27 Oct 2016 in Newsletter
European Litigation Series – Part 1: French Seizure of Evidence (saisie-contrefaçon)
The most effective tool offered by the French IP litigation system to gather evidence of infringement of an IP right in force in France is the possibility of lodging a petition for search and seizure of evidence (saisie-contrefaçon). This procedure is extensively used before patent infringement actions and is authorized by the Presiding Judge of the Paris Court (Tribunal de Grande Instance, TGI) without the alleged infringer being informed prior to the seizure.
Both the owner of the IP right and the exclusive licensee – unless the licensing contract provides otherwise – are entitled to request a seizure. Once the Presiding Judge issues an order authorizing the seizure, only in some cases upon the deposit of a bond, a bailiff may proceed with either the detailed description or with the seizure of the allegedly infringing products, of devices used or products obtained in allegedly infringing processes as well as with the seizure of related documents attesting the infringement, the origin, the destination and the volume of the infringement. These documents may include, for example, technical documents, commercial documents and accounting documents or a copy thereof.
A detailed and thoughtful preparation of the petition for seizure and of the seizure itself is essential for the seizure to be successful. In particular, all known elements and any already available evidence, the factual circumstances, the requested measures and the objects to be described and/or seized, as well as the locations where the seizure is to be performed have to be carefully identified and submitted to the Presiding Judge. The identification of the requested measures and of the objects to be described and/or seized is of the outmost importance because only the requested measures indicated in the order may be performed and only the objects indicated in the order can be seized. The locations may include the places where the allegedly infringing products are presumably manufactured, stored or exhibited, but also the places where accounting data are presumably stored. Furthermore, one or more meetings between the expert and the bailiff are extremely useful for preparing the seizure, especially in case of patents covering technically complicated products or processes.
The order issued by the Presiding Judge may contain a part or all of the requested measures and determines the scope of the seizure. The bailiff is the only person authorized to perform all seizure operations within such scope. The operations include introducing himself/herself and the accompanying persons and notifying the order/request to the alleged infringer, asking questions (at least to some extent), taking pictures, samples and also the minutes of the operations. The bailiff is accompanied by experts. In case of search for evidence of patent infringement, the expert is a patent attorney, who is appointed by the petitioner and typically assists the bailiff in describing the allegedly infringing products. However, also IT experts, professional photographers, specialized workers capable of moving and/or disassembling the allegedly infringing product, and accounting experts may be requested to accompany the bailiff. The police may also intervene, because in some cases the alleged infringer does not cooperate.
The alleged infringer may challenge the grant of the order, for example, based on the lack of supporting documents or incomplete supporting documents, and/or the validity of the seizure, for example by contesting any action performed outside the scope of the order, the performance of part of the operations by the expert and not by the bailiff, the presence of the petitioner in assisting the operations, and other violations, including any abuse of procedure (for example, when the seizure results in a fishing operation), as set by the French law and case law.
The measures are revoked and the whole seizure procedure becomes invalid if proceedings leading to a decision on the merits of the case are not started shortly after the seizure, i.e., within 20 working days or 31 calendar days from the seizure, whichever is the longer.