France: important changes to the patent law

In France, a number of important changes are coming into force in 2020 as a consequence of the adoption of the so-called PACTE law, promulgated on 22 May 2019, which contains a number of provisions relating to the patent regime.

We would like to draw your attention to certain of these changes in relation to:
1. Strengthening of the examination procedure
2. Introduction of an opposition procedure
3. Utility certificates
4. Statute limitations

1. Strengthening of the examination procedure

One of the most important changes brought by the PACTE law is the strengthening of the examination procedure through extension of its scope. Under the previous regime, the French patent office, INPI, could only refuse a patent application for an invention ‘manifestly’ lacking novelty or excluded from the field of patentable inventions.

Under the PACTE Law the INPI will now carry out a more thorough examination and it will have the power to refuse a patent application that does not involve an inventive step.

The new examination procedure will concern applications filed from 22 May 2020.

Recommendation: consider anticipating filings (first filing or extension) for applications concerning inventions that may have a debatable inventive step.

2. Introduction of an opposition procedure

As from 1st April 2020, it will be possible to form opposition against an issued French patent before the INPI. Similar to the EPO or Germany, the opposition deadline is 9 months from the grant date.

Currently, the invalidation of a French patent can only be sought before French courts. This new procedure will make it possible to obtain either the amendment or the revocation of a French patent before the patent office, i.e. outside of the courts.

The new procedure is expected to be simpler, faster and less expensive than the judicial route. It can be carried out by a patent attorney (Conseil en propriété industrielle) without the need for an attorney at law.

The opposition procedure will be available against patents granted from 1st April 2020.

3. Utility Certificates: term extension and conversion

In France, the utility model is called “utility certificate” (Certificat d’Utilité) and used to have a term of 6 years. It is subjected to the same patentability requirements as the standard patent but is granted without search report nor examination.

With the PACTE law, the term of the utility certificate is extended to a maximum of 10 years. This is applicable to all utility certificates still in force on 10 January 2020.

Another noticeable change is linked to conversion options. Up to now, it was possible to convert a patent application into a utility certificate.

With the PACTE law, an applicant of a utility certificate will be allowed to convert it into a patent application within a period of 18 months from filing/priority, and in any case before the start of technical preparations for the publication. The search fee will be due within 1 month from the request for conversion.

This conversion option is applicable to utility certificates filed from 11 January 2020 and should in practice be requested within 16 months.

4. Statute of limitations

Two major changes have already been implemented in the IP code in 2019 and relate to time limitation for infringement and invalidation. Similar provisions have in fact also been implemented for trademarks and designs.

Infringement. Under the old provisions, an infringement action could only concern facts that had occurred no earlier than five years before the introduction of a court action (‘5 years from the facts that caused the action’).

The new article L. 615-8 IPC reads: “Actions for infringement […] shall be barred after five years from the day on which the owner of a right knew or should have known the last fact enabling him to exercise it.

This new text is modelled on the corresponding article of the Agreement on a Unified Patent Court. The intention, according to parliamentary debates, is to make it possible “to cover facts that began more than five years ago”. It is expected that the determination of the starting point of this new limitation period will give rise to intense judicial debates.

Invalidation proceedings. A new article L. 615-8 is introduced, which reads:

“An action for invalidation of a patent is not subject to any limitation period.”

This provision removes any doubt as to the possibility of bringing an action for invalidation of a patent at any time.

Please do not hesitate to contact us, should you require additional information on these topics.

Philippe OCVIRK