Action for a Declaration of Non-Infringement

The action for a declaration of non-infringement is a legal procedure allowing a person or a company intending to exploit an invention or a product to seek a court ruling affirming that their activity does not constitute an infringement of an existing patent. This procedure aims to secure industrial exploitation by obtaining prior legal confirmation.

Legal Basis

This action is governed by Article L.615-9 of the French Intellectual Property Code (CPI), which states:

“Any person who demonstrates an industrial exploitation on the territory of a Member State of the European Economic Community or effective and serious preparations for such exploitation may invite the patent holder to take a position on the enforceability of their title with respect to the described exploitation.”

“If the said person contests the response given or if the patent holder does not take a position within three months, they may bring an action before the court to obtain a ruling that the patent does not prevent the intended exploitation, without prejudice to an action for patent nullity or a future infringement action if the exploitation does not comply with the conditions specified in the description referred to in the previous paragraph.”

Substantive Conditions

Conditions Related to the Plaintiff

• Industrial exploitation: The plaintiff must justify an industrial exploitation within the territory of a Member State of the European Economic Community. This exploitation may involve manufacturing but cannot be limited to mere commercialization or importation.

• Effective and serious preparations: In the absence of actual exploitation, the plaintiff must demonstrate concrete and serious preparations for exploitation, involving significant investments aimed at using the invention.

Conditions Related to the Defendant

• The action must be brought against the holder of the patent in question. In the case of co-ownership, all co-owners must be included in the legal proceedings.

Procedural Conditions

• Prior amicable step: Before initiating legal action, the plaintiff must invite the patent holder to take a position on the potential infringement within a three-month period.

• Litigation deadline: If the patent holder does not respond within the given time frame or asserts that the exploitation constitutes an infringement, the plaintiff is entitled to bring the matter before the judicial court to obtain a declaration of non-infringement.

Effects of the Action

• In case of success: A favorable ruling provides the plaintiff with legal certainty, confirming that their activity does not infringe upon the rights of the concerned patent, thereby protecting them from potential future infringement lawsuits.

• In case of failure: If the court concludes that infringement has occurred, the plaintiff may be subject to civil sanctions, such as damages, and must cease the disputed exploitation.

It is essential to note that this action aims to prevent litigation by clarifying, in advance, the rights and obligations of each party regarding the exploitation of a protected invention.