INTERNATIONAL
PANEL DISCUSSION : FRANCE
Pierre
VÉRON
I. Transborder injunctions in the French
Courts
(The recognition and enforcement of foreign decisions ordering cessation of
patent infringement)
1. In today's international economy, the patent
owner's task in preventing patent infringement is not easy where this extends
over several countries.
International systems for the
registration and grant of patents such
as the PCT and the European patent have been introduced with great success.
However, as yet, there is no organised
judicial system at a multinational level concerned with acts of patent
infringement.
2. In order to fill the gap, practitioners have of
course found efficient, rapid and economic methods to prevent multinational
infringement.
One of the best methods is certainly to
attack the infringement at its source in its country of origin.
But this is not always possible, since
the infringing production may take place in a country where the patent is not
in force, or where the legal and practical means for dealing with the
infringement are insufficient.
3. As a result, in many cases it is necessary to
commence proceedings in each country where infringing goods are sold.
Such action is complicated and
expensive; and it is therefore not surprising that a number of patent owners
have attempted to bring proceedings in one country in respect of infringing
acts committed in a number of countries.
4. In Europe, the Dutch courts have appeared as
particularly willing to accept such applications, and on several occasions have
ordered the cessation of infringing acts occurring in several countries.
The question has arisen in the French
Courts concerning the extent to which such decisions could be recognised in
France.
This would now appear to be the case1.
This has raised eyebrows amongst those
lawyers and academic writers in favour of strict national enforcement of
industrial property rights and who are opposed to the recognition of
jurisdiction of a foreign court to deal with infringement of a French patent (1.)
However the decision will not come as a
surprise to specialists of European litigation since, within the scope of the
claims submitted to the Court, it adopts the traditional approach of the rules
of the Brussels Convention of 27th September 1968 on the recognition and
enforcement of judgements in civil and commercial matters (2.).
The practical question arising is to
know whether litigants will not be encouraged to take proceedings in the Hague
in respect of infringement of French patents (3.).
5. As regards the question of jurisdiction based
on the subject matter of the claim, the case of EUROSENSORY/TIEMAN of 28th
January 1994 appears to be the first published decision which implicitly
recognises the jurisdiction of a foreign court to deal with infringement of a
French patent, or at least to order cessation on a provisional basis.
It is well known that until then the
French Courts had decided on several occasions that their jurisdiction to deal
with infringement of a French patent excluded the jurisdiction of foreign
courts2.
There is little recent case law for an
essentially practical reason : in proceedings for patent infringement, the
defendant usually raises the preliminary objection that the patent relied on is
a invalid.
In such a case it is widely accepted
that, in contrast with infringement, the question of validity of a French
patent can only be dealt with by the French Courts.
This rule is even expressly stated in
Article 16-4 of the Brussels Convention of 27th September 1968 which provides
that in proceedings concerned with validity of patents, the Courts of the
States concerned will have exclusive jurisdiction.
The reason for such a rule is generally
found in the intervention of the State in the grant of the patent, as well as
public policy issues and the territorial nature of the right granted.
Perhaps one day this rule should be
reconsidered.
In all cases where the defendant raises
the issue of the nullity of the French patent, the plaintiff who has issued
proceedings abroad will run a substantial risk that the foreign Court will
decline jurisdiction on such a preliminary question, or if that is not the
case, that the decision of the foreign court may not be recognised by the
French courts for the purposes of enforcement.
The foreign court which has
jurisdiction to deal with the infringement claim should normally stay the
proceedings until the French courts have decided the question of the validity
of the French patent.
As a result, instead of simplifying the
proceedings they will have become considerably more complicated.
This practical obstacle is the main
reason why there are almost no foreign proceedings for infringement of French
patents (and reciprocally almost no such procedures in France for infringement
of foreign patents).
However cause and effect should not be
confused.
No serious theoretical reason has ever
been advanced in favour of the exclusive jurisdiction of the French courts to
deal with claims concerning infringement of French patents.
It should be added that in the European
context, the drafters of the Brussels Convention of 27th September 1967
indicated that "as regards other
actions including actions concerning infringement, the general rules of the
Convention are applicable"3.
It should therefore be emphasised that
there is no longer any legal reason to prevent the owner of a French patent (or
a European patent applicable to France) commencing proceedings in a foreign
court where he considers it appropriate and where the foreign court will accept
jurisdiction.
The recognition of such a foreign
judgement could not be refused simply because it dealt with infringement of a
French industrial property right.
6. The recognition of the jurisdiction of a
foreign Court to deal with the infringement of a French patent is the logical
result of Community law, by virtue of the rules of jurisdiction stated in
articles 2, 5-3 and 6-1 of the Brussels Convention of 27th September 1968 on
the recognition and enforcement of judgement in civil and commercial matters.
7. Article 2 of the Brussels Convention lays down
the principle that the defendant resident in a European country should be sued
in the Courts of that state.
Thus a German defendant in proceedings
for infringement of a French patent may and even should, be sued in the German
courts in the absence of any contrary provision.
8. However article 5-3 of the Convention offers
the Plaintiff an alternative head of jurisdiction in favour of the Court of the
place where the harmful event occurred.
There is of course substantial academic
writing and case law concerning the definition of "harmful event", particularly concerning crossborder pollution.
In truth, most European defendants are
sued in the French Courts for infringement of French patents on the basis of an
implicit application of this article.
The infringement implies that there has
been a material act committed in France, at least in certain respects in such a
manner that any infringement of a French patent, ipso facto gives the French
courts jurisdiction - under article 5-3 of the Convention.
It might have been thought that such
jurisdiction was in a certain manner be extended to connected claims.
Where a court has jurisdiction on the
basis of a harmful event, claims may also be made in that court in respect of
other harmful events which are connected by a sufficiently close causal link.
For example where there has been
infringement of a Dutch patent, (or the Dutch part of a European patent) by
definition in The Netherlands, such infringement will provide the basis of
jurisdiction of the Dutch courts in respect of infringement of foreign patents
corresponding to the Dutch patent concerned, even though such infringement will
by definition, for the most part, have occurred outside The Netherlands.
This is in any event the position
adopted by the Dutch Supreme Court (the Hoge Raad) concerning trademarks4.
This case law has been extended by the
President of the local Hague Court to cover patents.
Under Dutch law, the latter judge has a nation-wide jurisdiction to deal with
such matters ; and has accepted jurisdiction on a number of occasions to deal
with claims involving not only infringements of Dutch patents, but also claims
concerning infringement of the corresponding foreign patents5.
9. It may be asked, however, whether the decision
in the case of Fiona SHEVILL/PRESSE ALLIANCE handed down on 7th March 1995
by the European Court of Justice has not brought that line of cases to an end.
The decision was rendered by the full
Court, and established a distinction for the purposes of applying the concept
of the place where the harmful event occurred.
The decision was rendered in a case of
defamation committed by means of a press article published in several member
States of the European Union.
The European Court decided that :
- the Courts of the country where the publisher
is established have jurisdiction to order payment of the full amount of the
damages arising in all countries where the defamation was committed,
- the Courts of the other countries, where the
defamatory matter was published, would only have jurisdiction in respect of the
damages arising in their own country.
When applied to infringement of
patents, this decision will require the Dutch Courts to revise their case law,
at least in cases where the Brussels Convention is applicable.
It will continue to be possible to
issue proceedings in the Dutch Courts against a defendant established in the
Netherlands (manufacturer or distributor) for purpose of obtaining an order
preventing them from continuing the alleged infringement not only in the Netherlands
but also in all other countries where there is a patent.
On the other hand, following the
innovation apparently introduced by the European Court in its decision of
7th March, it would appear to be no longer possible to sue a defendant
which is not established in the Netherlands, but which is established in a
country which has ratified the Brussels Convention, for the purpose of
obtaining a transborder injunction, since the jurisdiction of the Dutch Courts
would be limited in such cases to the Netherlands only.
One should however consider to what
extent the solution adopted by the European Court of Justice in its decision of
7th March 1995 in the case of Fiona SHEVILL/PRESSE ALLIANCE (supra) as to
applicability of article 5-3 of the Brussels Convention, will not have an
effect on the interpretation of article 6-1 of the Convention.
The extension of jurisdiction under
article 6-1 of the Convention where there are a number of defendants
should not reasonably enable avoidance of the restriction imposed on too
extensive an interpretation of article 5-3.
In substance, the fact of bringing
proceedings against the local Dutch distributor of an allegedly infringing
product manufactured in France by a French manufacturer, should not enable the
Dutch Courts to issue a transborder injunction against the French manufacturer.
This is the result of the decision of
7th March 1995 where the French manufacturer is the only person sued.
It should also apply where it is a
co-defendant with the Dutch distributor.
10. It will thus be seen that there are a number of
procedural techniques which enables parties to indulge in forum shopping in
relation to patent infringement.
In effect, the combined use of article
2, 5-3 and 6-1 of the Brussels Convention will very often enable a party to
choose between several courts each having jurisdiction, where the infringement
is occurring in several countries.
However, since the choice of the courts
of any country may be dictated by a consideration of its case law, the freedom
of choice may not be unlimited.
11. Although the substantive law of patents within
the countries of the European Union has been very fully harmonised, and the
system for the issue of the European patent has encountered a resounding
success, the same does not apply to the legal procedures intended to put an end
to infringement.
In fact, such procedures remain subject
to the national laws of each member state, and will remain the same even if the
Community patent with its specific appeal court 'COPAC' come into being.
The influence of national procedures
will thus continue to be substantial.
This is the reason why there are such
major differences in the methods of proof and the rigour of sanctions.
The system of discovery and
cross-examination as a means of establishing proof are seen by lawyers of the
common law system as the guarantee of the remarkable quality of the English
system of justice; but is held by continental lawyers in the same reverence as
for the finish of the best English motor cars: respect tinged with fear as to
the price.
From their side of the Channel, our
English friends regard our rapid and energetic French proceedings for seizure
in infringement matters as they would our plates of frogs' legs: more with fear
than envy.
In the north of Europe, where the law
is taken very seriously, and where an infringing machine improperly presented
at a trade fair, can be put under tarpaulin overnight, some lawyers consider
that the procedures used in countries bordering the Mediterranean are somewhat
easy going, particularly where the systematic use of experts does not enable
remedies to be obtained rapidly.
12. Such disparities have encouraged industry to
adopt appropriate strategies in legal proceedings for the protection of
patents.
The temporary injunction ordering
cessation of infringement has been the field of extensive manoeuvres.
In most industrial countries,
proceedings for infringement of patents last several years, during which the
defendant is not obliged to cease infringing acts subject of the proceedings.
Ways have always been sought to obtain
cessation of the infringement by more rapid means.
The French Courts have never been led
to exercise, in this field, the general powers to order cessation of
infringement, which they have under article 809 of the New Code of Civil
Procedure, in the most flagrant cases, in order to prevent those acts which are
the most obviously illegal.
It is of course true that the solution
in patent infringement cases is very rarely 'obvious'.
The Law n° 84-500 of 27th June
1984 therefore established a special procedure, which was made easier by Law
n° 90-1052 of 26th November 1990, and which is now set out in article
L 615-3 of the Intellectual Property Code6.
However the Courts have not been
particularly keen to bring these provisions into effect.
The frosty welcome with which the first applications were received did not
encourage parties to use this procedure.
Out of about 30 applications made in 10
years, hardly more than five were granted7.
13. The position is different in other European
countries, particularly in the Netherlands where injunction proceedings appear
to be more widely accepted by the courts, and in practice by the President of
the local court of The Hague, who has a national jurisdiction in this field.
This judge is particularly well
informed of the differences in the case law of the French and Dutch courts
since he has written that :
"Under
the criteria applied by the Dutch courts, an injunction ordering the cessation
of infringement may only be ordered where there is a substantial likelihood
that the patent will not be cancelled by the Court seized of the substantive
proceedings."
The French courts are apparently more
inclined to refuse to grant such an injunction in view of the possible
cancellation of the patent.
This may be deduced from the very small
number of temporary injunction applications (12 applications between 1984 and
1990, and 2 since the conditions for the grant of such injunctions were made
easier at the end of 1990, whereas the average number of substantive
proceedings is about 150 every year), and the very low success rate of such
applications (3 injunctions granted).
This is in strong contrast with the
position in the Netherlands where the number of temporary injunction
proceedings is greater than the number of trials on the substantive aspects of
the matter, and the success rate is higher than 60%8.
Contrary to the position in France, it
is not necessary for substantive proceedings to be on foot.
14. It is not surprising therefore that patent
owners are very likely to try to make an application for an injunction ordering
cessation of infringement before a court which takes such a firm stand against
infringers.
This is all the more so the case
because as indicated above, the Dutch courts do not hesitate to prohibit
infringing acts concerning a patent covering the Netherlands, but also in
respect of patents in other countries.
Does this mean that the road to
"Euro-injunctions" passes through the Hague?
It would doubtless be overstating the
position because neither the Dutch nor the French courts would accept practices
which had either the effect or object
of by-passing the normal rules of
procedure.
15. The Dutch courts are fully aware that their
rules are more favourable to patent owners than those of other countries.
This is clear from a statement in a
decision of the Hague Court of Appeal :
"It
follows from the above that the injunction subject of this application will be
granted as regards the Netherlands.
It
will also be granted for other countries where the patent is in force.
The fact
that a similar injunction could not be obtained as a provisional measure in
such other countries is without effect where it may be supposed that the
Defendant's activities do constitute an infringement in such countries and may
be prohibited at least following the substantive proceedings."9
The court remains however circumspect
and has refused an injunction application where it would only have related to
France:
"The
injunction application should also be rejected due to the fact that the
applicant has not applied to the relevant French Court for an injunction, as
should have been the case, and where he had issued substantive proceedings in
the French courts, and where there was no credible defence to the infringement.
This is
evidence that the applicant expected the application for an injunction to be
rejected by the French court."10
The journey to The Hague will not
therefore always be successful where it is seen only as a way of avoiding the
ordinary rules of jurisdiction.
16. Will the French Courts refuse to enforce
foreign decisions ordering the cessation of infringement?
The fact that the foreign decision was
made in interlocutory proceedings does not conflict with French public policy
rules.
Article 27-1 of the Brussels Convention
of 27th September 1968, which enables the Court of the State to which an
application for enforcement has been made to refuse enforcement where
recognition is contrary to the public policy rules of such state, may always be
invoked.
But it is difficult to see how the use
of a specific type of proceeding in the country of origin in order to obtain
the decision is, in itself, of such a nature as to conflict with public policy
of the country, in this case France, where enforcement is sought.
17. However it should be recalled that the French
Courts' freedom of action is limited by the provisions of articles 26 to
30 of the Brussels Convention when the time comes for recognition and
enforcement.
In particular, except where this does
not apply, the Court to which an application has been made for enforcement may
not review the jurisdiction of the Courts of the State which have issued the judgement,
since the rules concerning jurisdiction are not matters of public policy within
article 27-1'.
As a result the defendant wishing to
challenge the jurisdiction will be obliged to show his hand before the Court
where he is first sued, since it will be too late to do so before the French
Court to which an application for enforcement has been made.
This explains why no challenge was made
before the Paris Court of Appeal in the EUROSENSORY matter.
18. In conclusion, it should be noted that in the
present state of French law, cases involving patent infringement will not
escape the ordinary rules of European law established by the Brussels
Convention.
It is likely that there will be a
certain development of "multinational" proceedings for injunctions for
cessation of patent infringement.
However it would be reading too much
into the above decision to think that "forum
shopping" is likely to develop.
The European Court of Justice's
decision of 7th March 1995 shows that the Courts will not accept procedural
manoeuvres designed to avoid the natural rules of jurisdiction.
However it remains a fact that the firm
approach of the Dutch courts in issuing orders for provisional measures
intended to stop infringement may attract patent owners who are disappointed by
the perhaps excessively circumspect approach of the French courts.
DECISION OF THE PARIS COURT OF APPEAL
OF 28TH JANUARY 1994
In
the matter of :
1)
EUROSENSORY S.A.
2)
F.J. TIEMAN B.V.
3)
BLIND EQUIPMENT EUROPE B.V.
By
judgement of 17th August 1992, following an urgent inter partes hearing, the
President of the local Court of the Hague decided two sets of proceedings
between FJ. TIEMAN B.V. and BLIND EQUIPMENT EUROPE B.V. against KGS CORPORATION
and EUROSENSORY, and in particular decided as follows :
- ordered
KGS not to deliver to any third party (including EUROSENSORY) wherever in the
world, except for Japan, braille cells, as referred to in the 'basic agreement'
of 28th September 1991 ; and that any breach would render KGS liable to
pay a fine by way of penalty ;
- ordered
EUROSENSORY not to infringe EP237 090 in the countries indicated, and that any
breach would render EUROSENSORY liable to pay a fine by way of penalty ;
- ordered
KGS to comply with the agreement of 12th December 1991 with immediate effect,
failing which it would be liable to pay a fine by way of penalty ;
- ordered
enforcement notwithstanding any appeal.
The
above orders were subject of appeal to the Dutch Court of Appeal.
By
order 15th September 1992 the President of the Paris High Court (Tribunal de
Grande Instance) declared the decision of the President of the local Hague
Court of 17th August 1992 to be enforceable in France in accordance with
articles 27 and 28 of the Brussels Convention of 27th September 1968 and the
Luxembourg Convention of 9th October 1978.
EUROSENSORY
applied for the latter order to be reviewed in accordance with article 36 of
the Brussels Convention.
In
its application for review, EUROSENSORY requested the Court to adjourn its
application under article 38 of the Convention, pending the decision of the
Hague Court of Appeal.
It
also claimed that there was a reasonable doubt as to the outcome of its appeal,
to the extent that KGS had possessed prior knowledge of the invention, enabling
such company to reserve the right to claim ownership of EP 237 090 before the
Dutch Court, and that TIEMAN had failed to establish the existence of the
infringement.
It
added that it was not possible under French law to obtain a temporary
injunction under French law by way of urgent inter partes hearing, and that, as
a result, the decision of the foreign Court is contrary to French public
policy.
It
claimed that it had not been in a position to properly present a full defence
in the Dutch proceedings, since the judge had reversed the burden of proof.
It
also claimed that KGS had issued proceedings claiming ownership of the patent
on 27th May 1993.
As
a secondary line of argument, EUROSENSORY requested the Court to require the
respondents to the appeal to put up a security of ten million Francs as a
condition precedent to the enforcement of the order of the President of the
High Court (Tribunal de Grande Instance).
TIEMAN
and BLIND EQUIPMENT EUROPE requested the Court to confirm the order subject of
appeal and to order EUROSENSORY to pay 20000 F by way of legal costs under
article 700 of the New Code of Civil Procedure (NCPC).
They
opposed the application for the stay of the matter on the basis that such an
stay is only appropriate where the party who applied for the stay had not been
in a position to raise the matters relied on at hearing of the original
application.
They
claimed that the appellant was merely raising arguments that had already been
rejected by the Dutch Court, and that EUROSENSORY is not entitled to rely on
the proceedings for ownership of the patent issued by KGS, to the extent that
such action was itself recommended by the foreign Court in its decision.
They
further indicate that enforcement of a foreign decision may only be refused
where the recognition of such decision is contrary to the rules of public
policy of the State in which the application for recognition is made ; and
that the rules governing the procedure of urgent inter partes hearings in
patent matters were designed to assist patent owners and not the infringer.
They
also reminded the court that the review of the substantive aspects of the
foreign decision is not open to the Court to which an application for
enforcement is made.
They
therefore opposed any payment by way of security.
The
Court held as follows :
On the application for a stay :
Whereas
under Article 38 of the Brussels Convention The Court with which the Appeal is
lodged may, on application of the appellant stay the proceedings if an ordinary
appeal has been lodged against the judgement in the state in which the
judgement was given or if the time for such an appeal has not expired.
Whereas
the Court seized of an application opposing the enforcement of a judgement
issued in another contracting state may only take into account, for the purposes
of an application for a stay, the grounds that the party applying for the stay
had not been able to put forward before the court of the originating state.
As
a result a reasonable doubt about the result of an ordinary appeal made in the
originating state is not sufficient to justify a stay.
Whereas
in this case EUROSENSORY prays in aid the prior knowledge possessed by KGS, the
doubt concerning the validity of the patent filed by TIEMAN, the absence of
proof of infringement, the filing by KGS of a new patent concerning braille
cells as well as the issue of proceedings in Holland claiming ownership of
patent BE O237090.
Whereas
however these matters have already been argued before the foreign court which
deals with them in its judgement, particularly at points 5.9, 5.10 and 5.11.
Further
the issue of proceedings claiming ownership of the patent by KGS after the
judgement of 17 August 1992 cannot be treated as a new matter, to the extent
that KGS had admitted in the Dutch proceedings that the patent was owned by
TIEMAN and that the proceedings suggested by the foreign court have so far not
been successful.
Whereas
it follows that the appellant has not raised any new matters that it had been
unable to submit to the foreign court and which would otherwise justify a stay.
The question of enforcement of the
foreign decision in France.
Whereas
the appellant, which has not contested the fact that the other conditions
precedent to recognition and enforcement of decisions referred to at Articles
27, 46 and 47 of the Brussels Convention have been fulfilled, claims that
recognition and enforcement of the judgement of 17th August 1992 would be
contrary to French public policy to the extent that, firstly, French law does
not permit in the judgement in respect of infringement or temporary injunction
under the urgent inter partes proceedings and where secondly the foreign court
had reversed the burden of proof.
Whereas
however Euro sensory is trying to obtain a substantive review of the foreign
decision on the basis of a possible reversal of the burden of proof, and this
is prohibited by articles 29 and 34 of the Brussels Convention.
Whereas
in addition it is not within the jurisdiction of this Court to decide whether
the foreign decision is compatible with its own public policy but to check
whether the recognition of such decision is likely to be contrary to such
public policy Whereas in particular,
aside from a review of the correctness of the application, article 27 of the
Convention does not entitle the judge to review the foreign proceedings in the
light of public policy in the state in which recognition is sought and it
follows therefore that the appellant may not rely on the fact that in French
law an injunction could not have been issued following an urgent inter partes
hearing.
Whereas
as a result the order subject of this appeal should be confirmed without it
being necessary to require the provision of security by the two Dutch companies
as a condition precedent to enforcement, since such an order would not be
justified.
Whereas
it is equitable in the light of economic conditions to make an order under
article 700 NCPC in favour of Tieman and BEE.
Held :
- The
stay is refused .
- The
order appealed confirmed.
- The
application for an order for security made by Euro Sensory is rejected.
- EUROSENSORY
is ordered to pay to Tieman and BEE a sum of 15.000 FF under Article 700 NCPC.
- EUROSENSORY
is ordered to pay Court costs.
II. PATENT INFRINGEMENT PROCEEDINGS IN FRANCE
There
is no discovery process in France. Each party decides which evidence is worth
producing. As a result, the plaintiff cannot ask the defendant to produce
information relating to the infringing product or process. Likewise, the
alleged infringer cannot ask the plaintiff to produce prior art : he has
to search himself for the information he needs to challenge the validity of the
patent.
The use of witnesses or expert witnesses is
exceptional.
To enable the plaintiff to collect the necessary
material to prove infringement, the French Industrial Property Code (article
L 615‑5) provides the patentee with the infringement seizure ("saisie contrefaçon").
The infringement seizure does not consist in an
injunction. It mainly permits a visit of the alleged defendant's premises by a
bailiff, ("huissier"), a
public officer, whose statements are deemed authentic.
The
public officer can be accompanied by a policeman, a patent agent chosen by the
patentee, a photographer, an accountant or any other person whose skills may be
useful (e.g. a computer expert if the seizure is directed toward information
stored in a computerised information system).
The
public officer writes down the description dictated by the patent agent of the
infringing device.
He
can take photos or video, if appropriate, look into the accountancy books,
review the technical and commercial documents and make copies of the relevant
documents.
The
public officer can also buy samples.
The
infringement seizure has to be authorised by the presiding Judge of the local
Court of First Instance ("Tribunal
de Grande Instance").
For
this purpose, counsel for the patentee drafts and files a petition defining the
exact scope of the authorisation requested.
Typically, the petition indicates :
· the persons authorised to assist the
public officer (a policeman, a patent agent chosen by himself, a
photographer...),
·
the
acts the public officer is authorised to perform (to be shown a machine,
accountancy books, technical and commercial documentation, to make copies of
some documents, to acquire some samples of the infringing product(s)...).
The
filing of the petition is ex parte
(the defendant is only informed of the Court order by the bailiff, upon his
arrival to perform seizure).
Exceptionally,
the Judge restrict the terms of the petition, for example by adding that the
seizure has to be carried out by a given date, or conditioning his authorisation
upon the payment of a bond by the petitioner.
But,
usually, especially when the terms of the requested order appear reasonable,
the Judge does not modify the petition.
Once
the authorisation is obtained, the seizure is implemented under the conditions
defined in the Court order.
It
happens that the seized party objects to the seizure of some information
alleged to be confidential.
In
most cases, the dispute is solved by the appointment by the Court of an expert
who is commissioned to listen to the parties and to sort out which documents
(even confidential) are necessary to prove the infringement and which are not.
The
plaintiff serves a complaint on the alleged infringer within 15 days from
the date of the infringement seizure.
The
plaintiff has the complaint recorded in Court ; a Judge in charge of
supervising the progress of the proceedings is appointed ; this Judge will
fix the dates of the different steps of the proceedings, which are referred to hereafter.
The
plaintiff produces evidence to support his complaint.
The
defendant files an answer, which may include a counterclaim, and produces
evidence to support his contentions.
The
parties pursue their exchange until they consider the discussion exhausted,
which means, practically, until one party does not ask to reply ; if the
parties did not stop, the Judge would have power to declare the exchange
closed.
The
case is argued in Court.
For
patent cases, the trial usually takes place between one to three years after
the filing of the complaint.
The
final oral hearing lasts between two hours and a whole day (2 days in
exceptional cases) according to the difficulty of the issues.
The
Court is a panel of three Judges, who are always professional Judges ;
there are no jury in civil cases.
This
hearing consists of two speeches : first the statement of the plaintiff's
counsel and, afterwards, the statement of the defendant's counsel.
The
Judges can ask questions or make comments if they wish to, but usually they
intervene very little. There is no examination of witnesses. Usually, the
parties are not invited to give explanations to the Court.
The
preliminary injunction was introduced in French Patent Act of January 2,
1968 by an amendment of June 27, 1984.
Since
the amendment of November 26, 1990, the conditions for a preliminary
injunction are, under article L 615‑3 of Intellectual Property
Code :
A
prompt infringement suit : the plaintiff has to sue the alleged infringer
without delay after he has become aware of the alleged infringement. The
critical period of time seems to be, according case law, about six months.
Likelihood
of success on the merits, which implies that neither the validity of the patent
nor its infringement appear seriously challengeable.
Preliminary
injunctions are not frequently granted.
The
patent holder has an absolute right to claim for a permanent injunction against
the plaintiff. The Court cannot refuse to grant such injunction if it finds the
patent valid and infringed. It is essential, however, to ask the Court to
specify the injunction to be enforceable notwithstanding an appeal.
Compensatory
damages
Damages
are calculated on a reasonable royalty basis if the plaintiff does not himself
exploit the invention or if he did not have the ability to manufacture or sell
the infringing products.
Otherwise,
the patentee is entitled to an award of the profits he would have made but for the
infringement.
Usually,
the Court grants a provisional amount and appoints an official appraiser
("expert") who is
commissioned by the Court to collect all the information needed to decide the
damages.
This
official appraiser has investigating powers not only to collect the figures and
contentions of the parties but also to visit both parties.
He
has access to their accountancy records.
In
view of the report filed by the official appraiser, and after a further
exchange of written pleadings between the parties, the Court decides the amount
of damages.
Punitive
damages
Double
or treble damages do not exist in France.
The
principle is that the plaintiff is entitled to recover all the damages
sustained but no more.
The
Court usually grants the winner of the case an indemnity by virtue of
article 700 of the New Civil Procedure Code.
This
indemnity is supposed to compensate in part the winner's attorney fees but its
amount, which is in the discretion of the Court, is always far lower than the
actual fees.
Typical
amounts range between FRF 10.000 and FRF 100.000, i.e. between
£ 1.000 and £ 10.000.
The
French appellate Courts review the whole case de novo.
The
parties can rely upon new evidence and new arguments in support of their claims.
The
schedule of events in the appellate Court is very similar to the schedule in a
trial Court of First Instance (between 1 and 3 years).
The
Supreme Court does not review the findings of facts of the appellate Court :
it only reviews the application of law and the reasoning of the previous
Judges.
Either
the Supreme Court dismisses the action, and in this case the decision of the
appellate Court remains ; or it cancels the decision of the appellate
Court, and remands the case to an other appellate Court.
The
Supreme Court usually decides the cases within two years from the date of the
Court of Appeal decision.
TESTS FOR INFRINGEMENT IN FRANCE
Pierre VÉRON
i. Validity and infringement : one forum, a consistent approach
When
it has to decide an infringement complaint, a French Court is always empowered
to decide, first, over the validity of the patent.
Invalidity
defence is almost a rule in patent infringement suites ; defences based
only on non-infringement are exceptional.
Validity
and infringement are dealt with simultaneously by the parties in their written
pleadings and during the oral statements.
This
leads to a very consistent approach of validity and infringement : it is
difficult, for example, to the patent owner to give a narrow reading of his
patent to avoid prior art and to claim for a broad scope of his claims minutes
later...
In
the same manner, the Court decides on both validity and infringement in the
same judgement (there is not first a decision on validity and, then, a decision
on infringement).
French
lawyers like saying that it gives the patent a scope of protection customised
to the actual invention.
II. Purposive construction : a secular tradition
Literal and narrow construction of claims is not a French tradition.
It should be kept in mind that French patents include claims only since 1968 ; beforehand, the patent owner was permitted to seek protection for whatever was included in the patent specification, provided that it was new ; the Court had just to check that what was "claimed" in the suit was actually described in the specification ; such system has given an early tradition of purposive construction and of doctrine of equivalents.
III. Variants, equivalents, improvements
Variants are always considered as infringements.
The
Courts use to say "infringement
should be decided in considering similarities, not differences" or
"infringement is the reproduction of
the essential and characterising features of the invention."
Doctrine of equivalents has therefore always been part of French case law.
Two means are equivalent when, although of a different shape, they perform the same function to achieve a similar result.
This criterion is of daily use in patent infringement litigation :
" two
means of a different shape are equivalents when they achieve the same function,
i.e. the same principal technical effect, to achieve a similar result...".
Court of Appeals of Paris - 11 September 1996
SMBP v. NOVEMBAL
" the nut
of the allegedly infringing device, although of a different shape of the
patented screw, is a technical equivalent of this screw since it performs the
same pressure function to achieve a result of the same nature."
Court of Appeals of Paris - 27 September 1996
SOFAMOR and COTREL v. JBS
" It
cannot be disputed that the structure of the various elements of the patented
device, on the one hand, and the allegedly infringing device, on the other
hand, are different :
- patent covers a metal spike with a
sharpened end,
- allegedly infringing device is an hollow tube
in which is inserted a rod, longer than the hollow tube, so that the sharpened
end of the inner rod creates a sharpened end to the tube.
However, those two systems
perform the same function and achieve a result of the same nature"
Court of Appeals of Paris - 30 October 1996
NIJAL v. EMSENS
Needless to say, French Courts do not always accept the equivalence :
" The means used by
the defendant do not achieve the function of those described by the
claim : the side walls of the allegedly infringing device do not reduce
the distance between the conduits whereas the patented device purpose is to
reduce the room occupied by said conduit".
High Court of Paris - 11 October 1996
ARMOR-INOX v. KAUFLER
As the doctrine of equivalents is long established in French law, it does not raise any further academic discussion.
In comparison to what can be decided on the same topic in other countries, the following statements can be considered as reflecting the present state of the law in France :
· although the construction of claim is generally broad, the test of equivalence will probably be conducted on a claim element - by - claim element basis rather than on the accused process as a whole,
· "prosecution history estoppel" had not the same importance in France where the French Patent Office powers are quite limited ; the situation is probably different when considering a European Patent designating France,
· the equivalence is certainly not limited to what is disclosed in the patent itself ; nor is it limited to what was known at the time of the patent ; in other words, equivalency will be evaluated at the time of infringement.
Improvements are therefore considered as
infringement when they embody the characterising features of the claim.
"Improvement is infringement" is a
standard formula of the writers in this respect.
IV. Partial infringement : where do we stand ?
French
Courts are so eager to give a purposive construction of the claims that
sometimes they go too far.
Partial
infringement has been accepted by some Court decisions, even by the Supreme
Court, in three instances (28 April 1987, MARCHAL[1] ;
19 February 1991, FICHET BAUCHE[2] ;
19 February 1991, LAFARGE[3]).
After
much discussions, it seems now clear that partial infringement can be decided
only when the patent has (improperly) put in a single claim several features
which are not combined but merely juxtaposed.
In
such a case, where the patentee should have put those elements in several
claims, the French Courts accept to protect it when they are patentable per se.
On
the contrary, it is now well established case law that when a patent claims ‑ expressly
or implicitly - a combination of features, there is no infringement when
one of the main features is not reproduced.
1 Court of Appeal of Paris, 28 January 1994, EUROSENSORY/TIEMAN, Appendix A
2 See
J.B. BLAISE and J.P. STENGER, Jurisclasseur Droit International
Fasc. 563A, 1er cahier C n° 18 namely TGI Paris, 4 May
1971 YEMA/GENNY, Revue Critique de Droit International Privé 1974, 110, note G.
BONET ; JCP 1972, Ed G, IV, 83
3 JENARD report about Brussels Convention quoted by C.J.C.E., 15 November 1983, DUIJNSTEE/GODERBAUER, Revue Critique de Droit International Privé 1984, 361, comments G. BONET
4 INTERLAS/LINCOLN, 24 November 1989 NJ 1992/404
5 PHILIPS/HEMOGRAM, President of
The Hague Court, 30 December 1991, quoted by S. de WITT, in "The Dutch Court - Injunctive hell for
cross-border infringers ?" Patent World, October 1993,
page 19
6 Michèle LESAGE CATEL LEGRAND
7 TGI Paris (référé) 23 December
1985, PIBD 1986, n° 383, III, 46, Dossiers Brevets 1986. III.6, confirmed
by Paris 27 November 1986, PIBD 1987, 406, III, 65 (UNION CARBIDE and
VISCORA/VISCOFAN) ;
TGI Lyon (référé) 31 March 1987, RDPI 1987, 11, 74, confirmed by Lyon
10 December 1987 unpublished (FLONIC SCHLUMBERGER/IBERSEGUR) ;
TGI Paris (référé) 11 May 1990, PIBD 1990, 489, III, 670, Annales
Propriété Industrielle 1990, p. 63, (SEB/MOULINEX) ;
TGI Lyon (référé) 18 May 1993 unpublished, confirmed by Lyon
24 February 1994 unpublished (LOOK/WELLGO) ;
TGI Paris (référé) 23 May 1993 unpublished (L'AIR LIQUIDE/CAIR LGL &
SAGAL)
two other cases have ordered the defendant to lodge a bond to be permitted to continue the allegedly infringing acts :
TGI Marseille
(référé) 31 may 1991, Annales Propriété Industrielle 1991, p. 64
(RICARD/DENZER) ;
TGI Lyon (référé) 19 July 1991, PIBD 1992, 513, III, 2 (CANTENOT and
STARVRAC/FALCOZ VIGNE and CELLIER)
8 Excerpt
from the decision issued the 5 January 1993 by The Hague Court in the case
92/1181 RHONE POULENC RORER and SMITH, KLINE & FRENCH/PHARMACHEMIE,
PROGRAPHARM, FRANCOCHIM, BIOSTABILEX URAP
9 The
Hague Court of Appeal, 3 February 1994, ARES SERENO/ORGANON
10 President of the Hague Court, 5 January 1993
[1] PIBD 87, 415.III.264
[2] PIBD 91, 503.III.391
[3] PIBD 91, 504.III.430