CHAMBERS Global Practice Guides ARGENTINA FRANCE BRAZIL ... · France Law and Practice Contributed...

FRANCE

LAW AND PRACTICE: p.3Contributed by Véron & Associés

The ‘Law & Practice’ sections provide easily accessible information on navigating the legal system when conducting business in the jurisdic-tion. Leading lawyers explain local law and practice at key transactional stages and for crucial aspects of doing business.

ARGENTINA

LAW AND PRACTICE: p.3Contributed by Marval, O’Farrell & Mairal


BRAZIL

LAW AND PRACTICE: p.3Contributed by MPA Trade Law


DOING BUSINESS IN BRAZIL: p.<?>

Chambers & Partners employ a large team of full-time researchers (over 140) in their London office who interview thousands of clients each year. This section is based on these interviews. The advice in this section is based on the views of clients with in-depth international experience.

CHAMBERSGlobal Practice Guides

France – Law and Practice

Contributed by Véron & Associés

Patent Litigation

2018

FRANCE

LAW AND PRACTICE: p.3Contributed by Véron & Associés


Law and Practice FranceContributed by Véron & Associés Authors: Sabine Agé, Amandine Métier, Florence Jacquand

3

Law and PracticeContributed by Véron & Associés

CONTENTS1. types of intellectual Property rights

& Granting Procedure p.41.1 Types of Intellectual Property Rights p.41.2 Grant Procedure p.51.3 Timeline for Grant Procedure p.61.4 Term of Each Intellectual Property Right p.61.5 Rights and Obligations of Owner of Intellectual

Property Right p.61.6 Further Protection After Lapse of Maximum

Term p.61.7 Third-Party Rights to Participate in Grant

Proceedings p.61.8 Remedies Against Refusal to Grant

Intellectual Property Right p.71.9 Consequences of Failure to Pay Annual Fees p.7

2. initiating a Lawsuit p.72.1 Actions Available Against Infringement p.72.2 Third-Party Remedies to Remove Effect of

Intellectual Property Right p.72.3 Courts with Jurisdiction p.82.4 Prerequisites to Filing a Lawsuit p.82.5 Legal Representation p.92.6 Interim Injunctions p.92.7 Protection for Potential Opponents p.92.8 Special Limitation Provisions p.92.9 Mechanisms to Obtain Evidence and

Information p.102.10 Initial Pleading Standards p.112.11 Representative or Collective Action p.112.12 Restrictions on Assertion of Intellectual

Property Right p.11

3. infringement p.113.1 Necessary Parties to an Action for

Infringement p.113.2 Direct and Indirect Infringement p.113.3 Scope of Protection for an Intellectual

Property Right p.123.4 Defences Against Infringement p.123.5 Role of Experts p.13

3.6 Procedure for Construing the Terms of the Patent’s Claims p.13

4. revocation/cancellation p.134.1 Reasons and Remedies for Revocation/

Cancellation p.134.2 Partial Revocation/Cancellation p.134.3 Amendments in Revocation/Cancellation

Proceedings p.134.4 Revocation/Cancellation and Infringement p.14

5. trial & Settlement p.145.1 Special Procedural Provisions for Intellectual

Property Rights p.145.2 Decision Makers p.145.3 Settling the Case p.145.4 Other Court Proceedings p.14

6. remedies p.156.1 Remedies for the Patentee p.156.2 Rights of Prevailing Defendants p.156.3 Types of Remedies p.156.4 Injunctions Pending Appeal p.15

7. appeal p.167.1 Special Provisions for Intellectual Property

Proceedings p.167.2 Type of Review p.16

8. costs p.168.1 Costs Before Filing a Lawsuit p.168.2 Responsibility for Paying Costs of Litigation p.16

9. alternative dispute resolution p.169.1 Type of Actions for Intellectual Property p.16

10. assignment and Licensing p.1610.1 Requirements or Restrictions for Assignment

of Intellectual Property Rights p.1610.2 Procedure for Assigning an Intellectual

Property Right p.1610.3 Requirements for Restrictions to License an

Intellectual Property Right p.17

France Law and PracticeContributed by Véron & Associés Authors: Sabine Agé, Amandine Métier, Florence Jacquand

4

Véron & associés is a multidisciplinary team consisting of 13 people based in Paris and Lyon, including nine lawyers and a professor of physics and chemistry, devoting its activ-ity entirely to patent litigation. The firm is particularly active in the fields of pharmaceutical products and medical devices, as well as in the fields of electronics, telecoms and comput-ing, also regularly handling cases relating to chemistry and physics, cosmetics, consumer products and automotive. Part of Véron’s work consists in ensuring that judges gain, as rap-idly as possible, a proper understanding of the technologies

covered by the litigated patent, and the firm is recognised for its expertise in presenting such technical issues or complex factual situations. Véron handles many pan-European or in-ternational disputes, and prepares clients for the entry into force of the unitary patent and the forthcoming establish-ment of the Unified Patent Court. The firm has also devel-oped an expertise in arbitration and mediation procedures, and has notable experience of customs detention procedures based on patents. Sabine Agé, Amandine Métier and Flor-ence Jacquand are the partners of the firm.

authorsSabine agé is a partner at the firm. She handles standard related cases in the multimedia systems and telecommunica-tions fields. Sabine is also active in cases relating to electronics, pharmaceuticals, chemicals and medical instruments as well

as household appliances and consumer goods, for both international and domestic industry-based clients as well as research organisations, usually for the French part of worldwide cross-border patent litigations. She is an active member of the International Association for the Protection of Intellectual Property (AIPPI) and member of the board of French IP associations (AAPI and APEB). She is the former secretary to the European Patent Lawyers Associa-tion (EPLAW) and is a member of Union IP. Sabine lectures patent litigation in various universities and speaks regularly at French and international conferences and seminars.

amandine Métier works in all technical fields, but is very active in pharmaceuti-cals, chemistry and mechanics. She has also gained special expertise in the field of telecoms through some of the highest-profile cases disputed in France involving

FRAND issues. Amandine is co-author of the chapter on France in the book Patent Enforcement Worldwide (Hart Publishing, 2015). She is involved in the work of AIPPI and of EPLAW, and is a member of APEB, AAPI and Union IP. Amandine lectures patent litigation in various universities and speaks regularly at French and interna-tional conferences and seminars.

Florence Jacquand works in all technical fields. However, she is particularly active in pharmaceuticals, as well as in chemistry and mechanics. Florence is involved in the work of AIPPI and of EPLAW. She is the secretary to AFPPI (Association Française

pour la Protection de la Propriété Industrielle) and is also a member of APEB, AAPI and Union IP. Florence, like her colleagues (above), lectures patent litigation in various universities and speaks regularly at French and interna-tional conferences and seminars.

1. types of intellectual Property rights & Granting Procedure1.1 types of intellectual Property rightsAccording to Article L. 611-2 of the French Intellectual Property Code (“IP Code”), inventions can be protected by three different types of Intellectual Property Rights (“IPR”), as follows:

•A Patent (“brevet d’invention”), which allows its owner to prevent others from using the invention for commercial purposes for up to 20 years. French patents are granted

by the French Patent and Trademark Office (the “Institut National de la Propriété Industrielle” – “French patent of-fice”) after formal examination and establishment of a prior art search report. Protection can also be obtained through a European Patent designating France and granted by the European Patent Office (“EPO”). The European Patent with unitary effect (so-called Unitary Patent) created by EU Regulation 1257/2012 (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 De-


5

cember 2012 implementing enhanced co-operation in the area of the creation of unitary patent protection) will enter into force in France at the same time as the Unified Pat-ent Court Agreement (pursuant to Article 89, paragraph 1 of the Unified Patent Court Agreement: “This Agreement shall enter into force on 1 January 2014 or on the first day of the fourth month after the deposit of the thirteenth in-strument of ratification or accession in accordance with Article 84, including the three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place or on the first day of the fourth month after the date of entry into force of the amendments to Regulation (EU) No 1215/2012 concerning its relationship with this Agreement, whichever is the latest”).

•A Utility Certificate (“certificat d’utilité”), which allows its owner to prevent others from using the invention for com-mercial purposes for up to six years. It is also granted by the French patent office. The patentability conditions are the same as those required for the grant of a patent, but no search report is drafted (at least until the utility certificate is asserted against a third party). Utility Certificates are rarely applied for in practice.

•A Supplementary Protection Certificate (“Certificat Com-plémentaire de Protection” - “SPC”), which may be granted by the French patent office to provide an additional period of protection (for a maximum of five years) for medici-nal products and plant protection products, which need to obtain a marketing authorisation before being put on the market. For further details on SPCs, please refer to 1.6 Further Protection after Lapse of Maximum term.

1.2 Grant ProcedureThis section deals with the grant procedure before the French patent office for French patents, utility certificates or SPCs; it does not describe the grant procedure of a European patent before the European patent office.

The grant procedure before INPI is an administrative pro-cedure including various steps which differ according to the IPR applied for.

Grant Procedure for French Patents Step 1 - Filing a Patent Application with the French Patent OfficeThe patent application must disclose the invention in a clear and complete manner. It is composed of (i) a description of the invention including at least one embodiment of the invention; (ii) the claims that define the scope of the protec-tion; and (iii) a summary of the invention. Figures may be added to supplement the description.

Step 2 - Authorisation for Disclosing and Exploitation the In-ventionFor reasons of national defence, all applications filed in France are submitted to an authorisation issued by the del-egate of the Ministry of Defence before any disclosure or ex-ploitation of the invention. Unless the invention is to be kept secret for national defence purposes, such an authorisation is automatically issued within a maximum of five months after the filing of the application.

Step 3 - Publication of the ApplicationThe patent application is published within 18 months of the application date. From this date, the application is consid-ered as being available to the public, and third parties can file observations with the French patent office.

Step 4 - Formal ExaminationThe French patent office may reject the patent application for formal reasons (eg, violation of the rule of unity of invention, clarity, lack of support of the claims by the description) or for lack of patentability. The applicant is given the possibility to file arguments and to amend the description and claims before final rejection of the application.

Step 5 - Documentary Search Report and Written OpinionA preliminary search report is established for the French patent office by the Search Division of the EPO, in order to reveal any prior art likely to affect the novelty or inventive step of the claimed invention. The search report is issued together with a written opinion from the examiner relating to the validity of the claims. Although the French patent office is not able to reject an application for lack of inven-tive step, this written opinion provides the applicant with observations regarding novelty and inventive step of the in-vention. Here again, the applicant is given the opportunity to file comments and amend the patent application, if need be.

Step 6 - Grant of the Patent After the applicant has answered the search report (and, possibly, third parties have filed observations), the French patent office notifies its decision to grant the patent. Upon payment of an issuance fee, the patent is granted and the patent-holder receives an official copy of the patent bear-ing its national registration number. Mention of the grant is made by the French patent office in the Bulletin officiel de la propriété industrielle (“BOPI”).

Grant Procedure for Utility certificatesThe conditions required for an invention to be patentable also apply to utility certificates.

The grant procedure for utility certificates is almost identi-cal to the patent grant procedure; the main difference lies in the fact that no search report is drafted. However, if the utility certificate is asserted against a third party in infringe-


6

ment proceedings, the owner must obtain, upon payment, a search report from the French patent office and adduce it in the proceedings.

Grant Procedure for SPcs The French patent office ensures that the requirements of Ar-ticle 3 of EU Regulation No 469/2009 (for medicinal prod-ucts) and No 1610/96 (for plant protection) are fulfilled, ie that (i) the product covered by the SPC is protected by a basic patent in force, (ii) a valid authorisation to place the product on the market (hereafter “MA”) has been granted, (iii) said MA is the first MA granted for this product in the EU, and (iv) the product has not already been the subject of an SPC.

The application shall be made within six months of the grant of the MA (if the MA is granted after the patent was granted) or the grant of the patent (if the MA was granted before the patent was granted).

The grant of an SPC is entered into the French Patent Regis-ter and is published in the BOPI. This publication mentions the expiry date of the SPC.

1.3 timeline for Grant ProcedureAccording to the French patent office, the average duration of a patent grant procedure is 27 months, although this dura-tion can vary according to the complexity of the invention. An accelerated procedure has been available since December 2015 (20 months).

The grant fees for a French patent amount to at least EUR646, mainly composed of the search report fees (EUR520).

According to the French patent office, the average duration of a utility certificate grant procedure is 12 months. The costs are EUR126 (ie, the same costs as for the grant of a patent, minus the costs of the search report).

The duration of an SPC grant procedure varies from three to six months, on average. The grant fees are around EUR520.

The maintenance in force of those IPRs is subject to the pay-ment of annual fees.

The applicant is under no obligation to be represented when filing an IPR at the French patent office. However, it is highly recommended that the application be drafted and the exami-nation handled by a patent attorney.

1.4 term of each intellectual Property rightThe maximum term of a patent is 20 years from the filing date of the application.

Utility certificates are issued for a period of six years from the date of the filing of the application.

Since the purpose of the SPC is to remedy the erosion of the term of the patent monopoly by the length of time during which the patent-holder or its licensee awaits the grant of a marketing authorisation (MA) for the claimed medicinal or plant protection product, the duration of the protection of an SPC depends on the date of grant of the MA: this duration is equal to the period which has elapsed between the filing of the patent application and the grant of the first MA, minus five years. The duration of the SPC cannot exceed five years, except when the term of the SPC is extended by a paediatric extension for six additional months.

1.5 rights and Obligations of Owner of intellectual Property rightThe main obligation of the patent-holder is to pay the annual renewal fees.

The owner of a patent has the following rights:

•to assign the ownership or co-ownership of his or her pat-ent;

•to exploit his or her patent and/or grant a licence;•to prevent any third party from implementing the claimed

invention without his consent, by seeking a preliminary or permanent injunction from a court; and

•to obtain damages and additional measures (eg, the pub-lication of the judgment holding the patent infringed, the recall, delivery up or destruction of the infringing goods).

1.6 Further Protection after Lapse of Maximum termSPCs may be granted by the French patent office to provide an additional period of protection for medicinal products and plant protection products.

Although all countries in the European Union are required to provide supplementary protection certificates, no unified cross-recognition exists; therefore, applications must be filed and approved on a country-by-country basis (for further de-tails, please refer to 1.2 Grant Procedure).

1.7 Third-Party rights to Participate in Grant ProceedingsAs of the publication of the patent application, and up to three months after the publication of the preliminary search report, third parties have the right to provide the French pat-ent office with observations and additional prior art. They have to identify themselves (anonymous observations are forbidden).

The patent-holder is entitled to reply within three months (renewable once), and to amend its patent. If one prior art


7

appears to be relevant when assessing the novelty of the in-vention, a complementary search report can be issued by the examiner.

Further to the grant of the patent, third parties can request an opinion (“avis documentaire”) from the French patent office (upon payment) on the relevance of the prior art cita-tions in the search report. They can also file a patent revoca-tion action before French courts. Unlike before the EPO, no opposition is available before the French patent office.

1.8 remedies against refusal to Grant intellectual Property rightThe applicant is entitled to lodge an appeal before either the INPI or the Court of Appeal of Paris, depending on the ground for refusal, as follows:

•where the refusal is directly based on a failure to act within a time limit vis-à-vis the French patent office, the applicant may submit an appeal for the restoration of its rights before the Director of the French patent office upon justification of a legitimate reason (Article L. 612-16 IP Code) within two months of the removal of the obstacle to the compli-ance with the time limit;

•where the refusal is based on the compliance of the appli-cation with substantive conditions for the validity of the IPR, the decision of the French patent office can directly be appealed before the Court of Appeal of Paris, within one month of the decision (Articles L. 411-4, R. 411-20 IP Code).

1.9 consequences of Failure to Pay annual FeesThe IPR’s owner may lose its rights if it fails to pay the annual fees on the due date. The following measures are available to avoid such a consequence:

•where the payment of an annual fee is not made on the due date, a reminder is sent to the IPR’s owner advising it that it may lose its rights if the payment is not made before the expiry of a six-month time period, and accompanied by a surcharge fee (EUR156);

•in the case of non-payment, the IPR’s owner is notified of the failure to pay, and the right is terminated as from the date the fee should have been paid;

•the owner may still apply for restoration of its IPR before the French patent office (see 1.8 remedies against refusal to Grant intellectual Property right).

2. initiating a Lawsuit

2.1 actions available against infringementA patent-holder may enforce its rights by instituting civil or criminal proceedings, although criminal proceedings are rarely used.

Two different civil proceedings are available to the patent-holder in case of infringement:

•proceedings on the merits, by which the patent-holder or exclusive licensee may ask the court to prevent the infring-er from continuing the alleged infringing acts (permanent injunction) and to grant compensation for the damage suffered due to the infringement (for the other available remedies, see 2.2 Third-Party remedies to remove ef-fect of intellectual Property right). Such proceedings last between 18 and 24 months. Accelerated proceedings on the merits (six to eight months) are also available for urgent matters, upon prior authorisation of the President of the court of first instance; and

•preliminary injunction proceedings, by which the patent owner or exclusive licensee, can ask a judge to issue interim measures against the infringer to prevent an imminent in-fringement or the continuation of infringing acts, even be-fore starting an infringement action on the merits. The only condition for such preliminary measures is for the patent-holder to provide reasonably available evidence of an im-minent or actual infringement. In assessing the likelihood of infringement, the presiding judge tends to take into account the apparent validity of the patent. If preliminary injunction measures are ordered before the commencement of proceed-ings on the merits, the claimant must start proceedings on the merits within 31 calendar days.

The patent-owner or a licensee can also ask French customs to detain products suspected of being infringing goods im-ported into France from either a non-EU country or an EU Member State (Article L. 614-32 to L. 614-39 IP Code).

2.2 Third-Party remedies to remove effect of intellectual Property rightVarious remedies are available to third parties to remove the effects of a patent outside any infringement action.

Third parties can start main proceedings to seek the rev-ocation of a French patent or the French designation of a European Patent. Such action can be initiated against the patent-holder by any third party that has a legitimate interest (the threshold to show this interest was traditionally low, but recent decisions raised the bar and requested the claimant to establish its intention and ability to implement the disputed invention) (regarding the statute of limitation for revocation actions, see 2.8 Special Limitation Provisions).

There are no post-grant review proceedings for French pat-ents. However, for European Patents, third parties may file an opposition before the EPO within nine months of the grant (all national designations are then concerned).

According to Article L. 613-12 IP Code, a third party may also apply for a compulsory licence before the tribunal de


8

grande instance if it can establish that it has been unable to obtain a licence from the owner of the patent, and that it is in a position to exploit the invention in an effective and serious manner. The compulsory licence shall be granted on fixed terms (duration, field of application, amount of the royalties to be paid, etc), which may be amended by a further court decision upon the request of the patent-holder.

Other remedies are available to third parties in the frame-work of an infringement action: see 3.4 defences against infringement.

2.3 courts with JurisdictionIn France, patent disputes are handled by specialised cham-bers of ordinary civil courts organised according to the fol-lowing structure:

In the first instance, patent disputes are within the exclusive jurisdiction of the tribunal de grande instance de Paris. The 3rd chamber of this court comprises four panels with three judges, which handle only intellectual property matters.

Preliminary injunction proceedings are handled by the pre-siding judge of one of the four panels or, when an action on the merits is already pending, by the judge in charge of case preparation.

Any first-instance decision may be appealed, without leave or permission being required. An appeal suspends the enforce-ability of the first-instance decision on the merits, unless the court of first instance expressly decided in the judgment that said decision is enforceable notwithstanding an appeal (for further details on the enforcement of the injunction in case of an appeal, see 6.4 injunctions Pending appeal).

Preliminary injunctions are always enforceable, even in case of appeal.

The appeal against decisions of the tribunal de grande in-stance de Paris are within the jurisdiction of the cour d’appel de Paris, and more particularly the 5th division of this court, which comprises two sections that each have a panel of three experienced judges handling only intellectual property mat-ters. The court of appeal reviews the dispute in full (de novo). New claims cannot be asserted before the court of appeal, but parties may raise new arguments and produce new evi-

dence. New prior art documents or additional evidence of infringement may thus be adduced in appeal.

Appeals against preliminary injunction decisions when the action on the merits has not yet been initiated are handled by the same division of the cour d’appel de Paris that deals with appeals of all preliminary orders.

Preliminary injunction orders issued by the judge in charge of case preparation (ie, when an action on the merits is al-ready pending) cannot be appealed without the judgment on the merits.

The cour d’appel de Paris also has jurisdiction to decide on appeals against decisions of the Director of the French pat-ent office.

Decisions from the cour d’appel de Paris may be further ap-pealed before the Cour de cassation, the highest French court for civil matters. No leave or permission is required to file such appeal. Appeal before the Cour de cassation does not lift the enforceability of the decision of the court of appeal. The Cour de cassation decides on legal issues but not on facts, and may therefore quash a court of appeal decision if the legal reasoning is erroneous or if the court of appeal failed to answer the parties’ arguments. Patent matters are handled by the Chambre commerciale of the Cour de cassation.

The Cour de cassation may declare that the appeal is not ad-missible, or may dismiss the appeal on the merits. In either case, the decision of the court of appeal becomes irrevocable. Alternatively, the Cour de cassation may quash the decision of the court of appeal and remand the case before a different panel of the cour d’appel de Paris.

The French Patent Office has no jurisdiction over patent litigation.

2.4 Prerequisites to Filing a LawsuitSince a decree dated 11 March 2015, the claimant shall indi-cate in the writ of summons the steps undertaken (including the sending of warning letters) to settle the dispute prior to launching the action.

However, the decree does not provide any sanctions for non-compliance with this rule: the judge may only suggest that the parties appoint a mediator, which remains quite rare in practice.

Cease-and-desist letters sent before an infringement action must be drafted carefully, particularly when they are sent to clients of the manufacturer or importer, to avoid the risk of being considered as acts of unfair competition.

Cour de cassation (points of law review)

18-24 months

é

Cour d’appel 24 months(appeal of decisions of

the Director General of INPI) (de novo review)

Institut national de la propriété industrielle (INPI)

(National Institute of Industrial Property)

Tribunal de grande instance 15-24 months

é é


9

The sending of a pre-trial letter will be necessary in some circumstances:

•a letter sent by the patent-holder to a “secondary infringer”, ie a defendant offering for sale, putting on the market, us-ing or holding for those purposes an infringing product, other than the manufacturer or the importer, who will not be liable for these acts unless it has been made aware of the patent at stake;

•a letter sent by the claimant to the patent-holder prior to an action for declaration of non-infringement;

•a letter of the owner of a Standard Essential Patent (“SEP”) who has committed to license its patent sent to the defend-ant to an infringement lawsuit, to comply with the require-ments set by the CJEU in Huawei v ZTE (C-170/13), for this SEP holder not to be found in breach of the competi-tion rules (Article 102 TFEU) by seeking an injunction.

2.5 Legal representationParties must be represented by an attorney-at-law (“avocat”) in proceedings on the merits before the tribunal de grande instance and the Court of Appeal. Such representation is not mandatory in preliminary proceedings but it is strongly recommended. A specific body of attorneys-at-law, called “avocats à la Cour de Cassation et au Conseil d’État”, must represent parties before the Cour de Cassation.

Patent attorneys cannot represent parties before French courts, even in nullity proceedings. They can be authorised to address the court during the oral hearing, but this is rare in practice.

2.6 interim injunctionsPreliminary (or “interim”) injunction proceedings are avail-able in France but the number of decisions granting such an injunction remains very low.

In most cases, the requested measure is a preliminary injunc-tion prohibiting the defendant from continuing the alleged acts of infringement under a penalty. Additional measures can be requested, such as:

•the payment of an advance on damages;•the delivery up of the accused products; or•the recall of the accused products from the distribution

channels, which is only granted in exceptional cases.

Preliminary injunctions can only be ordered if evidence that is reasonably accessible to the claimant makes it likely that its rights are infringed, or that such infringement is about to be committed (Article L. 615-3 IP Code). To decide on the like-lihood of infringement, the judge deciding on preliminary injunction actions takes into consideration the arguments of the parties as to the alleged infringement and the validity of the asserted patent. There is no requirement regarding the

time period elapsed between the knowledge of the alleged infringement and the request for a preliminary injunction (ie, there is no requirement for urgency).

Preliminary relief proceedings can be inter partes or ex parte. However, ex parte proceedings are exceptional and only take place in cases of extreme urgency, when a delay would cause irreparable harm to the patent-holder, such as exhibitions taking place for a short period of time, after which the al-leged infringing goods will leave the French territory.

If preliminary injunction measures are ordered before the commencement of proceedings on the merits, the claimant must start proceedings on the merits within 31 calendar days of the date of the preliminary injunction order. Failing an action on the merits, the measures can be revoked at the request of the defendant, without prejudice of compensation for any injury caused by the preliminary measures.

2.7 Protection for Potential OpponentsProtective letters are not accepted by French courts, and ex parte injunctions are very uncommon.

2.8 Special Limitation ProvisionsStatutes of limitation apply in intellectual property matters, and more particularly in revocation actions and infringe-ment actions.

Revocation actions have not been subject to any time bar for a long time. However, recent case law considers that the new Article 2224 of the French Civil Code (as amended in June 2008) relating to the statute of limitation that applies in civil matters should apply to patent revocation actions. This time limitation is five years from the date upon which the owner of a right becomes aware or should have become aware of the facts entitling it to start an action. Case law is not yet settled on the starting point of this five-year time limit to initiate a patent revocation action: some decisions held that the limitation period was triggered by the publica-tion of the patent application or by the grant of the patent, while others considered that the starting point of the time limit should be assessed in concreto (eg, a warning letter sent by the patent-holder to the defendant or, in case of an action for nullity of an SPC, the lapse of data exclusivity for the reference drug for which a marketing authorisation for a generic can be applied).

For infringement actions, the limitation period was in-creased from three to five years in 2014 (Article L. 615-8 IP Code). As a result, damages can be claimed in relation to any act of patent infringement performed fewer than five years before the institution of court proceedings.


10

2.9 Mechanisms to Obtain evidence and informationUnder French law, each party must prove the facts necessary to the success of its own claim. The tools available to prove the alleged infringement are as follows:

•the saisie-contrefaçon (search seizure);•the request for compulsory production of evidence by the

other party or third parties; •the right of information, ie, a request for a court order that

information on the origin of and distribution networks for the alleged infringing goods or process be provided by the defendant in the infringement proceedings and/or any other person involved in the manufacture or distribution of the infringing goods or the use of the process;

•the reversal of the burden of proof for process patents (sel-dom granted); and

•a request for the rendering of accounts to calculate the damages to be paid to the IPR holder or exclusive licensee.

Saisie-contrefaçonThe saisie-contrefaçon is the most commonly used measure, and allows a patent-holder or an exclusive licensee to have a bailiff conduct investigations on the premises of the seized party in order to gather evidence of the alleged infringement. It requires authorisation from the presiding judge of the Tri-bunal de grande instance de Paris in ex parte proceedings.

Such authorisation is granted if the applicant proves the owner or the exclusive licensee of the patent invoked, and that the patent is in force. No prima facie evidence of the alleged infringement is theoretically required, as the pur-pose of the saisie-contrefaçon is precisely to gather proof of infringement. However, the petitioner must explain why he believes that the patent may be infringed by the accused products.

The judge sets the mission and powers of the bailiff, particu-larly the accused product or process that may be described, the nature of the documents that may be copied, the number or quantity of samples that may be physically seized and the terms that can be used to search for information in the IT system of the seized party.

On the date of the saisie-contrefaçon, the bailiff – most often accompanied by a patent attorney and an IT expert, both chosen by the patent-holder but authorised in the court or-der – can enter the premises of the alleged infringer. The bailiff must act within the scope of the court order, to avoid the saisie-contrefaçon later being held invalid.

The bailiff drafts a report recording his or her findings and the observations made by the seized party, a copy of which is given to the petitioner at the end of the saisie. This report is later exhibited in the infringement proceedings. When

confidential information is disclosed during the saisie-con-trefaçon, the seized party can ask the bailiff not to describe it in the report, but to place the description or the seized documents or products in a sealed envelope to be kept by the bailiff and opened by a court-appointed expert, under a confidentiality regime.

The claimant must start proceedings within 31 calendar days following the saisie-contrefaçon to avoid the latter being held null and void.

All evidence gathered in France for the purpose of French proceedings is freely available for parallel proceedings, even evidence gathered through a saisie-contrefaçon. However, in specific matters, the court can decide otherwise or impose a strict confidentiality regime for sharing sensitive informa-tion.

Other MechanismsCompulsory production of evidence by the other party or third parties is available under French procedural law, pro-vided that the evidence requested can be very precisely de-scribed and relates to a limited number of documents; these conditions are strictly assessed by the courts. Therefore, compulsory production of evidence is rarely ordered and the patent-holders mainly use the saisie-contrefaçon to gather all necessary evidence before or during the proceedings.

Compulsory production of evidence can also be ordered in cases involving a patent for a process for the manufacture of a product. The court can order the defendant to prove that the process used to manufacture an identical product is dif-ferent from the patented process. Failing such evidence, any identical product manufactured without the consent of the patent-holder is presumed to have been manufactured by the patented process if the product manufactured using the patented process is new, and if there is a strong likelihood that the identical product has been manufactured using the patented process, but the patent-holder has been unable to establish what process has actually been used, despite mak-ing reasonable efforts.

Finally, over the course of an infringement action, the claim-ant can also use the so-called “right of information”, which allows a party to seek an injunction from the judge in charge of the case ordering the alleged infringer or a third party (such as the reseller of the patented product) to provide spe-cific information (article L. 615-5-2 IP Code) relating to any documents on the origin and distribution networks of the allegedly infringing products. Confidential information can be excluded from the injunction. The information that can be obtained relates in particular to the entities (manufac-turer, supplier, seller, etc) involved in the distribution of the allegedly infringing products, and the quantity and value of


11

the allegedly infringing products imported into France and offered and sold in France.

2.10 initial Pleading StandardsThe writ of summons contains the main arguments of the plaintiff and must provide details on the features of the claimed invention that are reproduced by the accused prod-uct or process. The writ must contain the exact and prefer-ably complete list of asserted claims. It ends with an opera-tive part containing the reliefs sought by the plaintiff and a list of the exhibits supporting the claims and arguments. The writ is served on the defendant(s) by a bailiff, or through international service upon the instruction of the claimant.

Once the as-served summons has been put on the court’s cause list, a first scheduling conference is set, which estab-lishes a date by which the defendant can file its pleading, raise its defences on the alleged infringement and file a coun-terclaim for nullity.

The claimant is entitled to reply to this defence and counter-claim at another date set by the judge in charge of the case preparation.

Therefore, each party usually exchanges two or three written pleadings, after which the judge sets a date on which the in-struction of the case is closed and a date for the oral hearing.

The oral hearing lasts between two and six hours. At the end of the oral hearing, the court reserves its judgment and issues its decision within approximately six weeks.

2.11 representative or collective actionClass actions can only be brought by a limited number of consumer associations for product liability; they are not au-thorised in the field of IPRs.

2.12 restrictions on assertion of intellectual Property rightThe alleged infringer may refer to tort law, commercial or competition law in order to challenge the behaviour of the patent-holder, and can file the following:

•a counterclaim for abuse of process based on tort law (Article 1240 of the French Civil Code): proceedings are considered to be abusive when the defendant proves that they were brought with the intent to harm its reputation or market share. The court can also consider the proceed-ings as being abusive when it is established that the claim-ant was aware or could not ignore the weaknesses of its case (because the IPR was obviously invalid and/or not infringed); or

•a claim for anti-competitive practice (notably an abuse of dominant position) based on competition or commercial law (Article 102 TFUE or Article L. 420-2 of the French

Commercial Code) before the EU or French competition authorities, which can be raised as a defence in the in-fringement proceedings.

3. infringement

3.1 necessary Parties to an action for infringementAccording to Article L. 615-2 IP Code, infringement pro-ceedings shall be instituted by:

•the patent-holder (or each co-owner of the patent); •the exclusive licensee if such a possibility is not excluded

by the licence agreement and if, after being put on notice, the patent-holder does not institute such proceedings; the patent-holder is entitled to take part in the infringement proceedings instituted by the licensee; or

•the holder of a compulsory licence if, after being put on no-tice, the patent-holder does not institute such proceedings.

In addition, non-exclusive licensees are entitled to take part in the infringement proceedings instituted by the patent-holder in order to obtain compensation for the damage they have personally suffered.

Licensing agreements are no longer required to be regis-tered in the national patent register in order for a licensee to intervene in the proceedings. However, this registration continues to be recommended in light of recent decisions assessing more strictly the right of a non-registered licensee to claim damages.

A distributor cannot initiate a patent infringement action but can intervene in the proceedings to obtain compensation for its personal damage through a claim for unfair competi-tion.

3.2 direct and indirect infringementFrench law distinguishes direct infringement (Article L. 613-3 IP Code) from indirect infringement (also referred to as “contributory infringement”) (Article L. 613-4 IP Code).

The following acts constitute direct infringement:

•the manufacture, offer, putting on the market, use, import, export or trans-shipment of a product protected by a patent per se, and the holding of such a product, but only when done for one of the preceding purposes; and

•the use of a patented process, as well as its offer for use, subject to the territorial requirement that the offer relates to use on the French territory.

Indirect infringement includes the delivery or offer to deliver to unauthorised persons in France means for performing or


12

obtaining the patented invention when those are essential means and when it is obvious that those means permit the performance or obtainment of the invention. Under French law, contributory infringement contains a double territori-ality requirement that the means must be supplied on the French territory, for use on that territory.

As far as liability is concerned, a distinction has to be made between primary and secondary infringers:

•the alleged infringer can be sued without prior notice if it imports into France or manufactures in France the accused products, or if it implements the accused process in France (“primary infringer”);

•the secondary infringer, who sells, uses or otherwise han-dles the accused products or process, or the equipment to manufacture the accused products or implement the ac-cused process, has to be put on notice of the IPR in order to be liable for infringement.

See 6 remedies regarding the remedies for infringement.

3.3 Scope of Protection for an intellectual Property rightThe scope of protection for a patent is determined by the claims in light of the specifications and the drawings (Article L. 613-2 IP Code for French patents and Article 69 of the European Patent Convention for European patents).

French judges construe the patent claims by:

•analysing the terms employed, without adding any feature that is neither contained nor suggested in the claims, the specification or the drawings; and

•understanding the substance of the invention through the problem solved and the essential means of the solution, ie the new and inventive means that are necessary and suf-ficient to perform the function of the invention.

The statements of the patent-holder during the examination of the patent and/or the opposition filed before the EPO, if any, are taken into account when construing the scope of the claims.

The three main forms of infringement considered by French courts are as follows:

•literal infringement when the accused means reproduce the claimed means in their structure, function and result;

•infringement by reproduction of the essential means of the claimed invention, when the only differences between the claimed and the accused product or process relate to sec-ondary features that were known in the art and/or are not necessary to reach the claimed technical effect; and

•infringement by equivalence, when the accused means dif-fer from the essential means of the claimed invention by their structure but perform the same function for the same result. The doctrine of equivalents can only apply if the claimed means implement a novel function: if the claimed means differ from the prior art only by their structure, the scope of the claim is limited to the claimed structure. On the contrary, if the claimed means differ from the prior art not only by their structure but also by their function, the scope of the claim extends to any equivalent means.

3.4 defences against infringementThe alleged infringer can rely on any defence, including dis-puting the claimant’s capacity or authority to initiate pro-ceedings and the validity and infringement of the patent at stake.

The validity of the patent can be challenged through a coun-terclaim for revocation (to obtain the revocation of the pat-ent retroactively and erga omnes) or as a defence (in which case the patent is considered unenforceable only between the parties to the proceedings). Invalidity and infringement arguments are assessed by the court in the same proceedings.

The alleged infringer can also challenge the infringement of the asserted patent claims on the grounds provided by Articles L. 613-5 to L. 613-7 IP Code, by claiming that the alleged infringing acts are:

•done privately and for non-commercial purposes;•done for experimental purposes relating to the subject mat-

ter of the patented invention;•done by pharmacists making up a prescription;•related to studies, tests or trials made with a view to fil-

ing an application for a marketing authorisation for a me-dicinal product for human use or for veterinary medicinal products (so-called “Bolar exemption”);

•done on vessels and aircrafts that have temporarily or ac-cidentally entered French waters or crossed France;

•related to extra-atmospheric space vessels introduced into French territory;

•performed to create, discover or develop new plant varie-ties (so-called “breeders’ exemption”); or

•related to the “farmers’ privilege”, which authorises a farmer to use the harvested product (for patents covering plant genetic information or plant material) for his or her own exploitation, or to use livestock (for patents covering animal genetic information or animal biological material).

The defendant can also claim that the rights of the patent-holder are exhausted if the patent-holder (or its licensee) has consented for the product implementing the invention to be put on the market within the European Economic Area.


13

Prior personal use is also an exception to patent protection, and enables any person who was in good faith in posses-sion of the invention in France before the patent priority date to continue to benefit personally from the invention. This exception applies irrespective of whether the use of the invention continues in the same way or to the same extent as the prior use.

Where the patent at stake has been declared essential to a standard, such as in the IT field, the defendant can chal-lenge the essentiality of the patent (ie, demonstrate that the patented teaching is not implemented when the standard is complied with), or raise a fair, reasonable and non-discrim-inatory (FRAND) defence (ie, ask to be granted a licence under FRAND terms in accordance with the undertakings provided by the patent-holder to the standard setting or-ganisation to which the patent has been declared essential).

No laches or acquiescence defences exist in France. In par-ticular, the delay taken by the patent-holder before initiating an action cannot be used as a laches or acquiescence defence to defeat the standing to sue, the infringement or the grant of damages. When the statute of limitations has run out, dam-ages are lost in relation to the acts covered by the limitation period but an infringement action remains admissible if new infringing acts are committed.

3.5 role of expertsExperts may be appointed by the parties or by the court.

The parties sometimes produce written expert reports, pre-pared by independent experts of their choice, in support of specific arguments on validity and infringement. Parties’ experts are never heard by the court (although this is legally possible), nor cross-examined by the other party.

Upon the request of a party, the court may also designate an expert to clarify a technical issue defined by the court or to assist them in the assessment of damages. The court-appointed expert holds meetings with the parties and re-ceives their written explanations before preparing a report, which is handed to the court. However, experts shall not give any opinion as to legal issues, which are left to the judges to decide. As a result, an expert shall not be assigned the mis-sion to assess novelty, inventive step or any other invalidity ground.

The expert can be appointed from a list of experts approved by the courts or from among names of experts known in the technical field at stake suggested by the parties.

3.6 Procedure for construing the terms of the Patent’s claimsThe scope of the claims is defined in the same decision on the merits as the one deciding on the validity and infringement.

Claim construction is addressed first and is generally closely linked to the analysis of the prior art and the contribution of the invention to the art.

4. revocation/cancellation

4.1 reasons and remedies for revocation/cancellationThe court can invalidate a patent claim on any of the follow-ing grounds (Article L. 613-25 IP Code; Article 138 EPC):

•lack of novelty, inventive step or industrial applicability;•if the subject matter of the claim cannot be regarded as

an invention (discoveries, scientific theories and mathe-matical methods, aesthetic creations, computer programs, methods of surgical or therapeutic treatments of the hu-man or animal body, animal breeds and plant varieties are expressly excluded from patentability);

•if the invention is not described in the patent application in a manner that is sufficiently clear and complete for it to be performed by a person skilled in the art; and

•if the subject matter of the patent extends beyond the con-tent of the application as filed.

4.2 Partial revocation/cancellationIf the grounds for revocation affect(s) only part of the patent, partial revocation shall be pronounced by the judges, either by deleting one or more claims from the patent, with the other claims remaining in force (Article L. 613-25 IP Code), or by limiting one or more claims: in such a case, the patent owner shall submit a modified wording of the claim in ac-cordance with the terms of the decision to the French patent office’s Director (Article L. 613-27 IP Code).

However, since the introduction into French patent law of the possibility to limit the claims of a French or European patent at any moment (see 4.3 amendments in revocation/cancellation Proceedings), the second option – which was rarely implemented – is no longer used by French judges.

It is not possible to transform a partially invalid patent into a utility certificate, since the conditions required for an inven-tion to be patentable also apply to utility certificates.

4.3 amendments in revocation/cancellation ProceedingsThe patent-holder can request the limitation of a French pat-ent or of the French designation of a European patent before the French Patent Office (for European patents, a request for a central limitation can also be filed before the European Patent Office, provided no opposition is pending).

This limitation can be made at any moment, ie, either as a pre-litigation step or in the framework of revocation pro-


14

ceedings or infringement proceedings with a counterclaim for revocation.

A stay of the proceedings can be requested pending a deci-sion on the limitation and is usually granted unless, con-sidering all the circumstances of the case, the balance of interests is in favour of the continuation of the proceedings.

4.4 revocation/cancellation and infringementThe French judicial system is unified so patent infringement and patent validity issues are almost always heard together.

However, courts have total discretion to hear matters as they deem most appropriate and in particular to issue interim decisions or to decide on preliminary issues in separate de-cisions. In some circumstances, the court may render a first interim decision on the validity of the patent and deal with infringement in a second decision.

5. trial & Settlement

5.1 Special Procedural Provisions for intellectual Property rightsThe rules of civil procedure apply to patent litigation, but there are some specific rules for IPRs.

For the rules on:

•customs detention, see 2.1 actions available against in-fringement ;

•gathering of evidence rules, see 2.9 Mechanisms to Obtain evidence and information ; and

•preliminary injunctions proceedings, see 2.6 interim in-junctions.

disputes relating to employees’ inventions Article L. 611-7 IP Code provides specific rules as to the resolution of disputes relating to employees’ inventions (ie, inventions carried out by the employee, either in the course of that employee’s duties for which they are entitled to ad-ditional remuneration, or outside the employee’s duties but assignable to the employer against a “fair price”).

When a dispute arises concerning, for example, the amount of the employee’s compensation and/or the right to the in-vention, the employee can refer the case to a joint concilia-tion board (“Commission nationale des inventions de salaries” –”Cnis”). The board makes a settlement proposal within six months, which is deemed to constitute an agreement be-tween the parties if, within one month of its notification, neither of the parties has submitted the case to the Court. The agreement between the parties is made enforceable by an order from the presiding judge of the tribunal de grande instance de Paris.

5.2 decision MakersFrench judges sitting in the specialised chambers have a legal background.

The parties have no influence over which panel the case is allocated to: when a patent case is filed with the court, it is registered on the cause list of the third chamber of the tri-bunal de grande instance de Paris and assigned by the court to one of the four panels of judges. The same process applies before the two specialised panels of the cour d’appel de Paris.

5.3 Settling the caseThe parties have the right to settle the case at any moment (even after the oral hearing, or after the decision is made). The agreement can involve all the parties or just some of them.

In order for the settlement to be valid, the parties must make reciprocal concessions; the settlement can be made with prejudice (ie, the parties settle only the pending proceedings (“désistement d’instance”)) or without prejudice (ie, the par-ties undertake not to file any new action on the same subject matter at a later date (“desistement d’action”)).

The settlement has to be made in writing and is effective from the date of its signature. It might be approved by the court upon the request of the parties.

The court can also invite the parties to find an out-of-court settlement and, upon their agreement, can appoint a media-tor to assist the parties in reaching a settlement based on their respective interests.

Arbitration is also available (see 9.1 type of actions for intellectual Property).

5.4 Other court ProceedingsFrench courts are not bound by foreign prior decisions on the same issues, even decisions of courts of a higher level (unless in the specific case where an appeal decision issued on remand after a first decision of the Cour de Cassation is subject to a second decision of this court, which must then be complied with).

However, courts give consideration to previous decisions of other French courts, and particularly to decisions of the Cour de Cassation, leading to a harmonised case law and a reasonable level of predictability.

French courts also give consideration to decisions of the Boards of Appeal of the European Patent Office and to deci-sions of other European courts.

When parallel proceedings involving the same patent are in progress in France, abroad or before the European Pat-


15

ent Office, a party may request the court to stay the action pending the outcome of the other proceedings; however, this stay is not automatic and is granted when, after an appraisal falling within its discretionary power, the court is convinced that a stay is in accordance with the interest of the proper administration of justice.

6. remedies

6.1 remedies for the PatenteeVarious remedies exist for the patent-holder, including per-manent injunction, monetary relief and other sanctions.

Permanent injunctionIf the court finds the patent to be valid and infringed (ie, the counterclaim for nullity is dismissed and the claims of the asserted patent are held to be infringed by the defendant), and if the patent-holder requested an injunction, the court must order this injunction against the defendant for the du-ration of the patent.

The specific scope of the injunction depends on what was re-quested by the patent-holder, but it is usually broadly word-ed as an injunction from infringing given claims of a patent, and not restricted to a specific product or act. The injunction is usually subject to a penalty for each act of infringement.

Monetary remediesThe patent-holder and its licensees or distributors can obtain financial remedies to compensate the damage they have suf-fered from the infringement.

The rules regarding the calculation of damages, set out in the French Civil Code and Article L. 615-7 IP Code, allow the injured party to obtain a sum that is very close to the dam-age actually suffered. To set the damages, the court takes the following into account:

•the negative economic consequences of the infringement, including the loss of earnings and any loss suffered by the injured party;

•the moral prejudice caused to the injured party; and•the profits made by the infringer, including the savings in

intellectual, material and promotional investments that it has achieved with the infringement.

However, as an alternative and on the injured party’s request, the court can award a lump sum as damages. This sum must be higher than the amount of royalties or fees that would have been due if the infringer had requested authorisation to use the right that it has infringed. This sum does not ex-clude compensation for the moral prejudice caused to the injured party.

There are no punitive damages.

Other SanctionsAmong other things, the court can order the delivery up and destruction of the infringing products, the publication of the decision in designated newspapers or magazines, or on the Internet, and the recall of the infringing products from the channels of commerce.

6.2 rights of Prevailing defendantsThe winning parties can request the recovery of the costs incurred in the proceedings, particularly attorneys’ fees and bailiff ’s disbursements; the amount awarded in this respect is at the court’s discretion. In practice, the parties usually produce a statement indicating the total amount of costs en-gaged. The court awards an amount corresponding to one third to two thirds of the actual costs. The costs order is contained in the main judgment; there are no separate pro-ceedings regarding the recovery of costs.

6.3 types of remediesThere are no different types of remedies for different techni-cal property rights. Indeed, according to Article L. 611-2 IP Code, the provisions concerning patents also apply to Utility Certificates and SPCs. For further details, see 6.1 remedies for the Patentee).

6.4 injunctions Pending appealAn appeal will suspend the enforceability of the first-in-stance decision on the merits, unless the judgment of the court of first instance expressly states that said decision is enforceable notwithstanding an appeal. In patent matters, the tribunal de grande instance de Paris frequently orders that its first-instance decision is enforceable notwithstand-ing appeal, particularly regarding the permanent injunction, the rendering of accounts and the appointment of an expert for the determination of damages (if any). The infringer can challenge such provisional enforcement before the presiding judge of the court of appeal, who can then decide to stop the provisional enforcement if there is a risk that said enforce-ment could manifestly cause excessive consequences to the infringer (Article 524 of the French Code of civil procedure).

Preliminary injunctions are always enforceable, even in case of appeal.


16

7. appeal

7.1 Special Provisions for intellectual Property ProceedingsThere are no specific provisions concerning the appeal pro-cedure for patent rights proceedings.

Any first-instance decision may be appealed, without leave or permission being required.

Under settled case law, the cour d’appel de Paris has exclusive jurisdiction to decide patent matters on appeal of judgments issued by any of the courts of first instance that had jurisdic-tion over patent matters before 1 November 2009.

Decisions from the cour d’appel de Paris may be further ap-pealed before the Cour de cassation.

7.2 type of reviewThe court of appeal reviews the dispute in full (de novo). New claims cannot be filed before the court of appeal, but parties may raise new arguments and produce new evidence, particularly new prior art documents or additional evidence of infringement.

8. costs

8.1 costs Before Filing a LawsuitPreparation costs can arise prior to filing the lawsuit in the following instances:

•assessing the validity of the patent (prior art searches, limi-tation of the claims to strengthen the patent, full translation of a European patent);

•identifying the companies entitled to start the action (reg-istration of assignment or licence agreements);

•gathering evidence of the infringement (purchase with cer-tified reports from a French bailiff, technical analysis of the infringing products); or

•undertaking pre-trials steps such as sending warning let-ters to the alleged infringers or letters putting secondary infringers on notice (see 2.4 Prerequisites to Filing a Law-suit), or preparing a saisie-contrefaçon.

8.2 responsibility for Paying costs of LitigationThe losing party can be required to reimburse the prevailing party’s attorney fees and legal costs. The amount of attorney fees to be reimbursed is at the judge’s discretion. Legal costs are automatically paid by the losing party. For further details, please refer to 6.2 rights of Prevailing defendants.

9. alternative dispute resolution

9.1 type of actions for intellectual PropertyAccording to Article L. 615-17 IP Code, arbitration is avail-able in patent matters, under the conditions of Articles 2059 and 2060 of the French Civil code. In practice, arbitration is mainly used for disputes concerning patent ownership, interpretation and the enforcement of contracts relating to patents, exploitation and infringement of a patent. Disputes on patent validity were not previously subject to arbitration, with revocation of a patent with erga omnes effect being a matter of public policy reserved for the French state. How-ever, in a decision dated 28 February 2008, the Paris court of appeal held that the issue concerning the validity of a pat-ent – incidentally raised during a contractual dispute – can be settled by arbitration; in such a scenario, the decision of the arbitrator has no effect towards third parties (it only has effect inter partes).

Mediation is used more rarely, and mostly at the stage of the proceedings where validity and infringement issues have been decided but damages have yet to be set.

10. assignment and Licensing

10.1 requirements or restrictions for assignment of intellectual Property rightsAccording to Articles L. 613-8 and L. 613-9 IP Code, the rights deriving from a patent application or a patent may be assigned in whole or in part.

To be valid, the assignment shall be executed in writing; to be enforceable against third parties, the assignment must be entered, upon payment of a fee, in the National patent register, for French patents or for European patent after grant and if no opposition is pending, or in the European Patent register for European patents (during the examination and up to the end of the opposition procedure or the opposition period, the European patent office centralises the registra-tion in the European patent register).

10.2 Procedure for assigning an intellectual Property rightThe assignment shall be executed in writing and should identify precisely the patent assigned.

Unless explicitly provided in the contract, the assignment of a first patent application does not include the assignment of the priority right deriving from this patent application, and the assignment of a patent does not cover the corresponding foreign patents filed under the same priority.

The assignment of the patent is executed as soon it is signed, but it cannot be enforced against third parties such as in-


17

fringers unless it is registered in the French or European patent register. The law does not set any time limit for this registration. When requesting the registration of an assign-ment in the patent register, it is possible to request a partial publication of the assignment act in order to keep confiden-tial information secret.

10.3 requirements for restrictions to License an intellectual Property rightThe same requirements for assignment apply for the grant of licences, ie, the licence agreement must be executed in writ-ing in order to be valid and must be entered in national or European patent registers in order to be enforceable against third parties.

However, according to Article L. 613-9 IP Code, a licensee that is not registered in the national or international patent register is entitled to join the infringement action brought by the patent-holder in order to obtain compensation for the damage that it has suffered.

10.4 Procedure for Licensing an intellectual Property rightThe licence agreement shall be executed in writing and shall indicate precisely the conditions of the licence (the patent at stake, duration of the licence, nature of the licence (ex-clusive or non-exclusive), territory covered, calculation and payment of the royalties, warranties granted by the patent-holder if any, etc).

When requesting the registration of a licence agreement in the patent register, it is possible to request a partial publi-cation of the assignment act in order to keep confidential information secret.Véron & associés

1, rue Volney75002 ParisFrance

Tel: +33 (0)1 47 03 62 62Fax: +33 (0)1 47 03 62 69Email: [email protected]: www.veron.com

CHAMBERS Global Practice Guides ARGENTINA FRANCE BRAZIL ... · France Law and Practice Contributed...

Documents

Transcript of CHAMBERS Global Practice Guides ARGENTINA FRANCE BRAZIL ... · France Law and Practice Contributed...