Sued for patent infringement: organising the defence

They combine: challenging infringement (claim-by-claim analysis, description of the technical differences), a counterclaim for revocation of the patent (art. L. 613-25 CPI), challenging the saisie-contrefaçon operations (application to set aside, discharge, narrowing of the sequestration, protection of the trade secrets seized), procedural pleas and, where exploitation is long-standing, prior personal possession (art. L. 613-7 CPI). Ahead of any dispute, a company wishing to secure a launch may also take the initiative of an action for a declaration of non-infringement (art. L. 615-9 CPI).

Most patent disputes end in a settlement. The negotiation must still take place at the right moment, on the basis of a documented balance of power (strength of the patent, real exposure, cost of the trial for each party) and without any irreversible evidentiary concession. We conduct these negotiations alongside the defence, never in its place.

A saisie-contrefaçon carried out against you opens a dispute of its own, with its own timetable. The party seized may apply to set aside the order or obtain release from the judge who made it, challenge the judicial officer’s exceeding of the mission and, above all, organise the protection of documents covered by trade secrets, kept under sequestration until the adversarial hearing (Art. L. 153-1 of the Commercial Code). If the applicant has not brought an action on the merits within the period set by regulation, twenty working days or thirty-one calendar days if longer, the whole seizure, including the description, is annulled at the request of the party seized, without any need to give reasons (art. L. 615-5 CPI).

For a European patent, opposition before the European Patent Office remains open for nine months from publication of the mention of grant (art. 99 CBE). Its effect is centralised across all designated States and it continues independently of national actions, which makes it as much a negotiating lever as a means of defence. The proprietor, for its part, has the request for limitation or revocation (art. 105bis CBE), and in France the surrender or limitation of claims (art. L. 613-24 CPI), often used to save a patent by narrowing its scope.

Sued before the Unified Patent Court, the defendant works to short and mandatory deadlines: the statement of defence is lodged within three months of service, and the counterclaim for revocation is lodged with it. Theopt out of the patent in suit is no longer possible once the action has been brought before the Court (Article 83 of the Agreement): the question is checked from day one, for the other patents in the portfolio as for the one at issue.

Failing to answer a cease-and-desist letter does not make the risk disappear: silence feeds the demonstration of bad faith and prepares a claim for provisional measures. Conversely, an over-detailed reply hands the claimant the technical analysis it has not yet carried out. A good reply is short, reserves all pleas and imposes a timetable for exchanges.