Enforcement of IP Rights - Infringement Seizure in France

1. Didier Intès French & European Patent attorney ENFORCEMENT OF IP RIGHTS – INFRINGEMENT SEIZURE IN FRANCE AIPPI – November 7, 2013

2. Saisie-contrefaçon = part of our History Since 1793 for author rights Close to current version since 1964 for trademarks and 1968 for patents = evidence of infringement can be provided by any means, including a « saisie-contrefaçon » Since then: turned out to be the most commonly used means to provide evidence of infringement Used for patents (L.615-5), Designs (L.521-4),Trademarks (L.716-7), author rights (L.332-1), software (L.332-4)… Art.145 CPC = “sort of” seizure for other situations (e.g. unfair competition) Art.812 CPC if litigation pending

3. Basic principles Order obtained ex-parte, but conducted “inter-partes”  trend to limit Courts allowed to issue such order (only Paris Civil Court for patents; 10 Civil Courts for Designs and Trademarks)  seized company can launch summary action for “withdrawal” of order  risk for invalidation of the seizure by Court judging on infringement Order executed by a bailiff, assisted by experts (independent experts; usual patent attorney of patentee = independent expert) Execution must strictly follow the order Saisie-contrefaçon shall not cause harm to seized company (e.g. for seizures during trade shows, be discrete) Basically= descriptive seizure, possibly together with material seizure Can encompass material evidence and accounting evidence Action on the merits shall be introduced within 20/31 days

4. Preparing the order Order requested by attorney-at-law on behalf of registered owner (or exclusive licensee in certain conditions) Descriptive seizure and material seizure Necessity to have a clear view of evidence needed (e.g. Real product? Dismounted products? Photos? Copies of documents? Paper vs. electronic files?) Scenarios: what to do if … (locksmith, computer specialist….) Scope of infringement (Accounting books, invoices, suppliers, …) Authorize questions necessary for investigations Name experts Term for execution

5. Preparing the seizure Preparation with client: - get familiar with invention and infringement - get prepared to check what must be checked Preparatory meeting with bailiff: - explain what is sought - train bailiff on “technical words” - agree on how to proceed (ex: seal for seized products) - make sure bailiff is aware of legal issues (e.g.: serving order + leave enough time to consider) - ensure mutual understanding and “harmony” - house keeping

6. Conducting the seizure Take it easy – no need to be aggressive Be very careful on what is going on Try to see infringing product/method first Make sure bailiff sees what is important and takes due note in his report Show that you have time….. Be ready to make decisions with attorney-at-law (e.g.: continue seizure in another place) If seizure fails to bring evidence  tricky to be authorized to conduct a new one

7. Defending against a seizure Read order very carefully Take time to contact your counsel (ex: same day summary action) Check material brought by bailiff Allow access but do not help Never leave “seizing team” alone Make sure your remarks be mentioned in the report Insist on confidentiality Consider summary action

8. Impact of Directive on IP rights enforcement TROUBLE + HARMONIZATION

9. Impact of Directive on IP rights enforcement HARMONIZATION Same wording for different IP rights Same term for launching action on the merits Same consequences if beyond term = seizure is invalidated in full

10. Impact of Directive on IP rights enforcement TROUBLE 1/ Need to provide “reasonably available evidence” beforehand = Art. 7 of Directive - Not in our “culture”, not in our IP law (Art. 2.1 of Directive = possibly more favorable means for rightholders in National law) - But Judges now tend to request such “prior-evidence” - Defendants tend to invoke superior laws (European Convention on Human Rights…)  principle of proportionality because order obtained ex-parte

11. Impact of Directive on IP rights enforcement TROUBLE 2/ Controversy descriptive seizure / material seizure - Former text: … to proceed with a detailed description, with or without a material seizure … - New version: … to proceed either with a detailed description, with or without taking samples, or with a material seizure …  room for combined descriptive and material seizure?  decisions: legislator did not intend to exclude such combination  practical advice = request to be authorized to collect samples by payment of their price

12. Impact of Directive on IP rights enforcement TROUBLE 3/ Controversy seizure / right of information - Attempts to contend that “right of information” = only tool for obtaining financial/accounting information  failed: such information can be requested in a saisie-contrefaçon (and advisable to do so)

13. Impact of Directive on IP rights enforcement TROUBLE 4/ Special care on confidential information - Art. 6.1 of Directive: … subject to the protection of confidential information … - Has been an issue for a long time - Courts (and seized company) even more vigilant than in the past

14. Didier Intès dintes@bdl-ip.com THANK YOU