I FORMS OF INTELLECTUAL PROPERTY PROTECTION
Intellectual property protection and enforcement in France is heavily affected by international treaties and multilateral agreements.
French law on intellectual property rights is the result of national statutory and regulatory provisions, statutory provisions implementing international and multilateral agreements and European regulations having direct effect in France as a Member State of the European Union.
In this respect, France is a party to the Paris Convention for the Protection of Industrial Property of 20 March 1883, which introduces key mechanisms such as the priority right. France is also a party to the Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886.
Under these two main international conventions, France is a party to a number of special agreements. Some of these allow for an international filing of application for registered intellectual property rights: for patents, the Patent Cooperation Treaty (PCT) of 19 June 1970; and for trademarks, the Madrid Agreement concerning the International Registration of Marks of 14 April 1891 and the Madrid Protocol of 27 June 1989.2
France is also a party to regional agreements. The substance of the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention of 27 November 1963, drafted under the authority of the Council of Europe, is found in the Munich Convention on the Grant of European Patents of 5 October 1973, also known as the European Patent Convention and revised in the EPC 2000, which entered into force on 13 December 2007. Under these conventions, European patents administered at the European Patent Office (EPO) may designate France and be enforceable in France. Since 1 May 2008, because of the entry into force of the London Protocol, a French translation of the description of the patent is no longer required, provided that it is available in one of three official EPO languages (German, English and French).3
As a Member State of the European Union, France implements and enforces EU legislation, for example Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trademark, which sets a unitary trademark protection for all the Member States. Directives also aim at harmonising national laws and in this respect, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights has notably helped improve means of enforcement of intellectual property rights in France.
Under the World Trade Organization, France also implemented the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) signed on 15 April 1994.
The implementation of these international rules and the articulation of French law and notably French intellectual property law with these international rules is codified with French national substantive law in the French Intellectual Property Code (CPI).
French law as codified in the CPI provides for specific provisions regarding several intellectual property rights, among which are utility patents, supplementary protection certificates for some utility patents, utility certificates, trademarks, designs, semiconductors, plant varieties, geographical indications, manufacturing secrets, authors’ rights, neighbouring rights and database producer rights.
The intellectual property rights most commonly relied upon are utility patents, designs, trademarks and authors’ rights.4
i Patent protection
Subject to registration, utility patents allow for obtaining exclusive rights over a new invention showing the inventive activity of the inventor and allowing for industrial application. Utility patents are aimed at protecting technical features. National French patents and European patents designating France have effect in France from their date of application and for a period of 20 years.5 The main counterpoise for granting exclusive patent rights to a patent holder is the disclosure of the content of the patent application and the granted patent to the public. After the 20-year term, the patent rights expire and the patent content falls in the public domain.
ii Design protection
Subject to registration, designs allow for protecting new forms showing new and individual character. Designs aim at protecting the appearance of the whole or a part of a product. Registered national, international and Community designs are protected for a period of five years as from the date of the filing of the application. The term of protection may be renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing. Unregistered Community designs are protected for a period of three years from the date of first disclosure of said design. Registered and unregistered designs may also enjoy protection under authors’ rights, given that they meet the specific requirements under authors’ rights in France.
iii Trademark protection
Subject to registration, trademark law allows for reserving a sign with distinctive character for identifying a good or a service. National, international and Community trademarks have effect in France and allow for reserving a right over a sign on their date of application and for a term of 10 years renewable without limits. Trademarks may consequently remain valid and enforceable for an unlimited period of time. Trademarks may, however, become generic or be revoked for non-use.
iv Authors’ rights protection
There is no copyright per se in France, only authors’ rights. There are no formalities of registration required with any French office to enable an author to protect his or her work and benefit from the exclusive rights over such a work. Authors’ rights result solely from the creation of the work itself. The work must be an original work of authorship. Authors’ rights combine both proprietary economic rights6 and moral rights.7 The proprietary economic rights last for the entire life of the author and end 70 years after the year of his or her death.8 The moral right is imprescriptible. Authors’ rights may be difficult to evidence owing to the lack of formal requirement for their protection.
v Trade secrets protection and other exclusive data
In addition to these main intellectual property rights and other rights codified in the CPI, other valuable assets and information may be protected by civil and criminal law, as well as specific regulatory provisions.
Trade secrets are not subject to a legal definition under French law and no specific provisions relate directly to them yet9 but they are often recognised and protected in court decisions under French civil or criminal law. The definition of a trade secret as provided by Article 2(1) of Directive (EU) 2016/94310 will become part of French law once said Directive is duly implemented in France and is already a guide for French courts. Basically, information will qualify as a trade secret if: (1) it is not generally known; (2) it has commercial value because it is a secret; and (3) reasonable steps have been taken under the circumstances to keep it secret.
Other specific regulations allow for protecting specific valuable data such as data found in marketing authorisations.11 For medicinal products authorised by the French health authorities with application for authorisation submitted after 30 October 2005, Article 10.1 of Directive 2001/83/EC as amended by Directive 2004/27/EC and as implemented into French law grants the holder of the marketing authorisation of the reference medicinal product at least eight years of data exclusivity: protection over the results of the holder’s preclinical tests and clinical trials from the initial authorisation of the reference medicinal product, which means that the applicant for a marketing authorisation of a generic product cannot rely on them until that period has elapsed.12
ii RECENT DEVELOPMENTS
The international agreement establishing a European Unitary patent system including a unitary patent and the Unified Patent Court (UPC) has now been ratified by 15 participating Member States. The ratification by Germany and by the United Kingdom (despite respectively a constitutional complaint and Brexit) are still awaited and expected in 2018 for the patent package to enter into force. The UPC is a specific supranational jurisdiction for existing European patents and for future Community patents litigation and this jurisdiction will have its own set of procedural rules.
On 13 December 2017, Law No. 2017-1840 was passed, ratifying the Protocol on privileges and immunities necessary for the exercise of its functions by the UPC in France.
III OBTAINING PROTECTION
Article L611-10 CPI provides that inventions that are new, that show inventive activity and that are susceptible of industrial application are patentable. There is, however, no general positive definition of the ‘invention’ under French law.
In practice, products and processes that provide technical means for solving a technical problem are, as a general rule, patentable. Nevertheless, some subject matters are excluded from patentability.
Article L611-10, Section 2 CPI provides a list of what are not inventions: discoveries, scientific theories and mathematical methods; aesthetic creations; plans, principles and methods applied to intellectual activities, games or business as well as computer programs; and presentations of information. Article L611-10, Section 3 specifies that exclusion should apply only when the subject matter of the patent is one of the above per se. When the same is included in a larger array of patentable means, then the exclusion to patentability does not apply.
In this respect, pure business methods are not patentable in France. However, a larger process including a business method may be patented if the means other than the business method are claimed and patentable.
Similarly, computer software per se is excluded from patentability and is protected under authors’ rights in an amended version as compared to literary and artistic works.13 However, nothing precludes obtaining a patent for a process including the use of software or a programmed computer to enable its implementation.14
Article L611-19 CPI excludes from patentability plant varieties that may be protected by a special title under Regulation (EC) No. 2100/94. Animal breeds are also excluded. Inventions involving plants and animals but not limited to a particular variety or breed are patentable except products obtained from biological processes for obtaining plants and animals, as well as their parts and genetic components. Furthermore, it is stated that processes involving microorganisms and products obtained through such processes are patentable.
In the field of genetics, Article L611-18 CPI15 states, as a principle, that the human body itself or the mere discovery of a part of the same cannot be patented. Processes for cloning humans, processes for modifying the genetic identity of mankind, the commercial or industrial use of human embryos, and gene sequences cannot be patented. This nevertheless allows for patenting the vast majority of biotechnology-related inventions (both processes and products). As an example, a patent over ‘cloned DNA sequences, hybridisable with genomic RNA of the LAV’ has been held valid.16
As to methods for treating patients, Article L611-16 CPI states that they are not patentable. The same Article makes it clear that products for implementing methods for treating patients are patentable.
Where a patent application is for military or mixed civil-military subject-matter, the applicant must notify the Ministry of Defence within eight days of filing.17
As to the nature of the rights vested in the patent holder, it is a right to exclude others from doing a certain number of actions, including manufacturing, importing and selling products or processes listed on the claims of the patent.18
Patent rights are granted for 20 years from their date of filing. However, in some limited cases, the protection conferred by the patent may be extended.
In this respect, under Regulation (EC) No. 469/2009 of 6 May 2009 patents over drugs are subject to a possible extension of protection in the form of a supplementary protection certificate (SPC).19
Besides the above tentative list of patentable subject matters, most inventions nowadays are improvements rather than pioneering inventions; in a 2011 decision, the Court of Appeal of Paris20 held that an improvement patent is one reproducing an ‘essential feature’ of a prior invention.
IV ENFORCEMENT OF RIGHTS
i Possible venues for enforcement
Patent enforcement in France is for courts to ascertain. Since 2 November 2009, the civil First Instance Court of Paris has exclusive jurisdiction over patent cases.21 This allows for some harmonisation of case law in patent cases at first instance level.22
Actions for nullification of a decision of the INPI (an administrative decision) remain the exclusive jurisdiction of the Court of Appeal of Paris.
In theory, upon a showing of intent, patent infringement amounts to an offence,23 allowing a case to be brought before the criminal courts. A criminal and a civil case over the same facts may be brought in parallel but the procedural interaction of the two may bring much complexity to the case.24
Patent holders may voluntarily limit the scope of the claims of their title, notably post-grant.25 The limited patent retroactively becomes the only patent that ever existed. The application for voluntary limitation has to be filed with the INPI. The INPI decides on the grant of the voluntary limitation within a few months. Cumulating several voluntary limitations is allowed.26
When civil proceedings on the merits regarding the validity and possibly infringement of a patent as granted are pending, the initiation of a limitation procedure at the INPI does not automatically trigger a stay of the civil proceedings. However, the dual consideration of the retroactive effect of the limitation and the possibility of an appeal against the decision of the INPI on the limitation should, in most cases, lead judges to stay civil proceedings on the merits before ruling on validity. This is the line followed by the Court of Appeal of Paris,27 which also made clear, in one of its first decisions on voluntary limitation post-grant, that despite statutory uncertainty, voluntary limitation application before the INPI is available both for national French patents and for European patents designating France.28
Since 2009, voluntary post-grant patent limitation has proved to be a valuable strategic tool for patent holders involved in litigation over the validity of a patent.
ii Requirements for jurisdiction and venue
Law No. 2011-525 of 17 May 2011 vests exclusive jurisdiction in the civil first instance courts for all civil actions and requests over patents even when they address a related issue of unfair competition.29 As regards patents, since 2 November 2009 exclusive jurisdiction had already been vested specifically in the First Instance Court of Paris. Civil actions over patents include infringement actions, nullification actions and declaratory suits for non-infringement.
To sue for infringement, a patent holder must notably evidence that it has title, ownership and that the patent is enforceable by payment of maintenance fees. An exclusive licensee may also, upon authorisation by the patent holder, initiate a patent infringement case. A non-exclusive licensee may join the procedure initiated by the patent holder to recover damages for its own loss.30 To sue for patent nullification a third party must show that it has a personal interest in seeking patent nullification (e.g., being a competitor on the French market needing freedom to operate).31 To initiate a declaratory suit for non-infringement, a party must show that it is using its invention industrially in the European Union or that it is effectively and seriously preparing to do so.32
iii Obtaining relevant evidence of infringement and discovery
Under French civil procedure, the burden of proof regarding the facts on which a claim is based lies on the claimant.
Infringement may be proved by any evidentiary means. This includes bailiff reports, bailiff purchases (i.e., purchases made by an independent party under the scrutiny of a bailiff reporting under oath on the actual sale on the market) and documentary evidence.
There is no equivalent to the US discovery or to the UK disclosure in France, but as regards intellectual property rights, and specifically patents, French law provides for a specific means of obtaining evidence, the infringement seizure. The infringement seizure is a highly effective evidence-gathering mechanism whereby a patent holder, suspecting an infringement of its rights, applies ex parte for an order of the presiding judge of the First Instance Court of Paris authorising a bailiff and possibly an independent person knowledgeable in the art, to enter any premises where the evidence of the infringement could be found (notably the premises of a competitor) to seize the allegedly infringing product, or to describe, take pictures or videos and copy any information as listed in the presiding judge’s order.
This evidence-gathering procedure is performed under the liability of the patent holder. Consequently any abuse resulting in gaining access to information not directly related to the seizure of sample products or the description of the allegedly infringing product or process will be penalised: evidence gathered beyond the scope of the presiding judge’s order will be inadmissible and the patent holder may have to compensate the seized party for any loss resulting from the abuse.33
Where the infringement-seizure takes place on the premises of a competitor, the latter will often have any information seized put in sealed envelopes, to protect confidentiality. However, confidential information may be held by a third party. This is the case with seizures of the open and closed (not publicly available) part of drug master files handed to the French health authorities for obtaining a marketing authorisation. In such a case, the Court of Appeal of Paris34 has indicated that confidential information must remain accessible to the plaintiff willing and needing to evidence infringement but that ‘it is necessary to reconcile the conflicting interests of the parties, i.e. the search for evidence of infringement and the protection of confidential information; there is a need to assess proportionality of the [evidence-gathering] measures taken with the necessary protection of confidentiality’. Consequently, if the French health authorities did not request that information seized on its premises be kept confidential awaiting a sorting ordered by a court, it remains possible for the competitor of the patent holder to seek in court the concealment of such evidence.
In a telecoms case where the seized party was likely to benefit from a licence over the patent at stake, the Court of Appeal of Paris held that when applying ex parte for an order of the presiding judge of the First Instance Court of Paris, due process commanded that the patentee let the judge know of the likely existence of a licence.35
In addition or as an alternative to the infringement seizure, it is possible36 to have the court order that an alleged infringer provide some information on the extent and origin of the infringement. The Court of Cassation has had the opportunity to decide that such right of information may be applied for and ordered before trial, while a case on the merits is pending and before trial regarding infringement.37
iv Trial decision-maker
In France, the third chamber of the First Instance Court of Paris specialises in intellectual property and has exclusive jurisdiction in France for patent cases. The third chamber is divided into four sections of three judges. These judges do not have a technical background. There is no jury system in French courts and fact-finding is for the judges to carry out.
At trial, patent cases will usually be heard by the three judges belonging to the section to which the case was assigned. If necessary, the court may, during the proceedings on the merits, appoint an expert from the court list of experts to clarify specific issues in a report filed before trial. This is not, however, often the case.
v Structure of the trial
Since the procedure in civil cases in France is mainly conducted in writing, judges will read the briefs filed by the parties to understand and decide a case. The trial is an opportunity for lawyers to emphasise and synthesise the key issues of the case. Judges will usually listen to the oral arguments of each party one at a time and ask few or no questions. Judges rely heavily on documentary evidence and information gathered during the saisie-contrefaçon. Witnesses are, in practice, never heard by French courts and party-appointed experts’ affidavits are given relative weight and experts are never examined or cross-examined.
French civil procedure does not set specific standards of proof in patent cases. Patents are always presumed valid. In patent nullification cases, the Court of Appeal of Paris38 has indicated, as regards evidencing insufficient disclosure leading to nullity, that it ‘must be established beyond a reasonable doubt and that the doubt should benefit the patent holder’. This should also be applicable to other grounds for judicial nullification of a patent.
To correctly assess infringement, claims will first be construed. Claim construction is made in light of the description and drawings.39 Additionally, the Court of Cassation has had the opportunity to decide that even if there exists no ‘file-wrapper estoppel’ as such in France, limitations made during prosecution of the disputed patent should nevertheless be taken into account to assess the scope of the granted patent.40
French law lists acts that when performed without the consent of the patent holder amount to infringement, including manufacturing, importing and selling the patented products or processes.41 An offer for sale, defined as any presentation of a product or its prototype, which may result in potential or actual clients disregarding the patented invention, is also an act of infringement.42
Infringement may be found by literally reading the claims of the patent or by applying the doctrine of equivalents. Indirect infringement also triggers the liability of the person offering essential means for implementing the invention, even where the essential means are consumable supplies.43
Claim construction and infringement (and nullity counterclaims) are all dealt with and decided at the same time.
The most common defence to infringement is the invalidity of the patent, often resulting in a counterclaim for patent nullification. Nullity is most often sought for lack of inventive step and lack of novelty of the patented subject matter. Lack of novelty requires a single piece of prior art determining form and function of the invention and achieving the same result.44 A demonstration for lack of inventive step allows for the combination of several relevant pieces of prior art and the general knowledge of the person skilled in the art.45 However, it should also be demonstrated that the person skilled in the art charged with assessing the inventive step over the prior art had good reason to combine the selected pieces of prior art.46 In assessing inventive step, the Court of Appeal has followed the exact approach of the EPO, from the selection of the most relevant prior art to the ‘could or would’ approach.47 Other grounds for nullity can serve as defences against infringement, notably undue extension of the granted patent as compared to the application as filed or insufficient disclosure of the invention even if French courts have traditionally been flexible in assessing the latter.48
Under French law, ownership is not a defence to infringement.49
Other common defences are the personal prior use right developed independently earlier than the priority date of the disputed patent and patent rights exhaustion. As regards the latter, it occurs where the patented product has been put on the market with the, possibly implicit, consent of the patent holder.50
A defence specific to the pharma industry is the Bolar provision, construed broadly in France, following which acts even outside of France, to gain regulatory approval for any medicinal products, are exempt from patent infringement.51
viii Time to first-level decision
It usually takes roughly 24 months to decide a patent infringement and validity case on the merits on first instance.
Patent holders may choose to seek a preliminary injunction in an expedited prima facie case before seeking a finding of infringement on the merits.
The requirements for a grant of a preliminary injunction52 are that the patent holder shows the patent is granted, that it is enforceable at the time the preliminary injunction is sought, that there is a prima facie case of infringement or of clear threat of infringement.53 The defendant to the injunction may challenge the prima facie nature of the infringement notably by evidencing a prima facie case of nullity of the patent. In a standard-essential patent case where the parties were discussing the FRAND terms of a licence, the presiding judge of the First Instance Court of Paris rejected a preliminary injunction request, since it would have had disproportionate consequences on the business of the defendant.54 Preliminary injunctions are usually requested in summary proceedings (inter partes) but may also be sought on ex parte petition. The Court of Appeal of Paris, however, decided that an injunction requested ex parte cannot be ordered unless specific factual circumstances make it reasonable not to hear the defendant in inter partes proceedings.55 Preliminary injunctions are decided within a few months and even within a few weeks where urgency commands it.
On the merits, patent holders will mainly seek a permanent injunction56 and compensatory damages. There are no exemplary or punitive damages in France.
Courts focus on the rightholder’s economic loss to assess damages. Damages mainly amount to lost profits,57 corresponding to a lost royalty58 or the gross margin of the patent holder on the infringing turnover. Alternatively account of profits is available and has been awarded by a French court where it allows a greater compensation than lost margin or lost royalty.59
When given sufficient supporting evidence regarding costs, courts order that attorneys’ fees be fully borne by the defeated party.60
Other available measures include the recall from the channels of commerce or the destruction of the infringing products as well as the publishing of the decision in full or in part.
x Appellate review
The Fifth Chamber of the Court of Appeal of Paris has two sections that specialise in patent cases. Each section has three judges. These judges do not have a technical background.
Appellate review in France is de novo on both facts and law. New evidence may consequently be added at the appellate level but not new legal claims. Appeal decisions are usually rendered within 24 months.
xi Alternatives to litigation
Alternative dispute resolution is available to reach an outcome in patent litigations. Ad hoc mediation allows for reaching a settlement. Additionally, French patent law now clearly states that the exclusive jurisdiction of the First Instance Court of Paris ‘does not preclude the use of arbitration’.61 This was in practice already the case as regards patents, but the statutory change clarifies the situation.
V TRENDS AND OUTLOOK
On 19 February 2018, a draft bill of Parliament for the implementation into French law of the Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, was filed with the Lower Chamber of the Parliament. The proposed bill offers to strengthen the protection of trade secrets in France notably by allowing easier gathering of evidence of an unlawful disclosure and by allowing interlocutory measures for presenting or stopping any unlawful disclosure. Courts deciding trade secrets cases could limit the disclosure of a piece of evidence, hold hearing behind closed doors and redact decisions to ensure confidentiality. Member States of the EU must implement the Directive into their national law by 9 June 2018.
1 Stanislas Roux-Vaillard is a partner at Hogan Lovells (Paris) LLP.
2 Other ratified conventions are: regarding designs, the Hague Convention of 6 November 1925; and regarding the filing of microorganisms, the Budapest Treaty of 28 April 1977.
3 The claims are still available in three official languages of the EPO.
4 Geographical indications, such as appellations of origin are also widely used almost exclusively for foodstuffs, given that the specificities of the land of their region of origin provide some of their characteristics.
5 According to the statistics made available by the French patent and trademark office (INPI), the EPO and the World Intellectual Property Organization (WIPO), 16,250 national French patents were applied for in 2017. During the same period, French entities applied for 10,559 European patents (directly at the European Patent Office or through the PCT route). Further, of the 243,500 international applications filed under the PCT, 8,012 were filed by French entities.
6 Notably the rights to perform, copy, display and adapt.
7 Mainly the right to disclose the work or right of withdrawal, the right to be named as the author and the right to have the work and its destination unaltered.
8 Since Law No. 97-283 of 27 March 1997.
9 With one exception, relating more specifically to the protection of a secret manufacturing process as defined at Article L152-7 of the French Labour Code: ‘The fact of revealing or attempting to reveal a manufacturing secret by any director or salaried person of the company in which he is employed shall be punishable by imprisonment of two years and a fine of €30,000. The Court may also order as an additional penalty for a period of not more than five years the prohibition of civic, civil and family rights provided for by Article 131-26 of the Penal Code.’
10 Article 2(1) of Directive (EU) 2016/943 defines ‘trade secret’ as follows: ‘information which meets all of the following requirements: (a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret’.
11 The current regime on data exclusivity and market exclusivity in marketing authorisations is governed by Directive 2001/83/EC of the European Parliament and of the Council, of 6 November 2001, as amended by Directive 2004/27/EC of the European Parliament and of the Council, of 31 March 2004.
12 The same articles provide for a 10-year period of market exclusivity protection during which the generic product cannot be launched onto the market. The market exclusivity period can be extended to a maximum of 11 years under specific requirements.
13 Law No. 85-660 of 3 July 1985 codified in the CPI allows the application of authors’ rights protection to computer programs.
14 As decided by the Court of Cassation: ‘A process cannot be denied patentability on the sole basis that one or more of its steps are performed by a computer controlled by software.’ Moreover, the court held that ‘excluding the patent field processes involving the execution of a computer program would “exclude from the field of patentability most important recent inventions”’. Court of Appeal of Paris 15 June 1981, PIBD 1981. 285, III, 175.
15 Article L611-18 CPI mainly implements into French law Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions.
16 Court of Cassation, 23 November 2010, Case No. 1194, Institut Pasteur v. Chiron Healthcare & Novartis Vaccines & Diagnostics.
17 Decree No. 2017-553 of 14 April 2017.
18 Article L613-3 CPI.
19 SPCs allow for compensating the time lost between the filing of a patent and the grant of a marketing authorisation needed to put the drug on the market (up to five years).
20 Court of Appeal of Paris, Division 5-1, 30 March 2011, No. 09/06333, Conté, PIBD 2011, 940-III-340.
21 Decree No. 2009-1205 of 9 October 2009, which entered into force on 1 November 2009, states that disputes regarding patents are now the exclusive jurisdiction of the First Instance Court of Paris and on appeal the Court of Appeal of Paris. (See Article L615-17 and Article D631-2 CPI.)
22 Such exclusive jurisdiction of the Paris courts does not extend to trade secret cases (see Court of Cassation, 16 February 2016, Case No. 14-24.295).
23 See Article L615-14 CPI; however, this route is almost never used, mainly because: (1) a criminal case is not controlled only by the parties but also by the French state, which is a party to the proceedings, independently deciding its own behaviour in the case; and (2) criminal courts are not used to grant high damages in patent cases.
24 Court of Appeal of Paris, Division 5-1, 12 February 2014, No. 11/01882, Donerre v. BOS.
25 Voluntary limitation post-grant was introduced into French law by Act No. 2008-776 of 4 August 2008, which entered into force on 1 January 2009 and Decree 2008-1471 of 30 December 2008.
26 Court of Appeal of Paris, Division 5-1, 12 February 2014, No. 12/16589, Anne Duquesnoy v. Hermès Sellier.
27 Court of Appeal of Paris, Division 5-2, 21 October 2011, Ateliers LR Etanco SAS v. SFS Intec Holding AG.
28 Stanislas Roux-Vaillard and Loïc Lemercier, ‘Limitation of patents in France: three years on’, Propriété Industrielle 2012, étude 2, p. 22; Emmanuel Py: ‘Details on the voluntary limitation procedure of the patent: the case of the European patent designating France’, Propriété Industrielle 2011, comm 70; Pierre Véron and Isabelle Romet: ‘Patents: strengthening by limitation – voluntary limitation of granted French national patents is now possible’, IIC, 31 December 2009.
29 See Article L615-17 CPI.
30 See Article L615-2 CPI.
31 Court of Appeal of Paris, Division 5-2, 17 February 2012, Case No. 11/09940, Omnipharm Limited v. SAS Merial.
32 See Article L615-9 CPI.
33 Court of Cassation, 26 June 2012, Case No. 11-18.971, Tordo Belgrano & FTI v. Inglese, Metimexco and Morey Production.
34 Court of Appeal of Paris, 6 December 2011, Cipla v. AstraZeneca, PIBD 957, III, 150.
35 Court of Appeal of Paris, 28 January 2014, SFR, Huawei Technologies France, Bouygues Telecom v. High Point.
36 See Article L615-5-2 CPI.
37 Court of Cassation, 13 December 2011, Case No. 10-28.088, Puma v. Barnett.
38 Court of Appeal of Paris, 13 January 2012, Case No. 10/17727, SAS Sandoz v. Eli Lilly & Company.
39 Court of Cassation, 23 June 2015, Case No. 13-25082, Core Distribution Inc v. Castorama.
40 Court of Cassation, 23 November 2010, Institut Pasteur v. Chiron Healthcare; see also: First Instance Court of Paris, 20 September 2011, Case No. 10/02548, SEPPIC v. IMCD.
41 Article L613-3 CPI.
42 Court of Cassation, 5 July 2017, Case No. 15-20554, Bell Helicopter v. Airbus Helicopters.
43 Court of Cassation, 8 June 2017, Case No. 15-29378, SCA Tissue France v. Sipinco & Global Hygiène.
44 Court of Cassation, 14 May 2013, Case No. 11-27.686, Heidelberg Postpress v. Bobst.
45 Court of Cassation, 11 January 2017, Case No. 15-17.134, Reckitt Benckiser Plc v. Arrow génériques.
46 Court of Appeal of Paris, Division 5-2, 13 January 2012, Case No. 10/17727, SAS Sandoz v. Eli Lilly & Company.
47 Court of Appeal of Paris, Division 5-2, 13 January 2012, Case No. 10/17727, SAS Sandoz v. Eli Lilly & Company.
48 Court of Cassation, 13 November 2013, Case No. 12-14.803, Paul Robert Industrie SAS v. Hutchinson France, Paulstra.
49 A dispute over ownership of a French patent gives rise to a specific action for claiming back ownership (Article L611-8 CPI); lack of ownership of a European patent when filed is ruled by Article 138 paragraph 1(e) of the European Patent Convention, which is applied by the Court of Cassation as being actionable only by ‘the true owner of the patent or his successor’ and not any alleged infringer. See Court of Cassation, 14 February 2012, Case No. 11-14288.
50 In a preliminary ruling (Order from the presiding judge of the First Instance Court of Paris, 8 December 2011, Samsung v. Apple), the presiding judge of the First Instance Court of Paris found that owing to the circumstances of the case, an agreement in the mobile technology sector, where parties to the agreement had specified that the document should not be interpreted as a licence, was in fact a licence and had exhausted the rights of the patent holder.
51 Order from the presiding judge of the First Instance Court of Paris, 15 December 2014, Case No. 14/58023, Sanofi-Aventis Deutschland v. Lilly France.
52 Article L615-3 CPI.
53 The presiding judge may order that the claimant place a bond to compensate the defendant for any undue negative consequence originating from the preliminary injunction, if the court ultimately finds in favour of the defendant.
54 Order from the presiding judge of the First Instance Court of Paris, 29 November 2013, Case No. 12/14922, Ericsson v. TCT Mobiles; see also: Order from the presiding judge of the First Instance Court of Paris, 8 December 2011, Case No. 11/58301, Samsung v. Apple.
55 Court of Cassation, 16 September 2014, Case No. 13-10189, Sanofi v. Novartis.
56 Court of Cassation, 12 May 2015, Case No. 14-13024, Mr. Pelletier v. Accordiola France.
57 Courts have awarded damages for the ‘springboard effect’, which are included in the calculation of right holder’s loss of profits. The springboard effect allows the court to take into account part of the turnover made by the infringer after the infringing situation stopped, on account of the market share unduly gained during the infringement.
58 Owing to the judicial context of the royalty determination, leaving the infringer with no room for negotiation, French courts increase the contractual rate by a few points.
59 Court of Appeal of Paris, 7 November 2012, Case No. 11/14297, Quest Technologies Inc v. Sarl AHT Sud; First Instance Court of Colmar, 20 September 2011, No. 10/02039, Sté MBI v. Sté Gyra et Sté Prodis.
60 See Article 700 of the French Code of Civil Procedure in light of Article 14 of Directive 2004/48/EC. For example, Court of Appeal of Paris, Division 5-2, 13 January 2012, Case No. 10/17727, SAS Sandoz v. Eli Lilly & Company.
61 Law No. 2011-525 of 17 May 2011, which includes Article 196, notably amending the provisions of Article L615-17 CPI.