FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
allowed to lodge written witness statements and to make applications for the hearing of witness- es in person. Moreover, the UPC may order, of its own motion, that a witness be heard in person. The president, the judges of the panel and the parties may put questions to the witness. 3.7 Procedure for Construing the Terms of the Patent’s Claim There is no separate procedure for constru- ing a patent’s claims. Before French courts, issues related to validity, claim construction and infringement are assessed within the same proceedings. Before the UPC, revocation actions must be brought before the central division. Revocation actions are distributed between the sections of the central division according to the technical field to which the contested patent belongs. The Paris seat has jurisdiction to rule on patents relating to performing operations, transportation, textiles, paper, fixed constructions, physics, and electricity. In addition, on 2 June 2023 an agree- ment was found between the Italian, the French and the German governments notably providing that the Paris seat will inherit of the jurisdiction over all SPCs. Moreover, if the revocation is a counterclaim during an infringement action, the local/regional division ruling on the infringement of the patent can: • rule on the counterclaim for invalidity, but request the assignment of a technical judge; • refer the counterclaim to the central division and stay the infringement action; or • at the request of the parties, refer the whole case to the central division.
Interestingly, in an order issued on 13 Novem- ber 2023, the judge-rapporteur of the Paris seat of the Central Division held that the revocation action brought by Meril Italy against a patent owned by Edwards Lifesciences Corporation was admissible, despite the fact that an infringe- ment action brought against Meril India (which was 100% owned by Meril Italy) based on this same patent was ongoing before the Munich Local Division. 3.8 Procedure for Third-Party Opinions In the context of infringement proceedings, French courts may order any party, including third parties, to produce documents or request a consultation with, or the expertise of, a tech- nician in the relevant field (Articles 11, 232 and 263 et seq, CPC). However, such a measure is rarely used. Revocation applications can be brought inde- pendently or by way of counterclaim in the con- text of an infringement action. French courts may revoke/cancel a patent if (Article L.613-25, IPC): • the subject matter of the patent is not patent- able (namely that it lacks novelty, inventive step, is not capable of industrial application and/or is generally excluded from patentable subject matters); • the patent does not clearly and completely describe the invention for a person skilled in the art; • the subject matter of the patent extends beyond the content of the application filed; or 4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
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