Patent Litigation 2024 Comparisons

The French Intellectual Property Code (IPC) provides three types of intellectual property rights for the protection of inventions:

• patents;
• utility certificates; and
• supplementary protection certificates (SPCs).

French patents arise from the filing of an application with the French Office for Intellectual Property (INPI).

Similarly, a French utility certificate can be obtained for a shorter duration.

SPCs are further discussed in 1.6 Further Protection after Lapse of the Maximum Term.

France is party to the European Patent Convention (EPC) and may therefore be designated in a European patent. Since 1 June 2023, European patents may have unitary effect. Where this unitary effect is granted, those patents are designated as “unitary patents”, and the Unified Patent Court (UPC) has exclusive jurisdiction over their validity and infringement. France is also party to the Patent Cooperation Treaty (PCT) and may consequently be designated in a PCT application.

In addition, French law (Article L.151-1 et seq, French Commercial Code) protects trade secrets (ie, information that is secret, has commercial value because of its secrecy, and has been subject to reasonable steps to keep it secret against its unlawful acquisition, use and disclosure).

France is a statute-based jurisdiction and uses case law for the purposes of construing applicable statutes. The IPC contains the core of French patent law.

Patents

The grant procedure for both French and European patents begins by filing an application before the INPI or the European Patent Office (EPO), respectively.

As for the French procedure, the INPI examines the application within two to five months. The INPI now has the authority to refuse an application for lack of inventive step, where previously the INPI could only refuse a patent for lack of novelty or non-industrial applicability. Then, the INPI transmits to the applicant a prior art search report with its opinion on the patentability of the invention. The applicant can respond to the INPI’s observations within three months and/or amend its application. Within a period of three months from publication, the applicant may receive observations from third parties to which they must reply. At the end of this period, the INPI establishes a final report and, if the registration fees are paid, the patent can be granted within six months.

The EPO procedure differs slightly as the prior art search report and the opinion on patentability are transmitted before any substantive examination of the application. The publication of application occurs 18 months after the filing date. Within six months of the publication, the applicant can decide whether to abandon or pursue with an examination on the merits by the EPO. During this period, the EPO may require the applicant to provide additional information.

Since 1 June 2023, the unitary effect of a European patent may be requested within one month of its grant. During the transitional period, which will last until 2030 (renewable once for seven years), the applicant must only provide a translation of the patent in one language (in English for patents granted in French or German and in any EU language for patents granted in English). After this transitional period, no translation will be required.

Utility Certificates

The grant procedure for a French utility certificate is essentially the same as the above-mentioned French patent procedure, with the exception that it does not involve any prior art or substantive validity examination by the INPI. Publication of the application occurs 18 months after the filing date or priority date.

Trade Secrets

There is no grant procedure for trade secrets as protection is automatically conferred to the person lawfully in control of confidential information for which reasonable steps have been implemented to preserve its secrecy.

Patents

The grant procedure for French and European patents can last several years, depending on the complexity of the invention and its technical field. On average, it takes from two and a half to four years before the INPI and four years before the EPO.

Representation by a qualified attorney is not mandatory before the INPI, but is recommended. Similarly, applicants can file European patent applications themselves, unless their residence or place of business is located outside an EPC contracting state.

Official taxes are payable to the INPI:

• EUR26 for the filing of the application;
• EUR520 for the search report; and
• EUR90 for the granting of the patent.

Fee reductions may apply for individuals, educational or research non-profit organisations and small companies.

The total procedure for European patents costs approximatively EUR6,100 (or EUR5,875 for online applications).

Patent attorneys’ fees range from EUR5,000–6,000.

Utility Certificates

The grant of a utility certificate usually takes two years after the filing. The above patent fees equally apply to utility certificates, with the exception of the search report fee.

Protection for both French and European patents lasts for 20 years from the application date, provided annual fees are duly paid.

Utility certificates are granted for a period of ten years from the application date.

Trade secrets are protected indefinitely.

Patentee Rights

The patentee has the exclusive right to exploit the patented invention.

In particular, the patentee has the exclusive right to use the invention to manufacture and put on the market the patented products or those obtained by the patented process. The patentee is also entitled to assign or license its rights and decide who can use, make, distribute or sell the patented invention. Unauthorised use of the invention qualifies as an infringement for which the patentee may obtain injunctions and damages.

Patentee Obligations

In France, any third party can request the grant of a compulsory licence before the Paris Court of First Instance (Article L.613-11, IPC) if, in the absence of any lawful excuse, at the end of a three-year period after the grant, or four years from the application date, the patentee:

• has not exploited the patented invention or made effective and serious preparatory measures to do so;
• has not marketed the patented products in sufficient quantity to satisfy the French market’s needs; or
• has abandoned the exploitation of the patent for more than three years.

Moreover, an annual fee shall be paid to maintain the patent in force.

While annual fees relating to French patents and to the French part of European patents must be paid to the INPI, annual fees of unitary patents are to be paid to the EPO.

The protection cannot be extended beyond the 20-year period from the application date (Article L.611-2, IPC). However, the following patents are eligible for an SPC:

• a medicinal product;
• a process for obtaining a medicinal product;
• a product necessary for the manufacture of a medicinal product; or
• a process for the manufacture of a medicinal product.

SPCs aim at extending the period of protection by taking into consideration the time required to obtain a marketing authorisation (MA). SPC applications must be filed within six months after the grant of the first MA, or alternatively within six months of the grant of the patent if the MA is granted before the patent.

SPCs take effect on the expiry of the patent for a duration that cannot exceed seven years after this expiration and 17 years from the grant of the MA (Article L.611-2, IPC), provided that the total protection period, patent included, cannot exceed 20 years.

SPC Waivers

Regulation (EU) 2019/933 on SPCs has created waivers to the protection conferred by an SPC to ensure competitiveness. Importantly, the manufacture of a product or a medicinal product containing the concerned product, for the purposes of exporting to third countries, or any related act strictly necessary for the manufacture or export of such a product, is now permitted.

Furthermore, MA holders can now conduct all preparatory acts for the marketing of the generic in an EU member state six months before the expiry of the SPC.

In France, any third party may, up to three months after the publication of the search report, submit written observations to the INPI related to the novelty or inventive step of an invention (Articles L.612-13 and Article R.612-63, IPC). As for utility certificates, third parties can submit observations until their grant (Article R.616-1, IPC). Applicants can reply to the observations within a one-time renewable period of three months (Article R.612-64, IPC).

Before the EPO, after the publication of a European patent application, and as long as its examination is ongoing, third parties may file observations concerning the patentability of the invention.

The refusal of the INPI to grant a patent or utility certificate is notified to the applicant. An applicant can file before the INPI a request for a review of the decision (recours gracieux). Such a request is admissible only if the decision is deemed to be unlawful, no ground of expediency is accepted. Thereafter, the INPI can withdraw its decision within four months.

An applicant can also appeal the INPI’s decisions before the Paris Court of Appeal within one month (extended by one month for residents of French overseas territories and two months for foreigners) from the notification of the decision. The decision handed down by the Court of Appeal may be appealed before the Supreme Court (Cour de cassation), either by the applicant or the INPI.

Where a European patent is refused, the applicant can appeal to the EPO’s Boards of Appeal within two months of the notification of the decision. The applicant may further lodge an appeal before the Enlarged Board of Appeal.

Failure to pay annual fees of a French, European or unitary patent by the due date can lead to the lapse of the exclusive rights. The payment is due on the last day of the month of the anniversary of the filing date of the application. Failure to do so can be remedied, within a grace period of six months, subject to the payment of the fees plus a penalty amounting to 50% of the belated fees.

French law allows patentees to request before the INPI, in writing, the abandonment or amendment (ex parte) of one or several patent claims (as well as the description and the drawings) to reduce the scope of protection of the invention (Articles R.613-45 and L.613-24, IPC). In cases of co-ownership, such waiver or limitation must be requested by all co-owners. The request must include the full text of the amended claims and, where applicable, be accompanied by the amended descriptions and drawings. The INPI generally issues its decision within 12 months from the date of reception of the request (Article R.613-45-1, IPC).

If filed after the introduction of an opposition, a request to amend is deemed inadmissible as long as the decision on the opposition is subject to appeal. Similarly, if an amendment request is pending on the date an opposition is filed, the request is dismissed.

In the context of opposition proceedings, the patentee is entitled to amend the claims, provided that such amendments:

• correspond to one of the grounds of opposition raised by the opponent; and
• comply with the patentability requirements under the IPC.

See 4.3 Amendments in Revocation/Cancellation Proceedings with respect to amendments in inter partes revocation/cancellation proceedings.

Before French courts, patent infringement is a tort under civil law and the patentee can either initiate civil or criminal proceedings (Articles L.615-1 and L.615-14, IPC).

A civil procedure on the merits can be initiated either through regular or accelerated proceedings. For the latter, the claimant must obtain (ex parte) the authorisation to summon the defendant on a fixed day under special emergency rules.

Preliminary measures are deemed to prevent imminent infringement or to stop infringement (see 2.7 Interim Injunctions). Several preliminary measures are available for claimants, including:

• preliminary injunctions to stop the alleged infringing acts, eventually under a penalty;
• the seizure of the goods or their withdrawal from distribution; and
• a financial provision to the benefit of the claimant, if the existence of the damage is not seriously questionable.

Summary proceedings generally last between three and five months at first instance, and six months on appeal.

Infringement of a European patent with unitary effect gives rise to an infringement action before the UPC (see 2.3 Courts With Jurisdiction).

Criminal Action

Criminal proceedings are rarely initiated for several reasons, including:

• the requirement to prove the infringer’s bad faith;
• the unavailability of injunctions;
• the absence of specialised intellectual property judges; and
• the low cap of recoverable damages.

In practice, criminal proceedings are more popular in cases concerning pirated goods or where the claimant seeks to establish the criminal liability of a corporate director.

Customs

Border customs measures are equally available under Regulation (EC) 1383/2003 as well as under Article L.614-32 of the IPC. Such measures are useful to detect the entry into French territory of infringing goods and allow the patentee to gather infringement evidence before the release by the customs of the detained goods or the initiation of a court action.

Opposition Action

The Law on Business Growth and Transformation (the “PACTE Law”) has created an opposition procedure before the INPI against patents registered from 1 April 2020 (Articles L.613-23 et seq and R.613-44 et seq, IPC). Oppositions can be filed:

• within nine months following publication of the grant of the patent;
• by any third party; and
• if the subject matter of the patent is not patentable, if the patent does not describe sufficiently the invention for a person skilled in the art, or if the subject matter of the patent extends beyond the content of the application.

If the opposition is upheld, the patent can be revoked in whole or in part, or be maintained in an amended version (Article L.613-23-4, IPC). The INPI’s opposition decisions, which are issued approximately 17 months from the filing of the opposition, can be appealed before the Paris Court of Appeal.

Revocation/Invalidation Action

Pursuant to Article 31 of the French Civil Procedure Code (CPC), a revocation or invalidation action may be initiated by any third party with a legitimate interest, defined as a direct and personal interest, on the date of the introduction of the proceedings. French judges have specified that “the interest in bringing an action for revocation must be recognised for any person who sees his economic activity in the field of invention actually or potentially but certainly hindered by the claims whose invalidation is sought”, but also for “plaintiffs who are not competitors of the patent holder but consumers and patients […] provided that such an action is in favour of the public interest” (Paris Court of First Instance, 16 March 2017 and 24 January 2020, respectively).

Action for a Compulsory Licence

To apply for a compulsory licence, the applicant must prove (Article L.613-12, IPC) that:

• it can exploit the invention in a serious and effective manner; and
• it cannot get a licence from the patentee.

Thereafter, the court sets the terms and conditions of the compulsory and non-exclusive licence (Articles L.613-12 and L.613-13, IPC).

Declaration of Non-infringement

A declaration of non-infringement can be brought by any third party providing evidence of serious preparatory acts for industrial exploitation and having asked the patentee to state whether the patent would be infringed by such exploitation (Article L.615-9, IPC). If the patentee fails to answer within three months, or in the case of a disagreement, the third party can bring an action before the Paris Court of First Instance, requesting that it hold that the exploitation does not fall within the scope of the patent at stake.

In France, at first instance, patent disputes fall within the exclusive jurisdiction of the Paris Court of First Instance handled by specialised judges of the third Chamber (divided into three sections of three judges). Appeals are examined by the Fifth Division of the Paris Court of Appeal. Decisions of the Court of Appeal can be appealed to the Supreme Court (Cour de cassation).

French courts have exclusive jurisdiction to rule on French patents and on the French parts of opted-out European patents. They can also hear action brought against European patents which are not locked in the UPC system.

Since the UPC is operational, it has jurisdiction for disputes concerning European and unitary patents: this jurisdiction is exclusive for unitary patents but shared with national courts during the transitional period regarding European patents.

The UPC allows using a single channel instead of filing actions before each European jurisdictions. The first instance includes local divisions located in EU member states party to the Unified Patent Court Agreement (UPCA), and a central division located in three countries, each specialised in a technical domain (the main one seating in Paris). The Court of Appeal is located in Luxembourg.

The INPI has no jurisdiction over patent infringement disputes.

A local division and a section of the central division of the UPC are located in Paris.

The first prerequisite is to gather evidence of the alleged infringement by any means available (see 2.10 Mechanisms to Obtain Evidence and Information).

Subsequently, the patentee or exclusive licensee usually sends a formal notice requesting the cessation of the infringement.

If the value of the dispute does not exceed EUR5,000 (which is rare in patent matters), the claimant is required to attempt conciliation before bringing the action (Articles 54 and 750-1, CCP). This formality may be waived in cases of urgency or when an ex parte decision is needed.

Then, if the infringer fails to respond to the formal notice, or if the patentee is not satisfied by the outcome, patent proceedings can be introduced by serving a writ of summons upon the defendant before the Paris Court of First Instance.

Before the French courts, parties shall be represented by an attorney-at-law from the Paris Bar. Attorneys from other French Bars may also represent the parties before the courts during oral hearings, but must appoint a member of the Paris Bar to serve as representative.

For any dispute before the Supreme Court, parties must be represented by specialised attorneys.

Before the UPC, representation is also compulsory, either by lawyers authorised to practise in an EU member state or by European patent attorneys entitled to act before the EPO. Both are authorised to practise before every court and division of the UPC.

Article L.615-3 of the IPC allows any person with standing to bring an infringement action. This includes the right to request, either ex parte or inter partes, any preliminary relief to prevent imminent infringement or to stop infringement by the alleged infringer or its intermediaries.

Preliminary injunctions are usually granted where:

• the patent is likely to be found valid;       
• its infringement is likely;
• there is a significant risk of damage for the patentee resulting from the infringement; and
• the interim injunctions requested are strictly proportionate.

It has been found that requests to prohibit the sale of alleged infringing products and their withdrawal from distribution channels are disproportionate since the patent invoked was to expire in the following weeks and was not being operated (Paris Court of First Instance, 20 January 2020).

While in 2022 the President of the Paris Court of First Instance had, for the first time in France, ruled admissible an application for interim injunctions grounded on a European patent application (Paris Court of First Instance, 3 June 2022), this decision has been overturned in appeal (Paris Court of appeal, 22 March 2023).

Similarly, Article 62 UPCA provides that the UPC may order interim injunctions to prevent or stop infringement and takes into account the prejudicial effects of the measures before ordering them.

In France and before the UPC, preliminary proceedings may be started either before or after the action on the merits. In the first scenario, the action on the merits must be brought within 20 business days (or 31 calendar days) starting from the date of the court order. Failing to do so triggers the automatic cancellation of the measures granted.

Finally, it should be noted that French law provides for a strict liability for right holders who have obtained the enforcement of provisional measures based on a title that has subsequently been revoked (Article L.111-10 of the Code of Civil Enforcement Procedures). In a decision of 11 January 2024, C-473/22, the CJEU recognised that such a rule complies with Article 9 of the Directive 2004/48, provided that the national courts have the power to adjust the amount of the damages.

In France, protective letters against potential ex parte injunctions or a seizure (saisie-contrefaçon) are not admitted. However, such restriction is balanced by the fact that:

• ex parte interim injunctions remain rare; and
• potential opponents may challenge the order authorising the saisie-contrefaçon (see 2.10 Mechanisms to Obtain Evidence and Information).

However, protective letters may be lodged before the UPC (Rule 207 of the Rules of Procedure). Such letter must provide an indication of the facts relied on, which may include a challenge to the facts expected to be relied on by the presumed applicant and/or, where applicable, any assertion that the patent is invalid and the grounds for such assertion. Attached to this letter must be any available written evidence relied on. Anyone willing to lodge a protective letter does not need to do so before every division as the UPC Registry must provide details of the protective letter to all divisions. The protective letter is not publicly available on the Register until it has been forwarded to the applicant for provisional measures, where such provisional measures are lodged against the author of the protective letter. If no application for provisional measures has been lodged within six months from the date of receipt of the protective letter, it is removed from the Register unless the person who has lodged the protective letter, prior to the expiry of such period, applies for an extension of six months.

The UPC is not bound by protective letters. Based on their content, it may decide to:

• inform the defendant about the application and invite it to lodge an objection to the application;
• summon the parties to an oral hearing;
• summon the applicant to an oral hearing without the presence of the defendant; or
• rule on the application without hearing the defendant.

Before French civil courts and the UPC, the limitation period for infringement actions is five years from the day on which the patentee knew or should have known that the infringement had occurred.

Criminal actions before French courts must be filed within six years of the day on which the offence was committed.

Finally, before the French courts as before the UPC, no limitation periods apply to patent nullity actions.

In France and before the UPC, there is no discovery procedure. Therefore, the parties remain free to disclose the evidence of their choice subject to what is set out below.

The IPC and UPCA, however, provide mechanisms allowing the access to evidence and information.

Infringement Seizure (Saisie-Contrefaçon)

In practice, infringement seizure is one of the most widely used and efficient probative measures in France. To perform it, the claimant must obtain an order from the President of the Paris Court of First Instance by way of an ex parte request precisely specifying the scope of the seizure. The seizure can only be performed by a bailiff, generally alongside an expert or patent attorney.

The bailiff may seize samples of infringing goods and any documents needed for the assessment of the infringement and the damage suffered.

The UPCA provides that, at the request of an applicant who has presented reasonably available evidence to support that the patent is being or is about to be infringed, the UPC may, even before the commencement of the proceedings on the merits, order:

• the detailed description, with or without the taking of samples;
• the physical seizure of the infringing products, and of the materials and implements used in the production and/or distribution of those products and the documents relating thereto; and
• the inspection of the premises.

The main difference between the two systems is that, while in France the process for requesting a seizure is automatically ex parte, the UPCA provides that, unless accepted by the Court, the procedure for obtaining a seizure before the UPC is adversarial. To obtain from the UPC that the procedure remains ex parte, the applicant must:

• prove that a delay is likely to cause irreparable harm to the applicant;
• prove that there is a risk of evidence being destroyed; or
• provide any material fact known which might influence the UPC in deciding whether to make an order without hearing the defendant.

In this respect, it is noteworthy that, on 13 and 14 June 2023, the Milan local division issued two orders (500663/2023 and 500982/2023) authorising seizures at an international trade fair taking place in Italy. On this occasion, the Milan local division considered that the circumstances did not justify the defendants being heard beforehand, given the time constraints (the trade fair ended on 14 June) and the risk that the evidence would no longer be accessible after the end of the trade fair since the defendants were companies based outside the jurisdiction and the items sought might be destroyed or concealed after the trade fair was over.

In France as before the UPC, seizures are only valid provided the claimant brings proceedings on the merits within 20 working days or 31 calendar days.

Bailiff’s Report

The patentee may also gather evidence by means of a bailiff’s report. The bailiff takes note of the offer to sale of the litigious products and the purchase by an independent third party. French case law tends to apply strict rules protecting the interests of the person seized and imposes the independence of the bailiff and the purchaser.

Information About Distribution

Furthermore, Article L.615-5-2 of the IPC (before French courts) and Article 67 of the UPCA (before the UPC) provide for a right of information allowing the patentee to request any documents and information necessary to determine the origin and the extent of the distribution networks of the alleged infringing products or processes.

Judicial Powers

French and UPC judges are also vested with investigative powers and are entitled to issue injunctions requesting the production of evidence against one party, if necessary, under a penalty payment. They may also, at the request of one of the parties, order the production of any document held by a third party provided there is no legitimate impediment.

The UPCA also provides in its Article 60(3) that the Court can order the inspection of premises, conducted by a person appointed by the Court.

As a preliminary step, the claimant must demonstrate in the writ of summons its legitimate interest to sue and, during an infringement action, that the maintenance costs have been paid.

Before French courts, several pre-trial hearings are usually set for the filing of submissions and exhibits in reply to the arguments raised by the other party. However, if a claimant has opted for expedited proceedings, all arguments and evidence must be gathered when serving the writ and additional claims, or new evidence might not be allowed afterwards. In any event, once the closing order is issued by the court, the parties cannot further amend their claims or introduce additional arguments or evidence. Only the facts, legal arguments and evidence disclosed in the written submissions and communicated between parties can be discussed during oral pleadings.

Before the UPC, infringement actions are brought by lodging a statement of claim which must contain similar information (listed in Rule 13 of the Rules of procedure) to that required before French courts.

In this respect, the procedure before the UPC mainly differs from the French one in that, most of the time, each party may file only two statements, and the pre-trial procedure only starts after the lodging of the statement of defence. The UPC judge-rapporteur also has increased powers compared to the French pre-trial judge.

No class actions regarding intellectual property matters can be brought before French courts or before the UPC.

In France, as before the UPC, no defence for inequitable conduct can be raised.

Based on the principle of res judicata, a party can be estopped from filing a claim if it has previously brought the same claim and lost.

No acquiescence defence exists (ie, the delay taken by the patentee before the proceedings cannot be used as a defence, except when the statute of limitations period has run out).

In general, French competition law does not prevent the patentee from obtaining compensation in the case of an infringement. Nevertheless, patentees are sometimes restricted in their assertion of rights to prevent anti-competitive behaviours, such as an abuse of a dominant position. For example, following the Huawei decision of the CJEU of 16 July 2015, French courts would consider whether a FRAND licence was offered beforehand, in which case the patentee should be allowed to bring an infringement action and seek an injunction without this being regarded as an abuse of a dominant position.

An infringement action can be initiated by:

• the patentee;
• each co-owner for their own benefit in the case of co-ownership, provided that the others are informed (unless otherwise stated in the co-ownership agreement); or
• an exclusive licensee, provided the licensing agreement does not stipulate otherwise, and if, after formal notice, the patentee has failed to institute proceedings (in that case, the patentee has the right to intervene.

As for non-exclusive licensees, French law provides that they are not entitled to take such action, even with the patentee’s consent. They can only intervene in the proceeding to obtain compensation for damages they have personally sustained. On this point, French law differs from the UPC as the UPCA provides that a non-exclusive licensee is able to initiate proceedings if expressly allowed in the licence agreement.

If the patent has been assigned, the assignee can only initiate proceedings if the assignment agreement has been registered and published. The assignee cannot claim damages for infringing activities that occurred prior to the assignment publication, unless expressly agreed between the parties.

In France, criminal actions can be brought by the patentee, its exclusive licensee, the prosecutor or the French customs.

Direct Infringement

The following acts are deemed to be direct infringement (Article L.613-3, IPC):

• the manufacturing, offering, placing on the market, use, import, export or transhipment of the patented product;
• the stocking of the patented product for the above-mentioned purposes;
• the use of a process covered by the patent or, where the third party knows or where the circumstances make it obvious that the use of the process is prohibited without the consent of the owner of the patent, the offer of its use on French territory; and
• offering, placing on the market, using, importing, exporting, transhipping or holding for the aforementioned purposes a product obtained directly by the process covered by the patent.

Under Article 25 of the UPCA, the following acts are deemed to be direct infringement:

• making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes;
• using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the contracting member states in which that patent has effect; or
• offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent.

Indirect Infringement

Indirect infringement occurs where an unauthorised person delivers or offers to deliver the means of implementing an “essential part” of the patented invention, when the person knows or should know, given the circumstances, that those means are used to implement the protected invention (Article L.613-4, IPC and Article 26, UPCA). The prohibition does not apply if such means are common commercial items.

Indirect infringers can only be liable for damages if they knew that their activities were infringing. For this reason, warning letters should be sent to put indirect infringers in full knowledge of the infringement.

Special attention should be paid to the drafting of any letter informing clients of the alleged infringement: under French law it can qualify as disparagement and unfair competition against the infringer in so far as the addressees of the letter cannot verify the merits of the claims and do not have access to the infringer’s objections (French Supreme Court, 9 January 2019).

Acts relating to products obtained directly by a process which is the subject matter of the patent amount to infringement and are also prohibited.

It should be underlined that placing on the market, offering for sale or importing into France can be held even against a foreign operator.

In principle, the scope of protection is determined solely by the claims, in light of the description and drawings.

Claim construction should be as accurate as possible in regard to the claims, without, however, being too literal, and shall not distort the subject matter protected by the patent. French case law has defined a doctrine of equivalents under which an infringer may be held liable for patent infringement even if the infringing product or process does not fall within the literal scope of the claims, but is nevertheless equivalent to the claimed invention. In this context, the infringement is constituted if the essential means of the patent are equivalent, meaning that, despite being different, they perform the same function to reach an identical or similar result, and provided the said function is novel.

When invoked by a party, judges take the prosecution history into account as part of the factual context, both when interpreting the claim and when considering whether there is infringement pursuant to the doctrine of equivalents. In particular, they pay attention to any narrowing of the claim(s) that has been made to avoid any conflict with relevant prior art and to secure the grant of the patent. In such cases, the extent of protection can be limited to the particular claimed means and the doctrine of equivalents would not apply.

Similarly, in a decision issued on 20 December 2023 (292/2023), the Munich local division of the UPC, when interpreting the claims of the patent as granted, also considered the original claims and the granting history.

Invalidity and Procedural Defences

Before French courts, the alleged infringer can dispute the claimant’s capacity or authority to initiate proceedings, and can assert procedural defences including the lack of claimant’s standing to sue, nullity of the writ of summons and/or the running of the statute of limitations. Good faith cannot constitute a valid defence, except for indirect infringers.

Furthermore, defendants can always challenge the validity of the patent on the basis of:

• lack of novelty;
• lack of inventive step;
• lack of industrial application;
• excluded subject matter;
• insufficiency;
• added matter beyond the content of the application; or
• extension of the scope of the patent claims after amendment.

Other available defences are set out below.

Before the UPC, once the applicant has lodged the statement of claim, the defendant has one month to file preliminary objections disputing the jurisdiction and competence of the UPC, the competence of the division, and the language of the statement of claim.

Moreover, the defendant has three months to file a statement of defence. This statement can include an assertion that the patent is invalid on the same grounds as before French courts.

As before French courts, other defences are available.

Non-infringing Acts

Under Articles L.613-5 et seq of the IPC and Article 27 of the UPCA, the rights conferred by a patent shall not extend to some situations, these include:

• private non-commercial use;
• experimental use relating to the subject matter of the patented invention;
• preparation for individual use in a pharmacy;
• acts, studies and tests required for the filing of an application for a marketing authorisation or the grant of an advertising visa (the Bolar exemption);
• acts performed to create, discover or develop new plant varieties;
• objects intended to be launched into outer space introduced into French territory;
• the farmer’s privilege, allowing farmers to use the product of their harvest for propagation or multiplication on their own farm; and
• the breeder’s privilege, allowing breeders to use the protected livestock for agricultural purposes.

Personal Prior Possession

French law and the UPCA state that any person who, in good faith on the date of patent filing or priority, was in possession of the patented invention, is entitled to exploit the invention.

The French court welcomed such an exception when Fresenius, the patentee for a drug for the treatment of autoimmune diseases initiated an infringement action against Amgen, a drug manufacturer selling in France (Court of First Instance of Paris, Fresenius Kabi Deutschland GMBH v Amgen, 14 February 2019).

The decision recalls the four requirements to benefit from the exception:

• the technique must be possessed in good faith and be identical to the invention; and
• the prior possession must be established on French territory and prior to the filing date, or the priority date, of the patent application.

Exhaustion of Rights

A patentee cannot prevent the sale, marketing or import or export of a patented product within the EU if it had already been put onto the market in another member state by the patentee or with their consent (Article L.613-6, IPC and Article 29, UPCA).

Competition Law

French courts take into consideration fair, reasonable and non-discriminatory (FRAND) issues related to standard essential patents (SEPs) before granting injunctions on the basis of such rights. See also 2.13 Restrictions on Assertion of an Intellectual Property Right.

French judges may appoint legal experts to assist them on technical issues or on the assessment of damages, either on their own initiative or at the request of the parties.

Legal experts shall issue a written report which can subsequently be challenged by the parties. Expert reports are not binding on judges.

The parties themselves can also support their case with private experts’ opinions.

Before the UPC, experts play a central role. The UPC can, at any time, appoint court experts for specific aspects of the case. Parties are also allowed to lodge written witness statements and to make applications for the hearing of witnesses in person. Moreover, the UPC may order, of its own motion, that a witness be heard in person. The president, the judges of the panel and the parties may put questions to the witness.

There is no separate procedure for construing a patent’s claims. Before French courts, issues related to validity, claim construction and infringement are assessed within the same proceedings.

Before the UPC, an action for revocation must be brought before the central division. Revocation actions are divided between the sections of the central division according to the technical field to which the contested patent belongs. The Paris seat has jurisdiction to rule on patents relating to performing operations, transportation, textiles, paper, fixed constructions, physics, and electricity. In addition, on 2 June 2023 an agreement was found between the Italian, the French and the German governments notably providing that the Paris seat will inherit of the jurisdiction over all SPCs. Until the 2 June agreement enters into force, Paris also has jurisdiction over human necessities patents.

Moreover, if the revocation is a counterclaim during an infringement action, the local/regional division ruling on the infringement of the patent can:

• rule on the counterclaim for invalidity, but request the assignment of a technical judge;
• refer the counterclaim to the central division and stay the infringement action; or
• at the request of the parties, refer the whole case to the central division.

Interestingly, in an order issued on 13 November 2023, the judge-rapporteur of the Paris seat of the Central Division held that the revocation action brought by Meril Italy against a patent owned by Edwards Lifesciences Corporation was admissible, despite the fact that an infringement action brought against Meril India (which was 100% owned by Meril Italy) based on this same patent was ongoing before the Munich local division.

In the context of infringement proceedings, French courts may order any party, including third parties, to produce documents or request a consultation with, or the expertise of, a technician in the relevant field (Articles 11, 232 and 263 et seq, CPC). However, such a measure is rarely used.

Revocation/cancellation can be brought independently or by way of counterclaim in the context of an infringement action.

French courts may revoke/cancel a patent if (Article L.613-25, IPC):

• the subject matter of the patent is not patentable (namely that it lacks novelty, inventive step, is not capable of industrial application and/or is generally excluded from patentable subject matters);
• the patent does not clearly and completely describe the invention for a person skilled in the art;
• the subject matter of the patent extends beyond the content of the application filed; or
• the scope of protection has been extended after limitation or opposition.

The UPC ensures that the patent at stake meets the requirements of the EPC (novelty, inventive step, sufficiency of disclosure, no added matter as well as patentability).

As explained in 3.7 Procedure for Construing the Terms of the Patent’s Claim, the distribution of revocation/cancellation actions among the divisions of the UPC depends on several factors.

French and European patents can be revoked/cancelled partially, as a result of an invalidity decision (Article L.613-27, IPC and Article 65(3), UPCA).

Patentees can amend their patent claims in the context of revocation/cancellation proceedings before the French courts. Such an amended patent then becomes the subject matter of the revocation/cancellation action. It should however be noted that a party who, in the course of the same proceedings, makes several limitations to their patent in a dilatory or abusive manner may be ordered to pay a civil fine up to EUR3,000, without prejudice to any damages that may be requested.

Patentees are not allowed to amend patent claims before the UPC. However, they can request a limitation before the EPO. The UPC may stay its proceedings when a rapid decision can be expected (Article 33 (10), UPCA).

There is no bifurcation before French courts. Claims related to both validity and infringement are assessed in the same proceedings.

Before the UPC, validity and infringement can be heard by the same division or split between a local/regional division and a seat of the central division.

Indeed, while most infringement actions must brought before a local/regional division, as explained in 3.7 Procedure for Construing the Terms of the Patent’s Claim, an action for revocation must be filed before the central division.

When the revocation is a counterclaim during an infringement action, the local/regional division ruling on the infringement of the patent can:

• rule on the counterclaim for invalidity, but request the assignment of a technical judge;
• refer the counterclaim to the central division and stay the infringement action; or
• at the request of the parties, refer the whole case to the central division.

Rules applicable to intellectual property proceedings follow the procedural laws of the CPC. Special procedural provisions, including the IP-specific summary proceedings, proceedings on the merits and infringement seizures, are set out in the IPC and described, notably, in 2.1 Actions Available Against Infringement and 2.10 Mechanisms to Obtain Evidence and Information.

In France, the Commercial Code provides a specific form of protection for trade secrets, which is of interest in patent litigation, both for the claimant and the defendant.

In the context of an infringement seizure, Article R.615-2 of the IPC provides that the judge, either ex officio or at the request of the defendant, may sequester seized documents in order to preserve their confidentiality.

During the course of the proceedings, the judge may also implement procedures to preserve the confidentiality of the evidence exchanged (Article L.151-1 et seq, French Commercial Code). The judge may examine the document individually, seek the opinion of the parties, and then decide to limit the disclosure of the document by way of a summary or restrict the access to certain persons (in a so-called confidentiality club).

The UPCA also provides, in a similar way to French law, that confidential information shall be protected.

In cases of patent infringement, first instance proceedings before French courts usually take two to three years. A series of pre-trial hearing take place during which each party files submissions and communicates evidence.

A final pleading hearing, during which each party’s counsel makes their arguments, takes place after the closure of the written proceedings. The first instance court decision is usually issued within one or two months following the pleadings and usually provides a ruling on the infringement and the remedies at the same time.

The UPC’s ambition is to render first instance decisions within one year from the date of filing of the case.

Although patent litigation is handled by specific chambers of the Paris Court, with exclusive jurisdiction over patent-related matters (as detailed in 2.3 Courts With Jurisdiction), the judges do not have a technical background and no jury system exists.

There is no jury before the UPC either. The local and regional divisions consist of legal judges, with no technical background. However, during an action before a local/regional division, the Court can request the President of the first instance court to appoint a technical judge with background in the technical field (Article 8(5), UPCA). The panels of the central division and of the Court of Appeal consist of legal and technical judges, the latter having a technical background.

Settlements in the course of French patent infringement proceedings are common. The patentee can try to settle the case amicably through a settlement agreement or through other forms of alternative dispute resolution (ADR) techniques (see 9.1 Type of Actions for Intellectual Property). Over the last year in France, approximately 50% of patent infringement cases were settled prior to trial.

It should be noted that the judge may recommend, at any time during the proceedings, a conciliation or mediation measure to the parties, especially if they do not justify any steps taken to reach an amicable resolution of the dispute.

Before the UPC, the parties may settle the case at any time in the course of proceedings (Article 79, UPCA). The settlement agreement shall be confirmed by a decision of the Court.

Mediation and arbitration are also available.

Proceedings initiated before French courts can be continued without having to stay the case pending other national courts proceedings.

However, the French courts can take into consideration the decisions of other courts, both as regards the validity of the patent and infringement.

In addition, an infringement action based on a French patent can be stayed when the patentee has also applied for a European patent over the same invention. Such a suspension is only lifted after the grant, rejection or withdrawal of the European patent. 

Likewise, if French judges are asked to rule on the infringement of the French part of a European patent, while an opposition before the EPO is pending, the judges might stay the infringement action until the outcome of the European opposition proceeding.

When determining whether to stay the proceedings in other circumstances, judges focus on ensuring a proper administration of justice, and take into account:

• the seriousness of the invalidity grounds invoked;
• the impact of the stay on the duration of the proceedings; and
• the extent of any harmful consequences for the patentee.

Lastly, it should be noted that anti-suit injunctions are not allowed in France and that French courts may order the withdrawal of application for an anti-suit injunction filed in foreign courts, seeking to prohibit a company from bringing patent proceedings in France.

With regard to the UPC, a stay may be ordered where the patent at stake is also subject to proceedings before the EPO, a national authority or the central division (as part of a revocation action), provided that a decision in such proceedings may be expected to be given rapidly.

The UPC can also stay the proceedings where a decision by the CJEU is necessary, as well as under exceptional circumstances (eg death or insolvency of a party or an objection to a judge taking part in proceedings).

Should the patentee succeed in their infringement action, available remedies would include permanent injunctions, damages, recall and destruction, and publication.

Injunctive Relief/Provisional Damages

Pursuant to Article L.615-3 of the IPC and Article 62 of the UPCA, in the case of a likely infringement, a patentee may request provisional injunctions.

Permanent injunction

Both French law and the UPCA provide that courts may order permanent injunctions against the infringer aimed at prohibiting the continuation or the resurgence of the infringement.

In France, an injunction is an automatic consequence of a decision in which the court has admitted infringement, except:

• when the patent has expired at the date of the decision;
• when a SEP/FRAND issue prevents any injunction;
• when a compulsory licence has been granted; or
• when a national defence exploitation is at stake (Article L.615-10, IPC).

Injunctions are generally subject to penalties to ensure their enforcement.

Monetary damages

Before French civil courts, damages suffered must be repaired in full although punitive damages are prohibited.

Likewise, Article 68 of the UPCA provides that the injured party shall, to the extent possible, be placed in the position it would have been in if no infringement had taken place.

For the assessment of damages on the merits, French judges (Article L.615-7, IPC) and panels of the UPC (Article 68, UPCA) have to distinctly consider:

• the negative economic consequences suffered by the injured party, including lost profits, and any other losses incurred;
• any unfair profits earned by the infringer, including investment savings regarding the intellectual, material or promotional work; and
• where appropriate, elements other than economic factors, such as the moral prejudice caused to the right-holder by the infringement.

Alternatively, the courts may, at the request of the patentee, award a lump sum as damages.

The UPCA also provides that where the infringer did not or could not know that it was engaging in the infringing activity, the Court may order the recovery of profits or the payment of compensation.

It is worth noting a steady increase in the amounts of damages granted by the Paris courts, over the past few years. Most notably, the Paris Judicial Court has granted a provisional amount of EUR28 million for infringement and unfair competition in its decision of 11 September 2020 in Eli Lilly and al v Fresenius Kabi.

Recall and Destruction

French law and the UPCA allow judges to order the recall of infringing products from their distribution channels and their destruction, carried out at the expense of the infringer.

Publication

French courts and the UPC can also order the publication of the decision, at the expense of the infringer, in full or in part, in public media. In any event, the claimant may publish the judgment in whole or in part on its own website, without the prior court’s authorisation. However, the claimant must act carefully when publishing the judgment in order to avoid any claim for unfair competition by denigration.

Criminal Remedies

In criminal proceedings, wilful infringement is required for a successful outcome, which may lead to criminal sanctions of up to three years of imprisonment and a fine of up to EUR300,000 (Article L.615-1, IPC). For legal entities, the fine can amount to up to five times the amount set for individuals (Article 131-38, Criminal Code).

Firstly, in the case of preliminary action, the enforcement of an injunction can be conditional on a financial provision from the claimant, to ensure compensation to the defendant if the infringement action is subsequently rejected or the measures annulled.

Secondly, prevailing defendants in any type of action can request the recovery of the costs incurred in the proceedings (see 8.3 Responsibility for Paying the Costs of Litigation).

Before French courts, the winning defendants may also claim compensation for the damages caused by reckless and/or vexatious proceedings by the claimant.

In France and before the UPC, the same remedies – which are listed in 6.1 Remedies for the Patentee – apply to each type of technical IP right.

In France, since 1 January 2020, provisional enforcement is now available as of right. Therefore, unless otherwise provided, all decisions issued by the court are immediately enforceable (ie, despite a pending appeal).

In the case of an appeal, provisional enforcement may only be lifted by the president of the Court of Appeal and in very specific situations.

Before the UPC, an appeal does generally not have a suspensive effect unless the Court of Appeal decides otherwise upon request of one of the parties. However, an appeal against a decision on revocation or related to Article 32(1)(i) of the UPCA always has suspensive effect.

In France, the right of appeal is granted in all matters against judgments at first instance (Article 543, CPC).

Parties have one month to appeal a first instance decision from the notification date (Articles 528 and 538, CPC). Foreign companies are granted an additional two-month delay (Article 643, CPC). As for Court of Appeal decisions, parties have two months (plus one or two months) to appeal before the Supreme Court (Article 612, CPC).

Before the UPC, an appeal may be brought within two months against final decisions of the Court of First Instance and decisions terminating proceedings as regards one of the parties.

Moreover, an appeal may be brought within 15 days against:

• orders on the use of the language in which the patent was granted as the language of the proceedings;
• orders to present and preserve relevant evidence in respect of the alleged infringement;
• orders requesting a party not to remove from its jurisdiction any assets located therein, or not to deal in any assets, whether located within its jurisdiction or not;
• orders intended to prevent any imminent infringement, to prohibit the continuation of the alleged infringement or to make such continuation subject to the lodging of guarantees; and
• orders to provide to the applicant information as to the alleged infringement.

Orders other than the above may be either the subject of an appeal together with the appeal against the decision (within two months) or appealed with the leave of the court of first instance within 15 days of the court’s decision to that effect.

Regarding decisions of the judge-rapporteur relating to preliminary objections, if the preliminary objection is allowed the order may be appealed independently from the decision on the merits and within 15 days. If the preliminary objection is rejected, it may only be appealed together with the appeal against the decision on the merits.

Finally, a party adversely affected by a decision of the judge-rapporteur as to costs only may lodge an application for leave to appeal to the Court of Appeal within 15 days of service of the decision of the Court.

In France, although parties may invoke new arguments and produce new documents or evidence, submitting new claims is prohibited, except in order to have adverse claims dismissed or to respond to questions arising from disclosure of new facts or a third-party intervention (Articles 563 and 564, CPC).

The judgment of first instance can be challenged on both legal and factual grounds (Article 561, CPC).

As for the Supreme Court, only issues of law can be examined (Article 604, CPC).

According to the UPCA, an appeal may be based on points of law and matters of fact. Requests, facts and evidence which have not been submitted by a party during proceedings before the court of first instance may be disregarded by the Court of Appeal. Ruling on their introduction, the Court of Appeal takes into account whether the party seeking to lodge new submissions is able to show that they could not reasonably have been made during proceedings before the court of first instance. The relevance of the new submissions for the decision on the appeal and the position of the other party regarding this matter is also considered.

Costs arising before filing a lawsuit are essentially those of the attorneys-at-law, patent attorneys, experts and bailiffs, which are needed for collecting relevant information and evidence, assessing the merits of the case and engaging in pre-litigation actions (for instance, issuing warning letters, saisie-contrefaçon) and conducting the proceedings.

There are no court fees to commence proceedings before French courts. However, the filing of an appeal is subject to the payment of EUR225.

Actions before the UPC have fixed court fees, for example:

• EUR20,000 for revocation actions; and
• EUR11,000 for infringement actions, declarations of non-infringement, application and appeal as to provisional measures.

Moreover, additional value-based court fees, assessed by the claimant, shall be paid at the same time. Their amount varies from EUR0 to EUR325,000.

Under Article 700 of the CPC, the prevailing party can request that the losing party pay the legal costs incurred by the proceedings. Such awards may cover fees relating to attorneys-at-law, patent attorneys, experts and bailiffs. To do so, the winning party usually produces an exhibit proving the total amount of costs incurred. In any case, there are no separate proceedings relating to recovery of costs.

Regarding the UPC, reasonable and proportionate legal costs and other expenses incurred by the successful party shall be borne by the unsuccessful party, unless equity requires otherwise, up to a ceiling adopted by the Administrative Committee by reference to the value of the proceedings.

The table of recoverable court fees published on 24 April 2023 provides that such fees could amount to EUR38,000 for proceedings with a value equal to or above EUR250,000 and are capped at EUR2 million for proceedings with a value of more than EUR50 million.

Even though arbitration, mediation and conciliation are available, these ADR techniques are rarely used in France.

Typically, the recourse to arbitration must be agreed on a contractual basis and is unavailable for matters that are governed by public order.

Contractual disputes, as well as ownership-related issues, can be submitted to arbitration. In contrast, issues of a patent’s invalidity are part of the exclusive jurisdiction of the Paris Court of First Instance (Article L.615-17, IPC). Therefore, if an arbitrator holds a patent invalid, such a decision shall have effect only between the parties (Articles 2059 et seq, French Civil Code).

Mediation is also possible. A mediator can be appointed and shall consult with the parties and the lawyers on a confidential basis and help them to find an amicable solution. The proceedings – stayed during this period – can be resumed if the parties fail to settle.

Another possible solution for negotiating an amicable settlement is to ask for a conciliation. These are handled, free of charge, by judges themselves and the parties remain free to accept the solution offered by the judges.

Article 35 of the UPCA provides that a mediation and arbitration centre is established and has its seats in Lisbon and Ljubljana.

At any time during the proceedings, the parties may have recourse to the services of the mediation and arbitration centre in order to settle the case.

The centre shall provide facilities for mediation and arbitration of patent disputes falling within the scope of the UPCA. Settlement reached through the use of the facilities of the centre are enforceable in any contracting member state. However, a patent may not be revoked or limited in mediation or arbitration proceedings.

The assignment of a patent application or patent must be in writing and registered with the INPI in order to be enforceable against third parties (Articles L.613-8 and L.613-9, IPC). Where a French and European patent cover the same invention, separate assignments are strictly prohibited.

According to Article 3 of the Regulation (EU) No 1257/2012, unitary patents may be transferred only in respect of all the participating member states. Transfers must be recorded in the Register for unitary patent protection. Once registered, the assignment is enforceable against third parties.

The parties may draft a non-disclosure agreement beforehand in order to ensure the confidentiality of the negotiations.

General rules of contract law govern patent assignment.

For the assignment to be lawful:

• the assignor must have the right to assign such rights;
• the assigned rights must be in force;
• the price must be fixed or, at least, determinable; and
• the duration of the contract must be specified.

The assignment, although effective between the parties upon its signature, must be registered to be enforceable against third parties.

Regarding the assignment of unitary patents, if the document establishing the transfer is not in one of the EPO’s three official languages, the EPO may require a certified translation into one of those languages.

A licence agreement must be in writing to be valid (Article L.613-8, IPC). Aside from this restriction, parties are generally free to determine the licence terms, including the exclusivity and the duration of the licence, the royalty rate and the conditions of exploitation. To be enforceable against third parties, the licence must be registered with the relevant office.

French and European antitrust authorities are rigorous with respect to patent licences or technology transfer agreements, particularly those within the pharmaceutical sector.

Unlike assignments, licences relating to a unitary patent may be for the whole or part of the territory. They must be recorded in the Register for unitary patent protection in the same way as for assignments.

The licensee must have the right to license such rights, the contract must have a valid object, the price must be fixed or determinable, and the duration of the contract must be specified.

The licence agreement must precisely define its scope. Essential elements that must be provided in the agreement include:

• the identification of the patent;
• whether the licence is granted exclusively or not (ie, preserving the possibility for the patentee to exploit the invention itself);
• the duration;
• the territory at stake; and
• the calculation of the royalties.

Regarding the licensing of unitary patents, if the document is not in one of the EPO’s three official languages, the EPO may require a certified translation into one of those languages.