Patent litigation: De Gaulle Fleurance & Associés reveals the results of its Litipat barometer

11/12/21
Patent litigation: De Gaulle Fleurance & Associés reveals the results of its Litipat barometer

LitiPat is a barometer developed to analyse patent decisions before French jurisdictions. This data analysis is based on about a hundred decisions before the first instance tribunal and appeal courts, as well as preliminary order, from 2017 to date. Find, each week, a new figure of the LitiPat barometer.

In France, patent infringement and patent nullity actions are indivisible, one is generally used as a counterclaim to the other in French litigation. Thus, in case of patent infringement proceedings, nullity of patent is invoked in 85% of cases.

Among the challenged patents, 72% of patents are ruled valid. Patent validity is mostly confirmed before French jurisdictions, which is favourable to patent holders”, observes Francine Le Péchon-Joubert, partner at De Gaulle Fleurance & Associés.

38% of patents are cancelled because of lack of inventive step only. Other grounds of nullity are for 15% for lack of novelty and inventive step ; 15% for lack of novelty ; 12% for insufficient description ; 12% for extension beyond the scope ; 3% for insufficient description and lack of novelty ; 3% for extension beyond the scope and lack of novelty and lack of inventive step. “Grounds for patent nullity are very important as they are not equally successful. Combination of grounds is a way to strengthen its argumentation on nullity » notes Francine Le Péchon-Joubert.

38% of decisions consider patent is infringed and 39% of non-infringement decision are due to patent cancellation. “We note that nullity action is a good defense to an infringement action”.

The average amount of patent infringement conviction is much more important before first instance jurisdiction, establishing to 787.000€, than before the appeal court where it is 265.000€ average. Median amount of conviction is 110.000€ before first instance jurisdiction and 150.000€ before appeal court. We note important differences between average convictions on first instance and appeal. However, the median amount of patent infringement conviction is rather equal” says Carlyne Sevestre, Associate.

In case of conviction for patent infringement, French judges can decide to allocate damages globally or to breakdown depending on damages, namely lost profit for the patent holder, profit earned by infringer and moral prejudice.

58% of patent infringement conviction are subject to breakdown of damages. “Breakdown of damages requires more motivation from the judges, but it is a way to have a fairer decision which details the damage items” notes Francine Le Péchon-Joubert.

Pursuant to French law, in case of conviction for patent infringement, damages can be breakdown. Grounds of damages are lost profit of the patent holder, profit earned by infringer and moral prejudice of the patent holder. “We note that in over 90% of concerned cases, lost of profit of the patent holder is taken into account. It makes communication of accounting records very important for such evaluation” notes Carlyne Sevestre, Associate.

In 63% of patent litigations on the merits, a saisie-contrefaçon has been performed before. This confirms the interest of practitioners for this preliminary procedure specific to France. “It is a tool that is widely used in France and that other countries envy us”, says Francine Le Péchon-Joubert. “It is one of the keys to success in French patent litigation”.

Before first instance tribunal, the validity of a saisie-contrefaçon report is challenged in 48% of cases. This number decrease to 42% before the appeal court. “It confirms that once performed, the saisie-contrefaçon is still strongly challenged by the opposing party throughout the proceedings in order to dismiss evidence” states Francine Le Péchon-Joubert.

Challenged saisie-contrefaçon reports are confirmed in 63% of cases before first instance tribunal and in 56% of cases before the appeal court. They are partially or totally cancelled in respectively 23% and 31% of cases. Judges does not rule on the validity of the saisie-contrefaçon report in 13% or 14% of cases. “We note that judges generally confirm the saisie-contrefaçon their colleagues have authorized, which make this proof pretty strong” says Carlyne Sevestre.

 

A saisie-contrefaçon order is confirmed in 74% of cases before interim relief judges. “It confirms that once obtained, a saisie-contrefaçon is strong evidence. Except hidden facts once requested, partial behavior of the bailiff or wrong place of seizure, a saisie-contrefaçon is difficult to cancel” note Francine Le Péchon-Joubert

 

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