Patent litigation: our core practice

The infringement action (art. L. 615-1 et seq. of the Intellectual Property Code) allows the patent proprietor (and, under conditions, the licensee) to stop the unlawful exploitation of its invention and to obtain compensation. It is prepared well before the statement of claim: analysis of the claims and of the allegedly infringing products (claim charts), gathering of evidence, forum strategy between the French courts and the UPC, articulation with any opposition proceedings before the EPO. Success is most often decided in that preparatory phase.

We design the strategy, secure the evidence (in particular through a saisie-contrefaçon) and then conduct the proceedings through to enforcement of the decision, including on the question of damages (art. L. 615-7 CPI : negative economic consequences, the infringer’s profits, moral prejudice).

A writ for infringement, a cease-and-desist letter or a saisie-contrefaçon carried out against you call for a prompt and orderly response: analysis of the validity of the patent asserted against you and of the infringement allegations, a counterclaim for invalidity, challenge to the seizure operations (application to set aside, release, protection of the trade secrets seized), and where appropriate the search for a negotiated outcome. The earlier the defence is organised, the more options remain open.

Revocation of the patent (art. L. 613-25 CPI, Article 138 EPC) is the mirror image of infringement: lack of novelty or inventive step, insufficiency of disclosure, extension beyond the application as filed. It is brought as a main action (to clear a market) or in defence, by way of counterclaim. It requires joint work between attorney and engineer: prior art searches, technical reading of the claims, articulation with EPO proceedings (opposition, limitation). It is an exercise we practise in both directions, and each of our attacks informs each of our defences.

The article L. 615-3 CPI makes it possible to obtain, in summary proceedings, a preliminary injunction of marketing, seizure or the provision of security, provided infringement is likely. Before the UPC, provisional measures (art. 62 AJUB) follow their own logic (proportionality, urgency, balance of interests), which may work for or against the patentee. We argue these urgent applications on both sides and systematically build the injunction risk into the overall strategy of the case, including its industrial dimension (stock, launches, customers).

Patent litigation is a matter of teamwork and repetition: reading the claims, dialogue with patent attorneys and technical experts, knowledge of the courts that actually decide these disputes, in Paris as in the divisions of the UPC. Our practice is backed by constant academic work (scholarly publications and regular contributions on European patent litigation) that feeds our pleadings. That is what our clients come for: a boutique that devotes most of its practice to this work.

• Bringing a patent infringement action
• Sued for infringement: organising the defence
• Patent nullity actions
• Provisional measures and interim relief
• The patent saisie-contrefaçon
• The Unified Patent Court (UPC)
• Evidence preservation before the UPC

The saisie-contrefaçon is the evidentiary measure characteristic of French patent law. It is ordered on an ex parte application, carried out by a judicial officer assisted where necessary by an expert, and must be followed by an action on the merits within a short period, failing which it is void. The scope of the mission and the handling of sequestered material determine, in practice, the value of the evidence gathered and the strength of the seizure against an application to set it aside.

In France, patent disputes fall within the exclusive jurisdiction of the Paris Judicial Court. Since 1 June 2023, the Unified Patent Court has heard actions concerning European patents with unitary effect and, unless an opt-out has been filed, classic European patents. The choice of forum (national court, local division or central division) determines the territorial reach of the decision, the timetable and the exposure to revocation. It is made before the originating document, in the light of the portfolio, the markets at stake and the risk of a counterclaim.

Before the Unified Patent Court, Paris offers measurable advantages. The Paris local division is the fastest in the Court to decide an infringement action on the merits (13.8 months at the median, against 16.8 months across all local divisions), its seizure orders have all been upheld on review, and the Paris seat of the central division is the Court’s leading forum for stand-alone invalidity actions. See the UPC statistics.

A dispute over a standard essential patent is first fought on contractual ground: the ETSI intellectual property rights policy is governed by French law, and the commitment given by the patentee stems from it. Before the question of the rate comes the question of the nature of the obligation, of those who may rely on it and of its content. The FRAND commitment: a contract.

The Agreement on a Unified Patent Court created, alongside the divisions, a mediation and arbitration centre. Not every question is best argued in court: setting a rate, sampling a portfolio or handling confidential licences is often better dealt with away from the public hearing. Arbitrating a patent dispute in Europe.