Arbitration is an alternative method of dispute resolution whereby parties agree to submit their dispute to an arbitral tribunal.
Resorting to arbitration?
Principle
In theory, it is possible to resort to arbitration in any dispute between two private individuals (Article 2059 of the French Civil Code):
- via the inclusion of an arbitration clause in a contract (Article 1442 of the French Code of Civil Procedure), or
- via the signing of a submission agreement (Article 1447 of the French Code of Civil Procedure).
Arbitrability of patent disputes
The issue at stake
Nevertheless, arbitrability is subject to certain limitations that must be analyzed:
- does the exclusive jurisdiction under Article L615-17 of the French Intellectual Property Code preclude arbitration?
- do patents fall within a field affecting French public policy (Article 2060 of the French Civil Code)?
- are the rights subject to arbitration available (Article 2059 of the French Civil Code)?
Analysis of the three issues
The issue of exclusive jurisdiction
Since the 1968 law, Article L615-17 of the French Intellectual Property Code, paragraph 2, explicitly provides that exclusive jurisdiction (as set out in paragraph 1) is not a ground for rejecting arbitration.
The issue of public policy
While Article 2060 of the French Civil Code states that fields excluded from arbitration are those « affecting » public policy, the Cour de cassation has specified that public policy must also have been violated (C. Cass. civ. sect. com., November 29, 1950, Tissot case).
Therefore, there is no reason to believe that, in principle, public policy could preclude the arbitration of patents.
The issue of the availability of rights
This question is legally complex.
Nevertheless, it appears relatively certain that an arbitral tribunal cannot revoke a patent with erga omnes effect: the absolute effect of a revocation decision is a ground for non-arbitrability (the contractual nature of arbitration precludes the effects of the arbitrators’ decision from impacting third parties).
Examples of possible arbitration
Courts have validated the use of arbitration in the following areas:
- concerning the inventorship of the invention (Paris Court of Appeal, 1st Chamber, October 31, 2001);
- concerning the analysis of infringement;
- concerning contracts related to the exploitation of patents (Paris Court of Appeal, 1st Chamber, Case No. 05/10577, February 28, 2008);
- concerning the validity of the title incidentally (Paris Court of Appeal, 1st Chamber, Case No. 05/10577, February 28, 2008), i.e., without revocation with erga omnes effect (e.g., by way of an exception, merely to dismiss the opposing claim).
Effects of the arbitral decision
Opposability
The arbitral decision only has effect between the parties (Article 1165 of the French Civil Code).
Therefore, the arbitral decision is not opposable to third parties, and they cannot rely on it.
For example, an arbitral decision revoking a patent will not have erga omnes effect (Paris Court of Appeal, 1st Chamber, Case No. 05/10577, February 28, 2008).
Res judicata
The arbitral decision has the authority of res judicata (Article 1484 of the French Code of Civil Procedure), with respect to the dispute it resolves.
Therefore, the party whose claims are dismissed (even if presented by way of an exception) cannot reassert them before the national court (Article 1351 of the French Civil Code).
Enforceability
In principle, the award should be voluntarily complied with by the parties.
An arbitral decision does not have enforceability, i.e., no imperium: if a party refuses to comply with the arbitral decision, an exequatur procedure must be initiated (Article 1487 of the French Code of Civil Procedure) by the most diligent party.
This exequatur is generally conducted before the enforcement judge of the Tribunal de Grande Instance in the jurisdiction where the award was rendered (Article 1487 of the French Code of Civil Procedure): this may not necessarily be the Paris Tribunal de Grande Instance.
International arbitration
What we have just discussed is particularly relevant in disputes between French parties, as you may have noticed, I have not cited any treaties or international conventions… Fortunately, I will write an article on international arbitration.