20 Oct
2021

France

Q: How can patent owners best enforce their rights in your jurisdiction?

The best way for patent owners to enforce their patent rights is to proceed before the first-instance civil court in Paris, which has exclusive jurisdiction in France in patent litigation. Proceeding before the criminal courts is possible, but rarely recommended.

Q: Are mediation and arbitration realistic alternatives to litigation?

To date, mediation has become a realistic alternative to litigation for certain types of patent dispute. Some French judges encourage parties to use mediation at the beginning or sometimes in the course of the proceedings. On the other hand, however, arbitration is rarely used and is generally not considered an alternative to trial.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

In civil courts, patent cases are heard by a panel of three judges with no technical background.

Q: What level of expertise can litigants expect from courts?

French judges handling patent litigation are educated and trained as professional judges. They are well versed in IP law but have no technical qualifications.

French patent judges do not generally appoint external technical experts of their own volition. At either party’s request, the patent judge may appoint a single technical expert to conduct experiments or otherwise evaluate technology in connection with the issues raised.

Q: Are validity and infringement dealt with together in proceedings?

Infringement and validity are usually judged in the same proceedings and there is a strong legal tradition behind this practice. When a nullity action is brought against a patent before an infringement action based on the same patent, both actions are generally joined.

Q: Who may represent parties engaged in a dispute?

The parties to patent litigation must be represented by barristers. Patent attorneys cannot represent a party in legal proceedings or formally appear before the French courts.

Q: Who may represent parties engaged in a dispute?

The parties to patent litigation must be represented by barristers. Patent attorneys cannot represent a party in legal proceedings or formally appear before the French courts.

Q: To what extent is forum selection possible in your jurisdiction?

Forum selection is not possible. Indeed, the Court of Paris has exclusive jurisdiction for patent litigation in France.

Q: To what extent is pre-trial discovery permitted?

Traditionally, pre-trial discovery has been limited to the seizure of evidence, which can be ordered zex parte at the request of the party that believes that its rights have been infringed. It may be advisable to show that likely acts of infringement have taken place in France to have the court order granted. The scope of the evidentiary seizure order is usually broad enough to encompass both documents and physical evidence of infringement, including in relation to:

  • the origin of the product or process;
  • the customers;
  • the purchase or sale price of the allegedly infringing product or process; and
  • the manufacture or operation of the allegedly infringing product or process.

In addition, pursuant to the EU IP Rights Enforcement Directive (48/2004/EC), during litigation the court may grant orders for the production of information or documents relating to, for example, the channels of distribution of the infringing product or process and the quantities produced, sold or delivered by the defendant.

Q: To what extent is evidence written and oral at proceedings?

French proceedings are solely written and there is no cross-examination or witnesses at the hearings.

Q: What role, if any, can expert witnesses play?

There are two categories of expert witness:

  • expert witnesses appointed by the court, who generally intervene to give an opinion on the infringement and on the evaluation of the damage; and
  • private expert witnesses appointed by the parties to provide written reports on technical or legal issues.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

The French courts liberally apply the doctrine of equivalents. According to French case law, two means, having different structures, are considered to be equivalent if they perform the same function leading to substantially the same result. The scope of the claim may therefore extend beyond its literal terms. The prior art limits the permissible extension of the scope.

The courts have recently exhibited a tendency to use a kind of prosecution estoppel in the application of the doctrine of equivalents to prevent the recapture of scope abandoned during examination.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

Business methods and software patents face the issue of whether the subject matter of the claims is excluded from protection under the law. This issue will arise in litigation where claims do not recite features that sufficiently set forth the technical nature of the invention. However, from a technical standpoint, enforcing patents on business methods and software is no more complex than those on other conventional technologies.

Biotech patents raise other problems. Certain legal issues are particular to biotechnology, but these have not been proven to cause difficulties for trial lawyers or the courts.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

French jurisprudence does not subscribe to the principle of legal precedent. The courts are empowered to apply and, where appropriate, interpret the law; they are not empowered to make the law. Accordingly, French court decisions are rulings on the merits of the facts of the particular case. The court is free to choose whether to follow or deviate from prior decisions.

However, first-instance courts tend to follow prior decisions of the appeal courts in order to avoid having their rulings reversed on appeal.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Under the constitutional principle of judicial independence, French courts are not bound by decisions of foreign courts or by the EPO. French judges often adhere to the principle of independence. In addition, there are no unifying EU regulations regarding how claims should be interpreted other than Article 69 of the European Patent Convention and the related protocol, which set out general principles on claim interpretation and give no guidance as to how the issue of infringement should be decided. However, in practice, French courts take into consideration foreign (mainly EU) decisions on the same issues, as well as evidence adduced in foreign proceedings.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

The French rules of civil procedure apply international standards and resemble those of other civil law jurisdictions. A defendant may delay proceedings by requesting the appointment of a court expert on technical issues. The plaintiff

can attempt to avoid delays in the proceedings by strictly complying with the court’s pre-trial schedule for submissions.

When the patent at stake is under opposition at the EPO, the defendant may request a stay of the proceedings until a definitive decision is rendered by the EPO. The plaintiff may oppose this request by showing that the patent is likely to be maintained at the EPO.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

Following implementation of the EU IP Rights Enforcement Directive, it is possible to seek a preliminary injunction to prevent an imminent threat of infringement. In order to obtain a preliminary injunction, the plaintiff must establish that the evidence adduced makes it likely that the patentee’s rights have been infringed. After some hesitation, the courts must now also consider the validity of the patent.

Previously, preliminary injunctions were granted in between 20% and 30% of cases. However, it is now more difficult to obtain them.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

A first-instance decision can be rendered in one year to 18 months in the case of a nullity action, if the parties abide by the pre-trial schedule. Decisions in infringement cases can be rendered in one to two-and-a half-years.

Q: How much should a litigant budget for in order to take a case through to a decision at
first instance?

The litigation team usually includes a trial lawyer specialised in IP matters, who represents the parties before the court; and a patent attorney specialised in litigation, who handles the evidentiary seizure procedure and works with counsel to develop the strategy, legal arguments and written submissions.

The total attorneys’ fees for the first-instance proceedings may range from €50,000 to €500,000, depending on the complexity of the technology and legal issues, and the parties’ motivations.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The prevailing party has a right to compensation for its legal fees. Such awards can be quite substantial and may cover all of its expenses.

Q: What remedies are available to a successful plaintiff?

Remedies granted to the prevailing plaintiff in patent litigation include an injunction against making, selling and using the patented subject matter, and an award of damages for injury suffered by the plaintiff. An injunction will usually be granted with dissuasive penalty payments for each violation of the injunction.

Q: How are damages awards calculated?

The courts can award damages for the injury that the plaintiff has suffered. Traditionally, this has been limited to a reasonable royalty basis where the plaintiff has not exploited the patented invention in France (ie, a royalty fee slightly higher than that which would be obtained through arm’s-length negotiations).

If the plaintiff has exploited the invention in France, it will have a right to lost profits – generally, gross margins on lost sales of the patented product or process. Typically, the court will appoint an expert to advise on the appropriate compensatory royalty fee for, and the plaintiff’s lost profits resulting from, the infringement. French law now also provides, pursuant to the EU IP Rights Enforcement Directive, that the court will consider the negative economic consequences of the infringement as well as the infringers’ profits.

Q: Under what circumstances will courts grant permanent injunctions?

Injunctions are always granted to the successful plaintiff in patent litigation, provided that the patent is still in force. The injunction may be suspended pending appeal, but is now more often granted notwithstanding the appeal, in

which case the plaintiff will bear damages caused by enforcement of the injunction award if the defendant’s appeal succeeds.

Q: Does the losing party at first instance have an automatic right of appeal?

The losing party in patent litigation has a right of appeal before the Paris Court of Appeal. Appeals are de novo proceedings, which give the parties the possibility of asserting new facts, arguments and grounds.

Q: How long does it typically take for the appellate decision to be handed down?

An appeal takes approximately the same amount of time as a first-instance decision.

Q: Is it possible to take cases beyond the second instance?

Court of appeal decisions may be brought before the Supreme Court. However, the Supreme Court may refuse to hear a case.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

French courts used to have a tendency to be pro-patentee and are now decidedly pro-patentee.

Q: Are there other forums outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

No, there are no other forums.

Q: In what circumstances do courts in your jurisdiction accommodate remote hearings, for example during pandemic-related lockdowns?

Courts have allowed remote hearings during pandemic-related lockdowns, mainly for urgent matters (ie, interim proceedings).

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

France is an attractive forum for patent litigation: the evidentiary seizure procedure is cost effective and quick; while the Paris court has exclusive jurisdiction over patent litigation and highly specialised judges, promising quality decisions. There is also an effective preliminary injunction system. In addition, the French courts are more pro-patentee than those of several other jurisdictions.