a) A technical invention may be protected by a patent (except for software inventions, which are protected by copyright), subject to due filing and compliance with patentability requirements. The main requirements are novelty, inventive step and industrial application.

Patent applications can be filed at a French, European or international level. The Institut National de la Propriété Industrielle (INPI) is the competent Patent Office for the filing of French patents, while European patents may be filed at the European Patent Office (EPO). The patent grant procedure includes a search report of the patentability requirements. Since July 1st, 2020, it is possible to file a “provisional patent application” before INPI – this allows for a swift, low-cost filing for the purpose of recording a priority date which will be taken into account if, within the following 12 months, the applicant complies with the requirements for a standard patent application.

The unitary patent system, which entered into force on June 1st, 2023, allows the protection of an invention across up to twenty-five EU Member States by filing a single application before the EPO.

Another source of legal protection for inventions is utility certificates, which are less expensive and do not require a search report in order to be granted.

Certain products requiring a marketing authorization (MA), such as human or veterinary medicines or plant protection products, may be protected by a supplementary protection certificate (SPC). Such protection extends the duration of protection of a patent having an effect in France, to compensate the long period than is often required to obtain a MA.

Specific provisions protect trade secrets since the implementation into French law in 2018 of the European Union Trade Secrets Directive of 8 June 2016. Confidential information and/or know-how may also be protected via contract law and tort law.

b) Trademark and collective/certification mark applications can be filed at a French, European or international level. French trademarks may be filed at the INPI, while European Union (EU) trademarks may be filed at the European Union Intellectual Property Office (EUIPO).

Rights may be acquired on trade names and store signs by virtue of public use.

Rights may be acquired on company names also by virtue of public use following their registration at the Trade and Companies Register.

Geographical indications, including protected designations of origin (PDO), protected geographical indications (PGI) and traditional speciality guaranteed (TSG) can also be protected.

Tort law can also be a cause of action to protect brands. In particular, unfair competition prohibits misleading practices and behaviour generating confusion regarding the origin of goods and services. Parasitism, a particular form of unfair competition, is the action of taking advantage of a third party’s economic value stemming from their investments and is also prohibited by tort law.

Contract law, in particular the provisions dealing with good faith, can be a tool to protect brands. Parties to a contract can also stipulate specific clauses regarding the protection of brands.

In addition, brands can be protected by consumer law provisions prohibiting consumer deception.

c) Creations, technology and proprietary interests can be protected by:

• Copyright law, which protects creations that qualify as original works.
• Neighbouring rights (to copyright) which target specific holders such as performers, audio and video producers, database producers and press publishers.
• Design rights, which protect designs that are new and have an individual character. Design applications can be filed at a French, European (they are then named “Community designs”) or international level.
• Plant variety rights, which protect new varieties and species.
• Semiconductor topography rights, which protect semiconductors that are the result of their creator’s own intellectual effort and are not common.
• Tort law, and especially unfair competition and parasitism.
• Contract law (good faith provisions) as well as contractual terms.
• Consumer law provisions, which prohibit consumer deception.

Patents: A patent can be protected for a maximal period of twenty years as of the filing date, provided annuities are paid. The mechanism of priority rights, as well as the combination of French and European patents, can result in an almost one-year extension of the patent term.

Utility certificates: A utility certificate creates a protection for a maximal period of ten years as of the filing date, provided annuities are paid. A utility certificate can be transformed into a patent (and thus acquire the duration of protection of a patent) within a period of eighteen months from the filing or from the priority date, and in any event before the publication of its application.

Supplementary protection certificates (SPC): SPCs serve as an extension to a patent right and can extend a patent right for the shortest period between either five years from the date of the patent’s expiration or fifteen years from the first marketing authorisation.

Trade secrets: There is no legal term of protection for trade secrets, which remain protected so long as the information remains secret. In practice however, contractual provisions often provide for a five-year protection.

Trademarks, collective marks, and certification marks are protected in France (and in the EU) for a ten-year period as of their filing date. Registration can be indefinitely renewed. However, the trademark owner should bear in mind that following the “grace period” of five years after registration, he is subject to an obligation of use. French and EU law provide that if a trademark is not used for a continuous period of five years, that trademark can be revoked.

Designations of origin, geographical indications and traditional speciality guaranteed are granted for an indefinite term so long as the product or service for which these protections are granted fulfil the conditions of protection.

Copyright protection distinguishes between economic rights and moral rights: the former are protected for seventy-years following the author’s death or the first publication (depending on the classification of the work) while the latter are perpetual. Neighbouring rights generate different periods of protection ranging between two to fifty years.

Design rights create a five-year protection from the filing date, which can be extended up to a maximum of twenty-five-years. A protection also exists for unregistered Community designs which are protected for a three-year period from the date on which the design was made available to the public within the EU territory.

Plant varieties can be protected for a twenty-five-year term except forest, fruit or ornamental trees, wine grapes, grass and perennial legumes fodders, potatoes, and endogamous lines used for the production of hybrid varieties which can be protected for thirty years.

A domain name is protected for a one-year term which can be extended indefinitely.

Trade names, store signs and company names are not subject to a legal term of protection.

Owners of the above-mentioned rights are generally subject to a five-year statute of limitation to raise claims on these grounds. The same five-year statute of limitation applies in French law to contractual and unfair competition claims.

Patents, utility certificates: The principle is that the inventor of the invention protected by a patent right is the first owner. However, an exception is made in favour of the employer when the invention is created during the inventor’s employment if the inventor was commissioned by his/her employer or was paid a fair price.

SPCs: The principle is that the first applicant is the first owner.

Trade secrets: The holder of the secret information may claim trade secret protection.

Trademarks, collective marks, certification marks, designations of origin, geographical indications, traditional speciality guaranteed, designer rights, semiconductor topography rights, and domain names: The applicant is the first owner.

Copyright and related rights: The principle is that the author of the work is the first owner. By derogation from this principle, a company may be vested ab initio in the copyright over a work qualifying as a “collective work”. A special regime applies to software, under which the copyright can be held by the author’s employer provided the software was created in the course of his/her employment.

Plant varieties: The first owner is the plant’s breeder. Here again, a special rule applies to plant varieties created in the course of employment under commission, according to which the employer is the owner.

Unfair competition / parasitism: Anyone who justifies of an interest is entitled to act on these grounds.

Patents, utility certificates, SPCs, trademarks, collective marks, certification marks, registered design rights, semiconductor topography rights, plant varieties, geographical indications, designations of origin, traditional speciality guaranteed, domain names and corporate names are registered rights.

Patents: A patent application may be filed either by the inventor, the employer who owns the rights to an invention, or his/her agent. Either way, the application shall be filed: (i) before the INPI for French patents, (ii) before the EPO for European patents and (iii) before the World Intellectual Property Organisation (WIPO) for international patents (designating France). It is worth noting that by filing one international patent application before WIPO, applicants can simultaneously seek protection in multiple countries, including France.

Once a European patent is granted by the EPO, the owner may request that it be given a unitary effect under the UPC agreement for the territory of EU member states participating in enhanced cooperation and having ratified the UPC agreement.

An invention created in France and which may be of interest to national defence must be filed in France first, so that the DGA (France’s defence procurement agency) can assess where the invention needs to be kept secret.

The competent filing office publishes the patent application and examines it in order to assess patentability and initiate a search report on prior art. The search report is public and third parties can file observations against the patentability of the invention. Once granted, the patent is published, and can be opposed by third parties within 9 months from the date of grant. International patents can be opposed at the national level of a State designated in the application.

Utility certificates: The procedure for registration of utility certificates differs from that of patents in that (i) no search report is made and (ii) utility certificates cannot be opposed. However, the phases of both procedures are similar in that the procedure for registration of utility certificates involves the following four steps: a verification of the request’s regularity, an examination by the DGA, a publication of the request (18 months after the request) and the publication of the granting of a utility certificate.

It should be noted it is possible to convert a utility certificate application into a patent application, and vice versa.

SPCs: The following requirements must be met in order to obtain an SPC under the EU Regulation (EC) n°469/2009: (a) the product subject of the SPC request must be protected by a basic patent in force, (b) it must have obtained a valid marketing authorisation (MA), (c) it must not must not have already been the subject of an SPC and (d) the MA referred to in (b) must be the first authorisation obtained to place the product on the market as a medicinal product.

Provided these requirements are met, the patent owner has six months starting from the date of delivery of the MA or the date of the grant of the patent (if the MA is granted before the grant of a patent) to submit an SPC request.

This request should include inter alia a copy of the first MA. Duly filed applications are published in the Official Bulletin of Industrial Property (BOPI). Regular requests from an administrative and technical standpoint are then examined and, unless withdrawn, the SPC is delivered and published.

Trademarks, collective marks and certification marks: A trademark can be filed by any legal or natural person or by an agent before the appropriate office, i.e. INPI for French trademarks, EUIPO for European trademarks and WIPO for international trademarks (designating France). Regardless of the trademark office, the wording of the specification designating the applied-for goods and/or services must be based on the International Classification of Goods and Services known as the “Nice Classification”.

The office assesses absolutes grounds for refusal such as distinctiveness, deceptiveness, and compliance with public order and, accordingly, can issue a notification refusing the registration or requesting amendments to the application. The French and European trademarks are then published so as to allow third parties to file observations or oppose the registration. International applications can be opposed at the national level of a Member State designated in the application. At the end of this process, the successfully registered trademarks are published in the BOPI.

Design rights: A design right can be filed by any natural or legal person who owns the design, or by an agent before the appropriate office, i.e. INPI for French designs EUIPO for Community designs and WIPO for international designs (designating France). Regardless of the trademark office, the wording used when designating the product in a design application must be determined by the international classification system for industrial designs known as the “Locarno Classification”.

The application must also contain reproductions allowing the public to properly perceive the design (drawing or photography), and more specifically the features for which protection is sought.

The application is published in the BOPI and examined by the relevant office. Once granted, the design right is published by the office which examined the application.

Semiconductor topography rights: The owner or an agent can apply for registration and must do so within two years of the first commercial exploitation or not exceeding fifteen years after its fixation or coding if the topography has never been exploited. In the two months preceding the expiration of the ten-year term of protection, the applicant may request either the return of the parts or their conservation for an additional (renewable) period of ten years. The request for semiconductor topography rights must be filed at the INPI headquarters nearby Paris, which will examine the request and, if appropriate, grant a title of protection.

Plant varieties: An application for a plant variety may be filed either by the plant breeder, the employer who owns the rights to the variety, or his/her agent. To obtain a valid plant variety certificate in France, the applicant must file a request before the secretariat of the National Plant Breeder’s Authority (INOV). The period of examination takes up to six months, during the course of which the variety undergoes a technical examination of distinctness, uniformity and stability. At the outcome of the examination procedure, INOV may grant a title of protection.

To obtain a valid plant variety certificate in the EU, the applicant must follow a similar procedure before the Community Plant Variety Office (CPVO) located in Angers, France.

Geographical indications: An application for a geographical indication may be filed only by a non-profit organization of defense and management (ODG) that brings together the operators (craftsmen or companies), or by a designated representative for said organization. The applicant files an online application before the INPI which carries out a first examination and then publishes the application in the BOPI. Consumers, associations, the INAO and other third parties can submit observations to the INPI. If necessary, the applicant must amend its specifications following the observations received. A second examination phase then takes place, at the end of which the INPI notifies its decision, that is later published.

Domain names: To register a domain name, the applicant must file an online application with a domain name registrar or one of its resellers and must specify the extension that he/she seeks to obtain. The applicant must fulfil the terms of use established by the registrar (paying registration fees, providing timely and accurate information). For all domain names ending with the “.fr” extension, the appropriate registrar is the AFNIC. If the domain name does not already belong to a third party, it will be granted to the applicant.

Patents: The registration procedure lasts an average of two years before both the INPI and the EPO.

Utility certificates: The registration procedure lasts an average of 20 months.

Trademarks, collective marks and certification marks: French trademark applications are published in the BOPI approximately six weeks after the filing date. Then begins a two-month period during which the holders of prior rights (such as other trademarks owners) may oppose the registration. If no opposition is formed within the two-month delay, the trademark can be registered, provided the INPI finds it valid. The trademark registration procedure lasts around six months before the INPI, if no opposition is raised. In the event an opposition is raised, the opposition proceedings last between six and ten months before a decision is issued. European trademarks follow a similar calendar, however the procedure for International registrations can be a little longer.

Designs: The average timeframe is four months between the filing of the design application and the grant of the protection by INPI. Community designs are subject to a similar timeframe, while International registrations can take a little longer.

Semiconductor topography rights: The registration procedure lasts a few months.

Plant varieties: The registration procedure requires at least six months, given that the period of examination takes up to six months.

Geographical indications: The INPI’s decision on whether to grant protection to the applied-for geographical indication generally occurs between ten and twenty months after filing. Indeed, after the filing the INPI has two months to request additional information, to which the applicant has one month to respond. The publication in the BOPI marks the start of a two-month public inquiry during which consumers, companies, associations, and other parties can communicate their opinions on the draft specifications. In parallel, the INPI consults with the INAO (which is in charge of regulating French agricultural products with designations of origins), local authorities, consumer associations, and groups of interested professionals. They also have a period of two months to present to the INPI their observations on any point of the specifications. Then, within two months, the INPI sends to the applicant a summary of the comments received, as well as its recommendations and conclusions. The applicant then has two additional months to review said recommendations and possibly amend his/her project. A new phase of public inquiry and consultations is then conducted, only on the modifications made to the project.

Domain names: This procedure can take between a few hours to a few days, depending on the domain name registrar.

As mentioned at Point 5 herein above, third parties can file observations against patent and trademark applications and/or form opposition against granted patents and trademark applications.

As mentioned at Point 6 herein above, a public inquiry occurs before the granting of a geographical indication in order to allow third parties to communicate their opinion on the draft specifications.

If registration of a trademark or design is refused by the INPI, the applicant can appeal the INPI’s decision before the competent court of appeal. Ten courts of appeal in France are competent to hear appeals against decisions of the INPI regarding the granting of French trademarks and designs, namely the Courts of Aix-en-Provence, Bordeaux, Colmar, Douai, Fort-de-France, Lyon, Nancy, Paris, Rennes and Versailles.

Following the refusal of the registration of EU designs and trademarks by the EUIPO, the EUIPO Board of Appeals has jurisdiction to hear appeals.

The Paris Court of Appeal is the only French court that has jurisdiction to hear appeals against INPI decisions regarding the granting of French patents, utility certificates and SPCs.

Following the refusal of the registration of a patent application before the EPO, the EPO Board of Appeals has jurisdiction to hear appeals.

Patents:

The filing fee before the INPI is 26 euros, with an additional cost of 42 euros for each supplementary claim after the 10th claim. A search report costs 520 euros and the fee for the grant of a patent is 90 euros.

The filing fee before the EPO is 285 euros for a paper filing and 135 euros for an online filing. A search report for applications made after July 1st 2005 costs 1,460 euros and the designation fee for applications filed after 1 April 2009 is 660 euros.

The fee for an international application is 1,378 euros and a search report costs 1,775 euros.

The annual fees (to be paid to the INPI in any case) increase with time and range between 38 euros (1st year) and 800 euros (20th year). A specific discount is possible for SMEs, individuals, and non-profit research and education organisations.

The annual fees for a unitary patent (to be paid to the EPO) increase with time and range between 35 euros (2nd year) and 4,855 euros (20th year).

Utility certificates: The filing fee before the INPI is 26 euros and the issuance fee is 90 euros. The annual fees owed increase with time and range between 38 euros (1st year) to 220 euros (10th year). As for patents, a specific discount is possible for SMEs, individuals, and non-profit research and education organisations.

Trademarks and collective marks:

The filing fee before INPI is 190 euros for a filing in one class of goods/services, plus 40 euros for each additional class, and a flat fee of 350 euros for collective marks. The renewal fee is 290 euros for regular trademarks and 450 euros for collective marks.

The filing fee before EUIPO is 1,000 euros for paper filings and 850 euros for electronic filings for one class of goods/services, plus 50 euros for a second class, plus 150 euros for each supplementary class. The fee for paper renewals is 1,000 euros and 850 euros for electronic renewals for one class of goods/services, plus 50 euros for a second class, plus 150 euros for each supplementary class.

Designs:

The filing fee before INPI is 39 euros, plus 52 euros if protection is directly sought for a period of 10 years. Each reproduction costs 23 euros for black and white reproductions and 47 euros for colour reproductions.

The filing fee before EUIPO is 230 euros, plus 115 euros per additional design for designs number 2 to 10, and plus 50 euros for each additional design for designs number 11 and above. The publication is 120 euros, plus 60 euros per additional design for designs number 2 to 10, and plus 30 euros for each additional design for designs number 11 and above. Deferment of publication is 40 euros, plus 20 euros per additional design for designs number 2 to 10, and plus 10 euros for each additional design for designs number 11 and above

Semiconductor topography rights: The filing fee before INPI is 79 euros.

Geographical indications: The filing fee before INPI is 350 euros.

Domain names: A domain name costs approximatively 10 to 15 euros per year. The amount can vary depending on the chosen extension.

Plant varieties: The filing fee before INOV is 100 euros and the issuance fee is 40 euros. Annual fees range between 40 euros (1st year) to 150 euros (from the 7th year to the expiry).

If the owner of registered rights fails to pay renewal fees or annual fees, his/her title can be revoked.

However, grace periods are available for the payment of renewal fees and annual fees, subject to the payment of a surcharge, and the decision of revocation can be appealed when there is good cause.

According to contract law, any assignment of ownership of an intellectual property right must respect several conditions:

• The assignor must be the legitimate owner of the right subject to the assignment;
• The assignment must have a valid object, such that an expired or cancelled title cannot be the object of an assignment;
• The price and the duration of the assignment must be determined or determinable.

Trademark, patent and copyright assignments must be in writing.

In France, copyright assignments on future works are void and moral rights are perpetual, inalienable and imprescriptible, such that they are not transferable and may not be waived or overridden by a contractual agreement.

A copyright assignment must include specific terms as to the rights assigned and their scope, effect, territory and duration.

Assignments granted by authors and performers must comply with the fair remuneration requirement, i.e. provide for appropriate remuneration proportional to the actual or potential economic value of the rights transferred.

The assignment of registered rights must be recorded with the relevant office (INPI, EUIPO, EPO). If a change in ownership is not properly recorded, it cannot be opposable to third parties.

License agreements may contain various provisions regarding payment, exclusivity, term, territorial scope, jurisdiction, applicable law, preference rights so long as they comply with public policy rules.

According to contract law:

• The licensor must be the legitimate owner of the right subject to the licence;
• The license agreement must have a valid object, such that an expired or cancelled title cannot be the object of a licence;
• The price and the duration of the license agreement must be determined or determinable.

A patent license agreement must be in writing.

Under French copyright law, moral rights cannot be the object of a license agreement. The fair remuneration requirement mentioned at Point 12 herein above also applies for copyright license agreements.

License agreements can be exclusive, which means that the licensor will grant rights to only one licensee, or non-exclusive, in which case the licensor is free to grant rights to several licensees.

In the case of patents, failure to register a patent license agreement results in the agreement not being opposable to third parties. The same applies to trademark and design license agreements, even if there is no obligation that such license agreement be in writing.

As a consequence, the absence of registration of a licence agreement can prevent the licensee from initiating infringement actions and obtaining infringement damages. However, damages based on general tort law may still be obtained if the licensee joins an infringement action initiated by the owner.

Copyright is not a registered right, such that there is no need to register a copyright license agreement.

Parties are free to agree on exclusive or non-exclusive licences. The French Intellectual Property Code allows exclusives licensees of the following rights to initiate infringement actions directly:

• neighbouring rights related to music and video (exclusive licensee of audio and video producers);
• designs;
• trademarks;
• patents.

The beneficiary of an exclusive licence on a unitary patent or on a European patent that has not been opted out can also initiate infringement actions directly before the UPC.

The French Commercial Code states that the trademark licensee must receive pre-contractual information prior to signing trademark license agreements that contain exclusivity provisions.

The French Intellectual Property Code provides for the following criminal sanctions in the event of the infringement of intellectual property rights:

Patents: Knowingly infringing a patent can lead to three years of imprisonment and a fine of 300,000 euros. When the offense is committed by an organised criminal group or on an online public communication network, or when the facts relate to goods dangerous to the health or safety of humans or animals, the penalties are increased to seven years of imprisonment and a fine of 750,000 euros (Article L615-14 of the French Intellectual Property Code).

Trademarks/collective marks: Trademark infringement can lead to a fine of 300,000 euros and three years of imprisonment, or 400,000 euros and four years of imprisonment (L.716-9 and L.716-10 of the French Intellectual Property Code).

Copyright: Copyright infringement can lead to a fine of 300,000 euros and three years of imprisonment (Article L.335-4 of the French Intellectual Property Code).

Designs: Design infringement can lead to a fine of 300,000 euros and three years of imprisonment (Article L.521-10 of the French Intellectual Property Code).

These sanctions can be pronounced in the context of criminal proceedings, which can be initiated by the rights owner, the public prosecutor, or customs officials. In practice, criminal proceedings are seldom in intellectual property disputes – however, they take place on a regular basis as a follow-up to customs seizures in trademark or design infringement cases, and at the initiative of the Public Prosecutor in certain copyright infringement cases.

Civil infringement actions before French courts are the main enforcement option available in France and constitute the overwhelming majority of court actions in the intellectual property field. They are usually complemented by claims/actions for unfair competition and parasitism.

Infringement actions before the UPC are available for unitary patents. They are also available for European patents under the conditions that the owner has not opted out from the UPC system and that no action has already been launched before a national court.

Customs actions are another cost-effective enforcement option available in France for right owners, particularly those experiencing large-scale infringement.

Alternative dispute resolution is also becoming increasingly common and is now compulsory in certain cases where it is provided that an amicable solution must be attempted before legal action is taken. In addition, in the framework of civil procedures case management judges tend to invite the parties to attempt mediation.

Court fees are insignificant in France, where the judiciary system is to a large extent funded by the State. The same goes of administrative proceedings before the INPI.

The costs of such procedures are thus essentially made up of lawyer/attorney fees, bailiff (“huissier/commissaire de justice”) costs for the taking of evidence, and in certain instances expert fees.

Whilst there is growing consensus amongst practitioners and judges that the high technicality of intellectual property disputes generates fairly elevated costs, these costs are highly variable as they depend on many factors such as the nature and solidity of the intellectual property rights involved, the complexity of the case, the legal and technical issues at stake, etc.

They vary from a few thousand to hundreds of thousands of euros, sometimes more in the most sophisticated, sensitive patent disputes.

Proceedings on the merits before a Judiciary Court (first instance) approximately last between one to two years, sometimes three years in the most complex cases where multiple parties are involved.

Preliminary urgent proceedings can last from a few days to a few months. In certain cases a preliminary injunction may be obtained ex parte within a day.

Proceedings on the merits before the UPC will last about one year. The court fees are composed of a fixed fee of 11,000 euros and an additional fee ranging between 0 to 325,000 euros depending on the value of the case.

For preliminary proceedings, the court fee is 11,000 euros.

The Paris Judiciary Court has exclusive jurisdiction over litigations involving a French patent, the French part of a European patent that was opted out from the UPC system, possibly the French part of a European patent that was not opted out from the UPC system (in such a case the plaintiff can chose to file the action either before a national court or before the UPC), a European Union trademark and a Community design. Ten courts across France have jurisdiction over other civil intellectual property litigation: Bordeaux, Fort-de-France, Lille, Lyon, Marseille, Metz, Nanterre, Nancy, Paris and Rennes.

In criminal matters, non-specialized correctional courts have jurisdiction over intellectual property offences.

Civil proceedings begin with a summons which must be served on the defendant and then filed with the court. In most cases where there is no urgency, the plaintiff is required to briefly report in its summons the attempts he has made in order to resolve the matter amicably before commencing legal proceedings. The statute of limitation is five years from the day when the right owner knew or should have known the last fact enabling him or her to file the action.

Criminal proceedings may begin either with the service of a direct complaint or by filing a complaint with the public prosecutor, followed by the reiteration of the complaint with the investigating judge. The statute of limitations for criminal proceedings is six years from the day the offence was committed.

The procedure involves the exchange of briefs – generally two briefs per party (including the summons as regards the plaintiff), however the number of briefs can go up to four or more, depending on the nature and complexity of the case as well as the circumstances and motions that may arise in the course of the proceedings. In principle procedural motions are heard first independently of the merits. The case is heard in final hearings by one to three professional judges. A basic rule is that the court cannot take into consideration any argument or factual element not raised in the last brief of each party.

Time wise, final hearings for oral pleadings can last from less than an hour in the most straightforward cases, to one or two hours in most cases, to a couple of days, exceptionally, in the most sophisticated patent disputes. Except in criminal cases, it is very rare to hear oral evidence from experts, witnesses or parties during the final trial. The judgment is usually delivered a couple months after the final hearing.

The plaintiff in an infringement proceeding may obtain an injunction and damages calculated by taking into consideration inter alia the extent of the economic loss and moral prejudice suffered as a result of the infringement, as well as the infringer’s profits.

The deadline to appeal is one month from the date of service of the decision for civil judgments, which benefit from provisional enforcement unless ruled otherwise by the court, and ten days in criminal cases.

The UPC has exclusive jurisdiction over cases involving a unitary patent and possibly a European patent that was not opted out from the UPC system (in such a case the plaintiff can chose to file the action either before a national court or before the UPC).

The proceedings begin with a statement of claim filed with the UPC by the plaintiff. The statement of claim is then served on the defendant(s) by the clerks’ office of the UPC.

The procedure involves the exchange of briefs – generally two briefs per party (including the summons as regards the plaintiff).

The plaintiff in an infringement proceeding may obtain an injunction and damages.

The deadline to appeal is two months from the service of the decision.

The customs procedure available to stop the import and/or export of infringing goods is the procedure of customs detention or seizure.

It is a provisional measure consisting of the detention by customs services of suspected infringing goods that is automatically lifted if an action on the merits has not been brought within ten days of its notification.

The intellectual property rights protected under this procedure are trademarks, designs, copyright and related rights, patents, semiconductor topography rights, utility models, SPCs relating to medicines and plant protection product, plant varieties and designations of origin, geographical indications and geographical names.

The detention results from the provisions of Regulation (EU) 608/2013 of 12 June 2013 and the French Intellectual Property Code.

Indeed, for protection within the EU, the detention is provided for by Regulation (EU) No 608/2013 and is intended to protect the Community’s borders against infringing goods from third countries.

Domestic law, on the other hand, provides for a detention procedure applying to goods circulating within the French territory, enabling French customs to search and detain goods in various places such as storage facilities, shops and trucks, and not just at entry points in the French territory.

Article 750-1 of the French Civil Procedure Code provides, under a sanction of inadmissibility which may be ordered by the court sua sponte, that court proceedings must be preceded by an attempt at conciliation, at mediation or at a participatory procedure, for all claims not exceeding 5,000 euros, including in the field of intellectual property. Urgency is however amongst the circumstances which are regarded as a legitimate reason for not making such an attempt.

Alternative dispute resolution mechanisms can also be made mandatory by contractual provisions in intellectual property disputes involving larger sums of money.

Parties involved in intellectual property disputes in France can decide to settle at any stage of the proceedings (before, during and even after the proceedings and the rendering of a decision) and by any means (by a written contract or orally).

To establish infringement of the intellectual property rights described above, it must be shown that an object protected by one of these rights has been reproduced / is being used without the authorization of the owner of the said right and that no exception applies.

First of all, this requires showing that the allegedly infringed-upon object is protected by an intellectual property right owned by the plaintiff:

• In the case of registered rights such as patents or trademarks, it will be necessary to produce certified copies of the register identifying the protected object and the owner of the rights.
• Protection is more difficult to prove in the case of unregistered rights, particularly copyright. But the plaintiff’s rights in a claimed work can be proved if the author has used a Soleau envelope (a formality for filing with the INPI that does not confer intellectual property rights but makes it possible to obtain a definite date for the creation and thus to assert its anteriority in the event of a dispute), has had his/her creation reported by a ministerial officer (notary or bailiff) on a definite date, has called upon a society of authors or is in possession of working documents showing the various stages of creation of the claimed work.

Next, the plaintiff must show that the protected object has been infringed upon by the defendant:

• In copyright law, it must be proven that the original elements of the work have been copied, generally by an act of reproduction or representation by the defendant.
• In trademark law, the finding of trademark infringement requires both use of the disputed sign as a trademark in the course of trade and violation of one of the trademark’s functions.
• In patent and design law, it is generally sufficient to prove infringement of any of the rights of the owner to establish an act of infringement either by possession, use or placing an infringing product on the market.

Evidence often consists of elements obtained during an infringement seizure or established by a bailiff’s report.

a) Judges sitting in the French courts that have exclusive jurisdiction over civil intellectual property cases have experience of dealing with these matters. However, they are not required to have a scientific or technical background.

Whilst this is not the standard in the French practice of intellectual property disputes, a court has the possibility to appoint judicial experts who are responsible for drafting a report in which they provide answers to questions posed by the court after interviewing the parties. In their various sets of pleadings, the parties would then discuss the expert’s report. The court would not be bound by such report, which would solely be one of the elements at its disposal for making its assessment.

Parties also sometimes produce reports from private experts that they have appointed. However the courts are not bound by such reports, which are most often criticized by the adverse parties.

The UPC is composed of both technical and non-technical judges.

Parties can produce reports from private experts that they have appointed. The UPC can also appoint experts.

b) The main mechanism available in France for compelling the obtaining and protecting of evidence is the infringement seizure, which is an evidentiary measure provided by French procedural law for collecting evidence of an alleged infringement through a power of investigation.

By filing an ex parte application before the competent Judge, the owner of an intellectual property right may seek a court order granting authorization to have a bailiff visit the premises of a third party (generally an alleged infringer) for the purpose of collecting evidence of (i) the existence, (ii) the origin and (iii) the extent of the purported infringement.

The bailiff’s powers are listed in the court order. Most commonly s/he may (i) ask questions, (ii) request documentation, (iii) draw an official description of the allegedly infringing product/process, (iv) physically seize samples of the allegedly infringing product, and/or (v) collect technical, commercial as well as accounting documents.

The bailiff may be assisted by a patentee’s patent attorney, a technical expert if needed, a photographer, etc. all of whom are appointed and chosen by the plaintiff. The bailiff is usually backed up by law enforcement officers.

Performing a seizure is a right for the intellectual property right owner. The Judge may not refuse to grant a seizure order, provided formal requirements are met. Whilst the owner is expected to provide reasons for which a seizure appears justified, no evidence of the claimed infringement has to be provided to the Judge. Furthermore, the Judge has no power to assess the credibility of the infringement claim.

The Judge may however: (i) limit the scope of the authorized operations and/or (ii) order that any item/document seized be kept by the bailiff under provisional escrow in order to protect trade secrets of the seized party.

The purpose of the seizure is only to gather evidence in view of an infringement action, which must be filed following the seizure, failing which the seizure will be deemed void and the defendant will be entitled to damages. The time-limit for filing the infringement action is thirty-one calendar days of the date of the seizure.

It should be noted that a seizure is not an equivalent to discovery-type proceedings. The main difference is that the court order for the seizure is issued without any prior notice to or consent by the defendant, so the proceedings are fully inquisitorial in nature, as opposed to adversarial discovery-type proceedings.

There is no duty of disclosure or discovery before French courts.

However, a judge can order or facilitate submission of evidence. Indeed, parties may request at any stage of the proceedings (pre-trial proceedings, case management proceedings, proceedings on the merits) court orders to gather additional information or evidence related to the infringement such as information to determine the origin of the infringement, the distribution networks of the infringing products and their quantities and prices.

Similarly to the French infringement seizure, the UPC can order measures to preserve relevant evidence in respect of the alleged infringement. If necessary, these measures can be ordered ex parte, in particular where any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.

The party who requests the measures must provide reasonably available evidence to support its claim that the patent is infringed or about to be infringed. Such measures can be ordered before or during the proceedings.

The measures may include the detailed description, with or without the taking of samples, or the physical seizure of the infringing products, and, in appropriate cases, the materials and implements used in the production and/or distribution of those products and the documents relating thereto.

The UPC may also order the inspection of premises, which will be conducted by a person appointed by the Court. This person must be a professional person or expert, who guarantees expertise, independence and impartiality. Where appropriate and allowed under applicable national law, the person may be a bailiff or assisted by a bailiff.

At the inspection of the premises the applicant shall not be present itself but may be represented by an independent professional practitioner whose name has to be specified in the Court’s order.

Where measures to preserve evidence or inspect premises are ordered ex parte the parties affected shall be given notice, without delay and at the latest immediately after the execution of the measures. A review, including a right to be heard, shall take place upon request of the parties affected with a view to deciding, within a reasonable period after the notification of the measures, whether the measures are to be modified, revoked or confirmed.

In the course of the proceedings, the UPC judges may also, upon request of one party, order the other party to produce evidence in its possession.

The court makes its opinion on the basis of its free assessment of the information and evidence submitted by the parties. Indeed, the parties must provide evidence for each of their claims.

In France, in intellectual property civil cases, most disputes are decided on the basis of written evidence submitted by the parties with their pleadings. There is no cross-examination of witnesses available in civil court proceedings in France.

French procedural law classifies defences into three main categories:

• Procedural motions bear on the compliance with strictly procedural requirements (e.g. lack of jurisdiction of the court or formal irregularity of a procedural deed).
• Motions for inadmissibility aim at having the claim dismissed on procedural grounds that affect the plaintiff’s standing to sue. For example, due to the expiry of the statute of limitations, the plaintiff’s lack of legal interest, or res judicata.
• Defences on the merits include inter alia:
  • The lack of proof of the alleged infringement (e.g. as a result of the invalidity of an infringement seizure or a bailiff report),
  • The lack of personal involvement of the defendant in the alleged infringement,
  • The lack of infringing character of the incriminated device or behaviour,
  • The benefit for the defendant of a derogation or authorization from the right owner,
  • The lack of proof by the plaintiff of the alleged prejudice.

There is no settled case law and it remains discussed amongst scholars and practitioners whether a defence pertaining to the plaintiff’s lack of right over the protected object should be classified as a motion for inadmissibility or a defence on the merits. In copyright cases the prevailing view is that the lack of originality of the claimed work is a defence on the merits; whereas a defence against the validity of the asserted patent, trademark or design could potentially receive different qualifications depending on how the argument is framed before the court.

Before the UPC, the defendant can:

• Lodge a preliminary objection concerning:
  • the jurisdiction and competence of the Court,
  • the competence of the division indicated by the claimant,
  • the language of the Statement of claim.
• Lodge a defence statement, containing defence arguments on the merits (which are similar to those that can be raised before a French court, see supra).

Any person having a direct and personal legal interest may in principle challenge an intellectual property right described in Section A herein above.

The defendant in an action involving a purported infringement is considered to have such a legal interest with respect to the asserted intellectual property right.

Main actions for invalidity of a registered intellectual property right can be reserved to a limited circle of persons proving standing to sue, subject to the forum before which the action is filed (i.e. a court or the INPI), the contested right, and the ground on which invalidity is claimed. For example:

• An application for invalidity of a trademark, based on relative grounds (e.g. alleging that the trademark infringes prior rights having effect in France), may be filed only by the owner of said prior rights – regardless of whether it is filed before a court or before the INPI.
• By contrast, an application for invalidity of a trademark, based on absolute grounds or bad faith registration, may be filed before a court by any person having a legal interest, or before the INPI by any person regardless of his/her legal interest.

It is possible to challenge a French patent or a European patent by filing an opposition before the INPI or the EPO, respectively, within nine months of the publication of the grant of the patent.

Further to the grant of the patent, there is no time limit for filing a nullity action.

It is possible to challenge a trademark by filing an opposition before the INPI or the EUIPO, respectively. The timeframe for filing an opposition against a French trademark application is two months as of the publication of said application in the BOPI; with regard to an EU trademark, the opposition period is three months as of the publication of the EU trademark application in the EU Trademarks Bulletin.

There is no time limit for filing an application for a declaration of invalidity before the EUIPO, or a cancellation action before the INPI. However, the owner of an earlier right who has tolerated the use of the later trademark in good faith for five consecutive years can no longer request its cancellation.

It is also possible to challenge a trademark in revocation proceedings for non-use. Such an action may be filed at the earliest after five years as of the publication of the registration.

As regard geographical indications, it is possible to challenge them by filing observations with the INPI during the public search procedure, which takes place within two months of the publication of the application for registration.

Thereafter, there is no time limit for filing an application for invalidity.

Other registered intellectual property rights (designs, collective trademarks, utility patents and supplementary protection certificates, plant varieties, semiconductor topography, etc.) can be challenged after registration or grant by filing invalidity actions, for which there is no time limit.

Patents and SPCs: The Paris Judiciary Court has exclusive jurisdiction for invalidity actions against SPCs, French patents and opted-out European patents.

The UPC has exclusive jurisdiction for invalidity actions relating to unitary patents.

The Paris Judiciary Court and the UPC have a shared jurisdiction for invalidity actions relating European patents that have not been opted out.

The main grounds for a finding of invalidity of a patent are lack of novelty, inventive step and/or industrial application, added subject-matter, lack of support in the description, insufficient disclosure.

Trademarks: Following the implementation into French law of European Directive 2015/2436, commonly known as the “Trademark Package”, INPI and the judicial courts share jurisdiction over trademark invalidity actions. From 1 April 2020:

• INPI is exclusively competent for trademark invalidity actions based on :
  • All grounds for forfeiture
  • All absolute grounds for invalidity
  • Relative grounds for invalidity based on certain distinctive signs (prior trademark, corporate name, trade name, sign, domain name, name of public entity) and territorial signs (names of territorial authorities and EPCIs, appellations of origin and geographical indications).
• The judiciary courts remain exclusively competent for trademark invalidity actions based on:
  • invalidity claims based on an infringement of a copyright, a design or a personality right;
  • in the context of legal proceedings, counterclaims for invalidity or forfeiture filed in the absence of any preliminary referral to the INPI, whatever the grounds;
  • any claim for invalidity or revocation, whatever the grounds, when such claim is related to an action falling within the court’s jurisdiction (e.g., an action for infringement, unfair competition or contractual liability) or when probatory, provisional or protective measures have been ordered to stop an infringement of a trademark right and are being implemented before the commencement of an action on the merits.

Invalidity actions of EU trademarks must be filed before the EUIPO, whereas invalidity counterclaims regarding EU trademarks may be filed with the Paris Judicial Court.

Geographical indications: the Council of State (Conseil d’Etat) is competent to rule on invalidity proceedings relating to geographical indications.

Designs: invalidation of a French design can be ordered by a limited number of courts on a main claim or by way of a counterclaim. Challenges to Community design rights must be filed with the EUIPO except for counterclaims which can be filed with the Paris Judiciary Court.

The effect of intellectual property rights may be limited as a result of various other legal concepts or procedures, such as:

Declaratory non-infringement actions which are declaratory actions, whereby a party requests that its product be deemed not to infringe the object protected by a third party’s intellectual property right. The latter will therefore be unable to enforce the effects of the intellectual property rights relating to that object against the first party or only to a limited extent.

Withdrawal and renunciation actions in the field of trademarks, designs and patents allow the rights owner to give up his rights on all or part of the protected object.

Exhaustion of rights, according to which the owner of industrial property rights on a product has exhausted its exclusive right when it is first put into circulation within the EU and cannot oppose the free circulation of the product.

Licensing, as discussed in Section D hereinabove, is another way of limiting one’s intellectual property rights.

The main remedies available for infringement are the following:

• damages to compensate the loss resulting from the infringing acts;
• the prohibition of further infringement, under penalty;
• the destruction of the infringing products, under penalty;
• an order to recall the infringing products, under penalty;
• the communication of information on the extent and origin of the infringement;
• the publication of the judgment or a summary or section thereof in periodicals and/or on the defendant’s website.

See Point 18 hereinabove regarding costs of enforcement proceedings.

With regard to costs recovery, the courts compensate the costs incurred by the prevailing party in an amount that they discretionarily assess in light of the nature and complexity of the case.

In order to maximize chances to obtain full costs compensation, parties may produce justifications of the attorney fees invoiced.

There is no procedural mechanism enabling or requiring security for costs.

Before the UPC, Reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity requires otherwise