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 order. It is specific to French law and is one of the most powerful tools of intellectual property litigation. For patents, the saisie-contrefaçon is provided for in Article L. 615-5 of the French 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 tribunal judiciaire, without the targeted party being informed. First, the applicant must establish its status as owner or licensee and the apparent validity of its title. Second, the order precisely sets out the operations authorised: detailed description, with or without the taking of samples, physical seizure of products, copying of accounting, technical or commercial documents. Third, the judge may order the provision of security and 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.

Execution and follow-up

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 set by regulation, failing which the seizure is annulled and the items can no longer be used. The saisie-contrefaçon may also be challenged by an application to retract the order or for nullity on the ground that the mission was exceeded. A distinction is drawn between the descriptive saisie-contrefaçon and the saisie-contrefaçon with 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 executed 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 rest of the proceedings. The firm makes it one of its core areas of practice, for applicants and for targets alike, as presented on the page saisie-contrefaçon lawyer.