A welcome decision for the future of the French infringement-seizure

In a highly awaited decision handed down on 6 November 2020, the Paris Court of Appeal confirmed previous case law of the French Supreme Court according to which patent attorneys, as an independent profession, provide sufficient guarantees which allow them, even the usual patent attorney of the seizing party, to assist the bailiff during the infringement seizure.

In this case, the withdrawal of the court order having granted the infringement seizure was requested by the defendant at the infringement action, which claimed that the request was presented unfairly since the patent attorneys designated to assist the bailiff were not impartial on the basis of article 6§1 of the Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR). According to the defendant, the drafting of a private expert report describing the features of the allegedly infringing products filed to support the request for an infringement seizure, by the patent attorneys designated to assist the bailiff during the seizure, suggested that the seizure will not be executed with impartiality.

The judge of first instance rejected the defendant's motion for withdrawing the infringement seizure order. However, on 27 March 2018, the Paris Court of Appeal overturned the first instance decision and expressed the following principle: "the right to a fair trial set out in article 6 of the European Convention on Human Rights requires that the expert assisting the bailiff should be independent from the parties".

On 27 March 2019, the Supreme Court set aside the March 2018 decision on the grounds that the mission of the patent attorney, when assisting the bailiff during seizure operations, is not subjected to a duty of impartiality and the Paris Court of Appeal, to which the case was again referred to following the Supreme Court decision, confirmed this view on 6 November 2020.

Due to the ethical rules of the patent attorneys, their appointment to assist the bailiff during a seizure offers a number of guarantees for the seized party and this particular status explains this well-founded decision handed down on 6 November 2020. Furthermore, this solution is consistent with existing case law which admitted the participation of patent attorneys in an infringement seizure even though they had drafted the patent concerned by the action or had drafted a consultation on the validity of said patent, stressing that these circumstances were not of such a nature as to violate the provisions of Article 6§1 of the ECHR, ie independency and, now, impartiality.

France is then the place to go for carrying out seizures with the assistance of competent and irreproachable patent attorneys!