The French saisie-contrefaçon may not be used as a pretext for performing a fishing expedition.
In this country, the saisie-contrefaçon is an exceptional evidentiary measure allowing a patent owner, before initiating main proceedings, to enter his competitor’s premises without the latter’s consent in order to gather evidence of the alleged infringement (see here see also a 15-minute film providing a brief introduction to the practical aspects of the French saisie-contrefaçon).
However, it does not confer unlimited powers on the bailiff performing the measure.
French courts are extremely careful to ensure that the saisie-contrefaçon is only used as an evidentiary measure and sanction all abuses. The decision handed down by the French Cour de cassation on 12 February 2013 clearly demonstrates that the patent owner runs the risk of being ordered to pay significant compensation in case of an abuse.
The claimant, Vetrotech, the holder of several patents relating in particular to the manufacturing of fire resistant safety glass, alleged that its competitor, Interver, had launched a product obtained through a similar process and requested, on the basis of four patents, that a saisie-contrefaçon be performed on Interver’s premises. According to the order allowing the saisie-contrefaçon, the bailiff was entitled to perform “all operations likely to establish the existence, origin and extent of the alleged infringement, by asking relevant questions if necessary (…) but with no questioning other than that required to complete his investigations.”
Having obtained this authorisation, Vetrotech thought it was allowed to look for confidential information that has no direct link with the alleged infringement; the saisie was carried out by two bailiffs assisted by two patent attorneys and an expert; the bailiff asked 24 questions to Interver concerning the composition of the product, its manufacturing process, the manufacturing period, and the extent of the marketing.