I. THE BURDEN OF PROOF

The patentee does in fact have the burden of proving the infringement of which he claims to be the victim. This is a general principle watered down by two exceptions, the scope of which is, however, limited. In certain cases, in fact, it is provided that it is possible to demand from the defendant a certain co-operation in the production of proof.

1. In application of Article 10 of the Civil Code and Article 11 paragraph 2 of the New Code of Civil Procedure (in annexes 1 and 2), each of the parties is obliged to assist the legal process with a view to the demonstration of the truth, and, in principle, an injunction may be issued against one of the parties to produce an element of proof which is held by that party.
   
   Such a measure, which is infrequently applied by the French Courts, can, however, be contemplated only in the case where the patentee has already adduced an initiation of proof which the defendant may be compelled to supplement. In no circumstances can the defendant be compelled to prove anything entirely in the place of the petitioner and thus to make good his deficiency.
   
   
2. There is a second exception relating to the reversal of the burden of proof within the context of a process patent. This principle has been formalised in Article 34 of the agreement on TRIPS (in annex 3) which specifically provides that "any identical product manufactured without the consent of the holder of the patent will, subject to proof to the contrary, be considered as having been obtained by the patented process if:
   
   
   1. the product obtained by the patented process is novel; or if
      
      
   2. there is a high probability that the identical product was obtained by the process, and the holder of the patent has not been able, despite reasonable efforts, to determine which process was in fact used."
      
      
   The final paragraph of Article 34 provides that, in the event of the submission of proof to the contrary, the legitimate interests of the defendants appertaining to the protection of their manufacturing and commercial secrets shall be taken into account.
   
   We shall encounter in this instance the same difficulties of preservation of secrecy and of confidentiality as on the occasion of infringement seizure operations, to which we shall refer subsequently.

II. THE MEANS OF PROOF

To adduce proof of infringement, the patentee may have recourse to any means. This principle is expressly stated in Article L-615.5 (in annex 4) of the Intellectual Property Code (IPC).

These means certainly include avowal, presentation of the article complained of, presumptions and expert assessment.

It is certainly the case that all these elements of proof may be contested by the adduction of proof to the contrary. For this reason, French legislation has established specific means for adduction of proof, namely the infringement seizure procedure.

It is of interest to note that the infringement seizure was authorised in France for the first time on 7 January 1791 by the Constituent Assembly.

Such a procedure, which is specifically intended to establish the substantive nature of the alleged infringement, is not obligatory. In practice, it is nevertheless observed that, given that this procedure is implemented under the control of a judge, the courts tend to give a certain preference to this mode of proof.

Article L-615.5 of the IPC introduces the principle of the infringement seizure, the details of implementation of which are prescribed by the Decree of 15 February 1969.

In accordance with this procedure, the proprietor of a patent or of a patent application is entitled to cause the execution, by any bailiff, of the detailed description, with or without actual seizure, of the products or processes alleged to be infringing.

To execute such a seizure, it is necessary to obtain in advance an order from the President of the Court of the place of the alleged infringement.

In practice, such an order is obtained without any difficulty just on production of an official copy of the patent, of an extract from the National Register of Patents confirming ownership of the property right, and of a statement of payment of the annual fees certifying that the property right is in force.

It should be noted that this procedure is likewise open, under certain conditions, to concessionaires of an exclusive right of exploitation, as well as to holders of a licence of right, of a compulsory licence or of an official licence.

To execute such a seizure, the bailiff is generally assisted by an expert, who in most cases is an Industrial Property attorney chosen by reason of his knowledge of the cited patent.

In practice, the order submitted to the President of the Court is drafted by the counsels of the patentee and, depending upon each particular case, it is accordingly customary to specify in detail what will have to be the precise task of the bailiff.

It is important to note that the alleged infringer is never warned either of the precise location or of the time when the seizure operations will be implemented. The effect of surprise is therefore intentional, to prevent any attempt at dissimulation of elements of proof on the part of the party against whom the seizure is executed.

The order issued by the President of the Court in general authorises the bailiff, accompanied by the expert, to gather all the elements of proof which are necessary for the purpose of demonstrating to the Judge the origin, the nature and the extent of the alleged infringement.

III. THE DIFFICULT BALANCE BETWEEN PROOF AND SECRECY

Accordingly, it is readily understood that this draconian procedure has necessarily raised practical problems, as it was necessary to preserve a balance between, on the one hand, the need to be able to adduce proof of the infringement and, on the other hand, the need to preserve the secrecy of the business of the party against whom the seizure is executed.

A first measure permitting the immobilisation of certain papers necessary for the proof of infringement consists in having them visaed "ne varietur" by the bailiff so as to be certain that it will be possible to relocate them subsequently without risk of modification or of substitution, for example in the course of an investigation by expert auditors which is initiated for the purpose of evaluating the amount of the loss suffered by the patentee.

It is clear that the bailiff may likewise visa in this way any type of technical document such as plans, manufacturing data sheets, control records of raw materials or manufactured products, etc.

The Industrial Property attorney who accompanies the bailiff in order to assist him in his task does in general take the more active part in the selection of the documents, papers or products to be retained or to be set aside. Accordingly, it appears logical that the expert accompanying the bailiff, most frequently an Industrial Property attorney, should not belong to the company of the patentee and should be subject to an obligation of confidentiality or of professional secrecy.

In these circumstances, certainly, the French legal practice, with regard to this specific question of the balance to be maintained between the need to apply a sanction to the infringement by adducing proof of the latter and the need to preserve the secrecy of the business of the party against whom the seizure is executed, has noted hesitations, and has perhaps unfortunately been incorrectly inspired by certain other foreign procedures which are more demanding and more onerous, without necessarily being more effective.

In the course of the seizure operations, in the event of disagreement as to the choice of the papers to be retained, the practice has become oriented towards the placing in a sealed envelope of the papers adjudged to be necessary for the proof by the bailiff and the attorney, but considered as secret by the party against whom the seizure is executed.

These papers, the core of the dispute, are then delivered to an expert appointed by the court, which has entrusted to him a very precise task for the purpose of determining the fate of the papers seized.

It is clear that the persons present in the course of the seizure operations and the subsequent expert assessment appertaining to the qualification and the destination of the papers, will have to be subject to secrecy and confidentiality.

In France, the professional secrecy of Industrial Property attorneys is governed by Article R.422-54 of the IPC, Article 12.3 of the Decree of 29 July 1997 and Articles 226-13 and 226-14 of the New Penal Code (in annexes 5 and 6).

In practice, the expert appointed by the Court will conduct his expert assessment without the presence of the parties, but with the assistance of the barristers and Industrial Property attorneys of each one of the parties.

Accordingly, the expert has as his task to organise the confidentiality of this procedure.

A plurality of solutions have been contemplated:

1. A judgement dated 6 December 1996 of the Court of Paris accepted the principle of the pre-eminence of confidentiality, that is to say that the expert had as his task to sort between the confidential papers and the non-confidential papers, only the latter being capable of being utilised for the purpose of adducing proof of infringement.
   
   Such a solution is certainly subject to criticism in numerous ways.
   (BARKATS v. FRANCE TELECOM)
   
   
2. On 4 July 1997, the Court of Paris had considered that the party effecting the seizure must have access to all the documents likely to contribute to proof of the infringement and only to those documents. The Court added that the responsibility for qualifying as confidential or not confidential the documents found in his factory should not, under pretext of confidentiality, be left just to the tolerance of the party against whom the seizure is executed. Accordingly, the Court invoked the principle of the pre-eminence of the need for proof of infringement. In other words, a paper useful for proving infringement has lost its allegedly confidential nature.
   (SERME v. SYNTHESIA)
   
   
3. A third solution was adopted within the context of an order in chambers dated 24 November 1997 by the Court of Paris. This order specified in particular that, "In order to preserve the possible confidential nature of the papers seized, the expert shall open the envelope [in which the bailiff put the seized documents] and make a selection between the documents in the presence only of the barrister and Industrial Property attorney of each one of the parties, whose identity shall have to be communicated, before the first expert assessment meeting, to the expert and to the parties, all these persons being committed to an obligation of confidentiality."
   The order then specifies that, "If the documents retained by the expert as being necessary for the proof of the alleged infringement do nevertheless have a confidential nature, only the above-named persons shall be able freely to have access thereto."
   (M.S.D.-CHIBRET v. SEARLE & MONSANTO)
   
   
4. A very recent decision of the Court of Paris dated of September 30, 1998, is also of interest. In this case B.M.S. manufactured its product Taxol outside of France and imported it in France. The Court validated the seizure procedure carried out at the Agence du Médicament, which is the national institute having delivered the authorisation to put the product on the market. The seized documents were concerned with the preparation process of the active substance.
   
   The Court confirmed that R.P.R. can use under its own responsibility in the framework of foreign law suits the documents considered by the Expert as necessary to prove the infringement.
   (RHÔNE POULENC RORER v. B.M.S.)
   
   
5. Other similar suggestions have likewise been advocated with regard to the fate of these evidential papers which are necessary but confidential. It is in fact possible to prescribe a restriction of access to a limited number of persons of a business who shall be caused to follow the procedure, while prescribing appropriate measures to prevent disclosures to other persons.
   
   

It is likewise possible to prescribe a limitation of use of the papers, in the present case use only for the infringement proceedings appertaining to the particular patent cited before the Court before which the matter has been placed.

These restrictions of access and/or limitations of use do however raise a certain number of difficulties in French legal practice.

First of all, in order that such limitations should be strictly respected, it will be necessary to have sanctions effectively applied.

Then, according to French practice, it is moreover necessary to comply with two essential principles: the first being the principle of the respecting of the hearing of arguments from all interested parties (respect du principe du contradictoire) and the second being the maintenance of the public nature of hearings.

Finally, the provisions of Article 24 of the Brussels Convention (in annex 7) specify the principle of the free use of the means of proof in various proceedings conducted in different States of the European Community, a principle which seems to be in conflict with any restriction of access or limitation of use.

In consequence, an effective solution might consist in organising the confidentiality of the papers seized within the context of an expert assessment initiated by the judge and carried out in the presence only of the barristers and Industrial Property attorneys of the parties, these being committed to the obligation of confidentiality.

In the event of disagreement between these various representatives of the parties, the expert shall have to refer to the judge responsible for the conducting of the expert assessments in order finally to lead to a final sorting between only two types of documents:

1. the documents which are genuinely necessary for the proof of the infringement (having thus lost any confidential nature), and
   
   
2. the other documents, which shall purely and simply be returned to the party against whom the seizure is executed, and definitively removed from the debates.

At the conclusion of such an expert assessment, the judicial expert should be able to provide the court with at least an initial motivated opinion, regarding the substantive nature of the infringement.

Art.10 (Law No. 72-626 of 5 July 1972) Each party shall be obliged to give its assistance to the legal authority with a view to demonstrating the truth.

Any person who, without just cause, fails to comply with this obligation when he has been lawfully required to do so may be compelled to comply therewith, if necessary under penalty of a default charge or of a civil fine, without prejudice to damages.

Art. 11 The parties shall be obliged to give their assistance in measures of preliminary examination, it being left to the judge to draw any conclusion from an abstention or from a refusal.

If a party holds an element of proof, the judge may, upon the petition of the other party, enjoin him to produce it, if necessary under penalty of a default charge. He may, upon the petition of one of the parties, request or order, if necessary under the same penalty, the production of all documents held by third parties if there is no lawful obstacle.

Art. 34 Process patents: Burden of Proof

1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different form the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
   
   
   1. if the product obtained by the patented process is new;
      
      
   2. if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
      
      
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
   
   
3. In the adduction of proof to the contrary, the legitimate interests of defendants in protecting their manufacturing and business secrets shall be taken into account.

L.615-5: The owner of a patent application or the owner of a utility certificate application or the owner of a patent or of a utility certificate shall have the possibility of furnishing proof by any means whatsoever of the infringement of which he claims to be a victim.

He shall further be entitled, on an order given by the President of the First Instance Court of the place of the presumed infringement, to direct any bailiffs, accompanied by experts of his own choice, to proceed with a detailed description, with or without effective seizure, of the allegedly infringing articles or processes. Such order shall be provisionally enforced. It may be subjected to a security on the part of the plaintiff. In that same order, the President of the Court may authorize the bailiff to carry out any enquiry required to ascertain the origin, nature and scope of the infringement.

The same right shall be enjoyed by the licensee of an exclusive right of working under the conditions laid down in the second paragraph of Article L.615-2 and in the fourth paragraph of Article L.615-2, by the holder of a license of right, a compulsory license or an ex-officio license in accordance with Articles L.613-10, L.613-11, L.613-15, L.613-17 and L.613-19.

If the petitioner fails to institute proceedings before a Court within a term of 15 days, the seizure shall automatically be void, without prejudice to any damages.

12.3 Professional secrecy.

Industrial property attorneys are bound by professional secrecy, advice on any subject sent by an industrial property attorney to his client, or intended for the client, and correspondence exchanged between the client and his industrial property attorney are covered by professional secrecy.

The industrial property attorney must, because of the professional secrecy by which he is bound:

• refuse to give evidence of what he may know about his clients or professional matters except in those cases laid down by law;
  
  
• refuse to produce his clients’ documents and files to any person other than the parties themselves, their heirs or assigns or authorized representatives, or any person authorized by law or by a decision of a court, on proof of their identity and standing.

Professional secrecy cannot be cited against persons who are statutorily empowered to carry out judicial, administrative or customs inquiries, or against the courts.

In the event of enquiries by police or magistrates and judicial, customs or disciplinary procedures, especially searches and seizures, relating to his professional activity, the industrial property attorney shall notify the Chairman of the company so that the latter, or his representative, can provide assistance and endeavour to ensure respect for professional secrecy, especially within the framework of the provisions of the Code of Criminal Procedure.

Art. R.422-54. The Industrial Property attorney:

2. Shall observe professional secrecy: such secrecy shall extend, in particular, to the professional advice which he gives to his client, to the professional correspondence exchanged and to all documents prepared in connection therewith;

"Art. 226-13. The disclosure of information of a secret nature by a person who is the depository thereof by status or by profession or by reason of a temporary function or task shall be punished by a term of imprisonment of one year and a fine of 100,000 F".

"Art. 226-14. Article 226-13 shall not be applicable in cases where the law demands or authorises the disclosure of the secret."

The Court of Cassation shall apply Article 226-13 in cases where it is necessary to guarantee the security of the confidences which an individual has to impart to a person whose profession demands that secrets are entrusted to him.

Now, this is so in the case of industrial property attorneys upon whom the law confers the monopoly - which they share with barristers - "to advise, assist or represent third parties with a view to obtaining, maintaining, exploiting or defending industrial property rights".

Convention confirming confidentiality upon all correspondence between barristers and Intellectual Property attorneys, signed on 17 September 1998;

This convention prohibits any disclosure by the addressee and any utilisation by anyone of the correspondence communication between barristers and Intellectual Property attorneys.

Provisional, including protective, measures

Application may be made to the courts of a Contracting State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Convention, the courts of another Contracting State have jurisdiction as to the substance of the matter.