Saisie-contrefaçon

The saisie-contrefaçon is the evidentiary measure by which the holder of an intellectual property right has the evidence of the alleged infringement recorded by a judicial officer (commissaire de justice) authorised by an ex parte court order. It is specific to French law and is one of the most powerful tools in intellectual property litigation. In patent matters, the saisie-contrefaçon is provided for in Article L. 615-5 of the Intellectual Property Code, available on Légifrance. Equivalent provisions exist for trade marks, designs and copyright.

Authorisation of the saisie-contrefaçon

The application is made to the president of the competent judicial court, without the targeted party being informed. First, the applicant must establish its standing as proprietor or licensee and the apparent validity of its title. Next, the order defines precisely the operations authorised: detailed description, with or without the taking of samples, physical seizure of products, copying of accounting, technical or commercial documents. Finally, the judge may order security to be provided and may appoint an expert to assist the judicial officer. The operations may take place at the premises of the alleged infringer, at a third party’s premises, at a trade fair or at customs.

The operations and what follows

The judicial officer draws up a report describing the products, processes and documents found. Items covered by trade secrets may be placed under provisional sequestration pending a decision on their disclosure. The applicant must then bring an action on the merits within a period fixed by regulation, failing which annulment of the seizure may be sought under the applicable statutory rules. The saisie-contrefaçon may also be challenged by an application to withdraw the order or for annulment where the officer exceeded the scope of the authorisation. A distinction is drawn between the descriptive saisie-contrefaçon and the physical seizure.

The saisie-contrefaçon before the UPC

The Unified Patent Court has a comparable instrument, the order to preserve evidence and to inspect premises, inspired by French practice. It is granted on application, where appropriate without hearing the defendant, and enforced under the supervision of the Court. In practice, the preparation of the saisie-contrefaçon, the drafting of the application and the conduct of the operations determine the quality of the evidence for the whole of the ensuing trial. The firm makes it one of its core areas of practice, for claimants and defendants alike, as presented on the page saisie-contrefaçon attorney.

Key takeaways

A saisie-contrefaçon is prepared before it is requested: the application delimits what the judicial officer will be able to look for, and an authorisation that is too broad is exposed to withdrawal. The party searched may invoke the protection of its trade secrets, which means anticipating sequestration. Finally, the applicant must sue on the merits within the short period fixed by the Code, on pain of the seizure being set aside.