Patent infringement attorney in Paris and before the UPC

An infringement case is won on the evidence the saisie-contrefaçon (art. L. 615-5 CPI), a French tool without equivalent, allows the reality of the infringement to be recorded by a judicial officer, with an expert where necessary, up to and including on the premises of the alleged infringer. Its use demands rigour: application, scope of the mission, sequestration, time limit for bringing the action on the merits on pain of nullity. It is a specialty of the firm.

For a European patent, the action may come before the Paris Judicial Court or the Unified Patent Court, with different logics: timetable, language, territorial reach of the injunction, counterclaim risk. That choice, largely irreversible, shapes everything that follows: we document it systematically before issuing proceedings.

An action may be brought simultaneously before several national courts, as illustrated by Moderna’s claims against Pfizer and BioNTech, filed on the same day before the District Court of Massachusetts and the Düsseldorf Regional Court. We return to that strategy in our analysis.

On the jurisdiction of the French courts over acts committed abroad, the Court of Cassation quashed on 29 June 2022 the judgment that had refused to consider them: we draw the consequences in this study.

The article L. 615-7 CPI requires the court to take into account the negative economic consequences suffered, the moral prejudice and the infringer’s profits: or, as an alternative, a lump sum higher than the royalty that would have been due. Reconstructing the loss is an economic exercise in its own right, which we conduct with financial experts.

The Paris Judicial Court awarded Eli Lilly 28 million euros in damages in the Pemetrexed case, an amount then unprecedented in Europe.

The article L. 615-5-2 CPI makes it possible to obtain, if necessary under a periodic penalty, the production of documents or information held by the defendant or by third parties, in order to determine the origin and distribution networks of the allegedly infringing products, save for a legitimate impediment. It is often by this route that the basis for damages is built, when the seizure has only established the facts.

Beyond compensation, Article L. 615-7-1 CPI authorises recall from commercial channels, definitive removal, destruction or confiscation for the benefit of the injured party, as well as publication of the decision, all at the infringer’s expense. The injunction, provisional or permanent, is coupled with a periodic penalty whose amount and frequency are argued in the pleadings, not after judgment. Before the Unified Patent Court, the injunction covers all Contracting Member States in which the patent has effect and for which the Court is seised, which changes the scale of the risk for the defendant.

An action on the merits before the Paris Judicial Court is counted in years, with case management absorbing most of the time. Proceedings before the Unified Patent Court are, by contrast, designed to reach a hearing within about a year of the statement of claim, with strict written deadlines and little tolerance for late requests. That difference in pace is, in practice, one of the first criteria in the choice of forum, alongside the risk of counterclaim for revocation.

The temptation to issue proceedings immediately is a poor adviser. Three checks usefully precede any action: the strength of the patent against the prior art, standing to sue and its entry in the register, and the availability of evidence. The provisional measures make it possible, where the infringement is established, to obtain an injunction before judgment on the merits.