FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
of co-ownership, such waiver or limitation must be requested by all co-owners. The request must include the full text of the amended claims and, where applicable, be accompanied by the amended descriptions and drawings. The INPI generally issues its decision within 12 months from the date of reception of the request (Article R.613-45-1, IPC). If filed after the introduction of an opposition, a request to amend is deemed inadmissible as long as the decision on the opposition is subject to appeal. Similarly, if an amendment request is pending on the date an opposition is filed, the request is dismissed. In the context of opposition proceedings, the patentee is entitled to amend the claims, pro- vided that such amendments: • correspond to one of the grounds of opposi- tion raised by the opponent; and • comply with the patentability requirements under the IPC. See 4.3 Amendments in Revocation/Cancella- tion Proceedings with respect to amendments in inter partes revocation/cancellation proceed- ings.
ings. For the latter, the claimant must obtain (ex parte) the authorisation to summon the defend- ant on a fixed day under special emergency rules. Preliminary measures are deemed to prevent imminent infringement or to stop infringement (see 2.7 Interim Injunctions ). Several preliminary measures are available for claimants, including: • preliminary injunctions to stop the alleged infringing acts, eventually under a penalty; • the seizure of the goods or their withdrawal from distribution; and • a financial provision to the benefit of the claimant, if the existence of the damage is not seriously questionable. Summary proceedings generally last between three and five months at first instance, and six months on appeal. Infringement of a European patent with unitary effect gives rise to an infringement action and to provisional measures before the UPC (see 2.3 Courts With Jurisdiction ). Criminal Action Criminal proceedings are rarely initiated for sev- eral reasons, including: • the requirement to prove the infringer’s bad faith; • the unavailability of injunctions; • the absence of specialised intellectual prop- erty judges; and • the low cap of recoverable damages. In practice, criminal proceedings are more popu- lar in cases concerning pirated goods or where the claimant seeks to establish the criminal liabil- ity of a corporate director.
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
Before French courts, patent infringement is a tort under civil law and the patentee can either initiate civil or criminal proceedings (Articles L.615-1 and L.615-14, IPC). A civil procedure on the merits can be initiated either through regular or accelerated proceed-
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