FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
ments, and the pre-trial procedure only starts after the lodging of the statement of defence. The UPC judge-rapporteur also has increased powers compared to the French pre-trial judge. 2.12 Representative or Collective Action No class actions regarding intellectual property matters can be brought before French courts or before the UPC. 2.13 Restrictions on Assertion of an Intellectual Property Right In France, as before the UPC, no defence for inequitable conduct can be raised. Based on the principle of res judicata, a party can be estopped from filing a claim if it has previ- ously brought the same claim and lost. No acquiescence defence exists (ie, the time taken by the patentee before the proceedings cannot be used as a defence, except when the statute of limitations period has run out). How- ever, a delay in requesting provisional measures before the UPC would be considered in light of the condition of urgency. In general, French competition law does not prevent the patentee from obtaining compen- sation in the case of an infringement. Neverthe- less, patentees are sometimes restricted in their assertion of rights to prevent anti-competitive behaviours, such as an abuse of a dominant position. For example, following the Huawei decision of the CJEU of 16 July 2015, French courts will consider whether a FRAND licence was offered beforehand, in which case the pat- entee should be allowed to bring an infringement action and seek an injunction without this being regarded as an abuse of a dominant position.
The UPC is more inclined to adapt injunctions to the specific circumstances of the case. For example, in a decision of 15 November 2024 in Edwards Lifescience v Meril, a case relating to medical devices, the Munich Local Division held that an injunction should not extend to the devices that have already been scheduled for implantation in patients by the date of the deci- sion. 3. Infringement 3.1 Necessary Parties to an Action for Infringement An infringement action can be initiated by: • the patentee; • each co-owner for their own benefit in the case of co-ownership, provided that the oth- ers are informed (unless otherwise stated in the co-ownership agreement); or • an exclusive licensee, provided the licensing agreement does not stipulate otherwise, and if, after formal notice, the patentee has failed to institute proceedings (in that case, the patentee has the right to intervene. As for non-exclusive licensees, French law pro- vides that they are not entitled to take such action, even with the patentee’s consent. They can only intervene in the proceeding to obtain compensation for damages they have person- ally sustained. On this point, French law differs from the UPC as the UPCA provides that a non- exclusive licensee can initiate proceedings if expressly allowed in the licence agreement. If the patent has been assigned, the assignee can only initiate proceedings if the assignment agreement has been registered and published. The assignee cannot claim damages for infring-
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