FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
Customs Border customs measures are equally available under Regulation (EC) 1383/2003 as well as under Article L.614-32 of the IPC. Such meas- ures are useful to detect the entry into French territory of infringing goods and allow the paten- tee to gather infringement evidence before the release by the customs of the detained goods or the initiation of a court action. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Opposition Action The Law on Business Growth and Transforma- tion (the “PACTE Law”) has created an opposi- tion procedure before the INPI against patents registered from 1 April 2020 (Articles L.613-23 et seq and R.613-44 et seq, IPC). Oppositions can be filed: • within nine months following publication of • if the subject matter of the patent is not patentable, if the patent does not describe sufficiently the invention for a person skilled in the art, or if the subject matter of the patent extends beyond the content of the applica- tion. the grant of the patent; • by any third party; and If the opposition is upheld, the patent can be revoked in whole or in part, or be maintained in an amended version (Article L.613-23-4, IPC). The INPI’s opposition decisions, which are issued approximately 17 months from the filing of the opposition, can be appealed before the Paris Court of Appeal. Revocation/Invalidation Action Pursuant to Article 31 of the French Civil Proce- dure Code (CPC), a revocation action may be initiated by any third party with a legitimate inter-
est, defined as a direct and personal interest, on the date of the introduction of the proceedings. French judges have specified that “the interest in bringing an action for revocation must be rec- ognised for any person who sees his economic activity in the field of invention actually or poten- tially but certainly hindered by the claims whose invalidation is sought”, but also for “plaintiffs who are not competitors of the patent holder but consumers and patients […] provided that such an action is in favour of the public interest” (Paris Court of First Instance, 16 March 2017 and 24 January 2020, respectively). Action for a Compulsory Licence To apply for a compulsory licence, the applicant must prove (Article L.613-12, IPC) that: • it can exploit the invention in a serious and effective manner; and • it cannot get a licence from the patentee. Thereafter, the court sets the terms and con- ditions of the compulsory and non-exclusive licence (Articles L.613-12 and L.613-13, IPC). Declaration of Non-Infringement A declaration of non-infringement can be brought by any third party providing evidence of serious preparatory acts for industrial exploi- tation and having asked the patentee to state whether the patent would be infringed by such exploitation (Article L.615-9, IPC). If the paten- tee fails to answer within three months, or in the case of a disagreement, the third party can bring an action before the Paris Court of First Instance, requesting that it hold that the exploitation does not fall within the scope of the patent at stake. 2.3 Courts With Jurisdiction In France, at first instance, patent disputes fall within the exclusive jurisdiction of the Paris Court
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