Consequences of the French PACTE Act in Terms of Patent Rights

In Short:

The Background: The Action Plan for the Growth and Transformation of Enterprises Act ("PACTE Act") adopted on April 11, 2019 and promulgated on May 23, 2019, brings three important changes aimed at strengthening French patents.

The Impact: The PACTE Act extends the term of protection granted by utility certificates and possible conversion into a patent; establishes a complete examination of the validity of French patent applications; and creates an opposition right to French patents.

Looking Ahead: It remains to be seen whether applicants will find the strengthened French patent under the PACTE Act more attractive.

The new PACTE Act ("Act") significantly modifies the law applicable to French patents by modifying the regime of the utility certificate, creating a right to oppose the grant of a French patent, and instituting a real examination of the validity of French patent applications.

Amendments Concerning the Utility Certificate

Article 118 of the PACTE Act modifies the duration of the certificate of utility from six to 10 years (Article L. 611-2 of the Intellectual Property Code ("CPI")). The utility certificate confers protection identical to that of a patent but for a shorter period of time and does not require the establishment of a search report, which must nevertheless be drawn up if an infringement action is brought on the basis of the utility certificate.

Article 118 introduces the possibility of converting an application for a utility certificate into a patent (Article L. 612-15 CPI) under conditions to be specified by regulation. Previously, it was only provided that a patent application could be converted into a utility certificate, particularly when the applicant did not wish to establish a search report.

Utility certificates are widely used in Germany and it remains to be seen whether, as a result of the extension of the duration of protection, French companies will take a greater interest in this right, which they have, until now, largely ignored.

Creation of an Opposition Right to French Patents

Article 121 of the PACTE Act creates a right of opposition against patents granted by the French National Institute of Intellectual Property ("INPI"). Previously, it was not possible to file such an administrative action to challenge a newly granted French patent—only a judicial action for the invalidity of the patent could be filed before the tribunal de grande instance de Paris.

Now, a French patent may be the subject of an opposition before the INPI, which will not prevent the initiation of a legal action for invalidity. The new Act does not provide for the modalities for exercising this right of opposition (time limits, appeal, format, possibility of stay of proceedings in parallel judicial proceedings, costs, etc.). It is up to the government to take, by means of an order, the legal measures necessary to implement this opposition right, within nine months of the promulgation of the Act. A ratification bill must then be submitted to Parliament within six months of the publication of the order. Implementing regulations will then have to be enacted, so that the opposition right will not be effective until many months or even a few years later.

Creation of a Real Examination of the Validity of French Patent Applications

Article 122 of the PACTE Act provides for a full examination of the patentability of French patent applications. Until now, the INPI could only reject a patent application in limited cases provided for in Article L. 612-12 CPI, in particular if the subject matter of the application could not "obviously" be considered as a patentable invention or if the invention was not new. The INPI did not carry out any assessment of the inventive step.

Article 122 amends Article L. 612-12 CPI, which now provides that a patent application shall be rejected, among other essentially formal unchanged conditions, if it does not cover a patentable invention (the adverb "obviously" is deleted) or if it is lacking in novelty, inventive step, or industrial application. The Act states that this reform will come into force one year after its promulgation.

The enhanced examination of patent applications will involve the recruitment and training of new examiners by the INPI.

This reform aims to strengthen the French patent, which is considered accessible, inexpensive, and granted quickly, but the validity of which was sometimes considered too weak. It remains to be seen whether applicants will find the French patent, thus strengthened, more attractive.

Entry into Force

The PACTE law was promulgated on May 23, 2019, after being reviewed by the Conseil Constitutionnel (Constitutional Court).

Four Key Takeaways

  1. The duration of the utility certificate is now 10 years.
  2. The PACTE Act creates an opposition right to French patents.
  3. The Act also introduces a full examination of the validity of French patent applications, thus adding an examination of the inventive step not previously performed.
  4. It remains to be seen how companies will take advantage of the reform and in particular whether the number of applications for utility certificates and French patents will increase.

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