Acts of Infringement

Territoriality of Protection

Principle

Only acts carried out in France (+ French overseas territories and Mayotte) may be subject to sanctions (with rare exceptions discussed below).

Indeed, the monopoly right attached to a French patent does not extend beyond French borders (Law No. 92-597 codifying the Intellectual Property Code, July 1, 1992, Art. 4): no infringer may exist beyond our borders.

Exceptions

The use of an infringing device on a ship (excluding cargo), an aircraft (or an aircraft part), a vehicle (or a vehicle part), etc., temporarily or accidentally entering French territory is not considered infringement (Art. 5ter Paris Convention).

Product/Process Distinction

Article L613-3 IPC distinguishes between acts of infringement relating to:

• claims for a « product », and
• claims for a « process ».

In reality, the Intellectual Property Code does not limit the categories of claims to these two (products and processes), as suggested by Article L613-3 IPC (see R612-19 IPC, which mentions products, processes, devices, and uses).

It should therefore be understood that the terms in Article L613-3 IPC are broader:

• « products » would include devices and products,
• « processes » would include uses and processes.

Having made this distinction, let us now examine what these « infringing » acts are.

Date on Which Acts Become Infringement

French Patent Application/Patent

Normally, only acts carried out after the publication of the patent application or notification of the application to the alleged infringer may be pursued (L615-4 IPC).

Note that notification cannot be « unofficial« : it is necessary to notify a certified copy of the application (L615-4 IPC).

Mere knowledge of the application other than through formal notification has no effect (Paris Court of Appeal, Division 5, Chamber 2, March 6, 2015, Case No. 2012/13939).

European Patent Application/Patent

For European patent applications (in English or German), it is necessary for the INPI to publish the translation of the claims. Before such publication, acts cannot be considered infringement (L614-9 IPC together with L615-4 IPC) (Caen Court of Appeal, 2nd Civil and Commercial Chamber, September 11, 2014).

There is no provision for notifying a European application to the alleged infringer before European publication… regrettably… but a request for early publication may be filed with the EPO (Art. 93(1)(b) EPC) if the filing and search fees have been paid (Guidelines A-VI 1.1).

Special case of co-ownership

In the case of co-ownership, and in the absence of contractual provisions, Article L613-29 of the IPC applies.

Non-exclusive license granted by a co-proprietor

In this case, this article (L613-29 IPC c)) provides that each co-proprietor may grant a non-exclusive license to a third party, subject to notifying the other co-proprietors.

In the absence of notification, the third party holding a license will have a valid but unenforceable license against the uninformed co-proprietors: they will therefore be an infringer with respect to the latter (Paris Court of Appeal, September 19, 2014).

Exclusive license granted by a co-proprietor

If an exclusive license is granted to a third party by a co-proprietor without the agreement of the others (L613-29 IPC d)), it will be null and void.

Consequently, the third party will have no license and will be an infringer with respect to all.

Infringement of products

Principle

According to Article L613-3 IPC a), the following are therefore acts of infringement for a product claim:

• making,
• offering,
• putting on the market,
• using,
• importing,
• exporting,
• transshipping,
• stocking for the aforementioned purposes the product that is the subject of the patent.

Making

Principle

Making a patented product is prohibited (L613-3 IPC a)).

Making covers acts of manufacturing the infringing product within French territory (Law No. 92-597 codifying the Intellectual Property Code, July 1, 1992, Art. 4).

Thus, making in Germany is not actionable.

Making abroad, sale in France and knowledge

Note that if a person makes an infringing product in Germany and then sells it in France, it is not necessary to prove knowledge (even though sale is a secondary act of infringement, which normally requires it).

Indeed, their status as manufacturer, regardless of the country of making, exempts them under the wording of Article L615-1 IPC.

Repair/replacement of essential elements

Is the repair of an object protected by a patent considered equivalent to infringing making?

According to case law (Paris Court of First Instance, 3rd Chamber, 3rd Section, November 9, 2004), if the repair of the object involves all essential elements (i.e., reconstruction), then it constitutes making and therefore infringement.

Subcontracting

If a subcontractor manufactures an object on behalf of its client, the latter remains a manufacturer (Cour d’appel de Paris, Pôle 5, 2e ch. , 21 October 2011 or C. Cass. com. No. 12-14803, 13 November 2013).

The subcontractor is therefore, by operation of law, an infringer if the manufactured object is protected by a patent.

At most, the subcontractor and its client may be declared joint infringers (Cour d’appel de Paris, Pôle 5, ch. 01, 22 May 2013).

The subcontractor may call its principal into indemnity:

• if there is an indemnity clause in the contract (Cour d’appel de Paris, Pôle 5, 2e ch. , 21 October 2011);
• in the case of public contracts (Article 8.1 of the decree of 8 September 2009 approving the general administrative clauses applicable to public works contracts);
• if the client provided the subcontractor with a « specific » specification, i.e., if the subcontractor was not free to choose the technical means to achieve the required result (Article 1240 of the Civil Code).

Employees

Employees of the manufacturer cannot be sued for infringement even if they are the « actual » manufacturers (only the company may be sued, Article 1384 of the Civil Code).

Offering

Offering a patented product is prohibited (Article L613-3 CPI a)).

An offer is any material act aimed at putting the product into circulation (without it being necessary for there to be actual commercialization or physical presentation to customers, Paris District Court, 3rd Chamber, 28 May 2008).

For example, the following may constitute infringement:

• advertising,
• canvassing,
• a proposal on the Internet,
• exhibition of a prototype at a trade show for promotional purposes.

The offer must have been made and/or received in France (Article L613-3 CPI a) or c)).

The targeted market is irrelevant: the market may well be abroad, only the location of the offer matters (C. Cass. com. 30 January 2001).

An application for marketing authorization or inclusion on the list of reimbursable medicines does not constitute an offer for sale (Paris District Court, 3rd Chamber, 9 January 1998).

Placing on the Market

Placing a patented product on the market is prohibited (L613-3 CPI a)).

Placing on the market is characterized by any material operation intended to bring the product into contact with the French market, even if the commercialization is not immediately effective. This placing on the market may include:

• sale,
• loan for use,
• various acts of distribution,
• acts of packaging and conditioning,
• rental,
• leasing (C. Cass com. n°91-21228 and n°91-21419, April 26, 1994),
• including the product reproducing the features of the patent in a catalog (even if no product is held by the alleged infringer, Tribunal de Grande Instance de Paris, 3rd ch., 2nd sect., November 29, 2013).

Use

Use of a patented product is prohibited (L613-3 CPI a)).

Importation

Importation of a patented product is prohibited (L613-3 CPI a)).

Any person who participates in the importation is considered an importer.

Thus, the exporter in France will also be considered an infringer (Tribunal de grande instance de Paris, 3rd ch., 1st sect., May 3, 2006 and Cour d’appel de Paris, 4th ch., sect. B, September 19, 2008).

Exportation

Since March 11, 2014, the act of exporting a patented product from France to a foreign country is also prohibited (L613-3 CPI a) or c)).

For exportation from a foreign country to France, see the paragraph on importation.

Transshipment

Principle

Since March 11, 2014, transshipment of a patented product is also prohibited (L613-3 CPI a)).

History of Transit Sanctions

Prior to March 11, 2014, and despite some hesitation, judges appeared to interpret transit as importation and thus sanction it in the same way (Cour d’Appel de Pau, crim. ch., October 14, 1998).

Focus on Intra-Community Transit

Regarding intra-Community transit, judges had ruled that this type of intra-Community transit did not constitute infringement in light of the requirements of free movement within Europe (C. Cass. crim. n°01-87631, September 3, 2002).

Will this case law be maintained in light of the new prohibition on transshipment?

Possession for the Aforementioned Purposes

It is necessary that the possession be for the purpose of offering, using, importing, exporting, transshipping, or placing the infringing product on the market (L613-3 CPI a)).

Thus, the « mere possession » of a product enabling the implementation of the invention is not an act of infringement (Tribunal de grande instance de Lyon, 10th ch., February 14, 2008, e.g., a carrier).

Infringement of products directly obtained by a patented process

Principle

To prevent a third party from manufacturing a product abroad using a process patented in France and importing the manufactured products without any issues, the French legislator added an additional prohibition (L613-2 CPI c)): protection for « products directly obtained by such process. »

The following are prohibited (L613-2 CPI c)):

• offering,
• placing on the market,
• using,
• importing,
• exporting,
• transshipping, and
• stocking for the aforementioned purposes the product directly obtained by the process

In short, all classic acts of infringement are prohibited except for manufacturing (though the latter is covered by the process itself).

What is a product?

Yes, I am indeed asking this question.

While it may seem trivial at first glance (for example, when thinking of manufacturing a table), the question becomes relevant when addressing borderline cases:

• Is an image a product in relation to an image compression process?
• Is a trained AI model a product in relation to a neural network training process?
• Is a GO/NOGO decision a product in relation to a decision-making process (e.g., drilling decision)?
• Is a number a product in relation to a constrained optimization process?

It is clear that the question is complex, and I believe each of you may have different answers to these questions (in the absence of case law)…

Infringement of processes

Principle

The following constitute acts of infringement for a process:

• using the patented process (L613-3 CPI b)),
• offering the use of the process within French territory (L613-3 CPI b)),
• acts of infringement relating to product claims (except manufacturing) for the product directly obtained by the process (L613-3 CPI c)):
  • offering,
  • placing on the market,
  • using,
  • importing,
  • exporting,
  • transshipping, or
  • stocking for the aforementioned purposes.

Use of the process

Principle

The use of a patented process is prohibited (L613-3 CPI b)).

Offering the use of the process within French territory

Principle

Offering the use of a patented process is prohibited (L613-3 CPI b)).

Form of this offer

This offer of use may take several forms:

• an offer to supply machines incorporating a patented process, the activation of which would constitute a primary act of infringement (Tribunal de grande instance de Paris, 3e ch., 4e sect., 28 January 2010);
• an offer made to a third party to implement the process in France on behalf of that third party (e.g., as part of a tender, Cour d’appel de Paris, 4e ch., sect. A, 24 November 2004).

Territoriality issue

How should the expression « on French territory » in Article L613-3 CPI b) be interpreted?

Should it be interpreted as:

• the offer in France to use the process;
• the offer to use the process in France;

It appears that the second interpretation is the most logical, since it is already established that acts of infringement (i.e., the offer) must be carried out (or received in the context of the offer) in France (Law No. 92-597 codifying the Intellectual Property Code, 1 July 1992, Art. 4): why else would this specification be included?

Thus, if you propose in France (for example, at a forum) to implement a process outside France, there is no infringement.

Infringement by supply of means

Background

Faced with the impossibility of manufacturing a product covered by a patent, some wondered: what if a « kit for assembly » were supplied instead of a fully assembled product?

Would this constitute infringement?

The case that highlighted this loophole was the so-called « multi-crystalline waxes » case (Cour d’appel de Paris, 28 November 1960). In this case, the subject matter of the invention was delivered as a kit to end users.

Since the law at the time did not provide for any sanction, the court was forced to conclude that such manufacture and delivery did not constitute acts of infringement.

Considering that the acts constituting infringement are exhaustively listed in Articles 40 and 41 of the amended Law of 5 July 1844 on patents for invention; […]

Considering therefore that only the manufacture of beehive foundations using the mixtures described in the patent […] could constitute an act of infringement.

Considering that by manufacturing the criticized wax mixture and putting it on sale, the company Tisco may have facilitated the commission of acts of infringement by a number of beekeepers by providing them with the means to commit such acts.

Considering that such conduct must not be confused with the « use of the means forming the subject of the patent » provided for in Article 40 of the 1844 Law.

Current legal rule

Article L613-4 CPI was then introduced in 1968 to address this gap.

Thus, it is prohibited to supply or offer to supply within the French territory elements enabling the implementation of the invention (product or process), if the following conditions are met:

• if you know that these means are suitable for such implementation (or when the circumstances make it obvious, L613-4 CPI, paragraph 1);
• if you know that these means are intended for such implementation by the person to whom you supply these means (or when the circumstances make it obvious, L613-4 CPI, paragraph 1);
• if the supply AND this implementation take place within the French territory (L613-4 CPI, paragraph 1);
• if the means of implementation are not commonly available in commerce (at least one) OR if you induce the third party to commit an act of infringement (L613-4 CPI, paragraph 2).

This supply of means may only concern certain essential means of the invention.

Exceptions

The supply of means is not considered infringement if they are supplied:

• to the patent proprietor (as there is « consent of the patent proprietor, » L613-4 CPI, first paragraph),
• to licensees (non-exclusive, exclusive, statutory, holders of a compulsory license, etc., L613-4 CPI, first paragraph),
• to persons seeking to obtain a marketing authorization (MA) (L613-4 CPI, third paragraph together with L613-5 CPI d)),
• to persons seeking to obtain advertising authorization for a medicinal product from healthcare professionals (L613-4 CPI, third paragraph together with L613-5 CPI d-bis)),
• to persons sending objects into space (L613-4 CPI, third paragraph together with L613-5 CPI e)).

Issue of multi-territoriality of the act or multi-actor issue

Multi-territoriality

As we have seen, many acts of infringement require presence on French territory (e.g., manufacturing, use, etc.).

But let’s be bold and imagine that the patented process is carried out in part in France (with the other part of the process being carried out abroad). For example:

• The manufacturing plant straddles the border, with certain steps of the manufacturing process carried out on one side of the border and others on the opposite side.
• The protected process is implemented in part (e.g., transmission of a wave) on one side of the border, while another part (e.g., reception and decoding of the wave) is implemented on the other side.

Is this infringement?

I would be inclined to say no, but unfortunately, there does not appear to be much case law on this point.

We may nonetheless note some interesting foreign case law on the subject:

• USA: NTP v RIM of December 14, 2004
  • Where the beneficiary of a service is in the USA, even if the service is implemented outside the USA, the principle of territoriality applies (in this case, a mail relay located in Canada was used by Americans).
• Germany: Regional Court of Munich (decision 7 O 16945/15) of April 21, 2016
  • If there is an economic link with the country in which the steps are carried out (an economic link exists if the steps performed abroad can be associated with an entity carrying out the other steps in German territory), then infringement may be found.
• UK: Menashe Business Mercantile and Julian Menashe v. William Hill Organisation Ltd of March 15, 2002
  • The fact that the server is located outside the UK does not negate the fact that the effect of the server remains within UK territory (i.e., a gaming server).
  • Thus, the player is indeed using the server from within the UK.

Multi-actor scenarios

Now, consider that the patented process is carried out entirely in France, but by two different parties.

Is it possible to consider a sort of coherent group of infringers acting in concert?

Is this direct infringement or contributory infringement?

In France, the Paris Court of Appeal (CA Paris, September 19, 2012, Pole 5, Chamber 1, Case No. 11/04655) held that infringement exists even in cases involving multiple actors, provided they « act in concert and pursue the common objective of achieving the result promised by the invention. »

It is therefore necessary to demonstrate a sort of mental element, or intent. Needless to say, this is more complicated 🙂

Requirement of mental element?

In civil proceedings

Without knowledge

The following are primary acts of infringement (product):

• importation,
• exportation,
• transshipment,
• manufacturing, and
• possession for the purpose of importation, exportation, or transshipment.

The following is a primary act of infringement (process):

• use of the process.

Indeed, for these acts of infringement, it is not necessary to establish that the alleged infringer had knowledge (L613-3 IPC together with L615-1 IPC).

With knowledge

Principle for products

The following acts constitute indirect infringement (product):

• offering,
• placing on the market,
• using,
• stocking for use or placing on the market.

Alleged infringers must then be put on notice, with infringement liability arising from the date of such notice (L613-3 CPI together with L615-1 CPI).

Principle for processes

The following act constitutes indirect infringement (process):

• offering for use within the French territory.

Alleged infringers must then know (or where the circumstances make it obvious) that the use of the process is prohibited due to the patent (L613-3 CPI b)).

Meaning of « notice »

Notice is not limited to mere knowledge of the patent but requires knowledge that the scope of the patent covers the product in question (« knowledge of the infringing nature« , Court of Appeal of Paris, 4th ch., sect. B, 19 September 2003).

Cease and desist letter

A cease and desist letter may serve to put an alleged infringer on notice (Regional Court of Paris, 3rd ch., 4th sect., 23 June 2011).

However, avoid drafting cease and desist letters in an overly aggressive manner (Regional Court of Paris, 3rd ch., 16 May 2000): for example, a « very vigorous warning » sent to all of a manufacturer’s customers, as well as a preventive seizure aimed at pressuring them not to purchase competing products, will be deemed excessive.

Thus, cease and desist letters should warn of potential infringement (without assertively stating that infringement has occurred). They should merely provide objective information and present the opposing arguments if known; otherwise, such a letter may be considered unfair competition (French Supreme Court, Commercial Chamber, 27 May 2015, No. 14-10800).

Similarly, sending a warning letter to a distributor without suing the manufacturer may be actionable if the manufacturer’s identity was well known.

Summons or infringement seizure

A summons (Regional Court of Paris, 3rd ch., 23 June 2000) or an infringement seizure may also constitute notice.

Presumed notice?

In certain specific cases, case law accepts that notice may be presumed: for example, this applies to knowledgeable professionals in a highly specialized market (French Supreme Court, Commercial Chamber, 12 March 2002, No. 99-16926) or even just a specialized market if the seller has a connection with the manufacturer, for example (French Supreme Court, Commercial Chamber, 6 November 2012, Case No. 11-19375).

In criminal proceedings

In criminal proceedings, the mental element is stronger: it is necessary that the infringer committed the infringing acts « knowingly » (L615-14 CPI).

Exceptions and absence of infringement

The acts under Article L613-5

Article L613-5 CPI provides for a number of exceptions to infringement, guided by a certain pragmatism.

The following acts cannot be considered as infringements (L613-5 CPI):

• acts performed in a private context and for non-commercial purposes;
  • an agricultural cooperative does not benefit from this exception (Cass. com., 15 Apr. 1964);
• acts performed for experimental purposes (typically scientific research);
  • this exception covers technical testing of a machine (C. Cass. com. No. 11-27686, 14 May 2013),
  • this exception does not cover commercial tests (Paris Court of Appeal, 4th ch., sect. B, 7 October 2005),
  • this exception covers clinical trials, even Phase III (Paris Court of Appeal, 27 January 1999),
• the preparation of medicines made on demand in pharmacies, upon medical prescription;
• studies and tests required for obtaining a marketing authorization (MA) for a medicine, as well as the acts necessary for their implementation and for obtaining the authorization;
  • this exception covers bioavailability studies aimed at demonstrating the bioequivalence of the generic with the reference medicine,
  • including the manufacture of pilot batches for obtaining the MA,
  • listing on the reimbursable medicines list does not constitute infringing acts (Regional Court, 3rd ch., 9 January 1998).
• acts necessary for obtaining advertising authorization from physicians (see Article L5122-9 of the Public Health Code);
• the introduction of satellites into French territory before their launch into space.

Exhaustion of rights

Consider the following situation:

• You own a patent in France;
• You sell products in Germany;
• A German buys these products and sells them in France.

Is he allowed to do so? Can you prevent him?

The answer is no! This is called « exhaustion of rights » (L613-6 CPI).

In short, if you place a product on the market (or consent to its placement on the market) within the European Economic Area, you can no longer oppose its circulation within that area.

This exception stems from the free movement of goods within this area (Articles 28 to 31 of the Treaty on European Union and the Treaty on the Functioning of the European Union).

It should be noted, however, that this principle does not apply to other countries in the world. Thus, the patent proprietor may prohibit the importation into France of products that he himself placed on the market in the USA (which may offend « common sense, » since these products are infringing even though they were sold by the patent proprietor… yet, this is logically unassailable).

Prior personal possession

Principle

Prior personal possession (dating back to the time of Louis XVI) is the fact of holding the invention before the filing of the patent application by a third party. Since you held the invention, the law will allow you to continue using it without being hindered by the patent (L613-7 CPI).

Conditions

The possessor

There are no specific conditions regarding the person of « the possessor » (L613-7 CPI):

• as to the number of persons holding this right (1, 2, 100 persons);
• as to the status of these persons (natural persons, legal entities, etc., Cour de Paris, 5 March 1896, in this case, the state was recognized as having prior personal possession);
• as to their nationality;
• as to their status (they need not necessarily be the inventor, TGI Paris, 3rd ch. 9 March 2001).

Naturally, this person must be of good faith according to the principle « fraus omnia corrumpit« . Thus, if the possession results from a disclosure made by an inventor under confidentiality (e.g., in a contractual relationship, C. Cass. com. No. 04-15694, 25 April 2006), then prior personal possession cannot be invoked.

Time of possession

The elements of possession must be met (L613-7 CPI):

• at the filing date of the patent (Cass. com. 18 December 1973 No. 72-12090), or
• where applicable, at the priority date of the patent.

Place of possession

Possession must be on French territory… and not abroad (for example, through implementation in a foreign country, L613-7 CPI).

Required content of possession

Is it necessary to implement the invention? Must one be ready to implement the invention? Is mere « intellectual » possession sufficient?

In reality, several case law trends conflict…

One line of case law holds that having a perfect understanding (even theoretical) of the invention is sufficient to justify prior personal possession (Cour de Paris, 5 March 1896).

Indeed, when filing a patent application, only a description is required, and no implementation is demanded. Why, then, be stricter for prior possession?

Some case law accepts serious preparations (TGI Paris, 3rd ch., 4 Sept. 2001) or prior exploitation (Cass. crim., 30 May 1849) as proof of prior possession: it is unclear whether these judges would have accepted « weaker » evidence and mere intellectual knowledge of the invention…

Other countries (such as the USA) reserve their national « prior personal possession » for persons who have made serious preparations.

Required subject matter of possession

Possession must relate to the invention as claimed in the granted patent or, where applicable, in the limited patent.

Events subsequent to the filing

Any event subsequent to the filing date has no impact on prior personal possession, even if such events include:

• a modification of the claims of the patent application (even an extensive one);
• the cessation of exploitation by the person having prior personal possession (Cass. ch. des requêtes, 28 April 1938)

The right conferred

The person who benefits from a right of « prior personal possession » may raise an exception (Cass. crim., 23 February 1856) in the event of an infringement action.

The patent will then not be enforceable (L613-7 CPI).

Transfer of the right

The right of « prior personal possession » is not a right that can be easily assigned.

For example:

• it is not possible to purchase the right of a third party having « prior personal possession« ;
• a subsidiary does not possess a right of prior personal possession even if its parent company or its director did.

The only possible assignment (provided for in Article L613-7 CPI) is an assignment with the company or with the department (the part of the business) that is concerned by this prior personal possession: this right may therefore be assigned as an ancillary right, but not as a principal right.

Delegation of the right

The wording of Article L613-7 CPI appears to prohibit the person having prior personal possession from ordering the reproduction of the invention from a subcontractor (unless, of course, the subcontractor also had knowledge of the invention prior to the filing).

However, the subcontractor only producing a part of the invention cannot be sued for supply of means, as the person having prior personal possession is considered to be authorized to implement the invention under L613-4 CPI.

Secrecy of the possession

Of course, this prior personal possession may be secret (Cass. crim., 23 February 1856)

Proof of this possession may be relatively complex due to this secrecy: I therefore advise you to describe your « secret invention » in a Soleau envelope in the most precise manner possible, or to deposit its description with a notary in order to be able to prove a certain date.

Provocation of infringement?

If the proprietor of a patent provokes an act of infringement by a third party (e.g., ordering a counterfeit product from abroad, or ordering the manufacture of an infringing product CA Paris, 4 December 1862), this act will be dismissed by the courts and will not be considered as infringement.

Tolerance by the patent proprietor?

Unlike trademark law (L716-5 CPI), if the patent proprietor is aware of wrongful acts and allows them to continue, even for a fairly long period, this does not constitute a waiver of the right to enforce their rights (analogous to the decision Tribunal de Grande Instance de Paris, 3e ch. 05 April 1995 for designs).

Failure to work?

Similarly, the fact that the patent proprietor (or the licensee, respectively) does not work the subject matter of their patent (or license, respectively) does not constitute an excuse or authorization for a third party to infringe (Cour d’appel de Paris, 4e ch., sect. A, 15 December 2004).

Only a compulsory license may be requested if there has been no exploitation during the last 3 years (though this remains rare, L613-11 CPI).

Duty to infringe?

Being under an obligation to infringe a patent to comply with a standard (e.g. Tribunal de grande instance de Paris, 3e ch., 1re sect., 09 September 2008) is not a legitimate excuse.

Grant of a patent?

Furthermore, the mere fact of obtaining a patent does not constitute infringement of an earlier patent, as it is the mere exercise of a right (C. Cass. civ., 16 August 1861).

Graphic summary

Here is a small diagram summarizing what we have just said about infringement: