The territoriality of protection
Only acts made in France (+ TOM and Mayotte) are likely to be sanctioned (except rare exceptions that we will see below).
Indeed, the monopoly right attached to the French patent stops at the French borders (Law No. 92-597 codifying the Intellectual Property Code, July 1st. 1992, art 4.): no counterfeiter can exist beyond our borders.
The use of a counterfeit device in a ship (except cargo), an airplane (or an airplane spare part), a car (or a car spare part), etc. temporarily or accidentally entering French territory is not considered to be a forgery (A5ter CUP).
Product / process distinction
Article L613-3 CPI distinguishes between counterfeit acts relating to:
- the "product" claims, and
- the "process" claims.
In fact, the intellectual property code does not limit the categories of claims to these two categories (products and processes) as the article suggests L613-3 CPI (see R612-19 CPI which mention products, processes, devices, and uses).
So it must be understood here that the terms of the article L613-3 CPI are actually larger:
- "products" would then include devices and products,
- "processes" would include uses and processes.
Once this distinction is made, let's see what are these acts " counterfeited ».
Date on which the acts become counterfeits
French application / patent
Normally, only acts performed after publication of the patent application or notification of the application to the alleged infringer can be pursued (L615-4 CPI).
Attention, because the notification can not be a notification " unofficial ": It is necessary to notify the certified copy of the application (L615-4 CPI).
The mere knowledge of the application other than by the formality of the notification has no effect (Paris Court of Appeal, Pôle 5, 2e ch., March 6, 2015, RG n ° 2012/13939).
European patent application
For European patent applications (in English or German), it is necessary to have the INPI publish the translation of the claims. Prior to such publication, the acts can not be considered as counterfeits (L614-9 CPI together L615-4 CPI) (Court of Appeal of Caen, 2nd ch. Civ. com., September 11, 2014).
It is not planned to notify a European application to the alleged counterfeiter, before the European publication... sad ... but a request for advance publication can be submitted to the EPO (A93 (1) (b) EPC) if the filing and search fees have been paid (Directives A-VI 1.1).
Special case of co-ownership
In the case of a co-ownership, and in the absence of a contractual provision, the article L613-29 CPI apply.
Simple license granted by a co-owner
In this case, this article (L613-29 CPI (c)) provides that each co-owner may grant a simple operating license to a third party, subject to notifying its co-owners.
In the absence of notification, the third party holding a license will have a valid license but not inopposable to non-experienced co-owners: it will therefore be counterfeit vis-à-vis the latter (Paris Court of Appeal, 19 September 2014).
Exclusive license granted by a co-owner
If an exclusive license is granted to a third party by a co-owner without the consent of the others (L613-29 CPI d)), this will be nil.
Therefore, the third party will have no license and will be counterfeit vis-à-vis all.
According to the article L613-3 CPI a), are therefore acts of infringement for a product claim:
- the making,
- putting on the market,
- possession for the aforementioned purposes of the product which is the subject of the patent.
The manufacture of a patented product is prohibited (L613-3 CPI at)).
The manufacture covers the acts of manufacture of the counterfeit product on the French territory (Law No. 92-597 codifying the Intellectual Property Code, July 1st. 1992, art 4.)
Thus, manufacturing in Germany is not punishable.
Manufacturing abroad, sales in France and knowledge of the facts
Note that if a person makes a counterfeit product in Germany and then sells it in France, it is not necessary to put it in the knowledge of the facts (even if the sale is a secondary act of counterfeiting, which normally requires it. ).
Indeed, its status as a manufacturer, regardless of the country of manufacture, exonerates you from the writing of the article L615-1 CPI.
Repair / replacement of essential elements
Can the repair of a patent-protected item be equated with a counterfeit fabrication?
According to case law (Paris District Court, 3rd Ch., 3rd Sect. November 9, 2004), if the repair of the object is all the essential elements (ie reconstruction) then there is manufacture and therefore counterfeit.
If a subcontractor manufactures an object on the order of his client, he remains a manufacturer (Court of Appeal of Paris, Pole 5, 2nd ch. , October 21, 2011 or C. Cass. com. No. 12-14803, November 13, 2013).
The subcontractor is therefore, of right, an infringer if the manufactured object is protected by a patent.
In a pinch, the subcontractor and his client may be declared coauthor counterfeiting (Court of Appeal of Paris, pole 5, ch.01, May 22, 2013).
The subcontractor may call in guarantee its sponsor:
- if there is a guarantee clause in the contract (Court of Appeal of Paris, Pole 5, 2nd ch. , October 21, 2011);
- in the case of public procurement (Article 8.1 of thedecree of 8 September 2009 approving the general conditions of contract applicable to public works contracts);
- if the client has communicated to the subcontractor a "precise" specification, that is to say if the subcontractor was not free of the technical means to implement in order to achieve the requested result (1240 of the Civil Code).
Employees of the manufacturer can not be prosecuted for infringement even if they are the "real" manufacturers (only the company can be sued, article 1384 of the Civil Code).
The offer of a patented product is prohibited (L613-3 CPI at))
The offer is any material act tending to put the product into circulation (without it being necessary that there be behind an actual marketing or a physical presentation to the customers, Paris District Court, 3rd c., May 28, 2008).
For example, can be fakes:
- a proposal on the Internet,
- an exhibition of a prototype at a trade show in order to advertise it.
Offer must have been issued and / or received in France (L613-3 CPI a) or c)).
It is of little importance that the target market is the French market: the target market may very well be abroad, only the place of supply is important (C. Cass. com. January 30, 2001)
The application for a MA or the listing on the list of reimbursed medicines do not constitute offers for sale (Tribunal de Grande Instance, 3rd ch, 9th of January 1998).
The putting on the market of a patented product is forbidden (L613-3 CPI at)).
Putting on the market is characterized by any material operation intended to put the product in contact with the market Frencheven if the marketing is not immediately effective. This putting on the market can be:
- the sale,
- the loan for use,
- various acts of distribution,
- wrapping and conditioning acts,
- leasing (C. Cass com. No. 91-21228 and No. 91-21419 April 26, 1994),
- the fact of inserting in a catalog the product reproducing the characteristics of the patent (even if no product is held by the supposed counterfeiter, Tribunal de Grande Instance of Paris, 3rd chapter, 2nd section, 29 November 2013).
The use of a patented product is prohibited (L613-3 CPI at)).
The importation of a patented product is prohibited (L613-3 CPI at)).
An importer is considered to be any person who participates in the import.
So, theexporter in France will also be considered as a counterfeiter (Paris District Court, 3rd Division, 1st Sect, May 3, 2006 and Court of Appeal of Paris, 4th ch., Sect. B, September 19, 2008).
Since March 11, 2014, the act of exporting a patented product from France to another country has also been sanctioned (L613-3 CPI a) or c)).
For export from abroad to France, see the paragraph on importation.
Since March 11, 2014, transhipment of a patented product has also been sanctioned (L613-3 CPI at)).
History on the sanction of transit
Before March 11, 2014, and despite some hesitation, the judges seemed to want to interpret the transit as an importation and thus sanction it in the same way (Court of Appeal of Pau, ch. corr., October 14, 1998).
Focus on intra-community transit
As regards intra-Community transit, the judges had decided that this type of intra-Community transit was not an infringement with regard to the requirements of free movement in Europe (C. Cass. crim. No. 01-87631, September 3, 2002).
Will this case law be maintained because of the new sanction of transhipment?
Detention for the above-mentioned purposes
Detention must be for the purpose of offering, using, importing, exporting, transhipping, or marketing the counterfeit product (L613-3 CPI at)).
Thus, the " simple detention "Of a product to implement the invention is not an act of forgery (Lyon District Court, 10th Ch. February 14, 2008, ex. a carrier).
Counterfeiting of products obtained directly by a patented process
In order to prevent a third party from manufacturing a product abroad using a process patented in France and to import products manufactured without any concern, the French legislator has added an additional ban (L613-2 CPI (c)): protection for ' products obtained directly by this process.
Are forbidden (L613-2 CPI c)):
- putting on the market,
- transhipment, and
- the holding for the aforementioned purposes of the product obtained directly by the process
In short, all acts of conventional counterfeiting are prohibited except manufacturing (but the latter is covered by the process itself).
Counterfeiting of processes
Are acts of counterfeit for a process:
- the use of the patented process (L613-3 CPI b)),
- the offer of use of the process on the French territory (L613-3 CPI b)),
- infringing acts relating to the product claims (except manufacture) for the product obtained directly by the process (L613-3 CPI c)):
- putting on the market,
- transhipment, or
- detention for the aforementioned purposes.
Use of the process
The use of a patented process is prohibited (L613-3 CPI b)).
Problem of partial realization
Let's imagine the following scenarios:
- The patented process is realized in part in France by one person (the other part of the process being carried out abroad),
- The patented process is carried out totally in France, but by two different people.
Is it a counterfeit?
I would tend to say no, but unfortunately it does not seem that there is much case law on this point.
Offer to use the process on French territory
It is forbidden to offer the use of a patented process (L613-3 CPI b)).
Form of this offer
This offer of use can take several forms:
- an offer for the supply of machines incorporating a patented process, the commissioning of which would constitute a primary act of counterfeiting (Paris District Court, 3rd Division, 4th Sect., January 28, 2010);
- an offer made to a third party to implement, on behalf of that third party, the process in France (eg in the context of a call for tenders, Court of Appeal of Paris, 4th ch., Sect. A, 24 November 2004).
How to interpret the expression " in French territory »Of the article L613-3 CPI b)?
Should it be interpreted as:
- offers in France method of use;
- the offer of use of the process in France ;
It seems that the second interpretation is the most logical since we already know that acts of counterfeiting (ie the offer) must be made (or received as part of the offer) in France (Law No. 92-597 codifying the Code of Intellectual Property, July 1st. 1992, art 4.): why this precision otherwise?
Thus, if you propose in France (for example, during a forum) to implement a process outside France, there is no counterfeit.
Counterfeiting by providing means
In the face of the impossibility of producing a product that is the subject of a patent, some people wondered: what if a "kit to be assembled" was provided rather than a product already assembled?
Is there a counterfeit?
The case, which highlighted this flaw, is the so-called multi-crystalline waxes "(Paris Court of Appeal, November 28, 1960). In this case, the subject of the invention was delivered as a kit to the end users.
Since the law did not provide for any sanction, the judge was forced to find that this manufacture and delivery did not constitute acts of counterfeiting.
Considering that the facts constituting an infringement are exhaustively enumerated in articles 40 and 41 of the amended law of 5 July 1844 on patents; [...]
Considering therefore that only the manufacture of hive foundations with mixtures described in the patent [...] could constitute an act of counterfeiting.
Considering that by manufacturing the criticized wax mixture and putting it on sale, Tisco was able to facilitate counterfeiting by a number of beekeepers by providing them with the means to commit such acts.
Whereas Such an attitude should not be confused with the "use of the means covered by the patent" provided for in section 40 of the 1844 Act.
Current rule of law
Article L613-4 CPI was then introduced in 1968 to fill this gap.
Thus, it is forbidden to deliver or offer to deliver on the French territory elements allowing to implement the invention (product or process), if the following conditions are fulfilled:
- if you know that these means are capable this implementation (or where circumstances make it obvious, L613-4 CPI paragraph 1);
- if you know that these means are for to this implementation in the person to whom you deliver these means (or when circumstances make it obvious, L613-4 CPI paragraph 1);
- if the delivery And this Implementation are made in France (L613-4 CPI paragraph 1);
- if the means of implementation are not found commonly in commerce (at least one) OR if you incite third party to commit an act of counterfeiting (L613-4 CPI paragraph 2).
This provision of resources may only target certain essential means of the invention.
The provision of means is not considered counterfeit if they are provided:
- to the patentee himself (because there is the "consent of the owner of the patent", L613-4 CPIParagraph 1),
- to licensees (non-exclusive, exclusive, ex officio, holder of a compulsory license, etc., L613-4 CPIParagraph 1),
- to people seeking a marketing authorization (L613-4 CPI3rd paragraph together L613-5 CPI d)),
- persons seeking authorization to advertise a medicine from members of the health professions (L613-4 CPI3rd paragraph together L613-5 CPI d-bis)),
- to people sending objects into space (L613-4 CPI3rd paragraph together L613-5 CPI e)).
Need for moral element?
In civil proceedings
Without knowledge of cause
Are primary infringement (product):
- the manufacture, and
- detention for the purposes of importation, exportation, transhipment.
Are primary infringement (process) :
- the use of the process.
Principle for products
The following acts are secondary counterfeiting (product):
- putting on the market,
- detention for use or putting on the market.
Principle for processes
The following acts are secondary counterfeiting (process) :
- the offer of use on the French territory.
The alleged infringers must then know (or where circumstances make it obvious) that the use of the process is prohibited by the patent (L613-3 CPI b)).
Meaning of "knowing the facts"
The knowledge is not limited to the mere knowledge of the patent, but requires knowledge of the fact that the scope of the patent covers the covered product ( ' knowledge of the infringing character », Court of Appeal of Paris, 4th ch., Sect. B, September 19, 2003).
The formal notice may be a means of knowingly putting in place an alleged infringer (Paris Tribunal de Grande Instance, 3rd c., 4th Sect. , June 23, 2011)
Nevertheless, avoid writing your formal notices too aggressively (Tribunal de Grande Instance of Paris, 3rd ch, May 16, 2000): for illustration, will be excessive a " a very strong warning "Sent to all customers of a manufacturer, as well as a preventive seizure to put pressure on them so they do not buy competing products!
Thus, it is appropriate to write formal notices warning against a possible counterfeit (without saying in a threatening manner that it is indeed a counterfeit). It must content itself with giving objective information and giving the adverse arguments if they are known: failing that, such a letter of formal notice could be considered as unfair competition (C. Cass. com., May 27, 2015, No. 14-10800).
Similarly, sending a warning letter to a seller without assigning the manufacturer may be condemned if the identity of the manufacturer is well known.
Counterfeiting summons or seizure
Assignment (Paris District Court, 3rd c., 23 June 2000) or the counterfeit seizure may also constitute an informed disclosure.
Knowledge of alleged cause?
In certain particular cases, the case law accepts that the knowledge of the case can be presumed: it is for example the case for savvy professionals a market highly specialized (Cass. com. of March 12, 2002, No. 99-16926) or even only specialized if the seller has a place with the manufacturer, for example (Cass. comm. of November 6, 2012 RG No. 11-19375).
In criminal proceedings
In the criminal case, the moral element is stronger: it is necessary that the counterfeiter has performed acts of counterfeiting "knowingly" (L615-14 CPI).
Exceptions and absence of counterfeiting
The acts of article L613-5
Article L613-5 CPI provides for many exceptions to counterfeiting, exceptions guided by a certain pragmatism.
Thus, the following acts can not be considered as counterfeits (L613-5 CPI):
- acts done privately and for non-commercial purposes;
- an agricultural cooperative does not benefit from this exception (Cass. com., Apr. 15, 1964);
- acts performed on an experimental basis (typically scientific research);
- this exception covers the technical tests of a machine (C. Cass. com. n ° 11-27686, May 14th, 2013),
- this exception does not cover commercial tests (Court of Appeal of Paris, 4th ch., Sect. B, October 7, 2005),
- this exception covers clinical trials, even phase III (Court of Appeal of Paris, January 27, 1999),
- the preparation of medicines made on request in pharmacies, on medical prescription;
- the studies and tests required to obtain a Marketing Authorization (Marketing Authorization) for a medicinal product, as well as the acts necessary for their completion and for obtaining the authorization;
- this exception covers bioavailability studies tending to demonstrate the bioequivalence of the generic with the reference medicinal product,
- including the manufacture of pilot lots for the purpose of obtaining
- the list of reimbursed medicines does not constitute acts of counterfeiting (Tribunal de Grande Instance, 3rd ch, 9th of January 1998).
- the acts necessary to obtain the authorization of advertising from doctors (see article L5122-9 of the public health code);
- the introduction of satellites on French territory before sending them into space.
The exhaustion of law
Imagine the following situation:
- You have a patent in France;
- You sell products in Germany;
- A German buys these products and sells them in France.
Does he have the right? Can you stop him?
The answer is no ! And this is called " the exhaustion of the right »(L613-6 CPI).
In a word, if you put on the market a product (or if you agree to this placing on the market) within theEuropean Economic Areayou can no longer oppose its circulation within it.
This exception comes from the free movement of goods in this area (Articles 28 to 31 of Treaty on European Union and Treaty on the Functioning of the European Union).
It should be noted, however, that this principle does not exist for other countries of the world. Thus, the patentee may prohibit the importation into France of products that he has put on the market in the USA (which may shock the common sense "Because these products are counterfeit even though it is the patentee who sold them ... yet, it is an unstoppable logic).
Previous personal possession
Previous personal possession (which dates back to the time of Louis XVI) is the possession of the invention before the filing by a third party of the patent application. As you owned the invention, the law will allow you to continue using it without being bothered by the patent (L613-7 CPI).
The one who owns
There is no special condition concerning the person of " whoever has »(L613-7 CPI):
- as to the number of persons having this right (1, 2, 100 persons);
- as to the quality of these persons (natural persons, legal persons, etc., Court of Paris, March 5, 1896in this case the state had been recognized as possessing an earlier personal possession);
- as to his nationality;
- as to its quality (it is not necessarily inventor, TGI Paris, 3rd ch. March 9, 2001).
Of course, this person must be of sincerity according to the principle fraum omnia corrumpit ». Thus, if the possession results from a disclosure that has been made by an inventor under the seal of confidentiality (eg in a contractual relationship, C. Cass. com. No. 04-15694, April 25, 2006), then one can not avail oneself of a previous personal possession.
Time of possession
The elements of possession must be united (L613-7 CPI):
- on the filing date of the patent (Cass. com. December 18, 1973 No. 72-12090), or
- where applicable, on the date of the priority of the patent.
Place of possession
Possession must be on the French territory... and not abroad (for example, via implementation in a foreign country, L613-7 CPI).
Contents of possession required
Should we implement the invention? Should we be ready to implement the invention? Is it enough to be in "intellectual" possession?
In fact, several lines of jurisprudence confront each other ...
A first line of case law argues that it suffices to have a perfect knowledge (even theoretical) of the invention to justify an earlier personal possession (Court of Paris, March 5, 1896).
Indeed, when filing a patent application, only a description is required and no implementation is required. Why then be more severe for previous possession?
Some case law accepts as evidence of prior possession of serious preparations (TGI Paris, 3rd c., 4 Sept. 2001) or a prior operation (Cass. Crim., May 30, 1849): it is unclear whether these judges would have accepted more evidence low And a simple intellectual knowledge of the invention ...
Other countries (such as the US) reserve their previous personal possession To those who have made serious preparations.
Purpose of possession required
Possession must relate to the invention as claimed in the granted patent or, where appropriate, in the limited patent.
Any event after the filing date does not affect the previous personal possession, even if these events are:
- a modification of the claims of the patent application (even extensive);
- the cessation of exploitation by the person with previous personal possession (Case of Applications, April 28th, 1938)
The right conferred
The person who has the right to " previous personal possession Can raise an exception (Cass. Crim, February 23, 1856) in the case of infringement proceedings.
The patent will not be enforceable (L613-7 CPI).
Transmission of law
The right to previous personal possession Is not a right that can give way easily.
For example :
- it is not possible to buy the right of a third party having a previous personal possession "
- a subsidiary does not have a prior right of personal possession even if its parent or head office owned it.
The only possible assignment (provided by Article L613-7 CPI) is an assignment with the company or with the department (the part of the business) that is interested in that prior personal possession: this right may therefore be assigned on an ancillary basis, but not primarily.
Delegation of law
The wording of the article L613-7 CPI seems to prohibit the person with previous personal possession from ordering the reproduction of the invention to a subcontractor (unless, of course, he also had knowledge of the invention prior to the filing).
However, the subcontractor who realizes only part of the invention can not be sued for supply of means, because the person with a previous personal possession is considered as being authorized to implement the invention under L613-4 CPI.
Secret of possession
Of course, this previous personal possession may be secret (Cass. Crim, February 23, 1856)
The proof of this possession can be relatively complex because of this secrecy: I advise you to describe your secret invention "In a Soleau envelope in the most precise way it is, or to file his description before a notary in order to prove a certain date.
The provocation of counterfeiting?
If the owner of a patent provokes the act of counterfeiting by a third party (eg ordering a counterfeit product abroad, or ordering the manufacture of a counterfeit product CA Paris, December 4, 1862), this act will be dismissed by the judges and will not be considered as counterfeit.
Tolerance of the patentee?
Unlike trademark law (L716-5 CPI), if the patentee is aware of wrongful acts and he lets it go on, even for a fairly long period, this does not entail his renunciation of the exercise of his rights (analogy with the decision Paris District Court, 3rd c. April 05, 1995 for designs).
Similarly, the fact that the patentee (respectively the licensee) does not exploit the subject matter of his patent (respectively his license) does not constitute an excuse / authorization for the infringement of a third party (Court of Appeal of Paris, 4th ch., Sect. A, December 15, 2004).
Only an ex officio license can be requested if during the last 3 years, there was no exploitation (but this is rare, L613-11 CPI).
Obligation to counterfeit?
Being forced to counterfeit a patent to meet a standard (ex. Paris District Court, 3rd Division, 1st Sect., 09 September 2008) is not a legitimate excuse.
Issuance of a patent?
On the other hand, simply obtaining a patent does not constitute an infringement of a prior patent, since it is the mere exercise of a right (C. Cass. civ., August 16, 1861).
Here is a small diagram to summarize what we have just said about counterfeiting: