In France, the question of injunctive relief for infringement of patents has only given rise to a very limited number of academic studies.Footnote 1 Although there are quite a lot of court decisions dealing with this topic, the courts generally do not explain their reasoning on this particular point. In France, patent injunctions can only be handledFootnote 2 by the specialized IP chambersFootnote 3 of the general jurisdictions of Paris, which are the Tribunal Judiciaire (formerly known as the Tribunal de Grande Instance) de Paris on first instance, where the judgment is generally delivered within eighteen months, and, on appeal, the Cour d’appel de Paris, where the cases are generally adjudicated within twelve months. The highest court, the Cour de cassation only deals with matters of law, and not fact.Footnote 4 On average, 170 court decisions on patent litigation were delivered per year in France between 2015 and 2019.
A major distinction must be made in French law between preliminary injunctions and permanent injunctions, since they are not based on the same legal grounds.Footnote 5 Therefore, the requirements to grant permanent injunctions are different from the requirements to grant preliminary injunctions. As discussed in greater detail in Section A.1, permanent injunctions are automatically granted every time a valid patent in force has been infringed, since a patent is a property right. However, a preliminary injunction must be based on other legal grounds,Footnote 6 which are more demanding, hence the relative scarcity of these preliminary injunctions. Indeed, at the time of the litigation for preliminary injunctions, the validity of the patent has not been challenged, and the infringement has not been established by the courts.Footnote 7
More generally, since French law belongs to the civil law tradition, judges only have limited powers, which are granted to them by statutory law. Since the statutory bases for a permanent injunction do not give the judge any significant discretion whether or not to grant that relief, the courts cannot consider the fact that the plaintiff is a non-practising entity, and cannot even apply a balance of interests, contrary to preliminary injunctions, or grant compensatory relief instead of injunctive relief when they deem it more appropriate.Footnote 8
A. The Requirements for Granting a Permanent Injunction for Infringement of a Patent in French Law
Since a patent is a property right, every time a valid patent in force has been infringed, a permanent injunction must be issued, except on very rare occasions.
1. Permanent Injunctions Must Be Granted Automatically When a Valid Patent in Force Has Been Infringed
When the infringed patent is in force, the legal grounds of patent law explain why such injunctions must be granted every time.
a. The Legal Basis of Permanent Injunctions
The majority of the countries in the world are bound by international conventions relating to intellectual property rights, such as the Paris Convention for the protection of industrial property, and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. Nonetheless, some differences still remain between the member states of the European Union, which led to the enactment of the Enforcement DirectiveFootnote 9 number 2004/48 of 29 April 2004 (Directive), which has been transposed into the French Intellectual Property Code (the Code) by law number 2007-1544 of 29 October 2007.Footnote 10 Therefore, today, the legal bases of injunctive relief are within the French Intellectual Property Code, which must be interpreted according to the European Directive.
The French Intellectual Property Code does not expressly allow the judge to grant a permanent injunction to stop an infringer from infringing a patent. Nonetheless, the majority of legal writers and case law consider that, because of the legal monopoly which derives from the patent title,Footnote 11 and the definition of infringing acts,Footnote 12 a judge who is requested by the patent holder to grant a permanent injunction for the future must do so every time a valid patent in force has been infringed. Since a patent gives its holder a property right, the patentee has an exclusive right which allows him to request a remedy in case of any encroachment on that property. The injunction which forbids the infringer from continuing the infringing acts is therefore considered a natural consequence of the infringement ruling.Footnote 13 This is why Article 11 of the Enforcement Directive, which provides for such a remedy, did not need to be implemented in French law.Footnote 14 As a consequence, case law prior to the Enforcement Directive can still be invoked in such situations.
b. The Infringed Patent Must Be in Force
This is a mandatory requirement for granting an injunction: after the patent expires, the infringer cannot be prohibited from performing acts that would have constituted an infringement of the patent when it was in force.Footnote 15
The invalidation of the patent has an impact upon injunctive relief.Footnote 16 When the patent has been invalidated during the course of the infringement proceedings, no infringement can be found, and therefore no injunction can be granted.Footnote 17 Similarly, when a patent has been invalidated in a first proceeding, this invalidity can be invoked against the patentee during other court proceedings for infringement which are still pending, and this then precludes any action for infringement.Footnote 18 When a decision of invalidity rendered in a first litigation has been appealed, and, meanwhile, there is another litigation concerning infringement of the same patent, the defendant may request the postponement of that decision until the final decision concerning the validity of the patent has been rendered. However, the judge is not required to grant the defendant’s request, and may take into account the likelihood of invalidity, as he does when an opposition is filed before the European Patent Office.
A major reform of the grant system for French patents has recently introducedFootnote 19 an opposition procedure before the French National Industrial Property Institute (INPI), which is based on the European procedure. It allows any person, except the patentee, to challenge the validity of the patent within nine months of the publication of its grant in the Bulletin officiel de la propriété industrielle. The decision of the general director of the INPI produces the same effects as a court decision according to Article L. 111-3 al. 6° of the Code of Civil Execution Procedures,Footnote 20 which means that it is an executory title. Whereas the preparatory works stated that the decision of the general director of the INPI had the authority of res judicata, the articles which were finally enacted do not use that expression. Whether a decision rejecting the opposition has the authority of res judicataFootnote 21 would depend on its jurisdictional nature, which is discussed among legal writers.Footnote 22 In any case, the decision of the general director of the INPI may be amended by the Paris Court of Appeal, which will consider elements of both fact and law.Footnote 23 If several provisions deal with the articulation of the opposition procedure with the limitation procedures,Footnote 24 and the revocation procedures,Footnote 25 nothing is said concerning the articulation between opposition procedures and actions for infringement. The judge may stay his decision in the interest of proper justice, but, as for the European opposition procedure, is not required to do so. The judge might decide on a stay if the opposition seems serious enough, but if the judge doesn’t stay, there is a risk of contradictory decisions, since a patent upon which an infringement decision has been based may later be revoked.
The most difficult question, which is somewhat similar to the latter, concerns what happens when a first decision grants a permanent injunction, and, later on, another decision invalidates the same patent. For the moment, French case law has only had to deal with that question in the case of damages that the infringer had to pay, making a distinction between infringers that had already paid such damages to the patentee and cannot ask for a refund of these damages,Footnote 26 and those that had not and will not be requested to pay them.Footnote 27 Scholars agree that permanent injunctions cannot be enforced after a court has declared the underlying patent invalid,Footnote 28 although they do not generally explain upon which statutory basis such an opinion could be based. The injunction should stop having effect, since there cannot be any infringement of an intellectual property right that does not exist. Since injunctions involve the future, whereas damages concern the past, it follows that the patent invalidation decision produces its effects ex nunc, and prevails over the infringement decision for the future, but not ex tunc, since it doesn’t modify the past effects of the infringement decision.Footnote 29 On a procedural level, the res judicata of the infringement decision ceases its effects for the future, since such a limit is implicitly but necessarily included in the infringement decision. Similarly, an injunction ceases its effects when the patent becomes part of the public domain, as soon as it has expired.Footnote 30 Therefore, and contrary to trade secrecy law, there is no need to make any specific request to the judge.
c. An Automatic Remedy
Since permanent injunctions for infringement of a patent are based on the proprietary nature of the patent, it means that the judge must grant such injunctions whenever requested by the patentee to do so. Courts have been granting permanent injunctions for a long time,Footnote 31 even though they do not explain clearly the legal basis of the grant of such permanent injunctions. For example, a decision of the Paris Court of Appeal explained in 2017 that the infringement of patent rights constitutes a violation of the exclusive right of the patentee to authorize or prohibit the exploitation of the product which is the subject matter of the patent, and that a remedy should thus be granted in order to reinstate the patentee’s rights, which justifies the injunction.Footnote 32
2. When Injunctive Relief Is Not Mandatory
Contrary to preliminary injunctions, which are strongly regulated, permanent injunctions may only be denied on very rare occasions.
a. Situations Where a Permanent Injunction May Be Denied
On very rare occasions, a court may deny the grant of a permanent injunction. We shall examine first the denial of injunctive relief against a certain type of defendant, or with regard to a certain type of plaintiff, then whether this is the case in situations of partial denial of injunctive relief for a sub-group of infringing acts, the cases of compulsory licences, and finally of other exceptions.
Permanent injunctions are still possibleFootnote 33 for indirect infringers acting in good faith, who can normally not be held liable for an infringement, since they were not acting knowingly.Footnote 34 Indeed, the summons makes them aware of the infringement, so that any subsequent act becomes unlawful, which justifies an injunction for the future.Footnote 35 The grant of a permanent injunction against intermediaries might be possible under the general rules of civil procedure.Footnote 36
A very old court decision even granted injunctive relief against the French state.Footnote 37 However, nowadays, Article L. 615-10 of the French Intellectual Property Code provides for a notable exception:
[W]here an invention which is the subject of a patent application or of a patent is worked, in order to meet the requirements of national defense, by the State or its suppliers, subcontractors and subsidiary suppliers, without a license having been afforded to them, the … Court may order neither the discontinuance nor the interruption of the working nor the confiscation provided for in Articles L. 615-3 and L. 615-7-1.
The principle of equality before the law means that the nature or reputation of the plaintiff cannot be considered in the decision whether or not to grant a permanent injunction.Footnote 38 More specifically, the fact that the patent holder is a non-practising entity (NPE) does not prevent the court from granting a permanent injunction. Indeed, in property law in general, case law considers that a mere action against an infringement of a property right cannot amount per se to an abuse of law.Footnote 39 It is, however, true that some legal writers are pleading that, as in US law, and more precisely since the eBay decision,Footnote 40 it might be possible to replace the injunction with damages.Footnote 41 Indeed, and despite the automatic nature of permanent injunctions, these authors base their opinion upon the function of the patent, which is to promote research in order to be useful to the community.Footnote 42 Therefore, when a person does not use the patented invention for its whole purpose, that person might not be able to use the whole set of available remedies.Footnote 43 However, for the moment, applicable French patent law does not take into account such ideas, since, contrary to European trademark law, the way the patent holder uses its right is not taken into consideration.Footnote 44 This is quite logical, since the notion of function of rights seems rather difficult to apply to, and be defined in, patent law.Footnote 45 Indeed, creating a duty to exploit the invention would seem out of step with current uses of patents, especially for a NPE designed to be the sole entity to deal with future licensees, and this explains why such a situation isn’t regarded as an abuse.
In addition, there are some compulsory licences in French law, either ordered by courts or by the government. Among them are compulsory licences for lack of exploitation,Footnote 46 for dependent inventions,Footnote 47 for exportation of pharmaceutical products,Footnote 48 in the interest of public health,Footnote 49 to satisfy the requirements of the national economy,Footnote 50 and for national defence.Footnote 51 In practice, such compulsory licences are rarely used (e.g., we are not aware of any case of compulsory licence in the interest of public healthFootnote 52 in France). We think that pending proceedings regarding a compulsory licence may have an impact on the grant of permanent injunction in a pending infringement case. Indeed, if the request for a compulsory licence is made during the proceedings for infringement of the same patent, the judge who decides there is an infringement but who grants the licence cannot prohibit exploitation of the invention for the future, at least within the scope of the compulsory licence. Being an infringer does not preclude requesting a compulsory licence,Footnote 53 and, indeed, that could even be a way for the infringer to prove that it is able to work the patented invention in an effective and serious manner,Footnote 54 which is a requirement of the French Intellectual Property Code for getting a compulsory licence for lack of exploitation.Footnote 55 Finally, when a compulsory licence has been granted after a decision of infringement, a permanent injunction which had been granted by the judge who ruled on infringement can no longer be enforced.
Potential infringers have tried to use anti-suit injunctions issued by American courts in order to avoid injunctions prohibiting future patent infringement by French courts. In a 2020 case,Footnote 56 Lenovo had an anti-suit injunction issued by a California court against a patent holder. However, the Paris Court of First Instance has deemed such an injunction illicit as fundamentally contrary to the French and international principles of patent law, and to the protection of property, to the rights to a fair trial and to an effective remedy granted by the European Court of Human Rights (ECHR). Since the anti-suit injunction only ended after the term of the patent, it would have deprived the patentee of the right to get an anti-infringement injunction. Therefore, such an anti-suit injunction constitutes an obviously illicit disturbance, and Article 835 of the French Civil Procedure Code allows the court to force its beneficiary to withdraw its use. Anti-suit injunctions are therefore not an efficient shield against injunctive relief for patent infringement before French courts.
Another situation where the courts may refuse an injunction is the lateness failure. Indeed, an injunction can also be denied to a patentee who requests a permanent injunction and, more generally, sues for infringement too late based on civil procedure rules, since Article L. 615-8 of the French Intellectual Property Code states that an infringement action is subject to a limitation periodFootnote 57 of five years from the day where the owner of a right has known or should have known the last fact allowing its exercise.
On very rare occasions, a permanent injunction may be refused for other reasons, which are probably based more on practical uselessness rather than on legal grounds. Such situations may happen when infringing goods have been withdrawn from the market when the judicial proceedings began.Footnote 58 In addition, some decisions have refused to grant a permanent injunction when the defendant was bankrupt and stopped their business, since such measures were no longer useful.Footnote 59 These situations remain exceptional, and even when the practical risk of infringement becomes very low, since infringing goods are not on the market, judges usually still grant the requested permanent injunction.Footnote 60 Thus, in very specific circumstances, it may happen that the court only grants damages for past infringements without prohibiting the infringer from continuing the infringing acts. Otherwise, a permanent injunction cannot be refused on the basis of the public interest, or for lack of proportionality,Footnote 61 or due to considerations of follow-on innovation.
The general principle of prohibition of abuse of lawFootnote 62 might, at least theoretically, be applied in the matter of intellectual property rights. In French civil law, several criteria of such abuse have been suggested by scholars,Footnote 63 among them negligence in exercising one’s rights,Footnote 64 malicious intent,Footnote 65 and disregard of the social function of rights. However, according to court decisions, actions against encroachments of property rights cannot generally be considered an abuse of law per se.Footnote 66 In practice, albeit sometimes pleaded, abuse of law has only rarely been admitted by the courts, which consider that the patentee may make a mistake about the scope of its rights.Footnote 67 And even when an abuse of law is admitted by the court during an infringement procedure, it often results from the fact that there was no infringement in that particular case,Footnote 68 and is thus not a ground which would justify the refusal of an injunction in the case an infringement has been ascertained. Therefore, the use of the concept of abuse of law for refusing an injunction seems somewhat theoretical. Since a patent gives the patentee a monopoly, whether exploited or not, rules of competition law prohibiting abuse of dominant position or agreements which constitute restraints of trade may be applied when deciding to grant a permanent injunction.Footnote 69
Nonetheless, as regards essential patents and FRAND (Reasonable And Non-Discriminatory) commitments, it should be noted that the Paris Court of First Instance granted a permanent injunction concerning patents on the mp3 musical files format (ISO/IEC 11172-3 standard) against an infringer who had never applied for a licence,Footnote 70 although without any specific motivation or any balance of interests.Footnote 71 The ECJ Huawei case,Footnote 72 which was decided later, would therefore not change the approach in such a situation.
As regards the possibility of alternative measures, the Enforcement Directive provides in Article 12 that member states may provide that, in appropriate cases and at the request of the person liable to be subject to injunctive relief, the competent judicial authorities may order pecuniary compensation to be paid to the injured party instead of applying injunctive relief if that person acted unintentionally and without negligence, if execution of injunctive relief would cause disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory. However, this is only a possibility offered to member states, which has not been used by the French legislature.Footnote 73 Contrary to injunctions, destruction and recall orders in case of a patent infringement are discretionary according to Article L. 615-14-2 al. 2 of the French Intellectual Property Code.
b. Differences between Preliminary and Permanent Injunctions
Preliminary injunctions are regulated by Article L. 615-3 of the French Intellectual Property Code. Any person having the right to bring an action for infringement may bring an action in summary proceedings before the competent civil court for an order, if necessary under penalty payment, against the alleged infringer or the intermediaries whose services used, for any measure intended to prevent an imminent infringement of the rights conferred by the title or to prevent the continuation of alleged acts of infringement. In summary proceedings or on application, the court may order the measures requested only if the evidence reasonably available makes it likely that the plaintiff’s rights are being infringed or that such infringement is imminent. The court may prohibit the continuation of the alleged acts of infringement, make it subject to the provision of guarantees intended to ensure possible compensation to the plaintiff or order the seizure of or delivery into the hands of a third party the goods suspected of infringing the rights conferred by the title, in order to prevent their introduction into or circulation within the circuits of commerce.
Preliminary injunctions are thus very different from permanent injunctions since they are not automatically granted. The Code provides that the court “may” take such measures. Since those measures are temporary, the judges look at the case prima facie. Therefore, as the Code provides, the preliminary injunction can only be granted if elements of proof, which the defendant can reasonably have access to, make it plausible that the patentee’s rights have been infringed or are about to be infringed.
Litigation concerning preliminary injunctions is therefore much more developed than for permanent injunctions since the claimant must prove the likelihood of an infringement. In recent years, case law has somewhat evolved concerning the question of the invocation of the invalidity of the patent at that stage of the proceedings. Beforehand, judges considered that they could not deny a preliminary injunction unless the patent was obviously invalid.Footnote 74 Nowadays, case law seems to be more rigorous as regards the likelihood of the infringement, by saying that it may be ruled out when there are serious issues of validityFootnote 75 or infringement.Footnote 76 This means that if the judge ruling on the merits subsequently denies any infringement, the patent holder that had enforced the preliminary injunction will be strictly liable towards the defendant, according to Article L. 111-10 of the French Code of Civil Execution Procedures. In addition, Article L. 615-3 of the French Intellectual Property Code states that the court may subject the grant of a preliminary injunction to a deposit of the patent holder.
B. The Effects of Permanent Injunctions for Infringement of a Patent in French Law
A permanent injunction may be formulated in more or less extensive ways, and its duration may vary. When those injunctions are not being complied with by the infringer, remedies are available.
1. The Scope of Permanent Injunctions
Since there is no statutory basis for permanent injunctions in French patent law, the judge has some latitude to formulate them, provided they comply with the fundamental rules of civil litigation.
For example, some permanent injunctions refer to specific products with a very precise reference to infringing products,Footnote 77 notably for illicit imports.Footnote 78 In other situations, permanent injunctions refer both to the infringed claims and to the infringing objects, and to the prohibited acts: see, for example, a case where the Paris Court of Appeal “prohibit[ed] company D. to continue the sale of hand pieces and cartridges reproducing the claims 1, 5, 6, 7, 10 and 11 of the French part of European Patent 1 547 538”.Footnote 79
Other injunctions remain quite vague in their formulation, but nonetheless refer to the precise acts which have been committed by the defendant: for example, after having said that the defendant, “by importing and selling on the French territory, ‘Get Locky’ sealing rods that reproduced the claims of patent EP 1 572 548, has infringed the first, third and seventh claims of that patent”, the Paris Court of First Instance decided to “prohibit the continuation of such activities”.Footnote 80 Other injunctions seem more general at first glance, by “prohibit[ing] corporations M. and N. from continuing the patent infringing and unfair competition activities”,Footnote 81 although one should probably consider that this was an implicit reference to the activities that were previously mentioned in the judgment.
Some injunctions have been granted with a somewhat wider scope by prohibiting, more generally, infringement of specific claims of a specific patent, such as a case of the Paris Court of Appeal, “prohibit[ing] corporation E. to sell products which reproduce the claims 1, 2, 5, 6 and 8 of French patent n°19.01136 owned by Mr. R.”Footnote 82 The wording was probably suggested by the patent holder, and reproduced as such or with some modifications by the court in its decision.
It should be noted that sometimes injunctions also prohibit unfair competition acts which are linked to patent infringement activities, such as free-riding on the investments of the patent holder by making very similar technical documentations and catalogues.Footnote 83
2. Duration of Permanent Injunctions
According to Article L. 613-1 of the French Intellectual Property Code, the exclusive right of exploitation takes effect as of the filing of the application, even though it is only considered as perfect and definitive once granted. That’s the reason why Article L. 615-4 of the same code provides that, notwithstanding this former article, acts committed prior to the date on which the patent application has been made public or prior to the date of notification to any third party of a true copy of such application shall not be considered to prejudice the rights deriving from the patent. Moreover, as we have seen previously, the injunction stops as soon as the patent expires.
In addition, the judge may adjust the duration of the scope of an injunction. First, it is possible to postpone the effectiveness, as the Paris Court of First Instance did by “prohibit[ing] corporation R to possess and to sell the Spido Evolution walker which infringes the claims of French patent FR 2 959 663 within 8 days after the notification of the judgment”.Footnote 84 Other cases have a somewhat more ambiguous formulation, where one can wonder whether it is the injunction itself which begins after a period of time, or whether – which seems much more likely – the injunction begins as soon as the judgment has been issued to the defendant, but the astreinte (which is a daily penalty for refusal to comply with that injunction) can only be enforced after such a period of time has passed since the judgment has been issued.Footnote 85
Postponing the effectiveness of the astreinte can be justified when it is practically difficult for the infringer to put an immediate end to the infringement (e.g., by replacing an infringing component by a substitute), or when it appears reasonableFootnote 86 to allow the infringer to sell its remaining stocks.Footnote 87
Until recently, pursuant to the then applicable general civil procedure rules, an appeal stayed the execution of first-instance judgments,Footnote 88 which means that a permanent injunction only became effective once the Court of Appeal has affirmed it. However, at the request of the patent holder, the Court of First Instance could have ordered provisional execution of the decision, which renders the injunction enforceable as soon as the judgment has been issued, despite the appeal.Footnote 89 A decree of 11 December 2019 introduced a major change by reverting that principle.Footnote 90 Henceforth, provisional execution is the principle, since it automatically applies to first-instance decisions, unless the law or the judge decides otherwise. In that latter situation, the judge will have sole discretion to decide if provisory execution is not compatible with the nature of the case.Footnote 91 If a decision which benefits from provisional execution is reversed on appeal, the patent holder that enforced the injunction granted in first instance will be held strictly liableFootnote 92 for the damage caused by the enforcement of the injunction.Footnote 93 In order to mitigate the amount of such liability, the new legislation states that, in case of appeal, the first president of the appellate court can be asked to stop provisory execution “when there is a serious argument in favor of reversal and that there is a risk that the execution may lead to obviously excessive consequences”.Footnote 94
3. Remedies for Violation of Permanent Injunctions
Since French civil law has no equivalent for the notion of contempt of court, an injunction may be accompanied by an astreinte, which is a recurring penalty for refusal to comply with the injunction, in order to encourage the infringer to comply with that order.Footnote 95 Article L. 131-1 of the French Code of Civil Execution Procedures (CPCEx) provides that “any judge may, even of its own motion,Footnote 96 order an astreinte in order to ensure the enforcement of its decision”. The determination of the astreinte is a discretionary power of the judge, and does not require any motivation.Footnote 97 Such an astreinte, which may also be ordered by the specialized judge for the enforcement of court decisions,Footnote 98 is however not automatically ordered when requested.Footnote 99
Pursuant to the CPCEx, an astreinte may be provisional or irrevocable.Footnote 100 Whereas a provisional astreinte is liquidated later by the judge considering the behaviour of the debtor and their creditworthiness,Footnote 101 the amount of an irrevocable astreinte is determined definitively by the judge when ordered.Footnote 102
Therefore, when a permanent injunction has been violated, the patent holder may ask the relevant judge to liquidate the astreinte which has been ordered, and, in practice, the patentee will generally also request a new astreinte.Footnote 103 Article L. 131-2 of the CPCEx provides that “the astreinte is independent from the damages”, which means that the amount of the astreinte has no relationship whatsoever to the amount of losses suffered by the patent holder, and that it cannot be deducted from the damages to be paid, and must therefore be in addition to them.Footnote 104 New patent infringement proceedings may also be brought in case these injunctions are not complied with.Footnote 105
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