Will the PACTE law, which seeks to tighten up the way in which patents are issued in France, result in stronger French patents or a gradual abandonment of its measures?
France’s new PACTE law, promulgated on 22 May 2019, addresses various points relating to patents in its articles 118 and 121 to 124. In particular, it aims to:
1) modernise utility certificates, by increasing their term of protection from six to 10 years (L. 611-2-2 ICP), while also enabling applicants to transform a utility certificate application into a patent application:
- The change in duration can be seen as an attempt to harmonise with Germany’s ‘Gebrauchsmuster’ or the utility model in China (for which the maximum term is 10 years from the filing date).
- It will be possible, therefore, for applicants to postpone the preliminary search report, i.e. by filing an application for a utility certificate, and then transforming it later into a patent application. This may be of interest, in particular, to SMEs hesitant to embark on the conventional procedure for filing a patent application, but who nevertheless have an invention they wish to protect. Here, it is also worth considering the reverse possibility (patent application into a utility certificate), especially in view of France’s IP Office (INPI) criteria for rejection; in particular, in terms of lack of inventive step (see below). Where there is any doubt about novelty (or, from now, inventive step), it could be advisable, therefore, to opt to file a utility certificate rather than a patent. The term of protection will be shorter (10 as opposed to 20 years), but the likelihood of a successful registration is potentially greater.
2) introduce a new French patent opposition procedure that will make it possible to oppose a patent before INPI.
- This is a 'light' administrative procedure that will enable opposing parties to seek challenge a patent’s validity before INPI, within a reasonable time and at a lower cost than a judicial invalidity action (an IP counsel is sufficient and it is not necessary to involve a lawyer).
- To prevent the possibility of the new system being abused, only third parties with an interest in bringing an action will be able to oppose a patent, and must show it is likely to harm their interests (e.g. in terms of freedom to operate or prior patents).
- The cost and terms will be specified for this new procedure are to be specified by ordinance after the entry into force of the PACTE law. But, it is to be hoped that, for the sake of European harmonisation, the deadlines and the substantive reasons will be similar to that provided for in the EPC.
- The opposition procedure is expected to come into effect on 1 April 2020, according to current predictions. If this timetable is correct, it should be possible, therefore, to file oppositions against any French patent granted from 1 April 2020 (or even against any French patent for which the opposition period of nine months has not yet expired as of 1 April 2020).
3) introduce inventive step examination for French patent applications:
- This is the main change introduced by the law for applicants in France: the INPI will now have the power to reject a patent application, under the terms of Article L.612-12 1st paragraph 7° CPI, "the subject matter of which is not patentable within the meaning of 1 of Article L.611-10".
- It is to be hoped that the examination of inventive step by the INPI will be carried out mainly on the basis of a problem-solution approach, similar to the approach taken to European Patent applications at the European Patent Office (EPO). As the examination of inventive step requires more time than a simple novelty examination, the INPI will have to adjust its staff accordingly, otherwise the length of the procedure will increase.
- Will this potentially generate an additional cost for applicants? If that is the case, it is worth noting (as mentioned above) that it will still be possible to obtain protection in France relatively inexpensively through the utility certificate system. The increase in the term of protection to 10 years makes this now a more attractive option than was previously the case.
- These provisions will apply to patent applications filed on or after 23 May 2020. For patent applications already filed or due to be filed before that date, the examination by INPI will remain unchanged (in particular, rejection for manifest lack of novelty).
4) remove the prescription period for an invalidity action:
- The introduction of Article L.615-8-1 IPC by the legislator removes any doubt as to the possibility of bringing an action for invalidation of a patent at any time. Thus, under the terms of this article: "An action for invalidation of a patent is not subject to any limitation period."
5) change the event giving rise to the prescription period for infringement actions:
- Under the terms of Article L.615-8 of the ICP in its current form: "The actions for infringement provided for in this chapter shall be time-barred after five years from the facts that gave rise to them.” The problem then arose of late knowledge, by the holder of a right, of the facts relating to the infringement.
- According to the new article L.615-8 of the IPC, "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 article reinforces the possibility for the right holder to obtain compensation for damage, even for old acts, by considering as the starting point of the limitation period, no longer the commission of an act of infringement, but its knowledge (real or supposed) by the right holder:
- to protect the owner of a patent from the concealment of acts of infringement by an infringer,
- to protect third parties from a holder who would voluntarily "turn a blind eye" to the commission of infringing acts.
6) introduce provisional applications
The provisional patent application system will enter into force on 1 July 2020 (Decree No. 2020-15 of 8 January 2020 on the creation of a provisional patent application and the conversion of a utility certificate application into a patent application). This is a low-cost procedure with a lighter formalism. It allows applicants a period of 12 months in which to convert such applications into patent applications. The provisional patent application will establish a priority date.
Points 1, 2, 4 and 5 seem to us to be positive steps for improving the strength of patents in France, although point 2 might encourage companies to opt instead for a European Patent. As for point 6, the French system already featured a way for applicants to obtain a date and a patent application number (article L.612-2 of the IP Code: indication that a patent is requested, information making it possible to identify or communicate with the applicant, and a description or reference to a previously filed application).
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Emmanuelle Laude-Duval is a Patent Attorney at Novagraaf in Paris.