Counterfeit action

Synthetic vision

Here are the main phases of a written procedure at first instance for an infringement action:

We can see very quickly that the spirit of this procedure is to limit exchanges and therefore the time necessary to "prepare" the file (see point 7 of the preamble of the rules of procedure).

Applicant's statement

Declaration

The claimant's statement describes the claims or demands of the attacking party.

This declaration is framed by rule 13 of the rules of procedure.

In essence, this declaration must be lodged with the division which the applicant chooses (of course, if it is competent) and must include (rule 13.1 of rules of procedure) :

  1. concerning the applicant
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • the name of the representative;
  2. concerning the defendant:
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail (if this information is known);
  3. concerning the owner (s) of the patent (if the applicant is not the owner or in the event of joint ownership):
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • proof that the applicant is qualified has filed a declaration;
  4. concerning the patent:
    • patent information (including its number);
  5. concerning the procedure:
    • an indication of any procedure, past or pending, before any authority (including EPO or national) relating to the patent;
    • an indication of the chosen division and the detail of why the competence of this division is correct;
    • an indication whether the parties agree that the panel should be for a single judge (proof of this agreement is necessary);
  6. concerning the dispute:
    • the nature of the claim and the measures it seeks to obtain;
    • the facts on which this claim is based (eg, targeted infringement acts and dates, number of counterfeit claims);
    • the evidence or an indication of the evidence that could be adduced;
    • arguments relating to the grounds on which the facts presented should be considered as counterfeits (including the interpretation of the claims);
    • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
    • an indication of the damages if they exceed a fixed threshold;
    • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if applicable).

Of course, concerning this last point, documents and testimonies must be provided at the same time (Rule 13.2 of the rules of procedure).

Payment of a procedural fee

In order for the declaration to be valid, the applicant must pay a procedural fee (Rule 15 of the rules of procedure).

This procedural fee depends on the amount of damages sought (rule 370.2 of the rules of procedure tax table set from the consultation concerning the rules concerning procedural fees):

  • 11.000 €
  • and in addition, a variable amount (ie damages and interest = d & i)
    • +2.500 € if 500.000 € <d & i <= 750.000 €
    • + € 4,000 if € 500,000 <d & i <= € 1,000,000
    • +8,000 € if 500,000 € <d & i <= 1,500,000 €
    • +13,000 € if 500,000 € <d & i <= 2,000,000 €
    • + € 20,000 if € 500,000 <d & i <= € 3,000,000
    • + € 26,000 if € 500,000 <d & i <= € 4,000,000
    • +32,000 € if 500,000 € <d & i <= 5,000,000 €
    • + € 39,000 if € 500,000 <d & i <= € 6,000,000
    • +46,000 € if 500,000 € <d & i <= 7,000,000 €
    • +52,000 € if 500,000 € <d & i <= 8,000,000 €
    • +58,000 € if 500,000 € <d & i <= 9,000,000 €
    • +65,000 € if 500,000 € <d & i <= 10,000,000 €
    • +75,000 € if 500,000 € <d & i <= 15,000,000 €
    • +100,000 € if 500,000 € <d & i <= 20,000,000 €
    • +125,000 € if 500,000 € <d & i <= 25,000,000 €
    • +150,000 € if 500,000 € <d & i <= 30,000,000 €
    • +250,000 € if 500,000 € <d & i <= 50,000,000 €
    • + € 325,000 if x> € 50,000,000

Which basically gives:

This fee is payable only once per instance, regardless of the number of patents or parts (rule 370.7 of the rules of procedure set from the consultation concerning the rules concerning procedural fees).

Nevertheless, it would seem that the reporting judge fixes the amount of damages at stake by a preliminary decision during the interim proceedings (Rule 22 of the rules of procedure): the amount of tax due can thus be reassessed (?).

Respondent's information

It should be noted that the defendant is informed of the action directly by the division (rule 270 of the rules of procedure) is :

Examination of formal admissibility

As soon as possible, the division will verify that:

  • the patent in question is indeed a patent which has not been the subject of an opt-out (Rule 16.1 of rules of procedure).
  • the formal conditions indicated above (ie up to 6, first point, taxes, supply of documents) are well respected (rule 16.2 of rules of procedure).

If a formal condition mentioned just before has not been met, the division invites the claimant to correct his declaration within 14 days of notification of the irregularity (Rule 16.3 of the rules of procedure).

Otherwise, the action may be declared inadmissible (Rule 16.4 of the rules of procedure).

Appointment of a reporting judge

The judge presides over the formation (which has just been formed for this action, according to rule 17 of rules of procedure) then appoints a reporting judge.

This judge rapporteur may well be the president.

The judge rapporteur, upon appointment, rules on the request for exemption from translation of the documents supplied - see above (Rule 13.2 of the rules of procedure).

Defendant's defense

Preliminary objection

Preliminary objections are framed by Rule 19 of the rules of procedure.

Indeed, it is entirely possible for the defendant to raise preliminary objections: the time limit for doing so is 1 month from the notification of the action (Rule 19.1 of the rules of procedure).

These objections may have as their object:

  • the jurisdiction of the court (including an opt-out);
  • the competence of the division indicated by the applicant;
  • the language of the proceedings.

The defendant is invited as soon as possible to respond to these objections within 14 days of notification. If the claimant's statement is corrected by changing the competent division, the judge-rapporteur refers the case to that division (rule 19.5 of the rules of procedure).

If no preliminary objection is made, this constitutes recognition of the jurisdiction of the court and of the division chosen by the claimant (Rule 19.7 of the rules of procedure).

The decision on any preliminary objections made by the defendant is made as quickly as possible after the plaintiff has had a chance to reply (Rule 20.1 of the rules of procedure).

Preliminary objections can be joined to the main proceedings (Rule 20.1 of the rules of procedure).

An appeal against the decision can be made. A stay of the main proceeding may be granted (Rule 20.2 of the rules of procedure).

Defense in itself

This defense is governed by rules 23, 24 and 25 of the rules of procedure.

The defendant must file his defense (ie defense) within 3 months from the service of the plaintiff's declaration (rule 23 of the rules of procedure).

Defense must contain (rule 24 of the rules of procedure) :

  1. concerning the defendant:
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • the file reference;
  2. concerning the procedure:
    • an indication of a possible preliminary objection filed;
  3. concerning the dispute:
    • the facts on which the defense is based;
    • possible questioning of the facts of the applicant;
    • evidence or an indication of the evidence that could be adduced;
    • arguments relating to the grounds on which the facts presented should not be considered as counterfeiting (including the possible misinterpretation of the claims by the claimant);
    • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
    • a statement as to why the claims for damages claimed by the claimant are unfounded;
    • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if applicable).

Of course, concerning this last point, the documents and testimonies must be provided at the same time (rule 24 together rule 13.2 of rules of procedure).

The reporting judge decides as soon as possible on the request for exemption from translation of the documents provided (rule 24 together rule 13.2 of rules of procedure).

Examination of formal admissibility

The division checks (rule 27.1 of rules of procedure) that points 1 and 2 (ie information concerning the defendant and concerning a possible counterclaim) are well respected.

If this is not the case, the defendant is notified that he has a period of 14 days to correct his reply (rule 27.2 of the rules of procedure).

Otherwise, a default decision may be made (Rule 27.3 of the rules of procedure).

Definition of the procedural calendar

Following the defendant's response, the judge rapporteur, after consulting the parties, fixes the timetable for the intermediate proceedings (ie start and duration of rule 28 of the rules of procedure) and sets a date for the oral proceedings (an alternative date may be provided).

Counterclaim

Counterclaim

During the defense, it is possible to add a counterclaim for the invalidity of the patent (Rule 25.1 of the rules of procedure).

This counterclaim must contain (rule 25.1 of the rules of procedure) :

  • the scope of the requested invalidity;
  • the reasons for the invalidity, supported by an argument;
  • an indication of the facts supporting the argument;
  • evidence or an indication of the evidence that could be adduced;
  • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
  • an indication of the damages sought in the context of the counterclaim, if these exceed a fixed threshold;
  • an indication concerning the skill division as a result of this counterclaim or the assignment of a technical judge;
  • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if this is relevant).

Of course, concerning this last point, documents and testimonies must be provided at the same time (rule 25.1 together rule 13.2 of rules of procedure).

The reporting judge decides as soon as possible on the request for exemption from translation of the documents provided (rule 25.1 together with rule 13.2 of rules of procedure).

If the patent owner is not an applicant, it is also necessary to provide:

  • his name and the place of his establishment (if applicable);
  • the postal and electronic address and the names of the persons authorized to receive the mail (if this information is known).

If the plaintiff was not the sole owner of the patent or was simply not the owner of the patent, the Division sends a copy of the counterclaim to the owner (s) (Rule 25.2 together with Rule 13.2 of the rules of procedure) and they become parties to the proceeding with respect to the counterclaim.

Payment of counterclaim fee

In order for the counterclaim to be valid, it is necessary for the defendant to pay a counterclaim tax (Rule 26 of the rules of procedure).

This counterclaim fee is equal to what the plaintiff paid as procedural fee (Rule 370.4 of the rules of procedure tax table set from the consultation concerning the rules concerning procedural fees) without exceeding € 20,000.

Examination of formal admissibility

The division verifies that the defendant has indeed paid the counterclaim action fee (Rule 27.1 of the rules of procedure).

If this is not the case, the defendant is notified that he has 14 days to pay (rule 27.1 of the rules of procedure).

Otherwise, a default decision may be made (Rule 27.3 of the rules of procedure).

Applicant / owner response

If no counterclaim exists

Within 2 months of notification of the defense, the plaintiff may reply (Rule 29 (b) of the rules of procedure).

If a counterclaim exists

Defense to counterclaim

Within 2 months of notification of the defense and counterclaim, the plaintiff may present a defense (Rule 29 (a) of the rules of procedure).

The defense to counterclaim (rule 29A of rules of procedure) must contain :

  • an indication concerning the facts supporting this defense and the questioning of the facts of the defendant;
  • evidence or an indication of the evidence that could be adduced;
  • the arguments supporting the fact that the counterclaim must be dismissed and an indication concerning each dependent claim individually justifying their validity;
  • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
  • a response to the defendant's choices concerning the skill division as a result of this counterclaim or the assignment of a technical judge;
  • a reply to the defendant's statement as to the amount of the dispute;
  • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if this is relevant).

Amendment of claims

The patent owner may also propose changes to his claims within the same time limits (Rule 29 (a) of the rules of procedure) .

The proposed modification must contain (Rule 30.1 of the rules of procedure) :

  • one or more sets of claims (and, where appropriate, description) in the language of the grant of the patent;
    • if the language of issue is not the language of the proceedings, a translation must also be provided;
    • if the patent has unitary effect, in the language of the defendant's domicile or of the member country where the infringement is alleged (if requested by the defendant);
    • an explanation regarding the items A84 CBE, A123 (2) EPC and A123 (3) EPC, concerning the validity of the claims and concerning the reason for the infringement;
    • an indication concerning the conditional nature of the requests (the number of conditions must not be unreasonable).

Any proposed changes that arise later must be authorized by the court (Rule 30.2 of the rules of procedure).

If another procedure (which could modify the claims) is pending, the court must be informed and the motions presented in this procedure must be provided (Rule 30.3 of the rules of procedure).

Respondent's reaction

If no defense to counterclaim exists

Within 1 month of notification of the plaintiff's reply, the defendant may submit a rejoinder (Rule 29 (c) of the rules of procedure).

This rejoinder can only respond to the elements present in the applicant's response.

If a defense to counterclaim exists

Within 2 months of the defense to the counterclaim, the plaintiff may present (rules 29 (d) and 32.1 of the rules of procedure) :

  • a rejoinder to the applicant's reply;
  • a reply to the defense to counterclaim;
  • if necessary, a defense to the modification of the claims.

Defense in the modification of claims (rules 32.1 and 32.2 of rules of procedure) must contain the reasons why:

  • changes are not acceptable;
  • the patent cannot be maintained with these modifications;
  • if necessary, counterfeiting is no longer relevant.

Applicant's reply

Within 1 month of notification of the defendant's reply, the claimant may submit a rejoinder (Rule 29 (e) of the rules of procedure).

This rejoinder can only respond to the elements present in the defendant's response.

Furthermore, a reply to the defendant's defense concerning the modification of the claims may be presented at the same time (Rules 29 (e) and 32.3 of the rules of procedure) by the owner of the patent.

Final reply of the defendant concerning the modifications

Within 1 month of notification of the patent owner's reply, the defendant may file a rejoinder (Rule 32.3 of the rules of procedure).

This rejoinder can only respond to the elements present in the defendant's response.

Closure of the written procedure

The written procedure is closed (Rule 35a of rules of procedure) at the end of the exchanges described above, by the judge rapporteur, after informing the parties.

The reporting judge recalls the dates fixed for the interim procedure (if applicable) or recalls the fact that no interim procedure will take place (Rule 35b of the rules of procedure).

It is possible, exceptionally, for the judge rapporteur to authorize additional exchanges, and within limited time limits (Rule 36 of rules of procedure).

Case of counterclaim brought before a local division

As we have seen in the context of the jurisdiction of the JUB, when a counterclaim is brought before a local / regional division, the latter may:

As soon as the written procedure is closed, the division must decide this subject (Rule 37.1 of the rules of procedure, by rendering a reasoned decision and having previously heard the parties, if requested).

Thus, depending on the decision:

  • the division appoints a technical judge (if this has not already been done, (Rule 37.3 of the rules of procedure) ;
  • stay the action for infringement (Rule 37.4 of the rules of procedure) or, if not, communicate to the Central Division the dates of the interim and oral proceedings.

If only the counterclaim is returned

If the counterclaim is referred to the central division, the latter treats this reference as a nullity action in a conventional manner, but as if the written procedure were already closed: only the interim procedure must be fixed by the judge rapporteur (Rule 38 of rules of procedure).

Furthermore, the central division will deal with the counterclaim in an accelerated manner (Rule 40 of the rules of procedure) and the judge rapporteur will do his best to fix the date for the oral proceedings for the counterclaim before the date for the oral proceedings for the invalidity action.

If the whole case is transferred

If the whole case is referred to the Central Division, the latter confirms as soon as possible the dates already fixed for the interim proceedings (Rule 39 of rules of procedure) and give the parties indications concerning the rest of the procedure.

In the event of an infringement action brought after a nullity action

It may happen that an action for infringement is brought before a local or regional division while an action for a declaration of invalidity is already pending before the central division (Rule 75.1 of the rules of procedure)

Under this assumption, and after having examined the questions of formal admissibility and after having registered the request, the president of the central division is informed as soon as possible by the local or regional division (rule 75.2 of rules of procedure).

If a counterclaim for invalidity is brought in the proceedings for infringement and if there is identity of the parties with the invalidity action already pending before the central division, and unless the parties decide otherwise, a stay to be decided is pronounced concerning the action the action of nullity before the central division pending a decision concerning the competence of the division with regard to counterfeiting (rule 75.3 of rules of procedure), decision which will take into account the progress of the infringement action (Rule 75.3 of the rules of procedure). Indeed, I remind you that the local / regional division can:

Case of an action for infringement brought after an action for declaration of non-infringement

It may happen that an action for infringement is brought before a local or regional division while an action for declaration of non-infringement is already pending before the central division (Rule 76.1 of the rules of procedure).

Under this assumption, and after having examined the questions of formal admissibility and after having registered the request, the president of the central division is informed as soon as possible by the local or regional division (rule 76.2 of rules of procedure).

If less than 3 months have passed between the introduction of the action for infringement and the action for declaration of non-infringement (Rule 76.3 of the rules of procedure), the central division dealing with the action for declaration of non-infringement stayed proceedings. In the contrary case (ie more than 3 months), the presidents of the divisions agree on the course of the procedures including on the possibility of a stay for the good administration of justice (rule 295 (k) of the rules of procedure).

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