FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
Non-Infringing Acts Under Articles L.613-5 et seq of the IPC and Article 27 of the UPCA, the rights conferred by a patent shall not extend to some situations, these include: • private non-commercial use; • experimental use relating to the subject mat- ter of the patented invention; • preparation for individual use in a pharmacy; • acts, studies and tests required for the filing of an application for an MA or the grant of an advertising visa (the Bolar exemption); • acts performed to create, discover or develop new plant varieties; • objects intended to be launched into outer space introduced into French territory; • the farmer’s privilege, allowing farmers to use the product of their harvest for propagation or multiplication on their own farm; and • the breeder’s privilege, allowing breeders to use the protected livestock for agricultural purposes. Personal Prior Possession French law and the UPCA provide that any per- son who, in good faith on the date of patent filing or priority, was in possession of the patented invention is entitled to exploit the invention. The French court welcomed such an excep- tion when Fresenius, the patentee for a drug for the treatment of autoimmune diseases initiated an infringement action against Amgen, a drug manufacturer selling in France (Court of First Instance of Paris, Fresenius Kabi Deutschland GMBH v Amgen, 14 February 2019). The decision recalls the four requirements to benefit from the exception:
• the technique must be possessed in good faith and be identical to the invention; and • the prior possession must be established on French territory and prior to the filing date, or the priority date, of the patent application. Exhaustion of Rights A patentee cannot prevent the sale, marketing or import or export of a patented product within the EU if it had already been put onto the market in another member state by the patentee or with their consent (Article L.613-6, IPC and Article 29, UPCA). Competition Law French courts and the UPC take into consid- eration fair, reasonable and non-discriminatory (FRAND) issues related to standard essential patents (SEPs) before granting injunctions on the basis of such rights. See also 2.13 Restrictions on Assertion of an Intellectual Property Right . On 22 November 2024, the UPC handed down its first full decision addressing the merits of a FRAND defence in Panasonic v OPPO. 3.6 Role of Experts French judges may appoint legal experts to assist them on technical issues or on the assess- ment of damages, either on their own initiative or at the request of the parties. Legal experts shall issue a written report which can subsequently be challenged by the parties. Expert reports are not binding on judges. The parties themselves can also support their case with private experts’ opinions. Before the UPC, experts play a central role. The UPC can, at any time, appoint court experts for specific aspects of the case. Parties are also
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