Patent Law

Our Patents team includes lawyers and patent attorneys. Most of them have dual legal and technical qualifications, are qualified as European Patent Attorneys (EPA) and to represent clients before the Unified Patent Court (UPC). 

This unique dual expertise, combined with a thorough knowledge of the industry and a proven practice before the courts, the EPO and the French patent office (INPI), very often in the context of international disputes, ensures that we develop the best litigation, contractual and valuation strategies. This allows us to respond to all of our clients' needs and interests at optimal cost. 

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

We work regularly in close collaboration with the firm's other teams, as well as with the patent teams of leading international firms, and provide original solutions in the most complex cases. 

Patent Litigation before the French Courts and the UPC

We assist our clients at all the pre-contentious and contentious stages of invalidity and infringement proceeding, before French courts and the UPC, up to the final decision as well as in settlement negotiations.  

We strategically assess risks and benefits to explore all potential litigation options. Where relevant we explore the entire range of litigation options available (before civil, commercial and administrative courts, employment tribunals, the relevant PTOs, etc.) and work closely with the firm's other teams. 

Our comprehensive experience allows us to respond swiftly to the most complex cases (interim injunction, declaration of non­infringement, claim to ownership of an invention, arbitration, mediation, FRAND litigation, coordination of pan-European litigation, etc.).  

Our excellent knowledge of the UPC system and long-standing experience in managing cross-border cases, makes us very reactive for litigation before the UPC.  

Patent Litigation Before the EPO and the French PTO (INPI)

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

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

Our opposition cases before the EPO very frequently have ramifications before national courts and our EPA - the majority of whom are also lawyers – therefore develop customized strategies that take these national aspects into account. 

Drawing on our EPO expertise, we are now very familiar with the opposition procedure before the INPI, using our civil procedure practice to anticipate the appeal stage before the Court of Appeal. 

Patent Filing and Drafting Strategies, Freedom-to-operate Analysis

Our team is involved on a daily basis in litigation before courts and the EPO. The vast majority of our team has in-house experience, particularly through secondment assignments.  

This practical knowledge of both litigation and industry gives us the necessary in-depth knowledge: 

• Develop effective patent portfolios that address business concerns and anticipate future judicial interpretation issues; 

• Investigate all possible protection measures, including other intellectual property rights and trade secrets protection; 

• Conduct freedom-to-operate analysis, assess launch risks and examine competitor patent validity. 

Our in-depth knowledge of the UPC and unitary patent system enables us to provide effective answers to your questions in this area, particularly with regard to opt-out and unitary effect strategies. 

We understand the financial stakes involved in patent litigation and endeavour to provide the best results. We work with the best subcontractors for all administrative aspects of cases such as annuities and regional phase entry, in complete transparency.  

Valuation, Licensing, and IP-related Agreements

Our broad expertise in the negotiation and drafting of contracts in the field of industrial property, acquired in particular 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 arbitration and litigation, ensures that we provide our clients with the best advice regarding the valuation of their patents, the implementation of licensing policies and anti-infringement policies (identification of infringers and their distributors, sending of formal notices, negotiation of agreements, etc.). 

Pharmaceutical and Medical Device Legal Advice and Litigation

August Debouzy is a key player in pharmaceutical and medical device patent litigation. Our lawyers and patent attorneys have been involved in some of the most significant cases in this field in recent years.  

Our understanding of small molecules, biological products, formulations, medical devices, and second therapeutic applications, combined with our expertise in the regulatory landscape and close collaboration with the firm's Public and Regulatory team, enables us to advise on:  

• Pharmaceutical and medical device patent filing/drafting; 

• Pharmaceutical and SPC patent litigation; 

• Seizure of infringing products from competitors or the French National Agency for Medicines and Health Products Safety (ANSM); 

• Revocation of third-party marketing authorizations (petitions for suspension, appeals for excess of power before the administrative courts); 

• Proceedings with the commission for access to administrative documents (CADA); 

• Regulatory expertise on substitution, and opening of generic groups. 

Coordination of cross-border patent litigation

Our clients frequently entrust us with coordinating pan-European patent litigation, where providing the big picture without losing focus on relevant details is essential.  

In our reports, we place a particular emphasis on clarifying, based on our capacity to explain complex matters in simple terms.  

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 of these cases both in terms of strategy and logistics. 

François Pochart and Grégoire Desrousseaux's 30 years of practice in international cases has given our team an excellent understanding of different legal cultures and enabled us to develop effective working habits with our foreign colleagues, particularly in the USA, Asia and other European countries. 

Advice and litigation concerning employee inventions

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, 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 tribunal or any relevant court in accordance with the client's interests. 

Insurance and industrial risks

The diversity of our team members' scientific training, their detailed knowledge of technology sectors and their practice in these areas before French courts and the EPO enable us, 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. 

Industrial Property Training

We firmly believe that experience sharing stimulates individual and collective talents, and we pool our expertise through initiatives and training programs on site at our firm, 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.  

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, trade secrets), counterfeit seizure (saisie-contrefaçon), negotiation and drafting of contracts. 

Since 2018, we have organized annual "Patent Workshops" at our offices (Les Ateliers du Brevet), where our IP practitioners and professionals from related sectors meet to share best practice.