Counterfeit action

Contents

Who can sue for infringement?

Principle

The action for infringement may be brought byL615-2 CPI):

  • the owner of the patent,
  • the exclusive licensee, and
  • the compulsory or compulsory licensee.

The owner of the patent

The owner of the patent (or patentee) may be the one who filed the patent application, but he may also be the one who later acquired the patent.

To identify the patentee, it is useful to look at the registrations made in the RNB (National Patent Register maintained by the INPI) or in the REB (European Patent Register maintained by the EPO). Indeed, assignments, legacies, etc. must be registered in one of these registers under pain ofunenforceability (L613-9 CPI).

Thus, if the records do not mention any assignment:

  • or there was indeed no assignment and the holder is the one indicated on the patent specification;
  • or there was an assignment and the owner of the patent forgot to write the assignment to one of these records. In this case, the owner is inadmissible to act until he has corrected the records.

Normally, acts of infringement prior to the assignment can only be prosecuted by the former owner of the patent.

It is possible, however, that the assignment provides that the assignee may exercise the rights of the assignor for the period preceding the assignment: subrogation in the rights of the assignor (C. cass. c. com, January 11, 2000, No. 97-10838). If the assignment did not provide for subrogation, the new owner can not pursue the facts prior to the transfer. Nevertheless, it seems possible to establish a confirming act of assignment "At any time that will confirm the intention of the parties on the day of the transfer (it will be necessary to register it of course Court of Appeal of Paris, Pole 5, 2nd chapter, March 15, 2019, RG n ° 17/02639)

In any event, the recording of the assignment renders the action of the new holder possible, but does not condition the calculation of the damage: in fact, the Paris Court of Appeal considers that the rule of unenforceability laid down in Article [L613-9 CPI] can not have the effect of allowing the infringer to infringe the patent with impunity as long as the transcription of the assignment is not effected »(Court of Appeal of Paris, Pole 5, 1st ch., October 5, 2011).

In the context of a succession on a universal basis (inheritance, merger of company, etc.), subrogation is automatic. However, this does not exempt registration in order to be able to enforce its rights!

A co-owner

A patent may belong to more than one person. We are talking about the co-owners of the patent.

The law provides for a suppletive regime (L613-29 CPI) governing the relations between the co-owners (special agreements may replace this suppletive regime).

This suppletive scheme provides forL613-29 CPI) one of the co-owners may bring an action for infringement without the agreement of the other co-owners. Nevertheless, it remains necessary to notify the action to other co-owners to give them the opportunity to join and enjoy.

If the co-owner can act alone, he can only claim the part of the damages that he deserves. In other words, he is not subrogated in the rights of the co-owners not present.

The court adjourns (L613-29 CPI (b)) as long as the proof of such notification has not been furnished to the court. A priori, this proof must be provided within 2 years (386 CPC), but the counterfeiter may request a shorter period of time for the pre-trial judge.

A licensee

The exclusive licensee

Principle

The exclusive licensee is a specific licensee: the owner of the patent guarantees him exclusivity in a given territory (here, France) and during a given period.

Formal notice

In order to prosecute a third party for infringement, the exclusive licensee must put in residence the patentee to act (L615-2 CPI). Otherwise, the action is inadmissible (Paris District Court, c. 03, 03 July 1998).

Nevertheless, it is possible to provide other terms in the license agreement (" unless otherwise stipulated in the license agreement », L615-2 CPI).

In practice, the formalism of the formal notice is not always necessary especially if everyone agrees: thus, the jurisprudence admits that the owner of the patent can indicate to the licensee that he consents to this action without however have been "put in default" (Paris District Court, c. 03, March 13, 1998). For example, the patentee may authorize the licensee to act in infringement:

Conversely, the patent owner may object in the contract that the licensee may exercise any action for infringement. In this case, the patentee may have to bring the infringement action himself. If he refuses to bring the action, his contractual liability with regard to his licensee could be engaged (guarantee of non-eviction of the article 1628 of the Civil Code).

License registration

In order for the licensee's infringement action to be admissible, it is however necessary for the license to be registered in the GNI (L613-9 CPI).

This latter formality is often forgotten when the license is granted to a daughter company (the parent company holding the patent), or when the patentee is the head of the enterprise and "authorizes" the company to exploit the patent. :

  • if the company exploiting the patent attacks an infringer, it will be inadmissible because it does not have a registered license;
  • if the entrepreneur attacks the counterfeiter, his damages will be very low because he does not exploit his patent directly (and the license granted is often free). However, the company operating the patent may make an "intervention" to the authority to be compensated.

However, this registration may be very late because it only determines the quality of infringement proceedings and not the basis of the harm (C. Cass. c. com., February 18, 2004, No. 02-16703): it is only important that the license be registered at the time the judge rules (CA of Aix en Provence, April 3, 2014).

It should be noted a contrary judgment of the Paris Court of Appeal which thinks that this registration conditions the basis of counterfeiting (Court of Appeal of Paris, Pole 5, 1st ch., June 2, 2010, RG n ° 2007/16086): I think this stop makes no sense because the article L613-9 CPI provides that an unregistered simple licensee may intervene to obtain the reparation for the damage of its own.

Is the holder then deprived of a future action?

It is possible to ask whether the holder subsequently retains the possibility of bringing an action against the infringer (who, for example, has been convicted for the first time in proceedings against the exclusive licensee).

In my opinion, the writing of the article L615-2 CPI does not prohibit the owner of the patent from bringing an action for infringement on the ground that he would not have exercised it when he was put on notice by the licensee.

To interpret this article in this way would amount to recognizing a sort of substitution of the holder by the exclusive licensee, and this in total contradiction with the principle of French procedure no one pleads by attorney ».

Likewise, res judicata does not allow the licensee to be prohibited from acting following an action brought by his exclusive licensee: the identity of the parties is not respected (1351 Civil Code).

Therefore, if the action of the owner can not be rejected, it seems that the judge will have to be very careful when determining the damages and interests: he will have to avoid that the same prejudice is repaired twice, while juggling with the methods of calculation proposed by the article L615-7 CPI !

The first decisions in this area are eagerly awaited ...

The compulsory or compulsory licensee

The system of the compulsory or compulsory license is identical (L615-2) the exclusive license with respect to the infringement action (except that the holder can not provide for derogation clauses in a license agreement).

The simple licensee

The non-exclusive licensee may not bring an action for infringement (L615-2 CPI).

He may, however, intervene in the action and have his loss declared (1240 of the Civil Code) if an action for infringement is initiated by another person.

Proof of the existence of the license must be made (Court of Appeal of Paris, Pole 5, 2nd ch., May 16, 2014; Knauf Insulation c. Saint-Gobain Isover).

Who to act against?

Any unauthorized person

If an unauthorized third party performs any of the acts mentioned in the article Infringements It is possible to act against it.

A licensee

Is it possible to act in counterfeit against his own licensee?

The question may arise if a licensee does not comply with his license agreement (for example, he manufactures too many products). Is he a counterfeiter or is he just a contractual fault?

Article L613-8 CPI answers this question: a breach of the limits imposed by the license is an infringement.

A third party authorized by a single co-owner

If one of the co-owners wishes to grant a license to a third party, and if one is in the suppletive regime of the article L613-29 CPIit is essential to notify the draft license to the other co-owners (L613-29 CPI c)): these can oppose it within 3 months (by paying the price of the license).

If the notification does not take place, the license is unenforceable to other co-owners (C. cass. c. com. March 15, 2011, No. 09-71934).

Thus, if the license is valid, non-notified co-owners may sue the licensees licensed to operate by the first co-owner. Of course, these licensees will be able to call the first co-owner as collateral to avoid bearing the full burden of the penalty.

It is also possible to legally force the termination of past license agreements (Court of Appeal of Paris, Pole 5, 2nd chapter, May 24, 2013).

A licensee authorized by a holder, the latter having stolen the invention

If a person (having his invention stolen) claims ownership of a patent in a court (on the basis of Article L611-8 CPI) and if this claim succeeds, all licenses granted by the previous owner will have been granted without right and will therefore be void.

The new owner may therefore, in theory, sue the licensees of the former owner for infringement. Of course, the licensees can call in warranty the former owner to avoid bearing the full burden of the penalty.

The new owner may also request the transfer of licenses (District Court of Strasbourg, 1st c. civ., December 6, 2004, this is strange, since we just said that licenses were null for lack of purpose).

The physical person manager?

In certain situation, the company selling the infringing products is an LLC with a registered capital of a few hundred euros. Therefore, it can be difficult to get redress ...

One can then wonder if it is possible to turn against the leader of the company.

The Court of Appeal of Aix seems to consider that this is possible with the visa of the article L223-22 of the French Commercial Code. Indeed, according to her, counterfeit acts committed by a company manager constitute an intentional fault of a particular gravity which, consequently, is detachable from its social functions (Court of Appeal of Aix, October 30, 2014).

It is still necessary that the fault intentional be clear (ie " intentional fault of a particular severity, incompatible with the performance of his duties », C. Cass, com, May 12, 2015, No. 14-13024).

On what grounds can we act in infringement?

A French patent

Principle

The owner of a patent can bring infringement in France (L615-2 CPI).

Patent application

An action for infringement may be initiated on the basis of a patent application (L615-4 CPI), but the judge will have to stay the proceedings until the grant of a patent (L615-4 CPIlast paragraph).

An action based on a patent application can allow the prescription to be stopped (2241 of the Civil Code).

Nevertheless, if no patent is ever issued, a counterclaim for improper procedure can be formed!

Importance of the publication date

Only facts subsequent to publication (or notification to the alleged infringer) may be prosecuted (L615-4 CPIparagraph (1) (C. Cass. com. of March 26, 1985, No. 83-12290).

Extension after publication

In addition, if the set of claims is expanded after this publication (or this notification), the facts " counterfeited "Can not be pursued (L615-4 CPIparagraph 2).

In order to make this new game more enforceable, it is useful to have it republished by the INPI (or to renotify it), but this republication or renotification does not have the effect of rendering the claims retroactively enforceable (Paris District Court, 3rd Ch., 3rd Sect. October 21, 2003).

A European patent

Principle

A European patent has, from the publication of its mention of grant, the same effects as a French patent (A64 (1) EPC).

A European patent is therefore usable in the same way in France (if it is validated in France and if the translation of the claims is provided to the INPI, L614-9 CPI).

A full translation of the patent must be provided to the competent court (L614-7 CPI) at his request or that of the alleged infringer.

European patent application

Principle

It is quite possible to bring an action for infringement on the basis of a European patent application (L614-9 CPI paragraph 1) as of its publication by the EPO (and subject to providing, if necessary, to the INPI the translation of the claims or to notify the alleged counterfeiter, L614-9 CPI paragraph 2)

It does not therefore seem possible to act before a French court before the publication of its application by the Office (eg after notification of the counterfeiter of the claim set) contrary to what is possible for a French application (L615-4 CPIparagraph 1).

Coexistence of a French patent and a European application

If ever the European patent application is for the same invention as a French patent (eg priority request), we must decide:

  • if you use the European patent application:
    • the judge will refuse to give a decision immediately and will suspend his decision until the European patent is granted (L615-4 CPI);
  • if you use the French patent:

The only way to unblock the situation is to withdraw the designation of France in the European patent application (District Court of Strasbourg, 1st c. civ., June 8, 2009): the judge will not be bound by the provisions of the article L614-15 CPI and may render a judgment on the basis of the French patent.

Based on an international application (PCT)

A PCT application, from the date of publication of the international application, confers the same protection as that granted by a French application (A29.1 PCT together L614-24 CPI together A153 EPC) if the PCT application is entering into a European phase (and subject to providing the INPI with the translation of the claims, if necessary, or to notify the alleged counterfeiter, L614-9 CPI paragraph 2).

When can we act?

During the life of the patent

It is possible to introduce an action in order to pursue any infringing act realized the duration of validity of the patent (L611-2 CPI).

There is no condition as to the validity of the title on the day of the introduction of the share: it may be forfeited (as long as the acts of counterfeiting are not prescribed)!

Prescription

Civil prescription

Infringement acts are prescribed by 5 years civil (L615-8 CPIbefore 11 March 2014, the prescription was to 3 years).

Suspension of civil prescription

Principle

It must be recognized that prescription is not really an easy concept.

Indeed, the article 2239 of the Civil Code provides that the prescription is suspended if the judge grants a request for a measure of inquiry. In this case, it appears that the seizure-counterfeit is a measure of instruction (report of the court of cassation of 2012).

Moreover, this same article 2239 of the Civil Code , provides that the limitation period begins to run after the execution of the investigative measure for a minimum period of 6 months.

Well, you are a bit lost ... it's normal:

  • if you get an order for forgery on the last day of the limitation period, basically the time will be suspended until you make the seizure and
  • once the seizure has been made, it will restart until your assignment (because the assignment must occur well before the additional 6 months, see proof of counterfeiting).
Puzzle for fun

As you know, I really like to ask myself questions.

The question I ask here is: the suspension of the prescription, ok ... but against which prescription?

Indeed, a seizure infringement requested to seize A in the context of a lawsuit against B stops the limitation period concerning the acts of the company C?

My opinion is that this suspension cannot be general and should only concern the acts for which seizure is requested ... but failing to find case law on the subject ...

Penal prescription

Infringement acts are prescribed by 6 years criminal (8 CPPbefore 1 March 2017, the prescription was 3 years).

Legal action

The competent jurisdiction

In civil matters

Principle

Only the Tribunal de Grande Instance of Paris is competent for actions for infringement or invalidity (L615-17 CPI together D211-6 Code of Judicial Organization) including for related unfair competition matters.

In addition, the TGI de Paris is also competent to authorize:

The Paris Court of Appeal has jurisdiction on appeal (Court of Appeal of Paris, Pole 5, 1st ch., June 20, 2012).

Clarification as to the jurisdiction of the courts of appeal since November 1, 2009

The application of the 2009 decree granting exclusive jurisdiction to the Paris Court of Law on patent issues has raised questions to determine the competent court of appeal in case of appeal of a judgment rendered by a provincial court of law entered before the 1st November 2009.

For the Court of Cassation (C. Cass. com., March 3, 2015, No. 14-10568), nothing is indicated in the Decree No. 2009-1205 of 9 October 2009 concerning an exclusive jurisdiction of the Paris Court of Appeal: only the jurisdiction of the TGI of Paris is recognized for the patents.

Therefore, it is appropriate to apply the general principles of Article R311-3 of the Code of Judicial Organization according to which the Court of Appeal is competent to know the decisions of the Intermediate Courts located in its jurisdiction.

In criminal matters

Article L615-17 CPI mentioning only " civil actions You might think thatConversely, the standard rules of procedure apply and that all correctional courts are competent ratione materiae to know criminal actions in forgery.

The Court of Cassation confirmed this point with regard to the mark (C. Cass. Crim., June 19, 2013, No. 12-84533): the special rules of competence of the intellectual property code apply only to the civil.

Proceedings

The language of the proceeding

The courts rely on Article 111 of theorder of Villers-Cotterêts from August 1539 to be able to dismiss foreign language plays (Court of Appeal of Paris, pole 1, 2nd chapter, March 21st, 2012).

Article 111 of the Villers-Cotterêts Ordinance of August 1539
Article 111 of the Villers-Cotterêts Ordinance of August 1539 Article 111 of the Villers-Cotterêts Ordinance of August 1539

Nevertheless, formally, theorder of Villers-Cotterêts from August 1539 applies only to the acts of the proceedings (ie the documents drawn up by the judges) and that it is for the trial judge, in the exercise of his sovereign power, to assess the probative force of the elements which are submitted (C. cass ch. com, May 24, 2011, No. 10-18608).

Thus, it is quite possible for a jurisdiction to be flexible (C. cass. c. com., January 7, 2014, No. 12-25955, even if we must not count too much).

The summons

Assignment is also called "bailiff's exploit".

Article 56 CPC provides that the summons must contain the subject of the application together with the statement of the legal and factual grounds.

This assignment contains in particular:

  • the quality and designation of the parties,
  • indications on the court of appearance (here, the TGI of Paris),
  • an invitation to establish a lawyer (902 CPC):
    • within 15 days (failing that, there is normally a non-adversarial judgment, but this is rarely put into practice immediately).
    • under 2 months for foreigners,
  • the brief statement of reasons,
  • the statement of the applications and the reasons for the request (including the cessation of the infringement and the compensation of the damage in order to be certain to stop the prescription for these two actions).

At this point, the court is not aware of the summons. It is therefore necessary to file a copy of the subpoena in court: this filing is referred to as the "court referral".

It is necessary to take good care of the assignment

The preparation

This pre-trial is carried out before ... the pre-trial judge.

He is responsible for following the procedure, verifying that the requested documents are transmitted between the parties, etc.

Exceptions are raised before this magistrate (771 CPC) (but not the ends of inadmissibility, C. Cass, Opinion No. 0060012P of November 13, 2006).

This judge fixes the schedule of postponements of the writings and fixes the closing which puts an end to the exchange of the writings.

Possible "delaying" means

As a means of "delaying" a procedure, it is possible to:

  • request a stay of proceedings, by right (that is to say, the judge can not refuse you), if you are summoned by a co-owner, without there being any notification sent to his other co-owners. This stay is provided in b) of the article L613-29 CPI ;
  • request a stay of proceedings, by right, if you are summoned on the basis of a French patent and if a European patent application is pending and this European patent application has been filed by the same inventor of the French patent (or his successor in title), that it is aimed at the same invention and benefits from the priority (L614-15 CPI);
  • request a stay of proceedings, by rightif the assignment is based on a simple patent application and not a patent (L615-4 CPI);
  • if a European patent is granted but opposition is pending, it is possible to apply for a stay of proceedings for "the proper administration of justice" (principle of civil procedure). Nevertheless, judges do not often grant this stay considering that the opposition is too "slow". It should be noted that if you are definitively sentenced and the patent is finally declared invalid during the opposition, you will not be able to recover the damages paid in the name of the principle of res judicata (C. cass. ass. pl. February 17, 2012, No. 10-24282);
  • if an action in claim is engaged, you can ask for a reprieve, but this is not obligatory, as in the previous case.

Civil sanctions

Prohibition under penalty

This prohibition is not explicitly provided for by the Code, but is based on Articles L613-3 and L613-4.

The penalty allows to ensure the enforceability of the decision of the judge (imperium of the judge). It is a kind of condemnation for the future. It is fixed according to the price of the object to dissuade the counterfeiter to continue the counterfeit.

If this penalty is to be paid to the patentee, it is not automatic. In order to collect the penalty payment, it is necessary to ask the enforcement judge to "liquidate" the penalty (art. Law 91-650 of July 9, 1991). The judge can moderate it to increase it according to the good faith of the counterfeiter and the difficulties encountered (art. Law 91-650 of July 9, 1991).

If the judgment is finally overturned by a court of appeal or the Court of Cassation, it is necessary to reimburse the penalty payment.

Reminder of commercial circuits

It is possible to request the recall of counterfeit goods from commercial channels (L615-7-1 CPI).

Nevertheless, it is not very clear exactly what is meant by the notion of "commercial channels":

  • Is it the circuits located in France?
  • Does this cover only the branches of the condemned company?
  • Does this apply to products that have been purchased by distributors?

Confiscation

Confiscation is a very old sanction, already present in the decree "relating to the authors of useful discoveries" of December 31, 1790 (see article 12).

Two theories stand in opposition to confiscation:

  • Should confiscation be used to prevent the continuation of counterfeiting?
  • Should confiscation be used to compensate the rights owner?

If under the empire of the law of 1968, the first theory largely dominated the law, the law was modified in 1978 and today, the confiscation is clearly for the benefit of the holder of the rights (L615-7-1).

Destruction

The destruction of counterfeit goods is also possible (L615-7-1):

This destruction is done at the expense of the counterfeiter.

Publicity of the judgment

If publicity of the judgment can be ordered by the judge (L615-7-1), one must know reason to keep!

For example, denigration consists of:

  • that the acts of an infringer are reported without a court order;
  • that a truncated court decision is reported;
  • that a noisy or provocative commercial advertisement is based on a decision of justice, even final, condemning a competitor.

Nevertheless, the simple fact of sending an email to its customers informing them of a judgment (even if not definitive) is not in itself unfair (Court of Appeal of Paris, Pole 1, Ch 2, June 16, 2016, RG n ° 15/068473).

Damages and interests

Principle

Damages have their legal basis in Article 1240 of the Civil Code.

Plate

Since March 11, 2014, the judge has new instructions to calculate damages and interest (L615-7 CPI).

The judge must take into account distinctly (L615-7 CPI):

  • negative economic consequences, including:
    • the shortfall and
    • the loss suffered;
  • the moral damage;
  • the profits made by the infringer, including the investment savings:
    • intellectuals,
    • materials and
    • promotional.

In addition, the rightholder may prefer to be compensated on the basis of a lump sum indemnity that must be higher than the price of a license that would have been requested (L615-7 CPIlast paragraph).

The latter option is likely to be rejected if the action is brought by the exclusive licensee.

License plate and registration

Registration of a license is not a condition for calculating the basis of damage.

This registration determines only the quality to act in infringement and not the basis of the damage (C. Cass. c. com., February 18, 2004, No. 02-16703): it is only important that the license be registered at the time the judge rules (CA of Aix en Provence, April 3, 2014).

It should be noted a contrary judgment of the Paris Court of Appeal which thinks that this registration conditions the basis of counterfeiting (Court of Appeal of Paris, Pole 5, 1st ch., June 2, 2010, RG n ° 2007/16086): I think this stop makes no sense because the article L613-9 CPI provides that an unregistered simple licensee may intervene to obtain the reparation for the damage of its own.

History of the damage assessment base

Previously, the judge only looked at the prejudice suffered by the rights holder.

Very early on, the case law was faced with the following dilemma: if the patentee is an individual and the infringer is a very large multinational, it is likely that the infringer will be able to make a very large profit from the counterfeiting makes of its power and its commercial channels). On the other hand, the patentee (very small) can not reach the same markets as his counterfeiter.

For a very long time, jurisprudence has remained true to itself: there is no derogation from common law and only the damage must be repaired (C. cass. com January 8, 1963, Mitchell fishing mills case)

Resistance to counterfeiting

Sometimes the judge agrees to compensate the commercial efforts that have been necessary for the patentee to commercially fight against the counterfeiter, for example in " limiting the price increase »(C. cass. c. com. May 23, 1995 No. 93-18527, Chlortoluron case).

Punitive damages?

The French approach has always rejected the concept of "punitive damages".

Nevertheless, it should be recalled that this concept of "punitive damages" is not at all contrary to European law (Decision of the CJEU C-367/15).

The CJEU also notes that the mere payment of a hypothetical fee is not able to guarantee compensation for all the damage suffered as it would not provide for the reimbursement of any costs related to research and identification of possible acts of counterfeiting or compensation for possible non-pecuniary damage, nor the payment of interest on the amounts due.

Penals sanctions

Principle

Counterfeiting is penalized (L615-14 CPI, paragraph 1, 1st sentence):

  • a fine of up to 300 k € ;
  • a penalty of up to 3 years imprisonment.

Reinforcement of the sanction in the case of recidivism

In the event of a second offense, the penalty may be doubled (L615-14-1 CPI).

Reinforcement of the penalty in the case of a licensee

If the counterfeiter was dismissed, the penalty can also be doubled (L615-14-1 CPI).

Reinforcement of the penalty in certain other cases

In addition, the sanction may be increased (L615-14 CPI, paragraph 1, 2nd sentence):

  • if the counterfeit is dangerous to health, or
  • whether the infringement was made on the Internet, or
  • if the counterfeiting was carried out in an organized band

Counterfeiting is then penalized (L615-14 CPI, paragraph 1, 2nd sentence):

  • a fine of up to 500 k € ;
  • a penalty of up to 5 years imprisonment.

Complementary sentences

As an accessory, it is possible for the judge to order (L615-14-2 CPI):

  • the counterfeiter to withdraw, at their expense, commercial channels objects deemed counterfeit;
  • destruction of counterfeit goods;
  • delivery of counterfeit goods to the holder;
  • damages and interest;
  • the display of the judgment.

3 Comments:

  1. New article 8 CPP since March 1, 2017: prescription of criminal offenses = 6 years now.

  2. On the Chapter on competence:

    "Only the Tribunal de Grande Instance of Paris is competent for actions for infringement or invalidity (L615-17 CPI32 together D211-6 CPI33) including for related unfair competition matters. "

    Correction: The article D211-6 quoted comes from the code of the judicial organization and not from the CPI.

    Site very well done, congratulations and thank you.

    Regards,
    Julien Pied

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