A French Court hampers access to infringement seizure by requiring evidence confirming suspicion of infringement. An isolated case?

French court surprisingly withdrew a court order granting infringement seizure on the ground that the patentee request was not supported by sufficient evidence for the infringement suspicion. It is not clear whether the court intended to hamper patentees’ access to infringement seizure or if this decision was simply motivated by the specifics of the case.

The “saisie-contrefaçon” (infringement seizure) is known to be the most efficient way to gather evidence of infringement in France (used in about 80% of infringement actions). Upon authorization granted ex-parte, a bailiff assisted by expert chosen by the patentee may enter any premises where evidence of infringement may be found to perform the authorized investigations.

Traditionally, the infringement seizure is granted subject to an existing patent together with evidence of maintain into force, ownership of the claimant.

In particular, French courts usually hold that:

  • the claimant does not have to establish, by means of evidence, the reality of the alleged infringement” (Court of Appeal of Paris, 16 May 2017, RG No. 15/15766 and 15/15693)

  • it is thus wrongly that the Presiding Judge has, in order to dismiss the claim (…) reprimanded the fact that when the application was filed, no evidence easily attained were provided” (Court of Appeal of Paris, 26 May 2017, RG No. 15/10204 and 15/10201).

However, a different approach has been recently adopted by the Court of Appeal of Paris (11 September 2018, RG No. 18/01099).

In this case, the US-based company Arconic, specialized in the manufacture of aluminium plate products in particular for the aviation industry, requested, on the basis of its EP patent covering a process to produce sheets of aluminium, and was granted a court order to carry out an infringement seizure at the premises of one its competitor, the French company Constellium Issoire.

After completion of the seizure operations, Constellium sought the withdrawal of the court order having granted the infringement seizure.

The first judge withdrew the order and the Court of Appeal of Paris upheld the first instance decision in a judgement handed down on 11 September 2018, on the ground that the suspicion of infringement expressed by the patentee in its request for infringement seizure was not supported by sufficient evidence.

What is more startling is that the patentee provided evidence for the infringement suspicion. The Court, after an in-depth review of said evidence, found that said evidence was insufficient to infer that most of the features of the patent were implemented by Constellium.

The Court of Appeal held that: “The property right conferred by a patent is neither absolute nor discretionary, and is still subject, in the case of a request for seizure, to the appraisal of its merits by the judge (…), notably when, as is the case here, the reasons set forth in its support turn out to be wrong.

Besides, article 3 of the Directive 2004/48/EC of 29 April 2004 requires that proceedings which are necessary to ensure that IP rights are respected must be fair and proportionate.

In the present case, as there is no tangible suspicion of infringement, the court can only remark that the requested seizure would, as a main consequence, allow Arconic to know about Constellium’s aluminium alloy product manufacturing process (…)”.

It is quite unclear whether or not the Court intends to tighten the conditions for obtaining an authorization to carry out an infringement seizure and if ultimately the Court contemplates to relinquish the principle that the patentee’s right to infringement seizure is almost automatic in France. In particular, the specifics of the case, namely the nature of the invoked patent (process) and the likelihood of disclosure of the competitor’s manufacturing process, may have led the Court to take such a decision.

However, it was not necessary to go that far to achieve such a goal: the Court could have modified the orders authorizing the infringement seizure to provide that the seized documents should be placed under seal to ensure confidentiality of said documents.

Hopefully, French courts will not follow this approach and will not jeopardise this very efficient tool that makes the French patent system particularly attractive.

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