14 March 2024

The other seizure: the conservatory seizure in France to recover evidence for foreign proceedings

Many readers of this blog are familiar with the French seizure, which involves the confiscation of allegedly infringing products and all related documents, but requires a writ of summons within one month of the seizure (e.g., here). Few of the same readers have probably heard of the protective seizure (“protective seizure”), which allows similar measures to be authorized in the absence of infringement and does not require a writ of summons within one month of the seizure. Indeed, according to Article 145 of the French Code of Civil Procedure, “if there is a legitimate reason to preserve or establish before any trial the proof of facts on which the solution of a dispute may depend, legally admissible investigative measures may be ordered at the request of any interested party, on request or in summary proceedings.”

Further reading


Saisie conservatoire and measures in futurum

The French saisie conservatoire of evidence draws on Article 145 of the Code of Civil Procedure, which allows any legally admissible investigative measure to be ordered before any trial where there is a legitimate reason to preserve or establish proof of facts on which the outcome of a dispute may depend. The measure is obtained either on an application without notice, under Article 493 of the same Code, or in summary proceedings under Articles 834 and 835. The order is executed by a bailiff and may extend to the inspection of premises, the copying of files and the hearing of witnesses, within the limits fixed by the court.

Three conditions drive the analysis. The applicant must show a legitimate reason, which presupposes a plausible and identified dispute. The measure must be defined narrowly enough to remain proportionate. And it must not amount to a general fishing expedition, which the courts refuse. The defendant retains the right to apply for the order to be set aside, which means the application has to disclose the applicant’s position fairly, including elements that do not assist it.

Using a saisie conservatoire for foreign proceedings

The contrast with Article L. 615-5 of the Intellectual Property Code is what makes the tool attractive. A saisie-contrefacon must be followed by proceedings on the merits within the short time limit laid down by the Code, failing which it is void. A saisie conservatoire based on Article 145 carries no equivalent forfeiture, so evidence gathered in France can serve a dispute that will be tried elsewhere. The two instruments are not mutually exclusive either, so a patentee may rely on Article L. 615-5 for the infringement case and on Article 145 for facts falling outside the patent, such as unfair competition.

Two points deserve attention in the drafting. Confidential material should be placed under sequestration in the order itself, so that the sorting of trade secrets takes place under judicial control. And the intended use abroad should be stated, since the Hague Convention of 18 March 1970 on the taking of evidence abroad may offer a parallel route that the other court will expect to see considered. The order should also identify the documents sought by category and by period, since a request framed too broadly is the usual reason for refusal or for later retraction.

Further reading

Philips v. Thales

However, a recent case between Philips and Thales provides a good illustration of how this kind of seizure can be used in patent litigation (Tribunal judiciaire de Paris, 13 September 2022). In this case, infringement actions for GSM standard essential patents and a discovery procedure had been initiated in the United States by Philips against Thales after unsuccessful FRAND negotiations. Thales, which sought to prove Philips' abusive behavior during these negotiations, was authorized to carry out a protective seizure in France to recover documents that could prove the alleged abuse. Philips subsequently sued Thales to have the order retracted. This claim was dismissed by the judge.

The decision is interesting in that the judge specifies the conditions under which a protective seizure may be admitted and preferred to a seizure. The request must specify the circumstances that justify the departure from the adversarial principle. In this case, the justification lay in the fact that the documents sought consisted primarily of email exchanges, which could therefore be easily destroyed.

It should also be noted that the failure to disclose the parallel discovery procedure at the time of filing the request was not considered unfair, since, unlike the seizure, the protective seizure does not require the presentation of all the facts, but only those that justify the departure from the adversarial principle.

This example serves as a reminder that the protective seizure can be considered an alternative to the seizure as soon as a justification for departing from the adversarial principle is provided. Such an alternative may seem especially appealing as it does not require the seized party to be summoned within a month of the operations, and the grounds for retraction appear to be fewer than with a seizure. However, unlike the latter, the protective seizure must always be carried out before any litigation in France.

Author : Dhenne Avocats.