Saisie-contrefaçon lawyer: patent evidence in France

The saisie-contrefaçon is the central evidentiary instrument of French patent litigation. It is prepared before the application, played out on the day of execution and defended afterwards. Dhenne Avocats acts at all three stages, for claimants and defendants alike, before the Paris Judicial Court and before the Unified Patent Court.

• Drafting the ex parte application and defining the scope of the mission entrusted to the commissaire de justice.
• Appointing and briefing the independent expert who assists with the operation.
• Attendance on the day of execution and the handling of incidents.
• Sequestration and the debate on the seized party's trade secrets .
• Bringing the action on the merits within the prescribed period, failing which the saisie is void.
• In defence, withdrawal of the order, challenges to the operations and release of the sequestration.

The court may authorise a detailed description, with or without the taking of samples, or the actual seizure of the products and processes complained of. The mission can extend to technical and accounting documents: drawings, laboratory notebooks, invoices, purchase orders, customer and supplier lists. That is often where the extent of the loss is decided, more so than the fact of the infringement.

The measure is ordered on an application made without notice to the other side. The applicant must establish its standing and produce its title. Drafting the application governs everything that follows: it fixes the scope of the mission, the premises covered, the categories of document sought and the powers of the enforcement officer. A mission drawn too wide invites an application to set the order aside. A mission drawn too narrow leaves the evidence where it lies.

The operations are carried out by an enforcement officer, assisted where appropriate by an expert independent of the applicant, and sometimes by the police. The applicant's counsel does not attend. Preparing the officer and the expert, on what they must look for and how to describe it, is what separates a saisie that yields evidence from one that yields a report of no use.

The party seized may ask for the material taken to be placed under sequestration pending a ruling on its disclosure. The judge then balances the applicant's right to evidence against the protection of the other side's trade secrets. This stage, often overlooked, decides in practice what the claimant will actually be able to put before the court.

The seizure must be followed by proceedings on the merits within a short period, failing which it is void as of right and the evidence obtained is lost. That period runs from the operations themselves. It cannot be extended and it cannot be negotiated: it is calculated on the day of the seizure and it is kept.

The saisie-contrefaçon is authorised on an ex parte application, without the future seized party being present. This departure from adversarial proceedings has a counterpart: the applicant owes the court a candid and complete statement of the facts, including those unfavourable to it. Pending opposition proceedings, a foreign decision or a claim limitation passed over in silence are all grounds for withdrawal of the order.

The second point of weakness is the scope of the mission. Too broad, and the measure is exposed to a plea of disproportion. Too narrow, and it leaves the evidence behind. We draft the mission from the claim asserted and the product targeted, not from a standard form.

The seized party is not without remedies. Withdrawal of the order may be sought from the judge who granted it, in particular for want of candour, inadequate presentation of the patent or disproportion of the mission. Nullity of the operations may be invoked for exceeding the mission or for irregular execution. Failure to bring the action on the merits within the period laid down by Article R. 615-2 of the French Intellectual Property Code renders the saisie void.

Sequestration is the other battleground. Documents covered by trade secrecy are released to the seizing party only after adversarial debate, under Articles L. 153-1 et seq. of the French Commercial Code. That debate has to be prepared: it means identifying, document by document, what is covered by secrecy and what is necessary to resolve the dispute.

A seizure is not a settled gain for the party that obtains it. The party seized may apply to have the order set aside, seek its discharge, challenge the record of the operations and invoke the protection of its trade secrets. The most frequent irregularities concern operations exceeding the scope of the order, an inadequate application, or a lack of independence on the part of the expert.

Since the unitary system entered into force, the same act of infringement may give rise either to a saisie-contrefaçon under French law or to an evidence preservation measure based on Article 60 of the Agreement on a Unified Patent Court. The two routes differ in territorial reach, in the regime governing disclosure of documents, and in their consequences for the rest of the dispute.

The choice is made case by case, according to the patent, the location of the evidence, the existence of an opt-out and the overall strategy. We conduct that assessment before the application, never after.

A saisie-contrefaçon can be prepared in a matter of days once the material is in place, and the timetable is often driven by a trade fair, a market launch or a corporate transaction. Write to us : we will tell you quickly whether the measure is appropriate and in what form.

For the detail of the procedure, see our page on the patent saisie-contrefaçon.

Pour les entreprises qui souhaitent anticiper, le cabinet propose un programme dédié : se préparer à une saisie-contrefaçon, avec protocole de réponse, formation des équipes et simulation.