Conditions for the Injunction

Principle

In order to request, in expedited proceedings or ex parte (L615-3 IPC, paragraph 3), a preliminary measure, it must be demonstrated (L615-3 IPC, paragraph 1):

  • the likelihood of infringement of the patent rights or
  • the imminence of such infringement.

Ex Parte or Expedited Proceedings

For an injunction to be granted ex parte (i.e., without adversarial proceedings), the urgency must be such that adversarial proceedings are not possible. In particular, a balance must be struck between the following elements (C. Cass. com. No. 13-10189, 16 September 2014):

  • the absence of doubt regarding the infringement;
  • the fact that any potential infringement may be remedied by damages;
  • the urgency being such that expedited proceedings within hours are not possible.

Clarification on Likelihood

Likelihood does not concern the validity of the patent (which falls within the jurisdiction of the trial courts) but only the infringement of the patent (Paris Court of Appeal, Division 1, Chamber 2, 21 March 2012).

Only the manifest invalidity of the patent may render the imminent infringement of these rights unlikely (Paris Court of Appeal, Division 1, Chamber 2, 21 March 2012).

This manifest invalidity may potentially be assessed by the pre-trial judge (if competent, i.e., if the preliminary injunction is requested after their appointment, Article 771 CCP) (Paris High Court, 3rd Chamber, 2nd Section, pre-trial judge’s order, 7 March 2014).

Clarification on the Imminence of Infringement

The fact that a foreign company manufacturing infringing products is present at a trade show may demonstrate the company’s intent to introduce the products into France and thus justify preliminary injunction measures (Paris High Court, pre-trial judge’s order, 8 July 2009).

The fact of obtaining a marketing authorization (MA) does not demonstrate any imminence of infringement; only the obtaining of a price by the CEPS and its publication in the Official Journal demonstrates an imminent character (Paris Court of Appeal, Division 1, Chamber 2, 23 May 2013).

« Prompt Delay »?

It may be questioned whether the request for an injunction must be filed within a « prompt delay » from the day the patent proprietor became aware of the disputed facts.

While this requirement is common in expedited proceedings (C. Cass. com. No. 92-14361, 1 March 1994), it appears that the legislator did not intend to impose such a condition for requests for preliminary injunctions: indeed, the term « prompt delay » was removed from Article L615-3 IPC during its amendment on 30 October 2007.

Patent / Patent Application?

French Patent

Article L615-3 IPC provides that any person « entitled to bring an infringement action » may request a preliminary injunction.

Therefore, since the proprietor of a French patent may bring an infringement action (Article L615-2 IPC), it is possible, on this basis, to request a preliminary injunction.

French Patent Application

It is not entirely clear whether a preliminary injunction may be requested based on a patent application.

Strictly speaking, since Article L615-4 IPC, paragraph 5, provides that an infringement action may be brought based on a patent application, it would be appropriate to allow such a request (Article L615-3 IPC).

European patent

Article L615-3 CPI provides that any person « with standing to bring an infringement action » may request a provisional injunction.

Therefore, as the proprietor of a European patent may bring an infringement action (L615-2 CPI together with A64(1) EPC), it is possible, on this basis, to request a provisional injunction.

European patent application

In principle, a European patent application cannot serve as the basis for a request for a provisional injunction, as Article L614-9 CPI does not mention Article L615-3 CPI (Paris Court of Appeal, ch. 14, 12 December 1997).

This omission in Article L614-9 CPI nonetheless appears debatable, as A66 EPC states that « The European patent application […] shall be equivalent to a regular national filing in the designated Contracting States« .

Therefore, if the right to request a provisional injunction is recognized on the basis of a French application, it would seem illogical to refuse it for a European patent application.

Competent court

While the jurisdiction of the interim relief judge does not appear to be an issue, we may question whether the case management judge may order provisional injunctions…

Referring to Article 771 of the Code of Civil Procedure, the decision of the Paris Court of Appeal, Pôle 5, 1st ch., 3 November 2015, Case No. 2013/14310 answers this in the affirmative.

Timing of the request for a provisional injunction

This injunction may be ordered, possibly subject to a penalty, before or during the proceedings (L615-3 CPI, paragraph 4).

Security / Advance payment

Principle

It is customary for the court to require the provision of security (most often a bank guarantee) to compensate the alleged infringer if the provisional measure imposed on them ultimately proves to be unjustified (L615-3 CPI, paragraph 2).

The court may also require the alleged infringer to provide an advance payment in the event of their likely conviction (L615-3 CPI, paragraph 3).

Strict liability / Fault-based liability?

Compensation for the alleged infringer does not necessarily presuppose fault on the part of the applicant for the injunction: the execution of the injunction measure engages the strict liability of the applicant (L111-10 CPCE) (Paris Court of Appeal, Pôle 5, 2nd ch., 31 January 2014).

It is possible to combine this strict liability with fault-based liability under Article 1240 of the Civil Code (e.g., dilatory maneuvers or intent to harm) (Paris Court of Appeal, Pôle 5, 2nd ch., 31 January 2014).

Main proceedings

Principle and time limit

If main proceedings are already pending, there is no difficulty.

Otherwise, it will be necessary to initiate main proceedings within a period of 20 working days or 31 calendar days (L615-3 CPI, paragraph 5 together with R615-1 CPI).

This action may be civil or criminal or consist of filing a complaint with the public prosecutor (L615-3 CPI, paragraph 5).

Start of the time limit

The start of the time limit is normally « from the date of the order » (R615-1 CPI).

However, it should be understood that the time limit only runs from the date of the order provided that (Cour d’appel de Paris, Pôle 1, 2e ch., 26 March 2015, RG :14/12790):

  • the judge has notified the parties of the date on which the order will be issued and
  • this notice is mentioned in the decision.

If this mention does not appear in the order, the start of the time limit is deferred to the date of notification of the order, or, in the absence of notification, to the date on which the party concerned effectively became aware of the decision by any means (Cour d’appel de Paris, Pôle 1, 2e ch., 26 March 2015, RG :14/12790).

Sanction

Otherwise, all measures ordered are null and void, and damages may be awarded to the injured party (see supra, L615-3 CPI, paragraph 5).

Serious challenges that may counter the request

Defendants may present certain elements aimed at blocking the request for preliminary injunction:

Appeals

The order granting these preliminary measures is subject to appeal by both parties before the Cour d’appel de Paris (490 CPC (summary proceedings) and 496 CPC (petition)).

The appeal is not suspensive in matters of provisional enforcement (539 CPC).

Request for suspension of injunction measures

It is possible to request the suspension of preliminary injunction measures pursuant to Article 524 CPC, paragraph 2 (Cour d’appel de Paris, ch. 01, sect. P, summary order, 21 September 2001).