FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
3.4 Scope of Protection for an Intellectual Property Right
3.5 Defences Against Infringement Invalidity and Procedural Defences Before French courts, the alleged infringer can dispute the claimant’s capacity or authority to initiate proceedings and can assert procedural defences including the lack of claimant’s stand- ing to sue, nullity of the writ of summons and/ or the running of the statute of limitations. Good faith cannot constitute a valid defence, except for indirect infringers. Furthermore, defendants can always challenge the validity of the patent based on: • lack of novelty; • lack of inventive step; • lack of industrial application; • excluded subject matter; • insufficient disclosure; • added-matter beyond the content of the application; or • extension of the scope of the patent claims after amendment. Other available defences are set out below. Before the UPC, once the applicant has lodged the statement of claim, the defendant has one month to file preliminary objections disputing the jurisdiction and competence of the UPC, the competence of the division, and the language of proceedings. Moreover, the defendant has three months to file a counterclaim for revocation, asserting that the patent is invalid on the same grounds as before French courts. As before French courts, other defences are available.
In principle, the scope of protection is deter- mined solely by the claims, in light of the descrip- tion and drawings. Claim construction should be as accurate as possible regarding the claims, without, how- ever, being too literal, and shall not distort the subject matter protected by the patent. French case law has defined a doctrine of equivalents under which an infringer may be held liable for patent infringement even if the infringing product or process does not fall within the literal scope of the claims but is nevertheless equivalent to the claimed invention. In this context, the infringe- ment is constituted if the essential means of the patent are equivalent, meaning that, despite being different, they perform the same function to reach an identical or similar result, and pro- vided the said function is novel. When invoked by a party, both French and UPC judges take the prosecution history into account as part of the factual context, both when inter- preting the claim and when considering whether there is infringement pursuant to the doctrine of equivalents. In particular, they pay attention to any narrowing of the claim(s) that has been made to avoid any conflict with relevant prior art and to secure the grant of the patent. In such cases, the extent of protection can be limited to the particular claimed means and the doctrine of equivalents would not apply. In a decision issued on 20 December 2023 (292/2023), the Munich Local Division of the UPC, when interpreting the claims of the patent as granted, also considered the original claims and the granting history.
160 CHAMBERS.COM
Powered by FlippingBook