The declaration of non-infringement is provided in the article L615-9 CPI.
Conditions of the action for declaration
For the applicant to be considered as having an interest in action, it is necessary for the applicant to be able to prove an industrial exploitation in the territory of a Member State of the EEC (L615-9 CPI).
This industrial exploitation can be a manufacturingbut can not be a marketing or import (Paris District Court, 3rd c., October 28, 1998).
Effective and serious preparations
Alternatively, the applicant can demonstrate that he has undertaken effective and serious preparations for this industrial exploitation (L615-9 CPI).
These serious investments must have been made in order to exploit the object of the invention.
The seriousness of the investments must be assessed according to the importance of the investments made
These technical preparations must have been made in the territory of the EEC (Paris District Court, 3rd Division, 3rd Sect., January 14, 2009).
Relating to the defendant
The action for declaration of non-infringement is brought against the patentee alone (District Court of Paris, 3rd ch., 2nd sect. October 17, 2003) and not against his exclusive licensee in France (eg holder of the foreign patent).
In case of co-ownership, it is necessary to assign all the co-owners.
In order to avoid an immediate contentious procedure, it is intended that the third party invite the holder to take part in counterfeiting 3 months (L615-9 CPI).
One wonders what is the value of this "validation" by the holder. If he indicates that there is no infringement:
- is he bound by his "validation" and can he not plead an error of appreciation on his part?
- Is it a renouncement of any action for infringement (within the limit of the description made by the third party)?
The applicant satisfying the conditions previously listed may assign the holder to recognize that no infringement exists (L615-9 CPIparagraph 2):
- once the deadline for 3 months past and in case no response of the owner ;
- in case of reply the holder indicating that, in his opinion, there is a forgery.
Effect of action for declaration of non-infringement
In case of failure
If the plaintiff had not lodged a counterclaim for counterfeiting, he will have to introduce a new action to punish the counterfeiter.
In this hypothesis, the judgment will hinder a subsequent conviction for infringement (res judicata).
Nevertheless, if the third party slightly modifies its products an action for infringement may be made, because the subject of the dispute will be different.