The literal counterfeit is an infringement in which all the characteristics of the claim are reproduced (counterfeiting is assessed by similarities and not by differences, Court of Appeal of Paris, ch. June 4, 9, 2000).
In practice, the analysis of this counterfeit is very close to the analysis that we would do if we were to analyze the novelty of the claim with respect to the object under consideration.
Exception to the principle: an addition going against the aim of the invention
Be careful, however, that an object reproducing all the features of the claim, but possessing additional features contrary to the object of the invention, will not be considered as counterfeit (eg adding an expensive coin to a coin). device knowing that the object of the invention is to reduce costs, Court of Appeal of Paris, Pole 5, 1st ch., October 2, 2013; Filmop c. Dit et al): personally I find this reasoning wrong, but it is held by the French courts.
Counterfeiting by equivalence
In this theory, a structural feature essential claims is not present and is replaced by a new means.
An essential characteristic may very well be found in the preamble of the claim (Paris District Court, 3rd c., 2nd sect. December 10, 2004)
In reality, counterfeiting by equivalence is an American case law construction (US Supreme Court: Burn Tank & Mfg. CO. V Linde Air Products, May 29, 1950).
This construction of case law was then imported into Europe, and notably in France.
The French test consists of 3 stages.
For equivalence counterfeiting to be established, it is necessary that, cumulatively (Court of Appeal of Paris, Pole 5, 1st ch. March 14, 2012):
- function the new way be identical that of the characteristic not reproduced;
- the function is the primary technical effect of the characteristic;
- for example, the function of a lock is to close a door;
- the new means participates to a result of the same nature (ie " the same function, in view of a result of the same nature") (C. Cass. com., No. 08-14741, September 15, 2009):
- the result is the intangible advantage that the function provides;
- for example, the result of a lock is to make it possible to secure access to a dwelling;
- the result must be of the same nature (therefore not necessarily identical). This result may be a little worse;
- function of the feature not reproduced (i.e., in the context of the claim) should not be known (ie news) (Paris District Court, 3rd Division, 2nd Sect., 06 July 2007 or C. Cass. com., No. 08-14741, September 15, 2009 or Com., November 20, 2007, appeal no. 06-17915).
- The novelty must be analyzed on the date of filing of the patent and not on the date of infringement (Cass. Com., March 31, 2004)
We must clearly distinguish function and result (Cass. com., June 27, 2018, n ° 16-20.644).
As you will have noted, the definition of the function is essential for this analysis. If we choose a generic function (probably by not considering the characteristic out of context), it is probable that it is identical and not new. If we choose a specific function (considering the context of the invention), this function will probably not be identical.
In addition, it is likely that:
- function should be mentioned in the description or obviously derive from it.
- she does not go out, a posteriori, from the patent holder's hat,
- the feature should not have been added during the procedure in response to a notification (Court of Appeal of Paris, 4th ch., Sect. A of September 24, 2003)
- The judges consider that this addition would have overcame an objection to patentability and therefore has no protectable equivalent.
It should be noted that interpretative protocol of the A69 EPC (Article 2) explicitly recognizes the theory of equivalents.
Special case of combination inventions?
In the context of a combination invention (ie which is not merely a juxtaposition of means), the Paris Court of Appeal seemed to indicate that the reasoning identical and new function Can not be held (Court of Appeal of Paris, 4th ch., May 28, 1999).
It considers, in fact, that a reasoning as to the known effect of a component taken alone is irrelevant, because precisely the object of the invention is to make the components of the invention work together. to provide an overall result other than the addition of the results they would each provide in isolation ».
Even if at first sight the analysis seems attractive, I do not share the opinion of the Court.
Indeed, any " real Invention (ie excluding invention of juxtaposition, I mean) can be seen as a combination invention: an invention is an assembly of known elements (if the claim is cut into sufficiently small elements) cooperating with each other to produce an inventive result and which exceeds the simple sum of the results of each of the elements.
Counterfeiting by secondary differences or "variants of execution"?
In this case, certain characteristics non essential are not reproduced or reproduced differently.
This counterfeit can be:
- by striking a non-essential means (Court of Appeal of Paris, 4th ch., Sect. B, 19 November 2004, in this case the missing means was indicated as optional in claim 1);
- by replacing a non-essential means (Paris District Court, 3rd c., 16 January 1998):
- today, it is often considered that this replacement can also be seen as a " counterfeit by equivalence " (see above).
- the characteristic must not have been modified during the procedure in response to a notification. Indeed, the judges consider in this case that this characteristic is essential (Court of Appeal of Paris, 4th ch., Sect. A of September 24, 2003case Marti Sala and Posimat against Vasquali).
You will understand, I do not really approve of this analysis of counterfeiting but some believe that such counterfeiting exists (Cass. Com. November 6, 2012, appeal n ° 11-19375) and therefore it should be mentioned.
Indeed, I do not understand how we could consider that a characteristic is non-essential if the writer nevertheless put it in his claim ... The security of third parties is not ensured by such an approach!
This type of counterfeit would be infringement of only part of the claim (C. Cass. com. No. 85-16725 of April 28, 1987, Marchal case), even if some essential characteristics are missing.
Criticism and disappearance of this concept
The doctrine jumped when reading this judgment ...
This theory of partial forgery Seems today to be questioned by the judges of the merits and the rare case law mentioning " partial forgery Seem to be, in fact, an abuse of language in order to speak:
- counterfeiting by means ofCourt of Appeal of Paris, Pole 5, 2nd ch, September 13, 2013), or
- counterfeit by equivalence (District Court of Nancy, 1st ch. Civ. September 11, 2006).
For the record, I'm telling you this stop of the Court of Cassation of January 17, 1872 which indicates that there is no partial infringement if an essential element of the claim is not reproduced: in short, the theory of partial forgery »Seems very wobbly ...
The abandonment of this approach seems confirmed by the cessation of the Cass. Com. April 3, 2012, appeal n ° 10-21084.
Counterfeiting by perfection?
We often hear that perfecting is counterfeiting »...
This is not entirely true: perfection is indeed a counterfeit in the only hypothesis where it consists:
- to add means to those claimed (literal counterfeiting) or
- to very slightly modify one (possibly counterfeit by equivalence, see above).