The declaration of non-infringement is provided for in Article L615-9 CPI.
Conditions for the Declaratory Action
Substantive Conditions
Regarding the Claimant
Industrial Exploitation
For the claimant to be considered as having a legitimate interest in bringing proceedings, it is necessary that the claimant can demonstrate industrial exploitation within the territory of a Member State of the EEC (L615-9 CPI).
Such industrial exploitation may consist of manufacturing, but cannot consist of commercialization or importation (Regional Court of Paris, 3rd Chamber, 28 October 1998).
Effective and Serious Preparations
Alternatively, the claimant may prove that it has undertaken effective and serious preparations for such industrial exploitation (L615-9 CPI).
These serious investments must have been made with a view to exploiting the subject matter of the invention.
The seriousness of the investments must be assessed based on the significance of the investments made.
These technical preparations must have been carried out within the territory of the EEC (Regional Court of Paris, 3rd Chamber, 3rd Section, 14 January 2009).
Regarding the Defendant
The action for declaration of non-infringement is brought against the patent proprietor only (Regional Court of Paris, 3rd Chamber, 2nd Section, 17 October 2003) and not against its exclusive licensee in France (e.g., foreign patent proprietor).
In the case of co-ownership, it is necessary to sue all co-proprietors.
Formal Conditions
Pre-Litigation Step
To avoid immediate litigation, it is provided that the third party invites the proprietor to take a position on the alleged infringement within 3 months (L615-9 CPI).
One may question the value of this « validation » by the proprietor. If the proprietor indicates that there is no infringement:
- is the proprietor bound by this « validation » and unable to plead an error in assessment?
- does this constitute a waiver of any infringement action (within the limits of the description provided by the third party)?
Litigation Phase
The claimant meeting the aforementioned conditions may sue the proprietor to obtain a declaration that no infringement exists (L615-9 CPI, paragraph 2):
- once the 3-month period has elapsed and in the event of no response from the proprietor;
- in the event of a response from the proprietor indicating that, in its view, infringement exists.
Effect of the Action for Declaration of Non-Infringement
In Case of Failure
If the claimant had not filed a counterclaim for infringement, it will be necessary to initiate a new action to sanction the infringer.
In Case of Success
In this scenario, the judgment will preclude any subsequent infringement action (res judicata).
However, if the third party slightly modifies its products, an infringement action may be brought, as the subject matter of the dispute will differ.