Simon Christiaën
Partner
Intellectual Property, Europe, Intellectual Property Litigation, Patent Counseling and Prosecution, Litigation and Alternative Dispute Resolution, International
Paris
00 33 6 03 56 37 68
*Attorney is a member of a French separate legal entity, Rimôn Electa Law S.E.L.A.S. and not Rimôn P.C.
Simon Christiaën is a Patent/Intellectual Property Law, Litigation & Dispute Resolution attorney, UPC Representative and Arbitrator at the WIPO Arbitration and Mediation Center with over 30 years of continuous experience, exclusively in law firms specializing in IP law and IP departments of business law firms. He has a particular focus on patent law/prosecution and complex patent and design patent litigation. Simon has a deep background in infringement actions and ex parte/inter partes preliminary injunctions in an international context, actions for invalidity, revocation and to claim ownership, unfair/parasitic competition actions, opposition procedure before the INPI and EUIPO, IP/IT due diligences, F-T-O, prior art searches and patentability/legal validity studies, IP prosecution and portfolio management, software/IT (including SaaS, ERP, MES) contracts and issues.
Simon represents clients and operates in all industry and economic sectors, including mechanical engineering, manufacturing electronics, mechatronics, robotics, railway, automotive and aeronautic engineering, industrial design, construction, buildings, scientific and medical equipment and devices, computer technology, Internet, AI, multimedia, entertainment and sport, industrial chemicals, pharmaceuticals, biotechnologies, life sciences, e-health, para-pharmacy, food, agro-food and mock meat, energy, cosmetic, hygiene, beauty and luxury products, insurance and financial services.
Simon graduated from Grenoble II University (UPMF, CUERPI) and holds a Ph.D. in private international intellectual property law awarded with distinction cuma sum laude and two specialty Certificates including ‘patent law.’ He is teaching intellectual property law at the Lefebvre Dalloz Compétences, a training organization in Paris La Défense.
Selected Experience
Mechanical Engineering, Tools, Building, Railway, Automotive & Aerospace Industry
- Defending the leading French manufacturer and distributor of corkscrews, in a legal dispute arisen in France concerning the infringement and validity of a French patent, as well as unfair/abusive competition (1 case before the Paris Court of 1st instance – ‘Tribunal judiciaire’ – and Court of Appeal against a British patent troll).
- Representation of a French company specialized in electrical, DIY and gardening products for the public, in a legal dispute arisen in France in connection to the infringement and validity of a patent covering a spray gun, as well as unfair/abusive competition litigation (1 case before the Paris Court of 1st instance against a German company).
- Representation of the leading French company which manufactures and assembles landing gear with disc brakes for civil and military planes, in a patent infringement legal dispute arisen in France against one of its main US competitors (1 case settled before the Paris Court of 1st instance).
- Assisting the Chinese subsidiary of a French group, defendant in a patent and trademark infringement and parasitic competition action as part of a wider dispute before the council chamber of the Pontoise Commercial Court (1st instance court), relating to patented inventions teaching and claiming frictionless braking systems (“retarders”) for vehicles.
- Assisting the French and global leader in railway transport for the implementation of the group’s innovation policy on a worldwide scale.
Building, Equipment & Urban Furniture
- Defending a Dutch group against inter partes patent infringement preliminary injunction of a French patent relating to a device for delimitation of vegetation and surrounding areas in e.g., park.
- Representing a multinational group headquartered in France, specializing in urban furniture and advertising and self-service bicycle rental, for patent pre-litigation.
- Assisting a French salaried inventor in the field of flat glass (refrigerator doors for large surfaces such as supermarkets, hypermarkets, car dealerships, sports stalls, etc.), plaintiff, claiming patent ownership and financial compensation from various entities, including his successive employers, before the Court of 1st instance of Paris.
- Protecting and advising a young and top-level (from Normale Sup) scientist and researcher, to patent a growing tower with several growing levels and find a partnership to exploit the resulting portfolio.
Industrial design, Containers, Packaging
- Defending a leading French energy company against patent infringement action on the merits of a French patent relating to freight containers for transporting e.g. nuclear waste, before the Court of Paris of 1st instance.
- Defending the leading French manufacturer and distributor of the Franche-Comté cheese specialty La Cancoillotte, in a litigation relating to the infringement and validity of design patents and copyrights protecting packages (cups, pots and cover) and unfair/parasitic competition (2 cases before the Besançon Courts of 1st instance /Appeal against a major local cheese company).
Electricity, Lighting, Electronics, AV Industry, Semiconductors, Consumer Electronics & Goods, Mechatronics, Essential Formats
- Representation of a leading European import and distribution company in a legal dispute against a Dutsch company and a Belgium company relating to infringement of French, German and Dutsch part of European patents covering DVD, MP3, MP4 and GPS standards as well as customs matters before the Courts of Paris, Brussels and Düsseldorf.
- Defending the leading French manufacturer of cable drive systems and industrial joysticks, in a legal dispute regarding the infringement and validity of a patent arisen in Germany (1 case before the Mannheim Court of 1st instance and the Karlsruhe Court of Appeal, against a German company).
- Defending a multinational company Belgium-based headquarters, leading supplier of specialist audio-visual equipment for the broadcasting, corporate and AV industries (loudspeakers, spotlights, lighting…), in a litigation relating to infringement and validity Community design patents and copyright before the Paris Court of 1st instance (1 settled case).
Literaty & Artistic Works, Software, Technology, Media & Telecom, NICT, AI
- Acting for one of the two French co-authors of a scenario for a work of science fiction, in a dispute against notably his co-author and the producer who have disclosed and begun to commercially launch the work without his consent.
- Assisting the French subsidiary of a US company, global leader providing simulation technology, quality control and optimization of machine tools software, in legal disputes regarding software patent and trademark infringement in France (3 cases settled with French companies).
- Defending a Danish world-leading company providing security software solutions to business in a wide range of industry sectors within a legal dispute against a French start-up before the Paris Court of 1st instance regarding the infringement and validity of a French national patent covering encryption process.
- Protecting and advising a French start-up managed and led by an inventor whose patented invention consists in a digital and community platform that represents a new and revolutionary social medium.
- Protecting and monitoring the assets of a US software publisher, for reviewing IT contracts (SaaS, software licensing and integration as part of ‘ERP’ and ‘MES’ projects).
Toys & Accessories, Leisure, Games, Sport
- Assisting a multinational company headquartered in Spain, specializing in the design and distribution of children’s dolls and toys, notably the famous Cry Babies dolls, claimant as owner of community design patents and other IPR (utility patents, trademarks, copyrights…) in a dispute relating to infringing distribution in France from China to Switzerland with the active assistance of French and European customs authorities (this mission was part of a vast campaign against toy counterfeiting launched in 28 countries under notably the aegis and coordination of EUROPOL, with the support of EUIPO and the health authorities, the aim of which was also to protect the health of young children. It resulted in the seizure and destruction of 648 Cry Babies Baby dolls Lovely and Lovely Doll series).
- Protecting and accompanying a large leisure group to patent and protect in general technologies and support know-how consisting of process, devices and installations relating to the field of slot machines, gaming consoles and cash games operated by a casino.
Life Sciences, Pharmaceuticals, e-health, Para-Pharmacy, Scientific & Medical Devices
- Acting for a major Swiss pharmaceutical group in a legal cross border dispute against an Italian company before the Paris Court of 1st instance relating to the validity and annulment of the Italian, German and French parts of a European patent covering a cardiac medication for the prevention of sudden death.
- Defending a leading Chinese bioengineering and high-tech company in a legal dispute against a French pharmaceutical company before the Paris Court of 1st instance relating to the infringement and validity of a French patent covering Maltitol crystals, crystalline compositions containing them and their preparation process.
- Representing a Portugal-based company specialized in comfort and orthopaedic shoes, defendant in a trademark and unfair/parasitic competition dispute before the Court of 1st instance of Lille and the Court of appeal of Douai.
- Protecting and monitoring the assets of a high-level scientist, and researchers of the same family, promoting an alternative treatment method, for trademark prosecution and copyright protection.
Chemical Products, Food & Agro-Food, Dietary Supplements, Energy
- Assisting and advising a French company in the field of petrochemical industry in the context of a consortium agreement negotiation for high-level work regarding IP rights, particularly patent rights definition, protection and management.
- Protecting and monitoring the assets of a French group specializing in the field of carbonization and pyrolysis techniques in general, for copyright protection and patent prosecution regarding “green” charcoal.
- Representation of a second French operator specializing in collection, treatment and recovery of products and organic waste from the food chain, for trademark oppositions.
- Protecting and monitoring the assets of the US holding of a worldwide franchise regarding street food services for trademark and copyright prosecution and pre-litigation.
Cosmetic, Hygiene, Beauty & Luxury Products
- Protecting and monitoring the trademarks of a Franco-Chinese group specialized in dermo-cosmetics, for large prior art searches and patentability stud to patent its innovations.
Financial & Insurance Services, other Services
- Acting for a French company specialized in rental of premises, plaintiff in a trademark infringement and unfair/parasitic competition dispute before the Court of 1st instance of Paris against the French subsidiary of a German group.
- Protecting and monitoring the new branding of a French company specialized in brokering, insurance, factoring and banking for large prior art searches, comprehensive study and EU trademark registrations.
Publications and Speaking Engagements
- Pre-publication on line (on Avril 23, 2024) of an exceptionally long legal study entitled “A temporal black hole in the realm of patent litigation or the challenges of a “Gap Period”” on LinkedIn.
- Commentary on line (17, November 2022) of a trial judgement and appeal judgement rendered in the same case entitled “Game over for Sony or how the world’s number one video game company saw its infringement action on the basis of the patents protecting its PlayStation before the French courts turn against it”, in BLIP!
- Publication of two technical studies in the French specialized journal Industrial Property (LexisNexis) entitled “Is there a “no right period” for patent infringement?” (No. 3, March 2017) and “Arbitrability of litigation relating to the validity of patents in Switzerland” (n° 6, June 2017).
- Publication of technical articles in the Medef IDF magazine (no. 51, October 2013): “The arbitrability of patent litigation”; in Les Echos (8 January 2014) “Mein kampf in the public domain: will we witness the trivialization of horror?”; in Lettre Juridique, Fiscale et Sociale (LJFS) “Infringement seizure: a French Exception”, “The Notion of ‘Insurmountable Difficulties’ concerning Patent License”, “The Impact of Patent: between Myth and Reality”, “‘IP’ Clauses in Work Contracts”, “Patentability of E-business Procedures”, “Patents due to the Internet Assault”; In the MIDAA magazine (No. 4, May 2014), “The Benefit of arbitration as a means of resolving patent disputes”; in Option finance: “Jurisdictional Competence in the Matter of Actions for Infringement Regarding New Legal and Statutory Rules”, “Provisional Actions”, “Patent Protection in the EU, between Unity and Diversity”, “Limits of Choice of the First Filing Country in International Order” (parts I, II and III) and “Employee’s Inventions in International Order” and in the ‘Pharmaceutical Law Insight’ issue (April 2010, vol. 6, n°4): “French intellectual property in the pharmaceutical field”.
- Author of the legal section on ‘France’ (Chapter 10) of the collective work “Mastering the IP Life Cycle-Towards a Tax efficient Management of Intellectual Property Rights”, coll. PwC, published in 2005 and updated in 2008.
- Co-editor, under the direction of Pierre-Louis Véron, of the collective works “Law and Practice Being Carried Out” (the section on infringement seizure, coll. Dalloz Action, publ. Dalloz, November 1998) and “Infringement Seizure” (coll. Dalloz Référence, Droit de l’entreprise, publ. Dalloz, September 1999).
- Interviews published in Legal 500, Décideurs juridiques, Option Droit & Affaires and Le Parisien.
- Speech “Protection Strategies by way of Patent Law,” ESDES Lyon, July 5, 2007.
- Organizer of two sessions for the conference-debate on “Reassuring, Defense and Development of Intellectual Property” in co-operation with Landwell & Partners on June 15 and October 19, 2004.
- Speech on “The Marriage of Law and Technology” concerning the particular use of a text mining software regarding patent and design patent, for Invention Machine France (European User Group Meeting, 5th Conference – Sardinia, Baia Chia, 15 and 16 October 2001) and of its North American parent company.
Awards and Recognition
- Ranked Patent star for France, Managing Intellectual Property 2016 – 2024 editions,
- Cited in Patent Litigation especially in the field of electronics and Pharmacy, The Legal 500 Paris, 2016 and 2020
News, Events, & Insights
- Rimon Electa Law S.E.L.A.S. welcomes new intellectual property partner, Simon Christiaën to the firm in Paris
News January 7, 2025