial exploitation within an EU Member State or effective and serious preparations for it. The patent proprietor must first be invited to state whether the patent can be asserted against the proposed activities, which must be described to the proprietor.

If the proprietor does not respond within three months, or the response is disputed, proceedings may be brought before the Paris Judicial Court. The action is without prejudice to a challenge to the patent’s validity. A later infringement action also remains possible if the actual activities differ from the description provided.

Strategic value

The procedure can allow an industrial operator to take the initiative and address a patent obstacle before committing further investment. It may support discussions with investors, commercial partners and distributors. It also discloses information about the intended activities and may prompt infringement proceedings in response. A thorough freedom-to-operate assessment should therefore precede the decision to sue.

Proceedings before the UPC

The UPC Agreement provides for declarations of non-infringement in relation to rights within the Court’s jurisdiction. Such actions are generally brought before the Central Division. Under Article 33(4), however, where an infringement action between the same parties concerning the same patent is already pending before a Local or Regional Division, the declaratory action must be brought before that division.

Article 33(6) requires a Central Division declaratory action to be stayed where the specified related infringement proceedings are brought before a Local or Regional Division within three months of the declaratory action. The precise parties, patent and timing therefore matter. The French national pre-action procedure should not be assumed to apply unchanged before the UPC.

Practical significance

A declaratory action can help frame the dispute before launch. Its value depends on a sufficiently defined product or process, the procedural conditions and the risk of a counterattack. A favourable declaration should not be treated as a general clearance for materially different activities or other patents.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.