Industrial Property Law

Like any writ of summons, a writ of summons for infringement must contain, on penalty of being held null and void, the subject of the claim and a statement of the legal and factual grounds for the claim (Art. 54, 2° and 56, 2° of the Code of Civil Procedure). It must be sufficiently precise to enable the accused to defend him or herself effectively, failing which it will be annulled . It must incl …

Initiation of action

Like any writ of summons, a writ of summons for infringement must contain, on penalty of being held null and void, the subject of the claim and a statement of the legal and factual grounds for the claim (Art. 54, 2° and 56, 2° of the Code of Civil Procedure). It must be sufficiently precise to enable the accused to defend him or herself effectively, failing which it will be annulled . It must include a full statement of the claim, details of the allegedly infringing claims and the characteristics of the allegedly infringing goods, specifying how they infringe the patent claims .

During the pre-trial phase, the defendant can present its case, which may be procedural in nature, such as the plaintiff's lack of standing to bring the infringement action or a plea of invalidity of the writ of summons. The defendant may raise the objection of a defect in form, provided that he can demonstrate the prejudice caused by the irregularity (Art. 114, para. 2, Code of Civil Procedure). The plaintiff in an infringement action may, in all cases, rectify the defect in the writ of summons during the course of the proceedings (Art. 121, Code of Civil Procedure). The defendant may also assert an abuse of the plaintiff's right to bring an action, constituting a tort, in particular when the infringement action is initiated by a competitor with the aim of disrupting its business in an unfair manner . However, this is rarely recognized in IP infringement cases. In effect, anyone who is successful, even partially, in his or her action cannot be required to pay damages for abuse of the right to sue, except in special circumstances which it is for the court to define .

In addition to procedural irregularities, the defendant may raise substantive grounds such as invalidity of the patent for lack of novelty or inventive step  or prior personal possession of the invention. If the acts of infringement complained of correspond to the implementation of a patent held by the defendant, the validity of which is not contested, the courts have held that there was no infringement . This position would not apply, however, if this patent is dependent on the plaintiff's patent.

Patent infringement rulings are res judicata (Art. 1351 Civil Code). The first instance judgment is enforceable by operation of law on a provisional basis (Art. 514 of the Code of Civil Procedure), unless the court considers it incompatible with the nature of the case (Art. 514-1 of the Code of Civil Procedure). On appeal, the parties may add to the claims submitted to the court of first instance those claims which are incidental, consequential or necessary adjuncts thereto (Art. 566 Code of Civil Procedure). However, the plaintiff in an infringement action may not base his or her claim on one which differs from that presented before the trial court .

CA Paris, 20 January 2015, LawLex202300005197JBJ, which ruled that an ambiguous summons causes prejudice to the defendant undertakings by not enabling them to know exactly what they are accused of and to defend themselves meaningfully, and must therefore be annulled.

Cass. com, 11 October 2005, LawLex202200003537JBJ; CA Paris, 20 January 2015, LawLex202300005197JBJ.

Cass. com, 26 January 2022, LawLex202300005188JBJ, which recognized as abusive an infringement action brought by an undertaking, after having extended a claim for a dubious purpose, the tenuousness of which it was aware, with the aim of unfairly disrupting a competitor.

Cass. com. 3 March 2021, LawLex202200003526JBJ.

Cass. com. 29 November 1994, LawLex202300005183JBJ.

Cass. com., 4 July 1984, LawLex202300005182JBJ.

Cass. com. 20 February 2007, LawLex202300005196JBJ, which states that an infringement action is inadmissible when the claims are based on different claims under the same patent which do not have the same objective, insofar as each of those claims defines the scope of protection applicable to it.

Industrial Property Law

393. Initiation of action

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

393. Initiation of action

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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