The saisie conservatoire: obtaining evidence in France for foreign proceedings

The saisie-contrefaçon is not the only French evidentiary instrument. Where there is no infringement to demonstrate, or where the evidence is intended for proceedings conducted elsewhere, the saisie conservatoire under Article 145 of the French Code of Civil Procedure offers a route that many foreign counsel overlook.

It allows evidentiary measures to be obtained, before any trial and on ex parte application, at the premises of a third party or of the adversary, and the documents collected may be used in foreign proceedings. It does not require an action on the merits to be brought within the following month, unlike the saisie-contrefaçon. In return, it presupposes that no litigation is already pending in France.

The legal basis

Article 145 of the French Code of Civil Procedure allows the judge to order, on ex parte application or in summary proceedings, any legally admissible evidentiary measure where there is a legitimate reason to preserve or establish, before any trial, evidence of facts on which the outcome of a dispute may depend. The provision is not specific to intellectual property: that is precisely what makes it a useful tool where the grievance is not an infringement but, for example, abusive conduct in the negotiation of a licence.

Philips v Thales: the demonstration

Le tribunal judiciaire de Paris a rendu le 13 septembre 2022 une décision qui illustre exactement cet usage. Après l’échec de négociations FRAND, Philips avait engagé contre Thales une action en contrefaçon de standard essential patents aux normes GSM et une procédure de discovery proceedings in the United States. Thales, which intended to demonstrate the abusive nature of Philips' conduct during those negotiations, obtained in France a saisie conservatoire designed to collect the documents establishing that abuse. Philips sought the withdrawal of the order; the court refused.

Two lessons emerge from this decision. The first concerns the justification for departing from adversarial proceedings: the application must set out the circumstances requiring it, and the court held that, since the documents sought were essentially emails, which are easily destroyed, that departure was justified. The second is more surprising: the court held that the failure to mention the parallel discovery parallèle ne caractérisait pas un défaut de loyauté, parce que la saisie conservatoire, à la différence de la saisie-contrefaçon, n’impose pas l’exposé de l’ensemble des faits, mais seulement de ceux qui justifient l’absence de contradictoire.

What distinguishes it from the saisie-contrefaçon

When to use it

Three situations make it preferable. The first is where there is no title to assert: a contractual dispute, a licence negotiation or an allegation of abusive conduct does not fall within the scope of the saisie-contrefaçon. The second is where the evidence is intended for foreign proceedings and there is no wish to commit to a French trial within the month. The third lies in the flexibility of the application, whose statement of facts is limited to what justifies the absence of adversarial debate.

The limit is clear and must be borne in mind from the outset: the measure must take place before any trial in France. French litigation already pending on the same subject closes the route.

What to prepare

The legitimate reason must be documented before the application: what is being sought, why it exists, who holds it. The departure from adversarial proceedings must be justified by concrete circumstances: the electronic and volatile nature of the documents sought is one of them, as the court accepted in the Philips case. The scope of the mission, finally, is subject to the same requirements as in a saisie-contrefaçon: too broad, it invites withdrawal; too narrow, it leaves the evidence behind.

Key takeaways

• Legal basis: Article 145 of the French Code of Civil Procedure, a provision of general law, not specific to intellectual property.
• Paris Judicial Court, 13 September 2022, Philips v Thales.
• No intellectual property title is required.
• No action on the merits is required within the following month.
• The documents collected may be used in foreign proceedings.
• The application sets out only the circumstances justifying the departure from adversarial proceedings.
• The measure must be implemented before any trial in France.

A route to examine before ruling out France

Foreign counsel seeking evidence held in France often conclude too quickly that the saisie-contrefaçon is the only route, and rule it out for lack of a title or for fear of the deadline for the action on the merits. The saisie conservatoire deserves to be examined first. Dhenne Avocats prepares and executes these measures, and challenges them in defence. Talk to us.

This article is an original and substantially updated adaptation of an analysis by Matthieu Dhenne first published on Kluwer Patent Blog.