How To Prove Infringement In France? The Infringement Seizure

The infringement seizure is a provision of the French Intellectual Property Code (IPC) which enables a Patentee, Applicant or Exclusive Licensee to obtain material evidence of infringement in view of a legal action. The infringement seizure is authorized by an order issued by the Court having territorial jurisdiction as regards the place where the seizure is to take place. The seizure is conducted without prior warning by a bailiff who may be accompanied by an "independent expert". Recent Case Law developments confirmed that the "independent expert" may be the usual French patent attorney ("Conseil en Propriété Industrielle") of the plaintiff. The bailiff can only proceed with the operations that have been enumerated and authorized in the order issued by the Court. These operations include the detailed description and, optionally, the physical seizure of the infringing goods and documents relating thereto, including technical specifications, brochures and comptability documents. The bailiff may also ask the seized party to operate a machine or demonstrate the use of a process. The physical seizure is not a blank confiscation of an entire production, but solely the seizure of a small number of specimens or samples required as evidence for the plaintiff's action. The bailiff proposes to pay the price of the physically seized products. While infringement seizure is widely used to prove infringement, numerous pitfalls may affect its validity, and great care must be exercised during the operations. According to the pending provisions of the French IPC, the plaintiff must institute proceedings on the merits within 15 days from the date of the seizure, else the seizure will be revoked. A draft Law was issued recently in order to implement the European Union's Directive 2004/48/EC on the enforcement of intellectual property rights. This draft Law intends to enter some amendments in the French IPC, in particular in the provisions relating to infringement seizure. The main amendment shall provide that it will be possible to physically seize any materials and implements used in the production and/or distribution of the allegedly infringing goods. Furthermore, the maximum time period for instituting proceedings on the merits may be extended in order to comply with Directive 2004/48/EC which provides that the period should not exceed 20 working days or 31 calendar days, whichever is the longer. So far, at the European level, infringement seizure was a specificity of Belgium and France. Yet, similar provisions should become available soon throughout the European Union following implementation of Directive 2004/48/EC. Béatrice Holtz