Validity of a ‘saisie-contrefaçon’ carried out after the expiry of the patent

Authors: Marianne Schaffner and Romain Viret (Linklaters)

Citation: Journal of Intellectual Property Law & Practice (2010) doi: 10.1093/jiplp/jpq124

The Cour d'Appel de Paris recently held that a saisie-contrefaçon can be carried out after the expiry of the patent on which that saisie-contrefaçon is based.

Legal context

The law of 29 October 2007 implementing the Intellectual Property Enforcement Directive entered into force on 30 October 2007. It amended several provisions of the French Intellectual Property Code (IPC) including Article L. 615-5 which governs the saisie-contrefaçon (i.e. a measure for preserving evidence within the meaning of Article 7 of the IP Enforcement Directive) in relation to patents.

Article L. 615-5 was amended in several aspects. The most discussed change related to the time limit within which infringement proceedings on the merits are to be commenced after a saisie-contrefaçon has been carried out. A less discussed change related to the persons entitled to have a saisie-contrefaçon carried out. While Article L. 615-5 IPC used to provide that the right to a saisie-contrefaçon was granted to ‘the applicant or the owner of a patent’, it now provides that such right is available to ‘any person entitled to commence infringement proceedings’.

Facts

Daiichi Sankyo, the owner of a supplementary protection certificate (SPC) which expired on 10 August 2006, alleged that Sandoz had infringed its rights in its SPC by launching its generic drug as from July 2006 while the SPC was still in force. On 17 March 2009, the President of the Tribunal de Grande Instance de Paris ordered that Daiichi Sankyo be granted the right to have a saisie-contrefaçon carried out at the premises of Sandoz.

Sandoz subsequently requested that the saisie-contrefaçon order be withdrawn on the ground that the SPC on which the application was based was not in force when Daiichi Sankyo filed its application. In order to support its claim, Sandoz relied upon a much-debated decision of the Cour de Cassation of 29 January 2008. In that case, the Cour de Cassation held that ‘the applicant is required, not only to present the patent on which his application is based, but also to prove that this patent is in force’.

Relying upon the Cour de Cassation's ruling, the President of the Tribunal de Grande Instance de Paris held on 15 April 2009 that the saisie-contrefaçon order should be withdrawn on the ground that it could not be ordered if the intellectual property rights on which it was based were no longer in force when the application was filed. Daiichi Sankyo appealed.

The Court d'Appel de Paris held that what was to be taken into account was whether the intellectual property rights were still in force when the alleged infringing acts occurred. Having ascertained that the SPC remained in force until 10 August 2006 and that the measures sought by Daiichi Sankyo were limited to the period when the SPC was still in force, the Cour d'Appel de Paris overturned the lower court decision and dismissed Sandoz's application to have the saisie-contrefaçon order withdrawn.

Analysis

The Cour d'Appel de Paris relied upon Article L. 615-5 IPC as amended by the Law of 29 October 2007 which provides that the right to have a saisie-contrefaçon carried out is granted to ‘any person entitled to commence infringement proceedings’ and not only to ‘the applicant or the owner of a patent’ as previously provided for under the former Article L. 615-5 IPC. On the day that it applied for saisie-contrefaçon, Daiichi Sankyo was entitled to commence infringement proceedings against Sandoz in relation to infringing acts committed prior to the expiration of its SPC, those acts being not yet statute-barred. Therefore Daiichi Sankyo was entitled under Article L. 615-5 IPC to have a saisie-contrefaçon carried out in order to allow it to prove infringing acts that occurred prior to expiry of the SPC.

The ruling of the Cour d'Appel de Paris seems to be consistent not only with Article L. 615-5 IPC as amended by the law of 29 October 2007, but also with the intention of the legislator to ensure greater protection for intellectual property rights.

This decision will be welcomed by intellectual property rights holders.

Moreover, as a patent holder is entitled to commence infringement proceedings in relation to infringing acts that occurred before the expiry of its patent as long as they are not yet statute-barred, it should have the right to use all the evidentiary tools available under IPC to help him prove such infringing acts.

A contrary ruling would have resulted in a patent holder who commenced infringement proceedings after the expiry of his patent being placed in a less favourable position than he would have been had he commenced infringement proceedings prior to the expiry of his patent.

Practical significance

The ruling of the Court d'Appel de Paris in relation to patents applies mutatis mutandis to all other intellectual property rights (designs : Art. L. 521-4; semiconductor products: Art. L. 622-7; plant variety rights: Art. L. 623-27-1; trade marks: Art. L. 716-7 and geographical indications: Art. L. 722-4) in respect of which, since the enactment of the law of 29 October 2007, the right to have a saisie-contrefaçon carried out is also granted to ‘any person entitled to commence infringement proceedings’.