FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
ing activities that occurred prior to the assign- ment publication, unless expressly agreed between the parties. In France, criminal actions can be brought by the patentee, its exclusive licensee, the prosecutor or the French customs. 3.2 Direct and Indirect Infringement Direct Infringement The following acts are deemed to be direct infringement (Article L.613-3, IPC): • the manufacturing, offering, placing on the market, use, import, export or transhipment of the patented product; • the stocking of the patented product for the above-mentioned purposes; • the use of a process covered by the patent or, where the third party knows or where the circumstances make it obvious that the use of the process is prohibited without the consent of the owner of the patent, the offer of its use on French territory; and • offering, placing on the market, using, import- ing, exporting, transhipping or holding for the aforementioned purposes a product obtained directly by the process covered by the patent. Under Article 25 of the UPCA, the following acts are deemed to be direct infringement: • making, offering, placing on the market or using a product which is the subject matter of the patent, or importing or storing the product for those purposes; • using a process which is the subject matter of the patent or, where the third party knows, or should have known, that the use of the pro- cess is prohibited without the consent of the patent proprietor, offering the process for use
within the territory of the contracting member states in which that patent has effect; or • offering, placing on the market, using, or importing or storing for those purposes a product obtained directly by a process which is the subject matter of the patent. Indirect Infringement Indirect infringement occurs where an unau- thorised person delivers or offers to deliver the means of implementing an “essential part” of the patented invention, when the person knows or should know, given the circumstances, that those means are used to implement the protect- ed invention (Article L.613-4, IPC and Article 26, UPCA). The prohibition does not apply if such means are common commercial items. Indirect infringers can only be liable for damages if they knew that their activities were infringing. For this reason, warning letters should be sent to put indirect infringers in full knowledge of the infringement. Special attention should be paid to the draft- ing of any letter informing clients of the alleged infringement: under French law it can qualify as disparagement and unfair competition against the infringer in so far as the addressees of the letter cannot verify the merits of the claims and do not have access to the infringer’s objections (French Supreme Court, 9 January 2019). 3.3 Process Patents Acts relating to products obtained directly by a process which is the subject matter of the patent amount to infringement and are also prohibited. It should be underlined that placing on the mar- ket, offering for sale or importing into France can be held even against a foreign operator.
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