For a work to be protected by copyright, it must first be fixed in a tangible form—that is, it must be embodied in a form perceptible by at least one of the five senses. Ideas, information, or know-how are not protected by copyright until they are expressed in written, visual, auditory, or other tangible form.
Second, to be eligible for copyright protection, the work must possess originality—that is, it must reflect the author’s individual creative expression. The concept of originality is not clearly defined by law but is subject to the discretionary judgment of the trial court (Court of Cassation, 1st Civil Chamber, December 10, 2014, No. 13-23.076).
French judges take a subjective approach to originality, emphasizing the importance of personal choices, creative effort, and the expression of the author’s personality. Consequently, copyright protects not only a work that owes nothing to a pre-existing work, but also a derivative work—inspired by and created from one or more pre-existing works—provided that it reflects the author’s personality and results from a creative effort.
The Court of Justice of the European Union (CJEU), for its part, takes a more objective approach to originality, defining it as “an intellectual creation specific to its author” that reflects the author’s personality and is manifested through free and creative choices (CJEU judgment, July 16, 2009, C-5/08, Infopaq case).
To file a copyright infringement lawsuit, you must prove that you are the author or the rights holder of the work in question.
The person whose name appears at the time of the work’s first disclosure (through publication, posting online, public performance, etc.) is presumed to be the author (Article L113-1 of the Intellectual Property Code). However, this presumption of authorship may be challenged by any means.
It is also necessary to demonstrate that your work was created before the act of plagiarism occurred. The burden of proof regarding prior creation is not restricted and may be established by any means, including through a body of circumstantial evidence. However, it is recommended to secure evidence of prior creation as soon as the work is created, as the date of creation is of crucial importance in a copyright infringement lawsuit.
In France, the e-Soleau (formerly known as the “enveloppe Soleau”) offered by the INPI, as well as a bailiff’s (commissaire de justice) affidavit, are the primary methods for establishing a definitive date of creation for a work.
The resale right is an economic right granted to creators of graphic and visual artworks, allowing them to receive a percentage of the resale price of their works during public auctions or private transactions conducted by art market professionals, such as auctioneers, gallery owners, and antique dealers (Article L122-8 of the Intellectual Property Code).
First established in France by the law of May 20, 1920, the resale right was harmonized within the European Union by Directive 2001/84 of September 27, 2001, concerning the resale right for the benefit of the author of an original work of art. It applies throughout the author’s lifetime and then benefits the author’s heirs for a period of 70 years following the author’s death (Article L123-7 of the Intellectual Property Code).
The resale right does not apply when the sale price of the work is less than 750 euros (Article R122-5 of the Intellectual Property Code). The scale for the resale right in France is defined in Article R122-6 of the Intellectual Property Code as follows:
• 4% on the price range from 0 € to 50,000 €
• 3% on the price range from 50,000.01 € to 200,000 €
• 1% on the price range from 200,000.01 € to 350,000 €
• 0.5% on the price bracket from €350,000.01 to €500,000
• 0.25% on the portion exceeding €500,000.
You have the right to respect for the work in accordance with Article L121-1 of the Intellectual Property Code. While adapting a novel into a film inevitably requires changes to the staging or alterations to the structure or ending, if the film undermines the spirit of the work—particularly with regard to the characters’ defining traits—as well as the author’s dignity, you may request that the production company rectify this infringement before the film’s release.
If negotiations fail, you may file a lawsuit in court to seek compensation for the harm suffered as a result of the distortion of the work. You may choose to file the case in the court of the defendant’s place of residence (Article 42 of the Code of Civil Procedure) or in the court of the place where the damage occurred, that is, the place where the work is being exhibited (Article 46 of the Code of Civil Procedure).
It is also possible to file a motion with the judge presiding over preliminary relief proceedings at the same court to request a halt to the exploitation of the work or the modification or removal of the disputed sequence, by establishing a manifestly unlawful infringement of the author’s moral rights. This action does not require a demonstration of the absence of a serious dispute (Article 835 of the Code of Civil Procedure).
No, the employee who created the work remains the sole owner of the copyright, even if the work was created in the course of the employee’s duties using equipment provided by the employer. An employer who wishes to exploit an employee’s creation must enter into a copyright assignment agreement with the employee. Automatic and blanket clauses in an employment contract assigning future works are void under Article L131-1 of the Intellectual Property Code.
The copyright assignment agreement must be in writing (Article L131-2 of the Intellectual Property Code). Furthermore, it must include the mandatory provisions set forth in Article L131-3 of the same code, which states: “The transfer of copyright is subject to the condition that each of the transferred rights be specifically identified in the assignment agreement and that the scope of exploitation of the transferred rights be defined in terms of its extent and purpose, as well as the location and duration.”
The assignment agreement must also specify whether the transfer is made for consideration or without consideration (Article L122-7 of the Intellectual Property Code). If the assignment is made for consideration, the compensation must, in principle, be proportional to the revenue derived from the sale or exploitation of the work (Article L131-4 of the Intellectual Property Code). If the transfer is made without consideration, it is considered a gift inter vivos, and the transfer agreement must be drawn up by a notary, in accordance with the provisions of Article 931 of the Civil Code; otherwise, the transfer agreement is void (Paris Judicial Court, 3rd Chamber, 1st Section, April 12, 2023, Case No. 23/50949; July 6, 2023, Case No. 23/02616).
There are two exceptions to the principle that an employee holds the rights: software creators and professional journalists. In these cases, the rights to works created in the course of performing the employment contract are assigned to the employer (Articles L113-9 and L132-36 of the Intellectual Property Code). However, moral rights, which cannot be assigned, remain the property of the authors, namely software creators and journalists.
The publisher is required to provide the author with a financial statement. The publisher must therefore send the author, at least once a year, a financial statement indicating the number of copies produced, sold, in stock, on consignment, or pulped, as well as the amount of the corresponding royalties owed to the author (Article L132-17-3 I of the Intellectual Property Code). This obligation to provide an accounting applies to the publisher even if the publishing contract does not specify it.
The publisher must pay royalties no later than six months after the accounts are finalized (Article L132-17-3-1 of the Intellectual Property Code).
If the publisher fails to comply with its obligation to provide an accounting and pay royalties, the contract will be automatically terminated three months after the sending of a formal notice that has remained without effect (Articles L132-17-3 II and L132-17-3-1 of the Intellectual Property Code).
Effective December 20, 2027 (for financial statements submitted in 2028), this requirement will become semi-annual (twice a year) pursuant to an industry-wide agreement dated December 20, 2022.
Since the adoption of Directive 2000/31/EC on electronic commerce on June 8, 2000, Internet hosting service providers, such as YouTube, are not held liable for unlawful content they transmit, provided they were not aware of such acts or unlawful acts (Article 15 of Directive 2000/31/EC) . An author whose copyright has been infringed on YouTube may therefore only seek damages from YouTube if they have first notified YouTube of the copyright infringement and, despite this, the unlawful content has not been removed or made inaccessible.
The Law of June 21, 2004, on Confidence in the Digital Economy (“LCEN Law”), which transposed Directive 2000/31/EC into French law, formerly provided, in Article 6 I 5, the elements that must be included in the notice sent to hosting service providers (the identity of the sender and recipient of the notice, a description of the disputed content, its precise location, and, where applicable, the email address from which the content is accessible, the legal basis justifying the removal or blocking of access to the disputed content, etc.). French courts had established a legal principle under which, if any of these elements was missing from the notice, the hosting service provider was not required to remove the unlawful content, and the rights holder’s claim for damages was dismissed (Court of Cassation, 1st Civil Chamber, February 17, 2011, Appeal Nos. 09-15.857, 09-67.896).
To address these issues related to the notification of illegal content, the Digital Services Act (DSA), adopted on October 19, 2022, to replace Directive 2000/31/EC, requires hosting service providers to establish a system for electronically reporting illegal content.
In accordance with these provisions of the DSA fully applicable to all hosting providers as of February 17, 2024, YouTube has implemented a new system for reporting illegal content. Copyright holders can now click on the three dots at the bottom of a video that infringes their copyright, select the “Report” option, and then choose “Legal issue” and “Copyright issue.” They can then fill out the form requesting removal of the video in question and submit it via the YouTube website.
If, following this notification, the infringing content is not removed or made inaccessible by YouTube, the author may, pursuant to Article 6-3 of the LCEN (formerly Article 6, I, 8), initiate expedited proceedings on the merits (Article 481-1 of the Code of Civil Procedure) before the presiding judge of the judicial court to request the removal of the infringing content and the cessation of acts of infringement. It is recommended to request an Internet preservation report from a judicial officer (commissaire) to establish YouTube’s negligence.
However, since it is difficult to establish a causal link between YouTube’s liability and the harm suffered as a result of copyright infringement, the action for damages must be brought against the infringer. When the infringer acts anonymously, it is possible—in order to identify the infringer—to petition the presiding judge of the judicial court under the “referé en futurum” procedure provided for in Article 145 of the Code of Civil Procedure, requesting that the court order YouTube to disclose information enabling the identification of the infringer.
To be protected under trademark law, a sign must have distinctive character—that is, it must enable the target audience to identify a company’s goods or services and distinguish them from those of competitors (Articles L711-1 and L711-2(2) of the Intellectual Property Code).
The concept of distinctiveness is not defined by statute but is a concept established by case law and is subject to the discretionary judgment of the trial court.
Arbitrary or fanciful signs, which have no direct connection to the goods or services in question, are inherently distinctive. Evocative signs, which allude to certain characteristics of the product without directly describing it, are considered to possess distinctiveness.
Conversely, generic or common terms, or those that describe a characteristic (such as the nature, quantity, or intended use) of the goods and services marketed under that sign, are considered to lack distinctiveness (Article L711-2, paragraphs 3, 4, and 5 of the Intellectual Property Code).
According to case law, a sign consisting of separately descriptive words may be considered valid if it adopts an unusual syntactic structure, thereby giving it a distinctive overall impression that goes beyond mere descriptive information about the product (“Baby-dry” to designate disposable diapers (ECJ, September 20, 2001, C-383/99 P, Procter & Gamble v. OHIM).
To be valid, the sign must also comply with public policy (Article L711-2, 7° of the Intellectual Property Code) and must not mislead the public, particularly regarding the nature, quality, or geographical origin of the product or service (Article L711-2, 8° of the Intellectual Property Code).
The law provides for cases where a sign that initially lacked distinctiveness acquires it through continuous, intensive, and long-term use (Article L711-2, last paragraph, of the Intellectual Property Code). In practice, this rule of “distinctiveness acquired through use” serves as a defense for the owner of a trademark whose invalidation is sought after registration on the grounds of lack of distinctiveness (Court of Cassation, Commercial Chamber, January 27, 2021, 18-20.702 (the “Giant” trademark of the Quick fast-food chain)).
A slogan may be protected as a trademark provided that it fulfills the essential function of a trademark—namely, enabling the target audience to identify the commercial origin of the goods or services—and meets the conditions for trademark validity, namely that it must not be generic, descriptive, or misleading with respect to the goods and services covered by the application.
The INPI and the EUIPO consider that a slogan has distinctive character, particularly when it is based on a highly original combination of words or on expressions with no direct connection to the goods or services in question, and when it evokes a sense of “surprise” or an “unexpected effect” that prompts the consumer to reflect on and interpret it. Similarly, slogans that include wordplay, such as rhythmic phrases, metaphors, or paradoxes, are also considered to have distinctive character.
If a slogan does not meet the requirements for protection under trademark law, it may be protected by copyright, provided it demonstrates originality. Furthermore, if a competitor uses a slogan that is very close to or similar to your company’s, you may file a lawsuit for unfair competition and free-riding when there is a risk of confusion in the minds of the public.
Trademark infringement through the use of a similar sign is established when that sign is used for goods or services that are identical or similar to those for which the trademark was registered, and there is a risk of confusion in the minds of the public (Article L713-2, paragraph 2, of the Intellectual Property Code).
According to the case law of the CJEU, the likelihood of confusion must be assessed holistically, taking into account not only a single, specific element but also all relevant factors (CJEU, September 29, 1998, Case C-39/97, Canon v. Metro-Goldwyn-Mayer). Furthermore, case law has established the principle that the factors to be considered in the context of this holistic assessment—in particular, the degree of similarity between the signs and that between the goods and services designated—are interdependent.
To assess the similarity between the goods or services designated, a number of relevant factors must be taken into account, in particular their nature, intended purpose, and use, as well as whether they are in competition with or complementary to one another (ECJ, September 29, 1998, Case C-39/97).
The similarity of the signs is examined in terms of the visual (e.g., the number of letters and words for word marks, the overall shape and color scheme for logos), phonetic (the number of syllables and the rhythmic sequence), and conceptual (e.g., the associations evoked in the mind of the relevant public) aspects of the conflicting signs. This analysis is based on the overall impression created by these signs, taking into account, in particular, their distinctive and dominant elements (e.g., the main word). For example, when there is a conceptual difference between two trademarks, it may happen that, even if they exhibit visual or phonetic similarities, their similarity is deemed weak in light of the overall impression they produce.
The existence of a likelihood of confusion is assessed in light of the relevant public, namely an “average consumer in the category of goods or services concerned, who is reasonably well-informed and reasonably observant and circumspect” (ECJ, Nov. 11, 1997, Case C-251/95, SABEL v. Puma). For technical goods or services intended for professionals, the level of attention is generally considered to be higher. Consequently, the likelihood of confusion is often deemed lower than for mass-market products intended for the general public.
When a trademark has been registered in violation of a third party’s rights or in breach of a legal or contractual obligation, the victim may file a trademark claim with the court (Article L712-6 of the Intellectual Property Code) to request that ownership of the registered trademark be transferred to them. If, as part of this proceeding, you wish to have the rights to a trademark registered by a competitor transferred to you, you must present evidence establishing your prior rights (website, letterhead), as well as objective evidence of the applicant’s fraudulent conduct.
The statute of limitations applicable to this trademark claim is five years from the date of publication of the application for registration of the disputed trademark. However, if the applicant’s bad faith is established, this statute of limitations does not apply, and the aggrieved party may, even after the expiration of the five-year period from the date of publication of the application for registration of the trademark, file a trademark claim by proving the applicant’s bad faith.
For French trademarks, the action is brought before one of the 10 courts with jurisdiction to hear trademark disputes (Paris, Bordeaux, Fort-de-France, Lille, Lyon, Marseille, Nancy, Rennes, Strasbourg, and Toulouse, listed in Table VI of the Appendix to the Code of Judicial Organization), and for European Union trademarks, before the Paris Judicial Court (Article R211-7 of the Code of Judicial Organization).
If you prefer to invalidate your competitor’s trademark due to their wrongful conduct and bad faith, you may request the invalidity of the trademark pursuant to Article L711-2, 11° of the Intellectual Property Code.
Since the PACTE Act of May 22, 2019 (No. 2019-486), the INPI has exclusive jurisdiction to rule on applications for the invalidation of French trademarks filed as a primary claim, and such applications must be filed electronically via the INPI’s e-procedures portal.
For European Union trademarks, the application for invalidation must be filed with the EUIPO.
There is no statute of limitations for this action (Article L716-2-6 of the Intellectual Property Code).
Whether in the context of a trademark infringement action or a trademark invalidity proceeding, the conditions required to establish the applicant’s bad faith are defined as follows by the case law of the CJEU (ECJ, June 11, 2009, C-529/07, Chocoladefabriken Lindt & Sprüngli):
On the date of filing the trademark in question, the applicant knew or ought to have known that a third party was already using, in at least one Member State, an identical or similar sign for an identical or similar product, and
The applicant intended to prevent that third party from continuing to use such a sign.
In the context of a trademark infringement action (if the five-year statute of limitations has expired) or an application for trademark invalidation, it is necessary to present objective evidence demonstrating these two elements in order to prove the applicant’s bad faith.
In the case of a trademark assignment made without consideration—which is legally considered a gift inter vivos—the assignment agreement must be executed as a notarized deed, in accordance with the conditions set forth in Article 931 of the Civil Code. Any contract for the transfer of a trademark free of charge drawn up as a private document between the parties is therefore null and void (Decision of the Paris Court of Appeal, March 13, 2024, Case No. 22/05440, affirming the judgment of the Paris Judicial Court, 3rd Chamber, February 8, 2022, Case No. 19/14142).
Furthermore, the transfer is subject to transfer taxes on transfers made without consideration. In the absence of a family relationship (between third parties), the tax rate for transfer taxes payable by the transferee in a transfer without consideration is 60% of the market value of the trademark.
For the transferring company, in the event of a transfer of the trademark for no consideration (or for a nominal amount (€1)), the tax authorities may apply the theory of abnormal business transactions to include the market value of the trademark in the transferring company’s taxable income. The capital gain calculated based on the trademark’s actual market value will be taxed at the corporate income tax rate of 25%, or 15% for small and medium-sized enterprises (SMEs).
The sale price (or license fee) for a trademark is freely determined by the seller (or licensor) and the buyer (or licensee).
However, when a trademark is valued in accordance with the international standard “ISO 10668:2010—Trademark Valuation,” the valuation report becomes enforceable against the tax authorities. This has the advantage that the tax authorities cannot challenge the value of the trademark as estimated in the report.
There are three methods for valuing the sale (or licensing) price of a trademark as outlined in the ISO 10668 standard:
1) The income approach: The appraiser projects the revenues attributable to the trademark over a specified period (for example, five years) and discounts them using a discount rate (“price premiums”), or calculates the amount of theoretical royalties that the trademark owner could have received had they opted to license the trademark (“royalty relief”), applying an industry-specific royalty rate that can range from 2% to 10%. This method is the most commonly used for valuing a brand in use.
2) The market approach: The appraiser relies on an analysis of sales of similar trademarks within the same industry to determine a trademark’s value relative to the average market price. This method is rarely used because it is virtually impossible to access information regarding trademark sale prices.
3) The cost approach: The appraiser calculates all expenses incurred by the trademark owner for the creation, registration, promotion, and protection of the trademark—including research, registration, advertising, marketing, and communication costs—and applies a discount rate. This method is appropriate for valuing trademarks that have not yet been put to use.
The transfer of a trademark is subject to the registration fee provided for in Article 719 of the General Tax Code, with the following rates:
Transfer price less than 23,000 euros: exempt
23,000 euros or more and less than 107,000 euros: 2%
From 107,000 euros to less than 200,000 euros: 0.6%
200,000 euros or more: 2.6%
However, the sale of a trademark that has not yet been put to commercial use as of the date of sale is subject only to VAT.
To obtain a patent, the invention must be new, involve an inventive step, and be capable of being manufactured or used in any type of industry. These three requirements—novelty, inventive step, and industrial applicability—are essential conditions for patentability in France and Europe (Article L611-10 of the Intellectual Property Code, Article 52 of the European Patent Convention).
The novelty of an invention is determined in relation to the prior art, that is, (i) any written or oral publication, or any public use, prior to the filing date of the patent application, (ii) the elements contained in an application filed prior to the filing date of the patent application with the French Industrial Property Office, the European Patent Office, or under the PCT system (including applications made public after the filing date) (Article L611-11 of the Intellectual Property Code, Article 54 of the European Patent Convention).
The prior art is assessed on a global basis. Thus, an earlier Japanese patent that discloses all the technical features of a claim in a French patent—with the same elements, arranged in the same way, to perform the same function—may constitute prior art that negates the novelty of the French patent.
According to the case law of the European Patent Office, which has been adopted by French courts, when assessing novelty, it is prohibited to aggregate or combine multiple prior art references to reconstruct an implicit feature. A single technical document (or a single use) must disclose the invention in its entirety to negate the novelty of the claimed subject matter. On this point, the Court of Cassation establishes the principle that “to be considered part of the prior art and to be deemed lacking in novelty, the invention must be found in its entirety in a single prior art reference of a certain nature, with the elements constituting it in the same form, the same arrangement, and the same operation aimed at the same technical result, and reflecting the content of the disputed claim ” (Court of Cassation, Commercial Chamber, March 12, 1996, No. 94-15.283).
Furthermore, to negate the novelty of the claimed subject matter, it must derive directly and unequivocally from the disclosure of the prior art, including the implicit features. Implicitness is recognized only if a person skilled in the art (a person possessing ordinary knowledge in the technical field to which the invention pertains) finds at first glance and with certainty that the unexpressed feature is necessarily included in the disclosed subject matter, without the addition of external elements or assumptions.
An invention is considered to involve an inventive step if, for a person skilled in the art, it does not follow obviously from the prior art (Article L611-14 of the Intellectual Property Code). This means that the invention must provide an innovative technical solution that is not obvious to a person skilled in the art.
In France (the INPI) and in Europe (the EPO), examiners apply the “problem-solution approach” (Option A13.08.1 of the Annex to Chapter 13 of WIPO’s ISPE Guidelines (International Search and Preliminary Examination Guidelines)), which consists of the following three steps:
1. Determine the “closest prior art” (the prior document or product),
2. Identify the “objective technical problem” to be solved, and
3. Examine whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to a person skilled in the art.
When the invention produces an unexpected technical effect or when it solves a technical problem that specialists have long been working to solve, or addresses a long-standing need, this may be considered an indication of inventive step.
Yes. According to Article L611-7 of the Intellectual Property Code, when an invention is created by an employee in the course of either an employment contract that includes an inventive assignment corresponding to the employee’s actual duties, or research and development work explicitly entrusted to the employee, that invention belongs to the employer (“work-related inventions”).
When an invention is created by an employee on his or her own initiative outside the scope of his or her duties, the invention belongs to the employee. However, if the invention is created by the employee within the scope of the company’s business activities or using techniques or information provided by the company, the employer has the right to have the ownership or the total or partial use of the rights related to the patent for the employee’s invention assigned to it (“attributable non-work-related invention”). In order for the employer to exercise this right, it must notify the employee of its decision within four months of the employee’s disclosure of the invention (Article R611-7 of the Intellectual Property Code).
For inventions made in the course of employment, the employer is required to pay additional compensation to the employee, the amount of which is determined in accordance with collective bargaining agreements, company-level agreements, and individual employment contracts.
According to case law, the additional compensation to which the employee is entitled, as the creator of an invention made within the scope of his or her duties, must not be determined based on his or her salary, but rather by taking into account the scientific value of the invention, the difficulties encountered during its practical development, and the extent of the employee’s personal contribution (Court of Cassation, Commercial Chamber, November 21, 2000, No. 98-11.900).
With regard to inventions made outside the scope of the employee’s duties, an employer wishing to exercise its right to assign the employee’s invention is required to pay the employee a “fair price.” Unlike the additional compensation provided for work-related inventions, the fair price for attributable non-work-related inventions corresponds to the price for the transfer of the rights held by the employee; its amount is therefore higher than that of the additional compensation paid for work-related inventions.
The fair price is determined by taking into account the initial contributions of each party in terms of resources, time, and data made available, as well as the industrial and commercial utility of the invention (such as royalties received from the licensing of patents, as well as the economic benefits derived from the sale of products using patent-protected inventions). According to case law, while the fair price must be assessed as of the date on which the employer exercises its right of assignment, factors occurring after that date may be taken into account to confirm the assessment of the invention’s development prospects (Court of Cassation, Commercial Chamber, July 9, 2013, No. 12-22.157 (the employer was ordered to pay 320,000 euros plus interest instead of the 70,000 euros initially set).
In the absence of an agreement between the employer and the employee regarding the amount of additional compensation provided for work-related inventions or the fair price for non-work-related inventions attributable to the employer, either party may refer the matter to the National Committee on Employee Inventions (CNIS), an internal body of the National Institute of Industrial Property (INPI) (Article L. 615-21 of the Intellectual Property Code); if no settlement is reached within this committee, the party may then bring the matter before the court (Article L. 611-7, paragraph 1 of the Intellectual Property Code). Before filing a suit on the merits, the employee may, as part of the summary proceedings provided for in Article 145 of the Code of Civil Procedure, request that the president of the district court order a judicial expert evaluation.
The employee’s claim for payment of additional compensation is subject to the three-year statute of limitations under Article 3245-1 of the Labor Code. The claim for payment of fair value, on the other hand, is subject to the five-year statute of limitations under general law (Article 2224 of the Civil Code).
Whether the invention was made in the course of employment or is an attributable invention made outside the scope of employment, the employer is required to list the employee’s name as the inventor when filing the patent application (Article L611-9 of the Intellectual Property Code).
The rule of exhaustion of patent rights means that when a product incorporating the invention protected by a patent is placed on the national or EU market by the patent holder or with the patent holder’s consent, the patent holder loses its exclusive right to exploit that specific unit of the product (Article L613-6 of the Intellectual Property Code and Article 29 of the Agreement on a Unified Patent Court). Since the exhaustion of patent rights prevents the patent holder from prohibiting the free circulation of the product in question, the purchaser of that product may use, lend, or resell it freely without incurring liability for patent infringement.
This provision, established to prevent a patent owner from exercising indefinite control over the marketing of a product after an initial lawful sale and to promote the free movement of goods (Articles 34 and 36 TFEU), does not apply when products have been placed on the market unlawfully without the patent owner’s consent. Furthermore, the exhaustion of patent rights applies to products placed on the market and not to the exhaustion of the patent on the invention itself used in those products; consequently, if another product incorporating said invention is manufactured or sold without the patent holder’s authorization, the patent holder may bring a patent infringement action against the manufacturer and the seller (Court of Cassation, Commercial Chamber, April 25, 2006, No. 04-15.995).
The patent owner may circumvent this rule of exhaustion of rights by including specific clauses in distribution contracts. Nevertheless, care must be taken to ensure that such clauses are not interpreted as an anticompetitive agreement, contrary to the principle of the free movement of goods. Indeed, restricting the parallel import or export of goods under distribution agreements is considered a violation of Article 101 of the Treaty on the Functioning of the European Union, punishable by a fine of up to 10% of global revenue (European Commission, May 23, 2024, Mondelēz case, AT.40632, fine of 337.5 million euros).
It is possible to request that the president of the Paris District Court (which has exclusive jurisdiction under Article D211-6 of the Code of Judicial Organization) order urgent measures pursuant to Article L615-3 of the Intellectual Property Code.
To do so, you must first prove your standing to sue (as the patent owner or holder of an exclusive license) using the INPI’s national patent register or the EPO’s European patent register. Furthermore, in the case of an exclusive licensee, it is necessary to send a letter by certified mail requesting that the patent owner initiate proceedings to stop the act of infringement, and to prove that the patent owner has not filed a lawsuit.
The emergency measures provided for in Article L615-3 of the Intellectual Property Code are permitted not only when patent infringement is already occurring, but also when it is about to occur.
Prior to filing a summons, in order to gather material evidence, a seizure for infringement must be carried out (Article L615-5 of the Intellectual Property Code). The motion for seizure of infringing goods must be filed, through an attorney, with the presiding judge of the Paris Judicial Court, along with supporting documents. Since the procedure is non-adversarial, it is not necessary to notify the alleged infringer. The president of the court verifies the applicant’s standing to sue and the existence of a prejudicial act; if the request is granted, the president issues a decision in the form of an order on motion authorizing the seizure of counterfeit goods by a judicial officer (commissaire).
Based on the items seized and documented by the judicial officer as part of the seizure-for-infringement procedure, a petition for summary relief must be filed with the presiding judge of the Paris Judicial Court.
At the same time, within 20 business days or 31 calendar days (whichever is longer) from the date of the seizure-for-infringement, it is necessary to file a main action before the Paris Judicial Court to obtain an injunction to cease the infringement and damages, or to file a complaint for patent infringement with the public prosecutor of the same court, failing which the seizure will be null and void.
The judge presiding over the preliminary relief proceedings may make the enforcement of the measures ordered contingent upon the plaintiff providing security to ensure potential compensation for the defendant if the infringement action is subsequently found to be without merit or the measures are set aside.
If the request for urgent measures is not preceded by a seizure for infringement, the plaintiff must file a complaint with the trial court within 20 business days or 31 calendar days (whichever is longer), counting from the date of the preliminary injunction order (Article R615-3 of the Intellectual Property Code). Failing this, the ordered measures are set aside at the defendant’s request without the defendant being required to justify the request.
The owner (or exclusive licensee) of a European patent without unitary effect designating France may file a patent infringement action with the Paris Judicial Court during the transitional period of the Unified Patent Court (UPC), which runs through May 31, 2030.
To opt for the jurisdiction of the French court, one must exercise the “opt-out” option from the UPC’s jurisdiction via the “Case Management System” (CMS) page on the UPC’s official portal.
The duration of a patent infringement proceeding before the Unified Patent Court (before the local/regional division) is approximately one year, which is significantly faster than that of a patent infringement proceeding before a French court (approximately two years).
Furthermore, if the plaintiff prevails, the judgment is enforceable in all 18 member states that are signatories to the Agreement on a Unified Patent Court (AJUB), which is a definite advantage.
However, there is a risk: if the defendant, the alleged infringer, files a counterclaim seeking revocation of the patent and that claim is, unfortunately, granted, the patent will then be revoked in all 18 member states that are signatories to the UPC Agreement.
Patent infringement proceedings before the Paris Court of Justice are based on well-established case law, which has the advantage of offering a high degree of predictability regarding the outcome of the trial.
With regard to procedural costs, patent infringement proceedings before the Paris Court of Justice require payment of only 50 euros (revenue stamp) to the court, whereas patent infringement proceedings before the Unified Patent Court require payment of 14,600 euros (plus an additional amount based on the value of the dispute) to the UPC. French attorneys may represent their clients before all divisions of the Unified Patent Court (Article 48 of the Agreement on the Unified Patent Court); however, due to the specific nature of proceedings before this court, attorneys’ fees tend to be higher than in proceedings before the Paris Judicial Court.
