Saisie-contrefaçon with physical seizure (saisie réelle)

Definition : Saisie-contrefaçon with physical seizure (saisie réelle)

The real saisie-contrefaçon (saisie-contrefaçon réelle) is the form of the French saisie-contrefaçon in which the judicial officer, authorised by an ex parte order of the president of the judicial court, physically takes possession of the products or means alleged to infringe, together with the related documents, instead of merely describing them. Provided for in Article L. 615-5 of the Intellectual Property Code, it is the most intrusive evidentiary measure in patent litigation and, for that reason, the most tightly framed.

Why the concept matters

Evidence of patent infringement sits with the infringer: in its products, processes, production lines, invoices and files. The saisie-contrefaçon allows the proprietor to go and get it, by surprise, before any trial. Where a description is not enough, because infringement only appears on laboratory analysis, because the items may disappear, or because a process can only be observed by dismantling the product, the real seizure is required. It is also the preferred tool of a foreign proprietor which, in the absence of discovery, finds in the French procedure a way of obtaining evidence usable across Europe.

The conditions for authorisation

The saisie-contrefaçon is ordered ex parte, without adversarial debate, by the president of the Paris judicial court, which has exclusive jurisdiction in patent matters. The applicant shows its standing as proprietor or entitled licensee, the existence and apparent validity of the title, and indications making infringement plausible, without having to prove it. The judge defines precisely the operations authorised: premises, products targeted, number of items that may be seized, documents sought, experts allowed to assist the judicial officer, arrangements for custody. The judge may make the measure conditional on security to compensate the party searched if the action is later held unfounded. Where a real seizure is requested, the judge assesses its proportionality against a description and frequently limits it to a few items or samples.

How the operations unfold

The judicial officer arrives unannounced, serves the order and carries out the operations in the presence of experts independent of the applicant, to the exclusion of its employees. The items taken are placed under seal and kept by the judicial officer, by a custodian or by the party searched appointed as custodian, until the judge rules on their fate. Documents containing trade secrets may be placed under provisional seal, the judge then organising their disclosure under the trade secrets protection regime. The report, drawn up on site, is the key exhibit of the trial to come; its precision and regularity determine its evidential weight.

The deadline to sue and the remedies of the party searched

The applicant must bring proceedings on the merits, civil or criminal, within twenty working days or thirty-one calendar days, whichever is longer, from the seizure. Failing that, the entire seizure, including the description, is set aside at the request of the party searched, which need not give reasons, without prejudice to damages. The party searched may also apply to have the order withdrawn or varied, seek the lifting of seals or the narrowing of the seizure, and challenge the regularity of the operations, in particular where the judicial officer exceeded the terms of the order or the experts lacked the required independence. An irregular seizure is excluded from the proceedings, and with it the evidence it produced.

Useful distinctions

The real seizure differs from the descriptive seizure, which is limited to a detailed description of the products or processes, with or without the taking of samples, and remains the default form. It differs from the conservatory attachment, an enforcement measure securing a debt, and from the preliminary injunction, which aims to stop the infringement rather than to prove it. Before the Unified Patent Court, the order to preserve evidence under Article 60 of the Agreement, inspired by the saisie-contrefaçon, likewise allows the physical seizure of the products at issue and of the materials and implements used to produce them.

Key takeaways

The real seizure is a privilege granted to the proprietor on condition that it is used with restraint. A precise application, irreproachable experts, a judicial officer experienced in the field and a calendar kept for suing on the merits make the value of the measure. The party searched, for its part, gains from preparing the visit: a reception protocol, identification of documents covered by trade secrets, monitoring of the terms of the order during the operations, then a swift analysis of the avenues of challenge. In both cases, the seizure often decides the trial before it begins.

Sources

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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