FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
2.8 Protection for Potential Opponents In France, protective letters against potential ex parte injunctions or a seizure ( saisie-contrefa- çon ) are not admitted. However, such restriction is balanced by the fact that: • ex parte interim injunction applications are rarely granted; and • potential opponents may challenge the order authorising the saisie-contrefaçon (see 2.10 Mechanisms to Obtain Evidence and Infor- mation ). Protective letters may be lodged before the UPC (Rule 207 of the Rules of Procedure). Such let- ter must provide an indication of the facts relied on, which may include a challenge to the facts expected to be relied on by the presumed appli- cant and/or, where applicable, any assertion that the patent is invalid and the grounds for such assertion. Attached to this letter must be any available written evidence relied on. Anyone will- ing to lodge a protective letter does not need to do so before every division as the UPC Registry must provide details of the protective letter to all divisions. The protective letter is not publicly available on the Register until it has been for- warded to the applicant for provisional meas- ures and to the panel of the UPC, where such provisional measures are requested against the author of the protective letter. If no application for provisional measures has been lodged within six months from the date of receipt of the protec- tive letter, it is removed from the Register unless the person who has lodged the protective letter, prior to the expiry of such period, applies for an extension of six months. The UPC is not bound by protective letters. Based on their content, it may decide to:
considering the excessive consequences a gen- eral provisional injunction would have had for the alleged infringer, so that it could still fulfil its current obligations to its main client. The Düs- seldorf Local Division, however, specified that restrictions must be limited to the minimum nec- essary to take sufficient account of the alleged infringer’s interests. In France and before the UPC, preliminary pro- ceedings may be started either before or after an action on the merits has commenced if the infringement is imminent. At the UPC, the Dussel- dorf Local Division held, on 6 September 2024, in Novartis v Genentech, that having obtained an MA is not enough to prove that infringement is imminent. To prove the imminence of the infringement, the following are relevant: • the communication of the alleged infringer mentioning a specific timeline; • evidence that an application for price negotia- tion or reimbursement has been filed; and • samples presented to clients. In the first scenario, the action on the merits must be brought within 20 business days (or 31 calendar days) starting from the date of the court order. Failing to do so triggers the automatic cancellation of the measures granted. Lastly, it should be noted that French law pro- vides for a strict liability for right holders who have obtained the enforcement of provisional measures based on a title that has subsequently been revoked (Article L.111-10 of the Code of Civil Enforcement Procedures). In a decision of 11 January 2024, C-473/22, the CJEU recog- nised that such a rule complies with Article 9 of Directive 2004/48/EC, provided that the national courts have the power to adjust the amount of the damages.
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