Patent Litigation in Practice Series: Spotlight on France: Navigating the pitfalls of automatic provisional enforceability in patent disputes

The latest issue of our monthly series comes from France, where we take a look at the strategic implications of automatic provisional enforceability of judicial decisions in patent litigation. 

What is automatic provisional enforceability?

Provisional enforceability allows the winning party to enforce a first-instance decision even if an appeal is pending.

Prior to 2020, judicial decisions were not provisionally enforceable unless explicitly ordered by the court. Since then, such decisions are provisionally enforceable by default.

Provisional enforceability has had unforeseen consequences in patent litigation. In this article, we explore two illustrative cases.

Illustrative case no 1: the paradox of provisionally enforceable patent transfers

Patent ownership transfers can inherently be definitive: the patent leaves the original owner's portfolio and enters that of the transferee. 

Consequently, if a first instance decision orders such a transfer, the new patent owner may freely dispose of the patent during the appeal period, including assigning it to third parties or abandoning it altogether. The original owner therefore has no assurance of restitution, should the decision be overturned on appeal.

In other words, provisional enforceability of a transfer of ownership can have irreversible consequences, making it incompatible with the provisional nature of its enforceability.

This tension was highlighted in a case where the losing party sought the suspension of provisional enforceability following a transfer order. The First presiding judge of the Paris Court of Appeal granted the request, citing the risk that the interim owner might transfer the patents to third parties before the appeal was resolved, making any restitution impossible if the first instance judgment were subsequently overturned.

Illustrative case no 2: timing is critical for patent limitation requests

A separate case addressed the interaction between provisional enforceability of patent invalidity decisions and subsequent limitation requests filed with the French Patent and Trademark Office (“PTO”).

In response to an infringement action, the defendant filed a counterclaim for revocation. The court of first instance invalidated two patent claims. The patent owner appealed and filed in parallel a limitation request with the French PTO. 

The Paris Court of Appeal emphasised that no provision prevents patent invalidity decisions from being provisionally enforceable. It held that the invalidated claims ceased to exist retroactively upon service of the judgment. 

The Court concluded that the patent owner concealed the invalidity decision from the French PTO, which would have rejected the limitation request if properly informed. The limitation was deemed fraudulent and unenforceable against the defendants. 

How can Defendants mitigate the risks of provisional enforceability?

Firstly, a judge may set aside the provisional enforceability in whole or in part, if it is deemed incompatible with the nature of the case. This can be done ex officio or upon request from one of the parties.

Secondly, and as illustrated above, a party can request the suspension of the provisional enforceability. These requests must be filed with the first president of the Court of Appeal, and requires the applicant to:

1. have filed an appeal;

2. demonstrate the existence of serious grounds for setting aside or modifying the decision; and

3. establish that the provisional enforcement would result in manifestly excessive consequences.

However, if no objection to provisional enforceability was raised at first instance, the applicant must prove that excessive consequences arose only after that decision.

Therefore, even when the court of first instance is unlikely to set aside the provisional enforceability, it is prudent to contest it early to preserve the right to seek suspension later.

Lastly, the above cases underscore the strategic risks of relying on the appeal period. Patent owners must adopt a proactive approach, for example by filing pre-emptive limitations of their patent before the court of first instance when the validity of the patent is at issue.

Summary and practical guidance for defendants

During first instance proceedings:

• Provisional enforceability of first instance decisions is ordered by default.

• Challenging it before the court of first instance is advisable to avoid procedural bars later, especially when irreversible consequences may occur, including for example the transfer of patent ownership, or communication of confidential information.
• If patent validity is contested, defendants should file limitation requests while the first instance proceedings are pending - they should not wait for an appeal (a request for limitation might be rejected if the invalidation is provisionally enforceable).

After the first instance decision is handed down:

• If enforcement would cause manifestly excessive harm, defendants should promptly file a motion with the First President of the Court of Appeal to suspend provisional enforceability.