FRANCE Trends and Developments Contributed by: Denis Schertenleib, Marc Lauzeral and Célia Benmesbah, Schertenleib Avocats
The Court notably held that the validity of the patent should not be discussed at this stage of the proceedings, given that C-Kore’s patent is in force and no pending proceedings are challeng- ing its validity. As to the enforcement of orders to preserve evi- dence carried out within the French territory, the Paris Local Division added two important clari- fications. • The procès-verbal de saisie is the procedural act that closes the seizure operations and informs the defendant of the content of the notice so it can request a review. Conse- quently, the time period for filing an applica- tion to apply for a withdrawal of the order starts on the date of its notification. • Within the legal framework of the UPC, a saisie carried out by “an expert assisted by a bailiff” is not contrary to French Law. Court of First Instance of the Unified Patent Court, 4 July 2024, UPC_CFI_230/2023, DEXCOM V ABBOTT COMPANIES The Court held that the claimant in an infringe- ment action before the UPC had the option to exclude certain acts of infringement from its claim in order to prevent the issues arising from overlapping jurisdictions between the UPC and national courts during the transitional period out- lined in Article 83 of the Agreement (“carve out”). However, this possibility of the claimant does not restrict the defendant’s right to challenge the validity of the European patent asserted against them, as there is no binding legal provision under UPC law that imposes such a limitation. Hence, this decision explicitly confirms that the UPC’s jurisdiction over the revocation counter- claim can extend beyond the territory covered
by the infringement claim. It further clarifies that the rules of lis pendens do not apply, given the differing parties involved in challenging the pat- ent before the UPC and the Federal Patent Court of Germany. The Court also held that the Brussels Ibis Regu- lation is directly applicable to the UPC. Court of First Instance of the UPC, 13 November 2024, UPC_CFI_358/2023, HEWLETT-PACKARD DEVELOPMENT COMPANY v LAMA FRANCE In this decision, the Court firstly held that it was appropriate to examine all arguments raised regarding the interpretation of the patent by referring to the patent application as it had been originally filed in English, even though the pro- ceedings were conducted in French. The Court emphasised that such an approach was relevant to ensure the accuracy of the inter- pretation in a multilingual legal context. Then, regarding novelty, the Court provided the applicable criteria of the UPC. It explained that, for an invention to be considered part of the prior art and deprived of novelty, it needed to be fully disclosed in a single prior document with abso- lute certainty. This required that all elements constituting the invention were present in the same form, arrangement and function, aiming to achieve the same technical result. When examining the legal framework applica- ble to acts of infringement committed before 1 June 2023, the Court considered that it was not relevant to refer to national legal sources when applicable law under the UPC was already pro- vided in terms of what constitutes an act of infringement. Hence, the Court decided not to
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