FRANCE Law and Practice Contributed by: Céline Bey and Alexis Augustin, Gowling WLG
4.4 Revocation/Cancellation and Infringement
• the scope of protection has been extended after limitation or opposition. The UPC ensures that the patent at stake meets the requirements of the EPC (novelty, inventive step, sufficiency of disclosure, no added matter as well as patentability). As explained in 3.7 Procedure for Construing the Terms of the Patent’s Claim , the distribution of revocation/cancellation actions among the divisions of the UPC depends on several factors. 4.2 Partial Revocation/Cancellation French and European patents can be revoked/ cancelled partially, as a result of an invalidity decision (Article L.613-27, IPC and Article 65(3), UPCA). 4.3 Amendments in Revocation/ Cancellation Proceedings Patentees can amend their patent claims in the context of revocation/cancellation proceedings before the French courts. Such an amended pat- ent then becomes the subject matter of the rev- ocation/cancellation action. It should however be noted that a party who, in the course of the same proceedings, makes several limitations to their patent in a dilatory or abusive manner may be ordered to pay a civil fine up to EUR3,000, without prejudice to any damages that may be requested. Patentees are also allowed to amend patent claims before the UPC, or to request a stay of proceedings when a limitation is being examined at the EPO, provided that a rapid decision can be expected (Article 33 (10), UPCA).
There is no bifurcation before French courts. Claims related to both validity and infringement are assessed in the same proceedings. Before the UPC, validity and infringement can be heard by the same division or split between a local/regional division and a seat of the central division. Indeed, while most infringement actions must be brought before a local/regional division, as explained in 3.7 Procedure for Construing the Terms of the Patent’s Claim , an action for revo- cation must be filed before the central division. When the revocation is a counterclaim during an infringement action, the local/regional divi- sion 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. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights French rules applicable to intellectual property proceedings follow the procedural laws of the CPC. Special procedural provisions, including the IP-specific summary proceedings, proceed- ings on the merits and infringement seizures, are set out in the IPC and described, notably, in 2.1 Actions Available Against Infringement and 2.10 Mechanisms to Obtain Evidence and Information .
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