Here, the discussion will be limited essentially to the assessment of damages (d-i) according to civil liability (art. 1240 et seq. C.Civ.) to compensate the owner who does not exploit his title on the market, but who is injured by one or more infringements.

 

Remarks

 

• It seems natural here to leave the concept of “punitive damages” to criminal liability, which its judges assess in the general interest of public order.

 

In sometimes clumsy wording, art. 45 and 13 of TRIPs and Directive 2004/48 have allowed some to say that d-i should be reduced, if the convicted infringer has nevertheless acted “unknowingly”, even if the harm caused to his victim exceeds his profits to be “recovered” or “pre-established damages” [sic].

 

But at least in France, where its legislator wanted to exclude this “attenuating circumstance of good faith infringement”, everyone agrees to try to put the victim back in the state he or she should have been in if the infringement had not existed.

 

• This note does not deal with the questions of the jurisdiction and powers of the judge, for example the French (FR) judge, to assess, according to one or more local laws, the d-i due for infringements committed on several EU territories, in particular those of an unique title such as the EU trademark or design.

 

• The FR texts [L 331-1-3, 521-7, 615-7, 716-4-10 and 722-6 IPC] are identical regardless of the right at issue; however, their purpose differs between them, in particular that of the trademark which does not confer a priori any protection on the product or service it designates.

 

All victims are considered here, even if it is essentially those of patent infringement.

 

As in the past, these texts do not exclude any d-i, provided that it is real, attributable to the infringement, and provided that the judge is convinced of this by the evidence submitted by the victim, who is often unable to bear such a burden.

 

But from now on, it is under the control of the Court of Cassation that our judges must in a motivated decision assess these directions given by these texts.

 

• No doubt it is also necessary here to bear in mind the essential attributes of the exclusive right enforceable against all:

– the right to be the only one to put onto the market,

– the right to prohibit and/or the right to reward.

 

• An important clarification must be made regarding the reality of the negative economic consequences of infringement: if the holder does not exploit his title, he may in fact have it exploited on an industrial or commercial market by a third party whom he has authorised under certain conditions.

 

It is therefore necessary to consider two distinct situations for this victim who does not exploit himself: no licensee exploits or, on the contrary, his licensee exploits the title in question.

 

In this case, the negative economic consequences of the infringement are certainly not the same and it should not be possible to accumulate them. (see below)

 

Compensations or lump sum?

 

• The first paragraphs of all these texts of the IPC (para.1) use the two criteria that have always been known for assessing the compensation due to the injured party: the missed earnings and the loss incurred.

 

A missed earning is a gain that has certainly been missed but has not been actually sustained.

 

This is the case, for example:

 

• the missed earnings that the operator could have made on the marketing of the infringing mass (when to meet those charged by the infringer, he also had to lower his prices thus losing on his own sales part of his profits),

 

• the missed royalty that the infringer on his turnover should have paid to the holder of the unexploited title, if he had fairly asked him for a licence (when the royalty lost by the holder would be the one that his licensee did not actually pay him on the additional turnover that this licensee would have made if he had been able to market the infringing mass). (see also below)

 

Our judges have always taken into consideration the profits (gross, semi gross and/or net) of the infringers, if only to evaluate the rate of this indemnifying royalty, at around a quarter (and sometimes a third) of the profits that a licensee can hope to make from his licence. This consideration could also reinforce the economic reality of the missed earnings that the injured operator claims before them.

 

In both cases, it is indeed an indemnifying royalty, to which should be added, as our Court of Cassation specified, all the other benefits that the licence may have brought to its licensor (development and launch efforts, quality of the objects, knowledge of the market and its needs, distribution and promotion efforts, brand image etc.).

 

• For the first time in 2007 and 2014, it is in their second paragraph (para.2) that these texts institute the lump sum at the request of this same injured party.

 

And these texts expressly refer to the alternative nature of this choice; in other words, choosing one of the branches of this alternative means of course renouncing its other branch (see also below).

 

But parodying this missed indemnifying royalty, the legislator characterises this lump sum as consisting of:

 

• the price of the licence, even if this licence is a posteriori,

 

• increased by a coefficient:
  • this is certainly to compensate for the advantages that an infringer, even if licensed a posteriori, could not have given to the holder,

• • which the CJEU recalls, however, that if the doubling clearly and considerably exceeds the d-i, it could then constitute an abuse of rights prohibited by art. 3 of our Directive [CJEU 25 January 2017, Oławska Telewizja Kablowa / Filmowców Polskich (§ 31) C:2017:36],

• • but for which the victim nevertheless has the burden of proof (without, however, having to disclose especially to an illegitimate competitor, his own profits, or losses, and/or other ways of exploiting his protected subject matter), the FR judge for his part refraining from taking into consideration his personal knowledge (unless it is notorious).

 

It should be noted here that in principle the power to authorise or prohibit the exploitation of a title is within the hands of the owner alone. It is true that the exclusive licensee may, under certain conditions, sue for infringement and, in any event, may require his licensor to be the only one on his market.

 

On the other hand, the non-exclusive licensee has agreed not to be alone on his market; he therefore has no power to prohibit exploitation by a third party; he would not therefore be entitled to charge a price to lift this prohibition.

 

One might therefore wonder whether the price of the authorisation making up this lump sum is due to the victim, when it does not have this right to prohibit, especially if, apart from the infringer, it is not the only one occupying the market.

 

• Let us now consider the hypothesis of the holder who, for example, acknowledges having given a free licence to his subsidiaries.

 

In these conditions, the infringement does not seem to have caused him any financial damage, nor does it seem to have caused him to lose a royalty, which his licensees would not have paid him either if they had also been able to market the infringing mass.

 

However, nothing prevents these licensees from intervening in the proceedings brought by the holder to claim compensation for their own d-i.

 

In this respect, at least in patent matters, if a writing is required under art. L 613-8 IPC, a written confirmation, including for the past of these licences, even if they are not recorded at Inpi (see, since 2008 at least, art. L 613-9 § 3 IPC) and even during the course of proceedings (according to the latest Paris case law), allows them to intervene to claim their own d-i.

 

In this case, on the earnings missed by these licensees on the infringing mass, has the licensor not nevertheless lost some counterpart, notably by virtue of the agreed exploitation of their businesses?

 

• This is the regime in which our IPC now guides our judges in setting the d-i in all its para.1.

 

Moreover, is it not beyond legal theories that the economic reality must impose itself in this evaluation of the d-i really caused by counterfeiting?

 

Let us reason for a moment by the absurd, which, however, as we shall see, is not far from judicial reality.

 

Indeed, the Parisian judge thought he could on some occasions grant, if only as a provision:

 

• a royalty (estimated at around 20% of the infringing turnover) to be paid to the owner by the infringer

 

• and missed earnings (estimated at around 40% of the same infringing turnover) to be also paid to the licensee by the same infringer.

 

At 60%, this amounts to a real confiscation, in surplus of the turnover!

 

It is undoubtedly disproportionate and contrary to the opinion of our Court of Cassation, which has already recalled that the confiscation of incomes should be limited to the actual d-i suffered by the injured author.

 

Such an accumulation of para.1 and 2 seems illegitimate on the same turnover of the infringer. Professionals point out that the royalty to be paid to the licensor, should in that case come from this 40% of missed earnings.

 

And conversely if the infringer has paid the owner the lump sum under para.2, which, it should be remembered, consists of an overrun of the royalties or fees on his infringing turnover, he thus becomes a posteriori authorised by the owner. He would therefore no longer have to pay any further sums in respect of the d-i provided for in para.1.

 

Conclusions

• It should be deduced from these observations that the lump sum higher than the price of the authorisation (royalties or fees owed) that our legislator has instituted in all of its para.2 only as an “alternative”, should be requested by each of the injured parties, failing which the judge will remain obliged to only apply the regime of the d-i of its para.1.

 

This lump sum could only be granted if no other negative or economic consequence of para.1 had been requested, with the exception of course of the compensation for moral prejudice which the legislator wanted to add to this lump sum in para.2.

Such a solution seems to be accepted by all, when the owner exploiting the market alone has preferred not to disclose his lost profits and/or missed earnings, or his own intellectual, material, and promotional efforts under para.1, in order to request “as an alternative” this lump sum under para.2, subject of course to his moral prejudice.

 

• Thus, the owner whose title is not exploited by anyone, is entitled to obtain a missed indemnifying royalty from para.1 on the infringing turnover. It should be noted here that this will generally be assessed in much the same way as the price of the authorisation in para.2.

 

But if the title is exploited by its licensee, the owner should be able to claim, not a royalty on the infringer’s turnover, but all the benefits he should have received from his licensee if the latter had been able to market this infringement.

 

• Consequently, the owners and their licensees should agree on the way they are to be compensated by the infringers, before one of them requests from a judge the payment of the lump sum instituted in para.2.

 

Thierry Mollet-Viéville

attorney at Law – DTMV –

former president of Aippi and Afppi

1/ The Paris Convention (PC, art. 4 A to I) created and instituted, in 1883, the principle of the right of priority for the benefit of the applicant of his first application for an industrial property title (patent, trademark and design).

The Washington Treaty (PCT, Art. 8) and the European Patent Convention (EPC, Arts. 87-89) also provided for this in 1970 and 1973, for the patent in their territories.

 

a. Like the patent itself – at least according to French law – this right of priority constitutes a movable intangible property right enforceable against all.

It is therefore a negotiable asset; and in 1911, the PC confirmed its extension to the successor in title of the applicant.

Under what conditions may it then be exercised and negotiated?

Between the applicant and its successor in title, it can only be through the law of contracts which enshrines the common will of the parties.

This contract has at the very least an international vocation; it is therefore in the best interest of all to be subject to and assessed by one and the same law, and this for the whole world.

As the PC does not address this issue, this law should naturally be the law of the country where the right of priority arises.

Failing to agree otherwise, it would be appropriate, as usual, to also take into account the nationality of the applicant and of his successor in title, their domicile or establishment, the place of execution, the language of the contract, etc.

It is in this sense that our French judges apply American law to assess the transfer of the right to file abroad, as well as the transfer of the right of priority in the agreement subject to American law, when, for example, it was concluded in the United States between the American inventor who filed his first application in his country, and his assignee, who is also American, and who are both based in this same country.

On the other hand, several countries and certain regions provide this contractual regime with a legal regime that imposes itself and supplants it, for example, social labour law, which would also be part of the international public order.

This is indeed what Art. 60 (1) of the EPC provides for in order to impose, when the invention has been made by an employee, a single applicable law (that of the State in which the employee is mainly employed, or failing that, that of the State in which the employer has the place of business to which the employee is attached).

 

b. But let us nevertheless remember two things:

• The right to a patent and the right to a priority are quite distinct rights, even if one may depend on the other.

The right to a patent generally belongs to the inventor, whereas priority exists only within the hands of the first applicant and expires after a short time.

While the inventor naturally has the right to file a patent application, the ordering of his invention may require him to transfer his right to a patent to the person who ordered the invention and who becomes his legitimate “successor in title”.

But for all that, the regime of hired inventors, which comes under this right to the patent, cannot be automatically transposed for the right to the priority, which until now has not existed on the inventor’s head, even if he is the first one.

• On the other hand, the assignment of a (national or regional) patent application does not necessarily convey the right to file new applications outside its territory.

 

2/         In fact, born out of the PC, this priority right is actually intended to be exercised abroad, where the subsequent application will effectively benefit from its priority date.

Under these conditions, the applicant’s successor in title, the assignee of the priority, will have to respect the conditions under which these two conventions, one multilateral (PCT) and the other regional (EPC), recognise and implement this right of priority; in the same way as the EPC countries recognise their obligation to protect, according to their own methods of exercise, the non-European inventions of individuals from PC countries, in the same way as for their own nationals.

It is in this respect that one can refer not only to the law of origin, but also to the law of the country where protection is sought:

• not to violate the public international order of the recipient country, particularly in terms of social labour law,
• properly complete the local formalities for claiming this right of priority (copy, translation, deadlines, fees, etc.).

In Europe, for the assignment of the European patent application, Art. 72 (EPC) requires a written document signed by the contracting parties, which effectively facilitates evidence, if it becomes necessary.

However, this writing requirement is not expressly sanctioned in this international treaty by the nullity of this assignment, contrary to French law (L.613-8 § 5 CPI) according to its principle of “no nullity without text”.

But neither this formal requirement nor the other property rights provided for in Articles 71, 73 and 74 (EPC) are provided for the priority right and its successor, especially when the patent has been definitively granted.

Therefore, the Paris Court has already been able to assess the assignment of the right of priority in particular under agreements concluded under US law between US employees and their employer, all of whom are established in the same country.

In view of affidavits from US lawyers, this Court has even admitted that the transfer of the right of priority could indeed be implicit, provided that it is certain; this would be the case when it results from obligations to do, even if they were concluded before the priority arose for the inventors who are going to be the first applicants in the USA.

Of course, the right of priority is ephemeral. Nevertheless, it seems wise to respect the fundamental principle of the autonomy of will of the parties, who may all agree to transfer and acquire an emerging right, even if it means mutually confirming such a transfer, even when it has expired.

In the end, common sense would seem to dictate that :

• to grant foreign inventors who are individuals from the PC countries a legal title like its own nationals,
• but to apply a single law to govern and assess a contract agreed upon by several persons on one of the attributes of the right conferred by the filing of the first application, and this for the whole world.

3/         There remains the delicate question of the authority’s competence and power to assess the substance (including the content) and form (including the method of evidencing) of this assignment, the sanction for which is in principle only the loss of the priority date, but not the nullity of its title.

 

a. French judges have fortunately and for a long time considered themselves competent to rule on these assignments of priority, even if it means applying the law of origin, convinced of the reality, even if only implicit, of the parties’ willingness to agree on the effective transfer between them – not only of the right to file abroad – but also of the right to the priority, especially during the time of its existence as provided for by our international conventions.

 

b. Since the lack of priority is not a ground for opposition, the EPO is not competent to rule on the content and scope of the agreement invoked for the transfer of this right, one of the attributes of this intangible property which is enforceable against all, even after the final grant of the patent.

However, the offices are generally competent to rule on the lack of novelty or inventive step of a patent not yet definitively granted.

In order to do so, the office must naturally know the date on which the state of the art opposable to the application ends in order to know whether an intermediate document can destroy its patentability.

But does this mean that an Office has the power to go beyond a mere formal check of the regularity of the claim in its territory?

One could imagine following the rule accepted before several offices, according to which the applicant is deemed to be entitled to exercise the right invoked before it [see for example Art. L.611-6 French IPC and 60 (3) EPC].

This will not be the case if it is clear and obvious that the applicant is not entitled to the benefit of a priority.

This should be quite clear when the PCT and EPC applicant is not the same as the inventor filing the first application in the US.

The non-existence of the transfer of the priority invoked appears all the more manifest and obvious when the company filing its PCT and EPC applications has itself declared to the EPO that no assignment or work contract existed with its employee filing in the USA.

In these circumstances, if there is relevant prior art between this US priority and the European filing, it would be interesting, if only from a practical point of view and in the interests of all concerned, to know the opinion of such an office as to the exact date from which the application in Europe may actually benefit.

Then, if the office decides to revoke the grant of such a patent, in particular for lack of novelty in view of the intermediate prior art, judicial review should still be available to the victim of this revocation [see Art. 32 and 41.4 of TRIPS].

As far as the INPI is concerned, the Paris Court should be able to hear such an appeal, this time judicial, in order to fully assess the substance and form of even a foreign assignment.

What about the EPO, whose Enlarged Board of Appeal will soon give its opinion?

What about the UPC, where the failure to transfer priority, which leads to a lack of patentability, would be a defence falling within its “exclusive” competence [see Article 32-1. a) of the Agreement] ?

One could imagine, according to the equitable principle that the judge for the main action is also the judge for the defence exception, that the UPC should take up this defence, even if it means simply dismissing the infringement plaintiff, without granting an “erga omnes” effect or « res judicata » to its assessment of the transfer of the priority right.

Finally, the decision of the first court hearing this assignment should, if not be binding, at least be retained and taken into consideration by all the other courts.

This is the same issue that arises about a Frand licence.

 

4/   This is where private international law, as known in particular in the Vienna and Rome Conventions for all contracts, should be retained with common sense, if only because this private international law is accepted and practised by most countries at least in Europe.

to be continued …

 

In the case of the Economic and Social Unit, the social pole of the litigation of professional elections of the judicial court is considered as competent. But on what basis? In an article published in the JCPE, Lin Nin and Sarah Larbi review the notion of UES and its functioning.

You can read their article (in French) here

Publication of the « Panorama de droit pharmaceutique 2021 » of the Revue Générale de droit Médical. Jean-Baptiste Leca discusses the access to data obtained from pharmacological and clinical trials in light of the French Trade Secret Law and recent CJEU case law.

Read the article here

Does the filing of an industrial model outside the European Union (EU) confer a priority right to file such a model in the EU?

The answer would seem obvious.

However, art. 41 of Regulation 6/2002 of 12 December 2001 on designs and models now in the EU does not! This art. 41 only refers to the design, the model and … oh surprise … the “utility model”, but not to the industrial model to give rise to such a priority right.

Isn’t this a clerical error that should be corrected? And as soon as possible?

Everyone knows the essential difference between these two model regimes:

– the industrial model, which, like the “patent design”, tends to protect the visual aspect (or the ornamental forms) of its object,

– on the contrary, the utility model which, like the “Gebrauchsmuster”, tends to protect its technical functions (or its useful functional forms), regardless of its ornamental aspect.

This Council Regulation of 12 December 2001 on Community designs seems to recognize this:

– since it associates the industrial model with the Hague and Locarno Arrangements, in its title and in art. 25, 37, 40 and 106,

– while it brings the utility model closer to patents for invention in its recital (31) and art. 96.

The same is true of Directive 98/71 of 13 October 1998 in its recital (7) and art. 16, without mentioning an “industrial model”, nor the foreign title which would give a priority right to filing in the EU.

This is also what we are reminded of in our Paris Convention of 1883, its articles 1 2) and 4), 4 A.- 1), 4 C 1), 4 I, 4bis 1), 4ter, 5 D, 5bis 2), 5quater, 5quinquies, 11 1), 12 1) and 2):

• patent, inventor’s certificate or utility model on the one hand,
• and design or industrial model on the other.

Why, then, does the Council Regulation of 12 December 2001 on Community designs suddenly mention utility models in its art. 41 to create this priority right, while omitting industrial designs?

It is true that the Paris Convention allows, in its art. 4 E 1) and 2), the filing of a utility model to grant a priority right for filing an industrial model outside its borders. In this case, the time limit is six months and not twelve as in the case of patents.

However, the famous Professor Bodenhausen immediately points out in his book (pp. 51-52) published in 1969 by the then BIRPI, that it is rare for national (or regional) legislation to authorize an “overlap”, i.e., a single common protection for the same industrial item in its ornamental aspects and in its technical novelty.

This is not the regime we have in Europe.

The future will tell us whether these gymnastic or sports equipment are validly protected by the designs registered by the EUIPO, which taking into account the wording of this Article 41 of the RDMC, admitted in its decisions of October 31, 2018 and June 13, 2019 that could arise from a PCT application (which effectively includes utility models), a priority to file a model in the EU.

Since this solution was not criticized either by the applicant or by the EUIPO before it, the Tribunal of the EU [TUE] had to admit it in its decision of April 14, 2021 [T-579/19], but extended its duration from six to twelve months. This decision is now under appeal (declared admissible).

And if some were to think that a PCT application could give rise to a priority right to file also a trademark application, on the pretext that its sign has been described therein to designate its goods or services … would it be the “same subject matter”, as required by our secular convention, in particular in its art. 4 C 4)?

Is this not what the Council Regulation of 12 December 2001 on Community designs wanted to take up in its art. 41 1. according to its expression “for the same design or model or for the same utility model”?

Is this one of the reasons why the EUIPO has announced the potential introduction of a utility model in the EU?

To be continued …

Thierry Mollet-Viéville, avocat à la Cour – DTMV, former president of AIPPI

The rapport “Le Data Altruisme : Une initiative Européenne, les données au service de l’intérêt général” (in French) was submitted to France Secretary of State for the Digital Transition and Electronic Communications, Cédric O, on Thursday 24th of February 2022. Grimaud Valat was the rapporteur of this project.

Read the report here : https://www.human-technology-foundation.org/fr-news/rapport-altruisme-de-la-donnee

 

Revue Francophone de la Propriété Intellectuelle

-> Read the article here

Article published on ActuEL-RH and ActuEL-HSE

Read the article here and here

On the 28th of September 2020, Thierry Mollet-Viéville took part in an AAPI session on the issue of proportionality in Intellectual Property. Today, he publishes his notes.

Presentation by Thierry Mollet-Viéville at the AAPI

Thank you President,

Dear Friends,

Like Mr. Charrière-Bournazel, Chief of the Bar, I am somewhat perplexed by the issue of proportionality in Intellectual Property.

Where are we going?

In the right direction, I hope. I must say that the case law I have seen in recent times does raise a number of questions.

Like many of us, my hesitations stem from the very novelty of this notion of proportionality, which is quite new in Intellectual Property.

Indeed, none of our international conventions mention proportionality—not the 1883 Paris Convention on Industrial Property, the Berne and Geneva Conventions on Copyright, or the more recent 1961 Rome Convention for Artists and Performers. Their main focus is on a minimum level of protection for creations.

As our Chief of the Bar said, this notion of proportionality, or fairness and balance, only made its first appearance in the European conventions: the ECHR in 1950, and the EU Charter of Fundamental Rights in 2000, which refers to the protection of Intellectual Property as one of its fundamental principles and, more generally, to the issue of proportionality, among other circumstances to be taken into account.

I would like to add one more notion to those mentioned by our Chief the of the Bar, namely “abuse of rights,” which is also prohibited by the 2000 Charter.

I would first like to make a few comments of a general nature:

It is difficult, especially when it comes to the question of remedies, to deal in the same way and all at once—as our legislators would have us do—with all areas of intellectual property. In my opinion, there are four, according to both a vertical and a horizontal division.

Following a vertical division, intellectual property is split into two main areas:

• Literary and Artistic Property which, for arbitrary works, particularly deals with each individual’s personality and culture, and
• Industrial Property, including patents, trademarks, and designs, which, for creations of a technical, functional and/or simply practical nature, deals with fundamental subjects such as health, biology, telecommunications, and now even artificial intelligence.

Following a horizontal division, whether in matters of copyright, design and trademark rights, and even patent rights, different kinds of infringement present highly diverse levels of gravity:

• piracy, which consists in passing off a fake as the real thing, must be promptly and strictly punished, particularly by the criminal courts;
• other infringements consist merely in the infringement of a right, and the question of whether or not such a right has been infringed often requires a much more sophisticated assessment.

In general, the civil courts will sentence an infringer even if its bad faith has not been demonstrated, and even in such a case, it seems fair and proportionate to put an end to the infringement and that the victim should be fully compensated for all its damages, per our general principles of civil liability.

The 1994 TRIPs Agreement and the 2004 Directive first require that the States protect intellectual property, and to provide “effective and dissuasive” measures for this purpose.

This comes up four times in the TRIPs Agreement [art. 41.1 and 2, 42, and 50], and only once in the Directive [art. 3].

Still, according to both instruments, such effective and dissuasive measures must be proportionate. The Directive mentions this four times in its recitals (22, 24, 25, and 31) and four times in its articles [3, 10, 12, and 14], whereas the TRIPs Agreement refers to it only once [art. 46].

However, it should be remembered that the purpose of these international instruments is not to harmonize intellectual property on exactly the same level in all countries worldwide, particularly in Europe. For a long time, it has been agreed that such conventions set a minimum threshold and allow their Members to institute measures in their positive law that are more favorable to rights holders, which is beneficial for both nationals and foreign holders.

This is what the TRIPs Agreement [art. 1.1] and the Directive (recital 21) [art. 2.1 and 16] clearly guarantee.

The Directive even provides that such more favorable measures should be offered to other EU states that do not yet have them, as the Paris Convention still allows today, without imposing a maximum threshold or even uniform harmonization for all countries.

I will return to this point later in discussing the procedure of “saisie-contrefaçon.”

There is one more question I would like to raise: what should be proportionate?

Is it the law intended by the legislator, or its application by the courts?

Don’t most legislators feel that they fulfill their duties by introducing rules that are in themselves fair and just?

Or is it up to the courts, in applying the law, to consistently seek to achieve and justify proportionality in the measures pronounced?

Of course, as a defender, I often tend to ask the court to take into consideration my client’s situation vis-à-vis its competitors or its partners.

Is the refusal to grant a “saisie-contrefaçon” in France disproportionate?

For more than a century, France has allowed infringement victims to obtain from a judge an order to perform a seizure in any location.

Given the accusatory system in countries of Latin culture such as France, is this not a more favorable measure for rights holders who can thus go beyond the simple option only contemplated by Article 7 of the Directive whereby the victim must provide indicative evidence persuasive enough for the judge to authorize such a seizure or, otherwise, to deny it?

Is this not a simple collection of evidence that the victim is required to bring the judge, failing which its claims will be dismissed, ultimately depriving the victim of access to justice? Moreover, the evidence must prove three facts: the copying or imitating object, the prohibited act, and lastly the person responsible.

In other words, should not the proportionality that these international instruments impose for measures like “saisie-contrefaçon” be assessed not only in light of the French judicial system and within the general framework of its positive law as a whole, but also in comparison with the systems available in the other countries covered by these instruments?

In these conditions and given France’s accusatory system, is not “saisie-contrefaçon”—which is always undertaken at the risk of the rights holder—by nature proportionate, particularly in Europe, since the victim:

• does not have access to the discovery and disclosure procedures available in Great Britain, or to the German rule whereby the parties have an obligation to expose the truth of the facts known to them (§ 178 ZPO)
• would see its claims dismissed by the judge without the defendant’s even having to challenge the alleged facts since it need only argue that the plaintiff has not provided sufficient proof, as is its burden?

Indeed, in defense in France, even when the infringer knows the truth about the facts alleged by the plaintiff, it is not required to acknowledge or admit them.

Consequently, would it be proportionate to deny a patentee in France the right to perform a seizure on the grounds that, in the absence of indicative evidence of an infringement, the judge is not convinced of its existence? Would this not be tantamount to considering that the petitioner’s statements are not true or sincere?

This means that a patentee would be incapable of providing a French judge with even indicative evidence of the implementation of its process in the facilities of its unfair competitor. Therefore, it would never be able to enforce its rights in France…

Likewise, the rights holder would be obliged to deal with several retailers on the market in order to be able to provide the judge with convincing indicative proof of the origin of the infringing products, even though its commercial network has already informed it of the source of the infringement and it would be more effective, expedient, and cheap to take action directly against this sole offender.

To enlighten the audience, I would like to refer to the preparatory work of the EU Parliament in the 2000s during the drafting of the 2004 Directive.

At the time, its members were not so much seeking to come to a single harmonized solution to enforce intellectual property rights in all EU countries, but rather to compile the advantages available in some States so that others could also benefit from them.

Thus, the propositions included, for example, the recall of infringing goods from outside The Netherlands, the profits generated thanks to the infringement outside Germany, the right of information outside the UK, the procedure of “saisie-contrefaçon” outside France, etc.

To which the British and Germans then replied that they did not need this French-style seizure [or that their courts could refuse it] since, in their countries, thanks to English discovery and disclosure, it is possible to ascertain all the facts during the proceedings and, before the German court, the parties are obliged to state the facts without deceit, which means that, in most cases, a “raid” on a competitor—a rather intrusive step even if they are at fault—would be useless and inappropriate.

It is true that the most recent French case law shows that our national legislators have not displayed any clear intent to transpose into French law the potential obligation to provide some indicative evidence of infringement as referred to in Article 7 of the 2004 Directive.

However, don’t our judges still impose these same requirements under the guise of proportionality?

In this respect, to authorize a “saisie-contrefaçon,” the requirement of complete diligence and transparency on the part of the petitioner is fully warranted.

Therefore, the judge petitioned to authorize a seizure must assess whether parallel proceedings or decisions may influence his decision. A reading of certain petitions clearly shows that the rights holder is not seeking to collect evidence of infringement, but to discover secret, confidential, or even simply personal information about a competitor which, additionally, bears no relation to the infringement.

However, as a matter of principle, shouldn’t “saisie-contrefaçon” always be authorized in order to collect, even by force, the triple evidence of:

• the object held to be infringing,
• the act prohibited by law,
• and the person responsible for it?

Of course, it is important and even necessary for the judge to remain free to refuse to authorize a “saisie-contrefaçon,” not only when the petitioner’s ownership appears uncertain (whereas the Offices generally presume that the applicant’s statements are true and sincere, even though it is only the apparent owner), but also when the judge senses that the circumstances claimed by the petitioner do not seem legitimate, this time based on an ad hoc reasoning that can be challenged before the higher courts.

And common sense demands that anything relating to the alleged infringement should never be hidden from the court, which is precisely what the German and British judicial systems confirm.

Therefore, the seizure need not be authorized or carried out on items unrelated to the infringement, but everything that does relate to the infringement must be seized, even when the items are secret, confidential, or personal.

Indeed, in the latter case, the seized party can simply claim just cause and have an expert appointed by the judge or the parties select such sensitive items having been placed in a sealed envelope within the context of a confidentiality club—a system we have known for decades.

Then, if the judge decides that an infringement has been committed, this selection of seized items kept in a sealed envelope can be pared down further, leaving only those that are of real interest. For example, this would apply to the names of the clients, the gross and net margins of the seized party, etc.

With globalization, we know that infringement is rarely domestic, but more often cross-border.

In this respect, in the context of judicial cooperation, at least within the EU, it seems essential to be able to bring evidence collected in France before a foreign court, and vice-versa from abroad before a French court.

Obviously, such evidence can only be used to defend the seizing party’s intellectual property rights in the EU and worldwide, and there is no question that it cannot be revealed to a journalist or another competitor!

Even a US court is ready to allow items from a discovery or even a protective order to be used before a foreign court, including in France.

Is an injunction always proportionate?

Once the judge considers that an infringement has been committed, is it always required to prohibit it for the future?

Until the 1970s, particularly in patent matters, injunctions only came into effect with the decision of the Court of Appeal.

Then with French procedural reform, the Courts of First Instance all consistently included provisional enforcement in their injunctions, notwithstanding appeal. Because of this, some people considered that litigants no longer truly had the right to benefit from an appeal.

In 1984, with the lengthening of legal proceedings, an immediate preliminary injunction was instituted. At the time, it was subject to five preconditions:

• the patent had to be exploited,
• the damage for the patentee would not easily be compensated by a financial award,
• the action on the merits had to be serious,
• and filed promptly,
• before a judge in the form of summary proceedings.

In other words, a judge would examine the merits of the case in the short time span of summary proceedings.

Since then, these five conditions have been removed and it is important to keep this in mind.

In particular, the French legislator has abolished the requirement that it should be difficult to compensate the patentee’s damage. Still, doesn’t proportionality recreate this condition today?
Is this not the case when the judge ruling on the preliminary injunction considers that the infringement is unlikely on the grounds that the patent’s validity is seriously challenged [often in a lengthy brief filed the day before the trial by the defendant who never challenged it before]?

Is there not an inconsistency here between our current case law applying the 2004 Directive, on the one hand, and our French Codes of Civil Procedure and Intellectual Property, on the other. Indeed, the latter literally requires only certainty as to ownership and belief in the likelihood of an infringement, whereas for the sake of proportionality, the judge ruling on the preliminary injunction may consider, despite the speediness of summary proceedings, that it is necessary to reexamine once again the validity of a patent even on the basis of inventive step, although the patent had already been examined before being granted?

This is precisely the criticism expressed by the Paris Court of Appeal in the 2010s, particularly in a decision handed down in a case where the appeal before the Supreme Court was unilaterally withdrawn by the generic drug company that had been enjoined.

In assessing the proportionality of the prohibition to be ordered or denied, should we not return to the essential purpose of titles such as patents and trademarks?

Is it a right to prohibit or simply a right to a reward?

Already in the 1970s, the Court of Justice in Europe considered that the essential purpose of a patent or a trademark right was to allow its holder to be the only one to market its patented or trademarked goods.

In these conditions, if someone does not exploit its title, does it have the right to exclude a company from a market it doesn’t occupy?

This is why the legislator now provides that there are no grounds for an injunction when the trademark owner has not used the trademark in the relevant market.

Shouldn’t the same apply when the patent has not been exploited, even though the patent owner’s rights cannot be lapsed?

• I would like to make a digression here to remind you that, already in the 1970s, the Brussels Commission considered that if the patentee had agreed to grant several licenses, in other words, if it had agreed to break up its market monopoly, it could then be discriminatory to deny the grant of an additional license to a newcomer.
• Today, there is a lot of talk about so-called “essential” patents, which must be implemented in order to comply with certain standards, for example, those of ETSI for mobile phones (2G, 3G, 4G, and 5G).

How can patent portfolio owners in this field consider they hold an industrial monopoly that the courts should protect when, having agreed to break it up for the benefit of several implementers on the same market, they only receive royalties from the exploitation of their patent rights? In such a case, having lost no industrial profits, should not their rights be reduced solely to obtaining such financial rewards?

The issue at stake here seems to me to be all the more important as the economic situation is entirely different today from what it was at the end of the 20^th century, when the patentees themselves manufactured or distributed their inventions. This is why they freely exchanged free cross-licenses of all their patents in these various standards committees…

But today, patent portfolios are no longer held by industrial companies or distributors, but by investors who are often more concerned with the value of their capital.

The questions I have chosen to raise here are all the more delicate because several professionals have officially acknowledged that only one-third of essential patents (declared as such by their holders, in effect unilaterally and without control) are actually relevant.

As is often the case with EPO-granted patents, one-third of such essential patents could be voided by a court [especially if the claims were drafted after the adoption of standards to which the owner may have contributed].

Another third of these essential patents covers features that are not always mandatory in the standards but are only recommended or optional.

Therefore, the fact that a company declares its product to be compatible with the standards does not evidence the materiality of the infringement since, according to these same statistics, there is a two in three chance that the product is not infringing.

Finally, I have noted that, particularly before ETSI, the rights holder “irrevocably undertakes to grant an irrevocable license—known as Frand—to any company that requests it.”

Is this not a waiver of patent infringement action, or in any event of the right to request (at least initially) an immediate provisional injunction to stop manufacturing and/or marketing a product that is generally very complex, on the pretext that a technical detail is allegedly compatible with the standard, although it is sometimes optional or only recommended?

Instead, isn’t it that essential patentee has a pre-contractual action or an action for abusive termination of negotiations, with the exploitation of  its rights being limited to cash receipts?

Here, I consider that an injunction would be a disproportionate measure, as it may lead to an imbalance in the parties’ situations, giving the rights holder an unfair advantage to impose, under threat of an injunction, a more expensive or more restrictive license inconsistent with good practices [when, in fact, the litigation generally only bears on a few patents for details that are part of complex products and cover only certain countries, and Frand licenses are worldwide and cover a wide range of patents of which, as we mentioned above, only one-third may be relevant].

This is also what the Paris Court of Appeal held when, in setting the amount of the compensatory royalty due for past infringements, it decided not to consider the fee rate set forth in the license that the sentenced infringer was given to sign the day after the decision ordering the injunction, so as to be allowed to continue to supply its main client.

Conclusion

My time is up, which means I cannot go into more detail on this issue of proportionate damages to compensate for losses suffered by infringement victims, particularly the difference between offenders in good faith or bad faith, or the generous idea suggested by my professor Jean Carbonnier, which is the special case “of a rich victim and a poor perpetrator…”

Indeed, the case law of recent years shows that it is necessary to maintain these principles of balance and proportionality. However, as counsel to businesses, I must admit that this still does not make court decisions more predictable.

Thank you President.

Thierry Mollet-Viéville

Attorney-at-Law