Patent

The Patents team includes lawyers, industrial property advisers and European patent attorneys (EPA) before the EPO, a large number of whom have dual legal and technical qualifications.

This unique dual expertise, combined with a thorough knowledge of the industry and a proven practice before the courts, the EPO and the French INPI, allows us to develop the best litigation, contractual and valuation strategies in order to meet all our clients’ needs and interests in a tailor-made manner and at optimal costs.

Thanks to the diversity of our backgrounds and experiences, we are able to work in all technical fields: chemicals, pharmaceuticals, biochemicals, biotechnology, engineering/mechanics, telecoms, new technologies, computer-implemented inventions, etc.

We are used to working in close collaboration with the firm’s other teams and can provide original solutions in the most complex cases.

We can assist you at all the pre-contentious and contentious stages of invalidity and infringement actions up to and including a final decision, as well as in any negotiations to achieve an amicable solution.

With our proven experience in patent law, we can develop the best strategy having regard to the risk/benefit to you, and, if necessary, can make tactical and creative use of all the potential offered by related litigation (before civil, commercial and administrative courts, employment tribunals, the EPO, the INPI, etc.), working closely, whenever necessary, with the firm’s other teams.

Our comprehensive experience allows us to respond immediately in the most complex cases (interim prohibition, declaration of non-infringement, claim to ownership of an invention, arbitration, mediation, FRAND litigation, coordination of pan-European litigation, etc.).

We have comprehensive expertise in litigation before the EPO and the INPI (oppositions and appeals, third-party observations and intervention of the assumed infringer before the EPO, limitations, monitoring of competitors’ patent applications and provisional protections, etc.).

Since we do not consider oppositions as mere extensions of the review procedure but as litigation in their own right, we are familiar with the use of all available litigation tools, and in particular procedural rules and witnesses and technical experts.

Our opposition cases before the EPO very frequently have ramifications in litigation before domestic courts, and our advisers and European patent attorneys – the majority of whom are also lawyers –develop made-to-measure strategies that take these domestic aspects into account.

Drawing on our EPO expertise, we have already handled the new opposition procedure before the INPI, using our civil procedure practice to anticipate the appeal stage before the Court of Appeal.

Our lawyers and European patent attorneys are involved on a daily basis in litigation before domestic courts and the EPO, and the vast majority of them have professional experience with businesses, particularly through secondment assignments. This practical knowledge of both litigation and industry gives them the necessary depth of knowledge:

• To build up effective patent portfolios using application and drafting strategies that meet clients’ business challenges and that anticipate future issues of interpretation in the courts;
• To study all the protection options, potentially using other intellectual property rights and business secrecy;
• To effectively analyze the freedom to exploit a product, the risks of a product launch and the validity of your competitors’ patents.

We are aware of what is at stake financially for our clients and in order to make the best use of their added value, we use highly efficient subcontractors for the more administrative aspects of cases (annual payments, regional phase entry, etc.), while keeping the client fully informed.

Our broad expertise in the negotiation and drafting of contracts in the field of industrial property, acquired through working on many cases and through contact with our clients – particularly during secondment assignments – allows us to provide assistance with contracts of all kinds: assignments, licenses (including FRAND licenses), co-ownership agreements, confidentiality, collaboration, co-development, R&D, pledges, service agreements and settlements.

Our experience of industrial property disputes (including FRAND arbitrations and litigation) allows us to provide our clients with strategic advice regarding the valuation of their patents, the implementation of licensing policies and anti-counterfeit policies (identification of infringers and their distributors, sending of formal notices, negotiation of agreements, etc.).

Our team is one of the major players in patent litigation concerning medicines and medical devices.

Our lawyers, advisers and European patent attorneys are experts in pharmaceutical industry issues and in the last few years we have assisted clients in some of this sector’s most important cases.

This diverse experience (in small molecules, biological products, formulas, medical devices, secondary therapeutic applications, etc.), combined with thorough knowledge of the regulations concerning medicines and medical devices and a close collaboration with the firm’s Public and Regulatory team, makes us highly effective in dealing with the most complex topics, both in an advisory and litigation capacity:

• Filing/drafting pharmaceutical and medical device patents
• Patent litigation concerning medicines and SPC
• Seizure in infringement cases (saisie-contrefaçon), at the infringer’s premises or at the ANSM
• Cancelation of third-party marketing authorizations (AMM) (suspension applications, appeals to the administrative court for abuse of power)
• Procedures before the commission for access to administrative documents (CADA)

Regulatory expertise on substitution, the opening of generic groups

Our clients frequently entrust us with coordinating patent litigation in multiple European countries, where providing the big picture without losing focus on relevant details is essential. In our reports, we place a particular emphasis on decoding, and clarifying, based on our capacity to explain complex matters in simple terms. We have acquired this expertise in the framework of our extensive experience of short judicial hearings which are the norm before the French patent judge.

August Debouzy has one of the biggest teams dedicated solely to patent litigation. As such, we have the necessary resources to manage the challenging workload for these cases both in terms of strategy and logistics.

The 30+ years of patent practice of our partners allowed us to develop a greater understanding of different national and judicial cultures, including North America, Europe and Asia, allowing us to effectively coordinate professionals from different horizons. Our partners are also called as expert witnesses in the context of cross-border litigation in recognition of their knowledge of French and European patent litigation proceedings, thereby enhancing our experience of different judicial systems.

Finally, our team is structured around practitioners with both scientific and legal background, ensuring our ability to directly engage with the client’s technical stakeholders. This also allows us to completely deal with technical expertise, starting from the benchmarking of the expert witnesses and up to the finalization of the experts’ statements.

Our team has proven expertise in the law concerning employee inventions, acquired over years of practice in a large number of cases.

We can assist you with all your issues in this area: setting up compensation packages, appearing before the CNIS and the courts, advising on the assessment of additional remuneration or fair price, and negotiating and drafting settlement agreements.

Whenever a case requires it, we develop original, cross-disciplinary strategies in close collaboration with the firm’s Employment team, ensuring that the right procedural decisions are made before the employment court or any relevant court in accordance with the client’s interests.

The diversity of our team members’ scientific training, their detailed knowledge of technology sectors and their practice in these areas before domestic courts and the EPO has enabled them, together with the firm’s Litigation team, to develop solid know-how in the field of industrial risks, civil professional and product liability, and insurance:

• Providing advice and assistance in all areas of industrial risk, in collaboration with a network of technical and financial experts
• Defending our client’s interests when civil corporate and/or directors’ liability claims are made in respect of professional negligence or product liability (pharmaceutical, consumer, automobile industry, telecommunications, technology, tobacco, etc.)
• Analyzing risks and insurance cover
• Providing advice and assistance in the conclusion of insurance contracts.

We firmly believe that experience sharing stimulates individual and collective talents, and we pool our expertise through initiatives and training on our premises, at our clients’ premises and at professional associations, training organizations and universities (CEIPI, EFB, IEEPI, Polytechnic University of Milan, marking of the EQE, CentraleSupelec, ENSTA, Ponts ParisTech, C5, Life Science Patent Network, MIP, INPI, etc.).

We always make it a priority to adapt to the audience concerned (lawyers, engineers, works councils, workforces, students, etc.), to achieve the objectives set and to illustrate what we have to say with concrete examples taken from our practice, and therefore we provide a great variety of training sessions: raising awareness or more in-depth work concerning industrial property issues, patent and related litigation (unfair competition, plagiarism, business secrecy), seizure in infringement cases (saisie-contrefaçon), and negotiation and drafting of contracts.

Since 2018, we have organized annual patent workshops at our offices, where industrial property practitioners and professionals from related sectors meet for a productive exchange of experiences in an informal atmosphere.